IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`M2M SOLUTIONS LLC,
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`Plaintiff,
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`
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`v.
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`SIERRA WIRELESS AMERICA, INC. and
`SIERRA WIRELESS, INC.,
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`Defendants.
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`M2M SOLUTIONS LLC,
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`Plaintiff,
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`
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`v.
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`ENFORA, INC., NOVATEL WIRELESS
`SOLUTIONS, INC. and NOVATEL
`WIRELESS, INC.,
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`Defendants.
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`M2M SOLUTIONS LLC,
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`
`
`C.A. No. 12-030 (RGA)
`
`CONFIDENTIAL –
`FILED UNDER SEAL
`
`
`
`C.A. No. 12-032 (RGA)
`
`CONFIDENTIAL –
`FILED UNDER SEAL
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`
`
`C.A. No. 12-033 (RGA)
`
`CONFIDENTIAL –
`FILED UNDER SEAL
`
`
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`
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`Plaintiff,
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`
`
`v.
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`MOTOROLA SOLUTIONS, INC., TELIT
`COMMUNICATIONS PLC and TELIT
`WIRELESS SOLUTIONS INC.,
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`
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`
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`Defendants.
`
`DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION FOR
`RECONSIDERATION OF THE COURT’S CLAIM CONSTRUCTIONS OF
`“PROCESSING MODULE” AND “PROGRAMMABLE INTERFACE”
`BASED ON THE FEDERAL CIRCUIT EN BANC DECISION IN
`WILLIAMSON v. CITRIX ONLINE AND MOTION TO STRIKE
`
`Novatel Exhibit 103(cid:25)
`Enfora et al. v. M2M Solutions
`IPR2015-01672
`
`Page 1 of 16
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`

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`
`
`TABLE OF CONTENTS
`
`
`TABLE OF AUTHORITIES .......................................................................................................... ii
`
`Page
`
`I. M2M’S OPPOSITION IS DEFECTIVE,
`SUPPORTS DEFENDANTS’ MOTION AND
`RELIES ON IRRELEVANT EXPERT OPINION ................................................................1
`
`II. M2M’S OPPOSITION CONTRADICTS ITS
`EARLIER ASSERTIONS AND HIGHLIGHTS
`THE ABSENCE OF ANY LIMITING STRUCTURE ..........................................................3
`
`III. 35 U.S.C § 112 ¶6 LIMITS CLAIM SCOPE ..........................................................................4
`
`IV. THE “PROCESSING MODULE FOR…”
`LIMITATION IS INDEFINITE .............................................................................................6
`
`V.
`
`THE “PROGRAMMABLE INTERFACE FOR…”
`LIMITATION IS INDEFINITE .............................................................................................7
`
`VI. CONCLUSION ....................................................................................................................10
`
`
`
`i
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`Page 2 of 16
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`

`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Apex Inc. v. Raritan Computer, Inc.,
`325 F.3d 1364 (Fed. Cir. 2003) ..................................................................................................10
`Apple Inc. v. Motorola, Inc.,
`757 F.3d 1286 (Fed. Cir. Apr. 25, 2014) .................................................................................5, 6
`Aristocrat Techs. v. Int’l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008) ............................................................................................2, 4, 5
`Beneficial Innovations, Inc. v. Blockdot, Inc.,
`2010 U.S. Dist. LEXIS 35784 (E.D. Tex. 2010) .........................................................................6
`Blackboard, Inc. v. Desire2Learn, Inc.,
`574 F.3d 1371 (Fed. Cir. 2009) ................................................................................................4, 5
`Elcommerce.com, Inc. v. SAP AG,
`745 F.3d 490 (Fed. Cir. 2014) ......................................................................................................5
`EON Corp. IP Holdings, LLC v. AT&T Mobility LLC,
`785 F.3d 616 (Fed. Cir. May 6, 2015) .............................................................................2, 4, 5, 6
`High Point Sarl v. Spring Nextel Corp.,
`2012 U.S. Dist. LEXIS 108485 (D. Kan. 2012) ........................................................................10
`Mobile Telcoms. Techs., LLC v. LG Elecs. Mobilecomm USA, Inc.,
`2015 U.S. Dist. LEXIS 62392 (E.D. Tex. May 13, 2015) ...........................................................5
`Net Moneyin, Inc. v. VeriSign Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ....................................................................................................5
`Noah Sys., Inc. v. Intuit Inc.,
`675 F.3d 1302 (Fed. Cir. 2012) ................................................................................................2, 7
`Phillips v. AWH Corp.,
`414 F.3d 1303 (Fed. Cir. 2005) ..................................................................................................10
`Robert Bosch, LLC v. Snap-On Inc.,
`769 F.3d 1094 (Fed. Cir. 2014) ....................................................................................................9
`Williamson v. Citrix Online, LLC,
`No. 2013-1130, 2015 U.S. App. LEXIS 10082 (Fed. Cir. Jun. 16, 2015) .....................1, 6, 7, 10
`
`Statutes
`35 U.S.C § 112 ¶1 ........................................................................................................................2, 4
`35 U.S.C § 112 ¶6 ........................................................................................................................2, 4
`
`
`ii
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`Page 3 of 16
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`

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`I.
