Paper No. ___
`
`Filed on behalf of: Enfora, Inc., Novatel Wireless Solutions, Inc., and Novatel
`Wireless, Inc.
`
`By: Christopher W. Kennerly (chriskennerly@paulhastings.com)
`
`Naveen Modi (naveenmodi@paulhastings.com)
`
`Timothy P. Cremen (timothycremen@paulhastings.com)
`
`Paul Hastings LLP
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`ENFORA, INC., NOVATEL WIRELESS SOLUTIONS, INC., and NOVATEL
`WIRELESS, INC.
`Petitioners
`
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`
`U.S. Patent No. 8,648,717
`
`
`
`
`
`
`
`
`
`DECLARATION OF RANDALL A. SNYDER
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`Page 1 of 65
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`NOVATEL EXHIBIT 1004
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`TABLE OF CONTENTS
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`I.
`
`INTRODUCTION ........................................................................................... 4
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`II. QUALIFICATIONS ........................................................................................ 5
`
`III. SUMMARY OF OPINIONS AND LEGAL BASES THEREFORE ............. 7
`
`A.
`
`Legal Basis for Obviousness ................................................................. 7
`
`B. My Opinion – A Person of Ordinary Skill in the Art ............................ 9
`
`C. My Opinion – Claims 1-7, 10-14, 18, and 21-30 of the ’717 Patent
`Are Not Patentable Over The Prior Art ............................................... 11
`
`IV. OVERVIEW OF THE ’717 PATENT .......................................................... 12
`
`A.
`
`Background / Admitted Prior Art ........................................................ 12
`
`B. Object of the Purported Invention ....................................................... 13
`
`C. Description of Embodiments ............................................................... 13
`
`V.
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`PROSECUTION HISTORY OF THE ’717 PATENT .................................. 15
`
`VI. CLAIM CONSTRUCTION .......................................................................... 16
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`“A Programmable Interface” ............................................................... 18
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`“Coded Number” ................................................................................. 19
`
`“Unique Identifier” .............................................................................. 21
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`“Transmission” .................................................................................... 21
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`The Number and Content of “Transmissions” Falling Within the
`Claim Scope ........................................................................................ 23
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`VII. CLAIMS 1-7, 10-14, 18, AND 21-30 OF THE ’717 PATENT ARE NOT
`PATENTABLE OVER THE PRIOR ART ............................................................. 27
`
`A. WO 99/49680 (Whitley) ...................................................................... 27
`
`B. U.S. Patent No. 6,900,737 (Ardalan) .................................................. 30
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`C. WO 95/05609 (Eldredge) .................................................................... 32
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`D. WO 00/17021 (Van Bergen) ............................................................... 33
`
`E.
`
`F.
`
`Reasons to Combine the References ................................................... 34
`
`A Combination of Whitley and Ardalan Render Obvious Claims 1-7,
`10-14, 18, 22, 24-30 ............................................................................ 37
`
`G. A Combination of Whitley, Ardalan and Eldredge Render Obvious
`Challenged Claim 21 ........................................................................... 63
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`H. A Combination of Whitley, Ardalan, and Van Bergen Render Obvious
`Challenged Claim 23 ........................................................................... 64
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`VIII. SECONDARY CONSIDERATIONS ........................................................... 65
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`IX. CONCLUSION .............................................................................................. 65
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`I.
`
`I, Randall A. Snyder, declare as follows:
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`INTRODUCTION
`1.
`
`I have been retained by Enfora, Inc., Novatel Wireless Solutions, Inc.,
`
`and Novatel Wireless, Inc. as an independent expert consultant to provide expert
`
`testimony in support of Petitioner’s Petition for Inter Partes Review (the
`
`“Petition”) of Claims 1-7, 10-14, 18, and 21-30 (“Challenged Claims”) of U.S.
`
`Patent No. 8,648,717 (“the ’717 Patent”).
`
`2.
`
`I have reviewed and am familiar with the ’717 Patent and its file
`
`history, which have been provided to me as Exhibits 1001 and 1003. I understand
`
`these to be exhibits to the Petition.
`
`3.
`
`I have also been provided, reviewed, and am familiar with Exhibits
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`1002 and 1004-1033, which I understand to be the remaining Exhibits to the
`
`Petition.
`
`4.
