throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`In re U.S. Patent No. 7,149,511 (challenged claims 1-10, 58-65)
`
`
`
`Filed:
`
`Aug. 31, 2000
`
`Issued:
`
`Dec. 12, 2006
`
`Inventors: Edward F. Bachner, III, John Major, Xin Du
`
`Assignee: Rosetta-Wireless Corporation
`
`Title:
`
`
`Wireless Intelligent Personal Server
`
`
`Mail Stop PATENT BOARD, PTAB
`Patent Trial and Appeal Board
`U.S.P.T.O.
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`DECLARATION OF DR. NATHANIEL POLISH
`
`
`
`I, Dr. Nathaniel Polish, make this declaration at the request of Apple Inc. in
`
`connection with the petition for inter partes review submitted by Petitioners Apple
`
`Inc., Samsung Electronics Co. Ltd., and Samsung Electronics America, Inc.
`
`(“Petitioners”) for U.S. Patent No. 7,149,511 (“the 511 Patent”) based on the prior
`
`art patent U.S. 5,864,853 to Kimura, et al. (“Kimura”). All statements made herein
`
`of my own knowledge are true, and all statements made herein based on
`
`information and belief are believed to be true. Although I am being compensated
`
`1
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`Apple Exhibit 1058.001
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`for my time in preparing this declaration, the opinions articulated herein are my
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`own, and I have no stake in the outcome of this proceeding or any related litigation
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`or administrative proceedings.
`
`I.
`
`INTRODUCTION
`1.
`
`In the preparation of this declaration, I have reviewed the relevant
`
`portions of the following documents:
`
`AP-1001
`
`AP-1003
`
`AP-1004
`
`AP-1005
`
`AP-1006
`
`AP-1007
`
`AP-1008
`
`AP-1009
`
`AP-1010
`
`AP-1011
`
`AP-1012
`
`
`
`U.S. Patent No. 7,149,511 (challenged patent)
`
`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)
`
`2
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`Apple Exhibit 1058.002
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`2.
`
`In forming my opinions expressed below, I have considered the
`
`documents listed above, any other documents or sources cited herein, as well as my
`
`knowledge and experience based upon my work in this area as described below.
`
`3.
`
`The application that led to the issuance of the 511 Patent was filed on
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`August 31, 2000. I am familiar with the technology at issue and am aware of the
`
`state of the art around August 2000. Based on the technology disclosed in the 511
`
`Patent, a person of ordinary skill in the art (“POSITA”) would include someone
`
`who has 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. My analyses and opinions below are given from the
`
`perspective of a POSITA in these technologies in this timeframe, unless stated
`
`otherwise.
`
`II. QUALIFICATIONS AND COMPENSATION
`4.
`I have a Ph.D. in Computer Science from Columbia University. I
`
`hold the following four degrees from Columbia University, spanning the years
`
`1980 to 1993:
`
` Ph.D. in Computer Science, May 1993, Thesis: Mixed Distance
`Measures for the Optimization of Concatenative Vocabularies in
`Speech Synthesis;
`
` M.Phil. in Computer Science, December 1989;
`
`3
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`Apple Exhibit 1058.003
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` M.S. in Computer Science, December 1987;
`
` B.A. in Physics, Columbia College, May 1984.
`
`5.
`
`For over twenty-five years, I have run a computer technology
`
`development firm that I co-founded, called Daedalus Technology Group. My
`
`primary business activity is the development of computer-related products. This
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`activity involves understanding the business objectives of customers, designing
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`products to suit their needs, and supervising the building, testing, and deployment
`
`of these products. I develop hardware and software as well as supervise others
`
`who do so.
`
`6.
`
`Also, from time to time I started other companies in order to pursue
`
`particular product opportunities. Most of my business activity, however, is as a
`
`consulting product developer. From time to time I have also served as an expert
`
`witness on computer- and software-related cases. I am a named inventor on seven
`
`United States patents, and am a member of several professional societies, including
`
`the IEEE and ACM.
`
`7.
`
`I have extensive experience in the technical areas of the 511 Patent.
`
`In the late 1980s I developed a remote hard disk product called a Simplicity Hard
`
`Drive. It interfaced to the PC printer port. I developed driver and other interface
`
`software for this product that made the external storage available to the PC
`
`operating system. I have extensive experience using many wireless technologies
`
`4
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`Apple Exhibit 1058.004
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`for purposes ranging from RFID to large scale deployments of Wi-Fi.
