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` Paper 10
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` Date: August 14, 2020
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
`
`IPR2020-00280
`Patent 10,027,619 B2
`____________
`
`
`
`
`
`
`Before THU A. DANG, KARL D. EASTHOM, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
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`IPR2020-00280
`Patent 10,027,619 B2
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`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review (“IPR”) of claims 22−28, 32, 33, 36−42, 46, and 50−52 (“the
`challenged claims”) of U.S. Patent No. 10,027,619 B2 (Ex. 1001, “the ’619
`patent”). Paper 2 (“Pet.”), 1. Seven Networks, LLC, (“Patent Owner”) filed
`a Preliminary Response. Paper 8, “Prelim. Resp.”
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons stated
`below, we determine that Petitioner has established a reasonable likelihood
`that it would prevail with respect to at least one claim. We hereby institute
`an inter partes review as to all of the challenged claims of the ’619 patent
`and all of the grounds of unpatentability presented in the Petition.
`
`A. Related Matter
`The parties indicate that the ’619 patent was involved in Seven
`Networks, LLC v. Apple Inc., Case No. 2:19-cv-115 (E.D. Tex.). Pet. 70;
`Paper 5, 1. Petitioner also filed another parallel Petition (“the ’281 IPR
`Petition”), challenging the same claims of the ’619 patent. IPR2020-00281,
`Paper 3. Petitioner filed a Notice ranking its Petitions in the order that
`Petitioner wishes the Board to consider the merits—namely, ranking the
`instant Petition first and the ’281 Petition second. Paper 3 (“Notice”). We
`considered the parties’ arguments as to whether we should exercise our
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`IPR2020-00280
`Patent 10,027,619 B2
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`discretion under § 314(a) to deny one of the parallel Petitions. We address
`those arguments in our Decision denying institution in the IPR2020-00281.
`
`B. The ’619 Patent
`The ’619 patent discloses methods and systems for transmitting
`electronic mail (e-mail) messages to or from a mobile terminal. Ex. 1001,
`Code 57, 1:20−22. Figure 1 of the ’619 patent is reproduced below.
`
`Figure 1 above shows an exemplary system architecture. Id. at
`3:9−10. 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. at 3:15−18. The ’619 patent also describes a secure e-mail
`
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`provisioning technique in which host system 100 authenticates the use of
`mobile terminal 102 by receiving a service activation code and conveying
`the code to message center 110. Id. at 4:56−5:37. Mobile terminal 102
`generates and displays a service activation code and host system 100
`authenticates the user who enters the code. Id.
`
`C. Illustrative Claim
`Of the challenged claims, claims 22, 37, and 51 are independent.
`Claims 23−28, 32, 33, and 36 depend from claim 22; claims 38−42, 46, and
`50 depend from claim 37; and claim 52 depends from claim 51. Claim 22 is
`illustrative:
`22. A device comprising:
`a radio;
`a processor and memory containing instructions executable by
`the processor whereby the device is operable to:
`optically receive information including a displayed service
`activation code from a remote device;
`register the remote device for access to a messaging account
`using the service activation code;
`receive a message for the messaging account;
`encrypt the message using an encryption key; and
`send the message to the remote device,
`wherein the device is authenticated to access the messaging
`account.
`Ex. 1001, 11:5–17 (emphases added).
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`D. Prior Art Relied Upon
`Petitioner relies upon the references listed below (Pet. 2−4):
`
`
`
`Reference
`
`Date
`
`Exhibit No.
`
`Hind, PCT WO 2002/025890
`
`Nielsen, PCT WO 2001/040605
`
`Thompson, PCT WO 2001/029731
`
`Barchi, US 2005/0060551 A1
`
`Richardson, US 2005/0210259 A1
`
`Eaton, US 2003/0101343 A1
`
`Friend, US 2004/0049599 A1
`
`
`Mar. 28, 2002
`
`June 7, 2001
`
`Apr. 26, 2001
`
`Mar. 17, 2005
`
`Sept. 22, 2005
`
`May 29, 2003
`
`Mar. 11, 2004
`
`1004
`
`10051
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 1−2):
`
`Claim(s)
`
`35
`U.S.C.
`§
`22−26, 33, 36−40, 50−52 103
`
`References/Basis
`
`Hind, Nielsen
`
`22−26, 33, 36−40, 50−52 103
`
`Hind, Nielsen, Thompson
`
`
`
`1
`
`2
`
`
`1 Our citations to Nielsen reference the page number on the bottom of the
`page.