`
`I have been asked to consider, among other things, whether certain
`
`references make obvious Claims 1-7, 10-14, 18, and 21-30 of the ’717 Patent. My
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`opinions as to these issues are set forth below.
`
`5.
`
`I am being compensated at my normal consulting rate for the time I
`
`spend on this matter. No part of my compensation is dependent on the outcome of
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`this proceeding or any other proceeding involving the ’717 Patent. I have no other
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`interest in this proceeding.
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`II. QUALIFICATIONS
`6.
`I have over 30 years of experience in mobile telecommunications
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`network and system architecture, engineering, design and technology.
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`7.
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`I have a Bachelor’s Degree in Mathematics from Franklin and
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`Marshall College.
`
`8.
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`I have taught many classes and seminars on telecommunication
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`network technologies and have been a panelist and speaker at numerous
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`conferences at the Institute of Electrical and Electronics Engineers (IEEE), the
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`Personal Communication Society (PCS), and the Cellular Telecommunications and
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`Internet Association (CTIA) as an expert in telecommunication networks.
`
`9.
`
`I spent seven years developing standards within the American
`
`National Standards Institute’s subsidiary organization, the Telecommunications
`
`Industry Association (TIA), providing technical contributions and authoring and
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`editing telecommunications proposed standards documents.
`
`10.
`
`I am the co-author of the McGraw-Hill books “Mobile
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`Telecommunications Networking with IS-41,” and “Wireless Telecommunications
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`Networking with ANSI-41, 2nd edition” published in 1997 and 2001, respectively.
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`These books have sold several thousand copies and were required reading for
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`mobile engineers at AT&T Wireless and Motorola for several years.
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`11.
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`I am a named inventor on 26 issued patents, and five additional
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`published pending applications relating to telecommunications networking
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`technology.
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`12.
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`I have authored several articles on telecommunications technology
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`and have been quoted numerous times in industry trade publications.
`
`13.
`
`I have been hired as a consultant by the CTIA, as well as by many
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`wireline and wireless telecommunications companies, including IBM, Bell
`
`Laboratories, McCaw Cellular, AirTouch, AirTouch International, AT&T
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`Wireless, AT&T Mobility, Lucent, Nokia, Ericsson, Motorola, Samsung, Siemens,
`
`Nextwave, MCI, Daewoo, Globalstar, T-Mobile, Sprint, U.S. Cellular, Teleglobe
`
`Canada, Teledesic and other telecommunications technology vendors and service
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`providers.
`
`14. From March 2000 to April 2001, I was Executive Director of
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`Emerging Technologies at Openwave Systems (via acquisition of Software.com
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`and @Mobile), where I designed a unified messaging system incorporating short
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`message service (“SMS”) and multimedia message service (“MMS”).
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`15. From April 2001 to February 2002, I was Vice President of Product
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`Management at Bitfone Corporation, where I designed a platform to enhance MMS
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`for the cellular network operators.
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`16. From February 2002 to November 2003, I was co-founder of m-Qube,
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`Inc., one of the first text message based mobile marketing companies in North
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`America. m-Qube founded and established the Mobile Marketing Association
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`(http://www.mmaglobal.com), the global trade organization which subsequently
`
`established authoritative best practices, guidelines, requirements and codes of
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`conduct for organizations using mobile text messaging technology to communicate
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`with consumers.
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`17. A copy of my curriculum vitae is Exhibit 1005.
`
`III. SUMMARY OF OPINIONS AND LEGAL BASES THEREFORE
`18. My opinions expressed herein are based on: (i) my education,
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`experience, and background in the fields discussed above, along with my
`
`professional judgment; (ii) the contents of the documents I cite and discuss herein,
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`including Exhibits 1001-1033, each of which I have reviewed and am familiar
`
`with; and (iii) my understanding of the legal bases for finding a patent claim
`
`obvious, which I explain below.
`
`A. Legal Basis for Obviousness
`19.
`It has been explained to me that under 35 U.S.C. § 103, a claim may
`
`be found to be obvious, and therefore invalid, when the differences between the
`
`claim and the prior art reference or references would have been obvious at the time
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`the invention was filed to a person having ordinary skill in the art to which the
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`patent pertains.
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`20.
