throbber
IPR2016-00622
`Patent No. 7,149,511 B1
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.,
`Petitioners,
`
`v.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`
`1
`Case IPR2016-00622
`Patent No. 7,149,511 B1
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`
`
`Before the Honorable JUSTIN T. ARBES, PATRICK R. SCANLON, and JOHN A.
`HUDALLA, Administrative Patent Judges.
`
`
`DECLARATION OF EDWARD F. BACHNER III IN SUPPORT OF PATENT
`OWNER’S RESPONSE
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`
`
`
`
`
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`1 Case IPR2016-00616 has been consolidated with this proceeding.
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`Rosetta-2017
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`
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`I.
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`Introduction
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`A. Personal Background
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`1. My name is Edward F. Bachner III. I am the co-founder, Chief
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`Executive Officer, and President of Rosetta-Wireless Corporation (“Rosetta”).
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`Rosetta is the owner of U.S. Patent No. 7,149,511 (the “’511 Patent”), on which I
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`am named as first inventor.
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`2.
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`I submit this declaration in connection with Rosetta’s response to the
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`petitions for inter partes review of the ’511 Patent brought by Samsung Electronics
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`Co. Ltd., Samsung Electronics America, Inc., and Apple Inc. (collectively,
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`“Petitioners”).
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`3.
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`Unless otherwise noted, the statements made herein are based on my
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`personal knowledge and if called to testify with regards to this declaration I could
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`and would do so competently and truthfully.
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`B. Education and Experience
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`4. My engineering degree, a Bachelor of Science With Distinction, is
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`from Purdue University. Later I earned a Master of Business Administration from
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`the University of Chicago. I have over thirty years’ experience in the engineering
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`and design of wireless technology and systems, which I summarize below.
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`5.
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`I worked as a Systems Engineer and Manager at Motorola, Inc. from
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`1968
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`to 1989, where I designed, developed and
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`implemented critical
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`communications systems including for the following entities, among others:
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`a. White House Communications: A system for use by the United States
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`Secret Service (e.g., Executive Protection);
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`b. Pennsylvania State Police: A statewide 2-way radio and microwave
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`system, including the first ever “vehicular-repeater” system, with over
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`1,000 mobile and portable two-way radios providing blanket coverage
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`for first responders over the entire Commonwealth;
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`c. Chicago Police Department: The first operational mobile data terminal
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`system in the country. Operated from within the police cruisers, the
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`system supplied real-time data for law enforcement activities. In order
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`to assure performance, these mission-critical systems needed to be
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`extremely reliable and survivable.
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`6.
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`Thereafter, I joined Andrew Corporation in 1989 as a Group
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`Marketing Manager (antennas, transmission lines, towers, and shelters) and was
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`later promoted to Business Unit Manager. There, I was involved firsthand in the
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`infrastructure side of cellular systems. I later assumed added responsibility for the
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`System Service businesses in the United States and Latin America. I also
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`broadened my knowledge of radio propagation to include microwave frequencies
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`and reliability enhancement though the use of diversity on those bands.
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`7.
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`Subsequently, I became Vice President of Engineering at The Antenna
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`Company, an assembler of cellular subscriber products, where I was responsible
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`for the design and development of all products. In addition, I was the Management
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`Representative leading to ISO-9001 quality certification.
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`8.
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`I co-founded Double-Time Corporation, a company that developed
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`aftermarket cellular phone accessories. As Vice Chairman and Chief Technology
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`Officer, I co-authored three patents. The third patent was the ’511 Patent, which I
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`co-authored with Xin Du and John E. Major, a former Motorola executive (and co-
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`worker) whom we invited to Double-Time Corporation to work on some ideas for
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`the next generation of wireless data to solve the needs of mobile people. Based on
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`my long history of collaboration with him, I am aware that Mr. Major holds
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`graduate degrees in engineering, business, and law. On the same basis, I am aware
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`that he served as the Executive Vice President of Qualcomm and Chairman of the
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`Board of Broadcom, which are two leading wireless chip manufacturers, and as the
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`Chief Executive Officer of Novatel Wireless.
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`II. Background of Rosetta and the ’511 Patent
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`9.
