Patent No. 8,648,717
`Petition for Inter Partes Review
`
`
` Paper No.
`
`
`
`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
`
`Patent No. 8,648,717
`Issue Date: February 11, 2015
`Title: PROGRAMMABLE COMMUNICATOR
`
`Inter Partes Review No. Unassigned
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET. SEQ.
`
`
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`

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`Table of Contents
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`
`
`Page
`
`Contents
`Introduction ...................................................................................................... 1 
`I. 
`
`II. 
`
`Notices and Requirements ............................................................................... 3 
`
`A.  Notice of Each Real Party in Interest .................................................... 3 
`B. 
`Notice of Related Matters ..................................................................... 3 
`C. 
`Notice of Lead and Backup Counsel ..................................................... 3 
`D.  Notice of Service Information ............................................................... 4 
`E. 
`Payment of Fees .................................................................................... 4 
`F. 
`Grounds for Standing ............................................................................ 4 
`Statement of Precise Relief Requested ............................................................ 4 
`
`III. 
`
`IV.  The ‘717 Patent Petitioned for Review ........................................................... 6 
`
`A. 
`B. 
`
`C. 
`D. 
`E. 
`
`Summary of The ‘717 Patent ................................................................ 6 
`Relevant Information Regarding the Prosecution History of the
`‘717 Patent ........................................................................................... 11 
`Person of Ordinary Skill of the Art ..................................................... 12 
`Priority Date of ‘717 Patent ................................................................ 12 
`Claim Construction ............................................................................. 13 
`1. 
`programmable interface ............................................................ 13 
`2. 
`coded number ............................................................................ 15 
`3. 
`identity module ......................................................................... 16 
`4. 
`programming transmitter .......................................................... 16 
`Statement of How Each Claim is Unpatentable Based on the Prior Art ....... 17 
`
`A.  Claims 1-3, 5-7, 10-16, 18, 22-24, and 29-30 are obvious
`under 35 U.S.C § 103 over Whitley in view of SIM+ME
`Spec and/or obvious under 35 U.S.C § 103 over Whitley in
`view of SIM+ME Spec and the Admitted Prior Art ....................... 17 
`
`i
`
`V. 
`
`

`
`1. 
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`Table of Contents (continued)
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`
`
`Page
`[1a] A programmable communicator device comprising: ... 17 
`[1b] a programmable interface for establishing a
`communication link with at least one monitored technical
`device, wherein the programmable interface is
`programmable by wireless packet switched data messages . 20 
`[1c] a processing module for authenticating one or more
`wireless transmissions sent from a programming transmitter
`and received by the programmable communicator device by
`determining if at least one transmission contains a coded
`number ...................................................................................... 23 
`[1d] wherein the programmable communicator device is
`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 and permitted to send
`outgoing wireless transmissions ............................................. 29 
`[1e] wherein the programmable communicator device is
`configured to use an identity module for storing a unique
`identifier that is unique to the programmable communicator
`device ........................................................................................ 34 
`[1f] and wherein the one or more wireless transmissions
`from the programming transmitter comprises a General
`Packet Radio Service (GPRS) or other wireless packet
`switched data message ............................................................ 35 
`[1g] and wherein the programmable communicator device is
`configured to process data received through the
`programmable interface from the at least one monitored
`technical device in response to programming instructions
`received in an incoming wireless packet switched data
`
`ii
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`

`
`Table of Contents (continued)
`
`
`
`Page
`message .................................................................................... 36 
`Independent claims 24 and 29 ................................................ 38 
`8. 
`Dependent Claims 2-3, 5-7, 10-15, 18, 22-23, and 30 ......... 42 
`9. 
`Claims 16-17 and 19 – 20 are obvious under 35 U.S.C. § 103
`over Whitley in view of SIM+ME Spec and further in view
`of Kail ................................................................................................. 51 
`Claim 21 is obvious under 35 U.S.C. § 103 over Whitley in
`view of SIM+ME Spec and further in view of Eldredge ................ 55 
`VI.  Conclusion .................................................................................................... 56 
`
`B. 
`
`C. 
`
`iii
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`

