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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`CORE WIRELESS LICENSING S.A.R.L.,
`Patent Owner.
`____________________
`
`Case IPR2015-01898
`Patent No. 8,434,020
`____________________
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`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`IPR2015-01898
`Patent No. 8,434,020
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`TABLE OF CONTENTS
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`I. Summary Of Issues For Rehearing ...................................................................... 1
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`II. Legal Standard .................................................................................................... 2
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`III. Argument ........................................................................................................... 2
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`A.
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` The Board misinterpreted “environment of the device” in claim 6 ...... 2
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`1.
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`2.
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`3.
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` The Board used non-contemporaneous extrinsic evidence that
`conflicts with the intrinsic record. .............................................. 3
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` The Board misunderstood the intrinsic record. ........................... 6
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` The Board’s claim construction error resulted in a mistaken
`validity analysis as to Schnarel and Aberg. ................................ 9
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`B.
`
` The Board overlooked claim 6’s requirement that the “stored data
`types for a summary window” must “var[y]” ..................................... 10
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`IV. Conclusion ....................................................................................................... 13
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`- i -
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`IPR2015-01898
`Patent No. 8,434,020
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`I.
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`Summary Of Issues For Rehearing
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`Patent Owner requests rehearing as to the Board’s conclusions with respect
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`to claim 6 on two narrow issues.
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`First, in construing “environment of the device,” the Board disregarded or
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`otherwise misinterpreted the intrinsic record and instead relied heavily on non-
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`contemporaneous extrinsic evidence. As a result, the Board wrongly rejected
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`Patent Owner’s position that “environment of the device” excludes the device’s
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`hardware and software configuration. That error in turn led the Board to incorrectly
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`find that dependent claim 6 was obvious over Schnarel in combination with Aberg.
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`Second, claim 6 requires that “stored data types” vary with the “environment
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`of the device,” but the Board’s findings merely rested on evidence of variations
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`within the data provided for the same data type(s). The Board relied on that
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`conflation in its analysis of both Yurkovic and Nason, leading it to incorrectly
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`conclude that dependent claim 6 was obvious over Schnarel in combination with
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`Aberg and Yurkovic, Nason alone, and Nason in combination with Yurkovic.
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`Accordingly, Patent Owner respectfully requests that the Board reconsider
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`its decision, apply a correct and full understanding of claim 6’s limitations, and
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`find dependent claim 6 valid.
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`IPR2015-01898
`Patent No. 8,434,020
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`II. Legal Standard
`“A party dissatisfied with a decision may file a request for rehearing,
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`without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The burden of
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`showing a decision should be modified lies with the party challenging the
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`decision.” Id. A patent owner may raise specific issues for rehearing before the
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`Board without waiving its right to appeal other issues before the Federal Circuit. In
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`re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1377 (Fed. Cir. 2016).
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`III. Argument
`A. The Board misinterpreted “environment of the device” in claim 6
`In its final written decision, the Board concluded “that the broadest
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`reasonable interpretation of the phrase the ‘environment of the device’ includes
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`device hardware, software, and location, and does not exclude the presence and
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`type of accessory attached to the device or SIM card inserted in the mobile phone.”
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`Paper 42 at 15. The Board based that construction on a misreading of the
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`specification and a dictionary definition that was not remotely contemporaneous
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`with the filing of the ’020 patent. Id. at 14-15. As demonstrated below, the Board’s
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`conclusions were flawed.
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` 2
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`IPR2015-01898
`Patent No. 8,434,020
`The Board used non-contemporaneous extrinsic evidence
`that conflicts with the intrinsic record.
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`
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`1.
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`The Board may not rely on dictionary definitions that “contradict any
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`definition found in or ascertained by a reading of the patent documents.” Phillips v.
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`AWH, 415 F.3d 1303, 1322-23 (Fed. Cir. 2005).
