Telit Wireless Solutions Inc v. M2M Solutions LLC

1. Case Identification

• Case #: IPR2016-00054
• Patent #: 8,648,717
• Filed: October 21, 2015
• Petitioner(s): Telit Wireless Solutions Inc. & Telit Communications PLC
• Patent Owner(s): M2M Solutions LLC
• Challenged Claims: 1-30

2. Patent Overview

• Title: Programmable Communicator
• Brief Description: The ’717 patent describes a programmable communicator device, essentially a wireless modem, designed to collect data from a connected "monitored technical device" (e.g., a sensor or switch). The communicator then wirelessly relays this data to a remote "monitoring device" (e.g., a computer) and can be remotely programmed by a "programming transmitter."

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-3, 5-15, 18, and 23-28 by Wandel under 35 U.S.C. §102(b)

• Prior Art Relied Upon: Wandel (Patent 6,034,623).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wandel disclosed every element of the challenged claims. Wandel described a radio modem with an Autonomous Radio Telemetry (ART) program that functions as a programmable communicator. It connected to various input/output devices (monitored technical devices) via a reconfigurable serial interface (a programmable interface). The device transmitted data wirelessly over packet-switched networks to a central computer (monitoring device) and was remotely programmable via incoming "ART command packets." Petitioner asserted Wandel taught authentication using a "32-bit password number" (a coded number) and remotely programming destination IP addresses, which are then stored in memory to direct outgoing data packets.
  • Key Aspects: This ground asserted that a single prior art reference, not considered during the original prosecution, taught the entire invention claimed.

Ground 2: Obviousness of Claim 4 over Wandel in view of Sonera under 35 U.S.C. §103

• Prior Art Relied Upon: Wandel (Patent 6,034,623) and Sonera (WO 00/14984).
• Core Argument for this Ground:
  • Prior Art Mapping: Claim 4 added the limitation of processing transmissions compliant with Bluetooth standards. Wandel disclosed a wired serial interface for connecting to local devices. Sonera taught a Bluetooth interface for short-range wireless communication, specifically highlighting its use to connect devices "without cumbersome cabling."
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to replace Wandel's wired interface with Sonera's Bluetooth interface. The motivation was to achieve the well-known and predictable benefits of wireless connectivity, such as increased mobility, easier installation, and reduced cost.
  • Expectation of Success: A POSITA would have had a high expectation of success, as implementing Bluetooth was a matter of routine engineering by 1999 to replace a standard wired connection.

Ground 3: Obviousness of Claims 16, 17, 19, 20, and 22 over Wandel in view of Fernandez under §103

• Prior Art Relied Upon: Wandel (Patent 6,034,623) and Fernandez (Patent 6,697,103).

• Core Argument for this Ground:

  • Prior Art Mapping: These dependent claims specified particular types of monitored devices, such as location trackers (GPS), health monitors, and home appliances. Wandel disclosed a generic monitoring system with a "general purpose interface" capable of connecting to a wide range of devices. Fernandez disclosed remote monitoring systems specifically for the applications recited in the claims, including location tracking, health monitoring, and home appliance control.
  • Motivation to Combine: A POSITA would be motivated to apply Wandel's flexible and remotely programmable communicator platform to the specific, known applications disclosed in Fernandez. This combination represented a simple substitution of one type of monitored device for another to achieve a predictable result.
  • Expectation of Success: Integrating Fernandez's specific sensors (e.g., GPS receiver) with Wandel's general-purpose interface was argued to be a simple engineering task that would have yielded predictable results.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including:

  • Claim 21 is obvious over Wandel in view of McGarry (Patent 6,038,491), which taught remote monitoring of vending machines.
  • Claims 29-30 are obvious over Wandel in view of Whitely (WO 99/49680), which taught programming a remote device using Short Message Service (SMS) messages.
  • As an alternative, Petitioner presented Grounds 6-10, which argued the same combinations as Grounds 1-5 but added Boden (Patent 6,182,228). Boden was included to teach filtering outgoing transmissions to an exclusive list of permitted addresses, in the event the Board adopted a narrower claim construction requiring such exclusivity.

4. Key Claim Construction Positions

• "numbers to which the programmable communicator device is configured to and permitted to send outgoing wireless transmissions": This term was a central point of contention.
  • Petitioner's primary position was that this phrase, under its broadest reasonable interpretation, designated a non-exclusive list of allowed destination numbers. It argued the patent specification only disclosed screening for incoming calls, not outgoing ones, meaning the device was simply "allowed" to send to the stored numbers without being restricted from sending to others.
  • Petitioner presented alternative grounds (Grounds 6-10) in the event the Board adopted a narrower construction requiring an exclusive list, where transmissions to all other numbers are actively blocked or filtered.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-30 of the ’717 patent as unpatentable.