Paper Entered: March 8, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper Entered: March 8, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC., and RPX CORP., Petitioner, v. M2M SOLUTIONS LLC, Patent Owner. Case IPR 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

2 I. INTRODUCTION Sierra Wireless America, Inc., Sierra Wireless, Inc., and RPX Corp. (collectively, Petitioner ) filed a Petition requesting inter partes review of claims 1 3, 5 7, 10 24, 29, and 30 of U.S. Patent No. 8,648,717 B2 ( the 717 patent, Ex. 1001). Paper 1( Pet. ). 1 M2M Solutions LLC ( Patent Owner ) timely filed a Preliminary Response. Paper 11 ( 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, 3, 5, 6, 10 13, 15 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 We note that the Petition improperly uses single-spacing and a smaller font in the footnotes. See 37 C.F.R. 42.6(a)(2). We will consider the full Petition, however, as it is only 57 pages (less than the 60-page limit). The parties shall follow the formatting rules for papers going forward. 2

3 patent, as well as matters involving ancestor patents of the 717 patent. See Pet. 3; Paper 8. B. The 717 Patent 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: 1. A programmable communicator device comprising: 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; 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

4 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: Kail US 5,959,529 Sept Ex Eldredge WO 95/05609 Feb. 23, 1995 Ex Whitley WO 99/49680 A1 Sept. 30, 1999 Ex Digital cellular telecommunications system (Phase 2+); Specification of the Subscriber Identity Module - Mobile Equipment (SIM - ME) interface (GSM version Release 1998) (hereinafter SIM Specification ) 2 Dec Ex Excerpts from Expert Report by Dr. Ray W. Nettleton (hereinafter Nettleton Report ) Ex Based on the current record, Petitioner has made a threshold showing that the SIM Specification is a prior art printed publication under 35 U.S.C. 102(b). See Pet. 5 6; Ex ; Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, (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, and analyzing a similar set of ETSI standard documents) (citation omitted). Patent Owner does not argue in its Preliminary Response that the SIM Specification does not qualify as a prior art printed publication. 4

5 D. Asserted Grounds of Unpatentability Petitioner challenges claims 1 3, 5 7, 10 24, 29, and 30 of the 717 patent based on the asserted grounds of unpatentability set forth in the table below. 3 References Basis Claim(s) Challenged Whitley and SIM Specification 103(a) 1 3, 5 7, 10 15, 18, 22 24, 29, and 30 Whitley, SIM Specification, and Nettleton Report 103(a) 1 3, 5 7, 10 15, 18, 22 24, 29, and 30 Whitley, SIM Specification, and 103(a) 16, 17, 19, and 20 Kail Whitley, SIM Specification, and Eldredge 103(a) 21 II. ANALYSIS A. 35 U.S.C. 325(d) Patent Owner argues that the Petition should be denied under 35 U.S.C. 325(d) because Whitley and the SIM Specification, which are relied upon for all unpatentability challenges in this Petition, were considered during prosecution. Prelim. Resp We are not persuaded that the Petition should be denied on this basis. Although Patent Owner provides evidence to indicate that the references were of record during the 3 Petitioner s statement of relief requested identifies the challenged claims as claims 1 3, 5 7, 10 24, 29, and 30 (Pet. 4), and these are the claims for which Petitioner presents evidence and argument in the Petition. Petitioner s statement that it requests that claims 1 7 and of the 717 patent be canceled based on the following grounds (Pet. 6) appears to be a typographical error because Petitioner has not offered evidence or argument challenging claims 4 and Accordingly, we do not consider these claims to be at issue. 5

6 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. 1001, 2, 3; Ex. 1002, 123, 127 (cited at Prelim. Resp. 5 7). Thus, we are not persuaded by Patent Owner s assertion that Petitioners and their expert do not supplement the underlying record with respect to these references. Prelim. Resp. 8. B. Claim Construction 1. Parties Proposed Constructions Petitioner proposes constructions for the terms coded number, identity module, and programming transmitter, and proposes programmable interface be given its plain and ordinary meaning. Pet Patent Owner contends that Petitioner s proposed constructions for the terms identity module and programming transmitter are incorrect, but Patent Owner does not propose its own constructions for these terms. Prelim. Resp Based on Petitioner s unpatentability challenges and Patent Owner s arguments, we determine that these terms need not be construed explicitly at this time. 2. Processing module for authenticating On December 15, 2015, we authorized the parties to file supplemental briefs addressing the issue of whether or not 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 6

