Paper 14
`Trials@uspto.gov
`571-272-7822 Entered: February 8, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`ENFORA, INC., NOVATEL WIRELESS SOLUTIONS, INC., and
`NOVATEL WIRELESS, INC.,
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01672
`Patent 8,648,717 B2
`____________
`
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 8, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`ENFORA, INC., NOVATEL WIRELESS SOLUTIONS, INC., and
`NOVATEL WIRELESS, INC.,
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01672
`Patent 8,648,717 B2
`____________
`
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-01672
`Patent 8,648,717 B2
`
`
`I. INTRODUCTION
`Enfora, Inc., Novatel Wireless Solutions, Inc., and Novatel Wireless,
`Inc. (collectively, “Petitioner”) filed a Petition (“Pet.”) requesting inter
`partes review of claims 1–7, 10–14, 18, and 21–30 of U.S. Patent No.
`8,648,717 B2 (“the ’717 patent,” Ex. 1001). Paper 2. M2M Solutions LLC
`(“Patent Owner”) timely filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”). We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R.
`§ 42.4(a).
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides:
`THRESHOLD—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and
`any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of the information presented in the Petition and
`the Preliminary Response, we are not persuaded that Petitioner has
`established a reasonable likelihood that it would prevail in its challenges to
`claims 1–7, 10–14, 18, and 21–30 of the ’717 patent. Accordingly, we
`decline to institute an inter partes review of those claims.
`
`A. Related Matters
`Petitioner and Patent Owner cite a number of judicial matters in the
`United States District Court for the District of Delaware involving the ’717
`patent, as well as matters involving ancestor patents of the ’717 patent. See
`Pet. 1–2; Paper 5. Petitioner concurrently filed another Petition for inter
`partes review challenging claims 1–7, 10–20, and 23–30. Pet. 2; IPR2015-
`
`
`
`2
`
`
`
`IPR2015-01672
`Patent 8,648,717 B2
`
`01670. Three additional Petitions for inter partes review have been filed by
`other petitioners challenging various claims of the ’717 patent. See
`IPR2015-01823; IPR2016-00054; IPR2016-00055.
`
`B. The ’717 Patent (Ex. 1001)
`The ’717 patent is generally directed to a programmable
`communicator device. Ex. 1001, Abstract. The ’717 patent has three
`independent claims—claims 1, 24, and 29. Claim 1 is reproduced below:
`
`
`
`A programmable communicator device comprising:
`1.
`programmable
`interface
`for
`establishing
`a
`a
`communication link with at least one monitored technical device,
`wherein the programmable interface is programmable by
`wireless packet switched data messages; and
`a processing module for authenticating one or more
`wireless transmissions sent from a programming transmitter and
`received by
`the programmable communicator device by
`determining if at least one transmission contains a coded number;
`wherein the programmable communicator device is
`configured to use a memory to store at least one telephone
`number or IP address included within at least one of the
`transmissions as one or more stored telephone numbers or IP
`addresses if the processing module authenticates the at least one
`of the transmissions including the at least one telephone number
`or IP address and the coded number by determining that the at
`least one of the transmissions includes the coded number, the one
`or more stored telephone numbers or IP addresses being numbers
`to which the programmable communicator device is configured
`to and permitted to send outgoing wireless transmissions;
`wherein the programmable communicator device is
`configured to use an identity module for storing a unique
`identifier that is unique to the programmable communicator
`device;
`and wherein the one or more wireless transmissions from
`the programming transmitter comprises a General Packet Radio
`Service (GPRS) or other wireless packet switched data message;
`
`
`
`3
`
`
`
`IPR2015-01672
`Patent 8,648,717 B2
`
`
`and wherein the programmable communicator device is
`configured to process data received through the programmable
`interface from the at least one monitored technical device in
`response to programming instructions received in an incoming
`wireless packet switched data message.
`C. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`Ardalan et al.
