`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner
`
`———————
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`OF
`
`U.S. PATENT NO. 6,216,158
`
`
`
`
`
`
`
`
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................. 1
`
`II. MANDATORY NOTICES ............................................................................... 2
`
`A. Real Party-in-Interest................................................................................ 2
`
`B. Related Matters ......................................................................................... 2
`
`C. Lead and Back-up Counsel and Service Information .............................. 2
`
`III. GROUNDS FOR STANDING .......................................................................... 3
`
`IV. THE ’158 PATENT ........................................................................................... 3
`
`A. State of the Art before the ’158 Patent ..................................................... 3
`
`B. Overview of the ’158 Patent ..................................................................... 4
`
`C. Prosecution History .................................................................................. 7
`
`D. Claim Construction ................................................................................... 8
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`“palm sized computer” (Claims 1-2, 6-9, 12, 14-15) ....................... 8
`
`“means for accessing a description of a service” (Claim 20) .......... 9
`
`“means for downloading the program code” (Claim 20) .............. 10
`
`“means for executing at least a portion of the program
`code” (Claim 20) ............................................................................ 11
`
`“means for sending control commands to the service in
`response to the means for executing” (Claim 20) .......................... 12
`
`V. RELIEF REQUESTED AND THE REASONS FOR THE REQUESTED
`RELIEF ....................................................................................................................13
`
`VI. IDENTIFICATION OF CHALLENGES ........................................................13
`
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`– ii –
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`A. The Challenges Presented in This Petition are Neither Cumulative
`Nor Redundant ........................................................................................ 14
`
`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ......16
`
`A. Challenge #1: Claims 1-2, 6-9, 12, 14-15, and 20 are invalid under
`35 U.S.C § 103 over Jini-QS in view of Arnold and McCandless ........ 16
`
`1.
`
`2.
`
`3.
`
`Summary of Jini-QS ....................................................................... 16
`
`Summary of Arnold ........................................................................ 17
`
`Summary of McCandless ............................................................... 19
`
`4. Reasons to Combine Jini-QS, Arnold, and McCandless ............... 20
`
`a. Reasons for utilizing Arnold’s RMI protocol to control
`services in the Jini platform described by Jini-QS ................. 21
`
`b. Reasons for the PalmPilot in Jini-QS to control an application
`it cannot execute itself, as described in McCandless .............. 22
`
`c. Reasons for utilizing Arnold’s service registration in the
`Lookup Service described by Jini-QS .................................... 24
`
`5. Detailed Analysis ........................................................................... 25
`
`B. Challenge #2: Claims 1-2, 6-9, 12, and 14-15 are invalid under 35
`U.S.C § 103 over Riggins in view of Devarakonda ............................... 50
`
`1.
`
`2.
`
`Summary of Riggins ...................................................................... 51
`
`Summary of Devarakonda .............................................................. 52
`
`3. Reasons to Combine Riggins and Devarakonda ............................ 54
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`a. Reasons for utilizing Devarakonda’s PDA as Riggins’ network
`computer to control applications too resource intensive for the
`PDA to execute itself .............................................................. 54
`
`b. Reasons for using Devarakonda’s service registration method
`in Riggins’ network service method ....................................... 57
`
`4. Detailed Analysis ........................................................................... 58
`
`VIII. CONCLUSION ................................................................................................81
`
`
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`– iv –
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 6,216,158 (“the ’158 Patent,” APPL-1001) is generally
`
`directed to controlling network services with a palm-sized computer. The ’158
`
`Patent admits, however, that the specific steps for controlling network services
`
`recited in the claims—accessing a directory of services, downloading code
`
`associated with a service, and sending control commands—were already well
`
`known. In that regard, the only embodiment disclosed in the specification is based
`
`on Sun Microsystems’ Jini technology, which was announced and publicized in the
`
`summer of 1998, well before the priority date of the ’158 Patent. Jini allows a
`
`client to access a directory of services, download code associated with a service,
`
`and control the service with the code.
