For: WIRELESS INTELLIGENT PERSONAL SERVER
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,149,511
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`United States Patent No.: 7,149,511
`Inventors: Edward F. Bachner III,
`John Major, Xin Du
`Formerly Application No.: 09/652,734
`Issue Date: December 12, 2006
`Filing Date: August 31, 2000
`Former Group Art Unit: 2617
`Former Examiner: Keith Ferguson
`
`Attorney Docket No.:
`110797-0020-651
`Customer No.: 28120
`
`Petitioners: SAMSUNG ELEC-
`TRONICS CO., LTD., SAM-
`SUNG ELECTRONICS AMERI-
`CA, INC., and APPLE INC.
`
`§§§§§§§§§
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`V.
`
`INTRODUCTION AND BACKGROUND IN THE ART ................................. 1
`I.
`II. MANDATORY NOTICES UNDER § 42.8 ....................................................... 6
`III. PETITIONERS HAVE STANDING .................................................................. 7
`IV. SUMMARY OF THE ’511 PATENT, Examination, and Reexam .................... 8
`A. Overview of the ’511 Patent ...................................................................... 8
`B.
`’511 File History ....................................................................................... 8
`C.
`’511 Reexamination ................................................................................ 10
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONERS WILL
`PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM ........................... 11
`A.
`Claim Construction Under § 42.104(b)(3) .............................................. 12
`B.
`Level of Ordinary Skill in the Art ........................................................... 15
`C. Obviousness Analysis: Grounds 1-12 .................................................... 15
`1. Overview of Goggin (Ex. 1030) ....................................................... 15
`2. Ground 1: Goggin in view of knowledge of a POSA renders obvi-
`ous claims 1, 3-7, 10, 19, 58, 60-65, 68; Ground 2: Goggin in view
`of Proxim renders obvious claims 1, 3-7, 10, 19, 58, 60-65, 68 ...... 17
`3. Ground 3: Goggin in view of knowledge of a POSA renders obvi-
`ous claim 2, 59; Ground 2: Goggin in view of Proxim renders obvi-
`ous claims 2, 59; Ground 5: Goggin in view of Bodnar renders ob-
`vious claims 2, 59; Ground 6: Goggin in view of Proxim and Bod-
`nar renders obvious claims 2, 59 ...................................................... 39
`4. Ground 1: Goggin in view of knowledge of a POSA renders obvi-
`ous claims 8, 9; Ground 2: Goggin in view of Proxim renders obvi-
`ous claims 8, 9; Ground 5: Goggin in view of Jornada renders obvi-
`ous claims 8, 9; Ground 6: Goggin in view of Proxim and Jornada
`renders obvious claims 8, 9 .............................................................. 44
`5. Ground 7: Goggin in view of DeLorme renders obvious claims 20
`and 69; Ground 8: Goggin in view of Proxim and DeLorme renders
`obvious claims 20 and 69 ................................................................. 50
`6. Ground 9: Goggin in view of Ogasawara renders obvious claims 21
`and 70; Ground 10: Goggin in view of Proxim and Ogasawara ren-
`ders obvious claims 21 and 70 ......................................................... 53
`
`i
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`7. Ground 11: Goggin in view of CapShare renders obvious claims 22
`and 71; Ground 12: Goggin in view of Proxim and CapShare ren-
`ders obvious claims 22 and 71 ......................................................... 55
`VI. CONCLUSION .................................................................................................. 58
`
`
`
`
`
`ii
`
`

`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`
`LIST OF EXHIBITS
`
`
`
`Description
`U.S. Patent No. 7,149,511 to Bachner et al. (“the ’511 Patent”)
`U.S. Patent No. 7,149,511 File History
`U.S. Patent No. 7,149,511 Ex Parte Reexamination
`Declaration of Dr. Erez Zadok In Support of the Petition for Inter
`Partes Review of United States Patent No. 7,149,511
`U.S. Patent No. 6,012,063 to Bodnar (“Bodnar”)
`Declaration of David Lobato and Exhibit A - HP Jornada 820/820e
`Handheld PC User’s Guide (“Jornada”)
`Declaration of David Lobato and Exhibit B - HP CapShare 920
`Portable E-Copier (“CapShare”)
`IEEE100 The Authoritative Dictionary of IEEE Standards Terms,
`7th ed.
