Case IPR2020-00281
`Patent 10,027,619
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.,
`Petitioner,
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`v.
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`SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
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`Case IPR2020-00281
`Patent 10,027,619
`____________
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`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF UNITED STATES PATENT NO. 10,027,619
`PURSUANT TO 35 U.S.C. § 313, 37 C.F.R. § 42.107
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`
`Patent 10,027,619
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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.
`____________
`
`Case IPR2020-00281
`Patent 10,027,619
`____________
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF UNITED STATES PATENT NO. 10,027,619
`PURSUANT TO 35 U.S.C. § 313, 37 C.F.R. § 42.107
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`
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`TABLE OF CONTENTS
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`Case IPR2020-00281
`Patent 10,027,619
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`Page
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`I.
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`INTRODUCTION ........................................................................................ 1
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`II.
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`PETITIONER FAILS TO SHOW ITS MULTIPLE PETITIONS
`AGAINST THIS PATENT ARE NECESSARY OR JUSTIFIED. ......... 1
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`A. Multiple Petitions Are Improper Except In Rare Circumstances. ........ 2
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`B. No Rare Circumstances Necessitating Multiple Petitions Apply. ........ 3
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`1.
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`2.
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`3.
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`Petitioner Fails To Show A Necessity To Raise An
`Exceptionally Broad Array Of Prior Art. .................................... 4
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`No Dispute About The Priority Date Necessitates Extra Art. .... 6
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`Zero, Not Twenty, Claims Are Asserted In Litigation. .............. 7
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`III.
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`PETITIONER FAILS TO SHOW A REASONABLE PROBABILITY
`THE CLAIMS ARE OBVIOUS OVER THE BROWN
`COMBINATIONS. ....................................................................................... 7
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`A. Petitioner Fails To Show Nielsen Is Analogous Art (All Grounds,
`All Claims). ........................................................................................... 7
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`B.
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`Petitioner Fails To Show That The Brown Combinations
`“Optically Receiv[e] . . . A Displayed Service Activation Code”
`(All Grounds, All Claims). .................................................................. 24
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`C.
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`Petitioner Shows No Rationale For Combining Brown With
`Nielsen (All Grounds, All Claims). ..................................................... 33
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`IV. CONCLUSION ...........................................................................................43
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`i
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`TABLE OF AUTHORITIES
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`Case IPR2020-00281
`Patent 10,027,619
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`Page(s)
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`COURT DECISIONS
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`Bicon Inc. v. Straumann Co.,
`441 F.3d. 945 (Fed. Cir. 2006) .................................................................... 31, 32
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`Circuit Check Inc. v. WXW Inc.,
`795 F.3d 1331 (Fed. Cir. 2015) ..........................................................................24
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`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................... 21, 22, 23
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`In re Glaug,
`283 F.3d 1335 (Fed. Cir. 2002) ..........................................................................21
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`Innovention Toys, LLC v. MGA Entm’t, Inc.,
`637 F.3d 1314 (Fed. Cir. 2011) ............................................................................ 8
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`Insite Vision Inc. v. Sandoz, Inc.,
`783 F.3d 853 (Fed. Cir. 2015) ............................................................................20
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`In re Kahn,
`441 F. 3d 977 (Fed. Cir. 2006) ............................................................................. 8
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`K-Tec, Inc. v. Vita-Mix Corp.,
`696 F.3d 1364 (Fed. Cir. 2012) ............................................................................ 8
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`In re Oetiker,
`977 F.2d 1443 (Fed. Cir. 1992) ..........................................................................23
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`Sci. Plastic Prods., Inc. v. Biotage AB,
`766 F.3d 1355 (Fed. Cir. 2014) ..........................................................................24
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`Wang Labs., Inc. v. Toshiba Corp.,
`993 F.2d 858 (Fed. Cir. 1993) ..................................................................... 21, 24
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`ii
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`
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`In re Wood,
`599 F.2d 1032 (CCPA 1979) ..............................................................................23
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`Patent 10,027,619
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`AGENCY DECISIONS
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`Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc.,