`
`The allegedly-inventive aspect of the ’158 Patent is the performance of the
`
`well-known Jini steps by a palm-sized computer. Jini, however, was designed for
`
`use with any type of device including palm-sized devices—as illustrated by trade
`
`articles pre-dating the ’158 Patent that explicitly tout the use of PalmPilots with
`
`Jini. U.S. patents filed by the architect of Jini provide additional details regarding
`
`the Jini platform.
`
`This petition further establishes that others besides Sun Microsystems had
`
`also developed and disclosed methods for controlling network services with a
`
`palm-sized computer. The claimed subject matter of the ’158 Patent is also taught
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`– 1 –
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`by a combination of U.S. Patent No. 6,131,116 to Riggins and U.S. Patent No.
`
`6,757,729 to Devarakonda.
`
`The evidence in this petition demonstrates that claims 1-2, 6-9, 12, 14-15,
`
`and 20 of the ’158 Patent are unpatentable under (pre-AIA) 35 U.S.C. § 103.
`
`Accordingly, Apple Inc. (“Petitioner”) respectfully requests that these claims be
`
`held unpatentable and cancelled.
`
`II. MANDATORY NOTICES
`
`A. Real Party-in-Interest
`
`The real party-in-interest is Apple Inc.
`
`B. Related Matters
`
`As of the filing date of this petition, the ’158 Patent has been asserted in
`
`Uniloc USA, Inc. et al. v. Apple Inc., 2:17-cv-00470 (E.D. Tex. 2017)
`
`(consolidated lead case). The ’158 Patent is also involved in Uniloc USA, Inc. et al
`
`v. LG Electronics USA, Inc. et al., 4-17-cv-00827 (N.D. Tex. 2017) and Uniloc
`
`USA, Inc. et al. v. Exclusive Group LLC d/b/a Binatone North America, 1-17-cv-
`
`03962 (S.D. Ind. 2017).
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`Phone: (214) 651-5116
`Fax: (214) 200-0853
`andy.ehmke.ipr@haynesboone.com
`USPTO Reg. No. 50,271
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`
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`– 2 –
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`
`Back-up Counsel
`Scott T. Jarratt
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`
`
`Phone: (972) 739-8663
`Fax: (214) 200-0853
`scott.jarratt.ipr@haynesboone.com
`USPTO Reg. No. 70,297
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service via email.
`
`III. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’158 Patent is eligible for inter partes review and
`
`that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this petition. Petitioner
`
`was served with a complaint asserting infringement of the ’158 Patent not more
`
`than one year before the filing of this Petition. Petitioner has not filed a civil
`
`action challenging the validity of any claim of the ’158 Patent.
`
`IV. THE ’158 PATENT
`
`A. State of the Art before the ’158 Patent
`
`Network computing was already well known at the time of the ’158
`
`Patent. APPL-1003, ¶38. Client/server models in which a client relies upon the
`
`processing power of a remote server to accomplish a computational task has been
`
`around since at least 1940. APPL-1003, ¶39 (citing APPL-1015, p. 9). Because of
`
`certain advantages such as lower cost and ease of administration, POSITAs have
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`been utilizing so-called “thin clients” or “network computers” to access software
`
`and hardware services over a network for many decades before the ’158
`
`Patent. APPL-1003, ¶38 (citing APPL-1014, pp. 90, 93).
`
` As network capabilities matured through the 1990s, POSITAs were
`
`developing more robust client/server models to take advantage of increasing
`
`bandwidth. APPL-1003, ¶39. For example, Sun Microsystems’ Jini platform,
`
`announced in the summer of 1998, sought to turn any resource on a network into a
`
`service, which could then be located and utilized by any network device. APPL-
`
`1003, ¶39 (citing APPL-1005, p. 29; APPL-1018, p. 113-14). Services could
`
`encompass any useful function including software applications and hardware
`
`resources such as printers. APPL-1003, ¶39 (citing APPL-1005, p. 29; APPL-
`
`1006, 7:28-36). In an effort to make this platform widely available, Sun designed
`
`Jini to “run in devices with very low memory, such as printers, personal digital
`
`assistants, and cellular phones.” APPL-1005, p. 29. As such, Jini enabled
`
`lightweight PDAs to access, via a service, applications that were too
`
`computationally and memory intensive to run directly on the PDA. APPL-1003,
`
`¶39 (citing APPL-1005, p. 29; APPL-1007, p. 7).
