Trials@uspto.gov
`571-272-7822
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` Paper 8
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` Entered: July 16, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-00361
`Patent 6,216,158 B1
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`571-272-7822
`
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` Paper 8
`
`
`
` Entered: July 16, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-00361
`Patent 6,216,158 B1
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`IPR2018-00361
`Patent 6,216,158 B1
`
`
`I.
`INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes review
`of claims 1, 2, 69, 12, 14, 15, and 20 of U.S. Patent No. 6,216,158 B1
`(Ex. 1001, “the ’158 patent”). Paper 1 (“Pet.”). Uniloc Luxembourg S.A.
`(“Patent Owner”), filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`record developed thus far, for reasons discussed below, we institute inter
`partes review of the ’158 patent.
`
`A. Related Matters
`The parties indicate that the ’158 patent is involved in Uniloc USA,
`Inc. v. Apple, Inc., Case No. 2-17-cv-00470 (E.D. Tex.) and other
`proceedings. Pet. 2; Paper 3.
`
`B. The ’158 Patent
`The ’158 patent relates to controlling network devices using a palm
`sized, or otherwise reduced functionality, computer. Ex. 1001, 1:810. A
`palm sized computer has limited processing, display, and input capabilities,
`resulting thus in inability to run the same applications on desktop or laptop
`computers. Id. at 1:2227. Touting the desirability to access desktop
`functionality from palm sized computers, the ’158 patent overcomes the
`palm sized computer limitations by viewing a network as “an extension of
`the palm sized computer’s resources.” Id. at 1:2729, 2:1013. “Functions
`can be downloaded into the device as needed, and overlaid after they have
`been used.” Id. at 2:1415. Thus, when a palm sized computer seeks to use
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`services stored on a network, the palm sized computer can access and
`control these services using a program (such as a middleware application) to
`access a registry of the network services. Id. at 1:3639, 1:4648, 2:1523.
`The ’158 patent explains that middleware “allows palm sized
`computers to discover network-based computing resources.” Id. at 2:2930.
`Middleware includes a directory of resources (or services), a protocol for
`storing and receiving from the directory, and a mechanisms to transfer
`software from the directory to a palm sized computer. Id. at 2:3236. The
`palm sized computer also includes a control application to manipulate the
`computer services on the network. Id. at 2:3740. In one embodiment, the
`middleware includes “Jini technology from Sun Microsystems.” Id. at
`1:4950, 6267.
`The ’158 patent describes running a PowerPoint slide presentation as
`an example of a service that can be invoked and controlled via a control
`device, which is a palm sized computer. Id. at 3:410, 1620. Figure 1 of
`the ’158 patent is reproduced below.
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`Figure 1 depicts a system having a palm sized computer controlling
`operations of various network devices, such as application service 130 (to
`run the PowerPoint application), display service 140 (to display the
`presentation), and storage service 150 (to store the presentation). Id. at
`Fig. 1, 3:4354. “None of these services are resident on the palm sized
`computer 100.” Id. at 3:6061. After locating the necessary service (e.g.,
`PowerPoint application) using lookup service 120, the palm sized computer
`downloads the code required to control the located services. Id. at 3:4549,
`3:6164, 6:13. The ’158 patent describes that the control device (i.e., palm
`sized computer) uses a download interface to download “the application
`service descriptor.” Id. at 6:1621 (referring also to “the GUI code for
`controlling a PowerPoint presentation”). The palm sized computer is then
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`capable of directly controlling the service, such as by sending a “next slide”
`request to the application service running PowerPoint. Id. at 3:6667,
`6:2426.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 8, and 20 are independent. Each
`of claims 2, 6, 7, 9, 12, 14, and 15 depends directly from either claim 1 or
`claim 8.
`Claim 1 is illustrative:
`1. A method of controlling a service on a network using a palm
`sized computer, the palm sized computer being coupled in
`communications with the network, the method comprising:
`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;
`downloading the program code to the palm sized computer;
`the palm sized computer executing at least a portion of the
`program code; and
`sending control commands to the service from the palm sized
`computer in response to the executing, wherein the service
`controls an application that cannot be executed on the palm sized
`computer.
