For Defendant Cinterion Wireless
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` O'KELLY ERNST & BIELLI
` BY: GEORGE PAZUNIAK, ESQ
`-and-
` ANOVA LAW GROUP, PLLC
` BY: WENYE TAN, ESQ
` For Defendant Kowatec
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` NOVAK DRUCE CONNOLLY BOVE & QUIGG
` BY: FRANCIS DIGIOVANNI, ESQ
`-and-
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` K&L GATES
` BY: MICHAEL J. BETTINGER, ESQ
` For Defendants Novatel and Enfora
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`Court Reporter: LEONARD A. DIBBS
` Official Court Reporter
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` P R O C E E D I N G S
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` (The proceedings occurred at 9:10 o'clock a.m. in open
`court as follows:)
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`TRANSCRIPT OF MARKMAN HEARING
`BEFORE THE HONORABLE RICHARD G. ANDREWS
`UNITED STATES DISTRICT JUDGE
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`APPEARANCES:
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`For Plaintiff:
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`BAYARD, P.A.
`BY: RICHARD D. KIRK, ESQ
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`-and-
` FOLEY & LARDNER
` BY: MARC C. HENSCHKE, ESQ
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`For Defendants: MORRIS, NICHOLS, ARSHT & TUNNELL
` BY: JACK B. BLUMENFELD, ESQ
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`PEARL COHEN ZEDEK LATZER
` BY: DAVID A. LOWENSTEIN, ESQ
` For Defendants Motorola Solutions and Telit
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` MORRIS, NICHOLS, ARSHT & TUNNELL
` BY: THOMAS C. GRIMM, ESQ
`-and-
` NIXON PEABODY, LLP
` BY: CHRISTOPHER MOONEY, ESQ
` For Defendant Sierra Wireless
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` POTTER, ANDERSON & CORROON
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` BY: RICHARD L. HORWITZ, ESQ
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`-and-
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` MAYER BROWN
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` BY: BRIAN A. ROSENTHAL, ESQ
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` BY: BYRON T. WASSERMAN, ESQ
`1 of 72 sheets
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` THE COURT: Good morning. Please be seated.
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`This is a Markman Hearing in the matter of M2M
`9
`Solutions LLC v. Sierra Wireless America Inc., Civil Action No.
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`12-30, plus the next four consecutively numbered cases.
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` Mr. Kirk.
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` MR. KIRK: Good morning, your Honor.
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` Richard Kirk from the Bayard firm for the Plaintiff,
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`M2M Solutions. I'm joined by Marc Henschke from Foley &
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`Lardner.
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` Mr. Henschke has been before your Honor several times
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`in this case.
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` THE COURT: Good morning, Mr. Henschke.
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` MR. HENSCHKE: Good morning, your Honor.
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` THE COURT: So we have lots of defendants. I'm not
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`entirely sure who the people are sitting over there on that
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`side.
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` But, so -- Mr. Blumenfeld.
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` MR. BLUMENFELD: Yes.
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` THE COURT: Let me just see.
`Page 1 to 4 of 183
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`CA NO. 12-30, 12-31
`12-32, 12-33, 12-34
`September 12, 2013
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`9:00 o'clock a.m.
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`M2M SOLUTIONS, LLC,
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`Plaintiff,
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`v.
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`:
`:
`:
`:
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`:
`:
`:
`:
`:
`Defendants.
`.............................
`
`SIERRA WIRELESS AMERICA
`INC., et al.,
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`

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`121
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`into the claim than some other cases?
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`MR. BETTINGER: Right.
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`THE COURT: But what I really didn't understand is, is
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`there some hard and fast rule about this, or is it more of the
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`ordinary skill in the art of judging, to figure out what you
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`should do with a particular term, is my question?
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`MR. BETTINGER: Yes. I don't know that there is a hard
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`and fast rule, but what there is, is references to means in the
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`spec.
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` Put them now into that category. Hey, wait a second.
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`This requires a second look.
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`THE COURT: Well, what about the cases that Mr.
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`Henschke cited in his brief?
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` And, you know, he did -- and I forget now whether it
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`was that term or the module term, I think it may have been the
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`module term -- but, you know, he said they cite one minute order
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`from a Judge in California, you know, here's a laundry list of
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`cases.
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` Does he have the proportions of the judge's finding? I
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`mean was he right, that's that what the case -- the law that's
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`out there, the lay of the land?
