Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: October 25, 2022
`
`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.
`
`IPR2022-00807
`Patent 9,756,168 B1
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, MONICA S. ULLAGADDI, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 9
`Entered: October 25, 2022
`
`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.
`
`IPR2022-00807
`Patent 9,756,168 B1
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, MONICA S. ULLAGADDI, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-00807
`Patent 9,756,168 B1
`
`INTRODUCTION
`I.
`A. Background and Summary
`Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
`America, Inc. (collectively, “Petitioner”) filed a Petition (Paper 3, “Pet.”)
`requesting institution of an inter partes review of claims 2–5, 19–23, 25, 28,
`29, and 34 of U.S. Patent No. 9,756,168 B1 (Ex. 1001, “the ’168 patent”).
`Smart Mobile Technologies LLC (“Patent Owner”) filed a Preliminary
`Response (Paper 7, “Prelim. Resp.”).
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” Upon
`consideration of the Petition and the Preliminary Response and for the
`reasons explained below, we determine that Petitioner has shown a
`reasonable likelihood of prevailing with respect to at least one of the
`challenged claims.
`Thus, we institute an inter partes review of claims 2–5, 19–23, 25, 28,
`29, and 34 of the ’168 patent on all presented challenges. SAS Inst. Inc. v.
`Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`B. Real Parties in Interest
`Petitioner identifies Apple Inc., Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc. as real parties in interest. Pet. 86.
`Patent Owner only identifies itself as a real party in interest. Paper 5, 1.
`C. Related Matters
`The parties identify Smart Mobile Technologies LLC v. Samsung
`Electronics Co., Ltd., 6-21-cv-00701 (W.D. Tex.) and Smart Mobile
`Technologies LLC v. Apple Inc., 6-21-cv-00603 (W.D. Tex.) as related
`matters. Pet. 86; Paper 5, 1.
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`D. The ’168 Patent (Ex. 1001)
`The ’168 patent issued on September 5, 2017 from an application filed
`on October 13, 2004, which is a division of an application filed on June 9,
`2000. Ex. 1001, codes (22), (45), (62), 1:7–9.
`The ’168 patent summarizes its invention as “a wireless
`communication and control system” with “a universal wireless device” and
`“a central server for storing communication protocols and control
`protocols.” Ex. 1001, 1:41–44. “The central server communicates the
`communication protocols and selectively communicates the control
`protocols between the wireless device and the central server.” Id. at 1:44–
`47. “The communication protocols configure the system for communication
`and the control protocols configure the system as one of an arbitrary number
`of intelligent appliance controllers.” Id. at 1:47–50. “The wireless device
`may be, for example, a hand-held computing device, wireless telephone, or
`cellular phone.” Id. at 1:52–54.
`Figure 2C of the ’168 patent is reproduced below.
`
`
`Figure 2C shows a wireless networking scheme. Ex. 1001, 2:1–2. Cellular
`telephone (“CT”) or mobile device (“MD”) 202 is in home loop 260 and
`communicates with home server 264 through transmit/receive unit 262. Id.
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`at 3:28–29, 4:53–56. Home server 264 can control home intelligent
`appliances 266 so that “CT/MD 202 can be a TV remote 272, remote
`access 274 for an oven or microwave for starting/stopping an operation at a
`desired time, or perform other household duties.” Id. at 4:56–60.
`CT/MD 202 functions in home loop 260 under control of home
`network box 262 using a specific home frequency band. Ex. 1001, 4:61–63.
`Home network box 262 can operate at a frequency of a public carrier or a
`different frequency. Id. at 4:64–65, 5:1–3. According to the ’168 patent, it
`is desirable to have a different frequency optimized for the home area
`wireless network. Id. at 4:65–67.
`CT/MD 202 can tune the frequencies for transmitting and receiving to
`particular primary and secondary frequencies. Ex. 1001, 5:66–6:4, 6:12–14,
`6:42–45. The inputs and outputs of a network control box “are each
`dynamically tunable, such as to specific power levels, channel bandwidths
`and frequencies of operation, for maintaining reliability and integrity and to
`receive/transmit wireless communications from/to one or more services.”
`Id. at 6:53–57. Both CT/MD 202 and the wireless network control box “are
`dynamically configurable working in tandem with Server C 214.” Id. at
`7:4–6, Fig. 2A. “Server C 214 can be used to keep the various ‘functional
`instruction sets’ (FIS) and software (S/W) 218 for use by the CT/MD 202.”
