UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
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`and
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`Apple Inc.,
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`Petitioners,
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`v.
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`Rosetta-Wireless Corporation,
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`Patent Owner
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`Case IPR2016-00622
`Patent 7,149,511 B1
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`PATENT OWNER’S NOTICE OF APPEAL
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
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`and
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`Apple Inc.,
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`Petitioners,
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`v.
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`Rosetta-Wireless Corporation,
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`Patent Owner
`
`Case IPR2016-00622
`Patent 7,149,511 B1
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`PATENT OWNER’S NOTICE OF APPEAL
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`IPR2016-00622
`Patent 7,149,511 B1
`Patent Owner’s Notice of Appeal
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`
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
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`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Patent Owner
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`Rosetta-Wireless Corporation (“Rosetta” or “Patent Owner”), hereby appeals under
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`35 U.S.C. §§ 141, 142 and 319 to the United States Court of Appeals for the
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`Federal Circuit from the Final Written Decision entered on August 21, 2017 (Paper
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`No. 48) (the “Final Written Decision”); the Order Denying Patent Owner’s Motion
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`for Authorization to File a Motion to Amend entered on October 20, 2017 (Paper
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`No. 50) (the “Amendment Decision”); the Decision Denying Patent Owner’s
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`Request for Rehearing entered on October 20, 2017 (Paper No. 51) (“Rehearing
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`Decision”); and all underlying orders, decisions, rulings, and opinions. Copies of
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`the Final Written Decision, Amendment Decision and Rehearing Decision are
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`attached1.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Rosetta further indicates that
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`the issues on appeal include, but are not limited to:
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`1
`A Notice of Appeal is being filed concurrently in IPR2016-00616, which was
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`consolidated with IPR2016-00622.
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`2
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`IPR2016-00622
`Patent 7,149,511 B1
`Patent Owner’s Notice of Appeal
`1. Whether the Board erred in finding that claims 1-10, 19-22, 58-65 and
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`68-71 of U.S. Patent 7,149,511 B1 are unpatentable, and any findings
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`or determinations supporting or related to those issues, as well as all
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`other issues decided adversely to Patent Owner in any orders,
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`decisions, rulings, and opinions.
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`2. The Board’s claim construction.
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`3. The Board’s decision denying Patent Owner’s request for leave to file
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`a motion to amend.
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`4. The constitutionality of the Board’s decision, including whether inter
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`partes review violates Article III and the Seventh Amendment of the
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`Constitution.
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`Simultaneous with this submission, a copy of this Notice of Appeal is being
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`served upon counsel of record for Petitioners and filed with the Patent Trial and
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`Appeal Board and the Director of the United States Patent and Trademark Office in
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`accordance with 37 C.F.R. 90.2(a). In addition, a copy of this Notice of Appeal,
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`along with the required docketing fees, is being filed with the Clerk’s Office for
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`the United States Court of Appeals for the Federal Circuit.
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`IPR2016-00622
`Patent 7,149,511 B1
`Patent Owner’s Notice of Appeal
`Respectfully submitted,
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`By: /s/ Miranda Y. Jones
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`
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`Miranda Y. Jones (Reg. No. 64,721)
`Heim, Payne & Chorush, LLP
`600 Travis Street, Suite 6710
`Houston, TX 77002
`mjones@hpcllp.com
`Tel: + 1 713 221 2000
`
`
`
`
`
`
`
`Michael Ng (pro hac vice)
`Daniel A. Zaheer (pro hac vice)
`Kobre & Kim LLP
`150 California, 19th Floor
`michael.ng@kobrekim.com
`daniel.zaheer@kobrekim.com
`Tel: + 1 415 582 4000
`Attorneys for Patent Owner
`Rosetta-Wireless Corp
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`4
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`Dated: December 18, 2017
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`CERTIFICATE OF FILING AND SERVICE
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`I hereby certify that in addition to being filed electronically through the
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`Patent Trial and Appeal Board’s Patent Review Processing System (PRPS), the
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`foregoing Patent Owner’s Notice of Appeal is being filed pursuant to 37 CFR §§
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`90.2 and 104 by United States Postal Service on this 18th day of December, 2017
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`to the Director of the United States Patent and Trademark Office, at the following
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`address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I further certify that on this 18th day of December, 2017, an electronic copy
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`of the foregoing Patent Owner’s Notice of Appeal, along with the required
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`docketing fee, was submitted electronically with the United States Court of
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`Appeals for the Federal Circuit via CMF/ECF.