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`I understand that obviousness is determined based on an analysis of
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`four factors: (i) the scope and content of the prior art; (ii) the differences between
`
`the prior art and the claims at issue; (iii) the level of ordinary skill in the pertinent
`
`art; and (iv) secondary considerations of nonobviousness.
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`21. With respect to the second factor, determining the differences between
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`the prior art and claims is a two–step analysis comprising: (i) determining the
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`meaning of the claim elements; and (ii) comparing those terms with the prior art.
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`22.
`
`I understand that the disclosure of a limitation in a prior art reference
`
`may be explicit or inherent. Explicit means that the limitation or feature is
`
`expressly described in the reference. Inherent means that the limitation or feature
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`is necessarily present in the disclosure (i.e., the feature is a deliberate or necessary
`
`consequence of the reference’s disclosure) even if the reference does not expressly
`
`describe the feature. One of ordinary skill in the art must recognize that the feature
`
`is inherent to the disclosure, but inherency does not require that the person of
`
`ordinary skill in the art would have necessarily recognized the inherent disclosure
`
`at the time of the reference.
`
`23.
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`It has been explained to me that the level of ordinary skill in the art is
`
`determined by analyzing such things as: (i) the prior art; (ii) the types of problems
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`encountered in the art; (iii) the rapidity with which innovations are made; (iv) the
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`sophistication of the technology involved; and (v) the educational background of
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`those actively working in the field, as well as the inventors.
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`24.
`
`I am also aware for one of ordinary skill in the art at the time of the
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`alleged invention to have found it obvious to combine references, there must have
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`been some motivation to make the combination covered by the patent claims. I am
`
`told that motivation can be implicit.
`
`25.
`
`It is also my understanding that to determine whether it would have
`
`been obvious to combine known elements in a manner claimed in a patent, one
`
`may consider such things as: (i) the combination being a predictable variation; (ii)
`
`the combination having been used to improve similar devices; (iii) the combination
`
`being obvious to try; (iv) if the combination merely applying a known technique to
`
`a known device to yield predictable results; (v) a teaching or suggestion in the
`
`references themselves that the combination was possible; (vi) common sense; (vii)
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`the effects of demands known to the design community or present in the
`
`marketplace; and (viii) the background knowledge of one with ordinary skill in the
`
`art.
`
`B. My Opinion – A Person of Ordinary Skill in the Art
`26.
`In view of the legal bases above, I have been asked to provide an
`
`opinion as to the level of a person of ordinary skill in the art at the time of the
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`purported invention of the ’717 Patent, which I have been asked to initially assume
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`is May 18, 2000.
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`27. Also in view of the above, my opinions below have been guided by
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`my appreciation of how a person of ordinary skill in the art would have understood
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`the disclosure and claims of the ’717 Patent at the time of the alleged invention.
`
`28.
`
` Based upon the considerations described above, it is my opinion that
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`one of ordinary skill in the art relevant to the technology of the ’717 Patent at its
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`purported priority date of May 18, 2000, is someone who has a computer science,
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`computer engineering, electrical engineering, mathematics or other related
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`technical degree at the undergraduate level, and on the order of three to five years
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`of experience working with and programming mobile telecommunications
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`protocols, short message service protocols and/or internet-based messaging
`
`protocols. Superior experience in one of these areas (education or experience in
`
`mobile telecommunications networks) would compensate for lesser experience in
`
`the other.
`
`29.
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`I base this opinion on my direct experience developing technical
`
`standards for end-to-end messaging technology, developing the design and
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`architecture for networks employing end-to-end messaging technology, designing
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`SMS technology products, as well as my knowledge and understanding of the skill
`
`levels of others working in the field.
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`30. My opinion in this regard is based on my extensive personal
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`experience working in the field of the purported invention, my knowledge of
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`colleagues and others working in that same field as of and for several years prior to
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`May 18, 2000, my study of the ’717 Patent and its file history (including that of its
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`family), and my study of the prior art references and exhibits discussed herein.
`
`31. My opinion is further based on my knowledge of the level of
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`education and experience of persons actively working in the field in the mid 1990s
`
`to early 2000s, the types of problems encountered in the art at that time, and the
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`prior art solutions to those problems, including such solutions as the remotely
`
`programmable communicator recited in the claims of the ’717 Patent.
