Paper No. ________
`
`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`
`SIERRA WIRELESS AMERICA, INC.; SIERRA WIRELESS, INC.;
`and RPX CORP.,
`Petitioners,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`
`
`
`Case IPR2015-01823
`Patent 8,648,717
`_______________
`
`
`
`
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`4832-1178-5777.2
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`PROCEDURAL BACKGROUND ................................................................. 1
`
`RELIEF REQUESTED ................................................................................... 2
`
`III. STATEMENT OF MATERIAL FACTS ........................................................ 2
`
`IV. THE CLAIMS ON WHICH THE IPR WAS INSTITUTED ARE
`NOT OBVIOUS .............................................................................................. 3
`
`A.
`
`Claims 1, 3, 5, 6, 10-13, 15, 18, 22-24, And 29 Are Not
`Obvious Based On The Combination Of Whitley And The SIM
`Specification As Alleged In Ground 1 .................................................. 3
`
`1.
`
`Petitioners’ Obviousness Analysis Is Inadequate ....................... 3
`
`a)
`
`b)
`
`Petitioners failed to articulate the differences
`between the claimed invention and the prior art .............. 3
`
`Petitioners did not provided an adequate rationale
`to combine the references ................................................. 4
`
`2. Whitley In View Of The SIM Spec Fails To Disclose All
`Elements In Independent Claim 1 And Fails To Render
`That Claim Obvious As Alleged In Ground 1 ............................ 5
`
`3. Whitley In View Of The SIM Specification Fails To
`Disclose Element 1(b) In Independent Claim 1 And Fails
`To Render That Claim Obvious As Alleged In Ground 1 .......... 7
`
`4. Whitley In View Of The SIM Specification Fails To
`Disclose Element 1(d) In Independent Claim 1 And Fails
`To Render That Claim Obvious As Alleged In Ground 1 ........13
`
`a)
`
`Overview Of The SIM Specification And The
`Related SAT Specification Prior Art References ...........18
`
`(i)
`
`The SIM Specification .........................................18
`
`(ii) The SAT Specification .........................................21
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`b)
`
`Overview Of Petitioners’ Detailed Analysis For
`How The SIM Specification Purportedly Satisfies
`The Requirements Of Claim Element 1(d) .....................23
`
`c)
`
`Petitioners’ Detailed Analysis Of Claim Element
`1(d) Must Fail For Being Premised Upon
`Mischaracterizations Of The Disclosures and
`Teachings Of The SIM Specification .............................26
`
`(i)
`
`The SIM Specification Fails To Teach That
`the FDN Phonebook Is An Outbound
`Restrictive Calling List .........................................26
`
`(ii) The SIM Specification Fails To Teach That
`Wireless “SMS-PP data download”
`Messages Are Sent Over A GPRS Network,
`And In Any Event It Is Unproven That SMS
`Messages Sent Over GPRS Would Be
`Packet Switched Data Messages ..........................29
`
`(iii) The SIM Specification Fails To Teach That
`Any Type Of APDU Command Would Ever
`Be Transmitted In A Wireless “SMS-PP
`Data Download” Message ....................................34
`
`(iv) The SIM Specification Fails To Teach That
`The SIM OS Identified By Petitioners As
`The “Processing Module” Would Ever Even
`Receive Wireless “SMS-PP Data
`Download” Message Transmissions ....................37
`
`(v) The SIM Specification Fails To Teach That
`The SIM OS Identified By Petitioners As
`The “Processing Module” Is Capable Of
`Authenticating Or Otherwise Processing The
`Content Of The Data Payload Originating In
`An “SMS-PP Data Download” Message
`Transmission ........................................................39
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`
`(vi) Petitioners Have Not Provided An Adequate
`Rationale To Combine Whitley With The
`SIM Specification .................................................42
`
`5. Whitley In View Of The SIM Specification Fails To
`Disclose Element 1(g) In Independent Claim 1 And Fails
`To Render That Claim Obvious As Alleged In Ground 1 ........45
`
`6. Whitley In View Of The SIM Specification Fails To
`Disclose All Elements Of Independent Claims 24 And 29
`And Fails To Render Those Claims Obvious As Alleged
`In Ground 1 For Substantially The Same Reasons
`Discussed Above In Relation To Claim Elements 1(b),
`1(d) And 1(g) ............................................................................49
`
`7. Whitley In View Of The SIM Specification Fails To
`Disclose All Elements Of Dependent Claim 6 And To
`Render That Claim Obvious As Alleged In Ground 1 .............50
`
`8. Whitley In View Of The SIM Specification Fails To
`Disclose All Elements Of Dependent Claim 10 And To
`Render That Claim Obvious As Alleged In Ground 1 .............50
`
`9. Whitley In View Of The SIM Specification Fails To
`Disclose All Elements Of Dependent Claim 23 And To
`Render That Claim Obvious As Alleged In Ground 1 .............52
`
`B.
