Paper 9
`Trials@uspto.gov
`571-272-7822 Entered: April 22, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TELIT WIRELESS SOLUTIONS INC. and
`TELIT COMMUNICATIONS PLC,
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00054
`Patent 8,648,717 B2
`____________
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: April 22, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TELIT WIRELESS SOLUTIONS INC. and
`TELIT COMMUNICATIONS PLC,
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00054
`Patent 8,648,717 B2
`____________
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-00054
`Patent 8,648,717 B2
`
`
`I. INTRODUCTION
`Telit Wireless Solutions Inc. and Telit Communications PLC
`(collectively, “Petitioner”) filed a Petition (“Pet.”) requesting inter partes
`review of claims 1–30 of U.S. Patent No. 8,648,717 B2 (“the ’717 patent,”
`Ex. 1001), which are all of the claims of the ’717 patent. Paper 1. M2M
`Solutions LLC (“Patent Owner”) timely filed a Preliminary Response.
`Paper 8 (“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.
`
`Upon consideration of the information presented in the Petition and
`the Preliminary Response, we are not persuaded that Petitioner has
`established a reasonable likelihood that it would prevail in its challenges to
`claims 1–30 of the ’717 patent. Accordingly, we decline to institute an inter
`partes review of those 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
`patent, as well as matters involving ancestor patents of the ’717 patent. See
`Pet. 1–2; Paper 5. Petitioner concurrently filed another Petition for inter
`
`
`
`2
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`IPR2016-00054
`Patent 8,648,717 B2
`
`partes review challenging claims 1–30 of the ’717 patent. Pet. 3; IPR2016-
`00055.
`
`B. 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 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
`
`
`
`3
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`IPR2016-00054
`Patent 8,648,717 B2
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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. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`Wandel
`US 6,034,623
`Mar. 7, 2000
`
`Ex. 1013
`
`US 6,038,491
`
`Mar. 14, 2000 Ex. 1025
`
`McGarry et al.
`(hereinafter “McGarry”)
`
`Boden et al.
`(hereinafter “Boden”)
`
`US 6,182,228 B1
`
`Fernandez et al.
`(hereinafter “Fernandez”)
`
`US 6,697,103 B1
`
`Ex. 1027
`
`Jan. 30, 2001
`(filed Aug. 17,
`1998)
`Feb. 24, 2004
`(filed Mar. 19,
`1998)
`Sept. 30, 1999 Ex. 1026
`
`Ex. 1023
`
`Whitley
`
`Sonera
`
`WO 99/49680
`
`WO 00/14984
`
`Mar. 16, 2000 Ex. 1019
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–30 of the ’717 patent based on the
`asserted grounds of unpatentability set forth in the table below.
`Reference(s)
`Basis
`Claim(s) Challenged
`Wandel
`§ 102(b) 1–3, 5–15, 18, and 23–28
`Wandel and Sonera
`§ 103(a) 4
`Wandel and Fernandez
`§ 103(a) 16, 17, 19, 20, and 22
`Wandel and McGarry
`§ 103(a) 21
`Wandel and Whitley
`§ 103(a) 29 and 30
`Wandel and Boden1
`§ 103(a) 1–3, 5–15, 18, and 23–28
`Wandel, Boden, and Sonera
`§ 103(a) 4
`Wandel, Boden, and Fernandez
`§ 103(a) 16, 17, 19, 20, and 22
`
`1 Petitioner proposes the challenges based on Boden as alternative grounds
`to address the possibility of a narrower claim construction. Pet. 4–5, 55–58.
`4
`
`
`
`
`
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`IPR2016-00054
`Patent 8,648,717 B2
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`
`Wandel, Boden, and McGarry
`Wandel, Boden, and Whitley
`
`§ 103(a) 21
`§ 103(a) 29 and 30
`
`II. CLAIM CONSTRUCTION
`Petitioner and Patent Owner propose constructions for two terms of
`the ’717 patent. Pet. 8–11; Prelim. Resp. 2–5. Based on Petitioner’s
`unpatentability challenges, we determine that these terms, as well as all
`remaining terms, need not be construed explicitly at this time.
