`
`
`
`
`
`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.
`———————
`
`IPR2022-00981
`U.S. Patent No. 8,472,936
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`

`

`
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`TABLE OF CONTENTS
`PETITIONER’S EXHIBIT LIST .............................................................................. 4
`I.
`INTRODUCTION ........................................................................................... 7
`II.
`GROUNDS FOR STANDING ........................................................................ 7
`III. NOTE ............................................................................................................... 7
`IV. SUMMARY OF THE ’936 PATENT ............................................................. 7
`V.
`PROSECUTION HISTORY ........................................................................... 9
`VI. LEVEL OF ORDINARY SKILL IN THE ART ...........................................10
`VII. CLAIM CONSTRUCTION ..........................................................................10
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF .................................................................................11
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE .................11
`A. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate .... 11
`B.
`Discretionary denial under the Fintiv factors is not appropriate ........ 12
`1.
`No evidence regarding a stay ................................................... 12
`2.
`Parallel proceeding trial date ................................................... 12
`3.
`Investment in the parallel proceeding ...................................... 13
`4.
`Overlapping issues with the parallel proceeding ..................... 13
`5.
`Petitioner is a defendant ........................................................... 14
`6.
`Other circumstances ................................................................. 14
`Discretionary denial under General Plastic is not appropriate .......... 14
`C.
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....14
`A.
`Challenged Claims ............................................................................. 14
`B.
`Statutory Grounds for Challenges ...................................................... 15
`C.
`Ground 1: Claims 1, 8-11, 13, 15, 17, and 19 are obvious under 35
`U.S.C. § 103(a) over Rautiola in view of Regnier and Sainton ......... 16
`1.
`Summary of Rautiola ............................................................... 16
`2.
`Summary of Regnier ................................................................ 20
`3.
`Summary of Sainton ................................................................ 22
`
`X.
`
`2
`
`

`

`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`
`
`4.
`Reasons to Combine Rautiola, Regnier, and Sainton .............. 23
`Claim 1 ..................................................................................... 30
`5.
`Claim 8 ..................................................................................... 55
`6.
`Claim 9 ..................................................................................... 57
`7.
`Claim 10 ................................................................................... 58
`8.
`Claim 11 ................................................................................... 60
`9.
`10. Claim 13 ................................................................................... 61
`11. Claim 15 ................................................................................... 63
`12. Claim 17 ................................................................................... 66
`13. Claim 19 ................................................................................... 68
`D. Ground 2: Claims 1, 8-9, 11, 13, 17, and 19 are obvious under 35
`U.S.C. §103(a) over Grube in view of Gillig ..................................... 71
`1.
`Summary of Grube ................................................................... 71
`2.
`Summary of Gillig ................................................................... 74
`3.
`Reasons to Combine Grube and Gillig .................................... 76
`4.
`Claim 1 ..................................................................................... 78
`5.
`Claim 8 ..................................................................................... 94
`6.
`Claim 9 ..................................................................................... 94
`7.
`Claim 11 ................................................................................... 95
`8.
`Claim 13 ................................................................................... 97
`9.
`Claim 17 ................................................................................... 98
`10. Claim 19 ................................................................................. 100
`XI. CONCLUSION ............................................................................................102
`XII. MANDATORY NOTICES .........................................................................103
`A.
`Real Parties-in-Interest ..................................................................... 103
`B.
`Related Matters ................................................................................. 103
`C.
`Lead and Back-up Counsel and Service Information ...................... 103
`CERTIFICATE OF WORD COUNT ....................................................................105
`CERTIFICATE OF SERVICE ..............................................................................106
`
`3
`
`

