UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`TELIT WIRELESS SOLUTIONS INC., TELIT COMMUNICATIONS
`PLC, SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC.,
`and RPX CORP.,
`Petitioners,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`
`________________
`
`Case IPR2016-000551
`
`Patent 8,648,717 B2
`________________
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`
`
`1 Case IPR2016-01073 has been joined with this proceeding.
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`TELIT WIRELESS SOLUTIONS INC., TELIT COMMUNICATIONS
`PLC, SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC.,
`and RPX CORP.,
`Petitioners,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`
`________________
`
`Case IPR2016-000551
`
`Patent 8,648,717 B2
`________________
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`
`
`1 Case IPR2016-01073 has been joined with this proceeding.
`
`
`
`Petitioner’s Reply in IPR2016-00055
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION .............................................................................................. 2
`
`II. ANALYSIS ........................................................................................................ 4
`
`A. The Claims Have No “Single Transmission” Requirement .................... 5
`
`B. The Outbound Caller List Is Not Restrictive .......................................... 9
`
`C. Van Bergen Disclosed a Wireless Reset Function ................................ 12
`
`D. GPRS Would Have Been Obvious ........................................................ 16
`
`E. Van Bergen Disclosed Programming By SMS ..................................... 18
`
`F. Process Data In Response to Wireless Programming Instructions ....... 20
`
`G. Dependent Claims ................................................................................. 21
`
`III. CONCLUSION ................................................................................................ 26
`
`
`
`
`
`ii
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`Petitioner’s Reply in IPR2016-00055
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Dystar Textilfarben GmbH v. C.H. Patrik Co.,
`464 F.3d 1356 (Fed. Cir. 2006) ..........................................................................3, 9
`Galderma Labs. v. Tolmar, Inc.,
`737 F.3d 731 (Fed. Cir. 2013) ......................................................................... 3, 24
`In re Farrenkopf,
`713 F.2d 714, 219 USPQ 1 (Fed. Cir. 1983) ........................................................ 24
`Kamada, Ltd. v. Grifols Therapeutics, Inc.,
`IPR2014-00899, 2015 Pat. App. LEXIS 12597 (PTAB Dec. 15, 2015) ................ 2
`Kara Tech. Inc. v. Stamps.com Inc.,
`582 F.3d 1341(Fed. Cir. 2009) ............................................................................... 8
`KSR Int'l Co. v. Teleflex Inc.,
` 550 U.S. 398, 127 S. Ct. 1727 (2007) ...............................................................3, 9
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .............................................................................. 8
`
`Statutes
`35 U.S.C. § 311(b) .................................................................................................6, 7
`35 U.S.C. §112 .......................................................................................................6, 7
`
`Other Authorities
`MPEP §2145,VII ...................................................................................................... 24
`
`Regulations
`37 C.F.R. § 42.100(b) ............................................................................................2, 4
`
`
`
`iii
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`Petitioner’s Reply in IPR2016-00055
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`LIST OF EXHIBITS
`
`Ex. No.
`
`Description
`
`1101 U.S. Patent 8,648,717 (“the ‘717 Patent”) issued Feb. 11, 2014, from
`U.S. App. 13/934,763 filed Jul. 3, 2013
`
`1102
`
`1103
`
`1104
`
`1105
`
`Patent Owner’s Preliminary Infringement Contention Claim Chart
`against Petitioners in the ‘717 Patent litigation (excerpts). (Exhibit
`improperly marked confidential, see appended Discovery Dispute
`Hearing transcript at 72:9-73:9, designating infringement contentions as
`non-confidential information.)
`
`File History for U.S. App. 13/328,095 issued as U.S. Patent No.
`8,633,802 (“the ‘802 Patent”) (excerpt)
`
`File History for U.S. App. 13/934,763 issued as the ‘717 Patent
`(excerpt)
`
`Expert Declaration of Kimmo Savolainen in support of Petition for IPR
`of the ‘717 Patent based on Van Bergen (Curriculum Vitae attached)
`
`1106 U.S. Patent 8,094,010 (“the ‘010 Patent”) issued Jan. 10, 2012, from
`U.S. App. 12/538,603 filed Aug. 10, 2009
`
`1107 Microsoft Computer Dictionary Fourth Edition, 1999 (excerpt)
`
`1108
`
`Joint Claim Construction Statement in ‘717 Patent Litigation
`
`iv
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`Petitioner’s Reply in IPR2016-00055
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`Ex. No.
