`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC.
`Patent Owner
`
`_________________
`
`Patent No. 5,699,275
`_________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,699,275
`
`
`
`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`
`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ........................................................................................... 1
`II. MANDATORY NOTICES ............................................................................. 1
`III.
`PAYMENT OF FEES ..................................................................................... 2
`IV. GROUNDS FOR STANDING ........................................................................ 2
`V.
`PRECISE RELIEF REQUESTED AND GROUNDS RAISED ..................... 3
`VI. LEVEL OF ORDINARY SKILL .................................................................... 4
`VII. OVERVIEW OF THE ’275 PATENT AND THE PRIOR ART .................... 4
`A.
`The ’275 Patent ..................................................................................... 4
`B.
`Prosecution History of the ’275 Patent ................................................. 5
`1.
`U.S. Prosecution History of the ’275 Patent ............................... 5
`2.
`Prosecution History of German Counterpart of the ’275
`Patent ........................................................................................... 7
`VIII. CLAIM CONSTRUCTION ............................................................................ 8
`A.
`“mobile unit” ......................................................................................... 9
`B.
`“operating code” .................................................................................. 10
`C.
`“[manager host operable to] initiate transmission [through a
`wireless communication network of at least one discrete patch
`message defining at least one patch]” ................................................. 10
`“merging the at least one patch with current operating code” ............ 12
`“[manager host is further operable to] address [the at least one
`discrete patch message]” ..................................................................... 15
`IX. DETAILED EXPLANATION OF GROUNDS ............................................ 17
`A. Ground 1: Claim 1 Is Obvious Over Hapka and Parrillo ................... 17
`
`D.
`E.
`
`i
`
`

`

`B.
`
`Petition for Inter Partes Review
`Patent No. 5,699,275
`1.
`Claim 1 ...................................................................................... 17
`Ground 2: Claim 1 Is Obvious Over Hapka, Parrillo, and
`Wortham .............................................................................................. 61
`IPR SHOULD BE INSTITUTED ON ALL GROUNDS ............................. 65
`X.
`XI. CONCLUSION .............................................................................................. 65
`
`
`
`
`
`
`ii
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`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Statutes
`35 U.S.C. § 102(b) ..................................................................................................... 3
`
`
`
`iii
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`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`
`LIST OF EXHIBITS
`
`Ex. 1001
`
`U.S. Patent No. 5,699,275
`
`Ex. 1002
`
`Declaration of Dr. Dr. Benjamin Bederson
`
`Ex. 1003
`
`Curriculum Vitae of Dr. Benjamin Bederson
`
`Ex. 1004
`
`Prosecution History of U.S. Patent No. 5,699,275
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Japanese Published Unexamined Patent Application (A) No. 1993-
`128022 to Takehiro Sugita (“Sugita”), declaration of translator, and
`certified English translation
`
`Australian Patent Application No. 77395/91 to Ballard et al.
`(“Ballard”), including version with added line numbers and original
`version1
`RESERVED
`
`Ex. 1008 U.S. Patent No. 5,619,412 to Hapka (“Hapka”)
`
`Ex. 1009
`
`U.S. Patent No. 5,442,553 to Parrillo (“Parrillo”)
`
`Ex. 1010
`
`Ex. 1011
`
`Excerpts from prosecution history of German Patent Application No.
`96911541.9
`
`Samsung, co-defendants, and Iron Oak Technologies, LLC’s Joint
`Claim Construction and Prehearing Statement, from Iron Oak
`Technologies, LLC v. Samsung Electronics America, Inc. and
`Samsung Electronics Co., Ltd., Case No. 3:17-cv-1259 (N.D. Tex.)
`
`
`1 Ex. 1006 is a compilation containing a version of Ballard with added line
`
`numbers shown in red to the right of each page (beginning on page 2) followed by
`
`the original version of Ballard without line numbers. The line numbers were
`
`added to facilitate precise citation to the relevant passages of Ballard.
