Patent No. 8,648,717
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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC. AND RPX
`CORP.
`
`Petitioner
`v.
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`M2M SOLUTIONS LLC
`Patent Owner
`
`Patent No. 8,648,717
`Issue Date: February 11, 2015
`Title: PROGRAMMABLE COMMUNICATOR
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`Inter Partes Review No. 2015-01823
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`REPLY IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
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`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
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`
`Patent No. 8,648,717
`Issue Date: February 11, 2015
`Title: PROGRAMMABLE COMMUNICATOR
`
`Inter Partes Review No. 2015-01823
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`REPLY IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
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`Table of Contents
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`Page
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`Contents
`Preliminary Statement ..................................................................................... 1
`I.
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`II.
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`Claim Construction .......................................................................................... 1
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`1.
`2.
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`Programmable interface .............................................................. 2
`The one or more stored telephone numbers or IP addresses
`being numbers to which the programmable communicator
`device is configured to and permitted to send outgoing wireless
`transmissions ............................................................................... 4
`Process data ................................................................................. 6
`3.
`III. Detailed Response to Patent Owner’s Arguments .......................................... 7
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`A.
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`Independent claims 1, 24 and 29 ........................................................... 8
`1.
`Element [1b] - the “programmable interface” limitation ....... 8
`2.
`Element [1d] – the authentication limitation ......................... 10
`3.
`Element [1g] – the process data limitation ............................ 15
`B. Dependent Claims 6, 10 and 23 ........................................................ 17
`C. Dependent Claims 16-17 and 19-21 .................................................. 18
`IV. Conclusion .................................................................................................... 21
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`i
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`Patent No. 8,648,717
`Petition For Inter Partes Review
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`EXHIBITS
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`U.S. Patent No. 8,648,717 (“the ‘717 patent”)
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`Prosecution History for U.S. Patent No. 8,648,717 (“the ‘717
`prosecution history”).
`
`Int’l Patent Pub. No. WO99/49680 (“Whitley”)
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`
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`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”)
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`U.S. Patent No. 5,959,529 (“Kail”)
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`Int’l Patent Pub. No. WO 95/05609 (“Eldredge”)
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`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”)
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`Excerpts from Expert Report of Dr. Nettleton
`
`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”)
`
`U.S. Patent No. 5,772,586
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`U.S. Patent No. 6,225,901
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`U.S. Patent No. 6,804,558
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`Declaration of Kevin Negus
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`Digital cellular telecommunications system, Phase 2+; Specification
`of the SIM Application Tookit for the Subscriber Identity Module –
`Mobile Equipment (SIM-ME) interface (GSM 11.14 version 7.3.0
`Release 1998)
`
`1015
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`The Subscriber Identity Module, European Telecommunications
`
`ii
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`
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`Patent No. 8,648,717
`Petition For Inter Partes Review
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`Standardization and the Information Society, The State of the Art
`1995
`
`Claim Construction Order in C.A. Nos. 12-030-RGA, 12-031-RGA,
`12-032-RGA, 12-033-RGA, and 12-034-RGA
`
`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)
`
`Mobile Handset Design, Sajal Kumas Das, John Wiley & Sons, ISBN
`978-0-470-82467
`
`Opening Brief in Support of Defendants Sierra Wireless America
`Inc.’s and Sierra Wireless Inc.’s Motion for Summary Judgment of
`Non-Infringement
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`Opening Brief in Support of Defendants Sierra Wireless America
`Inc.’s and Sierra Wireless Inc.’s Motion for Summary Judgment of
`Invalidity
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`Excerpts of Plaintiff M2M Solutions LLC’s Preliminary Infringement
`Contentions
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`Transcript of Deposition of Joel R. Williams
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`August 15, 2016 Declaration of Kevin Negus
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`Declaration of Jennifer Hayes, August 15, 2016
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`iii
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`I.
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`Preliminary Statement
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`Sierra Wireless America Inc., Sierra Wireless Inc. and RPX Corp.
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`(Petitioners) submit this Reply in response to Patent Owner’s Response.
