U.S. Patent No. 8,648,717
`Supplemental Brief re: Limitation of
`Independent Claims 1, 24 and 29
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC.
`AND RPX CORP.
`
`Petitioners,
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`
`IPR2015-01823 (Patent No. 8,648,717 B2)
`
`
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`
`
`Supplemental Brief re: Limitation of
`Independent Claims 1, 24 and 29
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC.
`AND RPX CORP.
`
`Petitioners,
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`
`IPR2015-01823 (Patent No. 8,648,717 B2)
`
`
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`
`
`
`U.S. Patent No. 8,648,717
`Supplemental Brief re: Limitation of
`Independent Claims 1, 24 and 29
`
`Introduction
`
`
`
`I.
`
`On December 15, 2015, the Patent Trial and Appeal Board issued an Order
`
`requesting the parties submit additional briefing on the issue of whether “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 code number” should
`
`be interpreted as a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6 and
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), and if so, how
`
`the limitation should be interpreted. Given a prior District Court ruling discussed
`
`below on a related patent where defendants, including petitioner, lost an argument
`
`that a similarly worded processing module claim limitation is a means plus
`
`function limitation, petitioner submits that the Board should act consistently with
`
`the district court and interpret this claim limitation as a means-plus-function
`
`limitation under 35 U.S.C. § 112, ¶ 6 and Williamson v. Citrix Online, LLC.
`
`Petitioner believes that under the broadest reasonable construction standard, a plain
`
`and ordinary meaning should apply to this claim limitation.
`
`II. Claim Construction
`In In re Cuozzo Speed Tech, LLC, No. 2014-1301, slip op. (Fed. Cir. July 8,
`
`2015), the Federal Circuit confirmed the Patent Trial and Appeal Board’s practice
`
`
`
`1
`
`
`
`U.S. Patent No. 8,648,717
`Supplemental Brief re: Limitation of
`Independent Claims 1, 24 and 29
`
`
`
`of applying the broadest reasonable interpretation standard in inter partes review
`
`proceedings is proper as set forth in 37 C.F.R. § 42.100(b). Under the broadest
`
`reasonable interpretation standard, claim terms are given their broadest reasonable
`
`interpretation in view of the specification to one having ordinary skill in the art at
`
`the time of the invention and without importing limitations into the claims from the
`
`specification. See Manual of Patent Examining Procedure (“MPEP”) § 2111.
`
`In the petition, petitioners proposed that the plain and ordinary meaning be
`
`applied to any claim limitations not specifically discussed in the petition. See
`
`Petition, p. 13 (Section IV.E.). In light of the District Court’s decision, but without
`
`conceding the correctness of that decision, Petitioners respectfully submit that the
`
`plain and ordinary meaning is the proper claim construction for the “processing
`
`module” claim limitation under the broadest reasonable claim construction
`
`standard.
`
`The Federal Circuit’s decision in Williamson v. Citrix held that the
`
`rebuttable presumption against applying 35 U.S.C. 112, ¶6 to non-means claim
`
`terms should be reduced from a “heightened” to an ordinary presumption, and that
`
`the word “module” standing alone may sometimes serve as a “nonce word.” M2M
`
`Solutions LLC v. Sierra Wireless America, Inc., 2015 WL5826816 *3 (D. Del.
`
`2015) (citing Apple Inc. v. Motorola, Inc., 757 F.2d 1286, 1299-1300 (Fed. Cir.
`
`
`
`2
`
`
`
`U.S. Patent No. 8,648,717
`Supplemental Brief re: Limitation of
`Independent Claims 1, 24 and 29
`
`
`
`2014). However, where scrutiny of the entire claim limitation reveals surrounding
`
`claim language that provides a generic term with a sufficient description of its
`
`operation, the presumption against means-plus-function claiming remains intact.
`
`Apple Inc. v. Motorola, Inc., 757 F.2d at 1300.
