UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND APPLE INC.,
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`Petitioner
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`v.
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`IXI IP, LLC
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`Patent Owner
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`Case IPR2015-01444
`Patent 7,039,033
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND APPLE INC.,
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`Petitioner
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`v.
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`IXI IP, LLC
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`Patent Owner
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`Case IPR2015-01444
`Patent 7,039,033
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Case IPR2015-01444
`Attorney Docket No: 00035-0004IP1
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`TABLE OF CONTENTS
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`Introduction ......................................................................................................... 1
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`I.
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`II. Marchand’s disclosure of the claimed “service repository software
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`component”–Location of Marchand’s LUS .................................................... 1
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`A.
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`IXI’s sub-piconet theory fails ........................................................................ 1
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`A.1. IXI’s sub-piconet theory is factually unsupported. ....................................... 2
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`A.2. IXI’s sub-piconet theory is inconsistent with express disclosure in
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`Marchand. ............................................................................................................... 3
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`A.3. IXI’s sub-piconet theory is inconsistent with disclosure within the ’033
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`Patent. ..................................................................................................................... 5
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`B.
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`IXI’s contention that the LUS must be on a master device is unsupported
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`and incorrect. .......................................................................................................... 6
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`C. Marchand’s LUS is implemented in the GMP 33. ........................................ 8
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`C1. A POSITA would have found it obvious to implement the LUS on the GMP
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`33. 8
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`C2. Marchand describes the LUS on its GMP 33. ............................................. 10
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`C3. Marchand’s FIG. 4 does not limit the location of the LUS to laptop 31. ... 11
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`III. Marchand discloses a network address translator software component that is
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`included in GMP 33. ...................................................................................... 13
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`IV. Marchand, Nurmann, and Vilander disclose “a first Internet Protocol (‘IP’)
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`address provided to the first wireless device from the cellular network and a
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`second address for the second wireless device provided by the first wireless
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`device.” .......................................................................................................... 15
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`V. Marchand discloses a thin terminal. .................................................................. 18
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`VI. Marchand, Nurmann, Vilander, and RFC 2543 disclose a DNS Software
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`Component. .................................................................................................... 20
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`VII. Marchand, Nurmann, Vilander, and Larsson disclose the claimed security
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`software component and virtual private network. ......................................... 22
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`VIII. Marchand, Nurmann, Vilander, and JINI Spec. disclose a plug and play
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`software component. ...................................................................................... 23
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`IX. Dr. Kiaei’s Testimony ....................................................................................... 24
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`EXHIBIT-1001
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`EXHIBIT-1002
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`Case IPR2015-01444
`Attorney Docket No: 00035-0004IP1
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`EXHIBIT LIST
`U.S. Patent No. 7,039,033 to Haller et al. (“’033 Patent”)
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`S. M. Bellovin et al., Network Firewalls, Network
`Firewalls, IEEE Communications Magazine, Vol. 32,
`Issue 9, pp. 50-57, 1999 (“Bellovin”)
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`EXHIBIT-1003
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`Declaration of Dr. Sayfe Kiaei
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`EXHIBIT-1004
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`Curriculum Vitae of Dr. Sayfe Kiaei
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`EXHIBIT-1005
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`PCT. Publication No. WO 01/76154 A2 to Marchand
`(“Marchand PCT”)
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`EXHIBIT-1006
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`U.S. Patent Application No. 09/541,529 to Marchand
`(“Marchand Priority”)
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`EXHIBIT-1007
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`Handley et al., Request For Comments 2543 SIP: Session
`Initiation Protocol, The Internet Society, March, 1999
`(“RFC 2543”)
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`EXHIBIT-1008
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`U.S. Patent No. 6,836,474 to Larsson (“Larsson”)
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`EXHIBIT-1009
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`K. Arnold et al., The JINITM Specification, Addison-
`Wesley, June 1, 1999 (“JINI Spec.”)
