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.
`
`Case IPR20 16-00622
`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 1010
`IPR Petition for
`U.S. Patent No. 7,149,511
`
`

`
`
`
`EXHIBIT LIST
`
`Ex. 1005
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`
`Ex. 1013
`
`Petitioners’ Exhibits
`Exhibit
`Description
`Ex. 1001
`U.S. Patent No. 7,149,511 to Bachner et al. (“the ’511 Patent”)
`Ex. 1002
`U.S. Patent No. 7,149,511 File History
`U.S. Patent No. 7,149,511 Ex Parte Reexamination
`Ex. 1003
`Declaration of Dr. Erez Zadok In Support of the Petition for Inter
`Ex. 1004
`Partes Review of United States Patent No. 7,149,511
`U.S. Patent No. 6,012,063 to Bodnar (“Bodnar”)
`Declaration of David Lobato and Exhibit A - HP Jornada 820/820e
`Handheld PC User’s Guide (“Jornada”)
`Declaration of David Lobato and Exhibit B - HP CapShare 920
`Portable E-Copier (“CapShare”)
`IEEE100 The Authoritative Dictionary of IEEE Standards Terms,
`7th ed.
`Declaration of Rogelio Jose
`Declaration of Fred Peal
`Declaration of Sharon Lee
`Declaration of Christopher Butler and Exhibit A - “EarthmateTM
`GPS Receiver: The Smart Way to Navigate” & Exhibit D -
`“EarthmateTM Accessories” (“DeLorme”)
`Declaration of Christopher Butler and Exhibit B - “HP Jornada
`External Keyboard (Part HP F1275A) Impressions” to Todd
`Ogasawara (“Ogasawara”)
`Declaration of Christopher Butler and Exhibit C - “1.2.3
`Representing Programs” (“Representing Programs”)
`Certificate of Authenticity by Amy Klenke and “Proxim Delivering
`Industry’s Lowest Priced Commercial Frequency Hopping Wireless
`LAN PC Card,” Business Wire (Mar. 29, 1999) (“Proxim”)
`U.S. Patent No. 6,446,137 to Vasudevan et al. (“Vasudevan”)
`U.S. Patent No. 5,805,804 to Laursen et al. (“Laursen”)
`U.S. Patent No. 6,052,735 to Ulrich et al. (“Ulrich”)
`U.S. Patent No. 5,790,551 to Chan (“Chan”)
`U.S. Patent Pub. 2001/0029178 to Criss et al. (“Criss”)
`U.S. Patent No. 6,311,058 to Wecker et al. (“Wecker”)
`U.S. Patent No. 5,625,673 to Grewe et al. (“Grewe”)
`U.S. Patent No. 6,434,403 to Ausems et al. (“Ausems”)
`U.S. Pub. No. 2004/0204041 to Fillebrown et al. (“Fillebrown”)
`U.S. Pat U.S. Patent No. 6,236,938 to Atkinson et al. ("Atkinson")
`MICROSOFT COMPUTER DICTIONARY 5th Ed (2002)
`U.S. Patent No. 5,297,192 (“Gerszberg”)
`Rosetta's Local Patent Rule 2.2 Initial Infringement Contentions,
`dated January 20, 2016
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`Ex. 1020
`Ex. 1021
`Ex. 1022
`Ex. 1023
`Ex. 1024
`Ex. 1025
`Ex. 1026
`Ex. 1027
`Ex. 1028
`
`ii
`
`

`
`
`
`
`
`Ex. 1029
`Ex. 1030
`
`Ex. 1031
`
`Ex. 1032
`
`Ex. 1033
`Ex. 1034
`Ex. 1035
`Ex. 1036
`Ex. 1037
`Ex. 1038
`
`Declaration of Ingrid Hsieh-Yee
`Windows CE Developer’s Handbook by Terrence A. Goggin
`(“Goggin”)
`Essential Windows CE Application Programming to Robert
`Burdick (“Burdick”)
`Programming Microsoft Windows CE
`(“Boling”)
`U.S. Patent No. 5,978,805 to Carson (“Carson”)
`U.S. Patent No. 5,845,293 to Veghte et al. (“Veghte”)
`U.S. Patent No. 5,864,853 to Kimura et al. (“Kimura”)
`U.S. Patent No. 5,797,089 to Nguyen (“Nguyen”)
`U.S. Patent No. 6,512,919 to Ogasawara (“Pat. Ogasawara”)
`U.S. Patent No. 6,108,727 to Boals et al. (“Boals”)
`
`to Douglas Boling
`
`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`Ex. 2008
`
`at
`
`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.
`(available
`Member
`benefits
`https://www.oclc.org/membership/benefits.en.html)
`“Libraries Hope for Web 2.0 Shake-up with New Site,” Washington
`Internet Daily, Dec. 15, 2006.
`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
`
`Ex. 2009
`
`Ex. 2010
`Ex. 2011
`
`Ex. 2012
`
`Ex. 2013
`
`iii
`
`
`
`
`
`