`
`Description
`
`1109 District Court Memorandum Opinion on Claim Construction in the
`litigation of U.S. Patent 7,583,197 (“the ‘197 Patent”) and the ‘010
`Patent, Nov. 12, 2013
`
`1110
`
`Transcript of the Deposition of Dr. Ray Nettleton, “Nettleton Tr.” May
`6, 2015
`
`1111 District Court Claim Construction Order in the litigation of the ‘197
`and ‘010 Patents, Nov. 19, 2013, and Clarification, Jan. 24, 2014
`
`1112
`
`Ex parte Takahashi, No. 2004-2192, 2004 WL 2733658 (BPAI 2004)
`
`1113
`
`1114
`
`International Publication No. WO 00/17021 to Van Bergen published
`Mar. 30, 2000 (“Van Bergen”)
`
`Bettstetter C., “GSM Phase 2+ General Packet Radio Service GPRS:
`Architecture, Protocols, and Air Interface”, IEEE Communications
`Survey, 1999
`
`1115 Ames et al., “The Evolution of Third-Generation Cellular Standards”,
`Intel Technology Journal, Q2, 2000
`
`1116
`
`1117
`
`1G, 2G, 3G, 4G - The Evolution of Wireless Generations,” 2008
`(Referenced in Expert Declaration of Kimmo Savolainen, Ex. 1105)
`
`Bhalla, “Generations of Mobile Wireless Technology: A Survey”
`International Journal of Computer, August 2010
`
`v
`
`
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`Petitioner’s Reply in IPR2016-00055
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`Description
`
`Transcript of the Deposition of Dr. Eveline Wesby-Van Swaay,
`“Wesby Tr.” Jan. 21, 2014
`
`Ex. No.
`
`1118
`
`1119
`
`Transcript of Deposition of Dr. Eveline Wesby-Van Swaay, “Wesby
`Tr.” Aug. 14, 2012
`
`1120
`
`Joint Claim Construction Brief in ‘010 Patent Litigation
`
`1121
`
`Transcript of the Deposition of Dr. Alon Konchitsky, “Konchitsky Tr.”
`May 27, 2015
`
`1122
`
`Redl et al. “GSM and Personal Communications Handbook,” 1998
`
`1123
`
`1124
`
`1125
`
`In re Magna Electronics, Inc. v. United States No. 2014-1801 (Fed. Cir.
`2015)
`
`Telital Automotive Manual, “SR11 Nettuno GSM Based GPS Location
`System,” Sept. 1999
`
`International Publication WO 00/14984 to Sonera et al., published Mar.
`16, 2000 (“Sonera”)
`
`1126
`
`Popular Mechanics, February 2000 (excerpt).
`
`1127
`
`Ex parte Mark L. Hitchin, 2013 Pat. App. LEXIS 7038 (PTAB 2013)
`
`1128
`
`International Publication WO 97/49077 to Kuusela et al., published
`Dec. 24, 1997 (“Kuusela”)
`
`vi
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`Petitioner’s Reply in IPR2016-00055
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`Description
`
`International Publication WO 95/05609 to Eldredge et al., published
`Feb. 23, 1995 (“Eldredge”)
`
`Ex. No.
`
`1129
`
`1130
`
`Falcom A2 user manual/ command list, October 4, 1999
`
`1131 Nokia 20 GSM Connectivity Terminal, 2001 (Referenced in Expert
`Declaration of Kimmo Savolainen, Ex. 1105)
`
`1132 M2M Magazine, “Pioneers of Change,” 2009 (Referenced in Expert
`Declaration of Kimmo Savolainen, Ex. 1105)
`
`1133
`
`Salkintzis A.K., “A Survey of Mobile Data Networks”, University of
`British Columbia, 1999 (Referenced in Expert Declaration of Kimmo
`Savolainen, Ex. 1105)
`
`1134 U.S. Patent 8,633,802 issued Jan. 21, 2014, from U.S. app. 13/328,095
`filed Dec.16, 2011 (Referenced in Expert Declaration of Kimmo
`Savolainen, Ex. 1105)
`
`1135
`
`
`
`Expert Report of Dr. Alon Konchitsky, July 7, 2014 (excerpt)
`
`
`vii
`
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`Petitioner’s Reply in IPR2016-00055
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`Mandatory Notices – New Related Matters (37 C.F.R. § 42.8(b)(2))
`
`Related matters filed after the Petition for inter partes review (Paper 1, “Petition”)
`
`are IPR2016-01081 and IPR2016-00853, which were not instituted, and IPR2016-
`
`01073 which was instituted and joined with this proceeding.
