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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.,
`Petitioner,
`
`
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2022-00807
`Patent 9,756,168
`____________
`
`EX. 2024 PATENT OWNER’S DEMONSTRATIVE EXHIBITS
`
`
`
`
`Apple/Samsung v. Smart Mobile
`
`IPR2022-00807
`U.S. 9,756,168
`
`Patent Owner Smart Mobile Technologies LLC
`July 27, 2023
`
`Nathan Lowenstein
`Colette Woo
`Lowenstein & Weatherwax LLP
`
`Demonstrative Exhibit – Not Evidence
`
`
`
`Petitioner’s Grounds Fail
`
`1. “Remote Server” (claim 2, all grounds)
`
`2. Motivation to Combine Sainton and Baker (all claims, all grounds)
`
`3. “User” “Profile[s]” (all claims, all grounds)
`
`4. “An Indicator Of A Software Application To Be Downloaded From
`The Remote Server” (claim 19, ground 4)
`
`5. Analogous Art (all claims, all grounds)
`
`Demonstrative Exhibit – Not Evidence
`
`2
`
`
`
`Claim 2 Requires A “Remote Server”
`
`Ex. 1001, cl. 2
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 3; Ex. 1001 [’168] cl. 2
`
`3
`
`
`
`Petition: Baker’s Lookup Service Is The Remote Server
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 3-4; Sur-Reply, 11; Pet., 24, 28; Ex. 1006 [Baker] Fig. 3
`
`4
`
`
`
`Baker’s Lookup Service Is On A Local Network
`
`9:16-19
`
`3:54-57
`
`7:43-48
`
`8:36-38
`
`9:26-28
`
`7:54-57
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 13-17; Ex. 2010 [Cooklev-Decl.] ¶¶ 45-49; Ex. 1006 [Baker] Fig. 3, 3:54-57, 7:43-48, 8:36-38, 9:26-29, 7:54-57, 9:16-19
`
`5
`
`
`
`Why Would Baker’s Local Server On A Local Network Be A
`“Remote Server”?
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 13-17; Sur-Reply, 14
`
`6
`
`
`
`Petition: No Terms Need Construction ...
`
`Demonstrative Exhibit – Not Evidence
`
`Pet., 11; POR, 4
`
`7
`
`
`
`... But, Petitioner Implicitly Construes “Remote Server” As Any
`Server Separate From The Requesting Device
`
`Citation
`to intrinsic
`record
`
`EVIDENCE?
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 3-4; Sur-Reply, 2
`
`8
`
`
`
`Dr. Kotzin Does Not Embrace Rationale And Rests On Bare
`Conclusion That Baker’s Lookup Service Is A “Remote Server”
`
`Pet., 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, ¶ 77
`Baker teaches that “[t]he lookup service
`136 may reside on a separate device such
`as a network server.” Baker, 7:37-38.
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 4-5; Ex. 1003 [Kotzin-Decl.] ¶¶ 54, 89
`
`9
`
`
`
`Xerox: Conclusory Expert Testimony Is Afforded Little To No
`Weight
`
`“Petitioner’s only evidence in support of its assertion that blocking the
`purchaser would require recording the blocking in a record in the
`user’s account is the opinion of its Declarant, Dr. Jones. We have
`reviewed this excerpt from Dr. Jones’ declaration and note that it
`merely repeats, verbatim, the conclusory assertion for which it is
`offered to support. … Dr. Jones does not cite to any additional
`supporting evidence or provide any technical reasoning to support his
`statement. Thus, the cited declaration testimony is conclusory and
`unsupported, adds little to the conclusory assertion for which it is
`offered to support, and is entitled to little weight.
`
`gain, however, Dr. Jones offers only a verbatim restatement of the
`assertion being supported, without any supporting evidence or
`technical reasoning. Neither Petitioner nor [the expert] offers a
`construction for the terms “data value” or “data record,” for example.
`
`…A
`
`This is particularly problematic in cases where, like here, expert
`testimony is offered … to supply a limitation missing from the prior art.”
`
`Xerox Corp. v. Bytemark, Inc.,
`IPR2022-00624, Paper 9, 15 (Aug. 24, 2022) (precedential)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 5-7
`
`10
`
`
`
`Dr. Kotzin’s Rebuttal Testimony?