`III. ANALYSIS
`Petitioner contends that Wandel anticipates independent claims 1
`and 24 and that the combination of Wandel and Whitley renders obvious
`claim 29. Pet. 12–25, 35–36, 51–54. Petitioner further contends that the
`combination of Wandel and Boden renders obvious claims 1 and 24, and the
`combination of Wandel, Boden, and Whitley renders obvious claim 29.
`Pet. 55–58. All of the asserted grounds of unpatentability in this Petition
`rely on Wandel as allegedly disclosing storing an IP address, as recited in
`independent claims 1, 24, and 29. See id. at 21–22, 36, 51–53, 55–58.
`A. Wandel
`Wandel discloses a radio modem for a Mobitex network having “a
`stored autonomous radio telemetry (ART) program that converts the otherwise
`general purpose radio modem into a special purpose radio telemetry device.”
`Ex. 1013, 4:29–37, 5:44–47. Wandel discloses that “the ART program
`reconfigures the serial port of the radio modem from a standard Mobitex
`MASC [(Mobitex Asynchronous Protocol)] protocol to a general purpose
`input/output system that supports TTL logic, simple switches, and an I2C bus.”
`Id. at 5:52–56.
`
`
`
`5
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`
`B. “Store at least one telephone number or IP address”
`Claims 1, 24, and 29 recite (emphasis added):
`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 argues that Wandel discloses IP addresses as part of an
`alleged “IP-based CDPD [cellular digital packet data] network.” Pet. 21–22.
`First, Petitioner argues:
`The ART radio modem receives ART command packets that
`programs the “destination addressing for log packets.” Ex. 1013
`10:20-26. Wandel disclosed a CDPD network, Id. 4:40, which
`is an Internet Protocol (IP) network, Ex. 1015, 444:2-3. The
`addresses of devices in an IP network are referred to as “IP
`addresses,” Ex. 1001, 9:32-34, so a “destination address[]” in
`Wandel’s CDPD network is an IP address. Ex. 1005 ¶106.
`Id. at 21 (brackets in original). Petitioner then argues that
`the destination IP address must have been stored in memory in
`order to address each log packet to its destination. Id. 4:59-63;
`Ex. 1005 ¶108, citing Ex. 1018, 11, Fig. 4, showing that the
`headers of all IP packets include the “Destination Address” in
`Wandel’s IP-based CDPD network. Ex. 1013 4:40; Ex. 1015
`444:2-3.
`Id. at 22.
`
`
`
`6
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`
`Petitioner has not directed us to any express disclosure in Wandel of
`storing an IP address in the disclosed radio modem. In support of its
`argument, Petitioner cites the following passage from Wandel:
`The ART Configuration Command
`packet
`contains
`configuration data for all of ART except the auxiliary state
`machine. This packet includes configuration data for the three
`intrinsic state machines 204–208, the I2C I/O subsystem 200,
`210, 212, as well as global ART parameters such as state
`machine iteration rate, destination addressing for log packets,
`automatic packet triggering, log flags, etc.
`Ex. 1013, 10:20–26 (emphasis added). Although this passage discloses
`“destination addressing for log packets,” Wandel’s disclosure is directed to a
`radio modem deployed in a Mobitex network, as Patent Owner correctly
`notes. Prelim. Resp. 21 (citing Ex. 1013, 4:29–37).
`Petitioner does not assert that addresses in the Mobitex network are IP
`addresses. Rather, Petitioner asserts Wandel discloses “a CDPD network,
`[Ex. 1013,] 4:40, which is an Internet Protocol (IP) network, Ex. 1015,
`444:2-3.” Pet. 21. Therefore, according to Petitioner, “a ‘destination
`address[]’ in Wandel’s CDPD network is an IP address.” Id. at 21 (citing
`Ex. 1005 ¶ 106). Petitioner also refers to “Wandel’s IP-based CDPD
`network” (id. at 22) and argues that “Wandel’s radio modem communicated
`over the CDPD network” (id. at 23 (citing Ex. 1013, 4:40)).