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`Patent Owner attempts to salvage the validity of the instituted claims despite
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`the fact that the claims were well-known in the prior art. Patent Owner
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`mischaracterizes Petitioners’ identification of the claimed limitations in the prior
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`art, mischaracterizes the disclosures of the prior art, and mischaracterizes the
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`record. Primarily, Patent Owner bases its arguments in support of validity on
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`narrow claim construction positions that are inconsistent with the “broadest
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`reasonable claim construction.” Furthermore, Petitioners do not rely on inherency
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`to support its Petition; accordingly, all of Patent Owner’s arguments regarding
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`inherency are irrelevant and should be disregarded.
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`Because the claims are rendered obvious over Whitley in view of the GSM
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`Standards documents (and in view of Kail and/or Eldridge), and Patent Owner’s
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`arguments rely on overly narrow claim constructions and disregard the prior art
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`and the record, Petitioners respectfully request the Board to a final decision
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`cancelling claims 1, 3, 5-6, 10-13, 15-24 and 29 of the ’717 patent.
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`II. Claim Construction
`In inter partes review, claim terms should be given their “broadest
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`1
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`reasonable construction” in light of the specification. 37 C.F.R. § 42.100(b).
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`Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ____, 2016 WL 3369425 *12
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`(2016). Patent Owner’s arguments in its Response are based primarily on claim
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`constructions that are inconsistent with the “broadest reasonable construction” and
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`should be rejected by the Board, as explained in further detail below.
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`Programmable interface
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`1.
`In its Response, Patent Owner contends that the parties agree that a person
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`of ordinary skill would understand the plain and ordinary meaning of
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`“programmable interface” to be an interface that must itself be programmable.
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`Response, Paper 27, pp. 7-8. That contention is false. Sierra Wireless has at no
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`time admitted that the proper construction of the “programmable interface” is that
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`the interface itself must be directly programmed. In fact, Sierra Wireless expressly
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`rejected that as the proper construction of the “programmable interface” in its
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`Petition for inter partes review. Additionally, Sierra Wireless presented arguments
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`in its Summary Judgment motion related to the court’s claim construction of the
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`“programmable interface” that M2M itself had not demonstrated that the interface
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`itself was directly programmed. Ex. 1019, p. 3-4. Likewise, Sierra Wireless argued
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`in a brief filed at the same time that the programmable interface as construed by
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`the court – an interface that itself must be directly programmed – was not
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`supported by the written description or enabled. Ex. 1020, pp. 3-7.
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`2
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`In the Petition, Petitioners argued that the court’s claim construction of the
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`programmable interface as being “an interface that is able to be directly
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`programmed” should be rejected as not being consistent with the specification of
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`the ‘717 patent and that the plain and ordinary meaning should apply to the
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`programmable interface. See Petition, Paper 1, pp. 13-15. As explained in the
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`Petition, the “programmable interface” is only discussed at 8:65-9:6 of the ‘717
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`Patent, which states the programmable interface means “may be attached to all
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`manner of sensor devices” to relay data to a remote device. Paper 1, p. 14 (citing
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`Ex. 1001, 8:65-9:6).
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`Patent Owner contends that a “programmable interface” that is itself
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`programmable is disclosed in the written description, pointing to Ex. 1001 at 9:2-6.
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`Response, Paper 27, p. 9, fn.1. However, contrary to Patent Owner’s unsupported
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`legal argument, 9:2-6 of the patent says nothing about the programmable interface
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`accepting a READ programming instruction sent from a remote device to which it
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`responds by returning a requested data value; instead, Ex. 1001 states:
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`Said programmable interface means may be attached to all
`manner of sensor devices for the purpose of relaying data from
`external devices and sensors either automatically or in
`response to a request for information from a remote device.
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`Id., 9:2-6. This sentence in the ‘717 patent does not disclose that the programmable
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`interface receives the request for information; this sentence merely discloses that
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`3
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`the programmable interface relays data in response to the request, and it certainly
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`says nothing about a READ programming instruction. Patent Owner does not point
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`to any evidence to support this interpretation of the specification – not even its own
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`expert provides an opinion to that effect.
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`As set forth in the Petition, Patent Owner’s argument that the narrow
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`construction of the programmable interface be applied in this inter partes review
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`should be rejected, as unsupported by the specification and inconsistent with the
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`broadest reasonable interpretation of the term. Petitioner accordingly asserts that
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`“programmable interface” should be given its plain and ordinary meaning, which,
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`consistent with the specification of the ‘717 patent, is that it is a physical interface
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`that may be attached to a remote sensor device to relay data in response to requests
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`for information and that can pass programming instructions to the attached, remote
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`sensor device.
