Paper 39
`Trials@uspto.gov
`571-272-7822 Entered: March 6, 2017
`
`
`
`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
`____________
`
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 6, 2017
`
`
`
`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
`____________
`
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318
`
`
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`
`INTRODUCTION
`I.
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314 and
`37 C.F.R. § 42.108, Sierra Wireless America, Inc., Sierra Wireless, Inc., and
`RPX Corp. (collectively, “Petitioner”) challenge the patentability of
`claims 1, 3, 5, 6, 10–13, 15–24, and 29 of U.S. Patent No. 8,648,717 B2
`(“the ’717 patent,” Ex. 1001), owned by M2M Solutions LLC ( “Patent
`Owner”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`arguments raised during trial. For the reasons discussed below, we
`determine that Petitioner has proven by a preponderance of the evidence that
`claims 24 and 29 of the ’717 patent are unpatentable. See 35 U.S.C.
`§ 316(e) (“In an inter partes review instituted under this chapter, the
`petitioner shall have the burden of proving a proposition of unpatentability
`by a preponderance of the evidence.”). However, Petitioner has not proven
`by a preponderance of the evidence that claims 1, 3, 5, 6, 10–13, and 15–23
`of the ’717 patent are unpatentable.
`A. Procedural History
`On August 26, 2015, Petitioner requested inter partes review of
`claims 1–3, 5–7, 10–24, 29, and 30 of the ’717 patent. Paper 1, “Pet.”
`Patent Owner filed a Preliminary Response. Paper 11. In a Decision on
`Institution of Inter Partes Review, we instituted trial of claims 1, 3, 5, 6, 10–
`13, 15–24, and 29, but we denied institution as to claims 2, 7, 14, and 30.
`Paper 16, “Dec. on Inst.” Trial was instituted on the following grounds of
`unpatentability:
`
`
`
`2
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`
`1. Whether claims 1, 3, 5, 6, 10–13, 15, 18, 22–24, and 29 are
`unpatentable under 35 U.S.C. § 103(a) as having been obvious
`over Whitley1 and the SIM Specification;2
`
`2. Whether claims 16, 17, 19, and 20 are unpatentable under
`35 U.S.C. § 103(a) as having been obvious over Whitley, the SIM
`Specification, and Kail;3 and
`
`3. Whether claim 21 is unpatentable under 35 U.S.C. § 103(a) as
`having been obvious over Whitley, the SIM Specification, and
`Eldredge.4
`Dec. on Inst. 32–33.
`During the trial, Patent Owner filed a Response (Paper 27, “PO
`Resp.”), and Petitioner filed a Reply (Paper 33, “Reply”).
`An oral hearing was held on December 5, 2016, a transcript of which
`appears in the record. Paper 37 (“Tr.”).
`B. Related Matters
`Petitioner and Patent Owner cite a number of judicial matters in the
`United States District Court for the District of Delaware involving the ’717
`patent, as well as matters involving ancestor patents of the ’717 patent. See
`Pet. 3; Paper 8. The ’717 patent is also the subject of Telit Wireless
`Solutions Inc. et al. v. M2M Solutions LLC, Case IPR2016-00055, in which
`the Board is issuing a Final Written Decision concurrently.
`
`
`1 WO 99/49680 A1, published Sept. 30, 1999 (Ex. 1003).
`2 Digital cellular telecommunications system (Phase 2+); Specification of the
`Subscriber Identity Module - Mobile Equipment (SIM - ME) interface
`(GSM 11.11 version 7.4.0 Release 1998) (1999) (Ex. 1004).
`3 US 5,959,529, issued Sept. 28, 1999 (Ex. 1005).
`4 WO 95/05609, published Feb. 23, 1995 (Ex. 1006).
`3
`
`
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`
`C. Illustrative Claim
`The ’717 patent is generally directed to a “programmable
`communicator device.” Ex. 1001, Abstract. The ’717 patent has three
`independent claims—claims 1, 24, and 29. Claim 29 is reproduced below:
`
`29. A programmable communicator device comprising:
`a
`a
`programmable
`interface
`for
`establishing
`communication link with at least one monitored technical device,
`wherein the programmable interface is programmable by
`wireless packet switched data messages; and
`a processing module for authenticating one or more
`wireless transmissions sent from a programming transmitter and
`received by
`the programmable communicator device by
`determining if at least one transmission contains a coded number;
`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, 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;
`wherein the programmable communicator device is
`configured to use an identity module for storing a unique
`identifier that is unique to the programmable communicator
`device; and
`wherein the one or more wireless transmissions from the
`programming transmitter containing instructions to program the
`stored number comprise one or more short message service
`(SMS) data messages; and
`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 at least one
`
`
`
`4
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`
`incoming short message service (SMS) data message or packet
`switched data message.
