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.
`———————
`
`IPR2022-00982
`U.S. Patent No. 8,472,937
`_____________________
`
`DECLARATION OF MICHAEL D. KOTZIN, PH.D.
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW
`
`1
`
`Ex.1003
`APPLE INC. / Page 1 of 135
`
`

`

`Kotzin Declaration
`
`
`Inter Partes Review of U.S. 8,472,937
`
`
`
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 4
`I.
`Qualifications and Professional Experience .................................................... 6
`II.
`III. Level of Ordinary Skill in the Art ................................................................... 9
`IV. Relevant Legal Standards .............................................................................. 10
`V. Overview of the ’937 Patent .......................................................................... 12
`VI. Claim Construction ........................................................................................ 15
`VII.
`Identification of how the Claims are Unpatentable ....................................... 15
`A. Ground 1: Claims 1-3 and 16-18 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 ................................................................ 19
`3.
`Summary of Sainton ................................................................ 21
`4.
`Reasons to Combine Rautiola, Regnier, and Sainton .............. 23
`5.
`Claim 1 ..................................................................................... 42
`6.
`Claim 2 ..................................................................................... 74
`7.
`Claim 3 ..................................................................................... 78
`8.
`Claim 16 ................................................................................... 81
`9.
`Claim 17 ................................................................................... 81
`10.
`Claim 18 ................................................................................... 82
`Ground 2: Claims 5-6 are obvious under 35 U.S.C. § 103(a)
`over Rautiola in view of Regnier, Sainton, and Wilson...................... 85
`1.
`Summary of Wilson ................................................................. 85
`2.
`Reasons to Combine Rautiola, Regnier, Sainton, and Wilson 87
`3.
`Claim 5 ..................................................................................... 92
`
`B.
`
`
`
`
`2
`
`
`
`Ex.1003
`APPLE INC. / Page 2 of 135
`
`

`

`Kotzin Declaration
`
`
`Inter Partes Review of U.S. 8,472,937
`
`C.
`
`E.
`
`
`Claim 6 ..................................................................................... 96
`4.
`Ground 3: Claim 10 is obvious under 35 U.S.C. § 103(a) over
`Rautiola in view of Regnier, Sainton, and Salazar ............................. 98
`1.
`Summary of Salazar ................................................................. 98
`2.
`Reasons to Combine Rautiola, Regnier, Sainton, and Salazar 98
`3.
`Claim 10 ................................................................................. 102
`D. Ground 4: Claim 13 is obvious under 35 U.S.C. § 103(a) over
`Rautiola in view of Regnier, Sainton, and Crites .............................. 104
`1.
`Summary of Crites ................................................................. 104
`2.
`Reasons to Combine Rautiola, Regnier, Sainton, and Crites 105
`3.
`Claim 13 ................................................................................. 107
`Ground 5: Claims 1-2, 5-6, 10, and 17 are obvious under 35
`U.S.C. § 103(a) over Grube in view of Gillig. .................................. 109
`1.
`Summary of Grube ................................................................ 109
`2.
`Summary of Gillig ................................................................. 111
`3.
`Reasons to Combine Grube and Gillig .................................. 113
`4.
`Claim 1 ................................................................................... 115
`5.
`Claim 2 ................................................................................... 129
`6.
`Claim 5 ................................................................................... 130
`7.
`Claim 6 ................................................................................... 132
`8.
`Claim 10 ................................................................................. 132
`9.
`Claim 17 ................................................................................. 133
`VIII. Conclusion ................................................................................................... 135
`
`
`
`
`
`
`3
`
`
`
`Ex.1003
`APPLE INC. / Page 3 of 135
`
`

