Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 27
`Entered: December 21, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`IXI IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01443
`Patent 7,295,532 B2
`____________
`
`
`
`Before KRISTINA M. KALAN, ROBERT J. WEINSCHENK, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1
`
`APPLE 1029
`
`
`Tel: 571-272-7822
`
`
`Paper 27
`Entered: December 21, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`IXI IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01443
`Patent 7,295,532 B2
`____________
`
`
`
`Before KRISTINA M. KALAN, ROBERT J. WEINSCHENK, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1
`
`APPLE 1029
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`I. INTRODUCTION
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`and Apple Inc. (collectively “Petitioner”) filed a Petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 1, 4, 5, 7–10, 12, 14–16, and 23–24
`of U.S. Patent No. 7,295,532 B2 (Ex. 1001, “the ’532 patent”) pursuant to
`35 U.S.C. §§ 311–319. IXI IP, LLC (“Patent Owner”) filed a Preliminary
`Response (Paper 6, “Prelim. Resp.”). We instituted an inter partes review of
`claims 1, 4, 5, 7–9, 12, 14–16, and 23–24 on certain grounds of
`unpatentability alleged in the Petition (Paper 8, “Dec.”). After institution of
`trial, Patent Owner filed a Patent Owner Response (Paper 14, “PO Resp.”)
`and Petitioner filed a Reply (Paper 18, “Reply”). An oral hearing was held
`on September 15, 2016. A transcript of the hearing has been entered into the
`record. Paper 26 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, we
`determine that Petitioner has shown by a preponderance of the evidence that
`all claims for which trial is instituted, namely, claims 1, 4, 5, 7–9, 12, 14–16,
`and 23–24, are unpatentable.
`
`II. BACKGROUND
`
`A. Related Matters
`The parties indicate that the ’532 patent is the subject of the following
`district court proceedings: IXI Mobile (R&D) Ltd. v. Samsung Electronics
`Co., Case No. 3:15-cv-03752-HSG (N.D. Cal.); IXI Mobile (R&D) Ltd. v.
`Apple, Inc., Case No. 4:15-cv-03755-PJH (N.D. Cal.); and IXI Mobile (R&D)
`Ltd. v. Blackberry Ltd., Case No. 3:15-cv-03754-RS (N.D. Cal.). Pet. 1–2;
`Paper 5, 1–2, Paper 7, 1–2.
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`B. The ’532 Patent
`The ’532 patent describes a system, device and computer readable
`medium that monitors and reconfigures a local area network (“LAN”) by a
`wide area network (“WAN”) operator. Ex. 1001 at [54], Abstract. The ’532
`patent is directed to “a hand held device for providing communication
`between a wide area network and a wireless local area network.” Id. at 1:61–
`63. Figure 1, reproduced below, illustrates an exemplary system of the ’532
`patent. Id. at 4:55–56.
`
`Figure 1 above shows wireless device 106 and one or more terminals
`107 communicating via short-range radio signals 110 to form LAN 116. Id.
`at 5:30–35. Figure 1 also shows WAN 105 coupled to device 106; WAN 105
`includes a cellular network transmitting and receiving cellular signals 111.
`Id. at 5:52–55. WAN 105, carrier backbone 104, and manager server 102
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`are, singly or in combination, a telecommunication network managed and
`monitored by operator 115. Id. at 5:62–65. WAN 105 is shown as being
`coupled to wireless carrier internal network or carrier backbone 104; carrier
`backbone 104 may be coupled to manager server 102 or Internet 103. Id. at
`6:20–25. In one embodiment, servers 101 and 102 provide information to
`terminals 107 by way of device 106. Id. at 6:26–29. Microrouter 404 of
`device 106 “enables an IP based network between the device 106 and
`terminals 107.” Id. at 8:29–30. Software components, or plug-ins 406, may
`be added to microrouter 404, using software components called hooks 590.
`Id. at 8:33–36, 45–49. A remote operator on WAN 105 is able to load
`software on device 106 to provide LAN network services to devices on LAN
`116. Id. at 5:10–13, 10:11–17.