`Ex. 1001, 16:1–38.
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, “[a] claim in an unexpired patent shall be
`given its broadest reasonable construction in light of the specification of the
`patent in which it appears.” 37 C.F.R. § 42.100(b); see Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`the broadest reasonable interpretation standard). In applying a broadest
`reasonable construction, claim terms generally are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). This presumption may be rebutted
`when a patentee, acting as a lexicographer, sets forth an alternate definition
`of a term in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposed constructions for the terms “coded number,”
`“identity module,” and “programming transmitter,” and Petitioner proposed
`“programmable interface” be given its plain and ordinary meaning. Pet. 13–
`16. In its Preliminary Response, Patent Owner contended that Petitioner’s
`proposed constructions for the terms “identity module” and “programming
`transmitter” were incorrect, but Patent Owner did not propose its own
`constructions for these terms in its Preliminary Response. Prelim. Resp. 2–
`3. We determined in the Decision on Institution that, at that time, these
`terms did not require express constructions. Dec. on Inst. 6.
`
`
`
`5
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`
`Based on the record developed during the trial, we provide the
`following additional analysis with respect to certain claim terms.
`1. “Programmable interface”
`In our Decision on Institution, we determined that the term
`“programmable interface” did not require an express construction. Dec. on
`Inst. 6. In its Response, Patent Owner does not advocate for a particular
`construction of “programmable interface,” other than to say that “a person of
`ordinary skill would understand the plain and ordinary meaning of
`‘programmable interface’ to be an interface that must itself be
`programmable.” PO Resp. 7. Although we agree with this proposition, we
`see no reason to adopt this as a claim construction as it does little more than
`restate the limitation.
`With its Response, Patent Owner also filed a Memorandum Opinion
`from the United States District Court for the District of Delaware addressing
`claim construction issues pertaining to two ancestor patents of the ’717
`patent—U.S. Patent No. 8,094,010 B2 (“the ’010 patent”) and U.S. Patent
`No. 7,583,197 B2. See Ex. 2009. In its Response, Patent Owner notes that,
`in construing the same “programmable interface” limitation in the ’010
`patent, the District Court determined the word “programmable” is “generally
`understood in the art to mean ‘capable of accepting instructions for
`performing a task or an operation.’” PO Resp. 8 (citing Ex. 2009, 11 (citing
`MICROSOFT COMPUTER DICTIONARY 360 (4th ed. 1999)). We agree
`that “programmable” in the context of the ’717 patent claims also has its
`plain and ordinary meaning, i.e., “capable of accepting instructions for
`performing a task or an operation.”
`
`
`
`6
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`
`Patent Owner also notes that the District Court construed the term
`“programmable interface” to mean “an interface that is able to be directly
`programmed.” PO Resp. 8 (citing Ex. 2009, 10). In this proceeding,
`however, neither Petitioner nor Patent Owner advocates for this
`construction.5
`In its Petition, Petitioner argued that “programmable interface” should
`be given its plain and ordinary meaning. Pet. 15. In its Reply, Petitioner
`still argues that the plain and ordinary meaning should apply, but it argues
`that the plain and ordinary meaning of “programmable interface” is “a
`physical interface that may be attached to a remote sensor device to relay
`data in response to requests for information and that can pass programming
`instructions to the attached, remote sensor device.” Reply 3–4 (citing
`Ex. 1001, 9:2–6). Although the cited passage from the Specification of the
`’717 patent describes using a programmable interface “for the purpose of
`relaying data from external devices and sensors,” it also states that the
`interface “may” be used in that manner. Petitioner, therefore, has not
`persuaded us that the “plain and ordinary meaning” of the term is so limited.
`We determine that the broadest reasonable interpretation of a
`“programmable interface” is an interface “capable of accepting instructions
`for performing a task or an operation.”
