IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Michael J. Koss, et al.
`U.S. Patent No.:
`10,298,451 Attorney Docket No.: 50095-0020IP1
`Issue Date:
`May 21, 2019
`
`Appl. Serial No.: 16/057,360
`
`Filing Date:
`August 7, 2018
`
`Title:
`CONFIGURING WIRELESS DEVICES FOR A WIRELESS IN-
`FRASTRUCTURE NETWORK
`
`
`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. 10,298,451 PURSUANT TO 35 U.S.C. §§311–319, 37 C.F.R. §42
`
`
`
`
`

`

`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 
`THE ’451 PATENT ......................................................................................... 5 
`A. 
`Brief Description ................................................................................... 5 
`B. 
`Prosecution History ............................................................................... 8 
`C. 
`Claim Construction Under 37 C.F.R. §§42.104(b)(3) .......................... 9 
`IV.  THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 16 
`A. 
`[GROUND 1A] – Claims 1, 6, 11-13, And 15-20 Would Have Been
`Obvious Over Brown And Scherzer ................................................... 16 
`1. 
`Brown ........................................................................................ 16 
`2. 
`Scherzer ..................................................................................... 20 
`3. 
`Brown-Scherzer Combination .................................................. 24 
`4. 
`Claim 1 ...................................................................................... 33 
`5. 
`Claims 6, 11-13, and 15-20 ....................................................... 47 
`[GROUND 1B] – Claims 2, 7-10, and 21 Would Have Been Obvious
`Over Brown, Scherzer, and Baxter...................................................... 59 
`1. 
`Baxter ........................................................................................ 59 
`2. 
`Brown-Scherzer-Baxter Combination ...................................... 61 
`[GROUND 1C] – Claims 3-4 Would Have Been Obvious Over
`Brown, Scherzer, and Drader .............................................................. 70 
`1. 
`Drader ........................................................................................ 70 
`2. 
`Brown-Scherzer-Drader Combination ...................................... 71 
`
`B. 
`
`C. 
`
`i
`
`

`

`D. 
`
`E. 
`
`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`[GROUND 1D] – Claim 5 Would Have Been Obvious Over Brown,
`Scherzer, and Ramey ........................................................................... 73 
`1. 
`Ramey ....................................................................................... 73 
`2. 
`Brown-Scherzer-Ramey Combination ...................................... 75 
`[GROUND 1E] – Claim 14 Would Have Been Obvious Over Brown,
`Scherzer, and Gupta ............................................................................ 76 
`
`
`
`
`ii
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 10,298,451 to Koss, et al. (“the ’451 patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ’451 patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Dr. Jeremy Cooperstock
`
`APPLE-1004
`
`U.S. Pat. No. 9,021,108 (“Brown”)
`
`APPLE-1005
`
`U.S. Pat. App. Pub. No. 2007/0033197 (“Scherzer”)
`
`APPLE-1006
`
`U.S. Provisional Pat. App. No. 60/687,463 (“’463 Provisional”)
`
`APPLE-1007
`
`U.S. Provisional Pat. App. No. 60/728,918 (“’918 Provisional”)
`
`APPLE-1008
`
`U.S. Pat. App. Pub. No. 2007/0245028 (“Baxter”)
`
`APPLE-1009
`
`U.S. Pat. App. Pub. No. 2011/0025879 (“Drader”)
`
`APPLE-1010
`
`U.S. Pat. App. Pub. No. 2010/0307916 (“Ramey”)
`
`APPLE-1011
`
`U.S. Pat. App. Pub. No. 2010/0165879 (“Gupta”)
`
`APPLE-1012
`
`U.S. Provisional Pat. No. 61/386,716 (“’716 Provisional”)
`
`APPLE-1013
`
`RESERVED
`
`APPLE-1014
`
`Plaintiff KOSS Corporations’ Preliminary Infringement Con-
`tentions, KOSS Corporation v. Apple Inc., 6:20-cv-00665
`(W.D.Tex.)
`
`APPLE-1015
`
`Example Order Governing Proceedings - Patent Case
`
`APPLE-1016
`
`Agreed [Proposed] Scheduling Order, KOSS Corporation v. Ap-
`ple Inc., 6:20-cv-00665 (W.D.Tex.)
`
`iii
`
`

