Paper 16
`Trials@uspto.gov
`571-272-7822 Entered: March 8, 2016
`
`
`
`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.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 8, 2016
`
`
`
`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.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-01823
`Patent 8,648,717 B2
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`
`I. INTRODUCTION
`Sierra Wireless America, Inc., Sierra Wireless, Inc., and RPX Corp.
`(collectively, “Petitioner”) filed a Petition requesting inter partes review of
`claims 1–3, 5–7, 10–24, 29, and 30 of U.S. Patent No. 8,648,717 B2 (“the
`’717 patent,” Ex. 1001). Paper 1(“Pet.”).1 M2M Solutions LLC (“Patent
`Owner”) timely filed a Preliminary Response. Paper 11 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a).
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides:
`THRESHOLD—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and
`any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`After considering the Petition, the Preliminary Response, and
`associated evidence, we conclude that Petitioner has demonstrated a
`reasonable likelihood of prevailing in showing unpatentability of claims 1, 3,
`5, 6, 10–13, 15–24, and 29 of the ’717 patent. Thus, we institute an inter
`partes review as to these claims.
`
`A. 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
`
`
`1 We note that the Petition improperly uses single-spacing and a smaller font
`in the footnotes. See 37 C.F.R. § 42.6(a)(2). We will consider the full
`Petition, however, as it is only 57 pages (less than the 60-page limit). The
`parties shall follow the formatting rules for papers going forward.
`2
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`patent, as well as matters involving ancestor patents of the ’717 patent. See
`Pet. 3; Paper 8.
`
`B. The ’717 Patent
`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 1 is reproduced below:
`
`
`
`A programmable communicator device comprising:
`1.
`programmable
`interface
`for
`establishing
`a
`a
`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 comprises a General Packet Radio
`Service (GPRS) or other wireless packet switched data message;
`and wherein the programmable communicator device is
`configured to process data received through the programmable
`
`
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`3
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`
`interface from the at least one monitored technical device in
`response to programming instructions received in an incoming
`wireless packet switched data message.
`
`C. References
`Petitioner relies upon the following references:
`Kail
`US 5,959,529
`Sept. 28 1999
`
`Ex. 1005
`
`Eldredge
`
`Whitley
`
`WO 95/05609
`
`Feb. 23, 1995
`
`Ex. 1006
`
`WO 99/49680 A1
`
`Sept. 30, 1999 Ex. 1003
`
`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)
`(hereinafter “SIM Specification”)2
`
`Dec. 1999
`
`Ex. 1004
`
`Excerpts from Expert Report by Dr. Ray W. Nettleton
`(hereinafter “Nettleton Report”)
`
`Ex. 1008
`
`
`
`
`2 Based on the current record, Petitioner has made a threshold showing that
`the SIM Specification is a prior art printed publication under 35 U.S.C.
`§ 102(b). See Pet. 5–6; Ex. 1013 ¶ 48; Kyocera Wireless Corp. v. ITC,
`545 F.3d 1340, 1350–51 (Fed. Cir. 2008) (holding that a “reference is
`publicly accessible ‘upon a satisfactory showing that such document has
`been disseminated or otherwise made available to the extent that persons
`interested and ordinarily skilled in the subject matter or art exercising
`reasonable diligence, can locate it,’” and analyzing a similar set of ETSI
`standard documents) (citation omitted). Patent Owner does not argue in its
`Preliminary Response that the SIM Specification does not qualify as a prior
`art printed publication.