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`As discussed above, I have worked in the telecommunications
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`industry for decades, with a particular focus on propagation constraints of cellular
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`phones, personal digital assistants (“PDAs”), and other portable wireless
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`communications technology.
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`10.
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`In the mid-1990s, Mr. Major and I began discussing issues with
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`cellular communications. We intended to develop accessories to overcome the
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`short battery life and other problems that plagued cellular phones of that era.
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`11. Our focus soon shifted to address the growing demand for remote data
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`access. During the late 1990s and early 2000s, many employees arrived at their
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`workplace in the morning and logged onto the office server, commonly called the
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`“network” or the “network server.” This provided them with access to their
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`company’s e-mail system, files, and other resources. As computers and computer
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`systems became more and more essential to workplace activity, a user problem
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`emerged—how to access their “network server” remotely so as to not be tied down
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`to one’s desk.
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`12. At the time, cellular networks were transitioning from analog to
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`digital and had extremely limited bandwidth with poor transmission coverage.
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`While technologies existed that permitted transmittal of e-mails and similar
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`materials to a two-way pager, those technologies were cumbersome and slow.
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`13. At its core, mobile data connections were simply too slow, and too
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`intermittent to fulfill the needs of users on the move outside the enterprise network.
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`If a user wanted to access remotely stored data, like an e-mail, he would request
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`that the remote server transmit the desired data to his device over the wireless
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`connection. If a wireless connection was not available, then the user could not
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`access the remote data at all. However, even if a connection was available, the user
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`would need to wait for the file to be transmitted over the slow channel. Remote
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`wireless data access on existing devices was therefore more theoretical than
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`practically useful. Even a short e-mail might require a significant amount of time
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`to download. This meant that an employee could not reliably access his or her
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`company’s computer resources while in the field.
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`14. An illustrative example that comes to mind was in 1998 when
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`Double-Time Corporation was working with a sales representative from General
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`Electric’s plastics division on the correct resin for the housing of a new product.
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`The sales representative had to go out to his car to check a sheet of specifications
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`for the specific resin he thought would be best for the product. He then had to call
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`his home office for what was in stock, i.e., the available colors, amount, prices,
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`etc., because that information changed regularly. Here was a huge supplier—
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`General Electric—with no better data access capabilities than a “mom & pop”
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`store.
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`15. At the time, most industry participants considered better infrastructure
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`and software to be the answer to the problems with remote data access. They relied
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`on improving data rates that would presumably result from the improved
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`infrastructure. For example, a Communication Systems Design article from April
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`2000 details emerging wireless standards and contemplates how the improved data
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`rates would enhance the ability for users to operate remotely. Ex. 2006 at 2 (“Now,
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`however, as the Internet becomes more and more ubiquitous as a medium, access
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`(preferably at reasonable speeds) to that medium has become necessary.”). I found
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`those assumptions to be unrealistic, and Mr. Major and I sought a different
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`approach to the problem.
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`16. Ultimately, we believed the solution was one that did not rely on
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`unpredictable and vague improvements in infrastructure. Rather, I conceived of a
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`dedicated personal device to which a source server (such as an enterprise e-mail
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`server) could transmit data such as e-mails or calendar appointments. In turn, that
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`device could transmit the same information to another personal device, such as a
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`PDA or cellular phone. This concept was refined and culminated in the August 31,
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`2000 filing of U.S. Patent Application No. 09/652,734, which eventually issued as
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`the ’511 Patent.
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`17.
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`In November 2000, Rosetta was spun off from Double-Time
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`Corporation to develop and commercialize the technology, whereupon I was
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`appointed Chief Executive Officer and President. Rosetta was also assigned the
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`’511 Patent around this time.