7 means-plus-function limitation under 35 U.S.C. 112, 6 and Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), and if so, how the limitation should be interpreted. Paper 12. In their supplemental briefs, both parties argue that the limitation should not be interpreted as a meansplus-function limitation under 35 U.S.C. 112, 6. Paper 13; Paper 14 (citing Ex. 2002, a district court decision regarding a similar term in a related patent). Based on the current record, we are not persuaded that the presumption against application of 35 U.S.C. 112, 6 has been overcome, and we determine that the limitation need not be construed further at this time. See Williamson, 792 F.3d at 1349 ( 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). 3. Single Transmission Patent Owner argues that there is a single transmission requirement in the independent claims, meaning that the processing module perform[s] coded number authentication on an incoming single transmission that includes both the coded number and the new telephone number or IP address intended for storing into the list. Prelim. Resp. 24. According to Patent Owner, the scope of the independent claims does not encompass situations in which a coded number is in one transmission and a number for storing is in a separate transmission because they must be in a single transmission. See id. at We disagree with Patent Owner s claim interpretation because the claims do not recite a single transmission requirement and the language of 7

8 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. Patent Owner argues that [t]his single transmission requirement is evident from the claim language itself which expressly recites that the authentication must be performed on an at least one of the transmissions including the at least one telephone number or IP address and the coded number. Prelim. Resp 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. 8

9 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 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. 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. at this time. 4. Remaining Claim Terms We determine that no other claim terms require express construction C. References 1. Whitley Whitley is directed to remotely monitoring and controlling via a wireless network various devices deployed in homes and businesses. Ex. 1003, Abstract. Whitley teaches: [G]ateways are configured to collect data, such as data describing use of electric power or other utilities by the particular facility at which they are located or data describing the status of various 9

10 sensors after arming of a security system. Also, gateways may be coupled to various devices within the facility in order to control the devices. For instance, gateways may control the lights within a facility according to a pre-programmed pattern that the user may change by communicating new commands via the present invention. Or, gateways may be configured remotely to receive commands and data, which allows remote control over the devices (e.g., home appliances or electronics) with which the gateway may communicate. Each uniquely addressable gateway includes a transceiver capable of communicating over a wireless network. Id. at 3:4 14. Whitley further teaches that gateway 20 may be a [Global System for Mobile Communications (GSM)] device that allows transfer of data, facsimile or messages, but which does not have voice capability. These messages can be formulated and read by a SIM or Subscriber Identity Module card that can be plugged in or otherwise incorporated into gateway 20. Id. at 9: SIM Specification The SIM Specification defines the interface between [a] Subscriber Identity Module (SIM) and [a] Mobile Equipment (ME) for use during the network operation phase of GSM as well as those aspects of the internal organization of the SIM which are related to the network operation phase. Ex. 1004, Kail Kail relates to a portable, real-time, reprogrammable sensor monitoring system and provides an apparatus and a method for remotely monitoring the status of a living or an inanimate subject. Ex. 1005, 1:6 7, 1:

11 4. 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. 1006, 1:5 8. D. Unpatentability Challenge based on the Combination of Whitley and the SIM Specification (Claims 1 3, 5 7, 10 15, 18, 22 24, 29, 30) 1. Claim 1 Petitioner contends that the subject matter of independent claim 1 would have been obvious over the combination of Whitley and the SIM Specification, providing analysis and arguments to explain how the cited prior art references allegedly teach the claimed subject matter. Pet a. Programmable communicator device having a programmable interface Claim 1 is 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. Petitioner contends Whitley s gateway teaches a programmable communicator device having a programmable interface as claimed. Pet Based on the current record, we agree with Petitioner 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. Pet. 12; Ex

12 Petitioner contends the gateway is wirelessly programmable because users can control and monitor the gateway via a wireless network. Id. at 17 (citing Ex. 1003, 3:3 14); see Ex. 1003, 3:10 14 ( [G]ateways may be configured remotely to receive commands and data, which allows remote control over the devices (e.g., home appliances or electronics) with which the gateway may communicate. Each uniquely addressable gateway includes a transceiver capable of communicating over a wireless network. ). In support of its argument that the gateway is a wirelessly programmable communicator device, Petitioner cites Whitley s teachings that the gateway may be programmed remotely by wireless messages, such as short messaging service ( SMS ) messages, and that the gateway processes the contents of the SMS message as though it was entered directly from a command console. Ex. 1003, 9:23 25 (cited at Pet. 20). Petitioner also contends Whitley teaches 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. Pet Petitioner argues Whitley teaches that gateway 20 includes a physical interface in communication with local devices it monitors, citing Whitley s teachings that [t]he term gateway includes any device that (a) provides a physical interface between internal devices associated with a particular facility 12 and external networks and that gateways 20 may couple to a remote facility 12 and may monitor, control or both monitor and control various devices within the facility 12, such as lights, security sensors, an answering machine, a home computer, etc. Pet. 20 (quoting Ex. 1003, 8:27 9:3) (emphasis omitted). 12