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`I further certify that pursuant to 37 CFR § 42.6(e), a true and correct copy of
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`Patent Owner’s Notice of Appeal was served by electronic mail to the attorneys of
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`record for the Petitioners on this 18th day of December, 2017:
`
`Brian E. Ferguson
`Anish R. Desai
`Megan H. Wantland
`Weil, Gotshal & Manges LLP
`brian.ferguson@weil.com
`anish.desai@weil.com
`5
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`megan.wantland@weil.com
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`Stacie R. Hartman
`Schiff Hardin LLP
`shartman@schiffhardin.com
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`Richard T. McCaulley
`James R. Batchelder
`Ropes & Gray LLP
`richard.mccaulley@ropesgray.com
`james.batchelder@ropesgray.com
`
`Gene W. Lee
`Fish & Neave
`glee@perkinscoie.com
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`By:
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`
`
`/Miranda Jones
`Miranda Y. Jones (Reg. No. 64,721)
`Attorney for Patent Owner
`Rosetta-Wireless Corp.
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`
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`6
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`Dated: December 18, 2017
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`EXHIBIT A
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`EXHIBIT A
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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 48
`Entered: August 21, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`
`Case IPR2016-006221
`Patent 7,149,511 B1
`
`Before JUSTIN T. ARBES, PATRICK R. SCANLON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge HUDALLA.
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`Opinion Dissenting filed by Administrative Patent Judge ARBES.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`In Case IPR2016-00622 (“622 IPR”), Samsung Electronics Co., Ltd.,
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`Samsung Electronics America, Inc., and Apple Inc. (collectively
`
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`1 Case IPR2016-00616 has been consolidated with this proceeding.
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`1
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`
`
`IPR2016-00622
`Patent 7,149,511 B1
`
`“Petitioner”), filed a Petition (Paper 42, “622 Petition” or “622 Pet.”)
`
`requesting an inter partes review of claims 1–10, 19–22, 58–65, and 68–71
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`of U.S. Patent No. 7,149,511 B1 (Ex. 1001, “the ’511 patent”) pursuant to
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`35 U.S.C. §§ 311–319. Patent Owner, Rosetta-Wireless Corporation
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`(“Patent Owner”), filed a Preliminary Response to the 622 Petition. Paper 8
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`(“622 Preliminary Response” or “622 Prelim. Resp.”). Taking into account
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`the arguments presented in Patent Owner’s 622 Preliminary Response, we
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`determined that the information presented in the 622 Petition established that
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`there was a reasonable likelihood that Petitioner would prevail in
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`challenging claims 1–10, 19–22, 58–65, and 68–71 of the ’511 patent under
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`35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this
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`proceeding on August 22, 2016, as to these claims of the ’511 patent.
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`Paper 12 (“622 Institution Decision” or “622 Dec. on Inst.”).
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`In related Case IPR2016-00616 (“616 IPR”), Petitioner filed a second
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`Petition (616 IPR, Paper 1, “616 Petition” or “616 Pet.”) requesting an inter
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`partes review of claims 1–10 and 58–65 of the ’511 patent. Patent Owner
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`filed a Preliminary Response to the 616 Petition. 616 IPR, Paper 7
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`(“616 Preliminary Response” or “616 Prelim. Resp.”). Taking into account
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`the arguments presented in Patent Owner’s 616 Preliminary Response, we
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`also determined that the information presented in the 616 Petition
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`established that there was a reasonable likelihood that Petitioner would
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`prevail in challenging claims 1–10 and 58–65 of the ’511 patent under
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`35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted an inter
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`partes review proceeding on August 22, 2016, as to these claims of the
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`2 Unless otherwise indicated, citations to papers and exhibits are made to
`Case IPR2016-00622.
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`2
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`IPR2016-00622
`Patent 7,149,511 B1
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`’511 patent. Paper 153 (“616 Institution Decision” or “616 Dec. on Inst.”).
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`In the 616 Institution Decision, we ordered the consolidation of the 616 IPR
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`with the 622 IPR for purposes of trial. Id. at 30–31.