`IPR2019-01417, Paper 11 (PTAB Feb. 11, 2020) ................................................ 2
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`Dropbox, Inc. v. Whitserve LLC,
`IPR2019-01018, Paper 13 (PTAB Nov. 1, 2019) ................................................. 3
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`Intel Corp. v. Tela Innovations, Inc.,
`IPR2019-01220, Paper 19 (PTAB Jan. 30, 2020) ................................................ 3
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`Microsoft Corp. v. Uniloc 2017 LLC,
`IPR2019-01470, Paper 7 (PTAB Feb. 11, 2020) .................................................. 3
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`Nalox-1 Pharms., LLC v. Opiant Pharms., Inc.,
`IPR2019-00696, Paper 10 (PTAB Oct. 1, 2019) .................................................. 3
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`Parrot SA v. Drone Techs.,
`IPR2014-00730, Paper 27 (PTAB Oct. 20, 2015) ................................................ 8
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`Pfenex Inc. v. GlaxoSmithKline Biologicals SA,
`IPR2019-01027, Paper 12 (PTAB Nov. 13, 2019) ............................................... 3
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`Schott Gemtron Corp., v. SSW Holding Co., Inc.,
`IPR2014-00367, Paper 62 (PTAB May 26, 2015) ............................................... 8
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`Tianjin Shuangrong Paper Prods. Co., Ltd., v. Kiss Nail Prods., Inc.,
`IPR2016-00371, Paper 13 (PTAB Jun. 10, 2016) ................................................ 8
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`Volkswagen Group of Am., Inc. v. Carucel Investments, L.P.,
`IPR2019-01106, Paper 8 (PTAB Dec. 2, 2019) ................................................... 3
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`iii
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` RULES, RULEMAKING, AND OTHER AGENCY AUTHORITIES
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`Patent Trial and Appeal Board
`Consolidated Trial Practice Guide (Nov. 2019) ...................................... 2, 4, 6, 7
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`iv
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`None
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`EXHIBIT LIST
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`v
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`I.
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`INTRODUCTION
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`The Petition should be rejected because it fails to demonstrate a reasonable
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`likelihood that Petitioner would prevail as to at least one claim.
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`To begin with, this is one of two simultaneous, parallel petitions with which
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`Petitioner is challenging this single patent. Because Petitioner fails to demonstrate
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`any reason that it must challenge the claims of this patent with more than one
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`petition, at least one of the two petitions should be denied on this basis. Infra § II.
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`Petitioner also fails to demonstrate that Nielsen, a reference on which every
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`ground relies, is analogous art to the patent. Nielsen involves the art of locking
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`physical locations using physical mechanisms. The ’619 patent involves the art of
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`transmitting email between computing devices. There is no showing that Nielsen
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`is analogous art to the patent for purposes of an obviousness inquiry. Infra § III.A.
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`Petitioner also fails to show that many significant limitations of the claims
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`are met by any of the proposed four grounds, all four of which rely on combining
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`Brown with Nielsen, or any rationale to combine them. Infra § III.B.-C.
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`For at least these reasons, institution should be denied.
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`II.
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`PETITIONER FAILS TO SHOW ITS MULTIPLE PETITIONS
`AGAINST THIS PATENT ARE NECESSARY OR JUSTIFIED.
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`This is one of two petitions Petitioner filed on the same day challenging
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`almost the same claims of the same patent: IPR2020-00280 and IPR2020-00281.
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`Petitioner fails to show that this is one of the rare cases where more than one
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`petition is necessary. At most, only one of the petitions should be instituted.1
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`A. Multiple Petitions Are Improper Except In Rare Circumstances.
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`Based on the Board’s experience, one petition should be sufficient to
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`challenge the claims of a patent in most situations. Two or more
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`petitions filed against the same patent at or about the same time . . .
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`may place a substantial and unnecessary burden on the Board and the
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`patent owner and could raise fairness, timing, and efficiency concerns.
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`See 35 U.S.C. § 316(b). In addition, multiple petitions by a petitioner
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`are not necessary in the vast majority of cases.
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`Consol. Trial Prac. Guide (Nov. 2019) (“Practice Guide”), 59-60. In summary,
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`parallel petitioning is improper “in the vast majority of cases,” and grounds for
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`rejection except in the “rare” circumstances in which “more than one petition is
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`necessary.” Id.
