UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`TELIT WIRELESS SOLUTIONS INC. &
`
`TELIT COMMUNICATIONS PLC
`
`Petitioners
`
`v.
`
`M2M SOLUTIONS LLC
`
`Patent Owner
`
`U.S. Patent No. 8,648,717
`
`Filed: Jul. 3, 2013
`
`Issued: Feb. 11, 2014
`
`Title: Programmable Communicator
`
`________________
`
`Inter Partes Review No. IPR2016-00055
`
`DECLARATION OF KIMMO SAVOLAINEN
`
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,648,717
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 1
`
`

`
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ............................................................................................. 1
`
`A. Engagement ............................................................................................... 1
`
`B. Background And Qualifications ................................................................ 1
`
`C. Compensation and Prior Testimony .......................................................... 5
`
`D.
`
`Information Considered ............................................................................. 6
`
`II. LEGAL STANDARDS FOR PATENTABILITY ............................................ 7
`
`III. THE ‘717 PATENT ......................................................................................... 10
`
`A. Overview Of The ‘717 Patent ................................................................. 10
`
`B.
`
`Independent Claims Of The ‘717 Patent ................................................. 14
`
`IV. BACKGROUND RELEVANT TO THE ’717 PATENT ............................... 16
`
`A. Field of the Claimed Subject Matter ....................................................... 16
`
`B. Person Of Ordinary Skill In The Art ....................................................... 17
`
`C. Routine Knowledge ................................................................................. 17
`
`V. CLAIM CONSTRUCTION............................................................................. 27
`
`A. “programmable” ...................................................................................... 27
`
`B.
`
`C.
`
`“interface” ................................................................................................ 27
`
`“monitored technical device” .................................................................. 28
`
`D. “monitoring device” ................................................................................ 28
`
`E.
`
`F.
`
`“processing module” ............................................................................... 28
`
`“coded number” ....................................................................................... 29
`
`
`
`i
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 2
`
`

`
`
`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`G. “the transmissions including the at least one
`telephone number or IP address and the coded number” ........................ 29
`
`H. “numbers to which the programmable communicator
`device is configured to and permitted to send outgoing
`wireless transmissions” ........................................................................... 30
`
`VI. EFFECTIVE FILING DATE OF THE ’717 PATENT ................................... 33
`
`VII. PATENTABILITY ANALYSIS OF THE ‘717 PATENT ............................. 37
`
`A. Ground 1: Claims 1-3, 5-7, 10-18, 22-23, 29 and 30
`Would Have Been Obvious Over Van Bergen
`In View Of Bettstetter ............................................................................. 40
`
`1. Claim 1 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 47
`
`2. Claim 2 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 61
`
`3. Claim 3 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 62
`
`4. Claim 5 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 62
`
`5. Claim 6 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 64
`
`6. Claim 7 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 66
`
`7. Claim 8 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 66
`
`8. Claim 9 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 67
`
`9. Claim 10 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 68
`
`ii
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 3
`
`

`
`
`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`10. Claim 11 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 69
`
`11. Claim 12 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 71
`
`12. Claim 13 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 71
`
`13. Claim 14 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 72
`
`14. 14. Claim 15 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 73
`
`15. Claim 16 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 74
`
`16. Claim 17 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 75
`
`17. Claim 18 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 77
`
`18. Claim 22 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 77
`
`19. Claim 23 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 78
`
`20. Claim 29 Would Have Been Obvious Over
`Van Bergen In View of Bettstetter .................................................. 78
`
`21. Claim 30 Would Have Been Obvious Over
`Van Bergen In View Of Bettstetter ................................................. 83
`
`B. Ground 2: Claims 24-28 Were Anticipated by Van Bergen ................... 83
`
`1. Van Bergen Anticipated Claim 24 .................................................. 83
`
`2. Van Bergen Anticipated Claim 25 .................................................. 84
`
`iii
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 4
`
`