`
`8.
`
`I am being compensated at an hourly rate of $600.00. My
`
`compensation is not dependent on the substance of my statements in this
`
`Declaration.
`
`III. RELEVANT LEGAL STANDARDS
`9.
`I have been asked to provide my opinions regarding whether the
`
`claims of the 511 Patent are anticipated or rendered obvious by the prior art.
`
`10.
`
`I have been informed that in order for prior art to anticipate a claim
`
`under 35 U.S.C. § 102, the reference must disclose every element of the claim.
`
`11.
`
`I have been informed that a claimed invention is not patentable under
`
`35 U.S.C. § 103 if the differences between the invention and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a POSITA. I also understand that the obviousness analysis
`
`takes into account factual inquiries including the level of ordinary skill in the art,
`
`the scope and content of the prior art, the differences between the prior art and the
`
`claimed subject matter, and any secondary considerations which may suggest the
`
`claimed invention was not obvious.
`
`12.
`
`I have been informed by legal counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. I understand some of these rationales
`
`5
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`Apple Exhibit 1058.005
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`include the following: combining prior art elements according to known methods
`
`to yield predictable results; simple substitution of one known element for another
`
`to obtain predictable results; use of a known technique to improve a similar device
`
`(method, or product) in a way; applying a known technique to a known device
`
`(method, or product) ready for improvement to yield predictable results; choosing
`
`from a finite number of identified, predictable solutions, with a reasonable
`
`expectation of success; and some teaching, suggestion, or motivation in the prior
`
`art that would have led a POSITA to modify the prior art reference or to combine
`
`prior art reference teachings to arrive at the claimed invention.
`
`IV. OVERVIEW OF THE 511 PATENT AND RELEVANT
`TECHNOLOGY
`13. The 511 Patent describes a portable server computer that 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
`
`indicates 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 to access the files by transmitting the file data stored in the
`
`WIPS memory, or portions thereof, to the external display device via network
`
`structures and methods that, in my experience, were conventional in the art as of
`
`the priority date of the 511 Patent. Id. at 4:44-51; id. at 9:64-10:8 (access by a
`
`6
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`Apple Exhibit 1058.006
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`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
`
`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.”).
`
`14. Further, the 511 Patent describes how “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.” Id. at 6:31-36.
`
`15. One of ordinary skill in the art would know that the remote file access
`
`technology described in the 511 Patent had existed for many years before the
`
`priority date of the 511 Patent. For example, I am familiar with a network
`
`7
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`Apple Exhibit 1058.007
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`connected storage system from Corvus Systems in the 1980s that allowed Apple II
`
`computers to connect to a common hard disk drive that could be accessed over a
`
`network that was called OmniNet. I am also familiar with a software company
`
`named Novell that produced a product in the 1980s called NetWare, which allowed
`
`computers connected over a LAN (called IPX) to share the hard drive storage on a
`
`server. Further, in the 1980s Sun Microsystems produced a product called
`
`Network File System (NFS) that I am familiar with, which allowed computers
`
`running on the same TCP/IP network to mount (i.e., share) each others’ hard disk
`
`drives. In short, one of ordinary skill would know that as early as the mid-1980s
`
`there were many ways for a remote computer to access files on a server computer,
`
`as if the files were local to the remote computer.
`
`V. THE 511 CLAIMS AND REEXAMINATION HISTORY
`16. 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;
`
`8
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`Apple Exhibit 1058.008
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`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.
`
`17. Claims 1 and 58 as they appear above resulted from an ex parte
`
`reexamination certificate that issued under 35 U.S.C. § 307 on January 10, 2012,
`
`attached to the 511 Patent. It is my understanding that 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.
`
`18.
`
`It is my understanding that Patent Owner Rosetta had filed the request
`
`for reexamination to resolve any substantial new question of patentability as to
`
`9
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`Apple Exhibit 1058.009
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`claims 1 and 58 raised by various publications relating to the Nokia 9110
`
`Communicator product 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.
`
`19.
`
`In a June 28, 2011 Office action rejecting original claims 1 and 58 in
`
`view of the Nokia prior art , I understand that 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). Id. at .106-107. The examiner found that the file
`
`transfer backup feature disclosed by the Nokia art read on the claimed limitation
`
`requiring “selective[] access” of an electronic file by the external display device.
`
`Id. at .107.
