Patent Owner’s Preliminary 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
`_____________
`
`
`
`TELIT WIRELESS SOLUTIONS INC.
`and
`TELIT COMMUNICATIONS PLC,
`Petitioners,
`
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`
`
`
`Case IPR2016-00055
`Patent 8,648,717
`_______________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-14
`
`4817-0410-0397.2
`
`Telit Wireless Solutions INC. and Telit Communications PLC Exh. 1238,
`Telit Wireless Solutions INC. and Telit Communications PLC v. M2M Solutions LLC
`IPR2016-01081, p. 1
`
`

`
`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 1
`
`III. CLAIM CONSTRUCTION ............................................................................ 2
`A.
`“Coded Number” ................................................................................... 2
`B.
`“The transmissions including the at least one telephone number
`of IP address and the coded number” .................................................... 2
`“numbers to which the programmable communicator device is
`configured to and permitted to send outgoing wireless
`transmissions” ....................................................................................... 4
`
`C.
`
`IV. STANDARD FOR INSTITUTING INTER PARTES REVIEW ................... 7
`
`V. GROUNDS 1, 4-8, AND 10-14 SHOULD BE DENIED BECAUSE
`THEY PRESENT THE SAME ART AND ARGUMENT
`PREVIOUSLY CONSIDERED BY THE OFFICE ........................................ 8
`A.
`Bettstetter et al., GSM Phase 2+ General Packet Radio Service
`GPRS: Architecture, Protocols, and Air Interface, IEEE
`Communications Survey Was Considered During Prosecution ........... 8
`Eldredge Was Considered During Prosecution ..................................... 9
`The Petitioners Make No Attempt to Overcome the
`Presumption of Administrative Correctness ......................................... 9
`Petitioners Add Nothing More than What Is Already in the
`Record with Respect to Bettstetter and Eldredge ................................11
`
`B.
`C.
`
`D.
`
`VI. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`DEMONSTRATE A REASONABLE LIKELIHOOD OF SUCCESS ........12
`A.
`Petitioners’ Obviousness Analysis Is Inadequate ...............................13
`1.
`The Petitioners failed to articulate the differences
`between the claimed invention and the prior art .......................13
`The Petitioners improperly embed an additional prior art
`reference in their arguments for Grounds 1 and 8. ..................14
`The Petitioners have not provided an adequate rationale
`to combine the references .........................................................15
`Van Bergen in View of Bettstetter Fail Either to Disclose All
`Elements in the Claims 1-3, 5-18, 22, 23, 29 and 30 or to
`
`2.
`
`3.
`
`B.
`
`
`
`
`
`i
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`Telit Wireless Solutions INC. and Telit Communications PLC Exh. 1238,
`Telit Wireless Solutions INC. and Telit Communications PLC v. M2M Solutions LLC
`IPR2016-01081, p. 2
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`

`
`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`3.
`
`4.
`
`5.
`
`6.
`
`2.
`
`Render Those Claims Obvious as Alleged in Ground 1 or in
`View of the Falcom User Manual as Alleged in Ground 8 .................16
`1.
`“wherein the programmable interface is programmable
`by wireless packet switched data messages” (element
`(b)); ............................................................................................18
`“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,”(element (d)) ...............................................................21
`“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;” (element (e)) ..............26
`“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; ” (element (g)) ...................................................30
`“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.”(element (h)) .............................................................38
`Van Bergen, Bettstetter and/or Falcom do not disclose all
`of the elements of claim 29. ......................................................40
`Van Bergen Fails to Disclose Material Elements Present in
`Dependent Claims 5, 8, 10, 12, 13, 15, 16, and 17. ............................42
`1.
`“A programmable communicator device according to
`claim 1 further configured to request that an at least one
`monitored technical device send data through the
`programmable interface for processing by the
`programmable communicator device in response to
`
`C.
`
`ii
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`Telit Wireless Solutions INC. and Telit Communications PLC Exh. 1238,
`Telit Wireless Solutions INC. and Telit Communications PLC v. M2M Solutions LLC
`IPR2016-01081, p. 3
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`