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`In accord with the Practice Guide, the Board routinely and ordinarily refuses
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`to institute more than one petition against the same patent. E.g., Comcast Cable
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`Commc’ns, LLC v. Rovi Guides, Inc., IPR2019-01417, Paper 11, 4-8 (PTAB Feb.
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`25, 2020) (denying parallel petition); Microsoft Corp. v. Uniloc 2017 LLC,
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`1 For the Board’s convenience, Patent Owner has written this section of the
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`Preliminary Response to be identical in both cases, so it need only be read once.
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`2
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`IPR2019-01470, Paper 7, 11-13 (PTAB Feb. 11, 2020) (same); Intel Corp. v. Tela
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`Innovations, Inc., IPR2019-01220, Paper 19, 4-9 (PTAB Jan. 30, 2020) (same);
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`Volkswagen Group of Am., Inc. v. Carucel Investments, L.P., IPR2019-01106,
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`Paper 8, 8-11 (PTAB Dec. 2, 2019) (same); Pfenex Inc. v. GlaxoSmithKline
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`Biologicals SA, IPR2019-01027, Paper 12, 9-14 (PTAB Nov. 13, 2019) (same);
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`Dropbox, Inc. v. Whitserve LLC, IPR2019-01018, Paper 13, 5-6 (PTAB Nov. 1,
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`2019) (same); Nalox-1 Pharms., LLC v. Opiant Pharms., Inc., IPR2019-00696,
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`Paper 10, 8-14 (PTAB Oct. 1, 2019) (same).
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`B. No Rare Circumstances Necessitating Multiple Petitions Apply.
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`There is no reason why two petitions directed to virtually the same claims of
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`the ’619 patent are necessary.2 For this purpose, the ’619 patent is a completely
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`ordinary patent. Petitioner does not seriously attempt to prove otherwise.
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`The Practice Guide identifies just two “rare” and exceptional circumstances
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`that might justify an additional petition: “when the patent owner has asserted a
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`large number of claims in litigation or when there is a dispute about priority date
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`requiring arguments under multiple prior art references. In such cases two
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`2 Claims 27, 28, 41 and 42 are challenged in 00281 but not 00280.
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`Petitioner makes no argument that this distinction supports allowing two petitions.
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`petitions by a petitioner may be needed, although this should be rare.” Practice
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`Guide, 59.
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`Aware that what it is doing is grounds for denial “in the vast majority of
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`cases,” id., Petitioner filed with its two petitions a five-page notice attempting to
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`justify its actions. Paper 3, 1; see Practice Guide, 59-60. Petitioner’s arguments
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`that two petitions are necessary, Paper 3, simply amount to an expression of
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`Petitioner’s desire to be allowed more words with which to raise more grounds
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`against the same set of claims. That cannot justify two petitions. See Practice
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`Guide, 59-60.
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`Petitioner asserts that both of its petitions against the same set of claims “are
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`necessary [(i)] to show the breadth of prior art that reads on the overly broad
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`claims,” (ii) because two grounds of the first petition allegedly cannot be antedated
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`but all other grounds of both petitions can, (iii) because Patent Owner is
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`supposedly asserting “20 claims” of this patent against Petitioner in court, and (iv)
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`because “Petitioner has filed only two petitions” instead of more than two. Paper
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`3, 5. None of these circumstances necessitates more than one petition.
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`1.
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`Petitioner Fails To Show A Necessity To Raise An
`Exceptionally Broad Array Of Prior Art.
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`Petitioner suggests that the “breadth of prior art that reads on” the claims
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`allegedly requiring more than one petition to raise is demonstrated by the fact that
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`(i) the petitions have a “difference in focus of primary references,” Paper 3, 2, and
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`(ii) the petitions’ have certain differences in the “disclosure” of their primary
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`references, id., 3. Even assuming, arguendo, that these statements are true, it is
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`difficult to imagine a scenario where such facts would not be present for any two
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`different petitions founded on any two different primary references. These
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`circumstances are not rare, but, rather, are all but inevitable in such multiple
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`petitions. And in this case, Petitioner’s two primary references are related to one
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`another: they have the same assignee, and at times have the very same relied-upon
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`disclosures, word-for-word. Compare, e.g., 00280 Ex. 1004 [Hind], 15:14-19
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`(describing “[a]” short-range communications subsystem 1940” and cited by 00280
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`Petition (at) against, e.g., elements [22.3], [24], [25], [37.2], [39], [40], [51.1]),
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`with 00281 Ex. 1012 [Brown], 13:43-49 (containing most of the same text
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`verbatim, and cited by 00281 Petition against the same seven elements listed above
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`in 00280). Petitioner’s use of more than one primary reference in this case cannot
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`justify more than one petition.
