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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`APPLE INC. and LG ELECTRONICS, INC.,1
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`________________
`
`Case IPR2018-00361
`Patent 6,216,158 B1
`
`________________
`
`
`
`
`PETITIONERS’ CONSOLIDATED REPLY TO
`PATENT OWNER’S RESPONSE
`
`
`
`1 In IPR2018-01503, LG Electronics, Inc. filed a Petition and Motion for Joinder,
`which was granted, and therefore has been joined as a petitioner in this proceeding.
`
`

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`Petitioners’ Reply
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`IPR2018-00361
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`TABLE OF CONTENTS
`INTRODUCTION ................................................................................................ 1
`
`I.
`
`II. CLAIM CONSTRUCTION.................................................................................. 2
`
`A. “palm sized computer” ................................................................................. 2
`
`B. Means-plus-function terms ........................................................................... 2
`
`III. CLAIMS 1-2, 6-9, 12, 14-15, AND 20 ARE INVALID OVER JINI-QS IN
`VIEW OF ARNOLD AND MCCANDLESS ............................................................ 3
`
`A. Jini-QS is Prior Art to the ’158 Patent.......................................................... 3
`
`1. Jini-QS was publicly available before the earliest alleged
`priority date of the ’158 Patent ...................................................................... 3
`
`2. Patent Owner Fails to Make a Swear-Behind Argument ........................ 4
`
`3. Jini-QS is prior art for all that it teaches ................................................. 7
`
`4. Implementation details of Jini were publicly available before
`the filing of the ’158 Patent ........................................................................... 8
`
` The ’158 Patent is predicated upon pre-existing public
`knowledge of Jini ........................................................................................... 8
`
` Sun publicly released implementation details of Jini prior to the
`’158 Patent ................................................................................................... 10
`
`B. The Jini challenge discloses every element of the challenged claims ....... 12
`
`1. Jini-QS discloses “accessing a description of the service from a
`directory of services, the description of the service including at
`least a reference to program code for controlling the service”
`(claim 1) ....................................................................................................... 12
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`2. Jini-QS discloses “downloading the program code” (claim 1)............. 14
`
`3. Jini-QS discloses “the palm sized computer executing … the
`program code” (claim 1) ............................................................................. 15
`
`4. Jini-QS, Arnold, and McCandless render obvious “wherein the
`service controls an application that cannot be executed on the palm
`sized computer” (claim 1) ............................................................................ 16
`
`IV. CLAIMS 1-2, 6-9, 12, AND 14-15 ARE INVALID OVER RIGGINS IN
`VIEW OF DEVARAKONDA .................................................................................18
`
`A. Riggins discloses “accessing a description of the service from a
`directory of services, the description of the service including at least a
`reference to program code for controlling the service” (claim 1) ............. 18
`
`B. Riggins and Devarakonda render obvious “wherein the service controls
`an application that cannot be executed on the palm sized computer”
`(claim 1) ...................................................................................................... 20
`
`C. A POSITA would have been motivated to combine Riggins and
`Devarakonda ............................................................................................... 23
`
`V. CONCLUSION ..................................................................................................27
`
`
`
`
`
`iii
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Antor Media Corp.,
`689 F.3d 1282 (Fed. Cir. 2012) .......................................................................... 17
`Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
`796 F.2d 443 (Fed. Cir. 1986) ............................................................................ 19
`Beckman Instruments, Inc. v. LKB Produkter AB,
`892 F.2d 1547 (Fed. Cir. 1989) ...................................................................... 7, 17
`In re Keller,
`642 F.2d 413 (CCPA 1981) ................................................................................ 21
`In re Merck & Co., Inc.,
`800 F.2d 1091 (Fed. Cir. 1986) .......................................................................... 21
`Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp.,
`424 F.3d 1347 (Fed. Cir. 2005) ............................................................................ 7
`Superguide Corp. v. DirecTV Enterprises, Inc.,
`358 F.3d 870 (Fed. Cir. 2004) ............................................................................ 20
`Symbol Techs., Inc. v. Opticon, Inc.,
`935 F.2d 1569 (Fed. Cir. 1991) ............................................................................ 7
`Vivid Techs., Inc. v. Am. Sci. & Eng., Inc.,
`200 F.3d 795 (Fed. Cir. 1999) .............................................................................. 2
`Statutes
`35 U.S.C. § 102(a) ..................................................................................................... 4
`47 C.F.R. § 42.51(b)(1)(iii) ........................................................................................ 5
`
`iv
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`Petitioners’ Reply
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`I.