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`During the course of trial, Patent Owner filed a Patent Owner
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`Response (Paper 28, “PO Resp.”), and Petitioner filed a Reply to the Patent
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`Owner Response (Paper 37, “Pet. Reply”). An oral hearing was held on
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`February 14, 2017, and a transcript of the hearing is included in the record.
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`Paper 46 (“Tr.”).
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`Petitioner proffered a Declaration of Erez Zadok, Ph.D. (Ex. 1004)
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`with the 622 Petition and a Declaration of Nathaniel Polish, Ph.D.
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`(Ex. 1058) with the 616 Petition. Petitioner also proffered a Declaration of
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`Dr. Zadok (Ex. 1064) with its Reply. Patent Owner proffered Declarations
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`of William H. Mangione-Smith, Ph.D. with its Preliminary Responses
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`(Exs. 2001, 2016) and with its Response (Ex. 2022).
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`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
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`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
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`claims 1–10, 19–22, 58–65, and 68–71 of the ’511 patent. For the reasons
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`discussed below, Petitioner has demonstrated by a preponderance of the
`
`evidence that these claims are unpatentable under 35 U.S.C. § 103(a).
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`
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`A.
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`Related Proceedings
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`I. BACKGROUND
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`
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`Both parties identify the following proceedings related to the
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`’511 patent (616 Pet. 1–2; 622 Pet. 6–7; Paper 7, 2):
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`3 The 616 Institution Decision is included in the 622 IPR as Paper 15
`because it includes a consolidation order.
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`3
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`IPR2016-00622
`Patent 7,149,511 B1
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`Rosetta-Wireless Corp. v. Apple Inc., No. 1:15-cv-00799 (N.D. Ill.,
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`filed Jan. 27, 2015);
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`Rosetta-Wireless Corp. v. High Tech Computer Corp., No. 1:15-cv-
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`10603 (N.D. Ill., filed Nov. 24, 2015);
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`Rosetta-Wireless Corp. v. Samsung Elecs. Co., Ltd., No. 1:15-cv-
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`10605 (N.D. Ill., filed Nov. 24, 2015);
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`Rosetta-Wireless Corp. v. LG Electronics Co., No. 1:15-cv-10608
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`(N.D. Ill., filed Nov. 24, 2015); and
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`Rosetta-Wireless Corp. v. Motorola Mobility LLC, No. 1:15-cv-10611
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`(N.D. Ill., filed Nov. 24, 2015).
`
`
`
`B.
`
`The ’511 patent
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`The ’511 patent is directed to “a wireless intelligent personal server
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`that receives data transmitted over a wireless communications channel and
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`automatically processes it so as to maintain a copy of at least one electronic
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`file stored in a source computer.” Ex. 1001, 1:8–12. Figure 1 of the
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`’511 patent is reproduced below.
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`4
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`IPR2016-00622
`Patent 7,149,511 B1
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`
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`Figure 1 depicts wireless communication system 10 having enterprise
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`information technology (IT) system 12 connected to one or more personal
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`computers 14 and centralized enterprise database 16. Id. at 3:62–4:6.
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`Enterprise IT system 12 uses wireless network management system 29 to
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`communicate with first wireless network 20 and second wireless network 22
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`via intermediate network 28, which may be a wide-area network (WAN) or a
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`local-area network (LAN). Id. at 4:34–41.
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`Wireless intelligent personal server (WIPS) 30 receives and stores
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`data wirelessly transmitted over downstream channel 34 by first wireless
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`network 20. Id. at 4:44–46, 5:35–36. WIPS 30 can use the received data to
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`either update one or more of the files stored in its memory or to add a new
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`5
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`IPR2016-00622
`Patent 7,149,511 B1
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`file to its memory. Id. at 5:41–44. WIPS 30 also may transmit signals to
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`second wireless network 22 over upstream channel 26. Id. at 6:16–21.
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`Moreover, WIPS 30 is able to transfer data stored in its memory to and from
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`different types of display devices 32 on an intermittent basis. Id. at 4:48–50.
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`Display device 32, which may be a desktop PC or a personal digital
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`assistant (PDA), interfaces with WIPS 30 to display data stored in WIPS 30.