`
`Ex. 1001, 12:1328.
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`D. Asserted Prior Art and Grounds of Unpatentability
`This proceeding involves the following prior art references:
`
`a) Jini-QS: article titled “Jini: Quick Study,” published in
`COMPUTERWORLD, Dec. 7, 1998, filed in the record as
`Exhibit 1005;
`
`b) Arnold: U.S. Patent No. 6,393,497 B1, filed in the record as
`Exhibit 1006;
`
`c) McCandless: article titled “The PalmPilot and the Handheld
`Revolution,” (IEEE Expert, 1997), filed in the record as
`Exhibit 1007;
`
`d) Riggins: U.S. Patent No. 6,131,116, filed in the record as
`Exhibit 1008; and
`
`e) Devarakonda: U.S. Patent No. 6,757,729 B1, filed in the record as
`Exhibit 1009.
`
`Petitioner asserts the following grounds of unpatentability based on
`the afore-mentioned references (Pet. 1314):
`
`Claims
`1, 2, 69, 12, 14, 15,
`and 20
`1, 2, 69, 12, 14, and
`15
`
`Basis
`§ 103
`
`§ 103
`
`References
`Jini-QS, Arnold, and
`McCandless
`Riggins and
`Devarakonda
`
`Petitioner also relies on a Declaration of Henry H. Houh, Ph.D. filed
`as Exhibit 1003 (“Houh Declaration”).
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`II. DISCUSSION
`
`Claim Construction
`A.
`Petitioner asserts that the ’158 patent will expire during the pendency
`of the requested inter partes review. Pet. 8. Patent Owner does not address
`this assertion. In an inter partes review, under 37 C.F.R. § 42.100(b), a
`party may request a district court-type claim construction approach to be
`applied if a party certifies that the involved patent will expire within 18
`months from the entry of the Notice of Filing Date Accorded to Petition.
`The request must accompany the party’s certification. In this proceeding, no
`such certification has been filed with a request. We expect that the parties
`will clarify this issue during trial, especially if proposed claim construction
`for any term would be different depending on the claim construction
`standard applied.
`In the meantime, for purposes of this Decision, we do not construe
`expressly any term. Petitioner has proposed claim construction for several
`terms, most of which are drafted in means-plus-function format. Pet. 812.
`Patent Owner has challenged the proposed claim constructions as too
`narrow. Prelim. Resp. 612 (proposing, for example, that a “palm sized
`computer” is not limited to an example of a personal digital assistant (PDA)
`and that certain means-plus-function terms have corresponding structures
`broader than the disclosed Jini middleware). However, none of Patent
`Owner’s arguments hinges on whether the claim terms should be interpreted
`more broadly than Petitioner’s proposed claim construction. And, more
`importantly, our determination whether to institute would not change even if
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`we adopted Patent Owner’s proposed constructions. See Nidec Motor Corp.
`v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
`2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999) (“[O]nly those terms need be construed that are in controversy,
`and only to the extent necessary to resolve the controversy.”). Thus, for
`purposes of determining whether to institute, we review the Petition in light
`of the constructions proposed by Petitioner.
`
`Level of Ordinary Skill in the Art
`B.
`The patentability analysis under 35 U.S.C. § 103 includes
`determination of the level or ordinary skill in the art. Graham v. John Deere
`Co., 383 U.S. 1, 17 (1966). Neither the Petition nor the Preliminary
`Response states the applicable level of ordinary skill in the art, and neither
`party argues that the obviousness determination hinges on the level of
`ordinary skill. To the extent the level of ordinary skill in the art is in dispute
`or makes a material difference in the obviousness analysis, the parties will
`have opportunity during trial to brief their respective positions in this regard.
`
`Summary of Jini-QS and Riggins
`C.
`The obviousness grounds rely on Jini-QS or Riggins as disclosing the
`majority of the limitations recited in the claims. Therefore, we summarize
`these references below.
`
`1. Overview of Jini-QS
`Jini-QS is an article in the Computer World periodical, dated
`December 7, 1998. The article defines Jini as “networking software created
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`by Sun Microsystems Inc. as an extension of Java.” Ex. 1005, 5
`(“Definition”). Jini-QS depicts “How it Works” in the graphic reproduced
`below.
