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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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`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.,
`Petitioner,
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`v.
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`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
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`________________
`
`
`Case IPR2022-01004
`Patent 9,614,943 B1
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`________________
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`
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`PETITIONER’S REQUEST FOR REHEARING
`BY THE DIRECTOR
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`Proceeding No.: IPR2022-01004
`Attorney Docket: 39843-0128IP1
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II.
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`BACKGROUND ............................................................................................. 4
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`III. A REASONABLE EXPECTATION OF SUCCESS EXISTED FOR
`IMPLEMENTING RALEIGH’S REMOTE UNIT AS A TELEPHONE ...... 7
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`A. The Board Misapplied The Law For Reasonable Expectation Of Success .. 9
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`B. The Board Also Failed To Consider The Sparse Disclosure Of The ’943
`Patent In Assessing Obviousness ................................................................12
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`IV. THE BOARD MISAPPREHENDED THE RALEIGH-BYRNE
`COMBINATION ...........................................................................................14
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`V.
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`CONCLUSION ..............................................................................................15
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`
`
`
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`i
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`Proceeding No.: IPR2022-01004
`Attorney Docket: 39843-0128IP1
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`I.
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`INTRODUCTION
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`Petitioner requests Director Review of the Board’s determination that claims
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`2-4 and 15-20 of U.S. Patent No. 9,614,943 (“the ’943 patent”) are patentable. In
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`the Board’s decision, the Board found that Petitioner failed to show a reasonable
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`expectation of success in combining Raleigh (EX-1005) with Byrne (EX-1008).
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`Paper 40, 82-87. The Board premised this determination on the finding that:
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`“The cited portions of Raleigh and Byrne do not describe adding
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`Raleigh’s signal processing system to a radio telephone such as
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`Byrne’s CCT 200 or a radio telephone having a signal processing
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`system like Raleigh’s. Ex. 1005, 1:66–2:63; Ex. 1005, 1:66–2:63. We,
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`thus, find that the cited portions of the record do not support
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`Petitioner’s argument that ‘a [person of ordinary skill in the art] would
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`have had a reasonable expectation of success in implementing a dual-
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`mode telephone with Raleigh’s known communication design for
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`long-range (e.g., cellular) communication and Byrne’s known
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`communication
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`design
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`for
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`short-range
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`(e.g.,
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`cordless)
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`communication.’ Pet. 49; Ex. 1003 ¶ 168.”
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`Paper 40, 84 (emphasis added).
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`The Board reached this conclusion despite clear evidence that radio
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`telephones were well-known by the 1999 filing date of the ’943 patent, the
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`1
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`undisputed fact that Byrne describes a telephone, and the undisputed fact that
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`Raleigh repeatedly describes its technology as being applicable to “remote units,”
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`which a skilled artisan would have readily considered to encompass telephones by
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`the relevant timeframe. In its decision, the Board made at least two errors.1
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`First, the Board applied an incorrect standard for reasonable expectation of
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`success by demanding that the prior art actually describe adding Raleigh’s signal
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`processing into a telephone like Byrne’s, rather than assessing whether a skilled
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`artisan would have reasonably expected success in implementing Raleigh’s “remote
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`unit” as a radio telephone. Paper 40, 84 (“The cited portions of Raleigh and Byrne
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`do not describe adding Raleigh’s signal processing system to a radio telephone”).
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`With this analysis, the Board conflated anticipation and obviousness, and did not
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`properly evaluate Petitioner’s obviousness arguments under the correct standard for
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`reasonable expectation of success.
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`Second, the Board failed to consider the ’943 patent’s disclosure in its analysis
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`of reasonable expectation of success. The ’943 patent taught nothing about how to
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`implement the claimed features in a radio telephone. Given these errors, the Board
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`1 The issues raised for the Director’s attention here are similar to the issues raised
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`in a Request for Director Review filed on January 2, 2024 in IPR2022-01005 for
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`U.S. Patent No. 9,084,291, which was before the same panel.
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`2
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`Proceeding No.: IPR2022-01004
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`would benefit from the Director’s guidance on at least (1) the correct standard for
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`assessing reasonable expectation of success and (2) the proper role a patent’s
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`disclosure plays in evaluating obviousness.