`
`
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`viii
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`Petitioner’s Reply in IPR2016-00055
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`I. INTRODUCTION
`
`Patent Owner’s (“PO”) Response (Paper 24, “Response”) is a
`
`repetition of the same failed arguments PO made in its Preliminary Response
`
`(Paper 8), which the Board correctly rejected. PO provides no evidence to refute
`
`the Board’s Decision to institute inter partes review (Paper 9, “Decision”) and
`
`simply offers unsupported lawyer’s argument that is entitled to no weight.
`
`Kamada, Ltd. v. Grifols Therapeutics, Inc., 2015 Pat. App. LEXIS 12597, *44
`
`(PTAB Dec. 15, 2015).
`
`PO relies on an overly narrow claim interpretation and legally
`
`immaterial litigation positions that are inconsistent with the broadest reasonable
`
`interpretation (“BRI”) used in IPRs. 37 C.F.R. § 42.100(b). PO argues validity
`
`based on features that are not present in the claim, such as, intelligent vs.
`
`unintelligent devices (Response, 47-50), initial vs. subsequent data processing
`
`(Response, 44), and high-accuracy vs. low-accuracy location detection (Response,
`
`53).
`
`Further, PO advances legally incorrect arguments. There is no legal
`
`requirement that the prior art expressly provide a “teaching” or “motivation” to
`
`combine or modify references. (See e.g., Response, 20, 26, 31, 33, 34, 36, 42, 45-
`
`47, 59-62). Rather, if technology was well-known in the art, such as GPRS and
`
`GPS, and its advantages were well understood, then no suggestion, teaching or
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`2
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`Petitioner’s Reply in IPR2016-00055
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`motivation are required to show obviousness. See KSR Int'l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 421, 127 S. Ct. 1727, 1742 (2007); Perfect Web Technologies, Inc.
`
`v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009); Dystar Textilfarben GmbH
`
`v. C.H. Patrik Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (motivation to combine
`
`can exist where the combination improves efficiency and makes a device “more
`
`desirable” or “faster”). See e.g., Ex. 1105, ¶¶104-105, discussing the well-known
`
`benefits of GPRS, including speed and cost, and id., ¶152, discussing the benefits
`
`of GPS. In Dystar, 464 F.3d at 1368, the Court held:
`
`Because the desire to enhance commercial opportunities by
`improving a product or process is universal--and even common-
`sensical--we have held that there exists in these situations a
`motivation to combine prior art references even absent any hint
`of suggestion in the references themselves.
`
`Physically modifying a prior art device is also not required for
`
`obviousness. The law provides that obviousness does not require “starting with a
`
`prior art commercial embodiment and then providing motivation to alter that
`
`commercial embodiment.” Galderma Labs. v. Tolmar, Inc., 737 F.3d 731, 737
`
`(Fed. Cir. 2013). PO’s contrary suggestions are off-base. (See e.g., Response, 35
`
`(arguing GPRS is “incompatible” with the CELL-EYE system); Response, 30
`
`(“modify the operations”); Response, 37 (“were the CELL-EYE system to be
`
`modified to add [GPRS]…”).
`
`3
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`Petitioner’s Reply in IPR2016-00055
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`The evidence is clear and uncontradicted that the subject matter
`
`claimed in U.S. Patent No. 8,648,717 (“the ‘717 Patent”) was either precisely
`
`disclosed in Van Bergen years before the priority date, or was an insignificant
`
`modification of technology that was already well-known by that time, e.g., GPRS
`
`or GPS. Simply put, there is no patentable invention claimed in the ‘717 Patent,
`
`and the Board should reject and cancel the instituted claims.