`
`
`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`3. Van Bergen Anticipated Claim 26 .................................................. 85
`
`4. Van Bergen Anticipated Claim 27 .................................................. 85
`
`5. Van Bergen Anticipated Claim 28 .................................................. 85
`
`C. Ground 3: Claims 25-27 Would Have Been Obvious
`Over Van Bergen in View of Applicant Admitted Prior Art .................. 86
`
`D. Ground 4: Claims 29-30 Would Have Been Obvious
`Over Van Bergen And Bettstetter In View of
`Applicant Admitted Prior Art .................................................................. 86
`
`E. Ground 5: Claim 4 Would Have Been Obvious
`Over Van Bergen And Bettstetter In View of Sonera ............................. 87
`
`F. Ground 6: Claims 19 And 20 Would Have
`Been Obvious Over Van Bergen And
`Bettstetter In View of Kuusela ................................................................ 89
`
`1. Claim 19 Would Have Been Obvious Over
`Van Bergen And Bettstetter In View of Kuusela ............................ 90
`
`2. Claim 20 Would Have Been Obvious Over
`Van Bergen And Bettstetter In View of Kuusela ............................ 92
`
`G. Ground 7: Claim 21 Would Have Been Obvious Over
`Van Bergen And Bettstetter In View of Eldredge................................... 92
`
`H. Grounds 8-14: .......................................................................................... 95
`
`1. Ground 8: Claims 1-3, 5-18, 22, 23, 29, And 30
`Would Have Been Obvious Over Van Bergen And
`Bettstetter In View of Falcom ................................................................. 95
`
`2. Ground 9: Claims 24-28 Would Have Been
`Obvious Over Van Bergen In View of Falcom ....................................... 95
`
`3. Ground 10: Claims 25-27 Would Have Been
`Obvious Over Van Bergen, Bettstetter And
`AAPA In View of Falcom ....................................................................... 95
`
`iv
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 5
`
`

`
`
`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`4. Ground 11: Claims 29 And 30 Would Have Been
`Obvious Over Van Bergen, Bettstetter And
`AAPA In View of Falcom ....................................................................... 95
`
`5. Ground 12: Claim 4 Would Have Been Obvious
`Over Van Bergen, Bettstetter And
`Sonera In View of Falcom ....................................................................... 95
`
`6. Ground 13: Claims 19 And 20 Would Have
`Been Obvious Over Van Bergen, Bettstetter
`And Kuusela In View of Falcom ............................................................. 95
`
`7. Ground 14: Claim 21Would Have Been
`Obvious Over Van Bergen, Bettstetter And
`Eldredge In View of Falcom ................................................................... 95
`
`VIII. CONCLUSION ............................................................................................... 98
`
`
`
`APPENDICES:
`
`A. Curriculum Vitae of Kimmo Savolainen
`
`B. List of Materials Considered
`
`
`
`
`
`v
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 6
`
`

`
`I.
`
`INTRODUCTION
`A. Engagement
`1.
`I have been retained by Petitioners, Telit Wireless Solutions Inc. and
`
`Telit Communications PLC (collectively “Telit”) to act as an expert in connection
`
`with their Petition for Inter Partes Review of U.S. Patent 8,648,717 (Ex. 1001,
`
`“the ‘717 Patent”) and concerning the litigation related to a parent patent, U.S.
`
`Patent No. 8,094,010 (the “’010 Patent”).
`
`B.
`2.
`
`Background And Qualifications
`
`I am qualified by education and experience to testify as an expert in
`
`the field of telecommunications and more specifically in its application to
`
`telemetry systems. My background is outlined in my curriculum vitae, attached as
`
`Appendix A, and discussed as follows.
`
`3.
`
`From 1985 – 1990 I attended the Raahe Institute of Computer
`
`Technology, Raahe, Finland where I earned a Bachelor of Science degree, with a
`
`major in electrical engineering, focused on embedded environments, and a minor
`
`in programming in embedded environments. From 1991 - 1996 I attended the
`
`University of Oulu, Finland where I earned a Master of Science degree in
`
`Computer Science. At
`
`that
`
`time, Oulu, Finland was a center
`
`for
`
`telecommunications development and a research and development hub for many of
`
`the world’s leading telecom companies, including Nokia and Ericsson.
`
`
`
`1
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 7
`
`

