Case IPR2022-00807
`U.S. Patent No. 9,756,168
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC., SAMSUNG ELECTRONICS CO. LTD., AND SAMSUNG
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`ELECTRONICS AMERICA, INC.,
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`Petitioner
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`v.
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`SMART MOBILE TECHNOLOGIES LLC,
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`Patent Owner.
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`____________
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`Case IPR2022-00807
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`U.S. Patent No. 9,756,168
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`CORRECTED PATENT OWNER’S NOTICE OF APPEAL
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`U.S. Patent No. 9,756,168
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APPLE, INC., SAMSUNG ELECTRONICS CO. LTD., AND SAMSUNG
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`ELECTRONICS AMERICA, INC.,
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`Petitioner
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`v.
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`SMART MOBILE TECHNOLOGIES LLC,
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`Patent Owner.
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`____________
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`Case IPR2022-00807
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`U.S. Patent No. 9,756,168
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`____________
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`CORRECTED PATENT OWNER’S NOTICE OF APPEAL
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`Case IPR2022-00807
`U.S. Patent No. 9,756,168
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` To the Director of the United States Patent and Trademark Office,
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`Under 35 U.S.C. §§ 141(c), 142, and 319, and 37 C.F.R. §§ 90.2-90.3,
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`notice is hereby given that Patent Owner Smart Mobile Technologies LLC (“Patent
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`Owner”) appeals to the United State Court of Appeals for the Federal Circuit from
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`the Final Written Decision of the Patent Trial and Appeal Board (“the Board”),
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`entered on October 23, 2023 (Paper 38) in IPR2022-00807 regarding U.S. Patent
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`No. 9,756,168 B1 (“the ’168 Patent”), and from all underlying orders, decisions,
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`rulings, and opinions decided adversely to Patent Owner in the above-captioned
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`proceeding.
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`For the limited purpose of providing the Director of the United States Patent
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`and Trademark Office (“the Director”) with the information requested under 37
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`C.F.R. § 90.2.(a)(3)(ii), the Patent Owner submits that the appeal will address all
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`aspects of the Board’s decision decided adversely to Patent Owner, including,
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`without limitation, whether the Board erred in concluding that Petitioners have
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`proven by a preponderance of the evidence that claims 2–5, 19–23, 25, 28, 29, and
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`34 of the ’168 Patent are unpatentable. In particular, and without limitation, this
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`appeal will address the issues of whether Petitioners have proven that (i) claims
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`2-5, 23, and 28 are unpatentable pursuant to 35 U.S.C. § 103 over the combination
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`of U.S. Patent No. 5,854,985 (“Sainton”), U.S. Patent No. 6,430,599 (“Baker”),
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`and U.S. Patent No. 6,185,413 (“Mueller”); (ii) claims 25 and 34 are unpatentable
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`pursuant to 35 U.S.C. § 103 over a combination of Sainton, Baker, Mueller, and
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`U.S. Patent No. 7,043532 (“Humpleman”); (iii) claim 22 is unpatentable pursuant
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`to 35 U.S.C. § 103(a) over a combination of Sainton, Baker, Mueller, and U.S.
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`Patent No. 5,201,067 (“Grube”); (iv) claims 19 and 20 are unpatentable pursuant to
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`35 U.S.C. § 103(a) over a combination of Sainton, Baker, Mueller, and U.S. Patent
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`No. 6,587,684 (“Hsu”); (v) claim 21 is unpatentable pursuant to 35 U.S.C. § 103(a)
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`over a combination of Sainton, Baker, Mueller, and U.S. Patent No. 6,252,543
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`(“Camp”); (vi) claim 29 is unpatentable pursuant to 35 U.S.C. § 103(a) over a
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`combination of Sainton, Baker, Mueller, and U.S. Patent No. 6,337,858 (“Petty”).
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`Patent Owner further reserves the right to challenge any finding or determination
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`relating to the issues and matters listed above and to challenge any other issues or
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`matters decided against Patent Owner in any order, decision, ruling, or opinion by
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`the Board in the above-captioned proceeding.
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`This Notice of Appeal is timely filed with the Director. 37 C.F.R. §
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`90.3(a)(1), (b)(1). Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a)(1), this
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`Notice is being filed with the Director, and a copy of this Notice is being
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`concurrently filed with the Board. In addition, a copy of this Notice is being filed
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`with the Clerk of the United States Court of Appeals for the Federal Circuit, along
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`with the applicable filing fee, via CM/ECF and pay.gov.