`Declaration of Rogelio Jose
`Declaration of Fred Peal
`Declaration of Sharon Lee
`Declaration of Christopher Butler and Exhibit A - “EarthmateTM
`GPS Receiver: The Smart Way to Navigate” & Exhibit D -
`“EarthmateTM Accessories” (“DeLorme”)
`Declaration of Christopher Butler and Exhibit B - “HP Jornada Ex-
`ternal Keyboard (Part HP F1275A) Impressions” to Todd
`Ogasawara (“Ogasawara”)
`Declaration of Christopher Butler and Exhibit C - “1.2.3 Repre-
`senting Programs” (“Representing Programs”)
`Certificate of Authenticity by Amy Klenke and “Proxim Deliver-
`ing Industry’s Lowest Priced Commercial Frequency Hopping
`Wireless LAN PC Card,” Business Wire (Mar. 29, 1999) (“Prox-
`im”)
`U.S. Patent No. 6,446,137 to Vasudevan et al. (“Vasudevan”)
`U.S. Patent No. 5,805,804 to Laursen et al. (“Laursen”)
`U.S. Patent No. 6,052,735 to Ulrich et al. (“Ulrich”)
`U.S. Patent No. 5,790,551 to Chan (“Chan”)
`U.S. Patent Pub. 2001/0029178 to Criss et al. (“Criss”)
`U.S. Patent No. 6,311,058 to Wecker et al. (“Wecker”)
`U.S. Patent No. 5,625,673 to Grewe et al. (“Grewe”)
`U.S. Patent No. 6,434,403 to Ausems et al. (“Ausems”)
`U.S. Pub. No. 2004/0204041 to Fillebrown et al. (“Fillebrown”)
`iii
`
`
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`
`Ex. 1005
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`Ex. 1020
`Ex. 1021
`Ex. 1022
`Ex. 1023
`Ex. 1024
`
`

`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`U.S. Pat U.S. Patent No. 6,236,938 to Atkinson et al. ("Atkinson")
`MICROSOFT COMPUTER DICTIONARY 5th Ed (2002)
`U.S. Patent No. 5,297,192 (“Gerszberg”)
`Rosetta's Local Patent Rule 2.2 Initial Infringement Contentions,
`dated January 20, 2016
`Declaration of Ingrid Hsieh-Yee
`Windows CE Developer’s Handbook by Terrence A. Goggin
`(“Goggin”)
`Essential Windows CE Application Programming to Robert Bur-
`dick (“Burdick”)
`Programming Microsoft Windows CE to Douglas Boling (“Bol-
`ing”)
`U.S. Patent No. 5,978,805 to Carson (“Carson”)
`U.S. Patent No. 5,845,293 to Veghte et al. (“Veghte”)
`U.S. Patent No. 5,864,853 to Kimura et al. (“Kimura”)
`U.S. Patent No. 5,797,089 to Nguyen (“Nguyen”)
`U.S. Patent No. 6,512,919 to Ogasawara (“Pat. Ogasawara”)
`U.S. Patent No. 6,108,727 to Boals et al. (“Boals”)
`
`
`
`Ex. 1025
`Ex. 1026
`Ex. 1027
`Ex. 1028
`
`Ex. 1029
`Ex. 1030
`
`Ex. 1031
`
`Ex. 1032
`
`Ex. 1033
`Ex. 1034
`Ex. 1035
`Ex. 1036
`Ex. 1037
`Ex. 1038
`
`
`
`iv
`
`

`
`
`
`Pursuant to §§ 311-3191 and Rule § 42 the undersigned, on behalf of and in a
`
`representative capacity for Samsung Electronics Co., Ltd., Samsung Electronics
`
`America, Inc., and Apple Inc. (“Petitioners”), petition for inter partes review (“IPR”)
`
`of claims 1-10, 19-22, 58-65, and 68-71 (the “Challenged Claims”) of U.S. Pat. No.
