Patent No. 8,648,717
`Petition for Inter Partes Review
`
`
` Paper No.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC. AND RPX
`CORP.
`
`Petitioner
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`
`Patent No. 8,648,717
`Issue Date: February 11, 2015
`Title: PROGRAMMABLE COMMUNICATOR
`
`Inter Partes Review No. Unassigned
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET. SEQ.
`
`
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`

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`Table of Contents
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`
`
`Page
`
`Contents
`Introduction ...................................................................................................... 1
`I.
`
`II.
`
`Notices and Requirements ............................................................................... 3
`
`A. Notice of Each Real Party in Interest .................................................... 3
`B.
`Notice of Related Matters ..................................................................... 3
`C.
`Notice of Lead and Backup Counsel ..................................................... 5
`D. Notice of Service Information ............................................................... 5
`E.
`Payment of Fees .................................................................................... 5
`F.
`Grounds for Standing ............................................................................ 5
`Statement of Precise Relief Requested ............................................................ 6
`
`III.
`
`IV. The ‘717 Patent Petitioned for Review ........................................................... 9
`
`A.
`B.
`
`C.
`D.
`E.
`
`Summary of The ‘717 Patent ................................................................ 9
`Relevant Information Regarding the Prosecution History of the
`‘717 Patent ........................................................................................... 14
`Person of Ordinary Skill of the Art ..................................................... 15
`Priority Date of the ‘717 Patent........................................................... 15
`Claim Construction ............................................................................. 16
`1.
`programmable interface ............................................................ 16
`2.
`coded number ............................................................................ 18
`3.
`identity module ......................................................................... 18
`4.
`programming transmitter .......................................................... 19
`Statement of How Each Claim is Unpatentable Based on the Prior Art ....... 19
`
`A. Dependent Claims 2, 7 and 14 .......................................................... 20
`1.
`Ground 1: Dependent Claim 2 Would Have Been Obvious
`Under 35 U.S.C. § 103(a) over Whitley in View of SIM+ME
`Spec ........................................................................................... 39
`
`i
`
`V.
`
`

`
`Table of Contents (continued)
`
`
`
`2.
`
`Page
`Ground 2: Dependent Claims 7 and 14 Would Have Been
`Obvious Under 35 U.S.C. § 103(a) Over Whitley in View of
`SIM+ME Spec and Further in View of the SIM Application
`Toolkit ...................................................................................... 43
`B. Dependent Claim 30 .......................................................................... 50
`1.
`Ground 3: Dependent Claim 30 Would Have Been Obvious
`Over Whitley in View of the SIM+ME Spec, the SIM
`Application Toolkit, and the SIM API Spec ......................... 52
`VI. Conclusion .................................................................................................... 60
`
`
`
`ii
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`Patent No. 8,648,717
`Petition For Inter Partes Review
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`1001
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`1002
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`1003
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`1004
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`1007
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`1009
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`1013
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`1014
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`1015
`
`EXHIBITS1
`U.S. Patent No. 8,648,717 (“the ‘717 patent”)
`
`Prosecution History for U.S. Patent No. 8,648,717 (“the ‘717
`prosecution history”).
`
`Int’l Patent Pub. No. WO99/49680 (“Whitley”)
`
`
`
`Digital cellular telecommunications system, Phase 2+; Specification
`of the Subscriber Identity Module - Mobile Equipment, SIM - ME
`interface, GSM 11.11 version 7.4.0 Release 1999 (“SIM+ME Spec”)
`
`Digital cellular telecommunications system (Phase 2+); AT command
`set for GSM Mobile Equipment (ME) (GSM 07.07 version 5.8.1
`Release 1996) (“AT Command Set”)
`
`Digital cellular telecommunications system, Phase 2+; General Packet
`Radio Service (GPRS); Service description; Stage 2 (GSM 03.60
`version 6.3.2 Release 1997) (“GPRS Service Description”)
`
`Declaration of Kevin Negus
`
`Digital cellular telecommunications system, Phase 2+; Specification
`of the SIM Application Toolkit for the Subscriber Identity Module –
`Mobile Equipment (SIM-ME) interface (GSM 11.14 version 7.3.1
`Release 1998)
`
`The Subscriber Identity Module, European Telecommunications
`Standardization and the Information Society, The State of the Art
`1995
`
`U.S. Patent No. 6,275,710
`1017
`
`1 Certain exhibits numbers are not used in this petition in order to maintain
`
`consistency between exhibit numbering of this petition and the previously
`
`instituted petition in IPR2015-01823.