`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`4.
`
`From November 1994 to May 2006, I was employed by Nokia. From
`
`
`
`1994-1998, I served as Product Program Manager at Nokia’s Oulu, Finland
`
`facility. In that capacity, I successfully managed at times up to four simultaneous
`
`product programs in M2M (machine-to-machine) terminal product creation and
`
`related server software product creation. I also managed at times up to 100 people
`
`in three R&D sites. During this period of time, I was involved in and supervised
`
`the development of Nokia’s wireless payphone and payphone management system,
`
`including: writing “C” code for the project; designing electrical circuitry; writing
`
`technical specifications; and writing protocol specifications for the wireless
`
`transaction protocol (WTP).
`
`5.
`
`From 1994-1998, I served as an R&D Line Manager (Nokia
`
`Elektrobit Products (NEP), Oulu), Project Manager (NEP, Oulu, Finland)
`
`(including managing GSM type approval testing and certification processes, and
`
`was an inventor on several patent applications and patents), Software Chief
`
`Designer (NEP, Oulu, Finland), and Hardware Designer (NEP, Oulu, Finland).
`
`6.
`
`From 1998-2002, I was involved in the development of Nokia’s M2M
`
`connectivity terminal, the Nokia 20, and the M2M gateway (Ex. 1131). The Nokia
`
`20 provided M2M communication for remote management for applications, such
`
`as, vending, security, automatic meter reading, elevator control, telematics, etc.
`
`2
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 8
`
`

`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`
`(Id.). The Nokia 20 communicated wirelessly by sending/receiving SMS messages
`
`over EGSM 900/1800 networks (Id.), and used PIN authentication as well as GSM
`
`security (Id.). In connection with this project, I led the design team, wrote technical
`
`and protocol specifications, and communicated customer requirements to the
`
`design team.
`
`7.
`
`Also while at Nokia, I served as Business Development Manager at
`
`Nokia’s Oulu, Finland facility. In that capacity, I conducted an extensive market
`
`study of the M2M market around the world, interviewing over 100 systems
`
`integrators and vendors working on this market. I also translated market
`
`requirements to product requirements and wrote product specifications to allow
`
`Nokia to enter the market.
`
`8.
`
`From 2003-2004, I served as General Manager for Nokia’s M2M
`
`business worldwide. In this capacity, I had global responsibility of the M2M
`
`business area in Nokia, including product development. I was nominated as one of
`
`the ten pioneers of the M2M industry by M2M Magazine in July 2004. Ex. 1132.
`
`9.
`
`During this timeframe, I served as Program Manager in Nokia’s
`
`Dallas, Texas facility. In that role, I developed sales channels and collaboration
`
`networks with various companies working in the M2M business, including system
`
`integrators, hardware and software vendors, distributors, consultants, and install
`
`3
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 9
`
`

`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`
`companies. I also involved the GSM carriers in the M2M business, managed the
`
`collaborator network and worked together with Nokia offices in Latin America to
`
`create the M2M market.
`
`10.
`
`I also managed the successful transfer of Nokia’s M2M business area
`
`and products to Aplicom Ltd in 2004.
`
`11. From 2004-2005, I served as Senior Business Manager (Oulu) for
`
`Spain, France, Portugal and Benelux, for the Nokia 770 Internet Tablet. In this
`
`capacity, I was responsible for developing retail sales channels, cooperating with
`
`Telecom companies and partnering with ISPs.
`
`12. After my time at Nokia, from May 2006 to January 2008, I served as
`
`Director of Business Development for Elektrobit,
`
`in Oulu, Finland and
`
`Washington, DC/Seattle, Washington, where I was responsible for overall project
`
`management. Elektrobit is a research and development company. While at
`
`Elektrobit, I oversaw a project for TerraStar Networks, in Reston, Virginia, for
`
`developing a handset capable of satellite communication as well as LTE
`
`communication.
`
`13. Since January 2008, I have been employed by Anite Plc., where I
`
`serve as Vice President of Engineering. I previously was Vice President for Sales
`
`Support and Product Management in Anite’s Oulu, Finland facility. I also served
`
`4
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 10
`
`

`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`
`as Vice President of Technical Support and Sales Support in Anite’s Forest,
`
`Virginia facility. Anite manufactures test tools for wireless carriers such as AT&T
`
`and T-Mobile. I am responsible for, among things, global engineering activities,
`
`and process development.
`
`14.
`
`I am a named inventor or co-inventor on the following patents and
`
`patent applications:
`
` U.S. Patent No. 6,108,531, entitled “Terminal equipment providing
`
`payment data in a cellular radio system”;
`
` U.S. Patent No. 6,327,466, entitled “Method and arrangement for
`
`setting the charge rate in a wireless pay phone”;
`
` International Patent Publication No. WO 99/57875, entitled
`
`“Method of Updating Terminal Software in a Telephone System”;
`
` International Patent Publication No. WO 99/20070, entitled
`
`“Method of Installing a Terminal, and a Wireless Telephone
`
`System”; and
`
` International Patent Publication No. WO 96/42175, entitled
`
`“Method and Terminal Equipment for Transmitting Information
`
`Not Relating To A Call”.
`
`C. Compensation and Prior Testimony
`
`5
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 11
`
`