`
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`
`
`TABLE OF CONTENTS
`
`Introduction .................................................................................................. 1
`
`Authorization for Payment of Fees............................................................... 1
`
`Summary of the Argument ........................................................................... 2
`
`Background ................................................................................................... 7
`
`A. History of Rosetta-Wireless ......................................................................... 7
`
`B.
`
`C.
`
`State of the Art .............................................................................................. 9
`
`The ’511 Patent Invention ..........................................................................11
`
`V.
`
`Argument ....................................................................................................15
`
`A. Legal Standards ..........................................................................................15
`
`B. Claim Construction .....................................................................................17
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`downstream data ......................................................................................18
`
`personal network server ...........................................................................20
`
`intelligent .................................................................................................24
`
`source electronic file ................................................................................26
`
`electronic file ...........................................................................................27
`
`card reader ................................................................................................28
`
`C.
`
`Petitioners Have Not Proven that Goggin Is Prior Art Under
`
`§ 102(b) .......................................................................................................28
`
`1. Copyright Registration of the Goggin Reference Alone Does
`
`Not Establish that It Was Disseminated to the Public on
`
`that Date ...........................................................................................29
`
`2. No Library Record Shows that the Goggin Reference Was
`
`Added to Its Collection Prior to the Critical Date ...........................30
`
`3.
`
`Indexing of the Goggin Reference Alone Does Not Show Public
`
`Accessibility .....................................................................................31
`
`D. The Petition Should Be Denied Under 35 U.S.C. § 325(d)
`
`Because Goggin Is “Substantially the Same” as Art Already
`
`Considered ..................................................................................................32
`
`iv
`
`

`
`
`
`1. Overview of Nokia Communicator and Reexamination .........................33
`
`2. Overview of Goggin ................................................................................35
`
`3. Goggin Discloses the Same Capabilities Taught by the
`
`Communicator and PC Suite References .........................................36
`
`E.
`
`The Petition Does Not Demonstrate a Reasonable Likelihood of
`
`Prevailing on Any Proposed Ground ..........................................................40
`
`1. Goggin Does Not Disclose a “personal network server” ........................40
`
`2. Goggin Does Not Disclose that “at least one electronic file
`
`remains resident on said personal network server” .........................45
`
`3. Goggin Does Not Disclose “receiving downstream data” .......................46
`
`4. Goggin Does Not Disclose an “intelligent” Personal Network
`
`Server ...............................................................................................51
`
`5. Secondary Considerations Show that the Challenged Claims
`
`Would Not Have Been Obvious ......................................................52
`
`VI.
`
`Conclusion ..................................................................................................54
`
`
`
`v
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) .................................................................... 20, 47
`
`Bruckelmyer v. Ground Heaters, Inc.,
`445 F.3d 1374 (Fed. Cir. 2006) .........................................................................29
`
`Catalina Mktg. Int’l v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002) ...........................................................................25
`
`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988) .........................................................................28
`
`Crocs, Inc. v. Int’l Trade Comm’n,
`598 F.3d 1294 (Fed. Cir. 2010) .........................................................................17
`
`Dome Patent L.P. v. Lee,
`799 F.3d 1372 (Fed. Cir. 2015) .........................................................................52
`
`Eaton Corp. v. Rockwell Int’l Corp.,
`323 F.3d 1332 (Fed. Cir. 2003) .........................................................................25
`
`IdeaVillage Products, Corp. v. Choon’s Design, LLC,
`Case IPR2015-01143 (PTAB Nov. 9, 2015) .....................................................29
`
`In re Abbott Diabetes Care, Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) .........................................................................17
`
`In re Cornyn,
`890 F.2d 1158 (Fed. Cir. 1989) .........................................................................28
`
`In re Geisler,
`116 F.3d 1465 (Fed. Cir. 1997) .........................................................................51
`
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) ...........................................................................28
`
`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) .........................................................................29
`
`In re Ochiai,
`71 F.3d 1565 (Fed. Cir. 1995) ...........................................................................16
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) .........................................................................17
`
`Institut Pasteur v. Focarino,
`738 F.3d 1337 (Fed. Cir. 2013) .........................................................................17
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .........................................................................16
`
`vi
`
`