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`EXHIBIT-1010
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`U.S. Patent No. 6,560,642 to Nurmann (“Nurmann”)
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`EXHIBIT-1011
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`U.S. Patent No. 6,771,635 to Vilander (“Vilander”)
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`EXHIBIT-1012
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`Claim Chart from IXI’s Infringement Contentions of U.S.
`Patent No. 7,039,033 in 14-cv-4428 (April 9, 2015)
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`EXHIBIT-1013
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`Claim Chart from IXI’s Infringement Contentions of U.S.
`Patent No. 7,039,033 in 14-cv-4355 (March 27, 2015)
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`EXHIBIT-1014
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`R. Droms, Request for Comments 2131 Dynamic Host
`Configuration Protocol, The Internet Society, March,
`1997 (“RFC 2131”)
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`EXHIBIT-1015
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`U.S. Patent No. 6,622,017 to Hoffman (“Hoffman”)
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`EXHIBIT-1016
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`J. Newmarch, A Programmer’s Guide to Jini Technology,
`Apress, 2000 (“Newmarch”)
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`EXHIBIT-1017
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`U.S. Patent No. 5,963,908 to Chadha (“Chadha”)
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`EXHIBIT-1018
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`EXHIBIT-1019
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`Deposition Transcript of Dr. Mandayam, IPR2015-01443,
`May 18, 2016
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`Deposition Transcript of Dr. Mandayam, IPR2015-01444,
`May 19, 2016
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`I.
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`Introduction
`In its Patent Owner Response (“POR”), Patent Owner (“IXI”) advanced
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`arguments related to claims 1, 5-7, 12, and 23. These arguments fail because they
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`lack support and mischaracterize the applied references. For the other instituted
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`claims, IXI relies upon these same arguments without additional analysis. See
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`POR, 52-57. Thus, while applicable to all claims, the following responses address
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`IXI’s arguments on claims 1, 5-7, 12, and 23.
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`II. Marchand’s disclosure of the claimed “service repository software
`component”–Location of Marchand’s LUS
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`IXI argues that Marchand’s JINI Look Up Service (LUS) does not
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`correspond to the service repository software component recited in the ’033 Patent
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`claims because Marchand’s JINI LUS is purportedly not located on Marchand’s
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`gateway mobile phone (GMP) 33. POR, 26-37; Ex. 2301, ¶¶ 30, 31, 52-63. IXI’s
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`argument is deficient because it relies on a sub-piconet theory that is devoid of
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`support in Marchand and directly contradicts explicit and implicit disclosure in
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`Marchand.
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`A.
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`IXI’s sub-piconet theory fails
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`IXI advances an interpretation of Marchand that requires creation of
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`undisclosed sub-piconets for devices to share services within Marchand’s disclosed
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`piconet. POR, 14; Ex. 2301, 17. IXI illustrates its sub-piconet theory using FIG. 4
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`of Dr. Mandayam’s declaration. Id. As shown below, IXI’s Fig. 4 labels laptop 31
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`as the master device MA of piconet 30 (blue circle A), and a slave device SB in a
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`contrived sub-piconet (red circle B), and labels GMP 33 as the master device MB
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`of sub-piconet B and a slave device SA in piconet A. POR, 14; Ex. 2301, ¶¶ 30, 31.
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`FIG. 4 from IXI Expert’s
`Declaration
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`Marchand’s original FIG. 3
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`IXI’s sub-piconet theory, however, is without support and reflects a flawed
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`understanding of Marchand.
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`A.1. IXI’s sub-piconet theory is factually unsupported.
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`IXI’s FIG. 4 is a modified version of Marchand’s original FIG. 3 and
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`suggests the addition of a sub-piconet B. POR, 14; Ex. 2301, 17 (FIG. 4); Ex.
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`1005, FIG. 3. However, Marchand provides no support for IXI’s master-slave
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`designations of laptop 31 and GMP 33, much less the inclusion of sub-piconet B as
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`illustrated in IXI’s FIG. 4. In fact, Marchand neither mentions the term sub-
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`piconet, nor describes coupling devices as suggested by IXI.
