Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`
`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 IPR2016-00055
`Patent 8,648,717
`_______________
`
`
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO C.F.R. § 42.120
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-14
`
`4819-7668-2805.2
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`

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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`PROCEDURAL BACKGROUND ................................................................. 1
`
`RELIEF REQUESTED ................................................................................... 2
`
`III. BACKGROUND ............................................................................................. 2
`
`IV. CLAIM CONSTRUCTION ............................................................................ 3
`A. Applicable Legal Standards .................................................................. 3
`B.
`“the at least one of the transmissions including the at least one
`telephone number or IP address and the coded number” ...................... 5
`1.
`The Claim Language ................................................................... 5
`2.
`The Specification ........................................................................ 8
`3.
`The Prosecution History ...........................................................10
`“numbers to which the programmable communicator device is
`configured to and permitted to send outgoing wireless
`transmissions” .....................................................................................12
`1.
`The Claim Language .................................................................12
`2.
`The Specification ......................................................................14
`3.
`The Prosecution History ...........................................................18
`
`C.
`
`V.
`
`2.
`
`CLAIMS 1-3, 5-18, 22-23, AND 29 ARE NOT OBVIOUS BASED
`ON THE COMBINATION OF VAN BERGEN AND
`BETTSTETTER AS ALLEGED IN GROUND 1 ........................................19
`A. Van Bergen in View of Bettstetter Fails to Disclose All the
`Elements of Independent Claim 1 or to Render That Claim
`Obvious As Alleged in Ground 1 ........................................................19
`1.
`The Combination of Van Bergen and Bettstetter Fails to
`Disclose Claim Element 1(b) ....................................................19
`The Combination of Van Bergen and Bettstetter Fails to
`Disclose Claim Element 1(d) ....................................................26
`The Combination of Van Bergen and Bettstetter Fails to
`Disclose Claim Element 1(e) ....................................................32
`The Combination of Van Bergen and Bettstetter Fails to
`Disclose Claim Element 1(g) ....................................................33
`The Combination of Van Bergen and Bettstetter Fails to
`Disclose Claim Element 1(h) ....................................................43
`
`3.
`
`4.
`
`5.
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`B.
`
`Van Bergen in View of Bettstetter Fails to Disclose All the
`Elements of Dependent Claims 5 and 12 or to Render Either of
`Those Claims Obvious As Alleged in Ground 1 .................................45
`Van Bergen in View of Bettstetter Fails to Disclose All the
`Elements of Dependent Claim 8 or to Render That Claim
`Obvious As Alleged in Ground 1 ........................................................47
`D. Van Bergen in View of Bettstetter Fails to Disclose All the
`Elements of Dependent Claim 10 or to Render That Claim
`Obvious As Alleged in Ground 1 ........................................................48
`Van Bergen in View of Bettstetter Fails to Disclose All the
`Elements of Dependent Claim 13 or to Render That Claim
`Obvious As Alleged in Ground 1 ........................................................50
`Van Bergen in View of Bettstetter Fails to Disclose All the
`Elements of Dependent Claim 15 or to Render That Claim
`Obvious As Alleged in Ground 1 ........................................................51
`G. Van Bergen in View of Bettstetter Fails to Disclose All the
`Elements of Dependent Claims 16 and 17 or to Render Either of
`Those Claims Obvious As Alleged in Ground 1 .................................52
`H. Van Bergen in View of Bettstetter Fails to Disclose All the
`Elements of Independent Claim 29 or to Render That Claim
`Obvious As Alleged in Ground 1 ........................................................54
`1.
`The Combination of Van Bergen and Bettstetter Fails to
`Disclose Claim Element 1(b) ....................................................54
`The Combination of Van Bergen and Bettstetter Fails to
`Disclose Claim Element 1(d) ....................................................55
`The Combination of Van Bergen and Bettstetter Fails to
`Disclose Claim Element 1(e) ....................................................55
`The Combination of Van Bergen and Bettstetter Fails to
`Disclose Claim Element 1(g) ....................................................56
`The Combination of Van Bergen and Bettstetter Fails to
`Disclose Claim Element 1(h) ....................................................57
`
`C.
`
`E.
`
`F.
`
`2.
`
`3.
`
`4.
`
`5.
`
`VI. CLAIM 24 IS NOT ANTICIPATED BY VAN BERGEN AS
`ALLEGED IN GROUND 2 ..........................................................................57
`A. Van Bergen Does Not Disclose Claim Element 24(c) ........................57
`B.
