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
`___________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`

`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2015-01444
`Patent 7,039,033
`
`
`Page(s)
`
`I.
`INTRODUCTION .......................................................................................... 1
`ALLEGED GROUNDS OF INVALIDITY ................................................... 2
`II.
`III. TECHNICAL OVERVIEW OF THE ’033 PATENT ................................... 3
`IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 7
`V.
`CLAIM CONSTRUCTION ........................................................................... 8
`A.
`“identifies whether the service is available at a particular time” ......... 9
`VI. THERE IS NO REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE RENDERED OBVIOUS BY THE
`ALLEGED COMBINATIONS .................................................................... 11
`A. Overview Of The Asserted Art .......................................................... 11
`1. Marchand ................................................................................. 11
`2.
`Nurmann ................................................................................... 16
`3.
`Vilander .................................................................................... 17
`4.
`RFC 2543 ................................................................................. 18
`5.
`Larsson ..................................................................................... 18
`6.
`JINI Specification .................................................................... 19
`There Is No Reasonable Likelihood That Claims 1, 4, 7, And 14
`Are Rendered Obvious By Marchand, Nurmann, And Vilander ....... 22
`1. Marchand, alone or in combination with Nurmann and
`Vilander, fails to disclose that a first wireless device
`“having a software component to access information
`from the Internet . . . in response to a first short-range
`radio signal” as recited in independent claim 1 ....................... 22
`2. Marchand, alone or in combination with Nurmann and
`Vilander, fails to disclose the “service repository
`software component” as recited in independent claim 1 ......... 24
`
`B.
`
`i
`
`

`
`
`
`C.
`
`D.
`
`E.
`
`IPR2015-01444
`Patent 7,039,033
`
`
`b.
`
`4.
`
`2.
`
`a. Marchand fails to disclose the claimed “service
`repository software component” either explicitly or
`inherently ........................................................................ 25
`Petitioner’s obviousness argument regarding
`claimed “service repository software component”
`is defective ...................................................................... 30
`3. Marchand, alone or in combination with Nurmann and
`Vilander, fails to disclose dependent claims 4, 7 and 14 ......... 34
`The Petition fails to demonstrate any motivation to
`modify Marchand in view of Nurmann and Vilander to
`arrive at the claimed invention ................................................. 36
`There Is No Reasonable Likelihood That Claim 5 Is Rendered
`Obvious By Marchand, Nurmann, Vilander, and RFC 2543 ............. 38
`1.
`The Petition fails to demonstrate any motivation to
`modify Marchand in view of Nurmann, Vilander, and
`RFC 2543 to arrive at the claimed invention ........................... 38
`There Is No Reasonable Likelihood That Claims 6 and 23 Are
`Rendered Obvious By Marchand, Nurmann, Vilander and
`Larsson ............................................................................................... 39
`1. Marchand, alone or in combination with Nurmann,
`Vilander and Larsson, further fails to disclose the
`claimed “security software component to control access
`between the cellular network and the first wireless
`device” in claim 6 .................................................................... 40
`The Petition fails to demonstrate any motivation to
`modify Marchand in view of Nurmann, Vilander, and
`Larsson to arrive at the claimed invention ............................... 42
`There Is No Reasonable Likelihood That Claims 12, 15, 22, 34,
`39, 40, 42, And 46 Are Rendered Obvious By Marchand,
`Nurmann, Vilander, and JINI Spec. ................................................... 43
`1. Marchand, alone or in combination with Nurmann
`Vilander, and JINI Spec, fails to disclose that the
`processor operative with the software component to
`“enumerate a list of services available from the handheld
`device and the terminal” and “search the list of services”
`
`ii
`
`

`
`
`
`3.
`
`as recited in independent claim 34 and similarly in
`independent claim 42 ............................................................... 43
`2. Marchand, alone or in combination with Nurmann
`Vilander, and JINI Spec, fails to disclose “wherein the
`software component includes a plug and play software
`component to identify the terminal in a short distance
`wireless network and obtain the application software
`component for the terminal” as recited in claims 12 and
`40 .............................................................................................. 45
`The Petition fails to demonstrate any motivation to
`modify Marchand in view of Nurmann, Vilander, and
`JINI spec. to arrive at the claimed invention ........................... 47
`There Is No Reasonable Likelihood That Claims 25 and 28 Are
`Rendered Obvious By Marchand, Larsson, and JINI Spec................ 48
`VII. CONCLUSION ............................................................................................. 49
`
`
`F.
`
`IPR2015-01444
`Patent 7,039,033
`
`
`iii
`
`