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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
`
`U.S. Patent No. 8,648,717 (“the ‘717 patent”)
`
`Prosecution History for U.S. Patent No. 8,648,717 (“the ‘717
`prosecution history”).
`
`Int’l Patent Pub. No. WO99/49680 (“Whitley”)
`
`
`
`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”)
`
`U.S. Patent No. 5,959,529 (“Kail”)
`
`Int’l Patent Pub. No. WO 95/05609 (“Eldredge”)
`
`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”)
`
`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
`
`U.S. Patent No. 6,225,901
`
`U.S. Patent No. 6,804,558
`
`Declaration of Kevin Negus
`
`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
`
`The Subscriber Identity Module, European Telecommunications
`
`iv
`
`

`
`Patent No. 8,648,717
`Petition For Inter Partes Review
`
`
`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
`
`1016
`
`
`
`v
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`

`
`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`
`I.
`
`Introduction
`
`Sierra Wireless America Inc., Sierra Wireless Inc. and RPX Corp. petition
`
`for inter partes review of U.S. Patent No. 8,648,717 (“the ‘717 patent”), entitled
`
`“Programmable Communicator” and allegedly owned by M2M SOLUTIONS LLC
`
`(“the Patent Owner”). During prosecution, the Patent Office allowed the claims
`
`issuing into ‘717 patent on the premise that the prior art did not disclose a
`
`“programmable communication device” which included the feature that one could
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`update a list of telephone numbers or IP addresses, via an authenticated wireless
`
`packet switched data message. The list is used by the communication device to
`
`send outgoing wireless transmissions to those telephone numbers or IP addresses.
`
`However, PCT Publication No. WO99/49680 A1 (“Whitley”) clearly
`
`disclosed remotely and wirelessly programing a communication device. These
`
`known communication devices or wireless gateways were in communication with
`
`a server and sensing devices that collected data. In Whitley, a remote cellular
`
`telephone or workstation programmed and controlled the communication device
`
`(gateway) as well as the remote sensor devices coupled to the communication
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`device (gateway). Whitley discloses using SMS (Short Message Service) or GPRS
`
`(General Packed Radio Service, which is also referred to as GSM Phase 2+,
`
`see Ex. 1009 at Front page) data messages of the Global System for Mobile
`
`1
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`

`
`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`(GSM) network to route commands (programing) to the communication device
`
`(gateway) as well as the remote sensor devices.
`
`Thus, Whitley describes over the air programming of the gateway using
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`either SMS or GPRS messages from a remote monitoring device. As noted in
`
`Whitley a GSM gateway will include a Subscriber Identity Module (SIM) that is
`
`issued by the carrier and then is plugged into the gateway. SIM cards are required
`
`in the GSM network and include a microprocessor and memory. Among other
`
`functions, the SIM identifies the subscriber to the network. A feature of a GSM
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`SIM is the Fixed Dialing Number (FDN) list, which may be enabled with the
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`PIN2, later renamed the Cardholder Verification 2 or CHV2 password. The FDN
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`restricts any outgoing transmissions to the number or numbers on the FDN list.
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`The GSM standards documents identify the commands to program the SIM’s FDN
`
`either by SMS or a GPRS data messages. Accordingly, Whitley may be
`
`combined with the GSM standards documents that clearly details the remote
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`programing of the gateways FDN in the SIM card’s FDN using an authenticated
`
`transmission.
`
`Petitioners therefore contend that, inter alia, based on the obvious
`
`combination of Whitley and the GSM standards documents, there is a reasonable
`
`likelihood that one or more claims of the ‘717 patent will be found obvious and
`
`unpatentable.
`
`2
`
`