`

`APPLE-1017
`
`APPLE-1018
`
`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`Katie Buehler, “Texas Patent Trials Halted Due to COVID-19
`Spike,” Law360, available at https://www.law360.com/ip/arti-
`cles/1330855/texas-patent-trials-halted-due-to-covid-19-spike.
`
`Scott McKeown, District Court Trial Dates Tend to Slip After
`PTAB Discretionary Denials, available at https://www.pa-
`tentspostgrant.com/district-court-trial-dates-tend-to-slip-after-
`ptab-discretionary-denials/ (Jul. 24, 2020)
`
`APPLE-1019
`
`Transcript of November 5, 2020 Telephonic Hearing from Fin-
`tiv, Inc. v. Apple, Inc., Civil Action No. A-19-CV-1238
`(WDTX)
`
`
`
`
`
`iv
`
`

`

`Apple, Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 1-21 (“the Challenged Claims”) of U.S. Patent No. 10,298,451
`
`(“the ’451 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 ’451 patent is available for IPR. This petition is be-
`
`ing filed within one year of service of a complaint against Apple. Apple is not
`
`barred or estopped from requesting this review of the Challenged Claims.
`
`B. Challenge Under 37 C.F.R. §42.104(b) and Relief Requested
`Apple requests an IPR of the Challenged Claims on the grounds below. Ad-
`
`ditional explanation and support for each ground is set forth in the expert declara-
`
`tion of Dr. Cooperstock, referenced throughout this petition. APPLE-1003, ¶¶26-
`
`27 (setting forth level of ordinary skill in the art).
`
`Ground
`
`Claims
`
`Basis For Rejection Under §103
`
`1A
`
`1B
`
`1C
`
`1D
`
`1E
`
`1, 6, 11-13, 15-20
`
`Brown, Scherzer
`
`2, 7-10, 21
`
`Brown, Scherzer, Baxter
`
`3-4
`
`5
`
`14
`
`Brown, Scherzer, Drader
`
`Brown, Scherzer, Ramey
`
`Brown, Scherzer, Gupta
`
`1
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`The ’451 patent was filed 8/7/2018, and claims priority to applications filed
`
`as early as 3/15/2013. Petitioner does not concede that the Challenged Claims are
`
`entitled to the claimed priority, but applies prior art before the alleged date. AP-
`
`PLE-1003, ¶¶22-24. The references below are prior art:
`
`Reference
`
`Date(s)
`
`Basis
`
`Brown
`
`9/27/2010
`
`§102(e)
`
`Scherzer
`
`2/8/2007
`
`§102(b)
`
`Baxter
`
`10/18/2007
`
`§102(b)
`
`Drader
`
`2/3/2011
`
`§102(b)
`
`Ramey
`
`12/9/2010
`
`§102(b)
`
`Gupta
`
`7/1/2010
`
`§102(b)
`
`Brown was filed 2/25/2011 and claims priority to U.S. Provisional Pat. No.
`
`61/386,716 (“’716 Provisional”) (APPLE-1012), filed 9/27/2010. As explained by
`
`Dr. Cooperstock, “Brown is entitled to the benefit of its provisional filing date, i.e.,
`
`the September 27, 2010 filing date” since the ’716 Provisional disclosure “provides
`
`sufficient detail that would have led a POSITA to conclude that the inventor of the
`
`’716 Provisional had possession of the invention claimed in Brown…” APPLE-
`
`1003, ¶35.
`
`2
`
`