`
`In a related district court case, M2M, the patent owner, contended (and the
`
`district court agreed) that a similarly worded “processing module” claim limitation
`
`was not governed by 35 U.S.C. 112, ¶6 under Williamson v. Citrix because its
`
`surrounding claim language connoted sufficiently definite structure. M2M
`
`Solutions LLC v. Sierra Wireless America, Inc., 2015 WL5826816 *3. The district
`
`court, applying the narrower Phillips standard of claim construction to that claim
`
`limitation, ultimately construed “processing module” as “components or units of a
`
`computer program.”1
`
`The similarly worded “processing module” claim limitations are presented
`
`below:
`
`Processing module limitation in the ‘717
`patent at issue here
`a processing module for authenticating
`one or more wireless transmissions sent
`from a programming transmitter and
`
`Processing module limitation in the ‘010
`patent at issue in the district court case
`a processing module for authenticating
`an at least one transmission sent from a
`programming transmitter and received
`
`1 Petitioner’s note that there is no explicit written description support in the patent application for the court’s
`construction of “processing module” in the related district court case or for the construction proposed by
`Plaintiff for the processing module that it is “components or units of a computer program.” Accordingly, the
`court’s construction that the processing module is components or units of a computer program should be
`rejected.
`
`
`
`3
`
`
`
`U.S. Patent No. 8,648,717
`Supplemental Brief re: Limitation of
`Independent Claims 1, 24 and 29
`
`
`
`received by the programmable
`communicator device by determining if
`at least one transmission contains a
`coded number
`
`by the programmable communicator
`device, the at least one transmission
`including a coded number and at least
`one telephone number or Internet
`Protocol (IP) address corresponding to
`an at least one monitoring device,
`wherein the processing module
`authenticates the at least one
`transmission by determining if the at
`least one transmission contains the
`coded number, the processing module
`authenticating the at least one
`transmission if the transmission includes
`the coded number
`
`M2M contended that the language surrounding the “processing module” limitation
`
`expressly explains how the “processing module” is able to perform the recited
`
`function of authenticating a received incoming transmission – i.e., “by determining
`
`if the at least one transmission contains the coded number.” Id. The patent owner
`
`argued that the disclosures in prose of a particular manner for how the “processing
`
`module” performs its authenticating function constitute algorithmic structure,
`
`which prevents the invocation of 35 U.S.C. 112, ¶6. Id. Similarly, in the district
`
`court case for the patent-at-issue, Plaintiff rejected Defendant’s proposal that the
`
`“processing module” is subject to 35 U.S.C. 112, ¶6. See Joint Claim Construction
`
`Statement, Case No. 1:14-cv-01102-RGA, Dkt. No. 34 (D. Del. 2015), p. 10.
`
`Here, the “processing module” claim limitation includes the same language
`
`regarding the specific process for performing the authentication function (“by
`4
`
`
`
`
`
`U.S. Patent No. 8,648,717
`Supplemental Brief re: Limitation of
`Independent Claims 1, 24 and 29
`
`
`
`determining if at least one transmission contains a coded number”) that would
`
`constitute the same algorithmic structure, preventing the invocation of 35 U.S.C.
`
`112, ¶6.
`
`The broadest reasonable interpretation of a claim term may be the same as or
`
`broader – but not narrower - than the construction of a term under the Phillips
`
`standard. Facebook, Inc. v. Pragmatus AV LLC, 582 Fed. Appx. 864, 869 (Fed.
`
`Cir. 2014).The Board should act consistently with the district court and invocation
`
`of 35 U.S.C. 112, ¶6 should be rejected.
`
`III. Conclusion
`Under the broadest reasonable construction, the “processing module” claim
`
`limitation should not be construed as a means plus function claim limitation and
`
`the plain and ordinary meaning should apply.
`
`Respectfully submitted,
`
`Dated: January 6, 2016
`
`
`
`By:
`
`
`
`/Jennifer Hayes/
`Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`P.O. Box 60610
`Palo Alto, CA 94306
`Tel. (650) 320-7763
`Fax (650) 320-7701
`
`
`
`
`5
`
`
`
`U.S. Patent No. 8,648,717
`Supplemental Brief re: Limitation of
`Independent Claims 1, 24 and 29
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Supplemental
`
`Brief was served on January 6, 2016 in its entirety by email to the attorneys of
`
`record for the patent as follows:
`
`Jeffrey Costakos
`jcostakos@foley.com
`
`Michelle Moran
`mmoran@foley.com
`
`
`By: /Jennifer Hayes/
`Counsel for Petitioner
`
`6
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