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`Id. at 4:55–67. This is accomplished by WIPS 30 copying requested data
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`and transmitting it to display device 32. Id. at 9:64–10:8. Applications
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`running on display device 32 also may allow a user to modify data stored in
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`WIPS 30. Id. at 4:55–67; 8:39–41; 10:9–16.
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`The patent application from which the ’511 patent issued was filed on
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`August 31, 2000. Id. at [22].
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`
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`
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`C.
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`Illustrative Claim
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`Claims 1 and 58 of the ’511 patent are independent and have been
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`amended by Ex Parte Reexamination Certificate US 7,149,511 C1, dated
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`Jan. 10, 2012. Ex. 1001, 16–17 (certificate issued from Reexamination
`
`Control No. 90/011,569).4 The remaining claims have not been amended.
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`Claims 2–10 and 19–22 depend directly or indirectly from claim 1, and
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`claims 59–65 and 68–71 depend directly or indirectly from claim 58.
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`Claim 1 is illustrative of the challenged claims and recites:
`
`
`4 The ’511 patent also was the subject of a request for ex parte
`reexamination in Reexamination Control No. 90/011,418, which was
`terminated.
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`6
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`IPR2016-00622
`Patent 7,149,511 B1
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`A wireless
`1.
`comprising:
`
`intelligent personal network
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`server,
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`a radio frequency (RF) receiver for receiving downstream
`data transmitted over a first wireless communications channel;
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`a memory;
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`a central processing unit (CPU);
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`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
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`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.
`
`Ex. 1001, 17 (1:21–2:8). Claim 58 differs from claim 1 only insofar as the
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`word “receiver” in “radio frequency (RF) receiver” is replaced with
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`“transceiver.” Id. at 17 (2:11).
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`
`
`D.
`
`The Prior Art
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`Petitioner relies on the following prior art:
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`Kimura et al., U.S. Patent No. 5,864,853, filed Sept. 14,
`1995, issued Jan. 26, 1999 (Ex. 1035, “Kimura”);
`
`Terence A. Goggin, WINDOWS CE DEVELOPER’S
`HANDBOOK (1999) (Ex. 1030, “Goggin”);
`
`“Proxim Delivering Industry’s Lowest Priced Commercial
`Frequency Hopping Wireless LAN PC Card,” Business Wire
`(Mar. 29, 1999) (Ex. 1015, “Proxim”);
`
`Bodnar, U.S. Patent No. 6,012,063, filed Mar. 4, 1998,
`issued Jan. 4, 2000 (Ex. 1005, “Bodnar”);
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`HEWLETT-PACKARD HP JORNADA 820/820E HANDHELD
`PC USER’S GUIDE (1998) (Ex. 1006, Ex. A, “Jornada”);
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`7
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`IPR2016-00622
`Patent 7,149,511 B1
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`to
`“Earthmate™ GPS Receiver: The Smart Way
`Navigate,” http://www.delorme.com/earthmate/ (as allegedly
`archived by the Internet Archive on Feb. 2, 1999) (Ex. 1012,
`“DeLorme Receiver”), and “Earthmate™ Accessories,”
`http://delorme.com/earthmate/accessories.htm
`(as
`allegedly
`archived by the Internet Archive on May 4, 1999) (Ex. 1039,
`“DeLorme Accessories”) (collectively, “DeLorme”);
`
`Todd Ogasawara, “HP Jornada External Keyboard (Part
`HP F1275A)
`Impressions,” http://to-tech.com/windowsce/
`jornada/keyboard/index.html (as allegedly archived by the
`Internet Archive on May 8, 1999) (Ex. 1013, “Ogasawara”); and
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`HEWLETT-PACKARD HP CAPSHARE 920 PORTABLE E-
`COPIER (1999) (Ex. 1007, “CapShare”).
`
`
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`E.