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`Dated: December 19, 2023
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`Respectfully submitted,
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`/ Kenneth J. Weatherwax /
`Kenneth J. Weatherwax, Reg. No. 54,528
`weatherwax@lowensteinweatherwax.com
`LOWENSTEIN & WEATHERWAX LLP
`1016 Pico Blvd
`Santa Monica, CA 90405
`Tel: (310) 307-4500
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`Philip J. Graves
`pgraves@gravesshaw.com
`Greer N. Shaw
`gshaw@gravesshaw.com
`GRAVES & SHAW LLP
`355 S. Grand Ave., Suite 2450
`Los Angeles, CA 90071
`Tel.: (213) 204-5101
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`CERTIFICATES OF FILING AND SERVICE
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`I hereby certify that, in addition to being filed electronically through the
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`Patent Trial and Appeal Board’s P-TACTS System, the original version of the
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`foregoing PATENT OWNER’S NOTICE OF APPEAL was filed, as required by
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`37 C.F.R. § 104.2, by Express Mail on this 19th day of December 2023 with the
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`Director of the United States Patent and Trademark Office at the following
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`address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`The undersigned also hereby certifies that a true and correct copy of the
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`foregoing PATENT OWNER’S NOTICE OF APPEAL and the filing fee is being
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`filed via the electronic filing system, CM/ECF, with the Clerk’s Office of the
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`United States Court of Appeals for the Federal Circuit on December 19, 2023 and a
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`true and correct paper copy of the foregoing is being filed by Express Mail, as
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`required by the Fed. Cir. R. 15(a)(1), on this 19th day of December 2023 with the
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`Clerk’s Office of the United States Court of Appeals for the Federal Circuit at the
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`following address:
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`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20439
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`The undersigned also hereby certifies that on December 19, 2023, copies of
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`the foregoing PATENT OWNER’S NOTICE OF APPEAL were served on
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`Petitioners as provided in 37 C.F.R. § 42.6(e) via electronic mail transmission
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`addressed to the attorneys of record for the Petitioner at the email addresses listed
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`below:
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`Lead Counsel
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219 Phone: (214) 651-5116
`Fax: (214) 200-0853
`andy.ehmke.ipr@haynesboone.com
`USPTO Reg. No. 50,271
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`Back-up Counsel
`Adam C. Fowles
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219 Phone: (972) 739-8674
`Fax: (214) 200-0853
`adam.fowles.ipr@haynesboone.com
`USPTO Reg. No. 65,005
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`Samuel Drezdzon
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219 Phone: (972) 739-6918
`Fax: (214) 200-0853
`samuel.drezdzon.ipr@haynesboone.com
`USPTO Reg. No. 67,085
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`W. Karl Renner
`Jeremy J. Monaldo
`Hyun Jin In
`Sangki Park
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402 Phone: (202) 783-5070
`Fax: (877) 769-7945
`IPR39843-0127IP1@fr.com
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`Dated: December 19, 2023
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`Respectfully submitted,
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`/ Kenneth J. Weatherwax /
`Kenneth J. Weatherwax, Reg. No. 54,528
`weatherwax@lowensteinweatherwax.com
`LOWENSTEIN & WEATHERWAX LLP
`1016 Pico Blvd
`Santa Monica, CA 90405
`Tel: (310) 307-4500
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`Philip J. Graves
`pgraves@gravesshaw.com
`Greer N. Shaw
`gshaw@gravesshaw.com
`GRAVES & SHAW LLP
`355 S. Grand Ave., Suite 2450
`Los Angeles, CA 90071
`Tel.: (213) 204-5101
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`Attachment A
`Attachment A
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`Trials@uspto.gov
`571-272-7822
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`Paper 38
`Date: October 23, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
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`IPR2022-00807
`Patent 9,756,168 B1
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`Before KEVIN F. TURNER, HYUN J. JUNG, and PAUL J. KORNICZKY,
`Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
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`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`IPR2022-00807
`Patent 9,756,168 B1
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`INTRODUCTION
`I.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Apple Inc., Samsung
`Electronics Co., Ltd., and Samsung Electronics America, Inc. (collectively,
`“Petitioner”) have shown by a preponderance of the evidence that claims 2–
`5, 19–23, 25, 28, 29, and 34 of U.S. Patent No. 9,756,168 B1 (Ex. 1001, “the
`’168 patent”) are unpatentable.
