IPR2015-01444
`Patent 7,039,033
`
`
`By: 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
`
`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
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`IPR2015-01444
`Patent 7,039,033
`
`
`V.
`
`Page(s)
`INTRODUCTION .......................................................................................... 1
`I.
`II. ALLEGED GROUNDS ................................................................................. 2
`III. SUMMARY OF THE ’033 Patent ................................................................. 3
`IV. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART ........ 7
`A.
`Legal Standard ...................................................................................... 7
`B. A Person Of Ordinary Skill In The Art ................................................ 8
`C.
`Claim Construction............................................................................... 8
`LEGAL STANDARDS ................................................................................ 10
`A.
`Petitioner Has The Burden Of Proof .................................................. 10
`B.
`Legal Standard For Obviousness........................................................ 10
`VI. ARGUMENTS ............................................................................................. 12
`A. Dr. Kiaei’s Declaration Regarding The Alleged Prior Art Is
`Unreliable ........................................................................................... 12
`1.
`Bluetooth .................................................................................. 12
`2.
`Dr. Kiaei Did Not Review And Did Not Understand
`Bluetooth Technology When Rendering His Opinions ........... 15
`The Combination Of Marchand, Nurmann, and Vilander Fails
`To Render Obvious Claims 1, 4, 7, And 14 ....................................... 16
`1.
`Overview of the Asserted Art .................................................. 16
`a. Marchand ........................................................................16
`b.
`Nurmann .........................................................................24
`c.
`Vilander ..........................................................................24
`A Person Of Ordinary Skill in the Art Would Not Have
`Combined Marchand, Nurmann and Vilander to Arrive at
`the Challenged Claims ............................................................. 25
`a.
`Claim 1 ............................................................................26
`(1)
`“wherein the software component includes a
`service repository software component” ..............26
`
`B.
`
`2.
`
`i
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`

`

`IPR2015-01444
`Patent 7,039,033
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`
`(3)
`
`(2)
`
`“wherein the software component includes a
`network address translator software
`component” ..........................................................37
`“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” ............................................39
`Dependent Claims 4 and 14 ............................................41
`b.
`Dependent Claim 7 .........................................................42
`c.
`The Combination of Marchand, Nurmann, Vilander, And RFC
`2543 Fails To Render Obvious Claim 5 ............................................. 43
`The Combination of Marchand, Nurmann, Vilander, And
`Larsson Fails To Render Obvious Claims 6 and 23 ........................... 46
`The Combination of Marchand, Nurmann, Vilander, And JINI
`Spec Fails To Render Obvious Claims 12, 15, 22, 34, 39, 40,
`42, And 46 .......................................................................................... 48
`a.
`Dependent Claim 12 .......................................................49
`b.
`Dependent Claims 15 and 22 ..........................................52
`c.
`Independent Claim 34 .....................................................52
`d.
`Dependent Claim 40 .......................................................54
`e.
`Independent Claim 42 .....................................................55
`f.
`Dependent Claim 46 .......................................................56
`The Combination of Marchand, Vilander, And JINI Spec Fails
`To Render Obvious Claims 25 and 28 ............................................... 56
`VII. CONCLUSION ............................................................................................. 57
`
`
`
`
`C.
`
`D.
`
`E.
`
`F.
`
`
`
`ii
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`

`

`IPR2015-01444
`Patent 7,039,033
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`
`TABLE OF AUTHORITIES
`
`
`CASES
`Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902 (Fed.
`Cir. 1988) ............................................................................................................ 11
`
`Page(s)
`
`In Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183, Paper
`No. 12 (July 31, 2013) ........................................................................................ 11
`
`In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011) ..................................................... 11
`
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................... 7
`
`InTouch Tech., Inc. v. VGO Comm’s, Inc., 2014 U.S. App. LEXIS 8745
`(Fed. Cir. May 9, 2014) ...................................................................................... 11
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) .......................................... 10, 11
`
`Motorola Mobility LLC, et al. v. Arendi S.A.R.L., IPR2014-00203, Paper 10
`(June 5, 2014)...................................................................................................... 11
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................... 7
`
`Star Scientific, Inc., v. R.J. Reynolds Tobacco Co., 655 F.3d 1364 (Fed. Cir.
`2011) ................................................................................................................... 12
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011) ...................... 10
`
`Wowza Media Systems, LLC et al. v. Adobe Systems Inc., IPR2013-00054,
`Paper No. 12 (Apr. 13, 2013) ............................................................................. 10
`
`STATUTES
`
`35 U.S.C. §316(e) ................................................................................................... 10
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100(b) ................................................................................................ 7
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`
`
`iii
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`