`
`Instituted Grounds
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`We instituted trial based on the following grounds (616 Dec. on
`
`Inst. 30; 622 Dec. on Inst. 41–42):
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`Reference(s) Basis
`
`Claims
`Challenged
`
`Citation
`
`Kimura
`
`Goggin
`
`Goggin,
`Proxim
`
`Goggin,
`Bodnar
`
`Goggin,
`Proxim,
`Bodnar
`
`Goggin,
`Jornada
`
`35 U.S.C. § 103(a) 1–6, 8–10, 58–63,
`and 65
`
`616 Pet. 13–59
`
`35 U.S.C. § 103(a) 1–10, 19, 58–65,
`and 68
`
`622 Pet. 17–39
`
`35 U.S.C. § 103(a) 1–10, 19, 58–65,
`and 68
`
`622 Pet. 17–39
`
`35 U.S.C. § 103(a) 2 and 59
`
`622 Pet. 39–44
`
`35 U.S.C. § 103(a) 2 and 59
`
`622 Pet. 39–44
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`35 U.S.C. § 103(a) 8 and 9
`
`622 Pet. 44–50
`
`8
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`IPR2016-00622
`Patent 7,149,511 B1
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`Reference(s) Basis
`
`Claims
`Challenged
`
`Citation
`
`35 U.S.C. § 103(a) 8 and 9
`
`622 Pet. 44–50
`
`35 U.S.C. § 103(a) 20 and 69
`
`622 Pet. 50–53
`
`35 U.S.C. § 103(a) 20 and 69
`
`622 Pet. 50–53
`
`35 U.S.C. § 103(a) 21 and 70
`
`622 Pet. 53–55
`
`35 U.S.C. § 103(a) 21 and 70
`
`622 Pet. 53–55
`
`35 U.S.C. § 103(a) 22 and 71
`
`622 Pet. 55–57
`
`35 U.S.C. § 103(a) 22 and 71
`
`622 Pet. 55–57
`
`Goggin,
`Proxim,
`Jornada
`
`Goggin,
`DeLorme
`
`Goggin,
`Proxim,
`DeLorme
`
`Goggin,
`Ogasawara
`
`Goggin,
`Proxim,
`Ogasawara
`
`Goggin,
`CapShare
`
`Goggin,
`Proxim,
`CapShare
`
`
`
`F.
`
`Claim Interpretation
`
`In an inter partes review, we construe claims by applying the broadest
`
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`
`see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`
`Under the broadest reasonable interpretation standard, and absent any
`
`special definitions, claim terms are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. See In re Translogic Tech. Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or
`
`9
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`IPR2016-00622
`Patent 7,149,511 B1
`
`phrases must be set forth “with reasonable clarity, deliberateness, and
`
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`For purposes of this Decision, and based on the entire trial record, we
`
`construe the challenged claims as follows.
`
`
`
`1. Whether the Preambles of Independent Claims 1 and 58 are
`Limiting
`
`In our Decisions on Institution, we determined that the preambles of
`
`independent claims 1 and 58 are limiting based on the use of “personal
`
`network server” in the bodies of claims 1 and 58. 616 Dec. on Inst. 6–7;
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`622 Dec. on Inst. 8–9. The parties do not dispute this determination. See
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`PO Resp. 24–25; Pet. Reply 6 n.7. We do not perceive any reason or
`
`evidence that compels any deviation from this determination. Accordingly,
`
`we adopt our previous analysis for purposes of this Final Written Decision
`
`and maintain our determination that the preambles of these independent
`
`claims are limiting.
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`
`
`2.
`
`“Personal Network Server”
`
`In our Decisions on Institution, we determined that the term “personal
`
`network server” did not require explicit construction. 616 Dec. on Inst. 7–9;
`
`622 Dec. on Inst. 9–10. In its Response, Patent Owner proffers a
`
`construction of “network server” that is slightly different than the one from
`
`its Preliminary Response: “a computer in a network configured to receive
`
`and share data resources with other devices in that network.” PO Resp. 24
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`(citing Ex. 2022 ¶ 57), 26; 616 Prelim. Resp. 23 (proposing construction of
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`“personal network server” as “a device configured to be interposed between
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`a source server and an external display device that provides source server
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`10
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`IPR2016-00622
`Patent 7,149,511 B1
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`data locally to a user.”); 622 Prelim. Resp. 20 (same). Patent Owner
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`additionally contends an ordinarily skilled artisan “would have understood
`
`that a ‘network server’ did not include two computers connected in a direct
`
`point-to-point communications link.” Id. (citing Ex. 2022 ¶ 58). According
`
`to Patent Owner, the Specification of the ’511 patent never uses “network”
`
`to refer to a direct point-to-point communications link; instead, Patent
`
`Owner contends “network” is used in the Specification with reference to
`
`“one of the upstream networks.” Id. at 29–31 (citing Ex. 1001, 6:51–53,
`
`6:55–64, 7:8–13, 8:43–51, Ex. 2022 ¶¶ 68, 80–81). Patent Owner also
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`highlights certain arguments made during prosecution of the ’511 patent in
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`which the inventors purportedly distinguished a prior art reference
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`(Ex. 1038, “Boals”) on the basis that “Boals was not a ‘network server’
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`because it merely received video display data over a direct point-to-point
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`communications link.” PO Resp. 33 (citing Ex. 1002, 355–56; Ex. 2017
`
`¶ 50).
