`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD.,
`and SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2022-00807
`Patent 9,756,168
`____________
`
`EXHIBIT 2010
`
`DECLARATION OF PROFESSOR TODOR V. COOKLEV, PH.D.
`
`
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`TABLE OF CONTENTS
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`Page
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`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. QUALIFICATIONS ...................................................................................... 1
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`III. BASES OF OPINIONS ................................................................................. 4
`
`IV. APPLICABLE LEGAL STANDARDS ....................................................... 8
`
`A.
`
`Level Of Ordinary Skill In The Art ................................................... 8
`
`B. My Understanding Of Legal Standards ............................................ 9
`
`V. CLAIMS-AT-ISSUE ...................................................................................13
`
`VI. OPINIONS ....................................................................................................13
`
`A. A “Remote Server” (Claim 2, Ground 1). ....................................... 13
`
`1.
`
`2.
`
`Petitioner and Dr. Kotzin’s Implicit Construction. .................. 14
`
`Baker’s “Local” “Lookup Service 136.” ................................. 20
`
`B. Motivation To Combine Sainton And Baker (All Claims, All
`Grounds). ............................................................................................ 31
`
`C.
`
`“User” “Profile[s]” (All Claims, All Grounds). .............................. 41
`
`1.
`
`2.
`
`Sainton’s User Criteria (Claim 2). ........................................... 42
`
`Baker’s Process For Registration Of Requestors (Claims 2 and
`4). ............................................................................................. 48
`
`D.
`
`“An Indicator Of A Software Application To Be Downloaded
`From The Remote Server” (Claim 19, Ground 4). ........................ 50
`
`E.
`
`Analogous Art (All Claims, All Grounds). ...................................... 55
`
`1.
`
`2.
`
`Field of Endeavor. .................................................................... 56
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`Reasonably Pertinent Problem. ................................................ 61
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`
`
`i
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`VII. CONCLUSION ............................................................................................62
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`
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`ii
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`I.
`
`INTRODUCTION
`
`1. My name is Todor V. Cooklev. I have been retained as an expert
`
`witness to provide my independent opinion in regard to the matters at issue in inter
`
`partes review of U.S. Patent No. 9,756,168 (“the ’168 patent”) in IPR2022-00807.
`
`I have been retained by Smart Mobile Technologies LLC (“Smart Mobile”), the
`
`Patent Owner in the above proceedings. Petitioners are Apple Inc, Samsung
`
`Electronics Co., Ltd., and Samsung Electronics America, Inc. (collectively
`
`“Petitioner”).
`
`2.
`
`I am being compensated $400 per hour for my time spent working in
`
`connection with this case. My compensation is in no way related to the outcome of
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`this litigation. If called as a witness, I would testify as to the statements and
`
`opinions contained in this report.
`
`3.
`
`I am not a legal expert and offer no opinions on the law. However, I
`
`have been informed by counsel of the various legal standards that apply, and I have
`
`applied those standards in arriving at my conclusions.
`
`II. QUALIFICATIONS
`
`4.
`
`I am currently the Harris Professor of Wireless Communication and
`
`Applied Research at Purdue University in Fort Wayne, Indiana in the Department
`
`of Electrical and Computer Engineering. I have served in that endowed
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`professorship role since 2016. Prior to receiving that endowed professorship, I was
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`
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`1
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`an ITT Associate Professor of Wireless Communication and Applied Research at
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`Purdue University. Since 2008, I have served as the Director of the Wireless
`
`Technology Center at Purdue University.
`
`5.
`
`I graduated from the Technical University of Sofia, Bulgaria in 1988
`
`with a Diploma of Engineering in the field of Electrical Engineering. I graduated
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`from Tokyo Institute of Technology in Tokyo, Japan in 1995 with a Doctor of
`
`Philosophy (Ph.D.) degree in Electrical Engineering.
`
`6.
`
`In 1997-1999, I was an engineer at 3Com Corp. where I worked on
`
`software and firmware development. At that time, 3Com was a leading computer
`
`networking and data communication company. Palm Computing, which had
`
`developed the PalmPilot, widely recognized as the first personal digital assistant
`
`(PDA), was a division of 3Com. Additionally, I participated in the Bluetooth
`
`Special Interest Group (SIG) on behalf of 3Com.
`
`7.