`
`TABLE OF AUTHORITIES
`
`IPR2015-01444
`Patent 7,039,033
`
`
`Page(s)
`
`
`
`
`
`
`CASES
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534, 48 USPQ2d 1321 (Fed. Cir. 1998) .............................................. 32
`
`In re Cuozzo Speed Techs., LLC,
`778 F.3d 1271 (Fed. Cir. 2015) ............................................................................ 8
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 32
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) .....................................................................passim
`
`In re Hedges,
`783 F.2d 1038 (Fed. Cir. 1986) .......................................................................... 41
`
`In re Ratti,
`270 F.2d 810 (CCPA 1959) .........................................................................passim
`
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .............................................................. 39, 42, 48
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`
`Microsoft Corp. v. Proxyconn, Inc.,
`Case IPR2012-00026 (PTAB, Feb. 19, 2014) .................................................... 26
`
`Microsoft Corp. v. Proxyconn, Inc.,
`No. 2014-1542, -1543 (Fed. Cir. Jun. 16, 2015) .................................................. 9
`
`Scaltech, Inc. v. Retec/Tetra, LLC.,
`178 F.3d 1378 (Fed. Cir. 1999) .......................................................................... 26
`
`iv
`
`

`
`
`Transclean Corp. v. Bridgewood Servs., Inc.,
`290 F.3d 1364 (Fed. Cir. 2002) .......................................................................... 26
`
`IPR2015-01444
`Patent 7,039,033
`
`
`STATUTES
`
`35 U.S.C. § 103(a) ..................................................................................................... 2
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100(b) ................................................................................................ 8
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`M.P.E.P. § 2141(II)(C)............................................................................................... 8
`
`
`
`v
`
`

`
`Pursuant to 37 C.F.R. § 42.107, the Patent Owner, IXI IP, LLC (“IXI”)
`
`IPR2015-01444
`Patent 7,039,033
`
`
`hereby submits the following Preliminary Response to the Petition seeking inter
`
`partes review of U.S. Patent No. 7,039,033 (“the ’033 Patent”). This filing is
`
`timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it is being filed within
`
`three months of the mailing date of the Notice of Filing Date Accorded to the
`
`Petition (Paper 3), mailed July 2, 2015.
`
`I.
`
`INTRODUCTION
`
`The Petition fails to show a reasonable likelihood of prevailing on any of the
`
`challenged claims of the ’033 Patent. Accordingly, Patent Owner respectfully
`
`requests that the Patent Trial and Appeal Board (“the Board”) deny inter partes
`
`review as to all grounds set forth in the Petition.
`
`The Petition alleges five grounds of invalidity using six alleged prior art
`
`references in five different obviousness combinations. In each of the alleged
`
`grounds, Petitioner has asserted the same primary reference in combination with
`
`two or three other references. Petitioner has failed to show that each and every
`
`element of the claims is disclosed in the alleged combinations. Petitioner has also
`
`failed to show in any of the five grounds that the alleged combinations are proper
`
`and that one of ordinary skill in the art would seek to combine the references.
`
`Should the Board decide to institute trial, Patent Owner reserves the right to
`
`present additional arguments.
`
`
`
`1
`
`

`
`
`II. ALLEGED GROUNDS OF INVALIDITY
`Petitioner alleges that claims 1, 4, 5, 6, 7, 12, 14, 15, 22, 23, 25, 28, 34, 39,
`
`IPR2015-01444
`Patent 7,039,033
`
`
`40, 42, and 46 of the ’033 Patent are invalid as obvious based on the following five
`
`grounds of invalidity:
`
`• Ground 1: Claims 1, 4, 7, and 14 are allegedly rendered obvious
`under 35 U.S.C. § 103(a) by Marchand (Ex. 1005; Ex. 1006),
`Nurmann (Ex. 1010), and Vilander (Ex. 1011);
`• Ground 2: Claim 5 is allegedly rendered obvious under 35
`U.S.C. § 103(a) by Marchand, Nurmann, Vilander, and RFC
`2543 (Ex. 1007);
`• Ground 3: Claims 6 and 23 are allegedly rendered obvious
`under 35 U.S.C. § 103(a) by Marchand, Nurmann, Vilander,
`and Larsson (Ex. 1008);
`• Ground 4: Claims 12, 15, 22, 34, 39, 40, 42, and 46 are
`allegedly rendered obvious under 35 U.S.C. § 103(a) by
`Marchand, Nurmann, Vilander, and JINI Spec. (Ex. 1009);
`• Ground 5: Claims 25 and 28 are allegedly rendered obvious
`under 35 U.S.C. § 103(a) by Marchand, Larsson, and JINI
`Spec.
`
`Petition at 3. As explained in Section VI. below, Petitioner has failed to present a
`
`prima facie case of invalidity for each of the asserted grounds.
`
`2
`
`