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`18. The ’511 Patent describes a novel device for providing low-latency
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`local access to a user’s personal files (e.g., email, contacts, and documents) that are
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`stored on (or sourced from) a remote source server (e.g., the “network server” of an
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`enterprise information technology system, or enterprise “IT” system) regardless of
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`the user’s real-time connection to that remote source server. The wireless
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`intelligent personal network server (“WIPS”) was a new type of device designed to
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`work within the real-world constraints on mobile data access. Rather than waiting
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`for a user to request that an updated email be sent to him, a copy of the email (or
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`other files) are loaded on the WIPS device at an earlier time, when the WIPS
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`device has a connection to a wireless network. For example, any new email or
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`other updated file would be sent from the remote source server to the WIPS device,
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`without an active request from the user. The WIPS device maintains data
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`downloaded from the remote server and stands ready to provide access to the
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`downloaded and updated files to an external PDA or other “display device” via an
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`interface. The WIPS therefore leveraged the extant (but still poor, sporadic, and
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`unreliable) wireless data infrastructure of the time to provide users mobile access
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`to up-to-date files no matter where the user was located.
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`19. The WIPS includes a wireless radio frequency receiver for receiving
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`data from the source server and an interface for communicating with external
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`display devices. Ex. 1001 at 2:52–61 (describing the principal features of the
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`WIPS); see also id. at Fig. 2 (RF receiver 120 and Display Device Interface 130).
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`The wireless radio allows the WIPS device to receive downstream data (i.e., data
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`from the source server) containing updated information about the user’s files
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`located on the source server. Id. at 5:41–44 (describing contents of downstream
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`data transmissions). The WIPS device maintains this received downstream data as
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`files in its local memory storage. The display interface allows the user to connect
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`external display devices (such as a personal digital assistant, or “PDA”) to the
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`WIPS so that the user can access the files stored on the WIPS. Id. at 4:55–56
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`(describing display device).
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`20. The WIPS addresses numerous problems in the art:
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`a. Propagation and Interference: The WIPS overcomes the problem of
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`intermittent and unreliable wireless network connections, allowing for
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`user access to data even when a cellular or other wireless connection
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`to the remote source server is unavailable or too slow to effectively
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`transmit the needed files. By “pre-positioning” a user’s data on the
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`local, mobile WIPS, the invention ensures that the needed information
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`will be available to the user even when a robust wireless data
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`connection is not.
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`b. Latency: The WIPS overcomes the problem of very slow access to the
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`user’s data, including access to larger files. The WIPS allows for
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`latency-free data access; that is, the data can be downloaded in
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`advance from the remote source (even if there is a slow connection)
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`and stored on the WIPS so that it is instantly accessible to the user.
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`c. Currency of data: The WIPS communication system allows for the
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`updating of data on the local WIPS device as changes to data on the
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`source server occur. These updates (e.g., a revised calendar entry) are
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`received by the WIPS device and processed to update the previous
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`versions of the electronic files stored locally on the WIPS device.
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`When the user seeks to view the file, it is current.
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`21. The combined solutions of the WIPS together provide a mobile user
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`who is away from home or the office with quick access to updated information.
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`This represented a significant improvement over the PDAs in use prior to Rosetta’s
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`invention, which required wired or local synchronization with the computer that
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`was the original source of the data.
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`22. Because it was counter to the mobile industry’s intuition to build out
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`larger networks and improved software protocols, Rosetta’s approach was initially
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`shunned as an unworkable solution.
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`23. Nevertheless, once demonstrated, Rosetta’s
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`invention received
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`substantial praise. For example, Rosetta was awarded a highly-selective $2 million
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`grant from the Advanced Technology Program of the National Institute of
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`Standards and Technology to develop working prototypes of its WIPS technology.
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`Ex. 2010. As we learned during the application process, NIST is a federal agency
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`within the Department of Commerce designed “to promote U.S. innovation and
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`industrial competitiveness,”2 and awards such grants only for technologies
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`considered “revolutionary” and “pathbreaking” that “have a strong potential to
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`generate substantial benefits to the nation.” Ex. 2002 at 10, 24.
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`24. Rosetta’s application acknowledged that many in the industry
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`considered their approach to be too risky. Ex. 2011 (“The ATP funding is required
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`because this startup company has been unable to obtain private support for
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`research involving such high technical risk.”). However, Motorola—a major
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`industry player at the time—supported Rosetta’s grant application, and hailed
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`Rosetta as a “leading-edge program[ ]” with a “very innovative approach.” Ex.
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`2003.
