`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner
`
`———————
`
`
`
`PETITION FOR INTER PARTES REVIEW
`CASE IPR NO.: IPR2018-01503
`
`OF
`
`U.S. PATENT NO. 6,216,158
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`
`
`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 .............................. 3
`
`III. GROUNDS FOR STANDING .......................................................................... 4
`
`IV. THE ’158 PATENT ........................................................................................... 4
`
`A. State of the Art before the ’158 Patent ..................................................... 4
`
`B. Overview of the ’158 Patent ..................................................................... 6
`
`C. Prosecution History .................................................................................. 8
`
`D. Claim Construction ................................................................................... 9
`
`1.
`
`2.
`
`3.
`
`4.
`
`“palm sized computer” (Claims 1-2, 6-9, 12, 14-15) ..................... 10
`
`“means for accessing a description of a service” (Claim 20) ........ 10
`
`“means for downloading the program code” (Claim 20) .............. 11
`
`“means for executing at least a portion of the program
`
`code” (Claim 20) ............................................................................ 12
`
`5.
`
`“means for sending control commands to the service in
`
`response to the means for executing” (Claim 20) .......................... 13
`
`V. RELIEF REQUESTED AND THE REASONS FOR THE REQUESTED
`
`RELIEF ....................................................................................................................14
`
`VI. IDENTIFICATION OF CHALLENGES ........................................................14
`
`
`
`– ii –
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`
`
`A. The Challenges Presented in This Petition are Neither Cumulative
`
`Nor Redundant ........................................................................................ 16
`
`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ......17
`
`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 ........ 17
`
`1.
`
`2.
`
`3.
`
`Summary of Jini-QS ....................................................................... 17
`
`Summary of Arnold ........................................................................ 19
`
`Summary of McCandless ............................................................... 21
`
`4. Reasons to Combine Jini-QS, Arnold, and McCandless ............... 22
`
`a. Reasons for utilizing Arnold’s RMI protocol to control
`
`services in the Jini platform described by Jini-QS ................. 23
`
`b. Reasons for the PalmPilot in Jini-QS to control an application
`
`it cannot execute itself, as described in McCandless .............. 24
`
`c. Reasons for utilizing Arnold’s service registration in the
`
`Lookup Service described by Jini-QS .................................... 26
`
`5. Detailed Analysis ........................................................................... 27
`
`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 ............................... 52
`
`1.
`
`2.
`
`Summary of Riggins ...................................................................... 53
`
`Summary of Devarakonda .............................................................. 54
`
`3. Reasons to Combine Riggins and Devarakonda ............................ 56
`
`
`
`– iii –
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`a. Reasons for utilizing Devarakonda’s PDA as Riggins’ network
`
`computer to control applications too resource intensive for the
`
`PDA to execute itself .............................................................. 56
`
`b. Reasons for using Devarakonda’s service registration method
`
`in Riggins’ network service method ....................................... 59
`
`4. Detailed Analysis ........................................................................... 60
`
`VIII. CONCLUSION ................................................................................................83
`
`
`
`– iv –
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 6,216,158 (“the ’158 Patent,” EX-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
`
`
`
`– 1 –
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`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, LG Electronics, Inc. (“LG” or “Petitioner”) respectfully requests that
`
`these claims be held unpatentable and cancelled.
`
`This Petition is substantively the same as IPR2018-00361, which was
`
`instituted on July 16, 2018, and is being filed concurrently with a motion for
`
`joinder with respect to that proceeding.
`
`II. MANDATORY NOTICES
`
`A. Real Party-in-Interest
`
`LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`
`MobileComm USA, Inc., are the real parties-in-interest to this inter partes review
`
`petition.
`
`B. Related Matters
`