`
`7,149,511 (“the ’511”) (Ex. 1001), issued to Rosetta-Wireless Corporation (“Rosetta”
`
`or “PO”). Petitioners assert there is a reasonable likelihood that at least one of the
`
`Challenged Claims is unpatentable for the reasons set forth herein and respectfully
`
`requests review of, and judgment against, the Challenged Claims as obvious.
`
`I.
`
`INTRODUCTION AND BACKGROUND IN THE ART
`
`The Challenged Claims merely recite concepts that were well-known long be-
`
`fore the claimed August 31, 2000 priority date—a hand-portable server that has a Ra-
`
`dio Frequency receiver or transceiver to wirelessly receive an electronic file, a
`
`memory, a CPU, software instructions to store the file in a generic memory, and an
`
`interface to allow an external display device to “pick and open” the file stored in the
`
`portable server’s memory while that file remains resident on the server.
`
`As issued after reexamination, independent claim 1 recites:
`
`1. [Preamble] A wireless intelligent personal network server, comprising:
`a radio frequency (RF) receiver [transceiver] for receiving downstream
`data transmitted over a first wireless communications channel;
`
`1 Section cites are to 35 U.S.C. or 37 C.F.R. as the context indicates, all emphasis and
`
`annotations are added, unless noted.
`
`1
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`
`[1A] a memory;
`[1B] a central processing unit (CPU);
`[1C] a set of embedded machine language instructions within said per-
`sonal network server, said set of embedded machine language instruc-
`tions being executable by said CPU for processing said downstream data
`to provide at least one electronic file in said memory; and
`[1D] 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 per-
`sonal network server,
`[1E] wherein said personal network server is hand-portable.2
`
`During reexamination, the Examiner found all of the limitations in independent
`
`claims 1 and 58, as originally issued, obvious over Nokia 9110 communicator prior
`
`art. Ex. 1003 at 66-70. In response, Rosetta amended elements [1D] and [1E] as
`
`shown above, and the Examiner interpreted this amendment to require that the file be
`
`opened on the server, rather than being first transferred to the computer (external dis-
`
`play device). Id. at 170-71. But this concept of an application on one device (e.g., a
`
`desktop) opening a file on another device (e.g., a server)—the Examiner’s apparent
`
`basis for allowance—was well-known by 2000. Ex. 1004 ¶¶ 46-49.
`
`For instance, RAPI, which stands for Remote API (Application Programming
`
`Interface), is an API that “allows applications on one machine to call functions on
`
`2 Independent claim 58 differs from claim 1 only in that it uses “transceiver” instead
`
`of “receiver” in the claim language. See Ex. 1001 claims 1 and 58.
`
`2
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`another machine,” where “[a] Windows CE device is the RAPI server while [a] PC is
`
`the RAPI client. The application runs on the client (e.g., a PC), which in turn calls
`
`functions executed on the server, the Windows CE device.” Ex. 1032 at 657; Ex.
`
`1029 ¶¶ 36-40). Ex. 1004 ¶ 28. As described in Goggin (Ex. 1030), for example,
`
`with RAPI an application on a PC may open a file on a Windows CE device while the
`
`file remains on the CE device: RAPI “allows developers … to access any files, data-
`
`bases, or system information on a CE device” (Ex. 1030 at 308), using for instance
`
`“file access functions [which] are those functions that allow you to create directories,
`
`read and write files” (id. 314), and “miscellaneous shell and system functions that al-
`
`low you to start CE applications remotely.” Id. 318. See also id. 505-06 (“CeCreate-
`
`File()”); 506-07 (“CeCreateProcess()”); Ex. 1004 ¶ 29.
`
`These are just a few examples showing the purportedly patentable feature of
`
`the independent Challenged Claims was, like the others, widely described before the
`
`priority date and would have been well within the knowledge of any person of ordi-
`
`nary skill in the art (“POSA”) before August 2000. See also Ex. 1004 § V, VI.B, C.
`
`Further, with respect to “providing” (e.g., saving/storing) at least one electronic
`
`file in the memory of a “wireless intelligent personal network server” (“WIPS”) and
`
`sending downstream data wirelessly, as required by claim 1, Ulrich discloses that
`
`RAPI commands and data associated with those commands can be sent wirelessly.