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`Moreover, IXI provides no evidence to support its contrived sub-piconet
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`theory, other than expert testimony, which failed to withstand scrutiny under cross
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`examination, and which should be given little weight. POR, 14, 30. Particularly,
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`when IXI’s expert, Dr. Mandayam, was asked about his sub-piconet testimony at
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`deposition, he could not point to any portion of Marchand that discloses a sub-
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`piconet. Ex. 1018, 112:22-113:9; 129:15-22. Ex. 1019, 7:10-9:21. Rather, Dr.
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`Mandayam conceded that FIG. 4 shown above does not appear in Marchand. Ex.
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`1018, 110:7-113:1.
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`Accordingly, IXI’s sub-piconet theory is unsupported and presents an
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`inaccurate view of Marchand’s operations.
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`A.2. IXI’s sub-piconet theory is inconsistent with express
`disclosure in Marchand.
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`As mentioned, Marchand lacks explicit disclosure of sub-piconets.
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`Marchand is explicit in disclosure that its GMP 33 is a master. Specifically,
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`Marchand discloses an example in which “[t]he mobile phone is the master unit,
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`and the PDA and laptop are slaves to the mobile phone” (emphasis added). Ex.
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`1005, 3:22-27. When describing piconet 30, Marchand consistently describes the
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`GMP 33 as a “master” (see, e.g., Ex. 1005, 7:26-31; 8:1-3).
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`Yet, as illustrated below, contrary to the consistent disclosure in Marchand,
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`IXI’s sub-piconet theory requires the GMP 33 to be a slave in Marchand’s piconet.
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`Accordingly, IXI’s sub-piconet theory is inconsistent with Marchand’s
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`teaching of GMP 33 operating as master of the piconet 30. Ex. 1005, 7:7-7:11;
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`7:26-8:3.
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`Further, Marchand never mentions that laptop 31 is a master–another
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`premise of IXI’s sub-piconet theory. On the contrary, Marchand explicitly
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`describes laptop 31 as a slave of piconet 30. Ex. 1005, 3:26; 7:26-31. Thus, IXI’s
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`sub-piconet theory requires disregard of Marchand’s explicit disclosure of the
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`mobile phone as the “master” within piconet 30 (depicted as A in IXI’s rendering),
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`and introduces two contrived elements lacking support in Marchand–sub-piconets
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`and the laptop 31 being the “master.” This interpretation is not supported by
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`Marchand.
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`A.3. IXI’s sub-piconet theory is inconsistent with disclosure
`within the ’033 Patent.
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`Similar to Marchand, the ’033 Patent describes a “wireless gateway device”
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`that communicates with “terminals” using “BluetoothTM technology” and provides
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`the “terminals” with a gateway to a “cellular network.” Ex. 1001, 1:41-59; 2:3-35;
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`3:14-59. As shown in the annotated version of FIG. 8(b) below, the gateway device
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`(805) in the ’033 Patent communicates directly with terminals (807-809) in a
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`Bluetooth piconet and uses a telephony service to provide terminals with access to
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`a cellular network.
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`’033 Patent FIG. 8(b) (excerpt, annotated)
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`With direct Bluetooth connections to each of the terminals (807-809), the
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`gateway device (805) serves as master of the Bluetooth piconet. Despite this
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`configuration, IXI contends that Marchand’s similar gateway device (i.e., GMP 33)
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`cannot serve as master of its Bluetooth piconet. To justify this inconsistent
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`position, IXI contends that Marchand’s GMP 33 cannot be the master because
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`master status must be reserved for establishment of a sub-piconet needed to
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`connect a terminal to the cellular network. IXI, however, offers no explanation for
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`why the gateway device in Marchand needs a sub-piconet to connect a Bluetooth
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`terminal to the cellular network—a contention that is particularly unsupportable
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`when considering that the comparable gateway device in the ’033 Patent does not
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`need a sub-piconet to connect a Bluetooth device to its cellular network. As such,
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`the ’033 Patent confirms that Marchand’s GMP 33 can be the master of its piconet
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`and that IXI’s sub-piconet is incorrect.
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`IXI’s contention that the LUS must be on a master device is
`B.
