Trials@uspto.gov
`571.272.7822
`
`
`Paper 11
`Entered: June 9, 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
`Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper 11
`Entered: June 9, 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
`Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`IPR2016-00054
`Patent 8,648,717 B2
`
`
`INTRODUCTION
`On May 23, 2016, Telit Wireless Solutions Inc. and Telit
`Communications PLC (collectively, “Petitioner”) filed a Request for
`Rehearing (Paper 10, “Req. Reh’g”) of our Decision (Paper 9, “Dec.”)
`denying inter partes review of all grounds raised in the Petition (Paper 1,
`“Pet.”), which challenged claims 1–30 of U.S. Patent No. 8,648,717 B2
`(“the ’717 patent”). Petitioner submits new evidence (Exs. 1037–41) with
`its Request for Rehearing.
`For the reasons that follow, Petitioner’s Request for Rehearing is
`denied.
`
`STANDARD OF REVIEW
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” The party
`requesting rehearing has the burden of showing that the decision from which
`rehearing is sought should be modified, and “[t]he request must specifically
`identify all matters the party believes the Board misapprehended or
`overlooked.” 37 C.F.R. § 42.71(d).
`ANALYSIS
`On rehearing, Petitioner argues that a Memorandum Opinion from the
`U.S. District Court for the District of Delaware addressing, inter alia, U.S.
`Patent No. 8,094,010 B2 (“the ’010 patent”), which is related to the ’717
`patent, presents “[n]ew facts . . . that Petitioner could not have previously
`raised in its earlier Petition.” Req. Reh’g 1, 3 (citing Ex. 1037,
`Memorandum Opinion, Jan. 6, 2016, M2M Solutions Inc. v. Motorola
`Solutions, Inc., et al., Case No. 1:2012-cv-00033-RGA (D. Del)).
`According to Petitioner, the District Court determined that claims of the
`
`2
`
`
`
`IPR2016-00054
`Patent 8,648,717 B2
`
`’010 patent required only the capability to perform certain functions. Id. at
`1. Petitioner argues that, based on the District Court’s decision regarding
`the ’010 patent, we misapprehended the scope of the claims of the ’717
`patent, which should be construed more broadly to require only the
`capability to perform certain functions, particularly storing an IP address.
`Id. at 4, 11. Petitioner contends that under this construction, which is the
`broadest reasonable interpretation, U.S. Patent No. 6,034,623 (Ex. 1013,
`“Wandel”) anticipates or, in combination with other references, renders
`obvious the challenged claims because our Decision “confirmed that Wandel
`disclosed a device that was capable of using IP addresses.” Id. at 4 (citing
`Dec. 11).
`We are not persuaded. As an initial matter, we could not have
`misapprehended or overlooked evidence that was not part of the record at
`the time of the Decision. To the extent Petitioner contends that we should
`consider the evidence for the first time now, Petitioner has not shown good
`cause for doing so. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,768 (Aug. 14, 2012) (in deciding a request for rehearing,
`“[e]vidence not already of record at the time of the decision will not be
`admitted absent a showing of good cause”). The District Court Opinion
`cited by Petitioner issued January 6, 2016, more than three weeks before
`Patent Owner filed its Preliminary Response and more than three months
`before we issued our Decision. On rehearing, Petitioner states “Patent
`Owner argued a claim interpretation inconsistent with the Court’s decision
`and its own position in the Court” in the Patent Owner Preliminary
`Response. Req. Reh’g 3. However, in the nearly three months between
`when Patent Owner filed its Preliminary Response and when we issued our
`
`3
`
`
`
`IPR2016-00054
`Patent 8,648,717 B2
`
`Decision, Petitioner did not attempt to bring this to our attention or, for
`example, seek authorization to file a reply to the Preliminary Response.
`Rather, Petitioner waited a full month after we issued our Decision to raise
`this issue. In view of Petitioner’s delay, we are not persuaded Petitioner has
`demonstrated good cause to introduce this evidence.
`Furthermore, Petitioner mischaracterizes our Decision in asserting that
`we found Wandel’s device to be “capable” of using IP addresses. See id. at
`2, 4. In our Decision, we found “Wandel explicitly states that the disclosed
`radio modem operates on the Mobitex network” (Dec. 9 (citing Ex. 1013,
`4:29–37)), and Petitioner did not assert that addresses in a Mobitex network
`are IP addresses (id. at 7). As we stated in our Decision,
`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.
`Id. at 10 (emphasis added) (citing Pet. 22–23). We further found:
`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.
`Id. (citing Ex. 1013, 4:29–37). Therefore, Petitioner’s assertions on
`rehearing that we found Wandel’s device to be “capable” of using IP
`addresses are incorrect. See Req. Reh’g 2, 4.
`
`4
`
`
`
`IPR2016-00054
`Patent 8,648,717 B2
`
`
`In view of the foregoing, we are not persuaded that we
`“misapprehended the breadth of the claims and thus the relevance of the
`prior art,” as asserted by Petitioner. See id. at 2.
`On rehearing, Petitioner also argues:
`The combination of Wandel and Boden was described in
`Grounds 6–10 of the Petition. Although this combination was
`proposed to address another claim interpretation issue, (see
`Petition at 55), this combination disclosed all of the claimed
`elements, and it is in the interest of justice that the Board consider
`the combination for all that it disclosed. In particular, Wandel’s
`device operated over CDPD and was compatible with and would
`have used the IP addresses of Boden for its “destination
`addressing.”
`Id. at 12 (citing Ex. 1013, 4:40, 10:20–26, Ex. 1027, 4:31–35, Ex. 1015,
`444) (emphasis omitted).
`However, this argument regarding Petitioner’s alternative
`unpatentability challenges based on Boden does not identify any argument in
`the Petition that we overlooked or misapprehended. Rather, Petitioner
`makes a new argument relying on Boden to address deficiencies we found in
`Petitioner’s contentions with respect to Wandel. A request for rehearing is
`not an opportunity to add new arguments. We could not have
`misapprehended or overlooked this argument because Petitioner is
`presenting this argument for the first time on rehearing. Furthermore, for the
`reasons explained above and in our Decision, we do not agree with
`Petitioner’s contention that “Wandel’s device operated over CDPD.” See id.
`
`
`5
`
`
`
`IPR2016-00054
`Patent 8,648,717 B2
`
`
`CONCLUSION
`Petitioner has not carried its burden of demonstrating we
`misapprehended or overlooked any matters in our Decision denying
`institution of inter partes review. 37 C.F.R. § 42.71(d).
`For the foregoing reasons, Petitioner’s Request for Rehearing is
`denied.
`
`
`PETITIONER:
`
`Caleb Pollack
`cpollack@pearlcohen.com
`Milo Eadan
`meadan@ pearlcohen.com
`Guy Yonay
`gyonay@ pearlcohen.com
`
`Pearl Cohen Zedek Latzer Baratz LLP
`
`PATENT OWNER:
`
`Jeffrey N. Costakos
`jcostakos@foley.com
`Michelle A. Moran
`mmoran@foley.com
`
`Foley & Lardner LLP
`
`
`
`6
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