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.
`
`Petitioners
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`
`Patent No. 8,648,717
`Issue Date: February 11, 2014
`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.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`Table of Contents
`
`
`
`I.
`
`CONTENTS
`
`Page
`
`I. 
`
`II. 
`
`Introduction ........................................................................................... 1 
`
`Notices and Requirements ..................................................................... 1 
`
`A.  Notice of Each Real Party in Interest .................................................... 1 
`
`B. 
`
`C. 
`
`Notice of Related Matters ..................................................................... 1 
`
`Notice of Lead and Backup Counsel ..................................................... 3 
`
`D.  Notice of Service Information ............................................................... 3 
`
`E. 
`
`Payment of Fees .................................................................................... 3 
`
`II. 
`42.104)
`
`REQUIREMENTS FOR INTER PARTES REVIEW (37 C.F.R. §
`3 
`
`A.  Grounds for Standing (37 C.F.R. § 42.104(a)) ..................................... 3 
`
`B. 
`
`Identification of Claims Being Challenged (37 C.F.R. § 42.104(b))
`and Statement of Precise Relief Requested ........................................... 4 
`
`C. 
`
`Threshold for Inter Partes Review (37 C.F.R. § 42.108(c)).................. 5 
`
`III. 
`
`THE ‘717 PATENT............................................................................... 5 
`
`A.  Overview of the ‘717 Patent and Claims .............................................. 5 
`
`B. 
`
`C. 
`
`D. 
`
`Summary of the Prosecution History .................................................... 7 
`
`Effective Filing Date of the ‘717 Patent ............................................... 7 
`
`Person of Ordinary Skill in the Art ....................................................... 7 
`
`IV. 
`
`CLAIM CONSTRUCTION .................................................................. 8 
`
`A. 
`
`“programmable”: ................................................................................... 8 
`
`i
`
`

`
`Table of Contents (continued)
`
`
`
`Page
`
`B. 
`
`C. 
`
`D. 
`
`“coded number”: .................................................................................... 9 
`
`“the transmissions including the at least one telephone number or IP
`address and the coded number”: ............................................................ 9 
`
`“numbers to which the programmable communicator device is
`configured to and permitted to send outgoing wireless transmissions”:
` ............................................................................................................. 10 
`
`E. 
`
`Remark On Capability ......................................................................... 12 
`
`V. 
`
`‘717 PATENT CLAIMS 1-30 ARE UNPATENTABLE ................... 13 
`
`A.  Ground 1: Claims 1-3, 5-18, 22, 23, 29 and 30 Would Have Been
`Obvious Over Van Bergen In View Of Bettstetter ............................. 14 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`Claim 1 Would Have Been Obvious Over Van Bergen in View
`of Bettstetter .............................................................................. 18 
`Claim 2 Would Have Been Obvious Over Van Bergen In View
`Of Bettstetter ............................................................................. 28 
`Claim 3 Would Have Been Obvious Over Van Bergen In View
`Of Bettstetter ............................................................................. 29 
`Claim 5 Would Have Been Obvious Over Van Bergen In View
`Of Bettstetter ............................................................................. 29 
`Claim 6 Would Have Been Obvious Over Van Bergen In View
`Of Bettstetter ............................................................................. 31 
`Claim 7 Would Have Been Obvious Over Van Bergen In View
`Of Bettstetter ............................................................................. 32 
`Claim 8 Would Have Been Obvious Over Van Bergen In View
`Of Bettstetter ............................................................................. 32 
`Claim 9 Would Have Been Obvious Over Van Bergen In View
`Of Bettstetter ............................................................................. 33 
`Claim 10 Would Have Been Obvious Over Van Bergen In
`View Of Bettstetter ................................................................... 34 
`10.  Claim 11 Would Have Been Obvious Over Van Bergen In
`View Of Bettstetter ................................................................... 35 
`
`6. 
`
`7. 
`
`8. 
`
`9. 