`
`iii
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`

`
`Patent No. 8,648,717
`Petition For Inter Partes Review
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`1018
`
`U.S. Patent Pub. No. 2002/0037744 A1
`
`1019
`
`Digital cellular telecommunications system (Phase 2+); Subscriber
`Identity Module Application Programming Interface (SIM API); SIM
`API for Java Card™; Stage 2 (GSM 03.19 version 7.0.0 Release
`1998) (“SIM API Spec”)
`
`1020
`
`U.S. Patent No. 6,005,942
`
`1021
`
`Declaration of ETSI
`
`
`
`iv
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`I.
`Introduction
`
`On August 26, 2015, Sierra Wireless America Inc., Sierra Wireless Inc. and
`
`RPX Corp. filed a petition (“first petition”) for inter partes review of claims 1-3, 5-
`
`7, 10-24, and 29-30 of U.S. Patent No. 8,648,717 (“the ‘717 patent”), in a matter
`
`now styled Sierra Wireless America Inc. et al. v. M2M Solutions LLC, Case No.
`
`IPR2015-01823. On March 8, 2016, the Board instituted an inter partes review as
`
`to claims 1, 3, 5, 6, 10-13, 15-24, and 29 and denied institution as to claims 2, 7,
`
`14, and 30.
`
`Sierra Wireless America Inc., Sierra Wireless Inc. and RPX Corp. now
`
`petition for inter partes review of claims 2, 7, 14, and 30 of U.S. Patent No.
`
`8,648,717 (“the ‘717 patent”), entitled “Programmable Communicator” and
`
`allegedly owned by M2M SOLUTIONS LLC (“the Patent Owner”). Because the
`
`Board previously instituted inter partes review of claims 1, 6, 13, and 29, but
`
`claims 2, 7, 14, and 30 depend, directly or indirectly, from these claims, they are
`
`presented herein consistent with the Board’s institution decision.
`
`In denying institution as to claims 2, 7, 14, and 30, the Board found that the
`
`first petition did not show that the same “processing module” that performs the
`
`authentication function of the independent claims performed the further functions
`
`required by dependent claims 2, 7, 14, and 30. In particular, the Board found
`
`persuasive the argument that the SIM card’s microprocessor performed the
`
`1
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`authentication function. The present petition presents new grounds and arguments
`
`and is accompanied by additional expert testimony all demonstrating how claims 2,
`
`7, 14, and 30 are unpatentable by showing that a skilled artisan would have found
`
`obvious using a SIM card’s microprocessor to perform the functions required of
`
`the processing module in those claims.
`
`During prosecution, the Patent Office allowed the claims issuing into ‘717
`
`patent on the premise that the prior art did not disclose a “programmable
`
`communication device” which included the feature that one could update a list of
`
`telephone numbers or IP addresses, via an authenticated wireless packet switched
`
`data message. The list is used by the communication device to send outgoing
`
`wireless transmissions to those telephone numbers or IP addresses.
`
`However, PCT Publication No. WO99/49680 A1 (“Whitley”) clearly
`
`disclosed remotely and wirelessly programing a communication device, as
`
`explained in the first petition. In Whitley, a GSM gateway includes a Subscriber
`
`Identity Module (SIM) card that is issued by the carrier and then is plugged into
`
`the gateway. SIM cards are required in the GSM network and include a
`
`microprocessor and memory. Among other functions, as set forth in detail in the
`
`first petition, the SIM card performs the authentication required by the independent
`
`claims. Whitley also discloses that the remote sensor devices that are coupled to
`
`the gateway may provide data to the SIM card, which then communicates that data
`
`2
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
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`back to the remote monitoring device using SMS messages, and vice versa. Other
`
`features of the SIM card, as described, for example in the SIM Application Toolkit
`
`and the SIM API Spec GSM standards documents, include processing received
`
`data and receiving and causing the transmission of SMS messages with the
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`received or processed data over the network. Another feature of the SIM card is the
`
`capability of performing additional processing using JAVA applets running on the
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`SIM card, as described in the SIM API Spec GSM standards document.
`
`Petitioners therefore contend that, inter alia, based on the obvious
`
`combination of Whitley and the GSM standards documents, there is a reasonable
`
`likelihood that one or more claims of the ‘717 patent will be found obvious and
`
`unpatentable.
