trials@uspto.gov
`571-272-7822
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`IPR2015-01823, Paper No. 37
`January 11, 2017
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`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS,
`INC., and RPX CORP.,
`Petitioner,
`v.
`M2M SOLUTIONS LLC,
`Patent Owner.
`- - - - - -
`Case IPR2015-01823
`Patent 8,648,717 B2
`Technology Center 2600
`Oral Hearing Held: Monday, December 5, 2016
`
`Before: KALYAN K. DESHPANDE, JUSTIN T. ARBES,
`and DANIEL J. GALLIGAN (via video link), Administrative Patent Judges.
`The above-entitled matter came on for hearing on Monday,
`December 5, 2016, at 10:00 a.m., Hearing Room A, taken at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`REPORTED BY RAYMOND G. BRYNTESON, RMR, CRR,
`
`RDR
`
`
`571-272-7822
`
`IPR2015-01823, Paper No. 37
`January 11, 2017
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS,
`INC., and RPX CORP.,
`Petitioner,
`v.
`M2M SOLUTIONS LLC,
`Patent Owner.
`- - - - - -
`Case IPR2015-01823
`Patent 8,648,717 B2
`Technology Center 2600
`Oral Hearing Held: Monday, December 5, 2016
`
`Before: KALYAN K. DESHPANDE, JUSTIN T. ARBES,
`and DANIEL J. GALLIGAN (via video link), Administrative Patent Judges.
`The above-entitled matter came on for hearing on Monday,
`December 5, 2016, at 10:00 a.m., Hearing Room A, taken at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`REPORTED BY RAYMOND G. BRYNTESON, RMR, CRR,
`
`RDR
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`APPEARANCES:
`ON BEHALF OF THE PETITIONER:
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`JENNIFER HAYES, ESQ.
`Nixon Peabody LLP
`Suite 4100
`300 South Grand Avenue,
`Los Angeles, California 90071-3151
`213-629-6000
`
`RONALD LOPEZ, ESQ.
`Nixon Peabody LLP
`Suite 1800
`One Embarcadero Center,
`San Francisco, California 94111
`415-984-8368
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`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`JEFFREY N. COSTAKOS, ESQ.
`Foley & Lardner LLP
`777 East Wisconsin Avenue
`Milwaukee, Wisconsin 53202-5306
`414-297-5782
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`Case IPR2015-01823
`Patent 8,648,717 B2
`
`
`P R O C E E D I N G S
`
`(10:00 a.m.)
`JUDGE DESHPANDE: You may be seated. Good
`morning. We are here for the oral arguments for
`IPR2015- 01823 for Patent Number 8,648,717. This morning
`will be for IPR2015- 01823 and this afternoon will be for
`IPR2016- 00055.
`To my right is Judge Arbes and on the screen with
`us today is Judge Galligan from Dallas.
`Let's have the parties' appearance. Who do we
`have for Petitioner?
`MR. HAYES: Good morning, Your Honors.
`Jennifer Hayes from Nixon Peabody for the Petitioners. And
`with me today is Mr. Lopez.
`MR. LOPEZ: Good morning.
`JUDGE DESHPANDE: And who do we have for
`Patent Owner?
`MR. COSTAKOS: Good morning, Your Honor.
`Jeff Costakos, Foley & Lardner, for the Patent Owner, M2M
`Solutions.
`JUDGE DESHPANDE: Welcome to the Patent
`Trial and Appeal Board. For this morning's case we have
`given total oral argument time of two hours, one hour to each
`side. Petitioner bears the burden of proof and will speak first.
`You may reserve time for rebuttal. After you have completed
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`Patent 8,648,717 B2
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`your argument, Patent Owner will have their full hour to
`speak, and you may use your rebuttal time after Patent Owner
`has presented their arguments.
`I want to remind everybody, we have Judge
`Galligan on through Dallas, and he cannot hear you if you
`don't speak into the microphone. So any time you are
`speaking, please make sure you are standing in front of the
`podium and into the microphone.
`Also, since he is with us remotely, if you are
`referring to an exhibit and demonstrative numbers, please
`identify what you are looking at with clarity so that Judge
`Galligan can follow us from remotely.
`Does anyone have any questions before we begin?
`All right, Petitioner.
`MR. LOPEZ: One question. Is he seeing the slides
`that are on the screen then?
`JUDGE DESHPANDE: I don't believe he is seeing
`the slides on the screen as they are seen here. He has the
`demonstratives in front of him. As long as you identify that
`you are on demonstrative page 15, he can turn to page 15, and
`so on.
