UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`Apple Inc., Samsung Electronics Co. Ltd., and Samsung Electronics America, Inc.,
`Petitioners,
`
`v.
`
`Rosetta-Wireless Corporation,
`Patent Owner
`
`———————
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`OF
`
`U.S. PATENT NO. 7,149,511
`
`
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`I.  MANDATORY NOTICES ............................................................................. 1 
`A. 
`Real Parties-in-Interest .......................................................................... 1 
`B. 
`Related Matters ...................................................................................... 1 
`C. 
`Lead and Back-up Counsel and Service Information ........................... 2 
`II.  GROUNDS FOR STANDING ........................................................................ 2 
`III. 
`INTRODUCTION ........................................................................................... 2 
`A.  Overview of the 511 Patent and Relevant Technology ......................... 4 
`B. 
`The 511 Claims and Reexamination History ........................................ 6 
`IV.  STATUTORY GROUNDS FOR THE CHALLENGE .................................. 8 
`V. 
`CLAIM CONSTRUCTION ............................................................................ 9 
`“a first interface for allowing an application on an external
`A. 
`display device to pick and open said at least one electronic file
`while said at least one electronic file remains resident on said
`personal network server” (claims 1/58) ................................................ 9 
`“network server” (claims 1/58) ........................................................... 10 
`B. 
`“wireless communications channel” (claims 1/58, 10/65) .................. 12 
`C. 
`VI.  GROUND 1: Claims 1-10 and 58-65 are Rendered Obvious by
`Kimura in View of the Knowledge of a Person Having Ordinary Skill
`in the Art ........................................................................................................ 13 
`A. 
`Claims 1 and 58 ................................................................................... 14 
`B. 
`Claims 2 and 59 ................................................................................... 40 
`C. 
`Claims 3 and 60 ................................................................................... 44 
`D. 
`Claims 4 and 61 ................................................................................... 45 
`E. 
`Claims 5 and 62 ................................................................................... 47 
`F. 
`Claims 6 and 63 ................................................................................... 49 
`G. 
`Claims 7 and 64 ................................................................................... 50 
`H. 
`Claim 8 ................................................................................................ 53 
`I. 
`Claim 9 ................................................................................................ 55 
`J. 
`Claims 10 and 65 ................................................................................. 56 
`VII.  CONCLUSION .............................................................................................. 59 
`
`i
`
`

`
`AP-1001
`
`AP-1002
`
`AP-1003
`
`AP-1004
`
`AP-1005
`
`AP-1006
`
`AP-1007
`
`AP-1008
`
`AP-1009
`
`AP-1010
`
`AP-1011
`
`AP-1012
`
`PETITIONERS’ EXHIBIT LIST
`
`U.S. Patent No. 7,149,511 (challenged patent)
`
`Declaration of Dr. Nathaniel Polish
`
`Reexamination History of U.S. Patent No. 7,149,511
`
`U.S. Patent No. 5,864,853 to Kimura et al.
`
`IEEE 100, THE AUTHORITATIVE DICTIONARY OF IEEE
`STANDARDS TERMS, 7th Ed. (2000) (excerpts)
`
`MICROSOFT COMPUTER DICTIONARY 5th Ed (2002) (excerpts)
`
`Patent Owner Rosetta’s Initial Infringement Contentions
`served in Co-Pending Litigation (excerpts)
`
`U.S. 5,978,805 to Carson
`
`U.S. 5,845,293 to Veghte et al.
`
`U.S. 5,797,089 to Nguyen
`
`U.S. 6,222,726 to Cha
`
`Graham, THE FACTS ON FILE, DICTIONARY OF
`TELECOMMUNICATIONS (1983) (excerpts)
`
`ii
`
`