`
`Claims 16, 17, 19 And 20 Are Not Obvious Based On The
`Combination Of Whitley, The SIM Specification, And Kail As
`Alleged In Ground 3 ............................................................................53
`
`1.
`
`2.
`
`Claims 16 And 17 .....................................................................53
`
`Claims 19 And 20 .....................................................................56
`
`C.
`
`Claim 21 Is Not Obvious Based On The Combination Of
`Whitley, The SIM Specification, And Eldredge As Alleged In
`Ground 4 ..............................................................................................59
`
`V.
`
`CONCLUSION ..............................................................................................61
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Advanced Display Sys., Inc. v. Kent State Univer.,
`212 F.3d 1272 (Fed. Cir. 2000) ...................................................................... 28, 32
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................... 3
`
`Heart Failure Technologies, LLC v. CardioKinetix, Inc.,
`IPR2013-00183 (PTAB July 31, 2013) (Paper 12) ................................................ 4
`
`Kinetic Technologies, Inc. v. Skyworks Soalutions, Inc.
`IPR2014-00529 (Paper 8, p. 15) ..................................................................... 44, 45
`
`KSR Int'l Co. v. Teleflex,
`127 S. Ct. 1727 (2007) ............................................................................................ 4
`
`KSR Int’l Co. v Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................................ 3
`
`Luminara Worldwide, LLC v. Liown Electronics Co. Ltd.,
`IPR2015-01183 (Paper 8, p. 17) ........................................................................... 44
`
`Plantronics Inc. v. Aliph Inc.,
`724 F.3d 1343 (Fed. Cir. 2013) .............................................................................. 4
`
`Trintec Indus. v. Top-U.S.A. Corp.,
`295 F.3d 1292 (Fed. Cir. 2002) . .................................................................... 29, 36
`
`Statutes
`
`35 U.S.C. § 103 ............................................................................................................ 3
`
`Other Authorities
`
`37 C.F.R. § 42.100 ..................................................................................................... 63
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`Patent Owner’s Response
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`
`Exhibit
`Ex. #
`2001 Affidavit in Support of Motion for Pro Hac Vice Admission of Michelle
`Moran, 37 C.F.R. § 42.10(c), September 8, 2015.
`2002 Memorandum Order, dated October 2, 2015, M2M Solutions LLC v.