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`In reaching its construction of “environment of the device,” the Board relied
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`on a dictionary definition defining “environment” in the context of “computer
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`science” as: “The computer system . . . including the hardware and system
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`software . . . .” Paper 42 at 14-15 (citing Exh. 1033, MCGRAW-HILL DICTIONARY
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`OF SCIENTIFIC & TECHNICAL TERMS 686 (5th ed. 1994)); id. at 15 (“the
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`‘environment of the device’ includes device hardware, software, and location, and
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`does not exclude the presence and type of accessory attached to the device or SIM
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`card inserted in the mobile phone.”).
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`That dictionary definition conflicts with the patent’s specification for two
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`reasons.
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`First, the specification teaches that the “environment of the device” only
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`refers to the physical environment external to the device itself. In particular, the
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`’020 patent teaches that the application summary window for a Bluetooth
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`application may vary with the “environment in which the mobile telephone finds
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`itself” by “list[ing] the other Bluetooth devices in the vicinity.” ’020 Patent at
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`4:47-49 (emphasis added). That teaching only supports a construction of
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` 3
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`IPR2015-01898
`Patent No. 8,434,020
`“environment of the device” that is tied to the “vicinity” of the device or where the
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`
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`device “finds itself,” i.e., the physical environment external to the device itself.
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`Second, the specification uses a separate and distinct term—“computing
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`environment”—to refer to the hardware of the device. In particular, the
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`specification states:
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`[The present invention] may also be used in environments outside of
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`mobile telephony. For example, desktop and laptop PCs may also
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`benefit from the present invention. The present invention may
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`therefore be used in any computing environment, including both
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`keyboard and keyboard-less devices.
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`’020 patent at 5:29-31 (emphasis added). In that context, the distinct term
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`“computing environment” is used to refer to the hardware connected to the device,
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`e.g., a keyboard or the size of the display.
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`Claim 6 is only directed to changes in the “environment of the device,” and
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`not changes in the “computing environment.” The Board’s reliance on Ex. 1033 for
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`a definition of “environment” incorrectly caused it to construe “environment of the
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`device” (the device’s external physical state) to also include the distinct concept of
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`“computing environment” (the hardware connected to the device). Accordingly, the
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`general dictionary definition set forth in Ex. 1033 is in conflict with the
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` 4
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`IPR2015-01898
`Patent No. 8,434,020
`specification’s teaching as to the specific concept of “environment of the device,”
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`
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`and cannot support the Board’s construction.1 Phillips, 415 F.3d at 1322-23.
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`The Board instead should have relied upon the intrinsic evidence teaching
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`that “environment of the device”—as distinguished from the device’s “computing
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`environment”—plainly “excludes the presence and type of accessory attached to
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`the device or SIM card inserted in the mobile phone,” as Patent Owner correctly
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`argued. Paper 42 at 14 (citing and rejecting Patent Owner’s claim construction
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`argument from POR 43-44).
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`Moreover, the Board’s reliance on Ex. 1033 was misplaced for the additional
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`reason that Ex. 1033 is not contemporaneous with the patent’s filing date.
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`Extrinsic evidence, such as from dictionaries, may not be considered as a
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`factor in claim construction where that evidence is not contemporaneous with the
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`patent at issue. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 326 F.3d 1215,
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`1 Indeed, the Petition did not reference Ex. 1033 in its analysis of
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`“environment of the device.” Pet. at 8. Rather, Petitioner introduced Ex. 1033 for
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`the first time in its Reply, and on that basis argued that “environment of the
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`device” encompasses (a) the device’s external physical environment (e.g.,
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`location); or (b) the device’s hardware/software. Reply at 5. The Board adopted
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`that reasoning. Paper 42 at 15.
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` 5
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`IPR2015-01898
`Patent No. 8,434,020
`1221-22 (Fed. Cir. 2003) (rejecting extrinsic evidence seven years removed from
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`
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`the patent’s filing date as “not contemporaneous” and holding that such evidence
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`“do[es] not reflect the meanings that would have been attributed to the words in
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`dispute by persons of ordinary skill in the art” as of the relevant date).