`
`I. MANDATORY NOTICES
`A. Real Parties-in-Interest
`The Petitioners and real parties-in-interest are Apple Inc. (“Apple”), and
`
`
`
`Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. (together,
`
`“Samsung”).
`
`B. Related Matters
`U.S. Patent No. 7,149,511 (AP-1001, the “511 Patent”) is involved in five
`
`
`
`pending litigations in Federal District Court for the Northern District of Illinois,
`
`each filed by Patent Owner Rosetta-Wireless Corp. as plaintiff (“Rosetta” or
`
`“Patent Owner”): Rosetta-Wireless Corp. v. Apple Inc., Case No. 1:15-cv-00799;
`
`Rosetta-Wireless Corp. v. Samsung Elecs. Co., Ltd. et al., Case No. 1:15-cv-10605;
`
`Rosetta-Wireless Corp. v. Motorola Mobility LLC, Case No. 1:15-cv-10611;
`
`Rosetta-Wireless Corp. v. LG Electronics Co. et al., Case No. 1:15-cv-10608; and
`
`Rosetta-Wireless Corp. v. High Tech Computer Corp. et al., Case No. 1:15-cv-
`
`10603. The above litigation in which Apple is the defendant will be referred to
`
`herein as the “Co-Pending Litigation.”
`
`
`
`To the best of Petitioners’ knowledge, the 511 Patent does not claim priority
`
`to any applications or patents, but the following patents and applications claim
`
`priority to the application (No. 09/652,734) that resulted in the 511 Patent: US
`
`2007/0055762; WO 02/19626; ES 2291346; EP 1314293; DE 60129567; AU
`
`8721301; and AT 368346. In addition, to the best of Petitioners’ knowledge,
`
`1
`
`

`
`related EP 1314293 is involved in two litigations in the United Kingdom: Rosetta
`
`Wireless UK Limited v. BlackBerry UK Limited & BlackBerry Limited, No.
`
`HP14C01081; and BlackBerry UK Limited v. Rosetta-Wireless Corp., No.
`
`HP14B03633. The 511 Patent has been the subject of Reexamination Nos.
`
`90/011,569 and 90/011,596. Finally, Petitioners are concurrently filing a second
`
`petition seeking IPR of the 511 Patent.
`
`C. Lead and Back-up Counsel and Service Information
`Petitioners designate as lead counsel Brian Ferguson (Reg. No. 36,801),
`
`
`
`available at 1300 Eye Street NW, Suite 900, Washington, DC 20005 (T: 202-682-
`
`7516, brian.ferguson@weil.com), and the additional practitioners listed in the
`
`signature block below as backup counsel. Please address all correspondence to
`
`both lead and backup counsel. Petitioners consent to service by email.
`
`II. GROUNDS FOR STANDING
`Petitioners certify that the 511 Patent is available for inter partes review and
`
`
`that Petitioners are not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the ground identified in this Petition.
`
`III.
`
`
`INTRODUCTION
`
`The 511 Patent describes a portable server computer that wirelessly receives
`
`and stores electronic files, and provides remote access to those files to an external
`
`display device. The challenged system claims recite, in sum, a portable server that
`
`has a generic RF receiver to wirelessly receive an electronic file, generic software
`
`2
`
`

`
`instructions to store the file in a generic memory, and a nonspecific interface to
`
`allow an external display device to pick and open the file stored in the memory of
`
`the portable server, while that file remains resident on the portable server. The 511
`
`Patent explains that with such a portable server, a user can travel with her files and
`
`access those files using different external display devices at different locations.
`
`
`
`Such simple, conventional file access and sharing technology was not new
`
`as of the priority date of the 511 Patent. As detailed herein, the Kimura prior art
`
`patent (prior art under 35 U.S.C. § 102(b)) discloses a system materially the same
`
`as the purported invention of the 511 Patent, and renders each of the challenged
`
`claims of the 511 Patent invalid as obvious in view of the knowledge of one having
`
`ordinary skill in the art. As with the 511 Patent, Kimura discloses a file system in
`
`the form of a portable server that receives files wirelessly, and is capable of sharing
`
`those files with various external stationary computers. And just like the 511
`
`Patent, Kimura’s portable server allows such external stationary computers to pick
`
`and open files on the portable server, while those files remain resident on the
`
`portable server. In accord with the goals of the purported invention of the
`
`challenged 511 Patent, the Kimura prior art patent teaches that a benefit of its
`
`invention is that a user can travel with the portable server in order to access files
`
`thereon using a variety of different stationary computers in different locations.
`
`
`
`As explained herein, the Kimura patent thus discloses, or renders obvious in
`
`3
`
`

