EXPERT DECLARATION OF DR. KEVIN NEGUS
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`FOR
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`INTER PARTES REVIEW OF U.S. PATENT NO. 8,648,717
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`Sierra Wireless EX 1023 p 1
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`TABLE OF CONTENTS
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`I.  
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`INTRODUCTION AND QUALIFICATIONS ...................................................................3  
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`A.  
`B.  
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`Introduction ..............................................................................................................3  
`Qualifications ...........................................................................................................4  
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`II.  
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`MATERIALS REVIEWED .................................................................................................4  
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`III.  
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`PERSON OF ORDINARY SKILL IN THE ART ...............................................................5  
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`IV.  
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`STANDARDS FOR CLAIM CONSTRUCTION, ANTICIPATION, AND
`OBVIOUSNESS ..................................................................................................................5  
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`V.  
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`THE ‘717 PATENT .............................................................................................................5  
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`VI.  
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`CLAIM CONSTRUCTION .................................................................................................5  
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`VII.  
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`SPECIFIC OPINIONS IN RESPONSE TO PATENT OWNER’S RESPONSE AND
`THE DECLARATION OF JOEL WILLIAMS ...................................................................6  
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`VIII.   CONCLUSION ..................................................................................................................10  
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`Sierra Wireless EX 1023 p 2
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`I.
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`INTRODUCTION AND QUALIFICATIONS
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`A.
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`Introduction
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`1.
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`I, Dr. Kevin Negus, submit this declaration in support of Sierra Wireless America,
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`Inc., Sierra Wireless, Inc. and RPX Corp.’s (“Petitioners”) Petition for Inter Partes Review of
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`United States Patent No. 8,648,717 (“the ‘717 Patent”), owned by M2M Solutions LLC.
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`2.
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`I make this declaration based upon my personal knowledge. I am over the age of
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`21 and am competent to make this declaration.
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`3.
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`The statements herein include my opinions and the bases for those opinions,
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`which relate to the following documents of the pending inter partes review petition:
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`1001 U.S. Patent No. 8,648,717 (“the ‘717 patent”)
`1002 Prosecution History for U.S. Patent No. 8,648,717 (“the ‘717 prosecution
`history”).
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`Int’l Patent Pub. No. WO99/49680 (“Whitley”)
`1003
`1004 Digital cellular telecommunications system, Phase 2+; Specification of the
`Subscriber Identity Module - Mobile Equipment, SIM - ME interface,
`GSM 11.11 version 7.4.0 Release 1999 (“SIM+ME Spec”)
`1007 Digital cellular telecommunications system (Phase 2+); AT command set
`for GSM Mobile Equipment (ME) (GSM 07.07 version 5.8.1 Release
`1996) (“AT Command Set”)
`1009 Digital cellular telecommunications system, Phase 2+; General Packet
`Radio Service (GPRS); Service description; Stage 2 (GSM 03.60 version
`6.3.2 Release 1997) (“GPRS Service Description”)
`1014 Digital cellular telecommunications system, Phase 2+; 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)
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`1015 The Subscriber Identity Module, European Telecommunications
`Standardization and the Information Society, The State of the Art 1995
`(“State of the Art”)
`1017 Digital cellular telecommuncations system (Phase 2+) (GSM); Universal
`Mobile Telecommunications System (UMTS); General Packet Radio
`Service (GPRS); Service description; Stage 2 (3G TS 23.060 version 3.3.0
`Release 1999)
`1018 Excerpts of Mobile Handset Design, Sajal Kumas Das, John Wiley &
`Sons, ISBN 978-0-470-82467
`2011 Expert Declaration of Joel R. Williams, dated May 25, 2016
`2015 3rd Generation Partnership Project; Point-to-Point (PP) Short Message
`Service (SMS) Support on Mobile Radio Interface; 3G TS 24.011 V3.2.0
`(2000-03 Release 1999)
`2016 Excerpts of my deposition in the related ‘010 patent litigation
`2017 My deposition transcript in these IPR proceedings
`2018 Excerpts of my expert report in the related ‘010 patent litigation
`Patent Owner’s Response Pursuant to 37 CFR §42.120, Paper 27
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`4.
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`Although I am being compensated for my time at a rate of $500 per hour in
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`preparing this declaration, the opinions herein are my own, and I have no stake in the outcome of
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`the review proceeding. My compensation does not depend in any way on the outcome of the
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`Petitioner’s petition.
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`B. Qualifications
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`5.
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`See prior declaration (Exhibit 1013).
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`II. MATERIALS REVIEWED
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`6.
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`In forming my opinions, I reviewed the documents referenced above.
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`III.
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`PERSON OF ORDINARY SKILL IN THE ART
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`7.
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`See prior declaration (Exhibit 1013).
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`IV.
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`STANDARDS FOR CLAIM CONSTRUCTION, ANTICIPATION, AND
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`OBVIOUSNESS
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`8.
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`See prior declaration (Exhibit 1013).
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`V.
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`THE ‘717 PATENT
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`9.