`
`MR. LOPEZ: Okay. Thank you.
`MS. HAYES: Good morning, Your Honors. I
`would like to reserve 20 minutes for rebuttal, please.
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`Case IPR2015-01823
`Patent 8,648,717 B2
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`
`May it please the Board. We are here today to talk
`about U.S. Patent 8,648,717, Exhibit 1001 to the proceedings.
`I will be referring to it as the '717 patent.
`Turning to slide 5 of Petitioner's demonstrative,
`Patent Owner didn't separately challenge claims 24, 29, so I'm
`going to focus most of my arguments today with respect to
`independent claim 1, although I will point out some
`differences about claims 24 and 29 as we move forward.
`And Patent Owner didn't separately challenge all
`of the dependent claims, so I'm going to focus on the
`dependent claims that Patent Owner focused on in their
`response.
`
`And for the reasons set forth in the petition and in
`our reply, Petitioners contend that all of the claims at issue in
`the proceeding are unpatentable as obvious over the prior art
`and should be cancelled.
`So moving to slide 6 of Petitioner's demonstrative,
`we have claim 1 up on the screen. We also have a big board
`that has claim 1 printed out. I'm sure the Board is all familiar
`with it. As set forth in the petition we kind of broke it out by
`letters so that the preamble is 1a, the programmable interface
`is 1b, et cetera.
`And so today we're going to focus mostly on the
`claim limitations that Patent Owner focused on which are the
`programmable interface which is element 1b in the petition,
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`Case IPR2015-01823
`Patent 8,648,717 B2
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`the authentication limitation which is 1d, and the processing
`limitation which is element 1g.
`And for the reasons set forth in the petition, we
`believe that claim 1 is unpatentable as being obvious over
`Whitley in view of the SIM specification.
`The '717 patent admits that the programmable
`communicator is a combination of known existing technology.
`That is at column 9, line 16 through 17. And the starting point
`of the programmable communicator device in the '717 patent
`was a hot link communicator that had been previously invented
`by Dr. Wesby and a couple of other inventors.
`And the hot link communicator device was
`designed so that parents could contact their children without
`providing them all of the functions and features of a smart
`phone because they were worried that children would be
`vulnerable to attacks by bad people if they had a
`fully-functioning telephone and so the idea was that only the
`parents would be able to contact the children and the children
`would only be able to contact the parents.
`And the invention of the '717 patent was to add the
`idea that you can reprogram the list of people that can be
`called by the child and then also adding the concept that you
`can use this for other applications such as connecting to
`technical devices. So that was kind of the starting point of the
`'717 patent.
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`Patent 8,648,717 B2
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`But these features were already known in the art.
`So Whitley, Exhibit 1003, figure 1 of which is shown on slide
`32 of Petitioner's demonstrative, Whitley describes a
`communication system that permits the ability of a
`communication device, gateway 20, to communicate with
`monitored technical devices, such as sensors or other devices
`at a building facility, and a user can access the data on those
`sensors and devices through the gateway from laptops, smart
`phones or mobile phones, and those are highlighted in figure 1
`with the boxes around them, so phone 32, smart phone 34, and
`computer 10 and 42.
`And the computer and smart phone have the ability
`to communicate SMS message data over TCP/IP sessions. So
`that is shown in the solid lines that go both ways between the
`smart phone 34 and the SMS control device and between the
`computer which communicates over the IP-based
`communication backbone and through the network to the
`gateway 20.
`Whitley also describes the concept of using known
`communication networks, such as the GSM network, the GPRS
`addition to the GSM network, or using other communication,
`known communication networks such as CDMA or TDMA.
`So going back to claim 1, M2M argues that the
`programmable interface is not disclosed in Whitley. They also
`contend that the combination of Whitley and the SIM
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`Patent 8,648,717 B2
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`specification doesn't describe all of the limitations of the
`authentication requirement of claim 1. And then they also
`argue that the processing limitation is not met.
`And each of these arguments should be rejected,
`largely for the same reasons the Board already rejected the
`arguments in the Institution Decision, which is they are
`attempting to narrow the claim construction improperly so that
`it is not the broadest reasonable construction of the claims.
`They are also holding the prior art references to a
`very different standard than what is disclosed in the '717
`patent, which we also believe is improper. And they
`mischaracterize the record, including the citations in the
`petition, the prior art and the '717 patent.