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`2. The one or more stored telephone numbers or IP addresses
`being numbers to which the programmable communicator
`device is configured to and permitted to send outgoing wireless
`transmissions
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`Patent Owner contends that the “one or more stored telephone numbers or IP
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`addresses being numbers to which the programmable communicator device is
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`configured to and permitted to send outgoing wireless transmissions” requires an
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`“outbound restrictive calling list.” Response, Paper 27, p. 13-14. The Board
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`previously rejected this argument. Decision, Paper 16, p. 20.
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`4
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`Petitioners have not admitted that the claimed outbound calling list is
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`required to be restrictive in nature. Patent Owner’s citation to its own expert’s
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`declaration in support of the alleged admission should be rejected as unsupported
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`by the record and as being biased. Petitioners have merely stated that the FDN
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`described in the prior art can function as a bar to limit calls to the list of numbers,
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`but have not admitted that that is a requirement of the claims.
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`Patent Owner’s arguments regarding the prosecution history similarly
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`mischaracterize the record. In the Supplemental Amendment, Patent Owner’s
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`counsel stated: “During the interview, Examiner Nguyen suggested that it was not
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`clear from the claim language that the programmable communicator device was
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`permitted to send outgoing wireless transmissions to the stored telephone numbers
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`or IP addresses.” Ex. 2014, p. 10. Nothing in Patent Owner’s statement in the
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`Supplemental Amendment actually indicates that the Examiner understood the
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`numbers or IP addresses be the only numbers or IP addresses that the device can
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`communicate with or otherwise indicate that the Examiner believed the additional
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`language limited the claim to an outbound restrictive calling list; on the contrary,
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`as stated in Patent Owner’s own words, the Examiner was requiring Patent Owner
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`to indicate that the device was permitted to send outgoing wireless transmissions to
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`the stored numbers or addresses. Id.
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`Furthermore, as set forth above, the broadest reasonable construction is the
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`5
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`applicable claim construction standard in an inter partes review. As correctly
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`stated by the Board, the plain language of the claim does not support the
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`construction offered by the Patent Owner and, under the broadest reasonable
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`construction standard, Patent Owner’s proposed construction must be rejected.
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`3. Process data
`Patent Owner contends that the performance of routine low-level tasks such
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`as merely formatting or packetizing data to facilitate its transmission over a
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`wireless network does not rise to the level of data “processing” within the intended
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`meaning of the ‘717 patent. Response, Paper 27, p. 46. Specifically, Patent Owner
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`contends that the ‘717 patent teaches that the programmable communicator has the
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`ability to make intelligent determinations that interpret the meaning of the data so
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`that responsive actions can be taken as the result of those determinations. Id.
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`However, this is inconsistent with both the teaching of the ‘717 patent and
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`M2M’s interpretation of the claim language in the co-pending litigation. The ‘717
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`patent discloses that the programmable communicator also collects data from an
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`associated devices and transmits that data (without interpreting the meaning of the
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`data). Ex. 1001, Fig. 3, 5:21-31 (send an alarm message or data message), 6:4-12
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`(transmit data on request or in response to a request), 6:40-53 (transmit health data
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`to a remote doctor), 7:65 – 8:2 (transmit data), 11:21-26, 11:50-54. A person of
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`ordinary skill in the art reading the teachings of the ‘717 patent would understand
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`6
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`that formatting and packetizing tasks fall within the realm of processing data. Ex.
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`1023, Ex. 1023, ¶22. Similarly, in the co-pending litigation, M2M alleges that
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`certain Sierra Wireless products infringe the “process data” limitation of the ‘717
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`patent by collecting voltage data from an interface and transmitting it to a remote
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`device (without any additional processing). Ex. 1021, pp. 8-11. In other words,
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`under Patent Owner’s own interpretation of this limitation in the co-pending
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`litigation (which applies a narrower claim construction standard), such “routine
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`low-level tasks” are the processing of data required in the claims. Cuozzo, 2016
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`WL 3369425, *12.
