Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`
`TELIT WIRELESS SOLUTIONS INC.
`and
`TELIT COMMUNICATIONS PLC,
`Petitioners,
`
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`
`
`
`Case IPR2016-00054
`Patent 8,648,717
`_______________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
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`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-14
`
`

`
`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`TABLE OF CONTENTS
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`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 1
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`III. CLAIM CONSTRUCTION ............................................................................ 2
`A.
`“numbers to which the programmable communicator device is
`configured to and permitted to send outgoing wireless
`transmissions” ....................................................................................... 2
`
`IV. STANDARD FOR INSTITUTING INTER PARTES REVIEW ................... 5
`
`V. GROUNDS 4, 5, 9 and 10 SHOULD BE DENIED BECAUSE
`THEY PRESENT THE SAME ART AND ARGUMENT
`PREVIOUSLY CONSIDERED BY THE OFFICE ........................................ 6
`A. McGarry Was Considered During Prosecution .................................... 7
`B. Whitley Was Considered During Prosecution ...................................... 7
`C.
`The Petitioners Make No Attempt to Overcome the
`Presumption of Administrative Correctness ......................................... 7
`Petitioners Add Nothing More than What Is Already in the
`Record with Respect to McGarry and Whitley ...................................10
`
`D.
`
`B.
`
`VI. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`DEMONSTRATE A REASONABLE LIKELIHOOD OF SUCCESS ........11
`A.
`Petitioners’ Apply an Incorrect Claim Construction for Grounds
`1-5 ........................................................................................................11
`Petitioners’ Obviousness Analysis Is Inadequate ...............................12
`1.
`The Petitioners failed to articulate the differences
`between the claimed invention and the prior art .......................12
`The Petitioners have not provided an adequate rationale
`to combine the references .........................................................14
`C. Wandel in View of Boden Fail Either to Disclose All Elements
`in the Claims 1-3, 5-15, 18, and 23-28 or to Render Those
`Claims Obvious as Alleged in Ground 6 .............................................14
`1.
`“a programmable interface for establishing a
`communication link with at least one monitored
`technical device,” (element (a)) ................................................16
`“the one or more stored telephone numbers or IP
`addresses being numbers to which the programmable
`
`2.
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`2.
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`2.
`
`3.
`
`communicator device is configured to and permitted to
`send outgoing wireless transmissions;” (element (e)) ..............21
`“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
`message.”(element (h)) .............................................................26
`4. Wandel and/or Boden do not disclose all of the elements
`of claim 24. ...............................................................................30
`D. Wandel Fails to Disclose Material Elements Present in
`Dependent Claims 5, 10, 11, and 12. ..................................................31
`1.
`“A programmable communicator device according to
`claim 1 further configured to request that an at least one
`monitored technical device send data through the
`programmable interface for processing by the
`programmable communicator device in response to
`programming instructions received in an incoming
`wireless packet switched data message.” (Claim 5) .................31
`“A programmable communicator device according to
`claim 1 further configured to request that an at least one
`monitored technical device send data through the
`programmable interface for receipt by the programmable
`communicator device in response to programming
`instructions received in an incoming wireless packet
`switched data message.” (Claim 12) .........................................31
`“A programmable communicator device according to
`claim 1 further configured to determine whether the
`processed received data indicates a change in status of
`the at least one monitored technical device that crosses a
`threshold parameter, or that otherwise indicates an alarm
`condition in response to programming instructions
`received in an incoming wireless packet switched data
`message.” (Claim 10) ................................................................33
`“A programmable communicator device according to
`claim 10 further configured to send an at least one
`transmission for alerting an at least one monitoring
`device of said change in status or other alarm condition
`in response to programming instructions received in an
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`3.
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`incoming wireless packet switched data message.”
`(Claim 11) .................................................................................35
`E. Wandel and Boden in View of Sonera Fail Either to Disclose
`All Elements in Claim 4 or Render That Claim Obvious as
`Alleged in Ground 7. ...........................................................................36
`F. Wandel and Boden in View of Fernandez Fail Either to
`Disclose All Elements in Claims 16-17, 19-20, 22 or Render
`Those Claims Obvious as Alleged in Ground 8. .................................38
`1.
