IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Haller et al.
`In re Patent of:
`U.S. Patent No.: 7,039,033
`Issue Date:
`May 2, 2006
`Appl. Serial No.: 09/850,399
`Filing Date:
`May 7, 2001
`Title:
`SYSTEM, DEVICE AND COMPUTER READABLE MEDI-
`UM FOR PROVIDING A MANAGED WIRELESS NET-
`WORK USING SHORT-RANGE RADIO SIGNALS
`
`IPR Control No.: IPR2015-01444
`Atty Docket No.: 00035-0004IP1
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 7,039,033 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`APPLE 1028
`
`1
`
`

`

`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`TABLE OF CONTENTS
`
`V.
`
`TABLE OF CONTENTS ........................................................................................... i
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 1
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 1
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 1
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 2
`D. Service Information .................................................................................. 2
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 2
`II.
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 2
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 3
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 3
`IV. SUMMARY OF THE ’033 PATENT ............................................................. 5
`A. Brief Description ....................................................................................... 5
`B. The Effective Priority Date of the Claims of the ’033 Patent & Asserted
`Earlier Date of Invention .......................................................................... 7
`C. Level of Ordinary Skill in the Art as of the Critical Date ........................ 7
`CLAIM CONSTRUCTION UNDER 37 C.F.R. §§ 42.104(B)(3) .................. 8
`A. “identifies whether the service is available at a particular time” ............. 9
`VI. MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A
`REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE
`’033 PATENT IS UNPATENTABLE .......................................................... 10
`A. [GROUND 1] – Claims 1, 4, 7, and 14 are obvious over Marchand in
`view of Nurmann and Vilander .............................................................. 11
`B. [GROUND 2] – Claim 5 is rendered obvious over Marchand in view of
`Nurmann, Vilander, and RFC 2543 ........................................................ 32
`C. [GROUND 3] – Claims 6 and 23 are rendered obvious over Marchand
`in view of Nurmann, Vilander, and Larsson .......................................... 35
`D. [GROUND 4] – Claims 12, 15, 22, 34, 39, 40, 42, and 46 are rendered
`obvious over Marchand in view of Nurmann, Vilander, and JINI Spec.
` ................................................................................................................. 39
`E. [GROUND 5] - Claims 25 and 28 are rendered obvious over Marchand
`in view Larsson and JINI Spec. .............................................................. 55
`VII. CONCLUSION .............................................................................................. 60
`
`
`i
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`2
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`
`EXHIBITS
`
`EXHIBIT-1001 U.S. Patent No. 7,039,033 to Haller et al. (“’033 Patent”)
`
`EXHIBIT-1002
`
`S. M. Bellovin et al., Network Firewalls, Network Firewalls,
`IEEE Communications Magazine, Vol. 32, Issue 9, pp. 50-57,
`1999 (“Bellovin”)
`
`EXHIBIT-1003 Declaration of Dr. Sayfe Kiaei
`
`EXHIBIT-1004 Curriculum Vitae of Dr. Sayfe Kiaei
`
`EXHIBIT-1005 PCT. Publication No. WO 01/76154 A2 to Marchand
`(“Marchand PCT”)
`
`EXHIBIT-1006 U.S. Patent Application No. 09/541,529 to Marchand
`(“Marchand Priority”)
`
`EXHIBIT-1007 Handley et al., Request For Comments 2543 SIP: Session Ini-
`tiation Protocol, The Internet Society, March, 1999 (“RFC
`2543”)
`
`EXHIBIT-1008 U.S. Patent No. 6,836,474 to Larsson (“Larsson”)
`
`EXHIBIT-1009 K. Arnold et al., The JINITM Specification, Addison-Wesley,
`June 1, 1999 (“JINI Spec.”)