`
`5
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`
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`Claim(s)
`
`22−28, 33, 36−42, 50−52
`
`32, 46
`
`33
`
`36, 50, 52
`
`3
`
`4
`
`5
`
`6
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`
`
`35
`U.S.C.
`§
` 103
`
`103
`
`103
`
` 103
`
`References/Basis
`
`Hind, Nielsen, Thompson, Barchi
`
`Hind, Nielsen, Thompson, Barchi,
`Richardson
`Hind, Nielsen, Thompson, Barchi,
`Eaton
`Hind, Nielsen, Thompson, Barchi,
`Friend
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019).
`Under this standard, the words of a claim are generally given their “ordinary
`and customary meaning,” which is the meaning the term would have to a
`person of ordinary skill at the time of the invention, in the context of the
`entire patent including the specification. See Phillips v. AWH Corp., 415
`F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
`In light of the parties’ arguments and evidence, we find that it is
`necessary to construe expressly the claim term “displayed service activation
`code.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. &
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`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (noting that “we need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy’”).
`
`“displayed service activation code”
`Claim 22 recites “optically receive information including a displayed
`service activation code from a remote device.” Claims 37 and 51 each recite
`a similar limitation.
`Petitioner proposes to construe “service activation code” as “code
`relaying information used to authenticate a user’s access to a messaging
`account.” Pet. 7; Ex. 1003 ¶ 38. We agree with Petitioner’s proposed claim
`construction for purposes of this Decision.
`As Petitioner explains, the Specification states that “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.” Ex. 1001, 4:40−5:8. And during
`prosecution of the ’619 patent, applicant stated 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.” Ex. 1002, 163
`(citing Ex. 1001, 4:56−5:8).
`In addition, as to “displayed service activation code,” Petitioner
`proffers two alternative interpretations. Pet. 22 n.4 (citing Ex. 1003
`¶¶ 60−69). First, Petitioner asserts that “[i]f the claims are broad enough to
`cover a ‘displayed service activation code’ that is machine readable, then
`optically transmitting the service activation code via infrared light would
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`meet this claim element.” Id. Second, Petitioner asserts that “[i]f, however,
`the claims require that the ‘displayed service activation code’ be
`human-readable, such functionality was well known, as demonstrated by
`Nielsen.” Id. Petitioner points out that, as described by the ’619 patent, “the
`client software in the mobile terminal 102 generates and displays a service
`activation code” and then the service activation code is provided to the host
`system 100 “via a local connection, such as a wired or optical interface or a
`short-range wireless interface.” Id. at 25 (quoting Ex. 1001, 4:54−5:8)
`(emphasis added).
`Patent Owner disagrees with both of Petitioner’s interpretations of
`“displayed service activation code.” Prelim. Resp. 34−37. Patent Owner
`argues that the claims “should be interpreted to require that the code is
`‘displayed’ such that it can be ‘optically receiv[ed]’—or, to put it another
`way, that what is optically received is the displayed code.” Id. at 36.
`However, Patent Owner does not identify any portion of the
`Specification that would support its proposed construction. As our
`reviewing court has explained, “the specification is always highly relevant to
`the claim construction analysis,” and “[u]sually, it is dispositive; it is the
`single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at
`1315 (quotation marks and citation omitted). Furthermore, Patent Owner
`attempts to improperly import an extraneous limitation into the claims
`through its proposed claim construction. E.I. du Pont de Nemours & Co. v.
`Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988) (holding that
`reading an “extraneous limitation” into a claim is improper).
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`Based on the present record and in light of the Specification
`(Ex. 1001, 4:40−5:8), we interpret “displayed service activation code” as
`“code relaying information used to authenticate a user’s access to a
`messaging account” and the code is required to be human-readable (e.g.,
`displayed on the mobile device so that the user can view the code), as
`proposed by Petitioner. Pet. 7, 22 n.4; Ex. 1003 ¶¶ 38, 60−69.
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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.2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`
`
`2 Neither party presents arguments regarding objective evidence of
`nonobviousness in the instant proceeding at this time.