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`Here, the Board relied on a dictionary published in 1994, long before the
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`2001 filing date and 2013 issue date of the ’020 patent. Paper 42 at 14-15 (citing
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`dictionary from 1994). And the fact that Ex. 1033 came many years before the
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`patent’s filing date, rather than many years after (as in Brookhill-Wilk 1) is not
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`relevant. The concept of “contemporaneity” is assessed in the absolute sense, and
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`not relative to which of two events came first. Because the extrinsic evidence in
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`Ex. 1033 was not contemporaneous, it should not have been considered. Brookhill-
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`Wilk 1, 326 F.3d at 1221-22.
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`The Board misunderstood the intrinsic record.
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`2.
`Aside from its incorrect reliance on inapplicable extrinsic evidence, the
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`Board also misinterpreted the specification.
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`The Board read the ’020 patent as indicating that the presence or absence of
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`Bluetooth functionality in a device is an example of the “environment of the
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`device.” See, e.g., Paper 42 at 15 (interpreting specification as equating
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`“environment of the device” with whether Bluetooth hardware or software is
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`present on the device).
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` 6
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`IPR2015-01898
`Patent No. 8,434,020
`But the specification teaches no such thing. Instead, the specification plainly
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`
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`states: “For example, [1] if the telephone is Bluetooth enabled, then [2] there may
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`be a Bluetooth application which [3] has associated with it a summary window
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`which [4] lists the other Bluetooth devices in the vicinity.” ’020 patent at 4:49-52
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`(emphasis and numbering added). That explanation makes clear that [1] Bluetooth
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`functionality and [2] software are the predicate requirements for [3] the device to
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`have an application summary window for the Bluetooth application, which
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`summary window then [4] may vary based on the physical environment external to
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`the device by “list[ing] the other Bluetooth devices in the vicinity.” In other words,
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`the crux of the teaching is that the contents of the application summary window
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`vary based on events physically external to the device—e.g., whether or not any
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`Bluetooth devices are in the vicinity—and not simply whether the device has
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`Bluetooth hardware or software.
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`That understanding is consistent with the plain language of claim 6, which
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`specifies that the “functionality and/or stored data types for a summary window
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`for a given application varies with the environment of the device.” Thus, claim 6
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`requires a summary window for a given application, and then specifies that the
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`summary window “varies with the environment of the device.” Neither claim 6 nor
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`the specification requires that the device simply have hardware or software
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`features.
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` 7
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`IPR2015-01898
`Patent No. 8,434,020
`Three examples falling with the scope of claim 6 are illustrative of the
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`
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`distinction. A device with a Bluetooth chip and a Bluetooth application may
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`remain in one place while other devices come and go, causing the application
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`summary window for the Bluetooth application to change its displayed data types,
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`i.e., to alter from showing no nearby devices to at least one. Alternatively, the
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`mobile device may move, causing the Bluetooth application’s summary window to
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`again change between listing at least one nearby Bluetooth-enabled device and
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`listing none. As a third example, the device may conclude based on its then-current
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`physical location and the nearby traffic patterns that the user should leave for an
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`upcoming meeting, and may then vary the data type shown in a given application
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`summary window accordingly. In the above examples, the presence of Bluetooth
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`and/or GPS hardware alone is not sufficient to meet claim 6. Claim 6 is only met
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`once the data type(s) and/or functionalities displayed in an application summary
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`window vary “with the environment of the device[s]” described above, i.e.,
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`changes in the devices’ external physical environment.
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`The Board’s construction and analysis, which simply looks to whether
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`certain hardware or a particular summary window exists, is simply not enough.
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`Accordingly, a proper interpretation of claim 6 and the term “environment of
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`the device” must assess whether environmental factors external to the device—i.e.,
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`excluding the hardware and software configuration of the device—vary the
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` 8
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`IPR2015-01898
`Patent No. 8,434,020
`“functionality and/or stored data types for a summary window for a given
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`
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`application.”
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`3.
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`The Board’s claim construction error resulted in a mistaken
`validity analysis as to Schnarel and Aberg.