`Sierra Wireless America, et al., Case No. 12-030-RGA (DED), ECF 215
`2003 Excerpts of the Declaration of Dr. Ray W. Nettleton in Support of
`Plaintiff’s Answer to Defendants’ Motion for Reconsideration of the
`Court’s Claim Constructions of “Processing Module” and “Programmable
`Interface,” dated August 3, 2015, filed in M2M Solutions LLC v. Sierra
`Wireless America, et al., Case No. 12-030- RGA (DED), ECF 197
`2004 Excerpts of the Declaration of Marc N. Henschke in Support of Plaintiff’s
`Answer to Defendants’ Motion for Reconsideration of the Court’s Claim
`Constructions of “Processing Module” and “Programmable Interface,”
`dated August 3, 2015, filed in M2M Solutions LLC v. Sierra Wireless
`America, et al., Case No. 12-030- RGA (DED), ECF 196
`2005 Plaintiff’s Answering Brief in Opposition to Defendants’ Motion for
`Reconsideration of the Court’s Claim Construction of “Processing
`Module” and “Programmable Interface” Based on the Federal Circuit En
`Banc Decision in Williamson v. Citrix Online, Case No. 12-030-RGA
`(DED), ECF 195
`2006 Declaration of Michelle A. Moran, January 6, 2016
`2007 Affidavit in Support of Motion for Pro Hac Vice Admission of Marc N.
`Henschke, 37 C.F.R. § 42.10(c), May 3, 2016
`2008 Memorandum Opinion Denying Sierra’s Summary Judgment Motion,
`dated March 31, 2016, M2M Solutions LLC v. Sierra Wireless America,
`et al., Case No. 12-030-RGA (DED)
`’010 Markman Opinion dated November 12, 2013, M2M Solutions LLC
`v. Sierra Wireless America, et al., Case No. 12-030-RGA (DED)
`Joint Claim Construction Statement filed on August 14, 2015, M2M
`Solutions LLC v. Sierra Wireless America, et al., Case No. 1:14-01001-
`RGA (DED)
`2011 Expert Declaration of Joel R. Williams, dated May 25, 2016
`2012
`ISO/IEC 7816-3
`
`2009
`
`v
`
`2010
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`2013
`
`2015
`
`3G TS 22.038, SIM Application Toolkit (SAT); Service Description; V.
`2.0.0 (1999-10)
`2014 Supplemental Amendment during prosecution of Patent Application No.
`13/934,763 that became the ’717 patent, dated November 8, 2013
`3rd Generation Partnership Project; Point-to-Point (PP) Short Message
`Service (SMS) Support On Mobile Radio Interface; 3G TS 24.011 V3.2.0
`(2000-03 Release 1999)
`2016 Excerpts of the deposition of Dr. Negus, M2M Solutions LLC v. Sierra
`Wireless America, et al., Case No. 12-030-RGA (DED), dated 5/21/15
`2017 Transcript of deposition of Dr. Negus, M2M Solutions LLC v. Sierra
`Wireless America, et al., Case No. 12-030-RGA (DED), dated 5/17/16
`2018 Excerpt of the Negus Invalidity Expert Report, M2M Solutions LLC v.
`Sierra Wireless America, et al., Case No. 12-030-RGA (DED), dated
`5/5/14
`2019 U.S. Patent No. 8,094,010
`2020 Second Declaration of Michelle A. Moran, May 25, 2016
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`I.
`
`PROCEDURAL BACKGROUND
`
`On August 26, 2015, Petitioners filed a Petition under 37 C.F.R. § 42.100
`
`(Paper no. 1), requesting inter partes review of claims 1-3, 5-7, 10-24, 29 and 30 of
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`U.S. Patent No. 8,648,717 B2 (“the ’717 patent”, Ex. 1001), based on four different
`
`grounds. Petitioners filed an 82 page Declaration of Dr. Kevin Negus (Ex. 1013) to
`
`support their allegations in the Petition. Patent Owner, without the benefit of an
`
`expert declaration, filed its Preliminary Response (Paper no. 11) traversing the claim
`
`constructions and grounds set forth in the Petition. Based on the record existing at
`
`the time, on March 8, 2016, the Board initiated trial (“Decision,” Paper 16) on the
`
`following grounds: claims 1, 3, 5, 6, 10-13, 15, 18, 22-24, and 29 as obvious in view
`
`of Int’l. Patent Pub. No. WO 99/49680 (“Whitley,” Ex. 1003) and 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 (“the SIM Specification,” Ex. 1004); claims 16, 17, 19 and 20 as
`
`obvious over the combination of Whitley, the SIM Specification and U.S. Patent No.