`A. Background and Summary
`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 the ’168
`patent. Smart Mobile Technologies LLC (“Patent Owner”) filed a
`Preliminary Response (Paper 7). Pursuant to 35 U.S.C. § 314, we instituted
`an inter partes review of claims 2–5, 19–23, 25, 28, 29, and 34 of the ’168
`patent on all presented challenges. Paper 9 (“Inst. Dec.”), 2, 43.
`After institution, Patent Owner filed a Response (Paper 23, “PO
`Resp.”), to which Petitioner filed a Reply (Paper 28, “Pet. Reply”), and
`Patent Owner thereafter filed a Sur-reply (Paper 31, “PO Sur-reply”). An
`oral hearing in this proceeding was held on July 27, 2023; a transcript of the
`hearing is included in the record. Paper 37.
`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
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`Technologies LLC v. Apple Inc., 6-21-cv-00603 (W.D. Tex.) as related
`matters. Pet. 86; Paper 5, 1.
`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.
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`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
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`Patent 9,756,168 B1
`communicates with home server 264 through transmit/receive unit 262. Id.
`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
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`Patent 9,756,168 B1
`as an example, and operating as a telephone or as an IP phone) in the home
`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.
`2.
`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;
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`Patent 9,756,168 B1
`wherein the software controls a plurality of the hardware
`components on the wireless device;
`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:
`Exhibit
`Name
`Reference
`1009
`Grube
`US 5,201,067, issued Apr. 6, 1993
`1005
`Sainton
`US 5,854,985, issued Dec. 29, 1998
`1007
`Mueller
`US 6,185,413 B1, issued Feb. 6, 2001
`1011
`Camp
`US 6,252,543 B1, issued June 26, 2001
`1012
`Petty
`US 6,337,858 B1, issued Jan. 8, 2002
`1006
`Baker
`US 6,430,599 B1, issued Aug. 6, 2002
`1010
`Hsu
`US 6,587,684 B1, issued July 1, 2003
`1008
`Humpleman US 7,043,532 B1, issued May 9, 2006
`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
`prior art under § 102(e). Id. at 16–17.
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`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
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`Petitioner also provides a Declaration of Michael Kotzin, Ph.D.
`Ex. 1003. Patent Owner provides a Declaration of Professor Todor V.
`Cooklev, Ph.D. Ex. 2010. Deposition transcripts for Dr. Kotzin (Ex. 2011)
`and Dr. Cooklev (Ex. 1041) were filed.
`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
`Pet. 16.
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`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
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`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
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`II. ANALYSIS
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`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 prevail in an inter partes review,
`the petitioner must support its challenges by a preponderance of the
`evidence. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2021).
`Petitioner contends that the challenged claims of the ’168 patent are
`unpatentable under § 103. Pet. 3–4. A claim is unpatentable under § 103 if
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`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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`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
`(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)).
`B. Level of Ordinary Skill in the Art
`Petitioner asserts that one of ordinary skill in the art “would have had
`a working knowledge of the wireless communication arts pertinent to the
`’168 patent” and “a bachelor’s degree in electrical engineering or equivalent
`training, and approximately two years of experience working in the field of
`networking and wireless devices.” Pet. 10–11. Petitioner also argues that
`“[l]ack of work experience can be remedied by additional education, and
`vice versa.” Id. at 11 (citing Ex. 1003 ¶¶ 20–22).
`Patent Owner does not propose a level of ordinary skill in the art and
`does not dispute Petitioner’s asserted level of ordinary skill in the art. See
`generally PO Resp.
`Based on the full record, we determine that one of ordinary skill in the
`art “would have had a working knowledge of the wireless communication
`arts pertinent to the ’168 patent” and “a bachelor’s degree in electrical
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`engineering or equivalent training, and approximately two years of
`experience working in the field of networking and wireless devices” and that
`“[l]ack of work experience can be remedied by additional education, and
`vice versa.” Pet. 10–11 (citing Ex. 1003 ¶¶ 20–22).
`C. Claim Construction
`In an inter partes review, 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. For institution, we did not
`need to interpret expressly any term. Inst. Dec. 10.