`
`iv
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`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`U.S. Patent No. 5,155,847 to Kirouac et al. (“Kirouac”)
`
`Ex. 1012
`
`Ex. 1013
`
`U.S. Patent No. 5,210,854 to Beaverton et al. (“Beaverton”)
`
`Ex. 1014
`
`U.S. Patent No. 5,155,689 to Wortham (“Wortham”)
`
`Ex. 1015
`
`RESERVED
`
`Ex. 1016
`
`U.S. Patent No. 5,628,928 to Herh et al. (“Herh”)
`
`Ex. 1017
`
`U.S. Patent No. 5,359,730 to Marron et al. (“Marron”)
`
`Ex. 1018
`
`U.S. Patent No. 4,558,413 to Schmidt et al. (“Schmidt”)
`
`Ex. 1019
`
`U.S. Patent No. 6,341,143 to Nelson et al. (“Nelson”)
`
`Ex. 1020
`
`U.S. Patent No. 5,088,032 to Bosack (“Bosack”)
`
`Ex. 1021 Webpage of a Public FTP Site for Linux System from Internet
`Archive – Wayback Machine
`
`Ex. 1022
`
`History of Red Hat Linux from Fedora Project Wiki
`
`Ex. 1023
`
`Osel et al., OpenDist – Incremental Software Distribution
`
`Ex. 1024
`
`RESERVED
`
`Ex. 1025
`
`RESERVED
`
`Ex. 1026
`
`Yavatkar et al., Improving End-to-End Performance of TCP over
`Mobile Internetworks, 1994 First Workshop on Mobile Computing
`Systems and Applications
`
`Ex. 1027
`
`U.S. Patent No. 5,684,952 to Stein (“Stein”)
`
`Ex. 1028
`
`DOD Standard Internet Protocol
`
`
`v
`
`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`
`I.
`
`INTRODUCTION
`Samsung Electronics Co., Ltd. (“Petitioner”) requests inter partes review of
`
`claim 1 (“the challenged claim”) of U.S. Patent No. 5,699,275 (“the ’275 patent”)
`
`(Ex. 1001), which, according to PTO records, is assigned to Iron Oak
`
`Technologies, LLC (“Patent Owner” or “PO”). For the reasons discussed below,
`
`the challenged claim should be found unpatentable and canceled.
`
`II. MANDATORY NOTICES
`Real Parties-in-Interest: Petitioner identifies the following as the real
`
`parties-in-interest: Samsung Electronics Co., Ltd. and Samsung Electronics
`
`America, Inc.
`
`Related Matters: The ’275 patent is at issue in the following cases: Iron
`
`Oak Technologies, LLC v. Fujitsu America, INC., Case No. 3:16-cv-3319 (N.D.
`
`Tex.); Iron Oak Technologies, LLC v. Toshiba America Information Systems Inc.
`
`and Toshiba Corp., Case No. 3:16-cv-3320 (N.D. Tex.); Iron Oak Technologies,
`
`LLC v. Asustek Computer, INC., Case No. 3:16-cv-3322 (N.D. Tex.); Iron Oak
`
`Technologies, LLC v. Sharp Electronics Corp. and Sharp Corp., Case No. 3:17-cv-
`
`2699 (N.D. Tex.); Iron Oak Technologies, LLC v. Microsoft Corp., Case No. 3:18-
`
`cv-0222 (N.D. Tex.); Iron Oak Technologies, LLC v. Lenovo (United States) Inc.
`
`and Lenovo Holding Company, Inc., Case No. 3:18-cv-1539 (N.D. Tex.); Iron Oak
`
`Technologies, LLC v. Dell Inc., Case No. 3:18-cv-1542 (N.D. Tex.); and Iron Oak
`
`1
`
`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`Technologies, LLC v. Acer America Corp. and Acer Inc., Case No. 3:18-cv-1543
`
`(N.D. Tex.).