`
`
`III. TECHNICAL OVERVIEW OF THE ’033 PATENT
`The ’033 Patent, entitled “System, Device and Computer Readable Medium
`
`IPR2015-01444
`Patent 7,039,033
`
`
`For Providing A Managed Wireless Network Using Short-Range Radio Signals,”
`
`issued on May 2, 2006 to inventors Amit Haller, Peter Fornell, Avraham Itzchak,
`
`Amir Glick, and Ziv Haparnas 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 includes 56 claims, of which, as explained above, 17 claims
`
`(claims 1, 4, 5, 6, 7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46) are being
`
`challenged in this proceeding. Challenged claims 1, 25, 34, and 42 of the ’033
`
`Patent are independent claims. Independent claim 1 is illustrative:
`
`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,
`
`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
`
`3
`
`

`
`
`
`IPR2015-01444
`Patent 7,039,033
`
`
`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.
`
`The ’033 Patent is directed to a system for wireless devices to communicate
`
`effectively with each other and access information from a Wide Area Network
`
`(“WAN”), such as the Internet. (See Ex. 1001 at Abstract.) As described in the
`
`Background of the Invention of the ’033 Patent, prior art systems for allowing
`
`multiple wireless devices to access remote information on a private or public
`
`network suffer from a number of limitations including: (1) only a single wireless
`
`device can access the Internet at a time; (2) Internet protocol (“IP”) addresses are
`
`held while connected to the Internet; (3) each wireless device requires its own
`
`security management; and (4) there is no ability to share, add to, or manage the
`
`services of the numerous wireless devices, or there is no communication between
`
`wireless devices. (Id. at 1:14-40.) Moreover, Bluetooth technology provides
`
`wireless communication between devices, but also suffers from many
`
`disadvantages. It does not allow for “plug and play” capability at a wireless device
`
`application level. (Id. at 1:40-44.) Further, if a user desires a wireless device to
`
`communicate with a Bluetooth technology device, the added wireless device must
`
`4
`
`

`
`
`have software drivers and applications loaded to operate. (Id. at 1:47-50.) Further,
`
`IPR2015-01444
`Patent 7,039,033
`
`
`Bluetooth technology does not allow devices to share information and resources at
`
`an application level. (Id. at 1:56-58.)
`
`The ’033 Patent provides an improved solution for effectively sharing and
`
`managing services and using IP resources and security management. As depicted
`
`in Figure 1 of the ’033 Patent, one embodiment describes a system (System 100)
`
`and device (Gateway Device 106) for providing one or more devices (Terminals
`
`107) in a Wide Local Area Network (“WLAN”), such as a Wi-Fi or Bluetooth
`
`network, with access to one or more servers (Server 101 and Server 102) in a
`
`WAN, such as a cellular network (Cellular Network 105) and/or the Internet
`
`(Internet 103). (Id. at Fig. 1.) As shown below in Figure 1, the circle on the left
`
`(red) illustrates an exemplary WAN and the circle on the right (blue) an exemplary
`
`WLAN. The Gateway Device 106 may be part of both the WLAN and WAN
`
`networks. (Id.) The Gateway Device 106 provides “plug and play” capability to
`
`share services and communicate with one or more of the terminals 107. (See, e.g.,
`
`8:64-9:24; 13:44-14:4.) The “plug and play” capability on Gateway Device 106
`
`allows it to identify a new terminal and determine the necessary software required
`
`to support the new terminal to be downloaded. (Id. at 10:11-37; Fig. 7.) In
`
`addition, one terminal 107 can share services and communicate with another
`
`5
`
`

