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 IPR2016-00055
`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: 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 IPR2016-00055
`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
`
`
`
`
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
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`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. 1101), 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.
`
`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
`1–24 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
`patent, as well as matters involving ancestor patents of the ’717 patent. See
`Pet. 2; Paper 5. Petitioner concurrently filed another Petition for inter partes
`review challenging claims 1–30 of the ’717 patent. Pet. 2–3; IPR2016-
`
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`2
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`00054. The ’717 patent also is the subject of a pending inter partes review
`in Sierra Wireless Am., Inc. et al. v. M2M Solutions LLC, Case IPR2015-
`01823.
`
`B. Illustrative Claim
`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:
`
`
`
`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;
`
`
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`3
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`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.
`C. References
`Petitioner relies upon the following references:
`Eldredge
`WO 95/05609
`Feb. 23, 1995
`
`Ex. 1129
`
`WO 97/49077
`
`Dec. 24, 1997
`
`Ex. 1128
`
`Mar. 16, 2000
`
`Mar. 20, 2000
`Oct. 4, 1999
`
`Ex. 1125
`
`Ex. 1113
`
`Ex. 1130
`
`1999
`
`Ex. 1114
`
`Kuusela
`
`Sonera
`
`Van Bergen
`
`WO 00/14984
`
`WO 00/17021
`
`Falcom A2 User Manual / Command List
`(hereinafter “Falcom”)
`
`“GSM Phase 2+ General Packet Radio
`Service GPRS: Architecture, Protocols, and
`Air Interface”, IEEE COMMUNICATIONS
`SURVEY, vol. 2, no. 3 (1999)
`(hereinafter “Bettstetter”)1
`
`Applicant’s Admitted Prior Art (AAPA)—Ex. 1101, 1:52–56, which is an
`
`
`1 Based on the current record, Petitioner has made a threshold showing that
`Bettstetter is a prior art printed publication under 35 U.S.C. §§ 102(a) and
`(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 argue in its Preliminary Response
`that Bettstetter does not qualify as a prior art printed publication. Also,
`based on our analysis below, we need not determine whether Petitioner has
`made a threshold showing as to Falcom.
`4
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`excerpt from the “Background of the Invention” section of the ’717 patent.
`
`
`
`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
`Van Bergen
`§ 102(b) 24–28
`Van Bergen and AAPA
`§ 103(a) 25–27
`Van Bergen and Bettstetter
`§ 103(a) 1–3, 5–18, 22, 23, 29,
`and 30
`§ 103(a) 29 and 30
`
`Van Bergen, Bettstetter, and
`AAPA
`Van Bergen, Bettstetter, and
`Sonera
`Van Bergen, Bettstetter, and
`Kuusela
`Van Bergen, Bettstetter, and
`Eldredge
`§ 103(a) 24–28
`Van Bergen and Falcom2
`Van Bergen, AAPA, and Falcom § 103(a) 25–27
`Van Bergen, Bettstetter, and
`§ 103(a) 1–3, 5–18, 22, 23, 29,
`Falcom
`and 30
`Van Bergen, Bettstetter, AAPA,
`§ 103(a) 29 and 30
`and Falcom
`Van Bergen, Bettstetter, Sonera,
`and Falcom
`Van Bergen, Bettstetter, Kuusela,
`and Falcom
`Van Bergen, Bettstetter,
`Eldredge, and Falcom
`
`§ 103(a) 4
`
`§ 103(a) 19 and 20
`
`§ 103(a) 21
`
`§ 103(a) 4
`
`§ 103(a) 19 and 20
`
`§ 103(a) 21
`
`
`
`
`
`
`2 Petitioner proposes the challenges based on Falcom as alternative grounds
`to address the possibility of a narrower claim construction. Pet. 5, 56–58.
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`II. ANALYSIS
`A. 35 U.S.C. § 325(d)
`Patent Owner argues that the challenges in the Petition based on
`Bettstetter and Eldredge should be denied under 35 U.S.C. § 325(d) because
`these references were considered during prosecution. Prelim. Resp. 8–12.