`Id. at 3:59–61.
`“CT/MD 202 when in the home wireless network mode may switch
`itself . . . for optimal performance by downloading/uploading FIS 218
`(function instruction software) and/or protocols in tandem with Server C
`214.” Ex. 1001, 5:4–7. When configured by FIS 218, “CT/MD 202 may
`serve as a cordless phone (connected or hooked into a landed telephone line
`as an example, and operating as a telephone or as an IP phone) in the home
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`wireless network loop 260.” Id. at 5:8–12. If FIS 218 configures CT/MD
`202 to emulate a cordless phone, “the cordless telephone base station may
`also be emulated by, for example, home server 264.” Id. at 5:12–18.
`CT/MD 202, thus, “serves many purposes as opposed to requiring
`many telephone hand sets (one for the home, one for the office, and one for
`the car, as an example).” Ex. 1001, 5:19–23. Similarly, CT/MD 202 can
`also “serve as a remote controller for various IP based intelligent wireless or
`wired home appliances 266,” control the TV “if the TV set is capable of
`receiving wireless commands,” and open a garage door. Id. at 5:27–33.
`Commands or FIS 218 can be keypad, textual, sound, or voice actuated. Id.
`at 5:34–40.
`E. Illustrative Claim
`The ’168 patent includes 34 claims, of which Petitioner challenges
`claims 2–5, 19–23, 25, 28, 29, and 34. Of the challenged claims, claims 2
`and 4 are independent, and claim 2 is reproduced below.
`1.
`A system comprising:
`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,
`wherein the remote server stores in memory software for
`a wireless device, wherein the remote server sends to the wireless
`device software, wherein the remote server stores profiles of user
`specific information,
`wherein the wireless device is enabled for voice and data
`communication,
`wherein the wireless device includes one or more
`functions of a cellular telephone, PDA, handheld computer, or
`multifunction communication device, or combinations thereof,
`wherein the wireless device is configured to use Internet
`protocol;
`wherein the software controls a plurality of the hardware
`components on the wireless device;
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`wherein the wireless device is configured to transmit and
`receive at a plurality of frequencies: wherein the wireless device
`is enabled to be tuned to transmit and/or receive frequencies
`including one or more primary values and subsidiary values;
`wherein the wireless device transmitter and receiver are
`independently tunable to one or more frequencies for operation
`in different environments based on the instructions of internal
`controller electronics and/or that of the server wherein the
`wireless device dynamically changes
`its
`frequency
`for
`communication; wherein the wireless device uses a power level
`for an operating environment; and wherein both power output
`and channel bandwidth as are dynamically changed in real time.
`Ex. 1001, 9:60–10:25.
`F. Asserted Prior Art and Proffered Testimonial Evidence
`Petitioner identifies the following references as prior art in the
`asserted grounds of unpatentability:
`Name
`Reference
`Grube
`US 5,201,067, issued Apr. 6, 1993
`Sainton
`US 5,854,985, issued Dec. 29, 1998
`Mueller
`US 6,185,413 B1, issued Feb. 6, 2001
`Camp
`US 6,252,543 B2, issued June 26, 2001
`Petty
`US 6,337,858 B1, issued Jan. 8, 2002
`Baker
`US 6,430,599 B1, issued Aug. 6, 2002
`Hsu
`US 6,587,684 B1, issued July 1, 2003
`Humpleman US 7,043,532 B1, issued May 9, 2006
`
`Exhibit
`1009
`1005
`1007
`1011
`1012
`1006
`1010
`1008
`
`Pet. 16–17. Petitioner argues that Grube and Sainton are prior art under
`§ 102(b)1 and that Mueller, Camp, Petty, Baker, Hsu, and Humpleman are
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
`2013. Because the ’168 patent claims priority to an application filed before
`that date, our citations to 35 U.S.C. §§ 102 and 103 in this Decision are to
`their pre-AIA versions.
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`prior art under § 102(e). Id. at 16–17. Petitioner also provides a Declaration
`of Michael Kotzin, Ph.D. Ex. 1003.