`
`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`II. Notices and Requirements
`A. Notice of Each Real Party in Interest
`The real parties in interest for this Petition are Sierra Wireless America, Inc.,
`
`Sierra Wireless, Inc. and RPX Corp. (collectively, “Petitioners”).
`
`B. Notice of Related Matters
`The ‘717 patent is being asserted in the following co-pending federal court
`
`litigations:
`
` M2M SOLUTIONS LLC v. ENFORA INC., et al., C.A. No. 1:14-cv-
`
`01101-RGA;
`
` M2M SOLUTIONS LLC v. SIERRA WIRELESS AMERICA, INC., et
`
`al., C.A. No. 1:14-cv-01102-RGA; and
`
` M2M SOLUTIONS LLC v. TELIT COMMUNICATIONS PLC, et al.,
`
`C.A. No. 1:14-cv-01103-RGA.
`
`The foregoing cases are pending in the United States District Court for the District
`
`of Delaware (“the ‘717 District Court Actions”).1
`
`C. Notice of Lead and Backup Counsel
`Lead Counsel:
`Jennifer Hayes (Reg. No. 50,845); Tel. 650-320-7725
`
`Backup Counsel: Bob Krebs (Reg. No. 25,885); Tel: 650-320-7763
`
`1 The ‘717 patent is a continuation of two other patents in the co-pending federal court litigation styled, M2M
`SOLUTIONS LLC v. SIERRA WIRELESS AMERICA, INC., et al., C.A. No. 1:12-cv-00030-RGA, pending in the
`United States District Court for the District of Delaware (“the ‘010 District Court Action”). Those two patents are
`U.S. Patent No. 7,583,197 (“the ‘197 Patent”) and U.S. Patent No. 8.094,010 (“the ’010 Patent).
`
`3
`
`

`
`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`
`Address:
`
`Nixon Peabody LLP, 2 Palo Alto Square, 3000 El Camino Real,
`Suite 500, Palo Alto, CA 94306
`
`
`FAX:
`
`
`
`
`
`855-472-2230
`
`D. Notice of Service Information
`Please address all correspondence to the lead counsel at the address shown
`
`above. Petitioner consents to service by email at: patentSV@nixonpeabody.com.
`
`E. Payment of Fees
`The petition for inter partes review is accompanied by a payment of
`
`$26,800.00 and requests review of 23 claims of the ‘717 patent. The
`
`Commissioner is hereby authorized to charge any additional fees due or credit any
`
`overpayment to Deposit Account 50-3557.
`
`F. Grounds for Standing
`Petitioner hereby certifies that the patent for which review is sought is
`
`available for inter partes review and that the Petitioner is not barred or estopped
`
`from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in the petition.
`
`III. Statement of Precise Relief Requested
`
`Claims 1-3, 5-7, 10-24 and 29-30 of the ‘717 patent are unpatentable and
`
`should be canceled in view of the following prior art:
`
`4
`
`

`
`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`Exhibit
`
`Description
`
`Ex. 1003
`Ex. 1004
`
`Ex. 1008
`
`Ex. 1005
`Ex. 1006
`
`WO99/49680 A1 (“Whitley”)
`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 1998)
`(“SIM+ME Spec”)
`Excerpts from Expert Report by Dr. Nettleton
`(“Admitted Prior Art”)
`U.S. Pat. No. 5,959,529 (“Kail”)
`WO99/05609 (“Eldredge”)
`
`Publication/
`Issue Date
`Sept. 1999
`Dec. 1999
`
`N/A
`
`Sept. 1999
`Feb. 1995
`
`Although Whitley was presented to the Patent Office during prosecution of
`
`the ‘717 patent, the Examiner did not cite to or rely on the Whitley reference
`
`during the prosecution. Whitley is a publication of PCT patent application
`
`PCT/US99/06429, designating the United States, which was published on
`
`September 30, 1999. Ex. 1003, Front page. Whitley qualifies as prior art to the
`
`‘717 patent at least under § 102(b).
`
`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 1998) (“SIM+ME Spec”) was published in December
`
`1999. Ex. 1004, Front page and p. 134. SIM+ME Spec was also presented to the
`
`Patent Office during prosecution of the ‘717 patent; however, the Examiner did
`
`not cite to or rely on the SIM+ME Spec reference during the prosecution.
`
`SIM+ME Spec also qualifies as prior art to the ‘717 patent at least under § 102(b).
`
`The SIM+ME Spec was available to any member of the interested public without
`
`5
`
`