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 2-3
`
`11
`
`
`
`Petitioner’s Construction Is Unsupported
`
`• No analysis in Petition
`
`• No intrinsic record support
`
`• No analysis in expert declaration
`
`• No rebuttal declaration
`
`• No relevant dictionary definitions
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 4-7; Sur-Reply, 2-6
`
`12
`
`
`
`Experts Agree: The Claims Already Require The Server To Be
`Separate From the Device
`
`Dr. Todor Cooklev
`Purdue University
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 9-11; Sur-Reply, 7-8; Ex. 2010 [Cooklev-Decl.] ¶¶ 38-39
`
`13
`
`
`
`Experts Agree: The Claims Already Require The Server To Be
`Separate From the Device
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 9-11; Sur-Reply, 7-8; Ex. 2011 [Kotzin-Depo.] 56:8-13, 57:4-11, 58:5-12
`
`14
`
`
`
`Construing “Remote” To Merely Require “Separate” Renders
`“Remote” Redundant
`
`“Construing a claim term to include
`features of that term already recited in
`the claims would make those expressly
`recited features redundant.”
`
`Apple, Inc. v. Ameranth, Inc.,
`842 F.3d 1229, 1237 (Fed. Cir. 2016)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 10-11
`
`15
`
`
`
`Petitioner’s Expert Testified That “Remote” Has No Meaning
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 11-13; Sur-Reply, 3; Ex. 2011 [Kotzin-Depo.] 54:23-55:13, 62:5-12
`
`16
`
`
`
`Petitioner Erases “Remote” In Violation Of Basic Claim
`Construction Principles
`
`Ex. 1001, cl. 2
`
`“Claims must be interpreted with an eye towards giving effect to
`all terms in the claim.” Becton Dickinson & Co. v. Tyco Healthcare Grp., LP, 616
`F.3d 1249, 1257 (Fed. Cir. 2010)
`
`“We find no error in that interpretation, especially because
`Stealth’s proposed construction would render the word ‘terms’
`meaningless.” Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1141
`(Fed. Cir. 2011)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 7, 9-11; Sur-Reply, 7; Ex. 2010 [Cooklev-Decl.] ¶ 37
`
`17
`
`
`
`A “Remote Server” Is A Server At A “Remote Location” Relative
`To The Wireless Device
`
`Dr. Todor Cooklev
`Purdue University
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 9-11; Sur-Reply, 6-7; Ex. 2010 [Cooklev-Decl.] ¶ 36
`
`18
`
`
`
`The Claims Distinguish Between Different Types Of Servers
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 7-10; Sur-Reply, 6-7; Ex. 2010 [Cooklev-Decl.] ¶ 36; Ex. 1001 [‘168] cls. 1, 2, 6, 19, 33, 34
`
`19
`
`
`
`Different Claim Terms Have Different Meanings
`
`“The fact that the two adjacent claims use different terms in parallel
`settings supports the … conclusion that the two terms were not meant
`to have the same meaning” Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349
`(Fed. Cir. 2012)
`
`“Different claims terms are presumed to have different meanings.” Bd. of
`Regents of the Univ. of Tex. Sys. v. BENO Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008)
`
`“There is presumed to be a difference in meaning and scope when
`different words or phrases are used in separate claims.” Tandon Corp. v. U.S. Int’l
`Trade Comm’n, 831 F.2d 1017, 1023 (Fed. Cir. 1987)
`
`“Indeed ‘claim differentiation takes on relevance in the context of a
`claim construction that would render additional, or different, language
`in another independent claim superfluous.’” AllVoice Computing PLC v. Nuance
`Communs., Inc., 504 F.3d 1236, 1247 (Fed. Cir. 2007)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 7-8; Sur-Reply, 7
`
`20
`
`
`
`The Specification Sought To Solve The Problem Of Needing
`Different Devices For Different Server Environments
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 17-18; Sur-Reply, 6; Ex. 2010 [Cooklev-Decl.] ¶ 51
`
`21
`
`Ex. 1001, 1:10-37
`
`
`
`The Figures Distinguish Between Remote And Local Servers
`
`Local Server
`
`Remote Server
`
`Ex. 1001, 3:64-4:2
`
`Ex. 1001, 4:53-60
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 18-21; Ex. 2010 [Cooklev-Decl.] ¶ 52; Ex. 1001 [‘168] Figs. 2A, 2B, 3:64-4:2, 4:53-60
`
`22
`
`
`
`Figure 2B Depicts Local Office Servers And A Remote Server
`
`Local Office
`Server
`
`Remote
`Server
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 20-22; Ex. 2010 [Cooklev-Decl.] ¶ 52-53; Ex. 2011 [Kotzin-Depo.] 51:24-52:5; Ex. 1001 [‘168] Fig. 2B
`
`23
`
`
`
`Baker’s Local Lookup Service Is Local Not Remote
`
`Local Servers
`
`Remote Servers
`
`Dr. Todor Cooklev
`Purdue University
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 21-22; Sur-Reply, 13-14; Ex. 2010 [Cooklev-Decl.] ¶ 53-54; Ex. 1001 [‘168] Fig. 2B; Ex. 1006 [Baker] Fig. 3
`
`24
`
`
`
`Prosecution History: The Applicant Distinguished A “Local PC”
`From One “At A Remote Location From The ... Mobile Device[]”
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 9-10; Ex. 1002 [Prosecution History] 350-351
`
`25
`
`
`
`POSITAs Distinguish Between Remote Servers And Local Servers
`
`Ex. 2012 [Mattila]
`
`Ex. 2013 [Robichaux]
`
`Ex. 2014 [Strahl]
`
`Ex. 2015 [Kwong-Ip]
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 23; Sur-Reply, 10; Ex. 2010 [Cooklev-Decl.] ¶ 56; Exs. 2012-2015
`
`26
`
`
`
`Patent Owner’s Construction Is Well-Supported
`
`• Plain meaning
`• Intrinsic record
`• Background of the invention
`• Figures
`• Written description
`• Claims
`• Prosecution History
`• Extrinsic evidence
`• Dr. Cooklev’s unrebutted
`testimony
`• POSITAs distinguished local and
`remote servers
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 6-11
`
`27
`
`
`
`Petitioner Eschews Rebuttal Declaration And Relies Upon
`Attorney Argument
`
`Reply declaration?