`
`In 2007-2008 I served as Principal Investigator of a National Science
`
`Foundation grant awarded to the IEEE. This grant supported a number of
`
`undergraduate and graduate students to work on hardware and software projects
`
`incorporating the IEEE standards. A significant number of software applications
`
`and hardware devices, connected to other devices and/or the Internet using wireless
`
`local or personal area networking standards were developed as a result of this
`
`funding.
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`
`
`2
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`8.
`
`I have contributed to the development of several major standards for
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`communication systems and numerous amendments, including Bluetooth, DSL,
`
`Wi-Fi, cellular, and military radio systems. I have participated in many meetings
`
`of standards committees and prepared, submitted, and presented documents
`
`relating to technical matters considered by these committees. I have also drafted
`
`liaison letters among different standards committees. I have chaired some
`
`committee meetings and served in other leadership roles. For example, I have been
`
`a Voting Member of the IEEE 802.11 Working Group and served as Chairman of
`
`the IEEE Standards in Education Committee. I received an award from IEEE
`
`Standards Association in 2012.
`
`9. My additional involvement with IEEE includes being elected to serve
`
`on the Board of Governors of the IEEE Standards Association in 2020 for one term
`
`beginning January 2021. The Board of Governors provides overall leadership of
`
`the IEEE Standards Association. Also, I am the Series Editor for Wireless and
`
`Radio Communications for the IEEE Communications Standards Magazine (which
`
`is the premier journal in the field of communication standards) and have held that
`
`position since 2017.
`
`10. My current research interests include most aspects of modern wireless
`
`systems, including hardware and software architectures. A significant part of my
`
`research is specifically focused on standards-related issues. I have received a
`
`
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`3
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`number of research grants in these areas. My teaching responsibilities have
`
`included courses in communication systems and networks, signals and systems,
`
`software-defined radio, and digital signal processing.
`
`11.
`
`I am a named inventor on more than thirty U.S. patents, most of which
`
`relate to the hardware or software aspects of communication systems. In 1999, I
`
`was inducted into the Purdue Inventors Hall of Fame. I have also authored and co-
`
`authored more than one hundred peer-reviewed articles. I also authored “Wireless
`
`Communication Standards: A Study of IEEE 802.11, 802.15, and 802.16,”
`
`published by IEEE Press. A list of my publications and patents appears in my
`
`curriculum vitae attached as Appendix A.
`
`12. A detailed record of my professional qualifications is set forth in the
`
`attached Appendix A, which is my curriculum vitae, including a list of
`
`publications, awards, courses I teach in electrical and computer engineering
`
`subjects, research grants, and professional activities. My curriculum vitae also lists
`
`the depositions, hearings, and trial at which I have testified.
`
`III. BASES OF OPINIONS
`
`13.
`
`In the course of conducting my analysis and forming my opinions, I
`
`have reviewed materials including those listed below:
`
`i.
`
`ii.
`
`U.S. Patent No. 9,756,168 (Ex. 1001) (“the ’168 patent” or “’168”);
`
`The prosecution history of the ’168 patent (Ex. 1002);
`
`
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`4
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`iii. The Declaration signed by Dr. Michael Kotzin in IPR2022-00807 (Ex.
`
`1003) (the “Kotzin Declaration”);
`
`iv.
`
`The Curriculum Vitae of Dr. Michael Kotzin (Ex. 1004);
`
`v.
`
`The Petition in IPR2022-01248;
`
`vi. U.S. Patent No. 5,854,985 issued to Joseph B. Sainton, et al.
`
`(“Sainton”) (Ex. 1005);
`
`vii. U.S. Patent No.6,430,599 issued to Mark Baker, et al. (“Baker”) (Ex.
`
`1006);
`
`viii. U.S. Patent No. 6,185,413 issued to Wilhelm Mueller, et al.
`
`(“Mueller”) (Ex. 1007);
`
`ix. U.S. Patent No. 7,043,532 to Richard Humpleman, et al.
`
`(“Humpleman”) (Ex. 1008);
`
`x.
`
`U.S. Patent No. 5,201,067 issued to Gary W. Grube, et al. (“Grube”)
`
`(Ex. 1009);
`
`xi. U.S. Patent No. 6,587,684 issued to Jay Hsu, et al. (“Hsu”) (Ex.