`US 6,900,737 B1 May 31, 2005
`(hereinafter “Ardalan”)
`(filed Feb. 12,
`1998)
`
`Ex. 1027
`
`Eldredge
`
`Whitley
`
`WO 95/05609
`
`Feb. 23, 1995
`
`Ex. 1028
`
`WO 99/49680
`
`Sept. 30, 1999 Ex. 1026
`
`Van Bergen
`
`WO 00/17021
`
`Mar. 30, 2000
`
`Ex. 1029
`
`Specification of the Bluetooth System, v1.0B (1999)
`(hereinafter “Bluetooth Specification”)
`
`Ex. 1033
`
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–7, 10–14, 18, and 21–30 of the ’717
`patent based on the asserted grounds of unpatentability set forth in the table
`below.
`References
`Whitley and Ardalan
`
`Claim(s) Challenged
`Basis
`§ 103(a) 1–7, 10–14, 18, 22, and 24–
`30
`§ 103(a) 21
`
`Whitley, Ardalan, and
`Eldredge
`Whitley, Ardalan, and Van
`Bergen
`Whitley, Ardalan, and
`Bluetooth Specification1
`
`1 Petitioner proposes this as an alternative ground. Pet. 42.
`4
`
`§ 103(a) 23
`
`§ 103(a) 4
`
`
`
`
`
`IPR2015-01672
`Patent 8,648,717 B2
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`
`
`II. CLAIM CONSTRUCTION
`Petitioner and Patent Owner propose constructions for various terms
`of the ’717 patent. Pet. 10–16; Prelim. Resp. 2–6; Papers 10, 12. Based on
`Petitioner’s unpatentability challenges, we determine that these terms, as
`well as all remaining terms, need not be construed explicitly at this time.
`III. ANALYSIS
`Petitioner contends that a combination of Whitley and Ardalan
`renders obvious the subject matter of independent claims 1, 24, and 29.
`Pet. 4, 26–40, 49–51, 53–55.
`A. “Processing Module for Authenticating”
`All of the asserted grounds of unpatentability in this Petition rely on
`Whitley alone or in combination with Ardalan as allegedly teaching or
`suggesting the following limitation of independent claims 1, 24, and 29: “a
`processing module for authenticating one or more wireless transmissions
`sent from a programming transmitter and received by the programmable
`communicator device by determining if at least one transmission contains a
`coded number.” See Pet. 30–33, 49–50, 54.
`First, Petitioner argues that “Whitley inherently discloses a check to
`determine if the wireless transmission contains a ‘coded number.’” Pet. 30.
`Petitioner argues:
`Specifically, Whitley discloses that each gateway is “uniquely
`addressable through, for instance, a phone number, IP address,
`or similar identifier” so that the customer can send “messages or
`commands that will be routed directly … to the gateway.” Ex.
`1026 at 6:8-14; see also Ex. 1026 at 3:13-14; 9:6-8; and 12:9-11.
`Ex. 1004 at ¶ 135. Inherently, messages sent to gateway 20 in
`SMS or GPRS will only be processed by gateway 20 and applied
`
`
`
`5
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`IPR2015-01672
`Patent 8,648,717 B2
`
`
`to it if the particular message includes gateway 20’s unique
`identifier – here the phone number, IP address, or other identifier.
`Ex. 1004 at ¶ 135. Messages that are received by gateway 20
`that do not include the unique identifier will not be processed by
`gateway 20. Ex. 1004 at ¶ 135. The gateway’s inherent
`confirmation of the identifier and subsequent acceptance of the
`message satisfies this claim element. Ex. 1004 at ¶ 135.
`Pet. 30–31.
`The Federal Circuit has stated:
`[t]o establish inherency, the extrinsic evidence must make clear
`that the missing descriptive matter is necessarily present in the
`thing described in the reference, and that it would be so
`recognized by persons of ordinary skill. Inherency, however,
`may not be established by probabilities or possibilities. The mere
`fact that a certain thing may result from a given set of
`circumstances is not sufficient.
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
`quotation marks omitted).
`In support of its inherency argument, Petitioner cites paragraph 135 of
`the Declaration of Randall A. Snyder (“Snyder Declaration”) (Ex. 1004).
`See Pet. 30–31. Paragraph 135 of the Snyder Declaration states: “I have
`prepared the following claim chart showing how each and every element of
`Claim 1 reads on the disclosure of Whitley and Ardalan.” Ex. 1004 ¶ 135.