`As described below, the parties dispute the interpretation of “remote
`server” implicit in each other’s arguments. See, e.g., Pet. 11; PO Resp. 3–
`13; Pet. Reply 7–13; PO Sur-reply 1–11. Neither party, however, proposes
`an express interpretation. See, e.g., Pet. 11; PO Resp. 3–13; Pet. Reply 7–
`13; PO Sur-reply 1–11.
`For the reasons below, even if we adopted Patent Owner’s implicit
`interpretation of “remote server,” we would still determine that Petitioner
`shows all the limitations of the challenged claims. Thus, based on the full
`record, we determine that no claim term requires express interpretation.
`Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The
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`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)).
`D. Asserted Obviousness Based on Sainton, Baker, and Mueller
`1. Sainton (Ex. 1005)
`Sainton “relates generally to frequency and protocol agile, wireless
`communication devices and systems adapted to enable voice and/or data
`transmission to occur using a variety of 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 examples of
`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
`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
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`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.
`
`
`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
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`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
`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.” Ex. 1006, 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
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`devices include, for example, portable computers and “smart” cellular
`telephones).
`Baker also states that “the framework [can] be compatible and
`integrated with off-device services such as services available to devices in a
`JiniTM 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 to 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 JavaTM interface for the
`requested service.” Id. at 8:11–22.
`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
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`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.” 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.
`4. Independent Claim 2
`a) “A system comprising:”
`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 lookup server 136.
`Id. at 26–27 (citing Ex. 1003 ¶ 71; Ex. 1006, 7:37–38, 8:3–22, Fig. 3).
`Petitioner cites to portions of Sainton that describe it “relates
`generally to frequency and protocol agile, wireless communication devices
`and systems” (Ex. 1005, 1:8–9) and has the objects of providing “an omni-
`modal wireless product” (id. at 2:65–3:1) with a “library of command,
`control, and data transmission protocols [that] may be replaced, or
`supplemented, by information transmitted over the radio frequencies to the
`device” (id. at 5:57–61). The cited portions also describe and show
`communication device 402. Id. at 12:65–13:1, 16:17–27, Figs. 4A, 4B. We
`credit Petitioner’s testimonial evidence regarding the preamble because the
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`cited parts of Sainton support it. Ex. 1003 ¶¶ 66–70; Ex. 1005, 1:8–12,
`2:65–3:1, 5:57–61, 12:65–13:1, 13:3–6, 16:17–27.
`Patent Owner does provide a responsive argument regarding the
`preamble. See generally PO Resp. Based on the full record before us,
`because Sainton describes “frequency and protocol agile, wireless
`communication . . . systems” that include a communication device and
`server, Petitioner persuades us by a preponderance of the evidence, and we
`find, that Sainton teaches or suggests the preamble to the extent that it is
`limiting.
`b) “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,”
`For limitation quoted above, Petitioner relies on Baker’s lookup
`server 136 and argues that it would have been obvious to combine 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).
`Petitioner cites to portions of Baker that describe “[s]ervices also
`include modules or applications located and executable within a local
`machine or device” (Ex. 1006, 1:41–48), “lookup service 136 may reside on
`a separate device such as a network server” (id. at 7:37–38), and “[i]n one
`embodiment, the local network shown in FIG. 3 may be a JiniTM network,
`and the printer 130 and internet television 132 may be JiniTM-enabled
`devices” (id. at 7:43–46). See also id. at 9:5–8 (describing that “an
`assumption is made that devices are able to transparently connect to a
`network, integrate network services with device-resident services, and
`export device-resident services for use by network clients”).
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`Petitioner also cites to portions of Baker that describe “[e]ach device
`is operable to find the JiniTM network lookup service and register the
`services it offers with the lookup service.” Ex. 1006, 7:46–48. Baker
`further describes the “process of requesting a service, called lookup.” Id. at
`8:8–10, 8:14–16, 8:18–22. According to Baker, “[t]he containment
`framework described herein may provide the necessary interface to integrate
`services and applications of small footprint devices such as personal data
`assistants, handheld computers, smart cellular phones, etc. with a network
`service federation.” Id. at 9:9–13. Petitioner also cites to Baker’s Figure 3
`that shows lookup service 136.
`The cited portions of Sainton describe “a library of command, control
`and data transmission protocols appropriate for each supported system” and
`“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, or information downloaded from a
`hardwired connection to another device.” Ex. 1005, 5:52–54, 5:58–62; see
`also id. at 16:17–27 (describing other functions included in the library).
`We credit Petitioner’s testimonial evide
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