`
`ii
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`

`
`Table of Contents (continued)
`
`
`
`Page
`
`11.  Claim 12 Would Have Been Obvious Over Van Bergen In
`View Of Bettstetter ................................................................... 37 
`12.  Claim 13 Would Have Been Obvious Over Van Bergen In
`View Of Bettstetter ................................................................... 37 
`13.  Claim 14 Would Have Been Obvious Over Van Bergen In
`View Of Bettstetter ................................................................... 38 
`14.  Claim 15 Would Have Been Obvious Over Van Bergen In
`View Of Bettstetter ................................................................... 39 
`15.  Claim 16 Would Have Been Obvious Over Van Bergen In
`View Of Bettstetter ................................................................... 40 
`16.  Claim 17 Would Have Been Obvious Over Van Bergen In
`View Of Bettstetter ................................................................... 41 
`17.  Claim 18 Would Have Been Obvious Over Van Bergen In
`View Of Bettstetter ................................................................... 42 
`18.  Claim 22 Would Have Been Obvious Over Van Bergen In
`View Of Bettstetter ................................................................... 43 
`19.  Claim 23 Would Have Been Obvious Over Van Bergen In
`View Of Bettstetter ................................................................... 43 
`20.  Claim 29 Would Have Been Obvious Over Van Bergen In
`View Of Bettstetter ................................................................... 44 
`21.  Claim 30 Would Have Been Obvious Over Van Bergen In
`View Of Bettstetter ................................................................... 47 
`Ground 2: Claims 24-28 Were Anticipated by Van Bergen ............... 48 
`
`Van Bergen Anticipated Claim 24 ............................................ 48 
`1. 
`Van Bergen Anticipated Claim 25 ............................................ 49 
`2. 
`Van Bergen Anticipated Claim 26 ............................................ 50 
`3. 
`Van Bergen Anticipated Claim 27 ............................................ 50 
`4. 
`Van Bergen Anticipated Claim 28 ............................................ 50 
`5. 
`Ground 5: Claim 4 Would Have Been Obvious Over Van Bergen And
`Bettstetter In View Of Sonera ............................................................. 51 
`
`B. 
`
`C. 
`
`D.  Ground 6: Claims 19 And 20 Would Have Been Obvious Over Van
`Bergen And Bettstetter In View Of Kuusela ....................................... 55 
`
`iii
`
`

`
`E. 
`
`VI. 
`
`
`
`Table of Contents (continued)
`
`
`
`Page
`
`1. 
`
`2. 
`
`Claim 19 Would Have Been Obvious Over Van Bergen And
`Bettstetter In View Of Kuusela ................................................. 55 
`Claim 20 Would Have Been Obvious Over Van Bergen And
`Bettstetter In View Of Kuusela ................................................. 56 
`Ground 7: Claim 21 Would Have Been Obvious Over Van Bergen
`And Bettstetter In View Of Eldredge .................................................. 57 
`
`CONCLUSION ................................................................................... 58 
`
`iv
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`

`
`Patent No. 8,648,717
`Petition For Inter Partes Review
`
`
`
`Ex. No.
`
`EXHIBITS1
`
`Description
`
`1101 U.S. Patent 8,648,717, “the ‘717 Patent”, issued Feb. 11, 2014, from
`U.S. App. 13/934,763 filed Jul. 3, 2013
`
`1102
`
`1103
`
`1104
`
`1105
`
`Patent Owner’s Preliminary Infringement Contention Claim Chart
`against Telit in the ‘717 Patent litigation (excerpts). (Exhibit
`improperly marked confidential, see appended Discovery Dispute
`Hearing transcript at 72:9-73:9, designating infringement contentions
`as non-confidential information.)