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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`programming instructions received in an incoming
`wireless packet switched data message.” (Claim 5) .................42
`“A programmable communicator device according to
`claim 1 further configured to request that an at least one
`monitored technical device send data through the
`programmable interface for receipt by the programmable
`communicator device in response to programming
`instructions received in an incoming wireless packet
`switched data message.” (Claim 12) .........................................42
`“A programmable communicator device according to
`claim 6 further configured to determine whether a data
`request initiated by the monitoring device includes a
`required access code in response to programming
`instructions received in an incoming wireless packet
`switched data message.”(Claim 8) ............................................44
`“A programmable communicator device according to
`claim 1 further configured to determine whether the
`processed received data indicates a change in status of
`the at least one monitored technical device that crosses a
`threshold parameter, or that otherwise indicates an alarm
`condition in response to programming instructions
`received in an incoming wireless packet switched data
`message.” (Claim 10) ................................................................45
`“A programmable communicator device according to
`claim 1 further configured to transmit the received data to
`an at least one monitoring device either periodically or in
`response to a data request initiated by the monitoring
`device in response to programming instructions received
`in an incoming wireless packet switched data message.”
`(Claim 13) .................................................................................47
`“A programmable communicator device according to
`claim 1 configured to process an at least one data
`monitoring or data collection request contained in an at
`least one transmission received from an at least one
`monitoring device in response to programming
`instructions received in an incoming wireless packet
`switched data message.” (Claim 15) .........................................47
`“A programmable communicator device according to
`claim 1 further comprising a location processing module
`
`
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`iii
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`Telit Wireless Solutions INC. and Telit Communications PLC Exh. 1238,
`Telit Wireless Solutions INC. and Telit Communications PLC v. M2M Solutions LLC
`IPR2016-01081, p. 4
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`

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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`
`
`2.
`
`configured to determine an at least one location of the
`programmable communicator device, and wherein the
`programmable communicator device is configured to
`respond to an at least one transmission initiated by an at
`least one monitoring device requesting that said location
`data be sent to the monitoring device in response to
`programming instructions received in an incoming
`wireless packet switched data message.” (Claim 16) ...............49
`“A programmable communicator device according to
`claim 16 wherein the location processing module
`comprises a Global Positioning System (GPS) module.”
`(Claim 17) .................................................................................49
`D. Van Bergen Fails Either to Disclose All Elements in Claims 24-
`28 as Alleged in Ground 2 or in View of the Falcom User
`Manual Render Those Claims Obvious as Alleged in Ground 9. .......51
`1.
`Van Bergen and/or Falcom do not disclose all of the
`elements of claim 24 .................................................................51
`Van Bergen, and/or Falcom do not disclose all of the
`elements of claims 25-27. .........................................................52
`Van Bergen in View of Applicant Admitted Prior Art Fail to
`Render Claims 25-27 Obvious as Alleged in Ground 3 or in
`View of the Falcom User Manual as Alleged in Ground 10. ..............54
`Van Bergen and Bettstetter in View of Applicant Admitted
`Prior Art Fail to Render Claims 29-30 Obvious as Alleged in in
`Ground 4 or in View of the Falcom User Manual as Alleged in
`Ground 11. ...........................................................................................55
`G. Van Bergen and Bettstetter in View of Sonera Fail to Render
`Claim 4 Obvious as Alleged in in Ground 5 or in View of the
`Falcom User Manual as Alleged in Ground 12. ..................................56
`H. Van Bergen and Bettstetter in View of Kuusela Fail to Render
`Claims 19-20 Obvious as Alleged in in Ground 6 or in View of
`the Falcom User Manual as Alleged in Ground 13. ............................57
`Van Bergen and Bettstetter in View of Eldredge Fail to Render
`Claim 21 Obvious as Alleged in in Ground 7 or in View of the
`Falcom User Manual as Alleged in Ground 14. ..................................59
`
`E.
`
`F.
`
`I.
`
`VII. Conclusion .....................................................................................................60
`
`iv
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`IPR2016-01081, p. 5
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`