`
`M2M’S OPPOSITION IS DEFECTIVE, SUPPORTS DEFENDANTS’
`MOTION AND RELIES ON IRRELEVANT EXPERT OPINION
`
`A motion for reconsideration is not a “second bite at the apple,” and is not an opportunity
`
`to argue new facts or issues that were previously available. This principle applies equally to
`
`non-movants, especially where the ground for reconsideration is a change in controlling law and,
`
`more particularly (as here), a change in a legal presumption. None of the exhibits to Dr.
`
`Nettleton’s Declaration (D.I. 193), supposedly showing the “programmable interface” was
`
`decades old, was used at the Markman hearing.1 M2M’s current argument is inconsistent with
`
`its previous assertions, where it highlighted the supposed innovation of the “programmable
`
`interface” and its alleged difference from the prior art. (D.I. 68 at 37 and 82). The same is true
`
`regarding the “processing module.” (Compare Ex. A ¶4 (“sufficient intelligence to be
`
`simultaneously capable of performing the multiple different types of the data monitoring and
`
`processing…”) with Ex. B ¶¶13-14 (“simple”; “very simple and basic”).2
`
`In any event, Dr. Nettleton’s testimony on the understanding of a skilled artisan (Ex. B
`
`¶¶11-14) is irrelevant to determining whether the patent discloses structure.
`
`“The testimony of one of ordinary skill in the art cannot supplant the total absence
`of structure from the specification. The prohibition against using expert testimony
`to create structure where none otherwise exists is a direct consequence of the
`requirement that the specification adequately disclose corresponding structure.”
`
`Williamson v. Citrix Online, LLC, No. 2013-1130, 2015 U.S. App. LEXIS 10082 at *29 (Fed.
`
`Cir. Jun. 16, 2015) (citations omitted).
`
`
`1
`All docket entries cited are in C.A. No. 12-033-RGA. The Scheduling Order (D.I. 32 at
`10) did not permit testimony at the Markman hearing without the Court’s prior approval. The
`Order did not, however, preclude M2M from offering an expert declaration in support of its
`Markman brief. M2M elected not to submit expert testimony.
`2
`“Ex. __” refers to exhibits to the Declaration of Keren Livneh, submitted herewith.
`
`1
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`Page 4 of 16
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`
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`Therefore, M2M’s argument that a person skilled in the art “would readily have been able
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`to write a software program [for authentication]” (Opp. at 6) is totally irrelevant, and conflates
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`the enablement standard (§ 112, ¶1) with the test for means-plus-function limitations (§ 112, ¶6).
`
`EON Corp. IP Holdings, LLC v. AT&T Mobility LLC, 785 F.3d 616, 624 (Fed. Cir. May 6,
`
`2015); Aristocrat Techs. v. Int’l Game Tech., 521 F.3d 1328, 1336 (Fed. Cir. 2008). M2M’s
`
`argument is identical to one the Federal Circuit repeatedly rejected:
`
`“EON also argues that a microprocessor can serve as sufficient structure for a
`software function if a person of ordinary skill in the art could implement the
`software function. This argument is meritless. In fact, we have repeatedly and
`unequivocally rejected this argument: a person of ordinary skill in the art plays
`no role whatsoever in determining whether an algorithm must be disclosed as
`structure for a functional claim element.”
`
`EON at 623; Aristocrat at 1337 (“It is not enough for the patentee simply to…argue that persons
`
`of ordinary skill in the art would know what structures to use to accomplish the claimed
`
`function.”); Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1313 and 1317 (Fed. Cir. 2012).