`
`File History for U.S. App. 13/328,095 issued as the ‘802 Patent
`(excerpt)
`
`File History for U.S. App. 13/934,763 issued as the ‘717 Patent
`(excerpt)
`
`Expert Declaration of Kimmo Savolainen in support of Petition for IPR
`of the ‘717 Patent based on Van Bergen (Curriculum Vitae attached)
`
`1106 U.S. Patent 8,094,010, issued Jan. 10, 2012, from U.S. App.
`12/538,603 filed Aug. 10, 2009
`
`
`
`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 IPR2016-00055.
`
`v
`
`

`
`Patent No. 8,648,717
`Petition For Inter Partes Review
`
`
`
`Ex. No.
`
`Description
`
`1107 Microsoft Computer Dictionary Fourth Edition, 1999 (excerpt)
`
`1108
`
`Joint Claim Construction Statement in ‘717 Patent Litigation
`
`1109 District Court Memorandum Opinion on Claim Construction in
`the litigation of the ‘197 and ‘010 Patents, Nov. 12, 2013
`
`1110
`
`Transcript of the Deposition of Dr. Ray Nettleton, “Nettleton Tr.” May
`6, 2015
`
`1111 District Court Claim Construction Order in the litigation of the ‘197 and
`‘010 Patents, Nov. 19, 2013, and Clarification, Jan. 24, 2014
`
`1112
`
`1113
`
`Ex parte Takahashi, No. 2004-2192, 2004 WL 2733658 (BPAI 2004)
`
`International Publication No. WO 00/17021 to Van Bergen. Published
`Mar. 30, 2000 (“Van Bergen”)
`
`1114 Bettstetter C., “GSM Phase 2+ General Packet Radio Service
`GPRS: Architecture, Protocols, and Air Interface”, IEEE
`Communications Survey, 1999
`
`1115 Ames et al., “The Evolution of Third-Generation Cellular
`Standards”, Intel Technology Journal, Q2, 2000
`
`1116
`
`1G, 2G, 3G, 4G - The Evolution of Wireless Generations,” 2008
`(Referenced in Expert Declaration of Kimmo Savolainen, Ex.
`1105)
`
`1117 Bhalla, “Generations of Mobile Wireless Technology: A
`Survey” International Journal of Computer, August 2010
`
`vi
`
`

`
`Patent No. 8,648,717
`Petition For Inter Partes Review
`
`
`
`Ex. No.
`
`1118
`
`1119
`
`1120
`
`1121
`
`Description
`
`Transcript of the Deposition of Dr. Eveline Wesby-Van Swaay, “Wesby
`Tr.” Jan. 21, 2014
`
`Transcript of Deposition of Dr. Eveline Wesby-Van Swaay, “Wesby
`Tr.” Aug. 14, 2012
`
`Joint Claim Construction Brief in ‘010 Patent Litigation
`
`Transcript of the Deposition of Dr. Alon Konchitsky, “Konchitsky
`Tr.” May 27, 2015
`
`1122 Redl et al. “GSM and Personal Communications Handbook,” 1998
`
`1123
`
`1124
`
`1125
`
`1126
`
`1127
`
`1128
`
`1129
`
`In re Magna Electronics, Inc. v. United States No. 2014-1801 (Fed. Cir.
`2015)
`
`Telital Automotive Manual, “SR11 Nettuno GSM Based GPS Location
`System,” Sept. 1999
`
`International Publication WO 00/14984 to Sonera et al., published Mar.
`16, 2000 (“Sonera”)
`
`Popular Mechanics, February 2000 (excerpt).
`
`Ex parte Mark L. Hitchin, 2013 Pat. App. LEXIS 7038 (PTAB 2013)
`
`International Publication WO 97/49077 to Kuusela et al., published
`Dec. 24, 1997 (“Kuusela”)
`
`International Publication WO 95/05609 to Eldredge et al., published
`Feb. 23, 1995 (“Eldredge”)
`
`vii
`
`

`
`Patent No. 8,648,717
`Petition For Inter Partes Review
`
`
`
`Ex. No.