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`Petitioner argues that because this patent “has never before been challenged
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`in IPR” and Patent Owner is allegedly pursuing “uncertain positions and [an]
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`aggressive litigation strategy,” “[i]nstituting on only one [p]etition would give
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`Patent Owner an unfair advantage, allowing Patent Owner to strategically attempt
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`to distinguish its claims over the instituted prior art even if those same arguments
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`would effectively show invalidity over the non-instituted prior art.” Id., 5.
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`Petitioner offers absolutely no evidence in support of these false assertions. And
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`even if there were any truth to them, aggressive strategy, modified positions, and
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`demonstrations of how claims differ from prior art occur in the vast majority of
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`patent litigations. There is nothing “rare” about these circumstances. They cannot
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`justify two petitions. And Petitioner cites no authority suggesting that they could.
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`2.
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`No Dispute About The Priority Date Necessitates Extra Art.
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`Neither Patent Owner nor Petitioner has raised any dispute about whether
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`any of the references are prior art. Petitioner insinuates that such a dispute might
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`arise, Paper 3, 4, but relies on nothing but speculation, or even less, for that
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`insinuation. And even if such a dispute were raised, the mere fact that two out of
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`the six grounds of one of two petitions allegedly cannot be antedated is hardly an
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`extraordinary circumstance making it necessary to institute both petitions.
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`Petitioner adds that the 00281 Petition’s primary reference, Brown, is
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`alleged prior art only by virtue of its provisional priority application. Id. Again,
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`no dispute over that reference’s entitlement to that date has been raised, or even
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`hinted at. The mere fact that Petitioner wishes to use two primary references for
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`two sets of grounds, one of which is based on a provisional date and one of which
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`is not, is hardly an extraordinary circumstance giving Petitioner a right to an extra
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`petition.
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`3.
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`Zero, Not Twenty, Claims Are Asserted In Litigation.
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`Finally, Petitioner suggests that this is one of those “rare” cases “when the
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`patent owner has asserted a large number of claims in litigation” that the Practice
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`Guide says may pose exceptions to the single-petition rule, Practice Guide, 59,
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`arguing that Patent Owner is asserting “20 claims in the ’619 patent” against
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`Petitioner in parallel infringement litigation, Paper 3, 5. However, Petitioner’s
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`cited number of 20 asserted claims not only does not constitute “a large number”
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`for multiple petition purposes, Practice Guide, 59, but it is also off by 20 claims.
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`Currently, Patent Owner is not asserting the ’619 patent against Petitioner in court
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`at all. Ex. 1042 [Seven Notice regarding asserted claims]; Ex. 1041 [Apple Notice
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`regarding asserted prior art].
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`* * *
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`Thus, Petitioner fails to demonstrate circumstances justifying two petitions.
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`III.
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`PETITIONER FAILS TO SHOW A REASONABLE PROBABILITY
`THE CLAIMS ARE OBVIOUS OVER THE BROWN
`COMBINATIONS.
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`A.
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`Petitioner Fails To Show Nielsen Is Analogous Art (All Grounds,
`All Claims).
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`The Petition presents four grounds, each relying upon Nielsen. See Pet., 1-2.
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`Petitioner, however, fails to satisfy its burden of even establishing that Nielsen is
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`analogous art. As discussed below, because Petitioner fails to establish Nielsen’s
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`status as analogous art, it is not available prior art for use as a part of Petitioner’s
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`obviousness combinations. Consequently, both petitions’ grounds, because they
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`all rely upon Nielsen, must all be rejected.
