M2m Solutions LLC v. amazon.com, Inc.

Case: 22-1122 Document: 32 Page: 1 Filed: 02/22/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
M2M SOLUTIONS LLC,
Appellant
v.
AMAZON.COM, INC.,
Appellee
______________________
2022-1122, 2022-1124
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2019-
01204, IPR2019-01205.
______________________
Decided: February 22, 2023
______________________
MARC N. HENSCHKE, Cantor Colburn LLP, Hartford,
CT, argued for appellant. Also represented by ANDREW C.
RYAN.
CHRISTINA JORDAN MCCULLOUGH, Perkins Coie LLP,
Seattle, WA, argued for appellee. Also represented by
THERESA H. NGUYEN; DANIEL T. SHVODIAN, Palo Alto, CA.
______________________
Before LOURIE, PROST, and CHEN, Circuit Judges.
Case: 22-1122 Document: 32 Page: 2 Filed: 02/22/2023
2 M2M SOLUTIONS LLC v. AMAZON.COM, INC.
LOURIE, Circuit Judge.
M2M Solutions LLC (“M2M”) appeals from two final
written decisions of the United States Patent and Trade-
mark Office Patent Trial and Appeal Board (“the Board”)
finding claims 1–30 of U.S. Patent 9,961,477 (“the ’477 pa-
tent”) and claims 1–30 of U.S. Patent 10,038,989 (“the ’989
patent”) unpatentable as obvious under 35 U.S.C. § 103.
See Amazon.com v. M2M Sols. LLC, IPR2019-01204
(P.T.A.B. Jan. 20, 2021) (“’477 Decision”), J.A. 1–115; Am-
azon.com v. M2M Sols. LLC, IPR2019-01205 (P.T.A.B. Jan.
20, 2021) (“’989 Decision”), J.A. 163–250 (collectively, “De-
cisions”). For the reasons provided below, we affirm.
BACKGROUND
The ’477 and ’989 patents, which share a common spec-
ification, relate to a “remote asset management system” in
which a server “receive[s] remote asset data” from wireless
modules linked to the assets, such as laptops, cellular
phones, etc. See, e.g., ’477 patent at Abstract. Claim 1 of
the ’477 patent, reproduced below, is representative.
1. A method of operating a remote computer
server platform to provide a range of consumer
services by autonomously monitoring and man-
aging a plurality of consumer device assets wire-
lessly connected to one or more communications
networks, each asset having operating system
and application software, nonvolatile memory for
storing files of data content for display to a con-
sumer user of the device, and a display apparatus
for displaying the stored data content, said
method comprising:
...
receiving at the remote computer server plat-
form communications sent from each of the
plurality of consumer device assets containing
consumer usage information identifying a
Case: 22-1122 Document: 32 Page: 3 Filed: 02/22/2023
M2M SOLUTIONS LLC v. AMAZON.COM, INC. 3
manner in which a consumer user has used
the particular sending consumer device asset,
said communications having automatically
resulted from at least one selected from the
group consisting of preprogrammed condi-
tions and programming instructions gener-
ated by the remote computer server platform;
monitoring the plurality of consumer device
assets by the remote computer server plat-
form by automatically processing, according
to preprogrammed conditions, the received
operational status information and the re-
ceived consumer usage information;
managing the plurality of consumer device as-
sets by the remote computer server platform,
based upon the results of having processed at
least some of the received consumer usage in-
formation, by sending communications con-
taining one or more management instructions
that cause the stored display data content
files of one or more assets to be automatically
modified so as to provide a consumer service;
and
...
’477 patent at col. 26 ll. 5–61 (emphasis added). We refer to
the language emphasized above as the “managing” limita-
tion. An identical limitation appears in independent claim
20 of the ’477 patent and independent claims 1 and 20 of
the ’989 patent.
Additionally of relevance, claims 9, 16, 19, 27, and 28
of both challenged patents require a “unique identifier.”
Representative claim 9 of the ’477 patent is reproduced be-
low.