`
`32. My opinion as to the level of a person of ordinary skill in the art
`
`would not substantively change if the time of the purported invention of the ’717
`
`Patent was a few years before or after May 18, 2000. Nor do I believe that my
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`opinions below would substantively change if the level of a person of ordinary skill
`
`in the art were ultimately found to be marginally different than my opinion herein,
`
`although I reserve my right to consider and respond to any other opinions or
`
`findings as to such a level.
`
`C. My Opinion – Claims 1-7, 10-14, 18, and 21-30 of the ’717 Patent
`Are Not Patentable Over The Prior Art
`33. Based on the considerations identified above, it is my opinion that: (i)
`
`Claims 1-7, 10-14, 18, 22, 24-30 of the ’717 Patent are each obvious under 35
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`U.S.C. § 103 based on the combined teachings of WO 99/49680 to Whitley
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`(“Whitley”) and U.S. Patent No. 6,900,737 to Ardalan et al. (“Ardalan”); (ii) Claim
`
`21 is obvious based on the combined teachings of Whitley, Ardalan and WO
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`95/05609 (“Eldredge”); (iii) Claim 23 is obvious based on the combined teachings
`
`of Whitley, Ardalan, and WO 00/17021 (“Van Bergen”).
`
`34.
`
` The bases for my opinion are set forth in Section VII, below.
`
`IV. OVERVIEW OF THE ’717 PATENT
`A. Background / Admitted Prior Art
`35. The ’717 Patent is purportedly directed to a “programmable wireless
`
`communication apparatus” which can, among other things, “convey information
`
`from remotely located devices such as vending machines.” Ex. 1001 at col. 1:30-
`
`31; 36-41.
`
`36. The specification concedes that many of the
`
`features of the ’717 Patent can be found in a prior art
`
`application, PCT/GB98/02715 (published as WO 99/13629)
`
`(“WO ’629”) (Ex. 1002). The specification states that WO ’629 discloses the same
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`“Hotlink Communicator” of the ’717 Patent (see FIG. 1 of WO ’629 reproduced
`
`here), that the communicator has “a programmable identity module such as a SIM
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`card” and uses “the GSM telecommunications standard,” and that the
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`communicator is programmable by another mobile phone to be able to dial to “the
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`number of any mobile or fixed telephone to which the Hotlink communicator … is
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`to be linked.” Ex. 1001 at col. 1:45-52.
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`37. The ’717 Patent describes that the prior art utilized “known methods
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`of communication between the mobile phone and Hotlink communicator for the
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`purpose of programming,” including “the obvious choice of data calls such as the
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`Short Message Service in the GSM telecommunications standard.” Ex. 1001 at col.
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`1:52-56 (emphasis added).
`
`B. Object of the Purported Invention
`38.
`In its “Objects of the Invention,” the ’717 Patent states that it seeks to
`
`provide a communicator that “can be remotely programmed by any mobile phone
`
`or IP device[,]” for example, “via a terminal-to-terminal network based data call
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`such as SMS or GPRS packet data communication” to which it is linked. Ex. 1001
`
`at col. 4:13-23. This is functionality it admits is found in the prior art WO ’629
`
`application. Ex. 1001 at col. 1:46-56.
`
`39. The ’717 Patent lists as another object a communicator that will
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`“permit only transmissions comprising a coded number, which determines the
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`authenticity of the message” to program the device. Ex. 1001 at col. 4:45-50.
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`C. Description of Embodiments
`40. Turning to its “preferred embodiment,” FIG. 1 shows telephone
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`circuit 10 and SMS processing means 60 “[f]or the purposes of programming the
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`IP address or telephone number of the fixed or
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`mobile telephone to which the communicator is
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`linked.” Ex. 1001 at col. 8:42-56. SMS processing
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`means 60 “communicates with an authentication
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`means 90, which in turn is able to store numbers into
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`a permitted callers list 110.” Ex. 1001 at col. 8:56-
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`58. FIG. 1 is the entirety of the hardware disclosed.
`
`41. The ’717 Patent states that the communicator may be pre-programmed
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`“with the number it can call which comprises a unique code” (Ex. 1001 at col.
`
`9:22-25) – which informs the meaning of “code” in the ’717 Patent as any
`
`alphanumeric sequence of characters.
`
`42. The ’717 Patent further states that “only authenticated callers [may]
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`change the telephone number or IP address of a fixed or mobile telephone or
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`network device to which the programmable communicator is to be linked.” Ex.
