Paper No. 8
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` Entered: December 30, 2015
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`Trials@uspto.gov
`571.272.7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`IXI IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01444
`Patent 7,039,033 B2
`____________
`
`
`
`Before TRENTON A. WARD, KRISTINA M. KALAN, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
`
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`

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`IPR2015-01444
`Patent 7,039,033 B2
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`I. INTRODUCTION
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`
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`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`
`and Apple Inc. (collectively “Petitioner”) filed a Petition (“Pet.”) (Paper 2)
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`to institute an inter partes review of claims 1, 4–7, 12, 14, 15, 22, 23, 25, 28,
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`34, 39, 40, 42, and 46 of U.S. Patent No. 7,039,033 B2 (“the ’033 patent”)
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`(Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. IXI IP, LLC (“Patent
`
`Owner”) filed a Preliminary Response (“Prelim. Resp.”) (Paper 6) to the
`
`Petition. We have jurisdiction under 35 U.S.C. § 314.
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`
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`Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an
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`inter partes review unless the information in the petition and preliminary
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`response “shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” For the reasons that follow, we institute an inter partes review as
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`to claims 1, 4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46 of the
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`’033 patent on certain grounds of unpatentability.
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`
`
`A.
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`Related Proceedings
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`II. BACKGROUND
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`
`
`The parties identify the following proceedings related to the ’033
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`patent: IXI Mobile (R&D) Ltd. v. Samsung Electronics Co., Case No. 3:15-
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`cv-03752-HSG (N.D. Cal.); IXI Mobile (R&D) Ltd. v. Apple, Inc., Case No.
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`4:15-cv-03755-PJH (N.D. Cal.); and IXI Mobile (R&D) Ltd. v. Blackberry
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`Ltd., Case No. 3:15-cv-03754-RS (N.D. Cal.). Pet. 1–2; Paper 5, 1–2; Paper
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`7, 1–2.
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`2
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`IPR2015-01444
`Patent 7,039,033 B2
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`B.
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`The ’033 Patent
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`
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`
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`The ’033 patent issued from an application filed on May 7, 2001.
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`Ex. 1001, [22]. The ’033 patent is directed to “a system that accesses
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`information from a wide area network (‘WAN’), such as the Internet, and
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`local wireless devices in response to short-range radio signals.” Id. at 4:8–
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`11. Figure 1 of the ’033 patent is reproduced below:
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`
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`Figure 1 illustrates an exemplary system 100 having a personal area network
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`(PAN) and a wide area network. Id. at 4:8–19. The PAN is made up of
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`gateway device 106 and one or more terminals 107, such as, for example, a
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`laptop computer, a personal digital assistant, or a printer. Id. at 4:17–25.
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`Gateway device 106 is coupled to cellular network 105, which in turn
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`connects to Internet 103 through carrier backbone 104. Id. at 4:36–39, 49–
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`55.
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`
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`Software architecture 400 for gateway device 106 may include
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`network management software 404 including, inter alia, PAN application
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`server 404a. Id. at Figs. 4, 5a; 5:61–6:5, 6:36–42; 6:58–63. In turn, PAN
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`application server 404a includes service repository software component 704,
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`which “allows applications 406, which run on a gateway device 106 or
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`terminals 107, to discover what services are offered by a PAN, and to
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`determine the characteristics of the available services.” Id. at Fig. 7; 10:1–9;
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`12:9–14; see also id. at 12:33–67 (enumerating the many functions of
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`service repository software component 704).
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`
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`C.
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`Illustrative Claim
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`Claim 1 of the ’033 patent recites:
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`A system
`1.
`comprising:
`
`for providing access
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`to
`
`the
`
`Internet,
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`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,
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`a second wireless device, in the short distance wireless
`network, to provide the first short-range radio signal,
`
`wherein the software component includes a network
`address translator software component to translate between a
`first Internet Protocol (“IP”) address provided to the first
`wireless device from the cellular network and a second address
`for the second wireless device provided by the first wireless
`device,
`
`wherein the software component includes a service
`repository software component to identify a service provided by
`the second wireless device.