`Van Bergen Does Not Disclose Claim Element 24(d) ........................58
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`VII. CLAIM 4 IS NOT OBVIOUS BASED ON THE COMBINATION
`OF VAN BERGEN, BETTSTETTER, AND SONERA AS
`ALLEGED IN GROUND 5 ..........................................................................58
`
`VIII. CLAIMS 19-20 ARE NOT OBVIOUS BASED ON THE
`COMBINATION OF VAN BERGEN, BETTSTETTER, AND
`KUUSELA AS ALLEGED IN GROUND 6.................................................59
`
`IX. CLAIM 21 IS NOT OBVIOUS BASED ON THE COMBINATION
`OF VAN BERGEN, BETTSTETTER, AND ELDREDGE AS
`ALLEGED IN GROUND 7 ..........................................................................61
`
`X.
`
`CONCLUSION ..............................................................................................62
`
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) ............................................................................ 4
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 35
`
`Kinetic Technologies, Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00529, slip op. ..................................................................................... 31
`
`Luminara Worldwide, LLC v. Liown Electronics Co. Ltd.,
`IPR2015-01183, slip op. ..................................................................................... 30
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................ 4
`
`In re NTP Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ............................................................................ 3
`
`Power Integrations, Inc. v. Lee,
`797 F.3d 1318 (Fed. Cir. 2015) ...................................................................... 8, 14
`
`In re Skvorecz,
`580 F.3d 1262 (Fed. Cir. 2009) ............................................................................ 5
`
`Straight Path IP Group, Inc. v. Sipnet EU S.R.O.,
`806 F.3d 1356 (Fed. Cir. 2015) ............................................................................ 4
`
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ............................................................................ 4
`
`Statutes
`
`35 U.S.C. § 316(e) ................................................................................................... 35
`
`35 U.S.C. § 112 ¶ 1 .................................................................................................... 9
`
`35 U.S.C. § 312(a)(3) ............................................................................................... 30
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`
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`Other Authorities
`
`37 C.F.R. § 42.100(b) ................................................................................................ 3
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`Patent Owner’s 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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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`4819-7668-2805.2
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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.
`
`Securities and Exchange Commission Form 20-F for the fiscal year
`ended December 31, 2001, for Wavecom S.A.
`
`Declaration of Michelle A. Moran, February 1, 2016.
`
`Affidavit in Support of Motion for Pro Hac Vice Admission of
`Marc N. Henschke, 37 C.F.R. § 42.10(c), June 15, 2016.
`
`Digital cellular telecommunications system (Phase 2+); Point-to-
`Point (PP) Short Message Service (SMS) support on mobile radio
`interface (GSM 04.11 version 7.0.0 Release 1998)
`
`Excerpts of the Expert Report of Kimmo Savolainen in Rebuttal to
`Dr. Nettleton and Mr. Bluestein, M2M Solutions LLC v. Motorola
`Solutions, Inc. et al., Case No. 12-033-RGA, (DED), dated July 7,
`2014.
`
`Excerpts of the Expert Report of Kimmo Savolainen on the
`Invalidity of U.S. Patent No. 8,094,010, M2M Solutions LLC v.
`Motorola Solutions, Inc. et al., Case No. 12-033-RGA, (DED),
`dated May 5, 2014.
`
`Applicant-Initiated Interview Summary, for U.S. Patent
`Application, 13/934,763.
`
`Transcript of the deposition of Kimmo Savolainen, Telit Wireless
`Solutions Inc. et al. v. M2M Solutions LLC, Case IPR2016-00055,
`July 7, 2016.
`
`Excerpts of transcript of the deposition of Kimmo Savolainen,
`M2M Solutions LLC v. Motorola Solutions, Inc. et al., Case No. 12-
`vi
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`033-RGA, (DED), dated June 10, 2015.
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`2012
`
`
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`Second Declaration of Michelle A. Moran, July 27, 2016
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`PROCEDURAL BACKGROUND
`
`
`
`I.
`
`On October 21, 2015, Petitioners filed a Petition (“Petition,” Paper no. 1),
`
`requesting inter partes review of claims 1-30 of U.S. Patent No. 8,648,717 B2
`
`(“the ’717 patent,” Ex. 1101), based on fourteen different grounds. Petitioners
`
`submitted the Declaration of Mr. Kimmo Savolainen (Ex. 1105) to support their
`
`allegations. Patent Owner filed its Preliminary Response (“Prel. Resp.,” Paper no.