`
`
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ...........................................................................................16
`
`Merck & Co. v. Teva Pharms. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .................................................................. 20, 47
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .........................................................................18
`
`Nike, Inc. v. Adidas AG,
`812 F.3d 1326 (Fed. Cir. 2016) .........................................................................16
`
`Nora Lighting, Inc. v. Juno Mfg., LLC,
`Case IPR2015-00601 (PTAB Aug. 12, 2015) ...................................................40
`
`Omron Oilfield & Marine, Inc. v. MD/Totco of Varco, L.P.,
`Case IPR2013-00265 (PTAB Oct. 31, 2013) ....................................................52
`
`Palo Alto Networks, Inc. v. Finjan, Inc.,
`Case IPR2015-01999 (PTAB Mar. 29, 2016) ...................................................39
`
`Plantronics, Inc. v. Aliph, Inc.,
`724 F.3d 1343 (Fed. Cir. 2013) .........................................................................52
`
`Source Search Techs., LLC v. LendingTree, LLC,
`588 F.3d 1063 (Fed. Cir. 2009) .........................................................................16
`
`Trane U.S., Inc. v. TAS Energy Inc.,
`Case IPR2015-01665 (PTAB Feb. 4, 2016) ......................................................29
`
`TriVascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .........................................................................16
`
`Truswal Sys. Corp. v. Hydro-Air Eng’g Inc.,
`813 F.2d 1207 (Fed. Cir. 1987) .........................................................................16
`
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) .........................................................................27
`
`Statutes
`35 U.S.C. § 102 ....................................................................................................1, 28
`
`35 U.S.C. § 103 ........................................................................................................15
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 ........................................................................................................15
`
`35 U.S.C. § 325 ........................................................................................................33
`
`37 C.F.R. § 42.100 ...................................................................................................17
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.20 .....................................................................................................28
`
`37 C.F.R. § 42.22 .................................................................................................5, 41
`
`vii
`
`

`
`
`
`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 24, 2016 mailing date of the Notice
`
`granting the Petition a filing date.
`
`Petitioners have taken a scattershot approach to challenging Rosetta’s patent
`
`that is riddled with conclusory analysis. Each of the alleged twelve grounds of
`
`unpatentability is dependent on “Windows CE Developer’s Handbook” by Terence
`
`A. Goggin (“Goggin”). Petitioners, however, do not contend that the Goggin
`
`reference discloses any element or functionality beyond that already disclosed in the
`
`prior art references of record such as the Nokia Communicator and PC Suite
`
`literature. Finding a new reference with the same disclosures already considered by
`
`the Patent Office is not sufficient to warrant the expenditure of resources for yet
`
`another review. Further, Petitioners have not established that Goggin itself is prior
`
`art under 35 U.S.C. § 102(b). Finally, Goggin is distinguishable from the claimed
`
`invention in many respects, as described below.
`
`A trial should not be instituted in this matter because the asserted grounds do
`
`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 IPR2016-00622 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 present twelve different grounds of unpatentability under § 103
`
`involving seven purported prior art references. Despite the volume of their brief,
`
`which spans 18,000 words and 58 pages (18 of which are taken up by single-spaced
`
`4
`
`

`
`
`
`claim charts), Petitioners provide little substantive analysis of the cited material. In
`
`large part, the petition consists of nothing more than quotations and chain-citations
`
`to the alleged prior art. Merely throwing together references that happen to use
`
`terminology similar to the claim language is insufficient to establish a reasonable
`
`likelihood of success, and falls well short of Petitioners’ obligation to explain how
`
`the purported prior art discloses the elements of the claims at issue. See 37 C.F.R.
`
`§ 42.22 (requiring that a petition include “[a] full statement of the reasons for the
`
`relief requested, including a detailed explanation of the significance of the evidence”
`
`(emphasis added)).
`
`Beyond that fatal deficiency, Petitioners have not and cannot demonstrate a
`
`reasonable likelihood that any of the challenged claims are obvious as alleged.2 First,
`
`Petitioners fail to establish that Goggin, their primary reference for all twelve
`
`grounds of obviousness, is in fact a § 102(b) reference. Petitioners’ declaration
`
`shows only that Goggin was publicly available by September 17, 1999, which is
`
`after the August 31, 1999 critical date.
`
`Second, Goggin provides no new disclosure beyond what the PTO has already
`
`considered. Goggin’s disclosures are—at best—a subset of the material disclosed in
`
`the Nokia Communicator references that the PTO considered in its ex parte
`
`
`
`2 In this preliminary response, Rosetta presents only some of its arguments
`
`distinguishing the claimed invention over Goggin and the other cited references.
`
`Should the petition be granted, Rosetta expressly reserves the right to present
`
`additional arguments distinguishing Goggin and supporting patentability.
`
`5
`
`