`unsupported and incorrect.
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`IXI also contends that a LUS must be located on a master device of a
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`Bluetooth piconet. POR, 28, 34. Like its sub-piconet theory, IXI offers no support
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`for this contention, other than uncorroborated testimony. POR, 28, 34; Ex. 2301, ¶
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`55.
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`In contrast to IXI’s assertions, Marchand describes laptop 31 as a slave that,
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`at least in some implementations, also has a LUS. Ex. 1005, 3:22-27; 7:26-31; 8:1-
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`3; FIG. 4. Marchand therefore directly discloses that a LUS may be implemented in
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`a slave device. Further, record evidence shows that a network may have more than
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`one LUS. Ex. 1016, 23. Network LUS redundancy necessarily indicates that even
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`if a LUS were included in a piconet master device, such as Marchand’s GMP 33, a
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`LUS may also be included in a slave device, such as Marchand’s laptop 31.
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`Record evidence also shows that implementing multiple JINI LUSs is
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`particularly useful in ad-hoc networks, such as Marchand’s, since the network
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`topology is variable and the network 30 is heterogeneous with devices expected to
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`join and leave at various times. Ex. 1016, 23, 24. With this background, the benefit
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`of multiple LUSs in Marchand’s ad-hoc network 30 is immediately apparent. For
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`example, if a single device (e.g., laptop 31) included a LUS, service provision for
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`remaining network devices (e.g., printer 32 and GMP 33) would fail upon the
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`departure of the single device due to the absence of a network LUS.
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`Advantageously though, in implementations having multiple network LUSs,
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`service provision in the network would remain operable should a device (e.g.,
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`laptop 31, printer 32) with a LUS leave the network because a LUS would still be
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`available on another device (e.g., GMP 33). Id. Thus, IXI’s requirement that a JINI
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`LUS must be located on or be limited to a master device is incorrect, and IXI’s
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`sub-piconet theory does not compel a result in which the GMP 33 is left without a
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`LUS.
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`C. Marchand’s LUS is implemented in the GMP 33.
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`Contrary to IXI’s contentions that a LUS is not implemented in the GMP 33,
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`a POSITA would have understood Marchand as describing a LUS being located in
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`the GMP 33. POR, 19, 36.
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`C1. A POSITA would have found it obvious to implement the
`LUS on the GMP 33.
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`IXI contends that it would not have been obvious to locate the JINI LUS on
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`GMP 33, as it offers arguments that the transitory capabilities, memory, processing
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`power, and battery life of a GMP 33 make the GMP 33 undesirable for the LUS.
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`POR, 36. However, IXI’s own discussion of Marchand indicates otherwise.
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`IXI argues that “Marchand makes clear that the use of a Bluetooth piconet
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`extended into an Internet Protocol (IP) wireless LAN implementing JINI/Java
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`technology is essential to the operation of the network and devices of Marchand.”
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`POR, 16 (emphasis added). Yet, as illustrated by the depicted scenarios below,
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`GMP 33 is the device that enables this “essential” functionality. Without the GMP
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`33, as shown in Scenario 4, no network 30 device can access IP network 35.
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`Thus, according to IXI’s admissions, the GMP 33 is the most logical choice
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`for implementing the LUS because it is the only location that ensures the GMP 33
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`can offer its “essential” functionality when the GMP 33 is present on the network.
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`See Ex. 1003, ¶ 40. A POSITA would therefore have found it obvious to
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`implement a LUS on the GMP 33. Petition, 25-29.
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`C2. Marchand describes the LUS on its GMP 33.
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`As discussed in the Petition, a POSITA would understand that Marchand’s
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`API corresponds to a JINI proxy object that is stored on a LUS. Petition, 26-29,
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`39-42; Ex. 1003, ¶ 38. Because, in JINI, proxy objects are downloaded from a LUS
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`and Marchand describes the API/proxy object as being downloaded from the GMP
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`33, a POSITA would have understood Marchand as describing an implementation
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`in which the JINI LUS is located on the GMP 33. Ex. 1003, ¶ 38.