`
`In reply, Petitioner argues that the Specification “actually describe[s]
`
`accessing files on WIPS the same way as accessing files on external devices,
`
`such as hard drives (i.e., via direct point-to-point communications links).”
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`Pet. Reply 9 (citing Ex. 1064 ¶¶ 12–14). Dr. Zadok testifies that
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`“Applicant[s] cited to the specification and argued that this portion of the
`
`specification described how a ‘display device 32 accesses the memory in
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`WIPS 30 as it would an external device, such as an external hard drive or
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`a server on a local area network (LAN).’” Ex. 1064 ¶ 13 (quoting Ex. 1001,
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`6:25–28 and citing Ex. 1002, 206) (emphasis added by Dr. Zadok).
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`Petitioner also argues that none of the dictionaries cited by the parties
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`precludes a network server from merely having a point-to-point
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`11
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`communications link. Pet. Reply 9–10 (citing Ex. 1026, 5; Ex. 2024, 4;
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`Ex. 2025, 4). Petitioner likewise cites its dictionary evidence that “a
`
`‘computer network’ can consist of only two computers.” Id. at 10 (citing
`
`Ex. 1008, 4). Petitioner additionally argues that the Applicants of the
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`’511 patent distinguished Boals based on arguments other than the point-to-
`
`point communications link. Id. at 9–10 (citing Ex. 1002, 353, 355–56).
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`We disagree with Patent Owner’s contention that the recited “network
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`server” cannot have a point-to-point connection. The Specification of the
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`’511 patent states that display device 32 can access WIPS 30 just as it would
`
`with an external device, such as an external hard drive. See Ex. 1001, 6:25–
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`28. Such access is characteristic of a point-to-point connection. We also
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`agree with Petitioner that the Applicants of the ’511 patent distinguished
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`Boals during prosecution “from the WIPS because Boals’ host 101 ‘act[ed]
`
`as a video display driver’ for the display device, rather than as, e.g., an
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`external hard drive.” Pet. Reply 8–9 (citing Ex. 1002, 353, 355–56). This
`
`does not support Patent Owner’s proposed exclusion of point-to-point
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`connections. Finally, we agree with Petitioner that the extrinsic evidence
`
`from dictionaries does not preclude a server from having a point-to-point
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`connection; in fact, a contemporaneous dictionary definition in the record
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`expressly supports the notion of a “network server” having a point-to-point
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`connection with its client. See Ex. 1008, 4 (defining “computer network” as
`
`“a complex consisting of two or more interconnected computers”). Based
`
`on this evidence, we do not agree that the term “network server” precludes a
`
`point-to-point connection.
`
`Regarding the “personal” nature of the network server, Patent Owner
`
`contends we should construe “personal” to mean “configured to provide
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`12
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`IPR2016-00622
`Patent 7,149,511 B1
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`access to a user’s individual data.” PO Resp. 35 (citing Ex. 2022 ¶¶ 82–84).
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`Petitioner argues that construction of “personal” is unnecessary because it
`
`does not factor into our unpatentability determination. Pet. Reply 10. We
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`agree with Petitioner.
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`For these reasons, we determine that no explicit construction of
`
`“personal network server” is required beyond our determination that the
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`term does not exclude a point-to-point connection. See Vivid Techs., Inc. v.
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`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`
`terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy.”).
`
`
`
`3.
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`“Downstream Data”
`
`In our Decisions on Institution, we determined that the term
`
`“‘downstream data’ simply reflects data moving downstream from one place
`
`to another, so the term needs no further elucidation.” 616 Dec. on Inst. 11;
`
`622 Dec. on Inst. 12. We also determined that the source of “downstream
`
`data” and the “external display device” need not be different entities.
