M2M Solutions LLC v. Sierra Wireless America Inc. et al

Filing 215

MEMORANDUM ORDER regarding MOTIONS for Reconsideration (180 in 12-cv-30-RGA, 164 in 12-cv-33-RGA, 139 in 12-cv-32-RGA). The term "a programmable interface" is construed to mean "an interface that is able to be directly programmed." The term "processing module" is construed to mean "components or units of a computer program." Signed by Judge Richard G. Andrews on 10/2/2015. Associated Cases: 1:12-cv-00030-RGA, 1:12-cv-00032-RGA, 1:12-cv-00033-RGA(nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
M2M SOLUTIONS LLC,
Plaintiff,
v.
Civil Action No. 12-30-RGA
SIERRA WIRELESS AMERICA, INC. and :
SIERRA WIRELESS, INC.,
. Defendants.

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
M2M SOLUTIONS LLC,
Plaintiff,
v.
Civil Action No. 12..:32-RGA
ENFORA, INC., NOVATEL WIRELESS
SOLUTIONS, INC., and NOVATEL
WIRELESS, INC.,
Defendants.

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
M2M SOLUTIONS LLC,
Plaintiff,

v.
Civil Action No. 12-33-RGA
MOTOROLA SOLUTIONS, INC., TELIT
COMMUNICATIONS PLC, and TELIT
WIRELESS SOLUTIONS, INC.
Defendants.

MEMORANDUM ORDER

The Court issued a Memorandum Opinion construing the claims in U.S. Patent No.
8,094,010 ('"010 patent") on November 12, 2013. (D.I. 92). Before the Court is Defendants'
Motion for Reconsideration of the Court's Claim Construction of"Processing Module" and
"Programmable Interface" Based on the Federal Circuit En Banc Decision in Williamson v.
CitrixOnline. (D.1.180). Themotionisfullybriefed. (D.1.180, 195, 198). The Court granted
· the motion to address an intervening change in the applicable law and heard oral argument on
September24, 2015. (D.I. 194) Upon reflection, for the reasons that follow, the Court reaches
the same determination made in its original claim construction opinion. (D.I. 92).
In Williamson v. Citrix Online, LLC, the Federal Circuit overruled prior precedent by
deciding to "abandon characterizing as 'strong' the presumption that a limitation lacking the
words 'means' is not subjectto § 112, para. 6:" Williamson v. Citrix Online, LLC, 792 F.3d
1339, 1349 (Fed. Cir. 2015) (en bane). In doing so, the court noted that it "will apply the
presumption as [it had] done prior to Lighting World, without requiring any heightened
evidentiary showing .... " Id. Accordingly, "[w]hen a claimterm lacks the words 'means,"'
there is still a presumption that § 112 'il 6 does not apply, but "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."' Id. (citation and internal quotations omitted). The standard remains
"whether the words of the claim are understood by persons of ordinary skill in the art to have a
sufficiently definite meaning as the name for structure." Id. (citation omitted).
In addressing the specific claims at issue, the Federal Circuit in Williamson noted that
"'[m]odule' is a well-known nonce word that can operate as a substitute for 'means' in the

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context of_§ 112, para. 6." Id. at 1350. The Court explained that such "[g]eneric terms ... that
reflect nothing more than verbal constructs may be used in a claim in a manner that is ·
tantamount to using the word 'means·' because they typically do not connote sufficiently definite
structure and therefore may invoke § 112 para. 6." Id. (citation and internal quotations omitted).
The Federal Circuit ultimately found that the presumption against the application of§ 112 ·ir 6
had been overcome, because, as used in the specific claim at issue, 1 ''the word 'module' does not
provide any indication of structure because it sets forth the same black box recitation of structure
for providing the same specified function as if the term 'means' had been used." Id.
a. "Programmable Interface~'
This Court previously construed the term "programmable interface" to mean: "An
interface that is able to be directly programmed." (D.I. 92 at 10). In doing so, it rejected
Defendants' argument that§ 112·-,r 6 applied, reasoning that "'programmable interface' connotes
sufficient structure to one of skill in the art, and both component terms have well understood
definitions:" (Id. at 11 ). Quoting Lighting World, however, the opinion twice referenced the
strength of the presumption against the application of§ 112 if 6, due to the absence of the word
"means~"

(Id. at 10-11).