`
`As Defendants explained both in their Markman brief and in their motion for
`
`reconsideration, neither the claims nor the specification discloses hardware, software or an
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`algorithm of any kind that performs the claimed functions. Aristocrat at 1337 (“[B]ecause in
`
`this case there was no algorithm at all disclosed in the specification[, t]he question thus is not
`
`whether the algorithm that was disclosed was described with sufficient specificity, but whether
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`an algorithm was disclosed at all.”).
`
`Indeed, all arguments M2M made in its Markman brief and opposition are directed to
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`black-box functions of the processing module and programmable interface – not how the
`
`functions are performed or by what structure. This leaves ambiguity that M2M tried to exploit in
`
`its infringement contentions by asserting that the processing module’s authentication function
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`covered virtually any authentication procedure. (See D.I. 68 at 76; Exs. A ¶¶4 and 6; C ¶40).
`
`2
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`Page 5 of 16
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`
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`II. M2M’S OPPOSITION CONTRADICTS ITS EARLIER ASSERTIONS
`AND HIGHLIGHTS THE ABSENCE OF ANY LIMITING STRUCTURE
`
`M2M’s opposition is a 180-degree change with respect to the breadth of the processing
`
`module’s “coded number” authentication function, which it called the “crux of the asserted
`
`claims” in its Markman brief, and argued (D.I. 68 at 76; emphasis in original):
`
`“The specification makes clear that the term ‘coded number’ is intended to
`broadly cover any type of coded number used for one of those purposes [including
`authentication].”
`
`See also: the coded number “is clearly much broader than a ‘unique identifier’” and “is not
`
`required to be a ‘unique identifier’” (at 76-7), and “the invention may make use of all coding
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`schemes…” (at 76; emphasis in original). M2M went so far as to say Defendants’ narrow
`
`interpretation of that terminology was “simply frivolous.” (D.I. 68 at 81).
`
`Similarly, M2M’s expert reports argued that the processing module’s authentication
`
`function was very broad, and was not limited to pre-stored numbers (i.e., numbers stored on the
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`device before a transmission to be authenticated is sent). (See below; Exs. D ¶¶48-49; C ¶38).
`
`Now, M2M argues the exact opposite: the claims are “narrowly described,” and authentication is
`
`a “simple,” “very basic,” “‘one-to-one’” “‘match[ing]’” scheme using a “‘pre-stored number.’”
`
`(Opp. at 5-6).3
`
`Based on M2M’s prior expansive interpretation, Telit moved for summary judgment of
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`invalidity for lack of written description because the specification does not describe anything
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`except a simple one-to-one authentication procedure with pre-stored characters, like the PUK
`
`code. After rejecting the opinions of Dr. Nielson, Telit’s expert on this subject, “in their
`
`entirety” (Exs. A ¶3 and C ¶38; see also D ¶¶48-49), M2M now adopts his explanation that there
`
`3
`Contrary to its opposition (at 4 and n.4), M2M is not currently relying on the SIM card,
`and has never relied on the PUK code in any of its changing infringement contentions. Compare
`M2M’s original infringement contentions (Ex. E) with its current contentions (Ex. F).
`
`3
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`Page 6 of 16
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`was “written description” of the function of a simple one-to-one matching scheme of pre-stored
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`“coded numbers” (see Opp. at 4-5), but ignores his explanation that there is no support for the
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`overly broad interpretation M2M had advocated. (Exs. G ¶¶51-61; H ¶¶13, 16, 29-30 and 60).
`
`In any case, a very limited, purely functional description cannot support M2M’s assertion
`
`that the specification discloses structure. There is no dispute that the alleged inventor envisioned
`
`a simple one-to-one matching scheme using pre-stored characters, like the PUK code; there can
`
`also be no dispute that she failed to identify any structure to perform that (or any other)
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`authentication function.4 Again, M2M confuses 35 U.S.C §112 ¶1 (written description) with ¶6.
`
`“A patentee cannot avoid providing specificity as to structure simply because
`someone of ordinary skill in the art would be able to devise a means to perform
`the claimed function. To allow that form of claiming under section 112, para[.] 6,
`would allow the patentee to claim all possible means of achieving a function.”
`
`Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009). Similarly, M2M
`
`had advocated purely functional claims covering any type of “coded number” authentication.
`
`III.