`
`
`terminal 107 on the WLAN through the Gateway Device 106. (See, e.g., 14:62-
`
`IPR2015-01444
`Patent 7,039,033
`
`
`15:4.)
`
`
`
`
`
`The Gateway Device 106 communicates with one or more terminals 107 to
`
`form a personal area network (“PAN”) using short-range radio signals 110 such as
`
`Wi-Fi or Bluetooth. (Ex. 1001 at 4:8-35.) 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.) In so doing, Servers 101
`
`and 102 can provide information, such as web pages or application software
`
`components, to terminals 107 in the WLAN by way of the Gateway Device 106.
`
`(Id. at 4:49-54.) Terminals 107 can also share services and communicate by way
`
`of the Gateway Device 106. (Id. at 4:57-59.)
`
`6
`
`

`
`At the core of the claimed invention of the ’033 Patent is Gateway Device
`
`IPR2015-01444
`Patent 7,039,033
`
`
`
`
`106, and the numerous software components included on the Gateway Device 106
`
`to enable it to directly share services and communicate with one or more terminals
`
`107 in a “plug and play” manner, and also provide a means for one terminal 107 to
`
`share services and communicate with another terminal 107 indirectly via the
`
`Gateway Device 106. (See, e.g., Ex. 1001 at 5:60-14:4; Figs. 4-5a-b.)
`
`The Gateway Device 106 includes a service repository software component
`
`to identify and/or identify and search for services offered by terminals 107. (See,
`
`e.g., Ex. 1001 at 12:10-13:18 (“Service repository software component 704 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.”); see also id. at 2:44-47; Figs. 4 and 5a-b.) For example,
`
`Gateway Device 106 may identify one terminal as a printer with a printing service.
`
`(See id. at 12:16-18; Fig. 8.)
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner contends that a person of ordinary skill in the art 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
`
`7
`
`

`
`
`networking systems or, alternatively, a Bachelor’s Degree (or higher degree) in an
`
`IPR2015-01444
`Patent 7,039,033
`
`
`academic area emphasizing electrical or computer engineering and having two or
`
`more years of experience in communication and networking systems.” (Petition at
`
`pp. 7-8.)
`
`For the purposes of this preliminary response, and only this response, Patent
`
`Owner has applied Petitioner’s definition of the person of ordinary skill in the art.
`
`Patent Owner reserves the right to submit its own definition, and support therefor,
`
`at a later time should the Board decide to institute this proceeding. Patent Owner
`
`reserves the right to present evidence to support its proposed level of ordinary skill,
`
`such as the type of problems encountered in the art at the time of the invention, the
`
`sophistication of the technology, and the education level and professional
`
`capabilities of active workers in the field. See M.P.E.P. § 2141(II)(C).
`
`V. CLAIM CONSTRUCTION
`In an inter partes review, claim terms in an unexpired patent are interpreted
`
`according to their broadest reasonable construction in light of the specification of
`
`the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`
`Speed Techs., LLC, 778 F.3d 1271, 1281-82 (Fed. Cir. 2015). Further, the
`
`prosecution history is relevant in ascertaining the broadest reasonable
`
`8
`
`

`
`
`interpretation of a claim term. Microsoft Corp. v. Proxyconn, Inc., No. 2014-1542,
`
`IPR2015-01444
`Patent 7,039,033
`
`
`-1543, Slip Op. at 7 (Fed. Cir. Jun. 16, 2015).
`
`“identifies whether the service is available at a particular time”
`
`A.
`Claim 4 recites “identifies whether the service is available at a particular
`
`time.” Petitioner construes this phrase to encompass “the service being
`
`registered.” (Petition at 9.) As discussed below, Petitioner’s construction is
`
`inconsistent with the intrinsic evidence and should not be adopted.
`
`First, the ’033 Patent makes clear that the claim term “identifies whether the
`
`service is available at a particular time” is a process separate and different from
`
`registration. Specifically, the ’033 Patent describes that the service repository
`
`software component offers a plurality of functions, including for example, service
`
`registration, service unregistration, service search, service description. (Ex. 1001
`
`at 12:33-67.) In particular, the “service repository software component 704
`
`provides service registration of a service offered by application, or a hardware
`
`capability offered by terminal driver.” (Id. at 12:35-37.) The ’033 Patent further
`
`states that
`
`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. A
`
`9
`
`