`
`Ex. 1018. Ulrich describes a desktop computer that uses a RAPI component 114 to
`
`transfer and save files, such as email attachments, to RAPI server 116 on the mobile
`3
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`device. Id. 8:15-34, 14:20-30, Fig. 5. Further, the communication link 9 between
`
`RAPI server mobile device and RAPI client desktop computer is one of several well-
`
`known communication mechanisms such as “communication through commercially
`
`available network cards (i.e., using TCP/IP) . . . Wireless modem, Wireless cellular
`
`digital packet data (CDPD).” Id. 4:66-5:14; Ex. 1004 ¶¶ 30-33; see also Ex. 1030 at
`
`63, 390, 545-46 (disclosing wireless communication, and CeWriteFile); Ex. 1004 ¶¶
`
`33-35, 37.
`
`The challenged dependent claims simply tack on an array of conventional im-
`
`plementation choices. For instance, claims 2-5 and 59-62 specify that the saved file
`
`may be a new or updated file, that it may have read-only access, or that the data sent
`
`to the server may reflect a change to a file rather than contain all the file data. These
`
`concepts were all well-known in the art. E.g., Ex. 1001 2:29-32 (admitting U.S. Pat.
`
`No. 6,034,621 discloses “communicating changes made to a data file on a personal
`
`computer (PC) to a personal digital assistant (PDA)); 1030 at 107-108, 505-06, 388,
`
`543, 545; Ex. 1035 8:45-50, 16:39-43, 16:59-17:5, 17:33-37, 18:12-23; Ex. 1033
`
`1:66-2:2; see generally Ex. 1034; Ex. 1020 Fig. 2, ¶¶75-80; Ex. 1030 374 (“During
`
`synchronization, only the changes, not the entire subsets, are transferred between the
`
`central database and the local databases; the process is very bandwidth-efficient”);
`
`Ex. Ex. 1005 6:54-61 (“In response to [] request to update information stored on an-
`
`other device, the device transfers [] only those blocks which have changed since the
`
`information stored on the other device was last updated.”); Ex. 1004 ¶ 38. Claims 6-
`4
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`9, 63, and 64 add connecting the server to various kinds of generic, well-known dis-
`
`play devices. See e.g., Ex. 1030 at 328 (“giving the other machines in your system
`
`access to the data and files on the CE device”); Ex. 1006 at 33 (“synchronize the in-
`
`formation on your desktop or notebook PC with your device”); Ex. 1035 Fig. 2, 6:54-
`
`62, 20:1-3, 7:27-35; Ex. 1036 Abstract; Ex. 1022 at Figs. 1, 2, 1:55-64; Ex. 1004 ¶
`
`39. Claims 10 and 65 add sending information from the server over a second chan-
`
`nel, which was similarly well-known. See e.g., Ex. 1018 Fig. 5, 4:66-5:14 (commu-
`
`nication between RAPI server mobile device and RAPI client desktop computer may
`
`be performed wirelessly (“Wireless modem, Wireless cellular digital packet data
`
`(CDPD))”); Ex. 1019 11:61-66, 1:10-19 (“a channel pair is assigned to the CDPD
`
`protocol--one channel for forward transmissions and the other for reverse transmis-
`
`sions”); Ex. 1027 at Figs. 1, 2, 4:67-5:42; Ex. 1004 ¶ 40. And claims 19-22 and 68-
`
`71 add only the idea of connecting generic and well-known peripheral devices to the
`
`server, including a keyboard, GPS device, business card reader, and bar-code reader.
`
`E.g., Ex. 1030 10, 25, 38 (connecting bar code readers to a compact flash or
`
`PCMCIA slot); Ex. 1020, Fig. 2, [0053] (“The mobile terminal 36 also may include a
`
`bar code reader 44 coupled to the processor …”); Ex. 1013 at 6 (connecting a key-
`
`board to a Jornada 820 CE device); Ex. 1006 at 21 (connecting peripherals, such as
`
`USB-compatible mouse or keyboard, to a CE device); Ex. 1012 at 7-8 (“Earthmate
`
`GPS Receiver” connected to CE device); Ex. 1007 at 4-5 (business card reader con-
`
`nected to CE device); Ex. 1025 2:64-67, 2:22-25 (GPS receiver in communication
`5
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`with CE device); Ex. 1023 3:14-21 (“PDA … may be equipped with … precise posi-
`
`tioning capabilities [GPS] …”); Ex. 1020 at [53] (input for connecting external key-
`
`pad); Ex. 1004 ¶¶ 36, 41. The Challenged Claims thus represent, at most, obvious
`
`implementations of a server that recite various well-known features functioning in
`
`predictable combinations just as a POSA would expect. E.g., Ex. 1004 ¶¶283-284.