`
`4
`
`Ex. 1001, 15:40–59.
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`IPR2015-01444
`Patent 7,039,033 B2
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`D.
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`The Prior Art
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`
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`Petitioner relies on the following prior art:
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`PCT Publication No. WO 01/76154 A2 to Marchand,
`published Oct. 11, 2001 (Ex. 1005, “Marchand”), which claims
`priority to U.S. Application No. 09/541,529, filed Apr. 3, 2000
`(Ex. 1006, “Marchand Priority”);
`
`Handley et al., Request For Comments 2543 SIP: Session
`Initiation Protocol, The Internet Society, March 1999 (Ex.
`1007, “RFC 2543”);
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`U.S. Patent No. 6,836,474 B1 to Larsson, filed Aug. 31,
`2000, issued Dec. 28, 2004 (Ex. 1008, “Larsson”);
`
`K. Arnold et al., The JINI™ Specification, Addison-
`Wesley, June 1, 1999 (Ex. 1009, “JINI Spec.”);
`
`U.S. Patent No. 6,560,642 B1 to Nurmann, filed Oct. 23,
`1999, issued May 6, 2003 (Ex. 1010, “Nurmann”); and
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`U.S. Patent No. 6,771,635 B1 to Vilander, filed Mar. 27,
`2000, issued Aug. 3, 2004 (Ex. 1011, “Vilander”).
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`
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`E.
`
`The Asserted Grounds
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`Petitioner challenges claims 1, 4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39,
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`40, 42, and 46 of the ’033 patent on the following grounds (Pet. 3):
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`References
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`Basis
`
`Claim(s)
`Challenged
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`Marchand, Nurmann,
`and Vilander
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`Marchand, Nurmann,
`Vilander, and RFC 2543
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`Marchand, Nurmann,
`Vilander, and Larsson
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`Marchand, Nurmann,
`Vilander, and JINI Spec.
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`35 U.S.C. § 103(a)
`
`1, 4, 7, 14
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`35 U.S.C. § 103(a)
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`5
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`35 U.S.C. § 103(a)
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`6, 23
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`35 U.S.C. § 103(a)
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`12, 15, 22,
`34, 39, 40,
`42, 46
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`References
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`Basis
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`Claim(s)
`Challenged
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`Marchand, Larsson, and
`JINI Spec.
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`35 U.S.C. § 103(a)
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`25, 28
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`
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`F.
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`Claim Interpretation
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`In an inter partes review, we construe claims by applying the broadest
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`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
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`see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–78 (Fed. Cir.
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`2015). Under the broadest reasonable interpretation standard, and absent
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`any special definitions, claim terms are given their ordinary and customary
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`meaning, as would be understood by one of ordinary skill in the art in the
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`context of the entire disclosure. See In re Translogic Tech. Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or
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`phrases must be set forth “with reasonable clarity, deliberateness, and
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`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`
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`Petitioner identifies a phrase from claim 4 for construction:
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`“identifies whether the service is available at a particular time.” Pet. 9–10.
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`Petitioner contends this phrase should be construed broadly enough to
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`encompass the service being registered. Id. (citing Ex. 1003 ¶¶ 22–23).
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`Patent Owner contends this phrase does not need to be construed. Prelim.
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`Resp. 9–10. For purposes of this decision, we agree that the identified
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`phrase from claim 4 does not need explicit construction at this time, because
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`consideration of a service being registered does not bear on our analysis of
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`Petitioner’s unpatentability contentions for this claim. See Vivid Techs., Inc.
`
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
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`terms need be construed that are in controversy, and only to the extent
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`necessary to resolve the controversy.”).
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`
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`III. ANALYSIS
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`We turn now to Petitioner’s asserted grounds of unpatentability and
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`Patent Owner’s arguments in its Preliminary Response to determine whether
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`Petitioner has met the threshold standard of 35 U.S.C. § 314(a). Petitioner
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`supports the unpatentability contentions with testimony from Dr. Sayfe
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`Kiaei. Ex. 1003.
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`
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`A.