`
`II. ANALYSIS
`
`PO argues that the Board’s claim construction is too broad, relying
`
`principally on prior litigation. (Response, 5-19). However, while both parties have
`
`taken different positions in the litigation and IPR, Petitioners have taken a broader
`
`(BRI) interpretation in the IPR than in the litigation, which is permissible and fully
`
`consistent with the legal standards. (Petition, 9-10; Ex. 1108, 4). In contrast, PO
`
`has inverted those claim interpretation standards, taking a narrower interpretation
`
`in the IPR (see e.g., Response, 5, requiring the “single transmission” limitation)
`
`than in the courts (see e.g., Ex. 1102, 6¶4, allowing “multiple transmission”),
`
`which is impermissible. In any event, as the Board held, the Board is not bound to
`
`litigation positions in IPRs (Decision, 9-10), since unlike the District Court, the
`
`Board is required to adopt the broadest reasonable interpretation of the claims. 37
`
`C.F.R. § 42.100(b). Moreover, PO’s claim interpretation arguments are futile, since
`
`4
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`Petitioner’s Reply in IPR2016-00055
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`even if the Board were to adopt PO’s interpretations, the resulting claims would be
`
`equally obvious. (See e.g., Petition, 25, 56-58).
`
`A. The Claims Have No “Single Transmission” Requirement
`
`The Board correctly held that “the claims allow for the telephone
`
`number or IP address to be in the same or in a different transmission from the
`
`coded number” and that “the claims do not recite a ‘single transmission’
`
`requirement” that both the coded number and the telephone number or IP address
`
`must be in a single transmission. (Decision, 7-9). This interpretation is supported
`
`by the claims, which recite:
`
`
`
`“authenticating one or more wireless transmissions … if at least
`
`one transmission contains a coded number”2. The Board explained: “The plain
`
`language of this limitation, therefore, states that transmissions (‘one or more’) can
`
`be authenticated if ‘at least one’ has a coded number. It does not require that each
`
`transmission contain a coded number to be authenticated.” (Decision, 7:23-26).
`
`
`
`“the transmissions including the at least one telephone number
`
`or IP address and the coded number” – that means the one or more “transmissions”
`
`(plural), not a transmission (singular), include the at least one telephone number or
`
`IP address and the coded number. (Ex. 1105, ¶61). Again, there is no “single
`
`transmission” requirement.
`
`2 Petitioner’s emphasis throughout, unless otherwise indicated.
`5
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`Petitioner’s Reply in IPR2016-00055
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`PO agreed that the ‘717 Patent covers “authenticat[ing] these one or
`
`more transmissions by determining if they contain the required PIN2 password
`
`coded number” (Ex. 1102, 6 ¶4) and “receiv[ing] one or more incoming TCP/IP
`
`transmissions that contain … a new telephone number … [and] the required PIN2
`
`password coded number.” (Id., ¶2). This covers the telephone number and coded
`
`number in the same (“one”) or different (“or more”) transmissions. There is no
`
`contrary evidence.
`
`PO alleges, without rationale or evidence, that the phrase “including
`
`the at least one telephone number or IP address and the coded number” modifies
`
`“the at least one transmission” (singular) and not “the transmissions” (plural).
`
`(Response, 6:1-6). This contradicts the basic rules of grammar, which dictate that
`
`a phrase modifies the preceding term, not two terms prior.
`
`PO speculates
`
`that
`
`the “intended purpose” of
`
`the multiple
`
`transmissions is that an initial transmission with a coded number authenticates
`
`subsequent transmissions in a session. (Response, 6-7). Firstly, this alleged
`
`“intended purpose” is not disclosed anywhere in the patent or claims and appears
`
`to be pulled out of thin air. Further, there is no reason why the telephone number or
`
`IP address has to be in the initial transmission with the coded number. It could just
`
`as easily be in any subsequent transmission of the session. There is still no “single
`
`transmission” requirement.
`
`6
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`Petitioner’s Reply in IPR2016-00055
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`Nor does the prosecution history support PO’s arguments. The
`
`prosecution history for U.S. Patent No. 8,633,802 (“the ‘802 Patent”) shows that,
`
`under the BRI, the “lack of a limitation” for the single transmission requirement
`
`means there is no such requirement: i.e., the claims cover authenticating “at least
`
`one transmissions … without determining the presence of a coded number and an
`
`at least one telephone number or Internet Protocol address” (the numbers can be
`
`sent in multiple different transmissions). (Ex. 1103, 3-4). Because the ‘717 Patent
`
`claims also lack a single transmission limitation, the claims are likewise not limited
`
`to the single transmission requirement. (The Examiner’s conclusion under 35
`
`U.S.C. §112 is irrelevant in IPRs. See 35 U.S.C. § 311(b).)