`
`II. MANDATORY NOTICES UNDER § 42.8
`
`Samsung and Apple are the Real Parties in Interest Under § 42.8(b)(1).
`
`Related Matters Under § 42.8(b)(2) and Lead and Back-Up Counsel Under §
`
`42.8(b)(3) and (4): Rosetta has asserted ’511 claims 1-2, 4-6, 8 and 9 against Sam-
`
`sung in Rosetta-Wireless Corp. v. Samsung Elecs. Co., Ltd. et al., No. 1:15-cv-10605
`
`(N.D. Ill.), and against Apple in Rosetta-Wireless Corp. v. Apple Inc., et al., No.
`
`1:15-cv-00799 (N.D. Ill.). The ’511 is also asserted in Nos. 1:15-cv-10611, 1:15-cv-
`
`10608, and 1:15-cv-10603 (all N.D. Ill.) against parties including Motorola Mobility,
`
`LG Electronics, and HTC. The following patent applications claim priority to the
`
`’511: US 2007/0055762; WO 02/19626; ES 2291346; EP 1314293; DE 60129567;
`
`AU 8721301; AT 368346; U.S. App’n No. 11/553,048 (abandoned); and
`
`PCT/US01/41919. Related EP 1314293 is apparently involved in two UK litigations:
`
`Rosetta Wireless UK Limited v. BlackBerry UK Limited & BlackBerry Limited, No.
`
`HP14C01081; and BlackBerry UK Limited v. Rosetta-Wireless Corp., No.
`
`HP14B03633. The ’511 has also been the subject of Reex. Nos. 90/011,569 and
`
`90/011,596. Petitioners are concurrently filing a second IPR petition on the ’511.
`6
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`Lead/backup counsel and service information are designated in the signature block.
`
`III. PETITIONERS HAVE STANDING
`
`Grounds for Standing Under § 42.104(a): Petitioners certify under
`
`§ 42.104(a), that the ’511 is eligible for IPR and Petitioners are not barred or es-
`
`topped from requesting IPR. Neither Petitioners nor any other real party-in-interest
`
`or privy was served with a complaint more than a year before the filing of this Peti-
`
`tion, or has initiated a civil action challenging the validity of the ’511.
`
`Claims and Statutory Grounds Under §§ 42.22 and 42.104(b): Petitioners
`
`request IPR of claims 1-10, 19-22, 58-65, 68-71 and assert that the claims are un-
`
`patentable based on one or more grounds under § 103: Ground 1: Goggin in view
`
`of the knowledge of a POSA renders obvious claims 1-10, 19, 58-65, 68; Ground 2:
`
`Goggin in view of Proxim renders obvious claims 1-10, 19, 58-65, 68; Ground 3:
`
`Goggin in view of Bodnar renders obvious claims 2 and 59; Ground 4: Goggin in
`
`view of Proxim and Bodnar renders obvious claims 2 and 59; Ground 5: Goggin in
`
`view of Jornada renders obvious claims 8, 9; Ground 6: Goggin in view of Proxim
`
`and Jornada renders obvious claims 8, 9; Ground 7: Goggin in view of DeLorme
`
`renders obvious claims 20 and 69; Ground 8: Goggin in view of Proxim and De-
`
`Lorme renders obvious claims 20 and 69; Ground 9: Goggin in view of Ogasawara
`
`renders obvious claims 21 and 70; Ground 10: Goggin in view of Proxim and
`
`Ogasawara renders obvious claims 21 and 70; Ground 11: Goggin in view of Cap-
`
`share renders obvious claims 22 and 71; Ground 12: Goggin in view of Proxim and
`7
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`Capshare renders obvious claims 22 and 71. None of these grounds or references
`
`have been previously before the Patent Office. Section V.C below provides claim
`
`charts specifying how the relied upon prior art renders obvious the challenged claims.
