UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Apple Inc., Samsung Electronics Co. Ltd., and Samsung Electronics America, Inc.,
`Petitioners,
`
`v.
`
`Rosetta-Wireless Corporation,
`Patent Owner.
`
`Case IPR20 16-00616
`Patent 7,149,511
`
`PATENT OWNER'S PRELIMINARY RESPONSE UNDER 37
`C.F.R. § 42.107 TO PETITION FOR INTER PARTES REVIEW
`OF UNITED STATES PATENT NO. 7,149,511
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`LG Electronics, Inc. et al.
`EXHIBIT 1009
`IPR Petition for
`U.S. Patent No. 7,149,511
`
`

`
`
`
`EXHIBIT LIST
`
`Petitioners’ Exhibits
`Exhibit
`Description
`Ex. AP-1001 U.S. Patent No. 7,149,511 (challenged patent)
`Ex. AP-1002 Declaration of Dr. Nathaniel Polish
`Ex. AP-1003 Reexamination History of U.S. Patent No. 7,149,511
`Ex. AP-1004 U.S. Patent No. 5,864,853 to Kimura et al.
`Ex. AP-1005
`IEEE 100, THE AUTHORITATIVE DICTIONARY OF IEEE
`STANDARDS TERMS, 7th Ed. (2000) (excerpts)
`Ex. AP-1006 MICROSOFT COMPUTER DICTIONARY 5th Ed (2002)
`(excerpts)
`Ex. AP-1007 Patent Owner Rosetta’s Initial Infringement Contentions served in
`Co-Pending Litigation (excerpts)
`Ex. AP-1008 U.S. 5,978,805 to Carson
`Ex. AP-1009 U.S. 5,845,293 to Veghte et al.
`Ex. AP-1010 U.S. 5,797,089 to Nguyen
`Ex. AP-1011 U.S. 6,222,726 to Cha
`Ex. AP-1012 Graham, THE FACTS ON FILE, DICTIONARY OF
`TELECOMMUNICATIONS (1983) (excerpts)
`
`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`Ex. 2008
`Ex. 2009
`Ex. 2010
`Ex. 2011
`
`Patent Owner’s Exhibits
`Exhibit
`Description
`Ex. 2001
`Declaration of William H. Mangione-Smith, Ph.D.
`Ex. 2002
`ATP Proposal Preparation Kit
`Ex. 2003
`Email from David Nairn to Ed Bachner
`Ex. 2004
`“Moving Toward a Future of Ubiquitous Computing,”
`Technology@Intel Magazine
`“TECHNOLOGY; Verizon Plans Fast Internet for Cellphones,”
`New York Times, Jan. 9, 2004.
`“Data Over Cellular: A Look at GPRS,” Communication Systems
`Design, April 2000.
`Telecom & Networking Glossary, 1999.
`U.S. Patent Pub. 2001/0029178 to Criss et al.
`U.S. Patent No. 6,108,727 to Boals et al.
`Email from Sharon Shaffer to Keith Campbell
`ATP Project Brief: Wireless Replication of Enterprise Data for
`Instant Access by Mobile Workers
`“Wireless biz aims to link road warriors to office,” Crain’s Chicago
`Business, Jan. 14, 2002.
`Email chain between Sergio Fogel and Ed Bachner
`U.S. Patent No. 7,149,511 File History
`
`
`Ex. 2012
`
`Ex. 2013
`Ex. 2014
`
`
`
`ii
`
`