Here, Defendants·' argument regarding the "programmable interface" term is rather
cursory, and emphasizes that this Court "relied on the then-existing 'strong presumption"
standard [from] Lighting World, which Williamson overruled." (D.I. 180 at 12). While they
concede that the term programmable "might be well understood," Defendants argue it still "does

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The entire claim limitation at issue in Williamson read: "a distributed learning control module for receiving
communications transmitted between the presenter and the audience member computer systems and for relaying the
communications to an intended receiving computer system and for coordinating the operation of the streaming data
module." Williamson, 792 F.3d at 1350.

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not give the claim element sufficient structure:" (Id.). Plaintiff argues that Williamson is of no
consequence to the Court's construction of "programmable interface," because Williamson did
not address any analogous claim language. (D.I. 195 at 19). Additionally, Plaintiff points out
that Williamson, despite weakening it, nonetheless confirmed that a rebuttable presumption
against applying §112 ii 6 continues to apply in the absence of the word "means," which
Defendants can only overcome by showing that the claim term fails to connote sufficiently
definite structure. (Id.).
The Court sees no reason to alter its original construction of the term "programmable
interface." While the presumption against the application of§ 112 if 6 is no longer a "strong" one
after Williamson, it nonetheless remains a presumption that Defendants must.affirmatively
overcome. See Williamson, 792 F.3d at 1349. This Court previously concluded that ''both
component terms have well understood definitions," and therefore "connote[] sufficient structure
to one of skill in the art." (D.I. 92 at 11 ). Defendants provide no argument that interface is a
nonce word that could trigger § 112 if 6, nor do they present any expert testimony to show that
the words of the claim would not be understood by persons of ordinary skill in the art as having
sufficiently definite structure. Defendants' cursory argument that the admittedly wellunderstood term "programmable" does not give the claim element sufficient structure, does
little-ifanything-to meet its burden under Williamson of"demonstrat[ing] thatthe claim term
fails to recite sufficiently definite structure or else recites function without reciting sufficient
structure for performing that function." Williamson, 792 F.3d at 1350 (citation and internal
quotations omitted). Accordingly, the mere fact that the Federal Circuit modified the
presumption against the application of§ 112 if 6 from a strong one to an ordinary one, does not

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change the fact that Defendants have failed to overcome this presumption, and the Court declines .
to change its previous determination as to the·"programmable interface~' term. 2
b. "Processing Module"
This Court previously construed the term "processing module" to mean: "Components or
units of a computer program." (D.I. 92 at 12). The Court rejected Defendants' argument that the
term was a means-plus-function limitation without corresponding structure, and, in doing so,
stated that its analysis with regard to "programmable interface" was applicable to this term as
well. (Id.). The Court did, however, also rely on the decisions of other district courts that had
"construed 'module' as connoting sufficient structure to avoid the application of§ 112 ·ir 6," in
making its determination that § 112 if 6 did not apply. (Id. at 13).
Defendants emphasize Williamson's weakening of the presumption against-the
application of§ 112 ·ir 6. (D.I. 180 at 11-12). Defendants argue further that Williamson provides
a clear directive that "module~' is a nonce word that invokes § 112 if 6, and that the word
"processing" does not provide sufficient corresponding structure. (Id. at 12). They also contend
that the c1aim limitation as a whole is in a format consistent with traditional means-plus-function
claim limitations, in that it merely replaces the word "means" with "module" .and recites the
term's function. (Id.). Plaintiff argues that the surrounding claim language "expressly explains
how the 'processing module' is able to perform its recited function of authenticating a received
incoming transmission-i.e., 'by determining ifthe at least one transmission contains the coded
number."' (D.I. 195 at 17). Plaintiff asserts that this additional language in the claim limitation

2

Plaintiff also asserts that, since this Court's Markman ruling, it has developed "substantial record evidence
demonstrating that, in addition to its dictionary definitions, the claim term 'programmable interface' was used in the
prior art to designate a general class of structures." (D.I. 195 at 11). Indeed, the expert declaration of Dr. Ray W.
Nettleton, while not necessary to reach the Court's present conclusion, appears to lend support to this Court's
original determination that the claim term '"programmable interface' connotes sufficient structure to one of skill in
the art." (D.I. 92 at 11; D.I. 197 at 5-10).

