`
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`———————
`
`IPR2022-00807
`U.S. Patent No. 9,756,168
`
`
`PETITIONER’S REPLY
`TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`

`

`
`
`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`3.
`4.
`
`TABLE OF CONTENTS
`PETITIONER’S EXHIBIT LIST .............................................................................. 3
`I.
`INTRODUCTION ........................................................................................... 6
`II.
`THE SAINTON-BAKER COMBINATION RENDERS OBVIOUS
`THE “REMOTE SERVER” AND “PROFILE” LIMITATIONS ................... 7
`A.
`The Prior Art Renders Obvious “remote server” Under Both the
`Plain and Ordinary Meaning and Patent Owner’s Interpretation ......... 7
`1.
`Sainton-Baker renders obvious “remote server” ....................... 7
`2.
`Patent Owner’s interpretation of “remote server” is not
`supported by the intrinsic evidence ........................................... 8
`PO’s cited case law does not support PO’s arguments ............ 10
`The extrinsic evidence supports the Petition’s application of
`the art ........................................................................................ 12
`Sainton-Baker renders obvious “remote server” under the
`understood plain meaning of the term, and PO’s argued
`interpretation ............................................................................ 14
`Sainton-Baker Renders Obvious the “profiles of user specific
`information” (claim 2) and “profile” (claim 4) .................................. 15
`1.
`The “profiles” are obvious over Sainton .................................. 15
`2.
`The “profiles” are obvious in view of Sainton-Baker ............. 18
`III. A POSITA WOULD HAVE BEEN MOTIVATED TO COMBINE
`SAINTON AND BAKER .............................................................................21
`A.
`PO’s Response Misconstrues the Combination Actually in the
`Petition ................................................................................................ 21
`Sainton and Baker are Analogous Art ................................................ 23
`1.
`Baker is in the same field of endeavor ..................................... 23
`2.
`Baker is reasonably pertinent ................................................... 26
`IV. THE DEPENDENT CLAIMS ARE RENDERED OBVIOUS ....................27
`V.
`CONCLUSION ..............................................................................................31
`CERTIFICATE OF WORD COUNT ......................................................................32
`CERTIFICATE OF SERVICE ................................................................................33
`
`5.
`
`B.
`
`B.
`
`2
`
`

`

`
`
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`Ex.1004
`
`Ex.1005
`Ex.1006
`
`Ex.1007
`
`Ex.1008
`Ex.1009
`
`Ex.1010
`
`Ex.1011
`Ex.1012
`
`Ex.1013
`
`Ex.1014
`Ex.1015
`
`Ex.1016
`
`Ex.1017
`Ex.1018
`
`Ex.1019
`
`Ex.1020
`Ex.1021
`
`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`PETITIONER’S EXHIBIT LIST
`
`U.S. 9,756,168 (“the ’168 patent”)
`
`Prosecution History of U.S. 9,756,168
`
`Declaration of Dr. Michael Kotzin under 37 C.F.R. § 1.68
`Curriculum Vitae of Dr. Michael Kotzin
`
`U.S. Patent No. 5,854,985 to Sainton et al. (“Sainton”)
`U.S. Patent No. 6,430,599 to Baker et al. (“Baker”)
`
`U.S. Patent No. 6,185,413 to Mueller et al. (“Mueller”)
`
`U.S. Patent No. 7,043,532 to Humpleman et al. (“Humpleman”)
`U.S. Patent No. 5,201,067 to Grube et al. (“Grube”)
`
`U.S. Patent No. 6,587,684 to Hsu et al. (“Hsu”)
`
`U.S. Patent No. 6,252,543 to Camp (“Camp”)
`U.S. Patent No. 6,337,858 to Petty et al. (“Petty”)
`
`U.S. Patent No. 6,097,707 to Hodzic et al. (“Hodzic”)
`
`U.S. Patent No. 6,590,943 to Ali (“Ali”)
`U.S. Patent No. 6,577,855 to Moore et al. (“Moore”)
`
`U.S. Patent No. 6,356,771 to Dent (“Dent”)
`
`U.S. Patent No. 6,545,990 to Amalfitano et al. (“Amalfitano”)
`U.S. Patent No. 5,764,704 to Shenoi (“Shenoi”)
`
`U.S. Patent No. 6,600,734 to Gernert et al. (“Gernert”)
`
`U.S. Patent No. 5,963,852 to Schlang et al. (“Schlang”)
`U.S. Patent No. 6,295,448 to Hayes et al. (“Hayes”)
`
`3
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`