`

`Kotzin Declaration
`
`
`Inter Partes Review of U.S. 8,472,937
`
`
`
`I, Michael D. Kotzin, Ph.D., do hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I am making this declaration at the request of Apple Inc., Samsung
`
`Electronics Co., Ltd., and Samsung Electronics America, Inc. in the matter of the
`
`Inter Partes Review of U.S. Patent No. 8,472,937 (“the ’937 Patent,” Ex.1001) to
`
`Rao et al.
`
`2.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate. I am also being reimbursed for reasonable and customary expenses
`
`associated with my work and testimony in this investigation. My compensation is
`
`not contingent on the outcome of this matter or the specifics of my testimony, and I
`
`have no other interest in this case or the parties thereto.
`
`3.
`
`I have been asked to provide my opinions regarding whether claims 1-
`
`3, 5-6, 10, 13, and 16-18 (“the Challenged Claims”) of the ’937 Patent are
`
`unpatentable as they would have been obvious to a person having ordinary skill in
`
`the art (“POSITA”) at the time of the alleged invention, in light of the prior art. It
`
`is my opinion that all of the limitations of the Challenged Claims would have been
`
`obvious to a POSITA.
`
`4.
`
`a.
`
`In the preparation of this declaration, I have studied:
`
`the ’937 Patent, Ex.1001;
`
`
`
`
`4
`
`
`
`Ex.1003
`APPLE INC. / Page 4 of 135
`
`

`

`Kotzin Declaration
`
`
`Inter Partes Review of U.S. 8,472,937
`
`b.
`
`the prosecution history of the ’937 Patent (“’937 File History”),
`
`Ex.1002;
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`h.
`
`i.
`
`j.
`
`5.
`
`U.S. Patent No. 5,949,775 to Rautiola et al. (“Rautiola”), Ex.1005;
`
`U.S. Patent No. 5,689,708 to Regnier et al. (“Regnier”), Ex.1006;
`
`U.S. Patent No. 5,854,985 to Sainton et al. (“Sainton”), Ex.1007;
`
`U.S. Patent No. 5,400,246 to Wilson et al. (“Wilson”), Ex.1008;
`
`U.S. Patent No. 5,802,467 to Salazar et al. (“Salazar”), Ex.1009;
`
`U.S. Patent No. 6,097,380 to Crites et al. (“Crites”), Ex.1010;
`
`U.S. Patent No. 5,201,067 to Grube et al. (“Grube”), Ex.1011; and
`
`U.S. Patent No. 4,989,230 to Gillig et al. (“Gillig”), Ex.1012.
`
`In forming the opinions expressed below, I have considered:
`
`the documents listed above;
`
`the relevant legal standards, including the standard for obviousness,
`
`and any additional authoritative documents as cited in the body of this
`
`declaration; and
`
`my own knowledge and experience based upon my work in the field
`
`of networking as described below.
`
`6.
`
`Unless otherwise noted, all emphasis in any quoted material has been
`
`added.
`
`
`
`
`5
`
`
`
`
`
`Ex.1003
`APPLE INC. / Page 5 of 135
`
`

`

`Kotzin Declaration
`
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`Inter Partes Review of U.S. 8,472,937
`
`
`
`7. My academic and professional background is in electrical engineering
`
`and computer science, and I have been working in those fields since the
`
`completion of my B.S. in electrical engineering almost 45 years ago. My complete
`
`qualifications and professional experience are described in my Curriculum Vitae, a
`
`copy of which can be found in Ex.1004. The following is a brief summary of my
`
`relevant qualifications and professional experience.
`
`8.
`
`I received a B.S. in chemistry and a B.S. in electrical engineering
`
`from the University of Illinois in 1975, an M.S. in electrical engineering from
`
`Northwestern University in 1977, and a Ph.D. in electrical engineering and
`
`computer science from Northwestern University in 1981. During my graduate
`
`study at Northwestern (1975-1981), I performed research on communications and
`
`signal processing. My research dissertation was titled “Short Range
`
`Communication Using Diffusely Scattered Infrared Radiation.”
`
`9.
`
`I worked at Motorola, Inc. in various professional roles between 1975
`
`and 2009. From 1975 to 1989, I worked for several Motorola Research labs in
`
`Illinois, where I developed technology related to private and public radio
`
`communication systems.
`
`10. Between 1989 and 1998, I was the Vice President of Technical Staff
`
`and Director of Research and Advanced Technology in Motorola’s Cellular
`
`
`
`
`6
`
`
`
`Ex.1003
`APPLE INC. / Page 6 of 135
`
`