`
`1010);
`
`xii. U.S. Patent No. 6,252,543 issued to William O. Camp (“Camp”) (Ex.
`
`1011);
`
`xiii. U.S. Patent No. 6,337,858 issued to Douglas Petty, et al. (“Petty”)
`
`(Ex. 1012);
`
`
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`5
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`xiv. U.S. Patent No. 6,097,707 issued to Midgat I. Hodzic, et al.
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`(“Hodzic”) (Ex. 1013);
`
`xv. U.S. Patent No. 66,590,943 issued to Danish Ali (“Ali”) (Ex. 1014);
`
`xvi. U.S. Patent No. 6,577,855 issued to Paul A. Moore, et al. (“Moore”)
`
`(Ex. 1015);
`
`xvii. U.S. Patent No. 6,356,771 issued to Paul W. Dent (“Dent”) (Ex.
`
`1016);
`
`xviii. U.S. Patent No. 6,545,990 issued to Carlo Amalfitano, et al.
`
`(“Amalfitano”) (Ex. 1017);
`
`xix. U.S. Patent No. 5,764,704 issued to Kishan Shenoi (“Shenoi”) (Ex.
`
`1018);
`
`xx. U.S. Patent No. 6,600,734 issued to Alex Gernert, et al. (“Gernert”)
`
`(Ex. 1019);
`
`xxi. U.S. Patent No. 5,963,852 issued to Jeffrey A. Schlang, et al. (Ex.
`
`1020);
`
`xxii. U.S. Patent No. 6,295,448 issued to John Joseph Hayes, Jr., et al.
`
`(“Hayes”) (Ex. 1021);
`
`xxiii. U.S. Patent Application Publication No. 2001/0056502 to Magnus
`
`Hollstrom, et al. (“Hollstrom”) (Ex. 1022);
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`
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`6
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`xxiv. U.S. Patent No. 6,886,017 issued to Bruce Jackson, et al. (“Jackson”)
`
`(Ex. 1023);
`
`xxv. U.S. Patent No. 7,574,693 issued to Joost Kemink (“Kemink”) (Ex.
`
`1024);
`
`xxvi. U.S. Patent No. 6,446,192 issued to Subram Narasimhan, et al.
`
`(“Narasimhan”) (Ex. 1025);
`
`xxvii. U.S. Patent No. 6,237,024 issued to Ann M. Wollrath, et al.
`
`(“Wollrath”) (Ex. 1026);
`
`xxviii.
`
`David Clark, “Network Nirvana and the Intelligent Device,”
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`IEEE Concurrency, vol. 7, issue 2, April-June 1999, pp. 16-19
`
`(“Clark”) (Ex. 1027);
`
`xxix. Olstad et al., “Jini Technology: Impromptu Networking and its Impact
`
`on Telecommunications,” Proceedings of Capstone 1999, University
`
`of Colorado at Boulder (Fall 1999) (“Olstad”) (Ex. 1028);
`
`xxx. Budka et al., “Cellular Digital Packet Data Networks,” Bell Labs
`
`Technical Journal, Vol. 2, Issue 3, Summer 1997 (“Budka”) (Ex.
`
`1030);
`
`xxxi. Michel Mouly and Marie-Bernadette Pautet, The GSM System for
`
`Mobile Communications (1992) (“Mouly”) (Ex. 1031);
`
`
`
`7
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`xxxii. U.S. Patent No. 6,275,695 issued to Prem A. Obhan (“Obhan”) (Ex.
`
`1032);
`
`xxxiii.
`
`The exhibits and other documents cited herein.
`
`IV. APPLICABLE LEGAL STANDARDS
`
`A. Level Of Ordinary Skill In The Art
`
`14. My opinions in this declaration are based on the understandings of a
`
`person of ordinary skill in the art, which I understand is sometimes referred to as
`
`an “ordinary artisan” or by the acronyms “POSITA” or “PHOSITA,” as of the time
`
`of the invention, which I understand is here assumed to be the effective filing date
`
`(June 9, 2000) of the provisional application from which the ’168 patent issued. I
`
`understand that the person of ordinary skill in the art is a hypothetical person who
`
`is presumed to have known the relevant art at the time of the invention. By
`
`“relevant,” I mean relevant to the challenged claims of the ’168 patent.
`
`15.