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`See prior declaration (Exhibit 1013).
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`VI. CLAIM CONSTRUCTION
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`10.
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`I understand that, in a review proceeding, the claims are to be given their broadest
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`reasonable interpretation consistent with the ‘717 Patent specification, and that claim terms are
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`given their ordinary and customary meaning, as would be understood by one of ordinary skill in
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`the art in the context of the entire disclosure. I also understand that limitations from the
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`specification are not to be read into the claims. The specification, however, can inform a person
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`of ordinary skill in the art as to the broadest reasonable interpretation of the claims.
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`11.
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`Counsel has informed me that the broadest reasonable interpretation for “coded
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`number” is “any code used to authenticate a transmission.”
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`12.
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`Counsel has informed me that the broadest reasonable interpretation for “identity
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`module” is “any device for storing the unique identifier or the coded number, including the SIM
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`card.”
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`13.
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`Counsel has informed me that the broadest reasonable interpretation for
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`“programming transmitter” is “any IP device or mobile phone capable of performing remote
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`programming of a programmable communicator.”
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`14.
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`Counsel has informed me that the remaining claim terms should be accorded their
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`ordinary meaning.
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`15.
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`In the event that one or more of these constructions is changed, I reserve the right
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`to revisit my analysis under the different construction(s).
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`VII. SPECIFIC OPINIONS IN RESPONSE TO PATENT OWNER’S RESPONSE AND
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`THE DECLARATION OF JOEL WILLIAMS
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`16.
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`Patent Owner and Mr. Williams contend that SMS messages sent over GPRS are
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`sent only over Layer 2 channels. See Response, Paper 27, pp. 29-33; Ex. 2011, Williams Decl.,
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`¶¶71-78. I disagree for at least the following reasons.
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`17.
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`As I explained in my deposition, packet switched messages, as used in the ‘717
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`patent, refers to communications at Layer 3 of the network protocol stack. Ex. 2017, 58:12-
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`60:24, 61:2-11, 62:4-12; see also Ex. 2018, ¶¶57-59 and Ex. 2016, 257:1-9. Packet switching is
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`often referred to as routing, which is a Layer 3 networking protocol. Ex. 2016, 257:1-9; Ex.
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`2017, 61:5-11. SMS messages transmitted over the GPRS network are packet-switched data
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`messages because they are transmitted using Layer 3 packet data routing protocols.
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`18.
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`Ex. 2015 (the 3GPP 24.011 Specification), relied on by Patent Owner and Dr.
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`Williams, actually demonstrates that SMS messages sent over GPRS are packet-switched. The
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`3GPP 24.011 explains: “The short message service for GPRS shall be supported by a PDTCH.”
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`Ex. 2015, p. 10; see also Ex. 2015, p. 11. A PDTCH is a packet data traffic channel. A person of
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`ordinary skill in the art would understand that data sent over the PDTCH is packet-switched data.
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`Figure 2.1b, shown in Ex. 2015 on p. 9, illustrates the layer structure of the SGSN and the MS
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`and demonstrates that data is transmitted over layer 3 (the SM-RL relay layer). Section 2.4 on p.
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`11 does not teach that the SMS message is transmitted only at the layer 2 (LLC) layer; instead,
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`Section 2.4 teaches that layer 2 data is transmitted using the LLC layer (layer 2) using the
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`PDTCH (the packet data traffic channel) (layer 1), which a person of ordinary skill in the art
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`would understand requires the use of a packet-switched layer 3. Likewise, Arrow Diagram A5
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`and Arrow Diagram A6 illustrate the transmission and receipt of SMS messages over a GPRS
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`layer and illustrate the data passing over Layer 3 at both the mobile station and on the network
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`side (Ex. 2015, pp. 45-46), demonstrating again to a person of ordinary skill in the art that the
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`SMS message passes through this packet-switched layer 3.
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`19.
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`Ex. 2015 (the 3GPP 24.011 Specification) refers to TS23.060 “[f]or GPRS SMS
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`transfer” “for channel set up and upper layer message flow.” (See Ex. 2015, p. 11, 97.) I have
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`reviewed TS23.060 (Ex. 1017) and this document also confirms my opinion that SMS messages
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`sent over GPRS are packet-switched. See, e.g., Ex. 1017 at p. 17. In particular, TS23.060
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`explains that the common packet domain Core Network used for GPRS over GSM provides
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`packet-switched (PS) services, and that applications based on SMS are supported. Id. TS23.060
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`further explains that “[i]n order to access the PS services, an MS shall first make its presence
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`known to the network by performing a GPRS attach. This makes the MS available for SMS over
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`PS…” Id. (emphasis added). TS23.060 continues: “User data is transferred transparently between
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`the MS and the external data networks with a method known as encapsulation and tunneling:
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`data packets are equipped with PS-specific protocol information and transferred between the MS
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`and GGSN.” Id. Figure 4: User Plane for GSM on p. 27 of Ex. 1017 illustrates the layered
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`protocol structure in GPRS which further demonstrates that SMS messages use Layer 3 packet-
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`switched services. Additionally, Figure 4 illustrates that the MS and GGSN can communicate
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`over the IP network layer (layer 3), which is also consider to be packet-switched. A person of
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`ordinary skill in the art would, reviewing TS23.060, would understand that this confirms the
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`general understanding of a person of ordinary skill in the art that SMS messages sent over GPRS
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`are packet-switched messages.