9. A method according to claim 8 wherein the
remote computer server platform includes in
Case: 22-1122 Document: 32 Page: 4 Filed: 02/22/2023
4 M2M SOLUTIONS LLC v. AMAZON.COM, INC.
one or more of the aforesaid wireless packet
switched data message communications con-
taining one or more management instructions
sent to one or more of the plurality of con-
sumer device assets a unique identifier of the
particular receiving consumer device asset,
and wherein said unique identifier comprises
in whole or in part an identification code spe-
cific to that particular receiving consumer de-
vice asset.
’477 patent at col. 27 ll. 49–57 (emphasis added).
Amazon.com, Inc. (“Amazon”) petitioned for inter
partes review (“IPR”) of both challenged patents, asserting
that claims 1–30 of each patent would have been obvious
over Kloba 1 in combination with various other references.
During the IPRs, the Board construed the “managing” lim-
itation as requiring only “the sending of communications
containing management instructions, and thus the manag-
ing of the plurality of consumer device assets by the remote
server computer platform, [to] be based upon the results of
such processing.” ’477 Decision, J.A. 95; see also ’989 Deci-
sion. at J.A. 188. M2M disagreed, proposing its own, nar-
rower construction, but did not dispute that the asserted
prior art disclosed the “managing” limitation under the
Board’s construction.
The Board additionally determined in both IPRs that
asserted prior art references, Kloba (’477 patent) or Kloba
and Hoyle 2 (’989 patent), disclose the “unique identifier”
required by dependent claims 9, 16, 19, 27, and 28 of both
challenged patents. The Board found that a person of or-
dinary skill would have understood Kloba to disclose a con-
sumer device and server in direct communication, where
1 U.S. Patent 6,421,717 to Kloba et al.
2 U.S. Patent 6,141,010 to Hoyle.
Case: 22-1122 Document: 32 Page: 5 Filed: 02/22/2023
M2M SOLUTIONS LLC v. AMAZON.COM, INC. 5
said communication would include the unique IP address
of the receiving consumer device. Decisions, J.A. 109–12,
244–47. M2M argued that, in at least some instances,
these communications passed through an intermediate
router, which would cause the unique IP address to be that
of the router, not the receiving consumer device asset. Id.at J.A. 110, 245. The Board found M2M’s argument unper-
suasive. Id. at J.A. 112, 247.
In the ’477 Decision, the Board also found that M2M
was collaterally estopped from arguing that Kloba failed to
disclose the “consumer usage information” required by
claims 1 and 20. The Board had previously rendered a final
written decision in IPR2017-01892 of related U.S. Patent
8,577,358 (“’1892 IPR”), which has similar claims to the
’477 and ’989 patents. In the ’1892 IPR, the Board con-
strued the term “consumer usage information” to be “at
least as broad as information relating to a consumer’s use
of a device asset,” ultimately finding that Kloba disclosed
this limitation under this construction. But the Board also
alternatively analyzed Kloba under the narrower construc-
tion of “consumer usage information” that M2M had pro-
posed in its Preliminary Patent Owner Response:
“information identifying the manner in which a consumer
has used a consumer device asset.” And even under this
construction, the Board found that Kloba disclosed the lim-
itation. Amazon.com v. M2M Sols., Inc., IPR2017-01892
(P.T.A.B. Feb. 7, 2019) at 40–42.
M2M did not appeal the ’1892 IPR final written deci-
sion on any issues relating to “consumer usage infor-
mation.” Here, the Board construed “consumer usage
information” to mean information “identifying a manner in
which a consumer user has used the particular sending
consumer device asset.” ’477 Decision, J.A. 24–25. The
Board then found that the ’1892 IPR decision had previ-
ously decided whether Kloba disclosed “consumer usage in-
formation” “under a claim construction that materially
tracks the claim construction adopted here.” ’477 Decision,
Case: 22-1122 Document: 32 Page: 6 Filed: 02/22/2023
6 M2M SOLUTIONS LLC v. AMAZON.COM, INC.
J.A. 58. Because an identical issue had previously been
fully litigated and finally decided, the Board found that
M2M was therefore collaterally estopped from arguing
Kloba did not disclose the claimed “consumer usage infor-
mation.” ’477 Decision, J.A. 59, 208–09. These findings
caused the Board to find the challenged claims unpatenta-
ble.