`
`I understand that factual indicators of the level of ordinary skill in the
`
`art include the various prior art approaches employed, the types of problems
`
`encountered in the art, the rapidity with which innovations are made, the
`
`sophistication of the technology involved, and the educational background of those
`
`actively working in the field. I understand that, in assessing the level of skill of a
`
`person of ordinary skill in the art, one should consider the type of problems
`
`encountered in the art, the prior solutions to those problems found in the prior art
`
`
`
`8
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`references, the rapidity with which innovations are made, the sophistication of the
`
`technology, the level of education of active workers in the field, and my own
`
`experience working with those of skill in the art at the time of the invention.
`
`16.
`
`In this case, Dr. Kotzin has asserted in his declaration that a person of
`
`ordinary skill in the art as of the time of the ʼ168 patent would have had:
`
`a bachelor’s degree in electrical engineering, or equivalent training, and
`
`approximately two years of experience working in the networking and
`
`wireless devices field. Lack of work experience can be remedied by
`
`additional education, and vice versa.
`
`Ex. 1003 [Kotzin-Decl.] ¶ 21.
`
`17. For the purposes of this declaration, I accept Dr. Kotzin’s proposed
`
`qualifications of a POSITA.
`
`18. As further discussed below, my opinions as stated in this declaration
`
`are valid even if the Board adopts a slightly different level of ordinary skill in the
`
`art. For example, as will be discussed throughout my report, even a person with
`
`the level of knowledge or experience described by Dr. Kotzin or adopted by the
`
`Board would not have a reasonable expectation of success in implementing certain
`
`aspects of the proposed combination as of the priority date of the ’168 patent.
`
`B. My Understanding Of Legal Standards
`
`19. When considering the ’168 patent and stating my opinions, I rely on
`
`the following legal standards as described to me by the attorneys for Smart Mobile.
`
`
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`9
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`20.
`
`I understand that a patent claim is unpatentable if the claimed
`
`invention would have been obvious to a person of ordinary skill in the art at the
`
`time of the purported invention.
`
`21.
`
`I understand that an obviousness analysis involves comparing a claim
`
`to the prior art to determine whether the claimed invention would have been
`
`obvious to a person of ordinary skill in the art at the time of the invention in view
`
`of the prior art and in light of the general knowledge in the art as a whole. I also
`
`understand that obviousness is ultimately a legal conclusion based on underlying
`
`facts of four general types, all of which must be considered: (1) the scope and
`
`content of the prior art; (2) the level of ordinary skill in the art; (3) the differences
`
`between the claimed invention and the prior art; and (4) any objective indicia of
`
`non-obviousness, including any praise of the invention.
`
`22.
`
`I also understand that obviousness may be established under certain
`
`circumstances by combining or modifying the teachings of the prior art. Specific
`
`teachings, suggestions, or motivations to combine any first prior art reference with
`
`a second prior art reference can be explicit or implicit, but must have existed
`
`before the date of purported invention. I understand that prior art references
`
`themselves may be one source of a specific teaching or suggestion to combine
`
`features of the prior art, but that such suggestions or motivations to combine art
`
`
`
`10
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`may come from the knowledge that a person of ordinary skill in the art would have
`
`had.
`
`23.
`
`I understand that a reference may be relied upon for all that it teaches,
`
`including uses beyond its primary purpose, but also including teachings that lead
`
`away from the invention. I understand that a reference may be said to teach away
`
`when a person of ordinary skill, upon reading the reference, would be discouraged
`
`from following the path set out in the reference, although the mere disclosure of
`
`alternative designs does not teach away.
`
`24.
`
`I further understand that whether there is a reasonable expectation of
`
`success in combining references in a particular way is also relevant to the analysis.
`
`25.
`
`I understand that it is improper to use hindsight to combine references
`
`or elements of references to reconstruct the invention using the claims as a guide.
`
`My analysis of the prior art is made from the perspective of a person of ordinary
`
`skill in the art at the time of the invention.
`
`26.
`
`I understand that in order to be eligible as prior art and therefore form
`
`a reference in one of the instituted grounds, a reference must be analogous art to
`
`the ’168 patent. I also understand that it is Petitioner’s burden to prove that their
`
`asserted references are analogous art to the ’168 patent. I am informed that in
`
`order to determine whether a reference is analogous art to the ’168 patent, a two-
`
`part test is applied as follows:
`
`
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`11
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`Two separate tests define the scope of analogous prior art: (1) whether
`
`the art is from the same field of endeavor, regardless of the problem
`
`addressed and, (2) if the reference is not within the field of the
`
`inventor’s endeavor, whether the reference still is reasonably pertinent
`
`to the particular problem with which the inventor is involved.