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`IPR2015-01444
`Patent 7,039,033
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`MPEP § 2141 (8th Ed., Rev. 9, August 2012) ......................................................... 10
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`2012) ..................................................................................................................... 7
`
`
`
`
`
`iv
`
`

`

`UPDATED TABLE OF EXHIBITS
`
`New
`
`Exhibit #
`
`Exhibit Description
`
`IPR2015-01444
`Patent 7,039,033
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`
`2301
`
`2302
`
`2303
`
`2304
`
`2305
`
`2306
`
`
`
`Declaration Of Dr. Narayan Mandayam In Support
`Of IXI IP, LLC’s Patent Owner Response
`
`Deposition Transcript of Safye Kiaei, IPR2015-
`01444, March 16, 2016
`
`Deposition Transcript of Safye Kiaei, IPR2015-
`01443, March 15, 2016
`
`Deposition Transcript of Safye Kiaei, IPR2015-
`01445 – 1446, March 17, 2016.
`
`Specification of the Bluetooth System, Specification
`Volume 1 (December 1, 1999) (Bluetooth
`Specification)
`
`IP Network Address Translator (NAT) Terminology
`and Considerations,” RFC 2663, August 1999
`
`v
`
`

`

`Pursuant to 37 C.F.R. § 42.120, the Patent Owner, IXI IP, LLC (“IXI”)
`
`IPR2015-01444
`Patent 7,039,033
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`
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`hereby submits the following Patent Owner Response to the Petition seeking inter
`
`partes review of U.S. Patent No. 7,039,033 (“the ’033 Patent”). This filing is
`
`timely based on the Scheduling Order, Paper 9, and the Notice of Joint Stipulation
`
`to Modify Schedule, Paper 13, filed March 22, 2016.
`
`I.
`
`INTRODUCTION
`
`The Petition fails to prove unpatentability with respect to any of the
`
`instituted claims of the ’033 Patent. Accordingly, Patent Owner respectfully
`
`requests that the Patent Trial and Appeal Board (“the Board”) confirm the
`
`instituted claims of the ’033 Patent and that a certificate confirming the
`
`patentability of these claims be published.
`
`The Petition relies on five references in alleging five grounds of invalidity.
`
`For each of the five grounds, Petitioner relies on a number of references in
`
`combination with Marchand. Marchand fails to disclose every element of the
`
`challenged claims as alleged by Petitioner, and the combined references fail to cure
`
`the deficiencies in Marchand. Further, one of ordinary skill in the art would not
`
`combine Marchand with any of the asserted references, as alleged in the five
`
`grounds, to arrive at the claimed inventions. As such, the Petitioner’s asserted
`
`grounds should be denied.
`
`
`
`1
`
`