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`In addition to incorrectly evaluating reasonable expectation of success for the
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`portion of Petitioner’s obviousness arguments the Board considered, the Board also
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`erred by limiting its analysis to Patent Owner’s interpretation of the combination—
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`that the combination of Raleigh and Byrne would result only in a telephone. Paper
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`40, 74-76, 83 (“Petitioner’s only argument and evidence regarding a reasonable
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`expectation of success pertains to ‘implementing a dual-mode telephone.’”), 84-86.
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`However, the record is clear that a telephone was identified as only one
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`example device in the proposed combination, as the first sentence in the section of
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`the Petition entitled “Combination of Raleigh and Byrne” clearly identified “the
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`telephone or remote unit in the combination.” Pet., 43, see also 44 (“incorporate
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`the additional benefits proffered by Byrne into Raleigh’s remote unit”), 44-45
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`(“implement Raleigh’s remote unit into various types of products such as telephones
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`or other wireless devices”), 46 (“Raleigh-Byrne’s remote unit”), 47 (“modify
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`Raleigh’s remote unit to include Byrne’s circuitry”). In fact, the Board
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`acknowledged the breadth of the Petition’s combination arguments, but failed to
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`address them. Paper 40, 86 (“combination can be read to add only Byrne’s cordless
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`circuitry to Raleigh’s remote unit.”). This failure represents clear error.
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`3
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`For these reasons, and those discussed in more detail below, Petitioner
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`Proceeding No.: IPR2022-01004
`Attorney Docket: 39843-0128IP1
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`requests Director Review and reversal of the Board’s decision.
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`II. BACKGROUND
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`The ’943 patent allegedly “provide[s] wireless enhancements to IP based
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`cellular telephones/mobile wireless devices (CT/MD)” with multiple transceivers
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`and antennas. EX-1001, 1:43-57. Although the ’943 patent discusses several
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`features as being implemented in a CT/MD at a high level, it provides little guidance
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`on how to implement such features in mobile devices. The ’943 patent identifies
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`adding “multiple transmit/receive (T/R) units and multiple antennas” (e.g., multiple
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`input, multiple output (MIMO)) as the primary improvement to the prior art. EX-
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`1001, 3:26-34, 1:47-57, 4:7-11. Yet, the ’943 patent merely illustrates CT/MDs as
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`simple block diagrams and provides no discussion of how a prior art CT/MD would
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`need to be modified to implement MIMO technology. For example, comparing
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`Figure 1A (prior art) with Figure 2B (invention), the ’943 patent merely states that
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`the “embodiment of the present invention has three transmit frequencies and three
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`receive frequencies” as opposed to “the prior art all hav[ing] a single transmit
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`frequency and a single receive frequency.” Id., 3:26-34. The other figures and
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`associated descriptions are no different and are only accompanied by similar,
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`superficial description of multiple antennas, transmit/receive units, and processors.
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`Id., 4:15-21 (Figure 4), 4:39-51 (Figure 5), 6:23-27 (Figure 7), 6:37-45 (Figure 8),
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`4
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`6:54-60, 9:5-32 (enumerating a list of allegedly-inventive features over the prior art
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`without details). Instead of explaining how to implement MIMO technology in
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`CT/MDs, the ’943 patent only listed features with alleged advantages. Id., 4:7-5:7.
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`If implementation details of MIMO had been new, the ’943 patent would have
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`needed more than 7 pages to describe details for its 13 different embodiments.
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`In this IPR, as the second ground, the Petition advanced a combination of
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`Raleigh and Byrne. Raleigh relates to “a space-time signal processing system,”
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`“tak[ing] advantage of multiple transmitter antenna elements and/or multiple
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`receiver antenna elements.” EX-1005, 1:66-2:2. Raleigh focuses its disclosure on
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`details of its communication processing in MIMO systems. EX-1005, 11:42-50,
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`13:7-22, 13:52-65. With this focus, Raleigh does not spend a significant amount of
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`time describing the devices that implement its technology, simply describing
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`“remote units” as the devices. EX-1005, 10:23-27, 11:44-50, Figures 4-6. Raleigh
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`does not describe any example “remote unit,” nor does it impose any restriction on
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`the term. Nevertheless, the Board found Raleigh’s remote units to be limited to units
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`in vehicles or buildings based on examples shown in 3 of Raleigh’s 26 figures. Paper
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`40, 84-87. However, nothing in Raleigh limits its “remote units” to vehicle/building
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`units and ample evidence confirms that telephone remote units were well-known.