`

`Brown Claim 1
`
`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`Supporting Description
`
` A method for automatically enabling access of a
`
`APPLE-1012, [0009],
`
`first mobile electronic device to at least one net-
`
`[0048], [0058].
`
`work accessible by a second mobile electronic de-
`
`vice, said second mobile electronic device storing
`
`configuration data for accessing said at least one
`
`network, said method comprising:
`
` automatically establishing a communication ses-
`
`Id., [0009], [0048],
`
`sion between said first mobile electronic device
`
`[0057]-[0058]; FIG. 2.
`
`and said second mobile electronic device via a lo-
`
`cal link, wherein said automatically establishing
`
`said communication session occurs without one or
`
`more of a manual communication and a manual
`
`input of respective identifiers of said first mobile
`
`electronic device and said second mobile elec-
`
`tronic device;
`
` automatically receiving said configuration data at
`
`Id., [0009]-[0010],
`
`said first mobile electronic device from said sec-
`
`[0049]-[0050], [0055]-
`
`ond mobile electronic device via said local link in
`
`[0058]; FIG. 2.
`
`3
`
`

`

`Brown Claim 1
`
`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`Supporting Description
`
`response to establishing said communication ses-
`
`sion, said configuration data comprising a plural-
`
`ity of profiles for accessing a plurality of respec-
`
`tive access points; and
`
`automatically installing said configuration data at
`
`Id., [0009], [0057]-
`
`said first mobile electronic device such that said at
`
`[0058]; FIG. 2.
`
`least one network is accessible by said first mobile
`
`electronic device using said configuration data,
`
`wherein at least said automatically receiving and
`
`said automatically installing occur rather than a
`
`manual installation of said configuration data at
`
`said first mobile electronic device, and said auto-
`
`matically installing occurs for all of said plurality
`
`of said profiles at once rather than a plurality of
`
`installations for each of said plurality of profiles.
`
`The prior art combinations and obviousness rationales advanced were not
`
`before the Office during examination.
`
`4
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`
`II. THE ’451 PATENT
`A. Brief Description
`The ‘451 patent describes techniques for providing a wireless device with
`
`credentials for an infrastructure wireless network, e.g., a WiFi network, that were
`
`input on a remote server and passed to the wireless device through a mobile com-
`
`puter. APPLE-1001, 2:52-54. Figure 1 (below) shows system 10 including ear-
`
`phone set 12 as one example of such a wireless device. Id., 3:2-4.
`
`
`
`5
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`APPLE-1001, FIG. 1
`
`Figure 1 shows content access point (CAP) 16, along with wireless access
`
`point 24, which provides an infrastructure wireless (e.g., WiFi) network. Id., 2:52-
`
`54, 3:40-44. Earphones 14 may communicate wirelessly with CAP 16 via an ad
`
`hoc communication link 18, and CAP 16 may connect with, e.g., via a USB con-
`
`nector, or be integrated into a personal digital audio player (DAP) 20 or computer
`
`22. Id., 3:17-21, 3:29-30. Both computer 22 and wireless access point 24 may be
`
`connected to communications network 28, e.g., the Internet, along with remote
`
`server system 30. APPLE-1001, 3:45-50; APPLE-1003, ¶¶17-18.
`
`The earphones 14 can, “when properly configured, also receive wireless
`
`content via infrastructure networks,” such as the infrastructure wireless network
`
`provided by wireless access point 24. APPLE-1001, 4:45-47. Figure 3 (repro-
`
`duced below) shows a flow chart of a process that, among other things, “allows the
`
`earphones 14 to be configured for infrastructure network (and Internet) access.”
`
`Id., 5:22-23; APPLE-1003, ¶19.
`
`6
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`
`APPLE-1001, FIG. 3
`
`
`
`At step 60, “the user (e.g., a user of the earphones 14), using the Internet-en-
`
`abled computer 22 with a browser, logs into a website associated with the ear-
`
