IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Backholm, et al.
`In re Patent of:
`10,027,619 Attorney Docket No.: 39521-0089IP1
`U.S. Patent No.:
`July 17, 2018
`
`Issue Date:
`Appl. Serial No.: 14/609,189
`
`Filing Date:
`Jan. 29, 2015
`
`Title:
`MESSAGING CENTRE FOR FORWARDING E-MAIL
`
`
`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. 10,027,619 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 1
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 1
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 1
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .............................. 2
`SUMMARY OF THE ’619 PATENT ............................................................. 7
`A. Brief Description ....................................................................................... 7
`B. Summary of the Prosecution History of the ’619 Patent .......................... 9
`III. AT LEAST ONE CLAIM OF THE ’619 PATENT IS UNPATENTABLE .. 9
`A. GROUND 1 – CLAIMS 22-26, 33, 36-40, 50-52 ARE OBVIOUS
`BASED ON HIND IN VIEW OF NIELSEN ......................................... 10
`1. Overview of Hind .......................................................................... 10
`2. Overview of Nielsen ...................................................................... 12
`3.
`Combination of Hind and Nielsen ................................................. 14
`4. Analysis of Challenged Claims ..................................................... 17
`B. GROUND 2 – CLAIMS 22-26, 33, 36-40, 50-52 ARE OBVIOUS
`BASED ON HIND IN VIEW OF NIELSEN AND THOMPSON ........ 40
`1. Overview of Thompson ................................................................. 41
`2.
`Combination of Hind, Nielsen, and Thompson ............................ 42
`C. GROUND 3 – CLAIMS 22-28, 33, 36-42, 50-52 ARE OBVIOUS
`BASED ON HIND IN VIEW OF NIELSEN, THOMPSON, AND
`BARCHI ................................................................................................. 52
`D. GROUND 4 – CLAIMS 32, 46 ARE OBVIOUS BASED ON HIND IN
`VIEW OF NIELSEN, THOMPSON, BARCHI, AND RICHARDSON ...
`
` ....................................................................................................... 57
`E. GROUND 5 – CLAIM 33 IS OBVIOUS BASED ON HIND IN VIEW
`OF NIELSEN, THOMPSON, BARCHI, AND EATON ....................... 60
`F. GROUND 6 – CLAIMS 36, 50, 52 ARE OBVIOUS BASED ON HIND
`IN VIEW OF NIELSEN, THOMPSON, BARCHI, AND FRIEND ..... 64
`314(a) ............................................................................................................. 68
`IV.
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................. 70
`V.
`VI. CONCLUSION .............................................................................................. 70
`VII. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 70
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 70
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 70
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 70
`D. Service Information ................................................................................ 71
`
`
`
`
`
`
`i
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`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 10,027,619 to Backholm (“the ’619 patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ’619 Patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Dr. Patrick Traynor
`
`APPLE-1004
`
`PCT Publication No. WO2002/025890 to Hind et al. (“Hind”)
`
`APPLE-1005
`
`PCT Publication No. WO/2001/040605 to Nielsen (“Nielsen”)
`
`APPLE-1006
`
`PCT Publication No. WO2001/029731 to Thompson et al.
`(“Thompson”)
`
`APPLE-1007
`
`U.S. Patent Pub. No. 2005/0060551 A1 to Barchi et al.
`(“Barchi”)
`
`APPLE-1008
`
`U.S. Patent Pub. No. 2005/0210259 to Richardson
`(“Richardson”)
`
`APPLE-1009
`
`U.S. Patent Pub. No. 2003/0101343 A1 to Eaton et al.
`(“Eaton”)
`
`APPLE-1010
`
`U.S. Patent Pub. No. 2004/0049599 A1 to Friend et al.
`(“Friend”)
`
`APPLE-1011
`
`Infringement Contentions from Seven Networks, LLC v. Apple
`Inc., No. 2:19-cv-115 (E.D. Tex.)
`
`APPLE-1012
`
`RESERVED
`
`APPLE-1013
`
`RESERVED
`
`ii
`
`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`
`APPLE-1014
`
` P.R. 4-3 Joint Claim Construction and Prehearing Statement
`from Seven Networks, LLC v. Apple Inc., No. 2:19-cv-115
`(E.D. Tex.)
`
`iii
`
`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 22-28, 32-33, 36-42, 46, 50-52 (“the Challenged Claims”) of
`
`U.S. Patent No. 10,027,619 (“the ’619 patent”).