`
`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`requesting them from an ETSI member. Ex. 1013, Negus Decl. ¶48. Further,
`
`ETSI did not impose restrictions on ETSI members to prevent them from
`
`disseminating information about the standard to non-members. Ex. 1013, Negus
`
`Decl. ¶48.
`
`Kail issued as a patent on September 28, 1999. Ex. 1005, Front page.
`
`Therefore, Kail qualifies as § 102(b) prior art to the ‘717 patent.
`
`Eldredge was published on February 23, 1995. Ex. 1006, Front page.
`
`Therefore, Eldredge qualifies as § 102(b) prior art to the ‘717 patent.
`
`Petitioner requests that claims 1-7 and 10-30 of the ‘717 patent be canceled
`
`based on the following grounds:
`
`Ground
`1
`
`2
`
`3
`
`4
`
`Claims
`1-3, 5-7, 10-15, 18,
`22-24, 29-30
`1-3, 5-7, 10-15, 18,
`22-24, 29-30
`
`16-17, 19-20
`
`21
`
`Description
`Rendered obvious under 35 U.S.C. § 103(a)
`over Whitley in view of SIM+ME Spec
`Rendered obvious under 35 U.S.C. § 103(a)
`over Whitley in view of SIM+ME Spec, and
`Admitted Prior Art
`Rendered obvious under 35 U.S.C. § 103(a)
`over Whitley in view of SIM+ME Spec and
`further in view of Kail
`Rendered obvious under 35 U.S.C. § 103(a)
`over Whitley in view of SIM+ME Spec and
`further in view of Eldredge
`IV. The ‘717 Patent Petitioned for Review
`A. Summary of The ‘717 Patent
`
`
`
`
`The ‘717 patent includes three independent claims and thirty total claims.
`
`Claim 1, reproduced here, is representative of each of the independent claims:
`
`6
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`1. A programmable communicator device comprising:
`
`a programmable interface for establishing a communication
`link with at least one monitored technical device, wherein the
`programmable interface is programmable by wireless packet
`switched data messages; and
`
`a processing module for authenticating one or more wireless
`transmissions sent from a programming transmitter and received
`by the programmable communicator device by determining if at
`least one transmission contains a coded number;
`
`is
`the programmable communicator device
`wherein
`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 and
`permitted to send outgoing wireless transmissions;
`
`is
`the programmable communicator device
`wherein
`configured to use an identity module for storing a unique identifier
`that is unique to the programmable communicator device; and
`
`wherein the one or more wireless transmissions from the
`programming transmitter comprises a General Packet Radio
`Service (GPRS) or other wireless packet switched data message;
`and
`
`is
`the programmable communicator device
`wherein
`configured to process data received through the programmable
`interface from the at least one monitored technical device in
`response to programming instructions received in an incoming
`wireless packet switched data message.
`
`Ex. 1001 at 12:34-13:3.
`
`7
`
`