`phones 14, hosted by the remote server(s) 30, and sets up an account (if the user
`
`does not already have one).” APPLE-1001, 4:50-55. The ‘451 patent explains
`
`that, “[a]t the website, the user can, for example, add Wi-Fi hotspots,” or “a JAVA
`
`applet from the website may be used by the computer 22 to search for nearby Wi-
`
`Fi hotspots, which, upon detection, may be displayed for the user on the website.”
`
`Id., 4:55-64. To add a Wi-Fi hotspot, at step 62, the user may click on the desired
`
`Wi-Fi hotspot displayed on the website and “enter a password and/or encryption
`
`7
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`type (e.g., WPA or WPA2) for the selected Wi-Fi hotspot.” Id., 4:64-5:1. The
`
`’451 patent explains that “[t]he SSID, password, and encryption type for the Wi-Fi
`
`hotspot is stored for the user's account by the remote server(s) 30.” Id., 5:1-3; AP-
`
`PLE-1003, ¶20.
`
`At step 66, “the user may update the earphones 14 with the Wi-Fi hotspot
`
`credentials (e.g., SSID, password if one is used for the hotspot, and/or encryption
`
`type).” To do this, the user “click[s] on or otherwise select[s] a link on the website
`
`to update the ear-phones 14.” APPLE-1001, 5:14-18. This process uses the CAP,
`
`which has been “plugg[ed] into the computer.” Id. 5:8. The computer obtains the
`
`credentials from the remote server. Then, “[u]pon clicking the link, the CAP 16,
`
`transmits the credentials (e.g., SSID, password, encryption type) for each of the
`
`added Wi-Fi hotspots to the earphones 14, via the ad hoc wireless communication
`
`link 18,” which “allows the earphones 14 to be configured for infrastructure net-
`
`work (and Internet) access.” Id., 5:16-23; APPLE-1003, ¶21.
`
`B.
`Prosecution History
`The ’451 patent was filed 8/7/2018 and claimed priority through a chain of
`
`applications dating back to 3/15/2013. APPLE-1002, 274. A first Non-final Of-
`
`fice Action, dated 11/1/2018, included rejections over U.S. Pat. App. Pub. No.
`
`2014/0279122 (“Luna”). Id., 70-93. Applicant’s Response to Office Action, dated
`
`1/17/2018, advanced a purported 5/14/2012 invention date before Luna. APPLE-
`
`8
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`1002, 50-57. A Notice of Allowance then issued on 3/11/2019. Id., 7-14; APPLE-
`
`1003, ¶¶22-24.
`
`Each reference relied upon in this petition pre-dates the purported invention
`
`date of the ’451 patent.1 These references were not considered by the examiner
`
`during prosecution. Had the Office been aware of these references, the ’451 patent
`
`would not have issued.
`
`C. Claim Construction Under 37 C.F.R. §§42.104(b)(3)
`Petitioner submits that all claim terms should be construed according to the
`
`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`C.F.R. §42.100. No formal claim constructions are necessary because “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).
`
`
`1 In its preliminary infringement contentions dated 11/6/20 , KOSS alleges an in-
`
`vention date of 7/10/2010. Because this allegation is not supported by evidence,
`
`this petition applies prior art predating the 5/14/2012 purported invention date and
`
`the 3/15/2013 filing date of the earliest priority application.
`
`9
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`III. PTAB DISCRETION UNDER § 314(a) SHOULD NOT PRECLUDE
`INSTITUTION
`The Apple Inc. v. Fintiv, Inc. factors weigh against discretionary denial.
`
`IPR2020-00019, Paper 11, 5-6 (Mar. 20, 2020) (precedential). Recent Board deci-
`
`sions applying these factors confirm discretionary denial is not warranted here.2
`
`Factor 1: Institution Will Enable a Stay
`If this petition is instituted, a stay of the related litigation pending the West-
`
`ern District of Texas (“Texas Litigation”) would be appropriate. Crossroads Sys.
`
`v. DOT Hill Sys. Corp., 2015 U.S. Dist. LEXIS 77526 (W.D. Tex. June 16, 2015)
`
`(granting stay). Regardless, the Board has indicated it “will not attempt to predict
`
`how the district court in the related district court litigation will proceed because the
`
`court may determine whether or not to stay any individual case, including the re-
`