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`Accordingly, under the broadest reasonable construction of this claim
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`language, “process data” includes the performance of routine low-level tasks such
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`as merely formatting or packetizing data to facilitate its transmission over a
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`wireless network, and Patent Owner’s proposed construction should be rejected.
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`III. Detailed Response to Patent Owner’s Arguments
`As set forth in the Petition, each of claims 1-3, 5-7, 10-24, and 29-30 of the
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`‘717 patent are obvious in light of the prior art.
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`Petitioners first note that they do not rely on inherency to support their
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`Petition; accordingly, all of Patent Owners arguments regarding inherency
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`throughout its Response are irrelevant and should be disregarded. See Petition,
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`Paper 1; Decision, Paper 16.
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`7
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`A.
`Independent claims 1, 24 and 29
`1. Element [1b] - the “programmable interface” limitation
`Patent Owner’s arguments related to the “programmable interface”
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`limitation are based primarily on its overly narrow claim construction, which
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`should be rejected as explained above.
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`Nevertheless, Whitley discloses a programmable interface even under
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`the more narrow construction proposed by Patent Owner. Petitioners first note,
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`as set forth in the Petition, that Patent Owner’s omissions in the disclosure
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`about what the programmable interface is constitute an admission that a
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`person having ordinary skill in the art (PHOSITA) already possessed this
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`knowledge and knew of components and techniques for implementing the
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`ideas described. See In re Fox, 471 F.2d 1405, 1407 (CCPA 1973) (claim
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`elements which are not described in detail in the patent specification are
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`presumed to be known to those of ordinary skill in the art); In re Epstein, 32
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`F.3d 1559, 1568 (Fed. Cir. 1994) (citing In re Fox with approval: “the
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`[application’s] disclosure fails to provide the same detailed information
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`concerning the claimed invention. In the absence of such a specific description,
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`we assume that anyone desiring to carry out such computerized warehousing
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`and inventory control systems would know of the equipment and techniques to
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`be used.”) See Petition, Paper 1, p. 22.
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`8
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`Whitley specifically discloses “[t]he term ‘gateway’ includes any device
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`that (a) provides a physical interface between internal devices associated with
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`a particular facility 12 and external networks . . . Thus, gateways 20 may
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`couple to a remote facility 12 and may monitor, control, or both monitor and
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`control various devices within the facility 12, such as lights, security sensors,
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`an answering machine, a home computer, etc.” Ex. 1003 at 8:27-9:8 (emphasis
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`added). Whitley further discloses that the gateway 20 is programmed to poll
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`each device coupled to it to determine the device’s energy use. See Ex. 1003,
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`16:20-27. Whitley discloses to a person of ordinary skill in the art more than
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`the ‘717 patent discloses regarding the programmable interface. Ex. 2017,
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`11:15-18. A person of ordinary skill in the art, reading the ‘717 Patent, reading
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`Whitley, and with the knowledge that programmable interfaces were well-
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`known in the art, would understand that the physical interface described in
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`Whitley is a programmable interface. Ex. 1013, Negus Decl. ¶¶91-92; Ex.
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`2017, 7:22-8:4, 17:9-20, 37:18-38:19. Furthermore, consistent with M2M’s
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`interpretation that the interface itself is programmable if a READ command is
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`provided, a person of ordinary skill in the art would understand that the
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`physical interface would be programmed to periodically poll the sensor devices
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`as disclosed in Whitley. Ex. 1013, Negus Decl., ¶¶ 90-91, 102, 105; Ex. 2017,
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`17:9-20, 37:18-38:19.
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`9
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`M2M’s arguments that the wireless programming commands described
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`in Whitley cannot be the claimed wireless packet switched data messages
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`should also be rejected. Whitley clearly discloses the ability to wirelessly
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`program the local devices connected through the interface by sending SMS
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`messages sent over a GPRS network that contain commands requesting the
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`data or to periodically poll the devices for the data. Ex. 1003 at 17:1-5, 16:9-
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`12, 17:17-18, 9:23-25, 14:22-27. A person of ordinary skill in the art would
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`understand that these passages in Whitley teach that the interface in Whitley is
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`programmable by wireless packet switched data messages. Ex. 1013, Negus
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`Decl. ¶¶91-92; Ex. 2017, 47:20-48:5.