`

`II. ALLEGED GROUNDS
`Petitioner alleges that claims 1, 4-7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40,
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`IPR2015-01444
`Patent 7,039,033
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`42, and 46 (“the challenged claims”) of the ’033 Patent are invalid. Specifically,
`
`Petitioner alleges that:
`
`• Claims 1, 4, 7, and 14 are 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”);
`
`• Claim 5 is obvious over Marchand in view of Nurmann, Vilander and
`
`Handley et al., Request for Comments 2543 SIP: Session Initiation Protocol,
`
`(Ex. 1007, “RFC 2543”);
`
`• Claims 6 and 23 are obvious over Marchand in view of Nurmann, Vilander,
`
`and U.S. Patent No. 6,836,474 of Larsson (Ex. 1008, “Larsson”);
`
`• Claims 12, 15, 22, 34, 39, 40, 42, and 46 are obvious over Marchand in view
`
`of Nurmann, Vilander, and K. Arnold et. al., The JINITM Specification (Ex.
`
`1009, “JINI Spec”); and
`
`• Claims 25 and 28 are obvious over Marchand, Larsson, and JINI Spec.
`
`For at least the reasons explained below, the Petition fails to prove that the
`
`alleged grounds render obvious any of the challenged claims. The references fail
`
`2
`
`

`

`to disclose each and every limitation of the challenged claims, and moreover, the
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`IPR2015-01444
`Patent 7,039,033
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`alleged combinations are improper and unsupported.
`
`III. SUMMARY OF THE ’033 PATENT
`The ’033 Patent, entitled “System, Device and Computer Readable Medium
`
`For Providing A Managed Wireless Network Using Short-Range Radio Signals,”
`
`issued on May 2, 2006 to inventors Amit Haller et al, and was assigned to IXI
`
`Mobile (Israel) Ltd. The application which led to the ’033 Patent was filed on May
`
`7, 2001. See Ex. 1001 at 1.
`
`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.” Ex. 1001, 4:8-11; Abstract. The system
`
`includes a wireless gateway device that is coupled to the WAN and to a personal
`
`area network (“PAN”). Id. at Abstract; FIG. 1. The wireless gateway device
`
`allows devices connected on the PAN to connect to the WAN. The wireless
`
`gateway device also includes software components that allow devices on the PAN
`
`to communicate and share services, and includes the ability to provide security to
`
`the network. Figure 1 below depicts an exemplary system according to the
`
`teachings of the ’033 Patent:
`
`3
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`

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`As schematically depicted, the Gateway Device 106 communicates with one or
`
`more Terminals 107 to form a PAN using short-range radio signals 110. Id. at
`
`4:16-21. The PAN is implemented using local wireless communication technology
`
`such as Bluetooth or 802.11 (commonly referred to as Wi-Fi). Id. at 4:25-35. The
`
`Gateway Device 106 is coupled to cellular network 105 and can communicate
`
`with, for example, Server 101 and Server 102 via carrier backbone 104. Id. at
`
`4:36-59. Servers 101 and 102 can provide information, such as web pages or
`
`application software components, to Terminals 107 in the PAN by way of the
`
`Gateway Device 106. Id. at 4:49-54.
`
`The software components described in the ’033 Patent are what enables the
`
`Gateway Device 106 to connect the terminals on the PAN to the WAN and offer
`
`network management and security functions. Figure 4, for example, illustrates an
`
`exemplary software architecture for the Gateway Device 106. Id. at 5:61-63. As
`
`4
`
`

`

`shown in Figure 4, “Network Management software 404 is used to provide a
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`IPR2015-01444
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`number of functions according to embodiments of the present invention: 1)
`
`routing, 2) device plug and play, 3) PIN number management, 4) network device
`
`management, and 5) service repository.” Id. at 6:36-40. This exemplary
`
`architecture is described in more detail with reference to Figure 5a and is shown to
`
`include a PAN router 404c, a PAN server 404b, and an application server 404a (id.
`
`at 6:58-63), which generally function as follows:
`
`implementing
`PAN router 404c establishes a PAN network,
`communication primitives, IP networking, IP services and similar
`tasks. PAN server 404b is responsible for implementing PAN
`oriented services such as plug and play, terminal enumeration,
`application
`loading, storage space and other services. In an
`embodiment, PAN server 404b communicates directly with
`applications 406 using application drivers. PAN application server
`404a is responsible for implementing user and terminal oriented
`services and enables thin terminals.
`
`Ex. 1001 at 7:13-23.
`
`The ’033 Patent further provides that the PAN server 404b can include one
`
`or more of the following: “1) plug and play software component 701, 2) PIN
`
`number management software component 702, 3) management software
`
`component 703, 4) service repository software component 704, and 5) application
`
`loader 705.” Id. at 10:3-9. For example, the service repository software
`
`5
`
`