`
`This is starkly contrasted with the parent U.S. Patent No. 8,094,010
`
`(“the ‘010 Patent”) claims, which do explicitly recite a single transmission
`
`requirement: “the at least one transmission including a coded number and at least
`
`one telephone number or Internet Protocol (IP) address.” (Ex. 1106, 11). PO refers
`
`to this language as “nearly identical” to the ‘717 Patent claim language, but this is
`
`precisely the single transmission requirement that is omitted in the ‘717 Patent
`
`claims (and the rejected claims of the ‘802 Patent). There is a presumption that
`
`different claim language between the ‘010 and ‘717 Patents (the former including
`
`and latter omitting the single transmission language) means that the patents cover
`
`different subject matter (the former requiring and latter not requiring the single
`
`7
`
`
`
`
`transmission limitation). Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1347
`
`Petitioner’s Reply in IPR2016-00055
`
`(Fed. Cir. 2009).
`
`In any event, even if the Board were to adopt PO’s narrow
`
`interpretation, this would not save the claims from obviousness. As Petitioners
`
`explained, sending a coded number (password) together with a telephone number
`
`in a single message, rather than separately in two messages, would have been a
`
`trivial and obvious variant. (Petition, 25; Ex. 1105, ¶115). PO’s own expert
`
`testified that it would not be difficult to combine these two numbers into a single
`
`transmission. (Ex. 1121, 163:12-164:9). And Petitioner’s expert confirmed that this
`
`was an obvious design choice, a matter of user preference depending on the desired
`
`level of security, and involved only routine engineering. (Ex. 1105, ¶115). Both
`
`experts confirmed that combining these two numbers into a single transmission
`
`would “provide better security.” (Ex. 1121, 164:10-21; Ex. 1105, 55 ¶115). PO has
`
`provided no evidence to rebut the Board’s finding of obviousness.
`
`Contrary to PO’s arguments (Response, 29-30), Petitioner did provide
`
`evidence of obviousness for this variant (see Ex. 1105, 55 ¶115); there is no need
`
`to cite a GSM reference when the evidence, confirmed by both parties’ experts,
`
`shows a trivial variant such as sending numbers in one transmission instead of two
`
`would have had understood advantages e.g., to “provide better security.” Id. There
`
`is no requirement that the prior art expressly teach a motivation to modify or
`
`8
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`Petitioner’s Reply in IPR2016-00055
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`combine, particularly where the benefits of such modification are understood.
`
`(Response, 30-31). See KSR, 550 U.S. at 421; Perfect Web, 587 F.3d at 1329;
`
`Dystar, 464 F.3d at 1368. PO attempts to rationalize its expert corroborating the
`
`advantage of the single transmission requirement to “provide better security,” by
`
`claiming (without rationale) that this advantage somehow does not apply to Van
`
`Bergen. (Response, 31:15-32:2). However, this is counter to the stated “Purpose of
`
`the CELL-EYE” which is to provide security protection. (Ex. 1113, 2:6-10). PO’s
`
`argument that the CELL-EYE does not need better security because it is secure
`
`enough (Response, 32:2-8) is both self-evidently false (security can always be
`
`improved) and ignores the evidence that higher security applications (e.g.,
`
`monitoring bank alarms) would benefit from authenticating every transmission,
`
`whereas lower security applications (e.g., monitoring domestic appliances) need
`
`not. (Exhibit 1105, ¶115). As with other PO arguments, no evidence is provided to
`
`contradict Petitioner’s evidence. Sending numbers together in one message or
`
`separately in two messages is not a patentable distinction. Id.
`
`B.
`
`The Outbound Caller List Is Not Restrictive
`
`The Board found that the phrase “configured to and permitted to” is
`
`not restrictive and the claims do not require a “restrictive outbound calling list.”
`
`(Decision, 12). PO again relies only on lawyer argument instead of evidence,
`
`rehashing the same failed points it previously raised. (Response, 12-19).