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`IXI contends that Marchand’s JINI call control API is not a proxy object, but
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`fails to provide a sufficient explanation. For instance, IXI describes the proxy
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`object as being “used to identify the service(s) the joining device offers and to
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`establish an interface with that service.” POR, 19. During deposition, Dr.
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`Mandayam conceded that a JINI proxy object is “specifically implemented as an
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`API.” Ex. 1019, 55:5-6. Yet, in describing the call control API, Dr. Mandayam
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`changed his position—testifying that the call control proxy object in Marchand is
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`not an API, but merely “a data encapsulation that gives instructions on how you
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`would actually use this call control service, and specifically … asks the device to
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`behave as a slave to the master.” Ex. 1019, 57:6-24. IXI offers no evidence
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`supporting Dr. Mandayam’s position that Marchand’s proxy object is merely a data
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`encapsulation that “makes [a service seeking] device on the Bluetooth network
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`behave as a slave.” Ex. 1019, 55:5-10; 57:22-24. Marchand provides no description
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`of a data encapsulation, much less a data encapsulation that makes a device on the
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`Bluetooth network behave as a slave.
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`C3. Marchand’s FIG. 4 does not limit the location of the LUS to
`laptop 31.
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`IXI presses for a narrow interpretation of Marchand’s Fig. 4, suggesting that
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`only laptop 31 can include a LUS. POR, 53, 54. However, FIG. 4 does not limit the
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`location of the LUS to laptop 31.
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`FIG. 4 illustrates that, in some implementations, laptop 31 is one of the
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`network 30 devices that can include a LUS. FIG. 4, however, does nothing to
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`preclude implementations in which other devices in Marchand’s Bluetooth network
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`30 include a LUS.
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`IXI and Dr. Mandayam concede the same. For example, during deposition,
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`Dr. Mandayam stated that any network device intrinsic to Marchand’s piconet 30
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`could include a LUS and could be a master device. Ex. 1019, 16:10-24; 33:5-15.
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`IXI also alludes to a device other than laptop 31 being the master device when
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`stating “[t]his API is sent to the laptop through the master device” (emphasis
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`added). POR, 31. IXI’s statements indicate that the location of a LUS is not limited
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`by the implementation in Marchand’s FIG. 4, and that other devices in Marchand’s
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`Bluetooth network 30 can include a LUS and be a master of the piconet.
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`Additionally, FIG. 4 does not disclose all elements that are included on
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`laptop 31 and GMP 33. For example, IXI concedes that each device in Marchand’s
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`Bluetooth network 30 includes the protocol stack illustrated in Marchand’s FIG. 2.
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`POR, 17. FIG. 4 illustrates that laptop 31 includes the protocol stack, but does not
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`illustrate the protocol stack that is part of the GMP 33. Thus, FIG. 4’s illustration
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`of a component (e.g., LUS) on the laptop 31 does not indicate that such a
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`component (e.g., LUS) is lacking on the GMP 33.
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`As discussed in Section II(B), record evidence confirms that having multiple
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`LUSs in ad-hoc networks is desirable. Ex. 1016, 23. Because FIG. 4 does not
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`comprehensively list all elements of the GMP 33 and Marchand’s description
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`confirms location of the LUS on the GMP 33, FIG. 4 does not preclude the GMP
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`33 from having a LUS or preclude an implementation in which each of the laptop
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`31 and GMP 33 have a LUS (see Scenarios 1 and 2 in Section II(C)(C1)). Thus,
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`Marchand’s FIG. 4 does not require the laptop 31 to be the master of the Bluetooth
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`network 30 or to be the only device on which a LUS is implemented.
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`III. Marchand discloses a network address translator software component
`that is included in GMP 33.
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`IXI argues that a network address translator (NAT) software component is
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`not included in Marchand’s GMP 33, and that Marchand teaches away from using
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`NAT. POR, 22, 37-39. IXI’s argument, however, mischaracterizes Marchand and
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`fails to account for the breadth of a NAT software component, as recognized by the
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`’033 Patent.