`“A programmable communicator device according to
`claim 1 further comprising a location processing module
`configured to determine an at least one location of the
`programmable communicator device, and wherein the
`programmable communicator device is configured to
`respond to an at least one transmission initiated by an at
`least one monitoring device requesting that said location
`data be sent to the monitoring device in response to
`programming instructions received in an incoming
`wireless packet switched data message.” (Claim 16) ...............38
`“A programmable communicator device according to
`claim 16 wherein the location processing module
`comprises a Global Positioning System (GPS) module.”
`(Claim 17) .................................................................................38
`“A programmable communicator device according to
`claim 1 wherein the monitored technical device is a
`health monitoring system.” (Claim 19) .....................................40
`“A programmable communicator device according to
`claim 19 wherein the programmable communicator
`device is configured to receive data from the health
`monitoring system through the programmable interface
`representing at least one of body temperature, blood
`pressure, periodic or continuous electrocardiogram health
`rhythm, blood glucose concentration, blood electrolyte
`concentration, kidney function, liver function, and labor
`contractions in response to programming instructions
`received in an incoming wireless packet switched data
`message.” (Claim 20) ................................................................41
`“A programmable communicator device according to
`claim 1 wherein the monitored technical device is a home
`or domestic appliance.”(Claim 22) ...........................................42
`
`4.
`
`2.
`
`3.
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`2.
`
`3.
`
`G. Wandel and Boden in View of McGarry Fail Either to Disclose
`All Elements in Claim 21 or Render That Claim Obvious as
`Alleged in Ground 9. ...........................................................................43
`H. Wandel and Boden in View of Whitley Fail Either to Disclose
`All Elements in Claims 29 and 30 or Render Those Claims
`Obvious as Alleged in Ground 10. ......................................................44
`1.
`“a programmable interface for establishing a
`communication link with at least one monitored technical
`device,” (element 29(a)) ............................................................44
`“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;” (element 29(e)) ..........44
`wherein the one or more wireless transmissions from the
`programming transmitter containing instructions to
`program the stored number comprise one or more short
`message service (SMS) data messages; and” (element
`29(g)) .........................................................................................45
`“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 at least one incoming short message service
`(SMS) data message or packet switched data message.”
`(element 29(h)) ..........................................................................46
`“A programmable communicator device according to
`claim 29 wherein the processing module processes
`received data to determine whether it indicates a change
`in status of the at least one monitored technical device
`that crosses a threshold parameter, or that otherwise
`indicates an alarm condition.” (Claim 30) ................................46
`
`4.
`
`5.
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`VII. CONCLUSION ..............................................................................................46
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Continental Can Co. USA v. Monsanto Co.,
`948 F.2d 1264 (Fed. Cir. 1991) .......................................................................... 23
`
`Graham v. John Deere Co.
`383 U.S. 1 (1966) ................................................................................................ 12
`
`Heart Failure Tech., LLC v. CardioKinetix, Inc.,
`IPR2013-00183 (PTAB July 31, 2013) .............................................................. 14
`
`Helmsderfer v. Bobrick Washroom Equip., Inc.,
`527 F.3d 1379 (Fed. Cir. 2008) ............................................................................ 4
`
`Integrated Global Conc., Inc. v. Adv.Messaging Tech., Inc.,
`IPR2014-01027, (PTAB Dec. 22, 2014) ............................................................ 10
`
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2015-01402 (PTAB October 21, 2015). ................................................. 13, 14
`
`Karim v. Jobson, Interference No. 105,376, (B.P.A.I. Feb. 28, 2007) ..................... 8
`
`Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., IPR2014-
`00529 (PTAB September 23, 2014) .................................................................. 26
`
`KSR Int’l Co. v Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 12
`
`Luminara Worldwide, LLC v. Shenzhen Liown Electronics Co. Ltd,
`IPR2015-01183 (PTAB November 5, 2015) .......................................... 13, 25, 37
`
`Parsons v. United States,
`670 F.2d 164 (Ct. Cl. 1982) .................................................................................. 8
`
`In re Portola Packaging, Inc.,
`110 F.3d 786 (Fed. Cir. 1997) (overruled on other grounds by 35
`U.S.C. § 303(a)) .................................................................................................... 8
`
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ............................................................................ 8
`
`Praxair Distribution, Inc. v. Ino Therapeutics, LLC.,
`IPR2015-00893(PTAB Sept. 22, 2015) .............................................................. 10
`
`Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.,
`IPR2014-00315 (PTAB July 8, 2014) ................................................................ 10
`
`Shire, LLC v. Amneal Pharms., LLC,
`802 F.3d 1301 (Fed. Cir. 2015) ........................................................................ 8, 9
`
`Statutes
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`35 U.S.C. § 103 ........................................................................................................ 12
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`35 U.S.C. § 312(a)(3) ................................................................................................ 6
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`35 U.S.C. § 313 .................................................................................................. 1, 5, 6
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`35 U.S.C. § 314(a) ................................................................................................. 5, 6
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`35 U.S.C. § 325(d) ................................................................................................... 10
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`Other Authorities
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`vi
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`
`EXHIBIT LIST
`
`Ex. #
`
`2001
`
`2002
`
`2003
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`Exhibit
`
`Affidavit in Support of Motion for Pro Hac Vice Admission of
`Michelle Moran, 37 C.F.R. § 42.10(c), September 8, 2015.