`
`
`
`4
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`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–3, 5–7, 10–24, 29, and 30 of the ’717
`patent based on the asserted grounds of unpatentability set forth in the table
`below.3
`References
`Whitley and SIM Specification
`
`Claim(s) Challenged
`Basis
`§ 103(a) 1–3, 5–7, 10–15, 18, 22–24,
`29, and 30
`§ 103(a) 1–3, 5–7, 10–15, 18, 22–24,
`29, and 30
`§ 103(a) 16, 17, 19, and 20
`
`§ 103(a) 21
`
`Whitley, SIM Specification, and
`Nettleton Report
`Whitley, SIM Specification, and
`Kail
`Whitley, SIM Specification, and
`Eldredge
`
`
`
`II. ANALYSIS
`A. 35 U.S.C. § 325(d)
`Patent Owner argues that the Petition should be denied under
`35 U.S.C. § 325(d) because Whitley and the SIM Specification, which are
`relied upon for all unpatentability challenges in this Petition, were
`considered during prosecution. Prelim. Resp. 4–9. We are not persuaded
`that the Petition should be denied on this basis. Although Patent Owner
`provides evidence to indicate that the references were of record during the
`
`
`3 Petitioner’s statement of relief requested identifies the challenged claims as
`claims 1–3, 5–7, 10–24, 29, and 30 (Pet. 4), and these are the claims for
`which Petitioner presents evidence and argument in the Petition. Petitioner’s
`statement that it “requests that claims 1–7 and 10–30 of the ‘717 patent be
`canceled based on the following grounds” (Pet. 6) appears to be a
`typographical error because Petitioner has not offered evidence or argument
`challenging claims 4 and 25–28. Accordingly, we do not consider these
`claims to be at issue.
`
`
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`prosecution, Patent Owner has not directed us to anywhere in the record
`showing a substantive discussion of these references, or that the Examiner
`considered a challenge to the claims in the same or substantially the same
`manner presented in the Petition. See Ex. 1001, 2, 3; Ex. 1002, 123, 127
`(cited at Prelim. Resp. 5–7). Thus, we are not persuaded by Patent Owner’s
`assertion that “Petitioners and their expert do not supplement the underlying
`record with respect to” these references. Prelim. Resp. 8.
`B. Claim Construction
`1. Parties’ Proposed Constructions
`Petitioner proposes constructions for the terms “coded number,”
`“identity module,” and “programming transmitter,” and proposes
`“programmable interface” be given its plain and ordinary meaning. Pet.
`13–16. Patent Owner contends that Petitioner’s proposed constructions for
`the terms “identity module” and “programming transmitter” are incorrect,
`but Patent Owner does not propose its own constructions for these terms.
`Prelim. Resp. 2–3.
`Based on Petitioner’s unpatentability challenges and Patent Owner’s
`arguments, we determine that these terms need not be construed explicitly at
`this time.
`
`2. “Processing module for authenticating”
`On December 15, 2015, we authorized the parties to file supplemental
`briefs addressing the issue of whether or not the limitation of independent
`claims 1, 24, and 29 reciting “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” should be interpreted as a
`
`
`
`6
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`means-plus-function limitation under 35 U.S.C. § 112, ¶ 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 argue that the limitation should not be interpreted as a means-
`plus-function limitation under 35 U.S.C. § 112, ¶ 6. Paper 13; Paper 14
`(citing Ex. 2002, a district court decision regarding a similar term in a
`related patent). Based on the current record, we are not persuaded that the
`presumption against application of 35 U.S.C. § 112, ¶ 6 has been overcome,
`and we determine that the limitation need not be construed further at this
`time. 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).
`3. “Single Transmission”
`Patent Owner argues 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 id. at 32–33.
`We disagree with Patent Owner’s claim interpretation because the
`claims do not recite a “single transmission” requirement and the language of
`
`
`
`7
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`the claims does not dictate such a requirement. The “processing module”
`limitation explicitly recites “authenticating one or more wireless
`transmissions . . . by determining if at least one transmission contains a
`coded number.” The plain language of this limitation, therefore, states that
`transmissions (“one or more”) can be authenticated if “at least one” has a
`coded number. It does not require that each transmission contain a coded
`number to be authenticated.
`Patent Owner argues that “[t]his ‘single transmission’ requirement is
`evident from the claim language itself which expressly recites that the
`authentication must be performed on an ‘at least one of the transmissions
`including the at least one telephone number or IP address and the coded
`number.’” Prelim. Resp. 24–25. We disagree that this language supports
`Patent Owner’s “single transmission” construction. Claim 1 (emphasis
`added) recites:
`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.