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`2. Element [1d] – the authentication limitation
`M2M does not dispute that the SIM card includes memory that stores the
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`one or more stored telephone numbers or IP addresses. Instead, M2M focuses its
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`arguments regarding claim element [1d] on (1) which component performs the
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`claimed functional limitations of element [1d], (2) whether the FDN is an outbound
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`restrictive calling list, (3) whether the SMS over GPRS transmissions are wireless
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`packet switched data messages, (4) whether the update commands are provided in
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`wireless transmissions received by the processor, and (5) whether Petitioners
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`provided sufficient evidence to support the combination of Whitley and the SIM
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`Specification. Response, Paper 27, pp. 26-45. As set forth in greater detail below,
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`10
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`each of these arguments should be rejected.
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`First, throughout its Response, Patent Owner mischaracterizes
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`Petitioners’ identification of the processor as being the SIM operating system.
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`Response, Paper 27, pp. 39-41, 25-26, 37-39. Petitioners, however, did not
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`identify the SIM operating system as being the processor in claim 1; instead,
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`Petitioners identified the microprocessor in the SIM card as being the
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`processor in claim 1, as recognized by the Board. Petition, Paper 1, p. 24;
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`Decision, Paper 16, p. 15. The only evidence that Patent Owner identifies to
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`support its argument is based on the biased and unsupported declaration of its
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`own expert, and should be rejected. Ex. 2011, ¶62; see, e.g., Compass Bank v.
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`Intellectual Ventures, IPR2014-00786, Paper 46, p. 31. Furthermore, the SIM
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`application and the SIM OS are both components of the processor of the SIM
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`card. Ex. 1022, 45:5-46:2. Because they are both components of the same
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`processor, Patent Owner’s arguments regarding the failure of the SIM OS to
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`authenticate or otherwise process data fail.
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`Second, Patent Owner’s arguments regarding the FDN not being an
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`outbound restrictive calling list should be rejected as being based on an
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`improperly narrow construction of the claim language, as explained above in
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`Section II.2. As set forth in the Petition, the FDN is a list of telephone numbers
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`or IP addresses to which the device is configured to and permitted to send
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`11
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`messages. Petition, Paper 1, p. 31-32; Ex. 1013, ¶78, 85. Even if the claim
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`requires an outbound restrictive calling list, a person of ordinary skill in the art
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`would understand that the FDN can operate as an outbound restrictive calling
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`list. Petition, Paper 1, p. 31; Ex. 1013, ¶78, 85. In fact, Patent Owner does not
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`deny that the FDN can be used as an outbound restrictive calling list; Patent
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`Owner’s sole argument is that a combination of an additional prior art
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`reference -- the AT Command Set reference -- is required to demonstrate that
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`the FDN is an outbound restrictive calling list. Response, Paper 27, pp. 27-29.
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`However, there is no such requirement that the grounds for the obviousness
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`analysis specifically rely on that reference to demonstrate that a person of
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`ordinary skill in the art understood the FDN to operate as an outbound
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`restrictive calling list. See, e.g., Edmund Optics v. Semrock, IPR2014-00599,
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`Paper 72, p. 24 (secondary references may be considered to show a reference
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`enables the claim limitation) (internal citations omitted).
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`Third, Patent Owner’s argument regarding the transmissions not being
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`packet switched should be rejected because it is based on a fundamental
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`misunderstanding of basic network communications. Specifically, Patent
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`Owner contends that SMS messages sent over GPRS networks are sent only
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`over Layer 2 channels and are therefore not packet-based. Response, Paper 27,
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`pp. 33-34. However, nothing in the document cited by Patent Owner actually
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`12
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`indicate that the messages are sent only over Layer 2 channels. See Ex. 2015,
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`pp. 9-11, 45-46; Ex. 1023, ¶18. Instead, this document actually demonstrate
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`that the standard contemplated sending SMS messages over GPRS, and that
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`those messages must be routed over Layer 3 networking channels, which are
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`necessarily packet-switched. Ex. 1022, 44:7-15, 44:7-15, 80:12-18, 95:19-
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`97:199:16; Ex. 1023, ¶18. See also Ex. 2015, pp. 9-11, 45-46; Ex. 2016, p. 3
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`(257:1-19); Ex. 2017, 58-63, 66-68; Ex. 2018, ¶¶57-59. Likewise, a document
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`referenced in Ex. 2015 (Ex. 1017) and a book relied on by Dr. Williams to
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`confirm his understanding (Ex. 1018) further demonstrate that the SMS
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`messages are packet-switched messages. Ex. 1023, ¶¶19-20; Ex. 1017, p. 17,
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`Figure 4 (p. 27); Ex. 1018, pp. 356-357. Furthermore, as explained above,
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`Petitioners reliance on additional evidence to support Dr. Negus’s testimony
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`that it was well-known to transmit SMS messages over GPRS is permissible.
