Paper No. ________
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC.,
`and RPX CORP.,
`Petitioner
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`v.
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`M2M SOLUTIONS LLC
`Patent Owner
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`
`
`Case IPR2015-01823
`Patent 8,648,717 B2
`_______________
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`EXPERT DECLARATION OF JOEL R. WILLIAMS
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`4849-5831-9665.2
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`1
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`M2M
`Ex. 2011
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC.,
`and RPX CORP.,
`Petitioner
`
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`
`
`
`Case IPR2015-01823
`Patent 8,648,717 B2
`_______________
`
`
`
`EXPERT DECLARATION OF JOEL R. WILLIAMS
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`
`
`
`
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`4849-5831-9665.2
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`M2M
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`TABLE OF CONTENTS
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`QUALIFICATIONS. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1
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`I.
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`II. MATERIALS RELIED ON. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3
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`III. BACKGROUND. . . . . . . . . . . . . . . . . . .. . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
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`IV. APPLICABLE LEGAL STANDARDS. . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
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`V. CLAIM CONSTRUCTION IN RELATED DISTRICT
`COURT PROCEEDINGS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
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`VI. GROUNDS INSTITUTED BY THE BOARD. . . . . . . . . . . . . . . . . . . . . .10
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`VII. SUMMARY OF OPINIONS FOR WHY PETITIONER
`HAS FAILED TO DEMONSTRATE THAT ANY OF
`CLAIMS 1, 3, 5, 6, 10-13, 15-24, OR 29 ARE OBVIOUS
`UNDER 35 U.S.C. § 103. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .11
`
`
`VIII. DETAILED OPINIONS FOR WHY PETITIONER HAS
`FAILED TO DEMONSTRATE THAT ANY OF CLAIMS
`1, 3, 5, 6, 10-13, 15-24, OR 29 ARE OBVIOUS UNDER
`35 U.S.C. § 103. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
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`A. Whitley In View Of The SIM Specification Fails
`Either To Disclose All The Limitations Of Claim
`Element 1(d) Or To Render That Claim Element
`Obvious As Alleged In Ground 1. . . . . . . . . . . . . . . . . . . . . . . . . . . .12
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`
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`1.
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`2.
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`The SIM Specification . . . . . . . . . . . . . . . . . . . . . . . . . 15
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`Overview Of The SIM Specification And The
`Related SAT Specification Prior Art References. . . . . . . . . 15
`
`a.
`
`b.
`
`Overview Of Petitioner’s Detailed Analysis For
`How The SIM Specification Purportedly Satisfies
`The Limitations Of Claim Element 1(d). . . . . . . . . . . . . . . . 21
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`The SAT Specification . . . . . . . . . . . . . . . . . . . . . . . . . 19
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`3.
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`Reasons Why Petitioner’s Detailed Analysis Of
`Claim Element 1(d) Must Fail For Being Premised
`Upon Mischaracterizations Of The Disclosures And
`Teachings Of The SIM Specification. . . . . . . . . . . . . . . . . . 23
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`a.
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`b.
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`c.
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`d.
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`e.
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`The SIM Specification Fails To Teach That
`The FDN Phonebook Is An Outbound
`Restrictive Calling List. . . . . . . . . . . . . . . . . . . . . . . . 24
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`The SIM Specification Fails To Teach That
`Wireless “SMS-PP data download” Messages
`Are Sent Over A GPRS Network,
`And In Any Event It Is Unproven That SMS
`Messages Sent Over GPRS Would Be Packet
`Switched Data Messages. . . . . . . . . . . . . . . . . . . . . . . 26
`
`The SIM Specification Fails To Teach That
`Any Type Of APDU Command Would Ever
`Be Transmitted In A Wireless “SMS-PP
`Data Download” Message. . . . . . . . . . . . . . . . . . . . . .31
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`The SIM Specification Fails To Teach That
`The SIM OS Identified By Petitioner As The
`“Processing Module” Would Ever Even
`Receive Wireless “SMS-PP Data Download”
`Message Transmissions. . . . . . . . . . . . . . . . . . . . . . . .34
`
`The SIM Specification Fails To Teach That
`The SIM OS Identified By Petitioner As The
`“Processing Module” Is Capable Of
`Authenticating Or Otherwise Processing
`The Content Of The Data Payload Originating
`In An “SMS-PP Data Download” Message
`Transmission. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .36
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`f.