`
`
`
`IPR2015-01444
`Patent 7,039,033
`
`
`service might be available in a PAN but not necessarily accessible
`since another application is exclusively using the service.
`
`(Id. at 13:5-11 (emphasis added).) Thus, as described by the ’033 Patent, the
`
`process of registration does not include the process of describing the availability of
`
`a service at a particular time. Instead, registration occurs when a device joins the
`
`network and intends to offer its service to other devices in the network. (Id. at
`
`12:35-37.) In contrast, “identif[ying] whether the service is available at a
`
`particular time” occurs when a device requests to access a service provided by
`
`another device in the network. (Id. at 13:5-11.)
`
`Second, Petitioner’s construction is incorrect because it ignores that the
`
`availability of the service is identified “at a particular time.” Indeed, as described
`
`by the ’033 Patent, the availability of the service can change in time. For example,
`
`the service may become unavailable at a later time because it was canceled. (Id. at
`
`12:39-40.)
`
`Patent Owner respectfully submits that “identifies whether the service is
`
`available at a particular time” does not need to be construed. If the Board finds
`
`that this term should be construed, it should be given its plain and ordinary
`
`meaning as understood by a person of ordinary skill in the art.
`
`10
`
`

`
`IPR2015-01444
`Patent 7,039,033
`
`
`
`VI. THERE IS NO REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE RENDERED OBVIOUS BY THE
`ALLEGED COMBINATIONS
`A. Overview Of The Asserted Art
`1. Marchand
`Marchand (PCT Publication Number WO 2000/041529 and U.S. Patent
`
`Application No. 09/541,529) discloses an ad-hoc network such as a Bluetooth
`
`Piconet including a plurality of devices, such as a printer and a laptop computer,
`
`connected via Bluetooth technology. The devices on the Bluetooth Piconet can
`
`share services with each other. (Ex. 1005 at Abstract, 2:17-19; Ex. 1006 at
`
`Abstract, 3:16-18.)
`
`In order to share services within the Piconet, each device is Bluetooth-
`
`compliant and JINI/Java-capable. (Ex. 1005 at 7:9-11; Ex. 1006 at 11:12-15.)
`
`Specifically, each device in the Bluetooth Piconet is implemented with particular
`
`JINI and Java software applications/layers such that the devices in the Bluetooth
`
`Piconet, which are connected in an ad-hoc fashion, can share services with each
`
`other using JINI technology. As shown in FIG. 2, each device in the Bluetooth
`
`Piconet includes a physical layer 15 and a link layer 16 that together provide the
`
`Bluetooth capability to the device. (Ex. 1005 at Fig. 2; Ex. 1006 at Fig. 2.) In
`
`addition, each device includes a network transport (IP) layer 17, an operating
`
`11
`
`

`
`
`system layer 18, a Java technology layer 19, and a JINI technology layer 20. (Ex.
`
`IPR2015-01444
`Patent 7,039,033
`
`
`1005 at 6:14-22; Ex. 1006 at 10:5-14.)
`
`
`
`JINI technology is “a Java-technology-centered, distributed software system
`
`for simplicity, flexibility and federation.” (Ex. 1005 at 2:27-28, Abstract; Ex. 1006
`
`at 4:5-6, Abstract.) Particularly, the JINI architecture exploits the ability to move
`
`java language code from machine to machine, to allow various connected devices
`
`to use services offered by other devices in the network. (Ex. 1005 at 2:28-31; Ex.
`
`1006 at 4:6-9.) Thus, the JINI technology layer 20 in a device allows an
`
`application 21 to discover, join, and download services 22 from other devices.
`
`(Ex. 1005 at 5:23-25, 6:14-16; Ex. 1006 at 9:1-4; 10:5-8.) For example, if the
`
`Bluetooth Piconet includes a printer and a laptop computer both are JINI- and
`
`Java-capable, a user can still “print a file from the laptop on the printer” even if
`
`12
`
`

`
`
`“there is no WCDMA or EDGE radio access modem in the laptop.” (Ex. 1005 at
`
`IPR2015-01444
`Patent 7,039,033
`
`
`10:5-7; Ex. 1006 at 16:6-8.)
`
`Marchand further discloses that a mobile phone 33, which is also Bluetooth
`
`compliant and JINI/Java-capable, can join the Bluetooth Piconet to (1) add
`
`additional services to the existing Bluetooth Piconet or (2) access services from the
`
`other devices in the Bluetooth Piconet. (Ex. 1005 at 7:12-14, 12:4-16; Ex. 1006 at
`
`11:16-18.) For example, a “user with a Bluetooth-compliant mobile phone may
`
`walk into a room that has a printer and a laptop computer, both of with are also
`
`Bluetooth-compliant.” (Ex. 1005 at 10:3-5; Ex. 1006 at 16:2-4.)
`
`For instance, the mobile phone 33, can provide a call control service to the
`
`other devices once it joins the Piconet. As shown in FIG. 3, the mobile phone 33
`
`can act as a gateway between a Piconet 30 and an external wireless IP network 35,
`
`thereby allowing the other devices in the Piconet 30, such as the laptop 31 and
`
`printer 32, to access the external network 35.
`
`13
`
`