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`20.
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`Additionally, the book, Mobile Handset Design (Ex. 1018), referenced by Dr.
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`Williams (Ex. 2011, ¶13) to confirm his understanding of the technology also demonstrates that
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`SMS messages sent over GPRS are packet-switched. Mobile Handset Design includes a detailed
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`description of the GPRS Protocol Architecture, demonstrating transmission of data from the
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`mobile station (MS), e.g., a programmable communicator, over the physical layer (layer 1), data
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`link layer (layer 2), and relay or network layer (layer 3). Ex. 1018 at p. 357. A person of ordinary
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`skill in the art would understand that the packet data unit is transmitted using the packet-
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`switched services of the GPRS network. Ex. 1018, p. 356-357.
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`21.
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`Patent Owner also contends that the gateway in Whitley does not process data
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`because Patent Owner alleges that the formatting and packetizing of messages described in
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`Whitley does not constitute processing data. See Response, Paper 27, pp. 45-49. I disagree.
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`22.
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`First, the ‘717 patent discloses that the programmable communicator also collects
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`data from an associated devices and transmits that data without interpreting the meaning of the
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`data. For examples, the ‘717 patent discloses that the programmable communicator sends an
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`alarm message or data message (Ex. 1001, Fig. 3, 5:21-31), transmits data on request or in
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`response to a request (Ex. 1001, 6:4-12), transmits health data to a remote doctor (Ex. 1001,
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`6:40-53), and transmits data (Ex. 1001, 7:65 – 8:2). See also Ex. 1001, 11:21-26, 11:50-54. A
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`person of ordinary skill in the art reading these teachings of the ‘717 patent would understand
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`that formatting and packetizing tasks fall within the realm of processing data.
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`23.
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`Second, Whitley teaches that if a security sensor coupled to the gateway 20
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`triggers, gateway 20 can be configured to package and transmit, usually on a priority basis, a
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`SMS message indicating a breach in security, as well as other data including the date and time,
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`the location of the facilities, or the location of the sensor. Ex. 1003 at 12:27-13:2. A person of
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`ordinary skill in the art would understand that Whitley’s gateway would necessarily perform
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`some processing to determine at least that the data being received is from an alarm sensor in
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`order to transmit the data immediately – rather than store the data – for a subsequent
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`transmission.
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`24.
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`Patent Owner and Mr. Williams contend that optional features of a standard are
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`not standard features. See Response, Paper 27, pp. 18-19; Ex. 2011, Williams Decl., ¶¶50. I
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`disagree. Whitely explains: “The GSM standard defines a short messaging service, which allows
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`users of the network to send and receive short data messages, usually in the form of
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`alphanumeric text.” Ex. 1003, 11:26-28. Whitley further teaches: Transporting messages or
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`commands via the short messing service of the GSM network or via the GPRS protocol avoids
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`the prohibitive cost of setting up a call for each message and avoids the significant capital costs
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`needed to set up a separate communication network for delivery data. Ex. 1003 at Abstract.
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`Whitley makes no distinction between mandatory or optional features of a standard. A person of
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`skill in the art would look to both optional and mandatory, aspects of the GSM and GPRS
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`standards documents to understand the features and services of GSM and GPRS.
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`25.
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`Patent Owner’s further contends that there is no purpose in supplementing
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`gateway 20 of Whitley with a GPS module. Response, Paper 27, p. 54. I disagree with this for at
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`least three reasons.
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`26.
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`First, the gateway 20 itself may be a portable device – Whitley discloses that the
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`gateway 20 may be a set-top box, personal computer or other device provided with a processor,
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`such as an Intel 386 or 486 processor, and that communicates with various, optionally
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`addressable, devices located throughout the facility. Ex. 1003, 9:3-6. These set-top boxes,
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`personal laptop computers and other known devices were portable.
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`27.
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`Second, Whitley discloses that the gateway is positioned in buildings. In large
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`buildings, it may be difficult to pinpoint the exact location of the gateway. By providing a GPS
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`module in the gateway, the user of the system described in Whitley would be able to identify a
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`precise location of the gateway in the building.
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`28.
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`Third, it was well-known to use GPS-based location monitoring in relatively
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`stationary devices for theft-detection purposes.
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`VIII. CONCLUSION
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`29.
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`In my opinion, the claims of the ‘717 Patent are invalid for the reasons stated in
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`my previous declaration (Ex. 1013) and for the additional reasons stated above.
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`30.
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`I declare under penalty of perjury that all statements made herein are of my own
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`Respectfully submitted,
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`knowledge and are true and correct.
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`Date: August 13, 2016
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`Kevin J. Negus
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