`G. Asserted Grounds
`Petitioner asserts that claims 2–5, 19–23, 25, 28, 29, and 34 are
`unpatentable on the following grounds:
`Claim(s)
`Challenged
`2–5, 23, 28
`25, 34
`22
`19, 20
`21
`29
`
`References/Basis
`Sainton, Baker, Mueller
`Sainton, Baker, Mueller, Humpleman
`Sainton, Baker, Mueller, Grube
`Sainton, Baker, Mueller, Hsu
`Sainton, Baker, Mueller, Camp
`Sainton, Baker, Mueller, Petty
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`Pet. 16.
`
`II. ANALYSIS
`
`A. Legal Standards
`In inter partes reviews, the petitioner bears the burden of proving
`unpatentability of the challenged claims, and the burden of persuasion never
`shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1378 (Fed. Cir. 2015). To institute an inter partes review, a
`petitioner must show a “there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314.
`Petitioner contends that the challenged claims of the ’168 patent are
`unpatentable under § 103. Pet. 3–4. A claim is unpatentable under § 103 if
`the differences between the claimed subject matter and the prior art are such
`that the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) where in evidence, so-called
`secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). When evaluating a combination of teachings, we must also
`“determine whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at
`418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a
`combination of elements produces a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`B. Level of Ordinary Skill in the Art
`Petitioner asserts that one of ordinary skill in the art
`would have had a bachelor’s degree in computer science,
`computer engineering, electrical engineering, or a similar field
`(or equivalent work experience to such a degree) with at least
`two years of experience in communications systems and systems
`for textual processing and analysis, or a person with a master’s
`degree in computer science, computer engineering, electrical
`engineering, or a similar field with a specialization in
`communications systems including instant messaging and
`systems for analyzing language.
`Pet. 9–10 (citing Ex. 1003 ¶¶ 57–60). Petitioner also argues that such an
`ordinary skilled artisan “would have known and had the skills necessary to
`design or implement communications systems and applications in
`compliance with standards such as TCP/IP, UDP, XMPP and SIMPLE, to
`implement known techniques for natural language processing (NLP), and to
`understand common techniques for identifying patterns in text.” Id. at 10
`(citing Ex. 1003 ¶¶ 57–60).
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`Patent Owner does not propose a level of ordinary skill in the art and
`does not dispute at this stage Petitioner’s asserted level of ordinary skill in
`the art. See generally Prelim. Resp.
`Based on the preliminary record, we adopt Petitioner’s asserted level
`of ordinary skill only to determine whether there is a reasonable likelihood
`that Petitioner would prevail with respect to at least one of the claims
`challenged in the Petition. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001) (citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
`F.2d 158, 163 (Fed. Cir. 1985)).
`C. Claim Construction
`In an inter partes review based on a petition filed on or after
`November 13, 2018, the claims are construed
`using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. [§] 282(b),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`37 C.F.R. § 42.100(b) (2021); see Phillips v. AWH Corp., 415 F.3d 1303,
`1312–13 (Fed. Cir. 2005) (en banc).
`Petitioner states that, “for the purposes of this proceeding, the terms of
`the challenged claims should be given their plain and ordinary meaning, and
`no terms require specific construction.” Pet. 11.
`Patent Owner argues what one of ordinary skill in the art would have
`understood “profiles” and “both power output and channel bandwidth as are
`dynamically changed in real time” should mean. Prelim. Resp. 2, 10, 11–14,
`19, 23–24, 25–29. Patent Owner also argues that one of ordinary skill in the
`art would distinguish device from user. Prelim. Resp. 20–21.
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`At this preliminary stage, because determining whether Petitioner
`shows a reasonable likelihood of prevailing does not depend on a particular
`interpretation for any claim term, we determine that no claim term requires
`express interpretation. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375
`(Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that
`. . . are in controversy, and only to the extent necessary to resolve the
`controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999)). For the reasons below, even if we adopted
`Patent Owner’s proposed interpretations, we would still determine that
`Petitioner shows sufficiently at this stage all the limitations of the challenged
`claims.
`D. Asserted Obviousness Based on Sainton, Baker, and Mueller
`1. Sainton (Ex. 1005)
`Sainton relates to wireless communication devices and systems for
`different radio frequencies, transmission protocols and radio infrastructures.
`Ex. 1005, 1:8–12.
