`Pepper Hamilton LLP
`333 Twin Dolphin Drive
`Suite 400
`Redwood City, CA 94065
`(650) 802-3602 (telephone)
`(650) 802-3650 (facsimile)
`chana@pepperlaw.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND APPLE INC.,
`Petitioner
`v.
`
`IXI IP, LLC
`Patent Owner
`___________________
`
`Case No. IPR2015-01444
`Patent 7,039,033
`___________________
`
`IXI IP, LLC’S NOTICE OF APPEAL
`TO THE U.S. COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. §§ 141(c), 142, and 319 and 37 C.F.R. §§ 90.2, 90.3,
`
`IPR2015-01444
`Patent 7,039,033
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`and 104.2, Patent Owner IXI IP, LLC (“IXI”) hereby provides notice of its appeal
`
`to the United States Court of Appeals for the Federal Circuit of the Final Written
`
`Decision (Paper 27) entered by the Patent Trial and Appeal Board (“PTAB”) on
`
`December 21, 2016 (Attachment A), and from all underlying findings, orders,
`
`decisions, rulings and opinions. In particular, Patent Owner states that the issues to
`
`be addressed on appeal may include, but are not limited to:
`
`A. Whether the PTAB erred in finding that 1, 4, 7, and 14 are unpatentable
`
`under 35 U.S.C. § 103 as being obvious over PCT Publication No. WO
`
`01/76154 of Marchand (Ex. 1005, “Marchand”) in view of U.S. Patent
`
`No. 6,560,642 of Nurmann (Ex. 1010, “Nurmann”) and U.S. Patent No.
`
`6,771,635 of Vilander (Ex. 1011, “Vilander”)?
`
`B. Whether the PTAB erred in finding that claim 5 is unpatentable under 35
`
`U.S.C. § 103 as being obvious over Marchand in view of Nurmann,
`
`Vilander and Handley et al., Request for Comments 2543 SIP: Session
`
`Initiation Protocol (Ex. 1007, “RFC 2543”)?
`
`C. Whether the PTAB erred in finding that claims 6 and 23 are unpatentable
`
`under 35 U.S.C. § 103 as being obvious over Marchand in view of
`
`Nurmann, Vilander, and U.S. Patent No. 6,836,474 of Larsson (Ex. 1008,
`
`“Larsson”)?
`
`
`
`1
`
`
`
`D. Whether the PTAB erred in finding that claims 12, 15, 22, 34, 39, 40, 42,
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`and 46 are unpatentable under 35 U.S.C. § 103 as being obvious over
`
`Marchand in view of Nurmann, Vilander, and K. Arnold et al., The
`
`JINITM Specification (Ex. 1009, “JINI Spec”)?
`
`E. Whether the PTAB erred in finding that claims 25 and 28 are
`
`unpatentable under 35 U.S.C. § 103 as being obvious over Marchand,
`
`Larsson, and JINI Spec?
`
`F. Whether the PTAB erred in denying Patent Owner’s Motion to Exclude
`
`Evidence?
`
`Simultaneous with submission of this Notice of Appeal to the Director of the
`
`United States Patent and Trademark Office, this Notice of Appeal is being filed
`
`with the Patent Trial and Appeal Board. In addition, this Notice of Appeal, along
`
`with the required docketing fees, is being filed with the United States Court of
`
`Appeals for the Federal Circuit.
