IN UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`M2M SOLUTIONS, LLC,
`
`Plaintiff,
`
`ENFORA INC., NOVATEL WIRELESS
`SOLUTIONS INC., and NOVATEL
`WIRELESS INC.
`
`C.A. No. 14-cv-1101-RGA
`
`JURY TRIAL DEMANDED
`
`M2M SOLUTIONS, LLC
`
`Defendants.
`
`Plaintiff,
`
`SIERRA WIRELESS AMERICA, INC., and
`SIERRA WIRELESS, INC.,
`
`C.A. No. 14-cv-1102-RGA
`
`JURY TRIAL DEMANDED
`
`M2M SOLUTIONS, LLC
`
`Defendants.
`
`Plaintiff,
`
`TELIT COMMUNICATIONS PLC, and
`TELIT WIRELESS SOLUTIONS INC.
`
`Defendants.
`
`C.A. No. 14-cv-1103-RGA
`
`JURY TRIAL DEMANDED
`
`DEFENDANTS’ INITIAL INVALIDITY CONTENTIONS
`
`Pursuant to the Coordinated Scheduling Order (Dkt. No. 44), Defendants Sierra Wireless
`
`America, Inc., Sierra Wireless, Inc., Telit Communications PLC, Telit Wireless Solutions Inc.,
`
`Novatel Wireless Solutions, Inc., and Novatel Wireless, Inc. (collectively “Defendants”), hereby
`
`serve their Initial Invalidity Contentions (“Contentions”) concerning the asserted claims of U.S.
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`Telit Wireless Solutions INC. and Telit Communications PLC Exh. 1242,
`Telit Wireless Solutions INC. and Telit Communications PLC v. M2M Solutions LLC
`IPR2016-01081, p. 1
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`

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`Patent No. 8,648,717 (“the ’717 Patent”) and accompanying document production on Plaintiff
`
`M2M Solutions LLC (“M2M” or “Plaintiff”).
`
`Defendants’ discovery and investigation in connection with this lawsuit are ongoing, and
`
`these disclosures are based on Defendants’ current knowledge and understanding of the ’717
`
`Patent, M2M’s Initial Infringement Contentions, the prior art, and other facts and information
`
`available at this date in the present actions. These Contentions are necessarily preliminary and
`
`are provided without prejudice to Defendants’ rights. Defendants expressly reserve the right to
`
`amend, modify, or supplement these Contentions based on further investigation, discovery,
`
`evaluation of the scope and content of the prior art, admissions, the Court’s claim construction,
`
`any other reasonable basis, and as permitted by the Coordinated Rule 16 Scheduling Order, the
`
`Local Rules of the District of Delaware and the Federal Rules of Civil Procedure.
`
`Further, the Court has not yet construed the asserted claims. Plaintiff’s subsequent
`
`assertions and this Court’s constructions may alter the materiality and relevance of some
`
`references and/or raise new issues regarding the invalidity of the ’717 Patent. Although these
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`Contentions, are based in part on what Defendants believe are M2M’s claim constructions and
`
`the Court’s anticipated Markman order, they are not intended to reflect Defendants’ claim
`
`construction positions, which will be disclosed in due course in accordance with this Court’s
`
`Scheduling Order. To the extent that these Contentions reflect constructions of claim terms that
`
`may be consistent with or implicit in M2M’s Initial Infringement Contentions or M2M’s claim
`
`constructions, no inference is intended or should be drawn that Defendants agree with such claim
`
`constructions. To the extent Defendants determine that a different meaning is appropriate for
`
`any claim term, it will assert that in connection with the Court’s procedures, and reserve the right
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`

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`to update these Contentions as a result of the Markman decision, or any other subsequent
`
`clarification or alteration of the meaning of claim terms.
`
`I.