`

`Kotzin Declaration
`
`
`Infrastructure and Networks division. Between 1998 and 2007, I transitioned to the
`
`Inter Partes Review of U.S. 8,472,937
`
`Office of the Chief Technology Officer for Motorola’s Mobile Devices division. In
`
`these roles, I provided leadership and strategic directions for the adoption and
`
`creation of new technology for cellular base station and handheld devices.
`
`11. Between 2006 and 2009, I was the Vice President of Technical Staff
`
`in the Corporate Law Department of Motorola’s Patent Operations division. In this
`
`role, I created technology portfolio strategy across businesses including
`
`quantitative goals for new and retained intellectual property assets. I also managed
`
`processes and corporate-wide teams related to creating and maintaining patent
`
`portfolios.
`
`12.
`
`In the late 1990s through about 2005, I directly supervised and
`
`worked with engineers in the United States and Europe in developing technology
`
`focused on radio layer and signaling protocols. As part of this work, we developed
`
`and provided technical contributions for the 3rd Generation Partnership Project
`
`(“3GPP”) meetings.
`
`13. Since 2009, I have been the President of MDK Consulting, Inc.,
`
`where I regularly provide technical consulting services on all aspects of wireless
`
`systems, products, and technology.
`
`14. Over the past several decades I have performed extensive research on
`
`various aspects of systems, devices, and networks that acquire, store, process, and
`
`
`
`
`7
`
`
`
`Ex.1003
`APPLE INC. / Page 7 of 135
`
`

`

`Kotzin Declaration
`
`transmit information. My research has addressed software, algorithms, hardware,
`
`Inter Partes Review of U.S. 8,472,937
`
`
`
`networking, protocols and other aspects of these systems and devices, and has
`
`included work on wireless mobile devices and systems, signal processing and
`
`communications, hardware design methodologies, and cybersecurity. For example,
`
`in the 1970s and 1980s, I worked on technologies—including cellular, public
`
`safety, and private mobile—that formed the basis and was essential to several new
`
`digital radio systems.
`
`15. This work transitioned in the early 1990s to digital cellular applied
`
`research and development on cellular infrastructure and mobile devices. As a
`
`senior technologist and leader, first in the cellular infrastructure division and
`
`subsequently the mobile device division at Motorola, I was a significant participant
`
`and contributor to the development of new and evolving digital systems. Some of
`
`these evolutions included the adoption of functional improvements, continuing
`
`quality improvements, system generation advancements (e.g., GSM, W-CDMA,
`
`LTE, etc.), etc.
`
`16.
`
`I am an inventor on approximately 134 issued U.S. patents and over
`
`500 issued patents worldwide in areas including signal processing, data
`
`compression, communications, and wireless systems. I have published
`
`approximately 20 technical articles in peer-reviewed engineering journals and
`
`conference proceedings.
`
`
`
`
`8
`
`
`
`Ex.1003
`APPLE INC. / Page 8 of 135
`
`

`

`Kotzin Declaration
`
`
`Inter Partes Review of U.S. 8,472,937
`
`
`
`17.
`
`In addition to my professional experience, I have previously taught
`
`courses in electrical engineering at Northwestern University as an Adjunct
`
`Professor. I have also served as Chairman and member of numerous Motorola
`
`patent committees.
`
`18. My Curriculum Vitae (Ex.1004) lists my publication record in
`
`archival journals, international conferences, and workshops and further includes a
`
`list of granted patents.
`
`19. Based on my experience and education, I consider myself to be an
`
`expert at least in the fields of networking and wireless devices. As of the earliest
`
`priority date of the ’937 Patent, I was at least a person of ordinary skill in the art of
`
`the ’937 Patent, and I had personal knowledge of the technologies involved in the
`
`’937 Patent.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`20.
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`21. A person of ordinary skill in the art (“POSITA”) in the field of the
`
`’937 Patent, as of its earliest possible filing date of December 16, 1996, would
`
`
`
`
`9
`
`
`
`Ex.1003
`APPLE INC. / Page 9 of 135
`
`