`
`II. Notices and Requirements
`A. Notice of Each Real Party in Interest
`The real parties in interest for this Petition are Sierra Wireless America, Inc.,
`
`Sierra Wireless, Inc. and RPX Corp. (collectively, “Petitioners”).
`
`B. Notice of Related Matters
`The ‘717 patent is being asserted in the following co-pending federal court
`
`litigations:
`
`• M2M SOLUTIONS LLC v. ENFORA INC., et al., C.A. No. 1:14-cv-01101-
`
`RGA;
`
`3
`
`

`
`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`• M2M SOLUTIONS LLC v. SIERRA WIRELESS AMERICA, INC., et al., C.A.
`
`No. 1:14-cv-01102-RGA; and
`
`• M2M SOLUTIONS LLC v. TELIT COMMUNICATIONS PLC, et al., C.A. No.
`
`1:14-cv-01103-RGA.
`
`The foregoing cases are pending in the United States District Court for the District
`
`of Delaware (“the ‘717 District Court Actions”).2
`
`This petition is also related to the following pending inter partes review
`
`proceedings, the first of which the Patent Trial and Appeal Board recently granted
`
`institution of trial on claims 1, 3, 5, 6, 10-13, 15-24, and 29 of the same patent:
`
`• Sierra Wireless America, Inc. et al. v. M2M Solutions LLC, IPR2015-01823;
`
`• Telit Wireless Solutions Inc. et al. v. M2M Solutions LLC, IPR2016-00054;
`
`and
`
`• Telit Wireless Solutions Inc. et al. v. M2M Solutions LLC, IPR2016-00055.
`
`
`2 The ‘717 patent is a continuation of two other patents in the co-pending federal
`
`court litigation styled, M2M SOLUTIONS LLC v. SIERRA WIRELESS AMERICA,
`
`INC., et al., C.A. No. 1:12-cv-00030-RGA, pending in the United States District
`
`Court for the District of Delaware (“the ‘010 District Court Action”). Those two
`
`patents are U.S. Patent No. 7,583,197 (“the ‘197 Patent”) and U.S. Patent No.
`
`8,094,010 (“the ’010 Patent).
`
`4
`
`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`C. Notice of Lead and Backup Counsel
`Lead Counsel:
`Jennifer Hayes (Reg. No. 50,845); Tel. 650-320-7725
`
`Backup Counsel: Ronald Lopez (Authorization for Pro Hac Vice Requested); Tel.
`415-984-8368
`
`
`Address:
`
`Nixon Peabody LLP, 2 Palo Alto Square, 3000 El Camino Real,
`Suite 500, Palo Alto, CA 94306
`
`
`
`855-472-2230
`
`
`FAX:
`
`
`
`D. Notice of Service Information
`Please address all correspondence to the lead counsel at the address shown
`
`above. Petitioner consents to service by email at: patentSV@nixonpeabody.com.
`
`E. Payment of Fees
`The petition for inter partes review is accompanied by a payment of
`
`$23,000.00 and requests review of 4 claims of the ‘717 patent. The Commissioner
`
`is hereby authorized to charge any additional fees due or credit any overpayment to
`
`Deposit Account 50-3557.
`
`F. Grounds for Standing
`Petitioner hereby certifies that the patent for which review is sought is
`
`available for inter partes review and that the Petitioner is not barred or estopped
`
`from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in the petition. This petition is accompanied by a motion for
`
`joinder with IPR2015-01823 and has been timely filed within one month of the
`
`March 8, 2016 institution date of IPR2015-01823. Accordingly, the one-year bar
`
`5
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`set forth in 37 C.F.R. § 42.101(b) does not apply. 37 C.F.R. § 42.122(b).