`Petitioner has not proffered sufficient evidence to persuade us that
`Wandel’s CDPD network is an “IP-based CDPD network” or that Wandel
`teaches storing an IP address in the context of such a network.
`As an initial matter, we agree with Petitioner that Wandel mentions CDPD
`(cellular digital packet data), albeit only in a list of networks. See Ex. 1013,
`4:38–40 (“There are many types of radio networks currently in widespread
`
`
`
`7
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`
`IPR2016-00054
`Patent 8,648,717 B2
`
`use, such as Ardis, Mobitex, GSM, SMR, PCS, analog cellular, CDPD,
`etc. . . .”).
`Petitioner’s arguments that the CDPD network mentioned in Wandel
`is an “IP-based CDPD network” and uses IP addresses, however, are not
`sufficiently supported by the evidence of record. See Pet. 21–22. First, as
`mentioned above, CDPD is mentioned once within Wandel, but Wandel
`does not identify it as an IP-based CDPD network. In support of its
`assertion that CDPD is an IP network, Petitioner cites two lines from a book
`entitled Broadband Networking. See Pet. 21 (citing Ex. 1015, 444:2–3).
`Although the cited lines state that “CDPD supports the Internet protocol
`(IP)” (Ex. 1015, 444:2–3), Patent Owner correctly notes that the same
`reference states that CDPD supports other protocols. Prelim. Resp. 22
`(citing Ex. 1015, 443–44). The larger passage from Broadband Networking,
`in which the two lines cited by Petitioner appear, provides additional
`context, and reads as follows:
`Protocol Support. CDPD can be used in conjunction with most
`existing connectionless networking protocols and supports
`several of
`the
`leading open networking architectures.
`Specifically, CDPD supports
`the connectionless network
`services (CLNS) protocol, which routes each packet individually
`according to its destination.
`The CLNS protocol is a centerpiece of the Open Systems
`Interconnection (OSI) architecture. The design of many CDPD
`systems uses another OSI protocol, the X.400 messaging
`standard, to pass data to the accounting and billing applications.
`In addition, CDPD supports the Internet protocol (IP), which in
`turn supports many Internet-related applications and protocols,
`such as the World Wide Web, the simple mail transfer protocol,
`and the file transfer protocol.
`
`
`
`8
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`IPR2016-00054
`Patent 8,648,717 B2
`
`Ex. 1015, 443–44 (emphasis removed). Although this reference states that
`CDPD supports the Internet protocol, it makes clear that CDPD supports
`other protocols as well.
`Petitioner also cites the Declaration of Kimmo Savolainen
`(“Savolainen Declaration”) (Ex. 1005) in support of its argument that
`Wandel discloses a radio modem that operates in an IP-based CDPD
`network and stores IP addresses. See Pet. 21–23 (citing Ex. 1005 ¶¶ 106,
`108, 110, 111). The cited portions of the Savolainen Declaration are largely
`identical to corresponding passages in the Petition. Compare Pet. 21–23,
`with Ex. 1005 ¶¶ 106–11. Similar to the Petition, the Savolainen
`Declaration asserts that “Wandel’s radio modem communicated over the
`CDPD network” (Ex. 1005 ¶ 110 (citing Ex. 1013, 4:40), even though, as
`explained above, Wandel explicitly states that the disclosed radio modem
`operates on the Mobitex network. See Ex. 1013, 4:29–37. The Savolainen
`Declaration also asserts that the CDPD network mentioned in Wandel “is an
`Internet Protocol (IP) network.” Ex. 1005 ¶ 106 (citing Ex. 1013, 4:40; Ex.