`

`
`
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`Ex.1004
`
`Ex.1005
`Ex.1006
`
`Ex.1007
`
`Ex.1008
`Ex.1009
`
`Ex.1010
`
`Ex.1011
`Ex.1012
`
`Ex.1013
`
`Ex.1014
`Ex.1015
`
`Ex.1016
`
`Ex.1017
`Ex.1018
`
`Ex.1019
`
`Ex.1020
`Ex.1021
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`PETITIONER’S EXHIBIT LIST
`
`U.S. 8,472,936 (“the ’936 patent”)
`
`Prosecution History of U.S. 8,472,936
`
`Declaration of Dr. Michael Kotzin under 37 C.F.R. §1.68
`Curriculum Vitae of Dr. Michael Kotzin
`
`U.S. Patent No. 5,949,775 to Rautiola et al. (“Rautiola”)
`U.S. Patent No. 5,689,708 to Regnier et al. (“Regnier”)
`
`U.S. Patent No. 5,854,985 to Sainton et al. (“Sainton”)
`
`Reserved
`Reserved
`
`Reserved
`
`U.S. Patent No. 5,201,067 to Grube et al. (“Grube”)
`U.S. Patent No. 4,989,230 to Gillig et al. (“Gillig”)
`
`U.S. Patent No. 5,842,037 to Haartsen (“Haartsen”)
`
`U.S. Patent No. 5,982,520 to Weiser et al. (“Weiser”)
`U.S. Patent No. 6,714,983 to Koenck et al. (“Koenck”)
`
`U.S. Patent No. 5,786,921 to Wang et al. (“Wang”)
`
`U.S. Patent No. 5,953,507 to Cheung et al. (“Cheung”)
`U.S. Patent No. 5,793,744 to Kanerva et al. (“Kanerva”)
`
`U.S. Patent No. 5,668,654 to Benjamin et al. (“Benjamin”)
`
`U.S. Patent No. 5,774,247 to Taglione et al. (“Taglione”)
`U.S. Patent No. 5,628,055 to Stein (“Stein”)
`
`4
`
`

`

`
`
`Ex.1022
`
`Ex.1023
`
`Ex.1024
`Ex.1025
`
`Ex.1026
`
`Ex.1027
`Ex.1028
`
`Ex.1029
`
`Ex.1030
`Ex.1031
`
`Ex.1032
`
`Ex.1033
`
`Ex.1034
`Ex.1035
`
`Ex.1036
`
`Ex.1037
`
`Ex.1038
`
`Ex.1039
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`U.S. Patent No. 5,649,308 to Andrews (“Andrews”)
`U.S. Patent No. 5,301,359 to Van den Heuvel et al. (“Van den
`Heuvel”)
`U.S. Patent No. 5,261,117 to Olson (“Olson”)
`U.S. Patent No. 6,279,039 to Bhat et al. (“Bhat”)
`
`U.S. Patent No. 5,748,896 to Daly et al. (“Daly”)
`
`U.S. Patent No. 5,764,639 to Staples et al. (“Staples”)
`U.S. Patent No. 6,097,707 to Hodzic et al. (“Hodzic”)
`Reserved
`
`Reserved
`Reserved
`
`Joint Agreed Scheduling Order; Dkt. 30, Smart Mobile
`Technologies LLC v. Apple Inc., Case No. 6-21-cv-00603 (WDTX)
`Complaint; Dkt. 1, Smart Mobile Technologies LLC v. Apple Inc.,
`Case No. 6-21-cv-00603 (WDTX)
`U.S. Patent No. 5,533,099 to Byrne et al. (“Byrne”)
`Reserved
`
`Reserved
`
`Complaint; Dkt. 1, Smart Mobile Technologies LLC v. Samsung
`Elecs. Co., Case No. 6-21-cv-00701 (WDTX)
`Joint Agreed Scheduling Order; Dkt. 43, Smart Mobile
`Technologies LLC v. Samsung Elecs. Co., Case No. 6-21-cv-00701
`(WDTX)
`Plaintiff’s Preliminary Disclosure of Infringement Contentions and
`Priority Dates; served January 12, 2022, Smart Mobile
`Technologies LLC v. Apple Inc., Case No. 6-21-cv-00603 (WDTX)
`
`5
`
`