`
`616 Dec. on Inst. 12; 622 Dec. on Inst. 13.
`
`Consistent with its Preliminary Response, Patent Owner contends
`
`“downstream data” should be construed to mean “data transmitted from a
`
`source server to the personal network server.” PO Resp. 15 (citing Ex. 2022
`
`¶ 32). Patent Owner argues that the Specification of the ’511 patent “clearly
`
`and consistently uses ‘downstream data’ to refer to data received from the
`
`source server and flowing in one direction within the network: toward the
`
`display device.” Id. at 16. Patent Owner contends that each instance of the
`
`term “‘downstream’ is used to specify the direction of the data flow as being
`
`13
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`IPR2016-00622
`Patent 7,149,511 B1
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`from the source server.” Id. (citing Ex. 2022 ¶ 33). Patent Owner also
`
`highlights the distinction between the use of “downstream” and “upstream”
`
`in the Specification and claims as further supporting its proposed
`
`construction of “downstream data.” Id. at 17–18, 21–22. Patent Owner’s
`
`arguments regarding the application of the words “downstream” and
`
`“upstream” are illustrated in its annotated version of Figure 1, which is
`
`reproduced below.
`
`
`
`Id. at 16–17 (citing Ex. 2022 ¶ 34). In this annotated figure, Patent Owner
`
`has added arrows tying the words “downstream” and “upstream” to
`
`enterprise IT system 12, which Patent Owner calls a “source server,” and
`
`display device 32. Id. at 17 (citing Ex. 2022 ¶ 35).
`
`Patent Owner further references the word “receiving” that precedes
`
`“downstream data” in claims 1 and 58 as indicating that “downstream” must
`
`mean something other than simply “received.” Id. at 21. Patent Owner
`
`14
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`additionally cites testimony from Dr. Mangione-Smith and certain dictionary
`
`definitions as supporting a construction of “downstream” that reflects a flow
`
`of data from a server to an end user. Id. at 23 (citing Ex. 2007, 3; Ex. 2022
`
`¶¶ 45–52; Ex. 2023, 3).
`
`In reply, Petitioner argues that we should not adopt a construction that
`
`reads in an upstream source server. Pet. Reply 2. Petitioner contends a
`
`statement made by the Applicants of the ’511 patent during prosecution
`
`amounts to an express definition of “downstream data” as “data that is
`
`transmitted over a wireless communications channel.” Id. at 2–3 (quoting
`
`Ex. 1002, 356–57). Petitioner also notes that the Applicants distinguished
`
`certain prior art during prosecution because it “failed to teach WIPS files
`
`‘originat[ing]’ from the ‘external display device.’” Id. at 5–6 (quoting
`
`Ex. 1002, 356–57). According to Petitioner, this confirms that
`
`“‘downstream data’ may originate from the display device and not from a
`
`separate ‘source server.’” Id.
`
`“A claim construction that gives meaning to all the terms of the claim
`
`is preferred over one that does not do so.” Merck & Co., Inc. v. Teva
`
`Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). “The preference
`
`for giving meaning to all terms, however, is not an inflexible rule that
`
`supersedes all other principles of claim construction.” SimpleAir, Inc. v.
`
`Sony Ericsson Mobile Commc’ns AB, 820 F.3d 419, 429 (Fed. Cir. 2016).
`
`We are mindful that “it is the claims, not the written description, which
`
`define the scope of the patent right.” Laitram Corp. v. NEC Corp., 163 F.3d
`
`1342, 1347 (Fed. Cir. 1998). In addition, our reviewing court “has
`
`repeatedly cautioned against limiting the claimed invention to preferred
`
`embodiments or specific examples in the specification.” Williamson v.
`
`15
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`Patent 7,149,511 B1
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`Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015) (internal
`
`quotation omitted).
`
`We are reticent to read in a limitation—that “downstream data” must
`
`be transmitted from a “source server”—when claims 1 and 58 do not recite a
`
`source server. Thus, our inclination is not to read a “source server” into the
`
`construction of “downstream data” unless the Specification expressly
`
`requires the same.
