UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`TELIT WIRELESS SOLUTIONS INC. and
`TELIT COMMUNICATIONS PLC,
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`
`
`
`________________
`
`Case IPR2016-00054
`Patent 8,648,717 B2
`________________
`
`
`
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page(s)
`
`
`I. Petitioner’s Request For Rehearing ……………………………………………..1
`
`
`
`II.
`
`Introduction ........................................................................................................ 3
`
`III. Precise Relief Requested ................................................................................... 4
`
`IV. Legal Standard ................................................................................................... 5
`
`V. “Good Cause” .................................................................................................... 6
`
`VI. “Interests of Justice” .......................................................................................... 7
`
`VII. Capability ........................................................................................................ 8
`
`VIII. Wandel’s Device Was Capable Of Using IP Addresses ................................. 10
`
`IX. Boden Disclosed IP Addresses ........................................................................ 11
`
`X. Conclusion ....................................................................................................... 13
`
`
`
`i
`
`

`
`
`
`
`
`Request for Rehearing in IPR2016-00054
`
`TABLE OF AUTHORITIES
`
`Cases
`Arnold Partnership v. Dudas,
`362 F.3d 1338 (Fed. Cir. 2004) .............................................................................. 6
`Ex parte Scortecci, No. 2014-001781, 2016 Pat. App. LEXIS 1052 (PTAB, Mar.
`17, 2016) ................................................................................................................. 9
`Ex parte Vesto, No. 2013-009212, 2016 Pat. App. LEXIS 2105 (Nov. 7, 2014) ..... 9
`Ex parte Cruz-Hernandez, No. 2014-000203, 2016 Pat. App. LEXIS 1627 (PTAB,
`Feb. 1, 2016) ......................................................................................................... 10
`Ex parte Takahashi, 2004-2192, 2015 Pat. App. LEXIS 9767 (BPAI, Sep. 30,
`2015) ..................................................................................................................... 10
`Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed. Appx. 864 (Fed. Cir. 2014) ......... 2
`In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997) .................................... 9, 10, 11, 12
`International Business Machines Corp. v. Intellectual Ventures I LLC, IPR2014-
`01385, Paper 64 (PTAB, Jan. 15, 2016) ................................................................ 2
`Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744 (Fed. Cir. 1987) ...................... 7
`Peters v. Active Mfg, 129 U.S. 530 (1889) ................................................................ 7
`Power Integrations, Inc. v. Lee, 797 F.3d 1318 (Fed. Cir. 2015) .............................. 8
`Star Fruits S.N.C. v. United States, 393 F.3d 1277 (Fed Cir. 2005) ......................... 6
`Yahoo! Inc. v. CreateAds LLC, IPR2014-00200, Paper 42 ....................................... 3
`
`Rules
`37 C.F.R. § 42.71(c) ............................................................................................... 1, 6
`37 C.F.R. § 42.71(d) .............................................................................................. 1, 6
`37 CFR § 42.5(c)(3) ............................................................................................... 1, 6
`
`Other Authorities
`Trial Practice Guide, 77 Fed. Reg. 48756 (proposed Aug. 14, 2012) ................... 1, 6
`
`
`
`
`
`ii
`
`

`
`
`
`Request for Rehearing in IPR2016-00054
`
`LIST OF EXHIBITS
`
`Ex. No.
`
`Description
`
`1001 U.S. Patent 8,648,717, “the ‘717 Patent”, issued Feb. 11, 2014, from
`U.S. App. 13/934,763 filed Jul. 3, 2013
`
`1002
`
`1003
`
`1004
`
`1005
`
`Patent Owner’s Preliminary Infringement Contention Claim Chart
`against Petitioner in the ‘717 Patent litigation (excerpts). (Exhibit
`improperly marked confidential, see Discovery Dispute Hearing
`transcript at 72:9-73:9, appended to exhibit, designating infringement
`contentions as non-confidential information.)
`
`File History for U.S. App. 13/328,095 issued as the ‘802 Patent
`(excerpts)
`
`File History for U.S. App. 13/934,763 issued as the ‘717 Patent
`(excerpts)
`
`Expert Declaration of Kimmo Savolainen in support of Petition for IPR
`of the ‘717 Patent based on Wandel (Curriculum Vitae attached)
`
`1006 U.S. Patent 8,094,010, issued Jan. 10, 2012, from U.S. App. 12/538,603
`filed Aug. 10, 2009
`
`1007 District Court Memorandum Opinion on Claim Construction in the
`litigation of the ‘197 and ‘010 Patents, Nov. 12, 2013
`
`1008 District Court Claim Construction Order in the litigation of the ‘197 and
`‘010 Patents, Nov. 19, 2013, and Clarification, Jan. 24, 2014
`
`iii
`
`