`
`35 U.S.C § 112 ¶6 LIMITS CLAIM SCOPE
`
`The tradeoff for claims written using functional language is that they are limited to the
`
`structure described in the specification, and equivalents thereof. EON at 623. In Aristocrat (at
`
`1333), the Federal Circuit held:
`
`“The point of the requirement that the patentee disclose particular structure in the
`specification and that the scope of the patent claims be limited to that structure
`and its equivalents is to avoid pure functional claiming.”
`
`M2M tries to overcome the patent’s absence of structure by asserting that software could
`
`be written to transform a microprocessor into an authentication device. (Opp. at 6). But, the
`
`Federal Circuit has repeatedly, and consistently, held that a microprocessor standing on its own
`
`4
`Twelve years ago, an examiner of the patent’s European counterpart said that the claims
`were not patentable because they did not “clearly defin[e] the apparatuses in terms of structural
`technical features[,]” but instead in terms of “activities.” (Ex. I; emphases in original).
`
`4
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`Page 7 of 16
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`
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`is not sufficient structure (assuming one had been disclosed). EON at 622-23; Net Moneyin, Inc.
`
`v. VeriSign Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008); Aristocrat at 1333-35.
`
`“[In Net Moneyin,] we explained that when a computer is referenced as support
`for a function in a means-plus-function claim, there must be some explanation of
`how the computer performs the claimed function.”
`Blackboard at 1384. Here, that explanation is totally absent.5
`
`Indeed, in EON, the Federal Circuit held that all “computer-implemented functions
`
`require disclosure of an algorithm” (at 623), except in rare cases, where the microprocessor
`
`performs routine functions like “‘processing,’ ‘receiving,’ and ‘storing’” (at 621).
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`If M2M’s pre-opposition arguments were right, then the claims would effectively have no
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`outer boundaries: (a) any device that authenticates any wireless message in any way (including a
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`password, complex authentication algorithm, and “security” in general)6 would be a “processing
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`module;” and (b) any device that “comprises a signal connection and associated control
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`circuitry” (whatever that might include) is a “programmable interface.” (Ex. L ¶115).
`
`M2M now argues that the claims’ function self-defines the “algorithmic structure” (Opp.
`
`at 1), citing the Apple case (at 10 and 13). In Apple, however: (a) the term at issue, “heuristic,”
`
`was not a “nonce” word (at 1301); (b) both the claims and specification included detailed
`
`descriptions and limitations on what the “heuristic” was and how it worked (at 1301-03); and
`
`
`5
`Contrary to M2M’s argument (Opp. at 12), Defendants are not required to submit expert
`testimony to show lack of structure. Aristocrat at 1337 (no expert testimony is required where
`there is no structure at all). M2M relies on Elcommerce (at 505-06), which was vacated and is of
`no precedential value. See 745 F.3d 490 (Fed. Cir. 2014); Mobile Telcoms. Techs., LLC v. LG
`Elecs. Mobilecomm USA, Inc., 2015 U.S. Dist. LEXIS 62392 at *8-9 (E.D. Tex. May 13, 2015).
`6
`See Exs. A ¶¶3 and 6; C ¶40; D ¶¶48-49; J at 20; K at 5.
`
`5
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`Page 8 of 16
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`(c) the Court relied on the now overruled “strong presumption” (at 1297).7 Here, “module” is a
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`nonce word and, according to M2M, the processing module’s authentication function is not
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`limited, nor described in any way remotely similar to Apple. Moreover, M2M’s conclusion
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`directly conflicts with EON, which holds that only three terms may self-describe sufficient
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`structure. EON at 621-22. Authentication is not one of them.
`
`Similarly, the Beneficial opinion on which M2M relies (Opp. at 2) is based upon: (a)
`
`overruled law, in particular the strong presumption when “means” is lacking; and (b) a holding
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`that “module” is not a “nonce” word. Consequently, that decision is of no precedential value.
`
`IV.
`
`THE “PROCESSING MODULE FOR…” LIMITATION IS INDEFINITE
`
`The starting and perhaps end point of the indefiniteness analysis is the Federal Circuit’s
`
`holding that the term “module” has no definitive meaning. Rather, it is synonymous with
`
`“means.” Williamson at *21. (See also D.I. 68 at 70-71). The word “processing” does not
`
`change the Federal Circuit’s holding that “module” is a generic description of some unspecified
`
`component. Williamson at *22 (“The prefix ‘distributed learning control’ does not impart
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`structure into the term ‘module.’”).