`
`Dated: February 21, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Andy H. Chan/
`Andy H. Chan, Reg. No. 56,893
`Pepper Hamilton LLP
`333 Twin Dolphin Drive, Suite 400
`Redwood City, CA 94065
`(650) 802-3602 (telephone)
`(650) 802-3650 (facsimile)
`chana@pepperlaw.com
`Attorney for Patent Owner
`
`
`
`IPR2015-01444
`Patent 7,039,033
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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 21st day of February, 2017, a true and correct
`copy of the foregoing Patent Owner’s Notice of Appeal to the U.S. Court of
`Appeals for the Federal Circuit was served on the following counsel for Petitioner
`via email:
`
`W. Karl Renner
`Email: axf@fr.com
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Fax: (202) 783-2331
`
`Jeremy Monaldo
`Email: PTABInbound@fr.com
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Fax: (202) 783-2331
`
`
`Dated: February 21, 2017
`
`
`
`
`
`
`
`
`
`Kevin Greene
`Email: IPR00035-0004IP1@fr.com
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Fax: (202) 783-2331
`
`Indranil Mukerji
`Email: PTABInbound@fr.com
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Fax: (202) 783-2331
`
`
`Respectfully submitted,
`By: /Andy H. Chan/
`Andy H. Chan, Reg. No. 56,893
`Pepper Hamilton LLP
`333 Twin Dolphin Drive
`Suite 400
`Redwood City, CA 94065
`(650) 802-3602 (telephone)
`(650) 802-3650 (facsimile)
`chana@pepperlaw.com
`Attorney for Patent Owner
`
`
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 27
`
` Entered: December 21, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`IXI IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01444
`Patent 7,039,033 B2
`____________
`
`
`
`Before KRISTINA M. KALAN, ROBERT J. WEINSCHENK, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`and Apple Inc. (collectively “Petitioner”) filed a Petition (“Pet.”) (Paper 2)
`to institute an inter partes review of claims 1, 4–7, 12, 14, 15, 22, 23, 25, 28,
`34, 39, 40, 42, and 46 of U.S. Patent No. 7,039,033 B2 (“the ’033 patent”)
`
`
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`(Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. Patent Owner, IXI IP, LLC
`(“IXI”), filed a Preliminary Response (“Prelim. Resp.”) (Paper 6) to the
`Petition. Taking into account the arguments presented in IXI’s Preliminary
`Response, we determined that the information presented in the Petition
`established that there is a reasonable likelihood that Petitioner would prevail
`in challenging claims 1, 4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and
`46 of the ’033 patent under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C.
`§ 314, we instituted this proceeding on December 30, 2015, as to these
`claims of the ’033 patent. Paper 7 (“Dec. on Inst.”).
`During the course of trial, IXI filed a Patent Owner Response (Paper
`14, “PO Resp.”), and Petitioner filed a Reply to the Patent Owner Response
`(Paper 18, “Pet. Reply”). An oral hearing was held on September 15, 2016,
`and a transcript of the hearing is included in the record. Paper 26 (“Tr.”).
`Petitioner proffered a Declaration of Dr. Sayfe Kiaei (Ex. 1003) with
`its Petition, and IXI proffered a Declaration of Dr. Narayan Mandayam
`(Ex. 2301) with its Response. The parties also filed transcripts of the
`depositions of Dr. Kiaei (Exs. 2303–2305) and Dr. Mandayam (Exs. 1018,
`1019).
`IXI filed a Motion to Exclude (Paper 21) certain exhibits submitted by
`Petitioner. Petitioner filed an Opposition (Paper 24) and IXI filed a Reply
`(Paper 25).
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of claims
`1, 4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46 of the ’033 patent.
`For the reasons discussed below, Petitioner has demonstrated by a
`preponderance of the evidence that these claims are unpatentable under
`§ 103(a).
`
`2
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`I. BACKGROUND
`
`Related Proceedings
`A.
`The parties identify the following proceedings related to the ’033
`
`patent: IXI Mobile (R&D) Ltd. v. Samsung Electronics Co., Case No. 3:15-
`cv-03752-HSG (N.D. Cal.); IXI Mobile (R&D) Ltd. v. Apple, Inc., Case No.
`4:15-cv-03755-PJH (N.D. Cal.); and IXI Mobile (R&D) Ltd. v. Blackberry
`Ltd., Case No. 3:15-cv-03754-RS (N.D. Cal.). Pet. 1–2; Paper 5, 1–2; Paper
`7, 1–2.
`
`The ’033 Patent
`B.
`The ’033 patent issued from an application filed on May 7, 2001.
`
`Ex. 1001, at [22]. The ’033 patent is directed to “a system that accesses
`information from a wide area network (‘WAN’), such as the Internet, and
`local wireless devices in response to short-range radio signals.” Id. at 4:8–
`11. Figure 1 of the ’033 patent is reproduced below:
`
`
`
`3
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`Figure 1 illustrates an exemplary system 100 having a personal area network
`(PAN) and a wide area network. Id. at 4:8–19. The PAN is made up of
`gateway device 106 and one or more terminals 107, such as, for example, a
`laptop computer, a personal digital assistant (PDA), or a printer. Id. at 4:17–
`25. Gateway device 106 is coupled to cellular network 105, which in turn
`connects to Internet 103 through carrier backbone 104. Id. at 4:36–39, 49–
`55.