`
`
`
`Ex. No.
`
`Request for Rehearing in IPR2016-00054
`
`Description
`
`1009
`
`Joint Claim Construction Statement in ‘717 Patent Litigation
`
`1010 Microsoft Computer Dictionary Fourth Edition, 1999 (excerpt)
`
`1011
`
`1012
`
`Transcript of the Deposition of Dr. Ray Nettleton, “Nettleton Tr.” May
`6, 2015
`
`Transcript of Deposition of Dr. Eveline Wesby-Van Swaay, “Wesby
`Tr.” Jan. 21, 2014
`
`1013 U.S. Patent 6,034,623 to Wandel issued Mar. 7, 2000 (“Wandel”)
`
`1014
`
`1015
`
`1016
`
`1017
`
`Salkintzis A.K., “A Survey of Mobile Data Networks”, University of
`British Columbia, 1999
`
`“Broadband Networking,” ed. Truelove, James, Auerbach (excerpts),
`published Oct. 1, 1999 (date certified by United States Copyright Office
`Public Catalog, record appended to exhibit)
`
`Transcript of the Deposition of Dr. Alon Konchitsky, “Konchitsky Tr.”
`May 27, 2015
`
`Transcript of the Deposition of Dr. Ray Nettleton, “Nettleton Tr.” May
`8, 2015
`
`1018 DARPA Internet Program Protocol Specification, Sept. 1981
`
`1019
`
`International Application Publication No. WO 00/14984 to Sonera et al.
`published Mar. 16, 2000 (“Sonera”)
`
`iv
`
`

`
`
`
`Ex. No.
`
`Request for Rehearing in IPR2016-00054
`
`Description
`
`1020
`
`Popular Mechanics, February 2000 (excerpt).
`
`1021
`
`1022
`
`Ex parte Ikonen, Heinonen, and Okkonen, No. 2008-3693, 2008 LEXIS
`7439 (BPAI 2008).
`
`Transcript of the Deposition of Dr. Eveline Wesby-Van Swaay, “Wesby
`Tr.” Aug. 14, 2012
`
`1023 U.S. Patent No. 6,697,103 to Fernandez et al. filed Mar. 19, 1998
`(“Fernandez”)
`
`1024
`
`Ex parte Mark L. Hitchin, 2013 Pat. App. LEXIS 7038 (PTAB 2013)
`
`1025 U.S. Patent No. 6,038,491 to McGarry et al. published Mar. 14, 2000
`(“McGarry”)
`
`1026
`
`International Publication WO 99/49680 to Whitely et al. published
`Sept. 30, 1999 (“Whitely”)
`
`1027 U.S. Patent No. 6,182,228 to Boden et al. published Aug. 17, 1998
`(“Boden”)
`
`1028 Nokia 20 GSM Connectivity Terminal, 2001 (Referenced in Expert
`Declaration of Kimmo Savolainen, Ex. 1005)
`
`1029 M2M Magazine, “Pioneers of Change,” 2009 (Referenced in Expert
`Declaration of Kimmo Savolainen, Ex. 1005)
`
`v
`
`

`
`
`
`Ex. No.
`
`1030
`
`Request for Rehearing in IPR2016-00054
`
`Description
`
`Telital Automotive Manual, “SR11 Nettuno GSM Based GPS Location
`System,” Sept. 1999 (Referenced in Expert Declaration of Kimmo
`Savolainen, Ex. 1005)
`
`1031 Ames et al., “The Evolution of Third-Generation Cellular Standards”,
`Intel Technology Journal, Q2, 2000 (Referenced in Expert Declaration
`of Kimmo Savolainen, Ex. 1005)
`
`1032 Redl et al., “GSM and Personal Communications Handbook,” 1998
`(Referenced in Expert Declaration of Kimmo Savolainen, Ex. 1005)
`
`1033
`
`1034
`
`Telital, “Company Profile,” March 2000 (Referenced in Expert
`Declaration of Kimmo Savolainen, Ex. 1005)
`
`1G, 2G, 3G, 4G - The Evolution of Wireless Generations, 2008
`(Referenced in Expert Declaration of Kimmo Savolainen, Ex. 1005)
`
`1035 U.S. Patent 8,633,802 to Wesby-van Swaay issued Jan. 21, 2014
`(“Wesby-van Swaay”) (Referenced in Expert Declaration of Kimmo
`Savolainen, Ex. 1005)
`
`1036
`
`Joint Claim Construction Brief in ‘010 Patent Litigation
`
`1037
`
`Summary Judgment Memorandum Opinion (“Opinion”) issued October
`26, 2016 in M2M Solutions Inc. v. Motorola Solutions, Inc., et al., Case
`No. 1:2012-cv-00033-RGA (D. Del) based on parent patent U.S. Patent
`No. 8,094,010 (“the ‘010 Patent Litigation”) (now closed).
`
`vi
`
`