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 1-3, 5-6
`
`28
`
`
`
`Dr. Cooklev’s “Unrebutted Testimony” Should Be Dispositive
`
`“Dr. Sonka’s testimony is unrebutted by Petitioner’s expert … His
`reply declaration does not address the meaning of the In
`Focus limitation … nor whether that limitation is taught or
`suggested by the prior art.” - 3Shape A/S v. Align Tech., IPR2019-00163, Paper 37, 16-24
`(June 9, 2020)
`“Petitioner’s expert, Dr. Freedman, does not construe the
`‘upload’ limitation and did not provide a declaration
`responsive to Dr. Burger’s testimony. Accordingly, Dr. Burger’s
`testimony is unrebutted.” -Limelight Networks v. Akamai Techs., IPR2016-01894, Paper 30, 16
`(Mar. 1, 2018)
`“…Patent Owner does not direct us to any evidence, such as
`expert testimony, negating Petitioner’s three other alternative
`meanings.” -Volkswagen Grp. of Am., Inc. v. Michigan Motor Techs., IPR2019-01274, Paper 47, 64-65
`(Dec. 21, 2020)
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 1-3
`
`29
`
`
`
`Reply: Cherry-Picks ’168 at 6:48-52
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 8-9; Reply, 9
`
`30
`
`
`
`The Specification Describes Server C As A “Central” Server
`Located “On The Internet”
`
`Ex. 1001, 2:66-32
`
`Ex. 1001, 6:65-67
`
`Ex. 1001, 7:4-6
`
`Ex. 1001, 3:49-52
`
`Ex. 1001, 5:59-63
`
`Ex. 1001, 3:64-66
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 9
`
`31
`
`
`
`Patent Owner’s Construction Does Not Exclude Any
`Embodiments
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 8-9; Ex. 1001 [‘168] cls. 1, 19, 33, 34
`
`32
`
`
`
`A Construction Need Not Cover All Embodiments, Especially
`When Covered By Other Claims
`
`“‘The mere fact that there is an alternative embodiment
`disclosed in the [asserted patent] that is not encompassed by
`[our] claim construction does not outweigh the language of
`the claim, especially when the court's construction is supported
`by the intrinsic evidence.’ TIP Sys., LLC v. Phillips &
`Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed. Cir. 2008). This is
`especially true where, as here, other unasserted claims in the
`parent patent cover the excluded embodiments.” -August Tech.
`Corp. v. Camtek, Ltd., 655 F.3d 1278, 1285 (Fed. Cir. 2011)
`
`“[C]ourts must recognize that disclosed embodiments may be
`within the scope of other allowed but unasserted claims.” -PSN
`Ill., LLC v. Ivoclar Vivadent, Inc., 525 F.3d 1159, 1166 (Fed. Cir. 2008)
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 8-9
`
`33
`
`
`
`Reply Cites Prosecution History, But, The Applicant Distinguished
`A “Local” PC From One At A “Remote Location”
`
`Demonstrative Exhibit – Not Evidence
`
`Reply, 9-10; Sur-Reply, 9-10; Ex. 1002 [Prosecution History] 350-351
`
`34
`
`
`
`The Reply’s Attorney-Selected Dictionary Definitions Do Not
`Concern “Remote Servers”
`
`• No expert testimony
`indicating a POSITA would
`find definitions applicable
`
`• No definition of “remote
`server”
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 9-10; Reply, 12-13
`
`35
`
`
`
`Petitioner’s Dictionary Definitions Are Out Of Context
`
`“the court erroneously relied on … a single dictionary
`definition to the exclusion of other dictionary definitions
`and, most importantly, the context in which the term was
`used within the claim and the specification. … [term’s]
`proper construction requires consideration of the context
`of the rest of the term.”