`
`
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`Introduction .......................................................................................................... 1
`
`II. Authorization for Payment of Fees ...................................................................... 1
`
`III. Summary of the Argument .................................................................................. 2
`
`IV. Background .......................................................................................................... 9
`
`A. History of Rosetta-Wireless ............................................................................. 9
`
`B. State of the Art ................................................................................................11
`
`C. The ’511 Patent Invention ..............................................................................14
`
`V. Argument ...........................................................................................................18
`
`A. Legal Standards ..............................................................................................18
`
`B. Claim Construction .........................................................................................20
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`downstream data ......................................................................................20
`
`personal network server ...........................................................................23
`
`intelligent .................................................................................................27
`
`source electronic file ................................................................................29
`
`electronic file ...........................................................................................30
`
`C. Overview of Kimura .......................................................................................31
`
`D. The Petition Does Not Demonstrate a Reasonable Likelihood of
`
`Prevailing on Proposed Ground 1: Obviousness Under § 103 by
`
`Kimura in View of a POSITA ....................................................................33
`
`1. The Two-node Kimura System Does Not Disclose a “personal
`
`network server” ................................................................................33
`
`2. The Two-node Kimura System Does Not Disclose Receiving
`
`“downstream data” ...........................................................................35
`
`3. The Two-node Kimura System Does Not Disclose Both an
`
`“electronic file” and a “source electronic file” ................................39
`
`4. The Two-node Kimura System Teaches Away from the
`
`Patented WIPS System ....................................................................41
`
`iii
`
`

`
`
`
`5. The Two-node Kimura System Does Not Disclose an
`5.
`The Two—node Kimura System Does Not Disclose an
`
`“intelligent” Personal Network Server ............................................44
`“intelligent” Personal Network Server .......................................... ..44
`
`6. Secondary Considerations Show that the Challenged Claims
`6.
`Secondary Considerations Show that the Challenged Claims
`
`Would Not Have Been Obvious ......................................................45
`Would Not Have Been Obvious .................................................... ..45
`
`VI. Conclusion .........................................................................................................47
`VI. Conclusion ....................................................................................................... ..47
`
`
`
`iv
`iv
`
`

`
`TABLE OF AUTHORITIES
`
`
`
`
`
`Cases
`Bicon, Inc. v. Straumann Co.
` 441 F.3d 945 (Fed. Cir. 2006) ..........................................................................23
`
`Catalina Mktg. Int’l v. Coolsavings.com, Inc.
` 289 F.3d 801 (Fed. Cir. 2002) ..........................................................................28
`
`Crocs, Inc. v. Int’l Trade Comm’n
` 598 F.3d 1294 (Fed. Cir. 2010) ........................................................................19
`
`Dome Patent L.P. v. Lee
` 799 F.3d 1372 (Fed. Cir. 2015) ........................................................................46
`
`Eaton Corp. v. Rockwell Int’l Corp.
` 323 F.3d 1332 (Fed. Cir. 2003) ........................................................................28
`
`In re Abbott Diabetes Care, Inc.
` 696 F.3d 1142 (Fed. Cir. 2012) ........................................................................20
`
`In re Ochiai
` 71 F.3d 1565 (Fed. Cir. 1995) ..........................................................................19
`
`In re Suitco Surface, Inc.
` 603 F.3d 1255 (Fed. Cir. 2010) ........................................................................20
`
`Institut Pasteur v. Focarino
` 738 F.3d 1337 (Fed. Cir. 2013) ........................................................................19
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.
` 688 F.3d 1342 (Fed. Cir. 2012) ........................................................................19
`
`KSR Int’l Co. v. Teleflex, Inc.
` 550 U.S. 398 (2007) ..........................................................................................19
`
`Merck & Co. v. Teva Pharms. USA, Inc.
` 395 F.3d 1364 (Fed. Cir. 2005) ........................................................................23
`
`Microsoft Corp. v. Proxyconn, Inc.
` 789 F.3d 1292 (Fed. Cir. 2015) ........................................................................21
`
`Nike, Inc. v. Adidas AG
` 812 F.3d 1326 (Fed. Cir. 2016) ........................................................................19
`
`Omron Oilfield & Marine, Inc. v. MD/Totco of Varco, L.P.
` Case IPR2013-00265, slip op. at 16 (PTAB Oct. 31, 2013) ............................46
`
`v
`
`

`
`
`
`Plantronics, Inc. v. Aliph, Inc.
` 724 F.3d 1343 (Fed. Cir. 2013) ........................................................................46
`
`Source Search Techs., LLC v. LendingTree, LLC
` 588 F.3d 1063 (Fed. Cir. 2009) ........................................................................19
`
`TriVascular, Inc. v. Samuels
` 812 F.3d 1056 (Fed. Cir. 2016) ........................................................................19
`
`Truswal Sys. Corp. v. Hydro-Air Eng’g Inc.
` 813 F.2d 1207 (Fed. Cir. 1987) ........................................................................19
`
`Verizon Servs. Corp. v. Vonage Holdings Corp.
` 503 F.3d 1295 (Fed. Cir. 2007) ........................................................................30
`
`Statutes
`35 U.S.C. § 103 ........................................................................................................18
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ...................................................................................................18
`
`Rules
`37 C.F.R. § 42.100(b) ..............................................................................................20
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`vi
`
`