`
`I.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Apple certifies that the ’619 Patent is available for IPR. This petition is filed
`
`within one year of service of a complaint against Apple in Seven Networks, LLC v.
`
`Apple Inc., No. 2:19-cv-115 (E.D. Tex.) on April 11, 2019. Apple is not barred or
`
`estopped from requesting this review.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`Ground
`1
`
`Basis for Rejection
`’619 Patent Claims
`22-26, 33, 36-40, 50-52 §103–Hind in view of Nielsen
`
`2
`
`3
`
`4
`
`22-26, 33, 36-40, 50-52 §103–Hind in view of Nielsen and
`
`Thompson
`
`22-28, 33, 36-42, 50-52 §103–Hind in view of Nielsen, Thompson,
`
`and Barchi
`
`32, 46
`
`§103–Hind in view of Nielsen, Thompson,
`
`Barchi, and Richardson
`
`1
`
`

`

`Ground
`5
`
`’619 Patent Claims
`33
`
`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`Basis for Rejection
`§103–Hind in view of Nielsen, Thompson,
`
`Barchi, and Eaton
`
`6
`
`36, 50, 52
`
`§103–Hind in view of Nielsen, Thompson,
`
`Barchi, and Friend
`
`Hind (published 03/28/2002), Nielsen (published 06/07/2001), Thompson
`
`(published 04/26/2001), and Eaton (published 05/29/2003) qualify as prior art
`
`under at least §102(b) because each was published over a year before the earliest
`
`possible priority date (11/22/2004) of the ’619 Patent.
`
`Barchi (filed 09/15/2003), Richardson (filed 03/22/2004), and Friend (filed
`
`03/31/2003) qualify as prior art under at least §102(e) because each is a U.S. Patent
`
`or Patent Publication filed before the earliest possible priority date (11/22/2004) of
`
`the ’619 Patent.
`
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`Unless otherwise noted in this petition, Petitioner submits that all terms
`
`should be given their plain meaning, but reserves the right to respond to any
`
`constructions that may later be offered by the Patent Owner or adopted by Board.
`
`Petitioner is not waiving any arguments under 35 U.S.C. §112 or arguments
`
`regarding claim scope that may be raised in litigation. Petitioner acknowledges
`
`that the present analysis is performed under the Phillips construction standard.
`
`2
`
`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`
`APPLE-1003, ¶¶35, 27.
`
`“device” and “the device is operable to” (claim 22) Petitioner submits
`
`that, in this proceeding, the following construction is the correct construction for
`
`the term “device” – a computing device, such as a host system. APPLE-1003, ¶37.
`
`To this point, the term “device” appears only once in the ’619 patent
`
`specification—its background when appearing in the phrase “mobile data
`
`communication device.” APPLE-1001, 1:26-48; APPLE-1003, ¶37. However, the
`
`claims of the ’619 patent indicate that the claimed “device” is not the “remote
`
`device,” but rather, a “device” that is in communication with the “remote device”
`
`addressed in the patent’s backgrounds section. APPLE-1001, 11:5-17, 3:9-18;
`
`APPLE-1003, ¶37. Indeed, consistent with the specification, the language and
`
`context of the claims relate the recited “device” to “the host system 100,” which is
`
`a computing device. APPLE-1001, 3:9-28, 1:29-32; APPLE-1003, ¶37.
`
`Although Petitioner advances the above construction in this proceeding,
`
`Petitioner notes that a question exists as to whether the language “the device is
`
`operable to” should be interpreted under 35 U.S.C. § 112, para. 6. “[W]hether
`
`claim language invokes 35 U.S.C. § 112, para. 6…as well as its ultimate
`
`interpretations of the patent claims are legal questions.” Williamson v. Citrix
`
`Online, LLC, 792 F.3d 1339, 1346 (Fed. Cir. 2015). The absence of the word
`
`“‘means’…creates a rebuttable presumption that section 112, paragraph 6, does not
`
`3
`
`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`apply.” Phillips v. AWH Corp., 415 F.3d 1303, 1311 (Fed. Cir. 2005). In district
`
`court, the parties dispute whether the presumption should be rebutted. Although
`
`claim construction arguments are not yet final in district court, Petitioner may
`
`argue in district court that 112/6 applies and claim 22 is indefinite.1 However,
`
`Patent Owner contends that the presumption applies and the claim language in
`
`claim 22 regarding “the device is operable to” does not invoke § 112, para. 6
`
`(“112/6”). Petitioner explains this out if its duty of disclosure to the Board.2
`
`Moreover, because the dispute in district court remains unresolved and because
`
`
`1 Petitioner may additionally argue in the district court that dependent claims 24-26
`
`are indefinite for violating § 112, § 4’s requirement they be narrower than their
`
`respective independent claim. See Multilayer Stretch Cling Film Holding, Inc. v.
