Patent Owner’s Supplemental Brief
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`
`ENFORA, INC., NOVATEL WIRELESS SOLUTIONS, INC., and
` NOVATEL WIRELESS, INC.
`Petitioners
`
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`
`
`
`Case IPR2015-01672
`Patent No. 8,648,717 B2
`_______________
`
`
`
`
`
`PATENT OWNER’S SUPPLEMENTAL BRIEF
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`
`ENFORA, INC., NOVATEL WIRELESS SOLUTIONS, INC., and
` NOVATEL WIRELESS, INC.
`Petitioners
`
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`
`
`
`Case IPR2015-01672
`Patent No. 8,648,717 B2
`_______________
`
`
`
`
`
`PATENT OWNER’S SUPPLEMENTAL BRIEF
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Patent Owner’s Supplemental Brief
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`LEGAL STANDARD ..................................................................................... 1
`
`THE CLAIM LANGUAGE ITSELF DISCLOSES STRUCTURE ............... 2
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`III. CONCLUSION ................................................................................................ 5
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`Page(s)
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`Patent Owner’s Supplemental Brief
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`AllVoice Computing PLC v. Nuance Commc’ns., Inc.,
`504 F.3d 1236(Fed. Cir. 2007) ............................................................................. 4
`
`Apple, Inc. v. Motorola, Inc.,
`757 F.3d 1286 (Fed. Cir. 2014) ............................................................ 1, 2, 3, 4, 5
`
`Blackboard, Inc. v. Desire2Learn, Inc.,
`574 F.3d 1371 (Fed. Cir. 2009) ........................................................................ 1, 4
`
`Finisar Corp. v. DirecTV Grp., Inc.,
`523 F.3d 1323 (Fed. Cir. 2008) ............................................................................ 2
`
`Lighting World, Inc. v. Birchwood Lighting, Inc.,
`382 F.3d 1354 (Fed. Cir. 2004) ............................................................................ 2
`
`Typhoon Touch Techs., Inc. v. Dell, Inc.,
`659 F.3d 1376 (Fed. Cir. 2011) ............................................................................ 5
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) (en banc) ............................................................ 1
`
`
`
`
`
`ii
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`
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`Patent Owner’s Supplemental Brief
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`Patent Owner, M2M Solutions Inc. (“M2M”) respectfully submits this
`
`supplemental brief pursuant to the Board’s Order, Conduct of the Proceedings, 37
`
`C.F.R. §§ 42.5, 42.20. Paper 9. Consistent with the District Court’s decision in a
`
`related proceeding (Ex. 2005),1 the processing module limitation should not be
`
`interpreted as a means-plus-function limitation.
`
`I.
`
`LEGAL STANDARD
`
`When a claim term lacks the word “means” it is presumed that § 112(6) does
`
`not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)
`
`(en banc). However, “the presumption can be overcome and § 112, para. 6 will
`
`apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently
`
`definite structure’ or else recites ‘function without reciting sufficient structure for
`
`performing that function.’” Id.
`
`For software-implemented claim terms, the relevant supporting structure is
`
`an algorithm. Apple, Inc. v. Motorola, Inc., 757 F.3d 1286, 1298-99 (Fed. Cir.
`
`2014). An algorithm provides at least “some explanation of how . . . [the claim
`
`term] performs the claimed function,” and offers a description of a “means for
`
`achieving that end.” Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371,
`
`
`1 For completeness, M2M submits pertinent portions of the brief and declarations
`
`before the District Court as Exs. 2006-2008.
`
`
`
`
`
`
`
`1
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`Patent Owner’s Supplemental Brief
`Inter Partes Review of U.S. Patent No. 8,648,717
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`1384-85 (Fed. Cir. 2009). The Federal Circuit’s liberal standard “permits a
`
`patentee to express . . . [an] algorithm in any understandable terms including as a
`
`mathematical formula, in prose, or as a flow chart, or in any other manner that
`
`provides sufficient structure.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323,
`
`1340 (Fed. Cir. 2008) (emphasis added) (citation omitted). Ex. 2005 at 6.
`
`In determining whether a claim term recites sufficient structure to avoid the
`
`application of Section 112(6), initial focus is placed on the claim term itself.
`
`Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359-60 (Fed.
`
`Cir. 2004). Next, the analysis turns to the surrounding claim language of the
`
`“entire claim limitation” in which the claim term appears to ascertain whether it
`
`“connotes ‘sufficiently definite structure’ to a person of ordinary skill in the art.”
`
`Apple, 757 F.3d at 1296. If the surrounding language of the full claim limitation
`
`provides a “structural definition” for the disputed claim term, or a “sufficient
`
`description of its operation,” then statutorily adequate structure for that claim term
`
`has been disclosed. Id. at 1299-1300. This analytical approach applies with full
`
`force “[e]ven if a patentee elects to use a ‘generic’ claim term, such as a ‘nonce
`
`word or a verbal construct.’” Id. at 1299.
`
`II. THE CLAIM LANGUAGE ITSELF DISCLOSES STRUCTURE
`
`The recited function for the “processing module” of independent Claims 1,
`
`24 and 29 is authenticating a received incoming transmission. Ex. 1001 at 12:39-
`
`2
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`
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`Patent Owner’s Supplemental Brief
`Inter Partes Review of U.S. Patent No. 8,648,717
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`43; 14:60-64; 16:6-10. The surrounding claim language in the “processing module”
`
`limitation expressly sets forth the steps for performing this authenticating function.