`9
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`Petitioner’s Reply in IPR2016-00055
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`PO argues, without rationale, that “permitted to” is restrictive in
`
`nature. (Response, 13-15). Based on its plain meaning, “permitted to” means
`
`positively permitting calls, not a negatively barring calls.
`
`PO’s argument that Petitioner’s expert opined a “permitted caller list
`
`must block non-permitted callers” (Response, 14:4-8) is disingenuous. The expert
`
`was referring to a “permitted caller list” (Ex. 2007, ¶86), which is an entirely
`
`different incoming caller list in the parent ‘010 Patent (Ex. 1111, 2 ¶1), and which
`
`did not include the “configured to and permitted to” language. (Ex. 1006, 11). As
`
`Petitioners explained, the ’717 Patent disclosed call screening only for incoming
`
`calls (Fig. 2), not for outgoing calls (Fig. 3) as claimed. (Petition, 10-12).
`
`Nor can PO rely on the specification to narrow the claims. All of
`
`PO’s examples of call barring in the specification (Response, 14-17) refer to
`
`incoming calls, not to the claimed outgoing calls.
`
`Contrary to PO (Response, 17), Petitioner’s expert indicated that a
`
`restrictive inbound calling list renders obvious a restrictive outbound calling list,
`
`not that inbound and outbound are the same. In fact, PO’s expert clarified the
`
`distinction between inbound and outbound caller lists: “Storing a number for an
`
`outgoing call has nothing to do with whether or not an incoming call is accepted.”
`
`(Ex. 1135, 300).
`
`10
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`Petitioner’s Reply in IPR2016-00055
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`The “ubiquitously described” passages in the specification that PO
`
`cites to supposedly show a restrictive outbound caller list only support the Board’s
`
`existing claim construction: none mentions screening, blocking, or filtering calls –
`
`they all stand for the proposition that calls are permitted to those numbers.
`
`(Response, 18, citing Ex. 1101, 5:47-62, 9:12-15, 10:13-37).
`
`PO speculates as to the Examiner’s intention for adding “permitted to”
`
`(Response, 18-19), which is again attorney argument with no supporting evidence
`
`and cannot carry weight. The evidence shows the opposite: PO stated that
`
`“Applicants believe that ‘configured to,’ in the context of the claim, meant the
`
`device was capable of and permitted to,” and that “permitted to” was added “to
`
`expedite prosecution.” (Ex. 1104, 31). Because PO expressly characterized the
`
`meaning of “permitted to” as redundant of “configured to,” added only to appease
`
`the Examiner, PO cannot now argue for a narrower restrictive meaning to avoid the
`
`prior art.
`
`Moreover, PO only challenges
`
`this element based on claim
`
`interpretation, but never challenges the Board’s determination based on prior art.
`
`Thus, the only evidence in the record is that Van Bergen disclosed the claimed
`
`outbound caller list using the Board’s claim interpretation. (Ex. 1105, ¶116).
`
`PO also never challenges the alternative grounds 8-14 in the Petition
`
`showing that a restrictive outbound caller list would have been obvious to a
`
`11
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`Petitioner’s Reply in IPR2016-00055
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`POSITA. (Petition, 56-58). Thus, even under PO’s wrong interpretation, the claims
`
`are still not patentable.
`
`Finally, it bears noting that PO’s claim interpretation – although
`
`erroneous – would still not render the claims patentable. When the day is done,
`
`there is no patentable significance to the nature of the outbound calling list,
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`whether restrictive or not; either variant was well within a POSITA’s skill, and
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`both were a matter of routine engineering. (See Petition, 57-58, citing Ex. 1105,
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`¶202).
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`C. Van Bergen Disclosed a Wireless Reset Function
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`The “reset function” deactivates alarms by resetting the output signals
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`of the alarm sensor interface from an “active state,” continuously outputting
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`alarms, to an inactive state. (Ex. 1113, 6:37-38). The Board agreed with Petitioners
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`that the “reset function” received “from the ALU 16 via the modem 15,” which
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`was “for the reception and transmission of DATA and SMS messages via the GSM
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`mobile network,” was received wirelessly. (Decision, 24, citing Ex. 1113, 6:37–38,
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`10:12–13). Unlike Petitioners, who provided evidence to support this conclusion
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`(Petition, 18-19, citing Ex. 1105, ¶102), PO supplied no contrary evidence. PO’s
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`arguments are a stretch, trying to manufacture a reason why the ALU and modem,
`
`which are described only for the purpose of wireless communication, would make
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`12
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`Petitioner’s Reply in IPR2016-00055
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`decisions unprompted by any user communication to turn alarms on or off. The
`
`evidence, however, shows that the reset function is received wirelessly.