`
`8) traversing the claim constructions and grounds set forth in the Petition. Based
`
`on the record existing at the time, on April 22, 2016, the Board initiated trial
`
`(“Decision,” Paper no. 9) on the following grounds:
`
`A. Claim 24 as anticipated by Int’l. Patent Pub. No. WO 00/17021
`
`(“Van Bergen,” Ex. 1113);
`
`B.
`
`Claims 1-3, 5-18, 22, 23, and 29 as obvious in view of Van
`
`Bergen and “GSM Phase 2+ General Packet Radio Service
`
`GPRS: Architecture, Protocols, and Air Interface,” IEEE
`
`Communications Survey, (1999) (“Bettstetter,” Ex. 1114);
`
`C.
`
`Claim 4 as obvious over the combination of Van Bergen,
`
`Bettstetter, and Sonera (Ex. 1125);
`
`D. Claims 19 and 20 as obvious over the combination of Van
`
`Bergen, Bettstetter and Int’l Patent Pub. No. WO 97/49077
`
`(“Kuusela,” Ex. 1128); and
`
`1
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`Inter Partes Review of U.S. Patent No. 8,648,717
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`E.
`
`Claim 21 as obvious over the combination of Van Bergen,
`
`Bettstetter, and Int’l Patent Pub. No. WO 95/05609
`
`(“Eldredge,” Ex. 1129).
`
`
`II. RELIEF REQUESTED
`Patent Owner requests that, for at least the reasons presented below, the
`
`Board confirm the patentability of claims 1-24 and 29 of the ’717 patent.
`
`III. BACKGROUND
`The claimed inventions of the ’717 patent relate to wireless modules and
`
`related devices designed and intended for use in machine-to-machine
`
`communications. These machine-to-machine communications encompass a variety
`
`of applications in which one machine is able to remotely monitor a second machine
`
`in a relatively autonomous fashion by communicating with or through a wireless
`
`module that is embedded in or otherwise linked to that second machine. For
`
`example, machine-to-machine applications are prevalent in the fields of automated
`
`meter reading, asset tracking and fleet management, automotive telematics,
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`commercial and residential security systems, wireless telemedicine and healthcare
`
`devices, industrial automation and controls, remote information displays and
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`digital signage, the remote control of certain consumer devices and appliances,
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`point of sale payment systems, vending machines, kiosks, and ATM and banking
`
`machines.
`
`IV. CLAIM CONSTRUCTION
`Petitioners have proposed constructions for four claim terms. (Petition, 8-
`
`12.) The Board has previously determined that two of those terms -- namely,
`
`“programmable” and “coded number” -- are not relevant to the patentability
`
`challenges raised in the petition and thus “need not be construed explicitly at this
`
`time.” (Decision, 7.) As to those two terms, Patent Owner rests upon the prior
`
`counterarguments that were presented in its Preliminary Response. With regard to
`
`the remaining two claim terms, Patent Owner provides detailed discussion and
`
`analysis below.
`
`A. Applicable Legal Standards
`When conducting an inter parties review, the Board is required to give a
`
`claim term “its broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” 37 C.F.R. § 42.100(b). In accordance with Federal
`
`Circuit precedent, this means that claim terms “are to be given their broadest
`
`reasonable interpretation consistent with the specification, and [that] … claim
`
`language should be read in light of the specification as it would be interpreted by
`
`one of ordinary skill in the art.” In re NTP Inc., 654 F.3d 1279, 1287 (Fed. Cir.
`
`2011) (citations omitted). In other words, “the Board’s construction cannot be
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`divorced from the specification and the record evidence’ … and ‘must be
`
`consistent with the one that those skilled in the art would reach.’” Microsoft Corp.
`
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted).
`
`Moreover, the Federal Circuit has indicated that a patent’s prosecution history “is
`
`to be consulted even in determining a claim’s broadest reasonable interpretation.”
`
`Straight Path IP Group, Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362 (Fed. Cir.
`
`2015) (rejecting Board’s claim construction where an alternative construction was
`
`“positively confirmed by the prosecution history”).
`
`Pursuant to the above standards, while “the broadest reasonable
`
`interpretation is broad, it does not give the Board an unfettered license to interpret
`
`the words in a claim without regard for the full claim language and the written
`
`description.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
`
`Accordingly, any claim construction adopted by the Board will not be sustainable
`
`where it is unsupported by the preferred embodiments that are “consistently and
`
`exclusively depict[ed]” in the patent specification. In re Abbott Diabetes Care
`
`Inc., 696 F.3d 1142, 1150 (Fed. Cir. 2012). Moreover, the Board may not
`
`“construe claims during IPR so broadly that its constructions are unreasonable
`
`under general claim construction principles.” Proxyconn, 789 F.3d at 1298. To
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`the contrary, the “protocol of giving claims their broadest reasonable interpretation
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`during examination does not include giving claims a legally incorrect
`
`interpretation.” In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009).