`
`Id. The claim language states that the particular manner in which the “processing
`
`module” is able to carry out authenticating is “by determining if the at least one
`
`transmission contains the coded number.” Id.
`
`As found by the District Court, a person of skill in the art would thus
`
`understand that the “processing module” performs its recited authenticating
`
`function using a simple three-step algorithm: (1) identifying a coded number
`
`contained in a received incoming transmission; (2) retrieving a coded number
`
`stored locally in memory on the receiving device; and (3) comparing the coded
`
`number from the transmission with the coded number retrieved from memory to
`
`determine whether they match. Ex. 2005 at 7-8. In so finding, the Court relied on
`
`the unrebutted declaration of M2M’s expert, Dr. Nettleton. Ex. 2006 at 5.
`
`The claim language surrounding the “processing module” limitation
`
`connotes sufficient structure and the limitation should not be interpreted under
`
`Section 112(6). Ex. 2006 at 3. When the surrounding language in a claim
`
`limitation connotes sufficiently definite structure, a claim term will not be
`
`governed by Section 112(6). Apple, 757 F.3d at 1296. Here, the surrounding
`
`claim language expressly explains how the “processing module” is able to perform
`
`its recited function of authenticating a received incoming transmission – i.e., “by
`
`3
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`Patent Owner’s Supplemental Brief
`Inter Partes Review of U.S. Patent No. 8,648,717
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`determining if the at least one transmission contains the coded number.” When
`
`read by a person of ordinary skill in light of the specification and prosecution
`
`history, this language would be understood as identifying an even more specific
`
`manner of authenticating a received incoming transmission by comparing a coded
`
`number stored locally on the receiving device with the coded number contained in
`
`the transmission to verify whether they match. Id.
`
`The disclosure of a particular manner for how the “processing module”
`
`performs its authenticating function constitute algorithmic structure. Blackboard,
`
`574 F.3d at 1384-85. The manner in which the “processing module” limitation has
`
`been claimed in the ’717 patent is the antithesis of situations where Section 112(6)
`
`has been invoked to counteract a “black box recitation of structure” in which a
`
`patentee attempted to claim “all possible means of achieving a function.” Rather
`
`than trying to capture the multitude of different ways that a received incoming
`
`transmission might potentially be authenticated, the surrounding claim language
`
`and the specification spell it out in a simple three step algorithm. Ex. 2005 at 8-9.
`
`This algorithm qualifies as sufficiently definite structure because it cannot
`
`reasonably be disputed that it would “render the bounds of the claim
`
`understandable to one of ordinary skill in the art.” AllVoice Computing PLC v.
`
`Nuance Commc’ns., Inc., 504 F.3d 1236, 1245(Fed. Cir. 2007). An ordinary skilled
`
`artisan would readily be able to write a software program for implementing such an
`
`4
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`Patent Owner’s Supplemental Brief
`Inter Partes Review of U.S. Patent No. 8,648,717
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`algorithm, which necessarily would require an understanding of the algorithm and
`
`how it circumscribes claim scope. Typhoon Touch Techs., Inc. v. Dell, Inc., 659
`
`F.3d 1376, 1385 (Fed. Cir. 2011). Accordingly, the “processing module” claim
`
`term does not invoke § 112(6) because there is “further [structural] description in
`
`the remaining claim language” that explains to a person of ordinary skill how its
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`recited authenticating function is to be performed. Apple, 757 F.3d at 1301.
`
`The ’717 patent specification confirms that the algorithm in which the
`
`“processing module” authenticates a received incoming transmission is by
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`determining whether it contains a required coded number: “It is a further object of
`
`the present invention to provide a programmable apparatus, which comprises a
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`processing means to process coded transmissions and permit only transmissions
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`comprising a coded number, which determines the authenticity of the message, to
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`be allowed to program the number to which the said apparatus be linked.”
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`(Ex. 1001 at 4:45-50; see also id. at Abstract (processing module authenticates “by
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`determining whether a received transmission contains the unique identifier” coded
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`number); id. at figs. 2 & 3 (“authentic/authenticated message[s]” are described as
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`those “comprising [a] unique identifier” coded number).)
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`III. CONCLUSION
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`For these reasons, M2M respectfully requests that the Board should not
`
`interpret the “processing module” limitation as a means-plus function limitation.
`
`5
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`Patent Owner’s Supplemental Brief
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`Dated: January 6, 2016
`
`
`
`Respectfully Submitted,
`
`/s/ Jeffrey N. Costakos
`Jeffrey N. Costakos
`Registration Number 34,144
`Attorney for Patent Owner
`Foley & Lardner LLP
`777 East Wisconsin Avenue
`Milwaukee, WI 53202-5306
`Telephone: 414-297-5782
`Email: jcostakos@foley.com
`
`
`
`6
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`Patent Owner’s Supplemental Brief
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that the above-captioned PATENT
`OWNER’S SUPPLEMENTAL BRIEF was served in its entirety on January 6,
`2016, upon the following parties via e-mail:
`
`chriskennerly@paulhastings.com
`naveenmodi@pauhastings.com
`timothycremen@paulhastings.com
`
`FOLEY & LARDNER LLP
`
`/s/ Michelle A. Moran
`Michelle A. Moran
`Pro Hac Vice
`Back-up Attorney for Patent Owner
`M2M Solutions LLC
`
`777 East Wisconsin Avenue
`Milwaukee, WI 53202-5306
`Telephone: 414-297-5629
`E-mail: mmoran@foley.com
`
`
`
`
`Date: January 6, 2016
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