`
`
`
`The illustration of “How it Works” depicts in the center the “Jini
`community network” and around it various devices, such as: (1) a “Laptop;”
`(2) a “Jini server;” (3) a “Legacy printer;” (4) a “Disk drive;” and (5) a
`“Projector.” With regard to the Laptop, Jini-QS describes it as “plugged into
`the network, and the Jini code in the Java virtual machine on the device
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`broadcasts its presence.” Id. (“How it Works”). Further, Jini-QS states that
`when the user wants to print a presentation,
`He selects the print option, which launches a query to the
`Lookup Service on the Jini Server. The server instantly sends
`proxy code back to the device. The legacy printer, which has
`no Java or Jini code at all, receives the printing instruction via
`that proxy code and prints the document.
`Id. Jini-QS states that the “Lookup stores pointers to various services on the
`network as well as code for other services.” Id. (“Jini Speak,” “Lookup”).
`Jini-QS describes the “proxy” as the piece of Java code “that moves around
`from device to device acting as the front end for all the Jini-enabled or
`legacy systems.” Id. (“Jini Speak,” “Proxy”).
`
`2. Overview of Riggins
`Riggins is entitled “System and Method for Globally Accessing
`Computer Services.” Ex. 1008, [54] (emphasis omitted). In particular,
`Riggins describes that a “roaming user,” one who travels and accesses a
`workstation remotely, can “manipulate the data on the remote workstation
`and, when finished, can upload the manipulated data back from the remote
`workstation to the local computer.” Id. at 1:1827. “However, slow
`computers and slow communication channels make downloading large files
`and programs a time-consuming process,” and downloading “severely
`threatens the integrity and confidentiality of the downloaded data.” Id. at
`1:2732. As an alternative, Riggins discloses that the roaming user “can
`carry a copy of all potentially needed information,” but that maintaining a
`“true copy” is a cumbersome process. Id. at 1:3437. Thus, Riggins
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`discloses using a “browser for receiving applet information corresponding to
`a service performed by one of the service engines from the server, and an
`applet engine for using the applet information to control user interfaces I/O
`of the service.” Id. at 1:4953. Figure 1, reproduced below, illustrates a
`system for roaming-user access.
`
`Figure 1 illustrates roaming-user network access system 100.
`According to Figure 1, master server 130 and remote client 150
`communicate via Internet 140. Id. at 2:4751. Local client 110
`communicates with the master server via local network 120. Id. at 2:5153.
`The remote client includes an “applet-based web browser” which is
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`configured for communicating with the Internet and for reading and
`executing applets. Id. at 2:6467.
`Figure 1 also illustrates that the remote client inputs a predetermined
`Uniform Resource Locator (URL) address (shown in line (1) “URL”) for
`opening the web page managed by the master server. Id. at 3:4952. Web
`page engine 133 of the master server sends (shown in line (2)) at least one of
`the applets (downloadable applets 136) and web browser configuration data
`137 to the web browser of the remote client. Id. at 3:5254. The user then
`selects a particular service corresponding to one of the applets to access an
`e-mail service, for example. Id. at 3:5558. Selection of a service causes an
`applet engine of remote client 150 “to connect to or execute the applet []
`corresponding to the selected service [].” Id. at 6:5860. The web browser
`forwards to the master server a service request (shown in line (3)) for
`initiating execution of the selected service. Id. at 3:5961. The master
`server determines the location of the service and sends the service request
`(shown in line (4)) to the appropriate address (to a service engine in either
`the local computer or a depicted server). Id. at 3:6167. The appropriate
`service engine executes the service and generates responsive data, which is
`sent (shown in lines (5) and (6)) to the master server and to the remote
`client. Id. at 4:18.
`
`Reasonable Likelihood Determination: Jini-QS-Based Ground
`D.
`After considering Petitioner’s contentions and Patent Owner’s
`arguments in opposition, we are persuaded that Petitioner has demonstrated
`a reasonable likelihood of prevailing in showing that claims 1, 2, 69, 12,
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`14, 15, and 20 would have been obvious over Jini-QS in combination with
`the other applied references.