`
`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`The ’717 patent is a continuation of an application, now U.S. patent
`
`8,452,111 (‘111 patent), which is a continuation of an application, which is U.S.
`
`Patent No. 8,094,010 (‘010 patent). Ex. 1001, Front page. According to the
`
`identical specifications of the ‘717, ‘111, and ‘010 patents, “[t]he invention . . .
`
`relates to a programmable wireless communications apparatus, which can provide
`
`an improved means of communication between children and their parents, between
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`elderly persons and caring relatives, and between mentally less-able individuals
`
`and supervising adults. In addition, the invention provides a solution . . . for user-
`
`programmable data tags which convey information from remotely located devices
`
`such as vending machines.” Ex. 1001 at 1:31-41 (emphasis added).
`
`The ‘717 patent claims to improve upon a previously filed Portable Hotlink
`
`Communicator application. Ex. 1001 at 1:41-45. The Hotlink communication
`
`device is only able to call certain numbers stored in the device. Ex. 1001 at 1:30-
`
`45. The Hotlink’s pre-defined list of numbers was remotely programmable by
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`another mobile phone, such as a parent’s cell phone, if the parent needed her
`
`child’s “Hotlink” to be linked to another number, such as the phone of the other
`
`parent or supervising neighbor. Ex. 1001 at 1:47-67. The ‘717 patent discloses
`
`that in order to perform this remote programming, “[e]xisting and known
`
`methods of communication between the mobile phone and Hotlink communicator
`
`for the purpose of programming comprise the obvious choice of … the Short
`
`8
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
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`Message Service in the GSM telecommunications standard.” Ex. 1001, 1:52- 56.
`
`(emphasis added).
`
`Fig. 1 is a diagram from the ‘717 patent of the allegedly novel
`
`programmable communicator:
`
`Ex. 1001, Fig. 1.
`
`
`
`The ‘717 patent’s alleged improvement is to require authentication of the
`
`programming message before updating the list of numbers stored on the device
`
`(i.e., the permitted callers list). Ex. 1001 at 9:53-56. More specifically, the
`
`allegedly novel programming message contains at least a new telephone number or
`
`IP address to be added to the caller list and a code for authenticating the
`
`9
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
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`programming message. Ex. 1001 at 9:46-51.
`
` The only example of programming the programmable communicator in the
`
`‘717 patent is in the preferred embodiment, using SMS messages. The patent
`
`explains “it is wished to allow only authenticated callers to change the telephone
`
`number or IP address of a fixed or mobile telephone or network device to which
`
`the programmable communicator is to be linked. This may be done in GSM using
`
`an SMS message, which includes data as well as a unique code such as the unique
`
`code of the Subscriber Identity Module or SIM card, often referred to as the PUK
`
`code. The PUK code is a unique identifier, which is different for every SIM
`
`Card.” Ex. 1001 at 9:35-43. The patent explains, “in the application for an
`
`improved child communicator, only persons knowing the secret PUK code would
`
`be able to change the calling number. This provides essential security for the
`
`parents.” Ex. 1001 at 10:5-8.
`
`Next, the ‘717 patent includes an example of five SMS messages that might
`
`program the permitted callers list:
`
`Ex. 1001 at 10:12-22. As explained, “a child may be playing in the garden or near
`
`to the house wearing a programmable communicator programmed to the mother’s
`
`
`
`10
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
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`telephone number, 040 111 111. In the next moment, the father comes home and
`
`sends an SMS to the child’s programmable communicator using his phone having
`
`telephone number 040 222 2222. In this example, the message comprises PUK
`
`code A:040 222 2222 which cause the calling number of the programmable
`
`communicator to be now reprogrammed to call the father’s number if its call
`
`button is pressed by the child.” Ex. 1001 at 10: 28-37.
`
`B. Relevant Information Regarding the Prosecution History of the
`‘717 Patent
`
`
`
`On November 8, 2013, Applicant filed a supplemental amendment after an
`
`interview with the Examiner on the same day. Ex. 1002, November 8, 2013
`
`Supplemental Amendment. In the Supplemental Amendment, Applicants amended
`
`the claims to add “and permitted to”. Ex. 1002, November 8, 2013 Supplemental
`
`Amendment, p. 10. Accordingly, amended independent claims 1, 27, and 32 read
`
`“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”. Id.
`
`On December 16, 2013 the Examiner issued a notice of allowance, and
`
`stated that the prior art did not teach the following limitation:
`
`wherein the programmable communicator device is 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
`
`11
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`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 and permitted to send outgoing wireless
`transmissions.
`
`Ex. 1002, December 16, 2013 Notice of Allowance, pp. 3 – 4. Accordingly, the
`
`record indicates that the feature the Examiner found patentable over cited art is
`
`wirelessly updating the permitted callers list (the at least one telephone number or
`
`IP address stored in memory) in a communication device by authenticating the
`
`wireless message containing the update command.
`
`C. Person of Ordinary Skill of the Art
`A person of ordinary skill in the art at the time that the application was
`
`
`
`effectively filed in May 2000 would have had at least an undergraduate degree in
`
`Electrical Engineering and three years of experience working the development of
`
`wireless subscriber terminal systems or components, or an equivalent combination
`
`of education and experience in related fields.
`
`D. Priority Date of ‘717 Patent
`The ‘717 patent is a continuation of several patent applications that claim
`
`
`
`12
`
`