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`“To qualify as prior art for an obviousness analysis, a reference must qualify
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`as ‘analogous art,’ i.e., it must satisfy one of the following conditions: (1) the
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`reference must be from the same field of endeavor; or (2) the reference must be
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`reasonably pertinent to the particular problem with which the inventor is
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`involved.” K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012)
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`(citing Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
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`2011)); see In re Kahn, 441 F. 3d 977, 987 (Fed. Cir. 2006) (“The analogous-art
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`test requires that the Board show that a reference is either in the field of the
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`applicant’s endeavor or is reasonably pertinent to the problem with which the
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`inventor was concerned in order to rely on that reference as a basis for rejection.”).
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`It is well-settled that Petitioner bears the burden of proving Nielsen is
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`analogous art in inter partes review. Parrot SA v. Drone Techs., IPR2014-00730,
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`Paper 27, 25 (PTAB Oct. 20, 2015) (“Petitioner has not met its burden in showing
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`that Shkolnikov is analogous art.”); Tianjin Shuangrong Paper Prods. Co., Ltd., v.
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`Kiss Nail Prods., Inc., IPR2016-00371, Paper 13, 26 (PTAB Jun. 10, 2016)
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`(“[Patent Owner] argues that it does not bear the burden of showing that Madsen is
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`non-analogous and that [Petitioner] has not met its burden to show that Madsen is
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`analogous art. We agree to the extent that Tianjin has not met either prong of the
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`analogous art test. . . . Based on our review of the current record, we find that
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`[Petitioner] has failed to demonstrate adequately that Madsen is analogous art to
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`the ’619 patent.”); Schott Gemtron Corp., v. SSW Holding Co., Inc., IPR2014-
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`00367, Paper 62, 28 (PTAB May 26, 2015) (“Petitioner bears the burden of
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`showing by a preponderance of the evidence that the asserted prior art references
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`are analogous art and otherwise combinable.”).
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`Despite the fact that Nielsen’s disclosure is directed to a drastically different
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`field than the patent or the other references—physical locations secured by
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`physical locks as opposed to inter-computer communications—Petitioner does not
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`even attempt to carry its burden of establishing that Nielsen is prior art under either
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`prong of the analogous art test. This failure is sufficient by itself to reject the
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`Petition, and indeed its parallel petition as well.
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`If more were needed than Petitioner’s complete failure to even attempt to
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`meet its burden to show that its references are analogous are and therefore
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`available to be combined, there is also no basis to conclude that Nielsen could be
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`analogous art.
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`First, as to the “field of endeavor” prong of the analogous art test, the ’619
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`patent describes its “field of invention” as relating to “methods and equipment for
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`transmitting electronic mail (e-mail) messages to and from a mobile terminal”:
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`Field of the Invention
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`The invention relates to methods and equipment for transmitting
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`electronic mail (e-mail) messages to or from a mobile terminal.
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`More specifically, the present invention relates to a messaging centre
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`for transmitting e-mail messages to and from a mobile terminal.
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`Ex. 1001 [’619 Patent] 1:19-24.3 This field of endeavor, e.g., transmitting email
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`messages to or from a mobile terminal, is echoed in the ’619 patent’s figures and
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`their associated descriptions:
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`3 Emphases herein are added unless otherwise stated.
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`Exlemal e-mal tenninal
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`Fig. 1
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`1220
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`110
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`11
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`‘02
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`Messaging centre
`no
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`lullabila lenTu' nal
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`Exlemal
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`malted la
`'deleled lleme'
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`External e—ma'rl terminal
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`Database
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`[mailbox]
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`eta.
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`small address 122?;
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`terminal id 1225
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`temp. access netw. id 1225'
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`Ex. 1001 [’619 Patent] Figs. 1-3, 6-7; see also, id., 2:58-3:6 (description of
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`figures). In accord with these teachings, the ’619 patent’s claims concern email
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`and messaging between various devices. Id., cls. 1-22 (concerning systems or
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`methods for forwarding email from an email server to a mobile terminal); cls. 23-
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`52 (“register the remote device for access to a messaging account … [the device
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`operable to] receive a message from the messaging account . . . .”). Similarly, the
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`Petition states: “[t]he ’619 patent describes ‘methods for forwarding an e-mail
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`message from an e-mail server to a mobile terminal.’” Pet., 10 (quoting Ex. 1001
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`[’619 Patent] 2:10-36).