`
`A year before M2M made its new argument, Dr. Nettleton acknowledged that no
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`algorthim for authentication is disclosed in the patent (Ex. C ¶40; emphasis added):
`
`“[A]ll that the ‘authenticating’ language expressly requires is that the processing
`module ‘determin[e] if the at least one transmission contains the coded number,’
`without specifying any particular technique that the processing module must use
`in order to make such a determination.”
`
`Dr. Nettleton’s opening report also illustrates M2M’s overly broad interpretation of the
`
`purely functional claim limitation “processing module” (Ex. M ¶124; see also ¶¶53-54):
`
`7
`Indeed, the Court identified at least five flow charts, and half a dozen textual citations
`(among the hundreds of pages in the patent), which had detailed descriptions of the rules and
`functionality that limited the claims. Apple at 1301-03.
`
`6
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`Page 9 of 16
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`
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`“[I]t is my opinion that the same ‘processing module’ that is capable of
`performing the authenticating function of claim elements 1(v) and 52(iv) is also
`capable of performing the data processing function of Claims 11 and 63. In both
`cases, the “processing module” is the ‘Module SW [Software] Engine’
`components of the firmware contained in the [accused products].”
`
`In the Markman brief, M2M argued that the processing module “performs several
`
`different types of data processing functions,”8 but also failed to identify any structure
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`corresponding to any of those. “Where there are multiple claimed functions, as we have here,
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`the patentee must disclose adequate corresponding structure to perform all of the claimed
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`functions.” Williamson at *25.
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`The ambiguity caused by the patent’s lack of any algorithm, hardware, or software is
`
`illustrated by comparing M2M’s prior assertions with M2M’s opposition. Throughout
`
`prosecution, and as explained above, M2M argued the distinguishing characteristic of the alleged
`
`invention was the authentication process. (D.I. 68 at 76 and 82). Now, however, M2M asserts
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`that element was “very simple” and a matter of routine engineering. (Opp. at 5; Ex. B ¶14).
`
`Because the claims cover functions, their scope is indeterminate; there is no disclosure of
`
`what apparatus or algorithm performs the authentication, how it works, or (critically) what forms
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`of authentication are not covered by the claims. Noah at 1318 (without structure, one “cannot
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`perceive the outer bounds of the invention.”).
`
`V.
`
`THE “PROGRAMMABLE INTERFACE FOR…” LIMITATION IS INDEFINITE
`
`Dr. Wesby, the alleged inventor, testified that the “programmable interface” “is software,
`
`software that is using a microprocessor that is placed at a certain physical – physical place to be
`
`8
`D.I. 68 at n.39 and n.70. See also Ex. A ¶4 (the processing module has “multiple
`different types” of functions); Ex. M ¶128 (“causing the processed data to be transmitted to…[a]
`monitoring device”); ¶133 (“processing a data monitoring or data collection request”); ¶164
`(“editing of the two alternative types of ‘permitted callers’ lists”). All told, the “processing
`module” carries out half a dozen functions in the asserted claims, none of which is supported by
`any structure.
`
`7
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`Page 10 of 16
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`
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`able to interact with these kinds of devices, but, in essence, it is software.” (Ex. N, Tr. 102). She
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`further testified that this was “a new, unique feature.” (Tr. 102; Tr. 104, “[I]t was possible to do,
`
`but this is still a new – a new inventive step…”). She admitted, however, that she did not know
`
`“about the specific type of software to use.” (Tr. 102; Tr. 103, “I expect there to be
`
`microprocessors involved, but if you ask me for commercial-type software, I – I can’t give you
`
`any specifically”) (all emphases added).
`
` According
`
`to her, any ordinary, existing
`
`“programmable interface” was not what was claimed. Because Dr. Wesby could not point to any
`
`software or algorithm that corresponded to the claimed function, the patent could not have
`
`disclosed specific or definite structure corresponding to the claimed function anywhere.
