`
` Paper 34
`Trials@uspto.gov
`571-272-7822 Entered: March 6, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TELIT WIRELESS SOLUTIONS INC., TELIT COMMUNICATIONS
`PLC, SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC.,
`and RPX CORP.,
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-000551
`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
`
`
`
`
`1 Case IPR2016-01073 has been joined with this proceeding.
`
`
`
`IPR2016-00055
`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, Telit Wireless Solutions Inc., Telit Communications
`PLC, Sierra Wireless America, Inc., Sierra Wireless, Inc., and RPX Corp.
`(collectively, “Petitioner”) challenge the patentability of claims 1–24 and 29
`of U.S. Patent No. 8,648,717 B2 (“the ’717 patent,” Ex. 1101), 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 1–23 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 claim 24 of the ’717 patent is
`unpatentable.
`
`Procedural History
`A.
`On October 21, 2015, Telit Wireless Solutions Inc. and Telit
`Communications PLC requested inter partes review of claims 1–30 of the
`’717 patent. Paper 1, “Pet.” Patent Owner filed a Preliminary Response.
`Paper 8. In our Decision on Institution of Inter Partes Review, we instituted
`trial of claims 1–24 and 29, but we denied institution as to claims 25–28 and
`30. Paper 9, “Dec. on Inst.” Trial was instituted on the following grounds
`of unpatentability:
`
`
`
`2
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`
`1. Whether claim 24 is unpatentable under 35 U.S.C. § 102(b) as
`anticipated by Van Bergen;2
`
`2. Whether claims 1–3, 5–18, 22, 23, and 29 are unpatentable under
`35 U.S.C. § 103(a) as having been obvious over Van Bergen and
`Bettstetter;3
`
`3. Whether claim 4 is unpatentable under 35 U.S.C. § 103(a) as
`having been obvious over Van Bergen, Bettstetter, and Sonera;4
`
`4. Whether claims 19 and 20 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over Van Bergen, Bettstetter, and
`Kuusela;5 and
`
`5. Whether claim 21 is unpatentable under 35 U.S.C. § 103(a) as
`having been obvious over Van Bergen, Bettstetter, and Eldredge.6
`
`Dec. on Inst. 48.
`Subsequent to institution, Sierra Wireless America, Inc., Sierra
`Wireless, Inc., and RPX Corp. filed a petition asserting the same grounds in
`Case IPR2016-01073, along with a motion for joinder with this proceeding.
`Trial was instituted and the motion for joinder was granted. Paper 25.
`Patent Owner filed a Response (Paper 24, “PO Resp.”), and Petitioner filed a
`Reply (Paper 26, “Reply”).
`An oral hearing was held on December 5, 2016, a transcript of which
`appears in the record. Paper 33 (“Tr.”).
`
`
`2 WO 00/17021, published Mar. 30, 2000 (Ex. 1113).
`3 “GSM Phase 2+ General Packet Radio Service GPRS: Architecture,
`Protocols, and Air Interface,” IEEE COMMUNICATIONS SURVEY, vol. 2, no. 3
`(1999) (Ex. 1114).
`4 WO 00/14984, published Mar. 16, 2000 (Ex. 1125).
`5 WO 97/49077, published Dec. 24, 1997 (Ex. 1128).
`6 WO 95/05609, published Feb. 23, 1995 (Ex. 1129).
`3
`
`
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`
`Related Matters
`B.
`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. 2; Paper 5. The ’717 patent is also the subject of Sierra Wireless Am.,
`Inc. et al. v. M2M Solutions LLC, Case IPR2015-01823, in which the Board
`is issuing a Final Written Decision concurrently.
`
`Illustrative Claim
`C.
`The ’717 patent is generally directed to a “programmable
`communicator device.” Ex. 1101, Abstract. The ’717 patent has three
`independent claims—claims 1, 24, and 29. Claim 1 is reproduced below:
`1.
`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;
`
`
`
`4
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`
`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
`interface from the at least one monitored technical device in
`response to programming instructions received in an incoming
`wireless packet switched data message.
`Ex. 1101, 12:34–13:3.
`
`
`II. ANALYSIS
`Claim Construction
`A.
`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 following terms and phrases:
`“programmable,” “coded number,” “the transmissions including the at least
`5
`
`
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`one telephone number or IP address and the coded number” (single
`transmission), and “numbers to which the programmable communicator
`device is configured to and permitted to send outgoing wireless
`transmissions.” Pet. 8–12. In its Preliminary Response, Patent Owner did
`not disagree with Petitioner’s proposed construction of “programmable,” and
`although Patent Owner disputed Petitioner’s proposed construction of
`“coded number,” Patent Owner did not propose its own construction for this
`term. Prelim. Resp. 2.