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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Graham v. John Deere Co.
`383 U.S. 1 (1966) ................................................................................................ 13
`
`Heart Failure Technologies, LLC v. CardioKinetix, Inc.,
`IPR2013-00183, (PTAB July 31, 2013) ............................................................. 16
`
`Helmsderfer v. Bobrick Washroom Equip., Inc.,
`527 F.3d 1379 (Fed. Cir. 2008) ............................................................................ 6
`
`Integrated Global Conc., Inc. v. Adv. Messaging Tech., Inc.,
`IPR2014-01027 (PTAB Dec. 22, 2014) ............................................................. 12
`
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2015-01402 (PTAB October 21, 2015). ................................................. 13, 14
`
`Karim v. Jobson, Interference No. 105,376, (B.P.A.I. Feb. 28, 2007) ................... 10
`
`Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., IPR2014-
`00529 (PTAB September 23, 2014) ............................................................ 20, 25
`
`KSR Int’l Co. v Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 13
`
`Luminara Worldwide, LLC v. Shenzhen Liown Electronics Co. Ltd.,
`IPR2015-01183 (PTAB November 5, 2015) ................. 14, 20, 24, 28, 57, 58, 59
`
`Parsons v. United States,
`670 F.2d 164 (Ct. Cl. 1982) .................................................................................. 9
`
`In re Portola Packaging, Inc.,
`110 F.3d 786 (Fed. Cir. 1997) (overruled on other grounds by 35
`U.S.C. § 303(a)) .................................................................................................. 10
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) .......................................................................... 10
`
`
`
`
`
`v
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`IPR2016-01081, p. 6
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`Praxair Distribution, Inc. v. Ino Therapeutics, LLC.,
`IPR2015-00893 (PTAB Sept. 22, 2015) ............................................................. 11
`
`Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.,
`IPR2014-00315 (PTAB July 8, 2014) ................................................................ 12
`
`Shire, LLC v. Amneal Pharms., LLC,
`802 F.3d 1301 (Fed. Cir. 2015) .................................................................... 10, 11
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................ 12
`
`35 U.S.C. § 312(a)(3) ......................................................................... 7, 15, 24, 55, 56
`
`35 U.S.C. § 313 ...................................................................................................... 1, 7
`
`35 U.S.C. § 314(a) ................................................................................................. 7, 8
`
`35 U.S.C. § 325(d) ............................................................................................. 11, 12
`
`Other Authorities
`
`37 C.F.R. § 42.104(b) .............................................................................................. 15
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`vi
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`IPR2016-01081, p. 7
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`

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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`EXHIBIT LIST
`
`Ex. #
`
`2001
`
`2002
`
`2003
`
`Exhibit
`
`Affidavit in Support of Motion for Pro Hac Vice Admission of
`Michelle Moran, 37 C.F.R. § 42.10(c), September 8, 2015.
`
`Excerpts of the patent prosecution history of Application No.
`13/934,763 that issued as U.S. Patent No. 8,648,717.
`
`Securities and Exchange Commission Form 20-F for the fiscal year
`ended December 31, 2001, for Wavecom S.A.
`
`2004
`
`Declaration of Michelle A. Moran, February 1, 2016.
`
`
`
`
`
`
`
`
`
`vii
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`Telit Wireless Solutions INC. and Telit Communications PLC v. M2M Solutions LLC
`IPR2016-01081, p. 8
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`

`
`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`I.
`
`INTRODUCTION
`
`M2M Solutions LLC (“M2M”) submits this preliminary response under 35
`
`U.S.C. § 313 and 37 C.F.R. § 42.107 to the petition of Telit Wireless Solutions
`
`Inc. and Telit Communications PLC (collectively, “Petitioners”) for inter partes
`
`review of claims 1-30 of U.S. Patent No. 8,678,717 (“the ’717 Patent”). This
`
`preliminary response is timely filed within three months of the Board’s notice,
`
`mailed October 30, 2015. For the reasons set forth herein and in the accompanying
`
`exhibits, Petitioners’ petition for inter partes review should be denied.
`
`II. BACKGROUND
`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, and the remote control of certain consumer devices and appliances,
`
`1
`
`
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`Telit Wireless Solutions INC. and Telit Communications PLC Exh. 1238,
`Telit Wireless Solutions INC. and Telit Communications PLC v. M2M Solutions LLC
`IPR2016-01081, p. 9
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`