`
`Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016). However, the scope
`
`of the claims can still be determined (the claims are simply non-narrowing) and
`
`therefore the plain and ordinary meaning of claims 24-26 should be applied here
`
`when applying the prior art. APPLE-1003, ¶35.
`
`2 Petitioner may additionally argue in the district court that 112/6 applies to the
`
`preamble of claim 51. As with claim 22, the plain and ordinary meaning of the
`
`preamble should be applied here because no party has rebutted the presumption
`
`that 112/6 should not apply.
`
`4
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`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`Petitioner is unable to raise indefiniteness here, Petitioner relies on the
`
`presumption in this proceeding and, in this petition, applies prior art to the ordinary
`
`meaning of this claim language consistent with Patent Owner’s litigation position.
`
`See, e.g., Samsung Electronics Co. LTD., et al. v. Seven Networks, LLC, IPR2018-
`
`01124, paper 29, p. 17 (“[] Petitioner’s argument about indefiniteness in the related
`
`district court case does not warrant denying the Petition because Petitioner cannot
`
`raise indefiniteness in this case.”); Samsung Electronics Co. LTD., et al. v. Seven
`
`Networks, LLC, IPR2018-01106, paper 30, p. 23. Petitioner will promptly inform
`
`the Board of any district court developments related to definiteness of the language
`
`in claim 22 (and other claims for which definiteness issues are raised).
`
`Further, when determining validity, “claim terms need only be construed to
`
`the extent necessary to resolve the controversy.” Wellman, Inc. v. Eastman Chem.
`
`Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). Because this proceeding lacks
`
`arguments or record evidence rebutting the presumption that 112/6 does not apply,
`
`it is appropriate for the presumption to stand and for the Board to forego
`
`construction of this phrase absent Patent Owner advocating for application of
`
`112/6. If Patent Owner does not endorse a 112/6 construction, no controversy
`
`exists on this record with regard to 112/6 application in this proceeding. Indeed,
`
`the presumption holds when neither party presents argument or evidence to rebut
`
`the presumption. See HTC America, Inc. v. Virginia Innovation Sciences, Inc.,
`
`5
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`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`IPR2017-00872, paper 11, p. 9 (expanded panel); Adlens USA Inc. v. Superfocus
`
`Holdings LLC, IPR2015-01821, Paper 40 at 27-28 (PTAB 2016); see also Dick v.
`
`New York Life Ins. Co., 359 U.S. 437, 443 n.3 (1959) (“A presumption . . . may be
`
`controverted by other direct or indirect evidence but unless so controverted, the
`
`[factfinder is] bound to find according to the presumption.”) (emphasis added);
`
`Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358 (Fed. Cir.
`
`1984) (a legal presumption “places the burden of persuasion” on opposing party).
`
`Where, like here, neither party advocated for rebuttal of the presumption that 112/6
`
`does not apply, the Board did not apply 112/6 treatment to similar claim language.
`
`See, e.g., Samsung Electronics Co. LTD., et al. v. Seven Networks, LLC, IPR2018-
`
`01124, paper 29, pp. 17, 19; Samsung Electronics Co. LTD., et al. v. Seven
`
`Networks, LLC, IPR2018-01106, paper 30, pp. 22-23, 30-31.
`
`Finally, we note that any preliminary district court ruling on claim
`
`construction is reviewable by the Federal Circuit under a de novo review standard,
`
`and yet, denial of institution as a matter of discretion has been deemed non-
`
`appealable. As such, with respect to this claim construction theory, Petitioner
`
`submits that congressional intent is best served through institution, particularly
`
`considering that institution would involve consideration of the advanced grounds
`
`against the claim construction advanced by Patent Owner in the district court.
`
`For these reasons, in this proceeding, the term “device” should be construed
`
`6
`
`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`as a computing device, such as a host system. APPLE-1003, ¶37.
`
`“service activation code” (claims 22-24, 26, 32-33, 37-40, 46, 51) – code
`
`relaying information used to authenticate a user’s access to a messaging account.