`
`EXHIBIT-1010 U.S. Patent No. 6,560,642 to Nurmann (“Nurmann”)
`
`EXHIBIT-1011 U.S. Patent No. 6,771,635 to Vilander (“Vilander”)
`
`EXHIBIT-1012 Claim Chart from IXI’s Infringement Contentions of U.S. Pa-
`tent No. 7,039,033 in 14-cv-4428 (April 9, 2015)
`
`EXHIBIT-1013 Claim Chart from IXI’s Infringement Contentions of U.S. Pa-
`tent No. 7,039,033 in 14-cv-4355 (March 27, 2015)
`
`ii
`
`3
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`

`

`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`EXHIBIT-1014 R. Droms, Request for Comments 2131 Dynamic Host Configu-
`ration Protocol, The Internet Society, March, 1997 (“RFC
`2131”)
`
`EXHIBIT-1015 U.S. Patent No. 6,622,017 to Hoffman (“Hoffman”)
`
`
`
`
`
`
`iii
`
`4
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`

`

`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc. (collec-
`
`tively “Samsung”), and Apple Inc. (“Apple”) (Samsung and Apple, collectively
`
`“Petitioners”) petition for Inter Partes Review (“IPR”) under 35 U.S.C. §§ 311–
`
`319 and 37 C.F.R. § 42 of claims 1, 4-7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42,
`
`and 46 (the “Challenged Claims”) of U.S. Patent No. 7,039,033 (the “’033 Pa-
`
`tent”). As explained in this petition, there exists a reasonable likelihood that Peti-
`
`tioners will prevail with respect to at least one Challenged Claim.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and Ap-
`
`
`
`ple Inc. are the real parties-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Petitioners are not aware of any disclaimers, reexamination certificates or
`
`petitions for inter partes review for the ’033 Patent. The ’033 Patent is the subject
`
`of Civil Action Numbers 14-cv-4355 (U.S.D.C. S.D.N.Y.), filed June 17, 2014; 14-
`
`cv-4428 (U.S.D.C. S.D.N.Y.), filed June 18, 2014; and 14-cv-7954 (U.S.D.C.
`
`1
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`5
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`

`

`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`
`S.D.N.Y.), filed October 2, 2014.1
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioners provide the following designation of counsel.
`
`LEAD COUNSEL
`W. Karl Renner, Reg. No. 41,265
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 202-783-2331
`
`
`BACKUP COUNSEL
`Kevin Greene, Reg. No. 46,031
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 202-783-2331
`
`D. Service Information
`Please address all correspondence and service to counsel at the address pro-
`
`vided in Section I.C. Petitioners also consent to electronic service by email at
`
`IPR00035-0004IP1@fr.com.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`II.
`The Patent and Trademark Office is authorized to charge Deposit Account
`
`No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and any addi-
`
`tional fees.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`
`1 The unpatentability positons herein take into account Patent Owner’s infringe-
`
`ment positons in the co-pending litigation and, in some instances, are based in-part
`
`on these positions.
`
`2
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`6
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`

`

`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioners certify that the ’033 Patent is available for IPR. The earliest ser-
`
`vice of complaints against the Petitioners was against Samsung on June 20, 2014.
`
`This petition is being filed within one year of that date. Petitioners are not barred
`
`or estopped from requesting this review on the below-identified grounds.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`Petitioners request an IPR of the Challenged Claims on the grounds set forth
`
`in the table shown below, and request that each of the Challenged Claims be found
`
`unpatentable. An explanation of unpatentability is provided in the detailed descrip-
`
`tion that follows, which indicates where each element can be found in the cited
`
`prior art, and the relevance of that prior art. Additional explanation and support for
`
`each ground of unpatentability is set forth in Exhibit 1003, the Declaration of Dr.
`
`Sayfe Kiaei, referenced throughout this Petition.
`
`’033 Patent Claims
`Ground
`Ground 1 1, 4, 7, and 14
`
`Ground 2 5
`
`Ground 3 6 and 23
`
`Ground 4 12, 15, 22, 34, 39, 40,
`42, and 46
`Ground 5 25 and 28
`
`
`
`Basis for Unpatentability
`Marchand, Nurmann, and Vilander
`under 35 U.S.C. § 103(a)
`Marchand, Nurmann, Vilander, and
`RFC 2543 under 35 U.S.C. § 103(a)
`Marchand, Nurmann, Vilander, and
`Larsson under 35 U.S.C. § 103(a)
`Marchand, Nurmann, Vilander, and
`JINI Spec. under 35 U.S.C. § 103(a)
`Marchand, Larsson, and JINI Spec.