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`Obviousness Ground Based on Marchand, Nurmann, and Vilander
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`Petitioner contends claims 1, 4, 7, and 14 would have been obvious
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`over the combination of Marchand, Nurmann, and Vilander. Pet. 11–29.
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`
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`1. Marchand
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`
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`Marchand is a published international patent application, and
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`Petitioner asserts its priority date under 35 U.S.C. § 102(e) is April 3, 2000,
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`the date of filing for a prior national application (i.e., Marchand Priority) in
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`the United States. See Pet. 4–5. Patent Owner does not contest Petitioner’s
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`priority date assertion. Therefore, for purposes of this decision, we find
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`Marchand qualifies as prior art to the ’033 patent under 35 U.S.C. § 102(e)
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`because April 3, 2000, predates the May 7, 2001, filing date of the ’033
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`patent.
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`
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`Marchand relates to “an ad-hoc network and a gateway that provides
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`an interface between external wireless IP networks and devices in the ad-hoc
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`network.” Ex. 1005, 1:5–7. Figure 3 of Marchand is reproduced below:
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`Figure 3 illustrates “an ad-hoc network 30 utilizing Bluetooth, IP [Internet
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`Protocol], and JINI technologies . . . to enable the use of a gateway mobile
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`phone.” Id. at 7:7–9. Ad-hoc network 30 includes laptop computer 31,
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`printer 32, and mobile phone 33, which can communicate via Bluetooth
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`radio link 34. Id. at 7:9–11. Mobile phone 33 acts “as a gateway between
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`the ad-hoc network and a 3G wireless IP network 35 such as the General
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`Packet Radio Service (GPRS) network.” Id. at 7:12–14. Regarding IP
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`address translation, IP packets from the GPRS are received at mobile phone
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`33 through its public IP address, and then are forwarded to the private IP
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`address of the device on ad-hoc network 30. Id. at 7:14–16. Address
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`translation in the opposite direction is handled similarly. Id. at 7:16–17.
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`
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`“JINI (Java) technology is utilized to publish and share services
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`between the devices” in network 30, and this technology “provid[es] the
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`capability for an application 21 to discover, join, and download services 22
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`from a JINI LUS [Lookup Service].” Id. at 6:3–4, 6:21–22. “The LUS
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`contains a list of available services provided by other devices on the
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`network.” Id. at 3:11–12. Devices in the network “announce not only
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`value-added services, but also their attributes and capabilities to the
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`network,” whereupon these services are published through the LUS. Id. at
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`3:12–15, 10:17–18. The LUS also provides interfaces for the available
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`services to the devices in the network. Id. at 3:13–14, 8:12–15.
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`2.
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`Nurmann
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`Nurmann relates to establishing an “Internet Protocol (‘IP’) network
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`with several IP hosts and with an IP gateway for connecting the IP network
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`to the [I]nternet.” Ex. 1010, 1:9–12. Acting as a Dynamic Host
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`Configuration Protocol (DHCP) client, the IP gateway determines whether a
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`DHCP server is present in the IP network. Id. at 2:62–67. If a DHCP server
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`is present, “[t]he allocation of the IP addresses to the IP hosts functioning as
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`DHCP clients takes place from the DHCP server.” Id. at 2:6–27. “If there is
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`no DHCP server[,] the IP gateway is activated automatically as [a] DHCP
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`server,” which “allocates IP addresses and IP network masks to the IP hosts
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`in a standard manner.” Id. at 2:50–57.
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`
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`3.
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`Vilander
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`Vilander relates to “the allocation of IP addresses to mobile terminals
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`and in particular to the allocation of a host part of an IP address to a mobile
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`terminal.” Ex. 1011, 1:6–8. Vilander teaches that, when a mobile terminal
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`requests Internet access, the request is directed to a Gateway General
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`Packet Radio Service (GPRS) Switching Node (GGSN), which may act as
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`an Internet Access Server. Id. at 1:48–52.
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`Petitioner’s Proposed Combination
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`4.