`
`view of the knowledge of one of ordinary skill in the art, each and every limitation
`
`of the challenged claims, thereby invalidating the challenged claims.
`
`A. Overview of the 511 Patent and Relevant Technology1
`
`
`
`The 511 Patent’s portable server is called a “wireless intelligent personal
`
`server,” “wireless intelligent personal network server,” or “WIPS.” 511 Patent at
`
`1:7-12; claims 1, 58. The specification teaches that the WIPS is a computer that
`
`receives files over some form of conventional wireless network. Id. at 4:9-46;
`
`8:17-33. The WIPS allows an external display device—such as a second
`
`computer—to access the files by transmitting the file data stored in the WIPS
`
`memory, or portions thereof, to the external display device via conventional
`
`network structures and methods. Id. at 4:44-51; id. at 9:64-10:8 (access by a
`
`display device to a file on the WIPS may be attained by simply “copy[ing] portions
`
`of the requested file and transmit[ting] the copied portions to display device”); id.
`
`at claim 6 (providing that the external display device can be a desktop personal
`
`computer, laptop personal computer, or personal digital assistant (PDA)); id. at
`
`5:8-34 (data transfer may be electrical, such as using standard USB connectors,
`
`wireless, such as using conventional infrared ports or short-range RF
`
`communication like Bluetooth, or via a generic flash memory card); id. at 6:25-28
`
`(“Preferably, display device 32 accesses the memory in WIPS 30 as it would an
`
`
`1 See also AP-1002 (“Polish Decl.”) at ¶¶ 13-14 (supporting this section).
`
`4
`
`

`
`external device, such as an external hard drive or a server on a local area network
`
`(LAN).”); id. at 13:10-14 (“[T]he WIPS stores its data in a very generic format,
`
`namely electronic files, which display devices may then access in much the same
`
`way that they access files on hard drives or network servers.”).
`
`
`
`The 511 Patent explains that “a user may use different display devices to
`
`access the data stored in WIPS 30 at different times. For example, a user may use
`
`a desktop PC to access WIPS 30 while at home, a laptop PC to access WIPS 30
`
`while at work, a customer’s device to access WIPS 30 while visiting a customer,
`
`and a PDA to access WIPS 30 while traveling.” 511 Patent at 6:31-36.
`
`As Dr. Polish explains in his accompanying declaration, the remote file
`
`access technology described in the 511 Patent had existed for many years before
`
`the priority date of the 511 Patent. Polish Decl. at ¶ 15. For example, in the 1980s
`
`there was a network connected storage system from Corvus Systems that allowed
`
`Apple II computers to connect to a common hard disk drive that could be accessed
`
`over a network called OmniNet. Id. Also in the 1980s, the software company
`
`Novell produced a product called NetWare that allowed computers connected over
`
`a local area network (called IPX) to share the hard drive storage on a server. Id.
`
`Further, in the 1980s Sun Microsystems produced a product called Network File
`
`System (NFS) that allowed computers running on the same TCP/IP network to
`
`mount (i.e., share) each other’s hard disk drive. Id. In sum, as early as the mid-
`
`5
`
`

`
`1980s there were many ways for a remote/external computer to access files on a
`
`server computer, as if the files were local to the remote/external computer. Id.
`
`The 511 Claims and Reexamination History
`
`B.
`The 511 Patent issued from U.S. Patent Application No. 09/652,734, filed on
`
`
`
`August 31, 2000. Claims 1 and 58 are reproduced below. The only difference
`
`between the two claims is that claim 1 recites a “receiver,” while claim 58 recites a
`
`“transceiver” (bracketed below):
`
`1/58. A wireless intelligent personal network server, comprising:
`
`a radio frequency (RF) receiver [transceiver] for receiving
`downstream data transmitted over a first wireless communications
`channel;
`
`a memory;
`
`a central processing unit (CPU);
`
`a set of embedded machine language instructions within said personal
`network server, said set of embedded machine language instructions
`being executable by said CPU for processing said downstream data to
`provide at least one electronic file in said memory; and
`
`a first interface for allowing an application on an external display
`device to pick and open said at least one electronic file while said at
`least one electronic file remains resident on said personal network
`server,
`
`wherein said personal network server is hand-portable.
`
`6
`
`