`
`20. After 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
`
`10
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`Apple Exhibit 1058.010
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`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 herein added unless noted
`
`otherwise).
`
`VI. SUMMARY OF OPINIONS
`21.
`It is my opinion that claims 1-10 and 58-65 of the 511 Patent are
`
`rendered obvious by the Kimura patent (U.S. 5,864,853, AP-1004, “Kimura”) in
`
`view of the knowledge of one of ordinary skill in the art. The Kimura patent
`
`issued on January 26, 1999, and therefore I understand that it qualifies as prior art
`
`under 35 U.S.C. § 102(b).
`
`VII. MEANING OF CERTAIN CLAIM TERMS
`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)
`
`22.
`
`I agree with Petitioners that any explicit construction of this entire
`
`claim limitation is unnecessary for the purposes of this Petition. However, with
`
`11
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`Apple Exhibit 1058.011
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`respect to the “open” aspect of this limitation, as I summarized above 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.” Under the examiner’s interpretation
`
`of the “open[ing]” aspect of this claim limitation (i.e., requiring that the application
`
`opens the electronic file on the “personal network server”), it is my opinion that
`
`the prior art discussed herein renders obvious this claim limitation in view of the
`
`knowledge of one of ordinary skill in the art, as I explain below.
`
`23. Alternatively, if 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), it is my opinion that
`
`the prior art discussed herein nevertheless invalidates the challenged claims by
`
`explicitly disclosing this claim limitation, as I explain below.
`
`B.
`“network server” (claims 1/58)
`24. This term appears in the preamble of claims 1 and 58. To the extent it
`
`is found that the preamble is limiting (on which I take no position herein), it is my
`
`opinion that in the context of the 511 Patent the claim term “network server”
`
`means “a computer that shares data and/or files with at least one other connected
`
`computer,” which is how that term would have been understood by one of ordinary
`
`skill in the art as of the priority date of the 511 Patent in light of the broad range of
`
`12
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`Apple Exhibit 1058.012
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`examples disclosed by the 511 Patent. 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). Further, this interpretation of
`
`the term “network server” would encompass the wide range of network
`
`functionality ascribed to the WIPS of the 511 Patent, including networks formed
`
`by just by linking two computer systems. See, e.g., id. 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 networks, wide area networks, local area
`
`networks, etc.).
`
`25. This construction is also supported by reliable dictionary definitions
`
`contemporaneous with the priority date of the 511 Patent. See 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.”); 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
`
`13
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`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.”).
`
`C.
`26.
`
`“wireless communications channel” (claims 1/58, 10/65)
`
`It is my opinion that the claim term “wireless communications
`
`channel” in the context of the 511 Patent means “wireless path or link through
`
`which information passes between at least two devices.” The 511 Patent uses this
`
`term to cover many different types of wireless communications channels, such as
`
`FM radio or television channels, paging channels, cellular or PCS channels, or any
`
`channels that facilitate “wireless [] transmit[ssion] of data by some other means.”
`
`511 Patent at 4:9-33. In my opinion, 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. See, e.g., 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.”).
`
`VIII. 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
`27.
`
`It is my opinion that 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.
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`14
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`Apple Exhibit 1058.014
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`28. The Kimura prior art patent 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),
`
`just like the 511 Patent. Kimura’s system has two main pieces—a portable
`
`personal data device (“PPDD”) that can wirelessly receive and store data and files,
`
`and a separate stationary computer that can wirelessly access such data and files on
`
`the PPDD. Id. at 6:56-7:13.
`
`29. As I elaborate on below, Kimura’s stationary computer can access and
`
`open files on the PPDD “without demanding the user to spend considerable efforts
`
`in copying data and maintaining a consistency among the copied data.” Id. at 16:8-
`
`10; see also id. at 2:24-31. The file access occurs by “mounting” the memory
`
`system of Kimura’s PPDD to the stationary computer, a technique that was well
`
`known in the art at the time, such that the stationary computer can access files that
`
`remain resident on the PPDD as if the files were stored on the stationary computer.
`
`Id. at 12:15-47. Kimura explains that a benefit of its invention is that a user can
`
`travel with the PPDD and access files thereon using a variety of different stationary
`
`computers in different locations. Id. at 6:65-7:6, 7:27-35. This is the same goal
`
`articulated by the 511 Patent. 511 Patent at 6:31-36.
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`15
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`Apple Exhibit 1058.015
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`A. Claims 1 and 58
`30.