`
`The sole disclosed purpose of ALU 16 and modem 15 in Van Bergen
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`is to receive and transmit communications over the GSM network, i.e., wirelessly:
`
`the ALU is an “Alarm Linked GSM Mobile Unit” and was characterized as “a fully
`
`type approved cellular phone.” (Ex. 1113, 1:5, 6:34). The modem is “for the
`
`reception and transmission of DATA and SMS messages via the GSM mobile
`
`network.” (Id., 5:4-6, 10:12–13). The term “modem” means “MOdulator
`
`DEModulator,” the purpose of which is to demodulate incoming signals that are
`
`modulated over the network (and the inverse for outgoing signals). See e.g., “The
`
`modem is designed … to convert data inputs from the GSM mobile unit 16 to the
`
`codes which can be interpreted by the controller and memory unit 14.” (Ex. 1113,
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`7:28-31). The modem thus demodulates signal codes received over the GSM
`
`(wireless) network. Contrary to PO’s theory, if the local ALU generates the digital
`
`reset signal autonomously, there would be no need to demodulate the signal and
`
`pass it though the modem.
`
`Van Bergen explicitly disclosed wirelessly deactivating alarm outputs,
`
`which is achieved by the reset function: “[t]hrough its link to the GSM cellular
`
`phone system via a controller and memory unit the said CELL-EYE system also
`
`permits the remote activation or deactivation of alarms in the property protected by
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`13
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`Petitioner’s Reply in IPR2016-00055
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`such a device.” (Ex. 1113, 2:34-36). Since the reset function deactivates alarm
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`outputs (id., 6:37-38), “remote … deactivation of alarms” means the reset function
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`would have been received remotely “[t]hrough its link the GSM cellular phone
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`system” (id., 2:34-36), i.e., wirelessly. See also: “[t]he CELL-EYE system can only
`
`be activated, de-activated or programmed via an incoming call to the ALU 16 and
`
`its associated modem.” (Id., 4:9-10). The “reset function” and “remote …
`
`deactivation of alarms” are concrete examples of de-activation or programming the
`
`device. And Van Bergen disclosed this can “only” be done “via an incoming call to
`
`the ALU 16 and its associated modem,” i.e., wirelessly. (Id.).
`
`There is no alternate description of a locally generated reset
`
`command. In fact, PO’s only alleged example of this is the location data signal
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`(Response, 22-23, citing Ex. 1113, 4:44-45), which also originated wirelessly from
`
`the repeater station over the GSM network. See e.g., “the use of the information
`
`available through the GSM network [i.e., wirelessly] which indicates on any active
`
`mobile unit the location of the nearest GSM network repeater tower.” (Ex. 1113,
`
`2:41-43). See also, “convert the location of the nearest GSM repeater station as
`
`supplied through the GSM network to the ALU” (id., 7:15-16). Thus, the ALU is a
`
`way-point in the wireless network, merely passing, but not originating control
`
`commands like the reset function.
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`14
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`Petitioner’s Reply in IPR2016-00055
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`Regarding result codes and data carrier detect (DCD) signals
`
`(Response, 24-25): PO postulates a complete redesign of the CELL-EYE,
`
`speculating what Van Bergen could be altered to do, not what Van Bergen actually
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`disclosed. Petitioner’s expert explained ALU result codes or DCD signals report
`
`the status of wireless connections, e.g., “OK” when an SMS is sent and “error”
`
`when it is not (Ex. 2010, 12, 34), and a DCD signal when a circuit-switched call is
`
`connected. (Id., 19:16-20:12). When a connection fails, an “error” result code
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`could cause re-sending an SMS. (Id., 34). PO concludes that this means the ALU
`
`can program all sorts of functions, such as, turning off alarms. (Response, 24-25).