`
`In further support of the proposed grounds of rejection, the Declaration of technical
`
`expert Dr. Erez Zadok is attached as Ex. 1004.
`
`IV. SUMMARY OF THE ’511 PATENT, EXAMINATION, AND REEXAM
`
`A. Overview of the ’511 Patent
`
`The ’511, “Wireless Intelligent Personal Server,” is directed to a wireless intel-
`
`ligent personal server (“WIPS”) that “receives data transmitted over a wireless com-
`
`munications channel” and processes it to maintain a copy of the file. Ex. 1001 1:8-
`
`12. The WIPS also connects to “display devices,” which include, e.g., desktop and
`
`laptop PCs, and which can access files on and receive data from the WIPS over a
`
`network. Id. 4:9-51, 8:17-33; Ex. 1004 ¶ 42.
`
`B.
`
`’511 File History
`
`The application leading to the ’551 (No. 09/652,734) was filed on August 31,
`
`2000. Ex. 1002. Claims 1 and 58 originally required “a first interface for allowing an
`
`external display device to access said at least one electronic file.” Ex. 1002 at 89,
`
`115. The Examiner rejected various original claims (including cls. 1-5, 10, 19, 58-62,
`
`65, and 683) as anticipated by Criss (Ex. 1020), and then as obvious based on Criss in
`
`view of various secondary references including Wecker (Ex. 1021) (cls. 1-5, 58-62),
`
`3 In this section, the claim numbers refer to the claim numbers as issued.
`8
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`Ausems (Ex. 1023) (cls. 20, 21, 22, 69, 71), Pat. Ogasawara (Ex. 1037) (cls. 10, 65),
`
`Grewe (Ex. 1022) (cf. cls. 6, 7, 63, 64), and Gerszberg (Ex. 1027) (cf. cls. 10, 65).
`
`E.g., Ex. 1002 at 130-139, 171-80; Ex. 1004 ¶¶ 43-44.
`
`In response, Rosetta added the term “selectively” to the limitation in the inde-
`
`pendent claims to “external display device to selectively access said at least one elec-
`
`tronic file.” Ex. 1002 at 186, 198, 204-208. The Examiner rejected the amended
`
`claims, again finding Criss in view of Wecker rendered obvious claims 1-5, 10, 19,
`
`58-62, 68, and 70, that Criss in view of Wecker and Grewe rendered obvious claims
`
`6, 7, 63, and 64, and that Criss in view of Wecker and Ausems rendered obvious
`
`claims 20, 21, 69, and 71. Id. 212-223. With respect to claims 1 and 58, the Examin-
`
`er found that Wecker taught “selectively access[ing] an electronic file.” Id. 213 (cit-
`
`ing Wecker 4:6-34 & cls, 1, 10, 11). In response, Rosetta amended the claim pream-
`
`bles, changing “wireless intelligent personal server” to “wireless intelligent personal
`
`network server,” but the Examiner again rejected the claims on similar grounds while
`
`adding Fillebrown (Ex. 1024) to the combination. The Examiner stated Fillebrown
`
`taught a “wireless server . . . that may be implemented as a handheld device, personal
`
`computer, internet appliance, or other computing platform capable of executing soft-
`
`ware algorithms needed to enable a personal wireless network.” Ex. 1002 at 245-47,
`
`260-61; Ex. 1004 ¶¶ 44-45. In response, Rosetta argued that the cited Fillebrown dis-
`
`closures were not in the provisional application to which Fillebrown claimed priority,
`
`and that it was therefore not prior art. Ex. 1002 at 281-84; Ex. 1004 ¶ 45. The Exam-
`9
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`iner agreed, noting that the “application server” in Figure 1 of the provisional was a
`
`PC rather than a laptop or handheld computer, and therefore could not be used to re-
`
`ject the claims. Ex. 1002 at 326; Ex. 1004 ¶ 45. However, the Examiner again reject-
`
`ed the claims, this time over Boals, Ex. 1002 at 319-20, 336-46; Ex. 1004 ¶ 45, but
`
`ultimately allowed the claims. Ex. 1002 at 363, 367-70; Ex. 1004 ¶ 45.