`
`Petitioner is concurrently filing another IPR petition challenging the ’275
`
`patent. Additionally, Petitioner is concurrently filing an IPR petition challenging
`
`U.S. Patent No. 5,966,658, also at issue in the above cases.
`
`Counsel and Service Information: Lead counsel: Joseph E. Palys (Reg.
`
`No. 46,508), Backup counsel: (1) Naveen Modi (Reg. No. 46,224), (2) Phillip W.
`
`Citroën (Reg. No. 66,541), and (3) Howard Herr (pro hac vice admission to be
`
`requested). Service information is Paul Hastings LLP, 875 15th St. N.W.,
`
`Washington, D.C., 20005, Tel.: 202.551.1700, Fax: 202.551.1705, email: PH-
`
`Samsung-IronOak-IPR@paulhastings.com.
`
` Petitioner consents to electronic
`
`service.
`
`III. PAYMENT OF FEES
`The PTO is authorized to charge any fees due during this proceeding to
`
`Deposit Account No. 50-2613.
`
`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’275 patent is available for review and Petitioner
`
`is not barred or estopped from requesting review on the grounds identified herein.
`
`2
`
`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`PRECISE RELIEF REQUESTED AND GROUNDS RAISED
`Claim 1 should be canceled as unpatentable based on the following grounds:
`
`V.
`
`Ground 1: Claim 1 is unpatentable under pre-AIA 35 U.S.C. § 103 as
`
`obvious over U.S. Patent No. 5,619,412 to Hapka (“Hapka”) (Ex. 1008) in view of
`
`U.S. Patent No. 5,442,553 Parrillo (“Parrillo”) (Ex. 1009); and
`
`Ground 2: Claim 1 is unpatentable under pre-AIA 35 U.S.C. § 103 as
`
`obvious over Hapka, Parrillo, and U.S. Patent No. 5,155,689 (“Wortham”) (Ex.
`
`1014).
`
`The ’275 patent issued from U.S. Patent Application No. 08/422,075 (the
`
`’075 application”), filed on April 12, 1995. (Ex. 1001, Cover.) Thus, for purposes
`
`of this proceeding only, Petitioner assumes the earliest effective filing date of the
`
`’275 patent is April 12, 1995. Hapka was filed on October 19, 1994, and patented
`
`on April 8, 1997 (Ex. 1008, Cover); Parrillo was filed on November 16, 1992, and
`
`patented on August 15, 1995 (Ex. 1009, Cover); and Wortham issued on October
`
`13, 1992 (Ex. 1014, Cover). Therefore, Hapka and Parrillo are prior art under pre-
`
`AIA 35 U.S.C. § 102(e), and Wortham is prior art under pre-AIA 35 U.S.C. §
`
`102(b). None of these references were considered by the Patent Office during
`
`prosecution of the ’275 patent, though U.S. Patent No. 5,299,132, a continuation of
`
`Wortham, was cited in the record but not applied substantively in any office action.
`
`(See, e.g., Ex. 1001, Cover (“References Cited”); Ex. 1004.)
`
`3
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`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`
`VI. LEVEL OF ORDINARY SKILL
`A person of ordinary skill in the art as of the claimed priority date of the
`
`’275 patent (“POSITA”) would have had at least a Bachelor’s degree in computer
`
`science, electrical engineering, or a similar discipline and at least two years
`
`additional relevant experience. Relevant experience can include, for example,
`
`work relating to device software management, including the remote update of
`
`code, such as mobile device software development and mobile device software
`
`updates. (Ex. 1002, ¶¶20-21.)2
`
`VII. OVERVIEW OF THE ’275 PATENT AND THE PRIOR ART
`A. The ’275 Patent
`The ’275 patent relates to “system and method for remote patching of
`
`operating code located in a mobile unit.” (Ex. 1001, Title.) The ’275 patent
`
`acknowledges that that there was a need for correcting or upgrading existing
`
`software and that there were systems known at the time that addressed this need,
`
`including systems that distributed software updates on storage mediums and
`
`systems that provided access to software updates from a central computer system.