`
`In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see also In re Clay, 966 F.2d
`
`656, 658 (Fed. Cir. 1992). I have been informed and understand that to discern the
`
`field of endeavor, courts have looked to the specifications of the patent and the
`
`alleged prior art reference and particularly to the respective “background of
`
`Invention” and/or “field of the invention” sections. See, e.g., In re Wood, 599 F.2d
`
`1032, 1036 (CCPA 1979) (determining field of endeavor based on “Background of
`
`Invention”); Wyers v. Master Lock Co., 616 F.3d 1231, 1237-38 (Fed. Cir. 2010)
`
`(finding reference concerning padlocks to be in the same field of endeavor where
`
`the “patent itself refers to ‘the prior art padlock’ in the background of the
`
`invention”); Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1381 n. 8 (Fed. Cir.
`
`2019) (“[T]he specification of each reference includes a ‘Field of the Invention’
`
`section that distinctly describes each applicable field of endeavor.”).
`
`27.
`
`I am not offering any legal opinions in this declaration nor am I
`
`qualified to do so. I only consider such legal standards in framing my opinions and
`
`conclusions as well as placing assertions made by Petitioner in the Petition into the
`
`proper context. Additionally, from a subject matter perspective, I understand that
`
`
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`the petitioner always has the burden of persuasion regarding a challenge of
`
`patentability of an invention under an inter partes review.
`
`V. CLAIMS-AT-ISSUE
`
`28.
`
`I understand that Petitioner has challenged claims 2-5, 19-23, 25, 28-
`
`29, and 34 based on six grounds as follows:
`
`• Claims 2-5, 23, and 28 based on obviousness over Sainton in view of
`
`Baker and Mueller (Ground 1);
`
`• Claims 25 and 34 based on obviousness over Sainton in view of
`
`Baker, Mueller, and Humpleman (Ground 2);
`
`• Claim 22 based on obviousness over Sainton in view of Baker,
`
`Mueller, and Grube (Ground 3);
`
`• Claims 19 and 20 based on obviousness over Sainton in view of
`
`Baker, Mueller, and Hsu (Ground 4);
`
`• Claim 21 based on obviousness over Sainton in view of Baker,
`
`Mueller, and Camp (Ground 5);
`
`• Claim 29 based on obviousness over Sainton in view of Baker,
`
`Mueller, and Petty (Ground 6).
`
`VI. OPINIONS
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`A. A “Remote Server” (Claim 2, Ground 1).
`
`29. Claim 2 recites:
`
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`Limitation [2.1] “a remote server configured to store wireless device
`
`software for a plurality of different functions or applications for use by
`
`a plurality of wireless devices,”
`
`30.
`
`It is my opinion that Petitioner and Dr. Kotzin have not demonstrated
`
`that the proposed combination of Sainton and Baker teaches a “remote server.”
`
`1.
`
`Petitioner and Dr. Kotzin’s Implicit Construction.
`
`31.
`
`I understand that Petitioner and Dr. Kotzin allege that Baker’s
`
`“lookup service 136” is the claimed “remote server” in the proposed combination:
`
`The combination is nothing more than the combination of known
`
`elements (Baker’s server providing service objects and Sainton’s
`
`cellular phone executing third party applications) according to known
`
`methods (Baker’s transmitting service objects and Sainton’s over-the-
`
`air updating), to yield predictable results (Sainton’s third party
`
`application programs provided from Baker’s
`
`lookup service).
`
`Ex.1003, ¶¶55-56.
`
`Pet., 24 (citing Ex. 1003 [Kotzin-Decl.] ¶¶ 55-56).
`
`32.
`
`I further understand that Petitioner alleges that Baker’s “lookup
`
`service 136” is the claimed “remote server” because “it may reside on a separate
`
`device”:
`
`Baker’s “lookup service 136 may reside on a separate device” from the
`
`requesting device (i.e., Sainton’s wireless device), and is therefore
`
`“remote.” Ex. 1006, 7:37-38; Ex. 1003, ¶¶75-77.
