Trials@uspto.gov
`571.272.7822
`
`
`Paper 13
`Entered: May 24, 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
`Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper 13
`Entered: May 24, 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
`Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`
`INTRODUCTION
`
`On May 5, 2016, Telit Wireless Solutions Inc. and Telit
`
`Communications PLC (collectively, “Petitioner”) filed a Request for
`
`Rehearing (Paper 11, “Req. Reh’g”) of our Decision (Paper 9, “Dec.”)
`
`instituting inter partes review of some, but not all, of the claims of U.S.
`
`Patent No. 8,648,717 B2 (“the ’717 patent” ) challenged in the Petition
`
`(Paper 1, “Pet.”). In particular, Petitioner requests a partial rehearing of our
`
`decision not to institute inter partes review for claims 25, 27, 28, and 30.
`
`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
`
`Claims 28 and 30
`
`On rehearing, Petitioner argues that we “overlooked Petitioner’s
`
`citation to claim 1[h] in the discussion of claim 2 in the Petition.” Req.
`
`Reh’g 5. Petitioner argues that its discussion with respect to “claim 1[h]”
`
`“establishes that Van Bergen’s controller and memory unit 14 (processing
`
`module) process the received data from the vehicle and property security
`
`systems (monitored technical device) for the specific purpose required in
`
`claims 28 and 30.” Id.
`
`2
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`
`We are not persuaded. In the Petition, Petitioner’s entire contention
`
`with respect to claim 28 was: “See claims 2 and 10 above omitting the
`
`discussion of packet switched.” Pet. 48. Similarly, Petitioner’s entire
`
`contention for claim 30 was: “See claims 2, 10 and 29 above.” Pet. 46.
`
`Petitioner’s belated attempt to explain how its citation of “claim 1[h]” in its
`
`discussion of claim 2 warrants institution does not persuade us that we
`
`overlooked or misapprehended an argument when that argument was not
`
`made in the Petition. See 37 C.F.R. §§ 42.104(b) (a petition seeking inter
`
`partes review must “[p]rovide a statement of the precise relief requested for
`
`each claim challenged” and “specify where each element of the claim is
`
`found in the prior art patents or printed publications relied upon”),
`
`42.22(a)(2) (a petition must include a “full statement of the reasons for the
`
`relief requested, including a detailed explanation of the significance of the
`
`evidence”). A request for rehearing is not an opportunity for a party to add
`
`new arguments, or bolster prior arguments that were found unpersuasive.
`
`In our Decision, we also noted that “Petitioner’s contentions with
`
`respect to claims 2 and 10 identify two different structures for the respective
`
`data processing of the claims,” specifically “controller and memory unit” as
`
`to claim 2 and “alarm sensor interface 13” as to claim 10. Dec. 21. We
`
`explained that “Petitioner’s cursory reference to claims 2 and 10 does not
`
`explain which structure in Van Bergen Petitioner contends is the ‘processing
`
`module’ that performs the particular data processing required” in claims 28
`
`and 30. Id. at 21, 43.
`
`On rehearing, Petitioner argues that the “processing module” of
`
`claims 28 and 30 is disclosed by Van Bergen’s “controller and memory unit”
`
`and that there is no inconsistency between its positions with respect to
`
`3
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`claims 2 and 10. Req. Reh’g 5–8. Petitioner contends we misapprehended
`
`Petitioner’s argument because, with respect to claim 10, the Petition
`
`“identifies two components for performing two types of processing: ‘alarm
`
`sensor interface 13’ for initially converting raw data from the remote sensor
`
`outputs to digital signals compatible with the Cell-Eye system, and ‘alarm
`
`sensing means’ for detecting alarm conditions in those converted signals.”
`
`Id. at 6. Petitioner contends that the structure for the “alarm sensing means”
`
`is the “controller and memory unit 14” in Van Bergen. Id. at 7–8.
`
`This argument is not persuasive because it was not explained
`
`sufficiently in the Petition, and, regardless, Van Bergen discloses that the
`
`“alarm sensing means” is part of the “alarm sensor interface”: “alarm
`
`sensing means implemented in [the] said alarm sensor interface for
`
`converting the audible or electronic alarm outputs of said vehicle or property
`
`security system to a digital signal compatible with the said controller.”
`
`Ex. 1113, 11:9–11. Van Bergen describes “controller and memory unit 14”
`
`and “alarm sensor interface 13” as separate “subsystems” in the disclosed
`
`system. Id. at 4:21–29, Fig. 2. Therefore, even with this added explanation,
`
`it is not clear which component, “controller and memory unit 14” or “alarm
`
`sensor interface 13,” Petitioner contends performs the particular data
`
`processing required in claims 28 and 30. As such, this added explanation
`
`still does not reconcile the inconsistency in the Petition.
`
`Therefore, we are not persuaded that we overlooked or
`
`misapprehended any arguments Petitioner made in the Petition with respect
`
`to claims 28 and 30 in denying institution as to those claims.
`
`4
`
`
`
`IPR2016-00055
`Patent 8,648,717 B2
`
`
`Claims 25 and 27
`
`In the Petition, Petitioner’s entire contention with respect to claim 25
`
`was: “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). Similarly, Petitioner’s entire contention for claim 27 was: “See
`
`claim 1 [a] above and the discussion of SMS for claim 29 [g].” Id. at 48
`
`(emphases removed). In our Decision, we explained that claim limitation
`
`“29 [g]” involves “instructions to program the stored number” using SMS
`
`data messages and that Petitioner did not sufficiently explain how its
`
`discussion with respect to claim “29 [g]” applies to the different
`
`programming recited in claims 25 and 27. Dec. 20.
`
`On rehearing, Petitioner argues that we misapprehended its references
`
`to “the discussion of SMS in claim 29 [g]” for claims 25 and 27. Req. Reh’g
`
`11–14. Petitioner contends that these were references “to its discussion of
`
`SMS in general, not to its discussion of instructions to program numbers.”
`
`Id. at 13. Petitioner argues that this “general” discussion of SMS shows Van
`
`Bergen discloses the particular SMS programming required in claims 25 and
`
`27. Id. at 11–14. Petitioner further argues that we “[m]isinterpreted Van
`
`Bergen.” Id. at 10–11.
`
`These arguments on rehearing do not persuade us we misapprehended
`
`or overlooked any arguments made in the Petition. Rather, Petitioner
`
`attempts, belatedly, to provide explanation we found lacking in the original
`
`Petition. See Dec. 19–20; see also 37 C.F.R. §§ 42.22(a)(2), 42.104(b). As
`
`noted above, a request for rehearing is not an opportunity for a party to add
`
`new arguments, or bolster prior arguments that were found unpersuasive.
`
`
`
`5
`
`
`
`IPR2016-00055
`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 of claims 25, 27, 28, and 30. 37 C.F.R.
`
`§ 42.71(d).
`
`For the foregoing reasons, Petitioner’s Request for Rehearing is
`
`denied.
`
`
`
`PETITIONER:
`
`Caleb Pollack
`Milo Eadan
`Guy Yonay
`PEARL COHEN ZEDEK LATZER BARATZ LLP
`cpollack@pearlcohen.com
`meadan@pearlcohen.com
`gyonay@pearlcohen.com
`
`
`
`PATENT OWNER:
`
`Jeffrey N. Costakos
`Michelle A. Moran
`FOLEY & LARDNER LLP
`jcostakos@foley.com
`mmoran@foley.com
`
`
`6
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