`under 35 U.S.C. § 103(a)
`
`3
`
`7
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`

`

`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`Marchand PCT (Ex. 1005) qualifies as prior art under 35 U.S.C § 102(e).
`
`Specifically, Marchand PCT was filed on March 27, 2001. Since Marchand PCT is
`
`an international application filed after November 29, 2000, its prior art effect under
`
`35 U.S.C § 102(e) is governed by § 102(e) as amended by the American Inventor’s
`
`Protection Act (AIPA). Public Law 107-273, Sec. 4508. Under that version of
`
`§ 102(e), “an international application filed under the treaty defined in section
`
`351(a) [i.e., the Patent Cooperation Treaty (PCT)] shall have the effects for the
`
`purposes of this subsection [i.e., § 102(e)] of an application filed in the United
`
`States . . . if the international application designated the United States and was pub-
`
`lished under Article 21(2) of such treaty in the English language.” Public Law 107-
`
`273, Sec. 4505. Marchand PCT designated the United States and was published in
`
`English under Article 21(2) of the PCT. See Marchand PCT, bibliographic page.
`
`As with an application filed in the United States, the effective § 102(e) date of such
`
`an international application is the application’s earliest priority date. See 35 U.S.C
`
`§ 120 and § 365(c). Marchand PCT claims priority from Marchand Priority (Ex.
`
`1006), which is a prior national application that was filed on April 3, 2000. This
`
`date is before the ’033 Patent’s Critical Date (see Section IV.B below). According-
`
`ly, Marchand PCT qualifies as prior art under 35 U.S.C § 102(e). The Petitioners
`
`cite to both Marchand PCT and Marchand Priority below to demonstrate that
`
`4
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`8
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`Marchand PCT has the benefit of priority of Marchand Priority for the disclosure
`
`relied on.
`
`Larsson (Ex. 1008) qualifies as prior art under 35 U.S.C § 102(e). Specifi-
`
`cally, Larsson was filed as application number 09/652,421 on August 31, 2000, be-
`
`fore the ’033 Patent’s Critical Date (see Section IV.B below).
`
`Nurmann (Ex. 1010) qualifies as prior art under 35 U.S.C § 102(e). Specifi-
`
`cally, Nurmann was filed as application number 09/425,863 on October 23, 1999,
`
`before the ’033 Patent’s Critical Date (see Section IV.B below).
`
`Vilander (Ex. 1011) qualifies as prior art under 35 U.S.C § 102(e). Specifi-
`
`cally, Vilander was filed as application number 09/536,015 on August 31, 2000,
`
`before the ’033 Patent’s Critical Date (see Section IV.B below).
`
`RFC 2543 (Ex. 1007) and JINI Spec. (Ex. 1009) qualify as prior art under 35
`
`U.S.C § 102(b). Specifically, RFC 2543 and JINI Spec. were published in March,
`
`1999, and June 1, 1999, respectively. These publication dates are more than a year
`
`before the ’033 Patent’s earliest effective priority date of May 7, 2001.
`
`IV. SUMMARY OF THE ’033 PATENT
`A. Brief Description2
`
`
`2 This description of the ’033 Patent is based on statements made in the specifica-
`
`tion of the ‘033 Patent. Petitioners do not represent that the descriptions in the
`
`
`
`5
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`9
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`The ’033 Patent describes a gateway device that provides wireless commu-
`
`nication between a personal area network (PAN) and a wide area network (WAN),
`
`such as the Internet. Ex. 1001 at Fig. 1; 4:8-59. A system 100 of the ’033 Patent is
`
`illustrated in Figure 1:
`
`
`
`The gateway device 106 is coupled to terminals 107 by short-range radio
`
`signals (using, for example, Bluetooth) to form the PAN. Id. at 4:15-22. The gate-
`
`way device 106 is also coupled to the cellular network 105 by cellular signals. Id.