`
`5,959,529 (“Kail,” Ex. 1005); and claim 21 as obvious over the combination of
`
`Whitley, the SIM Specification and Int’l Patent Pub. No. WO 98/35516 (“Eldredge,”
`
`
`
`1
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`Ex. 1006).
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`II. RELIEF REQUESTED
`Patent Owner requests that, for at least the reasons presented below, that the
`
`Board confirm the patentability of claims 1, 3, 5, 6, 10-13, 15-24, and 29 of the ’717
`
`patent.
`
`III. STATEMENT OF MATERIAL FACTS
`The claimed inventions of the ’717 patent relate to wireless modules and
`
`related devices designed and intended for use in machine-to-machine
`
`communications. These machine-to-machine communications encompass a variety
`
`of applications in which one machine is able to remotely monitor a second machine
`
`in a relatively autonomous fashion by communicating with or through a wireless
`
`module that is embedded in or otherwise linked to that second machine. For
`
`example, machine-to-machine applications are prevalent in the fields of automated
`
`meter reading, asset tracking and fleet management, automotive telematics,
`
`commercial and residential security systems, wireless telemedicine and healthcare
`
`devices, industrial automation and controls, remote information displays and digital
`
`signage, the remote control of certain consumer devices and appliances, point of sale
`
`payment systems, vending machines, kiosks, and ATM and banking machines.
`
`(Decl., Joel Williams, ¶ 11) (Ex. 2011, pp. 3-4).
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`2
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`Patent Owner’s Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`IV. THE CLAIMS ON WHICH THE IPR WAS INSTITUTED ARE NOT
`OBVIOUS
`A.
`
`Claims 1, 3, 5, 6, 10-13, 15, 18, 22-24, And 29 Are Not Obvious
`Based On The Combination Of Whitley And The SIM
`Specification As Alleged In Ground 1
`
`Petitioners assert four grounds of unpatentability under 35 U.S.C. § 103. Each
`
`ground relies on at least Whitley (Ex. 1003) and the SIM Spec (Ex.1004). However,
`
`Whitley and/or the SIM Spec fail to disclose all of the elements present in the
`
`independent claims. (Ex. 2011, ¶36).
`
`Petitioners’ Obviousness Analysis Is Inadequate
`
`1.
`The Petitioners’ obviousness analysis is inadequate and unsupported for at
`
`least two reasons.
`
`a)
`
`Petitioners failed to articulate the differences between
`the claimed invention and the prior art
`
`Obviousness is resolved on the bases of underlying factual determinations
`
`including: (1) the scope and content of the prior art, (2) any differences between the
`
`claimed subject matter and the prior art, (3) the level of skill in the art, and (4)
`
`secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`Despite this requirement, the Petitioners’ failed to articulate the differences between
`
`the invention of the ’717 and the prior art. Furthermore, there must be “some
`
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.” KSR Int’l Co. v Teleflex Inc., 550 U.S. 398, 418 (2007).
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`The decisions in Heart Failure Technologies LLC v. Cardiokinetix Inc., IPR2013-
`
`00183(Paper 12) (denying petition) and Plantronics Inc. v. Aliph Inc., 724 F.3d
`
`1343, 1354-55 (Fed. Cir. 2013), were each based on the underlying principle that
`
`without “an adequate rationale for the combination of the cited references,” or a
`
`showing that a combination of the references disclose all the claimed subject matter,
`
`the mere presence of the combined elements in the prior art is not sufficient to
`
`reasonably find a claim obvious. “Common subject matter” alone, without a rational
`
`articulated reason, may not render a patent or a claim obvious in light of the prior
`
`art. Heart Failure Technologies LLC, at 11.