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`Petitioner Has Not Provided An Adequate
`Rationale To Combine Whitley With The SIM
`Specification. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38
`
`B. Whitley In View Of The SIM Specification Fails
`Either To Disclose All The Limitations of Claim
`Element 24(d) Or to Render That Claim Element
`Obvious As Alleged In Ground 1. . . . . . . . . . . . . . . . . . . . . . . . . . . . .40
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`C. Whitley In View Of The SIM Specification Fails
`Either To Disclose All The Limitations of Claim
`Element 29(d) Or to Render That Claim Element
`Obvious As Alleged In Ground 1. . . . . . . . . . . . . . . . . . . . . . . . . . . . .41
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`IX. CONCLUSION. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .42
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`iii
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`4
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`M2M
`Ex. 2011
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`1.
`
`I, Joel R. Williams, resident at 1240 Mckendrie Street, San Jose, CA,
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`hereby declare as follows:
`
`2.
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`I have been retained by Foley & Lardner LLP to provide my opinion
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`concerning the validity of U.S. Pat. No. 8,648,717 (the “717 patent”) in these
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`proceedings instituted by the Board on a Petition for Inter Partes Review, Case
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`No. IPR2015-01823. I am being compensated for my time at the rate of $450/hour
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`in connection with preparing this Declaration. I have no stake in the outcome of
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`these IPR proceedings, and my compensation does not depend in any way on the
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`outcome of the Petition.
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`3.
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`I make this Declaration based upon my personal knowledge. I am
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`over the age of 21 and competent to make this Declaration.
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`I.
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`QUALIFICATIONS
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`4.
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`I am qualified by education and experience to testify as an expert in
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`the field of telecommunications. A copy of my curriculum vitae, detailing my
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`education, experience, and publications in the field of telecommunications is
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`attached as Exhibit A. Additionally, I provide the following overview of my
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`background as it pertains to my qualifications for providing expert testimony in
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`this matter.
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`5.
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`I completed my undergraduate studies at the Ohio State University,
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`where I received a Bachelor of Science degree in Computer Science in 1978.
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`6.
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`I have worked for more than 38 years in the field of specification,
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`design and development of computer systems for communications. I have focused
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`on three primary disciplines: (1) wireless and wired networking; (2) operating
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`systems; and (3) telecommunications.
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`7.
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`I worked for Bell Telephone Laboratories from 1970 to 1978 as an
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`Associate Member of Technical Staff, and for Vidar Division of TRW from 1978
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`to 1982 as supervisor of software engineering responsible for implementation of
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`telephone switching and transmission equipment.
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`8.
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`Since 1982, I have been working as an independent engineering
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`consultant. I specialize in the specification, review, design and implementation of
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`networking, telecommunications and Linux computer systems. This work has
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`included the following: (1) requirements definition; (2) systems specification and
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`design; (3) product development and management; (4) product analysis and
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`recommendation; and (5) new product introduction and support.
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`9.
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`Past consulting assignments addressing subject matter of relevance to
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`this case include:
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`• Sensity – security and authentication of wireless devices (2015)
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`• Cypress Semiconductors / Android - software development (2006
`- 2007)
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`• T-Mobile – Integration of GSM Cellular and Wi-Fi and
`authentication. (2005- 2007)
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`• Wi-Fi Alliance – Principal Engineer – certification of Wi-Fi
`products (2002-2004)
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`• Cloudshield – Network security (2002)
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`• Space Systems Loral - Wireless networking (satellite) — (1998‒
`2001);
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`• Stanford Telecom - Wireless networking (terrestrial) — (1995‒
`1997);
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`• Halfdome Systems - Cellular/IP networking equipment (1999–
`2000);
`
`10.
`
`I have been an active contributor to various standards and industry
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`organizations, including the Wi-Fi Alliance supporting 802.11 wireless
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`networking, the DSL Forum and DAVIC for multimedia distribution.
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`11.
`
`I am the inventor or co-inventor on several patents, including two
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`related to wireless broadband inventions.
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`II. MATERIALS RELIED UPON
`In forming my opinions herein, the materials that I have relied upon
`12.