`
`INTRODUCTION
`
`Based on Plaintiff’s Initial Infringement Contentions served on May 15, 2015, Plaintiff
`
`has asserted the following claims of the ’717 Patent (collectively, “the Asserted Claims”) against
`Defendants1:
`
`DEFENDANT
`
`Sierra Wireless
`Novatel
`Telit
`Collectively
`
`ASSERTED CLAIMS OF THE ‘717 PATENT
`1-3, 5-7, 10-15, 18-23, and 29-30
`1-3, 6-7, 10-11, 13-15, 18-23, and 29-30
`1-3, 6-7, 10-11, 13-23, and 29-30
`1-3, 5-7, 10-23, and 29-30
`
`Defendants provide their Contentions subject to the following additional objections and
`
`reservation of rights. Defendants reserve their right to identify other art or to amend, modify, or
`
`supplement these Contentions at any time and/or as otherwise authorized or permitted by the
`
`aforesaid Order and Rules, based on the following:
`
`1.
`
`2.
`
`Any further investigation;
`
`Any fact or expert discovery materials, including, but not limited to, documents,
`
`laboratory notebooks, reports, communications and deposition testimony, that have not yet been
`
`obtained, produced or provided to Defendants;
`
`1 Plaintiff did not identify the asserted claims in accordance with the Scheduling Order in this case, which required
`identification of asserted claims on March 20, 2015 (Dkt No. 44). Consequently, the amount of time Defendants
`have had to study the asserted claims was significantly reduced.
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`3.
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`Any further evaluation of the scope and content of the prior art or as prior art is
`
`discovered;
`
`4.
`
`5.
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`patents-in-suit;
`
`Any clarification of Plaintiff’s Initial Infringement Contentions;
`
`The Markman decision and/or any claim construction by a Court relating to the
`
`6.
`
`Any claim contentions that Plaintiff may assert that are different from its Initial
`
`Infringement Contentions pursuant to the Coordinated Rule 16 Scheduling Order;
`
`7.
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`Any constructions or additional or different infringement allegations that Plaintiff
`
`may assert at a later date; or
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`8.
`
`Any other grounds otherwise provided under the Coordinated Ruled 16
`
`Scheduling Order, the Local Rules or any other applicable Rules or upon leave of the Court
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`and/or any other reason requiring same.
`
`These Contentions may be asserted in the alternative and do not constitute any
`
`concession by Defendants for purposes of claim construction, non-infringement or invalidity.
`
`Defendants incorporate, in full, all prior art references cited in the ’717 Patent (as well as
`
`any related patents and applications), and their respective prosecution histories, whether the
`
`related patents and applications were filed in the United States or in a foreign country.
`
`Defendants further incorporate by reference any invalidity contentions, identified prior art,
`
`invalidity claim charts or defense disclosed at any date by any party to any other litigation or
`
`U.S. Patent & Trademark Office proceeding involving the ’717 Patent or any related patent.
`
`Defendants further incorporate by reference any expert reports, invalidity contentions, identified
`
`prior art, invalidity claim charts or defense disclosed at any date by any party to any other
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`litigation or U.S. Patent & Trademark Office proceeding involving the ’717 Patent or any related
`
`patent.
`
`Further, prior art not included in this disclosure, whether known or not known to
`
`Defendants, may become relevant. For example, Defendants do not know, to what extent, if any,
`
`Plaintiff will agree that the limitations of the Asserted Claims are disclosed in the prior art
`
`Defendants identify or otherwise well-known in the prior art. To the extent that issues arise
`
`concerning these matters, Defendants reserve the right to identify other prior art that prove that
`
`any allegedly missing limitations were present. Defendants’ claim charts in the Appendices cite
`
`to particular teachings and disclosures of the prior art as applied to features of the Asserted
`
`Claims. Defendants have endeavored to identify relevant portions and/or features of the
`
`identified prior art. The identified prior art, however, may contain additional descriptions of or
`
`alternative support for the claim limitations. The citations included in each chart are illustrative,
`
`not exhaustive. For example, experts and persons having ordinary skill in the art may view an
`
`item of prior art in the context of other publications, literature, products, and understanding and
`
`find additional relevant disclosures in a reference. Defendants reserve the right to rely on uncited
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`portions of prior art references, other publications and expert testimony and additional evidence
`
`that the prior art discloses different or additional claim limitations. Defendants further reserve the
`
`right to rely on uncited portions of the prior art references, other publications, and testimony to
`
`establish bases for combinations (to the extent necessary to show motivation to combine or
`
`common knowledge) of certain cited references that render the Asserted Claims obvious. Where
`
`Defendants cite to a particular figure in a reference, the citation should be understood to
`
`encompass the caption and description of the figure and any text relating to the figure. Similarly,
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`where Defendants cite to particular text referring to a figure, the citation should be understood to
`
`include the figure and caption as well.