`
`
`
`I. Introduction
`
`Patent Owner Rosetta-Wireless Corporation (“Rosetta”) hereby respectfully
`
`submits this Preliminary Response to the Petition seeking Inter Partes review in this
`
`matter. This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it is
`
`being filed within three months of the February 25, 2016 mailing date of the Notice
`
`granting the Petition a filing date.
`
`The claimed “wireless intelligent personal network server” is a personal
`
`network device that acts as an intermediate server such that it receives data
`
`wirelessly from a network server and stores that data in order to provide a mobile
`
`device with remote local access to data stored on the network server. Petitioners
`
`allege a single ground of unpatentability based on U.S. Patent No. 5,864,853
`
`(“Kimura”). In essence, Kimura discloses a wireless hard drive (akin to a USB drive
`
`with a short-range wireless protocol), which is completely different and unrelated to
`
`the purpose of Rosetta’s invention. To craft an invalidity theory based on Kimura,
`
`Petitioners oversimplify the claimed invention, ignore key claim limitations, and
`
`twist Kimura’s disclosure into nonsensical configurations that are internally
`
`inconsistent and counter to the purpose of the invention.
`
`A trial should not be instituted in this matter because the asserted ground does
`
`not give rise to a reasonable likelihood that Petitioners will prevail with respect to
`
`any challenged claim of U.S. Patent No. 7,149,511 (“the ’511 Patent”).
`
`II. Authorization for Payment of Fees
`
`The Board is authorized to charge any fees incurred by the Patent Owner in
`
`this Case IPR2016-00616 to Deposit Account No. 504592.
`
`1
`
`

`
`
`
`III. Summary of the Argument
`
`By the late 1990s and early 2000s, the workplace environment had become
`
`increasingly mobile. Workers had become accustomed to accessing large files stored
`
`on enterprise servers, and found themselves needing to access those files on mobile
`
`devices such as PDAs while outside of the office. But such remote access was
`
`problematic. Wireless connections were slow and often unavailable, leaving users
`
`unable to access server files in real time. Even when connected, latency and
`
`interruption made remote access impractical. Portable devices in common use, like
`
`PDAs, suffered from significant constraints on memory size, and data stored on them
`
`was typically updated only when connected physically or in close proximity to the
`
`office network.
`
`In response, the Rosetta team created a new type of mobile device that was
`
`different in its fundamental concept from those in use at the time. Led by former
`
`Motorola engineers Edward Bachner III and John Major (who had also served as
`
`Executive Vice President of Qualcomm, and would later serve as CEO of Novatel
`
`Wireless and Chairman of the Board of Broadcom), the Rosetta team invented the
`
`“wireless intelligent personal network server” (“WIPS”), a small wireless device that
`
`remains with the mobile user and is interposed between the source server and a third
`
`“external display device.” The claimed WIPS is a personal network device that acts
`
`as an intermediate server, receiving data wirelessly from a source server and storing
`
`that data locally to provide applications executing on a mobile device with remote
`
`2
`
`

`
`
`
`access to that data. Claim 1 of the ’511 Patent1 is illustrative of both the components
`
`of the claimed WIPS and its arrangement within the overall WIPS-based
`
`communication system:
`
`1. A wireless intelligent personal network server, comprising:
`
`a radio frequency (RF) receiver for receiving downstream data
`
`transmitted over a first wireless communications channel;
`
`a memory;
`
`a central processing unit (CPU);
`
`a set of embedded machine language instructions within said personal
`
`network server, said set of embedded machine language
`
`instructions being executable by said CPU for processing said
`
`downstream data to provide at least one electronic file in said
`
`memory; and
`
`a first interface for allowing an application on an external display
`
`device to pick and open said at least one electronic file while said
`
`at least one electronic file remains resident on said personal
`
`network server,
`
`wherein said personal network server is hand-portable.
`
`(emphases added). Claim 1 sets forth a specific connection between the WIPS and
`
`other nodes within the communication system, thereby defining the flow of data
`
`from the “office” to the remote worker. In particular, the WIPS includes a receiver
`
`“for receiving downstream data” (i.e., data from an upstream source server is sent to
`
`the WIPS) via a wireless channel. That data is then stored on the WIPS for
`
`subsequent access by an external display device such as a PDA via an interface that
`
`
`
`1 The claim is presented as amended during reexamination.
`
`3
`
`

