Enfora Inc.v.M2M Solutions LLCDownload PDFPatent Trials and Appeals BoardFeb 8, 201613934763 - (D) (P.T.A.B. Feb. 8, 2016) Copy Citation 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 IPR2015-01670 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 IPR2015-01670 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, 10–20, and 23–30 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, 10–20, and 23–30 of the ’717 patent. Accordingly, we decline to institute an inter partes review of 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. 1–2; Paper 5. Petitioner concurrently filed another Petition for inter partes review challenging claims 1–7, 10–14, 18, and 21–30. Pet. 2; IPR2015-01672. Three additional Petitions for inter partes review have IPR2015-01670 Patent 8,648,717 B2 3 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; and wherein the programmable communicator device is configured to process data received through the programmable IPR2015-01670 Patent 8,648,717 B2 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. Prior Art Relied Upon Petitioner relies upon the following prior art references: Kennedy, III et al. (hereinafter “Kennedy”) US 5,771,455 June 23, 1998 Ex. 1026 Gaukel US 6,072,396 June 6, 2000 Ex. 1027 Van Bergen WO 00/17021 Mar. 30, 2000 Ex. 1028 Specification of the Bluetooth System, v1.0B (1999) (hereinafter “Bluetooth Specification”) Ex. 1034 Applicant’s Admitted Prior Art (AAPA)—excerpts from Ex. 1001, 1:30– 4:9 (“Background of the Invention” section of the ’717 patent). D. Asserted Grounds of Unpatentability Petitioner challenges claims 1–7, 10–20, and 23–30 of the ’717 patent based on the asserted grounds of unpatentability set forth in the table below. References Basis Claim(s) Challenged Kennedy and AAPA § 103(a) 1–7, 10–18, and 24–30 Kennedy, AAPA, and Gaukel § 103(a) 19 and 20 Kennedy, AAPA, and Van Bergen § 103(a) 23 Kennedy, AAPA, and Bluetooth Specification1 § 103(a) 4 1 Petitioner proposes this as an alternative ground. Pet. 44. IPR2015-01670 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 A. “Processing Module for Authenticating” All of the asserted grounds of unpatentability in this Petition rely on Kennedy 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. 32–35, 50, 54. Petitioner contends that Kennedy teaches this limitation in two ways. Id. First, Petitioner argues that Kennedy discloses a “handshake protocol” in which a challenge is issued and a response is transmitted in return. Pet. 33–34 (citing Ex. 1026, 16:44–48, 18:61–19:58; Ex. 1004 ¶ 140). Kennedy discloses: “If the platform receives a challenge, then at block 332 the platform returns a response based on the challenge received, a key particular to the mobile unit, and an encryption algorithm.” Ex. 1026, 19:35–38. Petitioner argues that “[a] ‘key’ in this instance is a ‘coded number.’” Pet. 33. Petitioner further argues: “In this manner, the units 16, 216 only permit receipt of the programming transmission if it contains, in part, a key that i[s] ‘particular to the mobile unit,’ i.e., that is unique to the mobile unit in the system in which it is used.” Id. at 34. IPR2015-01670 Patent 8,648,717 B2 6 Although Petitioner has established that Kennedy discloses transmitting a response based, in part, on a key, Petitioner has not shown Kennedy discloses that the key itself, which Petitioner contends is the claimed “coded number,” is transmitted. As noted above, Kennedy explains that “the platform returns a response based on the challenge received, a key particular to the mobile unit, and an encryption algorithm.” Ex. 1026, 19:36–38 (emphasis added); see also id., Fig. 10 (block 332 states “platform returns response”). Kennedy then explains how the key and the algorithm are known by the mobile unit and the platform: As noted, the key used in the generation of the response is a function of the mobile unit and may be generated from a lookup table of numbers shared by both mobile unit 216 and platform 224 indexed by the MIN/ESN of mobile unit 216. The encryption algorithm, also known by both mobile unit 216 and platform 224 can be any appropriate mathematical algorithm, and may be modified periodically, as can the lookup table, to maximize security. Ex. 1026, 19:39–46 (emphasis added). Thus, Kennedy teaches that the key and the algorithm are used in the generation of the response, but Kennedy does not state that the key and the algorithm themselves are transmitted. Rather, the mobile unit and the platform know them or can derive them. As such, Petitioner has not shown that Kennedy’s “handshake protocol” teaches or suggests that “at least one transmission contains a coded number,” i.e., the key, as required by claims 1, 24, and 29. Second, Petitioner argues that “the ‘coded number’ can also be satisfied by the inclusion of the telephone number (or other unique identifier) of the programmable communicator device with the transmission itself. This is done as a matter of course in mobile telephone communications.” Pet. 34. Petitioner contends that “[o]nly if the telephone IPR2015-01670 Patent 8,648,717 B2 7 number of the programmable communicator device (or other unique identifier) is received as part of a transmission will the transmission be read.” Id. (citing Ex. 1004 ¶ 140). Therefore, according to Petitioner, “the checking of this information by the unit inherently performs the recited ‘authentication’ step, with or without the key discussed above.” Id. (emphasis added) (citing Ex. 1004 ¶ 140). 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 140 of the Declaration of Randall A. Snyder (“Snyder Declaration”) (Ex. 1004). See Pet. 34. Paragraph 140 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 Kennedy and AAPA.” Ex. 1004 ¶ 140. Paragraph 140 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 140 of the Snyder Declaration does not cite any underlying evidence supporting the assertion that the mobile unit in Kennedy necessarily would check a transmission to determine “if the telephone number of the [mobile unit] (or other unique identifier) is received IPR2015-01670 Patent 8,648,717 B2 8 as part of a transmission” and only would read those transmissions that include the telephone number or other unique identifier. Ex. 1004 ¶ 140; Pet. 34; 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 140 of the Snyder Declaration provide further analysis supporting the assertion of inherency. As such, we are not persuaded that Petitioner has proffered sufficient evidence to demonstrate that the mobile unit in Kennedy necessarily performs a check to see if the telephone number or other unique identifier of the mobile unit is included in the transmission and that, only if the number or identifier is included, the mobile unit reads the transmission. Based on the record before us, we are not persuaded by Petitioner’s arguments that Kennedy 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.” Because all challenges in this Petition depend on Kennedy 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. 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, 10–20, and 23–30 of the ’717 patent are unpatentable under 35 U.S.C. § 103(a). IPR2015-01670 Patent 8,648,717 B2 9 V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. IPR2015-01670 Patent 8,648,717 B2 10 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 Copy with citationCopy as parenthetical citation