`1015, 444:2–3). However, the underlying evidence, discussed above,
`establishes that CDPD supports several protocols, including the Internet
`protocol. See Ex. 1015, 443–44. The Savolainen Declaration does not
`sufficiently explain why a person of ordinary skill in the art would recognize
`that the CDPD network mentioned in Wandel is an IP-based network.
`The Savolainen Declaration asserts that a destination IP address
`would have been included in the headers of IP packets. Ex. 1005 ¶ 108
`(citing Ex. 1018). With respect to storing IP addresses, the Savolainen
`Declaration cites Wandel’s disclosures regarding destination addresses in
`Mobitex network packets. Ex. 1005 ¶ 108 (citing Ex. 1013, 4:59–63, 9:60–
`
`
`
`9
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`IPR2016-00054
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`
`64, 10:20–26). Referring to Wandel column, 4, lines 59–63, the Savolainen
`Declaration then states: “While this section refers to Mobitex packets
`(MPAKs), the same is true for all IP-based networks including Wandel’s
`CDPD network ([Ex. 1013,] 4:40, Ex. 1015, 444:2–3). That is, the
`destination address would have been included in the headers of all IP
`packets in Wandel’s CDPD network.” Ex. 1005 ¶ 108 (citing Ex. 1018, 11,
`Fig. 4). Although the evidence supports the proposition that, in an IP-based
`network, IP addresses would have been used, this evidence is insufficient to
`demonstrate that a person of ordinary skill in the art would view Wandel as
`disclosing a radio modem operating in an IP-based CDPD network,
`especially in view of Wandel’s express disclosure that the described radio
`modem is operable in a Mobitex network. Ex. 1013, 4:29–37.
`To anticipate, “[t]here must be no difference between the claimed
`invention and the reference disclosure, as viewed by a person of ordinary
`skill in the field of the invention.” Scripps Clinic & Res. Found. v.
`Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991), overruled on other
`grounds by Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009).
`Petitioner has not proffered sufficient evidence to persuade us that Wandel,
`as viewed by a person of ordinary skill in the art, discloses an “IP-based
`CDPD network” or that “Wandel’s radio modem communicated over the
`CDPD network,” such that the “destination address[es] for log packets”
`disclosed in Wandel would have been IP addresses. Pet. 22–23.
`To the extent Petitioner alleges that Wandel inherently discloses IP
`addresses because it mentions CDPD, we are not persuaded. The Federal
`Circuit has stated:
`
`
`
`10
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`IPR2016-00054
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`
`
`[t]o establish inherency, the extrinsic evidence must make clear
`that the missing descriptive matter is necessarily present in the
`thing described in the reference, and that it would be so
`recognized by persons of ordinary skill. Inherency, however,
`may not be established by probabilities or possibilities. The mere
`fact that a certain thing may result from a given set of
`circumstances is not sufficient.
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
`quotation marks omitted). As Patent Owner correctly notes, the evidence of
`record makes clear that CDPD networks support several protocols, only one
`of which is the Internet protocol. Prelim. Resp. 22–23 (citing Ex. 1014,
`10:1–82; Ex. 1015, 443–44). Therefore, a device operating in a CDPD
`network may or may not have employed IP addresses.
`Because the evidence of record shows that CDPD supports the
`Internet protocol and other protocols, we are not persuaded that the
`disclosure of CDPD necessarily implicates the use of IP addresses.
`Therefore, we are not persuaded that Wandel’s mention of CDPD inherently
`discloses the use of IP addresses.
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
`628, 631 (Fed. Cir. 1987). Based on the record before us, we are not
`persuaded Petitioner has demonstrated Wandel discloses, either expressly or
`inherently, storing an IP address, as required by the independent claims.
`Finally, to the extent Petitioner is arguing that a person of ordinary
`skill in the art would have understood Wandel to teach storing IP addresses
`
`
`2 Patent Owner mistakenly cites the right column for this disclosure.