`

`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`Ex.1040
`
`U.S. Pat. No. 5,802,465 Hamalainen et al. (“Hamalainen”)
`
`Ex.1041
`
`PCT Pub. No. WO 95/08900 Warsta et al. (“Warsta”)
`
`Ex.1042
`
`Reserved
`
`Ex.1043
`
`Reserved
`
`Ex.1044
`
`Reserved
`
`Ex.1045
`
`Reserved
`
`Ex.1046
`
`U.S. Pat. No. 5,590,133 to Billstrom et al. (“Billstrom”)
`
`Ex.1047
`
`Plaintiff’s Amended Preliminary Disclosure of Priority Dates;
`served April 13, 2022, Smart Mobile Technologies LLC v. Apple
`Inc., Case No. 6-21-cv-00603 (WDTX)
`
`Ex.1048
`
`U.S. Patent No. 5,764,639 to Staples et al. (“Staples”)
`
`Ex.1049
`
`U.S. Patent No. 5,740,231 to Cohn et al. (“Cohn”)
`
`Ex.1050
`
`U.S. Patent No. 5,351,186 to Bullock et al. (“Bullock”)
`
`
`
`
`
`
`
`
`6
`
`

`

`
`I.
`
`INTRODUCTION
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
`
`America, Inc. (collectively, “Petitioner”) respectfully request that the Board cancel
`
`as unpatentable under (pre-AIA) 35 U.S.C. §103(a) claims 1, 8-11, 13, 15, 17, and
`
`19 (the “Challenged Claims”) of U.S. Patent No. 8,472,936 (the “’936 patent,”
`
`Ex.1001).
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’936 patent is eligible for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR challenging the patent claims. 37
`
`C.F.R. §42.104(a).
`
`III. NOTE
`Petitioner cites to exhibits’ original page numbers. Emphasis in quoted
`
`material has been added. Claim terms are presented in italics.
`
`IV. SUMMARY OF THE ’936 PATENT
`
`The ’936 patent is directed to well-known aspects of wireless devices: (i) the
`
`ability to move between local and public networks, (ii) dynamically converting
`
`between functions, and (iii) remotely controlling home appliances.
`
`First, the ’936 patent describes that a wireless device is programmed to
`
`move between “various environments … such as [] public networks … office
`
`locations … or in the home.” Ex.1001, 2:35-40. The wireless device uses
`
`7
`
`

`

`
`“communication protocols [that] configure the system for communication.”
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`Ex.1001, 1:52-55.
`
`Second, the ’936 patent further describes the wireless device in
`
`communication with “Server C.” Ex.1001, Fig.2A, Abstract, 3:40-51. When a
`
`wireless device “wishes to use the services of Server C 214, the Server C 214
`
`delivers the content or performs functions as requested.” Ex.1001, 3:52-54. As
`
`shown below, wireless device 202 connects to Server C 214 via wireless carrier
`
`204. Ex.1001, Fig.2A. The wireless device can also connect to Server C via a
`
`“local office wireless network” or a “local home wireless network.” Ex.1001,
`
`Figs.2B-2C, 4:24, 4:65.
`
`8
`
`

`

`
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`Ex.1001, Fig.2A.
`
`
`
`Third, in a home network, the wireless device “can be a TV remote 272 …
`
`or perform other household duties.” Ex.1001, 4:54-57; Ex.1003, ¶¶27-32.
`
`V.
`
`PROSECUTION HISTORY
`
`The ’936 patent was filed September 13, 2012 as U.S. Application No.
`
`13/615,274. Ex.1002, 160. The ’936 patent was filed as a continuation of several
`
`applications, including as a continuation-in-part of U.S. Application No.
`
`08/764,903 filed December 16, 1996. Ex.1002, 127. The ’936 patent issued on
`
`June 25, 2013. Ex.1002, 1.
`
`9
`
`