`
`
`
`provides a communication path between the WIPS and the external display device.
`
`Figure 1, annotated below, illustrates the claimed configuration:
`
`Ex. 2001 ¶ 17. In sum, the claimed invention describes a device (labeled “2” above)
`
`having two communication paths to two other nodes (the source server—labeled “1”
`
`above—and the external display device—labeled “3” above), such that the WIPS
`
`device is configured to operate within a three-node system.
`
`Petitioners allege a single ground of unpatentability based on U.S. Patent No.
`
`5,864,853
`
`(“Kimura”). Kimura describes a workplace having stationary
`
`workstations (e.g., desktop PCs), wherein a user was spending “considerable efforts
`
`4
`
`

`
`
`
`in copying data and maintaining a consistency among the copied data . . . .” Ex. AP-
`
`1004 at 2:28–30. As a solution to the described problem, Kimura proposed a portable
`
`hard drive on which a user would maintain his files that he could connect (or
`
`“mount”) to various stationary workstations to access his files. Kimura does not
`
`disclose or render obvious the invention of the ’511 Patent for at least six reasons,
`
`each summarized below.2
`
`First, as discussed herein, the proper construction for a “personal network
`
`server” in the context of the specification is “a device configured to be interposed
`
`between a source server and an external display device that provides source server
`
`data locally to a user.” Kimura does not disclose a personal network server under
`
`this construction. As Petitioners themselves acknowledge, Kimura discloses only a
`
`two-node system: “The [Kimura] system has two components—a portable personal
`
`data device . . . and a separate stationary computer . . . .” Pet. at 13. The portable
`
`personal data device (“PPDD”)—which Petitioners contend is Kimura’s “personal
`
`network server”—cannot be interposed between a source server and a display device
`
`unless one takes the view that the “separate stationary computer” constitutes both
`
`the “source server” and the “display device.” But in that illogical proposed
`
`arrangement, there would be no reason to have a personal network server, as the user
`
`
`
`2 In this preliminary response, Rosetta presents only some of its arguments
`
`distinguishing the claimed invention over Kimura. Should the petition be granted,
`
`Rosetta expressly reserves the right to present additional arguments distinguishing
`
`Kimura and supporting patentability.
`
`5
`
`

`
`
`
`is already viewing his files that are stored on the “source server” on the “display
`
`device,” as shown in the figure below:
`
`In other words, the user of the Kimura system is never operating remotely from the
`
`source server, and the display device is always physically next to and plugged
`
`directly into what Petitioners attempt to cast as the “source server.” This entirely
`
`obviates the point of a personal network server that would allow a user to access the
`
`data on a source server from a display device when the user is remote from the source
`
`server. For this reason alone, the Petition should be denied.
`
`Second, all challenged claims require a receiver “for receiving downstream
`
`data transmitted over a first wireless communications channel.” Kimura’s PPDD
`
`also does not disclose this limitation. Petitioners propose a configuration that
`
`eliminates an important distinction between “downstream data” (i.e., data moving
`
`6
`
`