`We determined in the Decision on Institution that, at that time, we
`needed only to assess the constructions offered by the parties for the claim
`phrases “the transmissions including the at least one telephone number or IP
`address and the coded number” (single transmission) and “numbers to which
`the programmable communicator device is configured to and permitted to
`send outgoing wireless transmissions.” Dec. on Inst. 6–12. During the trial,
`the parties addressed the construction of these phrases. PO Resp. 5–19;
`Reply 4–12. Based on the record developed during the trial, we provide the
`following additional analysis with respect to these claim phrases.
`
`1. Single Transmission
`
`The independent claims of the ’717 patent recite, in part:
`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
`
`
`
`6
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`
`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.
`Ex. 1101, 12:39–56, 14:60–15:10, 16:6–23.
`In its Petition, Petitioner argued that the phrase “the transmissions
`including the at least one telephone number or IP address and the coded
`number” means that the claim “does not require that the telephone number
`or IP address and the coded number are in the same transmission” but,
`rather, that the telephone number or IP address can be in the same
`transmission or in a different transmission from the coded number. Pet. 9–
`10. In its Preliminary Response, Patent Owner argued Petitioner’s
`interpretation is incorrect and that the independent claims “require[] that
`authentication be performed on a ‘single transmission’ that includes both the
`‘coded number’ and the telephone number or IP address.” Prelim. Resp. 3.
`In our Decision on Institution, we determined that the claims allow the
`telephone number or IP address to be in the same transmission or in a
`different transmission from the coded number. Dec. on Inst. 9. During the
`trial, both parties addressed this claim construction issue. PO Resp. 5–11;
`Reply 5–8. Patent Owner argues the claim language itself
`requires a processing module that is capable of authenticating
`“the at least one of the transmissions including the at least one
`telephone number or IP address and the coded number.” Under
`this sentence structure, the phrase “including the at least one
`telephone number or IP address and the coded number” acts to
`modify the phrase “the at least one,” and not to modify the
`phrase “of the transmissions.” Accordingly, the claim language
`7
`
`
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`
`requires the authentication of a “single transmission” (i.e. “the
`at least one” transmission) that includes the “coded number”
`along with a telephone number or IP address.
`PO Resp. 5–6. Petitioner maintains that there is no “single transmission”
`requirement, arguing that the use of plural language in the claims
`demonstrates that the coded number and the telephone number or IP address
`can be in the same transmission or different transmissions and still fall
`within the scope of the claims. Reply 5–7.
`After considering the parties’ arguments, 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 are
`persuaded by Patent Owner’s argument that the claim language requires both
`the coded number and the telephone number or IP address to be in the same
`transmission. See PO Resp. 5–11. 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. 1101, 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.”
`
`
`
`8
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`
`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. 1101,
`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
`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 claim allows for the existence of more than
`one transmission, but there must be at least one transmission that contains
`both.
`
`In its Petition and again in its Reply, Petitioner focuses on the phrase
`“the transmissions including the at least one telephone number or IP address
`and the coded number.” Pet. 9–10; Reply 5. Although this phrase in
`isolation might be read to encompass a telephone number and a coded
`number in separate transmissions, the remaining claim language requires
`that one transmission have both a telephone number and a coded number, as
`explained above. In particular, Petitioner ignores that the relevant language
`is not just “the transmissions including the at least one telephone number or
`IP address and the coded number,” but rather “the at least one of the
`
`
`
`9
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`transmissions including the at least one telephone number or IP address and
`the coded number,” which refers back to the previous recitation in the claim.
`Accordingly, Petitioner’s proposed claim construction is not persuasive
`because it does not consider the claim as a whole.
`Petitioner also contrasts the ’717 patent claim language with the
`phrase “the at least one transmission including a coded number and at least
`one telephone number or Internet Protocol (IP) address,” which appears in
`related U.S. Patent No. 8,094,010 B2 (Ex. 1106), arguing that the latter
`explicitly recites a single transmission requirement, whereas the language in
`the ’717 patent does not. Reply 7. We are not persuaded of a distinction
`between the phrases “the at least one of the transmissions” and “the at least
`one transmission,” as they are used in the relevant claims, that warrants
`interpreting the claims of the ’717 patent as Petitioner proposes.7
`Therefore, based on the record developed during trial, we determine
`that the claims require authentication of one transmission having both a
`coded number and a telephone number or IP address.