`Software architecture 400 for gateway device 106 may include
`
`network management software 404 including, inter alia, PAN application
`server 404a. Id. at 5:61–6:5, 6:36–42; 6:58–63, Figs. 4, 5a. In turn, PAN
`application server 404a includes service repository software component 704,
`which “allows applications 406, which run on a gateway device 106 or
`terminals 107, to discover what services are offered by a PAN, and to
`determine the characteristics of the available services.” Id. at 10:1–9, 12:9–
`14, Fig. 7; see also id. at 12:33–67 (enumerating the many functions of
`service repository software component 704).
`
`C.
`
`Illustrative Claim
`Claims 1, 25, 34, and 42 of the ’033 patent are independent. Claims
`4–7, 12, 14, 15, 22, and 23 depend from claim 1; claim 28 depends from
`claim 25; claims 39 and 40 depend from claim 34; and claim 46 depends
`from claim 42. Independent claim 1 is illustrative of the challenged claims
`and is reproduced below:
`1.
`A system for providing access to the Internet, comprising:
`a first wireless device, in a short distance wireless
`network, having a software component to access information
`from the Internet by communicating with a cellular network in
`response to a first short-range radio signal, wherein the first
`
`4
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`wireless device communicates with the cellular network and
`receives the first short-range radio signal; and,
`a second wireless device, in the short distance wireless
`network, to provide the first short-range radio signal,
`wherein the software component includes a network
`address translator software component to translate between a first
`Internet Protocol (“IP”) address provided to the first wireless
`device from the cellular network and a second address for the
`second wireless device provided by the first wireless device,
`wherein the software component includes a service
`repository software component to identify a service provided by
`the second wireless device.
`Ex. 1001, 15:40–59.
`
`D.
`
`The Prior Art
`Petitioner relies on the following prior art:
`PCT Publication No. WO 01/76154 A2 to Marchand,
`published Oct. 11, 2001 (Ex. 1005, “Marchand”), which claims
`priority to U.S. Application No. 09/541,529, filed Apr. 3, 2000
`(Ex. 1006, “Marchand Priority”);
`Handley et al., Request For Comments 2543 SIP: Session
`Initiation Protocol, THE INTERNET SOCIETY, March 1999 (Ex.
`1007, “RFC 2543”);
`U.S. Patent No. 6,836,474 B1 to Larsson, filed Aug. 31,
`2000, issued Dec. 28, 2004 (Ex. 1008, “Larsson”);
`K. Arnold et al., The Jini™ Specification, Addison-
`Wesley, June 1, 1999 (Ex. 1009, “JINI Spec.”);
`U.S. Patent No. 6,560,642 B1 to Nurmann, filed Oct. 23,
`1999, issued May 6, 2003 (Ex. 1010, “Nurmann”); and
`U.S. Patent No. 6,771,635 B1 to Vilander, filed Mar. 27,
`2000, issued Aug. 3, 2004 (Ex. 1011, “Vilander”).
`
`
`
`5
`
`
`
`The Asserted Grounds
`We instituted this proceeding on the following grounds of
`unpatentability (Dec. on Inst. 26):
`References
`
`
`
`Basis
`
`35 U.S.C. § 103(a)
`
`Claim(s)
`Challenged
`1, 4, 7, 14
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`E.
`
`Marchand, Nurmann,
`and Vilander
`Marchand, Nurmann,
`Vilander, and RFC 2543
`Marchand, Nurmann,
`Vilander, and Larsson
`Marchand, Nurmann,
`Vilander, and JINI Spec.
`
`35 U.S.C. § 103(a)
`
`5
`
`35 U.S.C. § 103(a)
`
`6, 23
`
`35 U.S.C. § 103(a)
`
`12, 15, 22,
`34, 39, 40,
`42, 46
`25, 28
`
`Marchand, Larsson, and
`JINI Spec.
`
`35 U.S.C. § 103(a)
`
`
`
`F.
`
`Claim Interpretation
`In an inter partes review, we construe claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`Under the broadest reasonable interpretation standard, and absent any
`special definitions, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech. Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or
`phrases must be set forth “with reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Only those
`terms which are in controversy need be construed, and only to the extent
`
`6
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`necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`In our Decision on Institution, we determined that no claim terms
`required construction. Dec. on Inst. 6–7. Based on our review of the
`complete record, we maintain our determination that no constructions are
`necessary, with the exception of the term “thin terminal” in claims 7 and 46.
`The parties’ arguments require us to consider whether a printer is
`commensurate with the broadest reasonable interpretation of “thin terminal.”