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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`point of sale payment systems, vending machines, kiosks, and ATM and banking
`
`machines.
`
`III. CLAIM CONSTRUCTION
`Petitioners propose construction for four terms. Of those four terms, M2M
`
`does not disagree with Petitioners’ proposed construction for “programmable”;
`
`however, M2M disagrees with the proposed constructions for the other three terms
`
`as discussed below.
`
`“Coded Number”
`
`A.
`Petitioners’ proposed construction for the claim term “coded number” as
`
`being “any code used for authentication” is overly broad and erroneous because it
`
`would effectively read the word “number” out of the claim language. (Pet. at 9.)
`
`At a minimum, the recited “coded number” would need to be something that a
`
`human being or a computer would perceive to be a type of number.
`
`B.
`
`“The transmissions including the at least one telephone number of
`IP address and the coded number”
`
`Petitioners argue that the type of “coded number” authentication required in
`
`claim element 1(d) can be performed on multiple incoming transmissions in which
`
`the “coded number” can be contained in a different transmission from the
`
`telephone number or IP address intended for storing into an outbound restrictive
`
`calling list. (Pet. at 8-9.) In support of this proposition, Petitioners focus
`
`exclusively on the following phrase, out of context from the rest of claim element
`
`2
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`Telit Wireless Solutions INC. and Telit Communications PLC Exh. 1238,
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`IPR2016-01081, p. 10
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`

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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`1(d): “the transmissions include the at least one telephone number or IP address
`
`and the coded number.” (Id.)
`
`This is an erroneous claim construction, because claim element 1(d) requires
`
`that authentication be performed on a “single transmission” that includes both the
`
`“coded number” and the telephone number or IP address for storing into an
`
`outbound restrictive calling list. First, claim element 1(d) contains additional
`
`language which expressly recites that authentication must be performed on “the at
`
`least one of the transmissions including the at least one telephone number or IP
`
`address and the coded number.” As such, the phrase that Petitioners quoted in
`
`isolation above is actually further qualified by this additional language that
`
`unambiguously provides a “single transmission” limitation.
`
`Second, in the pending ’717 patent litigations, Petitioners admit to the
`
`“single transmission” requirement. Indeed, Petitioners’ current proposed claim
`
`construction for the relevant language of claim element 1(d) is the following: “a
`
`single wireless transmission that includes both the coded number and the telephone
`
`or IP address.” (Ex. 1108 at 4.) In addition, Petitioners have argued in the ’717
`
`patent litigations that there is a lack of written description support in the
`
`specification for anything other than this “single transmission” interpretation of the
`
`claim language. (Id.)
`
`3
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`Telit Wireless Solutions INC. and Telit Communications PLC Exh. 1238,
`Telit Wireless Solutions INC. and Telit Communications PLC v. M2M Solutions LLC
`IPR2016-01081, p. 11
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`

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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`C.
`
`“numbers to which the programmable communicator device is
`configured to and permitted to send outgoing wireless
`transmissions”
`
`Prior to the filing the Petition, the parties were in agreement that this
`
`limitation requires a restrictive outbound calling list. (See, e.g., Ex. 1108 at 6.)
`
`Claim element 1(e) recites that the claimed programmable communicator device is
`
`configured to store in memory a list of telephone numbers or IP addresses “to
`
`which the programmable communicator is configured to and permitted to send
`
`outgoing wireless transmissions.” The parties agreed that the “permitted to” claim
`
`language means that the recited calling list must function in a manner that limits
`
`the programmable communicator device to sending one or more types of outgoing
`
`wireless transmissions to only those telephone numbers or IP addresses contained
`
`in the list. In the pending ’717 patent litigations, Petitioners’ proposed
`
`construction for the outbound calling list recited in claim element 1(e) is the
`
`following: “the exclusive set of numbers to which the programmable
`
`communicator is limited to sending any outgoing wireless transmissions.” (Id.)
`
`Petitioners now take the position that the outbound calling list recited in
`
`claim element 1(e) should be construed as non-restrictive in nature. (Pet. at 10.)
`
`Under Petitioners’ new position, the calling list recited in the claim language
`
`should be understood as a list of telephone numbers or IP addresses to which the
`
`programmable communicator device is “built to make” (i.e., able) or “allowed to
`
`4
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`IPR2016-01081, p. 12
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`