`2. “numbers to which the programmable communicator device is
`configured to and permitted to send outgoing wireless transmissions”
`
`In our Decision on Institution, we determined that the broadest
`reasonable interpretation of the phrase “numbers to which the programmable
`communicator device is configured to and permitted to send outgoing
`
`7 We also note that in the related district court case, Sierra Wireless
`America, Inc., Sierra Wireless, Inc., and Telit Wireless Solutions Inc. argued
`that the claims should be interpreted to require a “single wireless
`transmission that includes both the coded number and the telephone number
`or IP address.” Ex. 1108, 4, 19. Petitioner’s arguments in this proceeding
`that the limitation should be interpreted not to have a single transmission
`requirement are not persuasive.
`
`
`
`10
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`wireless transmissions” is numbers to which the programmable
`communicator device is capable of sending outgoing wireless transmissions
`and permitted to send outgoing wireless transmissions. See Dec. on Inst. 9–
`12 (citing, inter alia, Ex. 1104 (excerpts from ’717 prosecution history), 31).
`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
`“a restrictive outbound calling list.” PO Resp. 12. According to Patent
`Owner, “the ‘permitted’ claim language means that the recited calling list
`must function in a manner that limits the programmable communicator to
`sending one or more types of outgoing wireless transmissions to only those
`telephone numbers or IP addresses contained in the list.” PO Resp. 12.
`We disagree that the broadest reasonable interpretation of “configured
`to and permitted to” is as limited as Patent Owner proposes. Patent Owner
`contends that our construction in the Decision on Institution “impart[s] no
`meaning to the word ‘permitted,’ suggesting merely that ‘permitted to’
`means ‘permitted to.’” PO Resp. 13. However, our construction in the
`Decision on Institution came directly from statements made by the applicant
`for the ’717 patent accompanying the amendment adding the “permitted to”
`language. In particular, 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
`
`
`
`11
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`
`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. 1104, 31 (Supplemental Amendment, Nov. 8, 2013).
`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
`the device was also “permitted to” call those numbers. There is no mention
`of restricting what numbers the device can call.
`Patent Owner further contends the Specification of the ’717 patent
`“expressly disclose[s] the concept of restrictive outbound calling lists.” PO
`Resp. 17 (citing Ex. 1101, 2:20–23, 2:28–32). One of these passages, in the
`“Background of the Invention” section, 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 dialling overseas numbers for extensive periods of time.”
`Ex. 1101, 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. The other passage cited by Patent Owner similarly states: “An
`
`
`
`12
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`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.
`Patent Owner also cites various passages in the Specification of the
`’717 patent that describe rejecting incoming calls. PO Resp. 15 (citing
`Ex. 1101, 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. 1101, Fig. 2. Such functionality, however, is addressed by
`the authentication limitations of the independent claims, wherein the
`processing module “authenticat[es] one or 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.”
`
`
`
`13
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`
`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.” We see no reason to
`deviate from the construction set forth in our Decision on Institution, which
`comes from the applicant’s own statements during prosecution of the ’717
`patent. See Dec. on Inst. 9–12 (citing, inter alia, Ex. 1104, 31).
`3. “Processing module for authenticating”
`Neither Petitioner nor Patent Owner argued that 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 means-plus-function limitation under 35 U.S.C. § 112,
`paragraph 6. Based on the full record developed during trial, we determine
`that this limitation is not governed by 35 U.S.C. § 112, paragraph 6, and
`does not require further construction. See Williamson v. Citrix Online, LLC,
`792 F.3d 1339, 1349 (Fed. Cir. 2015) (“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)).
`4. Remaining Claim Terms
`We determine that no other claim terms require express construction
`in this proceeding.
`
`
`
`14
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`
`Principles of Law
`B.
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`Although the elements must be arranged or combined in the same way as in
`the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e.,
`identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334
`(Fed. Cir. 2009).
`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
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Level of Ordinary Skill in the Art
`C.
`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
`components, or an equivalent combination of education and experience in
`related fields.” Dec. on Inst. 23 n.4 (citing Sierra Wireless Am., Inc. et al. v.
`
`
`
`15
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`M2M Solutions LLC, Case IPR2015-01823, slip op. at 11 n.4 (PTAB Mar. 8,
`2016) (Paper 16)). The parties did not propose a different level of ordinary
`skill in the art during trial.