`
`INTRODUCTION
`The Petition and supporting evidence demonstrate that claims 1-2, 6-9, 12,
`
`14-15, and 20 of the ’158 Patent are unpatentable over the combination of Jini-QS,
`
`Arnold, and McCandless and also over the combination of Riggins and
`
`Devarakonda. In its Response, Patent Owner attempts to avoid the evidence in the
`
`record with arguments that are either unsupported by the record or legally
`
`deficient.
`
`For example, with respect to the Jini-based challenge, Patent Owner alleges
`
`that the Jini-QS article is not prior art because the ’158 Patent has an earlier
`
`priority date. But Patent Owner fails to provide any supporting evidence for this
`
`claim. Patent Owner also contends that Jini-QS is allegedly not enabled, but it
`
`ignores the law: references in a § 103 combination are prior art for all they teach.
`
`And indeed, Jini-QS teaches the very thing sought to be protected by the ’158
`
`Patent—using a PalmPilot with Jini—and nothing in Patent Owner’s Response
`
`undermines that fact.
`
`Moreover, Patents Owner’s arguments with respect to Riggins and
`
`Devarakonda similarly fail to overcome the actual teachings of the references. For
`
`example, Patent Owner argues that a POSITA would not have been motivated to
`
`utilize a web browser on Devarakonda’s PDA because doing so would have been
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`“disastrous.” This argument is fatally flawed because Devarakonda’s PDA already
`
`includes a web browser, as noted in the original Petition.
`
`For these reasons and the reasons discussed below, the Board’s finding of
`
`obviousness in the Institution Decision should be confirmed.
`
`II. CLAIM CONSTRUCTION
`“palm sized computer”
`A.
`As set forth in the Petition, the specification of the ’158 Patent explains that
`
`a personal digital assistant (PDA) and a 3Com Palm Platform™ computer are
`
`examples of palm sized computers. Petition, pp. 8-9 (citing APPL-1001, 1:13-21).
`
`It is sufficient to construe “palm sized computer” in terms of these examples
`
`because the cited prior art discloses precisely the same devices—thus eliminating
`
`the need to “fully define” the term’s scope, as argued by Patent Owner. See Vivid
`
`Techs., Inc. v. Am. Sci. & Eng., Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`B. Means-plus-function terms
`The Petition sets forth a POSITA’s understanding of the function and
`
`corresponding structure of the means-plus-function terms in claim 20. Patent
`
`Owner’s Response proposes broader structure for each term:
`
`Term
`
`“means for accessing a
`description of a service” /
`
`Petitioners’ Structure
`
`a palm-sized computer
`executing the Jini
`middleware from Sun
`
`Patent Owner’s
`Structure
`middleware, and
`equivalents thereof
`
`2
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`

`

`Petitioners’ Reply
`
`“means for downloading
`the program code”
`“means for executing at
`least a portion of the
`program code”
`
`“means for sending
`control commands to the
`service in response to the
`means for executing”
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`a CPU service, and
`equivalents thereof
`
`a control protocol, and
`equivalents thereof
`
`Microsystems, and
`equivalents thereof
`a palm-sized computer
`executing a Java Virtual
`Machine, and equivalents
`thereof
`a palm-sized computer
`executing a control
`protocol capable of
`issuing control
`commands or Java’s
`Remote Method
`Invocation (RMI)
`protocol, and equivalents
`thereof
`
`
`Petitioners note that (i) Patent Owner’s arguments in the Response do not
`
`rely upon any of its constructions, and (ii) Patent Owner’s proposed constructions
`
`are broader than Petitioners’ for each of the above claim terms. Accordingly,
`
`regardless of which construction is applied, the portions of the prior art cited in the
`
`Petition meet the above claim terms.
`
`III. CLAIMS 1-2, 6-9, 12, 14-15, AND 20 ARE INVALID OVER JINI-QS IN
`VIEW OF ARNOLD AND MCCANDLESS
`Jini-QS is Prior Art to the ’158 Patent
`A.
`Jini-QS was publicly available before the earliest alleged
`1.