`
`
`
`
`
`IPPR2015-011444
`
`
`Paatent 7,0399,033
`
`
`
`
`
`
`TTo access thhe call conntrol servicce providedd by the moobile phonne 33, a devvice
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`downloads “an intterface/Application PProgrammiing Interfacce (API) wwhich is ann
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`abstracttion of a SIIP and/or HH.323 call control cliient” from
`
`
`
`
`
`the mobilee phone 333 “in
`
`
`
`
`
`
`
`
`
`
`
`
`
`order too have the ddevice behhave as a sllave devicee toward thhe mobile pphone whi
`
`
`
`
`
`ch
`
`
`
`is the mmaster.” (Exx. 1005 at 8:24-31; EEx. 1006 att 10:20-11::3.)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TThe mobilee phone 33 can also access the sservices prrovided by
`the other
`
`
`
`devices in the Picoonet 30. FFor examplle, a user mmay have a a Bluetoothh-compliannt
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`screen pphone in hiis house thhat is conneected to a ccable modeem. (Ex. 11005 at 12::4-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`16; Ex. 1006 at 199:11-20:3.)) When thee user enterrs his housse with his
`
`
`
`
`
`
`
`
`
`
`
`
`
`mobile phhone,
`
`
`
`the mobbile phone joins the PPiconet andd recognizees that therre is alreaddy a Bluetoooth
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`14
`
`

`
`
`device on the Piconet that enables the user to place calls. (Id.) The mobile phone
`
`IPR2015-01444
`Patent 7,039,033
`
`
`may then disconnect from the external wireless network while remaining
`
`connected to the Bluetooth Piconet. (Id.) The mobile phone can utilize the call
`
`service provided by the screen phone and place a call through the screen phone via
`
`the cable or DSL modem. (Id.)
`
`To allow the devices in the Piconet to publish, locate and share services
`
`utilizing the JINI technology, the Piconet 30 includes a JINI Lookup Service
`
`(LUS). (Ex. 1005 at 5:2-6, 12-15; Ex. 1006 at 7:21-8:3, 12:10-14.) All of the
`
`devices on the Piconet publish the services they can provide to other devices
`
`through the JINI LUS. (Ex. 1005 at 10:17-18; Ex. 1006 at 16:18-20.) The JINI
`
`LUS (“LUS 46”) is located in the laptop computer of the Piconet, as illustrated by
`
`FIG. 4 below:
`
`15
`
`

`
`
`
`IPPR2015-011444
`
`
`Paatent 7,0399,033
`
`
`
`
`
`
`
`
`The devvices on the Bluetootth Piconet 330 publishh the servicces they proovide throuugh
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the LUSS 46. (Ex. 1005 at 8::11-15; Ex
`
`
`
`
`
`
`
`. 1006 at 113:6-10.) FFor examp
`
`
`
`
`
`le, the mobbile
`
`
`
`phone 333 publishees the call ccontrol serrvices that
`
`
`
`
`
`
`
`
`
`it offers inn the Bluet
`
`
`
`ooth Piconnet
`
`
`
`30 utilizzing the LUUS 46. (Idd.) Becaus
`e the LUS
`
`
`
`
`
`
`
` 46 is locaated in the llaptop
`
`
`
`
`
`computer, the “serrvices mennu on the laaptop indiccates all seervices avaailable on thhe
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Piconet
`
`
`
`
`
`
`.” (Ex. 1005 at 10:244; Ex. 1006 at 17:5-66.)
`
`
`
`
`
`Nurmannn
`
`2.
`
`
`
`
`
`NNurmann (UU.S. Patentt No. 6,5600,642) is ddirected to
`
`
`
`
`
`
`
`a method oof assigninng IP
`
`
`
`
`
`addresses to IP hoosts in an IPP network.. (Ex. 101
`
`
`
`
`
`
`
`
`
`
`
`
`
`0 at Abstraact.) The IIP gatewayy
`
`
`
`
`
`
`
`
`
`
`
`first funnctions as aa DHCP (DDynamic HHost Configguration Prrotocol) cliient and
`
`
`
`
`
`16
`
`