`lated one, based on a variety of circumstances and facts beyond [its] control and to
`
`which the Board is not privy.” Sand Revolution, IPR2019-01393, Paper 24, 7 (June
`
`16, 2020) (Informative); see Intel Corp. v. VLSI Tech. LLC, IPR2020-00158, Paper
`
`16, *7 (May 20, 2020).
`
`
`2 Apart from Petitioner’s showing that the Fintiv factors favor institution, the Fintiv
`
`framework should be overturned because it is both legally invalid and unwise poli-
`
`cy. Specifically, the framework (1) exceeds the Director’s authority, (2) is arbi-
`
`trary and capricious, (3) and was adopted without notice-and-comment rulemaking.
`
`10
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`Overall, this factor does not support discretionary denial.
`
`Factor 2: Uncertain District Court Schedule
`Here, the earliest projected trial date in the Texas Litigation is April 18,
`
`2022, less than two months before the expected final written decision (FWD). In
`
`Sand Revolution, the Board found that a trial date five months before the FWD was
`
`“in relatively close proximity to the expected final decision” and insufficient to
`
`deny institution. See Sand Revolution, IPR2019-01393, Paper 24, 8-9. The pro-
`
`jected trial date here is therefore not sufficiently early to justify institution denial.
`
`Even if trial were projected more than five months before June, 2022, which
`
`it is not, that would not support denying institution. As Sand Revolution held,
`
`“it is unclear that the court in the related litigation will adhere to any currently
`
`scheduled jury trial date or, if it is changed, when such a trial will be held.” Id., 8-
`
`9. Indeed, as of July, 2020, “70% of [WDTX] trial dates initially relied upon by
`
`the PTAB to deny petitions have slid.” APPLE-1018. Such delays even impacted
`
`the seminal NHK and Fintiv cases, where, after the Board denied institution, asso-
`
`ciated trial dates were delayed by the courts; notably, Fintiv was before the same
`
`W.D. Tex. court that is presiding over the counterpart Texas Litigation in the in-
`
`stance case. See Mylan Pharmaceuticals Inc. v. Sanofi-Aventis Deutschland
`
`GMBH, IPR2018-01680, Paper 22 at 17, n. 6 (PTAB Apr. 3, 2019) (“In the district
`
`court case running parallel to NHK Spring, the court ultimately moved the trial
`
`11
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`date back six months, illustrating the uncertainty associated with litigation sched-
`
`ules.”); APPLE-1019, 10:22-11:8 (resetting Fintiv trial to June 1, which is more
`
`than two weeks after the FWD would have been due in the associated IPR).
`
`In contrast, despite the pandemic, the Board has adhered to the one-year stat-
`
`utory deadline for FWDs prescribed by 35 U.S.C. § 316(a)(11). Sand Revolution,
`
`IPR2019-01393, Paper 24, 9. Moreover, the currently scheduled trial date may not
`
`necessarily precede the FWD if the panel mails its Decision on Institution and/or
`
`its Final Written Decision earlier than required by statute. See, e.g., IPR2020-
`
`00895, Paper 16 (PTAB Oct. 23, 2020) (Decision on Institution mailed on October
`
`23rd, earlier than required by statute—December 9th—thereby causing a Final
`
`Written Decision to be due by October 23, 2021, two days before a scheduled trial
`
`date).
`
`Overall, this factor does not support discretionary denial. See id., 8-10.
`
`Factor 3: Early Stage of Parallel Proceedings
`By any objective standard, Petitioner filed this petition at a very early stage
`
`of the litigation, a fact that “has weighed against exercising the authority to deny
`
`institution under NHK.” Seven Networks, IPR2020-00156, Paper 10, 11-12 (June
`
`15, 2020). Here, Petitioner filed this petition within four months of being served,
`
`12
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`within three weeks of Koss serving infringement contentions,3 and before either
`
`party submitting proposed claim constructions or briefs. APPLE-1014, APPLE-
`
`1016, 2-3; IPR2020-00019, Paper 11, 11–12 & n.22. No substantive orders have
`
`been issued by the court in the underlying litigation. Indeed, as of the filing of this
`