`

`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`A Person of Ordinary Skill in The Art (“POSITA”) in December of 1996
`
`would have 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. Lack of work experience can be remedied by additional
`
`education, and vice versa. Ex.1003, ¶¶20-22.
`
`VII. CLAIM CONSTRUCTION
`
`In an inter partes review, claims “shall be 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). The Board only construes the claims to the extent necessary to resolve
`
`the underlying controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner submits that for the purposes
`
`10
`
`

`

`
`of this proceeding, the terms of the Challenged Claims should be given their plain
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`and ordinary meaning, and no terms require specific construction.1 Ex.1003, ¶33.
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board institute a trial for inter partes review and
`
`cancel the Challenged Claims in view of the analysis below.
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE
`A. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate
`
`Denial under §325(d) is not warranted because the challenges presented in
`
`this petition are neither cumulative nor redundant to the prosecution of the ’936
`
`patent. The Examiner did not consider any of the references relied upon in this
`
`petition. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced
`
`Bionics”). Therefore, discretionary denial under §325(d) is not appropriate.
`
`
`1 Petitioner is not conceding that each claim satisfies all statutory requirements,
`
`such as §§101 and 112, nor is Petitioner waiving any arguments concerning claim
`
`scope or grounds that can only be raised in district court. For this petition,
`
`Petitioner applies prior art in a manner consistent with Patent Owner’s allegations
`
`of infringement before the district court.
`
`11
`
`

`

`
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`B. Discretionary denial under the Fintiv factors is not appropriate
`
`The six factors considered for §314 denial strongly favor institution. See
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020).
`
`1.
`
`No evidence regarding a stay
`
`No motion to stay has been filed. Sand Revolution II LLC v. Continental
`
`Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16,
`
`2020) (informative); Dish Network L.L.C. v. Broadband iTV, Inc., IPR2020-01359,
`
`Paper 15 (Feb. 12, 2021). Thus, this factor is neutral.
`
`2.
`
`Parallel proceeding trial date
`
`As of the filing of this petition, the district court has issued its first docket
`
`control order setting jury selection for trial to begin on October 23, 2023. Ex.1032,
`
`4; Ex.1038, 4. A claim construction hearing is scheduled for August 31, 2022.
`
`Ex.1032, 2; Ex.1038, 2. The expected date for a Final Written Decision in this case
`
`is by early November 2023, which is around the time of trial and possibly before
`
`trial; and a Final Written Decision on the related patent U.S. 8,442,501 (IPR2022-
`
`00808) is expected by October 26, 2023, which is prior to completion of trial.
`
`As a Final Written Decision is expected around trial and possibly before
`
`trial, and because Petitioner has worked expeditiously to prepare this petition
`
`approximately 4 months after receiving infringement contentions, this factor
`
`weighs against discretionary denial. Fintiv, Paper 11 at 11-12.
`
`12
`
`

`

`
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`3.
`
`Investment in the parallel proceeding
`
`The co-pending litigations are in their early stages, and the investment in
`
`them has been minimal. Claim construction has not yet occurred, fact discovery
`
`has not yet begun and will not close until March 29, 2023, and expert discovery
`
`has not yet begun and will not close until June 21, 2023. Ex.1032, 3-4; Ex.1038, 3-
`
`4; see also PEAG LLC v. Varta Microbattery GmbH, IPR2020-01214, Paper 8 at
`
`17 (Jan. 6, 2021) (finding that since no claim construction hearing had yet been
`
`held and discovery was not completed, the little investment in the parallel
`
`proceeding weighed against discretionary denial).
`
`4. Overlapping issues with the parallel proceeding
`
`The prior art addressed in the Petition is also a part of Petitioner’s invalidity
`
`contentions in the litigation, which were served on plaintiff Smart Mobile on April
`
`6, 2022. Instituting a proceeding will allow the Board to address the art, and the
`
`litigation issues will be narrowed due to the estoppel provisions of 35 U.S.C.
`
`§315(e)(2).
`
`If the Board institutes trial, Petitioner will cease asserting in the district court
`
`litigation any invalidity contention based on the grounds presented in this petition.
`
`Institution will not result in any overlapping consideration of invalidity arguments.
`
`This factor weighs against discretionary denial.
`
`13
`
`