`
`at 4:50-58. The cellular network 105 is coupled to a carrier backbone 104, which in
`
`turn is coupled to the Internet 103. Id. The gateway device 106 has a “component
`
`for accessing information from the Internet responsive to a first short-range radio
`
`
`specification of the ’033 Patent are included in the elements of the Challenged
`
`Claims.
`
`6
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`10
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`signal” from one of the terminals 107. Id. at Abstract; 2:6-11; 7:30-58. The gate-
`
`way device also has a “component for obtaining and providing an availability of a
`
`service from” one of the terminals 107. Id. at 2:45-48; 12:9-13:18.
`
`B. The Effective Priority Date of the Claims of the ’033 Patent &
`Asserted Earlier Date of Invention
`
`The ’033 Patent issued on May 2, 2006 from U.S. Patent Application No.
`
`09/850,399 (“’399 application”), which was filed on May 7, 2001. Because the
`
`’033 Patent does not include a priority claim, the filing date of May 7, 2001 is the
`
`earliest possible priority date. During prosecution of the ’399 application, the Ap-
`
`plicant asserted a conception date of February 20, 2001. The petitioners take no
`
`position whether the Applicant sufficiently demonstrated an invention date earlier
`
`than May 7, 2001 (particularly in view of the requirement for appropriate dili-
`
`gence), but will assume for the purposes of this petition, that the Patent Owner can
`
`demonstrate an invention date as of at least February 20, 2001 (the “Critical
`
`Date”). Even under this assumption, however, all of the references relied on in the
`
`grounds of unpatentability are prior art, as described in Section III.B above.
`
`C. Level of Ordinary Skill in the Art as of the Critical Date
`A person of ordinary skill in the art as of the Critical Date of the ’033 Patent
`
`(hereinafter a “POSITA”) would have had a Master’s of Science Degree (or a simi-
`
`lar technical Master’s Degree, or higher degree) in an academic area emphasizing
`
`electrical engineering, computer engineering, or computer science with a concen-
`
`7
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`11
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`tration in communication and networking systems or, alternatively, a Bachelor’s
`
`Degree (or higher degree) in an academic area emphasizing electrical or computer
`
`engineering and having two or more years of experience in communication and
`
`networking systems. Additional education in a relevant field, such as computer sci-
`
`ence, computer engineering, or electrical engineering, or industry experience may
`
`compensate for a deficit in one of the other aspects of the requirements stated
`
`above. Unless noted otherwise in this Petition, references to what would have been
`
`known or understood by a POSITA refer to the knowledge of a POSITA as of the
`
`Critical Date, or before.
`
`V. CLAIM CONSTRUCTION UNDER 37 C.F.R. §§ 42.104(B)(3)
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). For
`
`this proceeding only, Petitioners submit constructions for the following terms.3 All
`
`
`3 Petitioner’s claim construction proposals are for the sole purpose of determining
`
`whether the prior art anticipates or renders obvious the Challenged Claims. Neither
`
`by making these proposals, nor by analyzing the cited art, do Petitioners concede
`
`that any Challenged Claim meets statutory standards for patent claiming. Petition-
`
`ers recognize that IPR is not an appropriate forum to address certain issues, such as
`
`the patentability of the claimed invention under 35 U.S.C. § 101 or the failure to
`
`
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`8
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`12
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`remaining terms should be given their broadest reasonable meaning.4
`
`A. “identifies whether the service is available at a particular time”
`Claim 4 includes the phrase “identifies whether the service is available at a
`
`particular time.” Under the broadest reasonable interpretation standard, this phrase
`
`should be construed broadly enough to encompass the service being registered. Ex.
`
`
`comply with 35 U.S.C. § 112, and, therefore reserves all rights to contend that one
`
`or more Challenged Claims are invalid for reasons out of scope for IPR, including
`
`but not limited to the failure to claim patentable subject matter under 35 U.S.C. §
`
`101, and lack of definiteness or lack of written description under 35 U.S.C. § 112.