`Sainton’s circuit 1 “provides a multi-modal or omni-modal
`communications capability” and “can be adjusted by the user, or
`automatically under stored program control, to transfer information over at
`least two different radio communications networks, and preferably all
`networks available in a particular area within the frequency range of the
`transceiver of circuit 1.” Ex. 1005, 5:5–13. Sainton provides example radio
`communications networks that circuit 1 can use. Id. at 5:14–29.
`Circuit 1 includes amplifier 6, and “[a]mplifier 6 may be connected to
`control circuitry to allow the power output of amplifier 6 to be varied in
`accordance with control signals received from the control circuitry.”
`Ex. 1005, 8:14–16. Sainton also describes and shows “a radio frequency
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`communication system that is capable of operating over a plurality of
`different radio channels and is further capable of transmitting either analog
`or digital data information signals as well as analog or digital voice signals.”
`Id. at 10:15–22, Figs. 1A, 1B.
`Sainton states that “a library of command, control and data
`transmission protocols appropriate for each supported system may be
`included in circuit 1, and the device can implement the correct protocols by
`consulting a lookup table during transmissions to obtain the data channel
`protocols appropriate to the system selected.” Ex. 1005, 5:52–57. “In
`another embodiment, the library of command, control, and data transmission
`protocols may be replaced, or supplemented, by information transmitted
`over the radio frequencies to the device by the carrier.” Id. at 5:57–61.
`Sainton states that “data displaying, electronic mail storage, retrieval, and
`composition, and other computing functions may be included in the library,”
`and “the library may be expanded to include substantial operating system
`functions so that circuit 1 can be used to construct full-fledged personal
`computers and personal communicators capable of running third party
`applications programs.” Id. at 16:20–27.
`Figures 4A and 4B are reproduced below.
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`
`Figures 4A and 4B are front and back views of a data transmission
`and display radiotelephone. Ex. 1005, 4:8–12. Communication device 402
`that could be a cellular phone employs circuit 1. Id. at 12:65–13:3. “Since
`the device is programmable through the use of microprocessor 110 and
`memory 112 (FIG. 1B), it is capable of switching between voice and data
`modes of operation,” which “allows the user to conduct a voice conversation
`and then to receive data for display on the integrated display device.” Id. at
`13:22–27. “Alternatively, the omni-modal circuit could access another
`communication service to receive data for display, or it might receive data
`over a subchannel during the conversation,” which “would be particularly
`advantageous if the user desired to continue a voice call while continuing to
`receive data information.” Id. at 13:27–32.
`Sainton also states that “users may also prefer that circuit 1
`automatically avoid selecting carriers which are suffering performance
`degradations because of capacity limits, or which have a particularly weak
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`signal at the location of the user” and select “the ‘next best’ carrier
`according to the primary programmed selection criteria.” Id. at 18:7–16.
`2. Baker (Ex. 1006)
`Baker relates to “small footprint devices such as handheld computers,
`personal data assistants (PDAs), cellular phones, etc.” and “comprises a
`lightweight framework supporting shareable services in small footprint
`devices.” Ex. 1006, 1:8–12. Services include “modules or applications
`located and executable within a local machine or device.” Id. at 1:41–42.
`Baker states that “since memory, processing power, and other resources are
`typically very limited in small footprint devices, a specialized lightweight
`software framework is necessary to achieve the desired integration of
`services and applications,” and “that the framework be flexible and
`extendable enough to provide support for any types of services and
`applications for any kind of small footprint device.” Id. at 1:50–58; see also
`id. at 2:20–29 (describing the memory size and processing power of a small
`footprint device), 4:61–5:10 (describing that the small footprint devices
`include, for example, portable computers and “smart” cellular telephones).
`Baker also states that “the framework be compatible and integrated
`with off-device services such as services available to devices in a Jini
`network.” Ex. 1006, 1:58–60. Baker describes an exemplary network with
`smart cellular phone 134 and lookup service 136. Id. at 7:23–38, Fig. 3.
`“[L]ookup service 160 may use the service attributes sent by the service
`provider 164” to find a match the description from the requestor, and “[i]f a
`match is found, the lookup service 160 provides the appropriate service
`object to the client 162,” such as “a Java interface for the requested service.”
`Id. at 8:11–22.
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`3. Mueller (Ex. 1007)
`Mueller “relates to a mobile station to be used in mobile radio
`systems.” Ex. 1007, 1:6–7. Figure 2 of Mueller is reproduced below.