`
`Demonstrative Exhibit – Not Evidence
`
`Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp.,
`587 F.3d 1339, 1346-47 (Fed. Cir. 2009)
`Sur-Reply, 9-10; Ex. 2010, [Cooklev-Decl.] ¶¶ 36, 37
`
`36
`
`
`
`Evidence That Any POSITA Ever Considered A “Remote Server”
`To Be Any Server Separate From A Device?
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 9-10; Reply, 12-13
`
`37
`
`
`
`Evidence Supports Patent Owner’s Construction
`
`Plain meaning
`
`Specification
`
`Claims
`
`Figures
`
`Pros. History
`
`Caselaw
`
`Kotzin’s
`Admissions
`
`Actual
`POSITAs
`
`Gives effect
`to “remote”
`No rebuttal
`5-10x cheaper
`testimony
`
`Remote Not
`“Redundant”
`
`Unrebutted Expert
`Testimony
`
`Attorney Argument
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 6-11
`
`38
`
`
`
`Reply: Petitioner Attempts To Switch From Relying Upon Baker’s
`Lookup Service To A “Server At The Carrier”
`
`Petition
`
`Reply
`
`“Sainton’s wireless device
`communicates with a server at the
`carrier for library updates” Reply, 14
`
`“Baker’s server providing service
`objects and Sainton’s cellular
`phone executing third party
`applications” Pet., 24
`
`“Sainton’s third party application
`programs provided from Baker’s
`lookup service” Pet., 24
`
`“Baker’s ‘lookup service 136 may
`reside on a separate device’ …
`and is therefore ‘remote.’” Pet., 28
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 11
`
`39
`
`
`
`Petitioner May Not Change its Combination In Reply
`
`“[T]he expedited nature of IPRs bring with it an obligation for
`petitioner to make their case in their petition...’” Intelligent Bio-Sys., Inc. v.
`Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016)
`
`“Rather than explaining how its original petition was correct,
`Continental’s subsequent arguments amount to an entirely new
`theory of prima facie obviousness absent from the petition.
`Shifting arguments in this fashion is foreclosed by statute, our
`precedent, and Board guidelines.” Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853
`
`F.3d 1272, 1286‐1287 (Fed. Cir. 2017)
`
`“Petitioner may not submit new evidence or argument in reply
`that it could have presented earlier, e.g., to make out a prima
`facie case of unpatentability.” Consolidated Trial Practice Guide, 73
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 11-12
`
`40
`
`
`
`Petitioner Provides No Evidence That “It Would Have Been Obvious
`That Sainton’s Wireless Device Communicates With A Server”
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 12
`
`41
`
`
`
`Petitioner Relies On Baker’s Lookup Service For Other
`Limitations
`
`Pet., 29
`
`Pet., 29
`
`Demonstrative Exhibit – Not Evidence
`
`Pet., 30
`
`Sur-Reply, 12-13
`
`42
`
`
`
`Reply: Baker’s Lookup Service Is “Carrier-Side”
`
`Demonstrative Exhibit – Not Evidence
`
`Reply, 14
`
`43
`
`
`
`Baker’s Lookup Service Is On The Local Network Side
`
`9:16-19
`
`3:54-57
`
`7:43-48
`
`8:36-38
`
`9:26-28
`
`7:54-57
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 13-17; Ex. 2010 [Cooklev-Decl.] ¶¶ 45-49; Ex. 2011 [Kotzin-Depo.] 27:12-18; Ex. 1006 [Baker] Fig. 3, 3:54-57, 7:43-48, 8:36-38, 9:26-29, 7:54-57, 9:16-19
`
`44
`
`
`
`Petitioner’s Grounds Fail
`
`1. “Remote Server” (claim 2, all grounds)
`
`2. Motivation to Combine Sainton and Baker (all claims, all grounds)
`
`3. “User” “Profile[s]” (all claims, all grounds)
`
`4. “An Indicator Of A Software Application To Be Downloaded From
`The Remote Server” (claim 19, ground 4)
`
`5. Analogous Art (all claims, all grounds)
`
`Demonstrative Exhibit – Not Evidence
`
`45
`
`
`
`Claims Require A “Server” That Stores Software For Wireless
`Devices
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 23-24; Ex. 1001, cls. 2, 4
`
`46
`
`
`
`Petitioner: A POSITA Would Be Motivated To Turn To Baker To
`Add Service Objects To Sainton’s Device
`
`Demonstrative Exhibit – Not Evidence
`
`Pet., 22-23, 24; POR, 24
`
`47
`
`
`
`But, Sainton Already Teaches Updating The Device Over The
`Radio Frequencies To The Device Via The Carrier
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 25; Pet., 22-23; Ex. 1005 [Sainton] 5:52-65
`
`48
`
`
`
`Sainton’s Goal Is “A Truly Self Adaptive, Omni-Modal” Device