`Petition, the court has not yet heard or ruled on Apple’s initial motion responding
`
`to the complaint, in which Apple seeks to have the complaint struck. And, regard-
`
`less of the outcome of that motion, the court’s Markman hearing is not scheduled
`
`until April 22, 2021, five months away. APPLE-1016. 3.
`
`It is entirely appropriate that Petitioner files its petition only after receiving
`
`infringement contentions, as here. Amazon.com, Inc. v. Customplay, LLC,
`
`IPR2018-01498, Paper 13, 8-9 (finding that waiting “to better understand the as-
`
`serted claims, the bases for the infringement allegations … and to identify relevant
`
`prior art” should not weigh in favor of discretionary denial); 157 Cong. Rec. S5429
`
`(Sept. 8, 2011) (Sen. Kyl) (“High-technology companies … are often sued by de-
`
`fendants asserting multiple patents with large numbers of vague claims …. [I]t is
`
`
`3 Koss’s contentions assert 175 claims across five patents—including all but two
`
`claims of the ’451 Patent—a significant burden Petitioner has had to contend with
`
`in developing this petition. APPLE-1014.
`
`13
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`important that the section 315(b) deadline afford defendants a reasonable oppor-
`
`tunity to identify and understand the patent claims that are relevant to the litiga-
`
`tion”).
`
`Moreover, this petition was filed well before the one-year statutory bar date.
`
`Mylan, IPR2018-01680, Paper 22, 18 (finding that petition filed two months before
`
`bar date is “well within the timeframe allowed by statute, weighing heavily in [pe-
`
`titioner’s] favor”).
`
`Overall, this factor weighs against discretionary denial.
`
`Factor 4: The Petition Raises Unique Issues
`The Texas Litigation is still in its infancy, with initial invalidity contentions
`
`not due until January, 2021. APPLE-1016, 2-3. Thus, at present, there is no over-
`
`lap between issues between the Texas Litigation and any IPR resulting from this
`
`petition. A lack of overlap between the petition and the district court proceeding
`
`“has tended to weigh against exercising discretion to deny institution.” Fintiv,
`
`IPR2020-00019, Paper 11, 12-14
`
`Additionally, the district court requires “significant[] narrowing [of] the
`
`number of claims asserted” for trial. APPLE-1015, 10. As a result, the number of
`
`claims adjudicated at the district court will likely be significantly less than the
`
`number of claims addressed here. There will be a significant likelihood of these
`
`14
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`unaddressed claims being reasserted against future products, counseling against
`
`discretionary denial. Seven Networks, IPR2020-00156, Paper 10, 17.
`
`Overall, the lack of overlap between issues in an instituted IPR and the re-
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`lated district court litigation weighs strongly against discretionary denial.
`
`Factor 5: Petitioner’s Involvement in the Texas Litigation
`With respect to Factor 5, the Fintiv decision “says nothing about situations
`
`in which the petitioner is the same as, or is related to, the district court defendant.”
`
`Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd., IPR2020-00122, Paper 15, at *10
`
`(PTAB May 15, 2020) (APJ Crumbley, dissenting).
`
`In cases such as the one at hand, where the parties are the same, the
`factor is neutral. To hold otherwise—that the factor weighs in favor
`of denial if the parties are the same—would, in effect, tip the scales
`against a petitioner merely for being a defendant in the district court.
`But I see no basis for such a presumption, either in the text of the stat-
`ute or in the intent of Congress in passing it. Indeed, it would seem to
`be contrary to the goal of providing district court litigants an alterna-
`tive venue to resolve questions of patentability.
`
`Id.
`
`Factor 6: Other Considerations Support Institution
`Neither Petitioner nor any other party has previously challenged this patent
`
`in a PTAB post-issuance proceeding. Moreover, as described above in Section
`
`15
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`