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`25. The invention received further praise from Crain’s Chicago Business
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`in 2002, when a journal article described and praised Rosetta’s WIPS device:
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`Edward F. Bachner III’s firm has developed a wallet-
`sized wireless computer that will enable workers to bring
`all of a company’s data files on the road. . . . The $300
`device, called a ‘wireless intelligent personal server’
`(Wips), would talk to the corporate server all day long,
`keeping
`files up-to-date,
`revising
`schedules and
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`
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`2 http://www.nist.gov/public_affairs/general_information.cfm
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`downloading e-mails and attachments—all over existing
`cellular networks.
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`Ex. 2012 at 1.
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`26. Having
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`seen
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`industry
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`press
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`coverage, Sergio Fogel,
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`a
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`contemporaneous skilled artisan and high tech entrepreneur, described the WIPS
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`solution as a “killer app.” Ex. 2013 at 1.
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`27. Rosetta received further positive coverage, including:.
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` The January 2002
`issue of InformationWeek
`Magazine and InformationWeek-Online ran articles
`about Rosetta-Wireless and the personal server. Ex.
`2018.
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` In November 2003, a Government Computer News
`article discussed Rosetta’s program. Ex. 2019.
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` In May 2004, Wireless Business & Technology
`Magazine article calls Rosetta's product “your new
`wireless workplace” and awards the magazine’s
`“World Class Product Award” to Rosetta. Ex. 2020.
`
` In May 2005, an article about Rosetta's “Secure
`Mobile Enterprise” appeared in the Mortgage
`Bankers Association newsletter. Ex. 2021.
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`28. Though Rosetta attempted to find partners to help bring its product to
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`market, it was ultimately unsuccessful in its commercialization efforts, facing the
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`resistance of an industry wedded to the idea that remote data access problems
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`would be solved by improved cellular speeds.
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`29. This was because for many years, the mobile industry adhered to their
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`original basic design, assuming that new cellular infrastructure and protocols
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`would eventually allow sufficient connection speed to overcome those limitations.
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`See, e.g., Ex. 2005 (describing Verizon’s $1 billion investment in its advanced data
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`network). Those industry assumptions would prove overly optimistic. Improving
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`the speed and availability of wireless data transmission capacity required
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`expensive physical infrastructure deployment and time-consuming software
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`development, which was hampered by disagreement over standardization. See, e.g.,
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`Ex. 2006 at 3 (describing how “regulatory bodies have been struggling to gain
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`consensus on the 3G system for several years”). Increasing demand also delayed
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`realization of improved wireless bandwidth.
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`30. The Rosetta team understood those challenges from the outset. With
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`radio engineering expertise and real-world experience implementing wireless
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`communication systems, they recognized both the practical difficulties of
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`uninterrupted real-time data access, as well as limitations inherent to the physics of
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`radio transmission itself.
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`31. After my twenty years at Motorola and five years at Andrew
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`Corporation architecting mission-critical wireless systems (such as first responder
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`systems), I had an informed view that the cellular systems were many years from
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`providing useful data reliability.
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`32.
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`It was not until 2005 that the industry embraced the solution invented
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`by Rosetta, when Intel Research built a proof-of-concept of Rosetta’s personal
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`server invention into a Motorola E680 (Linux) cellphone. Ex. 2004.
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`III. Prosecution of the ’511 Patent
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`33.
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`I believe the prosecution history of the ’511 Patent provides clarity on
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`the nature of Rosetta’s invention. In this section of my declaration, I highlight
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`certain key exchanges between Rosetta and the U.S. Patent and Trademark Office
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`(the “PTO”).
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`34. As discussed above, Rosetta applied for what became the ’511 Patent
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`on August 31, 2000. Ex. 1002 at 1. The application initially described Rosetta’s
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`invention as a “wireless intelligent personal server.” Id. at 11. As discussed below,
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`at the PTO’s own strong suggestion, this term was amended to “wireless intelligent
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`network server” and finally by PTO decision to “wireless intelligent personal
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`network server,” upon which the patent was granted.
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`A. Criss and Wecker
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`35. Following preliminary amendments, in April 2003, the PTO issued a
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`nonfinal rejection in which it rejected certain claims as obvious in light of U.S.
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`Patent Application No. 2001/0029178 A1 (“Criss”), which disclosed a system for
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`wirelessly upgrading software on mobile devices. Ex. 1002 at 130.