13 Petitioner argues that Whitley teaches that the interface is programmable, citing Whitley s teaching that [g]ateway 20 is programmed to poll each device coupled to it to determine the device s energy use (Ex. 1003, 16:20 21). Pet. 21. Petitioner also argues Whitley further discloses the ability to wirelessly program the local devices connected through the interface by SMS messages. Pet. 21 (citing Ex. 1003, 9:23 25, 16:9 12, 17:1 5). Petitioner also argues Whitley teaches sending messages to gateway 20 using a General Packet Radio System ( GPRS ) network, which Petitioner contends is a packet-switched data network. Id. (citing Ex. 1003, 14:22 27; Ex. 1009, 13 14). Petitioner contends that [c]ommands or messages sent over the GPRS network as SMS messages or GPRS data packets, such as those described in Whitley, are wireless packet switched data messages. Id. at 22 (citing Ex ). Patent Owner argues Petitioners have not cited to any disclosure in Whitley regarding what types of interfaces, if any, would be used to connect gateway 20 with these various examples of monitored technical devices and that Whitley merely contains vague statements that some undisclosed kind of physical interface would allow gateway 20 to couple to such devices in some undisclosed manner. Prelim. Resp. 18. As such, Patent Owner argues Petitioner has not shown that any interface associated with the gateway can be programmed wirelessly. Id. at 19. On the current record, we are not persuaded by Patent Owner s arguments that Whitley does not teach a programmable interface within the meaning of the patent. See Prelim. Resp. 23. Petitioner s explanation as to why Whitley teaches a programmable interface is sufficient at this 13

14 stage of the proceeding. Further, although Patent Owner argues that Whitley consists of vague statements (Prelim. Resp. 18), we note that the 717 patent provides little detail regarding a programmable interface as well. The term programmable interface appears only twice in the written description of the 717 patent, and only in the following passage, referring to Figure 1: An SMS alarm generation means 70 is provided to work together with a battery charge monitor 35 and a sensor means 80 and an alarm message list 120 and a programmable interface means 140 to generate alarm messages in response to changes in status conditions. Said programmable interface means may be attached to all manner of sensor devices for the purpose of relaying data from external devices and sensors either automatically or in response to a request for information from a remote device. Ex. 1001, 8:65 9:6 (emphases added). Figure 1 depicts programmable interface means 140 as a box connected to three other boxes labeled periodic status report generation means 130, SMS alarm generation means 70, and telephone circuit 10. As such, based on the record before us, we are persuaded Petitioner has demonstrated sufficiently that Whitley teaches 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. b. Processing module for authenticating Claim 1 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 14

15 programmable communicator device by determining if at least one transmission contains a coded number. Petitioner argues that the combination of Whitley and the SIM Specification teaches this limitation. Pet Petitioner argues Whitley teaches that the gateway can include a SIM card and can read SMS messages using the SIM card. Id. at (citing Ex. 1003, 9:15 25, 15:26 16:6, 16:9 12, 16:15 18; Ex ). Petitioner then acknowledges that Whitley does not expressly disclose authenticating wireless transmissions by determining if at least one of the wireless transmissions contains a coded number (id. at 25) and argues that the SIM Specification teaches this limitation (id. at 25 29). With respect to the SIM Specification, Petitioner contends that the SIM Specification discloses different security features involving wireless transmissions using a coded number. Id. at 25 (citing Ex. 1004, (section 7 entitled Security features )). In particular, Petitioner argues [t]he fixed dialing number (FDN) file is one exemplary file that is stored in memory on the SIM card and that requires processor authentication in order to update the file. Id. (citing Ex ). Petitioner argues that the CHV2 value and the UNBLOCK CHV2 (or PUK2 code) are coded numbers that, when contained in an SMS transmission, allow the gateway s processor to authenticate the transmission in the GSM network by comparing the received code with the code stored in the SIM. Pet. 27 (citing Ex. 1004, 13, 28, 31 33, 83 98; Ex ). Petitioner explains that the SIM Specification recites conditions for utilizing commands that require CHV2 access, citing the following disclosure in the SIM Specification: 15