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`Edmund Optics, Paper 72, p. 24.
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`Fourth, Patent Owner’s arguments regarding the APDU command not
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`being transmitted in a wireless message should be rejected because there is no
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`requirement in the claims that the processor receive wireless transmissions and
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`because it is based on a mischaracterization of the record. Specifically, Patent
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`Owner argues that the transmissions are not wireless transmissions because the
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`SIM OS does not receive a wireless transmission. Response, Paper 27, pp. 37-
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`13
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`39. However, there is nothing in the claim language that requires that the
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`processor receive wireless transmissions; the claim language, by contrast,
`
`merely requires that the “programmable communicator” receive the wireless
`
`transmissions. Furthermore, the antenna is the component of the wireless
`
`device that receives the wireless transmissions; data received at the antenna is
`
`typically transmitted within the wireless device over hard wires to the
`
`processor. Ex. 1022, 101:8-10, 105:11-20, 51:22-53:25. Not even the processor
`
`of the programmable communicator (or other wireless devices), as described in
`
`the ‘717 Patent, receives a wireless transmission. Id. Patent Owner also argues
`
`that Petitioners argument that the inclusion of updating, verifying and
`
`unblocking commands in SMS messages is unsupported. Response, Paper 27,
`
`pp. 34-37. However, this is a mischaracterization of the record; Petitioners did
`
`present evidence in support of this argument. Petition, Paper 1, p. 33; Ex. 1013,
`
`¶78-79, 81-82; Ex. 1004 at 131.
`
`Fifth, Patent Owner’s arguments regarding deficiencies in the motivation
`
`to combine rationale should be rejected as mischaracterizing the record and as
`
`being inconsistent with Petitioners’ burden for demonstrating obviousness.
`
`Petitioners did present sufficient evidence in support of its rationale. See, e.g.,
`
`Petition, Paper 1, pp. 33-34; Ex. 1013, ¶82-83, 85; KSR Int’l Co. v. Telflex Inc.,
`
`550 U.S. 398, 418 (2007). Furthermore, contrary to Patent Owner’s argument,
`
`14
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`optional features are disclosed in a technical standard, and there is no
`
`distinction in Whitley between optional and mandatory aspects of the standards
`
`documents. Ex. 1022, 22:25-23:13; Ex. 1023, ¶24. The SIM specification does
`
`relate to SMS services provided in a GSM network, and a person of ordinary
`
`skill in the art would look to the SMS services described in the SIM
`
`specification. See Ex. 1004, p. 13, 131; Ex. 1023, ¶24.
`
`Petitioners further note that Patent Owner mostly ignores the prima facie
`
`showing of obviousness made by Petitioners and Dr. Negus. Patent Owner offers
`
`no admissible evidence of non-obviousness and no evidence of objective indicia of
`
`non-obviousness. Nor does Patent Owner dispute Petitioner’s definition of the
`
`field of the alleged invention, or the level of skill in the art.
`
`3. Element [1g] – the process data limitation
`Patent Owner’s primary argument is based on an improperly narrow
`
`construction of processing data, which should be rejected, as explained above.1
`
`
`1Petitioners note that Patent Owner argues that element [1g] is not met for the same
`
`reasons at element [1b] because Whitley does not disclose that gateway 20 uses a
`
`“programmable interface” to establish a communication link with any “monitored
`
`technical devices.” Response, Paper 27, pp. 45-46. However, Patent Owner’s
`
`Response does not present any argument or evidence that Whitley does not
`
`15
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`Nevertheless, Whitley does disclose processing data consistent with the
`
`narrower construction proposed by Patent Owner. In particular, Whitley
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`discloses the details of how the gateway may be programed to poll and process
`
`the data received through the interface:
`
`Gateway 20 is programmed to poll each device coupled to
`it to determine the device’s energy use. For instance,
`gateway 20 can be connected to the thermostat, refrigerator,
`water heater, and washer/dryer in a particular residential
`facility as well as to the general meter for that facility.