`As of the filing date of this petition, the ’158 Patent has been asserted in the
`
`following cases:
`
`Heading
`
`Number
`
`Court
`
`Filed
`
`Uniloc USA, Inc. et al. v.
`Exclusive Group LLC
`
`1:17-cv-
`03962
`
`S.D. Ind. Oct. 27,
`2017
`
`
`
`– 2 –
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`Uniloc USA, Inc. et al. v. LG
`Electronics U.S.A., Inc. et al.
`
`Uniloc USA, Inc. et al. v.
`Apple Inc.
`
`Uniloc USA, Inc. et al. v.
`Amazon.com, Inc.
`
`Uniloc USA, Inc. et al. v.
`Apple Inc.
`
`Uniloc USA, Inc. et al. v. LG
`Electronics U.S.A., Inc. et al
`
`Uniloc USA, Inc. et al. v.
`Apple Inc.
`
`3:18-cv-
`02915
`
`3:18-cv-
`00365
`
`2:18-cv-
`00123
`
`4:18-cv-
`00362
`
`4:17-cv-
`00827
`
`2:17-cv-
`00470
`
`N.D.
`Cal.
`
`N.D.
`Cal.
`
`E.D.
`Tex.
`
`N.D.
`Cal.
`
`N.D.
`Tex.
`
`E.D.
`Tex.
`
`May 17,
`2018
`
`Jan. 17,
`2018
`
`Mar. 31,
`2018
`
`Jan. 17,
`2018
`
`Oct. 13,
`2017
`
`June 2,
`2017
`
`Aug. 2,
`E.D.
`2:17-cv-
`Uniloc USA, Inc. et al. v.
`2017
`Tex.
`00571
`Apple Inc.
`Additionally, the ’158 Patent is subject to another pending request for inter
`
`partes review, IPR2018-00361 filed by Apple Inc. on December 20, 2017
`
`(instituted on July 16, 2018). The real parties-in-interest herein are not parties to
`
`the above listed petitions and were not involved in the preparation of those
`
`petitions.
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`Anand K. Sharma
`901 New York Avenue, NW
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`Washington, DC 20001
`
`Back-Up Counsel
`
`Phone: (202) 408-4446
`Fax: (202) 408-4400
`anand.sharma@finnegan.com
`USPTO Reg. No. 43,916
`
`
`
`
`
`– 3 –
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`Minjae Kang
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`11955 Freedom Drive
`Reston, VA 20190
`
`Joshua L. Goldberg
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`
`Cory C. Bell
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`2 Seaport Ln
`Boston, MA 02210
`
`Bradford C. Schulz
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`11955 Freedom Drive
`Reston, VA 20190
`
`
`Phone: (571) 203-2318
`Fax: (202) 408-4400
`minjae.kang@finnegan.com
`USPTO Reg. No. 67,054
`
`
`Phone: (202) 408-6092
`Fax: (202) 408-4400
`joshua.goldberg@finnegan.com
`USPTO Reg. No. 59,369
`
`
`Phone: (617) 646-1641
`Fax: (202) 408-4400
`cory.bell@finnegan.com
`USPTO Reg. No. 75,096
`
`
`Phone: (571) 203-2739
`Fax: (202) 408-4400
`bradford.schulz@finnegan.com
`USPTO Reg. No. 75,006
`
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service via email.
`
`III. GROUNDS FOR STANDING
`
`The Petitioner certifies that the ’158 patent is available for inter partes
`
`review and that the Petitioner is not barred or otherwise estopped from requesting
`
`inter partes review on the grounds identified herein.
`
`IV. THE ’158 PATENT
`
`A. State of the Art before the ’158 Patent
`
`
`
`– 4 –
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`Network computing was already well known at the time of the ’158
`
`Patent. EX-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. EX-1003, ¶39 (citing EX-1015, p. 9). Because of
`
`certain advantages such as lower cost and ease of administration, POSITAs have
`
`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. EX-1003, ¶38 (citing EX-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. EX-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. EX-
`
`1003, ¶39 (citing EX-1005, p. 29; EX-1018, p. 113-14). Services could encompass
`
`any useful function including software applications and hardware resources such as
`
`printers. EX-1003, ¶39 (citing EX-1005, p. 29; EX-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.”
`
`EX-1005, p. 29. As such, Jini enabled lightweight PDAs to access, via a service,
`
`
`
`– 5 –
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`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`applications that were too computationally and memory intensive to run directly on
`
`the PDA. EX-1003, ¶39 (citing EX-1005, p. 29; EX-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
`
`processing, display and input capabilities” and therefore “do not run the same
`
`applications as desktop or laptop computers.” EX-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.” EX-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. EX-1003, ¶41.
`
`
`
`– 6 –
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`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.” EX-1001, 2:62-64, 3:28-29.
`
`With respect to the recitation of downloading code for controlling the service, the
`
`’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); EX-1003, p. 26.
`
`With respect to the claims reciting executing the downloaded code to control
`
`
`
`– 7 –
`
`
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`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.
`
`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.
`
`
`
`– 8 –
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