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`Byrne discloses “multi-mode radio telephones,” such as a “cellular cordless
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`telephone (CCT).” EX-1008, 1:30-33, 2:42-46. Unlike Raleigh, Byrne explicitly
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`describes a telephone implementing its cordless/cellular communication technology,
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`which involves switching between digital cordless and cellular systems. Id., 7:19-
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`24, 1:41-44, 5:20-33, 10:52-12:57, 8:16-38.
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`The Petition explained how Raleigh’s “remote unit” would have been
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`implemented as “various types of products such as telephones or other wireless
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`devices” with a reasonable expectation of success. Pet., 44-45. For example, the
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`Petition explained that “a POSITA would have been motivated and found it obvious
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`to combine Raleigh with Byrne to incorporate the additional benefits proffered by
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`Byrne into Raleigh’s remote unit with its own advantages.” Pet., 44.
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`In response, Patent Owner misrepresented the Petition’s Raleigh-Byrne
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`combination as the Byrne-Raleigh combination, and characterized it as solely
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`incorporating Raleigh’s techniques into Byrne’s telephone, but nothing else. POR,
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`32 (“BYRNE-RALEIGH GROUNDS (GROUNDS 2A-2C)”), 39 (“Modify Byrne
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`to Incorporate Raleigh’s SOP System”), 40 (“Raleigh neither teaches nor suggests
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`that it can be incorporated into a handheld device like Byrne’s mobile phone.”), 41
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`(“incorporating Raleigh’s SOP system into Byrne’s handheld phone[.]”), 48, 52.
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`In its reply, Petitioner expressly identified and corrected Patent Owner’s
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`mischaracterization. Reply, 22-23. Petitioner also explained that mobile phones and
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`their implementation details were well-known, and that a POSITA would have had
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`6
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`sufficient knowledge and skill to have a reasonable expectation of success in
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`achieving the Raleigh-Byrne combination. Reply, 24.
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`Led astray by Patent’s Owner Response and despite Petitioner’s clarification,
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`the Board considered only Patent Owner’s narrow view of the combination, finding
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`that, despite the robust state of the art of mobile devices and Byrne’s explicit
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`disclosure of the same, a POSITA would not have perceived a reasonable
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`expectation of success in implementing Raleigh’s “remote unit” as a telephone.
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`Paper 40, 83, 85-86. In its decision, the Board erred by (1) failing to correctly
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`evaluate the reasonable expectation of success in implementing Raleigh’s remote
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`unit as a telephone and (2) failing to consider the full extent of the Petition’s
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`arguments supporting the Raleigh-Byrne combination.
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`III. A REASONABLE EXPECTATION OF SUCCESS EXISTED FOR
`IMPLEMENTING RALEIGH’S REMOTE UNIT AS A TELEPHONE
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`In concluding that there was no showing of a reasonable expectation of
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`success, the Board failed to properly evaluate clear evidence showing that wireless
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`devices (e.g., telephones) were well-known by the 1999 filing date of the ’943 patent.
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`As discussed above, Raleigh consistently describes its cellular technology as being
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`applicable to “remote units.” By 1999, a POSITA would have immediately
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`considered a telephone as an example “remote unit.” In fact, Byrne, which is part
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`of the combination, describes multi-mode telephones.
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`As discussed in the Petition and Petitioner’s Reply, Byrne is directed to “a
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`radio telephone operable for more than one system,” such as “a cellular cordless
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`telephone (CCT)” with multiple transceivers and antennas, which “operate[s] on
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`different radio frequencies” and utilizes “different modulation techniques, signaling
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`techniques and intra-system protocols etc. to each other.” EX-1008, 1:1-3, 1:13-16,
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`7:25-32, Figure 2; Pet., 4-5. As additional evidence of the well-known state of the
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`art of mobile phones, Petitioner cited Gernert, which provides “hand-held, battery-
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`operated data terminals[,] portable digital assistants[,] or voice communication
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`handsets” as “remote mobile units 15” that are illustrated with multiple antennas.