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`1001 at col. 9:35-37.
`
`43.
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`In the disclosed embodiment, this is done “in GSM using an SMS
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`message” (Ex. 1001 at col. 9:37-43), where a “remote transmitting device includes
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`the PUK code of the receiving programmable communicator in its SMS
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`transmission as well as a telephone number to which the programmable
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`communicator is to be linked.” Ex. 1001 at col. 9:46-51.
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`44. Examples of such a message are
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`shown in the Table reproduced here (Ex.
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`1001 at col. 10:15-22). The processing means of the communicator then
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`determines whether the PUK code is correct and, if so, stores the transmitted
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`number. Ex. 1001 at col. 9:52-54.
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`45.
`
`In its purported monitoring role, the ’717 Patent states that its
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`programmable interface “may be attached to all manner of sensor devices for the
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`purpose of relaying data … either automatically or in response to a request for
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`information from a remote device.” Ex. 1001 at col. 9:2-6.
`
`V.
`
`PROSECUTION HISTORY OF THE ’717 PATENT
`46. The Challenged Claims arise from Claims 1-26 of Application No.
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`13/934,763 (Ex. 1003; “the ’763 Application”), which was filed on July 3, 2013 as
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`a continuation of five previous applications, as graphically depicted in Appendix
`
`A.
`
`47. On July 12, 2013, Applicant filed terminal disclaimers in view of four
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`ancestors (the ’197 and ’010 Patents, U.S. Patent No. 8,542,111 (Ex. 1014) and
`
`Application No. 13/328,095 (Ex. 1011)). Ex. 1003 at 186-89; see also App. A.
`
`48. On October 9, 2013, Applicant amended Claim 1 in response to the
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`Examiner’s indefiniteness rejection (Ex. 1003 at 124-25) as follows:
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`Ex. 1003 at 101.
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`49. On November 8, 2013, Applicant submitted a Supplemental
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`Amendment, which changed the recitation of “configured to send” to “configured
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`to and permitted to send.” Ex. 1003 at 74. Applicants indicated that this change
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`was in response to the Examiner’s request for more clarity. Ex. 1003 at 82.
`
`50. On November 20, 2013, Applicant filed another Supplemental
`
`Amendment removing the “wireless communications circuit” element (Ex. 1003 at
`
`49) in view of the construction of an identical element in related patent
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`infringement lawsuits initiated by M2M on two of the ’717 Patent’s ancestors. Ex.
`
`1023 at 15-17.
`
`51. On December 16, 2013, the Examiner issued a Notice of Allowance
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`(Ex. 1003 at 18), and the ’717 Patent issued on February 11, 2014.
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`52. Applicant also filed five continuation applications from the ’763
`
`Application, as detailed in Appendix A of the Petition, keeping the application
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`chain alive during its pending infringement suits.
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`VI. CLAIM CONSTRUCTION
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`53. As discussed above, I understand that the first step of comparing a
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`claim to a prior art reference is to determine the meaning of the claim elements.
`
`54.
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`I understand that in these types of proceedings before the United
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`States Patent and Trademark Office, a claim receives the “broadest reasonable
`
`interpretation,” or “BRI,” in light of the specification of the patent in which it
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`appears.
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`55.
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`I also understand that such a “broadest reasonable interpretation” is
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`different from, and broader than, that applied in district court litigations.
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`56.
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`I also understand that the meaning of claims terms is viewed through
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`the lens of one of ordinary skill in the art at the time of the invention, and that
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`specific terms of the claims are generally given the ordinary and accustomed
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`meaning the one of skill would ascribe to them.
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`57.
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`I have followed these principles in my analysis below and address the
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`scope of particular claim terms as necessary when they arise. To the extent I do
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`not address a particular term or phrase, I have used what I consider the plain
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`meaning of that term.
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`58. As part of my analysis of the scope of the claims and their constituent
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`terms, I have also reviewed claim construction proposals from Patent Owner and
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`Petitioners in their current dispute (Ex. 1024) and claim construction briefings
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`from an earlier dispute involving two of the ’717 Patent’s ancestors – the ’010 and
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`’197 Patents. (Exs. 1022 and 1023).