`See Pet. 30–31; PO Resp. 42–43; Pet. Reply 18–20. The ’033 patent
`describes “thin terminals” as having “a relatively low power central
`processor and operating system” and as being “mainly used as peripherals to
`an Application server in a PAN.” Ex. 1001, 5:2–5. The main tasks of a thin
`terminal are described as “user interaction, rendering output for a user and
`providing an Application server with a user’s input.” Id. at 5:5–7.
`Examples of thin terminals provided in the ’033 patent include a watch and a
`messaging terminal. Id. at 5:5–7. Furthermore, the ’033 patent contrasts
`thin terminals with smart terminals having “a relatively powerful central
`processor, operating system and applications,” such as “a computer
`notebook and PDA.” Id. at 4:62–5:2. In describing a messaging terminal in
`one embodiment, the ’033 patent states that the terminal “has no embedded
`application code or data.” Id. at 10:18–21.
`Petitioner contends a printer is a thin terminal because, at least, a
`printer “has a low power central processor and operating system relative to a
`laptop computer or PDA.” Pet. 31 (citing Ex. 1003 ¶ 25) (internal quotation
`omitted). We agree with Petitioner, and we additionally observe that a
`printer is a peripheral utilized for rendering user output, which is consistent
`with the Specification’s description of a thin terminal. We also agree with
`
`7
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`Petitioner that the Specification’s reference to “no embedded application
`code or data” (Ex. 1001, 10:18–21) does not preclude a printer with
`application code and/or data from being a thin terminal, because the ’033
`patent also describes the thin terminal locating, downloading, and executing
`software. Pet. 19 (citing Ex. 1001, 10:13–25). As such, we determine the
`“thin terminal” recited in claims 7 and 46 encompasses a printer.1
`
`
`
`A.
`
`II. ANALYSIS
`Obviousness Ground Based on Marchand, Nurmann, and Vilander
`Petitioner contends claims 1, 4, 7, and 14 would have been obvious
`over the combination of Marchand, Nurmann, and Vilander. Pet. 11–29.
`IXI disputes Petitioner’s contention. PO Resp. 16–43.
`
`Principles of Law
`1.
`A claim is unpatentable under 35 U.S.C. § 103(a)2 if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`
`
`1 Although we acknowledge the different standards for claim interpretation
`before us and before the district courts, IXI’s infringement contentions in the
`co-pending litigation provide additional extrinsic support for our
`determination. See Pet. 31 (citing Ex. 1012, 20, 45; Ex. 1013, 35, 70). In
`particular, IXI contends that a printer is a type of “thin terminal” in its
`infringement case. See id.
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`’033 patent has an effective filing date before the effective date of the
`applicable AIA amendments, throughout this Decision we refer to the pre-
`AIA versions of 35 U.S.C. §§ 102 and 103.
`
`8
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`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We
`also recognize that prior art references must be “considered together with the
`knowledge of one of ordinary skill in the pertinent art.” Paulsen, 30 F.3d at
`1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). We analyze
`Petitioner’s obviousness grounds with the principles identified above in
`mind.
`
`
`
`
`Level of Ordinary Skill in the Art
`2.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
`962 (Fed. Cir. 1986)). In addition, the prior art of record in this
`proceeding—namely, Marchand, Nurmann, Vilander, RFC 2543, Larsson,
`and JINI Spec.—is indicative of the level of ordinary skill in the art. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d
`at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`Petitioner contends a person of ordinary skill in the art
`would have had a Master[] of Science Degree (or a similar
`technical Master’s Degree, or higher degree) in an academic
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`area emphasizing electrical engineering, computer engineering,
`or computer science with a concentration in communication and
`networking systems or, alternatively, a Bachelor’s Degree (or
`higher degree) in an academic area emphasizing electrical or
`computer engineering and having two or more years of
`experience in communication and networking systems.
`Pet. 7–8. Petitioner’s contention is supported by the testimony of Dr. Kiaei,
`who bases his testimony on his “experience working in industry and
`academia, with undergraduate and postgraduate students, with colleagues
`from academia, and with engineers practicing in industry.” Ex. 1003 ¶¶ 15–
`16. IXI does not dispute Petitioner’s definition of the level of ordinary skill
`in the art, and, in fact, IXI applies it in IXI’s Patent Owner Response. PO
`Resp. 8; see also Ex. 2301 ¶ 16 (IXI’s declarant, Dr. Mandayam, applying
`same definition). Accordingly, we apply Petitioner’s definition of the level
`of ordinary skill in the art for purposes of this Decision. We further observe
`that Petitioner’s proposed definition comports with the qualifications a
`person would need to understand and implement the teachings of the ’033
`patent and the prior art of record.