`2. “Processing module for authenticating”
`In our Decision on Institution, we also addressed the limitation of
`independent claims 1, 24, and 29 reciting “a processing module for
`
`
`5 When asked during oral argument what it means for an interface to be
`“directly programmed,” counsel for Patent Owner responded, “I think that
`means that it itself needs to be programmed.” Tr. 34:3–8.
`7
`
`
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`authenticating one or more wireless transmissions sent from a programming
`transmitter and received by the programmable communicator device by
`determining if at least one transmission contains a coded number.” Dec. on
`Inst. 6–7. In particular, prior to institution, we authorized the parties to file
`supplemental briefs addressing the issue of whether or not this limitation
`should be interpreted as a means-plus-function limitation under 35 U.S.C.
`§ 112, paragraph 6, and Williamson v. Citrix Online, LLC, 792 F.3d 1339
`(Fed. Cir. 2015), and if so, how the limitation should be interpreted. Paper
`12. In their supplemental briefs, both parties argued that the limitation
`should not be interpreted as a means-plus-function limitation under 35
`U.S.C. § 112, paragraph 6. See Paper 13; Paper 14 (citing Ex. 2002 (M2M
`Solutions LLC, v. Sierra Wireless America, Inc. et al., 1:12-CV-00030-RGA,
`Doc. 215 (D. Del., Oct. 2, 2015)), a district court decision regarding a
`similar term in a related patent). As such, we were not persuaded that the
`presumption against application of 35 U.S.C. § 112, paragraph 6, had been
`overcome, and we determined that the limitation did not require an express
`construction at that time. Dec. on Inst. 6–7; see Williamson, 792 F.3d at
`1349 (“When a claim term lacks the word ‘means,’ the presumption can be
`overcome and § 112, para. 6 will apply if the challenger demonstrates that
`the claim term fails to recite sufficiently definite structure or else recites
`function without reciting sufficient structure for performing that function.”
`(internal quotations and citation omitted)).
`During the trial, neither Petitioner nor Patent Owner argued that the
`limitation should be interpreted as a means-plus-function limitation under
`35 U.S.C. § 112, paragraph 6. Based on the full record developed during
`trial, we do not change our prior determination that this limitation is not
`
`
`
`8
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`governed by 35 U.S.C. § 112, paragraph 6, and does not require further
`construction.
`
`3. Single Transmission
`In our Decision on Institution, we addressed Patent Owner’s argument
`that there is a “single transmission” requirement in the independent claims,
`meaning that the “processing module” “perform[s] ‘coded number’
`authentication on an incoming ‘single transmission’ that includes both the
`‘coded number’ and the new telephone number or IP address intended for
`storing into the list.” Prelim. Resp. 24. According to Patent Owner, the
`scope of the independent claims does not encompass situations in which a
`“coded number” is in one transmission and a number for storing is in a
`separate transmission because they must be in a “single transmission.” See
`Prelim. Resp. 32–33. In our Decision on Institution, we determined that,
`although the scope of the claims encompasses Patent Owner’s proffered
`construction, the claims are not limited to Patent Owner’s construction.
`Dec. on Inst. 9.
`During the trial, both parties had the opportunity to address this claim
`construction issue. In its Response, Patent Owner stated:
`Patent Owner disagrees with the Board’s prior conclusion that
`the independent claims fail to require that a “single transmission”
`be authenticated that includes both the “coded number” and a
`new telephone number or IP address for storing into the calling
`list. (Decision, Paper 16, p. 9). . . . But because the “single
`transmission” requirement is unnecessary for purposes of the
`arguments presented in the text below, Patent Owner will adopt
`the “one or more” transmissions phraseology as a matter of
`convenience solely for purposes of its present Response.
`PO Resp. 16 n.6; see also Tr. 58:19–59:10 (counsel for Patent Owner
`confirmed that, for purposes of this proceeding, whether the “coded number”
`
`
`
`9
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`and a number for storing are in the same transmission or in different
`transmissions is not an issue).
`Based on the full record developed during trial, we determine that our
`preliminary claim construction in the Decision on Institution is not the
`broadest reasonable interpretation in light of the Specification, and we
`determine that the claim language requires both the coded number and the
`telephone number or IP address to be in the same transmission. The relevant
`claim language is reproduced below:
`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.
`Ex. 1001, 12:44–52, 14:65–15:6, 16:11–19 (emphases added).