`
`b)
`
`Petitioners did not provided an adequate rationale to
`combine the references
`
`No finding of obviousness can be made when the “Petitioner has neither
`
`provided an adequate rationale for the combination of the cited references, nor
`
`shown that the references, when combined, disclose the claimed subject matter or
`
`otherwise would have made it obvious.” Heart Failure Technologies, LLC v.
`
`CardioKinetix, Inc., IPR2013-00183, slip op. at 12 (PTAB July 31, 2013) (Paper
`
`12). Without such a rationale, the combination is improperly based on hindsight.
`
`Plantronics, supra., 724 F.3d at 1355. This aids in protecting against the
`
`impermissible hindsight cautioned against by the U.S. Supreme Court in KSR Int’l
`
`Co. v. Teleflex, 127 S. Ct. 1727, 1745 (2007). As addressed below for specific
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`elements, Petitioners failed to provide anything but conclusory assertions why one of
`
`ordinary skill in the art would modify or combine the purportedly known elements.
`
`For at least that reason, the Board should confirm the patentability of the challenged
`
`claims.
`
`2. Whitley In View Of The SIM Spec Fails To Disclose All
`Elements In Independent Claim 1 And Fails To Render That
`Claim Obvious As Alleged In Ground 1
`
`Petitioners incorrectly argue that Whitley’s gateway 20 would qualify as the
`
`claimed programmable communicator device of the ’717 patent. (Paper 1, pp. 17-
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`20.) However, Whitley’s gateway 20 alone or combined with the SIM Spec and/or
`
`the “Admitted Prior Art” does not disclose at least elements “programmable
`
`interface,” “store telephone numbers received in a single transmission” requiring a
`
`“restrictive outbound calling list” (as properly interpreted), and “processing data” as
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`required by independent claims 1, 24 and 29. The cited references also do not render
`
`the claims obvious. (Ex. 2011, ¶ 37.) The petition must therefore be denied.
`
`For reference, the following chart contains the elements of exemplary claim 1
`
`along with Petitioners’ labels.
`
`Petitioners’
`Designation
`
`Claim Elements for Claim 1
`
`(a)
`
`A programmable communicator device comprising:
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`(b)
`
`(c)
`
`(d)
`
`(e)
`
`(f)
`
`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
`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 wherein the one or more wireless transmissions from the
`programming transmitter comprises a General Packet Radio Service
`(GPRS) or other wireless packet switched data message;
`
`(g)
`
`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.
`(Pet. at 17-38.)
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`As discussed below, Whitley does not disclose at least the elements (b), (d),
`
`and (g) of claim 1, either alone or in combination with the SIM Spec.
`
`
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`3. Whitley In View Of The SIM Specification Fails To Disclose
`Element 1(b) In Independent Claim 1 And Fails To Render
`That Claim Obvious As Alleged In Ground 1
`
`Element 1(b): “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;”
`
`Petitioners argue that Whitley’s gateway 20 comprises the claimed
`
`“programmable interface” which it uses for establishing a communication link with
`
`various types of “monitored technical devices” that are located within facility 12,
`
`such as lights, security sensors, answering machines, home computers, etc. (Paper 1,
`
`p. 20) (citing Ex. 1003, 8:27-9:3). However, this argument fails for at least two
`
`principal reasons. First, the parties agree that a person of ordinary skill would
`
`understand the plain and ordinary meaning of “programmable interface” to be an
`
`interface that must itself be programmable, and here Whitley fails to disclose or
`
`teach that any interface utilized by gateway 20 would itself be programmable as
`
`required. Second, because there is no teaching at all in Whitley of any gateway 20
`
`interface that is itself programmable, Whitley necessarily lacks a more particularized
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`disclosure of an interface that is programmable by way of “wireless packet switched
`
`data messages” as claim element 1(b) further requires.
