Patent No. 8,648,717
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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC. AND RPX
`CORP.
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`Petitioners
`v.
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`M2M SOLUTIONS LLC
`Patent Owner
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`Patent No. 8,648,717
`Issue Date: February 11, 2015
`Title: PROGRAMMABLE COMMUNICATOR
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`Inter Partes Review No. IPR2016-00853
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`PETITIONERS’ REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC. AND RPX
`CORP.
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`Petitioners
`v.
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`M2M SOLUTIONS LLC
`Patent Owner
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`Patent No. 8,648,717
`Issue Date: February 11, 2015
`Title: PROGRAMMABLE COMMUNICATOR
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`Inter Partes Review No. IPR2016-00853
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`PETITIONERS’ REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
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`U.S. Patent No. 8,648,717
`Reply ISO Motion for Joinder
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`I.
`Introduction
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`The Board has routinely granted self-joinder under 35 U.S.C. §315(c) under
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`similar circumstances. Joinder is proper here because it would result in increased
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`efficiencies, would prevent an invalid patent from being asserted in litigation, and
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`because M2M has not demonstrated that it would suffer any harm or prejudice.
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`This petition should not be denied as a “second bite at the apple”.
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`II. Argument
`A. The Second Petition is Not a “Second Bite at the Apple”
`The need for a second petition is a direct result of M2M’s inconsistent
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`positions relating to the scope of the claims in litigation and these proceedings. On
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`May 15, 2005, M2M served Sierra Wireless with infringement contentions that
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`identify features of the accused products as performing the authentication of claim
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`1, and the additional functions of dependent claims 2, 7, 14 and 30. Ex. 1017 at,
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`e.g., p. 5-7 (the SIM card includes FDN, modules have SIM interface for
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`connecting to and controlling the SIM card, the SIM card contains the PIN2
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`required for verification and non-specific software processes the AT commands to
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`verify the PIN2 is accurate), p.13-16, 22-25, 38-41, 56-59 (Ready Agent or Smart
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`Automation allegedly process data and cause the data to be transmitted).
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`Specifically, M2M’s infringement contentions assert with respect to the
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`“processing module” limitation of claim 1 that the SIM card of the accused
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`1
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`U.S. Patent No. 8,648,717
`Reply ISO Motion for Joinder
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`products includes a SIM card containing the FDN, which is “a memory module for
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`storing telephone numbers, corresponding to remote devices, including remote
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`monitoring devices.” Ex. 1017 at p. 6. M2M’s contentions continue by alleging
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`that the accused products “support a combination of AT commands that
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`collectively allow for the editing of a facility locked FDN phonebook… if used in
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`conjunction with a required PIN2 password (i.e., a ‘coded number’) when the FDN
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`phonebook has a facility lock applied.” Id. Both parties’ experts agree that it is the
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`SIM card that performs this authentication. 1 M2M’s contentions then point to a
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`different processor (a Monitoring Engine in the AirVantage Ready Agent and a
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`Smart Automation Ready Agent software module allegedly residing in firmware)
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`as performing the additional functions required by dependent claims 2, 7, 14 and
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`30. Id. at p.13-16, 22-25, 38-41, 56-59.
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`Petitioners reasonably relied on M2M’s infringement contentions when they
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`filed the first petition on August 26, 2015. To save its claims, M2M argued that the
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`processor has to be the same. Sierra, IPR2015-01823, Paper 11 at p. 40-43, 45-47.
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`The Board’s decision denied institution of claims 2, 7, 14 and 30 based on M2M’s
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`newly advanced position. However, as noted by M2M’s own expert, the SIM card
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`application has the capability for processing the data for authentication; a different
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`1 See e.g., Exhibit 1013 (Declaration of Dr. Kevin Negus) at 79-83, 84, 87, 93-95
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`and IPR2015-01823, Exhibit 2011 at ¶87).
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`2
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`U.S. Patent No. 8,648,717
`Reply ISO Motion for Joinder
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`processor – the software on the device - performs the functions of dependent
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`claims 2, 7, 14 and 30 in the infringement contentions. Accordingly, it is M2M’s
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`conflicting positions that have resulted in a need for a second petition. When the
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`facts demonstrate that joinder is appropriate, as they do here, the Board has
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`repeatedly allowed them. See Ariosa, Paper 104 at 6; see also Target, IPR2014-
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`00508, Paper 28 at 16.
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`B. The Merits Warrant Joinder
`The second petition is limited to four dependent claims – Claims, 2, 7, 14
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`and 30. It relies on the same primary prior art references as the first petition,
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`relying on one additional prior art reference that is part of the record of the first
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`petition, and one additional prior art reference that is not part of the record of the
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`first petition – added to address the limitations of these dependent claims.