16 CHV2: The action shall only be possible if one of the following two conditions is fulfilled: - a correct CHV2 value has already been presented to the SIM during the current session; - UNBLOCK CHV2 has been successfully performed during the current session. Ex. 1004, 28 (emphasis omitted). Petitioner argues that a person of ordinary skill in the art would have had reason to combine the teachings of Whitley and the SIM Specification because Whitley expressly describes using standard GSM features to provide the necessary functionality for sending messages to and from gateways 20. Pet. 27 (citing Ex. 1003, 9:10 13). In particular, Petitioner cites Whitley s explicit teaching of using a SIM card for operating in a GSM network. Id. at (citing Ex. 1003, 9:12 25, 12:9 12). Whitley teaches: Gateway 20 sends and receives SMS messages via and as part of the architecture of a GSM network. For instance, gateway 20 may be a GSM device that allows transfer of data, facsimile or e- mail messages, but which does not have voice capability. These messages can be formulated and read by a SIM or Subscriber Identity Module card that can be plugged in or otherwise incorporated into gateway 20. Ex. 1003, 9: Whitley further teaches that [b]y taking advantage of the SMS services provided in a GSM network, the network functionality required for forwarding short data messages to and from gateways 20 need not be developed from scratch. Id. at 12: Petitioner contends that combining the teachings of the SIM Specification regarding authentication with the teachings of Whitley would yield predictable results that the wireless messages would be authenticated 16

17 as described in the SIM Specification. Pet (citing Ex ). Petitioner also argues that Whitley provides a specific teaching, suggestion, and motivation to combine the teachings of Whitley and the SIM Specification. Id. at 29 (citing Ex ; Ex. 1003, 12: ). Patent Owner argues that Petitioner s obviousness analysis is inadequate and, therefore, the proffered combination of Whitley and the SIM Specification should be rejected. Prelim. Resp , 15, First, Patent Owner argues the petition is silent as to what differences there are between the subject matter of any of the claims and either Whitley and/or the SIM [Specification] and, therefore, Petitioner has not articulated the differences between the claimed invention and the prior art. Id. at 12. On this record, we disagree because, as noted above, Petitioner specifically acknowledges Whitley does not expressly disclose authenticating wireless transmissions by determining if at least one of the wireless transmissions contains a coded number. Pet. 25. Therefore, Petitioner has articulated at least some difference between Whitley and the subject matter of claim 1. Patent Owner also argues Petitioner has not provided an adequate rationale to combine Whitley and the SIM Specification. Prelim. Resp. 15, For example, Patent Owner argues Petitioner has not supported its assertion that there is a specific teaching, suggestion, and motivation in Whitley that would have led one of ordinary skill to modify Whitley with the SIM [Specification]. Id. at 35 (quoting Pet. 34). On this record, we disagree because, as explained above, Petitioner cites Whitley s express 5 Petitioner mistakenly cites Ex at 12:9 12 for the quoted material. 17

18 teachings of using a SIM card in the gateway. See Pet (citing Ex. 1003, 9:12 25, 12:17 20). On the current record, we are persuaded Petitioner has provided sufficient articulated reasoning to support the combination of Whitley and the SIM Specification, particularly Whitley s explicit teaching of incorporating a SIM card into the gateway of Whitley. Ex. 1003, 9: c. Store at least one telephone number or IP address Claim 1 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 the combination of Whitley and the SIM Specification teaches this limitation. Pet Petitioner argues Whitley teaches the gateway can be programmed to send messages to particular devices, such as handset 32. Id. at 30 (citing Ex. 1003, 17:7 14). Petitioner argues Whitley also teaches sending SMS messages to and from gateways using standard GSM functionality and sending packet messages using GPRS. Id. at (citing Ex. 1003, 5:15 6:14, 14:1 2, 14:26 27, 15:14 15). Petitioner then acknowledges that Whitley does not explicitly disclose how the gateway 20 updates or stores the telephone number or IP addresses that it is configured to and permitted to send outgoing wireless 18