`
`(Id., 1:13-35.) This description of known ways to update software is consistent
`
`
`2 Petitioner submits the declaration of Dr. Benjamin Bederson (Ex. 1002), an
`
`expert in the field of the ’275 patent. (Ex. 1002, ¶¶3-15; Ex. 1003.)
`
`4
`
`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`with the technologies that were known to a POSITA prior to the date of the alleged
`
`invention. (Ex. 1002, ¶¶22-29; see also, e.g., Ex. 1006, 2:6-11; Ex. 1012, 2:63-3:5,
`
`3:35-36; Ex. 1019, Abstract; Ex. 1021, 1; Ex. 1022, 2; Ex. 1023, 181, 186; Ex.
`
`1026, Abstract; Ex. 1027, Abstract; Ex. 1028, p. 14; 1.1.)
`
`As to the alleged invention, the specification of the ’275 patent explains that
`
`a “manager host” may “enhance” or “correct” “current operating code located in
`
`one or more of the mobile units” by creating a “patch file…that defines one or
`
`more patches that need to be made to provide enhancements or corrections to the
`
`current operating code.” (Id., 3:40-44.) According to the specification, the patch
`
`file can be represented by one or more discrete patch messages (id., 3:57-59, 4:65-
`
`5:4, 7:67-8:1), where “each patch message can be sized as a discrete data payload
`
`suitable for transmission in a message through communication network 12” (id.,
`
`3:59-61). The manager host can transmit the one or more discrete patch messages
`
`to “appropriate mobile units,” after which “the mobile unit can…merge the defined
`
`patches with the current operating code, and switch execution to the patched
`
`operating code.” (Id., 3:61-66.) (Ex. 1002, ¶¶30-37; see also id., ¶¶22-36.)
`
`B.
`
`Prosecution History of the ’275 Patent
`1.
`U.S. Prosecution History of the ’275 Patent
`During prosecution of the ’075 application, which issued as the ’275 patent,
`
`the Examiner initially rejected certain pending claims and indicated others would
`
`5
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`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`be allowable if rewritten in independent form. (Ex. 1004, 77-85.) In response, the
`
`applicant amended the claims to additionally recite “a second mobile unit operable
`
`to…” and “wherein the host manager is further operable to…,” limitations that are
`
`also recited in the challenged claim. (Id., 86-97; Ex. 1001, 13:44-53.) In asserting
`
`that the amended claims are distinguishable from the prior art of record (id., 95-
`
`96), the applicant distinguished prior art that “replaces entire versions of operating
`
`code” from “creating patched operating code by merging the at least one patch
`
`with the current operating code to create the patched operating code,” a feature
`
`similarly recited in the challenged claim. (Id., 95 (“the [prior art reference]
`
`replaces entire versions of operating code, rather than creating patched operating
`
`code as recited in Claim 33”); see also Ex. 1001, 13:40-41, 13:46-47.) The
`
`Examiner subsequently allowed the amended claims, suggesting that the prior art
`
`of record did not disclose the limitation, “wherein the manager host is further
`
`operable to address the at least one discrete patch message such that the at least one
`
`discrete patch message is transmitted to the first mobile unit but not to the second
`
`mobile unit,” which was added to the claims as noted above. (Id., 101-103.) But,
`
`as explained below, addressing a discrete patch message such that it is transmitted
`
`to one mobile unit but not another was nothing new in the early 1990s, as the prior
`
`art identified herein demonstrates.
`
`6
`
`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`Prosecution History of German Counterpart of the ’275
`Patent
`During prosecution of a German counterpart of the ’275 patent (App. No.
`
`2.
`
`96911541.9 (Ex. 1010)), the Applicant in an Amendment explained the meanings
`
`of several claim terms, which are similarly recited in the challenged claim,
`
`including, inter alia:
`
`a) The term “operating code” refers to code executable by a
`processor. “Operating code” directs the processor to perform
`certain operations, as opposed to non-executable data (e.g.