`
`
`
`toward the user) and “upstream data” (i.e., data moving away from the user).
`
`Petitioners contend that “aforementioned downstream data” is “data received from
`
`the stationary computer.” Pet. at 25. Such flow of data is upstream (i.e., away from
`
`the user of the stationary computer), not downstream (i.e., towards the user of
`
`stationary computer). This is yet another result of Petitioners attempting to read a
`
`two-node prior art system onto the claimed device configured to operate within a
`
`three-node system in their attempt to invalidate the claims. Petitioners’ attempt to
`
`rewrite the claims is improper, and the petition should be denied for this reason
`
`alone.
`
`Third, the challenged claims also recite both an “electronic file” (e.g., Claims
`
`1, 58) and a “source electronic file” (e.g., Claims 2 and 59). Properly construed, a
`
`“source electronic file” is a “file stored on an upstream source server” and an
`
`“electronic file” is a “copy of a source electronic file.” Petitioners assert that
`
`“Kimura discloses storing source files on the PPDD.” Pet. at 41 (emphasis added).
`
`Again, Kimura’s PPDD can only be viewed as a source server, not a personal
`
`network server—the source version of the file is stored on the PPDD, which can then
`
`be connected to another device. As a result, Kimura does not teach storing “at least
`
`one electronic file,” i.e., a copy of a source electronic file on the PPDD. Petitioners
`
`point to the back-up file system located on the stationary computer of Kimura,
`
`suggesting that “Kimura discloses such functionality in the reverse direction.” Pet.
`
`at 42. Petitioners then propose that it would be obvious to reverse the direction. Id.
`
`That strained argument misses the mark. The distinction is not one of mere
`
`directionality, but of the fundamental concept of the PPDD and its function as the
`
`7
`
`

`
`
`
`source server within a two-node system. Kimura does not disclose the claimed
`
`personal network server that receives data from the remote upstream server and
`
`provides it to the user’s local display device (the essential architecture underlying
`
`the Rosetta patent), but merely a portable device that itself serves as the server that
`
`retains the “source electronic file.”
`
`Fourth, the two-node system of Kimura teaches away from the claimed WIPS.
`
`The Kimura device acts as the source server that maintains the user’s source
`
`electronic files—in contrast to the configuration described in the ’511 Patent, in
`
`which those source files that are maintained on a remote server, a copy of which is
`
`provided to the personal network server to allow for local user access. In Kimura, a
`
`user is never working remotely from the source server because she carries the source
`
`server with her when using the alleged “display device,” i.e., the stationary
`
`computer. See, e.g., Pet. at 13–14 (“Such file access occurs by ‘mounting’ the
`
`memory system of Kimura’s portable device to the stationary computer . . . .”).
`
`Further, even accepting Petitioners’ proposed configuration in which the stationary
`
`computer of Kimura operates as both the source server and the display device,
`
`Kimura teaches away. In that scenario, the user is operating directly on the source
`
`server to access his files. Such a configuration eliminates one of the primary benefits
`
`of the ’511 Patent invention—namely, that a user can operate remotely from a source
`
`server while still maintaining access to the source server’s data. The purpose of the
`
`claimed invention is to allow a user to work remotely from the source server, and it
`
`does so by creating copies of the source files on the personal network server and
`
`8
`
`

`
`
`
`keeping them updated while the user operates remotely. Petitioners’ proposed
`
`configuration eliminates this advantage entirely.
`
`Fifth, Kimura is simply a data storage device, and does not satisfy the
`
`“intelligent” requirement of the “wireless intelligent personal network server”
`
`limitation. In the disclosed Kimura system, a user stores files on the PPDD by
`
`actively selecting the files to be stored on the mobile device. In contrast, the claimed
`
`“intelligent” personal network server selectively provides data from the source server
`
`without a request from the user, a feature critical to the benefit of allowing real-time
`
`local access to updated files stored on the remote server.
`
`Finally, secondary considerations support the non-obviousness of the claimed
`
`invention. Rosetta was awarded a large federal grant to develop its innovative
`
`product and contemporaneous articles praise Rosetta’s patented invention. The
`
`WIPS solution provides a hardware-enabled solution (e.g., automatic redundancy)
`
`to address problems that the industry believed could only be solved by expensive
`
`infrastructure solutions.
`
`Accordingly, Rosetta respectfully requests that the Petition be denied.
`
`IV. Background
`
`A. History of Rosetta-Wireless
`
`The named inventors include Mr. Bachner, an engineer with more than 35
`
`years of experience pioneering and designing wireless solutions. He worked as a
`
`systems engineer for Motorola, was deeply involved in the infrastructure side of
`
`cellular systems at Andrew Corporation, and served as Vice President of
`
`Engineering at The Antenna Company. Co-inventor John Major, who holds graduate
`
`9
`
`