`
`3. Marchand
`Marchand is a published international patent application, and
`
`Petitioner asserts Marchand’s priority date under 35 U.S.C. § 102(e) is April
`3, 2000, the date of filing for a prior national application (i.e., Marchand
`Priority) in the United States. See Pet. 4–5. IXI does not contest Petitioner’s
`priority date assertion. Therefore, for purposes of this decision, we find
`Marchand qualifies as prior art to the ’033 patent under 35 U.S.C. § 102(e)
`because April 3, 2000, predates the May 7, 2001, filing date of the ’033
`patent.
`
`10
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`Marchand relates to “an ad-hoc network and a gateway that provides
`
`an interface between external wireless IP networks and devices in the ad-hoc
`network.” Ex. 1005, 1:5–7. Figure 3 of Marchand is reproduced below:
`
`
`Figure 3 illustrates “an ad-hoc network 30 utilizing Bluetooth, IP [Internet
`Protocol], and JINI technologies . . . to enable the use of a gateway mobile
`phone.” Id. at 7:7–9. Ad-hoc network 30 (also called “Bluetooth Piconet
`(30)”) includes laptop computer 31, printer 32, and mobile phone 33, which
`can communicate via Bluetooth radio link 34. Id. at Abstract, 7:9–11.
`Mobile phone 33 acts “as a gateway between the ad-hoc network and a 3G
`wireless IP network 35 such as the General Packet Radio Service (GPRS)
`network.” Id. at 7:12–14. Regarding IP address translation, IP packets from
`the GPRS are received at mobile phone 33 through its public IP address, and
`then are forwarded to the private IP address of the device on ad-hoc network
`30. Id. at 7:14–16. Address translation in the opposite direction is handled
`similarly. Id. at 7:16–17.
`
`11
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`“JINI (Java) technology is utilized to publish and share services
`
`between the devices” in network 30, and this technology “provid[es] the
`capability for an application 21 to discover, join, and download services 22
`from a JINI LUS [Lookup Service].” Id. at 6:3–4, 6:21–22. “The LUS
`contains a list of available services provided by other devices on the
`network.” Id. at 3:11–12. Devices in the network “announce not only
`value-added services, but also their attributes and capabilities to the
`network,” whereupon these services are published through the LUS. Id. at
`3:12–15, 10:17–18. The LUS also provides interfaces for services that are
`available to the devices in the network. Id. at 3:13–14, 8:12–15.
`Figure 4 of Marchand is reproduced below.
`
`
`
`Figure 4 depicts “a simplified functional block diagram of a connection
`between two devices such as the laptop computer 31 and the mobile phone
`33 utilizing the ad-hoc network 30 of FIG. 3.” Id. at 7:26–28. Gateway
`mobile phone 33 publishes in the Bluetooth piconet the call control services
`that it offers utilizing JINI LUS 46.
`
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`Nurmann
`4.
`Nurmann relates to establishing an “Internet Protocol (‘IP’) network
`
`with several IP hosts and with an IP gateway for connecting the IP network
`to the [I]nternet.” Ex. 1010, 1:9–12. Acting as a Dynamic Host
`Configuration Protocol (DHCP) client, the IP gateway determines whether a
`DHCP server is present in the IP network. Id. at 2:62–67. If a DHCP server
`is present, “[t]he allocation of the IP addresses to the IP hosts functioning as
`DHCP clients takes place from the DHCP server.” Id. at 2:6–27. “If there is
`no DHCP server[,] the IP gateway is activated automatically as [a] DHCP
`server,” which “allocates IP addresses and IP network masks to the IP hosts
`in a standard manner.” Id. at 2:50–57.
`
`
`Vilander
`5.
`Vilander relates to “the allocation of IP addresses to mobile terminals
`
`and in particular to the allocation of a host part of an IP address to a mobile
`terminal.” Ex. 1011, 1:6–8. Vilander teaches that, when a mobile terminal
`requests Internet access, the request is directed to a Gateway General Packet
`Radio Service (GPRS) Switching Node (GGSN), which may act as an
`Internet Access Server. Id. at 1:48–52.