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`Although Petitioner primarily cites Marchand, Petitioner proposes an
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`obviousness combination that adds further details about how address
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`translation and routing is disclosed in the basic system of Marchand. See
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`Pet. 17–20, 24–25. Petitioner contends an ordinarily skilled artisan would
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`have modified Marchand in view of Vilander “such that the public IP
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`address of the mobile phone gateway 33 was provided by the cellular
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`network 35.” Id. at 18 (citing Ex. 1003 ¶ 46). In particular, Petitioner cites
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`Vilander’s implementation of a device on the cellular network, such as a
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`GGSN, to allocate the public IP address to the gateway. Id. (citing Ex. 1011
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`at 1:48–52, 1:57–59). Petitioner further contends an ordinarily skilled
`
`artisan would have modified Marchand in view of Nurmann “such that the
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`mobile gateway provides the private IP addresses to the devices on the
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`network 30.” Id. (citing Ex. 1003 ¶ 47). Specifically, Petitioner posits
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`implementing Nurmann’s DHCP server on Marchand’s mobile phone 33 to
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`accomplish IP addressing in Marchand’s local network 30. Id. (citing Ex.
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`1010, 4:51–56). Petitioner associates these citations from Vilander and
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`Nurmann with the recited “network address translator software component”
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`of claim 1. See id. at 24–25.
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`5.
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`Claim 1 Obviousness Analysis
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`
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`Petitioner argues Marchand teaches a “first wireless device, in a short
`
`distance wireless network, having a software component to access
`
`information from the Internet by communicating with a cellular network in
`
`response to a first short-range radio signal,” as recited in claim 1. Pet. 21–
`
`23. Petitioner maps Marchand’s mobile phone 33 to the recited “first
`
`wireless device,” and Marchand’s ad-hoc Bluetooth Piconet to the recited
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`“short distance wireless network.” Id. at 21–22 (citing Ex. 1005, 1:29–31,
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`6:23–25, 7:12–14). Regarding “access[ing] information from the Internet by
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`communicating with a cellular network in response to a first short-range
`
`radio signal,” Petitioner maps the IP packets sent among devices in
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`Marchand’s Bluetooth Piconet over a short-range radio link to the recited
`
`“first short-range radio signal.” Id. at 22–23. Petitioner contends
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`Marchand’s disclosure of connecting devices “to an IP-based network such
`
`as the Internet” and of “data going out of the Piconet to the GPRS network”
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`teaches the recited Internet access. Id. at 22–24 (citing Ex. 1003 ¶ 27; Ex.
`
`1005, 7:14–17, 13:12–14).
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`Patent Owner argues Marchand does not teach accessing information
`
`from the Internet “in response to a first short-range radio signal.” Prelim.
`
`Resp. 22–23. Patent Owner disagrees with Petitioner’s characterization of
`
`Marchand at page 23 of the Petition, contending that “Marchand does not
`
`disclose that the mobile phone 33 accesses information from the Internet in
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`response to any signals, let alone the signal containing IP packets from the
`
`devices in the network 30 to the mobile phone 33.” Prelim. Resp. 23. Patent
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`Owner further argues Marchand does not “disclose[] how or under what
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`circumstances the mobile phone 33 or any other devices in the network 30
`
`access information from the Internet.” Id. at 23–24. Patent Owner contends
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`that “merely transferring IP packets over a short-range radio link does not
`
`teach that the mobile phone 33 accesses information from the Internet.” Id.
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`at 23.
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`We are not persuaded by Patent Owner’s arguments. We agree with
`
`Petitioner that the Bluetooth Piconet may be regarded as the “short distance
`
`wireless network” of claim 1. Pet. 22 (citing Ex. 1005, 1:29–31). Moreover,
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`Petitioner has established Marchand’s mobile phone 33 is “used to connect
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`[the devices in the network 30] to an IP-based network such as the Internet”
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`by routing IP packets between the Bluetooth Piconet and external wireless IP
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`network 35. Id. at 22–23 (citing Ex. 1005 7:14–17, 13:12–14; Ex. 1003
`
`¶ 27). Petitioner also cites Dr. Kiaei’s testimony that an ordinarily skilled
`
`artisan would have understood such routing “result[s] in the mobile phone
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`33 accessing information on the Internet through the cellular GPRS
`
`network 35.” Ex. 1003 ¶ 27 (cited at Pet. 23). At this stage, we are satisfied
`
`that Petitioner has established Marchand teaches Internet access in response
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`to “a signal containing IP packets” in the Bluetooth Piconet. See Pet. 23.