`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`15.
`
`I am being compensated at an hourly rate of $200/hour. My
`
`
`
`compensation is not contingent on the outcome of this case or the testimony I
`
`provide, and the opinions provided here are my own.
`
`16.
`
`I was deposed for the first time in a related litigation concerning the
`
`‘010 Patent. I have never testified in court.
`
`D.
`Information Considered
`17. My opinions are based on my years of education, research, and
`
`experience, as well as my investigation and study of relevant materials. In forming
`
`my opinions, I have considered the materials listed in Appendix B to this
`
`Declaration. I have been informed that the Exhibit numbers I use in this
`
`Declaration are the same as those being filed with the Petition this Declaration
`
`supports.
`
`18. My analysis of the materials produced in this investigation is ongoing
`
`and I will continue to review any new material as it becomes relevant to this case.
`
`19.
`
`I reserve the right to supplement and/or amend the opinions expressed
`
`herein in response to positions taken by Patent Owner or experts retained on Patent
`
`Owner’s behalf. To amplify what is stated herein, where necessary, and especially
`
`in view of information not presently known to me or new information presented by
`
`Patent Owner’s experts prior to, or during trial for Inter Partes Review in this
`
`6
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 12
`
`

`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`
`matter, I reserve the right to supplement and/or amend this report should additional
`
`information be brought to my attention during the course of this proceeding.
`
`II. LEGAL STANDARDS FOR PATENTABILITY
`20.
`I have been informed of the general legal principles for determining
`
`whether the claims of a patent are patentable over the prior art.
`
`21.
`
` I understand that for an invention claimed in a patent to be found
`
`patentable, it must be, among other things, new and not obvious in light of what
`
`came before it, i.e., “prior art.”
`
`22.
`
`I understand that in this context the burden is on the party asserting
`
`unpatentability to prove it by a preponderance of the evidence. I understand that "a
`
`preponderance of the evidence" is evidence sufficient to show that a fact is more
`
`likely than not. I understand that to institute an Inter Partes Review, the Petitioner
`
`must establish a reasonable likelihood of prevailing in challenging the patentability
`
`of at least one of the challenged claims.
`
`23.
`
`I understand that in this proceeding, the claims must be given their
`
`broadest reasonable interpretation consistent with the specification. The broadest
`
`reasonable interpretation may be different than the interpretation in the Court’s
`
`claim construction in the ‘010 Patent litigation, and interpretations I suggested in
`
`that proceeding. I understand that statements made characterizing the claims during
`
`7
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 13
`
`

`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`
`the prosecution of the patent may limit the interpretation of the claims. I also
`
`understand that the claims after being construed in this manner are then to be
`
`compared to the prior art.
`
`24.
`
`I have considered the claim interpretations construed by the District
`
`Court in the ‘010 Patent litigations Exs. 1109 and 1111. and the claim
`
`interpretations proposed by both parties in the ‘717 Patent litigations Ex. 1108.
`
`25.
`
`I understand that the meaning of claim terms and whether or not the
`
`claims are the same as the prior art must be considered from the point of view of a
`
`person of ordinary skill in the art at the time of the patent’s earliest priority date.
`
`26.
`
`I understand that to be entitled to the priority date of an earlier
`
`application, the earlier application must provide adequate written description to
`
`convey to a person of ordinary skill in the art that the inventor had possession of
`
`the claimed invention.
`
`27.
`
`I have been informed that a patent claim is invalid as anticipated if the
`
`claim “reads on” a single prior art reference; that is, each claim limitation is
`
`disclosed expressly or inherently in a single prior art reference. I understand that it
`
`is acceptable to examine evidence outside the prior art reference (extrinsic
`
`evidence) in determining whether a feature, while not expressly discussed in the
`
`reference, is necessarily present within that reference.
`
`8
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 14
`
`