`Paragraph 135 then includes a claim chart for claim 1 that appears to be
`largely identical to the argument in the Petition. Id. With respect to this
`inherency argument, the Snyder Declaration and Petitioner’s arguments
`appear to be identical. Paragraph 135 of the Snyder Declaration does not
`cite any underlying evidence supporting the assertion that the gateway in
`Whitley necessarily would check a transmission to determine “if the
`particular message includes gateway 20’s unique identifier” and only would
`
`
`
`6
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`IPR2015-01672
`Patent 8,648,717 B2
`
`process those messages having the unique identifier. Ex. 1004 ¶ 135; Pet.
`31; see also 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the
`underlying facts or data on which the opinion is based is entitled to little or
`no weight.”). Nor does paragraph 135 of the Snyder Declaration provide
`further analysis supporting the assertion of inherency.
`We further note that Whitley’s disclosure of programming multiple
`gateways simultaneously using a broadcasting function suggests that
`messages may not include the gateway’s unique identifier in all instances.
`Specifically, Whitley states:
`SMS messages may be configured for delivery to a particular
`identified terminal, such as handset 32, or they may be broadcast
`throughout a specific geographical area by using the SMS cell
`broadcast feature. This broadcasting function, described in the
`GSM 03.41 and GSM 04.11 that are incorporated herein by this
`reference, is useful for reprogramming multiple gateways 20
`simultaneously or warning customers at various facilities 12 of
`particular events in their geographic area (e.g., a weather warning
`or the like).
`Ex. 1026, 11:29–12:6. This passage teaches that the “SMS cell broadcast
`feature” is used to send messages to a specific geographic area, rather than
`to a particular terminal, suggesting that the terminal’s unique identifier does
`not need to be included in the message for the message to be processed by
`the gateway. Therefore, this evidence undermines Petitioner’s conclusory
`assertion of inherency.
`As such, Petitioner has not proffered sufficient evidence to persuade
`us that the gateway in Whitley necessarily performs a check to see if the
`unique identifier of the gateway is included in the transmission.
`Petitioner further contends that Ardalan teaches using 32-bit
`identifiers for message originators and recipients and that messages sent to a
`
`
`
`7
`
`
`
`IPR2015-01672
`Patent 8,648,717 B2
`
`meter in Ardalan will only be processed if the message includes the meter’s
`32-bit identifier. Pet. 31–32 (citing Ex. 1027, 4:28–53, 7:6–12; Ex. 1004 ¶
`135). Petitioner then contends:
`One of skill would have been motivated to modify Whitley to
`include the 32-bit identifier of Ardalan in its SMS message to
`provide improved identification and authentication of incoming
`messages, improved organization of associations between
`devices and telephone numbers on its server side (see, e.g., such
`teaching at col. 5:6-17 of Ex. 1027), and for at least the reasons
`described in Section VII(E). Ex. 1004 at ¶ 135.
`Pet. 32. Patent Owner argues Petitioner has not explained adequately why a
`person of ordinary skill in the art would make this proposed modification of
`Whitley and Ardalan. Prelim. Resp. 25. We agree.
`The Supreme Court, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006), has stated that obviousness conclusions “cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`Based on the record before us, we are persuaded Petitioner has not provided
`an adequate rationale for why a person of ordinary skill in the art would
`have modified Whitley with Ardalan’s teachings of using a 32-bit identifier.
`Petitioner cites the following disclosure from Ardalan to support its
`proposed modification:
`The AMR server 23 and database 25 work with meter IDs. The
`AMR server sends and receives packets that refer to meters using
`the 32-bit IDs. The communications gateway 24 is responsible
`for remembering which phone number is used to reach a given
`meter. The association between each meter ID and phone
`number is stored in a meter/phone database 26 accessible by the
`communications gateway. The gateway 24 passes the phone
`number for a given meter ID to the SMS along with the packet
`8
`
`
`
`
`
`IPR2015-01672
`Patent 8,648,717 B2
`
`
`from the AMR server 23 encapsulated as a SMS packet. For
`example, the AMR server and communications gateway would
`cooperate as follows to initiate the reading of a meter.