`priority date of the ’158 Patent
`
`As established in the Petition, Jini-QS was publicly accessible by at least
`
`3
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`December 14, 1998 at the University of Wisconsin-Madison Libraries. Petition, p.
`
`14 (citing APPL-1026, ¶¶ 24-26). Jini-QS thus predates the earliest alleged priority
`
`date of the ’158 Patent: January 25, 1999 (its filing date).
`
`Patent Owner does not allege an earlier priority date in the Response and
`
`does not dispute the public accessibility of Jini-QS in 1998. Instead, Patent Owner
`
`concedes that Jini-QS and related Jini-references2 were available “circa late-1998”
`
`and predate the ’158 Patent filing date by “months.” POR, p. 12.
`
`Thus, based on the evidence in the record, Jini-QS qualifies as prior art to
`
`the ’158 Patent under at least 35 U.S.C. § 102(a).
`
`2.
`
`Patent Owner Fails to Make a Swear-Behind Argument
`
`Rather than attempting to establish an earlier priority date by relying on
`
`affirmative evidence of conception and reduction to practice, Patent Owner claims
`
`that some unspecified discovery in the related district court litigation with Apple
`
`establishes that Jini-QS is not prior art. POR, pp. 12-13. This apparent swear-
`
`behind attempt fails for the simple reason that Patent Owner does not cite to—or
`
`even attempt to cite to—any evidence to support its allegation. Cf. id. Instead,
`
`Patent Owner makes only vague references to an inventor deposition and discovery
`
`
`
`2 Citing APPL-1010, APPL-1012, APPL-1013, and APPL-1018.
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`from an unspecified third-party.3 Without evidence or even an alleged earlier
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`priority date, Patent Owner’s attempted swear-behind fails on its face.
`
`To the extent Patent Owner implies that Apple solely possesses the alleged
`
`discovery evidence and is under some duty to produce it in this proceeding,
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`Petitioners vehemently disagree. Any potential discovery documents alluded to in
`
`the Response were previously served on Patent Owner’s litigation counsel in
`
`August and September of 2018 as part of normal district court proceedings.
`
`Moreover, even if Patent Owner had not been previously served, routine discovery
`
`would not apply here because there is no indication that the purported discovery
`
`information is inconsistent with the statements in the Petition regarding the public
`
`availability of Jini-QS. Petition, p. 14 (noting only that Jini-QS was published
`
`before the filing date of the ’158 Patent); see 47 C.F.R. § 42.51(b)(1)(iii) (“Unless
`
`previously served, a party must serve relevant information that is inconsistent with
`
`a position advanced by the party[.]”). Accordingly, because (i) Petitioners have
`
`taken no position regarding conception or reduction to practice and (ii) Patent
`
`Owner is in possession of any discovery documents alluded to in its Response, it is
`
`
`
`3 Contrary to Patent Owner’s assertion, Apple never deposed an inventor of the
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`’158 Patent in the parallel litigation.
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`5
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`Patent Owner’s burden—not Petitioners’—to produce them in this proceeding.4
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`Additionally, with respect to Patent Owner’s implication that Petitioner is
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`somehow impeding the introduction of confidential evidence by not signing a
`
`protective order, Petitioner willingly offered to sign the standard PTAB protective
`
`order before Patent Owner filed its Response, despite Patent Owner inquiring only
`
`one day before its Response was due. See APPL-1031 (Oct. 17, 2018 emails
`
`between opposing counsel).
`
`In sum, Patent Owner’s contention that Jini-QS does not qualify as prior art
`
`fails for the simple reason that Patent Owner chose not to introduce any evidence
`
`to support its position. Any attempt to pass the blame to Petitioners is
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`disingenuous.
`
`
`4 Patent Owner’s baseless speculation that “Apple discontinued pursuing such
`
`discovery once it discovered that the inventive team’s work behind the ’158 Patent
`
`predates any public information related to the operation of Jini” is simply wrong.
`
`POR, p. 12. Discovery was still open in the district court case when a stay was sua
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`sponte entered on September 14, 2018. See, e.g., APPL-1030.
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`3.
`
`Jini-QS is prior art for all that it teaches
`
`Patent Owner argues that the Jini-QS reference is not enabling as to features
`
`of the ’158 Patent because it “is not even a technical article, but rather describes to
`
`a business-person at a high-level something Sun Microsystems was working on.”