`

`
`
`Ex.1022
`
`Ex.1023
`
`Ex.1024
`Ex.1025
`
`Ex.1026
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`Ex.1027
`
`Ex.1028
`
`Ex.1029
`
`Ex.1030
`
`Ex.1031
`
`Ex.1032
`
`Ex.1033
`
`Ex.1034
`
`Ex.1035
`
`Ex.1036
`
`Ex.1037
`
`Ex.1038
`
`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`U.S. Patent Pub. No. 2001/0056502 to Hollstrom et al.
`(“Hollstrom”)
`U.S. Patent No. 6,886,017 to Jackson et al. (“Jackson”)
`
`U.S. Patent No. 7,574,693 to Kemink (“Kemink”)
`U.S. Patent No. 6,446,192 to Narasimhan et al. (“Narasimhan”)
`
`U.S. Patent No. 6,237,024 to Wollrath et al. (“Wollrath”)
`David Clark, “Network Nirvana and the Intelligent Device,” IEEE
`Concurrency, vol. 7, issue 2, April-June 1999, pp. 16-19 (“Clark”)
`Olstad et al., “Jini Technology: Impromptu Networking and its
`Impact on Telecommunications,” Proceedings of Capstone 1999,
`University of Colorado at Boulder (Fall 1999) (“Olstad”)
`Budka et al., “Cellular Digital Packet Data Networks,” Bell Labs
`Technical Journal, Vol. 2, Issue 3, Summer 1997 (“Budka”)
`Michel Mouly and Marie-Bernadette Pautet, The GSM System for
`Mobile Communications (1992) (“Mouly”)
`U.S. Patent No. 6,275,695 to Obhan (“Obhan”)
`Joint Agreed Scheduling Order; Dkt. 30, Smart Mobile
`Technologies LLC v. Apple Inc., Case No. 6-21-cv-00603 (WDTX)
`Complaint; Dkt. 1, Smart Mobile Technologies LLC v. Apple Inc.,
`Case No. 6-21-cv-00603 (WDTX)
`RESERVED
`
`RESERVED
`
`RESERVED
`Complaint; Dkt. 1, Smart Mobile Technologies LLC v. Samsung
`Elecs. Co., Case No. 6-21-cv-00701 (WDTX)
`Joint Agreed Scheduling Order; Dkt. 43, Smart Mobile
`Technologies LLC v. Samsung Elecs. Co., Case No. 6-21-cv-00701
`(WDTX)
`
`4
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`

`

`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`Microsoft Computer Dictionary, Fourth Edition (Microsoft Press
`1999) (select pages)
`
`IBM Dictionary of Computing (1994) (select pages)
`
`Transcript of Deposition of Dr. Tudor Cooklev, April 28, 2023
`
`
`
`
`
`
`
`Ex.1039
`(NEW)
`Ex.1040
`(NEW)
`Ex.1041
`(NEW)
`
`5
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`

`

`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`
`I.
`
`INTRODUCTION
`
`The Board should find the challenged claims unpatentable over the prior art.
`
`Patent Owner’s (“PO”) arguments merely rely upon distorted readings of the art
`
`and claims, and attacking combinations and positions not taken in the Petition.
`
`PO’s first argument, that Baker’s lookup service teachings fail to render
`
`obvious “remote server,” is based on a reading of “remote server” untethered from
`
`a POSITA’s understanding, the specification’s disclosure, and case law. PO’s
`
`argument also ignores that it is the combined teachings of Sainton-Baker, not just
`
`Baker, that render the limitation obvious. PO next challenges the obviousness of
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`“profiles of user specific information” by attacking a strawman position the
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`Petition did not raise.
`
`PO further challenges Sainton-Baker’s motivation to combine by again
`
`attacking non-existent positions, including “replac[ing]” Sainton’s carrier over-the-
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`air updating with Baker’s “local network lookup service,” or imposing Baker’s
`
`lookup service between Sainton’s server and mobile device. POR at 27, 33. PO’s
`
`arguments do not actually address the facts supporting the Petition’s actual
`
`combination. Further, PO’s arguments regarding analogous art are incorrect, both
`
`factually and legally.
`
`6
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`

