Enfora, Inc.v.M2M Solutions LLC

Patent Trial and Appeal Board

Feb 8, 2016

13934763 (P.T.A.B. Feb. 8, 2016)

Trials@uspto.gov Paper 14
571-272-7822 Entered: February 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ENFORA, INC., NOVATEL WIRELESS SOLUTIONS, INC., and
NOVATEL WIRELESS, INC.,
Petitioner,

v.

M2M SOLUTIONS LLC,
Patent Owner.
____________

Case IPR2015-01672
Patent 8,648,717 B2
____________

Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
DANIEL J. GALLIGAN, Administrative Patent Judges.

GALLIGAN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

IPR2015-01672
Patent 8,648,717 B2

2

I. INTRODUCTION
Enfora, Inc., Novatel Wireless Solutions, Inc., and Novatel Wireless,
Inc. (collectively, “Petitioner”) filed a Petition (“Pet.”) requesting inter
partes review of claims 1–7, 10–14, 18, and 21–30 of U.S. Patent No.
8,648,717 B2 (“the ’717 patent,” Ex. 1001). Paper 2. 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.
Upon consideration of the information presented in the Petition and
the Preliminary Response, we are not persuaded that Petitioner has
established a reasonable likelihood that it would prevail in its challenges to
claims 1–7, 10–14, 18, and 21–30 of the ’717 patent. Accordingly, we
decline to institute an inter partes review of those 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. 1–2; Paper 5. Petitioner concurrently filed another Petition for inter
partes review challenging claims 1–7, 10–20, and 23–30. Pet. 2; IPR2015-
IPR2015-01672
Patent 8,648,717 B2

3

01670. Three additional Petitions for inter partes review have been filed by
other petitioners challenging various claims of the ’717 patent. See
IPR2015-01823; IPR2016-00054; IPR2016-00055.
B. The ’717 Patent (Ex. 1001)
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;
IPR2015-01672
Patent 8,648,717 B2

4

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. Prior Art Relied Upon
Petitioner relies upon the following prior art references:
Ardalan et al.
(hereinafter “Ardalan”)
US 6,900,737 B1 May 31, 2005
(filed Feb. 12,
1998)
Ex. 1027
Eldredge WO 95/05609 Feb. 23, 1995 Ex. 1028
Whitley WO 99/49680 Sept. 30, 1999 Ex. 1026
Van Bergen WO 00/17021 Mar. 30, 2000 Ex. 1029
Specification of the Bluetooth System, v1.0B (1999)
(hereinafter “Bluetooth Specification”)
Ex. 1033

D. Asserted Grounds of Unpatentability
Petitioner challenges claims 1–7, 10–14, 18, and 21–30 of the ’717
patent based on the asserted grounds of unpatentability set forth in the table
below.
References Basis Claim(s) Challenged
Whitley and Ardalan § 103(a) 1–7, 10–14, 18, 22, and 24–
30
Whitley, Ardalan, and
Eldredge
§ 103(a) 21
Whitley, Ardalan, and Van
Bergen
§ 103(a) 23
Whitley, Ardalan, and
Bluetooth Specification1
§ 103(a) 4

1 Petitioner proposes this as an alternative ground. Pet. 42.
IPR2015-01672
Patent 8,648,717 B2

5

II. CLAIM CONSTRUCTION
Petitioner and Patent Owner propose constructions for various terms
of the ’717 patent. Pet. 10–16; Prelim. Resp. 2–6; Papers 10, 12. Based on
Petitioner’s unpatentability challenges, we determine that these terms, as
well as all remaining terms, need not be construed explicitly at this time.
III. ANALYSIS
Petitioner contends that a combination of Whitley and Ardalan
renders obvious the subject matter of independent claims 1, 24, and 29.
Pet. 4, 26–40, 49–51, 53–55.
A. “Processing Module for Authenticating”
All of the asserted grounds of unpatentability in this Petition rely on
Whitley alone or in combination with Ardalan as allegedly teaching or
suggesting the following limitation of independent claims 1, 24, and 29: “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.” See Pet. 30–33, 49–50, 54.
First, Petitioner argues that “Whitley inherently discloses a check to
determine if the wireless transmission contains a ‘coded number.’” Pet. 30.
Petitioner argues:
Specifically, Whitley discloses that each gateway is “uniquely
addressable through, for instance, a phone number, IP address,
or similar identifier” so that the customer can send “messages or
commands that will be routed directly … to the gateway.” Ex.
1026 at 6:8-14; see also Ex. 1026 at 3:13-14; 9:6-8; and 12:9-11.
Ex. 1004 at ¶ 135. Inherently, messages sent to gateway 20 in
SMS or GPRS will only be processed by gateway 20 and applied
IPR2015-01672
Patent 8,648,717 B2