`
`III. Statement of Precise Relief Requested
`Claims 2, 7, 14 and 30 of the ‘717 patent are unpatentable and should be
`
`canceled in view of the following prior art:
`
`Exhibit
`
`Description
`
`Ex. 1003 WO99/49680 A1 (“Whitley”)
`Ex. 1004 Digital cellular telecommunications system (Phase 2+);
`Specification of the Subscriber Identity Module - Mobile
`Equipment (SIM - ME) interface (GSM 11.11 version
`7.4.0 Release 1998) (“SIM+ME Spec”)
`Ex. 1014 Digital cellular telecommunications system, Phase 2+;
`Specification of the SIM Application Toolkit for the
`Subscriber Identity Module – Mobile Equipment (SIM-
`ME) interface (GSM 11.14 version 7.3.1 Release 1998)
`Ex. 1019 Digital cellular telecommunications system (Phase 2+);
`Subscriber Identity Module Application Programming
`Interface (SIM API); SIM API for Java Card™; Stage 2
`(GSM 03.19 version 7.0.0 Release 1998)
`
`Publication/
`Issue Date
`Sept. 1999
`Dec. 1999
`
`July 1999
`
`Nov. 1999
`
`Although Whitley was presented to the Patent Office during prosecution of
`
`the ‘717 patent, the Examiner did not cite to or rely on the Whitley reference
`
`during the prosecution. Whitley is a publication of PCT patent application
`
`PCT/US99/06429, designating the United States, which was published on
`
`September 30, 1999. Ex. 1003, Front page. Whitley qualifies as prior art to the
`
`‘717 patent at least under § 102(b).
`
`Digital cellular telecommunications system (Phase 2+); Specification of the
`
`Subscriber Identity Module - Mobile Equipment (SIM - ME) interface (GSM
`
`6
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
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`11.11 version 7.4.0 Release 1998) (“SIM+ME Spec”) was published in December
`
`1999. Ex. 1004, Front page and p. 134. The SIM+ME Spec was electronically
`
`published on January 3, 2000. Ex. 1021, ¶5, SIM+ME Spec was also presented to
`
`the Patent Office during prosecution of the ‘717 patent; however, the Examiner
`
`did not cite to or rely on the SIM+ME Spec reference during the prosecution.
`
`SIM+ME Spec also qualifies as prior art to the ‘717 patent at least under § 102(b).
`
`The SIM+ME Spec was available to any member of the interested public without
`
`requesting it from an ETSI member. Ex. 1013, Negus Decl. ¶48; Ex. 1021, ¶5.
`
`Further, ETSI did not impose restrictions on ETSI members to prevent them from
`
`disseminating information about the standard to non-members. Ex. 1013, Negus
`
`Decl. ¶48; Ex. 1021, ¶5.
`
`Digital cellular telecommunications system, Phase 2+; Specification of the
`
`SIM Application Toolkit for the Subscriber Identity Module – Mobile Equipment
`
`(SIM-ME) interface (GSM 11.14 version 7.3.1 Release 1998) (“SIM Application
`
`Toolkit”) was published in July 1999. Ex. 1014, Front page and p. 104. The SIM
`
`Application Toolkit was electronically published on August 17, 1999. Ex. 1021,
`
`¶8. Earlier versions of SIM Application Toolkit, but not the version relied on in this
`
`petition, were also presented to the Patent Office during prosecution of the ‘717
`
`patent; however, the Examiner did not cite to or rely on the SIM Application
`
`Toolkit reference during the prosecution. SIM Application Toolkit also qualifies as
`
`7
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
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`prior art to the ‘717 patent at least under § 102(b). The SIM Application Toolkit
`
`was available to any member of the interested public without requesting it from an
`
`ETSI member. Ex. 1013, Negus Decl. ¶51; Ex. 1021, ¶8. Further, ETSI did not
`
`impose restrictions on ETSI members to prevent them from disseminating
`
`information about the standard to non-members. Ex. 1013, Negus Decl. ¶51; Ex.
`
`1021, ¶8.
`
`Digital cellular telecommunications system (Phase 2+); Subscriber Identity
`
`Module Application Programming Interface (SIM API); SIM API for Java Card™;
`
`Stage 2 (GSM 03.19 version 7.0.0 Release 1998) (“SIM API Spec”) was published
`
`in November 1999. The SIM API Spec was not presented to the Patent Office
`
`during prosecution. The SIM API Spec qualifies as prior art to the ‘717 patent at
`
`least under § 102(b). The SIM API Spec was available to any member of the
`
`interested public without requesting it from an ETSI member. Ex. 1013, Negus
`
`Decl. ¶55. Further, ETSI did not impose restrictions on ETSI members to prevent
`
`them from disseminating information about the standard to non-members. Ex.
`
`1013, Negus Decl. ¶55.