`
`C. Illustrative Claim
`Claim 1 of the ’532 patent is reproduced below:
`1. A hand-held device for enabling communication between one
`or more devices connected to one or more cellular networks and
`one or more devices connected to a wireless local area network,
`comprising:
`a) a first transceiver to communicate with the one or
`more devices connected to said one or more cellular networks
`by sending and receiving cellular signals, the first transceiver
`having a cellular network address;
`b) a second transceiver to communicate with the one or
`more devices connected to the wireless local area network by
`sending and receiving short-range radio signals;
`c) a storage device to store:
`c.1. a router software component to transfer a
`plurality of data packets between the one or more devices
`connected to the one or more cellular networks and the
`one or more devices connected to the wireless local area
`network by the cellular signals and the short-range radio
`signals; and
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`c.2. an interface software component to add a first
`network service software component that provides one or
`more network services to the wireless local area network,
`the first network service software component loaded into
`the storage device from the one or more devices
`connected to the one or more cellular networks: and one
`or more processors connected to the storage device to
`process the cellular signals and the short-range radio
`signals, wherein the cellular network includes a plurality
`of public IP addresses and the wireless local area network
`includes a plurality of private IP addresses, and wherein
`the router software component translates a first IP
`address in the plurality of public IP addresses to a second
`IP address in the plurality of private IP addresses.
`Ex. 1001, 16:40–17:7. Claims 4, 5, 7–10, 12, 14–16, and 23–24 all depend,
`directly or indirectly, from claim 1.
`
`D. Prior Art References Relied Upon by Petitioner
`1. PCT Pub. No. WO 01/76154 A2 to Marchand, published October
`11, 2001 (“Marchand”) (Ex. 1005);
`2. Dan Decasper et al., Router Plugins A Software Architecture for
`Next Generation Routers, Proceedings of ACM SigComm ’98 Conference, 28
`COMP. COMM. REV. No. 4, 229–240 (October 1998) (“Router Plugins”)
`(Ex. 1006);
`3. U.S. Patent No. 6,622,017 B1 to Hoffman, issued September 16,
`2003 (“Hoffman”) (Ex. 1007).
`4. IEEE Std. 802.11b-1999, Part 11: Wireless LAN Medium Access
`
`Control (MAC) and Physical Layer (PHY) specifications: Higher-Speed
`Physical Layer Extension in the 2.4 GHz Band, IEEE-SA Standards Board
`(published January 20, 2000) (“802.11b”) (Ex. 1008);
`5. P. Srisuresh & M. Holdredge, RFC 2663: IP Network
`
`Address Translator (NAT) Terminology and Considerations, The
`Internet Society (August 1999) (“RFC 2663”) (Ex. 1009); and
`6. U.S. Patent No. 6,963,912 B1 to Schweitzer et al., issued
`
`November 8, 2005 (“Schweitzer”) (Ex. 1011).
`
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`§ 103
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`§ 103
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`E. Instituted Grounds of Unpatentability
`We instituted inter partes review of claims 1, 4, 5, 7–9, 12, 14–16, and
`23–24 of the ’532 patent on the following grounds:
`References
`Basis Claim(s) Challenged
`Marchand, Router Plugins, and
`§ 103
`1, 4, 5, 8, 12, 14, and 23
`Hoffman
`Marchand, Router Plugins,
`Hoffman, and 802.11b
`Marchand, Router Plugins,
`Hoffman, and RFC 2663
`Marchand, Router Plugins,
`Hoffman, and Schweitzer
`In support of its challenges, Petitioner relies on the Declaration of
`Dr. Sayfe Kiaei (Ex. 1003). Patent Owner relies on the Declaration of Dr.
`Narayan Mandayam (Ex. 2201).
`III. ANALYSIS
`
`§ 103
`
`15, 16, and 24
`
`A. Claim Interpretation
`The Board interprets claim terms in an unexpired patent according to
`the broadest reasonable construction in light of the specification of the patent
`in which they appear. See Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131,
`2144–46 (2016) (upholding the use of the broadest reasonable interpretation
`standard); 37 C.F.R. § 42.100(b). Under that standard, and absent any special
`definitions, we give claim terms their ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art at the time of the
`invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Any special definitions for claim terms must be set forth with
`reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). Only those terms which are in controversy need
`to be construed, and only to the extent necessary to resolve the controversy.