`
`Independent Claim1
`i.
`Petitioner has mapped Jini-QS to most limitations of claim 1
`(Pet. 2529), except for:
`(1) “sending control commands to the service from the palm sized
`computer in response to the executing” (for which Petitioner relies
`on a combination with Arnold’s description of Java remote method
`invocation (RMI) commands) (id. at 3031); and
`(2) “wherein the service controls an application that cannot be
`executed on the palm sized computer” (for which Petitioner relies
`on a combination with McCandless’s description of running
`applications that are “too compute- or space intensive” for a PDA,
`on a remote high-performance computer) (id. at 3233) (emphasis
`omitted).
`Petitioner has also stated reasons to combine Jini-QS with Arnold and
`McCandless. Id. at 2125. In particular, we note Petitioner’s argument that
`the Jini platform disclosed in Jini-QS was known to implement the Java
`RMI protocol disclosed in Arnold. Id. at 2122 (relying on Ex. 1010, 9;
`Ex. 1011, 34; Ex. 1012, 5). Further, Petitioner relates some advantages of
`using a Java Virtual Machine and Java RMI. Id. at 22 (relying on Ex. 1006,
`4:36; Ex. 1010, 9, 11; Ex. 1003 ¶ 81). With regard to McCandless,
`Petitioner argues that McCandless’s disclosure of hosting a complex
`application on a high performance computer rather than on a plurality of
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`clients “eases the upgrade process, as all clients will automatically have
`access to the latest version of the application.” Id. at 24 (relying on
`Ex. 1007, 7; Ex. 1014, 9495; Ex. 1003 ¶ 85). Further, Petitioner argues
`that it was known at the time of the invention to use a Jini-enabled PalmPilot
`with limited capabilities to control translation software on a machine with
`adequate processing power. Id. at 23 (relying on Ex. 1013, 4; Ex. 1003
`¶ 84).
`Patent Owner characterizes Petitioner’s proffered reasons to combine
`as insufficient to meet the institution threshold. In particular, Patent Owner
`argues that the supporting Houh Declaration is speculative and conclusory
`because Jini was not available at the time of the article’s publication.
`Prelim. Resp. 1416. We are not persuaded by Patent Owner’s argument.
`The Houh Declaration cites to other exhibits corroborating relevant
`testimony concerning technical details of the Jini architecture available at
`the time of the invention and that Jini was known to implement the Java
`RMI protocol. See Ex. 1003 ¶ 80 (citing, for instance, Ex. 1010, 9). And
`even if Jini-QS describes Jini as being available in the near future, the
`evidence in the record thus far is that Jini’s features and how they worked
`are disclosed publicly in the Jini-QS article. Jini-QS (the printed
`publication) is the prior art of record, not Jini the software platform.
`We also do not agree with Patent Owner’s contentions that the Houh
`Declaration is entitled to no weight because the stated reasons to combine
`are conclusory and not factually supported. Prelim. Resp. 12, 13, 1517,
`1921. We noted above that the Petition provides at least one reason to
`combine the teachings of Jini-QS, Arnold, and McCandless with sufficient
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`explanation and express reliance on evidence supporting the Houh
`Declaration.
`Patent Owner further argues against a motivation for a person of
`ordinary skill in the art to consider Jini-QS because it is directed “at
`businesspersons in particular.” Prelim. Resp. 1314. In support, Patent
`Owner proffers testimony of Mr. Easttom. Ex. 2001 ¶¶ 3234
`(“ComputerWorld article does not constitute prior art. Instead it is a
`marketing piece . . . .”). The argument and accompanying testimony are
`unpersuasive. Patent Owner cites no authority or factual support for the
`proposition that a technology newspaper, such as ComputerWorld, does not
`qualify as prior art merely because it is allegedly directed at
`“businesspersons.”