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`have included the ‘717 patent claims and specification, the ‘717 prosecution
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`history, the Petition for Inter Partes Review and its accompanying exhibits, the
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`Board’s Decision on Institution, and any additional documents cited in this
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`Declaration that were not previously exhibits made of record in these IPR
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`proceedings.
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`13.
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`In addition, I reviewed portions of numerous other materials to
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`confirm my understanding, including:
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`•
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`•
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`•
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`•
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`Mobile Application Development with SMS and SIM Toolkit, 2002,
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`ISBN 0-07-137540-6, Scott Guthery, Mary J Cronin
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`Mobile Handset Design 2010, ISBN 978-0-470-82467, Sajal Kumar
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`Das
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`Computer Networks, 1981, ISBN 0-13-165183-8, Andrew S.
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`Tanenbaum
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`3GPP 43.019 V5.5.0, SIM API for Java Card
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`III. BACKGROUND
`I understand the claims currently under review in these IPR
`14.
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`proceedings are claims 1, 3, 5, 6, 10-13, 15-24, and 29 of the ’717 patent.
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`15. The ‘717 patent is directed to wireless modules and related devices
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`designed and intended for use in machine-to-machine communications. These
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`machine-to-machine communications encompass a variety of applications in which
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`one machine is able to remotely monitor a second machine in a relatively
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`autonomous fashion by communicating with or through a wireless module that is
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`embedded in or otherwise linked to that second machine. For example, machine-to-
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`machine applications are prevalent in the fields of automated meter reading, asset
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`tracking and fleet management, automotive telematics, commercial and residential
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`security systems, wireless telemedicine and healthcare devices, industrial
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`automation and controls, remote information displays and digital signage, and the
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`remote control of some consumer devices and appliances, point of sale payment
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`systems, vending machines, kiosks, and ATM and banking machines.
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`IV. APPLICABLE LEGAL STANDARDS
`I understand that anticipation of a claim under 35 U.S.C. § 102
`16.
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`requires that every element of a claim is disclosed expressly or inherently in a
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`single prior art reference, arranged as in the claim.
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`17.
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`I understand that obviousness under 35 U.S.C. § 103 must be analyzed
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`from the perspective of a person of ordinary skill in the relevant art, at the time the
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`invention was made. In analyzing obviousness, I understand that it is important to
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`understand the scope of the claims, the level of skill in the relevant art, the scope
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`and content of the prior art, the differences between the prior art and the claims,
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`and any secondary considerations..
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`18.
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`I understand that the following principles may be considered when
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`determining whether a prior art reference might have been combined with other
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`prior art or other information known to a person having ordinary skill in the art:
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`a. A combination of familiar elements according to known methods is
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`likely to be obvious if it yields predictable results;
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`b. The substitution of one known element for another is likely to be
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`obvious if it yields predictable results;
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`c. The use of a known technique to improve similar items or methods in
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`the same way is likely to be obvious if it yields predictable results;
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`d. The application of a known technique to a prior art reference that is
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`ready for improvement, to yield predictable results;
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`e. Any need or problem known in the field and addressed by the
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`reference can provide a reason for combining the elements in the
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`manner claimed;
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`f. A person of ordinary skill often will be able to fit the teachings of
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`multiple references together like a puzzle; and
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`g. The proper analysis of obviousness requires a determination of
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`whether a person of ordinary skill in the art would have a “reasonable
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`expectation of success” – not “absolute predictability” of success – in
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`achieving the claimed invention by combining prior art references.
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`19.
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`I understand that assessing which prior art references to combine and
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`how they may be combined to match the asserted claim may not be based on
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`hindsight reconstruction or ex-post reasoning. Hindsight reconstruction is using
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`the patent itself as a road map for recreating the invention. In assessing
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`obviousness, only what was known before the invention was made can be
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`considered. I also understand that one important guard against such hindsight
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`reconstruction is a determination whether a person having ordinary skill in the art
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`would have been motivated, taught, or suggested to combine the relevant teachings
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`of the prior art to duplicate the patent claims at the time of the patented invention.
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`20.
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`I understand that determining the scope and content of the prior art
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`requires consideration of whether the prior art was reasonably relevant to the
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`particular problem the inventors faced in making the invention covered by the
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`patent claims.