`

`Kotzin Declaration
`
`have been someone knowledgeable and familiar with the wireless networking arts
`
`Inter Partes Review of U.S. 8,472,937
`
`
`
`that are pertinent to the ’937 Patent. That person 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.
`
`22. For purposes of this Declaration, in general, and unless otherwise
`
`noted, my statements and opinions, such as those regarding my experience and the
`
`understanding of a POSITA generally (and specifically related to the references I
`
`consulted herein), reflect the knowledge that existed in the field as of the priority
`
`date of the ’937 Patent. Unless otherwise stated, when I provide my understanding
`
`and analysis below, it is consistent with the level of a POSITA prior to the priority
`
`date of the ’937 Patent.
`
`IV. RELEVANT LEGAL STANDARDS
`
`23.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’937 Patent, I am relying on certain basic
`
`legal principles that counsel have explained to me. These principles are discussed
`
`below.
`
`24.
`
`I understand that prior art to the ’937 Patent includes patents and
`
`printed publications in the relevant art that predate the priority date of the alleged
`
`invention recited in the ’937 Patent. For purposes of this Declaration, I am
`
`
`
`
`10
`
`
`
`Ex.1003
`APPLE INC. / Page 10 of 135
`
`

`

`Kotzin Declaration
`
`applying December 16, 1996 as the earliest possible priority date of the ’937
`
`Inter Partes Review of U.S. 8,472,937
`
`
`
`Patent. I have been informed that patent owner has alleged a conception date of
`
`November 1995; my opinion does not change that under either alleged priority
`
`date, the ’937 Patent is invalid, as evidenced by the invalidity grounds discussed
`
`herein.
`
`25.
`
`I have been informed that a claimed invention is unpatentable under
`
`35 U.S.C. § 103 if the differences between the invention 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 the subject
`
`matter pertains. I have also been informed by counsel that the obviousness analysis
`
`takes into account factual inquiries including the level of ordinary skill in the art,
`
`the scope and content of the prior art, and the differences between the prior art and
`
`the claimed subject matter.
`
`26.
`
`I have been informed by counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. Some of these rationales include the
`
`following: (a) combining prior art elements according to known methods to yield
`
`predictable results; (b) simple substitution of one known element for another to
`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`
`
`
`11
`
`
`
`Ex.1003
`APPLE INC. / Page 11 of 135
`
`

`

`Kotzin Declaration
`
`device (method, or product) ready for improvement to yield predictable results; (e)
`
`Inter Partes Review of U.S. 8,472,937
`
`
`
`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
`
`in the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
`
`invention.
`
`V. OVERVIEW OF THE ’937 PATENT
`
`27. The ’937 patent is directed to two well-known functional aspects of a
`
`wireless device: (i) the ability to move between a local network and a public
`
`network and (ii) remotely controlling of equipment, such as TVs and copiers.
`
`28. For instance, the ’937 Patent generally relates to a “wireless
`
`communication and control system including a wireless device.” Ex.1001,
`
`Abstract. According to the ’937 Patent, there “is a need for a method to bypass the
`
`public wireless carrier … for local office or home networks where the public
`
`carrier services are not being utilized, without changing devices.” Ex.1001, 1:38-
`
`41.
`
`29. The ’937 Patent describes a wireless device that is “software
`
`reconfigurable for the various environments … such as the public networks in one
`
`or more countries, … office locations operating at different frequencies, or in the
`
`home.” Ex.1001, 2:35-40. The wireless device uses “communication protocols
`
`
`
`
`12
`
`
`
`Ex.1003
`APPLE INC. / Page 12 of 135
`
`

`

`Kotzin Declaration
`
`[that] configure the system for communication.” Ex.1001, 1:52-55. However, as
`
`Inter Partes Review of U.S. 8,472,937
`
`explained below, a wireless device storing communication protocols and software
`
`for moving between public carrier and local networks was already well known at
`
`the time the ’937 Patent was filed. Indeed, the ’937 Patent itself explains as
`
`“Background” that “mobile devices (MD) include the ability to reconfigure the
`
`MD for different environments and applications.” Ex.1001, 1:24-25.
`
`30. The ’937 Patent further describes “a communication and control
`
`system” including a “wireless device” and “Server C.” Ex.1001, Fig. 2A, 3:40-51.
`
`In this system, 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. Fig. 2A below illustrates a wireless device 202 connecting to
`
`Server C 214 via wireless carrier 204. Ex.1001, Fig. 2A.
`
`
`
`13
`
`
`
`
`
`
`
`
`Ex.1003
`APPLE INC. / Page 13 of 135
`
`