`
`“the at least one of the transmissions including the at least one
`B.
`telephone number or IP address and the coded number”
`
`The intrinsic record for the ’717 patent demonstrates that claim element 1(d)
`
`must be construed as requiring that the recited processing module be capable of
`
`authenticating a “single transmission” that includes both the “coded number” and a
`
`telephone number or IP address for storing into an outbound calling list. Based
`
`upon only a limited set of arguments and an incomplete review of the intrinsic
`
`record, the Board previously reached a preliminary conclusion “on the [then]
`
`current record” that “the claims do not recite a ‘single transmission’ requirement,”
`
`and instead describe authentication that would “allow for the telephone number or
`
`IP address to be…in a different transmission from the coded number.”
`
`(Decision, 7.) For at least the reasons discussed below, however, such a
`
`construction would be unreasonably broad in light of the intrinsic record when
`
`properly considered as a whole.
`
`The Claim Language
`1.
`Turning first to the express claim language, claim element 1(d) requires a
`
`processing module that is capable of authenticating “the at least one of the
`
`transmissions including the at least one telephone number or IP address and the
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`coded number.” Under this sentence structure, the phrase “including the at least
`
`one telephone number or IP address and the coded number” acts to modify the
`
`phrase “the at least one,” and not to modify the phrase “of the transmissions.”
`
`Accordingly, the claim language requires the authentication of a “single
`
`transmission” (i.e. “the at least one” transmission) that includes the “coded
`
`number” along with a telephone number or IP address. By analogy, consider
`
`hypothetical claim language that recited the following: “the at least one of the
`
`apples in the barrel including a rotten core and a worm.” There it is relatively easy
`
`to appreciate that the recited language requires the presence of at least one single
`
`apple in the barrel that contains both a rotten core and a worm.
`
`The Board appeared to focus on the fact that there are certain places in claim
`
`elements 1(c) and (d) that mention “multiple transmissions” (plural), and
`
`concluded that this must mean that there is “no reason why the ‘at least one
`
`telephone number or IP address and the coded number’ need to be in a single
`
`transmission, as Patent Owner contends.” (Decision, 8.) But the Board has
`
`misapprehended one of the intended purposes of these “multiple transmissions”
`
`recitations, which is to cover situations where successful authentication of a
`
`“single transmission” that includes both a “coded number” and a telephone number
`
`or IP address could serve to further authenticate other additional transmissions that
`
`might be lacking certain of those components. For example, in the real world
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`when a programmable mobile device makes a GPRS connection to the network to
`
`establish a communications session, it is commonplace that authentication of an
`
`initial “single transmission” will also serve to authenticate -- and thus allow
`
`programming access to -- other subsequent transmissions sent during that same
`
`communications session. (Ex. 2008, ¶¶ 79, 80.) Under this approach as potentially
`
`captured by claim elements 1(c) and (d), in order for authentication to be extended
`
`to cover “multiple transmissions,” a necessary prerequisite is that there first must
`
`always be authentication of a “single transmission” that includes both a “coded
`
`number” and a telephone number or IP address.
`
`Notably, at all times prior to now, Petitioners have themselves
`
`acknowledged and admitted that the claim language compels a “single
`
`transmission” interpretation. Indeed, in the pending ’717 patent litigations,
`
`Petitioners’ currently proposed claim construction for the relevant language of
`
`claim element 1(d) is the following: “a single wireless transmission that includes
`
`both the coded number and the telephone number or IP address.” (Ex. 1108 at pp.
`
`4, 19 (emphasis added).) As such, this is an agreed-to construction between
`
`Petitioners and Patent Owner. (Id.)
`
`The Board has dismissed this agreed-upon construction, stating that “we are
`
`not bound by positions taken by an accused infringer in district court litigation.”
`
`(Decision, 9). However, under similar circumstances, the Federal Circuit has
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`found that a Board commits error by failing to meet its “obligation … to evaluate
`
`that [district court] construction and to determine whether it was consistent with
`
`the broadest reasonable construction of the [claim] term.” Power Integrations, Inc.