`
`C.
`
`’511 Reexamination
`
`On March 14, 2011, Rosetta requested owner-initiated ex parte reexamination
`
`of claims 1 and 58 based on various Nokia 9110 Communicator references. Ex. 1003
`
`at 3-4. In ordering reexamination, the Examiner noted that the Nokia 9110 was a
`
`“‘pocket-sized mobile office’ running a number of applications such as GSM cellular
`
`telephone, fax, inter/intranet communications, email, SMS and calendar apps togeth-
`
`er. It also comprises a connection means to a PC as well as wireless transfer from
`
`other devices…” Ex. 1003 at 68, 81. The Nokia manual teaches a “file transfer”
`
`function, which allows a user to “move, copy, paste, rename, and remove communi-
`
`cator and PC files” and a “backup/restore function” that allows a user to “create
`
`backups of your communicator data on a PC…” Ex. 1003 at 228, 231-32; Ex. 1004
`
`¶ 46. The Examiner found that “the [Nokia] 9110, introduced in 1998, was a personal
`
`communication device including the ability to transfer files over infrared communica-
`
`tion with another device,” Ex. 1003 at 68, and that the file transfer backup feature
`
`disclosed by Nokia read on the “selective[] access” of an electronic file by the exter-
`
`nal display device. Id. at 83; Ex. 1004 ¶ 47.
`10
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`In response, Rosetta amended the “selectively access” limitation to instead re-
`
`quire “an application” on the external display to “pick and open” the file “while said
`
`at least one electronic file remains resident on said personal network server,” Ex.
`
`1003 105-09, arguing that the file “transfer” and “backup” operations disclosed by
`
`Nokia did not meet the newly amended claims. Id.; Ex. 1004 ¶ 48.
`
`In allowing the claims, the Examiner found Nokia’s “backup” and “transfer”
`
`functions enabled a user to transfer files between the Communicator and a desktop
`
`computer, but not to “launch a program or open a file from the File Transfer screen”:
`
`Nokia further discloses a first interface … for allowing an external
`display device … to selectively access said at least one electronic file
`(file transfer … allowing the backing up from the communicator to
`the computer of ‘documents’...). Such reads on ‘selectively access-
`ing’ the document data, as such step can be performed as in FIG 4
`selecting only ‘documents’ to the exclusion of calendar data and
`contacts. [¶]However, Nokia fails to teach or suggest that the exter-
`nal device may pick and open files off the server while the file re-
`mains resident thereon; that is, that the file is opened on the server,
`rather than being transferred to the computer first.
`
`Id. at 171; Ex. 1004 ¶ 49.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONERS
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM
`
`Petitioners submit there is at least “a reasonable likelihood that [Petitioner]
`
`[will] prevail with respect to at least 1 of the claims challenged in [this Petition].”
`
`11
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`§ 314(a). As explained below, each challenged claim is at least obvious under § 103.
`
`A. Claim Construction Under § 42.104(b)(3)
`
`For purposes of this review, the claim language is construed such that it is
`
`“given its broadest reasonable construction in light of the specification of the patent
`
`in which it appears.” § 42.100(b). Under this standard, while an inventor may rebut
`
`that presumption by providing a definition of the term in the specification with rea-
`
`sonable clarity, deliberateness, and precision, claim terms are presumed to be given
`
`their ordinary and customary meaning as would be understood by one of ordinary
`
`skill in the art at the time of the invention. E.g., Vibrant Media, Inc. v. Gen. Elec. Co.,
`
`IPR2013-00170, Paper No. 14 (July 29, 2013) at 5. For purposes of this review, Peti-
`
`tioners interpret the claims in accordance with their plain and ordinary meaning under
`
`the required broadest reasonable interpretation consistent with the specification. Be-
`
`cause the standard for claim construction at the PTO is different than that used in liti-
`
`gation, see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir.