`
`The failure to claim patentable subject matter under 35 U.S.C. § 101 or the pres-
`
`ence of definiteness and description problems in the Challenged Claims is no bar to
`
`IPR in appropriate circumstances; the Board may set aside such issues when re-
`
`viewing claims under 35 U.S.C. §§ 102 and 103. E.g., Vibrant Media, Inc. v. Gen’l
`
`Elec. Co., IPR2013-00172, 2014 WL 3749773, at *6–7 (Patent Tr. & App. Bd. Ju-
`
`ly 28, 2014).
`
`4 Because the standards of claim interpretation applied in litigation differ from
`
`PTO proceedings, any interpretation of claim terms in this IPR is not binding upon
`
`Petitioners in any litigation related to the subject patent. See In re Zletz, 13
`
`USPQ2d 1320, 1322 (Fed. Cir. 1989).
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`9
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`13
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`1003 at ¶¶ 22-23. According to the ’033 Patent, “a service offered by [an] applica-
`
`tion, or a hardware capability offered by terminal driver” is registered with a ser-
`
`vice repository software component 704. Ex. 1001 at 12:35-37; Ex. 1003 at ¶22.
`
`Registration of the services “describes the terminals and the services that are avail-
`
`able at a particular time, but . . . does not describe the current status of the ser-
`
`vices.” Ex. 1001 at 13:5-11; Ex. 1003 at ¶22. The ’033 Patent notes that “a service
`
`might be available in a PAN but not necessarily accessible since another applica-
`
`tion is exclusively using the service.” Id. “[S]ervice unregistration that cancels a
`
`registered service” is performed when the service is no longer available. Ex. 1001
`
`at 12:38-39; Ex. 1003 at ¶22.
`
`The ’033 Patent therefore indicates that, when services are registered, the
`
`services are identified as available at that moment in time, even if it does not indi-
`
`cate whether or not those services are currently accessible. Ex. 1003 at ¶ 23. In
`
`other words, the mere fact of the service being registered identifies that the service
`
`is available at a particular time (that is, at any time while it is registered). Ex. 1003
`
`at ¶ 23. Accordingly, in view of the ’033 Patent and under the broadest reasonable
`
`interpretation, this term should be construed to encompass the service being regis-
`
`tered. Ex. 1003 at ¶¶ 22-23.
`
`VI. MANNER OF APPLYING CITED PRIOR ART TO EVERY
`CLAIM FOR WHICH AN IPR IS REQUESTED, THUS ES-
`TABLISHING A REASONABLE LIKELIHOOD THAT AT
`
`10
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`14
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`LEAST ONE CLAIM OF THE ’033 PATENT IS UNPATENTA-
`BLE
`
`As detailed below, this request shows a reasonable likelihood that the Peti-
`
`tioners will prevail with respect to at least one Challenged Claim of the ’033 Pa-
`
`tent.
`
`A. [GROUND 1] – Claims 1, 4, 7, and 14 are obvious over
`Marchand in view of Nurmann and Vilander
`
`Overview of Marchand
`
`Marchand discloses “an ad-hoc network that can be efficiently, easily, and
`
`inexpensively established for a plurality of devices, and a gateway that provides
`
`access through the ad-hoc network to external wireless IP networks.” Ex. 1005 at
`
`4:15-19; Ex. 1006 at 6:21–7:2. An example of this system is shown below in FIG.
`
`3 of Marchand Priority. Ex. 1005 at Fig. 3; Ex. 1006 at Fig. 3. A similar FIG. 3 is
`
`provided in Marchand PCT. Ex. 1005 at Fig. 3; Ex. 1006 at Fig. 3.
`
`
`
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`15
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`Referring to Marchand’s FIG. 3, Marchand discloses a mobile phone 33 that
`
`functions “as a gateway between the ad-hoc network and a 3G wireless IP network
`
`35 such as the General Packet Radio Service (GPRS) network.” Ex. 1005 at 7:12-
`
`14; Ex. 1006 at 11:16–18. Marchand discloses that the devices on the ad-hoc net-
`
`work may include, for example, a laptop computer, a printer, or a personal digital
`
`assistant (PDA). Ex. 1003 at ¶ 25; Ex. 1005 at 6:23-27, 7:9-11, 10:18-21; Ex. 1006
`
`at 11:12-15, 16:20-17:2. The mobile phone 33 performs routing for IP packets be-
`
`tween the local ad-hoc network 30 and the external wireless network 35. Ex. 1005
`
`at 7:12-17. Ex. 1006 at 11:16–21. To perform routing between the two different
`
`networks, the mobile phone 33 “has two IP addresses.” Ex. 1005 at 10:30-31. Ex.