`
`B. Overview of the ’158 Patent
`
`The ’158 Patent is generally directed to methods of controlling network
`
`services using palm-sized computers, which were known to have “have limited
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`processing, display and input capabilities” and therefore “do not run the same
`
`applications as desktop or laptop computers.” APPL-1001, 1:8-11, 1:22-29, 1:36-
`
`37. The ’158 Patent admits, however, that the underlying technology that allows
`
`clients to locate and utilize network services was already well known. For
`
`example, the ’158 Patent explains: “Jini™ is a technology developed by Sun
`
`Microsystems which addresses the problem of computing and network complexity.
`
`It eases the burden of accessing services by providing seamless access and
`
`automatic registration of network resources.” Id. at 2:45-49. The ’158 Patent
`
`further explains that “Jini acts as middleware to access network resources, as it lets
`
`devices locate services and download software for those services.” APPL-1001,
`
`2:62-67. The embodiments in the ’158 Patent explicitly rely on the Jini
`
`technology. Id. at 1:47-52. In other words, the steps for controlling network
`
`services detailed in the specification and recited in the claims—accessing a
`
`directory of services, downloading code associated with a service, and sending
`
`control commands—were already well known. APPL-1003, ¶41.
`
`In particular, with respect to the recitation in the claims of “accessing a
`
`description of the service from a directory of services,” the ’158 Patent
`
`specification explains that “Jini middleware” lets devices locate services via a
`
`“Directory of Services, such as the Jini Lookup.” APPL-1001, 2:62-64, 3:28-29.
`
`With respect to the recitation of downloading code for controlling the service, the
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`’158 Patent similarly explains that the Jini middleware lets devices “download
`
`software for those services.” Id. at 2:62-64, 3:61-65 (“Middleware, such as Sun's
`
`Java/Jini technology, is used to move the code.”). Figure 3 illustrates the palm-
`
`sized device with Jini middleware locating a service and downloading code:
`
`Jini middleware
`on palm-sized
`computer
`
`
`
`Jini lookup and download
`
`
`
`
`
`Id. at Fig. 3 (annotated); APPL-1003, p. 26.
`
`With respect to the claims reciting executing the downloaded code to control
`
`a service, the ’158 Patent explains that the code executes on a Java Virtual
`
`Machine running on the palm-sized computer, as illustrated above in Fig. 3. Id.
`
`Fig. 3 (“318 Java Virtual Machine”); see also id. at 5:10-20, 12:42-45. The
`
`specification also explains that Java’s Remote Method Invocation (RMI) is one
`
`example protocol used for sending commands. Id. at 6:22-48.
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`Additionally, with respect to the recitation in the claims of “the service
`
`controls an application that cannot be executed on the palm-sized computer,” the
`
`’158 Patent explains in the Background that it was previously known that, as a
`
`result of a palm-sized computer’s “limited processing, display, and input
`
`capabilities … palm sized computers do not run the same applications as desktop
`
`or laptop computers.” Id. at 1:24-26; see also id. at 5:6-10.
`
`Accordingly, as explained by the ’158 Patent itself, the recitations in the
`
`claims related to locating, downloading, and controlling a service were already
`
`implemented by Sun’s Jini platform. And, as shown below, the performance of
`
`these steps with a palm-sized computer was also specifically contemplated before
`
`the ’158 Patent.
`
`C. Prosecution History
`
`The ’158 Patent issued on April 10, 2001 from U.S. Patent Application No.
`
`09/237,609 (“’158 application”) filed January 25, 1999, which does not claim
`
`priority to any other provisional or non-provisional application.
`
` During prosecution, the Examiner rejected the claims under 35 U.S.C. §
`
`103, arguing that the claims were unpatentable over the combination of three prior
`
`art references. APPL-1002, pp. 120-25. The Applicants responded without
`
`amendment, but the Examiner maintained the rejection. Id. at pp. 134-138.