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`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`In our Decision on Institution, we determined that the claim 1 phrase
`“software component . . . loaded . . . from the one or more devices connected
`to said one or more cellular networks” needed no express construction.
`Dec. 7–8. Patent Owner, in its Response, agrees that “a person of ordinary
`skill in the art would have understood this recitation without an explicit
`construction.” PO Resp. 11. We see no reason to modify our position in
`light of the record developed at trial. No other claim terms have been
`presented to us for construction, and we determine that no other claim terms
`require express construction.
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 1031 if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’532 patent has an
`effective filing date before the effective date of the applicable AIA
`amendments, throughout this Decision we refer to the pre-AIA versions of 35
`U.S.C. § 103.
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`decision on the ground of obviousness must include “articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The
`obviousness analysis “should be made explicit” and it “can be important to
`identify a reason that would have prompted a person of ordinary skill in the
`relevant field to combine the elements in the way the claimed new invention
`does.” KSR, 550 U.S. at 418. We analyze the asserted grounds of
`unpatentability in accordance with the above-stated principles.
`We note that, regarding objective evidence of nonobviousness, Patent
`Owner has not put forth any evidence of secondary considerations of
`nonobviousness in this case.
`C. Level of Skill in the Art
`For the purpose of this Decision, we accept Petitioner’s undisputed
`contention that a person of ordinary skill in the art as of the critical date
`would have had a Master’s of Science Degree in an academic
`area emphasizing electrical engineering, computer engineering,
`or computer science (or a similar technical Master’s Degree, or
`higher degree) with a concentration in communication and
`networking systems or, alternatively, a Bachelor Degree (or
`higher degree) in an academic area emphasizing electrical
`engineering, computer engineering, or computer science and
`having two or more years of experience in communication and
`networking systems. Ex. 1003 at 15. Additional education in a
`relevant field, such as computer science, computer engineering,
`or electrical engineering, or industry experience may
`compensate for a deficit in one of the other aspects of the
`requirements stated above.
`
`Pet. 9–10. Patent Owner applied Petitioner’s definition in its Patent Owner
`Response. PO Resp. 10–11. The level of ordinary skill in the art is further
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`demonstrated by the prior art asserted in the Petition. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`D. Obviousness Analysis
`1. Ground Based on Marchand, Router Plugins, and Hoffman
`Petitioner challenges claims 1, 4, 5, 8, 12, 14, and 23 as obvious under
`35 U.S.C. § 103 over Marchand, Router Plugins, and Hoffman. Pet. 12–42.
`Patent Owner disputes Petitioner’s contentions. PO Resp. 18–46.
`a. Marchand
`Marchand is directed to “an ad-hoc network and a gateway that
`provides an interface between external wireless IP networks and devices in
`the ad-hoc network.” Ex. 1005, 1:6–7. Figure 3 of Marchand is reproduced
`below:
`
`
`Figure 3 of Marchand illustrates “an ad-hoc network 30 utilizing
`Bluetooth, IP [Internet Protocol], and JINI technologies . . . to enable the use
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`of a gateway mobile phone.” Id. at 7:7–9. Ad-hoc network 30 includes
`laptop computer 31, printer 32, and mobile phone 33, which can
`communicate via Bluetooth radio link 34. Id. at 7:9–11. Mobile phone 33
`acts “as a gateway between the ad-hoc network and a 3G wireless IP network
`35 such as the General Packet Radio Service (GPRS) network.” Id. at 7:12–
`14. Regarding IP address translation, IP packets from the GPRS are received
`at mobile phone 33 through its public IP address, and then they are forwarded
`to the private IP address of the device on the ad-hoc network. Id. at 7:14–16.
`Mobile phone 33 also translates in the other direction for data going out of
`the ad-hoc network to the GPRS network. Id. at 7:16–17.
`b. Router Plugins
`Router Plugins is directed to a software architecture that can
`“dynamically upgrade router software in an incremental fashion” and that is
`designed to be compatible with operating systems of small and mid-sized
`routers. Ex. 1006, Abstract, 230 col. 1 ¶ 5. The router software architecture
`is based on implementation of specific algorithms in the form of modules
`called plugins. Id. at Abstract, 229 col. 2 ¶ 2. A software component called a
`Plugin Control Unit (“PCU”) manages plugins that are loaded into the kernel
`of a router. Id. at 231 col. 1 ¶ 2.