`
`The references discussed in the claim charts in the Appendices may disclose the elements
`
`of the Asserted Claims explicitly and/or inherently, and/or they may be relied upon to show the
`
`state of the art at the relevant time in the event they are not considered “prior art.” The
`
`obviousness combinations are provided in the alternative to Defendants’ proof of anticipation
`
`and should not to be construed to suggest that any reference included in the combinations did not
`
`by itself anticipate the alleged invention. To the extent a prior art reference is identified as part
`
`of one or more combinations of references under 35 U.S.C. § 103, Defendants reserve the right
`
`to chart that reference independently under 35 U.S.C. § 102 at a later date should circumstances
`
`dictate. Further, in many instances where a particular contention calls for combining references,
`
`any one of a number of references can be combined. The inclusion of certain exemplary
`
`combinations of prior art references does not exclude other combinations.
`
`Certain publications identified below describe the operation of prior art products. These
`
`publications are offered as prior art publications, descriptions, descriptions of prior art
`
`products, and as evidence of § 102(g) inventive prior activity. Moreover, as certain prior art
`
`references and inventions are described in multiple related patents or publications with similar
`
`or identical specifications or disclosures, to the extent Defendants have identified a citation in
`
`one reference, Defendants reserve the right to rely on parallel or similar citations in related
`
`patents or publications. Persons of ordinary skill in the art would read a prior art reference and
`
`understand the prior art reference as a whole and in the context of other publications and
`
`known technologies. Therefore, to understand and interpret any specific statement or
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`disclosure of a prior art reference or invention, such persons would rely on other information
`
`within the reference or invention, along with other publications and known technologies.
`
`Defendants reserve the right to establish what was known to persons of ordinary skill in the art
`
`through other publications, products, and/or testimony. Defendants also reserve the right to
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`rely on uncited portions of the prior art references, other publications, and testimony to
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`establish that a person of skill in the art would have been motivated to combine certain of the
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`cited references so as to render the claims obvious. Defendants also intend to seek diligently
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`discovery from third parties to demonstrate earlier invention by other parties and reserve their
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`right to contend that the Asserted Claims are invalid under 35 U.S.C. § 102(g).
`
`Defendants herein object to the disclosure of information that is protected by the
`
`attorney-client privilege, attorney work-product immunity, the common interest privilege, or any
`
`other applicable privilege or immunity. To the extent that Defendants inadvertently discloses
`
`information that may be protected from discovery under the attorney-client privilege, the
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`attorney work-product immunity, the common interest privilege or any other applicable privilege
`
`or immunity, such inadvertent disclosure does not constitute a waiver of any such privilege or
`
`immunity.
`
`II.
`
`IDENTIFICATION OF PRIOR ART
`
`Each item of prior art identified below anticipates and/or renders obvious the Asserted
`
`Claims as set forth in the attached Appendices. The identified sections of the references are
`
`provided both to demonstrate anticipation and what disclosure the reference could add to an
`
`obviousness combination. Defendants reserve the right to use other references to establish how
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`one of ordinary skill in the art would have understood the references to show anticipation or
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`obviousness.
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`A. Introduction Regarding The Prior Art
`
`As explained in more detail in the accompanying claim charts, all the subject matter of
`
`the Asserted Claims were well known in the relevant industry long before the earliest prior date
`
`of the ’717 Patent. By 1999, companies had built and sold wirelessly programmable devices
`
`with the ability to monitor other devices, like vending machines, and to communicate a
`
`parameter of the monitored device to a remote receiver. (See e.g., Eldredge and its product
`
`“VendaLink”).