`

`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`
`II. THE SAINTON-BAKER COMBINATION RENDERS OBVIOUS THE
`“REMOTE SERVER” AND “PROFILE” LIMITATIONS
`
`A. The Prior Art Renders Obvious “remote server” Under Both the
`Plain and Ordinary Meaning and Patent Owner’s Interpretation
`
`Sainton-Baker renders obvious claim 2’s “remote server.” PO’s arguments
`
`rely on an implied construction they do not request, and which is unsupported by
`
`the intrinsic and extrinsic evidence. The Board correctly determined that the
`
`Petition demonstrated the obviousness of “remote server” with no claim term
`
`requiring express interpretation. ID at 10, 21.
`
`1.
`
`Sainton-Baker renders obvious “remote server”
`
`Sainton discloses updating a wireless device’s “library of command, control,
`
`and data transmission protocols” via transmissions from a carrier. Ex.1005, 5:57-
`
`61; Pet. at 26. A POSITA would have found it obvious from this that “Sainton’s
`
`wireless device communicates with a server” for Sainton’s library updates.
`
`Ex.1003, ¶69; Pet. at 26. Such a server renders obvious a “remote server.”
`
`Further, a POSITA would have found that “Sainton combined with Baker
`
`renders obvious a ‘remote server’.” Ex.1003, ¶¶75-77; Pet. at 28. Baker teaches a
`
`server that stores and provides “service objects,” examples of Sainton’s “third
`
`party applications programs.” Ex.1006, 7:37-38, 8:3-22; Ex.1003, ¶71; Pet. at 26.
`
`Moreover, because Baker teaches that its “lookup service” resides on a device that
`
`is separate from a requesting wireless device, Sainton-Baker teaches that the server
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`7
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`

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`at the carrier is “remote.” Ex.1006, 7:37-38; Ex.1005, 16:17-27, 5:52-65; Ex.1003,
`
`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`¶75; Pet. at 28. It was obvious for Sainton’s wireless device to communicate with a
`
`server at the carrier for library updates, and Baker’s server teachings provide an
`
`example of such a server at the carrier side. Ex.1003, ¶71; Ex.1006, 8:3-22; Pet. at
`
`26.
`
`Rather than address the combined teachings of Sainton-Baker actually
`
`presented, PO instead resorts to implicitly construing “remote server” in a manner
`
`that contradicts the intrinsic record and extrinsic evidence, as discussed below.
`
`2.
`
`Patent Owner’s interpretation of “remote server” is not
`supported by the intrinsic evidence
`
`PO’s argument that the “remote server” must be “physically ‘remote’”
`
`directly contradicts the ‘168 patent’s specification and does not clarify what
`
`actually qualifies as “remote.” See POR at 22.
`
`PO’s argument is based on the premise that a server “physically remote”
`
`from the wireless device is distinct from a server that is “merely … separate” from
`
`the wireless device. POR at 11. PO insists that the “Server C” (Figures 2A-2C)
`
`requires such an interpretation. POR at 18-22; Ex.1041, 58:8-10 (Server C is an
`
`example of a remote server). Per PO, Server C is physically remote from the
`
`wireless device in Figures 2A-2B, distinct from local servers in office or home
`
`loops, “e.g., a ‘local office’ (servers 234) or ‘home’ (home server 264) in Figures
`
`8
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`