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`The ’033 Patent describes that a “NAT component 553 translates a private
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`IP address to and from a real IP address.” Ex. 1001, 8:17-18. Marchand describes a
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`similar translation of a private IP address to and from a real or public IP address. In
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`Marchand, the “mobile phone receives IP packets from the GPRS network through
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`its public IP address, and forwards the received packets to the private IP address of
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`the destination device in the Piconet.” Ex. 1003, ¶ 27; Ex. 1005, 7:14-17. The
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`GMP 33 “also translates in the other direction for data going out of the Piconet to
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`the GPRS network.” Id.
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`IXI does not dispute that Marchand’s GMP 33 “translate[s] between a public
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`IP address and a private IP address.” POR, 37. Indeed, Dr. Mandayam admitted
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`that, in Marchand, “address translation is done at the gateway.” Ex. 1018, 147:5-7;
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`152:25-153:1.
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`Despite this recognition, IXI contends that Marchand performs “API
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`translation” using “the API that is sent from the SIP client in the mobile phone to
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`the laptop” and that the alleged API translation is distinct from and incompatible
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`with using a NAT. POR, 34-39; Ex. 1005, 11:11-12:3. IXI points to Marchand’s
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`disclosure that, for real-time applications such as VoIP, use of NAT may result in
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`an IP address mismatch problem. Ex. 1005, 11:17-12:3. Marchand explains that a
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`mismatch occurs “when the NAT device changes the source IP address in the
`
`header to a temporary public IP address, but the payload still identifies the source
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`IP address as the private IP address” and addresses this problem using an API to
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`“ensure[ ] that this mismatch does not occur.” Id.
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`IXI interprets this section of Marchand as indicating that NAT is not used
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`and Marchand’s API is performing all of the address translation. See POR, 37-39.
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`However, this is incorrect. Marchand’s API resolves any IP mismatch problems
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`created by Marchand’s NAT in handling real-time applications. Ex. 1003, ¶ 27; Ex.
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`1005, 11:17-12:3. Specifically, for non-real-time applications, Marchand’s NAT
`
`operates without issue. For real-time applications, “the NAT device changes the
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`source IP address in the header to a temporary public IP address, but the payload
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`still identifies the source IP address as the private IP address.” Id. An API is used
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`to resolve any IP address mismatches introduced by NAT. Id. Thus, contrary to
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`IXI’s API translation theory, Marchand uses the API as a supplement to NAT; not
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`a substitute for NAT, as IXI contends.
`
`Even assuming that IXI’s API translation theory of Marchand is correct,
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`which it is not, IXI provides no explanation for why address translation using an
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`API fails to meet a NAT software component. IXI does not dispute that, in
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`Marchand, “address translation is done at the gateway.” Ex. 1018, 147:5-7; 152:25-
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`153:1. Marchand also describes the API as “a small piece of Java code” (i.e.,
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`software component). Ex. 1005, 9:15. Accordingly, even assuming that Marchand
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`discloses “API translation” as IXI argues, the API is a software component that
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`translates a private IP address to and from a real or public IP address. Nothing in
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`the ’033 Patent precludes the NAT software component from being implemented
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`as an API. Accordingly, even under IXI’s interpretation, the API is a software
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`component that performs NAT.
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`IV. Marchand, Nurmann, and Vilander disclose “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.”
`IXI contends that “there is no objective teaching or suggestion in Marchand
`
`indicating any need for the cellular network to provide the public IP address, or
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`any apparent reason based on Vilander’s disclosure to modify Marchand as
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`suggested by Petitioner.” POR, 40. However, as explained below and in the
`
`Petition, using Vilander’s address allocation in Marchand would have amounted to
`
`nothing more than the use of a known technique to improve similar devices in the
`
`same way or the combination of prior art elements according to known methods to
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`yield predictable results. See KSR v. Teleflex, 550 U.S. 398, 417 (2007); M.P.E.P. §
`
`2143 I(C). Petition, 16-20.