19 transmissions and argues that the SIM Specification s disclosure of updating a fixed dialing number (FDN) file teaches these limitations. Id. at 32. Petitioner argues that the FDN file is a list of numbers or IP addresses to which a device associated with the SIM card is configured to and permitted to send messages. Pet. 32 (citing Ex at 80 83; Ex ). Petitioner then argues that the SIM Specification teaches how the FDN file is updated. Id. (citing Ex at 30, 38, 41, 83, 98, 104, and 131; Ex , 96 97). Petitioner argues that the SIM Specification teaches that the FDN file can be updated via an SMS message, which can be sent over a GPRS network. Id. at 33 (citing Ex at 131; Ex ). Petitioner argues that the command to update the FDN file would be authenticated as described in the discussion of the processing module for authenticating limitation, using a CHV2 or PUK2 code. Id. at Petitioner contends it would have obvious to combine these teachings of the SIM Specification with Whitley for the same reasons discussed above with respect to the processing module for authenticating limitation. Id. at Patent Owner argues that this limitation of claim 1 recites at least three principal requirements : (1) stor[ing] in memory a list of telephone numbers or IP addresses that functions as an outbound restrictive calling list, (2) performing the storing if the processing module is able to successfully perform coded number authentication on an incoming single transmission that includes both the coded number and the new telephone number or IP address intended for storing into the list, and (3) the single transmission must be a wireless packet switched data message 19

20 transmission. Prelim. Resp Patent Owner then argues Petitioner has not shown the combination of Whitley and the SIM Specification teaches alleged requirements (1) and (2). Prelim. Resp First, as we explain above in the section addressing claim construction, we do not agree with Patent Owner s interpretation that claim 1 recites 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 Prelim. Resp , With respect to Patent Owner s argument that the list to which the telephone number or IP address is stored must be an outbound restrictive calling list, this language is not recited in the claims. Rather, claim 1 recites that the one or more stored telephone numbers or IP addresses are numbers to which the programmable communicator device is configured to and permitted to send outgoing wireless transmissions (emphasis added). As explained above, Petitioner argues that the FDN file is a list of numbers or IP addresses to which a device associated with the SIM card is configured to and permitted to send messages. Pet. 32 (citing Ex at 80 83; Ex ). Patent Owner argues that none of the passages cited by Petitioners indicate that the ME would be restricted or limited to placing outgoing calls to only those numbers contained in the FDN phonebook. Prelim. Resp. 29. However, this does not address Petitioner s argument that the FDN is a list of numbers to which the device is configured to and permitted to send messages, as recited in claim 1. 20

21 d. Identity module Claim 1 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 the combination of Whitley and the SIM Specification teaches this limitation because Whitley teaches that each gateway is uniquely addressable through, for instance, a phone number, IP address, or similar identifier, and it further teaches using a Subscriber Identity Module (SIM) card in the gateway, and a SIM card stores a number of unique identifiers, such as the integrated circuit card (ICC) identification and the International Mobile Subscriber Identity (IMSI). Pet (citing Ex. 1003, 6:8 15, 9:12 17; Ex at 49, 51; Ex ). e. GPRS or packet switched messages Claim 1 further recites: 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. Petitioner contends Whitley teaches the use of GPRS and SMS messages for communicating with the gateway. Id. at (citing Ex. 1003, Abstract, 3:15 25, 16:15 18; Ex ). f. Process data Claim 1 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 in response to programming instructions received in an incoming wireless packet switched data message. Petitioner contends Whitley teaches that the gateway can be programmed to collect data, for example, from devices and that the 21

22 programming of the gateway to perform such tasks can be performed using SMS or GPRS packets. Id. at (citing Ex. 1003, 3:4 12, 5:16 22, 9:23 25, 16:19 17:15; Ex ). Patent Owner argues Whitley teaches that gateway 20 acts to package and forward data that it has received locally from a monitored technical device across a wireless network to a remote monitoring device, but it does not process the data, which Patent Owner argues is performed by central processor 40. Prelim. Resp However, Patent Owner has not explained sufficiently how packaging and forwarding data is not data processing. The 717 patent does not appear to have a definition of data processing that would exclude data packaging and forwarding. Patent Owner also argues Petitioner has not shown Whitley teaches processing data in response to programming instructions received in an incoming wireless packet switched data message, as recited in independent claim 1. Prelim. Resp We are not persuaded on the current record because Petitioner has shown Whitley teaches programming gateway 20 using wireless packet switched data messages, including programming to process data received from a monitored technical device. Pet For example, Petitioner cites Whitley s teaching regarding programming the gateway to poll a device: Gateway 20 is programmed to poll each device coupled to it to determine the device s energy use. For instance, gateway 20 can be connected to the thermostat, refrigerator, water heater, and washer/dryer in a particular residential facility as well as to the general meter for that facility. Gateway 20 polls those devices every hour to determine their energy use. Gateway 20 then forwards the poll results to the SIM card, which generates a SMS message containing the poll results as well as the date, time and location of gateway