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`21.
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`I understand that determining whether there are any material
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`differences between the scope and content of the prior art and each challenged
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`claim of the patent under review requires consideration of the claimed invention as
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`a whole to determine whether or not it would have been obvious in light of the
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`prior art. If the prior art discloses all the steps or elements in separate references,
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`consideration should be given to whether it would have been obvious to combine
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`those references. I understand that a claim is not obvious merely because all of the
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`steps or elements of that claim already existed.
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`22.
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`I also understand that when prior art teaches away from combining
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`prior art references, the discovery of a successful way to combine them is less
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`likely to be obvious. Prior art teaches away from an invention when a person or
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`ordinary skill would be discouraged or diverted from following the path leading to
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`the invention because of the prior art.
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`23.
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`I understand that in order to rely on inherency in an obviousness
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`analysis for establishing the existence of a claim limitation in the prior art, the
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`missing descriptive material must necessarily be present in the prior art and not
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`merely probably or possibly present. Cf. (Ex. 1013, ¶ 40).
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`24.
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`I understand in order to incorporate material by reference, the host
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`document must identify with detailed particularity what specific material it
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`incorporates and clearly indicate where that material is found in the various
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`underlying source documents.
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`25.
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`I also understand that the earliest patent application filing leading to
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`the ’717 patent was made on May 23, 2000. I have therefore analyzed obviousness
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`as of that day or somewhat before , understanding that as time passes, the
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`knowledge of a person of ordinary skill in the art will increase.
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`26.
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`I have been informed by Patent Owner’s counsel that Patent Owner
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`has previously advanced the following definition of a person of ordinary skill in
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`the art for a related patent in a district court litigation as: “the level of ordinary skill
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`in the art would be met by a person with a bachelor’s degree in computer science
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`or electrical engineering with at least two years of software programming
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`experience and at least two years of industry experience working with wireless
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`communications networks and/or Wide Area Networks (“WANs”).” I agree with
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`this definition and have applied it in my opinions below relating to patentability.
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`27.
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`I understand that Petitioner is presently advancing the following
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`definition of a person of ordinary skill in the art: “one of ordinary skill in the art at
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`the time of the filing date of the patent would have had a least an undergraduate
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`degree in Electrical Engineering and three years of experience working the
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`development of wireless subscriber terminals systems or components, or an
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`equivalent combination of education and experience in related fields.” I believe
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`that if I applied that definition in my analysis below rather than Patent Owner’s
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`definition, it would not result in any changes to the substance of my opinions.
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`28.
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`I believe that I would qualify as a person of at least ordinary skill in
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`the art circa 2000 under both the Petitioner’s and the Patent Owner’s definitions of
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`a person or ordinary skill in the art.
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`29. Regarding the scope of the claims, I understand that claims in an inter
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`partes review proceeding are given their broadest reasonable construction that is
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`consistent with the patent specification.
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`V. CLAIM CONSTRUCTION IN RELATED DISTRICT COURT
`PROCEEDINGS
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`30.
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`I understand the parties previously agreed that the outbound calling
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`list as recited in claim elements 1(d), 24(d), and 29(d) of the ’717 patent is required
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`to be restrictive in nature. In other words, the telephone numbers or IP addresses
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`stored in the list are those to which the programmable communicator is limited to
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`sending one or more types of outbound transmissions.
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`31.
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`I have been informed by Patent Owner’s counsel that in the ’717
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`patent litigations co-pending in federal court, Petitioner’s currently proposed claim
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`construction for the outbound calling list limitation reflects and acknowledges the
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`requirement that it be restrictive in nature. Indeed, my understanding is that
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`Petitioner is offering the following construction for the outbound calling list recited
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`in claim elements 1(d), 24(d), and 29(d): “the exclusive set of numbers to which
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`the programmable communicator is limited to sending any outgoing wireless
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`transmissions.” See (Joint Claim Construction Statement filed on August 14,
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`2015) (Ex. 2010, p. 6.)
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`VI. GROUNDS INSTITUTED BY THE BOARD
`32. The Board determined that the “record before us establishes a
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`reasonable likelihood that Petitioner would prevail on its Ground 1 assertion that
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`the subject matter of claim 1 would have been obvious in view of Whitley (Ex.