`We are not persuaded that the challenges based on Bettstetter and Eldredge
`should be denied on this basis. Although Patent Owner provides evidence to
`indicate that the references were of record during the 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. 1101, 2, 3; Ex. 2002, 4, 8 (cited at Prelim. Resp. 8–9).
`Thus, we are not persuaded by Patent Owner’s assertion that “Petitioners
`and their expert do not supplement the underlying record with respect to
`Bettstetter and Eldredge.” See Prelim. Resp. 12.
`B. Claim Construction
`1. Parties’ Proposed Constructions
`Petitioner proposes constructions for the following terms and phrases:
`“programmable,” “coded number,” “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.” Pet. 8–12. Patent Owner does not disagree with Petitioner’s
`proposed construction of “programmable,” and although Patent Owner
`disputes Petitioner’s proposed construction of “coded number,” Patent
`Owner does not propose its own construction for this term. Prelim. Resp. 2.
`
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`Based on Petitioner’s unpatentability challenges and Patent Owner’s
`arguments, we determine that the terms “programmable” and “coded
`number” need not be construed explicitly at this time.
`a. Single Transmission
`Petitioner argues 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. Patent Owner argues
`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.
`We agree with Petitioner that the claims allow for the telephone
`number or IP address to be in the same transmission or in a different
`transmission from the coded number. Patent Owner’s proposed
`interpretation is not persuasive on the current record because the claims do
`not recite a “single transmission” requirement, and the language of 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.
`
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`Patent Owner argues that the claim “expressly recites that
`authentication must be performed on ‘the at least one of the transmissions
`including the at least one telephone number or IP address and the coded
`number,’” which “unambiguously provides a ‘single transmission’
`limitation.” Prelim. Resp. 3. 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.
`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
`
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`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.
`Patent Owner also argues that Petitioner’s proposed construction in
`this proceeding is in conflict with positions Petitioner has taken in district
`court litigation involving the ’717 patent. Prelim. Resp. 3 (citing Ex. 1108,
`4). However, we are not bound by positions taken by an accused infringer in
`district court litigation.
`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. Rather, we agree with Petitioner 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. See Pet.
`9–10. No further interpretation is necessary at this time.
`b. “numbers to which the programmable communicator device is
`configured to and permitted to send outgoing wireless
`transmissions”
`
`Petitioner contends “numbers to which the programmable
`communicator device is ‘configured to and permitted to send outgoing
`wireless transmissions’ are numbers to which the programmable
`communicator device is ‘allowed to send outgoing wireless transmissions.’”
`Pet. 10 (citing Ex. 11053 ¶¶ 62–67). Petitioner argues that the ’717 patent
`
`
`3 We consider Petitioner’s citations here and elsewhere to Exhibit 1005,
`which is not evidence of record in this proceeding, to be typographical errors
`intending to refer to Exhibit 1105, which is the Declaration of Kimmo
`9
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`discloses call screening for incoming calls, not outgoing calls, and that the
`claim is written to reflect that the device is “built to make calls, not to
`restrict calls.” Id. at 10–12 (citing Ex. 1101, 8:26–31, 9:61–63. Figs. 2, 3;
`Ex. Ex. 1104, 31).
`Patent Owner counters that the language “numbers to which the
`programmable communicator device is configured to and permitted to send
`outgoing wireless transmissions” requires a “restrictive outbound calling
`list.” Prelim. Resp. 4. First, Patent Owner argues that the parties agreed in
`litigation that recitation of “permitted to” limits the programmable
`communicator device to sending outgoing transmissions to only those
`numbers. Id. (citing Ex. 1108, 6). Again, however, we are not bound by
`positions taken by parties in district court litigation.
`Patent Owner also argues that, contrary to Petitioner’s assertion, the
`’717 patent “contains multiple examples” of an outbound calling list that is
`restrictive. Id. at 5. For example, Patent Owner argues that the ’717 patent
`“describes the programmable communicator device as having a ‘means to
`prevent the . . . dialing [of certain] numbers,’ such as overseas international
`numbers.” Id. (quoting Ex. 1101, 2:20–23 (brackets in original)). However,
`the cited passage, in its entirety, states: “Clearly there is a need to provide a
`means to limit the cost of calling and also to provide a means to prevent the
`child dialing overseas numbers for extensive periods of time.” Ex. 1101,
`2:20–23. This does not describe the claimed “programmable communicator
`device” as having such a “means”; rather, it identifies a need for such a
`“means.” Patent Owner does not direct us to disclosure within the ’717
`
`
`Savolainen. However, going forward, the parties should take care to cite
`evidence accurately so as not to confuse the record.