`Patent Owner also argues that Jini-QS and McCandless are non-
`enabling references that would not lend themselves to consideration by a
`person of ordinary skill in the art. Prelim. Resp. 1719. The argument is
`unpersuasive. A reference need not be enabling to be considered prior art
`for all that it discloses. See 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.”). Further,
`even if Jini-QS and McCandless describe technology in the future sense, that
`fact alone does not shed any light on whether the references are enabled. In
`re Antor Media Corp., 689 F.3d 1282, 128990 (Fed. Cir. 2012) (“[T]he
`mere use of forward-looking language (such as terms like ‘should’) does not
`show one way or another whether a person of ordinary skill in the art would
`have to engage in undue experimentation to perform the claimed
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`invention . . . . [T]he verb tense and word choice used in a prior art
`reference, taken without an understanding of the state of the art and the
`nature of the invention, shed no light on enablement.”).
`Regarding the substance of Jini-QS, Patent Owner argues that “icons”
`are not a “description of services,” as recited in claim 1. Prelim. Resp. 22.
`The argument is not persuasive. The Petition points to “descriptive icons,”
`but also explains that the Lookup Service stores pointers to various sources
`on the network as well as code for other services. Pet. 28. Petitioner states
`that the “Lookup Service includes service descriptions and pointers
`(references) to downloadable proxy code for controlling a service.” Id.
`Thus, Patent Owner’s argument, focusing on “icons,” fails to rebut the
`merits of Petitioner’s actual contention concerning the “description of
`services” limitation.
`Patent Owner further argues that Jini-QS does not disclose
`“downloading the program code to the palm sized computer,” because of
`Patent Owner’s characterization of Jini-QS as downloading proxy code
`“directly to the ‘legacy printer’.” Prelim. Resp. 2425. We do not agree
`with Patent Owner’s characterization of Jini-QS as downloading proxy code
`to the legacy printer but not the “palm sized computer.” Instead, Jini-QS
`states that the “server instantly sends proxy code back to the device,” which
`we do not understand to refer to the legacy printer. We agree with
`Petitioner’s explanation of Jini-QS in this regard. Pet. 2829. And we also
`note that Jini-QS states that the legacy printer “has no Java or Jini code at
`all,” thereby contradicting Patent Owner’s contention that the “legacy
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`printer” would be the “device” that downloads the proxy code. See
`Ex. 1005, 29 (“How it Works”).
`Finally, we address Patent Owner’s argument that McCandless fails to
`teach that “the service controls an application that cannot be executed on the
`palm sized computer,” as recited in claim 1. Prelim. Resp. 18, 2527. In
`particular, Patent Owner asserts that “[a]t most, the Petition merely suggests
`that some of the operations could be off-loaded,” but off-loading certain
`tasks is different than “controlling an application that a palm sized computer
`could not execute itself.” Id. at 18 (emphasis omitted). The Petition,
`however, does not rely on McCandless alone for teaching this limitation.
`McCandless explains, as stated in the Petition, that “applications that are too
`compute- or space intensive to run directly on your PDA will run, instead,
`on a remote high-performance computer, but then return the output of the
`computation.” Pet. 32 (quoting Ex. 1007, 7) (emphasis omitted). But
`Petitioner relies on this disclosure in combination with Jini-QS’s teaching of
`Jini code and Arnold’s teachings of software applications. Id. For instance,
`Petitioner states that Jini-QS’s teaching of the Jini service controlling
`software components with a PalmPilot with very low memory, in view of
`Arnold’s teaching of network services comprising software applications,
`would have taught a person of ordinary skill in the art that the service could
`control an application that is too compute- or space- intensive for a PDA,
`i.e., that could not be executed on the palm sized computer. Pet. 3233; Ex.
`1003, 6367. Thus, Patent Owner’s argument, which focuses on a narrow
`view of Petitioner’s contention and only on McCandless, is insufficient to
`overcome the argument and evidence on the record at this juncture.
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`We determine, therefore, on this record, that Petitioner has established
`a reasonable likelihood of prevailing on its assertion that claim 1 of the
`’158 patent is unpatentable over Jini-QS, Arnold, and McCandless.
`
`Independent Claims 8 and 20
`ii.
`Petitioner maps the limitations of claim 8 to Jini-QS, Arnold, and
`McCandless in a similar manner as for claim 1. Pet. 3744. Petitioner
`similarly maps the references to the limitations of claim 20. Pet. 4550.