`configuration parameters, telephone numbers), which are per se
`unable to trigger any operation. This is the conventional
`interpretation given to “operating code” in computer science,
`also consistent with the wording of claim 1, in which the
`processor is operable “to execute the current operating code”
`and “to switch execution to the patched operating code”.
`
`b) The term “patch” in the context of the claims has to be
`interpreted as a portion of operating code which is to be
`incorporated into the existing (current) operating code in the
`mobile unit, in order to create new (patched) operating code.
`
`The specification explicitly distinguishes between the term
`“patching” and the term “downloading”. The term “patching”
`refers to “incorporating patches of code into existing code on
`the mobile units”. The term “downloading” refers to “replacing
`the current code in the mobile unit with a new version of
`code”….
`
`7
`
`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`As a portion of operating code, a patch can have a customizable
`size…can be inserted into any location within the current
`operating code, thus forming a modified operating code which
`still needs to be executable (patched operating code)….
`
`c) [T]he term “merging” specifies that the patch is incorporated
`into existing (current) code in the mobile unit, without
`replacing the entire current operating code…, but rather
`modifying the portion(s) of operating code that need to be
`changed in order to create new (patched) operating code.
`
`(Ex. 1010, 4-5.)
`
`VIII. CLAIM CONSTRUCTION
`Because the ’275 patent expired on April 12, 2015, its claims should be
`
`construed consistent with “the principles set forth by the [Federal Circuit] in
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005).” Square, Inc.
`
`v. J. Carl Cooper, IPR2014-00157, Paper 17 at 2 (June 23, 2014). Petitioner below
`
`provides proposed constructions under the Phillips standard for certain terms
`
`recited in claim 1 of the ’275 patent. The remaining terms should be given their
`
`plain and ordinary meaning. Petitioner demonstrates how the prior art discloses the
`
`limitations of claim 1 under these interpretations.
`
`Petitioner also demonstrates how the prior art discloses the limitations of
`
`claim 1 under interpretations of certain terms proposed by Patent Owner in the
`
`Northern District of Texas (Case No. 3:17-cv-1259). (Ex. 1011.)
`
`8
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`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`
`A.
`“mobile unit”
`The term “mobile unit,” as recited in claim 1, should be construed to mean
`
`“portable, battery-powered device for use while in motion,” consistent with the
`
`intrinsic record of the ’275 patent.
`
`Claim 1 recites a first and second “mobile unit,” each of which are “operable
`
`to receive the at least one discrete patch message,” “create patched operating
`
`code,” and “switch execution to the patched operating code.” (Ex. 1001, 13:37-
`
`49.) As described in the specification, the mobile unit is configured as a portable
`
`device for use while in motion. (Ex. 1001, 7:17-25, 4:57-64, 5:49-52.) For
`
`example, the specification explains that the mobile unit may be a “portable, hand-
`
`held device” for use in any “application requiring portability.” (Id., 7:24-25
`
`(emphasis added).) The mobile unit may also be “mounted to a vehicle or
`
`associated with other movable objects.” (Id., 7:19-20.) Additionally, given that the
`
`mobile unit is portable and either hand-held or mounted to a moveable object, in
`
`order to operate as described in the ’275 patent, the mobile unit is necessarily
`
`powered by a battery. (See
`
`id., 6:25-7:25, 10:22-12:67, FIGS. 3, 5-7.)
`
`Accordingly, Petitioner’s construction of “mobile unit” is consistent with the
`
`descriptions of such a unit in the specification, and the language of claim 1.
`
`9
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`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`
`B.
`“operating code”
`The term “operating code,” as recited in claim 1, should be construed to
`
`mean “code used to operate the mobile unit,” consistent with the claim language
`
`and specification of the ’275 patent. (See Ex. 1001, 3:40-56, 4:9-15, 4:57-64,
`
`13:32-33.) PO agreed with this interpretation in the related litigation involving the
`
`’275 patent. (Ex. 1011, 1.)
`
`C.