`
`In line with the alleged inventor’s testimony (and with what the Patent Office was told),
`
`M2M’s invalidity expert, Dr. Konchitsky, asserted that none of the prior art the Defendants cited
`
`had programmable interfaces. (See, e.g., Ex. D ¶¶85, 264, 441, 615 and 785). But, this
`
`contradicted M2M’s other expert, Dr. Nettleton, who asserted that programmable interfaces were
`
`ubiquitous and known in the art for “the past three or four decades.” (Ex. L ¶¶128 and 131; see
`
`also, e.g., Ex. B ¶¶16, 17 and 22). He stated (Ex. L ¶17; emphasis added):
`
`“[I]n my view any reading of the Court’s claim construction as effectively
`necessitating that a ‘programmable interface’ must include software would be an
`incorrect misinterpretation [sic] of that construction. As apparently intended by
`the Court, by definition the claimed ‘programmable interface’ may, but need not,
`include software.”
`
`He also said the patent described other “programmable interfaces” (e.g., ones associated
`
`with alarm generators, battery chargers, etc.) that “interact[ed] with” “‘software features’” (Ex. L
`
`¶171), and that a person of ordinary skill “could properly regard those portions of firmware…to
`
`be logical components of the interfaces themselves.” (¶172; emphasis added; see also ¶174).
`
`M2M’s damages expert, on the other hand, stated (Ex. O at 8; emphasis added):
`
`8
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`Page 11 of 16
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`“I further understand that the ʼ010 patent is a software feature added to the
`Accused Modules firmware software.”
`
`By contrast, in its Markman brief, M2M argued the “‘programmable interface’ is a
`
`‘hardware interface’ for connecting two electrical hardware devices together…” (D.I. 68 at 35),
`
`with some unidentified “management software” that exists only on the pages of the Markman
`
`brief (at 34-35). The patent only has a box (see 140 in Figure 1, “interface means”) and vagaries
`
`related to “programmable interface means” (8:54-62), as well as a “means to be interfaced…”
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`(2:1-8). (See D.I. 68 at 38-41 and 46-47).
`
`M2M further argued that the “programmable interface” has “intelligent functionality”
`
`(D.I. 68 at 36; Ex. A ¶4), but there is not a word in the patent about what this functionality is,
`
`how the “intelligence” is achieved, or what structure could make this device “intelligent.”
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`Moreover, M2M’s self-serving description only highlights that the claim element covers a
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`function, albeit one that is unspecified, and that M2M now admits Dr. Wesby did not invent.
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`The fundamental defect in the patent is that the claims (and the specification) lack any structure
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`and, thus, are being stretched and contracted depending on M2M’s objective at any given time.
`
`M2M’s contradictory statements further illustrate that a person of ordinary skill reading
`
`the patent would have no idea whether the “programmable interface” covers hardware, software,
`
`firmware or some unspecified combination of all three, a defect very similar to the one in Robert
`
`Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1101 (Fed. Cir. 2014):
`
`“[T]he loading could be achieved by using any type of device that comprises
`hardware, software, or both. … Because the ‘313 patent’s disclosures of ‘program
`recognition device’ and ‘program loading device’ are solely functional, one of
`ordinary skill in the art could not find in the specification a definition of the terms
`as referring to a particular structure.”
`
`In Bosch, the Court held that claim elements that did not use the word “means” were
`
`nevertheless in means-plus-function format and, because the specification failed to describe
`
`9
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`Page 12 of 16
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`
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`corresponding structure, the claims were indefinite. Bosch at 1101.
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`Additionally, there is no uniform definition of the term “interface.” The definition used
`
`in the Markman decision (D.I. 94 at 11) is different from that in the case M2M relied on in its
`
`Markman brief (D.I. 68 at 37), which is again different from the one the Court used in High
`
`Point Sarl v. Spring Nextel Corp., 2012 U.S. Dist. LEXIS 108485 (D. Kan. 2012) – a case on
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`which M2M relied as support for the proposition that an “interface” has a well-understood
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`meaning (D.I. 68 at 43). Therefore, a person skilled in the art could not read the ‘010 patent and
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`determine what the claimed “programmable interface” was.
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`Further, M2M’s argument, that if a claim term can be found in a dictionary, it has
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`sufficient structure to avoid means-plus-function construction (D.I. 68 at 42; Opp. at 2), is
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`wrong, as Williamson makes plain. (See pre-2000 dictionary definition of “module,” Ex. P).
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`M2M’s argument is also inconsistent with the admonition of over-reliance on dictionaries in
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`Phillips v. AWH Corp., 414 F.3d 1303, 1321-22 (Fed. Cir. 2005).