`

`
`2B and 2C.” Id. at 22.
`
`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`But requiring a “remote server” to be external to a home or office
`
`environment would exclude an explicit embodiment of the ’168 patent, where
`
`“Server C 214 is located at home 260, office 230 or other location 200 and has
`
`one or more assigned channels of inputs and outputs 502.” Ex.1001, 6:48-52; see
`
`Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276-77 (Fed. Cir. 2008)(normally not
`
`interpreting claim terms to exclude embodiments). This embodiment allows Server
`
`C to be in the same structure as the wireless device, which Dr. Cooklev also
`
`admitted. Ex.1041, 59:14-60:10 (Server C is “somewhere … under a structure
`
`that’s just a roof”); 67:22-68:19 (“…Server C is somewhere on the internet. And in
`
`an extreme example, the wireless device enters that structure. … this does not
`
`change the fact that the Server C – in this extreme example, it is still Server C.”).
`
`Thus, PO’s attempt to exclude the Server C from locations where it is
`
`simply separated, but still in physical proximity to, the wireless device contradicts
`
`the specification and Dr. Cooklev’s own admission. Instead, PO’s emphasis on
`
`being “physically ‘remote’” is ambiguous because PO does not define, or even
`
`appear to know, how far away a location must be to qualify as “remote.” See, e.g.,
`
`Ex.1041, 63:21-64:2 (must be remote), contra 67:22-68:19 (admitting still remote
`
`even when wireless device and Server C are in the same structure).
`
`PO’s position also lacks support from the prosecution history. “[R]emote”
`
`9
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`

`

`
`was added to “server” to distinguish over the prior art. Ex.1002, 343-44.
`
`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`Applicant’s supporting argument sought to distinguish the prior art based on the
`
`relationship to the server, not distance from the server: Applicant argued that the
`
`prior art “requires a multistep system involving a local PC to access software
`
`content and fails to teach or suggest software being downloaded directly from a
`
`server.” Id., 350-51 (emphasis added); compare POR at 22. That multistep system
`
`required downloading software from a server to a PC, then connecting an
`
`electronic device via cable or wireless connection to the PC for the software.
`
`Ex.1002, 350. The prior art’s approach contrasted with the claimed “mobile
`
`devices us[ing] the server to download the software directly from the server.” Id.,
`
`351, 352.
`
`The intrinsic record accordingly supports a plain reading of “remote server”
`
`on the basis of the server’s relationship to the wireless device (e.g., separate), not
`
`PO’s implicit requirement of physical distance.
`
`3.
`
`PO’s cited case law does not support PO’s arguments
`
`PO’s cited case law does not support PO’s premise that different “server”
`
`terms in different independent claims requires “remote” to have a physical
`
`proximity requirement. See POR at 7-12 (“a ‘server,’ a ‘remote server,’ and a
`
`‘home server’ … are presumptively different things”). The cited cases relate to
`
`construing different terms in the same claim, or the same term in different
`
`10
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`

`

`
`independent claims, neither of which applies here.
`
`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`In Bd. of Regents of the Univ. of Tex. Sys., the focus was on independent
`
`claim 10 and the relationship of its different terms to each other. Bd. of Regents of
`
`the Univ. of Tex. Sys. v. BENO Am. Corp., 533 F.3d 1362, 1365, 1371 (Fed. Cir.
`
`2008); see also Becton Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d
`
`1249, 1254, 1256-57 (Fed. Cir. 2010)(different terms within the same claim
`
`presumed to have different meanings). In Innova/Pure Water, the Court looked at
`
`the meaning of the same term (“operatively connected”) used in different
`
`independent claims, and applied the same meaning in both claims. Innova/Pure
`
`Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1119 (Fed. Cir. 2004).
`
`PO, in contrast, points to different terms in different claims of the ’168 patent
`
`that include “server.” POR at 8; Ex.2010, ¶36.
`
`These cases are therefore inapposite to PO’s effort to impose a distance
`
`limitation on “remote.” In fact, in Innova/Pure Water the Court further declined to
`
`impose different meanings for claim terms “connected” and “associated.”
`
`Innova/Pure Water, 381 F.3d at 1119-20. Instead, the terms had “very similar”
`
`meanings, with it being “simply a case where the patentee used different words to
`
`express similar concepts, even though it may be confusing drafting practice.” Id. at
`
`1120. Such is the case here with the use of “remote”/“server” in the claims.
`
`11
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`