`
`During a subsequent Examiner interview, the Examiner “indicated that all claims
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`would be allowable immediately if they included reference to a palm sized
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`computer or controller.” Id. at p. 148. The Applicants subsequently amended the
`
`remainder of the claims to recite that the computer controlling the service is “palm
`
`sized” (id. at pp. 146-47), and the Examiner issued a Notice of Allowance (id. at
`
`pp. 153-56).
`
`D. Claim Construction
`
`In inter partes review, the Board applies the broadest reasonable
`
`construction in light of the specification to claims of an unexpired patent. 37
`
`C.F.R. § 42.100(b). Under the broadest reasonable construction, claim terms are
`
`given their ordinary and accustomed meaning as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, patent claims, if
`
`expiring prior to a final decision by the Board, are typically construed by the
`
`standard applied in the district courts by applying the principles set forth in Phillips
`
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37 C.F.R. §42.108(c).
`
`Petitioner believes that the ’158 Patent will expire during pendency of the
`
`requested inter partes review proceeding. Accordingly, the constructions proposed
`
`herein are consistent with both standards.
`
`1.
`
`“palm sized computer” (Claims 1-2, 6-9, 12, 14-15)
`
`The ’158 Patent’s specification provides several examples of palm-sized
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`computers, including Personal Digital Assistants (PDAs) and 3Com’s Palm
`
`Platform computers:
`
`Palm sized computers, also referred to as Personal Digital Assistants
`(PDAs), are portable devices which perform an array of personal
`management tasks such as calendar management and address book
`storage. … For example, palm sized computers such as 3Com's Palm
`Platform™ computers can upload personal appointments to a PC-
`based calendar.
`
`APPL-1001, 1:13-21.
`
`Under Vivid Techs., Inc. v. Am. Sci. & Eng., Inc., 200 F.3d 795, 803 (Fed.
`
`Cir. 1999), claim terms need to be construed “only to the extent necessary to
`
`resolve the controversy.” For the purposes of this proceeding, it is sufficient to
`
`specify that a personal digital assistant (PDA) and a 3Com Palm Platform™
`
`computer are examples of a “palm sized computer” in the context of the ’158
`
`Patent. APPL-1003, ¶¶49-51.
`
`2.
`
` “means for accessing a description of a service” (Claim 20)
`
`This limitation is a “means-plus-function” limitation governed by 35 U.S.C.
`
`§ 112 ¶6. The “function” recited in the limitation is: “accessing a description of a
`
`service.”
`
`With respect to the “means,” the ’158 Patent describes that: “Jini acts as
`
`middleware to access network resources, as it lets devices locate services and
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`download software for those services. Other middleware could be substituted for
`
`Jini if it provides discovery and software download for network-based
`
`services.” APPL-1001, 2:62-67 (emphasis added). More specifically, the ’158
`
`Patent explains that “[i]n some embodiments, the device executing the network
`
`services and the palm sized computer are executing middleware applications for
`
`communicating with the registry … this middleware includes Jini technology from
`
`Sun Microsystems.” Id. at 1:47-51 (emphasis added); see also id. at 5:16-17.
`
`Thus, a POSITA would have understood that the corresponding structure for
`
`this limitation is a palm-sized computer executing the Jini middleware from Sun
`
`Microsystems, and equivalents thereof. APPL-1003, ¶¶52-54.
`
`3.
`
`“means for downloading the program code” (Claim 20)
`
`This limitation governed by § 112 ¶6. The “function” is: “downloading the
`
`program code.”
`
`With respect to the “means,” the ’158 Patent describes that: “Jini acts as
`
`middleware to access network resources, as it lets devices locate services and
`
`download software for those services. Other middleware could be substituted for
`
`Jini if it provides discovery and software download for network-based
`
`services.” APPL-1001, 2:62-67 (emphasis added). Additionally, the ’158 Patent
`
`states: “Once the palm sized computer 100 has located the necessary services, it
`
`downloads the code required to control those services (using the lookup and
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`download protocols). Middleware, such as Sun’s Java/Jini technology, is used to
`
`move the code.” Id. at 3:61-65; see also id. at 5:16-17.