`c. Hoffman
`Hoffman is directed to over-the-air programming of wireless terminal
`features, namely, downloading software in the form of a plug-in module to a
`terminal device. Ex. 1007, at [54], Abstract. Hoffman includes a wireless
`communication terminal device 5, generally a digital cellular telephone, able
`to implement standard cellular telecommunication functions. Id. at 5:8–17.
`Hoffman’s terminal device 5 initially contains a blank “second section” of
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`programming memory, which is designed for storage of plugin feature
`programs or modules. Id. at 5:32–33. The second section is later occupied
`by selected software that is downloaded from hard media or by air-link. Id.
`at 5:43–6:14. Hoffman’s terminal device 5 includes processor 51 and flash
`memory 53. Id. at 12:48–55. It may also allow “a user to connect a laptop
`computer or other device to the terminal [device] 5, via wire or short-distance
`wireless link.” Id. at 13:33–39.
`d. Petitioner’s Arguments
`Petitioner argues one of ordinary skill in the art would have modified
`Marchand’s mobile gateway 33 to implement its routing and address
`translation functionality by utilizing the routing software technology
`described in Router Plugins, and would have included the PCU of Router
`Plugins in Marchand’s mobile gateway software architecture to “glue the
`individual plugins to the networking subsystem” as described in Router
`Plugins. Pet. 23–24. Petitioner further argues that, in view of Hoffman, a
`person of ordinary skill in the art would have modified Marchand’s plugin-
`enabled gateway 33 to download plugins over the cellular network in
`Marchand. Id. at 25. In addition, Petitioner contends a person of ordinarily
`skill in the art would have understood that Marchand’s gateway would
`include a storage device and processor. Id. at 26–27 (citing Ex. 1003 ¶¶ 58–
`59). Petitioner relies on this purported understanding, together with
`Hoffman’s explicit disclosure of a storage device and processor, to teach
`those elements of the challenged claims. Id.
`Regarding the combination of references, Petitioner argues one of
`ordinary skill in the art would have been motivated to implement the plugin-
`based software architecture of Router Plugins into Marchand because doing
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`so amounts to the use of a known technique to improve similar devices in the
`same way. Id. at 27–28 (citing Ex. 1003 ¶ 54). One of ordinary skill in the
`art, according to Petitioner, would have understood that Marchand’s mobile
`gateway 33 would have been made more “flexible and modular” by using the
`plugin-based routing software of Router Plugins. Id. at 28 (citing Ex. 1003
`¶ 54). Because both Marchand and Router Plugins describe devices that
`utilize software to route IP packets and perform network address translation,
`Petitioner argues, one of ordinary skill in the art would have understood that
`“Marchand’s mobile phone gateway 33 is the type of “small and mid-sized”
`router for which the Router Plugins software architecture was designed.” Id.
`(citing Ex. 1005 at Abstract; 1:5–7; 54:30–31; 55:9–13; Ex. 1006, 230, col. 1,
`¶ 5; Ex. 1003 ¶ 55).
`Petitioner also argues one of ordinary skill in the art would have been
`motivated to implement Hoffman’s cellular download of plugins into the
`mobile gateway of Marchand/Router Plugins, also as the use of a known
`technique to improve similar devices in the same way. Id. at 29 (citing Ex.
`1003 ¶ 56).
`e. Combination of Marchand and Router Plugins
`i. Routing Layer Issue
`Patent Owner argues, generally, that Petitioner “offers no explanation
`regarding how a person would implement the plugin-based software
`architecture of Router Plugins into the architecture described in Marchand.”
`PO Resp. 33. Patent Owner further argues the routing technologies taught by
`Marchand and Router Plugins “are fundamentally different and are not
`compatible because the routing technology in each reference is implemented
`in a different layer of the system network architecture.” Id. at 34. Referring
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`to Figure 4 of Marchand, Patent Owner argues that Marchand’s routing and
`address translation functionality is implemented in the JINI technology layer
`20 of its protocol stack (id. at 34 (citing Ex. 2201 ¶ 67–68)), whereas Router
`Plugins’ functionality is implemented in the kernel of the operating system
`layer 18. Id. at 35 (citing Ex. 2201 ¶ 69). Accordingly, Patent Owner argues,
`the routing software technology of Router Plugins “cannot be implemented in
`Marchand’s JINI technology layer without changing the fundamental
`operation of both Marchand and Router Plugin’s routing software
`technology.” Id. at 36.