`
`Excerpts of the patent prosecution history of Application No.
`13/934,763 that issued as U.S. Patent No. 8,648,717.
`
`Excerpts of the Transcript of Markman Hearing held in M2M
`Solutions LLC v. Sierra Wireless America, et al., Case No. 12-030-
`RGA (DED), September 12, 2013.
`
`2004
`
`Declaration of Michelle A. Moran, February 1, 2016.
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`vii
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`I.
`
`INTRODUCTION
`
`M2M Solutions LLC (“M2M”) submits this preliminary response under 35
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`U.S.C. § 313 and 37 C.F.R. § 42.107 to the petition of Telit Wireless Solutions
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`Inc. and Telit Communications PLC (collectively, “Petitioners”) for inter partes
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`review of claims 1-30 of U.S. Patent No. 8,678,717 (“the ’717 Patent”). This
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`preliminary response is timely filed within three months of the Board’s notice,
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`mailed October 30, 2015. For the reasons set forth herein and in the accompanying
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`exhibits, Petitioners’ petition for inter partes review should be denied.
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`II. BACKGROUND
`The claimed inventions of the ’717 patent relate to wireless modules and
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`related devices designed and intended for use in machine-to-machine
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`communications. These machine-to-machine communications encompass a variety
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`of applications in which one machine is able to remotely monitor a second machine
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`in a relatively autonomous fashion by communicating with or through a wireless
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`module that is embedded in or otherwise linked to that second machine. For
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`example, machine-to-machine applications are prevalent in the fields of automated
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`meter reading, asset tracking and fleet management, automotive telematics,
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`commercial and residential security systems, wireless telemedicine and healthcare
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`devices, industrial automation and controls, remote information displays and
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`digital signage, and the remote control of certain consumer devices and appliances,
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`Inter Partes Review of U.S. Patent No. 8,648,717
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`point of sale payment systems, vending machines, kiosks, and ATM and banking
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`machines.
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`III. CLAIM CONSTRUCTION
`Petitioners propose construction for two terms. Of those two terms, M2M
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`does not disagree with Petitioners’ proposed construction for “programmable.”
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`However, M2M disagrees with the proposed constructions for the other term as
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`discussed below.
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`A.
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`“numbers to which the programmable communicator device is
`configured to and permitted to send outgoing wireless
`transmissions”
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`Prior to the filing the Petition, the parties were in agreement that this
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`limitation requires a restrictive outbound calling list. (See, e.g., Ex. 1009 at 6.)
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`Claim element 1(e) recites that the claimed programmable communicator device is
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`configured to store in memory a list of telephone numbers or IP addresses “to
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`which the programmable communicator is configured to and permitted to send
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`outgoing wireless transmissions.” The parties agreed that the “permitted to” claim
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`language means that the recited calling list must function in a manner that limits
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`the programmable communicator device to sending one or more types of outgoing
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`wireless transmissions to only those telephone numbers or IP addresses contained
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`in the list. In the pending ’717 patent litigations, Petitioners’ proposed
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`construction for the outbound calling list recited in claim element 1(e) is the
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`following: “the exclusive set of numbers to which the programmable
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`communicator is limited to sending any outgoing wireless transmissions.” (Id.)
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`Petitioners now take the position that the outbound calling list recited in
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`claim element 1(e) should be construed as non-restrictive in nature. (Pet. at 9.)
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`Under Petitioners’ new position, the calling list recited in the claim language
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`should be understood as a list of telephone numbers or IP addresses to which the
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`programmable communicator device is “built to make” (i.e., able) or “allowed to
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`send outgoing wireless transmissions.” (Id. at 9, 11.) However, Petitioners’
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`arguments do not support this erroneous claim construction.