`That Can Work With Numerous Service Providers
`
`Ex. 1005, 2:26-32
`
`Ex. 1005, 1:43-49
`
`Ex. 1005, 2:36-39
`
`Ex. 1005, 2:60-63
`
`Ex. 1005, 2:40-43
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 25-26; Ex. 2010 [Cooklev-Decl.] ¶ 63; Ex. 1005 [Sainton] 2:26-32, 2:36-43, 2:60-663, 1:43-49
`
`49
`
`
`
`Sainton’s Over-The-Air Delivery Allows For An “Omni-Modal”
`Device
`
`Dr. Todor Cooklev
`Purdue University
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 26-27; Ex. 2010 [Cooklev-Decl.] ¶¶ 63, 64
`
`50
`
`
`
`Baker’s Method Is Inferior And Detrimental To Sainton’s Method
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 28-30; Ex. 2010 [Cooklev-Decl.] ¶ 66, 69
`
`51
`
`
`
`Legal Error To Ignore Evidence A Combination Would Undermine
`A Reference’s Stated Purpose
`
`“We did not hold, however, that a proposed
`modification's destruction of a device's primary purpose
`is always legally irrelevant to obviousness. Such a
`conclusion is equally at odds with common sense and
`gives in to the very hindsight bias the obviousness
`inquiry is designed to avoid. Indeed, we have held it
`was error for the Board to ignore evidence that a
`proposed modification would interfere with a
`reference's stated purpose.”
`
`Medtronic, Inc. v. Teleflex Innovations S.A.R.L.,
`69 F.4th 1341 (Fed. Cir. 2023)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 30; Sur-Reply, 14-15
`
`52
`
`
`
`Baker’s Method Would Be, At Best, Redundant
`
`Dr. Todor Cooklev
`Purdue University
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 27; Ex. 2010 [Cooklev-Decl.] ¶ 65
`
`53
`
`
`
`A POSITA Would Not Be Motivated To Add A Redundant,
`Unnecessary Feature
`
`“Petitioner ... fails to provide a specific explanation why
`[the primary reference] did not already accomplish
`[the asserted benefits of the combination] by itself.”
`Apple Inc. v. Cellular Comm’ns Equipment, LLC, IPR2015-00576, Paper 7, 12 (June 12, 2015)
`No reason “to add proximity information … as that
`information would serve no purpose under Petitioner’s
`proposed combination.” F5 Networks, Inc. v. Radware, Ltd., IPR2017-00124,
`Paper 48, 64-65 (Apr. 23, 2018)
`“[B]oth … references independently accomplish similar
`functions, namely, draining fluids. Because each
`device independently operates effectively, a [POSITA]
`… would have no reason to combine the features of
`both devices into a single device.” Kinetic Concepts, Inc. v. Smith &
`Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 28
`
`54
`
`
`
`Petitioner: POSITA Motivated To Turn To Baker For Details About
`Adding Third-Party Programs
`
`Demonstrative Exhibit – Not Evidence
`
`Pet., 22-23; POR, 24
`
`55
`
`
`
`Baker’s Local Network Solutions Are Not Applicable To
`Sainton’s Public Carrier Problems
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 31-32; Ex. 2010 [Cooklev-Decl.] ¶ 73
`
`56
`
`
`
`Sainton’s Carriers Have No Method Of Sending Applications To
`Baker’s Server
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 33-34; Ex. 2010 [Cooklev-Decl.] ¶ 77; Ex. 1005 [Sainton] 5:52-65
`
`57
`
`
`
`Nor Does Baker’s Server Have Any Method Of Receiving
`Applications From The Carrier
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 34-35; Ex. 2010 [Cooklev-Decl.] ¶ 78; Ex. 1006 [Baker] Fig. 3
`
`58
`
`
`
`Petitioner Does Not Dispute Dr. Cooklev’s Testimony And
`Submits No Rebuttal Testimony From Dr. Kotzin
`
`Petitioner Offers No Rebuttal Evidence Regarding Motivation To Combine
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 5-6
`Sur-Reply, 15-16
`
`59
`
`
`
`Instead, Petitioner Misses The Point And Argues That Patent
`Owner “Seek[s] To Impose A Bodily Incorporation”
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply. 15-16; Reply, 21-22
`
`60
`
`
`
`Petitioner Had To Explain Why A POSITA Would Have Combined
`The Teachings To Produce The Claimed Invention
`
`“Although proof of physical or bodily incorporation is
`not required, Petitioner was required to identify the
`particular teachings of each reference that it
`proposed to combine and explain how and why a
`POSA would have combined the teachings to produce
`the claimed invention. TriVascular, 812 F.3d at 1066.”