M2M appeals the Board’s rejection of claims 1–30 of the
’477 patent and claims 1–30 of the ’989 patent. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review “the Board’s ultimate claim constructions de
novo.” AC Techs. S.A. v. Amazon.com, Inc., 912 F.3d 1358,
1365 (Fed. Cir. 2019). We “review the Board’s legal conclu-
sion of obviousness de novo, and underlying factual find-
ings for substantial evidence.” In re Magnum Oil Tools
Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016). “The in-
herent teaching of a prior art reference” is a “question of
fact.” In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995).
M2M raises four main arguments on appeal: (1) that
the Board erred in construing the “managing” limitation,
(2) for the ’477 patent, that the Board erred in determining
that M2M was collaterally estopped from asserting that
Kloba did not disclose the required “consumer usage infor-
mation,” (3) that the Board erred in finding Kloba disclosed
the required “consumer preference information,” and (4)
that the Board erred in determining Kloba disclosed the
required “unique identifier.” We address each in turn.
I
M2M argues on appeal that the Board erred in constru-
ing the “managing” limitation of independent claims 1 and
20 to not require “management instructions” that are
based upon the results of the server’s processing of “con-
sumer usage information.” M2M argues that the Board’s
construction is inconsistent with the claim language, the
Case: 22-1122 Document: 32 Page: 7 Filed: 02/22/2023
M2M SOLUTIONS LLC v. AMAZON.COM, INC. 7
specification, and the understanding of a person of ordi-
nary skill. We disagree.
The words of a claim “are generally given their ordi-
nary and customary meaning.” Vitronics Corp. v. Concep-
tronic, 90 F.3d 1576, 1582 (Fed. Cir. 1996). And the most
important tool in determining the meaning of a claim is the
claim language itself. Id. (“[W]e look to the words of the
claims themselves . . . to define the scope of the patented
invention.”). The Board correctly recognized that the
phrase “based upon the results of processing” modifies
“managing,” which the claims define as “sending communi-
cations” containing “management instruments.” Given
this plain language, the Board correctly determined that
the server’s act of managing devices by sending communi-
cations containing management instructions must be
“based on the results of having processed” consumer usage
information, rather than, as M2M argues, the content of
the management instruction themselves. Only if the inven-
tor has clearly used the term in a manner contrary to its
plain and ordinary meaning do we depart from its normal
usage, id., and no clear disavowal in either the specification
or the prosecution history supports deviating from the
plain claim language in this case. We therefore agree with
the Board’s construction of the “managing” limitation.
Because M2M does not dispute that the asserted prior
art discloses the “managing” limitation under the Board’s
construction, we therefore affirm the Board’s conclusion
that claims 1 and 20 of the ’989 patent would have been
obvious over the asserted prior art. M2M raises an addi-
tional argument regarding the independent claims of the
’477 patent, which we address in Section II below.
II
M2M argues that the Board erred in finding that it was
collaterally estopped from arguing that Kloba did not dis-
close “consumer usage information” as required by claims
1 and 20 of the ’477 patent. Collateral estoppel applies if
Case: 22-1122 Document: 32 Page: 8 Filed: 02/22/2023
8 M2M SOLUTIONS LLC v. AMAZON.COM, INC.
“(1) a prior action presents an identical issue; (2) the prior
action actually litigated and adjudged that issue; (3) the
judgment in that prior action necessarily required determi-
nation of the identical issue; and (4) the prior action fea-
tured full representation of the estopped party.” Stephen
Slesinger, Inc. v. Disney Enters., Inc., 702 F.3d 640, 644
(Fed. Cir. 2012). M2M argues that collateral estoppel was
inappropriate because the issue was not fully litigated in
the ’1892 IPR.