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`First, Petitioners now argue that there is “no disclosure in the ’717 Patent to
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`support an interpretation” of an outbound calling list feature that is restrictive in
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`nature – i.e., a list where outbound transmissions to unlisted numbers would be
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`“not permitted but [rather] screened, blocked, or filtered.” (Pet. at 10-11.) To the
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`contrary, however, the patent specification contains multiple examples of such
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`disclosures. Indeed, Petitioners ignore a specification passage which refers to a
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`mechanism that “restricts the usage” of the programmable communicator device so
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`as to prevent “uncontrolled calling.” (Ex. 1001, 2:28-32.) The only conceivable
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`mechanism of this type described anywhere in the patent is an outbound calling list
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`feature. Similarly, the specification elsewhere describes the programmable
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`communicator device as having a “means to prevent the . . . dialing [of certain]
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`numbers,” such as overseas international numbers. (Id., 2:20-23.) Once again, the
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`only means described in the patent that would be capable of accomplishing this
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`purpose is an restrictive outbound calling list. Petitioners’ assertion that this
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`passage instead refers to “restricting calls based on country codes” (Pet. at 11) is
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`completely unsupported by anything in the intrinsic record.
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`Second, Petitioners misstate the record from the underlying ’010 patent
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`litigations by suggesting that there the Court somehow determined that in the
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`patent specification “call screening only applies to incoming (but not outgoing)
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`transmissions.” (Pet. at 10 (citing Ex. 1007, at 7).) The Court was not addressing
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`that topic and accordingly did not suggest that proposition. (Id.) Rather, the Court
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`was attempting to construe the meaning of the “permitted caller” claim term from
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`the ’010 patent and ascertain whether it was intended to encompass outbound
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`callers as well as inbound callers. (Id.) Here the “permitted caller” term is absent
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`from the ’717 patent claims that are the subject of the present Petition.
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`Third, to support its position that the recited outbound calling list is
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`purportedly non-restrictive, Petitioners seek to read the “permitted to” limitation
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`out of the claim language by arguing that it should be given the same meaning as
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`the “configured to” limitation that is already present in the claim language. (Pet. at
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`12.) This is an improper approach to claim construction as a matter of law. See,
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`e.g., Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed.
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`Inter Partes Review of U.S. Patent No. 8,648,717
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`Cir. 2008) (“precedent instructs that different claim terms are presumed to have
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`different meanings.”). In any event, Petitioners’ citation to the ’717 prosecution
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`history in support of its argument is unavailing and instead serves to prove the
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`opposite of what Petitioners are advocating. (Pet. at 11 (citing Ex. 1004 at 31).)
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`Indeed, the prosecution history shows that the Examiner required the Applicant to
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`add “permitted to” language to pending claims that already included “configured
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`to” language. (Id.) Thus, the Examiner believed that the term “permitted to”
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`meant something different from “configured to.”
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`In apparent recognition that its argument for a non-restrictive outbound
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`calling list claim construction might prove unpersuasive, Petitioners apply an
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`alternative, and proper, claim construction that requires a restrictive outbound
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`calling list in Grounds 6-10 (which Petitioners explain in a few conclusory
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`paragraphs). (Pet. at 11, 55-58.)
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`IV. STANDARD FOR INSTITUTING INTER PARTES REVIEW
`The Board may not grant a petition for inter partes review unless the Board
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`“determines that the information presented in the petition filed under section 311
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`and any response filed under section 313 shows that there is a reasonable
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`likelihood that the petitioner would prevail.” 35 U.S.C. § 314(a).
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`Section 314(a) requires the Board’s determination to be based on
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`“information presented in the petition.” Likewise, the Petitioners have a statutory
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`obligation under § 312(a)(3) to identify “with particularity, each claim challenged,
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`the grounds on which the challenge to each claim is based, and the evidence that
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`supports the grounds for the challenge to each claim.” Thus, it is not for the Board
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`to fill in gaps omitted by the Petitioners.
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`Equally important is § 314(a)’s requirement that the Board’s determination
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`take into account “information presented in . . . any response filed under section
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`313.” In other words, the Board’s determination must be based on the totality of
`
`the written evidence presented at the pre-trial stage.
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`Ultimately, the focus of the inquiry under § 314(a) is whether the Petitioners
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`“would prevail” – i.e., win on the merits based exclusively on the “information
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`presented in the petition . . . and any response.” 35 U.S.C. § 314(a).