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`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`II.B, infra, the Board has not previously considered the grounds set forth in this pe-
`
`tition or substantively similar grounds.
`
`Finally, the strength of Petitioner’s patentability challenges on the prelimi-
`
`nary record favor institution. Seven Networks, IPR2020-00156, Paper 10, 20-21.
`
`For these reasons, this factor also weighs against discretionary denial.
`
`In summary, the Fintiv factors weigh against discretionary denial.
`
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A.
`[GROUND 1A] – Claims 1, 6, 11-13, And 15-20 Would Have Been
`Obvious Over Brown And Scherzer
`1.
`Brown
`Brown describes “enabling automatic access of a first mobile electronic de-
`
`vice to at least one network accessible by a second mobile electronic device” by
`
`sending the first device credentials needed to access that network. APPLE-1004,
`
`1:16-20; APPLE-1012, [0002]. Figure 3 shows system 100:
`
`16
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`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`
`APPLE-1004, FIG. 34
`
`
`
`System 100 includes first mobile electronic device (101) (“device 101”),
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`second mobile electronic device (105) (“device 105”), and wireless (e.g., WiFi) ac-
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`cess point (180) in communication with network (103). Brown discloses that de-
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`vices 101, 105 may be mobile or portable computing devices, tablets, laptops,
`
`
`4 Brown and the ’716 provisional include identical figures. Compare APPLE-1004
`
`and APPLE-1012, 32-36. Reference to figures in APPLE-1004 in this petition in-
`
`cludes reference to corresponding figures in APPLE-1012.
`
`17
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`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`PDAs (personal digital assistants), cellphones, or smartphones. APPLE-1004,
`
`5:56-6:4; APPLE-1012, [0030]; APPLE-1003, ¶¶28-29.
`
`Device 101 may be unable to access network 103 since it has not yet been
`
`configured to communicate with access point 180. APPLE-1004, 4:64-67; AP-
`
`PLE-1012, [0031]. Brown recognizes that configuring a new device, e.g., device
`
`101, for network access is time consuming since data is required to be “manually
`
`entered into the new device.” APPLE-1004, 1:25-28; APPLE-1012, [0002]; AP-
`
`PLE-1003, ¶30.
`
`To address this issue, Brown contemplates a scenario where a user manually
`
`enables device 105 to access “available WiFi connections, for example, at a busi-
`
`ness location, an employer location, a client location, a coffee shop….” APPLE-
`
`1004, 5:42-56; APPLE-1012, [0036]. Brown the discloses a way to avoid the “in-
`
`convenient” and “inefficient” process of having to separately manually configure
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`device 101 to access these connections. Id.; APPLE-1003, ¶31.
`
`To accomplish this, Brown teaches that devices 101 and 105 may establish a
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`communication session via local link 190 (e.g., Bluetooth connection) over which
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`device 105 transmits configuration data 182 used to access a network provided by
`
`access point 180. Figure 2 depicts this technique:
`
`
`
`18
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`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`
`APPLE-1004, FIG. 2
`
`
`
`After receiving configuration data 182 from device 105, device 101 can use
`
`that data to access network 103 via access point 180. APPLE-1004, 8:8-15; AP-
`
`PLE-1012, [0053]; APPLE-1003, ¶¶32-33.
`
`19
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`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`
`APPLE-1004, FIG. 4
`
`
`
`Brown’s system thus reduces the burden of manually entering information
`
`for accessing networks into device 101. APPLE-1003, ¶34. Brown’s system also
`
`removes the need for the user to remember, look up, or be aware of such infor-
`
`mation to configure network access. Id.
`
`2.
`Scherzer
`Scherzer describes systems in which a community of registered users can
`
`share, through a server, credentials used to access each other’s access points. As a
`
`result, in Scherzer’s system, each user is “able to access the Internet, its services
`
`20
`
`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`and information, from a large number of locations.” APPLE-1005, [0015], [0020].
`
`As shown in Figure 1 below, a plurality of devices (devices 104, 106, 108, 110,
`
`and 112) can share credential data for the networks provided by wireless access
`
`points 100 and 102, through server 116. APPLE-1003, ¶36.
`
`APPLE-1005, FIG. 1
`
`
`
`A user of Scherzer’s system can allow other users to access “the user’s ac-
`
`cess point in exchange for being allowed to access other user’s access points.” AP-
`
`PLE-1005, [0020]. Each user “registers with the provider of network access by
`
`21
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`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`communicating with provider application server 116.” Id. Application server 116
`
`“receives and stores registration information” from each user. This information is
`
`used “to set up a user contribution account and to enable other registered users of
`
`the network to access the user’s access point.” Id. [0021]. The registration infor-
`
`mation stored in the provider application server can include information that ena-
`
`bles a second user to use the user’s access point, such as an SSID, wired equivalent
`
`privacy (WEP) key or password, and WiFi protected access (WPA) key or pass-
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`word. Id. [0021]; APPLE-1003, ¶37.
`
`Users of Scherzer’s system install a software client on a device, such as a
`
`laptop or PDA, to enable the device “to contact the provider application server and
`
`to acquire access information for network access points that are made available by
`
`a given user to other network users,” e.g., via a cell phone network. APPLE-1005,
`
`[0020]-[0021], [0023]. The access information “enables the user to use another
`
`user’s access point in order to gain access to the Internet,” and “can include
`
`SSID’s, WEP or WPA passwords or keys or any other appropriate information for
`
`accessing access points.” Id., [0021], [0024]. In this way, the software client ena-
`
`bles the user to “contact the provider's application server in order to obtain access
`
`information for a location where the user is not able to use the user’s own access
`
`point” and gain access to the Internet at said location. Id.; APPLE-1003, ¶38.
`
`Figure 4 shows a process in some implementations of Scherzer’s system for
`
`22
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`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`providing network access that can run as part of a software client on a user’s de-
`
`vice:
`
`APPLE-1005, FIG. 4
`
`
`
`As shown, when Scherzer’s system is used in a particular location, “in [step]
`
`400, visible access points are determined,” and, “[i]n [step] 402, access infor-
`
`mation with respect to the visible access points is determined.” APPLE-1005,
`
`[0019], [0023]. Step 402’s process of determining access information can involve
`
`23
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`