`
`“[manager host operable to] initiate transmission [through a
`wireless communication network of at least one discrete patch
`message defining at least one patch]”
`In the context of the ’275 patent, the phrase “[manager host operable to]
`
`initiate transmission [through a wireless communication network of at least one
`
`discrete patch message defining at least one patch] should be construed to mean
`
`“[manager host operable to] begin transmission [through a wireless communication
`
`network of at least one discrete patch message defining at least one patch] without
`
`first receiving a request for a patch from a mobile unit.”
`
`To begin, claim 1 recites that a “manager host” is operable to “initiate
`
`transmission” of a patch. (Ex. 1001, 13:34-36.) Thus, according to the claim
`
`language, transmission is not initiated by another component, such as a “mobile
`
`unit” by requesting a patch. Additionally, claim 1 recites that the manager host is
`
`operable to “address” each patch to a specific mobile unit before beginning
`
`10
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`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`transmission, rather than simply transmitting a patch in response to a request from
`
`a mobile unit. (Id., 13:50-53.)
`
`This understanding of claim 1 captures the unmistakable purpose of the ’275
`
`patent. As explained in the specification, prior art systems used a bidirectional and
`
`interactive link for remote patching of operating code located in a mobile unit. (Id.,
`
`1:20-50, 2:6-9, 2:18-31, 4:35-56.) However, such a link may not be appropriate
`
`for wireless communications because, for example, transmitting a large amount of
`
`data can be “expensive, error prone, and risky.” (Id., 4:35-49.) To allegedly
`
`overcome such limitations of wireless communication, the ’275 patent describes a
`
`system for “broadcasting short messages over one or several separate
`
`communication sessions that do not require interactive or substantial bidirectional
`
`communications.” (Id., 4:49-56; id. 2:13-32, 4:1-17, 4:48-53, 5:15-18, 5:49-61.)
`
`By broadcasting addressed messages in such a way, the manager host and mobile
`
`unit need not even make contact before transmission. (Id., 4:9-17, 5:15-18.) Thus,
`
`in the context of claim 1 and the specification, the claimed “[manager host
`
`operable to] initiate transmission [through a wireless communication network of at
`
`least one discrete patch message defining at least one patch]” should be interpreted
`
`to mean “[manager host operable to] begin transmission [through a wireless
`
`communication network of at least one discrete patch message defining at least one
`
`patch] without first receiving a request for a patch from a mobile unit.”
`
`11
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`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`D.
`“merging the at least one patch with current operating code”
`In the context of the ’275 patent, “merging the at least one patch with current
`
`operating code,” as recited in claim 1, means “incorporating the at least one patch
`
`into the current operating code, without replacing the entire current operating
`
`code.” This understanding is consistent with the claim language, the specification,
`
`and the U.S. and foreign file histories.
`
`For example, claim 1 recites “merging the at least one patch with current
`
`operating code,” and that “merging” results in “patched operating code.”
`
`Consistent with the claim language, the specification of the ’275 patent
`
`consistently describes “merging” as incorporating at least one patch into the
`
`current operating code to create patched operating code, without replacing the
`
`entire current operating code. (See, e.g., Ex. 1001, 1:54-61, 2:2-5, 3:63-66, 4:65-
`
`5:10, 6:60-7:5, 7:28-30, 10:24-32, 11:22-25, 11:54-12:26.) As one example, the
`
`specification explains that “merging” involves “step[ping] through byte-by-byte,
`
`and upon detecting a patch, insert[ing] bytes of a patch” supplied by “patch
`
`messages.” (Id., 11:54-12:26, FIG. 6.) If a memory address “is not to be
`
`modified,” the mobile unit retains “the associated byte of [the] operating code.”
`
`(Id., 12:9-12.) “In this manner, the current operating code in the mobile unit may
`
`be remotely patched to provide enhancements or corrections as part of ongoing
`
`support of the mobile unit.” (Id., 11:48-51.) Also, the specification explains that
`
`12
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`

`

`Petition for Inter Partes Review
`Patent No. 5,699,275
`merging involves “incorporating patches of code into existing code on the mobile
`
`units.” (See, e.g., id., 7:28-30 (emphasis added).)