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`Petitioner maps Marchand’s JINI Lookup Service (LUS) to the recited
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`“service repository software component [that] identif[ies] a service provided
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`by the second wireless device” of claim 1. Pet. 25–26 (citing Ex. 1003 ¶ 28;
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`Ex. 1005, 3:11–12, 5:13–14). Claim 1 requires this “service repository
`
`software component” to be part of the “software component,” which is itself
`
`part of the “first wireless device.” Accordingly, the parties dispute whether
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`Marchand teaches or suggests that the JINI LUS can be located at mobile
`
`phone 33, which Petitioner maps to the “first wireless device.”
`
`Patent Owner argues Marchand does not teach a “service repository
`
`software component” that is located in the “first wireless device,” as recited
`
`in claim 1. Prelim. Resp. 24–34. Specifically, Patent Owner argues that
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`Marchand cannot implicitly teach locating the JINI LUS in mobile phone 33
`
`because the JINI LUS is not necessarily or inevitably present there. Id. at
`
`25–29 (citing, inter alia, Transclean Corp. v. Bridgewood Servs., Inc., 290
`
`F.3d 1364, 1373 (Fed. Cir. 2002)). Patent Owner also argues locating the
`
`JINI LUS in mobile phone 33 “would change [Marchand’s] principle of
`
`operation and render it inoperable for its intended purpose.” Id. at 30–32.
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`Patent Owner additionally argues “implement[ing] the JINI LUS on the
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`gateway mobile phone 33 is premised on impermissible hindsight
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`reconstruction.” Id. at 32–33.
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`Dr. Kiaei acknowledges “Marchand does not expressly state that the
`
`JINI LUS is located on mobile phone 33.” Ex. 1003 ¶ 37. Petitioner
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`nonetheless contends an ordinarily skilled artisan “would appreciate that
`
`Marchand implicitly teaches an implementation in which the JINI LUS is
`
`located in the mobile phone 33.” Pet. 26 (citing Ex. 1003 ¶¶ 37–41).
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`Petitioner provides several alternative reasons in support of this contention.
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`Id. at 26–29. Among the many reasons put forth by Petitioner, we are
`
`persuaded for purposes of this decision that an ordinarily skilled artisan
`
`would have recognized that implementing Marchand’s LUS in mobile phone
`
`33—the gateway device to the cellular network—would best allow for the
`
`other devices in the ad-hoc Bluetooth Piconet to join or leave without loss of
`
`connectivity between the Piconet and the cellular network. Pet. 28 (citing
`
`Ex. 1003 ¶ 40). This conclusion is supported by Marchand’s teaching that,
`
`upon the Piconet connecting to the cellular network, “all of the devices on
`
`the Piconet publish the services they can provide to the other devices
`
`through the JINI LUS.” Ex. 1005, 10:17–18. Accordingly, Dr. Kiaei
`
`testifies a person of ordinary skill in the art would have found it obvious to
`
`implement the JINI LUS on mobile phone 33, the “master device” in
`
`network 30, so the departure of other devices from the network does not
`
`impact access to cellular network 35. Ex. 1003 ¶ 40. Considering that
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`Marchand teaches publishing the very information that populates the lookup
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`table (i.e., JINI LUS), we are persuaded by Petitioner’s arguments at this
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`stage of the proceeding that Marchand would have suggested to the
`
`ordinarily skilled artisan locating the lookup table in mobile phone 33.
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`In addition, we are not persuaded by Patent Owner’s arguments to the
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`contrary. Although Patent Owner argues Petitioner is required to prove the
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`JINI LUS is necessarily and inevitably present in mobile phone 33, see
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`Prelim. Resp. 25–29, this is not required to make a prima facie case of
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`obviousness. As such, Patent Owner’s references to the law of inherent
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`anticipation are not apt. See id. (citing, e.g., Transclean, 290 F.3d at 1373).