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 15
`
`61
`
`Samsung Elecs. Co. Ltd. v. KAIST IP US LLC,
`IPR2017-01046, Paper 14, 7 (Jan. 22, 2018)
`
`
`
`Petitioner’s Grounds Fail
`
`1. “Remote Server” (claim 2, all grounds)
`
`2. Motivation to Combine Sainton and Baker (all claims, all grounds)
`
`3. “User” “Profile[s]” (all claims, all grounds)
`
`4. “An Indicator Of A Software Application To Be Downloaded From
`The Remote Server” (claim 19, ground 4)
`
`5. Analogous Art (all claims, all grounds)
`
`Demonstrative Exhibit – Not Evidence
`
`62
`
`
`
`Claims Require “User” “Profile[s]” Stored On The Server
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 36; Ex. 1001 [‘168] cls. 2, 4
`
`63
`
`
`
`Petitioner: Obvious To Store User Profiles On Server At The
`Carrier (Claim 2)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 37-38; Pet., 30-31
`
`64
`
`
`
`The “Remote Server” In Petitioner’s Combination (Baker) Is Not
`Part Of The Carrier
`
`Dr. Todor Cooklev
`Purdue University
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 41-42; Ex. 2010 [Cooklev-Decl.] ¶ 88; Ex. 1006 [Baker] Fig. 3
`
`65
`
`
`
`As Petitioner Concedes, Sainton Teaches That Its User Criteria
`Are On The Device (Circuit 1), Not The Server
`
`Ex. 1005, 17:49-51
`
`Ex. 1005, 10:43-46
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 39-40; Sur-Reply. 17; Ex. 2010 [Cooklev-Decl.] ¶ 85; Ex. 1005 [Sainton] 10:43-46, 17:49-51; Pet., 30-31
`
`66
`
`
`
`Storing User Criteria At The Carrier Would Violate The User’s
`Expectation Of Privacy
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 40-41; Sur-Reply, 17; Ex. 2010 [Cooklev-Decl.] ¶ 86
`
`67
`
`Petitioner Offers No Rebuttal Testimony
`
`
`
`There Is No Reason Sainton’s User Criteria Would Not Include
`User-Identifying Information
`
`Ex. 1005, 17:49-51
`
`Ex. 1005, 10:43-46
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 1005, 16:28-54
`68
`Sur-Reply, 17; Pet., 16; Ex. 1005 [Sainton] 10:43-46, 16:28-54, 17:49-51
`
`
`
`Petitioner: Storing User Profiles At The Carrier Allows Carrier To
`Estimate Demand
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 37-38; Pet., 30-31
`
`69
`
`
`
`Sainton’s Carriers Would Not Use Or Need User Criteria To
`Estimate Network Demand
`
`Ex. 1005, 19:56-62
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 41; Sur-Reply. 17-18; Ex. 2010 [Cooklev-Decl.] ¶ 87; Ex. 1005 [Sainton] 19:56-62
`
`70
`
`
`
`Schlang And Obhan Are Not Part Of Combination And Have No
`Bearing On Sainton’s Disclosure
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 42, 44-45; Ex. 2010 [Cooklev-Decl.] ¶ 90
`
`71
`
`
`
`Petitioner: Baker’s Registration Of Requestor Modules Renders
`Obvious User Profiles (Claims 2 And 4)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 45-46; Pet., 31
`
`72
`
`
`
`Undisputed: Baker’s Requestor Module Registration Creates A
`Client Profile (e.g., A Printer), Not A Human User
`
`Ex. 1005, 14:14-16
`
`Ex. 1005, 8:8-16
`
`Ex. 1005, 9:54-56
`
`Ex. 1005, 12:31-36
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 46-47; Ex. 2010 [Cooklev-Decl.] ¶ 92; Ex. 1005 [Baker] 8:8-16, 9:54-56, 12:31-36, 14:14-16
`
`73
`
`
`
`Specification, Claims, And Dr. Kotzin Distinguish Between A
`Device And A User
`
`Ex. 1001, 1:23-28
`
`Ex. 1001, cl. 4
`
`Ex. 1001, cl. 3
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 47; Sur-Reply, 19; Ex. 2010 [Cooklev-Decl.] ¶ 93-94; Ex. 2011 [Kotzin-Depo.] 63:4-8; Ex. 1001 [’168] 1:23-28, cls. 3, 4
`
`74
`
`
`
`Reply’s Untimely Argument: A “User” Includes Software
`
`Petition
`
`Reply
`
`“the terms of the challenged claims
`should be given their plain and
`ordinary meaning, and no terms
`require specific construction” Pet., 11
`
`“The intrinsic record does not limit a
`‘user’ to exclude software.” Reply, 19
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 18-19
`
`75
`
`
`
`Petitioner Cites No Intrinsic Evidence Supporting Its New Claim
`Construction
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 18-19
`
`76
`
`
`
`Petitioner Cherry-Picks A Dictionary Definition, But Ignores
`Other Definitions
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 19; Reply, 19; Ex. 1040 [IBM-Dictionary] 722
`
`77
`
`
`
`Petitioner Argues Jackson Teaches Software Profiles, But
`Jackson Teaches Software Is Tracked By The Device Profile
`
`Reply
`
`Ex. 1023 [Jackson] 3:1-16
`
`“In fact, software as ‘users’ being
`tracked by profiles was already
`known. See Ex. 1023, Abstract, 3:1-
`8” Reply, 19
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 19-20
`
`78
`
`
`
`Petitioner Cites No Evidence Showing That Registering A
`Requestor Results In A Profile
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 47-48; Sur-Reply, 20; Ex. 2010 [Cooklev-Decl.] ¶ 95.