`
`
`
`8
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`The first recitation of “at least one of the transmissions” above dictates that
`there may be a single transmission or multiple transmissions. The claim
`then recites in two instances “the at least one of the transmissions,” taking
`antecedent basis from the previous recitation. If there are multiple
`transmissions, we see no reason why the “at least one telephone number or
`IP address and the coded number” need to be in a single transmission, as
`Patent Owner contends. For example, a telephone number could be included
`in one transmission and a coded number in another transmission, such that
`both are the recited “at least one of the transmissions.” The processing
`module authenticates by determining if either of the transmissions includes
`the coded number.
`Although the scope of the claims encompasses Patent Owner’s
`proffered construction, the claims are not limited to Patent Owner’s
`construction. Accordingly, on the record before us, we do not agree with
`Patent Owner’s interpretation of the independent claims as including a
`“single transmission” requirement.
`4. Remaining Claim Terms
`We determine that no other claim terms require express construction
`at this time.
`
`C. References
`1. Whitley
`Whitley is directed to “remotely monitoring and controlling via a
`wireless network various devices deployed in homes and businesses.” Ex.
`1003, Abstract. Whitley teaches:
`[G]ateways are configured to collect data, such as data describing
`use of electric power or other utilities by the particular facility at
`which they are located or data describing the status of various
`
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`sensors after arming of a security system. Also, gateways may
`be coupled to various devices within the facility in order to
`control the devices. For instance, gateways may control the
`lights within a facility according to a pre-programmed pattern
`that the user may change by communicating new commands via
`the present invention. Or, gateways may be configured remotely
`to receive commands and data, which allows remote control over
`the devices (e.g., home appliances or electronics) with which the
`gateway may communicate. Each uniquely addressable gateway
`includes a transceiver capable of communicating over a wireless
`network.
`Id. at 3:4–14. Whitley further teaches that “gateway 20 may be a [Global
`System for Mobile Communications (GSM)] device that allows transfer of
`data, facsimile or e-mail messages, but which does not have voice capability.
`These messages can be formulated and read by a SIM or ‘Subscriber Identity
`Module’ card that can be plugged in or otherwise incorporated into gateway
`20.” Id. at 9:14–17.
`
`2. SIM Specification
`The SIM Specification “defines the interface between [a] Subscriber
`Identity Module (SIM) and [a] Mobile Equipment (ME) for use during the
`network operation phase of GSM as well as those aspects of the internal
`organization of the SIM which are related to the network operation phase.”
`Ex. 1004, 9.
`
`3. Kail
`Kail “relates to a portable, real-time, reprogrammable sensor
`monitoring system” and “provides an apparatus and a method for remotely
`monitoring the status of a living or an inanimate subject.” Ex. 1005, 1:6–7,
`1:60–62.
`
`
`
`10
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`4. Eldredge
`Eldredge relates to “systems for monitoring the operation of one or
`more remote vending machines and transmitting data from the remote
`vending machines to a central computer system.” Ex. 1006, 1:5–8.
`
`
`D. Unpatentability Challenge based on the Combination of
`Whitley and the SIM Specification
`(Claims 1–3, 5–7, 10–15, 18, 22–24, 29, 30)
`
`
`
`1. Claim 1
`Petitioner contends that the subject matter of independent claim 1
`would have been obvious over the combination of Whitley and the SIM
`Specification, providing analysis and arguments to explain how the cited
`prior art references allegedly teach the claimed subject matter. Pet. 17–38.4
`a. “Programmable communicator device” having a
`“programmable interface”
`
`Claim 1 is directed to a “programmable communicator device” having
`“a programmable interface for establishing a communication link with at
`least one monitored technical device, wherein the programmable interface is
`programmable by wireless packet switched data messages.” Petitioner
`contends Whitley’s “gateway” teaches a “programmable communicator
`device” having a “programmable interface” as claimed. Pet. 17–23.
`
`
`4 Based on the current record, we agree with Petitioner 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 components, or an equivalent
`combination of education and experience in related fields.” Pet. 12; Ex.
`1013 ¶ 31.