`
`Marchand discloses a GMP 33 that routes IP packets between a network 30
`
`and an external wireless IP network 35, such as a cellular network that employs
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`GPRS. Ex. 1005, 7:12-17. To perform this routing, the GMP 33 has “a public IP
`
`address recognized in the wireless IP network.” Ex. 1005, 4:23-30; Ex. 1006, 7:8–
`
`17. Although the public IP address must be assigned, Marchand does not explicitly
`
`describe how the public IP address is assigned.
`
`Vilander discloses an Internet Access Server (IAS) in a Gateway General
`
`Packet Radio Service (GPRS) cellular network that allocates an IP address to a
`
`mobile terminal that wants to access the Internet through the cellular network. Ex.
`
`1011, 1:33-60. The mobile terminal receives a Radio Network Terminal Identity
`
`(RNTI) from a mobile network and stores the RNTI as an IP address for itself. Ex.
`
`1003, ¶ 45. Ex. 1011, Abstract; FIG. 3; 2:41-45; 5:2-10. Accordingly, a POSITA
`
`would have found it obvious to use Vilander’s technique in Marchand such that,
`
`when Marchand’s GMP 33 requests Internet access, a device on the cellular
`
`network 35, such as a GPRS network, would allocate the public IP address to the
`
`GMP 33 in a known and predictable manner. Ex. 1011, 1:48-52, 1:57-59; Ex.
`
`1003, ¶ 46.
`
`IXI also argues against the combination of Marchand and Nurmann under
`
`the assumption that the GMP 33 is a slave device. In making this assumption, IXI
`
`relies on its sub-piconet theory, which, as noted above, is incorrect at least because
`
`Marchand’s GMP 33 is a master device. Thus, IXI’s argument relies on an
`
`incorrect premise and Marchand’s GMP 33 purportedly being a slave device is not
`
`a reason why Marchand’s GMP 33 cannot assign private IP addresses.
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`As described in the Petition, Nurmann teaches that an IP gateway can be
`
`
`
`activated as a DHCP server and then allocate IP addresses to IP hosts (e.g.,
`
`devices) in a local IP network, such as Marchand’s Bluetooth network 30. Petition,
`
`16-20; Ex. 1010, 1:9-12; 2:54-60; 3:26-46; 4:37-48; FIG. 4. Nurmann discloses
`
`that the IP gateway that provides Internet access is the device that assigns IP
`
`addresses. Ex. 1010, Abstract, 3:14-63.
`
`In Marchand, such an IP gateway device is the GMP 33. The GMP 33
`
`receives IP packets from a GPRS network through its public IP address, and
`
`forwards the received packets to the private IP address of the destination device in
`
`the Bluetooth network 30. Ex. 1005, 7:14-16. Accordingly, a POSITA would have
`
`combined Marchand and Nurmann’s teachings at least because IP address
`
`allocation by a DHCP server in a GMP 33 protects against disturbances due to
`
`errors while assigning IP addresses. Ex. 1010, 2:37-48; 4:1-5; Ex. 1003, ¶ 51.
`
`Additionally, because the GMP 33 performs address translation, as taught by
`
`Marchand and conceded by Dr. Mandayam (see Ex. 1018, 147:5-7; 152:25-153:1),
`
`the GMP 33 needs real time information on the allocated addresses of devices. Ex.
`
`1003, ¶ 51. If an entity other than the GMP 33 performs address allocation, there
`
`could be a mismatch between the entity and the GMP 33 for an allocated address
`
`of a device and data packets could be incorrectly routed. Ex. 1003, ¶ 51.
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`17
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`V. Marchand discloses a thin terminal.
`IXI contends that Marchand does not teach or suggest that “the second
`
`wireless device is a thin terminal” because Marchand’s printer 32 does not
`
`correspond to a thin terminal. POR, 42, 43. As explained below, IXI’s contentions
`
`rely on a narrow interpretation of thin terminal and are inconsistent with IXI’s own
`
`allegations of infringement.