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`1003) and the SIM Specification (Ex. 1004). (Decision, p. 23.) Further, the Board
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`determined “that the record before us establishes a reasonable likelihood that
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`Petitioner would prevail on its Ground 1 assertion that claims 24 and 29 would
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`have been obvious in view of Whitley and the SIM Specification. (Id.)
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`33. The Board determined “that the record before us establishes a
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`reasonable likelihood that Petitioner would prevail on its Ground 1 assertion that
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`claims 3, 5, 6, 10-13, 15, 18, 22, and 23 would have been obvious in view of
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`Whitley and the SIM Specification. (Id., 24.)
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`34. The Board determined “that the record before us establishes a
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`reasonable likelihood that Petitioner would prevail on its Ground 3 assertion that
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`the subject matter of claims 16, 17, 19, and 20 would have been obvious in view of
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`Whitley, the SIM Specification, and Kail. (Id., 30.)
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`35. The Board determined “that the record before us establishes a
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`reasonable likelihood that Petitioner would prevail on its Ground 4 assertion that
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`the subject matter of claim 21 would have been obvious in view of Whitley, the
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`SIM Specification, and Eldredge. (Id., 31.)
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`VII. SUMMARY OF OPINIONS FOR WHY PETITIONER HAS FAILED
`TO DEMONSTRATE THAT ANY OF CLAIMS 1, 3, 5, 6, 10-13, 15-24,
`OR 29 ARE OBVIOUS UNDER 35 U.S.C. §103
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`36. For the reasons detailed more fully below, it is my opinion that
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`Petitioner has failed to demonstrate that any of Claims 1, 3, 5, 6, 10-13, 15-24, or
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`29 of the ‘717 patent are invalid for obviousness under 35 U.S.C. §103 because
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`Petitioner’s Ground 1 arguments do not establish that Whitley in view of the SIM
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`Specification would meet all the limitations of claim elements 1(d), 24(d), or 29(d)
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`from independent Claims 1, 24, and 29, or render those claim elements obvious.
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`Because the independent claims have not been shown by Petitioner to be invalid,
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`the dependent claims 3, 5, 6, 10-13, and 15-24 are likewise not shown invalid
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`because of their dependency.
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`VIII. DETAILED OPINIONS FOR WHY PETITIONER HAS FAILED TO
`DEMONSTRATE THAT ANY OF CLAIMS 1, 3, 5, 6, 10-13, 15-24, OR
`29 ARE OBVIOUS UNDER 35 U.S.C. §103
`
`37. For at least the reasons discussed below, it is my opinion that
`
`Petitioner’s Ground 1 arguments fail to demonstrate that Whitley in view of the
`
`SIM Specification would meet all the limitations of claim elements 1(d), 24(d), or
`
`29(d), or render those claim elements obvious.
`
`A. Whitley In View Of The SIM Specification Fails Either To
`Disclose All The Limitations Of Claim Element 1(d) Or To
`Render That Claim Element Obvious As Alleged In Ground 1
`is
`“wherein the programmable communicator device
`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
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`and permitted to send outgoing wireless transmissions;”
`(element 1(d))
`
`38.
`
`In my opinion, claim element 1(d) recites at least the following two
`
`principal requirements.
`
`39.
`
`First, I have been asked to assume by Patent Owner’s counsel that
`
`claim element 1(d) requires that the claimed programmable communicator be
`
`configured to store in memory a list of telephone numbers or IP addresses that
`
`functions as an outbound restrictive calling list.
`
`40.
`
`Patent Owner’s counsel has informed me that in part this requirement
`
`arises directly from the claim language which expressly provides that the telephone
`
`numbers or IP addresses stored in the list are those to which the programmable
`
`communicator is “permitted to” send one or more types of outgoing wireless
`
`transmissions.
`
`41.
`
`I understand that Petitioner has argued to the Board that the FDN
`
`phonebook from the SIM Specification allegedly satisfies the outbound calling list
`
`limitations of claim element 1(d), and in my opinion Petitioner’s arguments
`
`implicitly acknowledge that it needs to be restrictive in nature. See, e.g., (Pet.