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`36.
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`In July 2003, Rosetta requested reconsideration, noting:
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`To the contrary, Figure 2 and paragraph 0053 of Criss
`make clear that display 46 is not an external display
`device but is instead part of mobile terminal 36 (which
`the Examiner has alleged corresponds to the wireless
`intelligent portable server recited in claims 1 and 56).
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`Ex. 1002 at 163.
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`37. This underscored Rosetta’s invention as being a separate personal
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`device that would make portions of files and other resources available to a personal
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`device of a user’s choosing at the moment, such as a PDA, laptop, or cellular
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`phone.
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`38. Thereafter, in January 2004, the PTO issued a further nonfinal
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`rejection in which it rejected certain claims as obvious in light of Criss and U.S.
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`Patent No. 6,311,058 B1 (“Wecker”), which disclosed a system for transmitting
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`information wirelessly to mobile devices:
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`Regarding claims 1, 4, 33, 56, 59 and 70, Criss et al.
`discloses a wireless intelligent personal server (mobile
`terminal) (wireless display system) (fig. 2) . . . Criss et al.
`differs from claims 1, 56 and 70 of the present invention
`in that it does not explicit [sic] disclose a first interface
`for allowing an external (separate) display decive to
`access an electronic file. Wecker et al. teaches a first
`interface (sync. Component) (fig. 1 number 28) for
`allowing an external (separated) display (fig. 1 number
`16 and fig. 5 number 77) device to access an electronic
`file (col. 4 lines 6-34). Therefore, it would have been
`obvious to one of ordinary skill in the art at the time the
`invention was made to modify Criss et al. (mobile
`terminal) with a first interface for allowing an external
`(separated) display device to access an electronic file in
`order to synchronized [sic] a downloaded file of the
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`mobile terminal with a personal computer so that each
`can exchange information or share information with on
`[sic] another, as taught by Wecker et al.
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`Ex. 1002 at 171-72.
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`39.
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`In
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`its
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`request
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`for
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`reconsideration, Rosetta argued
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`that
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`the
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`Criss/Wecker combination did not render the claims obvious because they did not
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`disclose the capacity of the portable device to act as a server on a network, but
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`rather to simply receive automated updates over a wireless connection. As Rosetta
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`pointed out:
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`One flaw in the Examiner's argument, however, is that
`the downloaded file of the mobile terminal in Criss is the
`mobile terminal's operating software, not information
`that would normally be stored on or accessed by a
`personal computer. (Criss, ¶¶ 75, 76). It is simply not
`plausible that one of ordinary skill would have been
`motivated to provide an interface in the mobile terminal
`of Criss so that the mobile terminal's operating software
`could be synchronized with a personal computer. In any
`event, Applicants have amended independent claims 1,
`33, 46, 51, 56, and 70 to make clear that the external
`display device can selectively access the electronic file.
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`Ex. 1002 at 205-206 (emphases in original).
`
`40. To clarify its invention, Rosetta amended its claims to “make clear
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`that the external display device can selectively access the electronic file” and that it
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`taught more than Wecker’s teaching of mere “file synchronization”. Ex. 1002 at
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`206 (emphasis in original). Rather, it was intended to provide remote access to
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`personal computer files for any display device of the user’s choosing “in much the
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`same way as it would access a server on a local area network”. Id.
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`41. Subsequently, following a further nonfinal rejection in July 2014,
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`Rosetta conducted an in-person interview with the PTO’s examiner on September
`
`21, 2004 to discuss Criss and Wecker. There, I demonstrated “an implementation
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`of the invention, comprising (1) a wireless server that stored files received over a
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`wireless communications channel and (2) a laptop computer, as display device,
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`coupled to the wireless server via a wireless interface.” Ex. 1002 at 246.
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`42. The live working demonstration was a revolutionary and insightful
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`moment of understanding for the examiner and his supervisor. Sitting in the PTO
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`office in Washington, D.C., the examiner and his supervisor could see the list of
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`files on the WIPS prototype in front of them, knowing it was a mirror reflection of
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`one user’s personal section of Rosetta’s enterprise server (the source server) in
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`Chicago. They then realized this was analogous to what they saw each morning
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`when they logged onto the PTO’s own “network server” at their office.