M2M asserts that while it challenged Kloba’s disclo-
sure of “consumer usage information” under materially the
same construction as here in its Preliminary Patent Owner
Response, it elected not to do so in its Patent Owner Re-
sponse. We find this to be an understatement of M2M’s
arguments made in its Patent Owner Response. In reality,
M2M contested Kloba’s disclosure of “consumer usage in-
formation” under a narrower construction than at issue
here. See Amazon.com v. M2M Sols, Inc., IPR2017-01892,
Patent Owner Response at 55–64. M2M argued that Kloba
does not teach “consumer usage information” “when
properly construed” as “information that identifies the par-
ticular manner in which a consumer has used a consumer
device asset.” Id. (emphasis added). In its final written
decision, the Board noted M2M’s slight change of its con-
struction but nonetheless determined that Kloba disclosed
“consumer usage information” under the broader construc-
tion that M2M had proposed in its Preliminary Patent
Owner Response, one that materially tracks the construc-
tion in this case: “information identifying the manner in
which a consumer has used a consumer device asset.” See
Amazon.com v. M2M Sols, Inc., IPR2017-01892 (P.T.A.B.
Feb. 7, 2019) at 40–41; see also Ohio Willow Wood Co. v.
Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013)
(“Our precedent does not limit collateral estoppel to patent
claims that are identical.”). We therefore find that this
same issue was actually litigated in the ’1892 IPR and
agree with the Board that M2M is collaterally estopped
Case: 22-1122 Document: 32 Page: 9 Filed: 02/22/2023
M2M SOLUTIONS LLC v. AMAZON.COM, INC. 9
from arguing that Kloba failed to disclose “consumer usage
information” as required by claims 1 and 20 of the ’477 pa-
tent.
Because (1) M2M does not dispute that the asserted
prior art discloses the “managing” limitation under the
Board’s construction, with which we agree, as explained in
Section I, and (2) the Board’s finding of collateral estoppel
was proper, we therefore affirm the Board’s conclusion that
claims 1 and 20 of the ’477 patent would have been obvious
over the asserted prior art.
III
M2M further argues that the Board erred in determin-
ing that Kloba discloses “management instructions” based
upon the results of “consumer preference information” as
required by dependent claims 4, 5, 10, 14, 17, 22, 23, and
25 of both the ’477 and ’989 patents by relying on a new
theory not raised in the petitions. Namely, M2M argues
that the Board relied sua sponte on Kloba’s “delta” (e.g.,
change) information for the claimed “management instruc-
tions.” Amazon argues that the Board relied on both delta
and non-delta information in determining that Kloba dis-
closed these limitations. The Board’s analysis as to delta
information, however, was only discussed in response to
M2M raising it in its Patent Owner Response, while the
non-delta information was based on a theory presented in
the Petition.
We agree with Amazon. Regardless whether delta in-
formation was timely asserted or not, the Board relied on
both delta and non-delta information for this limitation.
See, e.g., ’477 Decision, J.A. 73–95. For example, in the ’477
Decision, the Board found that “Kloba describes . . . in-
structions generated as a result of processing the deltas
and other information from providers.” Id. at J.A. 76 (em-
phasis added); see also id. at J.A. 77 (discussing portions of
Kloba that “do not explicitly refer to delta instructions”).
And in the ’989 Decision, the Board did not rely on Kloba
Case: 22-1122 Document: 32 Page: 10 Filed: 02/22/2023
10 M2M SOLUTIONS LLC v. AMAZON.COM, INC.
alone, but rather in combination with another reference,
Hoyle. Indeed, in responding to M2M’s argument that
Kloba’s delta information did not constitute the claimed
“management instructions,” the Board concluded that “Pa-
tent Owner does not identify anywhere within the Petition
that Petitioner actually makes this argument; nor do we
find this argument in the Petition.” ’989 Decision, J.A. 220.