`
`Description
`
`1131 Nokia 20 GSM Connectivity Terminal, 2001 (Referenced in Expert
`Declaration of Kimmo Savolainen, Ex. 1105)
`
`1132 M2M Magazine, “Pioneers of Change,” 2009 (Referenced in Expert
`Declaration of Kimmo Savolainen, Ex. 1105)
`
`1133
`
`Salkintzis A.K., “A Survey of Mobile Data Networks”, University
`of British Columbia, 1999 (Referenced in Expert Declaration of
`Kimmo Savolainen, Ex. 1105)
`
`1134 U.S. Patent 8,633,802, issued Jan. 21, 2014, from U.S. app.
`13/328,095 filed Dec.16, 2011 (Referenced in Expert Declaration of
`Kimmo Savolainen, Ex. 1105)
`
`
`
`viii
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
`
`I.
`
`Introduction
`
`Sierra Wireless America Inc., Sierra Wireless Inc. and RPX Corp.
`
`(“Petitioners”) petitions for inter partes review (“IPR”) of claims 1-30 of U.S.
`
`Patent 8,648,717 (“the ‘717 Patent,” Ex. 1101), assigned to M2M Solutions LLC
`
`(“Patent Owner”). This petition duplicates the Petition filed in IPR2016-00055
`
`(Paper 1) on which review was recently instituted (Paper 9) consistent with the
`
`Institution Decision and the Request for Rehearing (Paper 11). Petitioners agree to
`
`be bound by the Board’s decision on the Request for Rehearing.
`
`Petitioners contend that there is a reasonable likelihood that one or more
`
`claims of the ‘717 patent will be found anticipated or 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;
`
` M2M SOLUTIONS LLC v. SIERRA WIRELESS AMERICA, INC., et al., C.A.
`
`1
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
`
`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 two of which the Patent Trial and Appeal Board recently
`
`granted institution of trial on some claims 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, IPR2016-00055;
`
`and
`
` Sierra Wireless America, Inc. et al. v. M2M Solutions LLC, IPR2016-00853.
`
`
`
`2 The ‘717 patent is a continuation of two other patents - U.S. Patent No. 7,583,197
`
`(“the ‘197 Patent”) and U.S. Patent No. 8,094,010 (“the ’010 Patent) - in the now
`
`dismissed federal court litigation styled, M2M SOLUTIONS LLC v. SIERRA
`
`WIRELESS AMERICA, INC., et al., C.A. No. 1:12-cv-00030-RGA, United States
`
`District Court for the District of Delaware (“the ‘010 District Court Action”).
`
`2
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
`
`Currently-pending U.S. Patent Appl. No. 14/803,902 claims priority to the ‘717
`
`patent.
`
`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
`
`FAX:
`
`
`
`855-472-2230
`
`D. Notice of Service Information
`
`Please address all correspondence to the lead counsel at the address shown
`
`above. Petitioners 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
`
`$31,000.00 and requests review of claims 1-30 of the ‘717 patent. The
`
`Commissioner is hereby authorized to charge any additional fees due or credit any
`
`overpayment to Deposit Account 50-3557.
`
`II.
`
`REQUIREMENTS FOR INTER PARTES REVIEW
`(37 C.F.R. § 42.104)
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`3
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
`
`Petitioners hereby certify that the patent for which review is sought is
`
`available for inter partes review and that the Petitioners are 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 IPR2016-00055 and has been timely filed within one month of the
`
`April 22, 2016 institution date of IPR2016-00055. Accordingly, the one-year bar
`
`set forth in 37 C.F.R. § 42.101(b) does not apply. 37 C.F.R. § 42.122(b).
`
`B.