`
`Thus, a POSITA would have understood that the corresponding structure for
`
`this limitation is a palm-sized computer executing the Jini middleware from Sun
`
`Microsystems, and equivalents thereof. APPL-1003, ¶¶55-57.
`
`4.
`
`“means for executing at least a portion of the program code”
`(Claim 20)
`
`This limitation is governed by § 112 ¶6. The “function” is: “executing at
`
`least a portion of the program code.”
`
`With respect to the “means,” the ’158 Patent explains that “the programs
`
`downloaded can include Java program code,” and originally-filed claim 5
`
`recites “wherein the program code includes Java code and wherein the palm sized
`
`computer is executing a Java Virtual Machine to execute at least a portion of the
`
`program code.” APPL-1001, 1:51-52, 12:42-45. The ’158 Patent also describes
`
`that the “Java Virtual Machine 318 is executing on the palm sized
`
`computer.” APPL-1001, 5:10-15.
`
`Thus, a POSITA would have understood that the corresponding structure is
`
`a palm-sized computer executing a Java Virtual Machine, and equivalents
`
`thereof. APPL-1003, ¶¶58-60.
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`5.
`
`“means for sending control commands to the service in response to
`the means for executing” (Claim 20)
`
`This limitation is governed by § 112 ¶6. The “function” is: “sending control
`
`commands to the service in response to the means for executing.”
`
`With respect to the “means,” the ’158 Patent describes a system
`
`where: “[T]he palm sized computer 100 functions as the remote control device for
`
`the PowerPoint presentation … The palm sized computer 100 accomplishes this
`
`via middleware (e.g., Jini) and a generic control protocol capable of issuing
`
`control commands to an off-board resource.” APPL-1001, 4:12-19. Further, the
`
`’158 Patent describes that “an application control protocol manager” “is
`
`responsible for generating the application control protocol to command the
`
`selected service.” APPL-1001, 4:38-47. The ’158 Patent also explains that:
`
`Alternatively, techniques such as Java’s Remote Method Invocation
`(RMI) can be used to achieve the same goal. In this case, the control
`device makes a local function call such as doForwardSlide( ). The
`RMI mechanism will transfer the call to a remote machine which
`implements and carries out the function call.
`
`APPL-1001, 5:23-24, 6:22-45.
`
`Thus, a POSITA would have understood that the corresponding structure is
`
`a palm-sized computer executing a control protocol capable of issuing control
`
`commands or Java’s Remote Method Invocation (RMI) protocol, and equivalents
`
`thereof. APPL-1003, ¶¶61-63.
`
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`RELIEF REQUESTED AND THE REASONS FOR THE
`V.
`REQUESTED RELIEF
`
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 1-2, 6-9, 12, 14-15, and
`
`20 of the ’158 Patent, and cancel those claims as invalid.
`
`As explained below and in the declaration of Petitioner’s expert, Dr. Henry
`
`Houh, the concepts described and claimed in the ’158 Patent were not novel. This
`
`petition explains where each element of claims 1-2, 6-9, 12, 14-15, and 20 is found
`
`in the prior art and why the claims would have been obvious to a person of
`
`ordinary skill in the art (“POSITA”) before the earliest claimed priority date of the
`
`’158 Patent. See APPL-1003, ¶32 (noting the level of ordinary skill in the art).
`
`VI.
`
`IDENTIFICATION OF CHALLENGES
`
`This petition challenges the validity of claims 1-2, 6-9, 12, 14-15, and 20 of
`
`the ’158 Patent on two grounds:
`
`Claims
`Challenge
`Challenge #1 1-2, 6-9, 12,
`14-15, and
`20
`
`Ground
`35 U.S.C. § 103 over “Jini: Quick Study,”
`COMPUTERWORLD (“Jini-QS,” APPL-1005) in view
`of U.S. Patent No. 6,393,497 to Arnold et al.
`(“Arnold,” APPL-1006) and M. McCandless, “The
`PalmPilot and the Handheld Revolution,” IEEE
`EXPERT (Dec. 1997) (“McCandless,” APPL-1007)
`
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`
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`Challenge #2 1-2, 6-9, 12,
`and 14-15
`
`35 U.S.C. § 103 over U.S. Patent No. 6,131,116 to
`Riggins et al. (“Riggins,” APPL-1008) in view of
`U.S. Patent No. 6,757,729 to Devarakonda et al.