`
`1006 at 17:12–13. On the local side, the mobile phone 33 has “a private IP ad-
`
`dress” recognized by devices on the local network 30. Ex. 1005 at 4:23-30. Ex.
`
`1006 at 7:8–17. On the external side, the mobile phone 33 has “a public IP address
`
`recognized in the wireless IP network.” Id. During operation, the mobile phone 33
`
`receives IP packets from the public network 35 “through its public IP address, and
`
`forwards the received packets to the private IP address of the destination device” in
`
`the local network 30. Ex. 1005 at 7:14-17. Ex. 1006 at 11:16–22. The mobile
`
`phone 33 “also translates in the other direction for data going out of” the local net-
`
`work 30 to the external IP network 35.” Id.
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`12
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`16
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`In Marchand, the devices on the ad-hoc network 30 “are all Bluetooth-
`
`compliant and JINI/Java-capable.” Ex. 1005 at 7:9-11. Ex. 1006 at 11:13-15. The
`
`“JINI (Java) technology is utilized to publish and share services between the de-
`
`vices” on the ad-hoc network 30. Ex. 1005 at 6:3-6. Ex. 1006 at 9:15-18. In partic-
`
`ular, the JINI technology provides “the capability for an application 21 to discover,
`
`join, and download services 22 from a JINI [Lookup Service] (LUS).” Ex. 1005 at
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`6:19-22, 7:23-25, 8:11-28. Ex. 1006 at 10:11-15, 12:7-9, 13:6-14:2. “The LUS
`
`contains a list of available services provided by [devices on the ad-hoc network
`
`30].” Ex. 1005 at 3:11-12; Ex. 1006 at 4:22-5:1. When a device (such as printer 32)
`
`in the ad-hoc Bluetooth Piconet network 30 would like to share or offer a service to
`
`the ad-hoc Bluetooth Piconet network 30, it registers the service with a JINI LUS
`
`using a “discovery and join” protocol. Ex. 1003 at ¶ 28; Ex. 1005 at 6:19-22, 7:23-
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`25, 8:11-28; Ex. 1006 at 10:11-15, 12:7-9, 13:6-14:2. When an application in a de-
`
`vice wants to use a service, the device requests the service from the LUS, and the
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`LUS provides an API for the requested service after receiving a request for the ser-
`
`vice from a network device. Ex. 1003 at ¶¶ 31, 68, 69; Ex. 1005 at 6:21-22; 6:29-
`
`7:2; Ex. 1006 at 10:13-14; 10:22-11:5. The device then uses the API to access the
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`service. Ex. 1003 at ¶¶ 31, 68, 69; Ex. 1005 at 9:20-26; Ex. 1006 at 15:8-15.
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`The mobile phone 33 acts a master device in the ad-hoc Bluetooth Piconet
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`network 30 and provides cellular call services to other devices 31, 32 (i.e., slave
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`13
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`17
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`devices) in the ad-hoc Bluetooth Piconet network 30 using the JINI technology.
`
`Ex. 1003 at ¶ 30; Ex. 1005 at 8:2-5; Ex. 1006 at 12:18-22. As a result, “any Blue-
`
`tooth-compliant device in a Piconet that is multimedia capable is able to establish a
`
`call as long as one of the devices in the Piconet (e.g., the mobile phone) contains a
`
`cellular radio modem and a call control client, and is connected to the wireless IP
`
`network.” Ex. 1005 at 7:14-21; Ex. 1006 at 11:18-12:14.
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`In particular, “a JINI call control API 47 is published by the mobile phone
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`33 and enables the applications 21 in the laptop and other devices in the Piconet to
`
`make use of the facilities of, for example, the SIP client 42 in the mobile phone.”