6

to it if the particular message includes gateway 20’s unique
identifier – here the phone number, IP address, or other identifier.
Ex. 1004 at ¶ 135. Messages that are received by gateway 20
that do not include the unique identifier will not be processed by
gateway 20. Ex. 1004 at ¶ 135. The gateway’s inherent
confirmation of the identifier and subsequent acceptance of the
message satisfies this claim element. Ex. 1004 at ¶ 135.
Pet. 30–31.
The Federal Circuit has stated:
[t]o establish inherency, the extrinsic evidence must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Inherency, however,
may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of
circumstances is not sufficient.
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted).
In support of its inherency argument, Petitioner cites paragraph 135 of
the Declaration of Randall A. Snyder (“Snyder Declaration”) (Ex. 1004).
See Pet. 30–31. Paragraph 135 of the Snyder Declaration states: “I have
prepared the following claim chart showing how each and every element of
Claim 1 reads on the disclosure of Whitley and Ardalan.” Ex. 1004 ¶ 135.
Paragraph 135 then includes a claim chart for claim 1 that appears to be
largely identical to the argument in the Petition. Id. With respect to this
inherency argument, the Snyder Declaration and Petitioner’s arguments
appear to be identical. Paragraph 135 of the Snyder Declaration does not
cite any underlying evidence supporting the assertion that the gateway in
Whitley necessarily would check a transmission to determine “if the
particular message includes gateway 20’s unique identifier” and only would
IPR2015-01672
Patent 8,648,717 B2

7

process those messages having the unique identifier. Ex. 1004 ¶ 135; Pet.
31; see also 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the
underlying facts or data on which the opinion is based is entitled to little or
no weight.”). Nor does paragraph 135 of the Snyder Declaration provide
further analysis supporting the assertion of inherency.
We further note that Whitley’s disclosure of programming multiple
gateways simultaneously using a broadcasting function suggests that
messages may not include the gateway’s unique identifier in all instances.
Specifically, Whitley states:
SMS messages may be configured for delivery to a particular
identified terminal, such as handset 32, or they may be broadcast
throughout a specific geographical area by using the SMS cell
broadcast feature. This broadcasting function, described in the
GSM 03.41 and GSM 04.11 that are incorporated herein by this
reference, is useful for reprogramming multiple gateways 20
simultaneously or warning customers at various facilities 12 of
particular events in their geographic area (e.g., a weather warning
or the like).
Ex. 1026, 11:29–12:6. This passage teaches that the “SMS cell broadcast
feature” is used to send messages to a specific geographic area, rather than
to a particular terminal, suggesting that the terminal’s unique identifier does
not need to be included in the message for the message to be processed by
the gateway. Therefore, this evidence undermines Petitioner’s conclusory
assertion of inherency.
As such, Petitioner has not proffered sufficient evidence to persuade
us that the gateway in Whitley necessarily performs a check to see if the
unique identifier of the gateway is included in the transmission.
Petitioner further contends that Ardalan teaches using 32-bit
identifiers for message originators and recipients and that messages sent to a
IPR2015-01672
Patent 8,648,717 B2

8

meter in Ardalan will only be processed if the message includes the meter’s
32-bit identifier. Pet. 31–32 (citing Ex. 1027, 4:28–53, 7:6–12; Ex. 1004 ¶
135). Petitioner then contends:
One of skill would have been motivated to modify Whitley to
include the 32-bit identifier of Ardalan in its SMS message to
provide improved identification and authentication of incoming
messages, improved organization of associations between
devices and telephone numbers on its server side (see, e.g., such
teaching at col. 5:6-17 of Ex. 1027), and for at least the reasons
described in Section VII(E). Ex. 1004 at ¶ 135.
Pet. 32. Patent Owner argues Petitioner has not explained adequately why a
person of ordinary skill in the art would make this proposed modification of
Whitley and Ardalan. Prelim. Resp. 25. We agree.
The Supreme Court, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), has stated that obviousness conclusions “cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Based on the record before us, we are persuaded Petitioner has not provided
an adequate rationale for why a person of ordinary skill in the art would
have modified Whitley with Ardalan’s teachings of using a 32-bit identifier.
Petitioner cites the following disclosure from Ardalan to support its
proposed modification:
The AMR server 23 and database 25 work with meter IDs. The
AMR server sends and receives packets that refer to meters using
the 32-bit IDs. The communications gateway 24 is responsible
for remembering which phone number is used to reach a given
meter. The association between each meter ID and phone
number is stored in a meter/phone database 26 accessible by the
communications gateway. The gateway 24 passes the phone
number for a given meter ID to the SMS along with the packet
IPR2015-01672
Patent 8,648,717 B2