`Petitioner replies that Patent Owner’s argument is “based on incorrect
`factual premises, and attempts to create a false dichotomy between Marchand
`and Router Plugins.” Reply 2. More particularly, Petitioner argues,
`Marchand’s Application Programming Interface (“API”) routes calls, rather
`than IP packets. Id. at 2–3. Although Marchand discusses routing both calls
`and IP packets, only the routing of IP packets is relevant to the combinability
`of Marchand and Router Plugins, according to Petitioner. Id. at 3. Marchand
`uses Network Transport layer 17 to route IP packets, argues Petitioner, and
`not JINI layer 20 or Application layer 21. Id. (citing Ex. 1005, 7:14–16,
`11:13–16).
`Moreover, Petitioner argues, Router Plugins does not describe routing
`IP packets at the operating system layer, but rather, at the network layer. Id.
`at 4–5. Petitioner points to Dr. Mandayam’s testimony as confirming that
`Router Plugins performs routing of IP packets (citing Ex. 1016, 145:15–24),
`and that routing of IP packets occurs at a network layer of the protocol stack
`(citing Ex. 1016, 21:21–22:2). Id. at 5–6; see also Tr. 15:19–24. Thus,
`Petitioner argues, because both Marchand and Router Plugins route IP
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`packets at the network layer, one of ordinary skill in the art would have been
`motivated to make Marchand’s IP routing “more ‘flexible and modular’ by
`using the plugin-based router software of Router Plugins.” Id. at 6 (citing Ex.
`1003 ¶ 55).
`We are persuaded by Petitioner’s arguments in this regard. We
`understand Petitioner as premising the combinability of Marchand and
`Router Plugins on the routing of IP packets. Pet. 14 (Marchand’s “mobile
`gateway 33 performs routing for IP packets”), 23 (“Marchand discloses a
`mobile phone gateway 33 that routes IP packets between a local area network
`and an external cellular network . . . .”); Reply 3. Petitioner relies on Router
`Plugins’ “plugin-based routing software” to be “implemented in Marchand’s
`mobile phone gateway 33 to implement various types of router functionality,
`such as routing of IP packets and IP address translation.” Pet. 24. Indeed,
`Dr. Mandayam agrees that routing of IP packets is done by Marchand, and is
`done at a network layer of the protocol stack. Reply 3–4 (citing Ex. 1016,
`21:21–22:2, 160:16–19; Ex. 2201 ¶¶ 34, 35). Dr. Mandayam also agrees that
`Router Plugins performs routing of IP packets, and that routing of IP packets
`occurs at a network layer of the protocol stack. Id. at 5–6 (citing Ex. 1016,
`145:15–24, 21:21–22:2). We further agree with Petitioner’s contention that,
`even though the Router Plugins routing framework fits within an operating
`system kernel, “Router Plugins does not describe routing IP packets at the
`operating system layer,” but rather, performs routing of IP packets at a
`network layer of the protocol stack. Id. at 4–5 (citing Ex. 1006, 229 col. 2,
`231 col. 2, Fig. 1). We credit Dr. Kiaei’s testimony that one of ordinary skill
`in the art, understanding that both “Marchand and Router Plugins describe
`devices that utilize software to route IP packets and perform network address
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`translation,” would have been motivated to make Marchand’s IP routing
`“more ‘flexible and modular’ by using the plugin-based router software of
`Router Plugins.” Ex. 1003 ¶ 55. The enhanced routing of IP packets at the
`network layer, as demonstrated by Router Plugins, would have led one of
`ordinary skill in the art to consider the inclusion of Router Plugins’
`technology to better the IP routing of Marchand, which also takes place at the
`network layer.
`
`ii. Routing Redundancy Issue
`Patent Owner further argues that Marchand teaches that the gateway’s
`Session Initiation Protocol (“SIP”) and H.323 technologies are implemented
`using JINI technology, and thus, Petitioner’s proposed scenario “would
`render Marchand’s SIP client redundant as both the SIP client and the plugin-
`based technology would be responsible for routing the same information.”