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`
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`Pet., 28. I note that Petitioner and Dr. Kotzin insist that “no terms require
`
`construction.” Pet., 11; Ex. 1003 [Kotzin-Decl.] ¶ 35. Consequently, in my
`
`opinion, Petitioner implicitly construes “remote server” to merely require
`
`“resid[ing] on a separate device” “from the requesting device.”
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`33.
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`In my opinion, this implicit construction is unsubstantiated. I do not
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`see any intrinsic or extrinsic evidence offered by Petitioner or Dr. Kotzin to
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`support this implicit construction.
`
`34.
`
`I note that Petitioner cites to paragraphs 75-77 of Dr. Kotzin’s
`
`declaration as support, but nowhere in those cited sections does Dr. Kotzin
`
`conclude that Baker discloses a “remote server.” Indeed, in the comparison below,
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`it is clear that Petitioner’s conclusion that Baker’s “lookup service 136” is a
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`“remote server” is missing from the cited paragraphs of Dr. Kotzin’s declaration:
`
`Petition at 28
`Baker’s “lookup service 136 may
`reside on a separate device” from the
`requesting device (i.e., Sainton’s
`wireless device), and is therefore
`“remote.” Ex.1006, 7:37-38; Ex.1003,
`¶¶75-77.
`
`Kotzin Declaration at ¶ 77
`Baker teaches that “[t]he lookup
`service 136 may reside on
`a separate device such as a network
`server.” Baker, 7:37-38.
`
`I am aware of other paragraphs of Dr. Kotzin’s declaration where he asserts that
`
`Baker’s “lookup service 136” is a “remote server.” Ex. 1003 [Kotzin-Decl.] ¶¶ 54
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`(“it was well known to transmit third party applications from a remote server to a
`
`mobile device.”) (citing Ex. 1006 [Baker] 8:18-22), 89 (“it was well-known for a
`
`
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`remote server, such as Baker’s lookup service, to maintain profiles of users in
`
`order to keep track of distributed content (such as Baker’s service objects) to
`
`requesting devices.”) (citing nothing). In these paragraphs, Dr. Kotzin says that
`
`Baker’s lookup service is a “remote server” but I do not see any explanation of
`
`how he reaches this conclusion. There is no indication of what Dr. Kotzin believes
`
`constitutes a “remote server” or explanation for why Baker’s lookup service would
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`so qualify.
`
`35. Moreover, in my opinion, Petitioner and Dr. Kotzin’s implicit
`
`construction is contrary to the claims themselves. The claims require various types
`
`of servers.
`
`36. Claim 1 merely requires a “server,” claim 2 requires a “remote
`
`server,” claim 6, similar to claim 2, requires a “server located at a remote location
`
`separate from the wireless device,” claim 19 references a “website server,” and
`
`claim 33 requires a “home server.” I believe that the “remote server” of claim 2,
`
`like the “server located at a remote location” of claim 6, requires a “remote server,”
`
`meaning one at a “remote location.” Whereas claim 1 requires a mere “server,”
`
`claims 6 and 33 concern a server stored in a particular location, e.g., a “home”
`
`server (claim 33), and a “server located at a remote location” (claim 6). A
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`POSITA would understand that “remote server,” thus, means a server at a “remote
`
`
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`16
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`location” relative to the wireless device. This is consistent with usages of the term
`
`“remote” as connoting “far away,” like a “remote island.”
`
`37.
`
`In some contexts, such as for a remote control, a POSITA would
`
`expect the control to simply be separate from the device, e.g., a television. A
`
`“remote server,” however, is an entirely different context and, unlike a TV remote
`
`control, does not suggest mere separation. I do not believe a “remote server”
`
`would be any server separate from the wireless device as Petitioner contends. The
`
`claims already require a server that is separate from the wireless device. This is
`
`particularly clear in claims 6 and 2. Claim 6 requires a “server located at a remote
`
`location separate from the wireless device.” To give effect to every limitation,
`
`claim 6’s server must be “located at a remote location” and “separate from the
`
`wireless device.” To understand a “server located at a remote location” to merely
`
`mean “separate from the wireless device” would be to erase the phrase “located at
`
`a remote location” from the claim:
`
`“a server located at a remote location separate from the wireless device”
`
`38. Similarly, Claim 2 makes clear the “remote server” is separate from
`
`the device without the modifier “remote.” Claim 2’s server must, e.g., store data
`
`for a “plurality of different wireless devices” and “send[]” “software” “to the
`
`wireless device.” If the wireless device were a part of the “remote server,” as Dr.