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`Finally, in Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373-74 (Fed. Cir. 2003),
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`on which the Court relied in its Markman opinion (D.I. 94 at 11) and M2M relies in its
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`opposition (at 2), the “interface” was considered to be an adjective describing “circuit” (which is
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`a structure). That case does not support the assertion that a “programmable interface for…”
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`inherently is a clearly definable structural element, and the patent does not refer to it as a circuit.
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`VI. CONCLUSION
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`The claim limitations “processing module” and “programmable interface” found in all
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`asserted claims are means-plus-function limitations. Because there is no corresponding structure
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`in the specification, the asserted claims are indefinite and invalid as a matter of law.
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`10
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`Page 13 of 16
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`OF COUNSEL:
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`David Loewenstein
`Clyde A. Shuman
`Keren Livneh
`PEARL COHEN ZEDEK LATZER
`1500 Broadway, 12th Floor
`New York, NY 10036
`(646) 878-0800
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`
`
`OF COUNSEL:
`
`Robert E. Krebs
`Jennifer Hayes
`NIXON PEABODY LLP
`2 Palo Alto Square
`30000 El Camino Real, Suite 500
`Palo Alto, CA 94306-2106
`(650) 320-7700
`
`Ronald F. Lopez
`NIXON PEABODY LLP
`One Embarcadero Center, Suite 1800
`San Francisco, CA 94111
`(415) 984-8200
`
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`
`/s/ Jack B. Blumenfeld
`
`
`
`
`Jack B. Blumenfeld (#1014)
`Rodger D. Smith II (#3778)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`rsmith@mnat.com
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`Attorneys for Telit Communications PLC and
`Telit Wireless Solutions Inc.
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`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
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`/s/ Thomas C. Grimm
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`Thomas C. Grimm (#1098)
`Jeremy A. Tigan (#5239)
`Stephen J. Kraftschik (#5623)
`12001 N. Market Street
`P.O. Box 1347
`Wilmington, DE 19889-1347
`(302) 658-9200
`tgrimm@mnat.com
`jtigan@mnat.com
`skraftschik@mnat.com
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`Attorneys for Sierra Wireless America, Inc.
`and Sierra Wireless, Inc.
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`Page 14 of 16
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`DRINKER BIDDLE & REATH LLP
`
`/s/ Thatcher A. Rahmeier
`
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`
`
`Francis DiGiovanni (#3189)
`Thatcher A. Rahmeier (#5222)
`222 Delaware Avenue, Suite 1410
`Wilmington, DE 19801-1621
`(302) 467-4200
`francis.digiovanni@dbr.com
`thatcher.rahmeier@dbr.com
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`Attorneys for Novatel Wireless Inc., Novatel
`Solutions Inc. and Enfora, Inc.
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`OF COUNSEL:
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`Christopher W. Kennerly
`PAUL HASTINGS LLP
`1117 South California Avenue
`Palo Alto, CA 94304-1106
`(650) 320-1800
`
`Elizabeth L. Brann
`Ericka J. Schulz
`Jeffrey D. Comeau
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`(858) 458-3000
`
`August 17, 2015
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 17, 2015, I caused the foregoing to be electronically filed
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`with the Clerk of the Court using CM/ECF, which will send notification of such filing to all
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`registered participants.
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`
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`I further certify that I caused copies of the foregoing document to be served on
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`August 17, 2015, upon the following in the manner indicated:
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`Richard D. Kirk, Esquire
`Stephen B. Brauerman, Esquire
`BAYARD, P.A.
`222 Delaware Avenue, Suite 900
`Wilmington, DE 19801
`Attorneys for Plaintiff
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`Marc N. Henschke, Esquire
`FOLEY & LARDNER LLP
`111 Huntington Avenue, Suite 2600
`Boston, MA 02199
`Attorneys for Plaintiff
`
`Jeffrey N. Costakos, Esquire
`Kimberly K. Dodd, Esquire
`Kadie M. Jelenchick, Esquire
`Matthew J. Shin, Esquire
`FOLEY & LARDNER LLP
`777 E. Wisconsin Avenue
`Milwaukee, WI 53202
`Attorneys for Plaintiff
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`Jason J. Keener, Esquire
`Jeffrey J. Mikrut, Esquire
`FOLEY & LARDNER LLP
`321 North Clark Street, Suite 2800
`Chicago, IL 60654
`Attorneys for Plaintiff
`
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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` /s/ Jack B. Blumenfeld
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`Jack B. Blumenfeld (#1014)
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`Page 16 of 16