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`Applying the proper construction set forth above would require the Board to
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`find that claim 6 is not unpatentable over Schnarel and Aberg.2
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`With respect to Schnarel, the Board accepted Petitioner’s contention that
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`Schnarel taught claim 6 by disclosing a “message pane” that displayed different
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`information depending on the availability of various “transports,” such as the “call
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`log transport” or “fax machine transport.” Paper 42 at 45; id. at 47 (citing to pages
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`30-34 of the Petition). Schnarel explains, however, that those “transports” are
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`merely software modules. See,e.g., Ex. 1004 at 11:1-11 (“The software platform
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`includes a number of software modules for managing telephony functions. . . . .
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`The application-level telephony modules include . . . the transports (722-728)[.]”).
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`Thus, the Board’s finding that Schnarel discloses varying “the functionality . . . for
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`a summary window . . . for a given application [ ] with the environment of the
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`2 The Board also concluded that claim 6 would be obvious over Schnarel,
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`Aberg, and Yurkovic (Paper 42 at 49); Nason (Id. at 64); and Nason and Yurkovic
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`(Id.). Those separate invalidity conclusions will be addressed in Section III.B
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`below.
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` 9
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`IPR2015-01898
`Patent No. 8,434,020
`device” rested entirely on the “availability” of certain software modules within
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`
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`Schnarel. Paper 42 at 45 (emphasis added). And for the reasons discussed in the
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`previous sections, the internal software configuration of the device does not come
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`within “environment of the device” as used in claim 6 as properly interpreted.
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`Similarly, with respect to Aberg, the Board relied on Petitioner’s explanation
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`that claim 6 is met by Aberg’s teachings that “menu functions shown are
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`‘dependent o[n] whether an accessory 50 is connected to the mobile telephone’ or
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`‘dependent on the identity of the SIM card inserted in the mobile telephone’).”
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`Paper 42 at 45-46 (citing and quoting Petition at 31-32). Again, however, the term
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`“environment of the device” does not encompass the presence or absence of
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`various hardware accessories or SIM cards (i.e., the hardware of the device).
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`In short, because the Board’s findings as to Schnarel and Aberg with respect
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`to claim 6 relied on the incorrect conclusion that “the environment of the device is
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`broad enough to encompass the hardware or software available to the device on
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`which the user interface is running,” the Board’s findings were in error. Id. at 47.
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`B.
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`The Board overlooked claim 6’s requirement that the “stored
`data types for a summary window” must “var[y]”
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`The Board also erred with respect to each of the other grounds because it
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`overlooked that claim 6 requires the “stored data types” of a summary window to
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` 10
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`IPR2015-01898
`Patent No. 8,434,020
`vary, and not simply the data for a given data type to vary.3 As a result, the Board
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`
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`mistakenly found that Nason and Yurkovic each taught this limitation.
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`In particular, the Board found that Nason discloses “displaying stored data
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`types (e.g., ‘ticker text 53’ including news and weather information) . . . that varies
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`with the environment (e.g., based on the time, date or weather) of the device.”
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`Paper 42 at 63. The Board did not explain this conclusion further. The Petitioner
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`and its expert also provide no further detail. See id. (citing Petition at 51-52 & Exh.
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`1003 ¶¶ 41-45, 122-125). It appears, however, that the Board believed that Nason
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`teaches claim 6 because the specific time displayed in Nason may vary based on
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`the time of day and device location, or because the weather temperature or status
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`displayed may vary based on the external weather environment, or because the
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`news displayed may vary based on device location and the relevant external news.
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`But even where such variations do correctly relate to the external physical
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`environment of the device, those variations do not constitute variations in the
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`“stored data types” displayed, as claim 6 requires. In each of those examples, the
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`specific data itself varies—e.g., the exact time, the exact temperature, or the exact
`
`
`3 Neither the Board nor Petitioner suggested that Nason or Yurkovic taught
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`the alternative claim requirement, where the “functionality” rather than “stored
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`data types” vary.
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` 11
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`IPR2015-01898
`Patent No. 8,434,020
`news headlines—but the data type—time, temperature, and news—remains
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`
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`constant. See Patent Owner Response at 7 (distinguishing between displaying data
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`and displaying different data types). Accordingly, the Board’s analysis provides no
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`basis for finding that Nason teaches claim 6.