`
`
`Figure 2 “shows a listing of the technical parameters of known mobile
`radio network systems.” Ex. 1007, 6:45–46. Mueller describes “a uniform
`pan-European digital system, the GSM (Global System for Mobile
`Communication)” and that, in a GSM network, there is “a mobile station
`which can be, for example, a car telephone, a cordless telephone or a
`handheld telephone, to the stationary base.” Id. at 1:18–20, 1:37–40. It also
`refers to other standards including the “American D-AMPS (Digital
`Advanced Mobile Phone System) standard which is also designated as IS-
`136 (Interim Standard 136),” “IS-95 standard . . . in the cellular band,” and
`“JDC (Japanese Digital Cellular) standard.” Id. at 3:23–38. “The carrier
`frequencies modulated with the digital transmission information have a
`channel spacing.” Id. at 1:45–47.
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`4. Independent Claim 2
`Petitioner argues that Sainton teaches a system because it teaches a
`wireless communication device and server. Pet. 25–26 (citing Ex. 1003
`¶¶ 66–70; Ex. 1005, 1:8–12, 2:65–3:1, 3:6, 5:57–61, 12:65–13:1, 16:17–27,
`Figs. 4A, 4B). Petitioner also argues that Baker teaches a server, lookup
`server 136. Id. at 26–27 (citing Ex. 1003 ¶ 71; Ex. 1006, 7:37–38, 8:3–22,
`Fig. 3).
`For “remote server configured to store wireless device software for a
`plurality of different functions or applications for use by a plurality of
`wireless devices,” Petitioner relies on Baker’s lookup server 136 for the
`limitation quoted above and argues that it would be combined with Sainton.
`Pet. 27–29 (citing Ex. 1003 ¶¶ 73–83; Ex. 1005, 5:52–65, 16:17–27, Figs.
`4A, 4B; Ex. 1006, 1:41–48, 7:28–32, 7:37–38, 7:43–48, 8:8–10, 8:14–16,
`8:18–22, 9:5–13, Fig. 3).
`For “wherein the remote server stores in memory software for a
`wireless device, wherein the remote server sends to the wireless device
`software, wherein the remote server stores profiles of user specific
`information,” Petitioner argues that Sainton teaches obtaining updates from
`its library and that Baker teaches storing and sending service objects on
`request. Pet. 29–32 (citing Ex. 1003 ¶¶ 84–87; Ex. 1005, 5:57–61; Ex. 1006,
`7:61–63, 8:18–22). Petitioner also argues that Sainton teaches storing
`“profiles of user specific information.” Id. at 30–31 (citing Ex. 1003 ¶ 88;
`Ex. 1005, 17:49–57, 19:45–64; Ex. 1020, 1:64–2:2; Ex. 1031, Abstract,
`4:65–5:2, 5:55–65). Petitioner further argues that the proposed combination
`would also store profiles. Id. at 31 (citing Ex. 1003 ¶¶ 89–90; Ex. 1006,
`13:18–25, 14:12–16; Ex. 1023, Abstract, 3:1–8).
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`For “wherein the wireless device is enabled for voice and data
`communication,” Petitioner argues that Sainton teaches circuit 1 for either
`voice or data communication. Pet. 32 (citing Ex. 1003 ¶¶ 91–95; Ex. 1005,
`1:8–12, 10:23–28, 13:30–33). For “wherein the wireless device includes one
`or more functions of a cellular telephone, PDA, handheld computer, or
`multifunction communication device, or combinations thereof,” Petitioner
`argues that the proposed combination would be a cellular phone or could
`function as a portable computer. Id. at 32–33 (citing Ex. 1003 ¶¶ 96–103;
`Ex. 1005, 1:8–12, 5:14–29, 13:1–3, 16:18–27, Figs. 4A, 4B; Ex. 1006, 1:7–
`10, 7:29–35, 7:61–8:3, 8:18–22).
`For “wherein the wireless device is configured to use Internet
`protocol,” Petitioner argues that one of ordinary skill in the art would have
`understood that Sainton teaches the use of Internet Protocol (“IP”) and that it
`would have been obvious that Baker operates with IP. Pet. 33–34 (citing
`Ex. 1003 ¶¶ 104–110; Ex. 1005, 3:41–43, 5:14–22; Ex. 1006, 7:39–46,
`8:36–43; Ex. 1023, 10:27–32; Ex. 1024, 4:42–62; Ex. 1026, 8:29–31;
`Ex. 1028, 4; Ex. 1029, 164, 168–169).