`
`
`
`Ex. No.
`
`1038
`
`1039
`
`1040
`
`1041
`
`
`
`Request for Rehearing in IPR2016-00054
`
`Description
`
`Ex parte Vesto, No. 2013-009212, 2016 Pat. App. LEXIS 2105 (PTAB,
`Nov. 7, 2014)
`
`Ex parte Scortecci, No. 2014-001781, 2016 Pat. App. LEXIS 1052
`(PTAB, Mar. 17, 2016)
`
`Ex parte Cruz-Hernandez, No. 2014-000203, 2016 Pat. App. LEXIS
`1627 (PTAB, Feb. 1, 2016)
`
`Ex parte Takahashi, 2004-2192, 2015 Pat. App. LEXIS 9767 (BPAI,
`Sep. 30, 2015)
`
`
`vii
`
`

`
`Request for Rehearing in IPR2016-00054
`
`PETITIONER’S REQUEST FOR REHEARING
`
`
`
`I.
`
`Pursuant to 37 C.F.R. § 42.71(c)-(d), Telit Wireless Solutions Inc. and Telit
`
`Communications PLC (“Petitioner”) request rehearing of the Board’s Decision in
`
`IPR2016-00054, entered April 22, 2016 (“Decision”), denying institution for inter
`
`partes review for claims 1-30 of U.S. Patent No. 8,648,717 (“the ‘717 Patent”).
`
`New facts have come to light that Petitioner could not have previously raised
`
`in its earlier Petition. The rules governing Requests for Rehearing allow “evidence
`
`not already of record at the time of the decision” to be admitted in a request upon a
`
`“showing of good cause” or upon “a Board decision that consideration on the
`
`merits would be in the interests of justice.” Office Trial Practice Guide, 77 Fed.
`
`Reg. 48756 (proposed Aug. 14, 2012); 37 CFR § 42.5(c)(3).
`
`The District Court issued an Opinion (“Opinion,” Ex. 1037) after the
`
`Petition in the underlying IPR had been filed (and after the year statutory bar date
`
`for filing an IPR had passed), holding as a matter of law that the claims of a parent
`
`patent, with very similar language to the ‘717 Patent, broadly covered the
`
`capability of performing certain functions:
`
`“the claims at issue here only require capability of
`performing the recited function.” Ex. 1037 at 14, see also
`Id. at 7-13.
`
`Critically, this broad claim construction adopted by the Court was advocated by
`
`Patent Owner. See Id. at 10.
`
`1
`
`

`
`
`
`Request for Rehearing in IPR2016-00054
`
`Although claim constructions standards differ between the Board and the
`
`courts, the Board is obligated to apply the broadest reasonable interpretation
`
`(“BRI”), which is broader than, and should include, a Court’s narrower
`
`interpretation. See International Business Machines Corp. v. Intellectual Ventures I
`
`LLC, IPR2014-01385, Paper 64, at *9-11 (Jan. 15, 2016): “The broadest
`
`reasonable interpretation of a claim term may be the same as or broader than the
`
`construction of a term under the [Court’s] Phillips standard. But it cannot be
`
`narrower.” Id. (quoting Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed. Appx.
`
`864, 868-869 (Fed. Cir. 2014) (non-precedential)); see also Yahoo! Inc. v.
`
`CreateAds LLC, IPR2014-00200, Paper 42 at *8-9.
`
`Because the claim interpretation applied by the Board in the Decision is
`
`considerably narrower
`
`than
`
`that adopted by
`
`the Court,
`
`the Board has
`
`misapprehended the breadth of the claims and thus the relevance of the prior art.
`
`Correcting this error would change the Petition’s outcome because, as explained
`
`below, Wandel’s device is capable of using IP addresses, Decision at 11,
`
`Preliminary Response at 22-23. Therefore, under the BRI, the claims are invalid
`
`based on Wandel (Grounds 1-5).
`
`In addition,
`
`irrespective of
`
`this capability
`
`interpretation,
`
`the Court
`
`overlooked that the claims are invalid over the combination of Wandel and Boden
`
`(Grounds 6-10), because Boden disclosed using IP addresses.
`
`2
`
`