`
`APPLE-1003, ¶38. The ’619 specification explains that “the host system 100
`
`authenticates the person who enters the service activation code” such that “in
`
`addition to the host system 100, only the mobile terminal 102…can be used to
`
`access and manipulate e-mail.” APPLE-1001, 4:40-5:8. As emphasized by the
`
`Applicant during prosecution, the ’619 patent specifies that “to register to a
`
`messaging account, the service activation code must relay information to the host
`
`system such as user name and password combination.” APPLE-1002, 163 (citing
`
`APPLE-1001, 4:56-5:8).
`
`“remote device” (claims 22-23, 33, 36-38, 50-52) – a computing device that
`
`is physically distinct from the claimed device. APPLE-1003, ¶39; APPLE-1014, 7
`
`(parties agreeing to this construction).
`
`II.
`
`SUMMARY OF THE ’619 PATENT
`A. Brief Description
`The ’619 patent describes “methods for forwarding an e-mail message from
`
`an e-mail server to a mobile terminal.” APPLE-1001, 2:10-36. The ’619 patent
`
`“aims at improving cooperation between the host system 100 and mobile terminal
`
`102 such that they can use a single e-mail account.” Id., 3:9-28. The system
`
`7
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`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`includes a “messaging centre 110” that “push[es] e-mail messages to the mobile
`
`terminal.” Id., 3:41-52. FIG. 1 shows the host system, mobile terminal, and
`
`messaging centre:
`
`
`
`APPLE-1001, FIG. 1 (highlighted). The ’619 patent also briefly describes an
`
`authentication technique “in which the host system 100 authenticates the user of
`
`the mobile terminal 102” by receiving a service activation code and “conveying the
`
`service activation code to the messaging centre 110.” APPLE-1001, 4:56-5:37.
`
`The ’619 patent explains that “the mobile terminal 102 generates and displays a
`
`service activation code” and “the host system 100 authenticates the person who
`
`8
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`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`enters the service activation code.” Id. “[T]he service activation code may be
`
`entered manually or via a local connection, such as a wired or optical interface or a
`
`short-range wireless interface.” Id.
`
`B.
`Summary of the Prosecution History of the ’619 Patent
`Claims 23, 37, and 55 (which eventually issued as independent claims 22,
`
`37, and 51) of the ’619 patent (filed on January 29, 2015) were added during
`
`prosecution in an office action response. APPLE-1002, 353-362. The Applicant
`
`amended independent claims 23, 37, 55 several times during prosecution, including
`
`an amendment that added two words to recite “optically receive information
`
`including a displayed service activation code from a remote device.” APPLE-1002,
`
`221-226 (underlining in original). The claims were ultimately allowed after the
`
`Applicant argued that the Anttila reference cited during prosecution failed to
`
`disclose “receiving a service activation code and registering the remote device for
`
`access to a messaging account using the service activation code.” Id., 128-130. In
`
`eventually allowing the claims, the Examiner cited portions of independent claims
`
`23, 27, and 55 corresponding to the receiving/registering functions identified by
`
`the Applicant as allegedly absent from the prior art. Id., 24-33. However, as
`
`detailed below, the prior art cited herein evidences that it was known in the art to
`
`display a service activation code that is optically received at a device.
`
`III. AT LEAST ONE CLAIM OF THE ’619 PATENT IS
`UNPATENTABLE
`
`9
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`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`As detailed below, this request shows a reasonable likelihood that the
`
`Requester will prevail with respect to the Challenged Claims.
`
`A. GROUND 1 – CLAIMS 22-26, 33, 36-40, 50-52 ARE
`OBVIOUS BASED ON HIND IN VIEW OF NIELSEN
`1. Overview of Hind
`Hind is a 2001 patent application filed by Research In Motion (aka
`
`“BlackBerry”) that describes a system “for redirecting data to one or more mobile
`
`data communication devices via a wireless packet data network.” APPLE-1004,
`
`4:22-5:10. Hind specifies that “[th]e redirector program enables a user to redirect
`
`(or mirror) certain user-selected data items (or parts of data items) from the host
`
`system to the user's mobile data communication device.” APPLE-1004, 5:11-20.