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`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). In that regard, Patrick Traynor, Ph.D., testifies that a
`person with ordinary skill in the art at the time of the invention “would have
`had either a Bachelor of Science in computer science, computer engineering,
`electrical engineering, or a related field, with at least 2−5 years of
`experience in research, design, or development of wireless communications
`devices or systems.” Ex. 1003 ¶ 27. Dr. Traynor also testifies that
`“[a]dditional education might substitute for some of the experience, and
`substantial experience might substitute for some of the educational
`background.” Id.
`At this juncture, Patent Owner does not dispute Dr. Traynor’s
`assessment of the level of ordinary skill in the art. See generally Prelim.
`Resp. Based on the current record, we apply Dr. Traynor’s assessment for
`purposes of this Decision. We also note that the prior art of record currently
`in the instant proceeding reflects the appropriate level of ordinary skill in the
`art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001)
`(“the prior art itself reflects an appropriate level” of ordinary skill in the art).
`
`D. Obviousness over Hind, Nielsen, and Thompson
`Petitioner asserts that claims 22−26, 33, 36−40, and 50−52 are
`unpatentable under § 103 as obvious over Hind in view of Nielsen
`(Ground 1), and over Hind in view of Nielsen and Thompson (Ground 2).
`Pet. 10−52. To support its contentions, Petitioner cites to a Declaration of
`Dr. Traynor. Ex. 1003. Patent Owner opposes. Prelim. Resp. 8−61.
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`For the reasons provided below, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertion that
`claims 22−26, 33, 36−40, and 50−52 are unpatentable. Our analysis below
`focuses on the deficiencies alleged by Patent Owner as to Petitioner’s
`obviousness showing.
`
`Hind (Ex. 1004)
`Hind discloses a system and method for redirecting data from a host
`system (or messaging server) to a mobile device. Ex. 1004, code (57).
`Figure 1 of Hind is reproduced below with Petitioner’s annotations. Pet. 11.
`
`
`Annotated Figure 1 of Hind above shows the redirection of user data
`items from user’s desktop computer 10 (host system) to user’s mobile device
`11
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`24. Ex. 1004, 8:12−14. Redirect software 12 executing on host system 10
`redirects messages, such as e-mails, to mobile device 24. Id. at 9:18−10:16,
`16:25−17:17, 18:25−19:10.
`
`Nielsen (Ex. 1005)
`Nielsen discloses a method and system for controlling access to a
`location. Ex. 1005, code (57). According to Nielsen, the term “access to a
`location” may “comprise 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.” Id. at 5:24−28. Figure 2b is reproduced with Petitioner’s annotations.
`Pet. 13.
`
`
`Annotated Figure 2b of Nielsen above shows electronic key device
`201 in wireless communication with receiver 227 of lock control unit 221.
`Id. at 22:27−24:5, 20:33−21:6. “[E]lectronic key device 201 may be a
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`mobile phone, a PDA (personal digital assistant), a handheld computer . . .
`or another terminal that can emit an infrared or radio-based signal.” Id. at
`20:11−18. The electronic key device 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. Id. at 6:19−23, 7:26−8:8. The electronic key
`device “retrieves the access code from the memory 507b and displays the
`access code and/or related information on the display 502.” Id. at 31:29−33,
`39:10−33. “[T]he 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. at 32:1−9. In a preferred embodiment, “the
`wireless data communication utilizes infrared data communication.” Id. at
`7:1−7. “It is an advantage of the infrared communication that it allows a fast
`transmission of the access code to the lock control unit.” Id. at 33:1−7.
`
`Thompson (Ex. 1006)
`
`Thompson discloses an access control system using a personal digital
`assistant (“PDA”) device. Ex. 1006, code (57). Figure 1 of Thompson is
`reproduced below with Petitioner’s annotations. Pet. 42.
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`Annotated Figure 1 of Thompson above illustrates an access control
`system that uses a PDA device to control software and hardware access
`electronically connected to a digital device. Ex. 1006, 7:6−7. “In a
`preferred embodiment, the access control system attaches to a computer
`(108) via a PDA cradle (104) and transmits access control codes that include
`a series of authentication codes or identification codes having encoded data
`stored within a PDA database.” Id. at code (57). “Examples of computer
`data felt to require access control include secure files [and] personalized
`e-mail accounts.” Id. at 3:11−15.
`
`Optically receive a displayed service activation code
`
`Claims 22, 37, and 51 each recite “optically receive information
`including a displayed service action code from a remote device.” See, e.g.,
`Ex. 1001, 11:9−10 (emphases added).