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`43. Next, on a laptop “display device,” we selected their chosen movie
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`trailer—from the list resident on the WIPS device—and it immediately started
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`playing. To prove that the trailer was on the WIPS device (and not the Chicago
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`source server), we removed the cellular WAN card from the WIPS device (thereby
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`severing its connection to the cellular network) and nothing happened. The trailer
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`continued to play. To prove the trailer existed only on the WIPS device (and not
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`the laptop display device) we then removed the Wi-Fi LAN card from the WIPS
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`device (through which the laptop was connected to the WIPS device)—and the
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`video immediately stopped.
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`44. The “demonstration showed how the display device was able to
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`selectively access files stored on the wireless server” and the PTO agreed that
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`“replacing the terminology ‘wireless intelligent personal server’ with ‘wireless
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`intelligent network server’ throughout the claims would more clearly define the
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`invention and would overcome the prior art of record.” Ex. 1002 at 246-247; see
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`also id. at 355 (“the language ‘network server’ was carefully chosen during the
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`interview conducted on September 21, 2004 in order to more clearly define the
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`invention.”).
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`45.
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`In particular, the demonstration showed the capacity of the WIPS to
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`exchange files within an out-of-state IT network to which it was remotely
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`connected, and the ability of the WIPS to provide selective access to the local user
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`through a wirelessly-coupled display device even after the connection to the
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`remote network was broken.
`
`46. Upon viewing
`
`the demonstration,
`
`the examiner understood
`
`immediately the purpose of the invention—that it provided remote access to data
`
`resident on an upstream network server, such as an enterprise server, much like one
`
`
`
`17
`
`Rosetta-2017
`
`0018
`
`

`
`
`
`the examiner himself would log into when he arrived at his workplace in the PTO.
`
`It was not merely file transfer or synchronization, but rather an extension of access
`
`to upstream files and resources. The examiner suggested the term “network
`
`server”; this defined, in the common language at the time, what kind of invention
`
`that Rosetta was patenting. Everyone at the time knew what their network server
`
`was at the office.
`
`B. Boals
`
`47. This construction is further supported by the prosecution submissions
`
`concerning U.S. Patent No. 6,108,727 (“Boals”), which taught a “system for
`
`compressing program files at a remote host computer and transmitting the
`
`compressed program files to one or more wireless interface devices using a
`
`wireless link,” whereby the “received compressed files are stored in an
`
`electronically programmable storage device on the wireless interface device.” Ex.
`
`1038 at Abstract.
`
`48.
`
`In February 2006, the PTO issued another nonfinal rejection. In it, the
`
`PTO rejected certain claims, including 1 and 56, as anticipated by Boals:
`
`Regarding claims 1 and 56, Boals et al. discloses a
`remote portable computer (wireless intelligent network
`server) (fig. 1 number 101 and col. 5 lines 22-31),
`comprising: a radio frequency (RF) receiver for receiving
`downstream data
`transmitted over a first wireless
`communications channel (fig. 1 number 115 and col. 6
`lines 51-54), a memory (fig. 1 number 117) a central
`processing unit (CPU) (fig. 1 number 116); a set of
`
`
`
`18
`
`Rosetta-2017
`
`0019
`
`

`
`
`
`embedded machine language instructions (col. 6 lines 51-
`54), said set of embedded machine language instructions
`being executable by said CPU (inherent, as taught in col.
`6 lines 51-54) for processing said downstream data to
`provide windows files or window programs (electronic
`file) in said memory (col. 6 lines 51 54); and a wireless
`interface (fig. 1) for allowing an external display (fig. 1
`number 113) device to selectively access windows files
`or window programs (electronic file) (col. 6 lines 51-54).
`
`Ex. 1002 at 333–34.
`
`49.
`
`In its request for reconsideration, Rosetta reminded the PTO that “the
`
`language ‘network server’ was carefully chosen during the interview conducted on
`
`September 21, 2004 in order to more clearly define the invention.” Ex. 1002 at
`
`355.