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`EX-1063, 6:38-53; Reply, 24; EX-1048, [57].
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`EX-1008, Figure 1 (left) and EX-1063, Figure 1 (right)
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`Notably, Gernert describes that “in recent years, wireless and cellular
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`telephones have been rising in popularity, due to their mobility.” EX-1063, 1:34-
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`37; Reply, 24. Braitberg (EX-1064) also describes that “[c]ellular telephone systems
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`8
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`have gained widespread acceptance as an efficient means of mobile voice and data
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`communications. While early mobile units were large and complex, miniaturization
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`has made possible hand-held units with full functional capabilities allowing the user
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`freedom to use the phone unit.” EX-1064, 1:16-21; Reply, 24.
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`Despite clear evidence that the ’943 patent did not invent mobile phones and
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`that the state of the art was well-developed by 1999, the Board found no reasonable
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`expectation of success. The Board’s analysis, however, evaluated the evidence using
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`the incorrect standard for reasonable expectation of success and did not account for
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`the sparse disclosure of the ’943 patent in assessing the state of the art.
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`A. The Board Misapplied The Law For Reasonable Expectation Of
`Success
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`The law only requires a reasonable expectation of success, not guaranteed or
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`absolute predictability. Pfizer v. Apotex, 480 F.3d 1348, 1364 (Fed. Cir. 2007) (“only
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`a reasonable expectation of success, not a guarantee, is needed”); Yamanouchi
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`Pharma. v. Danbury Pharma, 231 F.3d 1339, 1343 (Fed. Cir. 2000) (“not absolute
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`predictability”); PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1198 (Fed.
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`Cir. 2014) (“does not necessitate an absolute certainty for success”).
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`Here, the Board merely determined that “[t]he cited portions of Raleigh and
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`Byrne do not describe” adding Raleigh’s signal processing to a telephone like
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`Byrne’s CCT. Paper 40, 84. This is far from the correct standard, which only
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`requires a reasonable expectation of success, not guaranteed or absolute
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`predictability, much less actual disclosure of the proposed modification in the cited
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`prior art. Pfizer, 480 F.3d at 1364; Yamanouchi Pharma., 231 F.3d at 1343; PAR
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`Pharm., 773 F.3d at 1198. By requiring actual disclosure in the prior art, the Board
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`conflated anticipation and obviousness, and failed to consider that reasonable
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`expectation of success “may flow from the prior art references themselves, the
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`knowledge of one of ordinary skill in the art, or, in some cases, from the nature of
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`the problem to be solved.” Brown & Williamson Tobacco Corp. v. Philip Morris
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`Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000).
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`As explained in the Reply, a POSITA would have had the requisite skill to
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`have considered and reasonably expected success in implementing Raleigh’s remote
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`unit as a telephone. Reply, 23-25. In particular, the evidence, as discussed above,
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`clearly demonstrates that telephones were well-known before the ’943 patent and
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`that a POSITA would have obviously considered and reasonably expected success
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`in implementing Raleigh’s “remote unit” as a telephone. Reply, 25-27; Pet., 47-49.
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`Patent Owner’s evidence of alleged technical difficulties does not negate this
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`analysis because it is premised on commercialization difficulties or “absolute
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`predictability.” Yamanouchi Pharma, 231 F.3d at 1343.