`
`POR, p. 14. Patent Owner relies on Dr. Easttom’s testimony that a “skilled person
`
`would not have understood [Jini-QS] as teaching how to implement [challenged
`
`claims] of the ’158 patent.” POR, p. 14 (citing EX2004, ¶ 25).
`
`Patent Owner’s argument is moot, however, because “[e]ven if a reference
`
`discloses an inoperative device, it is prior art for all that it teaches” when
`
`determining obviousness. Beckman Instruments, Inc. v. LKB Produkter AB, 892
`
`F.2d 1547, 1551 (Fed. Cir. 1989); Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d
`
`1569, 1578 (Fed. Cir. 1991) (“[A] non-enabling reference may qualify as prior art
`
`for the purpose of determining obviousness under § 103.”). Similarly, Patent
`
`Owner’s reliance on the statement in Jini-QS that Jini would not be released until
`
`“in the second half of [1999]” is similarly unavailing because the law does not
`
`require that the prior art have been actually “made or performed” to satisfy the
`
`enablement requirement. Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424
`
`F.3d 1347, 1355 (Fed. Cir. 2005). Accordingly, Jini-QS is prior art for what it
`
`teaches, as set forth in the Petition.
`
`7
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`Implementation details of Jini were publicly available
`4.
`before the filing of the ’158 Patent
`
`Patent Owner alleges that “[s]imply put, there is no teachings [sic] in the
`
`public domain as of the filing date of the ’158 Patent that described how one might
`
`implement Jini to arrive at the claimed invention in the ’158 Patent.” POR, p. 15.
`
`This unsupported assertion is contradicted by the ’158 Patent itself, Patent Owner’s
`
`own expert, technical documents released by Sun Microsystems, and the testimony
`
`of the former Sun employee responsible for marketing Jini.
`
`The ’158 Patent is predicated upon pre-existing public
`
`knowledge of Jini
`
`Patent Owner’s assertion that there were no implementation details
`
`regarding Jini in the public domain prior to the ’158 Patent is belied by the fact that
`
`the ’158 Patent is predicated upon that very information being public. There is no
`
`dispute that embodiments described in the ’158 Patent rely upon prior-existing Jini
`
`technology from Sun Microsystems. See POR, p. 14 (“In some embodiments, this
`
`middleware includes Jini technology from Sun Microsystems.”); APPL-1001,
`
`1:49-51; APPL-1032 (Easttom Dep. Tr.), 79:13-18. Indeed, the ’158 Patent
`
`specification makes clear that the Jini technology was “developed by Sun” prior to
`
`the ’158 Patent and touts its benefits. APPL-1001, 2:45-64 (“Jini™ is a technology
`
`developed by Sun Microsystems which addresses the problem of computing and
`
`8
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`Petitioners’ Reply
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`network complexity. … Jini acts as middleware to access network resources, as it
`
`lets devices locate services and download software for those services.”).
`
`Importantly, while aspects of Jini are relied upon for certain functionality
`
`throughout the ’158 specification and claims, the ’158 Patent does not provide
`
`details about how Jini implements that functionality. See APPL-1001, 5:9-6:51,
`
`Fig. 3. That is, implicit in the description of the ’158 Patent is the assumption that a
`
`POSITA already knows how to implement the aspects of Jini relied upon in the
`
`specification. For example, in the Jini-specific embodiment of Fig. 3, prior
`
`knowledge of the Jini protocols is required for implementation:
`
` “9. Optionally register the control device 200 with the directory service
`via a registration protocol, such as the Jini Discovery Protocol.” Id., 6:4-
`8.
`
` “The middleware protocol manager 216 supports Jini discovery, lookup
`and download protocols.” Id., 5:16-17.
`
`Moreover, claim 3 expressly recites the use of the “Jini discovery protocol” and
`
`“Jini Lookup protocol”—without the ’158 Patent providing any corresponding
`
`written description (Jini source code, specifications, etc.). In that regard, Dr.
`
`Easttom confirmed during his deposition that the ’158 Patent does not include the
`
`specific details of these Jini protocols but noted that a POSITA, prior to the filing
`
`of the ’158 Patent, would either know the details or they could “go look up that
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`discovery protocol standard[] and would certainly be able to understand it once
`
`they read it.” APPL-1032, 80:18-82:7, 85:16-86, 86:13-22.