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`As detailed below, Petitioners have not satisfied their burden of proving
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`unpatentability by a preponderance of the evidence and the petition for inter partes
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`review should be denied.
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`V. GROUNDS 4, 5, 9 AND 10 SHOULD BE DENIED BECAUSE THEY
`PRESENT THE SAME ART AND ARGUMENT PREVIOUSLY
`CONSIDERED BY THE OFFICE
`
`The art relied on for Grounds 4, 5, 9 and 10 was previously considered by
`
`the PTO during prosecution of the ’717 patent. As a result, the Petitioners bear a
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`heightened burden of overcoming the presumption of administrative correctness
`
`that accompanies an examiner’s performance of his or her job. The Petitioners
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`made no attempt to demonstrate that they could overcome this presumption, and
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`the petition should be denied on that basis alone.
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`A. McGarry Was Considered During Prosecution
`U.S. Patent No. 6,038,491 to McGarry et al. (“McGarry” (Ex. 1025)), relied
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`on for Grounds 4 and 9 was presented to and considered by the examiner during
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`prosecution. (Ex. 2002 at 2.) It is shown on the face of the ’717 patent under
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`“References Cited.” (Ex. 1001, p. 2.)
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`B. Whitley Was Considered During Prosecution
`International Publication WO 99/49680 to Whitley et al. (“Whitley” (Ex.
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`1026)), relied on for Grounds 7 and 14 was also presented to and considered by the
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`examiner during prosecution. (Ex. 2002 at 5.) It is shown on the face of the ’717
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`patent under “References Cited.” (Ex. 1001, p. 2.)
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`C. The Petitioners Make No Attempt to Overcome the Presumption
`of Administrative Correctness
`
`Because the examiner properly considered and fully evaluated McGarry and
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`Whitley, the Petitioners bear a heightened burden of overcoming the presumption
`
`of administrative correctness. The Petitioners make no attempt to demonstrate that
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`they can overcome that presumption, and the Board should deny the petition on
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`that basis alone.
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`For decades, the Supreme Court, the Federal Circuit, and its predecessor the
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`Court of Claims have repeatedly applied a presumption of administrative
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`correctness for agency action: “It is well established that there is a presumption
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`that public officers perform their duties correctly, fairly, in good faith, and in
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`accordance with law and governing regulations and the burden is on the plaintiff to
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`prove otherwise.” Parsons v. United States, 670 F.2d 164, 166 (Ct. Cl. 1982)
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`(citing United States v. Chemical Found., Inc., 272 U.S. 1, 12, 14-15 (1926)).
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`The Federal Circuit has consistently applied that presumption in the context
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`of patent law. See, e.g., PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
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`1304 (Fed. Cir. 2008) (examiners are assumed to have expertise in evaluating the
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`references). Furthermore, the Federal Circuit has applied the presumption on
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`direct review of Board decisions. In re Portola Packaging, Inc., 110 F.3d 786, 790
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`(Fed. Cir. 1997) (patent examiners are presumed to have “properly discharged their
`
`official duties”) (overruled on other grounds by 35 U.S.C. § 303(a)).
`
`Moreover, the Board itself has applied this presumption in a contested
`
`proceeding – an interference. Karim v. Jobson, Interference No. 105,376, Paper
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`99, p. 10 (B.P.A.I. Feb. 28, 2007) (“examiners in the USPTO are deserving of the
`
`presumption expressed by the Federal Circuit.”).
`
`In a recent decision, the Federal Circuit applied this presumption in
`
`affirming a summary judgment of validity, explaining that the primary reference
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`“is listed on the face of the patents-in-suit and therefore the examiner is presumed
`
`to have considered it.” Shire, LLC v. Amneal Pharms., LLC, 802 F.3d 1301, 1307
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`(Fed. Cir. 2015). The Federal Circuit explained that, in such a situation, a patent
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`challenger therefore has “‘the added burden of overcoming the deference that is
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`due to a qualified government agency presumed to have properly done its job,
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`which includes one or more examiners who are assumed to have some expertise in
`
`interpreting the references and to be familiar from their work with the level of skill
`
`in the art and whose duty it is to issue only valid patents.’” Id. (emphasis added)
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`(quoting PowerOasis, 522 F.3d at 1304).