`For “wherein the software controls a plurality of the hardware
`components on the wireless device,” Petitioner argues that, in the proposed
`combination, Sainton would receive Baker’s service objects. Pet. 34–35
`(citing Ex. 1003 ¶¶ 111–115; Ex. 1005, 3:52–56, 8:19–27, Fig. 1B;
`Ex. 1006, 5:64–6:22). For “wherein the wireless device is configured to
`transmit and receive at a plurality of frequencies,” Petitioner argues that
`Sainton teaches the use of different radio frequencies and can operate on
`different radio channels for voice and data. Id. at 35–36 (citing Ex. 1003
`¶¶ 116–121; Ex. 1005, 1:8–12, 10:15–22, 13:21–33).
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`For “wherein the wireless device is enabled to be tuned to transmit
`and/or receive frequencies including one or more primary values and
`subsidiary values,” Petitioner argues that Sainton teaches a “frequency and
`protocol agile” wireless device that has primary and secondary values.
`Pet. 36–37 (citing Ex. 1001, 5:59–63, 6:12–14, 6:19–24, Fig. 4; Ex. 1003
`¶¶ 122–127; Ex. 1005, Abstract, 5:52–57, 6:1–2, 6:29–30, 8:4–7, 16:35–45,
`18:7–18). Petitioner also argues that it was well known that carriers use
`different frequencies and Mueller teaches the use of different frequencies for
`transmission. Id. at 37–39 (citing Ex. 1003 ¶¶ 128–134; Ex. 1005, 5:14–29;
`Ex. 1007, 1:15–21, 1:36–45, 3:23–38, 2:52–59, 6:45–46, Fig. 2; Ex. 1013,
`3:33–36).
`For “wherein the wireless device transmitter and receiver are
`independently tunable to one or more frequencies for operation in different
`environments based on the instructions of internal controller electronics
`and/or that of the server,” Petitioner argues that Sainton teaches the
`limitation quoted above because Sainton can communicate on selected
`wireless communication networks. Pet. 39–41 (citing Ex. 1001, 2:32–36;
`Ex. 1003 ¶¶ 135–143; Ex. 1005, Abstract, 3:56–59, 5:8–13, 5:52–57, 8:28–
`41; Ex. 1006, Fig. 2; Ex. 1007, Fig. 2).
`For “wherein the wireless device dynamically changes its frequency
`for communication,” Petitioner argues that Sainton teaches the limitation
`because it adapts to a selected network that would involve a frequency
`change as was known in the art. Pet. 41–42 (citing Ex. 1001, 4:10–17, 7:55–
`61; Ex. 1003 ¶¶ 144–152; Ex. 1005, 5:5–13; Ex. 1007, 1:36–45; Ex. 1013,
`1:45–48; Ex. 1030, 218–219, Fig. 4.18). For “wherein the wireless device
`uses a power level for an operating environment,” Petitioner argues that
`Sainton teaches adjusting its device’s power level depending on the
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`operating environment. Pet. 42 (citing Ex. 1001, 2:40–46, 9:1–7, Fig. 1;
`Ex. 1003 ¶¶ 153–157; Ex. 1005, Abstract, 8:11–16).
`For “wherein both power output and channel bandwidth as are
`dynamically changed in real time,” Petitioner argues that Sainton teaches
`changing its power output and channel bandwidth for transmission based on
`the selected network environment “with control signals.” Pet. 42–43 (citing
`Ex. 1003 ¶¶ 158–162; Ex. 1005, Abstract, 5:5–29, 8:11–16, 18:7–11;
`Ex. 1007, Fig. 2), 44–45 (citing Ex. 1003 ¶¶ 165–167; Ex. 1005, 5:52–57;
`Ex. 1014, 5:27–30; Ex. 1015, 1:35–39, 5:28–31; Ex. 1016, 11:13–16;
`Ex. 1017, 1:8–12; Ex. 1018, 3:5–9). Petitioner also argues that Mueller
`teaches different bandwidths and “typically different power requirements.”
`Id. at 43–44 (citing Ex. 1003 ¶¶ 163–164; Ex. 1007, 1:45–47, 6:45–46, Fig.