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`MR. BETTINGER: I'll get to module, because that is a
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`bit of a different argument first, but the current law is the
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`Williamson case out of the Central District of California, Judge
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`They really don't supply any meaning, they're sort of like black
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`holes. Mechanism is one.
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` Can you go to the next slide?
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` We'll preview that, but I'll get -- let me get to that.
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`THE COURT: All right.
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`MR. BETTINGER: It requires one more point on this, but
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`that's the issue. There is module.
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` Should module be added to that list?
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` I want to talk to you about where the Patent Office is
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`on this. They recently, as referenced in the opinion, the
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`Patent Office has recently added that term to its list.
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`THE COURT: The nonce list?
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`MR. BETTINGER: The list of nonces.
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` So there's just one -- because it's a little bit of a
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`different argument, that -- that argument was on module itself.
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`This is on, you know, have we overcome the presumption. That's
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`what MIT requires.
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`THE COURT: Right. No, no, that's... yes. That's what
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`I got from your briefs.
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`MR. BETTINGER: And if we -- if we have overcome the
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`presumption, the case still isn't over, because you have to go
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`back and say, Okay, now it is a 112-6, what is the disclosed
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`structure?
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` All we're trying to do is first overcome the
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`presumption so that --
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`Mott, so that is my --
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`THE COURT: Well, that's the minute order that you
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`cited.
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`MR. BETTINGER: That's not the minute order. It's a
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`24-page Markman Order.
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`THE COURT: Well, no, no. But they just call -- that's
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`Circuit says are what are referred to as these nonce words.
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`THE COURT: Okay. Well, does MIT the help you, because
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`I mean part of it is, I think, let's say interface.
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` I understand you're saying programmable interface is
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`something different, but if it said an interface means,
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`interface means, and the claim said interface, and everybody was
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`agreed that people of ordinary skill in the art understood what
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`an interface was, the fact that it said interface means
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`throughout the specification would make no difference, right?
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`MR. BETTINGER: I don't think you would overcome the
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`presumption in that situation.
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`THE COURT: All right.
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`MR. BETTINGER: I would still make the argument, but I
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`don't --
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`THE COURT: No, no, no.
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`MR. BETTINGER: -- think that overcomes the presumption
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`if it just interface means.
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`THE COURT: Okay. And, so, here -- your point, which
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`is hard for me to evaluate -- but your point is programmable
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`interface means -- it's, essentially, not a term that people of
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`ordinary skill understand?
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`MR. BETTINGER: That's correct.
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`THE COURT: All right.
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` Even on that level -- forget the -- you know, not
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`getting into indefiniteness -- but in terms of figuring out
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`what they call --
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`MR. BETTINGER: Right.
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`THE COURT: -- but I agree with you.
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`MR. BETTINGER: We'll agree with that in some detail.
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`THE COURT: Right. When you read them, they look just
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`like things other people call memorandum opinions.
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`MR. BETTINGER: Yes, your Honor. And that's the way
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`we do it in California.
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` But, so, you'll see in that that Judge Mott relied upon
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`-- acknowledges all the cases that say "module," that talk about
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`module. There are a number in Texas, there is a Kansas case,
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`there is a Southern District of New York, and there is a Georgia
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`case, I believe, that are the ones that say, Hey, look, for
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`purposes of this case, module we are going to say has some
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`meaning.
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` In the Williamson case, the Judge takes all those into
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`account and says, No, it doesn't. It really is just a generic
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`term and it should be added to that list.
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` There is list of three terms that even the Federal
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`what people of ordinary skill in the art understand, or
`Page 121 to 124 of 183
`09/23/2013 12:08:35 PM
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`

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`125
`understood that term, whatever is written, other than yours and
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`Mr. Henschke's persuasive arguments, is there any actual way for
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`me to figure that out?
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`MR. BETTINGER: Well, there is one alternative, I
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`think, for your Honor.
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` If you provide a definition in this case, what needs to
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`be set -- what it needs to be is a distinction that the
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`interface, itself, is programmable.
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` If you are going to go beyond and say, Look, I don't
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`think you rebutted the presumption, or even if you have, there's
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`going to be sufficient structure. Then from a definitional
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`standpoint, at least what this is requiring is a programmable
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`interface separate and apart from a programmable communicator.