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`Second, with respect to the “particular problem the inventors were trying to
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`solve” prong of the analogous-art test, the ’619 patent’s specification describes
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`shortcomings in the prior art method for pushing email messages from a host
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`system to a mobile data communication device that its invention seeks to address.
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`The particular problem the inventors were trying to solve was to, inter alia, invent
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`an email system for sharing emails between a host device and a mobile device that
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`did not have the following shortcomings from the prior art: (1) the prior art system
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`required separate email accounts for the host system (e.g., an office computer) and
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`the mobile device; (2) the prior art did not address a variety of email
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`synchronization issues between the host system and the mobile device; and (3) in
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`14
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`the prior art, it was difficult to configure the email client software at the mobile
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`terminal:
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`The above-described prior art technique suffers from certain
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`limitations. For example, the host system, such as an office
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`computer, and the mobile terminal require separate e-mail accounts.
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`Some e-mail systems support a forward-type file for forwarding e-
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`mail messages from a first e-mail account to a second e-mail account,
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`but some systems do not support it. It is difficult to set up e-mail
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`systems that do not support such forwarding techniques.
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`Furthermore, the Gilhuly patent does not address issues that
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`relate to manipulating e-mail messages at the second e-mail account
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`(at the mobile terminal). For instance, it is difficult or impossible to
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`use the terminal to arrange incoming e-mail messages into different
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`folders at the host system. Also, if the terminal user deletes an
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`incoming e-mail message at the terminal, a copy of the deleted
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`message is not present in a "deleted items" folder at the host system,
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`which typically is the case in e-mail systems. Likewise, when the
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`terminal sends an e-mail message, a copy of the message is not added
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`to the host system's "sent items" folder. A further related problem is
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`that e-mail messages that the user has read at the terminal may appear
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`as unread messages at the host system.
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`Yet another problem is that configuring an e-mail client
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`software at the mobile terminal is difficult because of user interface
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`restrictions in typical mobile terminals.
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`15
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`Ex. 1001 [’619 Patent] 1:49-2:6. Thus, the particular problem the ’619 patent’s
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`inventors were trying to solve, as with the patent’s field of endeavor, is closely
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`related to setting up and sharing a well-functioning email or other messaging
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`account between a host system and a mobile device.4
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`The Petition does not seriously dispute the above characterization. Indeed, it
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`similarly recognizes and describes the email-centered problems the ’619 patent
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`was trying to solve:
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`The ’619 patent “aims at improving cooperation between the host
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`system 100 and mobile terminal 102 such that they can use a single e-
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`mail account.” Id., 3:9-28. The system includes a “messaging centre
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`110” that “push[es] e-mail messages to the mobile terminal.” Id.,
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`3:41-52. FIG. 1 shows the host system, mobile terminal, and
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`messaging centre:
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`4 This is not to suggest the claims are limited to “email.” The language of
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`the claims-at-issue here shows, for instance, that they are not limited to “email”
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`messages. See, e.g., Ex. 1001 [’619 Patent] cl. 22 (“register the remote device for
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`access to a messaging account using the service activation code; receive a message
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`from the messaging account”); cls. 37, 51 (similar).
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`16
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`APPLE-1001, FIG. 1 (highlighted).
`
`Pet., 10-11; see also Ex. 1003 [Traynor Decl.] ¶ 31 (admitting that “[t]he goal of
`
`the ’619 patent is to allow the host system 100 and mobile terminal 102 to ‘use a
`
`single e-mail account as transparently as possible’ such that ‘the users of the
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`external e-mail terminals 104, when sending or receiving e-mail, do not need to
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`know if the user of the host system 100 actually uses the host system 100 or the
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`mobile terminal 102 to communicate via e-mail.”) (quoting Ex. 1001 [’619 Patent]
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`3:15-28).
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`17
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`Compare and contrast the above description of the patent with the field to
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`which Nielsen is directed. Nielsen, in contrast to the patent, has nothing to do with
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`methods and equipment for transmitting email messages to or from a mobile
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`terminal or forwarding an e-mail message from an e-mail server to a mobile
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`terminal. Nor is Nielsen directed towards solutions or improvements in a system
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`that allows for a host system (such as an office computer) and a mobile terminal
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`(such as a smart phone) to seamlessly use a single email account. Rather, Nielsen
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`is directed towards “a method of controlling access to a location, where access to
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`the location is restricted by a lock mechanism.” Ex. 1005 [Nielsen] 2:4-6. Nielsen
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`makes clear that its focus is access to a physical location and the type of locks it is
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`concerned with is of the sort accessed by, e.g., a newspaper “delivery man.”