23 Ex. 1003, 16:20 26 (cited at Pet. 37). Petitioner also cites Whitley s teachings that an SMS message received at gateway 20 will be processed by the gateway as though it was entered directly through the command console. Id. at 9:23 25 (cited at Pet. 38). g. Claim 1 Conclusion Upon review, we determine that the record before us establishes a reasonable likelihood that Petitioner would prevail on its assertion that the subject matter of claim 1 would have been obvious in view of Whitley and the SIM Specification. Petitioner s explanation of how each claim limitation is taught by the combination of prior art references is supported by the current record and persuasive at this stage. See Pet Independent Claims 24 and 29 Petitioner contends independent claims 24 and 29, which recite subject matter similar to claim 1 with slight variations noted by Petitioner, would have been unpatentable for the same reasons as claim 1. Pet ; see also Prelim. Resp (noting that disputed limitations of claim 1 are similar or identical to corresponding limitations in claims 24 and 29). For the reasons discussed with respect to claim 1, we determine that the record before us establishes a reasonable likelihood that Petitioner would prevail on its assertion that claims 24 and 29 would have been obvious in view of Whitley and the SIM Specification. 3. Dependent Claims 2, 3, 5 7, 10 15, 18, 22, 23, and 30 Petitioner contends dependent claims 2, 3, 5 7, 10 15, 18, 22, 23, and 30 would have been unpatentable over the combination of Whitley and the SIM Specification. Pet

24 a. Claims 3, 5, 6, 10 13, 15, 18, 22, and 23 Upon review, we determine that the record before us establishes a reasonable likelihood that Petitioner would prevail on its assertion that claims 3, 5, 6, 10 13, 15, 18, 22, and 23 would have been obvious in view of Whitley and the SIM Specification. Petitioner s contention that each claim limitation is taught by the combination of prior art references is supported by the current record and persuasive at this stage. See Pet Patent Owner argues Whitley does not teach the limitations of claim 10. Prelim. Resp Claim 10 recites: A programmable communicator device according to claim 1 further configured to determine whether the processed received data indicates a change in status of the at least one monitored technical device that crosses a threshold parameter, or that otherwise indicates an alarm condition in response to programming instructions received in an incoming wireless packet switched data message. Claim 10, therefore, recites alternative limitations separated by a comma and the word or. On the current record, we are persuaded that the portion of Whitley relied on by Petitioner, which teaches programming the gateway to send a message upon the occurrence of an event such as the triggering of an alarm at a facility (Ex. 1003, 17:7 14), teaches that the gateway is at least configured to determine whether the processed received data indicates a change in status of the at least one monitored technical device that crosses a threshold parameter, as recited in the first alternative of claim 10. See Pet. 46. Patent Owner argues Whitley teaches that the gateway does not make the required determination but rather that the alarm sensor makes the determination, which causes the sensor to send the alarm signal to the 24

25 gateway. Prelim. Resp On the current record, we do not find this argument persuasive because we are persuaded by Petitioner that Whitley teaches that the gateway makes some determination in order to send a message regarding the signal received from the monitored device. See Ex. 1003, 17:7 14. b. Claims 2, 7, 14, and 30 Claims 2, 7, 14, and 30 recite further limitations for the processing module previously recited in the independent claims. For example, claim 2 depends from claim 1 and recites that the processing module is configured to perform the data processing recited in claim 1. Patent Owner argues [c]laim 2 requires that the same processing module that is responsible for performing the coded number authentication function recited in claim elements 1(c) and (d) must also be the processing module that performs the data processing function of claim 2. Prelim. Resp. 41. Patent Owner argues Petitioner cites different modules from the SIM Specification and Whitley for performing authentication in claim 1 and data processing in claim 2 and, therefore, Petitioner has not shown the same processing module performs these functions, as required in claim 2. Id. Patent Owner makes similar arguments with respect to claims 7, 14, and 30. Id. at 42 43, On the current record, we are persuaded by Patent Owner s arguments. With respect to the processing module in claim 1, Petitioner argues [t]he microprocessor in the SIM card is capable of performing the claimed authentication functions, as set forth in further detail below, and is therefore the claimed processing module. Pet. 24. Thus, Petitioner explicitly maps the SIM Specification to the processing module of 25