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`THE COURT: So that's what you don't like about the
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`plaintiff's definition, because it says, A hardware interface
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`with an associated management software, though, that doesn't
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`necessarily mean that it's programming the interface?
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`MR. BETTINGER: Correct. There's a fudge factor built
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`into their definition that allows them, when you're at the
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`processor level to say, Oh, look, the processor is doing some
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`kind of programming, and, look, the interface is part of that.
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`THE COURT: No. I mean I think I understand.
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`MR. BETTINGER: So thinking that we might get to this
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`point in the argument, I do think, if we're going to go with the
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`definition, what needs to be clear in that definition is, this
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`MR. BETTINGER: All right.
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` Let me go back.
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` (Pause)
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` So the Hayes patent. That's the Hayes patent. It's
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`called the '312.
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`THE COURT: Right. I get that.
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`MR. BETTINGER: All right.
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` And then in looking at this connector 180 -- and this
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`is the patentee's language -- this is the plaintiff coming in --
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`the connector 180, the argument was that that's a programmable
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`interface. That's what the examiner said.
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` They said, No, no, no. 180 is only an electrical
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`connection between two devices. That is -- does not meet the
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`requirements of our patent, because it does not suggest that the
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`connector is programmable.
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`THE COURT: Right. But that's -- that doesn't exactly
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`address the point as to whether it's separately programmable,
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`does it?
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`MR. BETTINGER: It has to be programmable.
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`THE COURT: Well, no, no. Right.
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` So what it sounds to me like what you're arguing for
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`that is, that if you have a programmable interface with a
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`programmable communications device, or whatever the term is,
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`that you need to have two separate programs -- two programs?
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`MR. BETTINGER: Well, you need to do something to
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`is a separately programmed interface. And that is consistent
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`with everything in the patent, the specification.
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` And it would be consistent with the distinction of the
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`Hayes '312 patent, which is just to have an interface that is an
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`electrical connection between two devices is not enough. It has
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`to be programmable.
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`THE COURT: And, so, basically, the argument in favor
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`of your position is, again, just kind of -- and I'm
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`characterizing and you don't have to accept my characterization,
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`obviously -- it's just, essentially, the plain meaning. So
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`programmable interface, that must be an interface that can be
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`programmed.
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`MR. BETTINGER: Yes. I would go one step further, and
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`just make clear that that program is separately from the
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`communicator, itself.
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`THE COURT: Well, where are you getting the separately
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`end -- but we do have a position that the definition that they
`Page 125 to 128 of 183
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`program the interface, as opposed to just programming it --
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`THE COURT: Well, no, no. By something to program the
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`interface, that doesn't necessarily mean that that same thing
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`can't also be a programming the communications device.
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`MR. BETTINGER: Fair enough.
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` But what I'm getting at is the point that programming
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`the device is not enough --
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`THE COURT: No, no, no.
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`MR. BETTINGER: -- i.e., specific programming of the
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`interface.
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`THE COURT: No, no. I think actually -- and you and I
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`actually understand each other now I think -- you're saying the
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`interface needs to be able to be -- well, maybe not separately,
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`but directly programmed.
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` And I'm saying, Well maybe you need -- maybe that's the
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`plain meaning of that sort of phrase -- but that doesn't mean
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`that whatever the programming is, it can't also be programming
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`something else.
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`MR. BETTINGER: You're correct. It's not exclusive.
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`But it has to be inclusive of the interface.
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` Can I turn briefly to the processing module?
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`THE COURT: Okay. Sure.
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`MR. BETTINGER: Okay. And the difference on that is --
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`let me just -- and we do have a position, I'll leave this to the
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`at the time with the Hayes thing that was being shown.
`09/23/2013 12:08:35 PM
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`from?
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`MR. BETTINGER: Because then it's being culled out in
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`distinguishing the Hayes reference. It would be a required
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`element that that interface be programmable.
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`THE COURT: Well --
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`MR. BETTINGER: That's how they overcame the Hayes
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`'312.
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`THE COURT: -- okay. So I didn't understand that point
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`129
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`propose is just unworkable.
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` If you stick it back in, in -- in the -- in the claim,
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`itself, in that particular part of the language, and it just
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`becomes -- if you can just move forward?
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` This is their proposed definition. When you put it
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`back in the claims, it becomes redundant, and under, Abbott
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`Labs, you know, the whole purpose of this is to help the jury,
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`and it's like --
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`THE COURT: Well, that's one of the purposes. That's
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`not the only purpose.