`
`50. Rosetta also noted that the invention disclosed in Boals was not a
`
`“network server” because of what and how it communicated with the analogous
`
`wireless interface device:
`
`Specifically, what wireless interface device 100 receives
`from host 101 is a video image to be displayed . . . Thus,
`when an application program running on host 101
`generates output data, host 101 transmits “video events”
`to wireless interface device 100 . . . Wireless interface
`device 100 receives
`the video events as display
`commands, and CPU 112 in wireless interface device 100
`executes the display commands to update the display . . .
`A better description of the communication . . . would be
`to say that host 101 is acting as a video display driver and
`wireless interface device 100 is acting as a video
`monitor.
`
`Ex. 1002 at 355-6.
`
`
`
`19
`
`Rosetta-2017
`
`0020
`
`

`
`
`
`51. Rosetta further emphasized that the data being transmitted was not
`
`network data received downstream over a wireless channel, noting that Boals
`
`“does not state that the files on host 101 are provided by processing downstream
`
`data (i.e., data that is transmitted over a wireless communications channel) from
`
`wireless interface device 100.” The files on 101 accessed by 100 are not “provided
`
`by downstream data from wireless interface device 100.” Ex. 1002 at 354, 56.
`
`52. On August 10, 2006, after consulting with his supervisor, the
`
`examiner wrote: “The Boals reference does not teach applicants’ invention.” Ex.
`
`1002 at 374.
`
`53. This argument underscored the personal nature of the invention—that
`
`it made network resources, received through downstream transmission, available to
`
`another personal device.
`
`54. The PTO agreed. Subsequently, in August 2006, the PTO conducted a
`
`telephonic interview with Rosetta, during which the PTO and Rosetta agreed
`
`changing “network server” back to “personal network server” more correctly
`
`defined the invention. Ex. 1002 at 372. As a result, the PTO allowed the ’511
`
`Patent to be issued in August 2006.
`
`55.
`
`In sum, the Criss patent was the idea of sending to your cellphone an
`
`updated version of the cellphone's operating software. No intermediate server or
`
`display device was involved, nor files of personal value to a user. The Wecker
`
`
`
`20
`
`Rosetta-2017
`
`0021
`
`

`
`
`
`patent addressed the idea of wirelessly sending a file to a PDA and then having the
`
`PDA “sync” with a similar nearby unit using a cable or IrDA. No intermediate
`
`server was involved, or ways to compensate for the real-world physics of wireless.
`
`The Boals patent was for a wireless entry device, a display pad and pen as might
`
`be used at a restaurant, supported by a nearby dedicated fixed-end modem. No
`
`intermediate server was involved. Rosetta’s distinction of the Criss/Wecker
`
`combination as well as the Boals reference demonstrate that a “network server”
`
`was not merely a device capable of receiving or transmitting data from a linked
`
`computer, but a computer in a network that exchanges data files with other devices
`
`in that network. The Criss/Wecker combination enabled the sharing of data
`
`between two connected devices; the addition (at the examiner’s suggestion) to add
`
`the word “network” to create the term “network server” to overcome that prior art
`
`simply cannot be squared with an understanding of “network server” as requires
`
`nothing more than two computers exchanging data over a direct point-to-point
`
`communications link.
`
`IV. Reexamination of the ’511 Patent
`
`56.
`
`In March 2011, Rosetta filed a request for ex parte reexamination of
`
`the ’511 Patent on the basis of certain prior art raised by a third party that was not
`
`addressed during prosecution. That prior art related to a Nokia product series
`
`
`
`21
`
`Rosetta-2017
`
`0022
`
`

`
`
`
`known as the “Communicator,” specifically model numbers 9110 and 9110i. Ex.
`
`1003 at 4.
`
`57.
`
`In June 2011, the PTO issued a nonfinal rejection in which it noted, as
`
`to claims 1 and 583, that:
`
`Nokia User's Guide describes a wireless intelligent
`personal network device (pp. 1-2, reads server as it
`downloads documents), comprising: a radio frequency
`(RF) receiver (GSM transceiver, pp. 11 and 13) for
`receiving downstream data transmitted over a first
`wireless communications channel . . . ; a central
`processing unit (CPU, inherent in the communicator); a
`set of embedded machine language instructions within
`said personal network server . . ., said set of

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