`In an example where the telephone number and the coded number are
`in different transmissions, there would be at least two transmissions. The
`transmission that includes the “at least one telephone number or IP address”
`is a single transmission and, therefore, the “at least one of the
`transmissions.”
`The independent claims recite that “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.” Ex. 1001,
`12:48–52, 15:2–6, 16:15–19 (emphasis added). Here, the emphasized phrase
`“the at least one of the transmissions” takes antecedent basis from the first
`recitation of “at least one of the transmissions,” which is the transmission
`10
`
`
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`within which the telephone number (or IP address) is included. Therefore,
`the processing module performs authentication “by determining that the at
`least one of the transmissions includes the coded number,” and “the at least
`one of the transmissions” is defined in the claim as the transmission within
`which the telephone number (or IP address) is included. As such, the
`independent claims require processing module authentication of one
`transmission that includes both the telephone number (or IP address) and the
`coded number. Certainly, the claims allow for the existence of more than
`one transmission, but there must be at least one transmission that contains
`both.
`
` Therefore, we determine that the claims require authentication of one
`transmission having both a coded number and a telephone number or IP
`address.6
`4. “numbers to which the programmable communicator device is
`configured to and permitted to send outgoing wireless transmissions”
`
`Patent Owner contends that the limitation of the independent claims
`reciting “numbers to which the programmable communicator device is
`configured to and permitted to send outgoing wireless transmissions” means
`that the “programmable communicator be configured to store in memory a
`list of telephone numbers or IP addresses that functions as an outbound
`restrictive calling list.” PO Resp. 13–14 (citing Ex. 2011 ¶¶ 38–397). Patent
`
`
`6 We adopt the same construction in related Case IPR2016-00055.
`7 This cited support for Patent Owner’s argument is the testimony of Patent
`Owner’s declarant, Joel R. Williams, that he “ha[s] been asked to assume by
`Patent Owner’s counsel that” this limitation requires an “outbound
`restrictive calling list.” Mr. Williams does not appear to testify separately as
`to why this claim interpretation is correct.
`11
`
`
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`Owner contends that the “permitted to” language of the claims dictates this
`construction, as allegedly evidenced by the prosecution history of the ’717
`patent. PO Resp. 14 n.5 (citing Ex. 2014, 10 (Supplemental Amendment,
`Nov. 8, 2013)).
`We disagree that the broadest reasonable interpretation of “configured
`to and permitted to” is as limited as Patent Owner proposes. During
`prosecution, the applicant stated:
`Applicants would like to thank the examiner for the
`telephone interview of November 8, 2013. During the interview,
`Examiner Nguyen suggested that it was not clear from the claim
`language that the programmable communicator device was
`permitted to send outgoing wireless transmissions to the stored
`telephone numbers or IP addresses. Applicant’s counsel and
`Examiner Nguyen then discussed amending the claims to add the
`language “and permitted to”. Examiner Nguyen indicated that
`the amendments would put the claims in condition for allowance.
`. . .
`As mentioned above, during the telephone interview of
`
`November 8, 2013, Examiner Nguyen suggested it was not clear
`from the claims that the programmable communicator device
`was permitted to send outgoing wireless transmissions the stored
`number(s). Although Applicants believe that “configured to,” in
`the context of the claim, meant the device was capable of and
`permitted to send outgoing wireless transmission, to expedite
`prosecution, Applicants have amended independent claims 1, 27
`and 32 to read “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....”
`Ex. 2014, 10.
`According to the prosecution history, therefore, the applicant added
`the language “permitted to” because the Examiner did not believe it was
`“clear” in the claims as written that the language “configured to” meant that
`12
`
`
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`the device was also “permitted to” call those numbers. There is no mention
`of restricting what numbers the device can call.
`Patent Owner also argues that Petitioner’s contentions implicitly
`acknowledge that the list must be restrictive. PO Resp. 15 (citing Pet. 32).
`However, Petitioner does not propose in this proceeding that the claim
`requires such a “restrictive” list. See Reply 5 (“Petitioners have merely
`stated that the FDN [fixed dialing number file] described in the prior art can
`function as a bar to limit calls to the list of numbers, but have not admitted
`that that is a requirement of the claims.”); see also Pet. 32 (citing Ex. 1004,
`80–83; Ex. 1013 ¶ 78) (“In particular, [the SIM Specification] discloses the
`fixed dialing number (FDN) file, which is a list of numbers or IP addresses
`to which a device associated with the SIM card is configured to and
`permitted to send messages.”).