`

`Attorney Docket No. 50095-0020IP1
`IPR of U.S. Patent No. 10,298,451
`the information being “downloaded or accessed via a cellular connection . . . or any
`
`other appropriate manner.” As Scherzer explains, Figure 5 provides an implemen-
`
`tation example of step 402. Id., [0023]-[0024]. Similarly, Figure 6 discloses a
`
`corresponding process that the application server 116 can perform to provide ac-
`
`cess information to a device that implements step 402 using the Figure 5 process.
`
`Id., [0025]; APPLE-1003, ¶¶39-40.
`
`Referring again to Figure 4, once the device has acquired the necessary ac-
`
`cess information from the server, “[i]n 404, an access point is selected” and, “[i]n
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`406, a connection is attempted to the selected access point.” APPLE-1005, [0023].
`
`Scherzer also explains that “communication via the access point is attempted to the
`
`Internet.” Id. To ensure that the user device has access to the Internet, in 408, “it
`
`is determined if the connection attempt was successful” and “[i]n the event that the
`
`attempt was not successful, control is passed to 404.” Id.; APPLE-1003, ¶41.
`
`3.
`Brown-Scherzer Combination
`While Brown discloses techniques for improving network access by allow-
`
`ing one device to share credentials across a local link with a second device, its fo-
`
`cus is less on how the first device obtains those credentials and the accompanying
`
`user experience. APPLE-1003, ¶42. For example, Brown recognizes that device
`
`105 may be mobile and notes that a user might access the I