`
`
`
`Reexamination of the ‘511 Patent. Those references describe a Nokia Communicator
`
`device that is very similar in functionality to the CE devices Goggin describes, but
`
`include considerable additional detail that is not found in Goggin. In particular, the
`
`Nokia references considered during the Reexamination disclose specific computer
`
`software applications that perform file transfers between the device and a desktop
`
`PC, while Goggin is merely a developers’ handbook that describes the API toolkits
`
`available to software developers for the CE platform. To the extent that Goggin is
`
`even prior art, it does not provide an enabling disclosure as to the software
`
`applications which would have to be developed to implement file transfers. The
`
`significant reliance on the knowledge of one of skill in the art exceeds the boundaries
`
`of a proper obviousness analysis.
`
`Finally, Goggin and the supporting references do not render the challenged
`
`claims obvious for at least four reasons. First, Goggin does not disclose the claimed
`
`“personal network server” that is properly construed as “a device configured to be
`
`interposed between a source server and a display device that provides source server
`
`data locally to a user.” Rather, Goggin discloses a two-node communication system,
`
`and thus Goggin’s CE device cannot be interposed between a source server and a
`
`display device. Second, Goggin does not disclose the claimed “downstream data.”
`
`Petitioners’ argument that a two-node system can render the claimed invention
`
`obvious is plausible only if “downstream” is deprived of any meaning and
`
`“downstream data” is considered “any data.” Third, Goggin does not disclose an
`
`“intelligent” personal network server. Goggin merely discloses functions and
`
`capabilities that a software developer could potentially use to build a software
`
`6
`
`

`
`
`
`application for a CE device, but Goggin fails to sufficiently disclose the requisite
`
`“intelligent” software. Finally, secondary considerations weigh heavily in support of
`
`the non-obviousness of the claimed invention. In particular, Rosetta was awarded a
`
`large federal grant to develop its innovative invention, which also received
`
`contemporaneous industry media praise.
`
`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
`
`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
`
`7
`
`

`
`
`
`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
`
`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
`
`
`
`3 http://www.nist.gov/public_affairs/general_information.cfm
`
`8
`
`

`
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`by improved cellular speeds. It was not until 2005, when Intel Research built a proof-
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`of-concept of Rosetta’s invention into a Motorola E680 cellphone, that the industry
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`embraced the solution invented by Rosetta. See Ex. 2004 (describing the Intel
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`Personal Server concept). Today, virtually every “smartphone” provides a WIPS
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`allowing users to operate remotely from the office while still maintaining access to
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`their up-to-date data and providing an interface with external display devices such
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`as smart watches or automotive audio systems with displays.
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`B. State of the Art
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`By the relevant 1999–2000 timeframe, the use of personal computers and
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`enterprise consumer networks was prevalent, with users increasingly dependent on
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`access to personal information stored in digital form. Accessing that information on
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`a mobile device, however, remained difficult. Most cellular telephones offered little,
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`if any, wireless data capability at that time. Instead, users seeking mobile access to
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`personal data relied primarily on personal digital assistants (“PDAs”). Those devices
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`were synchronized with the user’s workstation or server locally, usually over a wired
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`connection like a docking station. The user could then unplug the PDA and carry it
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`with him, but any subsequently updated data would not be available until the device
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`was reconnected and re-synced.
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`To the extent that mobile devices included any wireless access to remote data
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`via wireless connections, that capability was hampered by slow speeds and
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`intermittent availability. If a user wanted to access remotely stored data, like an
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`email, he would request that the remote server transmit the desired data to his device
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`over the wireless connection. That “pull” configuration was inherently limited. If a
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`wireless connection was not available, then the user could not access the remote data
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`at all. However, even if a connection was available, the user would need to wait for
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`the file to be transmitted over the slow channel. Remote wireless data access on
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`existing devices (e.g., the Nokia Communicator) was therefore more theoretical than
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`practically useful.
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`During prosecution and reexamination, the PTO considered other two-node
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`systems similar to the CE system at issue here. See, e.g., Ex. 1020 at Fig. 1
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`(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. 1038 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 68
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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 168,
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`171 (Notice of Intent to Issue Ex Parte Reexamination Certificate) (acknowledging
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`that the patent “describes the overall device, including data transfer between the
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`server 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) are loaded on the device at an
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`earlier time, when it has wireles