`

`Kotzin Declaration
`
`
`Inter Partes Review of U.S. 8,472,937
`
`
`
`
`
`Ex.1001, Fig. 2A.
`
`31. 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. In the office network, the wireless device “also serves as a remote controller
`
`270 for controlling intelligent office appliances 238 such as copiers and faxes.”
`
`Ex.1001, 4:48-49. In the home network, the wireless device “can be a TV remote
`
`272 … or perform other household duties.” Ex.1001, 4:54-57. For instance,
`
`“‘macro commands’ and or detailed FIS 218 [i.e., functional instruction sets] may
`
`be written for specific wireless intelligent appliances 266 or wireless intelligent
`
`equipment 238 to control/command all of these using the CT/MD 202.” Ex.1001,
`
`5:31-34.
`
`
`
`
`14
`
`
`
`Ex.1003
`APPLE INC. / Page 14 of 135
`
`

`

`Kotzin Declaration
`
`
`Inter Partes Review of U.S. 8,472,937
`
`32. However, as I explain below, a server delivering functions to a
`
`wireless device and enabling dynamic conversion between functions was not new
`
`when the ’937 Patent was filed. Further, a wireless device remotely controlling
`
`
`
`office and home appliances also was not new.
`
`VI. CLAIM CONSTRUCTION
`
`33.
`
`It is my understanding that in order to properly evaluate the ’937
`
`Patent, the terms of the claims must first be interpreted. It is my understanding that
`
`for the purposes of this inter partes review, the claims are to be construed under
`
`the so-called Phillips standard, under which claim terms are given their ordinary
`
`and customary meaning as would be understood by one of ordinary skill in the art
`
`in light of the specification and prosecution history, unless the inventor has set
`
`forth a special meaning for a term.
`
`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`34.
`
`I have been asked to provide my opinion as to whether the Challenged
`
`Claims of the ’937 Patent would have been obvious in view of the prior art. The
`
`discussion below provides a detailed analysis of how the prior art references
`
`identified below teach the limitations of the Challenged Claims of the ’937 Patent.
`
`35. As part of my analysis, I have considered the scope and content of the
`
`prior art and any differences between the alleged invention and the prior art. I
`
`describe in detail below the scope and content of the prior art, as well as any
`
`
`
`
`15
`
`
`
`Ex.1003
`APPLE INC. / Page 15 of 135
`
`

`

`Kotzin Declaration
`
`differences between the alleged invention and the prior art, on an element-by-
`
`Inter Partes Review of U.S. 8,472,937
`
`
`
`element basis for each Challenged Claims of the ’937 Patent.
`
`36. As described in detail below, the alleged invention of the Challenged
`
`Claims would have been obvious in view of the teachings of the identified prior art
`
`references as well as the knowledge of a POSITA.
`
`A. Ground 1: Claims 1-3 and 16-18 are obvious under 35 U.S.C.
`§ 103(a) over Rautiola in view of Regnier and Sainton
`
`1.
`
`Summary of Rautiola
`
`37. Rautiola describes well-known functions of a wireless device: moving
`
`between local and public networks, communicating with an office server, and
`
`controlling office appliances.
`
`38. Rautiola describes “integrated office communication systems
`
`employing a local area network (LAN) for intra-office communications.” Rautiola,
`
`Abstract. Rautiola’s wireless “communication system” includes “a local area
`
`network [LAN] in the office and a cellular radio network between office units.”
`
`Rautiola, 3:36-38.
`
`39. Rautiola describes mobile terminals communicating with the office
`
`LAN, including via wireless connections both inside and outside the LAN, as
`
`illustrated in Fig. 2 below. Rautiola further explains that a wireless device can use
`
`“a nanocell in the user’s home with a connection to the local area network in the
`
`office.” Rautiola, 4:37-38. Rautiola further teaches that terminals in its system
`
`
`
`
`16
`
`
`
`Ex.1003
`APPLE INC. / Page 16 of 135
`
`