`

`
`
`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`4.
`
`The extrinsic evidence supports the Petition’s application of
`the art
`
`The extrinsic evidence demonstrates that “remote” addresses the server’s
`
`relationship to another device (accessed through a telecommunications line rather
`
`than direct link), not a distance between devices. In the computer communication
`
`arts “remote” was understood to mean, per the Microsoft Computer Dictionary:
`
`not in the immediate vicinity, as a computer or other device located in
`another place (room, building, or city) and accessible through some
`type of cable or communication link.
`
`Ex.1039, 382. The IBM Dictionary of Computing defined “remote” as:
`
`(1) Pertaining to a system, program, or device that is accessed through
`a telecommunications line. Contrast with local. (2) Synonym for link-
`attached.
`
`Ex.1040, 570. The IBM Dictionary contrasts this with “local”:
`
`(3) Pertaining to a device accessed directly without use of a
`telecommunication line.
`
`Ex.1040, 392.
`
`The Microsoft Dictionary provides a similar definition of “local”:
`
`2. In communications, a device that can be accessed directly rather than
`by means of a communications line.
`
`Ex.1039, 271.
`
`This dovetails with PO’s prosecution arguments that the “mobile devices use
`
`12
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`

`

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`the server to download the software directly from the server” over an IP network (a
`
`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`telecommunications line), instead of a connection between the mobile device and a
`
`PC plus a connection from that PC to a server. Ex.1002, 350-51. This also supports
`
`Dr. Kotzin’s statement that POSITA would understand a “remote server” to be
`
`simply “that that server is distinct from being the wireless device … it’s not
`
`necessarily connected to the wireless device.” See Ex.2011, 55:17-23.
`
`PO relies upon unhelpful extrinsic references, including Barron’s Dictionary
`
`of Computer and Internet Terms, to support their argument. But Barron’s is the
`
`“Twelfth Edition” copyrighted in 2017. See Ex.2016. It does not reflect a
`
`POSITA’s understanding as of the priority date nearly 20 years prior.1 And the
`
`concept PO implicitly seeks support for – requiring “remote” to relate to distance –
`
`does not align with PO’s prosecution arguments.
`
`A POSITA would have therefore understood that the prior art’s server is
`
`remote to the wireless device because they are separate and in communication over
`
`telecommunication line(s) (instead of directly connected). See Ex.1003, ¶¶69
`
`(Sainton’s connection via carrier network), 71 (Sainton-Baker’s connection also
`
`via a network).
`
`
`1 Ex.2012 [Mattila] has an earliest publication date of August 2000, which is also
`
`after the alleged priority date.
`
`13
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`

`
`
`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`5.
`
`Sainton-Baker renders obvious “remote server” under the
`understood plain meaning of the term, and PO’s argued
`interpretation
`
` Sainton’s carrier-provided third-party application updates combined with
`
`Baker’s server implementation teachings renders obvious a “remote server.”
`
`Ex.1005, 5:57-61, 16:17-27; Ex.1006, 7:37-38; Pet. at 28. Sainton and Baker both
`
`teach using a telecommunication line between the source/server and the receiving
`
`wireless device (instead of a direct link). Sainton transmits updates to the library of
`
`protocols “over the radio frequencies to the device by the carrier.” Ex.1005, 5:57-
`
`61; Ex.1003, ¶69; Pet. at 26. Similarly, Baker uses a network for communication
`
`between server and wireless device. Ex.1006, 7:39-46; Pet. at 34.
`
`Sainton-Baker also renders obvious “remote server” with PO’s interpretation
`
`(“a server at a ‘remote location’ relative to the wireless device,” POR at 8), though
`
`as noted it is ambiguous. It would have been obvious that Sainton’s wireless device
`
`communicates with a server at the carrier for library updates, and Baker’s server
`
`teachings demonstrate an example of a carrier-side server. Ex.1005, 5:57-61,
`
`16:17-27; Ex.1006, 7:37-38; 8:3-22; Ex.1003, ¶¶56, 71, 75; Pet. at 24, 26, 28; see
`
`also POR at 28-29 (acknowledging large distance from carrier to wireless devices).
`
`Thus, the Petition demonstrated a server at a physically remote location (the
`
`carrier) relative to the wireless device.
`
`14
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`