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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`send outgoing wireless transmissions.” (Id. at 10, 12.) However, Petitioners’
`
`arguments do not support this erroneous claim construction.
`
`First, Petitioners now argue that there is “no disclosure in the ’717 Patent to
`
`support an interpretation” of an outbound calling list feature that is restrictive in
`
`nature – i.e., a list where outbound transmissions to unlisted numbers would be
`
`“not permitted but [rather] screened, blocked, or filtered.” (Pet. at 10-11.) To the
`
`contrary, however, the patent specification contains multiple examples of such
`
`disclosures. Indeed, Petitioners ignore a specification passage which refers to a
`
`mechanism that “restricts the usage” of the programmable communicator device so
`
`as to prevent “uncontrolled calling.” (Ex. 1001, 2:28-32.) The only conceivable
`
`mechanism of this type described anywhere in the patent is an outbound calling list
`
`feature. Similarly, the specification elsewhere describes the programmable
`
`communicator device as having a “means to prevent the . . . dialing [of certain]
`
`numbers,” such as overseas international numbers. (Id., 2:20-23.) Once again, the
`
`only means described in the patent that would be capable of accomplishing this
`
`purpose is an restrictive outbound calling list. Petitioners’ assertion that this
`
`passage instead refers to “restricting calls based on country codes” (Pet. at 11) is
`
`completely unsupported by anything in the intrinsic record.
`
`Second, Petitioners misstate the record from the underlying ’010 patent
`
`litigations by suggesting that there the Court somehow determined that in the
`
`5
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`IPR2016-01081, p. 13
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`patent specification “call screening only applies to incoming (but not outgoing)
`
`transmissions.” (Pet. at 11 (citing Ex.1111, at 7).) The Court was not addressing
`
`that topic and accordingly did not suggest that proposition. (Id.) Rather, the Court
`
`was attempting to construe the meaning of the “permitted caller” claim term from
`
`the ’010 patent and ascertain whether it was intended to encompass outbound
`
`callers as well as inbound callers. (Id.) Here that permitted caller claim term is
`
`absent from the ’717 patent claims that are the subject of the present Petition.
`
`Third, to support its position that the recited outbound calling list is
`
`purportedly non-restrictive, Petitioners seek to read the “permitted to” limitation
`
`out of the claim language by arguing that it should be given the same meaning as
`
`the “configured to” limitation that is already present in the claim language. (Pet. at
`
`12.) This is an improper approach to claim construction as a matter of law. See,
`
`e.g., Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed.
`
`Cir. 2008) (“precedent instructs that different claim terms are presumed to have
`
`different meanings.”). In any event, Petitioners’ citation to the ’717 prosecution
`
`history in support of its argument is unavailing and instead serves to prove the
`
`opposite of what Petitioners are advocating. (Pet. at 12 (citing Ex. 1104 at 31).)
`
`Indeed, the prosecution history shows that the Examiner required the Applicant to
`
`add “permitted to” language to pending claims that already included “configured
`
`to” language. (Id.) Thus, the Examiner believed that the term “permitted to”
`
`6
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`IPR2016-01081, p. 14
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`meant something different from “configured to.”
`
`In apparent recognition that its argument for a non-restrictive outbound
`
`calling list claim construction might prove unpersuasive, Petitioners apply an
`
`alternative, and proper, claim construction that requires a restrictive outbound
`
`calling list in Grounds 8 to 14 (which Petitioners explain in a single conclusory
`
`paragraph). (Pet. at 12, 56-58.)
`
`IV. STANDARD FOR INSTITUTING INTER PARTES REVIEW
`The Board may not grant a petition for inter partes review unless the Board
`
`“determines that the information presented in the petition filed under section 311
`
`and any response filed under section 313 shows that there is a reasonable
`
`likelihood that the petitioner would prevail.” 35 U.S.C. § 314(a).
`
`Section 314(a) requires the Board’s determination to be based on
`
`“information presented in the petition.” Likewise, the Petitioners have a statutory
`
`obligation under § 312(a)(3) to identify “with particularity, each claim challenged,
`
`the grounds on which the challenge to each claim is based, and the evidence that
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`supports the grounds for the challenge to each claim.” Thus, it is not for the Board
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`to fill in gaps omitted by the Petitioners.
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`Equally important is § 314(a)’s requirement that the Board’s determination
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`take into account “information presented in . . . any response filed under section
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`313.” In other words, the Board’s determination must be based on the totality of
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`7
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`IPR2016-01081, p. 15
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`the written evidence presented at the pre-trial stage.
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`Ultimately, the focus of the inquiry under § 314(a) is whether the Petitioners
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`“would prevail” – i.e., win on the merits based exclusively on the “information
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`presented in the petition . . . and any response.” 35 U.S.C. § 314(a).
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`As detailed below, Petitioners have not satisfied their burden of proving
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`unpatentability by a preponderance of the evidence and the petition for inter partes
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`review should be denied.
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`V. GROUNDS 1, 4-8, AND 10-14 SHOULD BE DENIED BECAUSE
`THEY PRESENT THE SAME ART AND ARGUMENT
`PREVIOUSLY CONSIDERED BY THE OFFICE
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`The art relied on for Grounds 1, 4-8, and 10-14 was previously considered
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`by the PTO during prosecution of the ’717 patent. As a result, the Petitioners bear
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`a heightened burden of overcoming the presumption of administrative correctness
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`that accompanies an examiner’s performance of his or her job. The Petitioners
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`made no attempt to demonstrate that they could overcome this presumption, and
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`the petition should be denied on that basis alone.
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`A. Bettstetter et al., GSM Phase 2+ General Packet Radio Service
`GPRS: Architecture, Protocols, and Air Interface, IEEE
`Communications Survey Was Considered During Prosecution
`
`The reference described in the petition as “Bettstetter et al., GSM Phase 2+
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`General Packet Radio Service GPRS: Architecture, Protocols, and Air Interface,
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`IEEE Communications Survey” (“Bettstetter” (Ex. 1114)), relied on for Grounds 1,
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`8
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`IPR2016-01081, p. 16
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`