`10
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`patent describing the structure for such a “means to prevent the child dialing
`overseas numbers for extensive periods of time.” The other passage cited by
`Patent Owner also describes a goal outlined in the Background section of the
`’717 patent: “An improved child Hotlink communicator, which restricts the
`usage of the mobile phone and thereby does not generate high charges
`through uncontrolled calling, is clearly a solution to the family tariffing
`challenge.” Id. at 2:28–32. Although these passages arguably identify a
`problem in the art (high charges from uncontrolled calling), Patent Owner
`has not directed us to disclosure within the ’717 patent describing the
`particular mechanisms by which the solutions to these problems are
`achieved, let alone disclosure explaining that the language “permitted to” in
`the claims is restrictive in nature.
`Patent Owner also argues “Petitioners seek to read the ‘permitted to’
`limitation out of the claim language by arguing that it should be given the
`same meaning as the ‘configured to’ limitation that is already present in the
`claim language.” Prelim. Resp. 6 (citing Pet. 12). Petitioner’s argument,
`however, merely points out that the applicant for the ’717 patent, during
`prosecution, stated that it “believe[s] that ‘configured to,’ in the context of
`the claim, meant the device was capable of and permitted to second outgoing
`wireless transmissions” and that the applicant amended the claim to add
`“permitted to” to expedite prosecution. Pet. 12 (quoting Ex. 1104, 31).
`Patent Owner argues that this portion of the prosecution history shows “the
`Examiner believed that the term ‘permitted to’ meant something different
`from ‘configured to.’” Prelim. Resp. 6–7. However, we are not persuaded
`based on the current record that this excerpt from the prosecution history
`imparts a restrictive meaning on “permitted to.”
`
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`On the current record, we are not persuaded by Patent Owner’s
`argument that the phrase “configured to and permitted to” is restrictive in
`nature such that the claims require a “restrictive outbound calling list.”
`However, we also do not agree that “configured to and permitted to” means
`“allowed,” as proposed by Petitioner, because this does not account for the
`“configured to” language from the claims. Rather, applying the broadest
`reasonable interpretation in light of the Specification, we interpret the phrase
`“numbers to which the programmable communicator device is configured to
`and permitted to send outgoing wireless transmissions” to mean numbers to
`which the programmable communicator device is capable of sending
`outgoing wireless transmissions and permitted to send outgoing wireless
`transmissions.
`
`2. Remaining Claim Terms
`We determine that no other claim terms require express construction
`at this time.
`
`C. References
`1. Van Bergen
`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
`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.
`
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`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.
`
`2. Bettstetter
`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.
`
`3. Sonera
`Sonera teaches that Bluetooth technology “makes it possible to
`establish a wireless connection between a mobile telephone and e.g. a
`portable computer” and “enables devices to be interconnected via a short-
`range radio link” “without cumbersome cabling.” Ex. 1125, 2:19–33.
`4. Kuusela
`
`Kuusela teaches
`an auxiliary unit intended to be coupled to a digital wireless
`telephone. This auxiliary unit comprises a basic element, which
`contains the components necessary for data transmission,
`analyses and storage. The auxiliary unit also comprises a sensor
`element, which contains a sensor suitable for the non-invasive
`follow-up of a person’s bodily functions, as well as the special
`electronics required by this sensor.
`Ex. 1128, 1:23–28.
`
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`5. 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. 1129, 1:5–8.
`6. Falcom
`The Falcom A2 GSM mobile unit with modem is identified as a
`preferable mobile unit for implementation of the system disclosed in Van
`Bergen. Ex. 1113, 7:33. The Falcom reference is a manual “focussed [sic]
`on the GSM data solutions of the FALCOM A2 series,” and “[i]t contains
`information about the FALCOM A2 embedded GSM module, the FALCOM
`A2-1 GSM modem and phone and the A2 evaluation board.” Ex. 1130, 5
`(“Introduction”).