`
`
`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`B.
`
`Sainton-Baker Renders Obvious the “profiles of user specific
`information” (claim 2) and “profile” (claim 4)
`
` Sainton-Baker renders obvious the “profile” limitations of claims 2 and 4,
`
`using Sainton’s profiles alone or combining with Baker’s registration of requestor
`
`modules teachings.
`
`1.
`
`The “profiles” are obvious over Sainton
`
`It would have been obvious for a carrier-side server to store Sainton’s
`
`“criteria for a particular user” in a user profile along with many other profiles “at a
`
`centralized location.” Ex.1003, ¶88; Ex.1005, 17:49-57; Pet. at 30. This was a
`
`well-known option, which “would provide additional insight to carriers about how
`
`potential customers may act when next selecting a network, and adjust their
`
`offerings” to entice or dissuade selection for a desired load. Ex.1003, ¶88;
`
`Ex.1020, 1:64-2:2; Pet. at 30.
`
`PO incorrectly asserts that Petitioner “relies upon a different server—a
`
`server in the carrier network, not Baker’s local server.” POR at 38-39. That was
`
`not the combination. Rather, it was Sainton’s wireless device communicating with
`
`a server at the carrier for library updates that rendered this obvious on its own,
`
`and further with Baker’s server teachings demonstrating an example of a carrier-
`
`side server. Ex.1006, 8:3-22; Ex.1005, 5:57-61, 16:17-27; Ex.1003, ¶¶56, 71, 75;
`
`Pet. at 24, 26, 28.
`
`15
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`

`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
`
`Further, PO’s privacy argument – that users would not “make their user-
`
`
`
`specific information available to be stored” at a carrier based on users’
`
`“expectation of privacy” – is inapposite. POR at 40-41. None of Sainton’s
`
`“criteria” potentially kept at the carrier impact this expectation. Examples of
`
`“criteria” include:
`
`the cost of sending a data message; quality of transmission link (signal
`strength, interference actual or potential); available bandwidth on a
`carrier for data transmission (or transmission speed supported);
`potential for being bumped off the system or having transmissions
`delayed (that is, is the service provider at nearly full capacity); security
`of transmission; or other special criteria which the user or the device
`may establish based on the user's individual priorities. As another
`example, the length of a data message to be transmitted may be
`considered as a factor in selecting the carrier.
`
`Ex.1005, 16:35-45; Pet. at 37. None of this user-specific information remains
`
`identified with a particular user, or needs to be. The “other special criteria” has no
`
`reason to include a particular user’s identifying information. Nor did the Petition
`
`suggest storing user-identifying information with user-specific information.
`
`Finally, Sainton’s “automated price negotiation” supports a POSITA’s
`
`understanding that the combination is obvious, contrary to PO’s argument. PO
`
`asserts that the negotiation process starts after a device informs the carrier of the
`
`type and amount of information to transmit, so a POSITA would have no use for
`
`16
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`