`
`Identification of Claims Being Challenged (37 C.F.R. § 42.104(b))
`and Statement of Precise Relief Requested
`
`Petitioners request that the Board institute IPR of claims 1-30 of the ‘717
`
`Patent and find the claims unpatentable based on Grounds 1-2, and 5-73:
`
`
`
`3 Petitioners note that the Board in its Institution Decision (Paper 9) in IPR2016-
`
`00055 did not institute review on Claims 24-28 and 30. However, Telit has
`
`filed a Request for Rehearing (Paper 11) on these claims. Petitioners have
`
`included these claims in the Petition but agree to be bound by the Board’s
`
`decision on the Request for Hearing. Petitioners further note that for
`
`consistency with Telit’s Petition (Paper 1) and consistent with the Institution
`
`Decision have the used the same numbering; accordingly, grounds 3-4 and 8-
`
`14 have been omitted.
`
`4
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
`
`Ground
`
`Claim(s)
`
`Reference(s)
`
`Statute (Pre-AIA)
`
`1
`
`2
`
`5
`
`6
`
`7
`
`1-3, 5-18, 22, 23, 29
`and 30
`Claims 24-28
`
`Van Bergen and
`Bettstetter
`Van Bergen
`
`4
`
`19, 20
`
`21
`
`Van Bergen, Bettstetter
`and Sonera
`
`Van Bergen, Bettstetter
`and Kuusela
`
`Van Bergen, Bettstetter
`and Eldredge
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 102(b)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`
`
`
`
`C. Threshold for Inter Partes Review (37 C.F.R. § 42.108(c))
`This Petition demonstrates a reasonable likelihood that Petitioners will
`
`prevail in challenging the patentability of at least one of claims 1-30 challenged in
`
`the Petition, as explained below. See 35 U.S.C. § 314(a).
`
`III. THE ‘717 PATENT
`A. Overview of the ‘717 Patent and Claims
`The ‘717 Patent claims a “programmable communicator device,” which is at
`
`base a wireless modem that collects data from a “monitored technical device” (e.g.
`
`a sensor, door switch, security system, vending machine, or other input/output
`
`device) and relays the data to a “monitoring device” (e.g., a computer or mobile
`
`phone that can remotely monitor the data). Ex. 1001, 2:1-8, 6:4-12, 7:65-8:7, 9:2-6.
`
`Ex. 1005 ¶¶32-35 (emphasis added by Petitioners here and throughout this Petition
`
`5
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
`
`unless otherwise indicated.) The ‘717 Patent states that the programmable
`
`communicator is wirelessly programmable by a “programming transmitter,” which
`
`may be the monitoring device. Ex. 1001, 4:13-17.
`
`The programmable communicator is connected locally to the monitored
`
`technical device (e.g., a sensor in a vending machine) via a “programmable
`
`interface.” Id. at 6:4-7, 9:2-6, 10:1-4. The ‘717 Patent specification does not
`
`provide detail about the nature of the “programmable interface,” but Patent Owner
`
`has taken the position in the litigation of the ‘717 Patent that a wired serial
`
`interface or general-purpose input/output (I/O) interface satisfies this claim
`
`element. Ex. 1002 p.4. The programmable communicator is also in communication
`
`with a monitoring device and programming transmitter (e.g., a computer) over
`
`well-known wireless networks (e.g., a short message service (SMS) or packet-
`
`switched such as GPRS network). Ex. 1001, 4:18-23, 9:26-32. Ex. 1005 ¶¶47-49.
`
`The programming transmitter can remotely edit a list of outgoing numbers of
`
`“linked” monitoring devices that receive monitored data. Ex. 1001, 8:53-56, 9:22-
`
`25, 9:35-38. To provide security, these transmissions include a “coded number” to
`
`authenticate the incoming programming transmissions and the outgoing number
`
`(telephone number or IP address) that is added to memory. Id. at 10:12-37.
`
`6
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
`
`Summary of the Prosecution History
`
`B.
`The application that issued as the ‘717 Patent was filed shortly after Patent
`
`Owner’s claims in a parent application were rejected for including “new matter.”