`

`component 704 included on the Gateway Device 106 “allows applications 406,
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`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 12:11-14. Upon the introduction of a new terminal 107 to the PAN, the plug
`
`and play software component 701 allows the Gateway Device 106 to identify the
`
`new terminal 107 and to find, download, and execute the software needed to
`
`support it. Id. at 10:11-37. For example, because some new terminals (e.g., a thin
`
`terminal having “no embedded application code or data”) may not be supported by
`
`the Gateway Device 106 upon the terminal’s introduction to the PAN, the plug and
`
`play software component identifies the new terminal and resolves the necessary
`
`software to support it. Id.
`
`Independent claim 1 recites various aspects of the above-described system:
`
`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 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,
`
`6
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`

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`IPR2015-01444
`Patent 7,039,033
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`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.
`
`Exemplary claims 7 and 12, which depend from independent claim 1, further
`
`recite additional features of the ’033 Patent. For example, claim 7 provides that
`
`“the second wireless device is a thin terminal” and claim 12 provides that “the
`
`software component includes a plug and play software component to load and
`
`execute software for the second wireless device.”
`
`IV. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART
`A. Legal Standard
`In an inter partes review, a claim of an unexpired patent is construed using
`
`the “broadest reasonable construction in light of the specification.” 37 C.F.R. §
`
`42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
`
`14, 2012). Typically, a claim term is given its ordinary and customary meaning in
`
`the context of the specification, as it would be understood by one of ordinary skill
`
`in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc);
`
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`7
`
`

`

`B. A Person Of Ordinary Skill In The Art
`Petitioner has alleged a person of ordinary skill in the art in the field of the
`
`IPR2015-01444
`Patent 7,039,033
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`invention claimed in the ’033 Patent, would have had a Master’s of Science Degree
`
`(or a similar technical Master’s Degree, or higher degree) in an academic 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. For the purposes of this Patent Owner
`
`Response, Patent Owner has applied Petitioner’s definition.
`
`C. Claim Construction
`Claim 4 depends from claim 1 and further recites that “the service repository
`
`software component identifies whether the service is available at a particular
`
`time.” Ex. 1001, 16:4-6 (emphasis added). Petitioner argues that this recitation
`
`should be construed to encompass “the service being registered.” Paper 2 at 9. A
`
`person of ordinary skill in the art would have understood this recitation without an
`
`explicit construction, and further, would have understood that this claim language
`
`does not encompass “the service being registered.” See Ex. 2301, ¶¶23-27. The
`
`specification of the ’033 Patent makes clear that the service repository software
`
`8
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`

`

`component 704 is capable of identifying whether a service is available at a
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`IPR2015-01444
`Patent 7,039,033
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`particular time, which is separate and distinct from registering a service:
`
`In an embodiment of the present invention, service repository
`component 704 describes the terminals and the services that are
`available at a particular time, but service repository software
`component 704 does not describe the current status of the service.
`
`Ex. 1001, 13:5-9 (emphasis added). See also Ex. 2301, ¶¶25-27.
`
`A person of ordinary skill in the art would have understood that “identifying
`
`whether a service is available at a particular time” necessarily occurs after a
`
`service has been registered and is not the same process. Id., ¶26. Indeed, the ’033
`
`Patent describes that the service repository software component offers a plurality
`
`of functions and identifies service registration as the first function. Id.; see also
`
`Ex. 1001 at 12:35-37 (“First, service repository software component 704 provides
`
`service registration of a service offered by application, or a hardware capability
`
`offered by terminal driver.”). A service must be registered before it can be
`
`identified as being available. See Ex. 2301, ¶26. This distinction between service
`
`registration and service identification is further illustrated by Figure 7, which
`
`depicts that the service repository 704 separately identifies “service registration
`
`and unregistration” and “service enumeration.” Id. at ¶27.
`
`9
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`