`
`32)(citing Ex. 1013, ¶ 78) (arguing that the FDN phonebook is subject to “an
`
`electronic lock that makes it possible to place a bar on calling any numbers other
`
`than those programmed in the SIM.”). See also (Ex. 1013, ¶ 93).
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`42.
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`In my opinion, such an acknowledgement is fully consistent with the
`
`proposed construction that Petitioner is offering in co-pending district court
`
`litigations. (See, supra, ¶ 31).
`
`43.
`
`Second, it is my opinion that claim element 1(d) requires that the
`
`claimed programmable communicator be able to update the outbound restrictive
`
`calling list with a new telephone number or IP address if its “processing module” is
`
`able to successfully perform “coded number” authentication on a single incoming
`
`wireless transmission that includes both the “coded number” and the new telephone
`
`number or IP address intended for storing into the list. When this element is read in
`
`conjunction with claim elements 1(c) and 1(f), it is clear that claim element 1(d)
`
`requires that this incoming wireless transmission that is subject to authentication
`
`needs to be “wireless packet switched data message” transmission in particular. I
`
`understand that as a matter of convenience solely for purposes of the present Patent
`
`Owner’s Response, Patent Owner is addressing the possibility raised by the Board
`
`that the claimed single transmission could instead be “one or more transmissions”
`
`and has requested that my analysis also contemplate that approach. Under that
`
`approach, the coded number and the new telephone number or IP address can be in
`
`one or more “wireless packet switched data message transmissions.”
`
`44.
`
`It is my understanding that the Board recognized that Petitioner is not
`
`arguing that Whitley satisfies the above-referenced requirements of claim element
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`1(d). (Decision, p. 17-19.) Indeed, it is my understanding that Petitioner
`
`acknowledges that “Whitley does not explicitly disclose how the gateway 20
`
`updates or stores the telephone number or IP addresses that it is [allegedly]
`
`configured to and permitted to send outgoing wireless transmissions.” (Pet., p. 32.)
`
`Further, Petitioner concedes that “Whitley does not expressly disclose
`
`authenticating wireless transmissions by determining if at least one of the wireless
`
`transmissions contains a coded number.” (Id., p. 25).
`
`45.
`
`It is my understanding that Petitioner argues it would have been
`
`obvious to combine Whitley with the Specification Of The Subscriber Identity
`
`Module-Mobile Equipment (SIM-ME) Interface (GSM 11.11 version 7.4.0 Release
`
`1998) ( “SIM Specification”) (Ex. 1004) to meet these limitations recited in claim
`
`element 1(d).
`
`46.
`
`It is my opinion, as I describe in greater detail below, that Petitioner is
`
`relying upon the particular disclosures in the SIM Specification pertaining to its
`
`FDN phonebook and to so-called “SMS-PP data download” functionality to
`
`ostensibly meet the requirements of the claim language.
`
`47.
`
`It is my opinion that Petitioner mischaracterizes certain of the relevant
`
`disclosures and teachings of the SIM Specification as discussed below. Therefore,
`
`in my opinion, Petitioner’s reliance is misplaced because it is premised upon
`
`mischaracterizations of the disclosures and teachings of the SIM Specification.
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`1.
`
`Overview Of The SIM Specification And The Related SAT
`Specification Prior Art References
`
`a.
`
`The SIM Specification
`
`48. The SIM Specification is an industry standard for GSM cellular
`
`networks that specifies a particular type of interface to be used for connecting a
`
`SIM card (the “SIM”) to the mobile equipment (the “ME”) (e.g., a telephone
`
`handset, wireless modem, etc.) in which the SIM is typically being hosted. As
`
`such, the SIM Specification “defines the interface between the Subscriber Identity
`
`Module (SIM) and the Mobile Equipment (ME) for use during the network phase
`
`of GSM as well as those aspects of the internal organization of the SIM which are
`
`related to the network operation phase.” (Ex. 1004, p. 9.)
`
`49. The SIM-ME interface defined in the SIM Specification that is used
`
`for communications between the SIM and the ME is a hard wire serial interface.
`
`(Ex. 1004 at 15-21.) In particular, the SIM-ME interface is required to comply
`
`with the ISO/IEC 7816-3 standard which defines an interface that supports bi-
`
`directional half-duplex serial transmissions. (See Ex. 2012.) These would not
`
`qualify as the wireless transmission required by Claim 1.