`
`First, Petitioners contend that the term “programmable interface” should be
`
`given its plain and ordinary meaning herein, which Petitioners have at all times
`
`acknowledged as being an interface that must itself be programmable. (Pet. 15). For
`
`example, in the Markman hearing conducted in the related ‘010 patent litigations co-
`
`pending in federal court, Defense Counsel expressly argued on behalf of Petitioners
`
`that the “‘programmable interface’ . . . itself is what needs to be programmable . . .
`
`as opposed to the programmable communicator device as a whole being
`
`programmable . . . [and merely including] a non-programmable interface as a
`
`component.” (See Memorandum Opinion Denying Sierra’s Summary Judgment
`
`Motion dated March 31, 2016) (Ex. 2008, p. 18 & n.4). The Court concurred with
`
`Petitioners’ argument and accordingly it construed the term “programmable
`
`interface” to mean “an interface that is able to be directly programmed.” (Id.). (See
`
`also ‘010 Markman Opinion dated November 12, 2013) (Ex. 2009 at p. 10). In turn,
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`the Court held that the word “programmable” is “generally understood in the art to
`
`mean ‘capable of accepting instructions for performing a task or an operation.’” (Ex.
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`2009, p. 11) (citing MICROSOFT COMPUTER DICTIONARY 360 (4th ed.
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`1999)).1
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`Similarly, in the ’717 patent litigations co-pending in federal court,
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`Petitioners’ currently proposed construction for the term “programmable interface”
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`once again reflects their acknowledgement that by definition the claimed interface
`
`must itself be programmable. Indeed, Petitioners are offering the following
`
`construction: “an interface that is able to be directly programmed, i.e., accept
`
`programming instructions for performing a task or an operation independently of the
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`processing module.” (See Joint Claim Construction Statement filed on August 14,
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`2015) (Ex. 2010, pp. 9-10). In addition, the arguments that Petitioners have made to
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`the Board herein likewise implicitly acknowledge that, in order to qualify as the
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`“programmable interface” of claim element 1(b), a putative interface must itself be
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`programmable. (See, e.g., Pet. 23 (arguing that if Whitley were combined with
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`1 The ’717 patent specification clearly discloses a “programmable interface” that is
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`itself programmable in the sense of being “capable of accepting instructions for
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`performing a task or an operation.” For example, the specification recites a
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`“programmable interface” that accepts what amounts to a READ programming
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`instruction sent from a remote device to which it responds by returning a requested
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`data value. (Ex. 1001, p. 9:2-6).
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`“interfaces disclosed in the Admitted Prior Art . . . [t]he predictable result would be
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`that the interface itself would be programmed” as required by the claim language).2
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`Here, Petitioners’ argument that claim element 1(b) is ostensibly satisfied fails
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`because Petitioners have not, and cannot, identify any teaching or disclosure in
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`Whitley that any interface belonging to gateway 20 is itself programmable. Indeed,
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`Whitley barely contains any disclosure at all about the gateway 20 interfaces, much
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`less a specific recitation that they would be programmable in nature. At most,
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`Whitley offers a vague statement that some undisclosed type of “physical interface”
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`would allow gateway 20 to “couple to” or “connect to” the devices residing in
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`facility 12 in some undisclosed manner. (Paper 1, p. 20). For example, in Figures 1
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`and 4 of Whitley, whatever interfaces may be present are depicted merely as
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`unexplained and unlabeled straight lines.3 Alternatively, Petitioners cannot argue
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`2 Notably, the Board declined to institute on Ground 2 of the Petition in which
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`Petitioners attempted to rely upon so-called Admitted Prior Art (i.e., the Nettleton
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`Report) to supply the “programmable interface” that clearly is otherwise missing
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`from Whitley. (Decision, Paper 16, pp. 31-32).