`
`Kotzin agreed, it would not be “sending” software to itself. Ex. 2011 [Kotzin-
`
`
`
`17
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`Depo.] 57:8-11. Claim 19 depends from claim 2 and further requires that the
`
`“wireless device receives an indicator of… software … to be downloaded from the
`
`remote server.”
`
`39. This pre-existing requirement that the “server” be separate from
`
`device is also present in other claims without the term “remote.” In claim 1, the
`
`“server” and the “mobile device” are recited separately, and the “server” is in
`
`“communication with the mobile device” and “use[d]” by the “mobile device.” In
`
`claim 10, dependent from claim 1, the “server” further “provides software for the
`
`configuration of the mobile or wireless device...” Likewise, in claim 4, the
`
`“server” “connects” to the device and in dependent claim 29, “provides software
`
`for the configuration of the mobile or wireless device...”
`
`40. Notably, claims 15 and 17, which depend from claim 1, require the
`
`server be “colocated” “with a wireless carrier” or “with an office network,”
`
`respectively. See also Ex. 1001 [’168] cls. 24, 26 (dependent from claim 2)
`
`(similar). These dependent claims similarly demonstrate that the “server” is
`
`already separate from the “mobile” or “wireless” device. By virtue of the device
`
`being “mobile” or “wireless,” the device is not tied down to any location and
`
`cannot be “colocated” “with a wireless carrier” or “with an office network.”
`
`41. Thus, independently of the word “remote,” the claims already require
`
`the server be separate from the device.
`
`
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`42.
`
`I also note that Dr. Kotzin appeared to acknowledge that his
`
`understanding of “remote server” would result in the term “remote” having no
`
`meaning:
`
`Q.
`
`To your understanding, what is the difference between the
`
`remote server in Claim 2 and the server in Claim 4?
`
`A.
`
`I don’t know that there necessarily is one.
`
`Ex. 2011 [Kotzin-Depo.] 54:23-55:2. Indeed, Dr. Kotzin testified that “the
`
`inclusion of the word ‘remote’ in Claim 2” does not “change[] in any way the
`
`understanding of a POSITA with respect to the existence of a server as –
`
`understood in Claim 2 and Claim 4.” Id., 55:3-13. I further note that Dr. Kotzin
`
`testified that the term “remote,” in his opinion, is superfluous in claim 6’s
`
`limitation requiring “a server located at a remote location separate from the
`
`wireless device.”
`
`Q. …So the limitation as is says, “a server located at a remote
`
`location separate from the wireless device.” If we took out
`
`“remote location” so that the limitation reads, “a server separate
`
`from the wireless device,” does that change the meaning of the
`
`claim?
`
`A. Not clear to me that it does.
`
`Id., 62:5-12.
`
`
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`19
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`43. Consequently, in my opinion, Petitioner and Dr. Kotzin’s implicit
`
`claim construction of “remote server” is both unsupported and contrary to the
`
`language of the claims.
`
`2.
`
`Baker’s “Local” “Lookup Service 136.”
`
`44. To reiterate, Petitioner and Dr. Kotzin allege that Baker’s “lookup
`
`service 136” is the claimed “remote server” in the proposed combination. Pet., 24
`
`(citing Ex. 1003 [Kotzin-Decl.] ¶¶ 55-56). I disagree.
`
`45. Petitioner and Dr. Kotzin allege Baker’s “lookup service” is a remote
`
`server because it “may reside on a separate device such as a network server.” Pet.,
`
`28-29 (“Baker’s server stores software for multiple different functions.”). But
`
`Baker’s “lookup service 136” is a “local” server not a “remote” one. Baker is clear
`
`that its “lookup service 136” is not remote but, rather, part of a “local network”
`
`for, e.g., a local office or home, that a printer, internet television, and smart phone
`
`connect to:
`
`
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`Ex. 1006 [Baker] Fig. 3; see Ex. 2011 [Kotzin-Depo.] 17:1-6. These are precisely
`
`the sorts of devices on, e.g., a home network. Ex. 1006 [Baker] Fig. 3, see also
`
`7:27-34 (“Also shown attached to the network are a