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`50. As to the “internal organization of the SIM,” the SIM Specification
`
`defines a variety of standardized data files called “Elementary Files” that can be
`
`stored in memory on the SIM. (Ex. 1004, p. 48-95.) One of these designated
`
`Elementary Files is used for storing a fixed dialing number (“FDN”) phonebook of
`
`telephone numbers to which outbound calls can potentially be placed by the ME.
`
`(Id., p. 83). Under the SIM Specification, inclusion of an FDN phonebook on the
`
`SIM card is purely optional and thus a SIM card can be considered fully compliant
`
`with the SIM Specification whether or not it contains an FDN phonebook. (Id., pp.
`
`49, 83.)
`
`51. The SIM Specification teaches that the ME operating system (the
`
`“ME OS”) is able to control the SIM operating system (the “SIM OS”) by issuing a
`
`standardized set of Application Protocol Data Unit (“APDU”) commands. (Ex.
`
`1004, pp. 34-45 (Section 9).) These commands are sent over the SIM-ME
`
`interface in the form of hard wire serial APDU command message transmissions.
`
`(Ex 1004, p. 15 (Section 5), 35-37.) One of these APDU commands is the
`
`UPDATE RECORD command which can be used for providing a new telephone
`
`number for use in updating the FDN phonebook. (Id., pp. 30, 41.) The updating of
`
`an FDN phonebook is protected by a CHV2 access condition, which means that the
`
`ME OS would need to provide the SIM OS with the correct CHV2 “coded
`
`number” for authentication purposes during the current communications session as
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` prerequisite to the SIM OS being able to execute the relevant UPDATE
`
`RECORD command. (Id., pp. 27-28, 83, 98.) The ME OS does not and cannot
`
`provide this CHV2 “coded number” to the SIM OS for authentication purposes as
`
`part of the UPDATE RECORD command itself. Rather, under normal
`
`circumstances, the ME OS will use a separate and distinct APDU command
`
`designated as the VERIFY CHV command to provide the CHV2 “coded number”
`
`to the SIM OS. (Id., pp. 31, 42.)1
`
`52. The SIM Specification makes reference to the “SMS-PP data
`
`download” functionality which provides a mechanism through which a remote
`
`network device can send a specially formatted type of SMS message to the ME
`
`that can be used to cause the updating of certain Elementary Files residing on the
`
`
`1 In addition, under special circumstances where a user has forgotten the correct
`
`CHV2 “coded number,” or where access has been blocked due to several failed
`
`access attempts using the wrong CHV2, the ME OS can send another type of
`
`APDU command to the SIM OS designated as the UNBLOCK CHV command.
`
`(Ex. 1004, pp. 33, 43). Within the UNBLOCK CHV command, the ME OS will
`
`provide the SIM OS with a PUK2 “coded number” which, if successfully
`
`authenticated by the SIM OS, will allow the ME OS to then reset the old CHV2
`
`“coded number” to a new number. (Id.)
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`SIM, including the FDN phonebook. (Ex. 1004, Appendix E, pp. 120-26, 131).
`
`This “SMS-PP data download” functionality is not a feature of the SIM
`
`Specification itself, but rather it is part of a related industry standard known as the
`
`Specification Of The SIM Application Toolkit for The Subscriber Identity Module
`
`– Mobile Equipment (SIM-ME) Interface (GSM 11.14 version 7.3.0 Release 1998)
`
`(hereinafter, the “SAT Specification”) (Ex. 1014). Under the SIM Specification,
`
`support for any aspect of the SAT Specification (including “SMS-PP data
`
`download” functionality) is purely optional, and thus a SIM card can be considered
`
`fully compliant with the SIM Specification whether or not it includes any of the
`
`SIM Application Toolkit features. (Ex. 1004, p. 108).
`
`
`
`
`
`b.
`
`The SAT Specification
`
`53. The SAT Specification contemplates the possibility that a SIM
`
`application developer might want to download a customized software application
`
`onto a SIM (a “SIM application”), and it standardizes a series of modifications that
`
`would need to be made to the SIM-ME interface, the S
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