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`MR. BETTINGER: I leave it to your Honor.
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` But if that is the definition, that's going to be how
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`the first claim looks, it's --
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`MR. HENSCHKE: Nobody is suggesting that that's how it
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`should be.
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`MR. BETTINGER: Okay. Well, then, let me then move to
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`the argument itself.
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`THE COURT: Okay.
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`MR. BETTINGER: Here's the difference here.
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` This claim module, this claim's processing module, and
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`our position on this is, the term "module" has now entered the
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`lexicon in patent law of the words mechanism, element, and
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`device, which the Federal Circuit has, in a number of cases --
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`THE COURT: And that's what you said that Judge Mott
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`So he concludes that module is simply a generic
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`description for software or hardware that performs a specified
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`function.
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` And says, In this case, that is the conclusion in which
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`I draw with module, therefore, I -- the presumption is rebutted,
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`and I am going to look at this as a 112-6, because you've only
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`used the term "module".
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` But the Judge then goes on, in the next part of the
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`decision, to refer to the Ranpak v. Storopak. It's an
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`unpublished decision out of the Federal Circuit where the term
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`was settable control module, and with that --
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`THE COURT: How much of the fact that that's a
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`15-year-old Federal Circuit unpublished decision -- I mean
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`haven't we, you know, defining whatever weight it had in 1998,
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`isn't it kind of losing weight as time goes on?
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`MR. BETTINGER: Well, each one of these cases is going
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`to be somewhat fact dependent, just by the nature of the beast.
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` He refers to it as, Look, it's out there, it is a
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`Federal Circuit decision, it did address thia issue, it did
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`address it in the context of rebutting a 112-6.
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` What was at issue was a settable control module and,
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`again, these are fact specific type cases.
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` In this particular one what it's saying is, Look, we're
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`not trying to break new ground here. The Federal Circuit, in
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`the past -- it's the only Federal Circuit case that we're aware
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`said in Williamson?
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`that's what the Judge is addressing.
`33 of 72 sheets
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`there's no 112-6.
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` What we've done here is at Pages 24 and 25 of the
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`decision, we've taken out -- there are three parts to Judge
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`Mott's decision that he looks at.
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` The first is module, and we're in the same situation in
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`this case.
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` Where the term "module" is used, does that mean 112-6
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`should apply?
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` Is there -- if means doesn't, but do you rebut the
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`presumption, and apply, and say this is a 112-6 claim, and
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`of where the term "module" has been at issue. These are all
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`District Court cases otherwise.
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` But then the third thing that Judge Mott cites to is
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`the Supplementary Examination Guidelines for determining
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`compliance with 35, USC 112, and these are the guidelines for
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`the Patent Office that were published in February of 2011,
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`where they've addressed these nonces.
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`THE COURT: Well, so, at least for the '010 patent that
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`was issued before these guidelines, right?
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`MR. BETTINGER: February of 2011. I'm sorry. I'm not
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`--
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`THE COURT: Well, the older of the two patents -- thank
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`you -- were issued quite a bit of time before this, right?
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`MR. BETTINGER: Yes.
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`THE COURT: I guess the other one issued in 2011 --
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`'12?
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`lawsuit.
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`MR. BETTINGER: 2012, January.
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`THE COURT: Right, right. A few days before the
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`MR. BETTINGER: Right. Definitely.
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`THE COURT: All right.
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`MR. BETTINGER: So -- so we looked for guidance,
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`because, you know, look, there are establish terms that the
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`Federal Circuit, and everybody agrees, that there is a long line
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`MR. BETTINGER: Yes.
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` So let me turn to that. If you could go to Slide 86,
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`please?
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` This is the Williamson case. In preparing for this, it
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`was clear that the Westlaw cite that was made, was not to the
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`September 24 Markman.
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` I do have a copy of that for the Court's convenience.
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`THE COURT: All right. Sure.
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`MR. BETTINGER: And, as I mentioned, this was September
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`of 2012, which is the most recent pronouncement that we've been
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`able to see on this point, and full acknowledgement that there
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`are other cases that have, prior to this, found -- found that
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`the term "module," does not have enough structure to -- that you
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`can't overcome the 112-6, can't overcome the presumption that
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`of cases from Lighting World to Welker Bearing to Personalized
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