`
`the user criteria for system load management. POR at 43-45. But Sainton’s
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`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
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`negotiation process would be a part of the desired system load level maintenance.
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`See Ex.1003, ¶88.
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`In the portion of Sainton 19:45-64 that the POR omitted, it explains that “the
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`lowest cost transmission mode can be selected, or the quoted prices can be
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`factored into an equation that considers other factors in addition to price, as
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`disclosed previously [referring to the ‘criteria’].” Ex.1005, 19:52-56 (emphasis
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`added); Pet. at 31. The equation’s “criteria” including price, when also at the
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`server, “would provide additional insight to carriers about how potential customers
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`may act when next selecting a network, and adjust their offering” accordingly. See
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`Ex.1003, ¶88; Pet. at 31 (emphasis added). Knowing the result of the negotiation
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`process allows carriers to provide a price quote to incentivize/disincentivize
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`customers for system load level maintenance. Ex.1003, ¶88; Pet. at 31. Indeed, as
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`PO acknowledges, “pricing changes are triggered” by the negotiation process. POR
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`at 43.
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`As a result of the process, therefore, carriers may change pricing for
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`subsequent negotiations for a desired system load. The negotiation process does,
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`then, provide useful information for subsequent devices’ needs and system load
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`management. Finally, Obhan (Ex.1031) was used to demonstrate it was known to
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`maintain subscriber profile information for different users, such as Sainton’s
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`“criteria,” at a centralized network location. See Ex.1003, ¶88; Pet. at 31.
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`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
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`Thus, it would have been obvious to store Sainton’s “criteria for a particular
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`user” in a “user profile” at the server on the carrier side.
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`2.
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`The “profiles” are obvious in view of Sainton-Baker
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`The “profiles” are additionally obvious in view of Sainton-Baker’s
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`combined teachings. Pet. at 31. When Baker’s lookup service provides a requested
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`service object to a wireless device’s requestor module, the lookup service registers
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`that requestor module at the wireless device as a user of the service object,
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`resulting in a profile at the lookup service tracking distributed content. Id.;
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`Ex.1006, 14:12-16, 13:18-25; Ex.1023, Abstract, 3:1-8. Baker’s “user” is the
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`“requestor module,” not the device it is operating on. Pet. at 31; see also 52.
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`Dr. Cooklev argues that “[e]ven assuming Baker’s requestors register a
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`device profile, that does not correspond to claim 4’s ‘user’ profiles.” Ex.2010, ¶93
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`(emphasis in original). He continues that “the ‘user’ of claim 4 refers to a user of a
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`device, not the device itself,” and that claim 3’s addition “that the profiles ‘contain
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`information for both a user and the wireless device’” makes claim 2’s profile
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`similar to claim 4. Id. (emphasis in original).
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`But this turns one of the fundamentals of claim construction on its head. “By
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`definition, an independent claim is broader than a claim that depends from it,
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`so if a dependent claim reads on a particular embodiment of the claimed invention,
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`the corresponding independent claim must cover that embodiment as well.”
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`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
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`Littlefuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 (Fed. Cir.
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`2022)(emphasis added). Dependent claim 3 recites that “profiles contain
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`information for both a user and the wireless device,” so “[b]y definition”
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`independent claim 2’s “profiles” must encompass information about more than the
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`user, including for example the wireless device itself and software (e.g., a
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`requestor module) running on it.
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`Instead of addressing Baker’s teachings (software module as user), PO
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`argues that “Baker’s lookup service would register a device profile, not a profile
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`for a user of that device.” POR at 46 (emphasis in original). But the Petition did
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`not identify a “device” in Baker as a user. See POR at 46-47; Ex.2010, ¶¶92-93.
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`Rather, Sainton-Baker’s “user” is the “requestor module” operating on a wireless
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`device. Pet. at 31. PO’s argument does not address this at all. In fact, software as
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`“users” being tracked by profiles was already known. See Ex.1023, Abstract, 3:1-
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`8: Ex.1003, ¶89; Pet. at 31.
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`The intrinsic and extrinsic evidence support the conclusion that Baker’s
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`registration of modules renders claim 2’s profiles obvious. The intrinsic record
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`does not limit a “user” to exclude software. And none of PO’s specification
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`examples show “a clear intention” to limit “user” to humans. See Cont’l Circuits
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`LLC v. Intel Corp., 915 F.3d 788, 797 (Fed. Cir. 2019); POR at 47. Further, Dr.