`
`Having reviewed the Specification of the ’511 patent in detail, we
`
`agree with Petitioner (see Pet. Reply 4–5) that the embodiment described
`
`with reference to Figure 1 is an “exemplary embodiment.” See Ex. 1001,
`
`3:46–48, 3:62–64. As such, we do not discern that the Applicants intended
`
`the claims to be limited such that “downstream data” must come from a
`
`“source server.” Moreover, the Specification never describes
`
`communications coming from (or going to) enterprise IT system 12 as
`
`occurring via a downstream (or upstream) channel. Rather, the Specification
`
`uses broad language—and not the terms “downstream” or “upstream”—to
`
`describe communications involving enterprise IT system 12:
`
`An intermediate network 28 is connected to first wireless
`network 20 and to second wireless network 22, and enterprise
`IT system 12 uses a wireless network management system 29 to
`communicate with wireless networks 20 and 22, via
`intermediate network 28. Intermediate network 28 may[ ]be
`any wide-area network (WAN) or local-area network (LAN)
`capable of transmitting digital data between enterprise IT
`system 12 and wireless networks 20 and 22. Preferably,
`intermediate network 28 is either the Internet or a private
`corporate network.
`
`Id. at 4:34–43.
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`16
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`Furthermore, the Specification ties the term “downstream data” to the
`
`channel from which it is received. For example, several passages in the
`
`Specification state that the WIPS (or its associated receiver) receives
`
`downstream data over a wireless communications channel. See Ex. 1001,
`
`Abstract, 2:53–55, 2:66–3:2, 3:13–15, 3:24–26, 3:36–38, 9:3–6; see also id.
`
`at 1:7–12 (“[T]his invention relates to a wireless intelligent personal server
`
`that receives data transmitted over a wireless communications channel.”).
`
`This channel, which corresponds to the “first wireless communications
`
`channel” in claims 1 and 58, is illustrated as downstream channel 34 in
`
`Figure 1, and it is associated with first wireless network 20. See id. at 5:35–
`
`36, 6:60–62, Fig. 1. Correspondingly, the WIPS causes a wireless telephone
`
`to transmit upstream data over an upstream channel. See id. at 7:23–28. In
`
`Figure 1, upstream channel 26 is associated with second wireless
`
`network 22. See id. at 4:30–33, 5:51–53, Fig. 1. Thus, the Specification
`
`associates the words “downstream” and “upstream” with a particular channel
`
`and/or network, rather than the ultimate source or destination of any data.
`
`As such, data moving from the downstream channel to the WIPS can
`
`encompass data arising from a source server without necessarily being
`
`limited to it. We defer to the Specification in this regard because claims
`
`must be given their broadest reasonable interpretation consistent with the
`
`Specification. See 37 C.F.R. § 42.100(b).
`
`We also have reviewed the record evidence regarding the prosecution
`
`history. We do not agree with Petitioner’s contention (Pet. Reply 2–3 (citing
`
`Ex. 1002, 356–57)) that the Applicants expressly defined “downstream data”
`
`during prosecution as “data that is transmitted over a wireless
`
`communications channel.” Such a construction of “downstream data” would
`
`17
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`IPR2016-00622
`Patent 7,149,511 B1
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`be entirely redundant of other words in the claim limitation “receiving
`
`downstream data transmitted over a first wireless communications channel.”
`
`Nonetheless, this part of the prosecution history is further evidence that
`
`“downstream data” is not necessarily tied to a source server. It also
`
`evidences the tie between “downstream data” and an associated
`
`communication channel.
`
`Although Patent Owner and Dr. Mangione-Smith put forth certain
`
`extrinsic evidence purportedly showing that “downstream” must be tied to a
`
`source server (see PO Resp. 22–24; Ex. 2022 ¶¶ 45–52), this evidence does
`
`not override the tie in the Specification of the ’511 patent between
`
`“downstream data” and the downstream channel. Indeed, certain of the
`
`extrinsic evidence supports the notion of directionality, such as data coming
`
`from the downstream channel toward the WIPS. See, e.g., Ex. 2007, 3
`
`(“[T]he direction of transmission flow from the source toward the sink
`
`(destination/user).”).
`
`Finally, we consider whether we can give proper meaning to the term
`
`“downstream” without referring to a source server. In light of the
`
`em
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