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provides sufficient algorithmic structure such that a person of ordinary skill in the art would
understand it as using a specific method of authenticating an incoming transmission. (Id.). This
"simple three-step algorithm," Plaintiff argues, provides a specific, narrowly described manner
of authenticating the incoming messages, "[r]ather than trying to capture the multitude of
different ways that a received incoming transmission might potentially be authenticated .... "

(Id. at 18).
"Structure," with regard to computer-implemented inventions, most often takes the form
of"analgorithm for performing the claimed function." Williamson, 792 F.3dat 1352 (citation
omitted); see also Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298-99 (Fed. Cir. 2014). The
algorithm must provide "some explanation of how the [claim term] performs the claimed
function." Blackboard, Inc. v. Desire2Leam, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009). This
requirement, consistent with the goal of§ 112·ir 6, is intended to prevent parties from
"attempt[ing] to capture any possible means for achieving [an] end." Noah Sys., Inc. v. Intuit

Inc., 675 F.3d 1302, 1317 (Fed. Cir.2012). A patentee can express an algorithm "in any
understandable terms including as a mathematical -formula, in prose, or as

aflow chart, or in any

other manner that provides sufficient structure." Typhoon Touch Techs., Inc. v. Dell, Inc., 659
F.3d 1376, 1385 (Fed. Cir. 2011) (citation and internal quotations omitted). In the software
context, "the patent need only disclose sufficient structure for a person of skill in the field to
provide an operative software program for the specified function." Id. (citation omitted).
"Structure may [] be provided by describing the claim limitation's operation .... [which]
is more than just its function; it is how the function is achieved in the context of the invention."

Apple, 757 F.3d at 1299. The Federal Circuit has held that "[e]ven if a patentee elects to use a
'gene~c'

claim temi, such as 'a nonce word or a verbal construct,' properly construing that term

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... may still provide sufficient structure such that the presumption against means-plus-function
claiming remains intact." Id. Accordingly, "if a limitation recites a term with a known structural
meaning, or recites either a known or generic term with a sufficient description of its operation,
the presumption against means-plus-function claiming remains intact." Id. at 1300 (emphasis
added).
Here, it is probably the case that the word "processing" by itself fails to provide sufficient
structure in theterm "processing module." The Court finds, however, that Defendants have not
overcome the presumption that § 112 if 6 does not apply. They do not "demonstrate[] that the
claim term fails to 'recite sufficiently definite structure' or else recites 'function without reciting
sufficient structure for performing that function."' Williamson, 792 F.3d at 1349 (citation
omitted)
The entire claim limitation at issue reads: 3
a processing module for authenticating an at least one transmission sent from a
programming transmitter and received by the programmable communicator device,
the at least one transmission including a coded number and at least one telephone
number or Internet Protocol (IP) .address corresponding to an at least one
monitoring device, wherein the processing module authenticates the at least one
transmission by determining if the at least one transmission contains the coded
number, the processing module authenticating the at least one transmission if the
transmission includes the coded number.
(D.I. 1-2 at 12).
Plaintiff, through the Expert declaration of Dr. RayW. Nettleton, has supported its
assertion that the entire claim limitation recites sufficient structure for a person of skill in the art
to be "able to write a software program for implementing such an algorithm for use in a wireless
data module .... " (D.I. 197 at 5). Dr. Nettleton states: "The surrounding claim language in the

3

In Williamson, the Federal Circuit emphasized that analyzing the claim limitation in question requires
consideration of the "entire passage" of the claim limitation, rather than simply looking at the principal phrase at
issue. See Williamson, 792 F.3d at 1350.