`
`79
`
`
`
`Petitioner’s Grounds Fail
`
`1. “Remote Server” (claim 2, all grounds)
`
`2. Motivation to Combine Sainton and Baker (all claims, all grounds)
`
`3. “User” “Profile[s]” (all claims, all grounds)
`
`4. “An Indicator Of A Software Application To Be Downloaded From
`The Remote Server” (claim 19, ground 4)
`
`5. Analogous Art (all claims, all grounds)
`
`Demonstrative Exhibit – Not Evidence
`
`80
`
`
`
`Claim 19 Requires “An Indicator Of A Software Application To
`Be Downloaded From The Remote Server”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 48; Ex. 1001 [‘168] cl. 19
`
`81
`
`
`
`Petitioner’s Combination Ignores Baker’s Lookup Service
`
`sends request for
`update to Hsu’s
`authentication
`
`① Sainton’s device
`server ② Hsu’s
`
`authentication
`server returns URL of
`Hsu’s update server
`
`①②
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 48-51; Ex. 2010 [Cooklev-Decl.] ¶ 98
`
`82
`
`
`
`Petitioner’s Combination Ignores Baker’s Lookup Service
`
`follows the URL to
`Hsu’s update server
`
`③ Sainton’s device
`④ Hsu’s update
`
`server returns a list
`of URLs to Sainton’s
`device
`
`③④
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 48-51; Ex. 2010 [Cooklev-Decl.] ¶ 98
`
`83
`
`
`
`Petitioner’s Combination Has Nothing To Do With Baker’s
`Lookup Service
`
`No Explanation Of How Hsu’s System Would Even Be Aware Of Baker’s
`Lookup Service
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 50-52; Ex. 2010 [Cooklev-Decl.] ¶ 98
`
`84
`
`
`
`Petitioner’s Attorney Argument Against “Bodily Incorporation” Is
`Misplaced
`
`“Although proof of physical or bodily incorporation is
`not required, Petitioner was required to identify the
`particular teachings of each reference that it
`proposed to combine and explain how and why a
`POSA would have combined the teachings to produce
`the claimed invention. TriVascular, 812 F.3d at 1066.”
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 21-22
`
`85
`
`Samsung Elecs. Co. Ltd. v. KAIST IP US LLC,
`IPR2017-01046, Paper 14, 7 (Jan. 22, 2018)
`
`
`
`Petitioner’s Grounds Fail
`
`1. “Remote Server” (claim 2, all grounds)
`
`2. Motivation to Combine Sainton and Baker (all claims, all grounds)
`
`3. “User” “Profile[s]” (all claims, all grounds)
`
`4. “An Indicator Of A Software Application To Be Downloaded From
`The Remote Server” (claim 19, ground 4)
`
`5. Analogous Art (all claims, all grounds)
`
`Demonstrative Exhibit – Not Evidence
`
`86
`
`
`
`Every Ground Relies On Baker
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 55
`
`87
`
`
`
`Only Analogous Art Qualifies As Prior Art
`
`• “A reference qualifies as prior art for an obviousness
`determination under § 103 only when it is analogous to the
`claimed invention.”
`In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)
`
`• “Non-analogous art is too remote to constitute prior art.”
`Penda Corp. v. United States, 29 Fed. Cl. 533, 557-58 (Fed. Cl. 1993)
`
`• “An assessment of whether relied-upon art is analogous is a
`threshold inquiry ...”
`Victoria’s Secret v. Andra Group, IPR2020-00853, Paper 14, 3 (PTAB Dec. 11, 2020)
`• “The threshold issue is whether [the reference] is analogous
`art...”