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`However, this is not disclosed, and, as a technical matter, is incorrect. These result
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`codes and CDC signals are not autonomously originated at the ALU, but rather are
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`triggered in response to incoming wireless signals:
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`The response “okay” would be generated as a result of the call
`connecting through the GSM network so as the acknowledgement
`from the network side tells the Falcom A2 that the call was
`successfully connected to the other end, then the Falcom A2 would
`send an “okay” response to the controller. (Ex. 2010, 25:8-20).
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`The same is true for DCD signals, (id., 19:16-20:12). That is, the ALU does not
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`spontaneously originate result codes or DCD signals, but sends those in response to
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`receiving wireless signals over the GSM network indicating whether there has been
`
`a wireless connection. (Id., 25:8-20, 19:16-20:12). Once again, the record shows
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`15
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`Petitioner’s Reply in IPR2016-00055
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`that the ALU is an intermediate device, triggered by wireless signals originated
`
`over the GSM network; it does not autonomously send control commands.
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`PO questioned Petitioner’s expert for half of the deposition (36 pages
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`of Ex. 2010, 6-42) on this issue of whether the ALU originated the reset function.
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`The expert consistently maintained his position, despite PO’s mischaracterization
`
`of the testimony. See e.g.:
`
`[The ALU] can relay control signals that it receives through the
`GSM network from the RMU, but it doesn't by itself generate
`control signals. (Ex. 2010, 31:24-32:5).
`
`All evidence points to the same conclusion – transmissions such as the
`
`reset function received “from the ALU 16 via the modem 15” are originated
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`wirelessly over the GSM network.
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`D. GPRS Would Have Been Obvious
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`The Board found that it would have been obvious to implement GPRS
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`as the wireless communication in Van Bergen. (Decision, 28-29). The evidence
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`shows that, by the time of the earliest priority of the ‘717 Patent, GSM had already
`
`evolved in “generations” from 1G (voice calls) to 2G (circuit-switched data) to
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`2.5G (packet-switched GPRS data) (Ex. 1105, ¶¶47-54, 97, 104-105) and that
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`GPRS had many advantages over circuit-switched networks including increased
`
`speed, reduced cost, increased size of data packets, and reliability in recovering
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`16
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`Petitioner’s Reply in IPR2016-00055
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`lost data packets. (Ex. 1105, ¶¶104-105, citing Ex. 1114, 3(left):1-5; Ex. 1119,
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`114:14-24). Even PO’s new Ex. 2006 confirms that GPRS was known to be “a
`
`more radio efficient method” for SMS transmission and was expected to be used in
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`GSM devices. (Ex. 2006, 10; Ex. 2010, 76:15-77:25).
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`PO’s rebuttal relies on the purported technological incompatibility
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`between circuit-switched data and SMS. (Response, 36-42). This is both legally
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`irrelevant (physical compatibility is not a factor for obviousness, as discussed
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`above), and is technologically false. As the Board pointed out (Decision, 33), SMS
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`messages were sent over circuit-switched data (CSD) channels: the ‘717 Patent
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`disclosed “SMS circuit-switched data call” (Ex. 1101, 9:28-29); Van Bergen
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`disclosed “an incoming call [i.e., circuit-switched call] carrying a coded Short
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`Message Service (SMS) message” (Ex. 1113, 2:26); Petitioner’s expert agreed,
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`“Van Bergen, is … describing SMS as a data call – telephone call” (Ex. 2010,
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`45:3-10). See also “SMS delivery via CS [circuit-switched] GSM” (Ex. 2006, 10).
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`Therefore, both DATA and SMS were sent using circuit-switched data calls, and it
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`would have been obvious in view of Bettstetter to use GPRS for both types of
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`circuit-switched transmissions. (Ex. 1105, ¶¶104-105).
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`Further, Bettstetter explicitly disclosed using GPRS for both circuit-
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`switched data (id.) as well as SMS: “[i]t is also possible to send SMS messages
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`over GPRS.” Id. at 5(right):1. In particular, the benefits of sending SMS messages
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`17
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`Petitioner’s Reply in IPR2016-00055
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`over GPRS instead of over circuit-switched were understood: “SMS delivery via
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`GPRS is normally a more radio resource efficient method than SMS delivery via
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`CS [circuit-switched] GSM.” (Ex. 2006, 10). So, GPRS would have been applied
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`to all commun
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