`
`As shown in FIG. 1, redirect software 12 executing on a host system 10 (such as a
`
`desktop computer) redirects messages, such as e-mail, to a mobile device 24:
`
`10
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`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`
`
`
`APPLE-1004, FIG. 1, 9:18-10:16, 16:25-17:17, 18:25-19:10. Hind further
`
`discloses that the mobile device 24 uses a unique PIN to register for the e-mail
`
`account associated with the messages forwarded by the host system 10. APPLE-
`
`1004, 17:18-31. Specifically, Hind explains that that “a personal identification
`
`number (PIN) of the user's mobile device 24” is “exchanged between the mobile
`
`device and the redirector 12.” Id. Hind describes registering the mobile device 24
`
`to receive e-mails using the PIN, explaining that “redirector 12 associates the
`
`mailbox of the user with a PIN.” Id. Accordingly, Hind discloses a service
`
`11
`
`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`activation code (Hind’s PIN) used to register a mobile device to a messaging
`
`account associated with a first computing device, much like the device claimed in
`
`the ’619 patent. APPLE-1003, ¶¶42-43.
`
`2. Overview of Nielsen
`Nielsen describes a system for “controlling access to a location,” which
`
`addresses user access to physical locations and which otherwise addresses “user
`
`access to a computer or computer program where access is controlled by a software
`
`lock mechanism restricting access to a software application, to stored data,
`
`communications facilities, or the like.” APPLE-1005, 2:4-6, 5:18-28. Nielsen
`
`describes a mobile device such as “a mobile phone, a PDA (personal digital
`
`assistant), [or] a handheld computer” that functions as an “electronic key device
`
`201.” APPLE-1005, 20:11-18, 7:1-7. The electronic key stores one or more access
`
`codes and can transmit the “access code from the electronic key device to the lock
`
`control unit” to gain access. APPLE-1005, 6:19-23, 7:26-8:8. FIG. 2b of Nielsen
`
`shows the electronic key device 201 in proximate, wireless communication with a
`
`receiver 227 of the lock control unit 221:
`
`
`
`12
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`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`
`
`
`APPLE-1005, FIG. 2b, 22:27-24:5, 20:33-21:6.
`
`Nielsen describes that the electronic key “retrieves the access code from the
`
`memory 507b and displays the access code and/or related information on the
`
`display 502.” APPLE-1005, 31:29-33, 39:10-33. Subsequently, “the user may
`
`issue a command via the keypad for initiating the use of a selected access code”
`
`and “the control unit 508 initiates transmitting the selected access code via the
`
`circuit 505 and the aerial 504 to the lock control unit.” Id., 32:1-9. Upon
`
`confirmation that the access code is valid, the lock control unit “grant[s] access to
`
`the location.” Id., 34:3-8. Nielsen also discloses that the wireless communication
`
`between the electronic key device 201 and the lock control unit 221 can be infrared
`
`(a form of optical communication). APPLE-1005, 7:1-7, 11:14-16, 20:5-32, 32:16-
`
`32. Accordingly, Nielsen demonstrates that it was known in prior art systems to
`
`13
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`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`optically receive information such as a displayed service activation code from a
`
`remote device. APPLE-1003, ¶¶44-46.
`
`3.
`Combination of Hind and Nielsen
`A POSITA would have been motivated to apply the teachings of Nielsen
`
`regarding displaying the service activation code to Hind and, to the extent that the
`
`term “service activation code” is interpreted narrowly such that Hind’s PIN is not
`
`considered a service activation code, would have been motivated to apply
`
`authorization functionality ascribed to Nielsen’s access code to Hind’s PIN.
`
`APPLE-1003, ¶¶61-72. As such, in the resulting combination of Nielsen with
`
`Hind, Hind’s pin would have been predictably and beneficially displayed at the
`
`mobile device and used as a service activation code to activate access to grant
`
`access to the remote device for the e-mail account associated with Hind’s host
`
`system. APPLE-1003, ¶66.
`
`Multiple reasons would have prompted a POSITA to apply Nielsen’s
`
`teachings to the system of Hind. First, a POSITA would have been motivated to
`
`display the PIN number for Hind’s mobile device on Hind’s mobile device because
`
`displaying the PIN “would have allowed a user of the mobile device 24/100 to
`
`verify the accuracy of the PIN prior to transmission of the PIN to the host system
`
`10/120.” APPLE-1003, ¶67. A POSITA would have recognized that by displaying
`
`the PIN, a user could take steps to obtain a correct/valid PIN if the displayed PIN
`
`14
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`

`

`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`
`were inaccurate. APPLE-1003, ¶67.