`
`
`
`Request for Rehearing in IPR2016-00054
`
`This request shows the Board has “good cause” to consider the District
`
`Court’s Opinion, and the “interest of justice” compels the Board to reconsider the
`
`Decision to prevent Patent Owner from taking inconsistent positions by
`
`circumventing prior art under a narrow interpretation in the patent office, while
`
`simultaneously seeking a broad capability interpretation for its infringement
`
`contention in the Court.
`
`
`
`II.
`
`INTRODUCTION
`
`On October 21, 2015, Petitioner filed a Petition (Paper No. 1) (“Petition”)
`
`requesting inter partes review of claims 1-30 of the ‘717 Patent (Ex. 1001).
`
`On January 6, 2016, after the one-year statutory deadline for Petitioner to
`
`file an IPR under 42.101(b) (which expired on October 24, 2015), the Court issued
`
`its Summary Judgment Memorandum Opinion (Ex. 1037, “Opinion”) in the
`
`litigation of the parent patent U.S. Patent No. 8,094,010 (“the ‘010 Patent”) in
`
`M2M Solutions Inc. v. Motorola Solutions, Inc., et al., Case No. 1:2012-cv-00033-
`
`RGA (D. Del) (now closed).
`
`A month after the Court’s decision, on February 1, 2016, M2M Solutions
`
`LLC (“Patent Owner”) filed a Preliminary Response (Paper No. 8). In that
`
`response, Patent Owner argued a claim interpretation inconsistent with the Court’s
`
`decision and its own position in the Court. Patent Owner argued before the Board
`
`3
`
`

`
`
`
`Request for Rehearing in IPR2016-00054
`
`that the prior art does not meet the claimed IP address limitation because it did not
`
`always use the claimed IP address (“may or may not employ IP addresses,”
`
`Preliminary Response at 22-23, emphasis in original), ignoring the prior art’s
`
`capability to use IP addresses identical to the claimed subject matter. In its
`
`Preliminary Response, Patent Owner did not inform the Board of the Court’s
`
`inconsistent claim construction, issued a month earlier. In the District Court, Patent
`
`Owner accused devices that might never use the claimed methodology, but Patent
`
`Owner argued that did not matter as long as the devices have the “functional
`
`capability [that] infringes regardless of whether that capability is activated or
`
`utilized in any way.” Ex. 1037 at 10 lines 6-8, citing Petitioner.
`
`On April 22, 2016, the Board issued a Decision Denying Institution of Inter
`
`Partes Review of claims 1-30 (Paper No. 9) (“Decision”), accepting the Patent
`
`Owner’s extremely narrow claim construction, and narrow view of the prior art.
`
`
`
`III. PRECISE RELIEF REQUESTED
`
`The Board did not apply the broadest reasonable interpretation, which,
`
`according the Court’s recent Opinion, covers the capability of performing the
`
`claimed functions, Ex. 1037 at 14. The Board confirmed that Wandel disclosed a
`
`device that was capable of using IP addresses, Decision at 11. Applying the
`
`correct BRI, Wandel invalidates the claims of the ’717 Patent.
`
`4
`
`

`
`
`
`Request for Rehearing in IPR2016-00054
`
`Irrespective of the capability interpretation, the Board did not consider
`
`aspects of the proposed combination of Wandel and Boden, which also invalidates
`
`the claims of the ’717 Patent.
`
`Accordingly, Petitioner requests the Board to reconsider its Decision, and to
`
`institute inter partes review of claims 1-30 of the ‘717 Patent in IPR2016-00054.
`
`
`
`IV. LEGAL STANDARD
`
`A Request for Rehearing is appropriate when the requester believes “the
`
`Board misapprehended or overlooked” matters. 37 C.F.R. § 42.71(d). The “panel
`
`will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). An
`
`abuse of discretion occurs when a decision is based on an erroneous interpretation
`
`of law, an erroneous factual finding, or an unreasonable judgment. See Star Fruits
`
`S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed Cir. 2005); Arnold Partnership
`
`v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).
`
`Although rehearings generally address matters previously raised, the Board
`
`may reconsider its decision based on new evidence in a Request for Rehearing
`
`upon a “showing of good cause,” Trial Practice Guide; 37 CFR § 42.5(c)(3), or
`
`upon “a Board decision that consideration on the merits would be in the interests of
`
`justice,” 37 CFR § 42.5(c)(3).
`
`
`
`5
`
`