`So let's start with the programmable interface. As
`the Board recognized in the Institution Decision, there is only
`one paragraph in the '717 patent that discusses the
`programmable interface, and that is at -- and this is
`demonstrative exhibit slide 10, and we have -- the only
`citation or only paragraph in Exhibit 1001, which is at column
`8, line 65 through column 9, line 6.
`And here the '717 patent describes the function and
`features of the programmable interface, which is that it is
`designed to be attached to the remote sensor devices for the
`purposes of relaying data in response to a request for
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`Patent 8,648,717 B2
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`information from a remote device. So this is what they mean a
`programmable interface to be.
`And this is exactly what Whitley says to do.
`Whitley says that, turning to slide 13 --
`JUDGE ARBES: Counsel, before you move on to
`Whitley, can you address the Patent Owner's argument that
`Petitioner's position with respect to the claim interpretation of
`this term is different than what you proposed in the District
`Court?
`
`MS. HAYES: So in the District Court we had two
`alternative constructions. So the first was that it was a
`means-plus- function term that is indefinite because there is no
`support in the patent specification and that, alternatively, the
`District Court's earlier construction should apply to the claim
`term.
`
`And we think that under the broadest reasonable
`claim construction, which requires that we look at the patent
`specification, that the construction that the interface be
`directly programmed is not supported by the specification.
`There is no teaching in the '717 patent that any
`command ever reached the interface. There is no discussion of
`turning an interface on or off. There is no discussion of
`changing parameters or sending commands to the interface. So
`for those reasons we don't think that the '717 patent
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`description supports the construction that the interface be
`directly programmed.
`JUDGE ARBES: So, counsel, if I understand that
`correctly, did the District Court interpret this term as an
`interface that is able to be directly programmed?
`MS. HAYES: That is what they -- that is their
`construction of what the interface is, yes.
`JUDGE ARBES: Okay. So you are arguing that
`that interpretation is wrong?
`MS. HAYES: Yes, we are.
`JUDGE ARBES: Okay.
`MS. HAYES: So we are saying that it is not
`consistent with the teaching in the '717 patent. So claim
`construction in inter partes review proceedings should be the
`broadest reasonable construction consistent with the
`specification. Because the specification doesn't describe the
`concept of directly programming the interface, that that
`construction shouldn't apply.
`JUDGE ARBES: I guess my question is -- if it is
`inconsistent with the specification, why did you advocate for
`that interpretation at the District Court?
`MS. HAYES: So we didn't advocate for it directly.
`So we are in a joint defense group and other Defendants in the
`joint defense group wanted to seek that construction in order
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`Case IPR2015-01823
`Patent 8,648,717 B2
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`to preserve some non- infringement defenses that they had, and
`so we have joined in it for the benefit of our co- Defendants.
`JUDGE ARBES: But there is, you would
`acknowledge, I believe it is Exhibit 2008, there is a footnote
`in the District Court's decision at least suggesting that you
`did -- defense counsel argued to the court that it does need to
`be directly programmed?
`MS. HAYES: There is -- there was -- our
`co-Defendant's counsel did argue that the interface in order to
`be distinguished from the prior art of record did need to be
`directly programmed.
`However, the Examiner didn't identify that a basis
`for the notice of allowance was the programmable interface.
`And since that position was advocated, M2M has admitted that
`programmable interfaces were well known in the art. And so
`the original arguments and construction were based on an
`earlier argument that M2M had taken, which is that the
`programmable interface was a basis for allowance.
`JUDGE ARBES: If I can just ask one last
`question. This appears with a number of terms in this case as
`well as the other case.
`Why do you believe that there is a difference here
`between the Phillips interpretation and the broadest reasonable
`interpretation of these terms? That seems to be what you are
`arguing, that there is a difference. Why does that exist?
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`MS. HAYES: So I think that the issue is that the
`Board -- I'm sorry, the District Court strayed from the Phillips
`construction. We don't think that the District Court got it
`right. And, in fact, we argued in our summary judgment
`briefing, which was also filed with the Board, that there is no
`written description support for the District Court's
`construction that the interface be directly programmed. So we
`think that --
`JUDGE ARBES: Even though you did advocate for
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`that?
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`MS. HAYES: We did, yes. And at the end of the
`day I don't think it matters because I think that M2M has
`argued in Exhibit 2008 as well at page 6 that an interface that
`receives -- a communication device that receives a read
`command to read the data from a connected device is a
`teaching of a programmable interface.