`
`
`
`Claims 1 and 58 resulted from an ex parte reexamination certificate that
`
`issued under 35 U.S.C. § 307 on January 10, 2012, attached to the 511 Patent.2 See
`
`511 Patent at AP-1001.017. No other claim was reexamined. As seen in that
`
`certificate, the final limitation of claims 1 and 58 was amended during reexam as
`
`follows (underlined language was added, strikethrough was deleted):
`
`a first interface for allowing an application on an external display device
`to selectively access to pick and open said at least one electronic file
`while said at least one electronic file remains resident on said personal
`network server, wherein said personal network server is hand-portable.
`
`
`
`Patent Owner Rosetta had filed the request for reexamination to resolve any
`
`substantial new question of patentability as to claims 1 and 58 raised by various
`
`publications relating to the Nokia 9110 Communicator describing the functionality
`
`of that product in concert with the Nokia PC Suite software. AP-1003.152. In
`
`ordering the reexamination, the examiner found that “the [Nokia] 9110, introduced
`
`in 1998, was a personal communication device including the ability to transfer files
`
`over infrared communication with another device.” Id. at .115.
`
`
`
`In a June 28, 2011 Office Action rejecting original claims 1 and 58 in view
`
`of the Nokia prior art, the examiner found that the publications at issue disclosed
`
`each limitation of claims 1 and 58, including the original “selectively access”
`
`limitation that was eventually stricken (as shown with strikethrough font above).
`
`2 See also Polish Decl. at ¶¶ 17-20 (discussing reexamination).
`
`7
`
`

`
`Id. at .106-107. The examiner found that the file transfer backup feature disclosed
`
`by the Nokia art read on the claim limitation requiring “selective[] access” of an
`
`electronic file by the external display device. Id. at .107.
`
`
`
`After multiple examiner interviews, Rosetta amended claims 1 and 58 on
`
`November 15, 2011 as reproduced above, submitting that the Nokia prior art did
`
`not disclose the newly added claim language. The examiner agreed, stating:
`
`As noted above, the claims now require that, rather than “selectively
`accessing” the electronic file on the wireless intelligent personal network
`server, a term which was read broadly by the examiner, the external
`display device is able to pick and open the file while said file remains
`resident on the server. Nokia discloses a system wherein a file is able to
`be transferred from a personal wireless device to a computer which is
`connected thereto. … However, Nokia fails to teach or suggest that the
`external device may pick and open files off the server while the file
`remains resident thereon; that is, that the file is opened on the server,
`rather than being transferred to the computer first. As such the claims
`describe a different type of wireless personal server with a different
`feature than Nokia which is not taught therein.
`
`Id. at .009 (bold added, italics original) (emphases added unless noted otherwise).
`
`IV. STATUTORY GROUNDS FOR THE CHALLENGE
`
`This Petition provides the following challenge:
`
`Ground 1 Claims 1-10 and 58-65 are rendered obvious by Kimura in view of the
`knowledge of one of ordinary skill in the art.
`
`8
`
`

`
`The Kimura patent (U.S. 5,864,853, AP-1004, “Kimura”) issued on January
`
`
`
`26, 1999, and therefore qualifies as prior art under 35 U.S.C. § 102(b).3
`
`V. CLAIM CONSTRUCTION4
`A.
`“a first interface for allowing an application on an external
`display device to pick and open said at least one electronic file
`while said at least one electronic file remains resident on said
`personal network server” (claims 1/58)
`
`
`
`As explained above, this claim limitation was amended during reexam.
`
`Petitioners submit that any explicit construction of this entire claim limitation is
`
`unnecessary for the purposes of this Petition. However, with respect to the “open”
`
`aspect of this limitation, the examiner in reexamination allowed the amended
`
`claims by finding that this amended limitation means that “the file is opened on
`
`the [personal network] server, rather than being transferred to the computer first.”
`
`Supra § III.B. Under the examiner’s interpretation of the “open[ing]” aspect of
`
`this claim limitation (i.e., requiring that the application open the electronic file on
`
`
`3 Citations to 35 U.S.C. herein refer to pre-AIA sections.
`
`4 Petitioners submit that the constructions proposed herein, as well as constructions
`
`not explicitly discussed but interpreted herein under their plain and ordinary
`
`meaning, would not differ under either the “broadest reasonable interpretation”
`
`standard or under the district court Phillips standard should the Supreme Court
`
`decide to modify the standard for inter partes review.
`
`9
`
`