`

`
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`5.
`
`Petitioner is a defendant
`
`Petitioner is a defendant in the litigations. Ex.1033, 1; Ex.1037, 1. That is
`
`true of most Petitioners in IPR proceedings. Accordingly, this factor should not be
`
`a basis for denying institution.
`
`6. Other circumstances
`
`The prior art presented in this Petition renders the Challenged Claims
`
`unpatentable as obvious. The merits of Petitioner’s arguments are strong, and this
`
`factor weighs against discretionary denial.
`
`Because the Fintiv factors are either neutral or weigh against discretionary
`
`denial, institution should not be denied on discretionary factors.
`
`C. Discretionary denial under General Plastic is not appropriate
`
`The ’936 patent has not been challenged in any prior IPR petition, so none of
`
`General Plastic discretionary institution factors apply to this Petition. See General
`
`Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at
`
`16 (PTAB Sept. 6, 2016) (Section II.B.4.i. precedential).
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
`
`Petitioner challenges claims 1, 8‐11, 13, 15, 17 and 19, which correspond to
`
`the claims asserted in the plaintiff’s infringement contentions in the co-pending
`
`litigations.
`
`14
`
`

`

`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`B.
`
`Statutory Grounds for Challenges
`
`Grounds
`#1
`
`#2
`
`Claims
`1, 8‐11, 13,
`15, 17, 19
`1, 8-9, 11,
`13, 17, 19
`
`Basis
`§ 103 (Pre-AIA) Rautiola in view of Regnier and
`Sainton
`§103 (Pre-AIA) Grube in view of Gillig
`
`Ground #1 includes the Rautiola, Regnier, and Sainton references, which are
`
`
`
`
`
`all prior art to the earliest claimed priority date on the cover of the ’936 patent,
`
`December 16, 1996. Ex.1001, 1.
`
`Patent Owner initially alleged in the related district court proceedings that
`
`the ’936 patent was entitled to a priority date in November 1995. Ex.1039, 1.
`
`Ground #2 includes the Grube and Gillig references, which are prior art to the
`
`alleged conception date of November 1995. Petitioner does not concede the ’936
`
`patent claims were conceived and/or reduced to practice in November 1995. On
`
`April 13, 2022, one week after the IPR petition on related patent U.S. 8,442,501
`
`(IPR2022-00808) was served and defendants’ invalidity contentions were due in
`
`the related litigations (both on April 6, 2022), Patent Owner served an amended
`
`alleged §120 priority date of December 16, 1996. Ex.1047, 1.
`
`U.S. 5,949,775 to Rautiola et al. (“Rautiola”) was filed August 30, 1996.
`
`Rautiola is prior art under 35 U.S.C. §102(e).
`
`U.S. 5,689,708 to Regnier et al. (“Regnier”) was filed March 31, 1995.
`
`15
`
`