`And here Whitley has the exact same teaching.
`Whitley describes that you can pull the remote attached
`devices to collect their data and then send them back to the
`network.
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`And so regardless of what the construction is,
`Whitley still satisfies the requirements of the programmable
`interface limitation because Whitley teaches the concept of
`requesting data from the interface and sending it back to the
`network.
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`JUDGE ARBES: Would that be directly
`programming it?
`MS. HAYES: It would be.
`JUDGE ARBES: Why is that?
`MS. HAYES: So if you look at Exhibit 2008, page
`6 at the very bottom of the page, M2M takes the position that
`if the programmable communicator device receives a read
`request, then the read request automatically goes to the
`interface and pulls the data from the connected devices. And
`that's exactly what Whitley does.
`And this kind of follows with the arguments that
`we made in the petition regarding In re Fox and In re Epstein,
`which is that there is no description in the '717 patent of the
`interface being directly programmed or the interface receiving
`commands directly that are used to program the interface. And
`the lack of teaching in the '717 patent is an admission that
`these features and technologies were known in the prior art.
`So Whitley's teaching of the idea that you can poll
`devices to collect the data, Whitley also teaches that you can
`address the thermostat or turn the connected devices on or off,
`that you can instruct the gateway to enable or disable an alarm
`system, these are all examples of programming as taught in the
`'717 patent. So Whitley doesn't teach any less than what is
`already described in the '717 patent.
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`JUDGE ARBES: Counsel, is that programming the
`gateway itself or is it programming the interface, because it
`has to be the latter, right, we have to be programming the
`interface?
`MS. HAYES: So what the '717 patent teaches is
`that when you receive these requests at the programmable
`communicator, they automatically get passed to the interface.
`And so Whitley says the exact same thing, that if it comes into
`the gateway then it is going to have to send a command to the
`interface to collect the data.
`JUDGE DESHPANDE: So in this sense when we
`are saying programmable are we talking about just passing
`through?
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`MS. HAYES: So the way the interface works is, in
`the '717 patent, as commands come into the programmable
`communicator, the request gets sent to the interface to poll the
`data from the connected devices and then it gets sent back to
`the network.
`And then Whitley says the same thing, that you
`make a request for polling the attached devices, that that
`request gets sent to the interface, and then the sensors that are
`attached to the interface poll the data from the sensors and
`then poll it back, so it is programming.
`JUDGE GALLIGAN: Ms. Hayes, can you hear me?
`MS. HAYES: Yes, I can hear you.
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`JUDGE GALLIGAN: I noticed in the second part
`of the proposed construction of the programmable interface, it
`says: And that can pass programming instructions to the
`attached remote sensor device.
`What is the support for that, the intrinsic support?
`MS. HAYES: So that is the last part of the
`paragraph. I'm looking at demonstrative exhibit 10, so it
`would be lines 5 or 6, which say that the data is passed either
`automatically or in response to a request for information from
`a remote device.
`And so a person of skill in the art would
`understand that this teaching at column 8, line 65 through
`column 9, line 6 would involve passing the instructions, so
`this would be the instruction, for example, to collect the data
`from the connected sensors and/or remote devices.
`And moving on to the authentication limitation, if
`that's okay with the Board. M2M focuses its arguments on
`what they call element 1d, which is the wherein clause of
`authentication, but their arguments also implicate the
`processing module and the packet switch limitations which are
`elements 1c and 1f in the petition, and so I'm going to address
`the three of these together.
`And so M2M focuses its arguments on the language
`at the end of the authentication wherein clause, which is that
`the device be configured to and permitted to send outgoing
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`wireless transmissions. They also focus on the concept that
`the processing module is determining if there is a coded
`number in the transmission, and then they also focus on this
`last limitation, which relates to whether the messages or
`transmissions are GPRS or other wireless packet switched data
`messages.
`And just like the programmable interface
`limitation, the teaching in the '717 patent is pretty minimal on
`all of these requirements. The '717 patent includes figure 1
`which shows an SMS processing means, an authentication
`means and a permitted callers list. This is on Petitioner's
`demonstrative slide number 26, and we are referring to Exhibit
`1001, figure 1.
`And there is no processing module shown in figure
`1. We are not exactly clear on what the processing module is.
`We address this in our supplemental claim construction
`briefing.
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`But the specification does describe the
`authentication process that is occurring in the sense that the
`'717 patent describes receiving a PUK code, and then an SMS
`message or with a phone number and that you confirm that the
`PUK code matches the PUK code stored in the device and that
`you can then store the telephone number or ID address that
`comes in the SMS message into a permitted callers list.