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`Furthermore, we do not agree that disposing the lookup table in mobile
`
`phone 33 would fundamentally change Marchand’s operating principle.
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`Even though Patent Owner describes the drawback of losing connectivity if
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`mobile phone 33 (and its lookup table) left the Piconet, see Prelim. Resp.
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`31–32, the drawback of the lookup table storage device leaving the network
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`exists regardless of the device chosen to store the lookup table and the
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`connection to the GPRS network would also be lost if the mobile phone 33
`
`left the Piconet.
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`Finally, we do not agree that Petitioner has engaged in impermissible
`
`hindsight reconstruction. See id. at 32–33. Patent Owner’s hindsight
`
`argument is premised on the notion that Marchand requires the lookup table
`
`to be separate from the gateway mobile phone and precludes it from being
`
`located somewhere other than laptop computer 31. See id. at 25 (citing Ex.
`
`1005, Fig. 4), 29 (citing Ex. 1005, 19:10–16 (claims)). But Marchand does
`
`not prohibit locating the lookup table separate from laptop computer 31. See
`
`Ex. 1003 ¶ 37. Marchand depicts LUS 46 as associated with laptop
`
`computer 31 in the embodiment shown in Figure 4, but does not limit the
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`location of the LUS to laptop computer 31 in all embodiments. See Ex.
`
`1005, Fig. 4. In fact, rather than limiting the location of the LUS, Marchand
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`expressly discloses that the Bluetooth devices joining Marchand’s Bluetooth
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`Piconet “perform an add-in protocol called ‘discovery and join’ to locate the
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`LUS and upload all of its services’ interfaces.” Ex. 1005, 8:12–15. Thus,
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`we are persuaded by Petitioner’s argument that the ordinarily skilled artisan
`
`would have regarded Marchand as suggesting more than just an embodiment
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`where the lookup table is only and inexorably disposed in laptop computer
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`31. See Pet. 28 (“[I]t would have been obvious . . . to implement the LUS on
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`the mobile phone 33” because “the mobile phone 33 is a master device in
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`ad-hoc Bluetooth network 30 that provides all other devices access to the
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`cellular network 35.”) (quoting Ex. 1003 ¶ 40).
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`6.
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`Claim 4 Obviousness Analysis
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`Claim 4 depends from claim 1 and recites “the service repository
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`software component identifies whether the service is available at a particular
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`time.” Ex. 1001, 16:4–6. Petitioner contends “Marchand teaches that ‘[t]he
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`LUS contains a list of available services provided by other devices on the
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`network.’” Pet. 29 (quoting Ex. 1005, 3:11–12) (emphasis added by
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`Petitioner). Patent Owner argues “Petitioner’s argument is fundamentally
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`flawed because it is premised on an incorrect construction” of the language
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`of claim 4. Prelim. Resp. 35.
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`Nevertheless, as stated above, we do not apply the “incorrect
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`construction” that supposedly taints Petitioner’s analysis. Prelim. Resp. 9–
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`10. And, when we apply the plain and ordinary meaning to the language of
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`claim 4, as advocated by Patent Owner, we still agree with Petitioner that the
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`list of available services in Marchand’s LUS teaches identifying whether the
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`service is available at a particular time. See Pet. 29–30. In fact, Petitioner’s
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`analysis for claim 4 does not rely on Petitioner’s proposed construction in
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`any way. See id. As such, Patent Owner’s recapitulation of claim
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`construction arguments does not counter Petitioner’s obviousness
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`contentions. In view of Petitioner’s arguments and supporting evidence, we
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`are satisfied at this stage that Marchand teaches the limitation in claim 4.
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`7.