`

`
`Regnier is prior art under 35 U.S.C. §102(e).
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`U.S. 5,854,985 to Sainton et al. (“Sainton”) was filed September 4, 1996.
`
`Sainton is prior art under 35 U.S.C. §102(e).
`
`U.S. 5,201,067 to Grube et al. (“Grube”) issued on April 6, 1993. Grube is
`
`prior art under 35 U.S.C. §102(b), including under the alleged conception date.
`
`U.S. 4,989,230 to Gillig et al. (“Gillig”) issued on January 29, 1991. Gillig
`
`is prior art under 35 U.S.C. §102(b), including under the alleged conception date.
`
`Petitioner’s analysis also cites additional prior art to demonstrate the
`
`background knowledge of a POSITA and to provide contemporaneous context to
`
`support Petitioner’s assertions regarding what a POSITA would have understood
`
`from the prior art. See Yeda Research v. Mylan Pharm. Inc., 906 F.3d 1031, 1041-
`
`1042 (Fed. Cir. 2018) (affirming the use of “supporting evidence relied upon to
`
`support the challenge”); 37 C.F.R. §42.104(b).
`
`C. Ground 1: Claims 1, 8-11, 13, 15, 17, and 19 are obvious under 35
`U.S.C. § 103(a) over Rautiola in view of Regnier and Sainton
`
`1.
`
`Summary of Rautiola
`
`
`
`Rautiola describes a LAN with wireless devices that (i) move between local
`
`and public networks, (ii) communicate with an office server, and (iii) control other
`
`devices.
`
`First, Rautiola describes “integrated office communication systems
`
`16
`
`

`

`
`employing a local area network (LAN) for intra-office communications.” Ex.1005,
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`Abstract. The “integrated office communication systems” include “a local area
`
`network [LAN] in the office and a cellular radio network between office units.”
`
`Ex.1005, 3:36-38.
`
`Rautiola further explains that client devices (“terminals”) communicate via
`
`wireless connections both inside and outside the LAN; as one example, Rautiola
`
`explains that a wireless device can be at the “user’s home” and wirelessly connects
`
`to a “nanocell” that has “a connection to the local area network in the office.”
`
`Ex.1005, 4:37-38. Rautiola further teaches that terminals in its system switch
`
`networks as, for instance, a “terminal crosses the administrative border between the
`
`office communication system … and the public cellular radio network.” Ex.1005,
`
`13:33-35. In Fig.2, terminals connect wirelessly to the office LAN and public
`
`cellular networks, and an example wireless terminal 9 is illustrated as a portable
`
`laptop computer.
`
`17
`
`

`

`
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`Public cellular wireless connection
`for devices outside LAN
`
`Wireless connections for
`devices inside LAN
`
`Ex.1005, Fig.2 (annotated); Ex.1003, ¶39.
`
`
`
`In Fig.3 below, Rautiola illustrates the laptop with a wireless connection
`
`outside the office LAN via a nanocell at the user’s home. Ex.1005, Fig.3.
`
`18
`
`

`

`
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`Wireless connection of laptop
`terminal to home LAN nanocell
`
`Ex.1005, Fig.3 (annotated); Ex.1003, ¶40.
`
`
`
`Second, Rautiola explains that terminals interact with “one or more servers
`
`which take care of certain functions related to the distribution of resources, such as
`
`the database services and voice mail and e-mail services.” Ex.1005, 4:30-34.
`
`Third, Rautiola explains that the terminals on the office LAN have access to
`
`“network-compatible devices” including “printers.” Ex.1005, 7:20-22; Ex.1003,
`
`¶¶37-42.
`
`19
`
`

`

`
`
`2.
`
`Summary of Regnier
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`Regnier provides additional details of a computer network that provides
`
`services to client devices. Regnier describes a “resource manager in a client/server
`
`computer network” that “controls the availability of system resources … for each
`
`of multiple application programs.” Ex.1006, Abstract.
`
`Regnier explains that “[m]ost present client/server networks application
`
`programs are split into two portions” where a “server portion executes within the
`
`server computer, while a separate client portion executes within each client
`
`computer.” Ex.1006, 1:35-40. Regnier’s application resource manager operates
`
`using a “control program located in the server” such as “[s]erver control module
`
`240.” Ex.1006, 3:41-42, 5:16.
`
`The server control module maintains user profiles 252-253 where each
`
`profile “lists the names of various application programs which are subject to
`
`resource manager 251.” Ex.1006, 8:33-34. The user profiles include “a value 404
`
`showing a status of that resource for that particular user when executing that
`
`particular application.” Ex.1006, 8:17-20. As illustrated in Fig.3 below, each time a
`
`user selects an application (block 307), the server’s resource manager determines
`
`whether the user’s device is authorized or enabled to switch to the desired
`
`functionality (block 311). Ex.1006, 6:63-7:9; Ex.1003, ¶¶43-46.
`
`20
`
`