26 claim 1. Claims 2, 7, 14, and 30 recite the processing module, making reference to the previously recited processing module of the independent claims. Then, with respect to each of dependent claims 2, 7, 14, and 30, Petitioner simply provides a block quote from Whitley with no explanation. Pet (citing Ex. 1003, 16:19 17:15), 45 (citing Ex. 1003, 16:20 28), 48 (citing Ex. 1003, 16:20 28), (citing Ex. 1003, 17:7 14). Petitioner does not provide any explanation reconciling its reliance on the SIM Specification for teaching the processing module of the independent claims with its reliance on Whitley for teaching the processing module limitations of claims 2, 7, 14, and 30. Therefore, we are persuaded by Patent Owner s arguments that Petitioner has not shown that the same processing module performs the authentication function of the independent claims and the further functions required in dependent claims 2, 7, 14, and Conclusion We determine that the record before us establishes a reasonable likelihood that Petitioner would prevail on its assertion that claims 1, 3, 5, 6, 10 13, 15, 18, 22 24, and 29 would have been obvious in view of Whitley and the SIM Specification. However, we are not persuaded that the record before us establishes a reasonable likelihood that Petitioner would prevail on its assertion that claims 2, 7, 14, and 30 would have been obvious in view of Whitley and the SIM Specification. 26

27 E. Unpatentability Challenge based on the Combination of Whitley, the SIM Specification, and Kail (Claims 16, 17, 19, and 20) Petitioner contends that the subject matter of claims 16, 17, 19, and 20 would have been obvious over the combination of Whitley, the SIM Specification, and Kail. Pet Petitioner contends a person of ordinary skill in the art would have had reason to combine the teachings of the references as proposed by Petitioner because these features were known and incorporating this known functionality into a known communication device, such as the gateway 20, would yield predictable results and because it would be obvious to apply known work in one field of endeavor for use in a similar field based on design incentives or other market forces. Pet. 52 (citing Ex ). Claim 16 recites: 1. Claims 16 and 17 A programmable communicator device according to claim 1 further comprising a location processing module configured to determine an at least one location of the programmable communicator device, and wherein the programmable communicator device is configured to respond to an at least one transmission initiated by an at least one monitoring device requesting that said location data be sent to the monitoring device in response to programming instructions received in an incoming wireless packet switched data message. Claim 17 depends from claim 16 and recites that the location processing module comprises a Global Positioning System (GPS) module. Kail is directed to [a]n automated, real-time, reprogrammable monitoring and control system for portable, remote sensors and subjects includes one or more portable monitoring units, each of the portable 27

28 monitoring units having a sensor, a location-determining device, and a sensor interface unit. Ex. 1005, Abstract. Petitioner cites Kail s disclosure that [t]he location-determining device 38 is preferably a global positioning system (GPS). Pet. 53 (citing Ex. 1005, 5:13 18). Patent Owner argues that, [b]ecause facility 12 [in Whitley] exists at a known and fixed location, there would be no purpose in supplementing gateway 20 with a GPS module. Prelim. Resp. 48. Patent Owner also argues that Petitioner s conclusory assertion that the GPS features of Kail were known and that using them with gateway 20 would have yielded predictable results is not a sufficient rationale for combining the references. Id. at 49. On the current record, we are not persuaded by Patent Owner s arguments, and we determine Petitioner has articulated a sufficient rationale to combine the teachings of Kail with Whitley and the SIM Specification supported by evidence in the record. See Ex We note that, contrary to Patent Owner s argument that there would be no purpose in including a GPS unit in the gateway, Whitley teaches sending location information in an SMS message. See Ex. 1003, 12:28 13:1 ( [G]ateway 20 could be configured to package and transmit, usually on a priority basis, a SMS message indicating a breach in security, as well as other data including the date and time, the location of the facilities.... ). Therefore, on the current record, we are persuaded that a person of ordinary skill in the art would have had a reason to combine the location determining teachings of Kail with the teachings of Whitley and the SIM Specification relating to remote monitoring and that doing so would yield predictable results. See Ex