`
`Ex. 1003 p. 3-4. Patent Owner cancelled those claims and refiled the same new
`
`matter in the application that issued as the ‘717 Patent, which is therefore not
`
`entitled to its May 2000 priority date. The application was rejected only under 35
`
`U.S.C. §112, ¶2 (pre-AIA) for lack of clarity. Ex. 1004 p. 4. In the course of two
`
`months, Patent Owner conducted five Examiner interviews and filed three
`
`amendments. Ex. 1004. The case was allowed on Dec. 16, 2013. Id.
`
`C. Effective Filing Date of the ‘717 Patent
`The earliest filing date of the ‘717 Patent of May 23, 2000 is used for the
`
`purposes of this Petition. The ‘717 Patent claims however introduce new matter
`
`Ex. 1005 ¶¶70-76, and are only entitled to their Jul. 3, 2013 filing date, rendering
`
`the parent ‘010 Patent, Ex. 1006, prior art to the ‘717 Patent under 35 U.S.C.
`
`§102(a)(1) (post-AIA). It would have been obvious to modify the ‘010 Patent to
`
`cover the new matter, Ex. 1005 ¶¶77-81, rendering claims 1-30 of the ‘717 Patent
`
`invalid under 35 U.S.C. §103 (post-AIA).
`
`Person of Ordinary Skill in the Art
`
`D.
`A person of ordinary skill in the art (“POSITA”) would have had at least a
`
`bachelor’s degree in computer science or electrical engineering, with a good
`
`understanding of principles of wireless telecommunications including the GSM
`7
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
`
`(Global System for Mobile Communications) standards, and would have had at
`
`least four years of experience designing and/or programming wireless
`
`communications systems utilizing GSM or other cellular networks. Id. at 42.
`
`IV. CLAIM CONSTRUCTION
`
`During an IPR, a claim is given its “broadest reasonable construction in light
`
`of the specification.” See 37 C.F.R. § 42.100(b).4
`
`“programmable”:
`
`A.
`Under its broadest reasonable construction, “programmable” means “capable
`
`of accepting instructions for performing a task or an operation.” Ex. 1107 p. 360,
`
`Ex. 1005 ¶55, definition proposed by Patent Owner in Ex. 1120, 36:2-8 and quoted
`
`by the District Court in Ex. 1109 p. 11:15-17. While “programmable” is not
`
`defined in the ‘717 Patent, Patent Owner’s expert defined a programming
`
`command broadly as “any command that makes the device do something.” Ex.
`
`1110, 221:6-10; see also Id. at 219:7-220:25, 224:6-13.
`
`
`
`4 The District Court construed some claim terms in the ‘010 Patent litigation, Exs.
`
`1007-08, and parties have proposed constructions in the ‘717 Patent litigation, Ex.
`
`1009. Because claim construction standards differ between IPR and the courts, the
`
`constructions proposed in the litigations are not binding on the IPR, and vice versa.
`
`8
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
`
`“coded number”:
`
`B.
`Patent Owner stated: “The specification makes clear that the term ‘coded
`
`number’ is intended to broadly cover any type of coded number used for
`
`[authentication]” (Ex. 1120, 76:8-9, Patent Owner’s emphasis), citing: “It is further
`
`to be understood that the invention may make use of all coding schemes for storing
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`numbers to the programmable apparatus and the use of the PUK code was by way
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`of example only.” (Ex. 1101, 12:25-28, Patent Owner’s emphasis) Under its
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`broadest reasonable construction, Petitioners agree that a “coded number” is “any
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`code used for authentication.”
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`For completeness, Petitioners also address the Court’s narrower
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`construction: “a designated, unique sequence of characters.” Ex. 1111 p. 3, ¶2.
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`C.
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`“the transmissions including the at least one telephone number or
`IP address and the coded number”:
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`Under its broadest reasonable construction, this means that multiple
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`“transmissions” include the at least one telephone number or IP address and the
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`coded number. This limitation does not require that the telephone number or IP
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`address and the coded number are in the same transmission. This means that the
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`telephone number or IP address and the coded number can be in the same
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`transmission or separated into multiple different transmissions.