`
`
`
`Claim 1
`6.
`Petitioner argues Marchand teaches a “first wireless device, in a short
`distance wireless network, having a software component to access
`information from the Internet by communicating with a cellular network in
`response to a first short-range radio signal,” as recited in claim 1. Pet. 21–
`23. Petitioner maps Marchand’s mobile phone 33 to the recited “first
`wireless device,” and Marchand’s ad-hoc Bluetooth piconet to the recited
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`“short distance wireless network.” Id. at 21–22 (citing Ex. 1005, 1:29–31,
`6:23–25, 7:12–14). Regarding the recited “second wireless device,”
`Petitioner maps “[t]he devices in the ad-hoc Bluetooth Piconet network 30
`[that] send signals to the mobile phone 33 over short-range radio links.” Id.
`at 23–24 (citing Ex. 1003 ¶¶ 19, 25–27; Ex. 1005, 7:9–11, 7:18–21). As
`such, Petitioner maps Marchand’s laptop computer 31 and/or printer 32 to
`the “second wireless device.” Id.; Ex. 1005, 7:9–11, Fig. 3.
`Regarding “access[ing] information from the Internet by
`communicating with a cellular network in response to a first short-range
`radio signal,” Petitioner contends the IP packets sent among devices in
`Marchand’s Bluetooth piconet over a short-range radio link correspond to
`the “first short-range radio signal.” Pet. 22–23. Petitioner further contends
`Marchand’s disclosure of connecting devices “to an IP-based network such
`as the Internet” and of “data going out of the Piconet to the GPRS network”
`teaches the recited Internet access. Id. at 22–24 (citing Ex. 1003 ¶ 27; Ex.
`1005, 7:14–17, 13:12–14).
`According to Petitioner, “Marchand discloses a network address
`translator to translate between a first IP address and a second IP address”
`based on Marchand’s description of translating and forwarding between
`public and private IP addresses. Id. at 24 (citing Ex. 1003 ¶ 27; Ex. 1005,
`7:14–17, 10:31–11:2). Petitioner contends an ordinarily skilled artisan
`would have modified Marchand in view of Vilander “such that the public IP
`address of the mobile phone gateway 33 was provided by the cellular
`network 35.” Id. at 18 (citing Ex. 1003 ¶ 46). In particular, Petitioner cites
`Vilander’s implementation of a device on the cellular network, such as a
`GGSN, to allocate the public IP address to the gateway. Id. (citing Ex. 1011
`at 1:48–52, 1:57–59). Petitioner further contends an ordinarily skilled
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`artisan would have modified Marchand in view of Nurmann “such that the
`mobile gateway provides the private IP addresses to the devices on the
`network 30.” Id. (citing Ex. 1003 ¶ 47). Specifically, Petitioner proposes
`implementing Nurmann’s DHCP server on Marchand’s mobile phone 33 to
`accomplish IP addressing in Marchand’s local network 30. Id. (citing Ex.
`1010, 4:51–56). Petitioner associates these citations from Vilander and
`Nurmann with the recited “network address translator software component”
`of claim 1. See id. at 24–25.
`Petitioner maps Marchand’s JINI Lookup Service (LUS) to the recited
`“service repository software component [that] identif[ies] a service provided
`by the second wireless device” of claim 1. Pet. 25–26 (citing Ex. 1003 ¶ 28;
`Ex. 1005, 3:11–12, 5:13–14). Claim 1 requires this “service repository
`software component” to be part of the “software component,” which is itself
`part of the “first wireless device.” Ex. 1001, 15:42–43, 15:57–59. Dr. Kiaei
`acknowledges “Marchand does not expressly state that the JINI LUS is
`located on mobile phone 33.” Ex. 1003 ¶ 37. Petitioner nonetheless
`contends an ordinarily skilled artisan “would appreciate that Marchand
`implicitly teaches an implementation in which the JINI LUS is located in the
`mobile phone 33.” Pet. 26 (citing Ex. 1003 ¶¶ 37–41). In particular,
`Petitioner cites Marchand’s description of the mobile phone having “an
`interface/Application Programming Interface (API) . . . [that] is downloaded
`to the Bluetooth device involved in an external wireless call in order to have
`the device behave as a slave device toward the mobile phone which is the
`master.” Ex. 1005, 6:27–31; see also Pet. 26–27 (citing same). Relying on
`testimony from Dr. Kiaei, Petitioner contends an ordinarily skilled artisan
`“would [have] underst[ood] that Marchand’s API corresponds to a JINI
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`proxy object” and that such “proxy objects are downloaded from a LUS” in
`JINI. Pet. 27 (citing Ex. 1003 ¶ 38).