`
`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`priority to a PCT patent application designating the United States, filed on May 18,
`
`2001, which in turn claims priority to a foreign patent application filed in Finland
`
`on May 23, 2000. Ex. 1001, Front page. Accordingly, the effective filing date of
`
`the ’717 patent is May 18, 2001, and no earlier than May 23, 2000.
`
`E. Claim Construction
`In inter partes review, claim terms should be given their “broadest
`
`reasonable construction” in light of the specification. 37 C.F.R. § 42.100(b). For
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`purposes of this proceeding only, Petitioners propose broadest reasonable
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`constructions for the following terms: coded number, identity module and
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`programming transmitter. All remaining terms should be given their plain and
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`ordinary meaning.
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`programmable interface
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`1.
`This phrase appears in the first element of each of the challenged
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`independent claims: Claims 1, 24 and 29.
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`As discussed above, M2M has filed lawsuits against several parties asserting
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`infringement of two of the ‘717 Patent’s ancestors – the ‘010 and ‘197 Patents.
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`The Court’s Claim Construction Opinion in these matters is attached as Exhibit
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`1016. In an inter partes review, under the broadest reasonable construction
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`standard, claims terms are given their “broadest reasonable interpretation,
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`consistent with the specification.” In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir.
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`1984); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14,
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`2012).
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`In the Court’s Claim Construction, the phrase “programmable interface” was
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`construed as “an interface that is able to be directly programmed.” This
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`construction, however, is not supported by the specification of the ‘717 Patent.
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`The “programmable interface” is only discussed at 8:65-9:6 of the ‘717 Patent,
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`which states the programmable interface means “may be attached to all manner of
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`sensor devices” to relay data to a remote device. Ex. 1001, 8:65-9:6. There is no
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`disclosure that the interface be “directly” programmed.
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`Petitioners further note that M2M has previously admitted that
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`programmable interfaces were well known in the art. Ex. 1008 at ¶¶128, 131-
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`140. Likewise, the omissions in the disclosure about what the programmable
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`interface is constitute an admission that a person having ordinary skill in the art
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`(PHOSITA) already possessed this knowledge and knew of components and
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`techniques for implementing the ideas described. See In re Fox, 471 F.2d 1405,
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`1407 (CCPA 1973) (claim elements which are not described in detail in the
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`patent specification are presumed to be known to those of ordinary skill in the
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`art); In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) (citing In re Fox with
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`approval: “the [application’s] disclosure fails to provide the same detailed
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`information concerning the claimed invention. In the absence of such a specific
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`description, we assume that anyone desiring to carry out such computerized
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`warehousing and inventory control systems would know of the equipment and
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`techniques to be used.”).
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`Petitioner accordingly asserts that “programmable interface” should be given
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`its plain and ordinary meaning.
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`coded number
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`2.
`The “coded number” as used in the independent claims is an authentication
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`code required to update the callers list. Ex. 1001 (the ‘717 patent), claim 1 (“use a
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`memory to store at least one telephone number included within … [a] transmission
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`... if the transmission[] include[s] the coded number”). The ‘717 patent describes
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`an example of this authentication using a coded number: authentication “may be
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`done in GSM using an SMS message, which includes data as well as a unique code