`
`Accordingly, because the ’158 Patent itself relies upon prior public
`
`knowledge of Jini implementation details, Patent Owner cannot not now argue—in
`
`order to avoid Jini-based prior art—that such details were not publicly available.
`
`And, as shown below, such details were in fact publicly available.
`
`Sun publicly released implementation details of Jini
`
`prior to the ’158 Patent
`
`Contrary to Patent Owner’s contentions, the record is clear that Sun publicly
`
`released Jini source code, specifications, white papers, and other technical
`
`documents prior to January 25, 1999 and that POSITAs were implementing Jini
`
`systems with that information.
`
`First, the Jini-QS article itself expressly taught a POSITA in December 1998
`
`that “you can certainly run Jini services on existing Java-based products now,” and
`
`that “[m]ore than 30 companies have already licensed the Jini source code.”
`
`APPL-1005, p. 5 (emphasis added).
`
`Second, the public availability of Jini implementation information in 1998 is
`
`confirmed by the district court testimony of Theresa Lanowitz, Sun Microsystems’
`
`Marketing Strategist for Jini from December 1997 to July 1999. APPL-1033, ¶ 4.
`
`Based on her personal knowledge, she testified in the parallel litigation that: “In
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`July 1998, Sun publicly announced Jini technology. Over the six months that
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`followed, Sun publicly released specification documents, source code, and white
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`papers that provided more information about the design and potential uses of Jini.”
`
`Id., ¶ 9; see also APPL-1034, p. 1 (August 1998 Javaworld article stating that on
`
`July 20 “Sun released the specification for Jini to the public, giving everyone the
`
`chance to delve into distributed programming”). Sun made these technical
`
`documents freely available for public download on its website at
`
`http://java.sun.com/products/jini. See APPL-1035 (Lanowitz Deposition), 64:3-5,
`
`143:9-144:22, 145:2-21; see also APPL-1036, pp. 1-3, 12-14 (Internet Archive
`
`captures of Sun’s Jini webpages on January 17, 1999, showing links to Jini “White
`
`Papers”, “Specs,” and “JiniTM System Software Development Complete (DC)
`
`code”); APPL-1034, p. 4 (JavaWorld article informing of the availability of Jini
`
`specifications for download from Sun’s website at
`
`http://java.sun.com/products/jini/specs/index.html).
`
`The very purpose of these Jini documents was to teach Java developers
`
`“how Jini was written, how Jini worked, and how they would be able to bring Jini
`
`into their ecosystem of product.” APPL-1035, 118:5-21. For example, the Jini
`
`specifications were made public in 1998 for the explicit purpose of allowing
`
`partner companies to “start building Jini for their products,” and the 1998 white
`
`paper titled Jini Architecture Overview (APPL-1010) “showed how Jini actually
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`worked.” Id., 64:11-19, 119:6-122:4, 121:8-20, 225:12-13. Moreover, the evidence
`
`reflects that individual programmers—not just companies—were downloading and
`
`implementing Jini-based software programs in 1998. APPL-1036, pp. 1-11
`
`(archived messages from a Jini listserv discussing downloading the Jini source
`
`code and successfully running various Jini components).
`
`Accordingly, Patent Owner’s claim that there was no “public Jini
`
`documentation to actually review concerning an alleged implementation of Jini” is
`
`plainly wrong in view of the evidence in the record.
`
`The Jini challenge discloses every element of the challenged
`B.
`claims
`Jini-QS discloses “accessing a description of the service from
`1.