`
`
`determines whether a DHCP server is present in the IP network. (Id. at 2:62-67;
`
`IPR2015-01444
`Patent 7,039,033
`
`
`5:15-17.) If so, the DHCP server assigns IP addresses to the IP hosts. (Id.) If
`
`there is no DHCP present in the IP network, the IP gateway then functions as a
`
`DHCP server and allocates IP addresses to the IP hosts. (Id. at 2:46-60; 5:18-21.)
`
`Nurmann, however, is not concerned with sharing services between the IP hosts.
`
`Vilander
`
`3.
`Vilander (U.S. Patent No. 6,771,635) is directed to a method for allocating
`
`IP addresses for mobile terminals. Vilander discloses that a mobile terminal
`
`conducts “a negotiation” with a mobile telecommunications network “to determine
`
`a host part of the IP address.” (Ex. 1011 at 3:7-4:3.) The mobile terminal then
`
`“generate[s] an IP address” using the host part that it negotiated with the mobile
`
`telecommunications network. (Id.) In other words, the IP address of the mobile
`
`terminal is generated by the mobile terminal itself.
`
`Specifically, Vilander discloses that a “suitable host part is negotiated
`
`between the mobile terminal 7 and the radio network 1 during the establishment of
`
`(lower) communication layers over the air interface[.]” (Id. at 4:60-67.) “The
`
`negotiation is initiated by the radio network proposing a suitable host part which it
`
`knows is unique within its coverage area.” (Id.) “[T]he mobile terminal receives
`
`the proposed host part and is able to combine this with the received routing prefix
`
`17
`
`

`
`
`to form an IP address for use in subsequent Internet sessions.” (Id. at 5:7-10.)
`
`IPR2015-01444
`Patent 7,039,033
`
`
`Alternatively, the mobile terminal can “generate a temporary host part upon
`
`registering with a radio network.” (Id. at 5:20-25.) Vilander is not concerned with
`
`sharing services between the mobile terminal and any other devices.
`
`RFC 2543
`
`4.
`RFC 2543 (SIP: Session Initiation Protocol, RFC 2543) is directed to the
`
`Session Initiation Protocol (“SIP”), “an application-layer control protocol that can
`
`establish, modify and terminate multimedia sessions or calls.” (Ex. 1007 at 7.)
`
`“These multimedia sessions include multimedia conferences, distance learning,
`
`Internet telephony and similar applications. SIP can invite both persons and
`
`‘robots’, such as a media storage service.” (Id.) RFC 2543 is not concerned with
`
`sharing services between devices in a network.
`
`Larsson
`
`5.
`Larsson (U.S. Patent No. 6,836,474) is directed to a Wireless Session
`
`Protocol (WAP) gateway interconnecting a Public Land Mobile Network (PLMN)
`
`and a private network. (Ex. 1008 at Abstract.) As shown in FIG. 1, a mobile
`
`terminal 10 (e.g., a laptop computer, personal digital assistant, mobile phone)
`
`coupled to the PLMN 20 may access a private network 15 (e.g., a corporate
`
`18
`
`

`
`
`network) via the WAP gateway 30. (Id. at Fig. 1.)
`
`IPR2015-01444
`Patent 7,039,033
`
`
`
`
`The WAP gateway 30 includes a first stage proxy 35 and a second stage
`
`proxy 40. (Id. at 2:62-3:1.) “The first stage proxy 35 includes the lowest layer of
`
`the WAP protocol stack and is responsible for granting access of a mobile terminal
`
`10 to the private network 15. The second stage proxy 40 contains the remainder of
`
`the layers of the WAP protocol stack.” (Id.) Larsson is not concerned with sharing
`
`services between the mobile terminal and any other devices.
`
`6.
`JINI Specification
`The JINI Specification (The JiniTM Specification, Arnold, Addison-Wesley;
`
`“JINI Spec.”) is directed to the JINI technology for deploying and using services in
`
`a network. The JINI architecture relies upon several properties of the Java virtual
`
`machine, including:
`
`19
`
`

`
`
`
`IPR2015-01444
`Patent 7,039,033
`
`
`• “Homogeneity: The Java virtual machine provides a
`homoge