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`Nielsen states:
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`Particularly in blocks or flats or companies it is common that a
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`number of outer or front doors or intermediate doors must be passed
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`before getting to a point of service, such as an apartment door, a
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`mailbox, a service station or a meter for appliances, an area to be
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`cleaned, etc. For example in case of delivery of newspapers, the
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`delivery man often has to gain access to a stairway in order to be able
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`to deliver the newspapers at the locked private doors or put them into
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`letter boxes. It frequently causes great difficulties to the delivery men
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`to find the correct keys in a large bundle of keys, and the locks are
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`frequently exchanged with the delivery company being informed of
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`18
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`this. For reasons of security it is also more and more common to lock
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`doors or gates to backyards, residential areas or company properties,
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`where for example refuse containers may be placed, so that the refuse
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`collection firms have a problem quite similar to the firms which
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`deliver newspapers. It will be appreciated that similar problems are
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`faced by:
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` postmen
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` cleaning companies
`
` emergency physicians
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` home help and other care workers
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` policemen
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` firemen
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` artisans
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` caretakers/superintendents
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` and others.
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`Ex. 1005 [Nielsen] 2:15-3:9; see also id., 3:19-23 (“an object of the invention is to
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`provide an efficient method and a system for controlling access to a location
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`secured by a lock mechanism controlled by a lock control unit, which may provide
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`a high degree of flexibility and a high degree of security.”); 4:13-18 (“it is an
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`advantage of the invention that a plurality of different access codes to different
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`buildings may be stored and related to one or more electronic key devices,
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`providing a flexible way of customizing an access right profile for each electronic
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`key device.”). Petitioner agrees that “the primary example provided in Nielsen
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`involves gaining access to a physical location . . . .” Pet., 36.
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`
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`In short, Nielsen has nothing to do with email or any other message delivery
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`system, much less optimization of a system such that a single email account may
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`optimally be shared amongst a host computer and a mobile device. Rather, it
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`teaches ways delivery workers, civil servants (such as “policemen” and “firemen”),
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`and the like may unlock locks to or within various buildings efficiently. Nielsen
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`never mentions email, and never suggests that its system has any relevance to an
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`email or related messaging system.
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`Petitioner quotes a single sentence in Nielsen that states: “The term access to
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`a location may also comprise user access to a computer or computer program
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`where access is controlled by a software lock mechanism restricting access to a
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`software application, to stored data communications facilities, or the like.” Pet., 36
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`(citing Nielsen at 5:18-28). Like many other statements in Nielsen (e.g., 23:5-12,
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`24:1-5, 29:30-33), the quoted text seems part of an effort to broaden the disclosure
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`with what are often called “laundry lists” of things Nielsen (or his patent attorneys)
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`imagine might work. Cf. Insite Vision Inc. v. Sandoz, Inc., 783 F.3d 853, 862 (Fed.
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`Cir. 2015) (“Sandoz relies on the ’535 patent, which mentions the possibility that
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`erythromycin could be combined with polycarbophil. . . . [But] a researcher would
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`20
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`focus on the patent’s examples, none of which mention erythromycin.”); In re
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`Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002) (noting argument that disclosure of
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`alternative embodiments should not be considered because it was “one broad
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`catch-all sentence at the end of the description”).
`
`This isolated sentence about the conceivable meanings of “access to a
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`location” is not further expounded upon in Nielsen. But no matter what that
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`sentence might be taken to mean, it does not mention email; nor does anything in
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`Nielsen suggest that this statement has or could have anything to do with email or
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`other such electronic messaging. To the contrary, whereas email authentication
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`involves a single user accessing a private account specific to that person, Nielsen
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`involves multiple people (delivery people, police officers, etc.) accessing multiple
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`locations secured by multiple lock mechanisms. On the face of it, one has little or
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`nothing to do with the other.
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`The analogous art test has been carefully applied by the Board’s reviewing
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`court. The court has found, for example, that art in a similar field
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