`Furthermore, Patent Owner argues that the parties in district court
`litigation have agreed that the list is restrictive in nature. PO Resp. 14–15
`(citing Ex. 2010, 6 (Joint Claim Construction Statement filed on August 14,
`2015)). Patent Owner’s proposed construction in litigation is “[t]he set of
`numbers to which the programmable communicator is limited to sending one
`or more types of outgoing wireless transmissions.” Ex. 2010, 6. By
`contrast, the defendants’ proposed construction in litigation is “[t]he
`exclusive set of numbers to which the programmable communicator is
`limited to send any outgoing wireless transmissions.” Ex. 2010, 6.
`Therefore, the parties in district court litigation are not in agreement as to the
`scope of this claim term. The district court has not issued a claim
`construction ruling in the litigation. See Tr. 75:12–15, 76:12–18 (counsel
`for Petitioner representing that the district court has not issued a claim
`
`
`
`13
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`construction order in the litigation involving the ’717 patent and that the
`case is currently stayed).
`We have reviewed the Specification of the ’717 patent, and we do not
`find a definition of the “configured to and permitted to” language, nor do we
`find disclosure requiring this language to be interpreted as narrowly as
`Patent Owner proposes. For example, in the “Background of the Invention”
`section, the ’717 patent states: “Clearly there is a need to provide a means to
`limit the cost of calling and also to provide a means to prevent the child
`dialing overseas numbers for extensive periods of time.” Ex. 1001, 2:20–23
`(emphasis added). This passage describes a goal of controlling durations of
`calls to certain numbers, i.e., overseas calls, not completely blocking the
`sending of outgoing wireless transmissions to such numbers. Another
`passage states: “An improved child Hotlink communicator, which restricts
`the usage of the mobile phone and thereby does not generate high charges
`through uncontrolled calling, is clearly a solution to the family tariffing
`challenge.” Id. at 2:28–32. This also relates to “control” of calling, not
`necessarily blocking outgoing transmissions. We do not read these passages
`as the applicant acting as a lexicographer and defining the “configured to
`and permitted to” language in the claims.
`Other passages in the Specification of the ’717 patent describe
`rejecting incoming calls. Ex. 1001, Fig. 2 (step 4), 9:61–67, 10:8–11. For
`example, step 4 of Figure 2 states that, upon an incoming call,
`“programmable communicator is unable to verify that the caller is on the
`permitted callers list and the call is terminated.” Ex. 1001, Fig. 2. Such
`functionality, however, is addressed by the authentication limitations of the
`independent claims, wherein the processing module “authenticat[es] one or
`
`
`
`14
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`more wireless transmissions sent from a programming transmitter and
`received by the programmable communicator device.” The claims explicitly
`recite authentication of certain transmissions, i.e., those to store a telephone
`number or IP address as “numbers to which the programmable
`communicator device is configured to and permitted to send outgoing
`wireless transmissions.” These stored numbers may be a restricted list in the
`sense that they are only stored upon authentication of a single transmission
`having the telephone number or IP address and the coded number, as
`discussed above. However, the independent claims use permissive
`language—“permitted to”—rather than restrictive language to describe
`“outgoing wireless transmissions.”
`Based on the foregoing, we do not agree that Patent Owner’s proposed
`construction is the broadest reasonable interpretation of the phrase “numbers
`to which the programmable communicator device is configured to and
`permitted to send outgoing wireless transmissions.” Consistent with the
`applicant’s statements during prosecution, we interpret “numbers to which
`the programmable communicator device is configured to and permitted to
`send outgoing wireless transmissions” to mean “numbers to which the
`programmable communicator device is capable of sending outgoing wireless
`transmissions and permitted to send outgoing wireless transmissions.”8 See
`Ex. 2014, 10.
`
`5. “process data”
`
`The phrase “process data” is recited in independent claims 1, 24, and
`29 and in various dependent claims. Patent Owner argues that “the ’717
`
`
`8 We adopt the same construction in related Case IPR2016-00055.