`
`
`
`Request for Rehearing in IPR2016-00054
`
`The law holds the same standard for invalidity and infringement: “That
`
`which would literally infringe if later in time anticipates if earlier than the date of
`
`invention” Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir.
`
`1987); Peters v. Active Mfg, 129 U.S. 530, 537 (1889). That means the claims
`
`must mean the same thing for infringement and for invalidity. Patent Owner has
`
`advocated
`
`the broad “capability” claim
`
`interpretation
`
`in
`
`its
`
`infringement
`
`contentions in the ‘717 patent case, see e.g. Ex. 1002, p. 4 ¶2, p. 5 ¶1,3, p. 6 ¶3, p.
`
`8 ¶3, etc., which the Court has adopted in the parent patent case. However, here
`
`Patent Owner abandons this interpretation in an attempt to avoid the prior art.
`
`
`
`V.
`
`“GOOD CAUSE”
`
`This Request for Rehearing is Petitioner’s first opportunity to correspond
`
`with the Board since the Opinion was issued. Because Petitioner submitted the
`
`Opinion at its first period for remarks, there is good cause to enter it now.
`
`
`
`6
`
`

`
`
`
`VI. “INTERESTS OF JUSTICE”
`
`Request for Rehearing in IPR2016-00054
`
`This Opinion should be considered in the interests of justice because it
`
`changes the landscape of claim construction1. Though the Board is not bound by
`
`the District Court’s claim construction, the Federal Circuit held that “the board had
`
`an obligation, in these circumstances, to evaluate [the district court’s] construction
`
`and to determine whether it was consistent with the broadest reasonable
`
`construction of the term.” Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326-27
`
`(Fed. Cir. 2015). As explained above, the Board has consistently held that the BRI
`
`should be at least as broad as the Court’s construction. Because Patent Owner is
`
`concurrently litigating against Petitioner, where the Patent Owner has argued for an
`
`exceptionally broad “capability” interpretation, Ex. 1002, p. 4 ¶2, p. 5 ¶1,3, p. 6 ¶3,
`
`p. 8 ¶3, etc., it is in the interest of justice to apply the same capability interpretation
`
`
`1 The Opinion was issued in the litigation of the parent ‘010 Patent. While
`
`Petitioner believes this ruling only applies to the ‘010 Patent’s “for” language,
`
`Patent Owner has served broad infringement contentions in the ‘717 patent case (as
`
`it did in the ‘010 Patent case) proposing the same capability interpretation for both
`
`the “for” and “configured to” language in the ‘717 Patent. see Ex. 1002, p. 4 ¶2, p.
`
`5 ¶1,3, p. 6 ¶3, p. 8 ¶3, etc.
`
`7
`
`

`
`
`
`Request for Rehearing in IPR2016-00054
`
`for invalidity. Allowing Patent Owner to take these inconsistent positions would be
`
`unfair.
`
`
`
`VII. CAPABILITY
`
`A claim to an apparatus that has the capability of performing a function is
`
`invalid based on prior art that is capable of performing the claimed function: See
`
`In re Schreiber, 128 F.3d 1473, 1476 (Fed. Cir. 1997), upholding the Board’s
`
`decision that the claims were invalid because “the structure disclosed by [the prior
`
`art] is inherently capable of [performing the function] in the manner set forth in the
`
`claims,” emphasis added; see also Ex parte Vesto, No. 2013-009212, 2016 Pat.
`
`App. LEXIS 2105, at *12-13 (PTAB, Nov. 7, 2014), Exhibit 1038,: “In order to
`
`satisfy the functional limitations in an apparatus claim, however, the prior art
`
`apparatus as disclosed must be capable of performing the claimed function,” citing
`
`Schreiber, 128 F.3d at 1478. Ex. 1038. Ex parte Scortecci held “If a prior art
`
`structure is capable of performing the claimed intended use, then it meets the
`
`claim. Ex parte Scortecci, No. 2014-001781, 2016 Pat. App. LEXIS 1052, at *5
`
`(PTAB, Mar. 17, 2016) , citing Schreiber, 128 F.3d at 1477. Ex. 1039. Ex parte
`
`Cruz-Hernandez found “configured to” claim language, as in the ‘717 Patent,
`
`invalidated by prior art that was capable of performing the claimed function:
`
`8
`
`