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` Second, a POSITA would have been motivated to display the PIN number
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`on Hind’s mobile device to “allow[] the user to select from multiple PINs/access
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`codes.” APPLE-1003, ¶¶68-69. For example, the user of the mobile device 24/100
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`may be authorized to access multiple e-mail accounts, with each being associated
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`with a different PIN. Applying Nielsen’s teaching to Hind’s system would have
`
`allowed for “selection of a first one of the plurality of access rights stored in the
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`first storage means” by the user and “displaying information about at least one of
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`the plurality of access rights stored in the first storage means” by the mobile
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`device. APPLE-1005, 10:5-13, 20:5-11 (“selecting an access code”), 22:27-32;
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`APPLE-1003, ¶69. Displaying the PIN on Hind’s mobile device “would allow for
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`easy selection from among multiple PINs used to access various different accounts
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`and functions (including the forwarded e-mail account).” APPLE-1003, ¶¶69.
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`Third, a POSITA would have been motivated to use Hind’s PIN as a service
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`activation code for accessing a restricted resource (consistent with Nielsen)
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`because requiring transmission of an access code from the mobile device to the
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`host system to allow access to the restricted resource of e-mail forwarding “would
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`have ensured that only authorized persons are permitted to receive forwarded e-
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`mails from the identified account, thereby increasing data security.” APPLE-1003,
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`¶70. As Nielsen explains, requiring transmission of an access code from a mobile
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`15
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`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`device to a computer to grant access to restricted data/software functionality (such
`
`as access to e-mail) “provide[s] a high degree of flexibility and a high level of
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`security.” APPLE-1005, 5:18-28, 4:19-23, 11:1-2. Implementing Nielsen’s
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`suggestion in Hind’s system “would have allowed system administrators to
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`control/restrict access to the e-mail account of Hind, thereby increasing security.”
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`APPLE-1003, ¶70; APPLE-1005, 3:24-4:12.
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`Fourth, a POSITA would have been motivated to implement Hind’s PIN to
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`act as an service activation code, as disclosed by Nielsen, to allow for “a high
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`degree of advanced functionality” such as permitting “different security levels” for
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`different information, “self-destructive access codes, conditioned access codes,
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`access codes for limited periods of times, etc.” APPLE-1005, 4:19-26, 30:10-22;
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`APPLE-1003, ¶71. For example, a conditioned access code would allow a system
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`administrator of Hind to specify conditions for allowing a user access to the e-mail
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`account (e.g., by requiring a “password”), thereby further increasing security.
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`APPLE-1005, 30:10-22; APPLE-1003, ¶71.
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`Fifth, a POSITA would have been prompted to display the PIN on Hind’s
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`mobile device 24/100 and/or implement Hind’s PIN to have the service activation
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`functionality of Nielsen’s access code to grant access to the e-mail account because
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`doing so would be merely the application of a known technique to a known system
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`ready for improvement to yield predictable results. APPLE-1003, ¶72. KSR Int’l
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`16
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`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); APPLE-1003, ¶72.
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`The combination of Hind and Nielsen is addressed below, within the
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`element-by-element application of that combination to claim terms. For
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`convenience, aspects of the combination are described with reference and citation
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`to integrated aspects of each of Hind and Nielsen.3
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`4.
`Analysis of Challenged Claims
`A device comprising:
` [22.P]
`
`Hind’s host system 10 (as predictably modified based on the suggestions of
`
`Nielsen, as described below) performs the functions of the claimed device:
`
`
`
`
`3 Aspects of further combinations in Grounds 2-6 are similarly described with
`
`reference and citation to integrated aspects of each reference.
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`17
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`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`APPLE-1004, FIG. 1, 9:18-10:16, 16:25-19:10; APPLE-1003, ¶¶47-48. Hind’s
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`host system 10 executes redirection software 12 (sometimes referred to as
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`“redirector program 12” or simply “redirector 12”) which redirects received
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`messages to a mobile device 24. Id. Hind describes various alternative systems,
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`sometimes with reference to “the host system 120” which also executes redirection
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`software 12. Id., 29:13-31:19, FIG. 6. A POSITA would have recognized or found
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`obvious that descriptions of the host system 120 of Hind are equally applicable to
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`the host system 10 of Hind as both execute the redirection software 12 to reroute
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`received messages. APPLE-1003, ¶48; see also Boston Scientific Scimed, Inc. v.