`

`Kotzin Declaration
`
`switch networks as, for instance, a “terminal crosses the administrative border
`
`Inter Partes Review of U.S. 8,472,937
`
`
`
`between the office communication system according to the invention and the
`
`public cellular radio network.” Rautiola, 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.
`
`Public cellular wireless connection
`for devices outside LAN
`
`Wireless connections for
`devices inside LAN
`
`Rautiola, Fig. 2 (annotated).
`
`
`
`40.
`
`In Fig. 3 below, Rautiola illustrates the laptop with a wireless
`
`connection outside the office LAN via a nanocell at the user's home. Rautiola, Fig.
`
`3.
`
`
`
`
`17
`
`
`
`Ex.1003
`APPLE INC. / Page 17 of 135
`
`

`

`Kotzin Declaration
`
`
`Inter Partes Review of U.S. 8,472,937
`
`Laptop terminal with wireless
`connection to home LAN nanocell
`
`Rautiola, Fig. 3 (annotated)
`
`
`
`
`
`41. Rautiola explains that the 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.” Rautiola, 4:30-34.
`
`Rautiola also explains that the mobile terminals on the office LAN have access to
`
`“network-compatible devices” including “printers.” Rautiola, 7:20-22.
`
`42. Rautiola thus demonstrates it was known in the prior art for a wireless
`
`device to reconfigure between public carrier and local networks, as disclosed in the
`
`
`
`
`18
`
`
`
`Ex.1003
`APPLE INC. / Page 18 of 135
`
`

`

`Kotzin Declaration
`
`’937 Patent. Rautiola further demonstrates it was known for a server to deliver
`
`Inter Partes Review of U.S. 8,472,937
`
`functions to a wireless device, which can also remotely control office appliances.
`
`2.
`
`Summary of Regnier
`
`43. Regnier provides additional details and descriptions of a computer
`
`network that provides services to client devices. In particular, Regnier describes a
`
`“resource manager in a client/server computer network” that “controls the
`
`availability of system resources … for each of multiple application programs.”
`
`Regnier, Abstract.
`
`44. 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.” Regnier, 1:35-40. Regnier’s application resource manager
`
`operates using a “control program located in the server” such as “[s]erver control
`
`module 240.” Regnier, 3:41-42, 5:16.
`
`45. 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.” Regnier, 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.” Regnier, 8:17-20. As illustrated in Fig. 3 below, each time
`
`a user selects an application (block 307), the server’s resource manager determines
`
`
`
`
`19
`
`
`
`
`
`Ex.1003
`APPLE INC. / Page 19 of 135
`
`

`

`Kotzin Declaration
`
`whether the user’s device is authorized or enabled to switch to the desired
`
`Inter Partes Review of U.S. 8,472,937
`
`functionality (block 311). Regnier, 6:63-7:9.
`
`Each time a user selects a server application for using a function at the
`client device (step 307) the server’s resource manager dynamically
`determines whether the user is enabled to switch to the function (step 311)
`
`Regnier, Fig. 3 (annotated).
`
`46. Regnier thus demonstrates it was known in the prior art for a client
`
`
`
`
`20
`
`
`
`
`
`
`
`Ex.1003
`APPLE INC. / Page 20 of 135
`
`

`

`Kotzin Declaration
`
`device to store and execute a portion of an application. Regnier also demonstrates
`
`Inter Partes Review of U.S. 8,472,937
`
`it was known for a server to enable dynamic conversion between functions, as
`
`disclosed in the ’937 Patent.
`
`3.
`
`Summary of Sainton
`
`47. Sainton provides details of how wireless devices communicate. In
`
`particular, Sainton describes “frequency and protocol agile, wireless
`
`communication devices … using a variety of different radio frequencies,
`
`transmission protocols and radio infrastructures.” Sainton, 1:8-12. As an example
`
`wireless device, Sainton describes a portable personal computer including an
`
`“omni-modal radio communications card [] in the form of a PCMCIA card,” as
`
`illustrated in Fig. 7 below. Sainton, 15:45-46.
`
`
`
`
`21
`
`
`
`
`
`Ex.1003
`APPLE INC. / Page 21 of 135
`
`