`PO Resp. 37.
`Marchand and Router Plugins are compatible, Petitioner argues,
`because Marchand’s SIP client is implemented using APIs at Application
`layer 21, which is “separate and distinct from Marchand’s Network IP layer
`17.” Reply 7. Thus, in Petitioner’s proposed combination, Marchand’s SIP
`client routes calls at Application layer 21 and Router Plugins’ software
`performs the “lower level functionality of routing IP packets at the Network
`Layer,” and each perform “their respective functions at different layers in the
`protocol stack.” Id (citing Pet. 16, 23, 24).
`Patent Owner’s arguments on this issue appear to derive from its
`earlier argument that both IP packet routing and call routing occur at
`Application layer 21 in Marchand’s protocol stack. As explained above, we
`are persuaded by Petitioner’s arguments that routing of IP packets in the
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`proposed combination would take place in Network Transport layer 17, and
`we are persuaded by the evidence that Marchand’s routing of calls would be
`performed by the SIP client in Application layer 21. Ex. 1016, 129:23–
`130:3. We are thus persuaded that Petitioner’s proposed combination would
`allow the SIP’s call routing and the routing of IP packets to coexist in a
`manner that would not render the SIP client redundant.
`iii. Devices Issue
`Patent Owner further argues that Marchand and Router Plugins are not
`directed to similar devices: Marchand is directed to a Bluetooth piconet that
`has been extended into an Internet Protocol wireless local area network, with
`a mobile phone configured to act as a gateway to provide a call control
`interface between the devices on the piconet and the wireless IP network,
`whereas Router Plugins is directed to modular software architecture for use
`in a modern, extended integrated services router. PO Resp. 37–38.
`According to Patent Owner, “[a] person of ordinary skill in the art would not
`have been motivated to combine the dedicated router technology in Router
`Plugins with Marchand’s gateway, which only includes minimal routing
`functionality.” Id. at 38.
`Petitioner faults Patent Owner for overlooking Marchand’s disclosure
`of IP routing software, and the applicability of Router Plugins’ software to
`such IP routing. Reply 8. According to Petitioner, Router Plugins’
`description of its software as being a perfect fit for “small and mid-sized
`routers” would include Marchand’s mobile phone. Id. (citing Pet. 16, 28).
`Petitioner further points to Router Plugins’ disclosure of its software in
`“NetBSD,” which Petitioner alleges was available on hand-held devices
`during the relevant time frame. Id. at 9 (citing Ex. 1006, Abstract).
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`On this record, the disclosure of Router Plugins does not rule out its
`applicability to a system such as Marchand’s. Petitioner has demonstrated
`Router Plugins’ reference to “small and mid-sized routers” would have led
`one of ordinary skill in the art to understand that Router Plugins’ software
`architecture could be included in Marchand’s mobile gateway 33. Pet. 16, 28
`(citing Ex. 1003 ¶¶ 35, 55). Petitioner’s explanation of NetBSD, disclosed in
`Router Plugins’ Abstract, also supports its argument that Router Plugins’
`software architecture could be included in a mobile phone. Reply 9. Patent
`Owner’s arguments against the combination appear to be directed to the
`purported mismatch of the size and scope of the respective devices, but there
`does not appear to be an incompatibility based on the record before us.
`Marchand’s gateway, although housed in mobile phone, nevertheless features
`router functionality that could be enhanced by the improvements of Router
`Plugins. Ex. 1003 ¶¶ 50–55.
`f. Combination of Marchand, Router Plugins, and Hoffman
`i.
`Compatibility of Router Plugins and Hoffman
`Regarding the combination of Marchand and Router Plugins with
`Hoffman, Patent Owner argues that a “person of ordinary skill in the art
`would not have been motivated to combine Hoffman’s download of plugins
`into a Marchand/Router mobile gateway because there is no teaching in the
`references regarding how one would implement such a combination.” PO
`Resp. 39. Specifically, because Router Plugins uses a PCU and an
`Association Identification Unit (“AIU”), and Hoffman’s architecture does not
`use these components, a person of ordinary skill in the art would not have
`considered implementing the architecture of Hoffman into a device already
`using the Router Plugins architecture, Patent Owner argues. Id. at 39–40.