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`59. As a general matter, I have read each claim term to have at least the
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`scope which the Patent Owner has asserted in its Infringement Contentions
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`(“M2M’s Contentions”) against Petitioner’s products (Ex. 1025).
`
`60.
`
`I have been asked to provide my opinion as to the proper BRI
`
`constructions of the terms below.
`
`A.
`“A Programmable Interface”
`61. The phrase “a programmable interface” appears in the first element of
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`each challenged independent Claim 1, 24, and 29.
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`62.
`
`I understand that the Petitioner has offered that the broadest
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`reasonable interpretation of the term “a programmable interface” as “an interface
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`that is able to be programmed.”
`
`63.
`
`I agree that “an interface that is able to be programmed” is the proper
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`broadest reasonable interpretation of “a programmable interface” for at least the
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`following reasons, and have used this construction in my analysis below.
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`64. Petitioners’ proposed BRI is similar to the District Court’s
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`construction of the same phrase in the ’010 Patent (Ex. 1023 at 10-12), but
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`eliminates the “direct” programming requirement, which neither side sought (Ex.
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`1024 at 42-55).
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`65. The “programmable interface” is only discussed in cols. 8:65-9:6 of
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`the ’717 Patent, which states that the programmable interface means “may be
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`attached to all manner of sensor devices” to relay data to a remote device.
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`66.
`
`In my opinion, there is no disclosure that the interface be “directly”
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`programmed. Instead, the only “direct” connection identified in the ’717 Patent is
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`between the communicator and technical monitoring devices. See e.g., Ex. 1001 at
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`col. 11:50-58.
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`67. Based on all of the above, it is my opinion that the broadest
`
`reasonable interpretation of “a programmable interface” is “an interface that is able
`
`to be programmed.”
`
`B.
`“Coded Number”
`68. The phrase “coded number” appears as an element in each challenged
`
`independent Claim 1, 24, and 29.
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`69.
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`I understand that the Petitioner has offered that the broadest
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`reasonable interpretation of the term “coded number” as “a designated, unique
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`sequence of characters, where unique means unique within the system the
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`communicator device is used.”
`
`70.
`
`I agree that “a designated, unique sequence of characters, where
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`unique means unique within the system the communicator device is used” is the
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`proper broadest reasonable interpretation of a “coded number” for at least the
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`following reasons, and have used this construction in my analysis below.
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`71. Petitioners’ proposed BRI has an identical first part (“a designated,
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`unique sequence of characters”) to the District Court’s construction of the same
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`phrase in the ’010 Patent (Ex. 1023 at 8-9). But, how to analyze “unique” is
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`unaddressed by that definition. Petitioners’ proposed BRI therefore adds “unique
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`means unique within the system the communicator device is used.”
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`72.
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`In my opinion, without this additional definition, “unique” could be
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`read (if improperly divorced from the intrinsic record) as “unique” within the
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`hardware components of a single communicator (e.g., different components have
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`different serial numbers), or universally unique such that the number would never
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`be used again in any capacity.
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`73.
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`In my opinion, neither extreme is supported. Rather, the examples of
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`“unique code” in the ‘717 Patent are the PUK code of a SIM in a GSM context
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`(Ex. 1001 at col. 9:35-45), or “any similar unique coding” (Ex. 1001 at col. 9:43-
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`45).
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`74. The ’717 Patent also states that a telephone number is a “unique
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`code.” Ex. 1001 at col. 9:24-25,
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`75. Each of these examples is unique within the system it is used, as its
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`purpose is to identify the communicator within that system.
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`76. This usage of “unique” was well-known to one of ordinary skill in the
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`art at the time of the purported invention of the ’717 Patent.
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`77. Based on all of the above, it is my opinion that the broadest
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`reasonable interpretation of “coded number” is “a designated, unique sequence of
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`characters, where unique means unique within the system the communicator device
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`is used.”
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`C.
`“Unique Identifier”
`78. The phrase “unique identifier” appears as an element in each
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`challenged independent Claim 1, 24, and 29.
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`79.
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`I understand that the Petitioner has offered that the broadest
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`reasonable interpretation of the term “unique identifier” as “an identifier unique
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`within the system the communicator device is used.”
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`80.
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`I agree that “an identifier unique within the system the communicator
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`device is used” is the proper broadest reasonable interpretation of a “unique
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`identifier” for at least the following reasons, and have used this construction in my
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`analysis below.