The Board further explained that “Petitioner is not relying
solely on the ‘deltas’ in this case to be the ‘management in-
structions,’” but rather that, “Petitioner relie[d] on the syn-
chronization process more generally.” Id. It is that
synchronization process, taken together with the teachings
of Hoyle, not the delta information, that the Board found
satisfied the limitations. Id. at J.A. 220–30. This synchro-
nization process theory was presented by Amazon in its Pe-
titions. Amazon.com v. M2M Sols. LLC, IPR2019-01204,
’477 Petition, J.A. 396, 399–402; Amazon.com v. M2M Sols.
LLC, IPR2019-01205, ’989 Petition, J.A. 5191–97, 5201–
5203.
We therefore conclude that it is of no consequence
whether the Board additionally relied sua sponte on delta
information for either patent. For this reason, we affirm
the Board’s conclusion that claims 4, 5, 10, 14, 17, 22, 23,
and 25 of both the ’477 and ’989 patents would have been
obvious over the asserted prior art.
IV
M2M additionally argues that the Board erred in hold-
ing Amazon to a lower standard than necessary in proving
that Kloba inherently disclosed the required “unique iden-
tifier” of dependent claims 9, 16, 19, 27, and 28–30 of the
challenged patents. But M2M bases its argument on a
false premise, as the Board did not rely on inherency for
Kloba’s disclosure of the “unique identifier.” Indeed, the
Board explicitly noted that, “[c]ontrary to Patent Owner’s
arguments, inherency is not at issue here.” Decisions, J.A.
112, 247. Instead, the Board found that a person of
Case: 22-1122 Document: 32 Page: 11 Filed: 02/22/2023
M2M SOLUTIONS LLC v. AMAZON.COM, INC. 11
ordinary skill would have understood Kloba to disclose a
client and server in direct communication, without the use
of an intermediate router, where said communications
would necessarily include the unique IP address of the re-
ceiving device. Id. at J.A. 109–12, 244–47. The Board
found that this unique IP address satisfied the “unique
identifier” limitation of the asserted claims. Id. at J.A. 112,
247. This finding is not based on inherent disclosure.
Moreover, these findings were supported by substan-
tial evidence. M2M’s expert witnesses admitted that de-
vices can directly connect to a server through the internet
without the use of an intermediate router and that Kloba
makes no mention of routers. Id. at J.A. 111, 246; Ama-
zon.com v. M2M Sols. LLC, IPR2019-01204, -01205, Ex.
1021 at 147:13–20, 156:11–20. And none of the Board’s
findings on this limitation were seriously disputed by
M2M. See, e.g., J.A. 138, (“Patent Owner simply did not
challenge Petitioner’s assertion that Kloba teaches wire-
lessly connecting to an Internet without a router prior to
its Rehearing Request.”), 271 (same), 142 (“Patent Owner
does not dispute that in the absence of a router connection,
Kloba teaches the claims at issue here.”), 275 (same); Deci-
sions, J.A. 112 (referencing “Petitioner’s undisputed show-
ing” of Kloba’s disclosure of this limitation), 247 (same).
We therefore affirm the Board’s conclusion that claims 9,
16, 19, 27, and 28 of both challenged patents would have
been obvious over the asserted prior art.
V
M2M makes no separate arguments regarding depend-
ent claims 2–3, 6–8, 11–12, 15, 18, 21, 24, 26, and 29–30.
See, e.g., Appellant Br. at 2–3. We therefore affirm the
Board’s conclusion that these claims of both challenged pa-
tents would have been obvious over the asserted prior art.
Case: 22-1122 Document: 32 Page: 12 Filed: 02/22/2023
12 M2M SOLUTIONS LLC v. AMAZON.COM, INC.
CONCLUSION
We have considered M2M’s remaining arguments but
find them unpersuasive. For the foregoing reasons, the de-
cision of the Board is affirmed.
AFFIRMED