`a directory of services, the description of the service including at
`least a reference to program code for controlling the service”
`(claim 1)
`
`As set forth in the Petition, Jini-QS teaches a directory of services called
`
`“Lookup” that keeps track of all available services on the Jini network. APPL-
`
`1005, p. 29 (left column). As part of its “network bulletin board” role, Lookup
`
`stores descriptive information about each service, including “pointers to various
`
`services on the network as well as code for other services.” Id. Jini-QS further
`
`teaches that a user accesses this descriptive service information in Lookup by
`
`“request[ing] services that are available, and icons appear on his screen.” Id. (main
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`figure). In other words, these icons are part of the descriptive service information
`
`accessed by the user; they enable a user to visually differentiate between the
`
`plurality of services and select a desired service.5
`
`For example, when the user “selects the print option,” the Lookup server
`
`“instantly sends proxy code back to the device,” which allows a user to issue a
`
`“printing instruction” via the code. APPL-1005, p. 29; see also id. (“He selects the
`
`projector icon on his screen, which displays the user interface he needs to use that
`
`service.”). If the icons were not visually descriptive, the user would be unable to
`
`select the print service from among the other services. And, as noted above, the
`
`proxy code associated with a selected service is referenced by “pointers” stored in
`
`Lookup as part of the descriptive information for each available service. Id. (left
`
`column). Accordingly, Patent Owner’s arguments that “‘icons’ are not a
`
`‘description of the service’” and that Lookup’s descriptive service information
`
`
`
`5 Icons descriptive of services were common in the relevant art. See, e.g., APPL-
`
`1038, Fig. 8, 7:19-21 (“An icon is visually representative of the type of service
`
`when the icon itself brings to mind the service without the need for a text
`
`description.”).
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`does not contain “a reference to program code for controlling the service” ignore
`
`the actual teachings of Jini-QS.
`
`In any event, regardless of whether an “icon” constitutes a “description,” the
`
`claim language of this limitation (“the description of the service including at least
`
`a reference to program code”) requires only that the description consist of “a
`
`reference to program code” and nothing more. Jini-QS teaches that Lookup
`
`contains pointers (references) to downloadable proxy code for controlling a
`
`service. APPL-1005, p. 29 (left column).
`
`Thus, as established in the Petition, Jini-QS discloses this limitation and the
`
`similar limitations in claims 8 and 20. Petition, pp. 27-28, 40-42, 45-46.
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`2.
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`Jini-QS discloses “downloading the program code” (claim 1)
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`Jini-QS explains that when a “laptop or other device is plugged into the
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`network” and a user selects a service via Lookup, “[t]he server instantly sends
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`proxy code back to the device.” APPL-1005, p. 29 (main figure). Jini-QS expressly
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`illustrates that one of these “other device[s]” is a “PalmPilot.” APPL-1005, p. 29
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`(top; main figure). Patent Owner’s unsupported argument that the “device” to
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`which the proxy code is downloaded is the laptop—and only the laptop—blatantly
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`ignores the point of the illustration, which is that Jini works with many types of
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`devices, including a PalmPilot. Id.
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`Petitioners’ Reply
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`IPR2018-00361
` U.S. Patent No. 6,216,158
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`Patent Owner further argues, citing its expert, that Jini’s “proxy code cannot
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`be considered the program code” because “a POSA would understand that proxy
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`code is what one uses instead of program code.” POR, p. 20 (citing EX2001, ¶¶ 51-
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`53). The cited portions of Dr. Easttom’s declaration rely upon cites to various
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`present-day websites that are not part of the record and are irrelevant to this
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`proceeding. EX2001, ¶¶ 51-53. Patent Owner’s argument fails because Jini-QS
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`teaches that the proxy code plays the same role as the claimed “program code”: the
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`proxy code is downloaded to the PalmPilot (“downloading the program code to the
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`palm sized computer”) and then controls, for example, the print service by issuing a
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`“printing instruction” (“program code for controlling the service”). APPL-1005, p.
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`29 (main figure).
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`Thus, as established in the Petition, Jini-QS discloses this limitation and the
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`similar limitations in claims 8 and 20. Petition, pp. 28-29, 42-43, 46.
`
`Jini-QS discloses “the palm sized computer executing … the
`3.
`program code” (claim 1)
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`As set forth in the Petition, Jini-QS discloses this limitation because it
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`teaches that the PalmPilot executes the downloaded proxy code, for example, to
`
`implement a “graphical user interface” and send an “instruction” to a service, as
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`discussed above. APPL-1005, p. 29 (“The proxy essentially tells the client how to
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`use the device. For example, it may include a graphical user interface[.]”).
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`15
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`Petitioners’ Reply
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`IPR2018-00361
` U.S. Patent No. 6,216,158
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`Dependent claim 6 of the ’158 Patent expressly recites that implementing a
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`graphical user interface falls within the scope of the recited “executing” in
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`independent claim 1. APPL-1001, Claim 6 (“6. The method of claim 1 wherein the
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`program code includes code to implement a graphical user interface on the palm
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`sized computer.”).