`Ex. 1027, 5:6–17. This passage teaches that, in Ardalan, it is necessary to
`associate phone numbers with 32-bit device identifiers because “[t]he AMR
`server 23 and database 25 work with meter IDs.” Id. at 5:6. However, as
`highlighted by Petitioner’s arguments with respect to Whitley, the unique
`identifier in Whitley is the gateway’s phone number, IP address, or other
`identifier by which the device is “uniquely addressable.” See Pet. 30–31
`(citing Ex. 1026, 6:8–14, 3:13–14; 9:6–8, 12:9–11). Petitioner has not
`explained adequately why adding another unique identifier to the system of
`Whitley, which already teaches that each gateway has a unique identifier,
`would improve “identification and authentication of incoming messages”
`and “organization of associations between devices and telephone numbers
`on its server side,” as argued by Petitioner. See Pet. 32; Prelim. Resp. 25.
`Petitioner cites paragraph 135 of the Snyder Declaration in support of
`its argument. See id. However, the Snyder Declaration provides no
`additional persuasive explanation supporting Petitioner’s argument. Rather,
`on this point, the Snyder Declaration and Petitioner’s arguments appear to be
`identical.
`Petitioner also cites Section VII(E) of the Petition, entitled “Reasons
`to Combine the References,” in support of its proposed modification of
`Whitley with the 32-bit identifiers of Ardalan. Pet. 32. This section offers
`general reasons for combining the asserted prior art references, such as: a
`person of ordinary skill in the art would “consult each reference and
`combine the teachings to provide the most efficient and capable monitoring
`system with the most efficient and capable programming provisions” (id. at
`
`
`
`9
`
`
`
`IPR2015-01672
`Patent 8,648,717 B2
`
`24–25); “[i]t would have been a simple matter” to combine the teachings “to
`provide additional functionality and improved performance” (id. at 25); and
`“[o]ne of skill would have been motivated to utilize the techniques in any of
`these references to improve the system in each, particularly because the
`improvements yield predictable results – e.g., the added functionality of
`Ardalan, Eldredge, and Van Bergen as compared to Whitley” (id.).
`However, these general statements do not address why a person of ordinary
`skill in the art would have had a reason to include the additional unique
`identifier disclosed in Ardalan into the system of Whitley, which already
`teaches a unique identifier for each gateway. The Snyder Declaration’s
`section entitled “Reasons to Combine the References” appears to be
`identical to Section VII(E) of the Petition and provides no further
`elaboration or explanation supporting Petitioner’s contentions. See Ex. 1004
`¶¶ 127–33.
`Based on the record before us, we are not persuaded that Whitley
`inherently teaches or suggests “a processing module for authenticating one
`or more wireless transmissions sent from a programming transmitter and
`received by the programmable communicator device by determining if at
`least one transmission contains a coded number,” or that Petitioner has
`explained sufficiently why a person of ordinary skill in the art would modify
`the system of Whitley to include the 32-bit identifier of Ardalan and thereby
`meet the “processing module” limitation. Because all challenges in this
`Petition depend on Whitley alone or in combination with Ardalan as
`teaching or suggesting this limitation, we are not persuaded Petitioner has
`established a reasonable likelihood of prevailing in showing that the
`challenged claims would have been obvious as alleged.
`
`
`
`10
`
`
`
`IPR2015-01672
`Patent 8,648,717 B2
`
`
`
`
`IV. CONCLUSION
`For the foregoing reasons, we are not persuaded that the Petition
`establishes a reasonable likelihood that Petitioner would prevail in showing
`claims 1–7, 10–14, 18, and 21–30 of the ’717 patent are unpatentable under
`35 U.S.C. § 103(a).
`
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`11
`
`
`
`
`
`
`
`12
`
`IPR2015-01672
`Patent 8,648,717 B2
`
`
`
`
`
`For PETITIONER:
`Christopher W. Kennerly
`Naveen Modi
`Timothy P. Cremen
`chriskennerly@paulhastings.com
`naveenmodi@paulhastings.com
`timothycremen@paulhastings.com
`
`For PATENT OWNER:
`Jeffrey N. Costakos
`Michelle A. Moran
`jcostakos@foley.com
`mmoran@foley.com
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