`Based on the record developed during trial, we see no reason to
`deviate from our prior determination of the skill level of a person of ordinary
`skill in the art. This level of ordinary skill is reflected not only by the
`information presented by the parties, but also by the prior art of record.
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art
`itself can reflect the appropriate level of ordinary skill in the art).
`D. Unpatentability Challenge based on the Combination of
`Van Bergen and Bettstetter
`(Claims 1–3, 5–18, 22, 23, and 29)
`Petitioner contends that the subject matter of independent claims 1
`and 29 and dependent claims 2, 3, 5–18, 22, and 23 would have been
`obvious over the combination of Van Bergen and Bettstetter, providing
`analysis and arguments to explain how the cited prior art references teach
`the claimed subject matter and why a person of ordinary skill in the art
`would have combined the teachings of the references to arrive at the claimed
`subject matter. Pet. 17–45. In support of its contentions, Petitioner proffers
`the unrebutted testimony of Mr. Kimmo Savolainen. See Ex. 1105.
`Van Bergen
`1.
`Van Bergen discloses a security system called “CELL-EYE,” which
`“includes a controller and memory unit for the verification of the identity of
`incoming calls, and the activation, deactivation and programming of the
`CELL-EYE via validated incoming calls received by an alarm linked GSM
`[global system for mobile communication] mobile unit and modem from a
`
`
`
`16
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`remote GSM mobile unit.” Ex. 1113, Abstract. Van Bergen discloses an
`advantage of the disclosed system is that it
`allows the owner to remotely activate or program the security
`system by means of a telephone call from the owner’s cellular
`phone to the CELL-EYE installed in the vehicle or property.
`Such programming could include periodic customization of the
`level of security appropriate for a particular situation and
`presetting alarm parameters such as the numbers that must be
`dialled when an alarm condition is detected, how frequently
`such calls need to be repeated and what to do if connection to a
`particular called number is not available at the time. Remote
`activation and programming of the device also alleviates the
`need for a user accessible interface to the CELL-EYE system.
`Id. at 2:53–3:7.
`
`Bettstetter8
`2.
`Bettstetter describes the General Packet Radio Service (GPRS) for
`GSM, which “is a new bearer service for GSM that greatly improves and
`simplifies wireless access to packet data networks, e.g., to the Internet.” Ex.
`1114, Abstract.
`
`
`8 Bettstetter is a publication of the Institute of Electrical and Electronics
`Engineers (IEEE), namely an article in volume 2, number 3 of the “IEEE
`Communications Surveys: The Electronic Magazine of Original
`Peer-Reviewed Survey Articles.” Ex. 1114, 1. Based on the evidence of
`record, we agree with Petitioner that Bettstetter is a prior art printed
`publication under 35 U.S.C. § 102(b). See Pet. 13–14; 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’” (citation omitted)). Patent
`Owner does not contend Bettstetter is not a prior art printed publication.
`17
`
`
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`
`Claims 1 and 29
`3.
`a. “Programmable communicator device” having a
`“programmable interface”
`Claims 1 and 29 are each 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.”
`i. Contentions as to Van Bergen
`Petitioner contends Van Bergen’s “CELL-EYE” system discloses a
`“programmable communicator device” and that “alarm sensor interface 13”
`of the CELL-EYE system describes “a programmable interface for
`establishing a communication link with at least one monitored technical
`device,” as recited in claims 1 and 29. Pet. 17–19, 42.
`First, Petitioner contends Van Bergen describes a “programmable
`communicator device” because the CELL-EYE system has communication
`devices, such as a “GSM [global system for mobile communication] mobile
`phone unit” and because Van Bergen describes programming the CELL-
`EYE system. Pet. 18 (citing Ex. 1113, Abstract, 2:51–52, 5:4–6). We are
`persuaded by Petitioner’s contention, and we find Van Bergen’s “CELL-
`EYE” system discloses a “programmable communicator device.” This
`finding is supported by Van Bergen’s disclosure that “[t]he CELL-EYE
`system includes a controller and memory unit for the verification of the
`identity of incoming calls, and the activation, deactivation and programming
`of the CELL-EYE via validated incoming calls received by an alarm linked
`GSM mobile unit and modem from a remote GSM mobile unit.” Ex. 1113,
`Abstract (emphasis added). Furthermore, Van Bergen describes that the
`
`
`
`18
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`CELL-EYE system is a “communicator device
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