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`As Petitioner explicitly discussed, none of Patent Owner’s evidence suggests
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`that implementation of Raleigh’s remote unit as a telephone would have been
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`impossible, impractical, or something that a POSITA would have been dissuaded
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`from attempting. Reply, 25. In fact, Patent Owner characterized its own evidence
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`as merely showing “increased complexity, and thus cost” as a “drawback.” POR,
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`41 (discussing EX-2014); see also 15-16 (citing EX-2011 (“increased complexity”),
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`EX-2013 (“complexity or performance difficulties”), EX-2016 (“computational
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`complexity”)). Patent Owner’s evidence also described “inherent limitations” of
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`telephones, such as “limited space, computational power, memory, heat dissipation
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`concerns, and battery life,” but did not suggest that such limitations could not be
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`overcome or that POSITAs should not be actively pursuing this type of technology
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`in mobile phones. POR, 44-46. At most, Patent Owner’s evidence suggested
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`commercial difficulty, but that does not negate obviousness. Grit Energy Solutions,
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`LLC v. Oren Techs., LLC, 957 F.3d 1309 (Fed. Cir. 2020) (“the fact that the two
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`disclosed apparatus [sic] would not be combined by businessmen for economic
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`reasons is not the same as saying that it could not be done because skilled persons in
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`the art felt that there was some technological incompatibility that prevented their
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`combination. Only the latter is telling on the issue of nonobviousness.”). When
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`viewed under the correct standard of reasonable predictability, the evidence
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`demonstrates that telephone technology was well-developed before the ’943 patent
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`and POSITAs were working to implement MIMO technology in telephone form
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`factors, despite potential difficulties. That is all that is required to find obviousness.
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`Proceeding No.: IPR2022-01004
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`B.
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`The Board Also Failed To Consider The Sparse Disclosure Of The
`’943 Patent In Assessing Obviousness
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`The specification’s description of the claimed invention is an important tool
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`in assessing the state of the art and considering what level of prior art disclosure is
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`needed to demonstrate unpatentability. Uber Techs., Inc. v. X One, Inc., 957 F.3d
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`1334, 1339 (Fed. Cir. 2020) (“The specification ... is entirely silent on how to
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`transmit user locations and maps from a server to a user’s mobile device, suggesting
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`that a person of ordinary skill in the art was more than capable of selecting between
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`the known methods of accomplishing this.”); In re Epstein, 32 F.3d 1559, 1568 (Fed.
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`Cir. 1994) (“[T]he Board’s observation that appellant did not provide the type of
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`detail in his specification that he now argues is necessary in prior art references
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`supports the Board’s finding that one skilled in the art would have known how to
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`implement the features of the references and would have concluded that the
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`reference disclosures would have been enabling.”); In re Publicover, 813 F. App’x
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`527, 532 (Fed. Cir. 2020) (“But as the examiner and Board correctly found,
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`Publicover’s specification is just as sparse on how a system would identify this type
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`of eye movement.”). The patent system is bargain—a Patent Owner is granted a
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`limited right of exclusivity in exchange for public disclosure of a novel invention.
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`Where, as here, a patent specification discloses no more detail than what exists in
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`the prior art, patent rights should not be granted.
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`As discussed above, the ’943 patent does not teach a POSITA how to
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`implement the claimed features in its CT/MD. Indeed, as recognized by Dr. Jensen,
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`the ’943 patent provides little to no disclosure of how to implement a mobile device
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`that incorporates the claimed MIMO technology. Instead, the ’943 patent simply
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`lists various features and relies on a POSITA’s knowledge and skill for
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`implementation details. Reply, 24-25; EX-1048, [65]-[66]. Dr. Cooklev, Patent
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`Owner’s own expert, agreed. Reply, 10-11; EX-1037, 80:3-81:25 (“it’s my
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`understanding that a patent specification need not teach everything that a person of
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`skill in the art knows. And preferably omits that.”).
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`Thus, the same knowledge and skill that the ’943 patent relied on for its
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`disclosure informs the assessment of the prior art in evaluating obviousness. Reply,
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`24-25; In re Publicover, 813 F. App’x at 532; Uber Techs., 957 F.3d at 1339; In re
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`Epstein, 32 F.3d at 1568. This is particularly true here because the ’943 patent lists
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`similar techniques (e.g., MIMO) described in the cited prior art. EX-1048, [66];
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`Reply, 24-25. However, the Board’s independent analysis included no reference to
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`the ’943 patent’s disclosure. Paper 40, 82-85. With this treatment, the Board did
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`not properly account for the ’943 patent’s disclosure in assessing the state of the art
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`and evaluating the reasonable expectation of success in implementing the same
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`features that the ’943 patent merely lists without explanation. Because the ’943
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`patent did not teach the public anything new about implementing its claimed features
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`in a mobile phone, the ’943 patent cannot distinguish prior art on this basis. Reply,
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`23-25. The prior art’s disclosure cannot be held to a higher standard than the ’943
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`patent’s disclosure. Id.; Uber Techs., 957 F.3d at 1339; In re Epstein, 32 F.3d at
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`1568. Because the Board failed to consider whether the disclosure in the ’943 patent
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`extends beyond the prior art and justifies patent rights, the Board erred.