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`Patent Owner also argues that Router Plugins loads plugins directly into the
`kernel space, whereas Hoffman implements plugins in user mode/space. Id.
`at 40.
`Petitioner replies that Patent Owner mischaracterizes Petitioner’s
`proposed grounds of unpatentability and the role Hoffman plays in the
`proposed combination. Reply 10. Specifically, Petitioner argues that the
`implementation of particular software components or even the mobile phone
`software architecture are already disclosed in the Marchand/Router
`combination, and therefore Hoffman is not relied upon for those features. Id.
`(citing Pet. 27–30, 23–27). Rather, Petitioner argues, Hoffman is relied upon
`for “teaching that the plugins of Marchand/Router can be downloaded over
`Marchand’s cellular connection.” Id. at 11 (citing Pet. 29).
`The Petition supports Petitioner’s assertion that it relies upon Hoffman
`for its teaching that plugins can be downloaded over a cellular connection.
`Pet. 29 (discussing implementing “Hoffman’s cellular download of plugins
`into the Marchand/Router combination’s mobile gateway”), 30 (“Hoffman’s
`over-the-air programming would have enabled a user of Marchand’s mobile
`phone gateway 33 to dynamically and quickly add or update features to the
`gateway 33”). In this instance, Petitioner does not appear to rely on Hoffman
`for any elements of the architecture already established by the
`Marchand/Router Plugins combination. Tr. 18:20–19:3. Importantly, “[t]he
`test for obviousness is not whether the features of a secondary reference may
`be bodily incorporated into the structure of a primary reference.” In re
`Keller, 642 F.2d 413, 425 (CCPA 1981). The architecture of Hoffman need
`not be imported wholesale into the structure of Marchand/Router Plugins,
`and the feature of Hoffman upon which Petitioner relies here is compatible
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`with the structure of Marchand/Router Plugins. Pet. 29–30; Reply 11. Given
`this, and in the absence of persuasive evidence to the contrary, we agree with
`Petitioner’s position on this issue.
`ii.
`Compatibility of Marchand and Hoffman
`Patent Owner argues that the architecture of Hoffman has
`compatibility issues with the architecture of Marchand, in that Hoffman “also
`describes a plugin architecture which is written to the program interface
`specification of the kernel of the operating system.” PO Resp. 40. Namely,
`Patent Owner argues, “a person of ordinary skill in the art would not have
`known how to modify Marchand’s protocol stack to successfully implement
`the teachings of Hoffman.” Id.
`Petitioner replies, again, that Patent Owner mischaracterizes Marchand
`and Petitioner’s proposed grounds of unpatentability. Reply 12.
`Specifically, Petitioner argues that Marchand’s protocol stack is already
`equipped to handle cellular communications, so Patent Owner’s arguments
`regarding modifying Marchand’s protocol stack to implement Hoffman’s
`plugin architecture are irrelevant. Id. (citing Ex. 1003 ¶ 26).
`As discussed in the section concerning compatibility of Router Plugins
`and Hoffman, above, we understand Petitioner’s reliance on Hoffman to be
`limited to Hoffman’s over-the-air programming feature, rather than any
`elements of its architecture. As acknowledged by both parties, Hoffman and
`Marchand both download software updates over a cellular network. Pet. 25–
`26, 29–30; PO Resp. 30–31; Ex. 2201 ¶¶ 81, 83; Reply 12–13; Ex. 1005,
`13:16–19. As Petitioner’s proposed combination does not require bodily
`incorporation of Hoffman’s architecture into the system of Marchand/Router
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`Plugins, see In re Keller, 642 F.2d at 425, we are persuaded by the evidence
`before us that the references are otherwise compatible.
`g. Claims 4 and 5
`Claims 4 and 5 depend from claim 1, and recite, respectively, “wherein
`the one or more cellular networks are connected to a corporate network” and
`“wherein the one or more cellualr [sic] networks are connected to a private IP
`network.” Ex. 1001, 17:12–17. Regarding claim 4, Petitioner argues that the
`combination of Marchand, Router P
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