`
`The specification contrasts such “a patch process by which a mobile unit can
`
`receive a set of patch messages” and “merge the defined patches with the current
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`operating code to create patched operating code” with a “similar operation” where
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`“download messages defining new operating code” are received “to replace the
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`current operating code in the mobile unit.” (Id., 10:24-32 (emphasis added); see
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`also id., Abstract, 7:39-10:21 (describing “patch messages” for merging patches
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`with existing operating code and “download messages” defining new operating
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`code to replace existing operating code), 11:22-29 (“This process is not necessary
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`if the mobile unit receives a set of download messages that in themselves define
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`the new operating code to be executed.”), 11:51-53 (“Similarly, a set of download
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`messages can provide an entirely new version of software to replace the current
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`version.”), 13:18-25.) Thus, according to the specification, merging involves
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`incorporating at least one patch into the current operating code, without replacing
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`the entire current operating code, while other operations replace the entire current
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`operating code.
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`This understanding
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`is consistent with representations made during
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`prosecution of the ’075 patent and a German counterpart. For example, during
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`prosecution of the ’075 application, the applicant distinguished prior art that
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`Petition for Inter Partes Review
`Patent No. 5,699,275
`“replaces entire versions of operating code” from “creating patched operating code
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`by merging the at least one patch with the current operating code to create the
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`patched operating code,” a feature similarly recited in the challenged claim. (Ex.
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`1004, 86-97; see also id., 95 (“Naylor replaces entire versions of operating code,
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`rather than creating patched operating code as recited in Claim 33.”)) Similarly,
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`during prosecution of a German counterpart, the applicant explained that “[t]he
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`term ‘patching’ refers to ‘incorporating patches of code into existing code on the
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`mobile units’” and that “the term ‘merging’ specifies that the patch is incorporated
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`into existing (current) code in the mobile unit, without replacing the entire current
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`operating code.” (Ex. 1010, 4-5; see also id., 4 (consistent with the specification,
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`explaining that “[t]he term ‘downloading’ refers to ‘replacing the current code in
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`the mobile unit with a new version of code’”).) Thus, “merging the at least one
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`patch with current operating code,” as recited in claim 1, cannot encompass
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`replacing the entire current operating code. Instead, it means incorporating a patch
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`without replacing the entire current operating code.
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`Accordingly, the phrase “merging the at least one patch with current
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`operating code,” as recited in claim 1, should be construed to mean “incorporating
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`at least one patch into the current operating code to create patched operating code,
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`without replacing the entire current operating code.”
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`E.
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`Petition for Inter Partes Review
`Patent No. 5,699,275
`“[manager host is further operable to] address [the at least one
`discrete patch message]”
`In the context of the ’275 patent, “[manager host is further operable to]
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`address [the at least one discrete patch message],” as recited in claim 1, means that
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`the “[manager host is further operable to] decide which specific mobile unit to send
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`[the at least one discrete patch message] to before beginning transmission” of the
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`message.
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`Claim 1 recites that the manager host is operable to “address the at least one
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`discrete patch message such that the at least one discrete patch message is
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`transmitted to the first mobile unit but not to the second mobile unit.” (Ex. 1001,
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`13:50-53.)
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` Thus, based on the claim language, “address” refers to the
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`determination of which specific mobile unit to send the patch message.
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`Additionally, given that the manager host both “initiate[s] transmission” of and
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`“address[es]” the patch message, the manager host necessarily determines which
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`specific mobile unit to send the message before beginning transmission. Indeed, if
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`the “address[ed]” mobile unit is not determined before beginning transmission, the
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`claimed system would not know where to send the patch message.
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`This understanding of claim 1 is consistent with the specification of the ’275
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`patent, which explains that a manager host may “desire to enhance, correct, or
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`replace current operating code located in one or more of the mobile units.” (Ex.