`Kingston v. Polaris, IPR2020- 00853, Paper 14, 3 (PTAB Dec. 11, 2020)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 55
`
`88
`
`
`
`Undisputed: Petitioners Have Burden Of Proving Baker Is
`Analogous
`
`“Petitioner bears the burden of showing by a
`preponderance of evidence that the asserted prior art
`references are analogous art ... ”
`
`Schott Gemtron Corp. v. SSW Holding Co., Inc.,
`IPR2013-00358, Paper 106, 26 (PTAB Aug. 20, 2014)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 55
`
`89
`
`
`
`Analogous Art Inquiry From Perspective Of POSITA
`
`“The analogous art inquiry is a factual one, requiring
`inquiry into the similarities of the problems and the
`closeness of the subject matter as viewed by a person
`of ordinary skill.”
`Sci. Plastic Prods. v. Biotage AB,
`766 F.3d 1355, 1360 (Fed. Cir. 2014)
`
`Petitioner failed to prove reference was analogous
`where it “offers no expert testimony in support of its
`arguments relating to analogous art.”
`
`Netflix Inc. v. DivX, LLC,
`IPR2020-00646, Paper 47, 20, n.6 (Sept. 9, 2021)
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 23
`
`90
`
`
`
`Petitioner Did Not Satisfy Its Burden
`
`• No analysis (only conclusory
`assertion) in Petition
`
`• No Reply declaration from Dr. Kotzin
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 55
`
`91
`
`
`
`Two Analogous Art Tests
`
`“Two criteria have evolved for determining whether
`prior art is analogous: (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 Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 56
`
`92
`
`
`
`In re Clay: Field Of Endeavor Test Is Strictly Applied
`
`“Clay’s field of endeavor is the storage of refined liquid
`hydrocarbons. The field of endeavor of Sydansk’s
`invention, on the other hand, is the extraction of crude
`petroleum. The Board clearly erred in considering
`Sydansk to be within the same field of endeavor as
`Clay’s.”
`In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)
`
`Reference’s field: oil extraction
`
`Clay’s field: oil storage
`
`Clay is the leading analogous art case, cited 43x by CAFC
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 58-59
`
`93
`
`
`
`Wang: Field Of Endeavor Test Is Strictly Applied
`
`“The Allen-Bradley art is not in the same field
`of endeavor as the claimed subject matter
`merely because it relates to memories. It
`involves memory circuits in which modules of
`varying sizes may be added or replaced; in
`contrast, the subject patents teach compact
`modular memories.”
`
`Wang Labs., Inc. v. Toshiba Corp.,
`993 F.2d 858, 864 (Fed. Cir. 1993)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 58-59
`
`94
`
`
`
`Dr. Kotzin’s Inconsistent Identification Of Field Of Endeavor
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 61-62; Ex. 1003 [Kotzin-Decl.] ¶¶ 47-48
`
`95
`
`
`
`The ’168’s Field Of Endeavor Is Wireless Communication
`Between Mobile Devices And Networks
`
`Dr. Todor Cooklev
`Purdue University
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 1001, 1:11-37
`96
`POR, 59-61; Ex. 2010 [Cooklev-Decl.] ¶ 106; Ex. 1001 [‘168] 1:11-37
`
`
`
`’168’s Field Confirmed By Summary Of The Invention, Abstract,
`Written Description, Figures, And Claims
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 59-61; Ex. 2010 [Cooklev-Decl.] ¶ 107; Ex. 1001 [‘168] Abstract, 1:41-58, 2:26-49, 3:13-27, 3:59-4:18, 5:51-65, cl. 1
`
`97
`
`
`
`Baker’s Field of Endeavor Is Resource Constrained Small
`Footprint Devices
`
`Ex. 1006, 1:5-12
`
`“[T]he specification of each reference includes a 'Field
`of the Invention' section that distinctly describes each
`applicable field of endeavor.”
`Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1381 n. 8 (Fed. Cir. 2019)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 58, 62-64; Ex. 2010 [Cooklev-Decl.] ¶¶ 109-112; Ex. 1006 [Baker] 1:5-12 98
`
`
`
`Baker’s Field Confirmed By Title, Abstract, Field Of The
`Invention, Specification, Figures, And Claims
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 62-64; Sur-Reply, 24; Ex. 1006, Title, Abstract, 1:14-23, 1:49-62, 1:64-2:1, 2:20-37, 3:19-22, 3:49-50, 3:54-57, 4:25-6:9, 6:52-7:24, 9:9-13, Figs. 1, cl. 1
`
`99
`
`
`
`Dr. Cooklev: The’168 And Baker Have Different Fields Of
`Endeavor
`
`Dr. Todor Cooklev
`Purdue University
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 56-64; Sur-Reply, 23-24; Ex. 2010 [Cooklev-Decl.] ¶¶ 106, 108
`
`100
`
`
`
`Dr. Kotzin Submits No Rebuttal Testimony
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 23
`
`101
`
`
`
`Baker’s Purpose Relevant To Det
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