9

from the AMR server 23 encapsulated as a SMS packet. For
example, the AMR server and communications gateway would
cooperate as follows to initiate the reading of a meter.
Ex. 1027, 5:6–17. This passage teaches that, in Ardalan, it is necessary to
associate phone numbers with 32-bit device identifiers because “[t]he AMR
server 23 and database 25 work with meter IDs.” Id. at 5:6. However, as
highlighted by Petitioner’s arguments with respect to Whitley, the unique
identifier in Whitley is the gateway’s phone number, IP address, or other
identifier by which the device is “uniquely addressable.” See Pet. 30–31
(citing Ex. 1026, 6:8–14, 3:13–14; 9:6–8, 12:9–11). Petitioner has not
explained adequately why adding another unique identifier to the system of
Whitley, which already teaches that each gateway has a unique identifier,
would improve “identification and authentication of incoming messages”
and “organization of associations between devices and telephone numbers
on its server side,” as argued by Petitioner. See Pet. 32; Prelim. Resp. 25.
Petitioner cites paragraph 135 of the Snyder Declaration in support of
its argument. See id. However, the Snyder Declaration provides no
additional persuasive explanation supporting Petitioner’s argument. Rather,
on this point, the Snyder Declaration and Petitioner’s arguments appear to be
identical.
Petitioner also cites Section VII(E) of the Petition, entitled “Reasons
to Combine the References,” in support of its proposed modification of
Whitley with the 32-bit identifiers of Ardalan. Pet. 32. This section offers
general reasons for combining the asserted prior art references, such as: a
person of ordinary skill in the art would “consult each reference and
combine the teachings to provide the most efficient and capable monitoring
system with the most efficient and capable programming provisions” (id. at
IPR2015-01672
Patent 8,648,717 B2

10

24–25); “[i]t would have been a simple matter” to combine the teachings “to
provide additional functionality and improved performance” (id. at 25); and
“[o]ne of skill would have been motivated to utilize the techniques in any of
these references to improve the system in each, particularly because the
improvements yield predictable results – e.g., the added functionality of
Ardalan, Eldredge, and Van Bergen as compared to Whitley” (id.).
However, these general statements do not address why a person of ordinary
skill in the art would have had a reason to include the additional unique
identifier disclosed in Ardalan into the system of Whitley, which already
teaches a unique identifier for each gateway. The Snyder Declaration’s
section entitled “Reasons to Combine the References” appears to be
identical to Section VII(E) of the Petition and provides no further
elaboration or explanation supporting Petitioner’s contentions. See Ex. 1004
¶¶ 127–33.
Based on the record before us, we are not persuaded that Whitley
inherently teaches or suggests “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,” or that Petitioner has
explained sufficiently why a person of ordinary skill in the art would modify
the system of Whitley to include the 32-bit identifier of Ardalan and thereby
meet the “processing module” limitation. Because all challenges in this
Petition depend on Whitley alone or in combination with Ardalan as
teaching or suggesting this limitation, we are not persuaded Petitioner has
established a reasonable likelihood of prevailing in showing that the
challenged claims would have been obvious as alleged.
IPR2015-01672
Patent 8,648,717 B2

11

IV. CONCLUSION
For the foregoing reasons, we are not persuaded that the Petition
establishes a reasonable likelihood that Petitioner would prevail in showing
claims 1–7, 10–14, 18, and 21–30 of the ’717 patent are unpatentable under
35 U.S.C. § 103(a).

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied, and no trial is instituted.

IPR2015-01672
Patent 8,648,717 B2

12

For PETITIONER:
Christopher W. Kennerly
Naveen Modi
Timothy P. Cremen
chriskennerly@paulhastings.com
naveenmodi@paulhastings.com
timothycremen@paulhastings.com

For PATENT OWNER:
Jeffrey N. Costakos
Michelle A. Moran
jcostakos@foley.com
mmoran@foley.com