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`Patent Owner’s argument in the Response that focuses on the “JVM w/ Jini
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`code” on each Jini device ignores the above teachings of executing the downloaded
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`“proxy code”—the teachings actually relied upon the Petition.
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`Thus, as established in the Petition, Jini-QS discloses this limitation and the
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`similar limitations in claims 8 and 20. Petition, pp. 28-29, 42-43, 46.
`
`Jini-QS, Arnold, and McCandless render obvious “wherein
`4.
`the service controls an application that cannot be executed on the
`palm sized computer” (claim 1)
`
`As set forth in the Petition, (i) Jini-QS teaches that devices with “very low
`
`memory,” such as PDAs, can control remote services with Jini (APPL-1005, p.
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`29), (ii) Arnold teaches that a controllable network service can be an “application”
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`(APPL-1006, Fig. 3, 7:34-35), and (iii) McCandless illustrates that POSITAs, at
`
`least by 1997, were expressly contemplating that PDAs such as the PalmPilot
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`could control “applications that are too compute- or space intensive to run directly
`
`on your PDA” (APPL-1007, p. 7). Petition, pp. 31-33. Dr. Houh concluded, based
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`on the evidence in the record, that a POSITA would have found it obvious for a
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`Petitioners’ Reply
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`IPR2018-00361
` U.S. Patent No. 6,216,158
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`PalmPilot in the Jini platform to control an application that was too resource
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`intensive for the PalmPilot to execute itself. Id., pp. 22-24 (citing APPL-1003, ¶¶
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`82-85).
`
`In its Response, Patent Owner ignores these combined teachings of Jini-QS,
`
`Arnold, and McCandless and instead narrowly focuses on the allegedly forward-
`
`looking language in McCandless. This approach is legally deficient as
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`McCandless’s disclosures are prior art regardless of their tense. See In re Antor
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`Media Corp., 689 F.3d 1282, 1289-90 (Fed. Cir. 2012) (“the mere use of forward-
`
`looking language (such as terms like ‘should’) does not show one way or another
`
`whether a [POSITA] would have to engage in undue experimentation to perform
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`the claimed invention.”); see also Beckman Instruments, Inc., 892 F.2d at 1551.
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`Patent Owner also points to the allegedly forward-looking language in
`
`McCandless and Jini-QS to dispute that a POSITA would have combined the
`
`references as set forth in the Petition. POR, 25-26. Not only is this argument
`
`legally flawed, as noted above, but Patent Owner also offers no actual evidence
`
`from its expert or otherwise contrary to Dr. Houh’s well-supported opinion that a
`
`POSITA would have found the combination predictable and advantageous. See
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`APPL-1003, ¶¶ 78-88.
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`Patent Owner further argues that a POSITA would not have combined Jini-
`
`QS, Arnold, and McCandless because Jini-QS “lacks the details necessary for
`
`17
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`Petitioners’ Reply
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`IPR2018-00361
` U.S. Patent No. 6,216,158
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`implementation” and that there were no other Jini references available. As noted
`
`above, however, (i) Jini-QS is prior art for what it teaches, and (ii) the evidence
`
`shows that technical implementation documents for Jini were in fact available to
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`POSITAs prior to the filing of the ’158 Patent. See supra Sections III.A.3-4.
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`With respect to Arnold and its teachings of RMI-based commands in the
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`combination, Patent Owner oddly asserts that the “Petition … acknowledg[es] that
`
`the collective documents do not disclose the required teachings.” POR, pp. 28-29.
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`This assertion is demonstrably false as the Petition plainly states that “Arnold
`
`teaches that a smart proxy on a client machine issues control commands in the
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`form of remote method invocation (RMI) calls[.]” Petition, p. 30 (citing APPL-
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`1006, 5:52-55, 8:23-26).
`
`Thus, as established in the Petition, Jini-QS, Arnold, and McCandless render
`
`obvious this limitation and the similar limitations in claims 8 and 20. Petition, pp.
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`20-25, 31-33, 37-40, 50.
`
`IV. CLAIMS 1-2, 6-9, 12, AND 14-15 ARE INVALID OVER RIGGINS IN
`VIEW OF DEVARAKONDA
`A. Riggins discloses “accessing a description of the service from a
`directory of services, the description of the service including at least a
`reference to program code