`Petitioner also highlights Marchand’s description “that all the devices
`in the ad-hoc Bluetooth Piconet network 30 publish their services when the
`mobile phone 33 connects to the ad-hoc Bluetooth Piconet network 30 and
`cellular network 35.” Id. (citing Ex. 1003 ¶ 39; Ex. 1005, 10:12–18).
`Because a LUS “identifies services provided by devices on the network 30,”
`Petitioner contends an ordinarily skilled artisan would have concluded from
`this description that Marchand teaches a JINI LUS located on mobile phone
`33. Id. at 27–28 (citing Ex. 1003 ¶ 39). Petitioner additionally contends an
`ordinarily skilled artisan would have recognized that implementing
`Marchand’s LUS in mobile phone 33—the gateway device to the cellular
`network—would best allow for the other devices in the ad-hoc Bluetooth
`piconet to join or leave without loss of connectivity between the piconet and
`the cellular network. Pet. 28 (citing Ex. 1003 ¶ 40).
`Thus, Petitioner has established that Marchand, Vilander, and
`Nurmann teach every limitation of claim 1. Petitioner, as supported by Dr.
`Kiaei’s testimony, also has established that a person of ordinary skill in the
`art would have had reason to combine the teachings of Marchand, Vilander,
`and Nurmann to achieve the system recited in claim 1. See Pet. 17–20;
`Ex. 1003 ¶¶ 46–51. We now consider IXI’s arguments in opposition to
`Petitioner’s obviousness analysis.
`
`
`a.
`
`How an Ordinarily Skilled Artisan Would Have
`Interpreted Marchand’s Teachings Related to the LUS
`IXI disputes that Marchand teaches a LUS located on mobile phone
`33, because IXI contends an ordinarily skilled artisan “would not understand
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`Marchand to disclose that its JINI LUS is on Marchand’s cellular-enabled
`mobile phone 33, and . . . would have no motivation to modify Marchand to
`place the JINI LUS on the mobile phone in contradistinction to Marchand’s
`explicit teachings to the contrary.” PO Resp. 26–27. In particular, IXI
`contends Petitioner and its declarant wrongly analyzed Marchand’s
`Bluetooth piconet. See id. at 12–15, 27–36. IXI’s contention is based on Dr.
`Mandayam’s testimony regarding a Bluetooth scatternet, which is formed
`when a Bluetooth device participates concurrently in two or more piconets.
`See Ex. 2301 ¶¶ 28–30. Figure 4 from Dr. Mandayam’s Declaration is
`reproduced below
`
`
`Id. ¶ 30. Figure 4 depicts separate piconets A (in blue) and B (in red)
`applied to the devices in Marchand’s ad-hoc network. Id. ¶ 31. Dr.
`Mandayam explains:
`[T]he laptop computer is the master (MA) of piconet A, with the
`mobile phone (SA) and the printer (SA) as slave devices in
`piconet A. The mobile phone is the master of piconet B (MB),
`with only the laptop (SB) as its slave device. Both the laptop
`and the mobile phone simultaneously act as master and slave
`devices on independent piconets, with piconet B, being a “sub-
`piconet” within piconet A.
`
`Id.
`
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`Applying Dr. Mandayam’s explanation to Marchand, IXI contends an
`ordinarily skilled artisan “would [have] appreciate[d] that the JINI LUS 46
`must be located on the master device of the Bluetooth piconet, which
`Marchand discloses is a laptop as clearly shown on Marchand’s Figure 4.”
`PO Resp. 28 (citing Ex. 2301 ¶¶ 54–55). IXI further contends “the gateway
`mobile phone is the master of a sub-piconet within Marchand’s Bluetooth
`piconet.” Id. at 27. This purported sub-piconet, in which “the gateway
`mobile phone acts as the master device with the requesting device as its
`slave,” is formed “[w]hen a device, such as a laptop, seeks to use the call
`control service offered by Marchand’s gateway mobile phone.” Id. at 30
`(citing Ex. 2301 ¶¶ 54–55). In this case, “the gateway mobile phone sends
`the requesting device an API which allows the gateway mobile phone to
`establish its own, independent Bluetooth piconet . . . within the main
`Bluetooth piconet that connects