`
`In addition, at least one year before the earliest US priority date of the ‘717 patent,
`
`European Telecommunications Standards Institute (“ETSI”) published a document that disclosed
`
`among other things programming a device: (1) wirelessly; (2) with an outgoing call recipient list
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`(a fixed dialing number phonebook); and (3) using SMS messages that can be transmitted over
`
`the GSM or GPRS networks. (See e.g., GSM 11.14 and 11.11).
`
`Further, the ’717 Patent states:
`
`“The device comprises a novel combination of existing technologies and
`features, which make possible the existence of a new and improved
`communication device” (‘717 patent 9:16-21; emphasis added).
`
`In addition, M2M has admitted that all of the claimed elements were known in the prior
`
`art before the priority date of the Asserted Patent. As examples:
`
`
`
`“programmable interface”: was in the prior art for “at least the past three to
`
`four decades” (Opening Report of Dr. Ray Nettleton Opining that Sierra Wireless’ Accused
`
`Products Satisfy the “Programmable Interface” Limitation, see. e.g., ¶¶ 128, 131). See also Dr.
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`Ray Nettleton May 8, 2015 at 64:15-76:4, 83:2-9: “The claims in this patent do not rely on
`
`programmable interfaces as being [] new” (Nettleton Tr. 75:20-24 (May 6, 2015)).
`
`
`
`“processing module for authenticating … a coded number”: Dr. Wesby
`
`admitted “processing modules” were known in the prior art to be “standard processing software”:
`
`“Q. So, for example, you talked about executing instructions. What type of
`software would be used to execute those instructions?
`
`A. Well, I -- I think it would be a combination of standard type operational
`process software, and in addition to that,
`there could be specific
`applications, specific software.
`
`Q. So when you talk about "standard software," can you give me an
`example of such a standard software?
`
`A. I don't think it is relevant for -- for the description of the invention
`because it, as I said, it was written on the basis of the user requirements
`and it is -- it is written on the basis of using standard technology starting
`with a phone circuitry but also including standard processing software.
`
`type of standard
`Q. Can you give me any example at all of what
`processing software could be used? I mean, understanding that
`this
`wouldn't be the only kind,
`just one example of standard processing
`software that would be used?
`
`A. I mean, simplest form of processing software is what would happen in
`a basic Hotlink setting when you send a message in the form of a text and
`you edit data that is based in a memory module like SIM card. So it is a --
`it's literally -- it can be very, very simple language that is – that’s being
`processed to change data in a memory or storage area.
`
`(E. Wesby van Swaay 2012 at 33-34, emphasis added).
`
`
`
`“processing module for authenticating … a coded number”: the alleged
`
`inventor admitted she was aware of devices that could receive a code wirelessly and then use that
`
`to perform authentication at the wireless device (E. Wesby van Swaay 2012 at 66:14-19, see also
`
`38:9-25). She was also aware of using passwords and PIN codes in wireless communications (E.
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`Wesby van Swaay 2014 at 16:20-25, 17:7-10). In addition, Dr. Eveline Wesby van-Swaay (“Dr.
`
`Wesby”) testified:
`
`“Q … was there software at the time that could check that code -- in a
`wireless device that could receive that code and use it to perform an
`authentication action?
`
`A. My impression was that in wireless communications such as using or --
`hooking up users to local area networks, that there was that possibility,
`yes.” (E. Wesby Van Swaay 2012 Tr. 109).
`
`
`
`“memory to store at least one telephone number”: was admitted by the alleged
`
`inventor to be “literally taken from the Hotlink principle” (E. Wesby van Swaay 2012 at 136:15-
`
`21) referring to the prior art “Hotlink” patent application (WO 99/13629, prior art under 35
`
`U.S.C. §102(b)). She admitted that this prior art Hotlink application disclosed “a simple
`
`programming feature which was to populate a permitted callers list … a list of phone numbers”
`
`and that this list was programmed “wirelessly” (E. Wesby van Swaay 2012 25:10-16, 26:12-17,
`
`see also 153:21-154:9). In addition, Dr. Wesby testified:
`
`“Q. Dr. Wesby, memory modules that store lists of numbers were known
`prior to the filing of your Programmable Communicator patent, correct?
`
`A. So when we talked about that a few minutes ago, the example of the
`standard mobile phone, there was a space where you could list other phone
`numbers that existed, yes.