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`9
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`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
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`D.
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`“numbers to which the programmable communicator device is
`configured to and permitted to send outgoing wireless
`transmissions”:
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`Under its broadest reasonable construction, numbers to which the
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`programmable communicator device is “configured to and permitted to send
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`outgoing wireless transmissions” are numbers to which the programmable
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`communicator device is “allowed to send outgoing wireless transmissions.” Ex.
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`1005 ¶¶62-67. There is no disclosure in the “717 Patent to support an
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`interpretation that this is an exclusive set of permitted numbers (i.e., that
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`transmissions to all other numbers are not permitted but “screened, blocked or
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`filtered). Rather, the “717 Patent only disclosed call screening for incoming calls,
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`not for outgoing calls, as claimed. For example, in Fig. 2, which shows how
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`incoming calls are handled, Ex. 1101, 8:26-28, the programmable communicator
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`terminates calls from non-stored numbers, Id. At Fig 2 #4, highlighted here, see
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`also 9:61-63.
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`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
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`In Fig. 3, which shows how outgoing calls are handled, Id. at 8:29-3 such
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`screening is used — these numbers are simply called, Id. at Fig. 3, excerpted:
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`
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`The District Court explained that call screening applies only to incoming not
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`outgoing) transmissions:
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`Figure 2 depicts
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`the action performed by
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`the programmable
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`communicator in response to an incoming call or message. In each
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`scenario, the programmable communicator attempts to verify that the
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`caller is on the “permitted callers list.” By contrast, Figure 3 shows
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`the action performed by the programmable communicator for an
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`outgoing call or message. There is no mention of a “permitted caller.”
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`Instead, it displays the programmable communicator transmitting
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`information to a “linked telephone or IP address.” Ex. 1111, p.
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`7:12¬18, emphasis in original.
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`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
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`The only mention of call screening for outgoing calls is in the Background,
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`which describes “a need to provide means to prevent the child dialing overseas
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`numbers.” Ex. 1101, 2:20-23. However, this refers to international call barring en
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`gross, i.e., restricting calls based on country codes, not restricting calls to the
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`individual stored numbers in the claims.
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`During the prosecution of the ‘717 Patent, Patent Owner expressly defined
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`that “in the context of the claim,” “permitted to” meant the same thing as
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`“configured to,” i.e., built to make calls, not to restrict calls:
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`Although Applicants believe that “configured to,” in the context of the
`claim, meant the device was capable of and permitted to send outgoing
`wireless transmissions, to expedite prosecution, Applicants have amended
`independent claims to read “...configured to and permitted to.”
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`Ex. 1104 p. 31.
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`Therefore, numbers to which the programmable communicator device is
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`“configured to and permitted to send outgoing wireless transmissions” are (non-
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`exclusive) numbers to which the programmable communicator device is allowed to
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`send outgoing wireless transmissions.
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`E. Remark On Capability
`Patent Owner construed the ‘717 Patent claims to describe the mere
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`capability or intended use of the programmable communicator device to perform
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`functions. See e.g., Ex. 1102, 4:13-17:1-3, etc.: “we’re not talking about infringing
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`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
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`uses; we’re talking about infringing capability, Ex. 1110, 136:21-23 The same
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`interpretation of capability must apply equally for patentability and infringement:
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`“That which infringes if later, would anticipate if earlier” (Peters v. Active Mfg,
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`129 U.S. 530, 537 (1889)). Ex parte Takahashi explained to invalidate intended
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`use claims: “the prior art structure meets the claims because the prior art is capable
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`of performing the intended use” Ex parte Takahashi, No. 2004-2192, 2004 WL
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`2733658 at *4 (BPAI 2004), Ex. 1112. Conversely, an intended use claim can
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`only be distinguished from the prior art upon a showing that the prior art is not
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`capable of performing the intended use. Id.