`
`
`
`Request for Rehearing in IPR2016-00054
`
`Furthermore, we note that claim 1 recites, inter alia, “the first haptic
`output configured to vary a coefficient of friction of the touch
`surface” (see claim 1) (emphasis added). Thus, claim 1 does not
`positively recite varying a coefficient of friction. Rather, the claim
`calls for only a haptic output configured to (capable of) vary a
`coefficient of friction. See, e.g., In re Schreiber, 128 F.3d 1473, 1477
`(Fed. Cir. 1997) (anticipation found where prior art was found to be
`capable of performing the claimed function).
`
`Ex parte Cruz-Hernandez, No. 2014-000203, 2016 Pat. App. LEXIS 1627 at *17-
`
`19 (PTAB, Feb. 1, 2016). Ex. 1040. See also Ex parte Takahashi, 2004-2192, 2015
`
`Pat. App. LEXIS 9767, at *4 (BPAI, Sep. 30, 2015) (“the prior art structure meets
`
`the claims because the prior art is capable of performing the intended use”). Ex.
`
`1041.
`
`Schreiber clarified that in order for Patent Owner to overcome prior art
`
`invalidating capability claims, it is Patent Owner’s burden to “prove that the
`
`structure disclosed by [the prior art] is incapable of performing the claimed
`
`functions.” Schreiber, 128 F.3d at 1476, emphasis added. See also Takahashi, 2015
`
`Pat. App. LEXIS 8767, at *4 (“Appellants do not provide arguments showing that
`
`it is not capable of such”). Ex. 1041. Patent Owner has the same burden here.
`
`Because Patent Owner cannot prove Wandel’s device was incapable of using IP
`
`addresses, and has admitted the opposite – i.e., that Wandel’s device was capable
`
`9
`
`

`
`
`
`Request for Rehearing in IPR2016-00054
`
`of using IP addresses (“may or may not employ IP addresses,” Preliminary
`
`Response at 22) – the ‘717 Patent claims are invalid based on Wandel.
`
`
`
`VIII. WANDEL’S DEVICE WAS CAPABLE
`OF USING IP ADDRESSES
`
`In the decision, the only claim element the Board found was missing in
`
`Wandel was the use of IP addresses. Decision, at pp. 12-13.
`
`The Petition explained that Wandel’s radio modem received wireless
`
`command packets to program the “destination addressing for log packets” and that
`
`the radio modem operated over a CDPD network. Petition at 23, citing Ex. 1013 at
`
`4:40, 10:20-26.
`
`Patent Owner admitted that CDPD supported IP addresses, Ex. 1015 at 444,
`
`but argued that it also supported other types of addresses, Id. at 443, and for that
`
`reason does not satisfy the claimed use of IP addresses. Preliminary Response at
`
`22. Indeed, the Board held that Wandel’s “device operating in a CDPD network
`
`may or may not have employed IP addresses,” Decision at 11, emphasis added,
`
`citing Patent Owner’s Preliminary Response at 22-23.
`
`This argument by Patent Owner, however, is inconsistent with Patent
`
`Owner’s position in the litigation, and the interpretation adopted by the Court, that
`
`the claims only require the capability of performing the recited function. Ex. 1037
`
`at 14, citing Patent Owner at 10.
`
`10
`
`