`

`Kotzin Declaration
`
`
`Inter Partes Review of U.S. 8,472,937
`
`Portable laptop computer 702 supporting multi-frequency
`and multi-protocol communications using PCMCIA card 701
`
`Sainton, Fig. 7 (annotated).
`
`48. Sainton explains that “a library of command, control and data
`
`transmission protocols appropriate for each supported system may be included in
`
`circuit 1.” Sainton, 5:52-54. Further, the laptop can “have a preprogrammed
`
`routine for selecting information carriers based on varying criteria.” Sainton,
`
`16:32-34.
`
`49. Sainton demonstrates it was known in the prior art for a wireless
`
`device to store communication protocols and software for switching between
`
`wireless networks, as disclosed in the ’937 Patent.
`
`
`
`
`22
`
`
`
`
`
`
`
`Ex.1003
`APPLE INC. / Page 22 of 135
`
`

`

`Kotzin Declaration
`
`
`Inter Partes Review of U.S. 8,472,937
`
`4.
`
`Reasons to Combine Rautiola, Regnier, and Sainton
`
`50. 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 Rautiola, Abstract; Regnier, Abstract, 4:26-28; Sainton, Abstract.
`
`51. Rautiola teaches that its system beneficially allows mobile client
`
`devices to leave the office while still accessing services of the office server by
`
`connecting to a public cellular network or home LAN. Rautiola, Figs. 2-3, 4:35-38,
`
`8:61-63, 13:55-57. Rautiola also teaches that a laptop is an example mobile client
`
`device. Rautiola, 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. Rautiola, Figs. 2-3, 3:36-38,
`
`4:35-38, 13:32-35. Indeed, Sainton illustrates it was well known to a POSITA that
`
`laptops wirelessly connect to public cellular networks using a PCMCIA card.
`
`Sainton, Fig. 7, 15:45-46. Further, Regnier teaches a technique for how a client
`
`device (such as a laptop) could access services provided from an office server.
`
`Regnier, Abstract, Figs. 2-3. A POSITA would have been motivated to make this
`
`obvious combination at least for the following reasons.
`
`
`
`
`23
`
`
`
`Ex.1003
`APPLE INC. / Page 23 of 135
`
`

`

`Kotzin Declaration
`
`
`a) Rautiola and Sainton
`
`Inter Partes Review of U.S. 8,472,937
`
`
`
`52.
`
`It is my opinion that a POSITA would have found it obvious to
`
`combine the teachings of Rautiola and Sainton. A POSITA would have considered
`
`it obvious, beneficial, and predictable to utilize Sainton’s technique for a laptop to
`
`switch networks and protocols with Rautiola’s laptop terminal—for example, to
`
`achieve Rautiola’s stated goal of allowing wireless terminals to cross the borders
`
`between an office LAN, home LAN, and a public cellular network. See, e.g.,
`
`Rautiola, Figs. 2-3, 13:32-35; Sainton, 16:28-34.
`
`53. As discussed above, Rautiola’s system provides an “integrated office
`
`communication system” allowing a user terminal to access services on the office
`
`LAN including when “the terminal crosses the administrative border between the
`
`office communication system according to the invention and the public cellular
`
`radio network.” Rautiola, 3:46-4:16, 13:32-35. Rautiola teaches multiple client
`
`devices can be used in its system. For example, Rautiola describes a “mobile
`
`terminal,” an example of which is a laptop PC as illustrated as terminal 9 in Fig. 2.
`
`Rautiola further teaches that “[o]ne way of physically implementing the base unit 4
`
`is to use a PCMCIA (Personal Computer Memory Card International Association)
`
`card which is connected to the appropriate interface in the user’s workstation or
`
`personal computer (PC).” Rautiola, 10:49-53.
`
`54. While Rautiola teaches that base unit 4 can comprise a PC with
`
`
`
`
`24
`
`
`
`Ex.1003
`APPLE INC. / Page 24 of 135
`
`

`

`Kotzin Declaration
`
`PCMCIA card, it likewise would have been obvious to a POSITA that the laptop
`
`Inter Partes Review of U.S. 8,472,937
`
`
`
`PC in Fig. 2 may use a PCMCIA card for wireless communications. In particular,
`
`Rautiola teaches that “the [mobile] terminal crosses the administrative border
`
`between the office communication System according to the invention and the
`
`public cellular radio network.” A POSITA would have known that the l