`
`Petitioner requests that claims 2, 7, 14 and 30 of the ‘717 patent be canceled
`
`based on the following grounds:
`
`Ground
`1
`
`2
`
`Claims
`
`Description
`Rendered obvious under 35 U.S.C. § 103(a) over Whitley
`in view of SIM+ME Spec
`
`8
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`Ground
`Claims
`2
`7 and 14
`
`3
`
`30
`
`Description
`Rendered obvious under 35 U.S.C. § 103(a) over Whitley
`in view of SIM+ME Spec and further in view of the SIM
`Application Toolkit
`Rendered obvious under 35 U.S.C. § 103(a) over Whitley
`in view of SIM+ME Spec and further in view of the SIM
`Application Toolkit and the SIM API Spec
`
`
`IV. The ‘717 Patent Petitioned for Review
`A. Summary of The ‘717 Patent
`
`
`
`
`The ‘717 patent includes three independent claims and thirty total claims.
`
`Claim 1, reproduced here3, is representative of each of the independent claims:
`
`A programmable communicator device comprising:
`
`1
`Claim
`(preamble)
`1a
`
`a programmable interface for establishing a communication link with
`at least one monitored technical device, wherein the programmable
`interface is programmable by wireless packet switched data messages;
`and
`a processing module for authenticating one or more wireless
`transmissions sent from a programming transmitter and received by
`the programmable communicator device by determining if at least one
`transmission contains a coded number;
`wherein the programmable communicator device is configured to use
`a memory to store at least one telephone number or IP address
`
`3 For shorthand reference, Petitioners identify claim 1 by elements (e.g., 1a, 1b,
`
`1b
`
`1c
`
`etc.) as set forth above.
`
`9
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`

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`1d
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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
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`included within at least one of the transmissions as one or more
`stored telephone numbers or IP addresses if the processing module
`authenticates the at least one of the transmissions including the at
`least one telephone number or IP address and the coded number by
`determining that the at least one of the transmissions includes the
`coded number, the one or more stored telephone numbers or IP
`addresses being numbers to which the programmable communicator
`device is configured to and permitted to send outgoing wireless
`transmissions;
`wherein the programmable communicator device is configured to use
`an identity module for storing a unique identifier that is unique to the
`programmable communicator device; and
`the
`from
`transmissions
`wherein
`the one or more wireless
`programming transmitter comprises a General Packet Radio Service
`(GPRS) or other wireless packet switched data message; and
`wherein the programmable communicator device is configured to
`process data received through the programmable interface from the at
`least one monitored technical device in response to programming
`instructions received in an incoming wireless packet switched data
`message.
`Ex. 1001 at 12:34-13:3.
`The ’717 patent is a continuation of an application, now U.S. patent
`
`1e
`
`1f
`
`8,452,111 (‘111 patent), which is a continuation of an application, which is U.S.
`
`Patent No. 8,094,010 (‘010 patent). Ex. 1001, Front page. According to the
`
`identical specifications of the ‘717, ‘111, and ‘010 patents, “[t]he invention . . .
`
`10
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
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`relates to a programmable wireless communications apparatus, which can provide
`
`an improved means of communication between children and their parents, between
`
`elderly persons and caring relatives, and between mentally less-able individuals
`
`and supervising adults. In addition, the invention provides a solution . . . for user-
`
`programmable data tags which convey information from remotely located devices
`
`such as vending machines.” Ex. 1001 at 1:31-41 (emphasis added).
`
`The ‘717 patent claims to improve upon a previously filed Portable Hotlink
`
`Communicator application. Ex. 1001 at 1:41-45. The Hotlink communication
`
`device is only able to call certain numbers stored in the device. Ex. 1001 at 1:30-
`
`45. The Hotlink’s pre-defined list of numbers was remotely programmable by
`
`another mobile phone, such as a parent’s cell phone, if the parent needed her
`
`child’s “Hotlink” to be linked to another number, such as the phone of the other
`
`parent or supervising neighbor. Ex. 1001 at 1:47-67. The ‘717 patent discloses
`
`that in order to perform this remote programming, “[e]xisting and known
`
`methods of communication between the mobile phone and Hotlink communicator
`
`for the purpose of programming comprise the obvious choice of … the Short
`
`Message Service in the GSM telecommunications standard.” Ex. 1001, 1:52- 56.
`
`(emphasis added).
`
`Fig. 1 is a diagram from the ‘717 patent of the allegedly novel
`
`programmable communicator:
`
`11
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`

`
`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
`
`
`Ex. 1001, Fig. 1.
