PTAB

IPR2015-01823

Sierra Wireless America Inc v. M2M Solutions LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Programmable Communicator
  • Brief Description: The ’717 patent describes a programmable communicator device that can be remotely programmed using authenticated wireless packet-switched data messages. The core inventive concept asserted during prosecution was the ability to remotely and securely update a stored list of telephone numbers or IP addresses to which the device is permitted to send outgoing transmissions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Whitley and SIM+ME Spec - Claims 1-3, 5-7, 10-15, 18, 22-24, and 29-30 are obvious over Whitley in view of SIM+ME Spec.

  • Prior Art Relied Upon: Whitley (International Publication No. WO 99/49680) and SIM+ME Spec (GSM 11.11 version 7.4.0 Release 1999).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Whitley discloses a remotely programmable communication device, or "gateway," that uses a standard GSM network with a Subscriber Identity Module (SIM) card to monitor and control technical devices. This gateway can be programmed via SMS or GPRS messages. While Whitley does not explicitly disclose authenticated updates to a list of permitted outgoing numbers, the SIM+ME Spec, a public GSM standards document, explicitly details this functionality. It describes the Fixed Dialing Number (FDN) list, a file on the SIM card that restricts outgoing calls to pre-approved numbers. The SIM+ME Spec further teaches that this FDN list can be updated wirelessly ("over the air") using an authenticated message containing a coded number (the CHV2 password, formerly PIN2), thus meeting the key limitations of the independent claims.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA), when implementing the GSM-based gateway described in Whitley, would naturally consult standard GSM documentation like the SIM+ME Spec to understand the inherent capabilities of the system's components. Whitley explicitly states its system takes advantage of existing SMS services in a GSM network so that functionality "need not be developed from scratch." This provides a direct motivation for a POSITA to look to the standard to implement features like secure remote programming, rather than inventing them anew.
    • Expectation of Success: A POSITA would have a high expectation of success because the combination involves implementing standard, well-documented features (FDN list, CHV2 authentication from SIM+ME Spec) within a system (Whitley's gateway) expressly designed to operate on the very network for which those standards were created.

Ground 2: Obviousness over Whitley, SIM+ME Spec, and Kail - Claims 16-17 and 19-20 are obvious over the combination further in view of Kail.

  • Prior Art Relied Upon: Whitley (WO 99/49680), SIM+ME Spec (GSM 11.11 version 7.4.0 Release 1999), and Kail (Patent 5,959,529).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the base combination of Whitley and SIM+ME Spec to address claims specific to location and health monitoring. Claims 16-17 require a location processing module (e.g., GPS), and claims 19-20 require the monitored device to be a health monitoring system. Petitioner asserted that Kail discloses a reprogrammable remote sensor monitoring system specifically for these applications, teaching the use of a GPS module for location tracking and sensors for monitoring biological conditions.
    • Motivation to Combine: A POSITA would combine the specific monitoring applications from Kail with Whitley's general-purpose remote monitoring platform. Petitioner argued it would have been an obvious design choice to apply Whitley's flexible gateway system to known and commercially valuable fields like remote location tracking and health monitoring, as taught by Kail. This constitutes applying a known technique to a similar system to yield predictable results.

Ground 3: Obviousness over Whitley, SIM+ME Spec, and Eldredge - Claim 21 is obvious over the combination further in view of Eldredge.

  • Prior Art Relied Upon: Whitley (WO 99/49680), SIM+ME Spec (GSM 11.11 version 7.4.0 Release 1999), and Eldredge (International Publication No. WO 95/05609).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addresses dependent claim 21, which requires the monitored technical device to be a vending machine. While the base combination of Whitley and SIM+ME Spec does not mention this specific application, Eldredge discloses a system for remotely monitoring a plurality of vending machines using data packets sent to a central computer.
    • Motivation to Combine: Petitioner argued that a POSITA would be motivated to apply the general remote monitoring architecture of Whitley to the specific application of vending machine monitoring taught by Eldredge. Given the known market need for remote vending machine monitoring, as stated in Eldredge, it would have been an obvious application of Whitley's more advanced, GSM-based system.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-3, 5-7, 10-15, 18, 22-24, and 29-30 based on Whitley, SIM+ME Spec, and Admitted Prior Art concerning programmable interfaces.

4. Key Claim Construction Positions

  • "programmable interface": Petitioner argued this term should be given its plain and ordinary meaning. This position was taken in direct opposition to a district court's construction in related litigation ("an interface that is able to be directly programmed"), which Petitioner contended was not supported by the patent's specification.
  • "coded number": Petitioner proposed a broad construction to include any code used to authenticate a transmission, consistent with the specification's exemplary use of a PUK code while also stating "any similar unique coding may be used."
  • "identity module": Petitioner argued for a broad interpretation where the module is any device for storing a unique identifier or coded number, explicitly including a SIM card.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review for each ground presented and the cancellation of claims 1-3, 5-7, 10-24, and 29-30 of the ’717 patent as unpatentable.