`Patent Owner relies, on claim 8, for the same arguments and evidence
`proffered to challenge Petitioner’s contentions regarding claim 1. See
`Prelim. Resp. 23, 2627. Patent Owner provides no arguments specifically
`concerning limitations of claim 20. After review of the Petition and cited
`evidence, and for the same reasons stated above with regard to claim 1, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing on its assertion that independent claims 8 and 20 of the
`’158 patent are unpatentable over Jini-QS, Arnold, and McCandless.
`
`iii. Dependent Claims 2-7
`Challenged dependent claims 2, 6, 7, 9, 12, 14, and 15 depend directly
`from either claim 1 or 8. Petitioner presents argument and evidence
`mapping the limitations further recited in these dependent claims to Jini-QS,
`Arnold, and McCandless. Pet. 3337, 4445. Patent Owner does not argue
`these claims independently. Prelim. Resp. 27. Having reviewed the Petition
`and cited evidence in support thereof, we determine that Petitioner has
`established a reasonable likelihood of prevailing on its assertion that claims
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`2, 6, 7, 9, 12, 14, and 15 of the ’158 patent are unpatentable over Jini-QS,
`Arnold, and McCandless
`
`Reasonable Likelihood Determination: Riggins-Based Ground
`E.
`Petitioner maps the remote client of Riggins, in combination with
`Devarakonda, to the palm sized computer limitations, recited in claims 1 and
`8. Pet. 5868, 7180. In particular, Petitioner points out Riggins’s
`disclosures of a “network computer,” as the remote computer that a remote
`user utilizes to access a service, such as e-mail. Id. at 5859 (citing
`Ex. 1008, 1:4953, 2:4753, 4:916, 6:3132, 8:2325, Fig. 1). Petitioner
`also argues that Devarakonda teaches that “a network computer can be
`embodied on ‘a personal digital assistant (PDA),’” and a person of ordinary
`skill in the art “would have been motivated to utilize Devarakonda’s PDA as
`Riggins’s network computer.” Id. at 5960. Petitioner provides at least one
`reason for the motivation, such as the advantage of using a PDA to access
`the processing power of a full-featured computer to accomplish processor-
`intensive tasks, especially in light of Devarakonda’s teaching that “network
`computers . . . did not have adequate physical resources to execute
`applications intended for full-featured operating environments.” Id. at
`5657 (citing Ex. 1003 ¶ 103, which relies further on Ex. 1009, 1:2832,
`2:1113, 2:2022; Ex. 1013, 4).
`Patent Owner takes issue with the asserted combination of Riggins
`and Devarakonda as teaching the recited “palm sized computer” limitations.
`Specifically, Patent Owner argues that “Riggins teaches away from the PDA
`of Devarakonda.” Prelim. Resp. 28 (emphasis omitted). We are not
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`persuaded by Patent Owner’s argument at this juncture. Although we agree
`that Riggins teaches an embodiment of the remote computer as having a
`Motorola Power PC or Intel Pentium microprocessor, with a keyboard and a
`mouse, a CRT display, and a magnetic disk (Ex. 1008, 8:3444), that
`teaching alone is not sufficient to show that a skilled artisan would not
`benefit from the teachings of Devarakonda that a network computer could be
`embodied in a PDA. Further, Patent Owner offers testimony that the
`Riggins computer would not work as a PDA, because the web browsers
`Riggins needs to operate were not available for PDAs. See Ex. 2001
`¶¶ 7377. This testimony, however, raises an issue of inoperability and lack
`of reasonableness of Petitioner’s asserted reasons to combine. Under
`37 C.F.R. § 42.108(c), “a genuine issue of material fact created by [Patent
`Owner’s] testimonial evidence will be viewed in the light most favorable to
`the petitioner solely for purposes of deciding whether to institute an inter
`partes review.”