` 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. EX-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
`
`would be allowable immediately if they included reference to a palm sized
`
`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).
`
`
`
`– 9 –
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`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
`
`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.
`
`EX-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. EX-1003, ¶¶49-51.
`
`2.
`
` “means for accessing a description of a service” (Claim 20)
`
`
`
`– 10 –
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`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
`
`download software for those services. Other middleware could be substituted for
`
`Jini if it provides discovery and software download for network-based
`
`services.” EX-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. EX-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
`
`
`
`– 11 –
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`download software for those services. Other middleware could be substituted for
`
`Jini if it provides discovery and software download for network-based
`
`services.” EX-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
`
`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. EX-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.” EX-1001, 1:51-52, 12:42-45. The ’158 Patent also describes that
`
`
`
`– 12 –
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`the “Java Virtual Machine 318 is executing on the palm sized computer.” EX-
`
`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. EX-1003, ¶¶58-60.
`
`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.” EX-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.” EX-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
`
`
`
`– 13 –
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`RMI mechanism will transfer the call to a remote machine which
`
`implements and carries out the function call.
`
`EX-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. EX-1003, ¶¶61-63.
`
`V.
`
`RELIEF REQUESTED AND THE REASONS FOR THE
`
`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 EX-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
`
`
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`– 14 –
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`
`
`the ’158 Patent on two grounds:
`
`Challenge
`
`Claims
`
`Ground
`
`Challenge #1 1-2, 6-9, 12,
`14-15, and
`20
`
`Challenge #2 1-2, 6-9, 12,
`and 14-15
`
`35 U.S.C. § 103 over “Jini: Quick Study,”
`COMPUTERWORLD (“Jini-QS,” EX-1005) in view of
`U.S. Patent No. 6,393,497 to Arnold et al.
`(“Arnold,” EX-1006) and M. McCandless, “The
`PalmPilot and the Handheld Revolution,” IEEE
`EXPERT (Dec. 1997) (“McCandless,” EX-1007)
`35 U.S.C. § 103 over U.S. Patent No. 6,131,116 to
`Riggins et al. (“Riggins,” EX-1008) in view of U.S.
`Patent No. 6,757,729 to Devarakonda et al.
`(“Devarakonda,” EX-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). EX-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).
`
`McCandless was publically accessible at least at the Library of Congress by
`
`at least December 10, 1997 and is thus prior art at least under 35 U.S.C. § 102(b).
`
`EX-1026, ¶¶36-38.
`
`
`
`– 15 –
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`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`A. The Challenges Presented in This Petition are Neither Cumulative Nor
`
`Redundant
`
`Challenges #1 and #2 are neither cumulative nor redundant as to each other
`
`or as to rejections made during prosecution of the ’158 Patent.
`
`First, Challenge #2, which is based on U.S. Patent literature, is not redundant
`
`to Challenge #1, which is based on NPL describing the Jini platform. Although
`
`Challenge #1 teaches the exact embodiment described in the specification—using a
`
`PalmPilot with Jini—the Jini QuickStudy article was published about a month
`
`before the priority date of the ’158 Patent. The U.S. Patents of Challenge #2, on
`
`the other hand, were filed more than two years before the priority date of the ’158
`
`Patent. The Board has previously found a second challenge non-redundant when a
`
`first challenge may be potentially sworn behind. See Sure-Fire Elec. Corp. v.
`
`Yongjiang Yin, et. al., IPR2014-01448, Paper 25 at 4-6 (P.T.A.B. June 1, 2015)
`
`(granting rehearing as to a second challenge due to Patent Owner’s potential
`
`swear-behind defense as to the first challenge).
`
`Second, neither challenge is redundant to rejections made by the Examiner
`
`during prosecution. These challenges rely on different prior art (and combinations
`
`thereof) and arguments than those previously relied upon by the Examiner1 and are
`
`
`1 The McCandless article was cited in an IDS during prosecution but not relied
`
`upon by the Examiner in any office action.
`
`
`
`– 16 –
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`