`
`the “personal network server”), the prior art discussed herein renders obvious this
`
`claim limitation in view of the knowledge of one of ordinary skill in the art, as
`
`explained below. Polish Decl. at ¶ 22.
`
` Alternatively, to the extent it is found that this claim limitation does not
`
`limit where the electronic file is “open[ed]” (e.g., the electronic file could be
`
`opened on the personal network server or on the external display device), the prior
`
`art discussed herein nevertheless invalidates the challenged claims by explicitly
`
`disclosing this claim limitation, as explained below. Id. at ¶ 23.
`
` “network server” (claims 1/58)
`
`B.
`This term appears in the preamble of claims 1 and 58. To the extent Patent
`
`
`
`Owner argues that the preamble is limiting, Petitioners propose that “network
`
`server” means “a computer that shares data and/or files with at least one other
`
`connected computer.” The 511 Patent does not define “network server,” “server,”
`
`or “network,” but that is how one of ordinary skill would have understood
`
`“network server” as of the priority date of the 511 Patent, in light of the broad
`
`range of examples disclosed by the 511 Patent, and as supported by
`
`contemporaneous dictionary definitions below. Polish Decl. at ¶¶ 24-25.5
`
`
`5 Dr. Polish opines that a person having ordinary skill in the art would have a
`
`minimum of a bachelor’s degree in computer engineering or computer science, and
`
`10
`
`

`
`
`
`For example, the 511 Patent discloses that its WIPS (wireless intelligent
`
`personal [network] server) is a computer that shares data and files with other
`
`connected computers. See, e.g., 511 Patent at Fig. 2 (depicting the WIPS as a
`
`conventional computer having CPU, memory, software instructions, battery, and
`
`various interfaces); id. at 4:44-5:34 (describing how the WIPS shares data and files
`
`with other computers); Polish Decl. at ¶ 24; see also AP-1006.006, MICROSOFT
`
`COMPUTER DICTIONARY 5th Ed (2002) (“Server. … On the Internet or other
`
`network, a computer or program that responds to commands from a client. For
`
`example, a file server may contain an archive of data or program files; when a
`
`client submits a request for a file, the server transfers a copy of the file to the
`
`client.”).
`
`
`
`Further, such an interpretation of “network server” would encompass the
`
`broad range of network functionality that the 511 Patent discloses as belonging to
`
`its WIPS, including that a “network” can comprise just two linked computer
`
`systems. See, e.g., 511 Patent at 3:62-4:54 (explaining, e.g., that the WIPS shares
`
`data/files directly with the external display device/computer over a network formed
`
`by the two devices, or with other computers over cellular networks, paging
`
`either a master’s degree in computer engineering or computer science or two or
`
`more years of experience with computer networks and/or computer file systems, or
`
`the equivalent. Polish Decl. at ¶ 3.
`
`11
`
`

`
`networks, wide area networks, local area networks, etc.); Polish Decl. at ¶ 24; see
`
`also AP-1005.004, IEEE 100, THE AUTHORITATIVE DICTIONARY OF IEEE
`
`STANDARDS TERMS, 7th Ed. (2000) (“computer network (1) (software) A
`
`complex consisting of two or more interconnected computers.”).
`
` “wireless communications channel” (claims 1/58, 10/65)
`
`C.
`Petitioners propose that “wireless communications channel” means “wireless
`
`
`
`path or link through which information passes between at least two devices.”
`
`
`
`The 511 Patent uses the term broadly to cover FM radio or television
`
`channels, paging channels, cellular or PCS channels, or channels that facilitate
`
`“wireless [] transmit[ssion] of data by some other means.” 511 Patent at 4:9-33;
`
`Polish Decl. at ¶ 26. The use of the term in the specification is consistent with the
`
`commonly-understood meaning of “channel” as of the priority date of the 511
`
`Patent, and thus in line with the understanding of one of ordinary skill in the art.
`
`AP-1006.003, MICROSOFT COMPUTER DICTIONARY 5th Ed (2002) (“Channel. n. 1.
`
`A path or link through which information passes between two devices. … 2. In
`
`communications, a medium for transferring information.”); see also Polish Decl. at
`
`¶ 26. Patent Owner similarly interprets the term broadly in its infringement
`
`contentions in the Co-Pending Litigation, contending that the term covers Wi-Fi
`
`(i.e., 802.11) channels, Bluetooth channels, or cellular channels. AP-1007.008.
`
`12
`
`

