UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ENFORA, INC., NOVATEL WIRELESS SOLUTIONS, INC., and NOVATEL
`WIRELESS, INC.
`Petitioners
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`v.
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`M2M SOLUTIONS LLC
`Patent Owner
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`Case IPR2015-01670 (Patent No. 8,648,717 B2)
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`Case IPR2015-01672 (Patent No. 8,648,717 B2)
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`RESPONSE TO THE BOARD’S DECEMBER 15, 2015 ORDER
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ENFORA, INC., NOVATEL WIRELESS SOLUTIONS, INC., and NOVATEL
`WIRELESS, INC.
`Petitioners
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`v.
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`M2M SOLUTIONS LLC
`Patent Owner
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`
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`
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`Case IPR2015-01670 (Patent No. 8,648,717 B2)
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`Case IPR2015-01672 (Patent No. 8,648,717 B2)
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`RESPONSE TO THE BOARD’S DECEMBER 15, 2015 ORDER
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`I.
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`INTRODUCTION
`The Board’s Question: In Paper No. 9, the Board requested the Parties’
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`positions as to whether the challenged claims’ “processing module” limitation
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`“should be interpreted as a means-plus-function limitation” (herein “MPFL”) and
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`“if so, how the limitation should be interpreted.” Paper No. 9 at 2.
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`Petitioners’ Answer: Under the Broadest Reasonable Interpretation (“BRI”)
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`standard, the limitation need not be interpreted as a MPFL. Moreover, even if it
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`were interpreted as a MPFL, the underlying structure can be considered to be a
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`general purpose computer that can perform the claimed authentication, which has
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`no practical effect on the invalidity analyses of the Petitions.
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`II. A DISTRICT COURT HAS FOUND THAT THE IDENTIFIED
`LIMITATION IS NOT SUBJECT TO SECTION 112(6), BOTH
`BEFORE AND AFTER WILLIAMSON
`A. The Williamson Standard
`When claims are asserted in district court, claim construction is governed by
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`the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
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`Under the Phillips rubric, the Federal Circuit “has long recognized the importance
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`of the presence or absence of the word ‘means.’” Williamson v. Citrix Online,
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`LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Where the limitation does not include
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`“means,” there is a presumption that § 112, ¶ 6 does not apply, which can only be
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`overcome “if the challenger demonstrates that the claim term fails to ‘recite
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`sufficiently definite structure’ or else recites ‘function without reciting sufficient
`1
`IPR2015-01670 (8,648,717 B2)
`Response To Board’s
`IPR2015-01672 (8,648,717 B2)
`December 15, 2015 Order
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`structure for performing that function.’” Id. (quoting Watts v. XL Sys., Inc., 232
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`F.3d 877, 880 (Fed. Cir. 2000)). The essential inquiry is “whether the words of the
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`claim are understood by persons of ordinary skill in the art to have a sufficiently
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`definite meaning as the name for structure.” Id. (citing Greenberg v. Ethicon
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`Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996)).
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`B.
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`The District of Delaware Has Found That The “Processing
`Module” Limitation is Not a MPFL
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`As discussed in Section II(B)(2) of the Petitions, M2M has brought actions
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`based on two of the ’717 Patent’s ancestors, the ’197 Patent (Ex. 1008)1 and the
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`’010 Patent (Ex. 1010). The “processing module” limitation is found (with some
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`variation in language) in the asserted claims of each patent, and similar terms used
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`within the same patent family should be similarly construed. See In re Rambus
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`Inc., 694 F.3d 42, 48 (Fed. Cir. 2012).
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`In these district court actions, Defendants proposed that the “processing
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`module” limitations were MPFLs under the Phillips standard. Ex. 1022, p. 68.2
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`The Court disagreed, construing those limitations as “components or units of a
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`computer program” (Ex. 1023, p. 12) and citing a number of district court opinions
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`finding “module” to be sufficient structure to avoid § 112, ¶ 6. Id. at 13.
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`1 Cites to “Ex.” are to Exhibits in both IPR proceedings unless otherwise indicated.
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`2 The matters identified in Section II(B)(1) of the Petitions have been stayed.
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`IPR2015-01670 (8,648,717 B2)
`IPR2015-01672 (8,648,717 B2)
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`2
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`Response To Board’s
`December 15, 2015 Order
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`Defendants sought reconsideration in view of Williamson, arguing that
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`“module” was a well-known substitute for “means” and the limitation as a whole
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`was consistent with traditional MFPLs.3 The Court affirmed its construction.4
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`Exs. 1038 (670) and 1037 (672) at pp. 2 and 5-9.
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`As part of the determination of whether the limitation has “sufficiently
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`definite meaning as the name for structure” (Williamson 792 F.3d at 1348), the
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`Court first cited the Federal Circuit’s instruction that, in computer implemented
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`inventions, “‘[s]tructure may [] be provided by describing the claim limitation's
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`operation .... [which] is more than just its function; it is how the function is
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`achieved in the context of the invention.” Exs. 1038 (670) and 1037 (672) at p. 6
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`(citing Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1299 (Fed. Cir. 2014)).
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`While the Court noted that the “processing module” limitation itself might
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`not provide the requisite structure, the remaining claim limitations did describe a
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`particular authentication algorithm with sufficient detail. Exs. 1038 (070) and
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`1037 (072) at p. 7. Specifically, the Court found that the “‘processing module’
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`3 In the 670 and 672 IPR proceedings, Defendants’ Motion for Reconsideration is
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`Exs. 1035 and 1034, respectively; M2M’s Opposition is Exs. 1036 and 1035,
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`respectively; and Defendants’ Reply is Exs. 1037 and 1036, respectively.