`15
`
`
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`patent teaches that what it means to ‘process data’ is that the programmable
`communicator have the ability to make intelligent determinations that
`interpret the meaning of the data so that responsive actions can be taken as
`the result of those determinations.” PO Resp. 46 (citing Ex. 1001, 4:54–59,
`5:16–31, 7:56–58, 9:1–2, 9:16–21, 11:33–35, 11:42).
`The ’717 patent does not provide a definition of what it means to
`“process data.”9 The passages of the ’717 patent cited by Patent Owner do
`not demonstrate that such a narrowing interpretation of “process data”
`should be imposed on the challenged claims. Several of the cited passages
`do not even use either the word “data” or the word “process.” See Ex. 1001,
`4:54–59, 7:56–58, 9:1–2, 11:42. One passage cited by Patent Owner as
`support for its proposed construction states: “This device comprises a novel
`combination of existing technologies and features, which make possible the
`existence of a new and improved communicating apparatus to address the
`communication needs of children and elderly persons and for programmable
`data tags for monitoring the status of associated technical equipment.” Ex.
`1001, 9:16–21 (cited at PO Resp. 46). This passage does not support Patent
`Owner’s interpretation.
`Furthermore, the intrinsic record does not support Patent Owner’s
`attempt to exclude particular activity from the scope of data processing. In
`particular, Patent Owner argues that “the performance of routine low-level
`tasks such as merely formatting or packetizing data to facilitate its
`transmission over a wireless cellular network does not rise to the level of
`
`
`9 Counsel for Patent Owner confirmed that the ’717 patent does not provide
`a definition of processing data during the oral hearing in Case IPR2016-
`00055. IPR2016-00055, Paper 33, 57:11–16.
`16
`
`
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`data ‘processing’ within the intended meaning of the ‘717 patent.” PO
`Resp. 46. Patent Owner argues that the ’717 patent’s description of
`“react[ing] to a status condition” supports its proposed construction. PO
`Resp. 46 (citing Ex. 1001, 11:42). The context of that quote is provided by
`the full sentence in which it appears, which states that “[t]he remote
`monitoring application comprises the use of a programmable communicator,
`which reacts to a status condition and then initiates a packet data
`transmission to the network.” Ex. 1001, 11:40–43 (emphasis added). To the
`extent this passage informs a person of ordinary skill in the art as to the
`meaning of data processing, it suggests that “formatting or packetizing data
`to facilitate its transmission” is within the scope of data processing because
`packet data transmission would require first packetizing the data.
`Furthermore, dependent claim 6 recites that the programmable
`communicator device is “further configured to transmit the processed data
`to an at least one monitoring device.” (Emphasis added). This suggests that,
`as part of the procedure of making the data “processed data,” the data had
`been formatted or packetized to facilitate its transmission. The claim does
`not recite that the device is “configured to format the processed data and to
`transmit the formatted processed data.”
`We also note that Patent Owner’s proposed construction is unclear, as
`it does not explain in any detail what would or would not constitute
`“intelligent” determinations that “interpret” the meaning of data. We decline
`to adopt Patent Owner’s proposed construction that “configured to process
`data” means “hav[ing] the ability to make intelligent determinations that
`interpret the meaning of the data so that responsive actions can be taken as
`the result of those determinations.” PO Resp. 46. Furthermore, we disagree
`
`
`
`17
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`with Patent Owner’s contention that “routine low-level tasks such as merely
`formatting or packetizing data to facilitate its transmission over a wireless
`cellular network” are not within the scope of data processing. PO Resp. 46;
`see Reply 6–7. We determine that the phrase “process data” does not
`require further construction.
`6. Remaining Claim Terms
`We determine that no other claim terms require express construction
`in this proceeding.
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of non-
`obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`C. Level of Ordinary Skill in the Art
`In our Decision on Institution, we determined, based on the record at
`that time, that the skill level of a person of ordinary skill in the art, at the
`relevant time for the ’717 patent (May 2000), would have been “at least an
`undergraduate degree in Electrical Engineering and three years of experience
`working the development of wireless subscriber terminal systems or
`
`
`
`18
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
`
`components, or an equivalent combination of education and experience in
`related fields.” Dec. on Inst. 11 n.4 (citing Pet. 12; Ex. 1013 ¶ 31).
`In its Response, Patent Owner does not challenge this determination
`or offer its own proffered level of ordinary skill in the art. Patent Owner’s
`declarant, Mr. Williams, testifies:
`I have been informed by Patent Owne
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