`Independent claims 1 and 58 are identical other than claim 1 requiring
`
`a “receiver” where claim 58 requires a “transceiver.” I will therefore discuss the
`
`two claims together below, and address the distinction in limitation [1/58.b].
`
`[1/58.a] A wireless intelligent personal network server, comprising:
`
`31. To the extent it is found that the common preamble of claims 1 and 58
`
`is found to be limiting, Kimura discloses the preamble. Specifically, Kimura’s
`
`“portable personal data device” computer (Kimura’s “PPDD”) corresponds to the
`
`511 Patent’s wireless intelligent personal network server.
`
`32. For example, Kimura discloses that its PPDD is a “portable personal”
`
`computing device that receives and transmits data wirelessly by “radio,” and that it
`
`functions as an intelligent network server because (in line with the proper
`
`interpretation of “network server,” explained above) it is a computer that shares
`
`data and/or files with at least one other connected computer, namely Kimura’s
`
`stationary computer. See, e.g., Kimura at 6:56-7:35.
`
`33.
`
`In particular, Kimura explains 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. Further, Kimura’s 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
`
`16
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`Apple Exhibit 1058.016
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`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.
`
`34. Similarly, Figure 2 of Kimura, which I have reproduced 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 in the
`
`figure as “work station or personal computer”) over the wireless network formed
`
`by the two devices:
`
`Kimura at Fig. 2 (annotation in red); see also id. at 6:56-61 (“the portable file
`
`system of the present invention has a schematic conceptual configuration as
`
`
`
`17
`
`Apple Exhibit 1058.017
`
`Samsung et al. v. Rosetta-Wireless
`IPR2016-00622
`
`

`
`shown in Fig. 2, which comprises: a portable personal data device 1…and a
`
`stationary computer 5 such as a work station or a personal computer….”).
`
`35. Figure 3 of Kimura, shown below, discloses another example of the
`
`disclosed PPDD (this time labeled “portable personal data device 11”), which
`
`communicates with “stationary computer 10.”1 Kimura at 7:51-57 (“[T]he portable
`
`file system has a configuration as shown in FIG. 3, which generally comprises: a
`
`stationary computer 10 having an application execution unit 12, a file access unit
`
`13, a communication unit 14, and a file memory unit 15; and a portable personal
`
`data device 11 having a communication unit 16, a file access processing unit 17,
`
`and a file memory unit 18.”).
`
`
`1 I will refer herein to Kimura’s “portable personal data device 1” / “portable
`
`personal data device 11” (two iterations of the same disclosed portable personal
`
`data device) as Kimura’s “PPDD.” Similarly, I will refer to Kimura’s “stationary
`
`computer 5” / “stationary computer 10” (two iterations of the same disclosed
`
`stationary computer) as Kimura’s “stationary computer.”
`
`18
`
`Apple Exhibit 1058.018
`
`Samsung et al. v. Rosetta-Wireless
`IPR2016-00622
`
`

`
`
`
`Kimura at Fig. 3 (annotation in red showing the PPDD).
`
`36. PPDD 11 in Figure 3 above functions as a “network server” by
`
`sharing file data with stationary computer 10 upon file access requests/commands
`
`from the stationary computer. See, e.g., id. at 15:60-67 (“As described, according
`
`19
`
`Apple Exhibit 1058.019
`
`Samsung et al. v. Rosetta-Wireless
`IPR2016-00622
`
`

`
`to this first embodiment, the files necessary for the user are collectively stored
`
`in the file memory unit 18 of the portable personal data device 11 carried along
`
`by the user, and in a case of working on these files at a working site, visiting spot,
`
`or home, by utilizing the stationary computer 10 available there, the stationary
`
`computer 10 issues the file access request to the portable personal data device
`
`11….”).
`
`37. Further, Kimura discloses that while the PPDD can be connected
`
`directly to the stationary computer on a common wireless network as I explained
`
`above, the PPDD can also be connected to a stationary computer via a stand-alone
`
`network to permit similar types of network file access. See, e.g., Kimura at 31:25-
`
`38 (“When the other stationary computer wishes to make an access to a file under
`
`the home directory of that user, at a time of making an access to the home
`
`directory, the other stationary computer inquires to the NIS server 913, and after
`
`the file system of the portable personal data device 902 is mounted, the directory
`
`search is carried out, such that it becomes possible for the other stationary
`
`computer to make a desired file access. In this manner, it is possible in this twelfth
`
`embodiment to use the portable personal data device by connecting it to the
`
`network rather than the stationary computer. It is to be noted that the various
`
`embodiments described above may be practiced in any desired combination.”).