`
`Ex. 1005 at 9:20-22; Ex. 1006 at 15:8-11. The JINI call control API is “an abstrac-
`
`tion of a SIP and/or H.323 call control client.” Ex. 1005 at 6:27-29; 9:22; Ex. 1006
`
`at 10:20-22; 15:11-12. When a slave device requests the call service from the LUS,
`
`“this [JINI call control] API is downloaded to the Bluetooth device involved in an
`
`external wireless call” (that is, the requesting slave device). Ex. 1005 at 6:29-7:2.
`
`Ex. 1006 at 10:22-11:5. At least in some cases, the JINI call control API is “down-
`
`loaded from the gateway,” i.e., mobile phone 33. Ex. 1005 at claim 6. Ex. 1006 at
`
`claim 6. The JINI call control API is then employed by the slave device to use the
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`call control service of the mobile phone 33. Ex. 1003 at ¶ 31; Ex. 1005 at 9:20-26;
`
`Ex. 1006 at 15:8-15.
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`Marchand discloses the various devices include a combination of software
`
`and hardware to perform the functionality described above. Ex. 1003 at ¶ 32. For
`
`example, Marchand discloses hardware such as the “cellular radio modem” for the
`
`mobile phone to communicate with the external IP network 35, and a “Bluetooth
`
`chipset” for the various devices on the ad-hoc Bluetooth Piconet network 30 to
`
`communicate using Bluetooth. Ex. 1003 at ¶ 32. Ex. 1005 at 2:7-16; 3:31-4:1;
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`6:23-25; 7:14-25; 11:7-8; Ex. 1006 at 3:5-15; 7:18-20; 10:15-17; 12:1-6; 18:1-3.
`
`Further, to perform their noted functionality, the mobile phone 33 and other devic-
`
`es in the ad-hoc network 30 include the protocol stack shown below in Marchand’s
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`FIG. 2, which includes a physical layer 15, and various software such as a link lay-
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`er 16, network transport layer 17, “an operating system layer 18, a Java technology
`
`layer 19 and a JINI technology layer 20.” Ex. 1003 at ¶ 32; Ex. 1005 at 6:16-22;
`
`Ex. 1006 at 10:5-15.
`
`
`See FIG. 2 of Marchand Priority. Marchand PCT illustrates a similar FIG. 2.
`
`Overview of Nurmann
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`15
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`19
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`Nurmann is generally related to an IP gateway that establishes a local IP
`
`network with several IP hosts, performs IP address allocation for devices in the lo-
`
`cal IP network, and manages routing of IP packets to and from the local IP net-
`
`work. Ex. 1010 at 1:9-12; 2:54-60; 3:26-46. Nurmann’s FIG. 4 (a portion of which
`
`is shown below) illustrates the address allocation operation. First, the IP gateway
`
`determines “whether there is a DHCP server in the IP network already.” Ex. 1010
`
`at 4:37-40. “If there is no DHCP server [in the network already,] the IP gateway is
`
`automatically activated as a DHCP.” Ex. 1010 at 4:37-48. “The activated DHCP
`
`server [then] allocates IP addresses . . . to the IP hosts [in the network] according to
`
`the standard from a reserved address range so that the IP hosts and the IP gateway
`
`can exchange IP data packets among each other.” Ex. 1010 at 4:51-56.
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`
`
`Accordingly, a POSITA would understand that Nurmann discloses an IP
`
`gateway that performs the role of a DHCP server to implement IP address alloca-
`
`tion for other devices in a local IP network connected to the gateway. Ex. 1003 at
`
`¶¶ 42-44.