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`81. The term “unique” should have a BRI similar to that of “unique” in
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`the definition of “coded number,” for at least the reasons discussed immediately
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`above with regard to that term.
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`D.
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` “Transmission”
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`82. The term “transmission” appears as an element in each challenged
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`independent Claim 1, 24, and 29.
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`83.
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`I understand that the Petitioner has offered that the broadest
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`reasonable interpretation of the term “transmission” as “a portion of a message.”
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`84.
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`I agree that “a portion of a message” is the proper broadest reasonable
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`interpretation of a “transmission” for at least the following reasons, and have used
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`this construction in my analysis below.
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`85.
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`“Transmission” was not utilized in the ’717 Patent’s first ancestor –
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`the abandoned ’571 Application (Ex. 1006) – it focused on whether “message” had
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`a “coded number.” Ex. 1006 at 124.
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`86. This concept is disclosed by the specifications of the ’717 Patent’s
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`family, which use “message” throughout, including the actions relating to a
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`singular incoming or outgoing “message” in FIGS. 2 and 3 (Ex. 1001 at col. 8:25-
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`31) and the “five SMS messages” in the included table (Ex. 1001 at col. 10:13-22),
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`each of which have both a PUK code and a telephone number.
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`87.
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`“Transmission” replaced “message” in the subsequently filed ’212
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`Application (Ex. 1007), and was used thereafter. The ’717 Patent’s specification
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`does not explicitly set forth the relationship between a “transmission” and
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`“message,” and uses “transmission” only a few times.
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`88. Three are in passing, related to: (i) a “BlueTooth radio transmission”
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`(Ex. 1001 at col. 3:32); (ii) a “packet data transmission” (Ex. 1001 at col. 11:43);
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`and (iii) a “SMS transmission” (Ex. 1001 at col. 9:49). The fourth specifies the use
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`of “a processing means to process coded transmissions and permit only
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`transmissions comprising a coded number, which determines the authenticity of
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`the message, to be allowed to program the number to which the said apparatus be
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`linked.” Ex. 1001 at col. 4:45-50.
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`89.
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`In my opinion, this relation of plural “transmissions” to a singular
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`“message” leads to the conclusion that multiple “transmissions” can make up a
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`“message.”
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`90.
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`In my opinion, this also comports with Claim 1’s recitation that the
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`“one or more wireless transmissions … comprises a General Packet Radio Service
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`(GPRS) or other wireless packet switched data message” (emphasis added).
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`91. Based on all of the above, it is my opinion that the broadest
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`reasonable interpretation of “transmission” is “a portion of a message.”
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`E.
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`The Number and Content of “Transmissions” Falling Within the
`Claim Scope
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`92.
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`Independent Claims 1, 24, and 29 recite the contents of
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`“transmissions” in four different elements. The interrelationship between, and
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`cumulative impact of, these limitations has not been previously construed.
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`93.
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`I understand that the Petitioner has asserted that the ’717 Patent
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`claims read on a series of transmissions where, among other things, a first
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`transmission includes a “coded number” and a second transmission includes a
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`“telephone number or IP address.”
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`94.
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`I agree that that the ’717 Patent claims read on a series of
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`transmissions where, among other things, a first transmission includes a “coded
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`number” and a second transmission includes a “telephone number or IP address”
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`for at least the following reasons, and have used this construction in my analysis
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`below.
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`95. First, the claims recite “a processing module for authenticating one or
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`more wireless transmissions … by determining if at least one transmission
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`contains a coded number” (“element (1)”).
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`96.
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`In my opinion, this requires authentication based only on a
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`transmission with a coded number.
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`97. Second, the claims recite “wherein the programmable communicator
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`device is configured to use a memory to store at least one telephone number or IP
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`address included within at least one of the transmissions …” “(element (2)”).
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`“The transmissions” at the end of this phrase refers back to the “one or more
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`wireless transmissions” of element (1), not the “at least one transmission”
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`containing the coded number. Thus, this element includes within its scope a
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`transmission containing a phone number that is different from the transmission
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`containing the coded number of element (1).
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`98. Third, the claims recite “if the processing module authenticates the at
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`least one of the transmissions including the at least one telephone number or IP
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`address and the coded number” (“element (3)”). This element specifies “the at
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`least one of the transmissions including” t