`

`V. LEGAL STANDARDS
`Petitioner Has The Burden Of Proof
`A.
`The Petitioner has the burden of proving unpatentability by a preponderance
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`IPR2015-01444
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`of the evidence. See 35 U.S.C. §316(e). Petitioner cannot meet its burden. The
`
`Petition relies on flawed expert analysis, misreading of the prior art, and improper
`
`application of the law.
`
`Legal Standard For Obviousness
`
`B.
`“Obviousness requires more than a mere showing that the prior art includes
`
`separate references covering each separate limitation in a claim under
`
`examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir.
`
`2011) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); MPEP §
`
`2141 (8th Ed., Rev. 9, August 2012). “Rather, obviousness requires the additional
`
`showing that a person of ordinary skill at the time of the invention would have
`
`selected and combined those prior art elements in the normal course of research
`
`and development to yield the claimed invention.” Id. (citing KSR, 550 U.S. at
`
`421).
`
`The Supreme Court in KSR explained that “because inventions in most, if
`
`not all, instances rely upon building blocks long since uncovered, and claimed
`
`discoveries almost of necessity will be combinations of what, in some sense, is
`
`already known,” it is important to identify a reason that would have prompted a
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`10
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`person of ordinary skill to combine the prior art elements in the way claimed in the
`
`challenged patent. KSR, 550 U.S. at 418-19. Importantly, the Federal Circuit
`
`warns that “[c]are must be taken to avoid hindsight reconstruction by using ‘the
`
`patent in suit as a guide through the maze of prior art references, combining the
`
`right references in the right way so as to achieve the result of the claims in suit.’”
`
`In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (quoting Grain Processing
`
`Corp. v. American-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988)); see also
`
`KSR, 550 U.S. at 421 (“A factfinder should be aware…of the distortion caused by
`
`hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”).
`
`To that end, “[a] reason for combining disparate prior art references is a critical
`
`component of an obviousness analysis; ‘this analysis should be made explicit.’”
`
`InTouch Tech., Inc. v. VGO Comm’s, Inc., 2014 U.S. App. LEXIS 8745, *58 (Fed.
`
`Cir. May 9, 2014) (citing KSR, 550 U.S. at 418); see also Wowza Media Systems,
`
`LLC et al. v. Adobe Systems Inc., IPR2013-00054, Paper No. 12 at 15 (Apr. 13,
`
`2013) (denying institution of IPR, noting that “KSR does not authorize conclusory
`
`results”); In Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183,
`
`Paper No. 12 at 9 (July 31, 2013) (“a petitioner must show some reason why a
`
`person of ordinary skill in the art would have thought to combine particular
`
`available elements of knowledge, as evidenced by the prior art, to reach the
`
`claimed invention,” emphasis in original); Motorola Mobility LLC, et al. v. Arendi
`
`11
`
`