`7. Alleged Applicant’s Admitted Prior Art (AAPA)
`Petitioner identifies the following passage from the “Background”
`section of the ’717 patent as alleged AAPA: “Existing and known methods
`of communication between the mobile phone and Hotlink communicator for
`the purpose of programming comprise the obvious choice of data calls such
`as the Short Message Service in the GSM telecommunications standard.”
`Ex. 1101, 1:52–56.
`D. Unpatentability Challenge based on Van Bergen under § 102
`(Claims 24–28)
`
`
`
`1. Claim 24
`Petitioner contends Van Bergen anticipates claim 24. Pet. 17–28,
`46–47.
`
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`a. “Programmable communicator device” having a
`“programmable interface”
`
`Claim 24 is directed to a “programmable communicator device”
`having “a programmable interface for establishing a communication link
`with at least one monitored technical device.” Petitioner contends Van
`Bergen’s “CELL-EYE” system discloses a “programmable communicator
`device” having a “programmable interface” as claimed. Pet. 17–19.
`Petitioner argues that the “alarm sensor interface” is a programmable
`interface that receives input from “disturbance sensors” and that is
`programmable by a remote “reset” function. Id. at 18–19 (citing Ex. 1113,
`5:7–10, 6:20–31, 6:35–38, 6:41–42, 8:49–50, 10:12–13, Fig. 2). Van
`Bergen discloses that the system
`is designed to be linked to input devices installed in the same
`property of vehicle namely the disturbance sensors 11 which
`form part of the vehicle or property security system 12 which has
`alarm outputs. The alarm outputs are detected and converted to
`digital form by the alarm sensor interface 13 which forms part of
`the CELL-EYE system.
`Ex. 1113, 5:7–10. Van Bergen discloses that “[t]he alarm sensor interface
`13 contains circuits to perform . . . a reset function which resets the output
`signals of the alarm sensor interface after the reception of digital inputs from
`the ALU 16 via the modem 15 and the controller and memory unit 14.” Id.
`at 6:31–38.
`
`b. “Processing module for authenticating”
`Claim 24 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
`programmable communicator device by determining if at least one
`
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`transmission contains a coded number.” Petitioner contends Van Bergen’s
`“controller” is a “processing module” that authenticates incoming
`transmissions from the remote messaging unit (RMU) by determining if at
`least one transmission contains a PIN code. Pet. 21–22 (citing Ex. 1113,
`4:11–20, 4:37–42, 6:39–44, 6:50–51, 10:30–35). Van Bergen discloses that
`“[t]he controller and memory unit 14 comprises a micro controller with
`nonvolatile memory and associated digital circuits and software to . . .
`compare a PIN code received from the RMU with the code stored in
`memory and generate[] the AT commands to send a confirmation message to
`the RMU if the PIN code is accepted.” Ex. 1113, 6:42–51; see also id. at
`4:13–16 (“[A]ny communication from a hand-held GSM cellular phone to
`the CELL-EYE is a secure communication conditioned on the use of two
`valid PIN codes, one for activating the hand-held GSM unit and the other for
`communicating to the unattended GSM mobile unit.”).
`c. “Store at least one telephone number or IP address”
`Claim 24 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 Van Bergen discloses this limitation by disclosing
`that the system can update stored telephone numbers if the controller
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`receives a valid PIN code. Pet. 23–24 (citing Ex. 1113, 2:51–3:4, 6:42–44,
`6:50–51, 7:1–3, 10:33–34, 11:14–16). For example, Van Bergen discloses
`that “[t]he controller and memory unit 14 comprises a micro controller with
`nonvolatile memory and associated digital circuits and software
`to . . . updat[e] the phone number to be used for automatic notification of a
`security violation.” Ex. 1113, 6:42–7:2. Van Bergen further discloses that
`“[o]nly after the provision of a valid PIN code will the installed GSM mobile
`unit permit the user to activate or deactivate the said CELL-EYE system or
`change any of the stored numbers, codes or parameters of the system.” Id. at
`11:14–16. Petitioner also argues the stored numbers are “numbers to which
`the programmable communicator device is configured to and permitted to
`send outgoing wireless transmissions” because Van Bergen discloses that
`these are “stored numbers to which outgoing calls should be made in
`response to certain alarm conditions.” Pet. 25–26 (quoting Ex. 1113, 10:33–
`34; citing 3:2–4, 7:2–3, 11:14–16).