29 2. Claims 19 and 20 Claim 19 depends from claim 1 and recites that the monitored technical device is a health monitoring system. Claim 20 recites: A programmable communicator device according to claim 19 wherein the programmable communicator device is configured to receive data from the health monitoring system through the programmable interface representing at least one of body temperature, blood pressure, periodic or continuous electrocardiogram heart rhythm, blood glucose concentration, blood electrolyte concentration, kidney function, liver function, and labor contractions in response to programming instructions received in an incoming wireless packet switched data message. Petitioner argues Kail teaches a monitored technical device that is a health monitoring system. See Pet (citing Ex. 1005, 2:22 27, 3:33 43, 3:49 51); see Ex. 1005, 3:33 43 (disclosure of a portable monitoring unit for a subject and availability of sensor data such as biological information from or sensor information on a medical device used by the person ). Patent Owner contends that Petitioner s reasons for combining Whitley and Kail are inadequate, arguing that Petitioner has not explained how Whitley and Kail involve similar fields of endeavor or what design incentives or market forces support a motivation to combine. Prelim. Resp Patent Owner also argues [t]here is no teaching in Whitley of monitoring a human being, and thus there would be no conceivable need for incorporating a health monitoring system into gateway 20. Id. at 50. On the current record, we are not persuaded by Patent Owner s arguments. Rather, we determine that Petitioner has provided sufficient articulated reasoning with rational underpinning for the combination of Whitley and the SIM Specification with Kail. See Pet In particular, 29

30 there is evidence of record from Petitioner s declarant that Whitley and Kail are both in the field of remote monitoring systems and that Kail recognizes the need for remote monitoring of human subjects who are, for example, elderly or infirm. See Ex (citing Ex. 1005, 1:42 56). 3. Conclusion Therefore, we determine that the record before us establishes a reasonable likelihood that Petitioner would prevail on its assertion that the subject matter of claims 16, 17, 19, and 20 would have been obvious in view of Whitley, the SIM Specification, and Kail. Petitioner s contention that each claim limitation is taught by the combination of prior art references is supported by the current record and persuasive at this stage. See Pet F. Unpatentability Challenge based on the Combination of Whitley, the SIM Specification, and Eldredge (Claim 21) Claim 21 depends from claim 1 and recites that the monitored technical device is a vending machine, which Petitioner acknowledges is not explicitly disclosed by Whitley and the SIM Specification. Pet. 55. Petitioner notes that Eldredge is directed to remotely monitoring vending machines. Id. (citing Ex. 1006, Abstract). Petitioner contends [a] person of ordinary skill in the art would combine these references because it would be obvious to apply known work in one field of endeavor for use in a similar field based on design incentives or other market forces. Id. In support, Petitioner notes Eldredge teaches that there is a need for remote monitoring of vending machines. Id. (citing Ex. 1006, 3:15 32); Ex Patent Owner argues that Petitioner has not provided a sufficient basis for combining the references nor any explanation regarding the technical 30

31 feasibility of incorporating Eldredge vending machines into the Whitley system. Prelim. Resp. 52. On the current record, we are not persuaded by Patent Owner s arguments. Rather, we determine that Petitioner has provided sufficient articulated reasoning with rational underpinning for the combination of Whitley and the SIM Specification with Eldredge s teachings of remotely monitoring a vending machine. See Pet Upon review, we determine that the record before us establishes a reasonable likelihood that Petitioner would prevail on its assertion that the subject matter of claim 21 would have been obvious in view of Whitley, the SIM Specification, and Eldredge. Petitioner s contention that each claim limitation is taught by the combination of prior art references is supported by the current record and persuasive at this stage. See Pet G. Unpatentability Challenge based on the Combination of Whitley, the SIM Specification, and Nettleton Report (Claims 1 3, 5 7, 10 15, 18, 22 24, 29, 30) Petitioner presents a separate unpatentability challenge as to claims 1 3, 5 7, 10 15, 18, 22 24, 29, and 30 over Whitley and the SIM Specification, discussed above, in view of the Nettleton Report, which Petitioner argues contains admissions by Patent Owner that programmable interfaces were well known at the time of filing the application that led to the 717 Patent. See Pet. 14, (citing Ex. 1008). Notably, however, Petitioner has not provided a publication date for the Nettleton Report or evidence to make a threshold showing of public accessibility to demonstrate that it is a prior art printed publication upon which Petitioner can base a separate unpatentability challenge. See Pet. 5 (listing date as N/A ); see 35 U.S.C. 311(b) ( A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that 31