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`The Board’s findings with respect to Yurkovic in combination with Schnarel
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`and Aberg, and separately in combination with Nason, are likewise faulty.
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`In discussing a combination of Yurkovic with Schnarel and Aberg,4 the
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`Board found that “the cited portions of Yurkovic teach modifying date, time, or
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`other information based on device location.” Id. at 48; see also id. at 63-64. Again,
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`that analysis is incorrect because it relies on variations in the content of the same
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`data type (specific time and date information) and not variations between different
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`data types, as claim 6 expressly requires.
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`The Board similarly erred in the context of Yurkovic in combination with
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`Nason. There, the Board conducted no new analysis of Yurkovic, but simply
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`stated: “Petitioner has also shown that Yurkovic accounts for this limitation.” Id. at
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`64 (citing Petition at 51-52). And the cited pages of the Petition rely on the same
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`4 The Board did not discuss Aberg in this combination. Nonetheless, it found
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`invalidity over the combination of Schnarel, Aberg, and Yurkovic, and it expressly
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`declined to find invalidity over Schnarel and Yurkovic without Aberg. Id. at 49.
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` 12
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`IPR2015-01898
`Patent No. 8,434,020
`evidence of varying content within a constant data type, rather than variations
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`
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`across different data types or the presentation of new data types. See Pet. at 51-52
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`(discussing the display of given data types, and changes to the contents of those
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`data types, but not changes to the data types that are displayed). The Board thus
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`appears to have concluded that a person of ordinary skill would have been
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`motivated to adapt Yurkovic’s system of retrieving localized news and weather
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`information into Nason’s news-and-weather ticker application. Such a
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`combination, however, would not teach claim 6 because it would not teach varying
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`the data types displayed, but only varying the contents of a given data type
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`displayed.
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`Accordingly, neither the Board nor the Petitioner explained how Schnarel’s
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`messaging system or Nason’s news-and-weather ticker could be modified by
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`Yurkovic, or why a POSA would have in fact modified Nason, to change the
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`“stored data types” displayed in the “application summary window” based on the
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`“environment of the device,” as claim 6 requires. The Board should therefore
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`correct its decision and find claim 6 not unpatentable here.
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`IV. Conclusion
`The Board found dependent claim 6 invalid on four grounds: Schnarel with
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`Aberg; Schnarel with Aberg and Yurkovic; Nason; and Nason with Yurkovic. The
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`Board’s analysis of Schnarel and Aberg was flawed because it applied an improper
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` 13
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`IPR2015-01898
`Patent No. 8,434,020
`construction of “environment of the device” that included the presence or absence
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`
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`of certain hardware or software within a device, rather than changes in the device’s
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`external physical environment as claim 6 requires. And the Board’s obviousness
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`conclusions over Nason, Nason with Yurkovic, and Schnarel with Aberg and
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`Yurkovic were flawed because the Board overlooked the claim requirement that
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`“stored data types” must vary, and not merely the contents of a given data type.
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`Accordingly, all four of the Board’s grounds for invalidating dependent claim 6
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`were incorrect, and the Board should instead find claim 6 not unpatentable.
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`Respectfully submitted,
`
`By: /s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Walter D. Davis (Reg. No. 45,137)
`DAVIDSON BERQUIST
`JACKSON &
`GOWDEY, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: whelge@dbjg.com
`Email: wdavis@dbjg.com
` Counsel for Patent Owner
`
`
`
`Dated: April 14, 2017
`
`
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`
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` 14
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`IPR2015-01898
`Patent No. 8,434,020
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 14, 2017, a true and correct copy of the
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`foregoing Patent Owner’s Request for Rehearing is being filed and served via
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`email, by consent, to the Petitioner at the correspondence e-mail addresses of
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`By: /s/ Wayne M. Helge
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`USPTO Reg. No. 56,905
`
`Counsel for Patent Owner
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`record as follows:
`
`Gabrielle E. Higgins
`Kathryn N. Hong
`ROPES & GRAY LLP
`gabrielle.higgins@ropesgray.com
`kathryn.hong@ropesgray.com
`
`
`
`
`
` 15
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`
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