`Patent Owner argues Van Bergen does not disclose the “wherein”
`limitation above because it does not disclose authenticating a “single
`transmission” that includes both the “coded number” and the telephone
`number to be stored. Prelim. Resp. 21–23, 51. As we explain above in the
`section addressing claim construction, we do not agree with Patent Owner’s
`interpretation that the claims recite a “single transmission” requirement in
`which the telephone number or IP address and the coded number must be in
`the same transmission. Thus, on the present record, we are not persuaded by
`Patent Owner’s “single transmission” arguments. See id.
`Patent Owner also argues that the telephone number must be stored in
`a “restrictive outbound calling list.” Prelim. Resp. 4–7, 26, 51–52. As we
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`explain above, we also are not persuaded by Patent Owner’s proposed
`construction that “numbers to which the programmable communicator
`device is configured to and permitted to send outgoing wireless
`transmissions” must be a “restrictive outbound calling list.” Rather, the
`current evidence of record supports Petitioner’s argument that Van Bergen
`discloses numbers to which the CELL-EYE system is “configured to and
`permitted to send outgoing wireless transmissions.” See, e.g., Ex. 1113,
`3:2–4 (“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 dialed when an alarm condition
`is detected . . . .”).
`
`d. “Identity module”
`Claim 24 further recites: “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.” Petitioner
`contends Van Bergen’s teaching of using a Subscriber Identity Module
`(SIM) card discloses this limitation. Pet. 26 (quoting Ex. 1113, 7:34–35).
`Van Bergen discloses: “This unit is a fully type approved cellular phone. It
`has the facility for an internal or external SIM card.” Ex. 1113, 7:34–35.
`e. “Process data”
`Claim 24 further recites: “wherein the programmable communicator
`device is configured to process data received through the programmable
`interface from the at least one monitored technical device.” Petitioner
`contends Van Bergen discloses that the controller of the CELL-EYE system
`processes data received from the alarm sensor interface, which is received
`from a monitored technical device, such as a vehicle or property security
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`system. Pet. 27 (citing Ex. 1113, 2:1–3, 6:29–31, 6:39–42). Van Bergen
`discloses “[t]he controller and memory unit 14 which form part of the said
`CELL-EYE system is intended to control the operation of the CELL-EYE
`system through . . . the processing of DATA it receives from either the alarm
`sensor interface 13 or the ALU.” Ex. 1113, 6:39–42. Van Bergen discloses
`that alarm outputs from the vehicle or property security system “are detected
`and converted to digital form by the alarm sensor interface 13” of the CELL-
`EYE system. Id. at 5:7–10.
`
`f. Claim 24 Conclusion
`Upon review, we determine that the record before us demonstrates a
`reasonable likelihood that Petitioner would prevail on its assertion that
`claim 24 is anticipated by Van Bergen. Petitioner’s explanation of how each
`claim limitation is disclosed by Van Bergen is supported by the current
`record and persuasive at this stage. See Pet. 17–27, 46–47.
`2. Dependent Claims 25–27
`For its assertion that claims 25–27 are anticipated by Van Bergen,
`Petitioner provides only cursory references to other claims with no
`substantive analysis. See Pet. 47–48. For example, with respect to alleged
`anticipation of claim 25, Petitioner’s entire contention is: “See claim 1 [h]
`above, replacing the discussion of packet switched in claim 1 [b] with the
`discussion of SMS in claim 29 [g].” Pet. 47 (emphases removed).
`Petitioner’s contentions with respect to claims 26 and 27 also lack
`substantive analysis. See id. at 48 (emphases removed) (claim 26 (“See
`claims 5, 12 and 25, above, replacing the discussion of packet switched, with
`the discussion of SMS for claim element 29 [g].”); claim 27 (“See claim 1
`[a] above and the discussion of SMS for claim 29 [g].”)).
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`Claim limitation “29 [g]” refers to the limita
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