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`Petitioner’s arguments
`Petitioner asserts that Hind in view of Nielsen, or in view of Nielsen
`and Thompson, teaches or suggests this limitation. Pet. 20−26, 41−49;
`Ex. 1003 ¶¶ 55−72, 127−134. For purposes of this Decision, we agree.
`As Petitioner explains, Hind’s host system can optically receive
`information from a remote device (the mobile device 24/100). Pet. 20;
`Ex. 1003 ¶¶ 55−56. Hind discloses that “mobile device 100 . . . 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.”
`Ex. 1004, 29:13−18. Hind also discloses “infrared” as a suitable
`“short-range communications” protocol. Id. at 15:14−19. Dr. Traynor
`testifies that a person of ordinary skill in the art “would have understood that
`infrared communication refers to communication using infrared light (part of
`the light wave spectrum) and therefore constitutes optical communication.”
`Ex. 1003 ¶ 56.
`According to Petitioner, Hind further discloses that a service
`activation code is part of the information received by the host system from
`the mobile device via the suitable infrared connection. Pet. 21; Ex. 1003
`¶¶ 57−59. Hind discloses that “exchanged between the mobile device and
`the redirector 12 is a personal identification number (PIN) of the user’s
`mobile device 24 such that the redirector 12 associates the mailbox of the
`user with a PIN.” Ex. 1004, 17:18−31.
`Dr. Traynor testifies that one of ordinary skill in the art would have
`recognized that “the PIN functions as a service activation code in Hind’s
`system because Hind’s redirector 12 (executing on the host system) uses the
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`PIN to register the mobile device for access to the e-mail messaging account
`by ‘associate[ing] the mailbox of the user with [the] pin’ for the mobile
`device so that the mobile device can receive e-mail messages from the
`messaging account.” Ex. 1003 ¶ 58 (citing Ex. 1004, 17:18−31).
`Dr. Traynor further testifies that such an artisan would have recognized that
`“Hind’s PIN acts as a service activation code in that the PIN is used to
`activate forwarding of messages (such as e-mail) received at the host system
`to the mobile device 24.” Id. ¶ 59 (citing Ex. 1004, 17:18−31, 22:14−28,
`28:27−29:1). For example, Hind describes that the “PIN value of the mobile
`data communication device 24” is used to address rerouted messages to the
`mobile device 24 by redirector software 12. Ex. 1004, 22:14−28.
`According to Dr. Traynor, if “displayed service activation code” is
`interpreted broadly, such that the displayed service activation code need only
`be machine readable and not human readable, Hind’s infrared transfer of the
`PIN would satisfy this term because an ordinarily skilled artisan would have
`recognized that optically transmitting the service activation code (Hind’s
`PIN) via infrared light would meet this claim element. Ex. 1003 ¶ 60.
`Alternatively, Petitioner argues that, if “displayed service activation
`code” is required to be human-readable, Nielsen demonstrates that it was
`known in the prior art systems to optically receive information including a
`displayed service activation code from a remote device. Pet. 22 n.4;
`Ex. 1003 ¶¶ 61−72. Petitioner points out that Nielsen describes a system in
`which a first device transmits an access code to a second device to
`authenticate that the user of the first device is authorized to access a secure
`location, device, or information. Ex. 1005, 6:15−24, 7:1−7, 20:11−18;
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`Ex. 1003 ¶¶ 63−65. Petitioner explains that Nielsen makes clear that “[t]he
`term access to a location may also comprise 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.” Pet. 22−23 (citing Ex. 1005, 5:18−28, 25:19−32)
`(emphases added).
`Nielsen also discloses a mobile device (e.g., a mobile phone or
`handheld computer) that functions as an “electronic key device 201.”
`Ex. 1005, 20:11−18, 7:1−7. Nielsen’s 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 (such as access to stored data,
`communications, or other software functionality). Id. at 6:19−23, 7:26−8:8,
`5:18−28. Dr. Traynor testifies that a person of ordinary skill in the art would
`have recognized that “Nielsen’s access code is a service activation code
`because the access code is used to unlock software functionality and access
`restricted information.” Ex. 1003 ¶ 63.