`
`Cordis, 554 F.3d 982, 990 (Fed. Cir. 2009) (“combining two embodiments
`
`disclosed adjacent to each other in a prior art patent does not require a leap of
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`inventiveness.”)
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`[22.1] a radio;
`Hind in view of Nielsen renders obvious this element. APPLE-1003, ¶¶49-
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`51. Hind discloses that “the mobile device 100 (also referenced as mobile device
`
`24 in earlier figures) is shown as being in communication with the host system
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`120, via a short-range RF communication link.” APPLE-1004, 29:15-18, 30:25-
`
`31:4 (“short-range RF connection”), 51:7-11. As a POSITA would have known,
`
`“RF communication” is short for “Radio Frequency communication,” which
`
`indicates that the host system includes a radio for engaging in Radio Frequency
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`18
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`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`communications with the mobile device. APPLE-1003, ¶49; APPLE-1004, 35:22-
`
`23. Alternatively, it would be obvious to include a radio in the host system to
`
`facilitate the wireless RF communication between the host system and the mobile
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`device, which would beneficially eliminate the need for a separate physical cradle.
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`APPLE-1003, ¶¶50-51. Indeed, as demonstrated by Nielsen, computing devices
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`commonly included radios to facilitate wireless communication with other
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`computing devices to beneficially allow for exchange of data, such as access
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`codes, e-mails, stored data, etc., between the devices. APPLE-1005, 20:11-32,
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`23:26-29, 35:6-10, 5:24-6:3; APPLE-1003, ¶¶50-51.
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`[22.2] a processor and memory containing instructions executable by the
`processor whereby the device is operable to:
`Hind in view of Nielsen renders obvious this element. APPLE-1003, ¶¶52-
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`54. Hind’s host system 10 is described as “a user’s office PC,” and “a workstation
`
`or desktop computer” executing “redirector software 12.” APPLE-1004, 9:18-
`
`10:16. A POSITA would have understood “software” renders obvious instructions
`
`executable by a processor and this Petition describes how the redirector software
`
`12 performs the functions recited by the challenged claims, infra. APPLE-1003,
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`¶¶55-82. Hind describes the redirect software 12 as “a redirection computer
`
`program…operating within (or in conjunction with) the host system 120.” APPLE-
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`1004, 30:19-31. While Hind does not expressly state that the host system 10
`
`includes a processor and memory, a POSITA would have recognized that Hind’s
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`19
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`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`description of the host system 10 renders obvious a processor and memory for
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`executing the disclosed redirector software 12. APPLE-1003, ¶53 (citing APPLE-
`
`1005, 21:4-15, 32:23-32; APPLE-1007, [0021]; APPLE-1009, [0073]-[0074],
`
`[0043], [0046], [0062]). Alternatively, it would have been obvious for the host
`
`system to include memory for storing the redirector software 12 and a processor
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`for executing the redirector software 12. APPLE-1003, ¶54. Using memory and
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`processors in this manner was conventional in such computers. APPLE-1003, ¶54.
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`Indeed, Hind shows that other computing devices, such as the mobile device 24,
`
`included memory and microprocessors and a POSITA would have recognized that
`
`including memory and a processor in the host system would have been beneficial
`
`by allowing the host system to execute computer functions. APPLE-1004, 13:4-
`
`14:16, FIG. 12; APPLE-1003, ¶54; see also APPLE-1005, 20:33-21:31, 24:27-
`
`25:5.
`
`[22.3] optically receive information including a displayed service activation code
`from a remote device;
`Hind in view of Nielsen renders obvious this element. APPLE-1003, ¶¶55-
`
`72. Hind’s host system can optically receive information from a remote device (the
`
`mobile device 24/100). APPLE-1003, ¶¶55-56. Specifically, “the mobile device 100
`
`(also referenced as mobile device 24 in earlier figures) is shown as being in
`
`communication with the host system 120, via a short-range RF communication link,
`
`a serial link, or any other suitable connection.” APPLE-1004, 29:13-18. Hind
`
`20
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`Attorney Docket No. 39521-0089IP1
`IPR of U.S. Patent No. 10,027,619
`discloses “infrared” as a suitable “short-range communications” protocol and a
`
`POSITA would have
`
`recognized
`
`that
`
`infrared
`
`renders obvious optical
`
`communication as infrared light is part of the light-wave spectrum. APPLE-10