`
`VI. GROUND 1: Claims 1-10 and 58-65 are Rendered Obvious by Kimura
`in View of the Knowledge of a Person Having Ordinary Skill in the Art
`
`
`
`Claims 1-10 and 58-65 of the 511 Patent are rendered obvious by the
`
`Kimura prior art patent (U.S. 5,864,853) in view of the knowledge of a person
`
`having ordinary skill in the art under 35 U.S.C. § 103.6 Polish Decl. at ¶ 27.
`
`
`
`Just like the 511 Patent, Kimura discloses a “portable file system capable of
`
`sharing data among various computer environments, such that a user can freely
`
`utilize his own data under various computer environments.” Kimura at Abstract.
`
`The system has two components—a portable personal data device that wirelessly
`
`receives and stores data and files, and a separate stationary computer that
`
`wirelessly accesses files on the portable personal data device. Id. at 6:56-7:13;
`
`Polish Decl. at ¶ 28.
`
`
`
`As explained below, Kimura’s stationary computer can access and open files
`
`on the portable device without syncing the entirety of the portable device’s data to
`
`the stationary computer; in other words, “without demanding the user to spend
`
`considerable efforts in copying data and maintaining a consistency among the
`
`copied data.” Kimura at 16:8-10; see also id. at 2:24-31. Such file access occurs
`
`by “mounting” the memory system of Kimura’s portable device to the stationary
`
`
`6 The citations to Kimura showing how the challenged claims are invalid are all
`
`descriptions or depictions of Kimura’s “first embodiment,” unless noted otherwise.
`
`13
`
`

`
`computer, such that a user of the stationary computer can access files that remain
`
`resident on the portable device. Id. at 12:15-47; Polish Decl. at ¶ 29. Kimura
`
`teaches that a benefit of its invention is that a user can travel with the portable
`
`device in order to access files thereon using a variety of different stationary
`
`computers in different locations. Kimura at 6:65-7:6, 7:27-35. This is the same
`
`goal articulated by the 511 Patent. 511 Patent at 6:31-36; Polish Decl. at ¶ 29.
`
`A. Claims 1 and 58
`Independent claims 1 and 58 are identical other than claim 1 requiring a
`
`
`
`“receiver” where claim 58 requires a “transceiver.” The two claims will be treated
`
`together, and the distinction will be addressed in limitation [1/58.b] below.
`
`[1/58.a] A wireless intelligent personal network server, comprising:
`
`
`
`To the extent Patent Owner argues that the common preamble of claims 1
`
`and 58 is limiting, Kimura discloses the preamble. Specifically, Kimura’s
`
`“portable personal data device” computer (hereinafter, Kimura’s “PPDD”)
`
`corresponds to the claimed wireless intelligent personal network server.
`
`
`
`Kimura explicitly discloses that its PPDD is a “portable personal”
`
`computing device that receives and transmits data wirelessly by “radio,” and
`
`functions as an intelligent network server because (in line with the construction
`
`of “network server,” supra) it is a computer that shares data and/or files with at
`
`least one other connected computer, namely Kimura’s stationary computer. See,
`
`14
`
`