`

`
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`supported by new evidence in the form of Dr. Houh’s declaration, which was not
`
`available to the Examiner during prosecution.
`
`Accordingly, Petitioner respectfully requests that the Board institute on all
`
`challenges.
`
`VII.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`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
`
`1.
`
`Summary of Jini-QS
`
`The COMPUTERWORLD article “Quick Study: Jini” (“Jini-QS”) describes the
`
`features and functionality of Sun’s Jini platform—the specific embodiment relied
`
`upon in the ’158 Patent. More importantly, as illustrated below, Jini-QS describes
`
`utilizing a PalmPilot (i.e., a palm-sized computer) in the Jini platform to locate and
`
`control network services, the very subject matter deemed allowable by the
`
`Examiner during prosecution. See EX-1002, p. 148.
`
`
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`– 17 –
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`

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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`Jini platform
`
`PalmPilot accessing the Jini platform
`
`
`
`
`
`EX-1005, p. 29 (annotated); EX-1003, pp. 35-38.
`
`In more detail, Jini-QS teaches that the Jini platform includes a “Lookup
`
`Service” that keeps track of which services are available on the network and
`
`includes pointers to downloadable “proxy code” associated with the services. EX-
`
`1005, p. 29 (left column). A client executes the proxy code to provide a “graphical
`
`user interface” for controlling the associated service. Id.
`
`After the client has located a service and downloaded the associated proxy
`
`code, the client can issue “instructions via that proxy code” to control the service.
`
`EX-1005, p. 29 (main figure). Jini-QS also teaches that a service on the Jini
`
`platform can encompass “any useful function” on the network including “software
`
`
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`– 18 –
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`

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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`components.” EX-1005, p. 29 (left column). Further, Jini-QS teaches that Jini
`
`“requires very little memory … which will let it run in devices with very low
`
`memory, such as printers, personal digital assistants and cellular phones.” EX-
`
`1005, p. 29 (top).
`
`2.
`
`Summary of Arnold
`
`Arnold is a U.S. Patent filed by the architect of the Jini platform. EX-1003,
`
`¶71 (citing EX-1018, p. 114 (noting that Jim Waldo is the author of the “Jini
`
`Architecture Overview”)). Like the ’158 Patent and Jini-QS, Arnold describes
`
`controlling network services from a client device, where “[e]xamples of services
`
`provided include … software, such as programs or utilities.” EX-1006, 6:55-7:8,
`
`7:28-49. Figure 3 illustrates a network of clients that share services, such as
`
`applications:
`
`
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`– 19 –
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`

`

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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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`Application service executing
`on a Windows 95 computer
`
`
`
`
`
`
`
`EX-1006, Fig. 3 (annotated); EX-1003, pp. 38-41.
`
`Also like Jini-QS, Arnold teaches that downloaded proxy code executing on
`
`the client device sends call packets of control commands via remote method
`
`invocation (RMI) “to invoke methods of an object on another computer or device”
`
`(EX-1006, 5:52-53, 8:18-27, 9:4-5), as illustrated in Fig. 6:
`
`
`
`
`
`
`
`– 20 –
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`

`

`
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
`
`The smart proxy makes RMI call (control
`command) to a service running on a server
`
`
`
`
`
`
`
`
`
`EX-1006, Fig. 6 (annotated); EX-1003, pp. 38-41.
`
`Arnold further describes the details of a “lookup service” similar to the Jini
`
`Lookup Service taught by Jini-QS. EX-1006, 8:31-46. In particular, Arnold
`
`teaches that a “new device may register its services with the lookup service,”
`
`which includes storing an object for each service that “contains various methods
`
`that facilitate access to the corresponding service.” Id.
`
`3.
`
`Summary of McCandless
`
`To the extent Jini-QS and Arnold do not explicitly describe the types of
`
`software applications that can be controlled by a PalmPilot via a network service,
`
`POSITAs were contemplating before the filing of ’158 Patent that it would be
`
`advantageous for PDAs to control resource-intensive applications. EX-1007, pp.
`
`6-7; EX-1003, ¶77. For example, a 1997 IEEE article about PalmPilots
`
`contemplates controlling applications from a PDA that could not execute on the
`
`PDA itself:
`
`
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`– 21 –
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`Petition for Inter Partes Review of U.S. Patent No. 6,216,158
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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.
`
`EX-1007, p. 7 (middle column).
`
`4.
`
`