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`Accordingly, the prior art references in the first and second petitions are
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`overlapping. Addition of the four dependent claims would not overcomplicate the
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`proceedings – a minimal additional amount of work is required to review Claims 2,
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`7, 14 and 30. See, e.g., Ariosa, IPR2013-00250, Paper 24, p. 2-5; Microsoft,
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`IPR2013-00109, Paper 15, p. 4-5; and Samsung, IPR2014-00557, Paper 10, p. 17-
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`18.
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`M2M does not identify any harm that it would suffer as a result of institution
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`of the proceedings based on the second petition and granting of the joinder motion;
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`3
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`U.S. Patent No. 8,648,717
`Reply ISO Motion for Joinder
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`instead, M2M merely argues that Petitioners have not met their burden regarding
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`the impact on trial schedule and simplifications for briefing and discovery.
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`However, Petitioners, as noted in M2M’s Opposition, will agree to changes in the
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`schedule of the second petition that would result in little impact in the schedule of
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`the first Petition. Additionally, the Board has discretion to accelerate the deadlines
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`for M2M to file its response to the petition and motion to amend, which is
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`reasonable given that the second petition only relates to four dependent claims. In
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`any event, minor readjustments to the schedule are not sufficiently prejudicial to
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`deny joinder. Microsoft, Paper 15 at 4; Samsung, Paper 10 at 18.
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`The cases cited by M2M in which joinder was denied involved significantly
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`different circumstances. For example, in Butamax, the Board denied institution and
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`joinder because the second Petition presented substantially the same prior art, and
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`substantially the same arguments as the first petition. IPR2014-00581, Paper 8, p.
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`7-8. By contrast, in the present case, the second petition presents additional prior
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`art references and different arguments than those presented in the first petition.
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`These additional prior art references and different arguments were necessitated by
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`M2M’s changing positions regarding the meaning and scope of the four dependent
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`claims, as set forth above.
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`In numerous cases, presenting similar circumstances, the Board has found
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`joinder appropriate. See, e.g., Ariosa, IPR2013-00250, Paper 24, p. 2-5; Microsoft,
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`4
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`U.S. Patent No. 8,648,717
`Reply ISO Motion for Joinder
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`IPR2013-00109, Paper 15, p. 4-5; and Samsung, IPR2014-00557, Paper 10, p. 17-
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`18.
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`C. The Statute Authorizes and the Board Routinely Grants Self-
`Joinder
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`The Board has routinely granted motions for self-joinder under similar
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`circumstances, interpreting 35 U.S.C. §315(c) as authorizing self-joinder and
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`rejecting arguments similar to those presented by M2M. See, e.g., Samsung, Paper
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`10, p. 14-18. In Samsung, the Board concluded the Board will determine whether
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`to grant joinder on a case-by-case basis, taking into account the particular facts of
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`each case. Id. at 15-16 (citing 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011)
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`(statement of Sen. Kyl) (“when determining whether and when to allow joinder,
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`the Office may consider factors including the breadth or unusualness of the claim
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`scope, claim construction issues, and consent of the patent owner). The Board
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`noted a number of other decisions in which the Board had allowed joinder of
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`additional grounds by the same party. Id. at 16. Finally, the board noted that
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`pursuant to 35 U.S.C. §315(d), 35 U.S.C. §315(c), and 37 C.F.R. §42.122(a),
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`provide the Board with discretionary power to consolidate proceedings and grant
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`self-joinder motions. Id. at 17-18.
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`III. Conclusion
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`For the foregoing reasons, Petitioners respectfully request that the Board
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`grant its Motion and join Petitioners’ second ‘717 Petition with IPR2015-01823.
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`5
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`U.S. Patent No. 8,648,717
`Reply ISO Motion for Joinder
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`Respectfully submitted,
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`Dated: June 8, 2016
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`By:
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`/Jennifer Hayes/
`Reg. No. 50,845
`Nixon Peabody LLP
`P.O. Box 60610
`Palo Alto, CA 94306
`Tel. (650) 320-7763
`Fax (650) 320-7701
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`6
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`U.S. Patent No. 8,648,717
`Reply ISO Motion for Joinder
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Reply in Support
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`of Motion for Joinder to Related Instituted Inter Partes Review was served in its
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`entirety on June 8, 2016 by e-mail on the following individuals:
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`Jeffrey Costakos
`jcostakos@foley.com
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`Michelle Moran
`mmoran@foley.com
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`Marc Henschke
`mhenschke@foley.com
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`By: /Jennifer Hayes/
`Counsel for Petitioners
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`7
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