`

`S.A.R.L., IPR2014-00203, Paper 10 at 15-16 (June 5, 2014). “Importantly, the
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`IPR2015-01444
`Patent 7,039,033
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`great challenge of the obviousness judgment is proceeding without any hint of
`
`hindsight.” Star Scientific, Inc., v. R.J. Reynolds Tobacco Co., 655 F.3d 1364,
`
`1375 (Fed. Cir. 2011).
`
`VI.
`
` ARGUMENTS
`A. Dr. Kiaei’s Declaration Regarding The Alleged Prior Art Is
`Unreliable
`
`In each ground asserted by Petitioner, Marchand is used as the primary
`
`reference. As discussed in detail below, Marchand describes a network of devices
`
`that are connected on a Bluetooth piconet. Ex. 1005, Abstract. Marchand’s
`
`teachings rely on Bluetooth’s central network structure. Though Dr. Kiaei offers
`
`opinions regarding the teachings of Marchand and its combination with the other
`
`cited art, Dr. Kiaei does not understand the central network structure of Bluetooth
`
`technology and ignores the plain teachings of Marchand with respect to Bluetooth.
`
`As such, Dr. Kiaei’s opinions are unreliable because they misunderstand and
`
`mischaracterize the inner workings of Marchand’s network and devices.
`
`Bluetooth
`
`1.
`Bluetooth is a local wireless technology that connects devices using short-
`
`range radio signals. Ex. 2301 at ¶28; see also Ex. 2305, p. 41. Bluetooth provides
`
`a point-to-point connection, if only two devices are connected, or a point-to-
`
`multipoint connection, if more than two devices are connected, as shown below:
`
`12
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`Section (a) in the figure above depicts a point-to-point connection of two devices.
`
`Ex. 2301 at ¶28. When two or more devices are connected, they share the same
`
`“channel” using frequency hopping. Ex. 2301 at ¶28. “Two or more units sharing
`
`the same channel form a piconet.” Ex. 2305, p. 41. The piconet depicted in
`
`Section (b) in the figure above depicts a point-to-multipoint connection of four
`
`devices. A piconet can be formed by up to eight devices. Id. at 42.
`
`In each piconet, one Bluetooth device acts as the master and the remaining
`
`units act as slaves. Id. at 41-42; see also Ex. 2301 at ¶29. “The piconet is
`
`synchronized by the system clock of the master.” Ex. 2305 at 87; Ex. 2301 at ¶29.
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`Slave devices use a timing offset to adapt their native clocks to match the master
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`clock. Ex. 2305 at 87. As depicted above, the master device establishes the
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`connection between the slave devices, and the master device controls all
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`communication in a piconet. Ex. 2301 at ¶29. There is no direct communication
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`between slave devices on the piconet channel. Id.
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`A Bluetooth device may participate concurrently in two or more piconets.
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`Id. at ¶30. When multiple piconets are connected in this manner, they form a
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`scatternet. Ex. 2305, p. 42. A scatternet is depicted in Section (c) of the above
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`figure. Though each piconet can only have one master device, a master device in
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`one piconet can be a slave device in another piconet, as shown below:
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`Ex. 2301 at ¶30. In the exemplary Bluetooth network above, the laptop is
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`the master (MA) of piconet A, with the mobile phone (SA) and the printer (SA) as
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`slave devices in piconet A. The mobile phone is the master of piconet B (MB),
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`with only the laptop (SB) as its slave device. Both the laptop and the mobile phone
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`simultaneously act as master and slave devices on independent piconets, with
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`piconet B being a “sub-piconet” within piconet A. Id. at ¶31.
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`Dr. Kiaei Did Not Review And Did Not Understand
`Bluetooth Technology When Rendering His Opinions
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`2.
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`At his deposition, Dr. Kiaei testified that he did not believe that a separate
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`piconet could be formed from devices in a piconet. Ex. 2303 at 95:20-97:16. Dr.
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`Kiaei further testified that if five devices are connected in a Bluetooth piconet, a
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`second piconet cannot be formed by the devices within this first piconet. Id. at
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`97:6-14. Dr. Kiaei testified that did not look into the details of Bluetooth. Id. at
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`96:24-97:5.
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`Dr. Kiaei also testified that he did not believe that one device could be
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`connected in more than one piconet. Id. at 98:18-99:9. He admitted that he did not
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`study Bluetooth in detail. Id.
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`Marchand, as the primary reference in each ground argued by the Petitioner,
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`is explicitly directed to the use of Bluetooth in implementing its network. In light
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`of Dr. Kiaei’s lack of understanding Bluetooth and failure to consider the
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`implications of Marchand’s reliance on Bluetooth with respect to the proposed
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`combinations, Dr. Kiaei’s opinions regarding Bluetooth, the proposed
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`modifications of Marchand, and the purported motivations for modifying
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`Marchand should be entitled to little weight, if any.
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`B.
