NOTE: This disposition is nonprecedential.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.

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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 Trademark Office Patent Trial and Appeal Board (“the Board”)

finding claims 1–30 of U.S. Patent 9,961,477 (“the ’477 patent”) 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; Amazon.com v. M2M Sols. LLC, IPR2019-01205 (P.T.A.B. Jan. 

20, 2021) (“’989 Decision”), J.A. 163–250 (collectively, “Decisions”). For the reasons provided below, we affirm. 

BACKGROUND

The ’477 and ’989 patents, which share a common specification, 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 managing a plurality of consumer device assets wirelessly 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 consumer user of the device, and a display apparatus 

for displaying the stored data content, said 

method comprising: 

. . .

receiving at the remote computer server platform communications sent from each of the 

plurality of consumer device assets containing 

consumer usage information identifying a 

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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 conditions and programming instructions generated by the remote computer server platform;

monitoring the plurality of consumer device 

assets by the remote computer server platform by automatically processing, according 

to preprogrammed conditions, the received 

operational status information and the received consumer usage information;

managing the plurality of consumer device assets by the remote computer server platform, 

based upon the results of having processed at 

least some of the received consumer usage information, by sending communications containing 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” limitation. 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 below. 

9. A method according to claim 8 wherein the 

remote computer server platform includes in 

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4 M2M SOLUTIONS LLC v. AMAZON.COM, INC. 

one or more of the aforesaid wireless packet 

switched data message communications containing one or more management instructions 

sent to one or more of the plurality of consumer 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 specific to that particular receiving consumer device 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 Kloba1 in combination with various other references. 

During the IPRs, the Board construed the “managing” limitation as requiring only “the sending of communications 

containing management instructions, and thus the managing 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 Decision. at J.A. 188. M2M disagreed, proposing its own, narrower 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 Hoyle2 (’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 ordinary skill would have understood Kloba to disclose a consumer 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.

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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 unpersuasive. 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 construed 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 construction of “consumer usage information” that M2M had proposed 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 limitation. 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 decision on any issues relating to “consumer usage information.” 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 previously decided whether Kloba disclosed “consumer usage information” “under a claim construction that materially 

tracks the claim construction adopted here.” ’477 Decision, 

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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 information.” ’477 Decision, J.A. 59, 208–09. These findings 

caused the Board to find the challenged claims unpatentable. 

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 conclusion of obviousness de novo, and underlying factual findings for substantial evidence.” In re Magnum Oil Tools 

Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016). “The inherent 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 information,” (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 construing 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 “consumer usage information.” M2M argues that the Board’s 

construction is inconsistent with the claim language, the 

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M2M SOLUTIONS LLC v. AMAZON.COM, INC. 7

specification, and the understanding of a person of ordinary skill. We disagree. 

The words of a claim “are generally given their ordinary and customary meaning.” Vitronics Corp. v. Conceptronic, 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 communications” containing “management instruments.” Given 

this plain language, the Board correctly determined that 

the server’s act of managing devices by sending communications 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 inventor 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 additional 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 disclose “consumer usage information” as required by claims 

1 and 20 of the ’477 patent. Collateral estoppel applies if 

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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 determination of the identical issue; and (4) the prior action featured 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 disclosure 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 Response. 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 information” 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 particular 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 construction but nonetheless determined that Kloba disclosed 

“consumer usage information” under the broader construction that M2M had proposed in its Preliminary Patent 

Owner Response, one that materially tracks the construction 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 

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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 patent.

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 determining 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 instructions.” Amazon argues that the Board relied on both delta 

and non-delta information in determining that Kloba disclosed 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 information 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 . . . instructions generated as a result of processing the deltas 

and other information from providers.” Id. at J.A. 76 (emphasis 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 

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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 “Patent 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 instructions,’” but rather that, “Petitioner relie[d] on the synchronization 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 synchronization process theory was presented by Amazon in its Petitions. 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 holding Amazon to a lower standard than necessary in proving 

that Kloba inherently disclosed the required “unique identifier” 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 

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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 receiving 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 substantial evidence. M2M’s expert witnesses admitted that devices 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; Amazon.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 wirelessly 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); Decisions, J.A. 112 (referencing “Petitioner’s undisputed showing” 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 dependent 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 patents would have been obvious over the asserted prior art. 

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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 decision of the Board is affirmed. 

AFFIRMED

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