`
`2004); MPEP § 2111, Petitioners expressly reserve the right to argue in litigation
`
`constructions for any term, as appropriate to that proceeding.4
`
`
`4 Petitioners submit that the constructions proposed here, as well as the meaning of
`
`terms not discussed but interpreted under their plain and ordinary meaning under
`
`BRI, would not be impacted under the Phillips standard if the Supreme Court were to
`
`decide to modify the standard for IPR in Cuozzo Speed Techs. v. Lee, No. 15-446.
`
`12
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`- “network server” (Claims 1, 58) — Construed for review purposes (to the extent
`
`PO argues the preamble is limiting) to mean “a computer that shares data and/or files
`
`with at least one other connected computer.” E.g., Ex. 1001 Fig. 2 (depicting WIPS
`
`as conventional computer having CPU, memory, software instructions, battery, and
`
`various interfaces); id. 4:44-5:34 (describing how WIPS shares data and files with
`
`other computers). Further, such an interpretation of “network server” would encom-
`
`pass the broad range of network functionality that the ’511 discloses belongs to its
`
`WIPS, including networks formed by just two linked computer systems. E.g., id.
`
`3:62-4:54 (explaining, e.g., that WIPS shares data/files directly with external display
`
`device/computer over network formed by the two devices, or with other computers
`
`over cellular networks, paging networks, wide area networks, local area networks,
`
`etc.); see also Ex.1008 at 4 (“A complex consisting of two or more interconnected
`
`computers.”) (emphasis added); Ex.1026 at 5 (“Server. … On the Internet or other
`
`network, a computer or program that responds to commands from a client. For ex-
`
`ample, 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.”).
`
`- “a first interface for allowing an application … 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 limitation was
`
`amended in reexamination. Petitioners submit that construction of this entire limita-
`
`tion is unnecessary for the purpose of this Petition. However, with respect to the term
`13
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`“open,” the Examiner in reexamination allowed the amended claims by finding this
`
`amended limitation means that “the file is opened on the [personal network] server,
`
`rather than being transferred to the computer first.” See §IV.C, supra. The Examin-
`
`er’s interpretation of “open[ing]”—never disputed by the Patent Owner—thus re-
`
`quires that the “application” on the display device “open[s]” the “electronic file” on
`
`the “personal network server.”
`
`- “wireless communications channel” (Claims 1, 10, 58, 65) — Construed for review
`
`purposes to mean a “wireless path or link through which information passes between
`
`at least two devices.” The term “channel” is part of the larger phrase “wireless com-
`
`munications channel” in claims 1, 10, and 58. The ’511 does not define “channel,”
`
`but uses it broadly to cover FM radio or television channels, paging channels, cellular
`
`or PCS channels, or channels that facilitate “wireless transmi[ssion] of data by some
`
`other means.” Ex. 1001 4:9-33. The use of the term in the specification is consistent
`
`with the commonly-understood meaning of “channel” as of the ’511 priority date, and
`
`thus with the understanding of one of ordinary skill. E.g., Ex. 1026 at 3 (“a path or
`
`link through which information passes between two devices. … 2. In communica-
`
`tions, a medium for transferring information.”).5
`
`
`5 PO interprets this term broadly in its litigation infringement contentions even under
`
`the narrower standard applicable in district court litigation, contending it covers Wi-
`
`Fi (i.e., 802.11), Bluetooth, or cellular channels. Ex. 1028 at 9, 10, 32, 35, 36, 60.
`
`14
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,149,511
`- “card reader” (claim 22) — Construed for review purposes to mean “a device that
`
`reads/scans paper cards, such as a business card.” See Ex. 1001 11:30-33 (“WIPS 30
`
`may include a card reader input 176 for connecting a card reader. For example, the
`
`CardScan 500 business card scanner … can be connected...”).
`
`B.
`
`Level of Ordinary Skill in the Art
`
`The applicable person of ordinary skill would have a minimum of a bachelor’s
`
`degree in computer engineering or computer science and 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. Additional grad-
`
`uate education could substitute for professional experience, or significant experience
`
`in the field could substitute for formal education. A POSA is presumed to have
`
`knowledge of all relevant prior art, and would thus have been familiar with the refer-
`
`ences cited herein and the full range of teachings they contain. Ex. 1004 ¶ 23.
`
`C. Obviousness Analysis: Grounds 1-12
`
`1. Overview of Goggin (Ex. 1030)
`
`The “Window