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`16
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`20
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`
`Overview of Vilander
`
`Vilander is generally related to “the allocation of IP addresses to mobile
`
`terminals” in, for example, a GSM or UMTS cellular network that implements
`
`GPRS, which was developed to introduce a packet switched service into such net-
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`works. Ex. 1011 at 1:6-7; 1:33-45. In particular, Vilander teaches that when a mo-
`
`bile terminal requests Internet access, the request is directed to a Gateway General
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`Packet Radio Service (GPRS) Switching Node (GGSN), which functions as an In-
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`ternet Access Server (IAS). Ex. 1011 at 1:48-52. The “IAS allocates to the calling
`
`mobile terminal an Internet Protocol (IP) address.” Ex. 1011 at 1:57-59. After re-
`
`ceiving the allocated IP address, the mobile terminal (if in a home network) can in-
`
`itiate an Internet session via the GGSN. Ex. 1011 at 1:65-2:4. In a particular exam-
`
`ple of a Universal Mobile Telecommunications System (UMTS), which is “likely
`
`to incorporate GPRS,” Vilander discloses a mobile terminal that receives a Radio
`
`Network Terminal Identity (RNTI) from a mobile network and stores the RNTI as
`
`an IP address for itself. Ex. 1003 at ¶ 45. Ex. 1011 at Abstract; FIG. 3; 2:41-45;
`
`5:2-10. Accordingly, a POSITA would understand that Vilander teaches a GPRS
`
`network allocating IP addresses to devices. Ex. 1003 at ¶ 45.
`
`Combination of Marchand, Nurmann, and Vilander
`
`As described above in Section VI.A.1, Marchand discloses a mobile phone
`
`gateway 33 that routes IP packets between an ad-hoc Bluetooth Piconet network 30
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`17
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`21
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`and an external wireless IP network 35, such as a cellular network that employs
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`GPRS. Ex. 1005 at 7:12-17; Ex. 1006 at 11:16-22. To perform this routing, the
`
`mobile phone 33 has “a public IP address recognized in the wireless IP network.”
`
`Ex. 1005 at 4:23-30; Ex. 1006 at 7:8–17. In view of Vilander, a POSITA would
`
`have modified Marchand’s system such that the public IP address of the mobile
`
`phone gateway 33 was provided by the cellular network 35. Ex. 1003 at 46. In par-
`
`ticular, a POSITA would have modified Marchand’s system such that, when the
`
`gateway 33 requests Internet access, a device on the GPRS network, such as a
`
`GGSN, would allocate the public IP address to the gateway 33. Ex. 1011 at 1:48-
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`52, 1:57-59; Ex. 1003 at ¶ 46.
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`Furthermore, to route IP packets to and from the devices on the ad-hoc Blue-
`
`tooth network 30, the mobile gateway 33 and devices on the network 30 have pri-
`
`vate IP addresses. Ex. 1005 at 4:23-30; 7:14-17; 10:30-31; Ex. 1006 at 7:8–17;
`
`11:16–22; 17:12–13. In view of Nurmann, a POSITA would have modified the
`
`mobile gateway 33 such that the mobile gateway provides the private IP addresses
`
`to the devices on the network 30. Ex. 1003 at ¶ 47. In particular, a POSITA would
`
`implement a DHCP server on mobile gateway 33 that, when active, allocates pri-
`
`vate IP addresses to the devices from a reserved address range so that the devices
`
`and gateway 33 can exchange IP data packets among each other. Ex. 1010 at 4:51-
`
`56.
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`22
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`Attorney Docket No. 00035-0004IP1
`IPR of U.S. Patent No. 7,039,033
`Accordingly, it would have been obvious to a POSITA at the time of the
`
`Critical Date of the ’033 Patent to implement the teachings of Nurmann and Vilan-
`
`der with the teachings of Marchand. In particular, it would be obvious to a POSI-
`
`TA that: (i) Marchand’s gateway mobile phone 33 would allocate IP addresses to
`
`devices in the ad-hoc Bluetooth Piconet network 30, as similarly taught by Nur-
`
`mann; and (ii) Marchand’s gateway mobile phone 33 would be allocated an IP ad-
`
`dress by the external wireless IP network 35, as similarly taught by Vilander. Ex.
`
`1003 at ¶ 48.
`
`Reasons to combine Marchand, Nurmann, and Vilander
`
`A POSITA would have modified Marchand in view of Nurmann and Vilan-
`
`der in the manner described above for several reasons. With respect to the alloca-
`
`tion of the public IP address to the gateway 33, Marchand discloses that the net-
`
`work 35 employs GPRS, while Vilander describes a pro