`
`
`
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`Petitioner contends the gateway is wirelessly programmable because users
`can control and monitor the gateway via a wireless network. Id. at 17 (citing
`Ex. 1003, 3:3–14); see Ex. 1003, 3:10–14 (“[G]ateways may be configured
`remotely to receive commands and data, which allows remote control over
`the devices (e.g., home appliances or electronics) with which the gateway
`may communicate. Each uniquely addressable gateway includes a
`transceiver capable of communicating over a wireless network.”). In
`support of its argument that the gateway is a wirelessly programmable
`communicator device, Petitioner cites Whitley’s teachings that the gateway
`may be programmed remotely by wireless messages, such as short
`messaging service (“SMS”) messages, and that the gateway “processes the
`contents of the SMS message as though it was entered directly from a
`command console.” Ex. 1003, 9:23–25 (cited at Pet. 20).
`Petitioner also contends Whitley teaches “a programmable interface
`for establishing a communication link with at least one monitored technical
`device, wherein the programmable interface is programmable by wireless
`packet switched data messages.” Pet. 20–22. Petitioner argues Whitley
`teaches that “gateway 20 includes a physical interface in communication
`with local devices it monitors,” citing Whitley’s teachings that “[t]he term
`‘gateway’ includes any device that (a) provides a physical interface between
`internal devices associated with a particular facility 12 and external
`networks” and that “gateways 20 may couple to a remote facility 12 and may
`monitor, control or both monitor and control various devices within the
`facility 12, such as lights, security sensors, an answering machine, a home
`computer, etc.” Pet. 20 (quoting Ex. 1003, 8:27–9:3) (emphasis omitted).
`
`
`
`12
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`Petitioner argues that Whitley teaches that the interface is
`“programmable,” citing Whitley’s teaching that “[g]ateway 20 is
`programmed to poll each device coupled to it to determine the device’s
`energy use” (Ex. 1003, 16:20–21). Pet. 21. Petitioner also argues “Whitley
`further discloses the ability to wirelessly program the local devices
`connected through the interface by SMS messages.” Pet. 21 (citing Ex.
`1003, 9:23–25, 16:9–12, 17:1–5). Petitioner also argues Whitley teaches
`sending messages to gateway 20 using a General Packet Radio System
`(“GPRS”) network, which Petitioner contends is a packet-switched data
`network. Id. (citing Ex. 1003, 14:22–27; Ex. 1009, 13–14). Petitioner
`contends that “[c]ommands or messages sent over the GPRS network as
`SMS messages or GPRS data packets, such as those described in Whitley,
`are wireless packet switched data messages.” Id. at 22 (citing Ex. 1013
`¶ 77).
`
`Patent Owner argues “Petitioners have not cited to any disclosure in
`Whitley regarding what types of interfaces, if any, would be used to connect
`gateway 20 with these various examples of ‘monitored technical devices’”
`and that “Whitley merely contains vague statements that some undisclosed
`kind of ‘physical interface’ would allow gateway 20 to ‘couple to’ such
`devices in some undisclosed manner.” Prelim. Resp. 18. As such, Patent
`Owner argues Petitioner has not shown “that any interface associated with
`the gateway can be programmed wirelessly.” Id. at 19.
`On the current record, we are not persuaded by Patent Owner’s
`arguments that Whitley does not teach a “programmable interface” “within
`the meaning of the patent.” See Prelim. Resp. 23. Petitioner’s explanation
`as to why Whitley teaches a “programmable interface” is sufficient at this
`
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`stage of the proceeding. Further, although Patent Owner argues that Whitley
`consists of “vague statements” (Prelim. Resp. 18), we note that the ’717
`patent provides little detail regarding a “programmable interface” as well.
`The term “programmable interface” appears only twice in the written
`description of the ’717 patent, and only in the following passage, referring to
`Figure 1:
`An SMS alarm generation means 70 is provided to work together
`with a battery charge monitor 35 and a sensor means 80 and an
`alarm message list 120 and a programmable interface means 140
`to generate alarm messages in response to changes in status
`conditions. Said programmable interface means may be
`attached to all manner of sensor devices for the purpose of
`relaying data from external devices and sensors either
`automatically or in response to a request for information from a
`remote device.
`Ex. 1001, 8:65–9:6 (emphases added). Figure 1 depicts “programmable
`interface means 140” as a box connected to three other boxes labeled
`“periodic status report generation means 130,” “SMS alarm generation
`means 70,” and “telephone circuit 10.”