`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`28.
`
`I have further been informed that in the event the claim does not “read
`
`
`
`on” a prior art reference precisely, the claim may nevertheless be invalid for
`
`obviousness. A patent claim is invalid for obviousness if the subject matter of the
`
`claim as a whole would have been obvious at the time of the patent’s earliest
`
`priority date to a person having ordinary skill in the art to which the subject matter
`
`pertains.
`
`29.
`
`I understand that the following factors should be considered in
`
`determining whether or not a claim would have been obvious: the level of ordinary
`
`skill in the art; the scope and content of the prior art; the differences between the
`
`prior art and the claims at issue; and whatever secondary considerations may be
`
`present.
`
`30.
`
`I understand that to the extent that there are any differences between
`
`the prior art and the claimed subject matter, the claims would have been obvious
`
`where a person of ordinary skill in the art would have modified or combined the
`
`prior art references to arrive at the claimed subject matter. I understand that
`
`routine design choices and other market forces can prompt modifications of
`
`technology.
`
`31.
`
`I have considered each of the claims identified above as a whole, and
`
`am unaware of any long-felt but unsolved needs, failure of others, unexpected
`
`9
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 15
`
`

`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`
`results, or commercial success relating to the asserted claims. The prior art
`
`references discussed below had functionality identical to most of the asserted
`
`claims, and any differences were trivial modifications, such as, the use of pre-
`
`existing technology like GPS (Global Positioning System), GPRS (General Packet
`
`Radio Service) or other packet switched communication, and using known local
`
`devices (e.g., vending machines and alarms). I have seen evidence that others
`
`developed the subject matter of at least some of the claims (see e.g., Ex. 1124), and
`
`any differences between that evidence and other claims were trivial modifications,
`
`such as, updating the communication protocol, or substituting one local device for
`
`another (e.g., substituting a battery sensor for a door sensor). Based on the
`
`references discussed below and general knowledge in the field, I also see no
`
`evidence of unexpected results of any of the claimed subject matter. If Patent
`
`Owner points to any secondary considerations to support the claims, I may provide
`
`a response.
`
`III. THE ‘717 PATENT
`A. Overview Of The ‘717 Patent
`32.
`In my opinion, a person of ordinary skill in the art would have
`
`understood the ‘717 Patent to describe a “programmable communicator device,”
`
`which is at base a wireless modem that collects data from a “monitored technical
`
`10
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 16
`
`

`
` DP
`
`
`
`Declarationn of Kimmoo Savolainnen in Interr
`
`
`
`
`
`Partes Reviiew of U.SS. Patent NNo. 8,648,7
`17
`
`
`
`
`
`
`device” (e.g., a ssensor) annd relays
`
`
`
`
`
`
`
`
`
`the data tto a “monnitoring deevice” (e.gg., a
`
`
`
`
`
`computer or mobiile phone tthat can reemotely moonitor the
`
`
`
`
`
`
`
`
`
`data) (Ex.
`
`1001 at 2
`
`:1-8,
`
`6:4-12,
`
`
`
`7:65-8:7,, 9:2-6, eemphasis
`
`
`
`
`
`added byy me herre and thhroughout
`
`
`
`
`
`this
`
`
`
`Declaraation unlesss otherwiise indicatted). Beloww is an iillustrationn I providde to
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`visualizze the elemments of thee system foor clarity:
`
`
`
`
`
`
`
`
`
`3. The m
`3
`
`
`monitoredd technical
`
`device is
`
`a “piece
`
`
`
`
`
`of techniccal equipmment”
`
`
`
`The
`
`
`
`(see e.gg. ‘717 Pattent at 2:1
`
`
`
`
`
`-8) relayinng “‘data’
`
`
`
`of any typype”. Ex.
`
`1108, 49.
`
`
`
`‘717 Paatent speci
`fication is
`
`
`
`
`
`
`
`
`
`not appliccation-speccific and pprovides mmany exammples
`
`
`
`
`
`of moniitored technical devicces includiing vendingg machinees, home apppliances,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`or winddow sensorrs, pressurre sensors,
`
`
`
`
`
`heat sens
`
`
`
`ors, batterry level sennsors, pos
`
`
`
`
`
`detectorrs, health mmonitoringg systems,
`
`
`
`
`
`
`
`etc. (see ee.g. Ex. 11
`
`01, 2:1-8,
`
`
`
`3:52-61, 44:60-
`
`door
`
`ition
`
`and
`
`
`
`66, 5:5-25, 6:27--29, 6:45-53, 7:47-550). The pprogrammmable commmunicator
`
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 17
`
`