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`They don't call it a permitted callers list in the
`claim. They call it a list of numbers the device is configured
`to, and permitted to send messages. But in the response
`briefing M2M points to their permitted callers list for support
`that this is outbound restrictive calling list so I think it is
`somewhat relevant to the arguments that M2M is making here.
`I think a big point here is that M2M doesn't
`describe in the '717 patent what specific commands come in to
`the device when the SMS message is received. It doesn't
`describe the specific commands that the device has to perform
`or the software that is executed in order to actually store the
`number or IP address into the permitted callers list. The
`description is pretty vague when it comes to the specific steps
`that are being performed by the processing module.
`And Whitley describes all of this and more in
`combination with the SIM specification. So Whitley describes
`that the gateway includes a SIM card, that the SIM card is
`GSM/GPRS type SIM card, and then you look at the SIM
`specification that describes the detail of the SIM card which
`includes an FDN file which stores numbers and the IP
`addresses that the device is configured to call.
`JUDGE ARBES: Does it store numbers and IP
`addresses, or just numbers?
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`MS. HAYES: Well, it refers to numbers generally
`but IP addresses are numbers that would be stored in the FDN
`file as well.
`JUDGE ARBES: Okay. And the reference
`discloses that?
`MS. HAYES: The reference is silent about
`whether it's telephone numbers or IP addresses. It just says
`the numbers. But we cited to the declaration of Professor
`Negus who indicated that it could be telephone numbers or IP
`addresses.
`
`So let's start with the outbound restrictive calling
`list issue which M2M identified. And so referring to slide 41
`of Petitioner's demonstratives, the Board already addressed
`this issue in the Institution Decision. The Board rejected the
`idea that the claims require an outbound restrictive calling
`list. We think the Board got it right in the Institution
`Decision, and M2M hasn't presented any evidence to lead us to
`believe otherwise.
`The claim language is clear that the numbers are
`ones that the device is configured to and permitted to send
`outgoing wireless transmissions to. It says nothing about the
`list being restrictive. If M2M had intended to claim an
`outbound restrictive calling list, they could have included that
`language in the claims.
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`And the '717 patent describes the permitted callers
`list as being either a restrictive or nonrestrictive, and so we
`haven't seen any evidence that would lead one to interpret this
`language in the claim to be an outbound restrictive calling list.
`JUDGE ARBES: Again, counsel, your position in
`the District Court was that the list is limited to those numbers,
`correct?
`
`MS. HAYES: Right.
`JUDGE ARBES: But you believe that is not the
`broadest reasonable interpretation?
`MS. HAYES: I don't think that is the broadest
`reasonable interpretation. We think the Board got it right.
`Regardless, the FDN list is a list of numbers that the device is
`limited, it is a restrictive calling list, and so it doesn't matter
`at the end of the day what the construction is because
`Petitioners presented evidence that the FDN list is a restrictive
`calling list.
`JUDGE ARBES: One more question about the
`claim language. It does say is configured to and permitted to
`send.
`
`MS. HAYES: Right.
`JUDGE ARBES: That implies naturally that they
`mean different things. They don't mean the same thing. Do
`you agree with that?
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`MS. HAYES: I think you can interpret it that way
`that they do mean different things, but I don't think that that
`leads one to the conclusion that it is necessarily a restrictive
`calling list.
`JUDGE ARBES: What would it have to say to be a
`restrictive calling list, in your view?
`MS. HAYES: I think the language about it either
`being restrictive or that it is configured and permitted only to
`send outgoing wireless transmission to those numbers, I think
`it needs that "only" or some restrictive -type language in there
`to distinguish between restrictive and nonrestrictive calling
`lists.
`
`JUDGE ARBES: Doesn't the language, the one or
`more stored telephone numbers or IP addresses, being numbers
`to which the programmable communicator device is permitted
`to send outgoing wireless transmissions, doesn't that imply
`that there are numbers to which it is not permitted to send?
`MS. HAYES: That does, but the claim doesn't say
`that you can't send transmissions to those numbers that aren't
`permitted. It is just clarifying what those telephone numbers
`or IP addresses that are stored in the list are.
`That doesn't mean that it can't receive a wireless
`transmission that includes a number that hasn't been
`authenticated through this authentication process.
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`JUDGE ARBES: Okay. So if you were to interpret
`configured to and permitted to individually, what does
`Petitioner believe each of those terms means?