`
`e.g., Kimura at 6:56-7:35; see also Polish Decl. at ¶ 32. For example, Kimura
`
`discloses that the “portable personal data device” (PPDD) has a “communication
`
`unit 2” and a “large capacity file system 4.” Kimura at 6:56-7:2. The PPDD and
`
`“stationary computer” are “equipped with the communication units 2 and 6 for
`
`communicating with each other by a radio or on-line communication mode” and “a
`
`mechanism for making the file system 4 of the portable personal file system 4 as if
`
`it is a part 8 of the file system 7 of the stationary computer 5 located nearby.” Id.
`
`at 7:6-13. In this way, “the necessary personal data are kept in the portable
`
`personal data device 1 at hand and they can be handled as if they are stored in the
`
`stationary computer 5 in front of [the user].” Id. at 7:32-35; Polish Decl. at ¶ 33.
`
`
`
`Likewise, Figure 2 of Kimura, below, shows “portable personal data
`
`device 1” (the PPDD) having a file system and wireless antenna, for
`
`communicating with the stationary computer 5 (also labeled as “work station or
`
`personal computer”) over the wireless network formed by the two devices:
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`15
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`(annotation in red); see also id. at 6:56-61 (“the portable file system of the present
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`invention has a schematic conceptual configuration as shown in Fig. 2, which
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`comprises: a portable personal data device 1…and a stationary computer 5 such as
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`a work station or a personal computer….”); Polish Decl. at ¶ 34.
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`
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`Figure 3 of Kimura, below, shows another example of the disclosed PPDD
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`(this time labeled “portable personal data device 11”), which communicates with
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`“stationary computer 10.”7 Kimura at 7:51-57 (“[T]he portable file system has a
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`configuration as shown in FIG. 3, which generally comprises: a stationary
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`computer 10 having an application execution unit 12, a file access unit 13, a
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`communication unit 14, and a file memory unit 15; and a portable personal data
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`device 11 having a communication unit 16, a file access processing unit 17, and a
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`file memory unit 18.”).
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`7 Kimura’s “portable personal data device 1” / “portable personal data device 11,”
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`two iterations of the same disclosed portable personal data device, will together be
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`referred to herein as Kimura’s “PPDD.” Similarly, “stationary computer 5” /
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`“stationary computer 10,” two iterations of the same disclosed stationary computer,
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`will together be referred to herein as Kimura’s “stationary computer.”
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`16
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`Kimura at Fig. 3 (annotation in red showing the PPDD); Polish Decl. at ¶ 35.
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`
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`Again, PPDD 11 in Figure 3 above functions as a “network server” by
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`sharing file data with stationary computer 10 upon file access requests/commands
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`from the stationary computer. See, e.g., id. at 15:60-67 (“As described, according
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`to this first embodiment, the files necessary for the user are collectively stored
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`in the file memory unit 18 of the portable personal data device 11 carried along
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`by the user, and in a case of working on these files at a working site, visiting spot,
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`or home, by utilizing the stationary computer 10 available there, the stationary
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`17
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`computer 10 issues the file access request to the portable personal data device
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`11….”); Polish Decl. at ¶ 36.
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`
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`Kimura additionally discloses that while the PPDD can be connected
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`directly to the stationary computer on a common wireless network as described
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`above, the PPDD can also be connected to a stationary computer via a stand-alone
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`network to permit the same type of network file access. See, e.g., Kimura at 31:25-
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`38 (“When the other stationary computer wishes to make an access to a file under
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`the home directory of that user…the other stationary computer inquires to the NIS
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`server 913, and…it becomes possible for the other stationary computer to make a
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`desired file access. In this manner, it is possible in this twelfth embodiment to use
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`the portable personal data device by connecting it to the network rather than the
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`stationary computer. It is to be noted that the various embodiments described
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`above may be practiced in any desired combination.”); Polish Decl. at ¶ 37.
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`
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`Thus, the PPDD disclosed in Kimura corresponds to the claimed “wireless
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`intelligent personal network server” of the 511 Patent. Polish Decl. at ¶ 38.
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`[1/58.b] a radio frequency (RF) receiver [transceiver] for receiving
`downstream data transmitted over a first wireless communications
`channel;
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`
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`Kimura’s PPDD includes a radio frequency (RF) receiver (claim 1 of 511
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`Patent), which is also an RF transceiver (claim 58 of 511 Patent), for receiving
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`downstream data transmitted over a first wireless communications channel, as
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`18
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`claimed. In sum, as detailed below, Kimura discloses this limitation by disclosing
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`that its PPDD includes a file reception unit utilizing an antenna that receives, via
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`radio signals, downstream data from Kimura’s stationary computer over a first
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`wireless communications channel that facilitates data flow from the stationary
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`computer to the PPDD.8 Polish Decl. at ¶ 39.
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`
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`(1) First, as described above and seen in Figures 2 and 3 above, Kimura’s
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`PPDD includes a “communication unit 2” (Fig. 2) / “communication unit 16” (Fig.
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`3) (two disclosed iterations of the same component, hereinafter “communication
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`unit 2 [16]”) having a “file transmission and reception unit 161” (Fig. 3) that, along
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`with an antenna, facilitates transmitting and receiving data using wireless radio
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`communication. See supra claim [1/58.a]. Thus, Kimura’s file transmission and
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`reception unit 161 and antenna together include an RF “receiver” (claim 1) that is
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`also an RF “transceiver” (claim 58). Polish Decl. at ¶ 40. As Patent Owner
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`Rosetta explains in its own infringement contentions in the Co-Pending Litigation,
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`8 This limitation does not limit where the downstream data is transmitted from, nor
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`whether such data transmission occurs, e.g., in response to user commands,
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`automatically, or some other way. In contrast, other non-challenged claims of the
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`511 Patent do require that such downstream data transmission occur automatically
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`(without user intervention), which is merely one preferred embodiment disclosed
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`in the 511 Patent. See, e.g., 511 Patent at claim 53; id. at 5:44-46.
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`19
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`a “receiver” receives data, while a “transceiver” transmits and receives data; in
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`other words, a transceiver includes a receiver. See AP-1007.008 at fn. 1; see also
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`Polish Decl. at ¶ 40; Kimura at