`Petitioner argues that wireless communication between electronic key
`device 201 and lock control unit in Nielsen’s system can be infrared, which
`is a form of optical communication and “allows a fast transmission of the
`access code to the lock control unit.” Pet. 24 (citing Ex. 1005, 7:1−7,
`11:14−16, 20:5−32, 32:16−32; 33:1−7; Ex. 1003 ¶¶ 56, 64). Petitioner also
`asserts that Nielsen discloses that the access code is displayed, describing
`that the electronic key “retrieves the access code from memory 507b and
`displays the access code . . . on the display 502.” Id. (quoting Ex. 1005,
`31:29−33, 39:10−33 (“retrieves selected access codes . . . and displays them
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`on the display 502”). And 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,” and then upon confirmation that
`the access code is valid, the lock control unit “grant[s] access to the
`location.” Id. at 24−25 (quoting Ex. 1005, 32:1−9, 34:3−8). Dr. Traynor
`testifies, in view of Nielsen, a person of ordinary skill in the art would have
`been motivated to display the PIN number for Hind’s mobile device on
`Hind’s mobile device. Ex. 1003 ¶¶ 67−70.
`Based on the evidence in this present record, we determine that
`Petitioner has shown sufficiently for purposes of this Decision that Hind in
`combination with Nielsen, or with Nielsen and Thompson, teaches or
`suggests “optically receive information including a displayed service action
`code from a remote device,” as recited in claims 22, 37, and 51.
`
`Patent Owner’s arguments
`Patent Owner opposes, advancing two main arguments as to the scope
`and content of the prior art in connection with the optically receiving a
`“displayed service activation code” limitation.
`First, Patent Owner argues that “Petitioner fails to prove that any
`communications between Hind’s host system and mobile device can (or
`could be) conducted via infrared” because “Petitioner presents no evidence
`suggesting that the PIN (allegedly a ‘service activation code’) could be
`communicated in this fashion.” Prelim. Resp. 26−32. Patent Owner avers
`that “all Hind discloses in this regard is an optional component—a ‘short
`
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`range communications subsystem’—that may, in turn, optionally include an
`‘infrared device.’” Id.
`However, an obviousness analysis is not an ipsissimis verbis test. Cf.
`In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). And, nonobviousness
`cannot be shown by attacking references individually where, as here, the
`ground of unpatentability is based upon the teachings of a combination of
`references. In re Keller, 942 F.2d 413, 425 (CCPA 1981). Rather, the test
`for obviousness is whether the references, taken as a whole, would have
`suggested the claimed invention to a person of having ordinary skill in the
`art at the time the invention was made. See In re Merck & Co., 800 F.2d
`1091, 1097 (Fed. Cir. 1986).
`Here, Hind discloses that “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.” Ex. 1004, 29:13−18 (emphases
`added). “Also exchanged between the mobile device and the redirector 12
`[on the host system] is a personal identification number (PIN) of the user’s
`mobile device 24 such that the redirector 12 associates the mailbox of the
`user with a PIN.” Id. at 17:18−31 (emphasis added).
`Figure 12 of Hind is reproduced below with annotation added by
`Dr. Traynor. Ex. 1003 ¶ 55.
`
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`As shown in annotated Figure 12 of Hind above, mobile device 100
`includes short-range communication subsystem 1490, which “may include
`an infrared device and associated circuits and components.” Ex. 1004,
`15:14−19 (emphasis added). As evidenced by Nielsen, it was known in the
`art that “[i]t is an advantage of the infrared communication that it allows a
`fast transmission of the access code.” Ex. 1005, 33:1−7 (emphasis added).
`Dr. Traynor testifies that “Hind describes infrared communication as an
`option for conveying information, including a service activation code in the
`form of Hind’s ‘PIN’, from the mobile device to the host system and a
`POSITA would have been aware that infrared communication is a form of
`optical communication.” Ex. 1003 ¶¶ 55−59. Based on the present record,
`we credit Dr. Traynor’s testimony as it is consistent with the disclosures of
`Hind and Nielsen.
`Therefore, we determine that Petitioner has shown sufficiently for
`purposes of this Decision that the combination of Hind and Nielsen, or the
`combination of Hind, Nielsen, and Thompson, teaches or suggests “optically
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`receive information including a displayed service action code from a remote
`device,” as recited in claims 22, 37, and 51. We do not find Patent Owner’s
`argument that “Petitioner fails to prove that any communications between
`Hind’s host system and mobile device can (or could be) conducted via
`infrared” undermines Petitioner’s obviousness showing at this stage. Prelim.
`Resp. 26−32.