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`4 In the 670 and 672 IPR proceedings, the Court’s Order is Exs. 1038 and 1037,
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`respectively.
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`IPR2015-01670 (8,648,717 B2)
`IPR2015-01672 (8,648,717 B2)
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`3
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`Response To Board’s
`December 15, 2015 Order
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`limitation expressly explains how this authenticating function is to be performed
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`… [i.e.,] ‘by determining if the at least one transmission contains the coded
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`number.’” Id. at 8. The Court seemed particularly convinced in this regard by
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`M2M’s expert declaration that “the entire claim limitation recites sufficient
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`structure for a person of skill in the art to be ‘able to write a software program for
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`implementing such an algorithm for use in a wireless data module ...’” and also
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`noted that Defendants presented no contrary expert testimony. Id. at 7-8. No such
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`expert testimony is in the record here, either.
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`Thus, the Court concluded that § 112 ¶6 does not apply. Id. at 9.
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`III. THE LIMITATION IS NOT A MPFL UNDER MPEP § 2181
`In addition to the analysis under Williamson and Phillips set forth above,
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`MPEP § 2181(I) specifies a particular MPFL analysis using the BRI standard.
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`First, one looks at whether “means” or an equivalent “nonce term” is used. MPEP
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`§ 2181(I)(A). Here, “means” is not used, and “processing module” is not one of
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`the “nonce terms” listed in MPEP § 2181(I)(A). Second, one looks to see if the
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`limitation recites “the function it performs as opposed to the specific structure,
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`material, or acts that perform the function.” MPEP § 2181(I)(B). As discussed
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`above, the Court found that “by determining if at least one transmission contains a
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`coded number” provides sufficient computational structure. Exs. 1038 (670) and
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`1037 (672) at p. 8. Third, if the limitation is generic and functional, one confirms
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`IPR2015-01670 (8,648,717 B2)
`IPR2015-01672 (8,648,717 B2)
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`4
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`Response To Board’s
`December 15, 2015 Order
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`that it is not “modified by sufficiently definite structure ...” MPEP § 2181(I)(C).
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`Here, this third step is unnecessary in view of the result of the second step.
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`This analysis would show that the “processing module” is not a MPFL. That
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`is confirmed by the fact that the limitation appears throughout the ‘717 Patent
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`family, and has never been considered a MPFL. See e.g., Exs. 1003, 1007, 1009,
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`1011, 1013, 1015, 1016, 1018, 1020, and 1021.
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`IV. EVEN IF THE LIMITATION WERE FOUND TO BE A MPFL, IT
`WOULD HAVE NO PRACTICAL EFFECT ON THE PETITIONS
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`The Federal Circuit has confirmed that, for computer-implemented MPFLs,
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`the corresponding structure of the specification may be a “general purpose
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`computer” (“GPC”) if no special algorithm is required. Apple, 757 F.3d at 1298.
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`Here, nothing in the record shows the need for anything beyond a GPC. The parts
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`of the references compared to the “processing module” in the Petitions also show
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`GPCs (e.g., gateway 20 of Whitely, SMS interfaces in Ardalan, and units 16, 216
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`of Kennedy). Thus, even if the challenged claims are limited to implementations
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`on a GPC, the cited references still disclose such an arrangement, i.e., the Petitions
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`would still show invalidity of the challenged claims.
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`V. CONCLUSION
`The phrase identified by the Board need not be interpreted as a MPFL under
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`the BRI standard and, even if it were, the underlying structure can be considered to
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`be a general purpose computer, which has no practical effect on the Petitions.
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`IPR2015-01670 (8,648,717 B2)
`IPR2015-01672 (8,648,717 B2)
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`5
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`Response To Board’s
`December 15, 2015 Order
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`Respectfully submitted,
`/Christopher W. Kennerly/
`Christopher W. Kennerly (Reg. No. 40,675)
`Paul Hastings LLP
`chriskennerly@paulhastings.com
`1117 S. California Avenue
`Palo Alto, California 94304
`Phone: 1.650.320.1800
`Fax: 1.650.320.1900
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`Naveen Modi (Reg. No. 46,224)
`Timothy P. Cremen (Reg. No. 50,855)
`Paul Hastings LLP
`naveenmodi@paulhastings.com
`timothycremen@paulhastings.com
`875 15th Street, N.W.
`Washington, DC 20005
`Phone: 1.202.551.1700
`Fax: 1.202.551.1705
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`Counsel for Enfora, Inc., Novatel Wireless
`Solutions, Inc., and Novatel Wireless, Inc.
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`Dated: January 6, 2016
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`IPR2015-01670 (8,648,717 B2)
`IPR2015-01672 (8,648,717 B2)
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`6
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`Response To Board’s
`December 15, 2015 Order
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 6th day of January 2016, a copy of the foregoing
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`Response to the Board’s December 15, 2015 Order was served by e-mail on the
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`following counsel of record for Patent Owner, M2M Solutions Inc.:
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`Jeffrey N. Costakos - jcostakos@foley.com
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`Michelle A. Moran - mmoran@foley.com
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`Dated: January 6, 2016
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`By:
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`/Christopher W. Kennerly/
`Christopher W. Kennerly
`Reg. No. 40,675
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`Counsel for Petitioner
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`IPR2015-01670 (8,648,717 B2)
`IPR2015-01672 (8,648,717 B2)
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`7
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`Response To Board’s
`December 15, 2015 Order
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