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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`4-8, and 10-14 was presented to and considered by the examiner during
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`prosecution. (Ex. 2002 at 12.) It is shown on the face of the ’717 patent under
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`“References Cited.” (Ex. 1001, p. 3.)
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`Eldredge Was Considered During Prosecution
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`B.
`International Publication WO 95/05609 to Eldredge et al. (“Eldredge” (Ex.
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`1129)), relied on for Grounds 7 and 14 was also presented to and considered by the
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`examiner during prosecution. (Ex. 2002 at 4) It is shown on the face of the ’717
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`patent under “References Cited.” (Ex. 1001, p. 3.)
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`C. The Petitioners Make No Attempt to Overcome the Presumption
`of Administrative Correctness
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`Because the examiner properly considered and fully evaluated Bettstetter
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`and Eldredge, the Petitioners bear a heightened burden of overcoming the
`
`presumption of administrative correctness. The Petitioners make no attempt to
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`demonstrate that they can overcome that presumption, and the Board should deny
`
`the petition on that basis alone.
`
`For decades, the Supreme Court, the Federal Circuit, and its predecessor the
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`Court of Claims have repeatedly applied a presumption of administrative
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`correctness for agency action: “It is well established that there is a presumption
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`that public officers perform their duties correctly, fairly, in good faith, and in
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`accordance with law and governing regulations and the burden is on the plaintiff to
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`prove otherwise.” Parsons v. United States, 670 F.2d 164, 166 (Ct. Cl. 1982)
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`Telit Wireless Solutions INC. and Telit Communications PLC v. M2M Solutions LLC
`IPR2016-01081, p. 17
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`(citing United States v. Chemical Found., Inc., 272 U.S. 1, 12, 14-15 (1926)).
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`The Federal Circuit has consistently applied that presumption in the context
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`of patent law. See, e.g., PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
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`1304 (Fed. Cir. 2008) (examiners are assumed to have expertise in evaluating the
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`references). Furthermore, the Federal Circuit has applied the presumption on
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`direct review of Board decisions. In re Portola Packaging, Inc., 110 F.3d 786, 790
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`(Fed. Cir. 1997) (patent examiners are presumed to have “properly discharged their
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`official duties”) (overruled on other grounds by 35 U.S.C. § 303(a)).
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`Moreover, the Board itse