`MS. HAYES: I think it means that the numbers are
`ones that the device is capable of sending messages and data
`to and that they are numbers that have gone through the
`authentication process that is described in claim 1.
`JUDGE ARBES: I guess -- what is the difference
`between the two then? What does permitted to add to -- it
`seems like you just described configured to. It is configured
`to send to those numbers.
`What does permitted to add, in your view?
`MS. HAYES: So permitted to adds that these are
`the numbers that have gone through the authentication process.
`The next argument that M2M makes relates to
`which component performs the claimed functional limitations
`of the authentication clause, element 1d.
`And Petitioners in their petition pointed to the
`processor in the SIM card as being the processing manual. We
`never identified the SIM operating system as being the
`processing module, and so we think that that argument should
`be rejected.
`Additionally, M2M's expert, Mr. Williams, and I'm
`referring now to demonstrative exhibit slide 44, admitted that
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`the processor performs the authentication limitation. So I
`think M2M's argument on this issue should be rejected.
`The next argument that M2M makes is whether the
`SMS over GPRS transmissions are wireless packet switched
`data messages. And I think that, one, if we look at the claim
`language -- this is element 1f in particular -- so this is
`defining the wireless transmissions, it defines them as either
`GPRS or wireless packet switched data messages. And
`Whitley clearly teaches that you can send these transmissions
`over GPRS.
`Additionally, Whitley describes the concept of
`transmitting SMS messages. And the evidence, for example,
`Exhibit 1009, page 14, describes that SMS messages can be
`sent over GPRS, over the packet switch part of the network.
`And this is supported by Professor Negus' declaration, Exhibit
`1013 at paragraph 77, where he opines that wireless packet
`switch data messages that are SMS messages sent over the
`GPRS network are wireless packet switched data messages as
`defined in claim 1. And this is demonstrative exhibit 46.
`I will also point out that the '717 patent says
`nothing about layer 2 versus layer 3 networking aspects of the
`protocol. The '717 patent just says you can use GPRS to
`transmit messages, and so to hold the Whitley reference to a
`standard that has to distinguish between layer 2 and layer 3
`networks I think is inappropriate in this case.
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`The next argument that M2M makes relates to
`whether the update commands are provided in wireless
`transmissions. And Petitioner presented evidence in the form
`of Doctor -- Professor Negus' declaration, Exhibit 1013, that it
`was well known to update the FDN files using SMS messages.
`Professor Negus opined in paragraph 81 about the specific
`commands that could be included in the SMS message.
`And M2M's expert, Professor Williams, referring
`to demonstrative exhibit slide 51, admitted that the FDN file
`was capable of being updated wirelessly. His only argument is
`that the SIM specification doesn't describe the specific
`commands or instructions that would be included in that SMS
`message.
`
`But the problem with that argument is that
`Petitioners presented evidence in the form of Professor Negus'
`declaration about those specific commands that would be
`included in the SMS message. So Petitioners contend that they
`have met their burden on that requirement.
`The final argument that M2M makes about the
`authentication limitation relates to the motivation to combine,
`and we think Edmund Optics defines the proper motivation to
`combine inquiry, and we think that Petitioners have satisfied
`their burden under that inquiry.
`Petitioners cited to Professor Negus' opinion,
`Exhibit 1013. And if you look at Professor Negus' declaration
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`as a whole, paragraph 75 through 85, for example, and in
`particular paragraphs 81 through 83 and 85, he provides his
`opinion about why a person of skill in the art would combine
`these two references with specific citations to both the SIM
`specification document, Whitley, and the knowledge and
`commonsense of a person of skill in the art. And so
`Petitioners believe that they have met their burden here.
`Additionally --
`JUDGE ARBES: I'm sorry, counsel, can I ask one
`question? Do you agree with Patent Owner's position that
`some of these features that you are citing from the SIM
`specification are optional? They are not required in the
`standard. Do you agree with that?
`MS. HAYES: I agree that some of the citations are
`optional portions of the standard but I don't think it matters to
`the motivation to combine analysis because a person of skill in
`the art is going to look at the entire teaching of the SIM
`specification document and understand the features and
`functions of the GSM and GPRS standards and incorporate
`those into the network.
`Whitley teaches that you use the concepts of the
`GSM network and the GPRS network to avoid the capital costs
`of developing a telecommunications network from scratch,
`when you use the architecture and functions and features of
`those standards, in or
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