`(“Devarakonda,” APPL-1009)
`
`
`Jini-QS was publically accessible at least at the University of Wisconsin-
`
`Madison Libraries by at least December 14, 1998, and is thus prior art at least
`
`under 35 U.S.C. § 102(a). APPL-1026, ¶¶24-26.
`
`Arnold was filed on March 20, 1998 and published May 21, 2002 and is
`
`thus prior art at least under 35 U.S.C. § 102(e).
`
`Riggins was filed December 13, 1996 and published October 10, 2000 and
`
`is thus prior art at least under 35 U.S.C. § 102(e).
`
`Devarakonda was filed October 7, 1996 and published June 29, 2004 and is
`
`thus prior art at least under 35 U.S.C. § 102(e).
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`McCandless was publically accessible at least at the Library of Congress by
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`at least December 10, 1997 and is thus prior art at least under 35 U.S.C. § 102(b).
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`APPL-1026, ¶¶36-38.
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`A. The Challenges Presented in This Petition are Neither Cumulative Nor
`Redundant
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`Challenges #1 and #2 are neither cumulative nor redundant as to each other
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`or as to rejections made during prosecution of the ’158 Patent.
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`First, Challenge #2, which is based on U.S. Patent literature, is not redundant
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`to Challenge #1, which is based on NPL describing the Jini platform. Although
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`Challenge #1 teaches the exact embodiment described in the specification—using a
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`PalmPilot with Jini—the Jini QuickStudy article was published about a month
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`before the priority date of the ’158 Patent. The U.S. Patents of Challenge #2, on
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`the other hand, were filed more than two years before the priority date of the ’158
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`Patent. The Board has previously found a second challenge non-redundant when a
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`first challenge may be potentially sworn behind. See Sure-Fire Elec. Corp. v.
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`Yongjiang Yin, et. al., IPR2014-01448, Paper 25 at 4-6 (P.T.A.B. June 1, 2015)
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`(granting rehearing as to a second challenge due to Patent Owner’s potential
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`swear-behind defense as to the first challenge).
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`Second, neither challenge is redundant to rejections made by the Examiner
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`during prosecution. These challenges rely on different prior art (and combinations
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`thereof) and arguments than those previously relied upon by the Examiner1 and are
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`supported by new evidence in the form of Dr. Houh’s declaration, which was not
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`available to the Examiner during prosecution.
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`Accordingly, Petitioner respectfully requests that the Board institute on all
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`challenges.
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`1 The McCandless article was cited in an IDS during prosecution but not relied
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`upon by the Examiner in any office action.
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`– 15 –
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`VII.
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`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
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`A. Challenge #1: Claims 1-2, 6-9, 12, 14-15, and 20 are invalid under 35
`U.S.C § 103 over Jini-QS in view of Arnold and McCandless
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`1.
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`Summary of Jini-QS
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`The COMPUTERWORLD article “Quick Study: Jini” (“Jini-QS”) describes the
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`features and functionality of Sun’s Jini platform—the specific embodiment relied
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`upon in the ’158 Patent. More importantly, as illustrated below, Jini-QS describes
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`utilizing a PalmPilot (i.e., a palm-sized computer) in the Jini platform to locate and
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`control network services, the very subject matter deemed allowable by the
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`Examiner during prosecution. See APPL-1002, p. 148.
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`Jini platform
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`PalmPilot accessing the Jini platform
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`
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`APPL-1005, p. 29 (annotated); APPL-1003, pp. 35-38.
`– 16 –
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`In more detail, Jini-QS teaches that the Jini platform includes a “Lookup
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`Service” that keeps track of which services are available on the network and
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`includes pointers to downloadable “proxy code” associated with the services.
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`APPL-1005, p. 29 (left column). A client executes the proxy code to provide a
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`“graphical user interface” for controlling the associated service. Id.
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`After the client has located a service and downloaded the associated proxy
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`code, the client can issue “instructions via that proxy code” to control the service.