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`IV. THE BOARD MISAPPREHENDED THE RALEIGH-BYRNE
`COMBINATION
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`The Board misapprehended Petitioner’s description of the Raleigh-Byrne
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`combination by evaluating only one of the multiple resulting devices mentioned in
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`the Petition. As acknowledged in the Decision (Paper 40 at 86), the Petition clearly
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`presented how a POSITA would have been motivated to modify Raleigh’s “remote
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`unit” based on Byrne’s teachings and would have had a reasonable expectation of
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`success. Pet., 43-49. Notably, the Petition began its combination argument with a
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`clear statement that the combination involves a “telephone” or a “remote unit.” Pet.
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`43 (“A POSITA would have been motivated to combine Raleigh’s teachings with
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`Byrne such that the telephone or remote unit in the combination is implemented
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`using Raleigh’s space-time signal processing schemes for long-range wireless (e.g.,
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`cellular) communication with Byrne’s protocols for short-range, cordless
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`communication.”). Throughout the combination analysis, the Petition was clear that
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`the resulting device covered Raleigh’s “remote unit” or “various types of products
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`such as telephones or other wireless devices.” Id., 44-47. Further, the motivations,
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`benefits, and expectations for success discussed in the Petition, although, at times,
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`referred to Byrne’s telephone, were not limited to a telephone and were generally
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`applicable to various types of devices. Id., 45-49.
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`Notably, the claims of the ’943 patent are merely directed to a “wireless
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`communication device,” not a telephone. EX-1001, cls. 1, 5, 8, 12. There was no
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`reason for Petitioner to limit its argument to a combination that involves a phone.
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`Even Byrne describes that its “cellular cordless telephone (CCT)” can be
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`implemented as “a mobile unit installed in a vehicle,” which a POSITA would have
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`readily understood as an example resulting device of the Raleigh-Byrne
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`combination. Reply, 23; EX-1008, 7:11-13. Therefore, the Petition did not limit its
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`arguments to a telephone and the Board should have considered the full scope of the
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`combination presented in the Petition. Because the Board did not consider
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`reasonable expectation of success of implementing the combined device as Raleigh’s
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`“remote units” or a general wireless device, the Board erred and should be reversed.
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`V. CONCLUSION
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`For the reasons above, Petitioner respectfully requests that the Director grant
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`review of the final written decision.
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`15
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`Date: January 3, 2024
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`Proceeding No.: IPR2022-01004
`Attorney Docket: 39843-0128IP1
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`Respectfully submitted,
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`/Jeremy J. Monaldo/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Hyun Jin In, Reg. No. 70,014
`Sangki Park, Reg. No. 77,261
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`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Andrew S. Ehmke, Reg. No. 50,271
`Clint S. Wilkins, Reg. No. 62,448
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`Haynes and Boone, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
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`Attorneys for Petitioner
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`Proceeding No.: IPR2022-01004
`Attorney Docket: 39843-0128IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on January 3,
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`2024, a complete and entire copy of this Petitioner’s Request for Rehearing by the
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`Director was provided by email, to the Patent Owner by serving the
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`correspondence addresses of record as follows:
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`Rex Hwang
`Todd Martin
`Steve Udick
`SKIERMONT DERBY LLP
`rhwang@skiermontderby.com
`tmartin@skiermontderby.com
`sudick@skiermontderby.com
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`Philip Graves
`Greer Shaw
`GRAVES & SHAW LLP
`pgraves@gravesshaw.com
`gshaw@gravesshaw.com
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`pacheco@fr.com
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`
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`17
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