`
`
`
`The ‘717 patent’s alleged improvement is to require authentication of the
`
`programming message before updating the list of numbers stored on the device
`
`(i.e., the permitted callers list). Ex. 1001 at 9:53-56. More specifically, the
`
`allegedly novel programming message contains at least a new telephone number or
`
`IP address to be added to the caller list and a code for authenticating the
`
`programming message. Ex. 1001 at 9:46-51.
`
`The only example of programming the programmable communicator in the
`
`‘717 patent is in the preferred embodiment, using SMS messages. The patent
`
`explains “it is wished to allow only authenticated callers to change the telephone
`
`12
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`

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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
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`number or IP address of a fixed or mobile telephone or network device to which
`
`the programmable communicator is to be linked. This may be done in GSM using
`
`an SMS message, which includes data as well as a unique code such as the unique
`
`code of the Subscriber Identity Module or SIM card, often referred to as the PUK
`
`code. The PUK code is a unique identifier, which is different for every SIM
`
`Card.” Ex. 1001 at 9:35-43. The patent explains, “in the application for an
`
`improved child communicator, only persons knowing the secret PUK code would
`
`be able to change the calling number. This provides essential security for the
`
`parents.” Ex. 1001 at 10:5-8.
`
`Next, the ‘717 patent includes an example of five SMS messages that might
`
`program the permitted callers list:
`
`
`
`Ex. 1001 at 10:12-22. As explained, “a child may be playing in the garden or near
`
`to the house wearing a programmable communicator programmed to the mother’s
`
`telephone number, 040 111 111. In the next moment, the father comes home and
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`sends an SMS to the child’s programmable communicator using his phone having
`
`telephone number 040 222 2222. In this example, the message comprises PUK
`
`code A:040 222 2222 which cause the calling number of the programmable
`
`13
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`U.S. Patent No. 8,648,717
`Petition for Inter Partes Review
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`communicator to be now reprogrammed to call the father’s number if its call
`
`button is pressed by the child.” Ex. 1001 at 10: 28-37.
`
`B. Relevant Information Regarding the Prosecution History of the
`‘717 Patent
`
`
`
`On November 8, 2013, Applicant filed a supplemental amendment after an
`
`interview with the Examiner on the same day. Ex. 1002, November 8, 2013
`
`Supplemental Amendment. In the Supplemental Amendment, Applicants amended
`
`the claims to add “and permitted to”. Ex. 1002, November 8, 2013 Supplemental
`
`Amendment, p. 10. Accordingly, amended independent claims 1, 27, and 32 read
`
`“the one or more stored telephone numbers or IP addresses being numbers to
`
`which the programmable communicator device is configured to and permitted to
`
`send outgoing wireless transmissions”. Id.
`
`On December 16, 2013 the Examiner issued a notice of allowance, and
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`stated that the prior art did not teach the following limitation:
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`wherein the programmable communicator device is configured to use
`a memory to store at least one telephone number or IP address
`included within at least one of the transmissions as one or more stored
`telephone numbers or IP addresses if the processing module
`authenticates the at least one of the transmissions including the at least
`one telephone number or IP address and the coded number by
`determining that the at least one of the transmissions includes the
`coded number, the one or more stored telephone numbers or IP
`addresses being numbers to which the programmable communicator
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`device is configured to and permitted to send outgoing wireless
`transmissions.
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`Ex. 1002, December 16, 2013 Notice of Allowance, pp. 3 – 4. Accordingly, the
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`record indicates that the feature the Examiner found patentable over cited art is
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`wirelessly updating the permitted callers list (the at least one telephone number or
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`IP address stored in memory) in a communication device by authenticating the
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`wireless message containing the update command.
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`C. Person of Ordinary Skill of the Art
`A person of ordinary skill in the art at the time that the application was
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`
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`effectively filed in May 2000 would have had at least an undergraduate degree in
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`Electrical Engineering and three years of experience working the development of
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`wireless subscriber terminal systems or components, or an equivalent combination
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`of education and experience in related fields.
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`D. Priority Date of the ‘717 Patent
`The ‘717 patent is a continuation of several patent applications that claim
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`
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`priority to a PCT patent application designating the United States, filed on May 18,
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`2001, which in turn claims priority to a foreign patent application filed in Finland
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`on May 23, 2000. Ex. 1001, Front page. Accordingly, the effective filing date of
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`the ’717 patent is May 18, 2001, and no earlier than May 23, 2000.