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`Reasons for Combining Marchand, Nurmann, and Vilander
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`Patent Owner calls into question Petitioner’s reasons for combining
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`Nurmann with Marchand. Prelim. Resp. 36–38. Patent Owner contends the
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`combination would change the principle of operation of Marchand with
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`respect to how Marchand assigns IP addresses to new devices in the
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`Bluetooth Piconet. See id. at 36–37. Patent Owner therefore contends
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`combining Nurmann with Marchand would make Marchand “inoperable for
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`its intended purpose.” Id. at 36. But Patent Owner merely annunciates the
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`differences between Marchand and Nurmann, rather than showing them to
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`be inoperable. See id. at 36–37. Petitioner’s cited teachings from Nurmann
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`and Vilander give further details on how address translation and routing can
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`be implemented in Marchand, rather than contradicting any teaching in
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`Marchand. See Pet. 17–20, 24–25. Thus, we are not persuaded that the
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`incorporation of Nurmann’s DHCP server to allocate IP addresses in
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`Marchand would impermissibly change the operating principle of Marchand.
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`See Pet. 18–20.
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`Patent Owner also contends Petitioner has failed to explain why a
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`person of ordinary skill in the art would have been motivated to modify the
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`system in Marchand to move the function of assigning the IP addresses of
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`other wireless devices from the Bluetooth Piconet to mobile phone 33.
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`Prelim. Resp. 37. But Petitioner gives at least two reasons why an ordinarily
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`skilled artisan would have been so motivated: (1) “[T]he allocation of IP
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`addresses by [Nurmann’s] DHCP server in a gateway [mobile phone] 33
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`helps avoid misconfigurations and protect against disturbances due to errors
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`while assigning IP addresses,” Pet. 20 (citing Ex. 1010, 2:37–48; 4:1–5;
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`Ex. 1003 ¶ 51); and (2) the need for real time information on the allocated
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`addresses of devices when mobile phone 33 performs address translation, id.
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`(citing Ex. 1003 ¶ 51). As such, we do not agree with Patent Owner that
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`Petitioner’s obviousness combination lacks a sufficient rationale.
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`In addition, Patent Owner contends Petitioner’s “stated rational
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`underpinning for combining the teaching of Nurmann with Marchand would
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`render the system of Marchand inoperable for its intended purpose.” Prelim.
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`Resp. 37. In support of this contention, Patent Owner again describes the
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`drawback of a device containing the lookup table (i.e., Marchand’s mobile
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`phone 33 in Petitioner’s obviousness combination) leaving the Piconet. Id.
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`at 37–38. But for the same reasons set forth above, we are not persuaded
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`that this drawback is unique to mobile phone 33 or mitigated by disposing
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`the lookup table in another of the Piconet’s devices, such as laptop
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`computer 31. See supra Part. III.A.5.
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`For these reasons, and based on Petitioner’s rationale for the
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`combination, see Pet. 17–20, we are satisfied at this stage that Petitioner has
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`established adequate reasons for combining Marchand, Nurmann, and
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`Vilander.
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`8.
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`Conclusion Regarding Claims 1, 4, 7, and 14
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`For the reasons above, and having considered Petitioner’s arguments
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`and Patent Owner’s Preliminary Response, we determine Petitioner has
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`established a reasonable likelihood that claims 1 and 4 would have been
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`obvious over Marchand, Nurmann, and Vilander. For similar reasons, and
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`because we find Petitioner’s obviousness showing sufficient at this stage, see
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`Pet. 30–32, we are persuaded there is a reasonable likelihood that claims 7
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`and 14 would have been obvious over Marchand, Nurmann, and Vilander.
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`B.
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`Obviousness Ground Based on Marchand, Nurmann, Vilander, and
`RFC 2543
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`Petitioner contends claim 5 would have been obvious over the
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`combination of Marchand, Nurmann, Vilander, and RFC 2543. Pet. 32–35.
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`
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`
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`1.
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`RFC 2543
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`RFC 2543 is an Internet standards document related to Session
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`Initiation Protocol (SIP), which is “an application-layer control (signaling)
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`protocol for creating, modifying and terminating sessions with one or more
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`participants.” Ex. 1007, 1. An SIP-capable “client queries the DNS
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`[Domain Naming Service] server for address records for the host portion of
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`the Request-URI [Uniform Resource Identifier].” Id. at 13. Such a client
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`“MAY cache a successful DNS query result.” Id.