`
`
`
`Request for Rehearing in IPR2016-00054
`
`Based on Patent Owner’s broad capability interpretation urged on the Court
`
`(which it accepted), Wandel’s radio modem need only have been capable of using
`
`IP addresses in order to invalidate the patent claims. Because a device operating in
`
`a CDPD network “may … have employed IP addresses,” Wandel’s radio modem
`
`was at least capable of using IP addresses. (Decision at 11; Preliminary Response
`
`at 22). By Patent Owner’s own admission, it cannot prove the opposite – viz., that
`
`Wandel’s device was incapable of performing the claimed functions. In re
`
`Schreiber, 128 F.3d at 1476. Although Wandel’s device may have also used
`
`another type of address, the possibility of using a non-claimed type of address does
`
`not undermine the fact that it was capable of using the claimed type of IP address.
`
`As explained above, the capability of operating in the claimed mode is sufficient to
`
`invalidate the claims.
`
`
`
`IX. BODEN DISCLOSED IP ADDRESSES
`Even putting aside the use of IP addresses in Wandel itself, another
`
`reference (Boden) that Petitioner proposed combining with Wandel undisputedly
`
`disclosed this claim limitation. See Petition at 56-57, citing Boden, Ex. at 1027 at
`
`4:31-35, emphasis in original:
`
`The destination address field may include an “IP address” …:
`
`11
`
`

`
`
`
`Request for Rehearing in IPR2016-00054
`
`The key information contained in each journal entry is: action taken
`(permit or deny), direction of IP datagram (inbound or outbound),
`source and destination IP addresses, source and destination port
`numbers, and the filter rule number. [Ex. 1027] at 4:31-35.
`
`The combination of Wandel and Boden was described in Grounds 6-10 of
`
`the Petition. Although this combination was proposed to address another claim
`
`interpretation issue, (see Petition at 55), this combination disclosed all of the
`
`claimed elements, and it is in the interest of justice that the Board consider the
`
`combination for all that it disclosed. In particular, Wandel’s device operated over
`
`CDPD and was compatible with and would have used the IP addresses of Boden
`
`for its “destination addressing.” Ex. 1013 at 4:40, 10:20-26, Ex. 1027 at 4:31-35,
`
`Ex. 1015 at 444. The Petition explained that the combination of Wandel and Boden
`
`would have been obvious so that Wandel’s device could perform the IP traffic
`
`filtering in Boden “in order to prevent unauthorized users from monitoring
`
`Wandel’s external I/O devices.” Petition at 57. This motivation to combine the
`
`references still stands, regardless of the claim interpretation issue discussed above.
`
`This combination would have included all the limitations in claims 1-3, 5-15, 18,
`
`and 23-28 (Ground 6), including using IP addresses. Consequently, that
`
`combination would have rendered the claims invalid.
`
`
`
`12
`
`

`
`
`
`X. CONCLUSION
`
`Request for Rehearing in IPR2016-00054
`
`For these reasons, claims 1-30 are invalid based on grounds 1-5 in view of
`
`Wandel when the BRI is applied, or in the alternative, grounds 6-10 based on the
`
`combination of Wandel and Boden.
`
`
`
`DATED: May 23, 2016
`
`
`Pearl Cohen Zedek Latzer Baratz LLP
`ATTN: Guy Yonay
`1500 Broadway 12th floor
`New York, NY 10036
`Phone: (646) 878-0800
`Fax: (646) 878-0801
`Email: CPollack@pearlcohen.com
`GYonay@ pearlcohen.com
`MEadan@pearlcohen.com
`
`Respectfully submitted,
`Pearl Cohen Zedek Latzer Baratz LLP
`
`By: /Guy Yonay/
`Guy Yonay
`Reg. No. 52,388
`Back-up Counsel for Petitioner
`
`13
`
`

`
`
`
`Request for Rehearing in IPR2016-00054
`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. Sections 42.6 and 42.105, that a
`
`complete copy of the attached PETITIONER’S REQUEST FOR REHEARING
`
`UNDER 37 C.F.R. § 42.71(d), including Exhibit Nos. 1037-1041, is being served
`
`by electronic mail on the 23rd day of May, 2016, the same day as the filing of the
`
`above-identified document in the United States Patent and Trademark Office with
`
`the Patent Trial and Appeal Board, upon the patent counsel of record for U.S.
`
`Patent No. 8,648,717 at the e-mail addresses indicated in Patent Owner’s
`
`Mandatory Notices:
`
`
`
`
`
`
`
`jcostakos@foley.com
`
`mmoran@foley.com
`
`DATED: May 23, 2016
`
`
`Respectfully submitted,
`Pearl Cohen Zedek Latzer Baratz LLP
`
`Pearl Cohen Zedek Latzer Baratz LLP
`ATTN: Guy Yonay
`1500 Broadway 12th floor
`New York, NY 10036
`Phone: (646) 878-0800
`Fax: (646) 878-0801
`
`By: /Guy Yonay/
`Guy Yonay
`Reg. No. 52,388
`Back-up Counsel for Petitioner
`
`
`
`1