`Second, Patent Owner argues that Petitioner fails to show the
`references disclose or render obvious optically receiving a “displayed
`service activation code” because the claims “should be interpreted to require
`that the code is ‘displayed’ such that it can be ‘optically receiv[ed]’—or, to
`put it another way, that what is optically received is the displayed code.”
`Prelim. Resp. 32−38.
`However, Patent Owner’s argument rests upon its proposed claim
`construction. As discussed above in our claim construction analysis in
`Section II.A, we decline to adopt Patent Owner’s improper proposed claim
`construction because it is not supported by the Specification and improperly
`attempts to import an extraneous limitations into the claims.
`Furthermore, as Petitioner explains (Pet. 24−25), Nielsen discloses
`that the access code is displayed, describing that the electronic key “retrieves
`the access code from the memory 507b and displays the access code . . . on
`the display 502.” Ex. 1005, 31:29−33, 39:10−33 (emphasis added).
`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. at 32:1−9, 33:33−34:2 (“a selected access code is
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`transmitted from the electronic key device 601 to the lock control unit 621,
`e.g. via infrared communication). Upon confirmation that the access code is
`valid, the lock control unit “grant[s] access to the location.” Id. at 34:3−8.
`Petitioner asserts that this is precisely the way that the system of the ’619
`patent works—namely, “the client software in the mobile terminal 102
`generates and displays a service activation code” and then the service
`activation code is provided to the host system. Pet. 25; Ex. 1001, 4:54−5:8.
`Therefore, Patent Owner’s argument that Petitioner fails to show the
`references disclose or render obvious optically receiving a “displayed
`service activation code” is unavailing.
`
`Analogous art
`Prior art is analogous and can be applied in an obviousness
`combination if it either (1) “is from the same field of endeavor, regardless of
`the problem addressed” or (2) “is reasonably pertinent to the particular
`problem with which the inventor is involve.” In re Clay, 966 F.2d 656,
`658−59 (Fed. Cir. 1992). A reference is analogous if either of these two
`tests is met. Scientific Plastic Prods., Inc. v. Biotage AB, 766 f.3d 1355,
`1359 (Fed. Cir. 2014). “The field of endeavor of a patent is not limited to
`the specific point of novelty, the narrowest possible conception of the field,
`or the particular focus within a given field.” Unwired Planet, LLC v. Google
`Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). “A reference is reasonably
`pertinent if, even though it may be in a different field from that of the
`inventor’s endeavor, it is one which, because of the matter with which it
`deals, logically would have commended itself to an inventor’s attention in
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`considering his problem.” Clay, 966 F.2d at 659. Additionally, the Federal
`Circuit has indicated that the scope of analogous art is to be construed
`broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010)
`(“The Supreme Court’s decision in KSR . . . directs us to construe the scope
`of analogous art broadly . . . .”).
`Here, Patent Owner argues that Nielsen is not analogous art. Prelim.
`Resp. 8−24. Patent Owner defines the field of endeavor as “transmitting
`email messages to or from a mobile terminal.” Id. at 10. Patent Owner
`avers that “Nielsen’s disclosure is directed to a drastically different field
`than the patent or the other references—physical locations secured by
`physical locks as opposed to inter-computer communications.” Id. at 9, 18
`(emphasis added). According to Patent Owner, “the particular problem the
`’619 patent’s inventors were trying to solve, as with the patent’s field of
`endeavor, is closely related to setting up and sharing a well-functioning
`email or other messaging account between a host system and a mobile
`device.” Id. at 16. Patent Owner further contains that Nielsen has nothing to
`do with email or any other message delivery system. Id. at 20.
`However, the field of endeavor of the ’619 patent is not limited to
`“transmitting email messages to or from a mobile terminal.” Nor is the
`particular problem the patentee intended to address limited to setting up and
`sharing email or other messaging account between a host system and a
`mobile device, as Patent Owner alleges.
`Indeed, Patent Owner admits that “the language of the claims-at-issue
`here shows, for instance, that they are not limited to ‘email’ messages.”
`Prelim. Resp. 16 n.5 (emphasis added). Significantly, the ’619 patent also
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`discloses a “technique in which the host system 100 authenticates the user of
`the mobile terminal 102.” Ex. 1001, 4:56−5:8 (emphasis added). All of the
`independent claims at issue include limitations that are directed to
`authenticating a device. Claims 22 and 51 each recite “the device is
`authentic
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