`
`Here, as with the reference in Shire, McGarry and Whitley appear on the
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`face of the patent. These references were presented to and considered by the
`
`examiner during prosecution. (Ex. 2002 at 2, 5.) Based on the well-settled
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`presumption that the examiner did his job and the unrebutted presumption of
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`administrative correctness, the examiner fully evaluated each reference.
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`The Petitioners made no attempt to demonstrate that they could overcome
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`the “added burden of overcoming the deference that is due to a qualified
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`government agency presumed to have properly done its job.” Shire, 802 F.3d
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`1301, 1307 (emphasis added). Petitioners should not be permitted to consume the
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`resources of both M2M and the Board to retread ground already covered by the
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`PTO. Because the art was previously considered and the Petitioners made no
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`attempt to overcome their added burden, the Board should deny institution of inter
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`partes review on Grounds 4, 5, 9 and 10.
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`D.
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`Petitioners Add Nothing More than What Is Already in the
`Record with Respect to McGarry and Whitley
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`The Board has previously exercised its discretion under 35 U.S.C. § 325(d)
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`to deny a petition where art and arguments were previously submitted to and
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`considered by the Examiner during prosecution. E.g., Prism Pharma Co., Ltd. v.
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`Choongwae Pharma Corp., IPR2014-00315, slip op. at 2 (PTAB July 8, 2014)
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`(Paper 14) (informative decision).
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`This case is not like Praxair, where the petition included “additional
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`evidence not considered by the examiner.” Praxair Distribution, Inc. v. Ino
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`Therapeutics, LLC., IPR2015-00893, slip op. at 9 (PTAB Sept. 22, 2015) (Paper
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`14). Here, Petitioners and their expert do not supplement the underlying record
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`with respect to McGarry and Whitley. Thus, while Petitioners provide an expert
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`declaration in support of its arguments in Grounds 4, 5, 9 and 10, the declaration
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`“does not present any persuasive evidence to supplement the record that was in
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`front of the Office.” Integrated Global Conc., Inc. v. Adv.Messaging Tech., Inc.,
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`IPR2014-01027, slip op. at 7 (PTAB Dec. 22, 2014) (Paper 16).
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`The record is clear: McGarry and Whitley were previously presented to the
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`PTO and by offering these references again, without any additional information not
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`previously presented, Petitioners violate 35 U.S.C. § 325(d), and the Board should
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`deny this petition for inter partes review on that basis.
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`10
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`VI. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`DEMONSTRATE A REASONABLE LIKELIHOOD OF SUCCESS
`A.
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`Petitioners’ Apply an Incorrect Claim Construction for Grounds
`1-5
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`As discussed above, Petitioners propose a construction for the limitation
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`“numbers to which the programmable communicator devise is configured to and
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`permitted to send outgoing wireless transmissions” as a non-restrictive calling list.
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`Based on this construction, Petitioners assert in Ground 1 that U.S. Patent No.
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`6,034,623 to Wandel (“Wandel”) (Ex. 1013) anticipates claims 1-3, 5-15, 18 and
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`23-28. (Pet. at 12-38.) Petitioners use this same construction for Grounds 2-5.
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`(Pet. at 38-55.)
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`Petitioners’ claim construction is wrong for the reasons explained above.
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`Importantly, Petitioners admit that Wandel does not disclose this limitation
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`when it is (properly) construed, as advocated by M2M, to require a restrictive
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`calling list. (Pet. at 22. (“If the claims are construed to require call blocking, see
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`Grounds 6-10.”)). Petitioners submit alternative Grounds 6-10 that add U.S. Patent
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`No. 6,182,228 to Boden et al. (“Boden”) (Ex. 1027) to address this limitation when
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`it is construed as requiring a restrictive calling list. (Pet. at 57 (“It would have
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`been obvious to a person of ordinary skill in the art to make Wandel’s ‘destination
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`address[es] for log packets,’ an exclusive set of permitted addresses by filtering
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`packets to all other addresses as disclosed in Boden, in order to prevent
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`unauthorized users from monitoring Wandel’s external I/O devices.”))
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`Because Petitioners rely on an improper construction for Grounds 1-5 and
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`admit that Wandel does not meet this limitation when construed as advocated by
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`M2M, the Board should reject instituting inter partes review on Grounds 1-5.
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`Petitioners’ Obviousness Analysis Is Inadequate
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`B.
`Petitioners assert nine grounds of unpatentability under 35 U.S.C. § 103.
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`Each ground relies on Wandel (Ex. 1013), and five of those grounds also rely on
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`Boden (Ex. 1027). However,