`Gateway 20 polls those devices every hour to determine
`their energy use. Gateway 20 then forwards the poll results
`to the SIM card, which generates a SMS message
`containing the poll results as well as the date, time and
`location of gateway 20. The SMS message is then
`transferred from gateway 20 to central processor 40 via the
`MSC 36 and SMSC 38.
`
`Ex. 1003 at 17:19-16:27 (emphasis added).
`
`Likewise, contrary to Patent Owner’s arguments, Petitioners presented
`
`evidence in the Petition that Whitley discloses receiving SMS messages – an
`
`incoming wireless transmission containing programming instructions – from a
`
`
`disclose that gateway 20 uses a “programmable interface” to establish a
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`communication link with any “monitored technical devices.
`
`16
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`remote device, such as a centralized server. Petition, Paper 1, pp. 36-38.
`
`Whitley clearly discloses that a remote user at the centralized server can enter
`
`and forward programming commands that are sent wirelessly to the gateway.
`
`See, e.g., Ex. 1003, Abstract, 2:23-26, 3:4-12, 3:15-19, 4:12-19, 9:23-25, 16:9-
`
`18, 16:19-17:15. In fact, Patent Owner admits that Petitioners presented such
`
`evidence but argued that it is irrelevant to the claim limitation. This argument
`
`should be rejected as illogical and inconsistent with the record.
`
`B. Dependent Claims 6, 10 and 23
`With respect to claim 6 and claim 10, as set forth above, Petitioners did
`
`present evidence that gateway 20 transmits processed data “in response to a
`
`programming instruction received in an incoming wireless packet switched
`
`data message.” See, Petition, Paper 1, pp. 36-38, 45-46.
`
`Additionally, with respect to claim 10, Patent Owner’s argument – that
`
`Petitioners are required to demonstrate that the programmable communicator
`
`device be configured to determine whether the processed received data
`
`indicates a change in status that crosses a threshold parameter – is inconsistent
`
`with a plain reading of the claim. Petitioners need only demonstrate that
`
`Whitley discloses that the programmable communicator be configured to
`
`determine whether the data indicates an alarm condition. The passages that
`
`Patent Owner admits are present in Whitley regarding the alarm sensors satisfy
`
`17
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`this claim limitation because Whitley’s gateway would be required to
`
`determine at least that the data being received is from an alarm sensor in order
`
`to transmit the data immediately – rather than store the data – for a subsequent
`
`transmission. Response, Paper 27, pp. 51-52 (citing Pet. 46, citing Ex. 1003 at
`
`17:7-14 and 12:27 – 13:2; Ex. 1023, ¶23. A predetermined indication that an
`
`alarm condition exists still meets the claim limitation under a broadest
`
`reasonable interpretation of the claim.
`
`With respect to claim 23, Patent Owner’s arguments completely
`
`misinterpret and mischaracterize the deposition transcript of Dr. Negus and
`
`should accordingly be disregarded. See Ex. 2017 at pp. 200-01 (testimony
`
`related to “intruder alarm sensors” vs. “alarm sensors” generally.)
`
`C. Dependent Claims 16-17 and 19-21
`Patent Owner mostly ignores the prima facie showing of obviousness made
`
`by Petitioners and Dr. Negus. It offers no admissible evidence of non-obviousness,
`
`and no evidence of objective indicia of non-obviousness. It does not dispute
`
`Petitioner’s definition of the field of the alleged invention, or the level of skill in
`
`the art. Petitioners presented a prima facie showing of obviousness in the Petition.
`
`See Petition, Paper 1, pp. 51-56.
`
`Patent Owner’s arguments regarding the requirements for establishing a
`
`prima facie case of evidence are wrong. See, e.g., Response, Paper 27, p. 57, fn 14.
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`18
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`U.S. Patent No. 8,648,717
`Petitioners’ Reply
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`The pertinent legal argument is not whether there would have been a motivation to
`
`add Kail’s health m
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