`As such, based on the record before us, we are persuaded Petitioner
`has demonstrated sufficiently that Whitley teaches a “programmable
`communicator device” having “a programmable interface for establishing a
`communication link with at least one monitored technical device, wherein
`the programmable interface is programmable by wireless packet switched
`data messages.”
`
`b. “Processing module for authenticating”
`
`Claim 1 further recites that the “programmable communicator device”
`has “a processing module for authenticating one or more wireless
`transmissions sent from a programming transmitter and received by the
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`programmable communicator device by determining if at least one
`transmission contains a coded number.” Petitioner argues that the
`combination of Whitley and the SIM Specification teaches this limitation.
`Pet. 23–29.
`Petitioner argues Whitley teaches that the gateway can include a SIM
`card and can read SMS messages using the SIM card. Id. at 23–24 (citing
`Ex. 1003, 9:15–25, 15:26–16:6, 16:9–12, 16:15–18; Ex. 1013 ¶¶ 78–80).
`Petitioner then acknowledges that “Whitley does not expressly disclose
`authenticating wireless transmissions by determining if at least one of the
`wireless transmissions contains a coded number” (id. at 25) and argues that
`the SIM Specification teaches this limitation (id. at 25–29).
`With respect to the SIM Specification, Petitioner contends that the
`SIM Specification discloses different security features involving wireless
`transmissions using a coded number. Id. at 25 (citing Ex. 1004, 26–28
`(section 7 entitled “Security features”)). In particular, Petitioner argues
`“[t]he fixed dialing number (FDN) file is one exemplary file that is stored in
`memory on the SIM card and that requires processor authentication in order
`to update the file.” Id. (citing Ex. 1013 ¶ 79). Petitioner argues that “the
`CHV2 value and the UNBLOCK CHV2 (or PUK2 code) are coded numbers
`that, when contained in an SMS transmission, allow the gateway’s processor
`to authenticate the transmission in the GSM network by comparing the
`received code with the code stored in the SIM.” Pet. 27 (citing Ex. 1004, 13,
`28, 31–33, 83 98; Ex. 1013 ¶ 79). Petitioner explains that the SIM
`Specification recites conditions for utilizing commands that require CHV2
`access, citing the following disclosure in the SIM Specification:
`
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`CHV2: The action shall only be possible if one of the following
`two conditions is fulfilled:
`-
`a correct CHV2 value has already been presented to the
`SIM during the current session;
`-
`UNBLOCK CHV2 has been successfully performed
`during the current session.
`Ex. 1004, 28 (emphasis omitted).
`Petitioner argues that a person of ordinary skill in the art would have
`had reason to combine the teachings of Whitley and the SIM Specification
`because “Whitley expressly describes using standard GSM features to
`provide the necessary functionality for sending messages to and from
`gateways 20.” Pet. 27 (citing Ex. 1003, 9:10–13). In particular, Petitioner
`cites Whitley’s explicit teaching of using a SIM card for operating in a GSM
`network. Id. at 27–28 (citing Ex. 1003, 9:12–25, 12:9–12). Whitley
`teaches:
`Gateway 20 sends and receives SMS messages via and as part of
`the architecture of a GSM network. For instance, gateway 20
`may be a GSM device that allows transfer of data, facsimile or e-
`mail messages, but which does not have voice capability. These
`messages can be formulated and read by a SIM or “Subscriber
`Identity Module” card that can be plugged in or otherwise
`incorporated into gateway 20.
`Ex. 1003, 9:12–17. Whitley further teaches that “[b]y taking advantage of
`the SMS services provided in a GSM network, the network functionality
`required for forwarding short data messages to and from gateways 20 need
`not be developed from scratch.” Id. at 12:17–20.
`Petitioner contends that combining the teachings of the SIM
`Specification regarding authentication with the teachings of Whitley “would
`yield predictable results – that the wireless messages would be authenticated
`
`
`
`16
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`IPR2015-01823
`Patent 8,648,717 B2
`
`as described in” the SIM Specification. Pet. 28–29 (citing Ex. 1013 ¶ 82).
`Petitioner also argues that Whitley provides “a specific teaching, suggestion,
`and motivation” to combine the teachings of Whitley and the SIM
`Specification. Id. at 29 (citing Ex. 1013 ¶ 83; Ex. 1003, 12:17–205).