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`E. Claim Construction
`In inter partes review, claim terms should be given their “broadest
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`reasonable construction” in light of the specification. 37 C.F.R. § 42.100(b). For
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`purposes of this proceeding only, Petitioners propose broadest reasonable
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`constructions for the following terms: coded number, identity module and
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`programming transmitter. All remaining terms should be given their plain and
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`ordinary meaning.
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`programmable interface
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`1.
`This phrase appears in the first element of each of the challenged
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`independent claims: Claims 1, 24 and 29.
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`As discussed above, M2M has filed lawsuits against several parties asserting
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`infringement of two of the ‘717 Patent’s ancestors – the ‘010 and ‘197 Patents.
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`The Court’s Claim Construction Opinion in these matters is attached as Exhibit
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`1016. In an inter partes review, under the broadest reasonable construction
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`standard, claims terms are given their “broadest reasonable interpretation,
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`consistent with the specification.” In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir.
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`1984); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14,
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`2012).
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`In the Court’s Claim Construction, the phrase “programmable interface” was
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`construed as “an interface that is able to be directly programmed.” This
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`construction, however, is not supported by the specification of the ‘717 Patent.
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`The “programmable interface” is only discussed at 8:65-9:6 of the ‘717 Patent,
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`which states the programmable interface means “may be attached to all manner of
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`sensor devices” to relay data to a remote device. Ex. 1001, 8:65-9:6. There is no
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`disclosure that the interface be “directly” programmed.
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`Petitioners further note that M2M has previously admitted that
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`programmable interfaces were well known in the art. Ex. 1008 at ¶¶128, 131-
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`140. Likewise, the omissions in the disclosure about what the programmable
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`interface is constitute an admission that a person having ordinary skill in the art
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`(PHOSITA) already possessed this knowledge and knew of components and
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`techniques for implementing the ideas described. See In re Fox, 471 F.2d 1405,
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`1407 (CCPA 1973) (claim elements which are not described in detail in the
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`patent specification are presumed to be known to those of ordinary skill in the
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`art); In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) (citing In re Fox with
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`approval: “the [application’s] disclosure fails to provide the same detailed
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`information concerning the claimed invention. In the absence of such a specific
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`description, we assume that anyone desiring to carry out such computerized
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`warehousing and inventory control systems would know of the equipment and
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`techniques to be used.”).
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`Petitioner accordingly asserts that “programmable interface” should be given
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`its plain and ordinary meaning.
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`coded number
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`2.
`The “coded number” as used in the independent claims is an authentication
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`code required to update the callers list. Ex. 1001 (the ‘717 patent), claim 1 (“use a
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`memory to store at least one telephone number included within … [a] transmission
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`... if the transmission[] include[s] the coded number”). The ‘717 patent describes
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`an example of this authentication using a coded number: authentication “may be
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`done in GSM using an SMS message, which includes data as well as a unique code
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`such as the unique code of the Subscriber Identity Module or SIM card, often
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`referred to as the PUK code.” Ex. 1001, 9:38-43. The ‘717 patent goes on to say
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`that the “choice of the PUK is made by way of example only and any similar
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`unique coding may be used for the purposes of the invention.” Ex. 1001 at 9:43-45
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`(emphasis added). The ‘717 patent further states: “the invention may make use of
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`all coding schemes for storing numbers to the programmable apparatus and the use
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`of the PUK code was by way of example only.” Ex. 1001 at 12: 25-28. Petitioner
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`accordingly asserts that for purposes of this proceeding, “coded number” should be
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`construed at least as broadly as to include any code used to authenticate a
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`transmission.
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`identity module
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`3.
`The “identity module” appears in each of the independent claims of the ‘717
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`U.S. Patent No. 8,648,717
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`patent. Ex. 1001 at 12:58, 15:12, 16: 25. The ‘717 patent explains that
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`authentication “may be done in GSM using an SMS message, which includes data
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`as well as a unique code such as the unique code of the Subscriber Identity Module
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`or SIM card, often referred to as the PUK code.” Ex. 1001 at 9:38-43.
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`Accordingly, a broadest reasonable interpretation of the identity module is any
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`device for storing the unique identifier or the coded number, including the SIM
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`card.
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`4. programming transmitter
`“Programming transmitter” appears in each of the independent claims of the
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`‘717 patent. Ex. 1001 at 12:40, 14:61, 16:7. The ‘717 patent does not expressly
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`describe a programming transmitter but does explain that an object of the invention
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`is to provide a programmable communicator that can be remotely programmed by