`
`Q. And in that mobile phone, you were able to update the list of numbers
`in the memory module, correct?
`
`A. Yes, you could. You could update. You could have it...”
`
`(E. Wesby van Swaay 2014 Tr. 50-51).
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`
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`“numbers to which the programmable communicator device is configured to
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`and permitted to send outgoing wireless transmissions”: was admitted by the alleged inventor
`
`to be disclosed in the prior art Hotlink application which included “a list of phone numbers to
`
`which that communicator is permitted to communicate … to make a call to that number.” (E.
`
`Wesby van Swaay 2012 at 25:14-16). Additionally, the ’717 Patent states that those of ordinary
`
`skill were aware of how to wirelessly program a list “of stored telephone numbers” with SMS
`
`messages:
`
`“Existing and known methods of communication between the mobile
`phone and Hotlink communicator
`for
`the purpose of programming
`comprise the obvious choice of data calls such as the Short Message
`Service in the GSM telecommunications standard. Alternatively a PDA
`type communicator might call up a web page to instruct a network element
`to program the programmable identity module of the Hotlink with the
`number of any fixed or mobile telephone to which the Hotlink
`communicator is to be linked.
`
`This use of a separate mobile phone to program the number to which the
`Hotlink may call is particularly useful and convenient should a parent
`wish to change the number if the parent must leave shortly and want that
`the Hotlink is connected immediately to the mobile phone or fixed line of
`another parent or supervising neighbour.”
`
`(‘717 patent, 1: 52-67, emphasis added)
`
`In addition, Dr. Wesby testified:
`
`“Q. Were you aware in May of 1999 that the Hotlink patent application
`described the ability to remotely send programming instructions that
`would serve to edit a permitted callers list on the Hotlink device?
`
`[Objection omitted]
`
`THE WITNESS: Was I aware -- yes.”
`
`(E. Wesby van Swaay 2014 Tr. 153-154)
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`“A. It does say in the Hotlink application the word ‘linked’ refers to radio
`linked.
`
`Q. And that allows you to download new numbers to the Hotlinked
`phone?
`
`A. The idea was to program the single number that the Hotlink would call
`using another phone by -- by editing the permitted callers list.”
`
`(P. Wesby 2012 Tr. 36).
`
`
`
`“identity module”: is disclosed as a SIM card that stores a unique PUK code,
`
`and was admitted as prior art in the ’717 Patent (‘717 patent 1:47-48, 9:42-43) and by the alleged
`
`inventor (E. Wesby van Swaay 2012 at 153:13-16, E. Wesby van Swaay 2014 at 30:23-31:2).
`
`See e.g., Dr. Wesby’s testimony:
`
`Q. Were you aware in May of 1999 that the Hotlink patent application
`described a programmable identity module as being the SIM card?
`
`A. Yes.
`
`Q. Were you aware that the Hotlink device described in that application
`used a SIM card in order to access the wireless network?
`
`A. Yes.
`
`(E. Wesby van Swaay 2014 Tr. 153-154)
`
`
`
`SMS, GPRS, and wireless packet-switched communication: are all admitted
`
`prior art (see E. Wesby van Swaay 2014 9:25-10:5, 14:2-5, 75:22-76:15; ‘717 patent 1:52-56,
`
`3:56-61). See e.g.:
`
`“It is a straightforward procedure to communicate with the programmable
`communicator by SMS.” (‘717 patent, 9:45-46).
`
`In addition, Dr. Wesby testified:
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`Q. You did not invent GSM, correct?
`
`A That is correct.
`
`Q. You did not invent GPRS, correct?
`
`A. That is correct.
`
`Q. You did not invent SMS, correct?
`
`A. That's correct.
`
`Q. You did not invent CDMA, correct?
`
`A. That's correct.
`
`(E. Wesby van Swaay 2014 Tr. 9-10)
`
`Q. It says it’s a straightforward procedure to communicate with a
`programmable communicator by SMS. Do you see that?
`
`A. Yes.
`
`Q. That’s a true statement, isn’t it?
`
`A. That’s a true statement.