`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`
`monitored technical device may be “separate” or “integrated” into one device (Id.
`
`at 12:19-24).
`
`34. 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 stated that it is a wired serial interface or general-
`
`purpose input/output (I/O) interface. Ex. 1102, 4.
`
`35. The programmable communicator is also wirelessly programmable by
`
`a “programming transmitter,” which may be the monitoring device Ex. 1101, 4:13-
`
`17.
`
` The programmable communicator communicates wirelessly with the
`
`monitoring device and programming transmitter (e.g., a computer) over various
`
`wireless networks that were well-known to a person of ordinary skill in the art at
`
`the time of the earliest priority date, including short message service (SMS) (e.g.,
`
`text), or wireless packet-switched data messages such as GPRS (e.g., IP-based) (Id.
`
`at 4:18-23, 9:26-32). Wireless packet-switched networks at the time of the earliest
`
`priority date included CDPD (Cellular Digital Packet Data) (an IP-based packet
`
`switched network available in the U.S.) and GPRS (General Packet Radio Service)
`
`(see e.g., Ex. 1114, 2(left): 24-27, Ex. 1133, abstract, 4(right-col):19-20). The
`
`12
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 18
`
`

`
` DP
`
`
`
`Declarationn of Kimmoo Savolainnen in Interr
`
`
`
`
`
`Partes Reviiew of U.SS. Patent NNo. 8,648,7
`17
`
`
`
`programmmable coommunicattor was nnot protoccol-specifiic, but w
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`designeed to “makke use of any telephoone technoology.” Ex.. 1101, 12
`
`
`
`
`
`
`
`
`
`
`
`
`
`Ex. 1119, 44:2-4.
`
`
`
`
`
`
`3
`
`
`
`6. A peerson of orrdinary skiill in the aart would hhave underrstood tha
`
`
`
`
`
`
`
`as genericcally
`
`:8-16; see
`
`also
`
`t the
`
`
`
`programmming trannsmitter caan remotelyy edit a lisst of outgooing numbeers of “linkked”
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`monitorring devicees that receeive monittored data.
`
`
`
`
`
`
`
` Ex. 1101
`
`, 8:53-56,
`
`
`
`9:22-25, 99:35-
`
`
`
`38. Thee person oof ordinary
`
`
`
`
`
`
`
`
`
`
`
`skill in thhe art woulld have undderstood thhat, in ordder to
`
`
`
`transmissiions includde a “codeed numberr” to
`
`
`
`providee security,
`
`
`
`these proggramming
`
`
`
`
`
`
`
`
`
`
`
`authentiicate the iincoming
`
`
`
`
`
`
`
`
`
`
`
`mber tgoing numand an outmissions aprogrammming transm
`
`
`
`
`
`(telephoone numbeer or IP aaddress) too add to mmemory (Idd. at 10:122-37, nummbers
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`circled bby me beloow):
`
`
`
`
`
`
`
`A peerson of orrdinary skiill in the aart would hhave underrstood tha
`
`
`
`
`
`
`
`
`
`
`
`t the
`
`
`
`programmmable coommunicator authentticates the
`
`
`
`
`
`
`
`
`
`transmisssion basedd on the cooded
`
`
`
`
`
`
`
`numberr in the traansmission, for exammple, by coomparing tthe coded
`
`
`
`
`
`
`
`
`
`
`
`
`
`number inn the
`
`13
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 19
`
`

`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`
`transmission to a pre-stored number on the programmable communicator such as a
`
`PUK (personal unlocking key) code (Id. at 9:35-60, 10:5-37).
`
`B.
`Independent Claims of The ‘717 Patent
`37. Claim 1 recites a programmable communicator device comprising:
`
`[a] a programmable interface for establishing a communication link
`
`with at least one monitored technical device,
`
`[b] wherein the programmable interface is programmable by wireless
`
`packet switched data messages; and
`
`[c] 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;
`
`[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
`
`14
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 20
`
`

`
`
`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`determining that the at least one of the transmissions includes the
`
`coded number,
`
`[e] 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;
`
`[f] 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
`
`[g] 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;
`
`and
`
`[h] 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.
`
`15
`
`Sierra Wireless America, Inc. , Sierra Wireless, Inc. and RPX Corp. Exh. 1105 p. 21
`
`

`
`
`Declaration of Kimmo Savolainen in Inter
`Partes Review of U.S. Patent No. 8,648,717
`
`
`38. Claim 29 is identical to claim 1, with the modification that it replaces
`
`
`
`packet-switched communication with SMS communication in claim element [g].
`
`39. Claim 24 is broader than both claims 1 and 29, allowing any type of
`
`wireless commun