`
`
`
`degrees in engineering, business and law, served as the Executive Vice President of
`
`Qualcomm and the Chairman of the Board of Broadcom, two leading wireless chip
`
`manufacturers, and as the CEO of Novatel Wireless. In the mid-1990s, the two
`
`former co-workers started discussing issues with cellular communications, intending
`
`to develop accessories to overcome the short battery life and other problems that
`
`plagued cellular phones of that era.
`
`Their focus soon shifted to address the growing demand for remote data
`
`access. Specifically, they recognized the need for reliable mobile access to files
`
`maintained on remote corporate servers. Drawing from their extensive experience in
`
`the wireless industry, the inventors observed that the prevalent solutions assumed
`
`unrealistic future improvements in the speed and capacity of cellular infrastructure,
`
`and sought out a different approach to the problem. During the late 1990s the
`
`inventors focused on a solution that would work despite the inherent limitations of
`
`the cellular system, the culmination of which was the August 31, 2000 filing of U.S.
`
`Patent Application No. 09/652,734, which eventually issued as the ‘511 Patent. In
`
`November of 2000, assignee Rosetta-Wireless Corporation (“Rosetta”) was created
`
`to commercialize the invention of the ’511 Patent—the Wireless Intelligent Personal
`
`Server (“WIPS”). Mr. Bachner assumed the role of CEO for Rosetta, a role that he
`
`maintains to this day.
`
`In 2002, Rosetta won a highly competitive $2 million grant to develop a
`
`working WIPS prototype from the Advanced Technology Program of the National
`
`Institute of Standards and Technology. NIST is a federal agency within the
`
`Department of Commerce designed “to promote U.S. innovation and industrial
`
`10
`
`

`
`
`
`competitiveness,”3 and awards such grants only for technologies considered
`
`“revolutionary” and “path-breaking” that “have a strong potential to generate
`
`substantial benefits to the nation.” Ex. 2002 at 10, 24. Motorola supported Rosetta’s
`
`grant application, hailing Rosetta as a “leading-edge program[ ],” with a “very
`
`innovative approach.” Ex. 2003.
`
`Though Rosetta attempted to find partners to help bring its product to market,
`
`it was ultimately unsuccessful in its commercialization efforts, facing the resistance
`
`of an industry wedded to the idea that remote data access problems would be solved
`
`by improved cellular speeds. It was not until 2005, when Intel Research built a proof-
`
`of-concept of Rosetta’s invention into a Motorola E680 cellphone, that the industry
`
`embraced the solution invented by Rosetta. See Ex. 2004 (describing the Intel
`
`Personal Server concept). Today, virtually every “smartphone” provides a WIPS
`
`allowing users to operate remotely from the office while still maintaining access to
`
`their up-to-date data and providing an interface with external display devices such
`
`as smart watches or automotive audio systems with displays.
`
`B. State of the Art
`
`By the relevant 1999–2000 timeframe, the use of personal computers and
`
`enterprise consumer networks was prevalent, with users increasingly dependent on
`
`access to personal information stored in digital form. Accessing that information on
`
`a mobile device, however, remained difficult. Most cellular telephones offered little,
`
`if any, wireless data capability at that time. Instead, users seeking mobile access to
`
`
`
`3 http://www.nist.gov/public_affairs/general_information.cfm
`
`11
`
`