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`Kotzin’s testimony about the “user” was “an example” responding to a specific
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`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
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`question. POR at 47; Ex.2011, 63:1-3. Dr. Kotzin additionally explained that a
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`“user” was better understood as “the entity which is using or – or generating
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`information in the device.” Ex.2011, 62:17-22. This is consistent with POSITAs’
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`understanding of “user,” per the extrinsic evidence:
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`…(2) Any person or any thing that may issue or receive commands and
`messages to or from the information processing system.
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`Ex.1040, 722 (emphasis added). Baker’s requestor modules are “thing[s] that may
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`issue or receive commands and messages” to or from another system. Indeed,
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`“clients of services may themselves be services to other clients.” Ex.1006, 9:44-64.
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`Baker’s software modules are accordingly “users” of Baker’s services.
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`Finally, PO’s argument that “Baker does not teach that a user ‘profile’ is
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`created when the requestor is registered” exceeds the claims’ requirements. POR at
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`47-48. None of the claims require a profile be “created.” Claim 2 recites that “the
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`remote server stores profiles of user specific information” and claim 4 “wherein
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`the software is associated with a user and a device stored in a profile.” Nothing
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`here relates to profile creation.
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`Baker is agnostic about when profiles are created. Commensurate with
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`claims 2 and 4, the “requestor is registered as a user of the matched module” when
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`a requested service object is provided to the requesting module. Ex.1006, 13:18-
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`20
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`14:19; POR at 48; Ex.2010, ¶95; Pet. at 31, 52.
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`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
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`III. A POSITA WOULD HAVE BEEN MOTIVATED TO COMBINE
`SAINTON AND BAKER
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`A.
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`PO’s Response Misconstrues the Combination Actually in the
`Petition
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`As noted in the Institution Decision, there are many reasons demonstrating
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`that a POSITA would have been motivated to turn from Sainton to Baker to
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`implement Sainton’s carrier-provided third party application updates. ID at 20.
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`Instead of attacking the actual reasons for Petitioner’s Sainton-Baker combination,
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`PO’s arguments set up a non-existent, strawman combination where Baker’s local
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`network example of Figure 3 is bodily incorporated into Sainton’s environment.
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`POR at 25-35.
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`For example, PO disputes that a POSITA would have been motivated to
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`make the combination because it “would add a redundant, burdensome, and
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`inferior approach to Sainton’s device.” POR at 24-25. PO argues that Sainton does
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`not need “an intervening local server” (POR at 25), a POSITA would not “replace
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`Sainton’s ‘over-the-air’ provision of third-party applications with Baker’s local
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`network lookup service” (POR at 27), and looks at how “Baker’s lookup server
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`receives the third-party applications from Sainton’s carrier to send to Sainton’s
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`device” (POR at 33). These arguments seek to impose a bodily incorporation on
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`the Sainton-Baker combination that the Petition did not propose.
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`IPR2022-00807 (’168 patent)
`Petitioner’s Reply to Patent Owner’s Response
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`It is not “whether the features of a secondary reference may be bodily
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`
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`incorporated into the structure of the primary reference.” Intel Corp. v. PACT XPP
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`Schweiz AG, Appeal 2022-1038, *6 (Fed. Cir. Feb. 24, 2023)(quoting Allied
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`Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d 1373,
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`1381 (Fed. Cir. 2016)). Rather, the question is whether “a skilled artisan would
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`have been motivated to combine the teachings of the prior art references to achieve
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`the claimed invention.” Id. PO’s argument about bodily incorporating Baker’s
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`disclosure into Sainton is therefore “basically irrelevant.” Intel, Appeal 2022-1038
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`at *9. The Sainton-Baker teachings (and Mueller, not raised in the POR) in
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`combination render obvious the invention as a whole.
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`PO’s arguments therefore do not reflect the actual combination.2 The
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`Petition demonstrated a POSITA would have been motivated to turn to Baker for
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`2 Even if PO’s arguments did, Dr. Cooklev declared Sainton was “already-
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`functional” for third party application delivery (Ex.2010, ¶¶76-77). But then in
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`deposition he contradicted that, testifying Sainton was not “operational” for third-
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`party application delivery. Ex.1041, 45:6-47:13 (equating functional and
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`operational, and stating “at least the aspect of delivering third-party applications to
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`the wireless device of Sainton … no, a POSITA would have understood that that’s
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`not operational.”). Dr. Cooklev’s declaration should be given little to no weight.
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`implementation details for Sainton’s over-the-air updating from