`2; Ex. 1018, 3:5–9). Id. at 44–45.
`a) Petitioner’s Asserted Reasons to Combine
`Petitioner argues that Sainton, Baker, and Mueller are analogous art
`and pertain to “wireless communications devices and adding functions to
`them.” Pet. 21 (citing Ex. 1001, 1:41–54, 6:15–18; Ex. 1003 ¶ 47; Ex. 1005,
`Abstract, 1:8–12, 16:17–27; Ex. 1006, Abstract, 1:41–48, 9:9–13; Ex. 1007,
`Abstract). According to Petitioner, one of ordinary skill in the art would
`have been motivated to combine Sainton and Baker. Id. at 21–22 (citing
`Ex. 1003 ¶ 48).
`Petitioner argues that Sainton teaches a wireless device with protocols
`and third party applications, Baker teaches a server that provides service
`objects that would work on Sainton’s device, and their combination would
`implement Baker’s service objects with a reasonable expectation of success.
`Pet. 22 (citing Ex. 1003 ¶¶ 49–50; Ex. 1005, 5:52–65, 16:22–27; Ex. 1006,
`2:20–29). Petitioner also argues that one of ordinary skill in the art would
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`have been motivated to make the combination because Sainton teaches the
`use of third party application programs and Baker provides details for using
`those applications. Id. at 22–23 (citing Ex. 1003 ¶¶ 51–53; Ex. 1005, 16:17–
`27, 5:57–65; Ex. 1006, 1:10–12, 1:41–48, 6:54–61, 8:18–22). Petitioner
`further argues that the combination would have been predictable, within
`ordinary skill, and “would have provided ‘desirable computing features.’”
`Id. at 23–24 (citing Ex. 1003 ¶ 54; Ex. 1005, 12:65–13:20, 16:22–27; Ex.
`1006, 1:49–63, 4:61–5:10, 7:23–28, 8:18–22). Petitioner, thus, argues that
`the combination would have been “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).” Id. at 24 (citing Ex. 1003
`¶¶ 55–56).
`For Sainton and Mueller, Petitioner argues that Sainton does not
`provide details on the cellular standards that it can use, and so, one of
`ordinary skill in the art would have turned to Mueller that provides details
`about one of Sainton’s standards. Pet. 24–25 (citing Ex. 1003 ¶¶ 57–62;
`Ex. 1005, 5:14–29; Ex. 1007, 1:36–48, 2:1–7, 3:23–38, Fig. 2; Ex. 1013,
`3:33–36; Ex. 1020, 2:36–41). Petitioner also argues that “the combination
`merely amounts to combining prior art elements according to known
`methods to yield predictable results.” Id. at 25 (citing Ex. 1003 ¶ 65).
`The evidence cited by Petitioner for the limitations of claim 2
`sufficiently supports, at this stage, Petitioner’s contention that Sainton
`teaches or suggests a majority of the limitations of claim 2. See Pet. 25–45.
`The evidence cited by Petitioner also supports, at this stage, Petitioner’s
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`contention that Baker and Mueller teach or suggest the remaining limitations
`of claim 2. See id.
`On the present record, Petitioner provides a reason sufficiently
`supported by the asserted references and declarant testimony that one of
`ordinary skill in the art would have combined Sainton, Baker, and Mueller in
`the manner proposed. See Pet. 19–28. We also agree, at this stage, that one
`of ordinary skill in the art would have had a reasonable expectation of
`success in making the proposed modification for the reasons given by
`Petitioner. See id. at 21–25.
`b) Preliminary Response
`Patent Owner responds that claim 2 requires “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.” Prelim.
`Resp. 3. Patent Owner argues that Petitioner relies on Baker for teaching the
`server limitation but fails to show that one of ordinary skill in the art would
`have considered Baker’s lookup service 136 to teach the claimed server. Id.
`at 3–4 (citing Pet. 27–29).
`In Patent Owner’s view, lookup service 136 is for a Jini system that
`distinguishes lookup service 136 from a server. Prelim. Resp. 4, 5 (citing
`Ex. 1006, 7:43–46). Patent Owner argues that the relied-upon portions of
`Baker do not teach the recited server. Id. at 4 (citing Pet. 26; Ex. 1006,
`7:37–38, Fig. 3). Based on the express teaching th
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