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`1001, 3:40-42.) Furthermore, the specification explains that the central location
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`Petition for Inter Partes Review
`Patent No. 5,699,275
`(i.e., the manager host) operates to keep track of “how to deliver patch messages”
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`and can “tailor the broadcasts of patches to different mobile units.” (Id., 2:19-24.)
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`Thus, the manager host “can address patch messages to mobile units as appropriate
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`for the patch file being transmitted.” (Id., 5:15-16.) For example, the manager
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`host “can address a patch message to one of the mobile units, to all of the mobile
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`units, or to a group of mobile units.” (Id., 5:17-25.) By “addressing patch
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`messages to the appropriate mobile units,” the manager host “can provide varying
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`levels of enhancements to [different] mobile units.” (Id., 4:11-20.) Additionally,
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`an enhanced services complex, which facilitates communications between the
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`manager host and mobile units, “recognizes whether a patch message is addressed
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`to one mobile unit, a group of mobile units or all mobile units, establishes
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`communication with the appropriate mobile units, and transmits the discrete patch
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`message.” (Id., 5:26-41.)
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`Thus, the claim language and specification make clear that “[manager host is
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`further operable to] address [the at least one discrete patch message],” as recited in
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`claim 1, should be construed to mean “[manager host is further operable to] decide
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`which specific mobile unit to send [the at least one discrete patch message] to
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`before beginning transmission.”
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`Petition for Inter Partes Review
`Patent No. 5,699,275
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`IX. DETAILED EXPLANATION OF GROUNDS
`As discussed below, claim 1 is unpatentable in view of the prior art. (Ex.
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`1002, ¶¶16-19, 38-44, 54-58, 62-64, 190-265.)
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`A. Ground 1: Claim 1 Is Obvious Over Hapka and Parrillo
`1.
`Claim 1
`“A system for remote patching of operating code
`a)
`located in a mobile unit, comprising:”
`To the extent the preamble of claim 1 is limiting, Hapka in view of Parrillo
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`discloses this limitation. (Ex. 1002, ¶¶54-58, 62-62, 190-222.)
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`To begin, Hapka is generally directed to a “system for remotely accessing an
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`engine control system and selectively controlling and changing an existing engine
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`algorithm.” (Ex. 1008, Abstract; Ex. 1002, ¶¶54-58, 192.) Hapka describes
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`several objects of its invention, including “to provide a system for remotely
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`modifying engine control system parameters,” “to provide a system that can
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`change an existing engine algorithm from a remote location,” and “to provide a
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`system that stores transmitted data in the memory of an engine control system to
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`subsequently change an existing engine algorithm.” (Ex. 1008, 2:36-46
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`(emphases added); see also id., 3:7-13 (“a system for remotely accessing and
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`modifying the engine control system and selectively modifying vehicle operating
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`parameters”).)
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`for Inter PPartes Rev
`iew
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`Patent NNo. 5,699,2275
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`WWith respect to Figuure 1a (repproduced bbelow), Haapka descrribes a vehhicle
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`Petition
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`control
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`system 1,
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`which inccludes fixed base sitee equipmennt 37 haviing a compputer
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`12, andd a vehicle remotte from tthe fixed
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`communnications ssystem 4, aa remote ccommand iinterface s
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`base sitte having
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`an on-bboard
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`ection 35,
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`and an enngine
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`control system 36. (Id., 4:5--10.)
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`(Id., FIG. 1a.) Hapka discloses that:
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`Petition for Inter Partes Review
`Patent No. 5,699,275
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`The fixed base site equipment [37] includes a computer 12
`with a radio telephone 24, a modem 25, and a communications
`channel 26. The on-board communications system 4 includes
`an on-board communications module 7 with a display 21,
`alphanumeric keypad 22, and a radio telephone 23. The remote
`command interface section 35 comprises a data bus 28 and a
`remote command interface device 8.…The remote command
`interface devic