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`V.
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`‘717 PATENT CLAIMS 1-30 ARE UNPATENTABLE
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`The specification of the ‘717 Patent admitted that the claimed programmable
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`communicator device was composed of prior art elements:
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`The device comprises a novel combination of existing technologies
`and features, which make possible the existence of a new and
`improved communication device. Ex. 1101, 9:16-21.
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`The ‘717 Patent is in the “predictable arts” of electrical engineering, and
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`combining the claimed elements (e.g., wireless modem, microprocessor, memory,
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`serial interface, sensors, etc.) was commonplace and a matter of routine
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`engineering. Ex. 1105 184-85.
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`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
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`A. Ground 1: Claims 1-3, 5-18, 22, 23, 29 and 30 Would Have Been
`Obvious Over Van Bergen In View Of Bettstetter
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`Claims 1-3, 5-18, 22, 23, 29 and 30 would have been obvious over Van
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`Bergen, Ex. 1113, in view of Bettstetter, Ex. 1114, under 35 U.S.C. § 103(a) (pre-
`
`AIA). Van Bergen is prior art at least under 35 U.S.C. §§ 102 (a), (b)5 and (e)
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`(pre-AIA), Bettstetter is prior art at least under 35 U.S.C. §§102 (a) and (b)6 (pre-
`
`AIA), and are both references are analogous art. Ex. 1105 ¶98. Van Bergen does
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`not appear to have been considered during the prosecution of the ‘717 Patent.
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`Overview of Van Bergen
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`Van Bergen described the “Cell-Eye” system - a remote security system that
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`is a communicator providing DATA and SMS communication over the GSM
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`mobile telephone network, and is programmable via validated incoming calls (i.e.,
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`a “programmable communicator device”):
`
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`5 Van Bergen is prior art under 35 U.S.C. § 102(b) because it was published on
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`Mar. 31, 2000, more than a year before the earliest U.S. filing date of the ‘717
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`Patent (The Finnish priority date of May 23, 2000 does not qualify under 35 U.S.C.
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`§ 102(b) because the application was filed outside of the U.S.).
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`6 Bettstetter is prior art under 35 U.S.C. § 102(b) because it was published in 1999,
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`more than a year before the earliest U.S. filing date of the ‘717 Patent.
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`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
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`A security system called CELL-EYE is disclosed [for] automatic
`reporting of security violations to a specific GSM mobile unit via the
`DATA and SMS service of the GSM mobile telephone network. The
`CELL-EYE system includes a controller and memory unit for the
`verification of the identity of incoming calls, and the activation,
`deactivation and programming of the CELL-EYE via validated
`incoming calls received by an alarm linked GSM mobile unit an
`modem from a remote GSM mobile unit. Ex. 1113 at abstract
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`The Cell-Eye system (“programmable communicator”) was designed to be
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`installed in property (1) or a vehicle (2) to monitor their sensors and alarm systems
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`(“monitored technical device”) and was designed to send outgoing alarms via SMS
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`and DATA messages over the GSM network (3) to a remote GSM cellular phone
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`(4) (“monitoring device”) to remotely monitor the alarms or location of the vehicle,
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`Ex. 1113, Fig. 1 annotated below, abstract, 3:41-4:7:
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`Petition for Inter Partes Review of U.S. Patent No. 8,648,717
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`The GSM unit in the Cell-Eye system (left-side of Fig. 1) was also referred
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`to as an “alarm linked unit (ALU)” and the remote monitoring GSM unit (4) (right-
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`side of Fig. 1) was also referred to as a “remote message unit (RMU).” Id. at 2:14-
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`18.
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`The Cell-Eye system had three modes of operation:
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` Mode 1 “alarm procedure” generates outgoing DATA or SMS messages
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`when -alarm conditions” are detected in the property or vehicle. Id.
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`abstract:5-8.
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` Mode 2 -localization procedure which automatically reports the location
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`of the GSM repeater station ne