`
`v. Lee, 797 F.3d 1318, 1326-27 (Fed. Cir. 2015). The Federal Circuit’s guidance is
`
`particularly apt here where the parties’ agreed upon construction is dictated by the
`
`claim language itself.
`
`The Specification
`
`2.
`Turning next to the patent specification, the ’717 specification “consistently
`
`and exclusively” discloses preferred embodiments in which the claimed
`
`authentication is performed upon a “single transmission.” (See Ex. 1101 at Fig. 2;
`
`9:35-60; 10:12-37). Indeed, in the principal preferred embodiment recited in the
`
`specification, the claimed programmable communicator authenticates a single SMS
`
`data message transmission that includes both a “coded number” (i.e., a PUK code)
`
`and a telephone number for storing into a calling list. (Id. at 9:35-60; 10:12-37.)
`
`Likewise, in Figure 2, which describes “features of the invention,” there is a
`
`depiction of authenticating a single wireless data message transmission which
`
`“compris[es] [both the] unique identifier [i.e., a type of coded number] and one or
`
`more telephone numbers or IP addresses.” (Id. at Fig. 2; 8:20.)
`
`The ’717 patent teaches that requiring authentication of a “single
`
`transmission” in this manner provides “essential security” for the programmable
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`communicator device. (Id. at 10:7-8.) By contrast, the ’717 specification nowhere
`
`ever discloses collectively authenticating multiple different transmissions, one of
`
`which would include a “coded number,” and another of which would include a
`
`telephone number or IP address.
`
`In the pending ’717 patent litigations, the Petitioners have admitted that a
`
`person of ordinary skill would view the specification as being supportive of only a
`
`“single transmission” claim construction, and as being completely non-supportive
`
`of any construction that allowed for the authentication of “multiple transmissions.”
`
`Indeed, in arguing for a “single transmission” interpretation, Petitioners cited to
`
`almost exactly the same specification passages that Patent Owner has identified
`
`above. (See Ex. 1108 at p. 19 (citing Ex. 1101 at Fig. 2; 9:41-45; 10:8-12).)
`
`Moreover, Petitioners have acknowledged that a person of ordinary skill would
`
`have understood and appreciated the recited purpose of such “single transmission”
`
`authentication as being to provide the relatively high level of security essential to
`
`preventing attacks from hackers. (Ex. 1105 at ¶ 115.)
`
`Petitioners also contended that any claim construction that would instead
`
`allow for the authentication of “multiple transmissions” would render the claims
`
`“invalid under § 112 ¶ 1 for lack of written description” in the patent specification.
`
`(Ex. 1108 at pp. 4, 19, 21.) Petitioners were necessarily premising these litigation
`
`arguments on how a person of ordinary skill would understand the teachings of the
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`’717 specification and contending that the specification would not support claims
`
`drawn to authentication of multiple transmissions. Accordingly, the Board should
`
`view Petitioners’ admissions as being of dispositive significance here where
`
`application of the “broadest reasonable interpretation” standard equally requires
`
`that the specification be evaluated from this very same perspective.
`
`The Prosecution History
`
`3.
`Looking finally to the prosecution history as the Board is also required to do,
`
`the Examiner for the parent application that matured into the ‘802 patent (Petition,
`
`1) had occasion to consider whether the common specification could support
`
`claims that allowed for authentication of “multiple transmissions.” (Ex. 1103 at 4-
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`5.) Applying the same broadest reasonable interpretation standard at issue here,
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`the Examiner concluded that any claims construed to cover the authentication of
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`“multiple transmissions” would be invalid for lack of written description because
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`“applicant has not pointed out support, nor could any support be found,” for such a
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`construction anywhere in the specification. (Id.) To the contrary, the Examiner
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`found that the specification supports only a “single transmission” construction in
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`which authentication is required to be performed on a single “transmission sent
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`from the programming transmitter [that] includes both the PUK code and the
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`telephone number or IP address.” (Id.) As Petitioners acknowledge, the Examiner
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`thereby determined that any claims construed to allow for the authentication of
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`4819-7668-2805.2
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`10
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`“multiple transmissions” would be unsustainable for impermissibly adding “new
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`matter” to the patent specification. (Petition, 7.)
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`Also of relevance from the prosecution history, the claims in Patent Owner’s
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`previously issued ’010 patent contain nearly identical authentication language to
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`that at issue here in the ’717 patent. (See Ex. 1106 at 12:30-31 (“the at least one
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`transmission including a coded number and at least one telephone number or
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`Internet Protocol (IP) address”). Notably, in the related ’010 patent litigations,
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`Petitioners’ expert witness herein, Mr. Savolainen, repeatedly opined that the claim
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`language requires a processing module capable of authenticating a “single
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`transmission.” (See, e.g., Ex. 2007, at 36, ¶ 99 (“The claims require [that]…both
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`the coded number and the telephone number or IP address must be included in one
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`transmission.”).)