`Patent Owner also challenges the sufficiency of Petitioner’s proffered
`reasons to combine arguing that the Petition is conclusory and lacks
`adequate explanation. Prelim. Resp. 3033. For purposes of institution, we
`do not find the Petition deficient in this regard. As stated above, Petitioner
`has stated at least one reason to combine that is supported sufficiently by the
`Houh Declaration and other evidence of record. Pet. at 5657 (citing
`Ex. 1003 ¶ 103, which relies further on Ex. 1009, 1:2832, 2:1113,
`2:2022; Ex. 1013, 4). Whether the Petition ultimately satisfies Petitioner’s
`burden to show obviousness, including a reasonable motivation to combine,
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`by a preponderance of the evidence, is an issue we will decide on a full
`record.
`Patent Owner argues that neither Riggins nor Riggins in combination
`with Devarakonda teaches the limitation “wherein the service controls an
`application that cannot be executed on the palm sized computer.” Prelim.
`Resp. 3637. In particular, Patent Owner points out that Devarakonda’s
`explanation of the network computer (as not necessarily equipped with
`adequate physical resources to support a full-featured operating
`environment) only suggests that the underlying operating environment may
`not be full featured. Id. at 37. In contrast, the claims require that the palm
`sized computer cannot execute the application. Id. Although Patent
`Owner’s argument undermines Devarakonda’s network computer as
`teaching a palm sized computer that cannot execute the application, at this
`juncture, we view Petitioner’s reliance on Devarakonda as sufficient to meet
`the institution threshold. We note here that Petitioner does not rely solely on
`the cited teachings in Devarakonda. In the end, we will determine whether
`the teachings of Devarakonda and Riggins, together with the testimonial and
`supporting evidence, meet the recited limitation concerning the palm sized
`computer (that cannot execute the application) under a preponderance of the
`evidence standard and with the benefit of a full record.
`Finally, with regard to Riggins, Patent Owner challenges Petitioner’s
`contention that Riggins teaches “accessing a description of the services from
`a directory of services” (claim 1, and similarly recited in claim 8). Prelim.
`Resp. 3335. Petitioner relies on Riggins’s disclosure of a “roam page,”
`which according to Petitioner, displays a listing of the provided services.
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`Pet. 6162. Patent Owner argues that a listing of services is not the recited
`“description of the services.” Prelim. Resp. 3335. Specifically, the “roam
`page,” according to Patent Owner, is “merely and only a simple list” that
`lacks a “reference to program code for controlling the service,” as the claims
`require. Id. at 34. But the Petition relies on more than the display of the
`“roam page.” Pet. 6063. In particular, we note that Petitioner argues that
`each service listed on the “roam page” references a downloadable applet for
`controlling the service, and that Riggins discloses that selection of a service
`(such as e-mail) causes the applet for that service to be executed, thereby
`proving that the service description (e.g., e-mail entry) references the applet
`(program code) for controlling that service. Id. (citing Ex. 1008, 3:1529,
`3:1823, 3:4958, 4:917, 4:2427, 5:5157, 6:2536, 6:5560, 8:418,
`8:2730, Figs. 3A, 3B, 56; Ex. 1003, 118, 121, 126). To the extent Patent
`Owner attempts to attribute to a “description of the service” a quantum of
`information higher than an entry on a list of services, we expect that Patent
`Owner will brief the claim scope of the term and present arguments
`commensurate with that scope. On the present record, however, Petitioner
`has shown sufficiently that the listing on the “roam page,” together with the
`cited disclosures of how Riggins references and executes an applet upon
`selection of a listed service, is sufficient to meet the institution threshold.
`In sum, we have reviewed the information presented in the Petition
`and the Preliminary Response with regard to independent claims 1 and 8 on
`this ground, and we are persuaded that Petitioner has demonstrated a
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`reasonable likelihood of prevailing in its contention that claims 1 and 8
`would have been obvious over Riggins and Devarakonda.
`For dependent claims 2, 6, 7, 9, 12, 14, and 15, Petitioner has mapped
`the limitations further recited therein to Riggins and Devarakonda. Pet.
`6871, 8081. Patent Owner does not present any arguments challenging
`the Petition’s arguments and evidence for these claims. Having reviewed
`the information presented in the Petition and supporting evidence, we
`determine that Petitioner has demonstrated a reasonable likelihood of
`prevailing in its contention that these dependent claims are also unpatentable
`over Riggins and Devarakonda.1
`
`III. CONCLUSION
`For
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