`
`
`
`personal data relied primarily on personal digital assistants (“PDAs”). Those devices
`
`were synchronized with the user’s workstation or server locally, usually over a wired
`
`connection like a docking station. The user could then unplug the PDA and carry it
`
`with him, but any subsequently updated data would not be available until the device
`
`was reconnected and re-synced.
`
`To the extent that mobile devices included any wireless access to remote data
`
`via wireless connections, that capability was hampered by slow speeds and
`
`intermittent availability. If a user wanted to access remotely stored data, like an
`
`email, he would request that the remote server transmit the desired data to his device
`
`over the wireless connection. That “pull” configuration was inherently limited. If a
`
`wireless connection was not available, then the user could not access the remote data
`
`at all. However, even if a connection was available, the user would need to wait for
`
`the file to be transmitted over the slow channel. Remote wireless data access on
`
`existing devices (e.g., the Nokia Communicator) was therefore more theoretical than
`
`practically useful.
`
`During prosecution and reexamination, the PTO considered other two-node
`
`systems similar to the Kimura system at issue here. See, e.g., Ex. 2008 at Fig. 1
`
`(illustrating communication paths between a host and mobile terminal); id. ¶ 0011
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`(describing a two-node system for updating files on a mobile device); Ex. 2009 at
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`Fig. 2 (illustrating a two-node system whereby a Host 101 communicates with a
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`Wireless Interface Device 100); id. at 6:42–50 (describing the two-node
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`communication path for sending data from wireless device to host); Ex. 1003 at 115
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`(considering a two-node system involving a wireless Nokia device and a stationary
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`computer). The PTO recognized that the claimed WIPS system is different than the
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`typical two-node systems employed at the relevant time. See, e.g., Ex. 1003 at 6, 9
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`(Notice of Intent to Issue Ex Parte Reexamination Certificate) (acknowledging that
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`the patent “describes the overall device, including data transfer between the server
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`and the external display device and the intermediate network.”).
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`For many years, however, the mobile industry adhered to this same basic
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`design, assuming that new cellular infrastructure and protocols would eventually
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`allow sufficient connection speed to overcome those limitations. See, e.g., Ex. 2005
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`(describing Verizon’s $1 billion investment in its advanced data network). Those
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`assumptions would prove overly optimistic. Improving the speed and availability of
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`wireless data transmission capacity required expensive physical infrastructure
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`deployment and time-consuming software development, which was hampered by
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`disagreement over standardization. See, e.g., Ex. 2006 at 3 (describing how
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`“regulatory bodies have been struggling to gain consensus on the 3G system for
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`several years”). Increasing demand also delayed realization of improved wireless
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`bandwidth.
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`The Rosetta team understood those challenges from the outset. With radio
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`engineering expertise and
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`real-world experience
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`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. Mr. Bachner, for example, after his 20 years at Motorola
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`and 5 years at Andrew Corporation architecting mission-critical wireless systems
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`(e.g., first responder systems), had an informed view that the cellular systems were
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`many years from providing useful data reliability. Rosetta therefore focused on
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`development of a different type of device, one which would enhance remote data
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`access but not depend on the immediate availability of a wireless link sufficiently
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`fast to transmit files on demand. The result of those efforts was the WIPS claimed
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`in Rosetta’s ’511 Patent.
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`C. The ’511 Patent Invention
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`The ’511 Patent, filed on August 31, 2000, describes a novel device for
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`providing low-latency local access to a user’s personal files (e.g., email, contacts,
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`and documents) that are stored on a remote source server (e.g., corporate network
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`server), regardless of the user’s real-time connection to the source server. The WIPS
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`solution was a new type of device designed to work within the real-world constraints
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`on mobile data access. Rather than waiting for a user to request that an updated email
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`be sent to him, a copy of the email (or other files) is loaded on the device at an earlier
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`time, when it has wireless network access. For example, any new email or other
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`updated file would be sent from the remote source server to the WIPS, without an
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`active request from the user. If the signal is unavailable, the WIPS simply maintains
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`the data previously downloaded from the remote computer until the new data can be
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`downloaded and saved on the WIPS. The WIPS—a small hand-portable device that
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`can be carried in the user’s pocket or bag—then acts as a locally and always-
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`available repository of the user’s critical personal data, i.e., a “personal server.” The
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`WIPS thus stands ready to provide access to the downloaded and updated files to an
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`external PDA or other “display device” via an interface.
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`The WIPS includes a wireless radio for receiving data from the source server
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`and an interface for communicating with external display devices. See Ex. AP-1001
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`at 2:52–61 (describing the principal features of the WIPS); see also id. at Fig. 2 (RF
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`receiver 120 and Display Device Interface 130). The wireless radio allows the WIPS
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`to receive downstream data (i.e., data from the source server) containing updated
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`inform