`
`The ’033 Patent describes thin terminals as mainly being “used as
`
`peripherals to an Application server in a PAN and their main task is user
`
`interaction, rendering output for a user and providing an Application server with a
`
`user's input.” Ex. 1001, 5:4-7. Because Marchand’s printer 32 allows devices in the
`
`piconet to provide printed output, Marchand’s printer 32 is a peripheral to the other
`
`devices in the piconet and performs user interaction. Ex. 1005, 10:6-7. Thus,
`
`Marchand’s printer 32 provides functionality similar to the ’033 Patent discussion
`
`of thin terminal.
`
`The ’033 Patent also describes thin terminals as having “a relatively low
`
`power central processor and operating system” and contrasts thin terminals with
`
`smart terminals, such as a laptop computer or a PDA. Ex. 1001, 5:1-8. The ’033
`
`Patent does not, however, specify a type, range, quantity, or level of power
`
`considered to be of “relatively low power.” As discussed in the Petition, a printer,
`
`at least, has a “low power central processor and operating system” relative to a
`
`laptop computer or PDA. Ex. 1003, ¶ 25.
`
`
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`Case IPR2015-01444
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`Instead of addressing these arguments, IXI advances a narrow interpretation
`
`of thin terminal, focusing on the ’033 Patent’s disclosure that “a thin terminal . . .
`
`has no embedded application code or data,” despite that language being absent
`
`from the claims. POR, 42, 43. As support, IXI points to col. 10 of the ’033 Patent
`
`specification (see Ex. 1001, 10:12-25):
`
`
`
`This portion of the ’033 Patent, however, does not describe a thin terminal as being
`
`devoid of application code or data —if it did, even a messaging terminal would not
`
`be considered a thin terminal after it locates and downloads appropriate software.
`
`Rather, the ’033 Patent refers to software that “needs to be located, downloaded
`
`and executed” for a thin terminal to be supported in a PAN. Ex. 1001, 10:13-25.
`
`This description does not preclude a printer from being a thin terminal, and, in fact,
`
`is consistent with Marchand’s printer 32, which can locate, download, and execute
`
`
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`software (e.g., APIs). Ex. 1005, 7:7-11; 7:27-8:17. Thus, IXI’s argument requires a
`
`narrow interpretation of a “thin terminal” as a device with no embedded
`
`application code or data that is incompatible with the broadest reasonable
`
`interpretation standard.
`
`This point is reinforced when considering IXI’s infringement contentions
`
`that “[a] WLAN Device may be a thin terminal such as a printer.” Ex. 1001, 5:1-8;
`
`Ex. 1012, 20, 45; Ex. 1013, 35, 70. Id. IXI’s infringement contentions negate its’
`
`current argument for the broadest reasonable interpretation of “thin terminal.”
`
`VI. Marchand, Nurmann, Vilander, and RFC 2543 disclose a DNS Software
`Component.
`
`IXI contends that the Marchand, Nurmann, Vilander, RFC 2543
`
`combination does not render obvious that “the software component includes a
`
`domain naming service (‘DNS’) software component to translate between a human
`
`readable name and a second Internet Protocol (‘IP’) address.” IXI argues that there
`
`is no need for a DNS server to allow a device to query a human-readable name and
`
`obtain an IP address corresponding to that human-readable name in Marchand.
`
`POR, 45. However, IXI’s assertions are contrary to Marchand’s disclosure.
`
`Marchand’s GMP 33 includes a “second interface/API [that] is a SIP client
`
`42 which enables the use of the full SIP client capabilities. The SIP client
`
`interfaces via SIP signaling with a SIP proxy server 43 in the 3G wireless IP
`
`network” to establish a cellular call. Ex. 1003, ¶ 54; Ex. 1005, 8:5-7; 9:20-30. The
`
`full client capabilities include implementing SIP capabilities, such as the DNS
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`resolver in RFC 2543, which allow Marchand’s SIP client 42 to perform address
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`resolution to complete SIP calls. Ex. 1003, ¶ 57; Ex. 1007, pp. 1, 13, 146. Dr.
`
`Mandayam also concedes that a SIP client can be used to complete a call. Ex.
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`1019, 55:11-15. RFC 2543 tea
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