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`APPL-1005, p. 29 (main figure). Jini-QS also teaches that a service on the Jini
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`platform can encompass “any useful function” on the network including “software
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`components.” APPL-1005, p. 29 (left column). Further, Jini-QS teaches that Jini
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`“requires very little memory … which will let it run in devices with very low
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`memory, such as printers, personal digital assistants and cellular phones.” APPL-
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`1005, p. 29 (top).
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`2.
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`Summary of Arnold
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`Arnold is a U.S. Patent filed by the architect of the Jini platform. APPL-
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`1003, ¶71 (citing APPL-1018, p. 114 (noting that Jim Waldo is the author of the
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`“Jini Architecture Overview”)). Like the ’158 Patent and Jini-QS, Arnold
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`describes controlling network services from a client device, where “[e]xamples of
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`services provided include … software, such as programs or utilities.” APPL-1006,
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`6:55-7:8, 7:28-49. Figure 3 illustrates a network of clients that share services, such
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`as applications:
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`Application service executing
`on a Windows 95 computer
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`
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`APPL-1006, Fig. 3 (annotated); APPL-1003, pp. 38-41.
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`Also like Jini-QS, Arnold teaches that downloaded proxy code executing on
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`the client device sends call packets of control commands via remote method
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`invocation (RMI) “to invoke methods of an object on another computer or device”
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`(APPL-1006, 5:52-53, 8:18-27, 9:4-5), as illustrated in Fig. 6:
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`The smart proxy makes RMI call (control
`command) to a service running on a server
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`APPL-1006, Fig. 6 (annotated); APPL-1003, pp. 38-41.
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`Arnold further describes the details of a “lookup service” similar to the Jini
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`Lookup Service taught by Jini-QS. APPL-1006, 8:31-46. In particular, Arnold
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`teaches that a “new device may register its services with the lookup service,”
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`which includes storing an object for each service that “contains various methods
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`that facilitate access to the corresponding service.” Id.
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`3.
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`Summary of McCandless
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`To the extent Jini-QS and Arnold do not explicitly describe the types of
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`software applications that can be controlled by a PalmPilot via a network service,
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`POSITAs were contemplating before the filing of ’158 Patent that it would be
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`advantageous for PDAs to control resource-intensive applications. APPL-1007,
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`pp. 6-7; APPL-1003, ¶77. For example, a 1997 IEEE article about PalmPilots
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`contemplates controlling applications from a PDA that could not execute on the
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`PDA itself:
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`The network relaxes where and how computation occurs. For
`example, 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. When new
`versions of applications are released, your PDA will automatically
`update.
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`APPL-1007, p. 7 (middle column).
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`4.
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`Reasons to Combine Jini-QS, Arnold, and McCandless
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`For the reasons set forth below, a POSITA would have been motivated to
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`combine the teachings of Jini-QS, Arnold, and McCandless. APPL-1003, ¶¶78-88.
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`In particular, the Jini-QS article in COMPUTERWORLD describes the general
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`features and functionality of the Jini platform. Jini-QS, however, chooses to omit
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`some implementation details of Jini that were already known to POSITAs—for
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`example, details related to the mechanisms by which services are registered and
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`how control commands are transmitted from clients to network services.
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`Accordingly, when considering the description of Jini in the Jini-QS article, a
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`POSITA would have naturally considered literature more fully describing the Jini
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`platform or network service platforms similar to it. APPL-1003, ¶78. Arnold, for
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`example, includes such description. Specifically, Arnold is a U.S. Patent filed by
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`Sun Microsystems employees who helped developed the Jini platform and teaches
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`some of the implementation details of network services omitted from Jini-QS.
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`APPL-1003, ¶78 (citing APPL-1018, p. 114). Further, with respect to the
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`description in Jini-QS regarding the use of a PalmPilot in the Jini platform,
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`McCandless is an IEEE journal article that provides additional explanation of how
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`POSITAs were contemplating utilizing PalmPilots and PDAs in the late 1990s. Id.
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`a.
`
`Reasons for utilizing Arnold’s RMI protocol to control services in
`the Jini platform described by Jini-QS
`When considering the description in Jini-QS ab