`
`(E. Wesby van Swaay 2014 Tr. 272-73)
`
`A. … So, in the Hotlink situation, the parent could programme the Hotlink
`device and, in essence, could programme his or her own number to go on a
`simple list in the Hotlink. …
`
`(E. Wesby van Swaay 2014 Tr. 100)
`
`A. … the SMS kind of technology that was needed for the Hotlink was part
`of the discussion between the coinventors for the Hotlink and so that is
`nothing new. The PUK code was a known -- a known feature of mobile
`phones that we were using.”
`
`(E. Wesby Van Swaay 2012 Tr. 91-92).
`
`
`
`“to process data received through the programmable interface”: was known
`
`in the art. M2M’s invalidity expert admitted that the prior art disclosed processing data and
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`making decisions based on data received over alarm interfaces. (Dr. Alon Konchitsky May 27,
`
`2015 at 156:11-15, 226:17-22).
`
`
`
`GPS (claim 17): was also admitted by Dr. Wesby to be prior art:
`
`--
`“Q. … You mentioned you were aware of a commercial
`commercially available GPS module that could be accessed wirelessly. Is
`that an accurate --
`
`A. This was about a GPS functionality that was known and built into a
`mobile phone.” (E. Wesby Van Swaay 2012 Tr. 104).
`
`“Q. Beyond the inclusion of coordinates, would there be any data structure
`in terms of how it's -- the GPS communicates with the -- with the module?
`
`A. No, I wouldn't know, but this is -- this was existing technology. The
`patent doesn't describe a new technology,
`for example, GPS-based
`location.
`
`Q. So would you say that just the -- it's more the idea of collecting this
`information from the GPS?
`
`A. No. It is the concept, a user requirement to be able to locate the device
`or the person who's wearing the device using available technology at the
`time.
`
`Q. So it's your understanding, at the time the technology existed to collect
`GPS information from a -- between a module -- this wireless module and
`a GPS device attached to it?
`
`A. In '99 there was -- there was quite a lot of talk about integrating that,
`and we actually -- I found a company as part of looking for potential
`interested parties for the Hotlink that had this GPS capacity link to or --
`embedded rather in a phone and that was Benefon. So I knew at the time
`of the concept of the programmable communicator that it was around.
`People talked about it, but I knew in some more detail there was such a
`phone that could do that. That's not a new concept. That's what I'm trying
`to say.”
`
`(E. Wesby van Swaay 2012 Tr. 35-36; emphasis added)
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`These admissions and the disclosures of the prior art demonstrate that the features
`
`claimed in the Asserted Patent were all known in the art.
`
`B. Products Sold Prior To The Alleged Priority Date Of The ‘717 Patent
`
`The following systems are prior art under at least 35 U.S.C. §§ 102(a), and/or 35 U.S.C.
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`§103. Although Plaintiff’s investigation is still ongoing, information available to date indicates
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`that each system was (1) known, published, or used in the United States prior to the alleged
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`invention of the claimed subject matter of the Asserted Claims; (2) published, in public use,
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`and/or on sale in the United States more than one year before the filing date of the ’717 Patent;
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`and/or (3) invented by another who did not abandon, suppress, or conceal it prior to the alleged
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`invention of the claimed subject matter of the Asserted Claims of the ’717 Patent. Information
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`concerning the entities who knew of and/or used these systems, or who were involved in any
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`sales or offers to sell these systems, can be found in the documents identified above and below
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`describing these systems. Additionally, discovery has only just begun, and Plaintiff reserves the
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`right to rely on the testimony of witnesses knowledgeable about such systems, as well as
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`documents that are currently in the possession of third parties describing these systems.