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`The Combination Of Marchand, Nurmann, and Vilander Fails To
`Render Obvious Claims 1, 4, 7, And 14
`1. Overview of the Asserted Art
`a. Marchand
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`Marchand is directed to a Bluetooth piconet that has been extended into an
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`Internet Protocol (IP) wireless local area network implementing JINI/Java
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`technology in order to utilize the JINI technology to share services between
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`devices in the piconet. Ex. 1005, Abstract; 5:23-25; 6:25-27; see also Ex. 2301 at
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`¶32. Additionally, a mobile phone connected to the piconet is configured to act as
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`a gateway to provide a call control interface between the wireless IP network and
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`other devices in the piconet. Ex. 1005, Abstract.
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`A person of ordinary skill in the art would have understood that the
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`operation of the network and the devices described in Marchand are dependent on
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`the underlying Bluetooth technology. Ex. 2301 at ¶33. Marchand makes clear that
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`the use of a Bluetooth piconet extended into an Internet Protocol (IP) wireless
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`LAN implementing JINI/Java technology is essential to the operation of the
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`network and devices of Marchand. Ex. 2301 at ¶33. Specifically, Marchand
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`explains that in order for devices in the Bluetooth piconet to share services, each
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`device must be Bluetooth-compliant and JINI/Java capable. See id. (citing Ex.
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`1005, 7:9-11).
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`IPR2015-01444
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`Marchand states that to be Bluetooth compliant, each device would include a
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`Bluetooth chipset. Ex. 1005, Abstract; 2:11-16; see also Ex. 2301 at ¶33. Further,
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`each device operates using a specific protocol stack, as defined and illustrated in
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`Marchand’s Figure 2:
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`Ex. 1005 at Figure 2; see also Ex. 2301 at ¶34. As shown above, each device in
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`Marchand’s Bluetooth piconet includes a physical layer 15 and a link layer 16,
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`which are identified as Bluetooth layers of the protocol stack. See Ex. 2301 at ¶35.
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`In addition, the protocol stack includes a network transport (IP) layer 17, an
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`operating system layer 18, a Java technology layer 19, and a JINI technology layer
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`20. See Ex. 2301 at ¶35 (citing Ex. 1005, 6:14-22).
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`Marchand explicitly provides that the underlying technology used to create
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`the LAN is Bluetooth wireless technology. Ex. 1005, Abstract; 2:7-25; FIGs. 1-4;
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`see also Ex. 2301 at ¶36. For example, Marchand states that “Bluetooth wireless
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`technology allows users to make effortless, wireless, and instant connections
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`between various communication devices such as mobile phones and desktop and
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`laptop computers.” Ex. 1005, 2:7-9. Moreover, Marchand includes an overview of
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`how Bluetooth devices connect and operate such that two or more Bluetooth
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`devices can connect to form a piconet. Id., 2:7-26; see also Ex. 2301 at ¶36. A
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`person skilled in the art familiar with Bluetooth would recognize that when a
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`piconet is established, one device acts as the master while the rest of the devices
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`are slaves, and all of the devices have the same priority synchronized. See Ex.
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`2301 at ¶36; see also ¶¶28-31. Moreover, all of the devices are synchronized to
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`the master device’s clock. Ex. 2305, p. 87. Because the master device is
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`connected to each of the slave devices and all of the communications pass between
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`the slave devices and the master, the devices are said to connect in point-to-point
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`and point-to-multipoint connections. Ex. 1005, 2:20-21; see Ex. 2301 at ¶36.
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`Slave devices on the same piconet cannot, however, communicate directly with
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`one another. Ex. 2301 at ¶36. Contrary to Dr. Kaiei’s deposition testimony that a
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`device cannot be connected to more than one piconet and that a sub-piconet cannot
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`be formed by devices within the Bluetooth LAN (see Ex. 2303, 97:6-14 and 98:18-
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`99:9), Marchand provides that the devices may be connected to more than one
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`piconet. See Ex. 1005, 2:25-26.
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`In Marchand, JINI technology is utilized to allow the Bluetooth-networked
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`devices