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`3 The ‘717 patent specification describes the programmable communicator device as
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`using its “programmable interface” to directly connect to and interface with a
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`“monitored technical device” so as to form a communication link through which the
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`that these cryptic descriptions in Whitley somehow inherently disclose
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`“programmable interfaces” because Petitioners do not and cannot prove that all
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`known types of physical interfaces used for forming a connection between two
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`electronic devices must necessarily be programmable.
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`Petitioners’ citations to disclosures in Whitley that gateway 20 is generally
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`“programmable” are completely irrelevant to demonstrating that whatever physical
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`interfaces might be utilized by gateway 20 for connecting to “monitored technical
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`devices” are themselves “programmable” as claim element 1(b) admittedly requires.
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`(Paper 1, p. 17, 21). (Cf. Decision, Paper 16, p. 12). As discussed above, Petitioners
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`have always acknowledged that the claimed “programmable interface” must itself be
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`programmable, and that it would be insufficient within the meaning of the claim
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`language for the interface to merely be a component part of a larger device that was
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`generally programmable. (Paper 1, p. 19). To this point, in the ‘717 patent litigations
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`co-pending in federal court, Petitioners’ proposed claim construction purports to
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`require that a “programmable interface” must be “able to be directly programmed . .
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`. independently of the processing module” which constitutes a different component
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`part of the overall programmable communicator device. (Decision, Paper 16, p. 12).
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`programmable communicator can receive data transmissions. See, e.g., (Ex. 1001,
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`Fig. 3, 1:39-41, 2:9-16, 3:52-61, 8:65-9:6, 11:27-32).
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`Equally irrelevant to satisfying claim element 1(b) are Petitioners’ citations to
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`disclosures in Whitley that the alleged “monitored technical devices” located in
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`facility 12 would be “programmable” by way of remotely-sent commands that
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`would ultimately pass through the gateway 20 interfaces. (See Paper 1, p. 21).
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`(“Whitley discloses the ability to wirelessly program the local devices connected
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`through the interface”). At most, this would establish that the gateway 20 interfaces
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`are “programming interfaces” that can be used to assist in the programming of
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`certain other devices, not that they are “programmable interfaces” that are
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`themselves capable of being programmed.4
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`Second, because Whitley fails to contain any suggestion whatsoever that the
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`gateway 20 interfaces are themselves programmable, it also necessarily lacks the
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`more specific disclosure required by claim element 1(b) of an interface that is
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`“programmable by wireless packet switched data messages” in particular. Petitioners
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`argue that “Whitley [generally] describes transmitting programming commands via
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`wireless packet switched [GPRS] data messages to the gateway 20 for programming
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`the gateway 20 or the connected devices at the facility 12.” (Paper 1, p. 23).
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`4 (Cf. Paper 1, p. 16) (Petitioners purport to construe the claimed “programming
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`transmitter” as a device “capable of performing remote programming” of certain
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`other devices).
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`However, this argument is of no consequence because none of the wireless
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`programming commands described in Whitley are in any way related to the
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`programming of the gateway 20 interfaces themselves as the claim language plainly
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`requires. (See, e.g., Id. at 21) (reciting wireless programming “commands to adjust
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`the thermostat, or to turn off one of the devices . . . coupled to gateway 20”).
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`4. Whitley In View Of The SIM Specification Fails To Disclose
`Element 1(d) In Independent Claim 1 And Fails To Render
`That Claim Obvious As Alleged In Ground 1
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`Element 1(d): “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 device is configured to and permitted to
`send outgoing wireless transmissions”;
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`Claim element 1(d) recites at least the following two principal requirements.
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`First, claim element 1(d) requires that the claimed programmable communicator be
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`configured to store in memory a list of telephone numbers or IP addresses that
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`functions as an outbound restrictive calling list. (Ex. 2011, ¶¶ 38, 39). Such a
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`requirement arises directly from the claim language which expressly provides that
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`the telephone numbers or IP addresses stored in the list are those to which the
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`programmable communicator is “permitted to” send one or more types of outgoing
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`wireless trans