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`1. Sierra Wireless Products
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`The cover page of the DART 200 CDPD Modem For CDPD Versions 1.0 and 1.1 User’s
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`Guide identifies the date of publication as “January 1998” (see, for example, Dart 200 User’s
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`Guide at DEFPRIORART003122). Additionally, page iii of the User Guide indicates that the
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`first printing is “January, 1998” (see, for example, Dart 200 User’s Guide at
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`DEFPRIORART003124). The User Guide, in accordance with common industry practice, was
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`provided to customers when they purchased a DART 200. Sierra Wireless press releases from
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`October 1997 indicate that the DART 200 was sold to and used by customers throughout the
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`United States, including for electric meter and gas wellhead monitoring, vehicle monitoring,
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`automated teller machines, and credit card transaction processing (see, for example,
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`SWAI0034681, 83). Sierra Wireless documents also show product shipments, including
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`shipments of the DART200, in 1997, 1998 and early 1999 to multiple U.S. customers (see, for
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`example, DEFPRIORART007952, 7953, 7955, 7973). Accordingly, the Dart 200 User’s Guide
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`is a printed publication that was publicly available in the United States prior to May 23, 1999 and
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`qualifies as § 102(b) prior art. Further, the DART 200 product was sold to customers throughout
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`1998 and during early 1999. Accordingly, the DART 200 product also qualifies as 102(b) prior
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`art because it was sold in the United States prior to May 23, 1999. Additionally, the DART 200
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`product was publicly used in the United States by the DART 200 customers throughout 1998 and
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`during early 1999 and thus additionally qualifies as § 102(b) prior art because it was publicly
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`used in the United States prior to May 23, 1999. The term “Dart 200 Product” is a reference to
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`each and all of the printed publication, the on sale product and the public prior use unless
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`specifically indicated otherwise. Numerous individuals at Sierra Wireless can confirm that the
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`DART 200 was sold prior to May 23, 1999.
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`The Dart 200 product provided an enabling disclosure of the various concepts
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`enumerated in the Asserted Claims of the ‘717 patent at least because the Dart 200 User’s Guide
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`provided sufficiently detailed description of such concepts and because a POSITA could have
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`purchased, tested, physically examined and reverse-engineered a Dart 200 exemplary product
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`before M2M’s alleged priority date of the Asserted Claims of the ‘717 patent. Thus, the
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`documentation associated with the Dart 200 Product and/or the exemplary products themselves
`
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`and/or their usage provided enough information so that a POSITA could practice the various
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`concepts enumerated in the Asserted Claims of the ‘717 patent as disclosed by the Dart 200
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`Product without undue experimentation.
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`The Dart 200 Product was analogous art to the programmable communicator claimed in
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`the ‘717 patent that relates to “a programmable wireless communications apparatus” at least
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`because the Dart 200 Product was from the same field of endeavor as the claimed invention as
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`evident from its description as “a wireless, multipurpose, programmable modem that provides
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`reliable, cost effective mobile and fixed communications” (see, for example, Dart 200 User’s
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`Guide at DEFPRIORART003140).
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`Additionally, Sierra Wireless sold the MP200 and MP215 products in the United States
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`prior to the alleged priority date of the Asserted Claims of the ‘717 patent (see, for example,
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`SWAI0039516-40159). The documentation associated with the MP200 and MP215 products
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`and/or their usage provide enough information so that a POSITA could practice the various
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`concepts enumerated in the Asserted Claims of the ‘717 patent as disclosed by the MP200 and
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`MP215 products without undue experimentation.
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`2. Airlink (Raven and PinPoint) Products
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`Mr. Jim Baichtal was a co-founder of and an engineer at AirLink Communications – a
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`company that developed the Raven and Pinpoint Products described herein. Sierra Wireless
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`subsequently acquired AirLink. Mr. Baichtal can confirm the dates these products were first
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`offered for sale or sold in the USA prior to May 2000 and confirm that their operation prior to
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`2000 is consistent with the product documentation.
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`The cover page of the AirLink Raven/PinPoint CDPD Modem User’s Manual identifies
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`the date of publication as “February 11, 1999” (see, for example, Raven/Pinpoint User’s Manual
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`at DEFPRIORART004087). As confirmed by Mr. Baichtal, the Raven/Pinpoint User’s Manual,
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`in accordance with common industry practice, was provided to customers when they purchased
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`an AirLink Raven or Pinpoint Product. AirLink press releases indicate that the Raven and
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`Pinpoint Products were sold to and used by customers throughout the United States beginning in
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`1997, including in the oil, gas, water and transportation industries (see, for example,
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`DEFPRIORART008478, 8457). AirLink’s website in 199