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`such as the unique code of the Subscriber Identity Module or SIM card, often
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`referred to as the PUK code.” Ex. 1001, 9:38-43. The ‘717 patent goes on to say
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`that the “choice of the PUK is made by way of example only and any similar
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`unique coding may be used for the purposes of the invention.” Ex. 1001 at 9:43-45
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`(emphasis added). The ‘717 patent further states: “the invention may make use of
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`all coding schemes for storing numbers to the programmable apparatus and the use
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`of the PUK code was by way of example only.” Ex. 1001 at 12: 25-28. Petitioner
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`accordingly asserts that for purposes of this proceeding, “coded number” should be
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`construed at least as broadly as to include any code used to authenticate a
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`transmission.
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`identity module
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`3.
`The “identity module” appears in each of the independent claims of the ‘717
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`patent. Ex. 1001 at 12:58, 15:12, 16: 25. The ‘717 patent explains that
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`authentication “may be done in GSM using an SMS message, which includes data
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`as well as a unique code such as the unique code of the Subscriber Identity Module
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`or SIM card, often referred to as the PUK code.” Ex. 1001 at 9:38-43.
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`Accordingly, a broadest reasonable interpretation of the identity module is any
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`device for storing the unique identifier or the coded number, including the SIM
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`card.
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`4. programming transmitter
`“Programming transmitter” appears in each of the independent claims of the
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`‘717 patent. Ex. 1001 at 12:40, 14:61, 16:7. The ‘717 patent does not expressly
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`describe a programming transmitter but does explain that an object of the invention
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`is to provide a programmable communicator that can be remotely programmed by
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`any mobile phone or IP device. Ex. 1001 at 4:14-17. Accordingly, the broadest
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`reasonable interpretation of programming transmitter is any IP device or mobile
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`phone capable of performing remote programming of a programmable
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`communicator.
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`V.
`Statement of How Each Claim is Unpatentable Based on the Prior Art
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`Petitioner asserts that each of claims 1-3, 5-7, 10-24, and 29-30 of the ‘717
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`patent are obvious in light of the prior art as set forth in detail below.
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`A. Claims 1-3, 5-7, 10-16, 18, 22-24, and 29-30 are obvious under 35
`U.S.C § 103 over Whitley in view of SIM+ME Spec and/or
`obvious under 35 U.S.C § 103 over Whitley in view of
`SIM+ME Spec and the Admitted Prior Art
`1.
`[1a] A programmable communicator device comprising:
`Whitley discloses a communication device with a transceiver, called a
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`“gateway”, that can be used to remotely monitor and control sensors and devices,
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`such as, home alarm systems, lights, and utility meters. Ex. 1003 at 8:27-9:8 and
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`16:20-21. The gateway may be installed in a home or business and may be
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`connected to any number of devices that generate data or that can be monitored.
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`Ex. 1003 at 8:27 – 9: 8. The gateway can then forward the data collected from
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`these devices wirelessly to a mobile phone, a centralized server, or other terminals.
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`Ex. 1003 at 16:23 – 17:5.
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`The system allows users to remotely, by a wireless network, control and
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`monitor the gateway as well as the connected utility meters, alarms, or other
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`devices installed in the homes or businesses. Whitley discloses that “each
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`uniquely addressable gateway includes a transceiver capable of communicating
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`over a wireless network.” Ex. 1003 at 3:3-14. Figure 1 of Whitley illustrates this
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`wireless communication system including the gateway 20:
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`
`Programming
`Transmitters
`
`Monitored
`Tech. Devices
`
`Programmable
`Communicator
`Ex. 1003, Figure 1 (annotated2).
`
`
`
`