`
`20
`
`Apple Exhibit 1058.020
`
`Samsung et al. v. Rosetta-Wireless
`IPR2016-00622
`
`

`
`38.
`
`It is thus my opinion that the portable personal data device (PPDD)
`
`disclosed in Kimura corresponds to the claimed “wireless intelligent personal
`
`network server” of the 511 Patent.
`
`[1/58.b] a radio frequency (RF) receiver [transceiver] for receiving
`downstream data transmitted over a first wireless communications
`channel;
`39. Kimura discloses that its PPDD includes a radio frequency (RF)
`
`receiver (claim 1 of 511 Patent), which is also an RF transceiver (claim 58 of 511
`
`Patent), for receiving downstream data transmitted over a first wireless
`
`communications channel, as claimed. In sum, and as I explain more fully below,
`
`Kimura discloses this claim limitation by disclosing that its PPDD includes a file
`
`reception unit utilizing an antenna that receives, via radio signals, downstream data
`
`from Kimura’s stationary computer over a first wireless communications channel
`
`that facilitates data flow from the stationary computer to the PPDD.
`
`40. First, as described above and seen in Figures 2 and 3 above, Kimura’s
`
`PPDD includes a “communication unit 2” (Fig. 2) / “communication unit 16” (Fig.
`
`3) (two iterations of the same component, hereinafter “communication unit 2
`
`[16]”) having a “file transmission and reception unit 161” (Fig. 3) that, along with
`
`an antenna, facilitates transmitting and receiving data using wireless radio
`
`communication. (See analysis above for claim [1/58.a].) Thus, one of ordinary
`
`skill in the art would know that Kimura’s file transmission and reception unit 161
`
`21
`
`Apple Exhibit 1058.021
`
`Samsung et al. v. Rosetta-Wireless
`IPR2016-00622
`
`

`
`and antenna together include an RF “receiver” (claim 1) that is also an RF
`
`“transceiver” (claim 58). It is well-known that a “receiver” receives data, while a
`
`“transceiver” transmits and receives data; in other words, a transceiver includes a
`
`receiver.
`
`41. Second, Kimura’s specification discloses that the PPDD can write
`
`into its memory downstream data received from the stationary computer. In
`
`particular, as I previously noted, “[t]he portable personal data device 1 and the
`
`stationary computer [] are equipped with the communication units 2 and 6 for
`
`communicating with each other by a radio or on-line communication mode….”
`
`Kimura at 7:6-10. The stationary computer has a “file transmission and reception
`
`unit 141 [that] carries out a transmission…of data with respect to the
`
`communication unit [] of the portable personal data device 11 in order to
`
`realize…a writing with respect to a file stored in the file memory unit 18 of the
`
`portable personal data device 11.” Id. at 8:45-50. The “file memory unit 18 stores
`
`file data…regarding creation/correction of files.” Id. at 10:35-37. Kimura also
`
`explains that “[w]hen the received access request is judged as the access request
`
`for file writing, a preparation for data writing into a specified position in the file
`
`data memory unit 181 is carried out…and the…data received via the file
`
`transmission and reception units 141 [of the stationary computer] and 161 [of the
`
`portable personal data device] are written into the file data memory unit 181 [of the
`
`22
`
`Apple Exhibit 1058.022
`
`Samsung et al. v. Rosetta-Wireless
`IPR2016-00622
`
`

`
`portable personal data device]….” Id. at 15:54-59. Thus Kimura discloses that the
`
`PPDD receives data from the stationary computer.
`
`42. Third, Kimura explains that such downstream data is received by the
`
`PPDD’s transceiver from the stationary computer over a “wireless communications
`
`channel” (in line with the proper construction of that term, explained above). For
`
`example, Kimura’s Figure 2 (reproduced above) shows a wireless transmission
`
`path/link (i.e., the dotted line) between the antenna of the stationary computer and
`
`the antenna of the PPDD’s communication unit 2 [16] (which together include the
`
`PPDD’s transceiver, as I explained above). Kimura at Fig. 2. As described above
`
`with respect to the preamble of claims 1/58, Kimura explicitly discloses that such
`
`data communication between the stationary computer and the PPDD is “radio” (in
`
`other words, wireless) communication. Id. at 7

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