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`
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`
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`2.
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`Claim 5 Obviousness Analysis
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`Claim 5 depends from claim 1 and recites “the software component
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`includes a domain naming service (‘DNS’) software component to translate
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`between a human readable name and a second Internet Protocol (‘IP’)
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`address.” Ex. 1001, 16:7–10. Petitioner proposes adding “RFC 2543’s
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`disclosure of DNS query and response . . . with Marchand’s SIP client in the
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`combination of Marchand, Nurmann, and Vilander to implement full SIP
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`capabilities (e.g., DNS) in Marchand’s SIP client and comply with SIP
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`standards.” Pet. 34 (citing Ex. 1003 ¶ 57).
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`With respect to claim 5, Patent Owner relies on the same arguments
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`made for claim 1 regarding “access[ing] information from the Internet,” the
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`“first short-range radio signal,” and the “service repository software
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`component.” See Prelim. Resp. 38. Patent Owner likewise relies on the
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`same arguments presented above against Petitioner’s rationale for combining
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`Marchand, Nurmann, and Vilander, and applies them to the instant
`
`combination that additionally includes RFC 2543. See id. at 38–39.
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`Therefore, for the same reasons set forth above, we are not persuaded by
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`Patent Owner’s arguments. See supra Parts III.A.5, III.A.7. Based on the
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`reasons set forth in the Petition, see Pet. 32–35, as supported by Dr. Kiaei’s
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`testimony, see Ex. 1003 ¶¶ 52–57, we determine at this stage that Petitioner
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`has established a reasonable likelihood claim 5 would have been obvious
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`over Marchand, Nurmann, Vilander, and RFC 2543.
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`
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`C. Obviousness Ground Based on Marchand, Nurmann, Vilander, and
`Larsson
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`Petitioner contends claims 6 and 23 would have been obvious over the
`
`combination of Marchand, Nurmann, Vilander, and Larsson. Pet. 35–39.
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`
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`
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`1.
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`Larsson
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`Larsson “relates to WAP [Wireless Application Protocol] sessions
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`between a mobile terminal and a WAP gateway, and more particularly, to
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`the organization of protocol layers in a WAP gateway.” Ex. 1008, 1:25–27.
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`Figure 1 of Larsson is reproduced below:
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`Figure 1 illustrates mobile terminal 10, i.e., “a portable laptop computer,
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`personal digital assistant (PDA), mobile telephone, pager, etc.,” accessing
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`private network 15 via WAP gateway 30. Id. at 2:31–46. Private network
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`15 may be a corporate network or a virtual private network (VPN). Id. at
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`2:47–55. The mobile terminal 10 obtains access to access server 25 via
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`wireless link 26 to Public Land Mobile Network (PLMN) 20. Id. at 2:40–
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`44. The WAP gateway 30 includes first stage proxy 35 and second stage
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`proxy 40, which are “functionally separated” by firewall 37. Id. at 2:62–64,
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`3:1–7.
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`2.
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`Claim 6 Obviousness Analysis
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`Claim 6 depends from claim 1 and recites “the software component
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`includes a security software component to control access between the
`
`cellular network and the first wireless device.” Ex. 1001, 16:11–13.
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`Petitioner proposes adding Larsson to the combination of Marchand,
`
`Nurmann, and Vilander for teaching the security software component. Pet.
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`37. Petitioner contends an ordinarily skilled artisan would have “include[d]
`
`security software components such as Larsson’s firewall 37, first stage proxy
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`35, and second stage proxy 40 in Marchand’s mobile phone gateway 33.”
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`Id. (citing Ex. 1003 ¶ 61).
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`Patent Owner argues Petitioner’s combination “is simply an improper
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`hindsight reconstruction based on the roadmap of the claimed invention of
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`the ’033 Patent.” Prelim. Resp. 41. Patent Owner also argues the inclusion
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`of Larsson’s security elements in Marchand “would only enable secure
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`access from the gateway mobile phone 33 to the Piconet 30 as opposed to
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`secure access between the cellular network 35 and the gateway mobile
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`phone 3