`Patent Owner argues that Petitioner’s obviousness analysis is
`inadequate and, therefore, the proffered combination of Whitley and the SIM
`Specification should be rejected. Prelim. Resp. 11–12, 15, 33–35. First,
`Patent Owner argues “the petition is silent as to what differences there are
`between the subject matter of any of the claims and either Whitley and/or the
`SIM [Specification]” and, therefore, Petitioner has not articulated the
`differences between the claimed invention and the prior art. Id. at 12. On
`this record, we disagree because, as noted above, Petitioner specifically
`acknowledges “Whitley does not expressly disclose authenticating wireless
`transmissions by determining if at least one of the wireless transmissions
`contains a coded number.” Pet. 25. Therefore, Petitioner has articulated at
`least some difference between Whitley and the subject matter of claim 1.
`Patent Owner also argues Petitioner has not provided an adequate
`rationale to combine Whitley and the SIM Specification. Prelim. Resp. 15,
`33–35. For example, Patent Owner argues Petitioner has not supported its
`assertion that “there is a specific teaching, suggestion, and motivation in
`Whitley that would have led one of ordinary skill to modify Whitley with the
`SIM [Specification].” Id. at 35 (quoting Pet. 34). On this record, we
`disagree because, as explained above, Petitioner cites Whitley’s express
`
`
`5 Petitioner mistakenly cites Ex. 1003 at 12:9–12 for the quoted material.
`17
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`IPR2015-01823
`Patent 8,648,717 B2
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`teachings of using a SIM card in the gateway. See Pet. 27–29 (citing Ex.
`1003, 9:12–25, 12:17–20).
`On the current record, we are persuaded Petitioner has provided
`sufficient articulated reasoning to support the combination of Whitley and
`the SIM Specification, particularly Whitley’s explicit teaching of
`incorporating a SIM card into the gateway of Whitley. Ex. 1003, 9:15–17.
`c. “Store at least one telephone number or IP address”
`
`Claim 1 further recites:
`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.
`Petitioner contends the combination of Whitley and the SIM
`Specification teaches this limitation. Pet. 29–34. Petitioner argues Whitley
`teaches the gateway can be programmed to send messages to particular
`devices, such as handset 32. Id. at 30 (citing Ex. 1003, 17:7–14). Petitioner
`argues Whitley also teaches sending SMS messages to and from gateways
`using standard GSM functionality and sending packet messages using
`GPRS. Id. at 31–32 (citing Ex. 1003, 5:15–6:14, 14:1–2, 14:26–27, 15:14–
`15). Petitioner then acknowledges that “Whitley does not explicitly disclose
`how the gateway 20 updates or stores the telephone number or IP addresses
`that it is configured to and permitted to send outgoing wireless
`
`
`
`18
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`IPR2015-01823
`Patent 8,648,717 B2
`
`transmissions” and argues that the SIM Specification’s disclosure of
`updating a fixed dialing number (FDN) file teaches these limitations. Id. at
`32.
`
`Petitioner argues that the FDN file “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.” Pet. 32 (citing Ex. 1004 at 80–83; Ex.
`1013 ¶ 78). Petitioner then argues that the SIM Specification teaches how
`the FDN file is updated. Id. (citing Ex. 1004 at 30, 38, 41, 83, 98, 104, and
`131; Ex. 1013 ¶¶ 79–83, 96–97). Petitioner argues that the SIM
`Specification teaches that the FDN file can be updated via an SMS message,
`which can be sent over a GPRS network. Id. at 33 (citing Ex. 1004 at 131;
`Ex. 1013 ¶ 77). Petitioner argues that the command to update the FDN file
`would be authenticated as described in the discussion of the “processing
`module for authenticating” limitation, using a CHV2 or PUK2 code. Id. at
`32–33. Petitioner contends it would have obvious to combine these
`teachings of the SIM Specification with Whitley for the same reasons
`discussed above with respect to the “processing module for authenticating”
`limitation. Id. at 33–34.
`Patent Owner argues that this limitation of claim 1 recites at least
`“three principal requirements”: (1) “stor[ing] in memory a list of telephone
`numbers or IP addresses that functions as an outbound restric
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