`

`
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`When a user selects a server application for using a function
`at the client device (step 307) the server’s resource manager
`determines whether the user is allowed to be dynamically
`reconfigured to use the function (step 311)
`
`Ex.1006, Fig.3 (annotated); Ex.1003, ¶45.
`
`
`
`21
`
`

`

`
`
`3.
`
`Summary of Sainton
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`Sainton provides details of how wireless devices communicate across
`
`different networks. In particular, Sainton describes “frequency and protocol agile,
`
`wireless communication devices … using a variety of different radio frequencies,
`
`transmission protocols and radio infrastructures.” Ex.1007, 1:8-12. As an example
`
`wireless device, Sainton describes a portable personal computer including “a
`
`PCMCIA card.” Ex.1007, 15:45-46.
`
`Portable laptop computer 702 supporting multi-frequency
`and multi-protocol communications using PCMCIA card 701
`
`Ex.1007, Fig.7 (annotated); Ex.1003, ¶47.
`
`
`
`Sainton explains that “a library of command, control and data transmission
`
`protocols appropriate for each supported system may be included in circuit 1.”
`
`22
`
`

`

`
`Ex.1007, 5:52-54. Further, the laptop can “have a preprogrammed routine for
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`selecting information carriers based on varying criteria.” Ex.1007, 16:32-34;
`
`Ex.1003, ¶¶47-49.
`
`4.
`
`Reasons to Combine Rautiola, Regnier, and Sainton
`
`A POSITA when considering the teachings of Rautiola would have also
`
`considered the teachings of Regnier and Sainton, as they are analogous prior art,
`
`with each pertaining to the same field of endeavor, namely, wireless networking.
`
`See Ex.1005, Abstract; Ex.1006, Abstract, 4:26-28; Ex.1007, Abstract; Ex.1003,
`
`¶¶50-51.
`
`Rautiola teaches that its system beneficially allows mobile client devices to
`
`leave the office while still accessing services of the office server by switching the
`
`connection to a public cellular network or home LAN. Ex.1005, Figs.2-3, 4:35-38,
`
`8:61-63, 13:55-57. Rautiola also teaches that a laptop is an example mobile client
`
`device. Ex.1005, Figs.2-3. A POSITA would have understood that the laptop of
`
`Rautiola is designed for portability and would be one of the devices leaving the
`
`office while still needing to connect to a public cellular network or home LAN to
`
`access the services provided by the officer server. Ex.1005, Figs.2-3, 3:36-38,
`
`4:35-38, 13:32-35. Indeed, Sainton illustrates it was well known that laptops
`
`wirelessly connect to public cellular networks using a PCMCIA card and include
`
`functional instructions for switching between LAN and cellular networks. Ex.1007,
`
`23
`
`

`

`
`Fig.7, 5:14-29, 15:45-46, 16:28-34. Regnier further teaches a technique for how a
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`client device could access services provided from an office server. Ex.1006,
`
`Abstract, Figs.2-3.
`
`a) Rautiola and Sainton
`
`A POSITA would have considered it obvious, beneficial, and predictable to
`
`implement Sainton’s technique, which enables a laptop to switch networks and
`
`protocols, with Rautiola’s laptop terminal.
`
`As discussed above, Rautiola describes that one example of a “mobile
`
`terminal” is a laptop. Ex.1005, Figs.2-3. Rautiola further teaches that the “[mobile]
`
`terminal crosses the administrative border between the office communication
`
`system … and the public cellular radio network.” Ex.1005, 3:46-4:16, 13:32-35.
`
`After a terminal crosses the office LAN border, “a handover has been performed to
`
`a connection via the public cellular radio network.” Ex.1005, 13:40-49.
`
`To achieve Rautiola’s goal of wireless terminals moving between an office
`
`LAN and a public cellular network, a POSITA would have recognized that a
`
`mobile terminal, such as the laptop, needed the capability to connect to a public
`
`cellular network. See, e.g., Ex.1005, Figs.2-3, 13:32-35; Ex.1007, 16:28-34;
`
`Ex.1003, ¶¶52-54.
`
`Sainton reflects it was well known to a POSITA that cellular network
`
`capability could be added to a laptop using a PCMCIA card. In more detail,
`
`24
`
`