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`Now that the Board has been presented with a full set of arguments and
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`intrinsic record analysis, it should be clear that claim element 1(d) requires the
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`capability for authenticating a “single transmission” that includes both a “coded
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`number” and a telephone number or IP address for storing into a calling list.
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`Indeed, all parties to have previously considered this issue -- namely, Petitioners,
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`the Patent Owner, and the Examiner -- have arrived at that same conclusion under
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`all relevant claim construction standards. The Board should adopt the parties’
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`“single transmission” claim construction.
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`4819-7668-2805.2
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`11
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`C.
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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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`The intrinsic record for the ’717 patent demonstrates that claim element 1(e)
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`must be construed as requiring a programmable communicator that is configured to
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`store in memory a restrictive outbound calling list of telephone numbers or IP
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`addresses. This conclusion is dictated by the “permitted” language in the claim
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`itself. In other words, the “permitted” claim language means that the recited
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`calling list must function in a manner that limits the programmable communicator
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`to sending one or more types of outgoing wireless transmissions to only those
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`telephone numbers or IP addresses contained in the list.
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`Based upon only a limited set of arguments and an incomplete review of the
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`intrinsic record, the Board previously reached a preliminary conclusion disagreeing
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`with the proposition that claim element 1(e)’s language “is restrictive in nature
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`such that the claims require a ‘restrictive outbound calling list.’” (Decision, 12.)
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`For at least the reasons discussed below, however, any claim construction that
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`omits this requirement would be unreasonably broad in light of the intrinsic record
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`when properly considered as a whole.
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`The Claim Language
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`1.
`Turning first to the express claim language, the Board has tentatively
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`proposed a claim construction for claim element 1(e) that does not accord any
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`4819-7668-2805.2
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`12
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`meaning to the “permitted” language in the claim. Indeed, the Board interprets the
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`phrase “numbers to which the programmable communicator device is configured
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`to and permitted to send outgoing wireless transmissions” to mean “numbers to
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`which the programmable communicator device is capable of sending outgoing
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`wireless transmissions and permitted to send outgoing wireless transmissions.”
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`(Decision, 12.)
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`Under this construction, the Board has apparently defined “configured to” to
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`mean “capable of.” (Id.) By contrast, however, the Board has imparted no
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`meaning to the word “permitted,” suggesting merely that “permitted to” means
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`“permitted to.” (Id.) As discussed below, this fails to capture the particularized
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`meaning that the specification attributes to the word “permitted” which serves to
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`require an outbound calling list that is restrictive in nature.
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`Notably, at all times prior to now, Petitioners have acknowledged that the
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`express claim language recites a calling list that must function in a restrictive
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`manner so as to limit the programmable communicator to sending one or more
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`types of outgoing wireless transmissions to only those telephone numbers or IP
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`addresses contained in the list. Indeed, in the pending ’717 patent litigations,
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`Petitioners’ currently proposed claim construction for the relevant language of
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`claim element 1(e) is the following: “the exclusive set of numbers to which the
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`programmable communicator is limited to sending any outgoing wireless
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`4819-7668-2805.2
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`13
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`transmissions.” (Ex. 1108, at pp. 6, 22 (emphasis added).) It is clear that the
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`reason why Petitioners have advocated for a restrictive calling list construction is
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`because of the presence of the descriptor word “permitted” in the claim language.
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`As an additional point of confirmation, in the related ’010 patent litigation
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`involving claims that describe numbers stored in an inbound calling list as being
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`“permitted,” Petitioners’ expert witness, Mr. Savolainen, has likewise opined as to
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`its restrictive nature: such a “permitted caller list must block non-permitted callers
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`(see e.g., ’010 patent, Fig. 2, step 4).” (Ex. 2007 at p. 30, ¶86.)
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`The Board has dismissed these facts, stating that “we are not bound by
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`positions taken by parties in district court litigation.” (Decision, 10.) However, as
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`pointed out above, the Federal Circuit in similar circumstances has found that a
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`Board commits error by failing to meet its “obligation . . . to evaluate . . . [a district
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`court] construction to determine whether it was consistent with the broadest
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`reasonable construction of the [claim] term.” Power Integrations, 797 F.3d at
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`1326-27.