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'processing module' limitation expressly explains how this authenticating function is to be
performed. Indeed, the claim language states that the particular manner by which the 'processing
module' can carry out authenticating is 'by determining ifthe at least one transmission contains
the coded number."' (Id. at 3). Dr. Nettleton further explains that a person of skill in the art
would understand the intrinsic record disclosures "as comprising a simple three-step algorithm."

(Id. at 5). 4
Defendants, on the other hand, present no expert testimony to prove that a person of skill
in the art would not understand the claim limitation as providing sufficient structure. Rather,
Defendants rely on arguments in their briefthat "the processing module limitation, as a whole, is
in a format consistent with traditional means-plus-function claim limitations" and "[t]he claim_s
do not describe how the module interacts with other components ... in a way that might ...
impart structure to the module as recited in the claim." (D.I. 180 at 12) (citations internal and
quotations omitted) (alterations in original). Tellingly, Defendants do not address the additional
claim language which Plaintiff argues provides sufficient algorithmic structure within the claim
limitation itself. Defendants do not establish by any evidence-let alone clear and convincing
. evidence-that the above claim limitation does not provide sufficient algorithmic structure. See

Williamson, 792 F.3d at 1349. Accordingly, they have failed to overcome the presumption that
the claim is not subject to § 112 if 6. See id.
In the Court's view, the "processing module" claim limitation is not the type of claim
where Plaintiff is trying to "capture any possible means for achieving [an] end." Noah Sys., Inc.

4

In pertinent part, Dr. Nettleton explained further:
A POSITA would appreciate the three steps of this authentication algorithm as being the following:
(1) identifying a coded number contained in a received incoming transmission; (2) retrieving a coded
number stored locally in memory on the receiving device; and (3) comparing the coded number
from the transmission with the coded number retrieved from memory to determine whether they
match.
(D.I. 197 at 5).

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v. Intuit Inc., 675 F.3d 1302, 1317 (Fed. Cir. 2012). Indeed, the claim limitation describes how
this authentication process takes place in considerable detail. 5 Here, much like in Apple, the
limitation recites a "generic term with a sufficient description of its operation, [rendering] the
presumption against means-plus-function claiming [] intact." Apple, 757 F.3d 1286, 1300 (Fed.
Cir. 2014). Despite the fact that the claim recites a function, the immediately following words
provide algorithmic structure for performing that function. (D.I. 1-2 at 12). Accordingly, even
under the presumption as understood after Williamson, Defendants have not met their burden of
overcoming the presumption that§ 112 if 6 does not apply, because they do not demonstrate that
"the claim term fails to recite sufficiently definite structure or else recites function without
reciting sufficient structure forperformingthat function." Williamson, 792 F.3d at 1349 (citation
and internal quotations omitted).

5

Following the language reciting the function of the "processing module," the claim limitation recites the following
explanation of the algorithmic structure for performing that function:
the at least one transmission including a coded number and at least one telephone number or Internet
Protocol (IP) address corresponding to an at least one monitoring device, wherein the processing
module authenticates the at least one transmission by determining if the at least one transmission
contains the coded number, the processing module authenticating the at least one transmission if the
transmission includes the coded number.
(D.I. 1-2 at 12).
By contrast, the entirety of the claim limitation at issue in Williamson consisted of"distributed learning
control module" and three separate statements written in means-plus-function fashion: "[1] for receiving
communications transmitted between the presenter and the audience member computer systems and [2] for relaying
the communications to an intended receiving computer system and [3] for coordinating the operation of the
streaming data module." Williamson, 792 F.3d at 1350.
·

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After having considered the submissions of the parties and hearing oral argument on this
matter, IT IS HEREBY ORDERED that, as used in the asserted claims of U.S. Patent No.
8,094,010 ('"010 patent"):
1. The term "a programmable interface" is construed to mean "an interface that is
able to be directly programmed."
2. The term "processing module" is construed to mean "components or units of a
computer program."
It is SO ORDERED this 2-_ day of October, 2015.

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