`11
`
`
`
`
`
`IPR2016-00054
`Patent 8,648,717 B2
`
`in the context of a CDPD network, we are not persuaded. Wandel discloses
`Mobitex and CDPD as example networks that may be used:
`The present invention is applicable to any kind of radio
`modem and any type of radio frequency data network, however
`for the purpose of setting forth a preferred embodiment of the
`invention, the remaining drawings and detailed description will
`refer to a specific radio network, the Mobitex network, and a
`particular radio modem, the RIM 900 Mobitex radio modem,
`manufactured by Research In Motion, 295 Phillip Street,
`Waterloo, Ontario, Canada.
`There are many types of radio networks currently in
`widespread use, such as Ardis, Mobitex, GSM, SMR, PCS,
`analog cellular, CDPD, etc, and each of these networks has
`associated types of radio modems that are used to transmit and
`receive data over the network. For example, for the Mobitex
`network, Ericsson, Motorola and Research
`In Motion
`manufacture radio modems. Any of these devices could be used
`in conjunction with the present invention.
`Ex. 1013, 4:29–45 (emphasis added). However, the entirety of Wandel’s
`disclosure, including the one-sentence disclosure of “destination addressing”
`relied upon by Petitioner, describes how a particular radio modem would
`work in a Mobitex network. See id. at 4:46–13:23; Pet. 21–22. There is no
`other mention of CDPD, or explanation of how the disclosed invention
`would work in a CDPD network, in Wandel. What is missing in Petitioner’s
`analysis is a sufficient explanation for why, if the disclosed invention used a
`CDPD network (rather than a Mobitex network as in the preferred
`embodiment), the “destination addressing” referred to in column 10 would
`be understood by a person of ordinary skill in the art to be IP addressing.
`Without more, we are not persuaded that the mere disclosure of CDPD,
`among a list of numerous other potential networks, is sufficient proof that an
`
`
`
`12
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`IPR2016-00054
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`
`ordinarily skilled artisan would have read “destination addressing” to be
`IP addressing when a CDPD network is used.
`Petitioner proposes alternative unpatentability challenges based
`additionally on certain alleged teachings of Boden in the event we construe
`the phrase “numbers to which the programmable communicator device is
`configured to and permitted to send outgoing wireless transmissions,” which
`appears in each independent claim, to mean an “exclusive” set of numbers
`such that transmissions to all other numbers are not permitted and are
`blocked. Pet. 55. Petitioner contends “[i]t would have been obvious to a
`person of ordinary skill in the art to make Wandel’s ‘destination address[es]
`for log packets’ . . . an exclusive set of permitted addresses by filtering
`packets to all other addresses as disclosed in Boden.” Id. at 57.
`Because these alternative unpatentability challenges rely on Wandel
`as allegedly disclosing storing IP addresses (see Pet. 55), a contention with
`which we disagree, Petitioner’s alternative challenges are not persuasive,
`and we need not address the construction of the phrase “numbers to which
`the programmable communicator device is configured to and permitted to
`send outgoing wireless transmissions.”
`Because all challenges in this Petition depend on Wandel as allegedly
`disclosing storing an IP address, we are not persuaded Petitioner has
`established a reasonable likelihood of prevailing in showing that the
`challenged claims are anticipated or would have been obvious as alleged.
`IV. CONCLUSION
`For the foregoing reasons, we are not persuaded that the Petition
`establishes a reasonable likelihood that Petitioner would prevail in showing
`
`
`
`13
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`IPR2016-00054
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`
`claims 1–30 of the ’717 patent are unpatentable under 35 U.S.C. §§ 102(b)
`or 103(a).
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`14
`
`
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`IPR2016-00054
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`
`For PETITIONER:
`
`cpollack@pearlcohen.com
`meadan@ pearlcohen.com
`gyonay@ pearlcohen.com
`
`
`
`Pearl Cohen Zedek Latzer Baratz LLP
`
`For PATENT OWNER:
`Jeffrey N. Costakos
`jcostakos@foley.com
`
`Michelle A. Moran
`mmoran@foley.com
`
`Foley & Lardner LLP
`
`
`
`15
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