`

`
`Sainton describes a portable computer 702 having a “omni-modal radio
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`communications card [] in the form of a PCMCIA card.” Ex.1007, 15:24-26. The
`
`PCMCIA card supports wireless communications via “cellular radio transmission
`
`through antennae 2.” Ex.1007, 15:45-46. Sainton explains that such a laptop “will
`
`be capable of utilizing any one of the wireless data services within a given
`
`geographic area.” Ex.1007, 16:28-34. Further, “a library of command, control and
`
`data transmission protocols appropriate for each supported system may be included
`
`in” the wireless device’s memory. Ex.1007, 5:52-54.
`
`Indeed, Sainton explains that its PCMCIA card technique is “advantageously
`
`implemented on a removable card with a standardized interface connector or
`
`connectors, so that it can then be selectively inserted into and removed from a
`
`variety of devices to provide the devices with radio information transmission
`
`capability.” Ex.1007, 4:66-5:4; Ex.1003, ¶¶55-56.
`
` Sainton also provides an advantageous technique for how a terminal in
`
`Rautiola’s system would determine when it is leaving the wireless area of one
`
`network and entering that of another network. Ex.1007, 16:28-34. A POSITA
`
`would have been motivated to incorporate this teaching in Rautiola’s system
`
`because “[a]ny portable unit which is capable of interacting with more than one
`
`service provider or radio infrastructure would obviously have advantages over a
`
`portable unit which is capable of accessing only a single service provider.”
`
`25
`
`

`

`
`Ex.1007, 1:43-47; Ex.1003, ¶¶57-58.
`
`IPR2022-00981 Petition
`Inter Partes Review of U.S. 8,472,936
`
`The combination where Rautiola’s laptop uses IR in the wireless LAN and
`
`public cellular outside of the LAN also would have been predictable because it was
`
`well known to POSITAs for a laptop to include both radio and IR capabilities.
`
`Ex.1003, ¶¶59-60 (citing Exs.1013-1015). Further, it was well known that a laptop
`
`would use an IR wireless LAN connection when available because it provided
`
`much higher data rates than GSM. Ex.1003, ¶¶61-65 (citing Exs.1016-1024).
`
`A POSITA also would have noted that using Sainton’s PCMCIA card for
`
`wireless connectivity would include advantages compared to coupling the laptop to
`
`a cellular telephone as in Rautiola’s Fig.3, including reducing the number of
`
`devices needed for the laptop to connect to the office server. Ex.1003, ¶54.
`
`A POSITA would have also found the combination predictable. For
`
`example, Rautiola already contemplated using a PCMCIA card with its terminals
`
`and it would have been obvious to a POSITA to use PCMCIA cards on the mobile
`
`terminals. Ex.1005, 10:49-53; Ex.1003, ¶66. And, Sainton states that its techniques
`
`“allow manufacturers to customize the operation of the circuit with little or no
`
`additional components” and could “quickly and easily integrate the complex
`
`features of the device into a user friendly consumer product.” Ex.1007, 10:34-42.
`
`Accordingly, a POSITA would have found it obvious to apply Sainton’s
`
`teachings to Rautiola’s system because the combination merely amounts to
`
`26
`
`

`

`
`applying a known wireless connectivity solution to a wireles