Filed: February 22, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2022-00766
`Patent 8,824,434
`____________
`
`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`
`SAMSUNG 1053
`SAMSUNG v. SMART MOBILE
`IPR2022-01004
`
`1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2022-00766
`Patent 8,824,434
`____________
`
`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`
`SAMSUNG 1053
`SAMSUNG v. SMART MOBILE
`IPR2022-01004
`
`1
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 3
`II.
`III. CLAIM CONSTRUCTION ............................................................................ 4
`A.
`“Dynamically Switch” ........................................................................... 4
`B.
`“Data” .................................................................................................... 8
`IV. GILLIG GROUNDS (GROUNDS 1A-1C) ...................................................11
`A.
`Petitioner Fails to Prove Obviousness Based on Gillig (Ground
`1A, Claims 1-7) ................................................................................... 11
`1.
`Petitioner Fails to Prove that Gillig Discloses a Device
`Configured to “Dynamically Switch” Between Antennas
`(Claims 1-5) ..............................................................................11
`Gillig Does Not Disclose a “Stream of Data” or
`“Stream[ed]” Data (Claims 3, 5, 6-8) .......................................20
`Petitioner Fails to Prove that Gillig Discloses Uploading
`or Downloading of Data (Claims 3, 5) .....................................25
`Petitioner’s Gillig-Billström-Rose Combination Fails for Multiple
`Reasons (Ground 1B, Claims 3, 5-8) .................................................. 29
`1.
`Petitioner Fails to Prove that a POSITA Would Have
`Reasonably Expected Success in Making the Gillig-
`Billström-Rose Combination (Claims 3, 5-8) ...........................29
`Petitioner Fails to Prove that Gillig-Rose-Billström
`Discloses Uploading or Downloading of Data
`(Claims 3, 5) ..............................................................................34
`Petitioner Fails to Prove a Motivation to Modify Gillig-
`Rose-Billström to Communicate Data Via the Cordless
`Antenna Using Internet Protocol (Claim 8) ..............................35
`
`B.
`
`2.
`
`3.
`
`2.
`
`3.
`
`- i -
`
`2
`
`
`
`C.
`
`B.
`
`2.
`
`3.
`
`2.
`
`V.
`
`Petitioner Fails to Prove a Motivation to Make its Gillig-Rose-
`Billström-Wong Combination (Ground 1C, Claim 8) ........................ 46
`BYRNE GROUNDS (GROUNDS 2A-2B) ..................................................52
`A.
`Petitioner Fails to Prove Obviousness Based on Byrne (Ground
`2A, Claims 1-7) ................................................................................... 52
`1.
`Petitioner Fails to Prove that Byrne Discloses a Device
`Configured to “Dynamically Switch” Between Antennas
`(Claims 1-5) ..............................................................................52
`Byrne Does Not Disclose Uploading or Downloading Data
`(Claims 3, 5-8) ..........................................................................57
`Byrne Does Not Disclose Simultaneous Streaming of Data
`Via a First and Second Antenna (Claims 6-8) ..........................58
`Petitioner Fails to Prove Claim 8 Obvious Based on the Byrne
`Grounds (Ground 2B, Claim 8) ........................................................... 63
`1.
`Petitioner Fails to Prove a Motivation to Make its Byrne-
`Billström-Wong Combination ..................................................63
`Petitioner Fails to Prove that a POSITA Would Have
`Reasonably Expected Success in Making the Byrne-
`Billström-Wong Combination ..................................................66
`VI. CONCLUSION ..............................................................................................69
`
`
`
`
`
`- ii -
`
`3
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Communications, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ............................................................... 44, 51, 66
`Adidas AG v. Nike, Inc.,
`963 F.3d 1355 (Fed. Cir. 2020) ..................................................................... 49, 66
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ............................................................................24
`Convolve, Inc. v. Compaq Computer Corp.,
`812 F.3d 1313 (Fed. Cir. 2016) ............................................................................35
`DSS Technology Management, Inc. v. Apple Inc.,
`885 F.3d 1367 (Fed. Cir. 2018) ............................................................... 24, 44, 52
`Elbit Sys. of Am., LLC v. Thales Visionix, Inc.,
`881 F.3d 1354 (Fed. Cir. 2018) ........................................................................5, 13
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-00582, Paper 34 (PTAB Aug. 5, 2019) ................................................43
`In re Magnum Oil Tools International, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................... 11, 57, 58
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) ........................................................................6, 13
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................... 38, 51, 66
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2018-00827, Paper No. 9 (PTAB Oct. 16, 2018) ..........................................29
`Karlin Tech., Inc. v. Surgical Dynamics, Inc.,
`177 F.3d 968 (Fed. Cir. 1999) ..............................................................................26
`Keynetick, Inc. v. Samsung Elec. Co.,
`841 Fed. Appx. 219 (Fed. Cir. 2021) ...................................................................29
`
`- iii -
`
`4
`
`
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ..................................................................... 38, 43
`Microsoft Corp. v. Enfish, LLC,
`662 F. App’x 981 (Fed. Cir. 2016) ......................................................... 39, 51, 66
`Orthopedic Equip. Co., Inc. v. United States,
`702 F.2d 1005 (Fed. Cir. 1983) ............................................................................29
`Purdue Pharma L.P. v. Depomed, Inc.,
`643 Fed. Appx. 960 (Fed. Cir. 2016) ...................................................................46
`Samsung Elecs. Co., Ltd. v. Dynamics Inc.,
`2022 WL 3041158 (Fed. Cir. 2022) ........................................................ 42, 49, 64
`Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, LLC,
`925 F.3d 1373 (Fed. Cir. 2019) ............................................................... 29, 34, 68
`Securus Techs., Inc. v. Global Tel*Link Corp.,
`701 F. App’x 971 (Fed. Cir. 2017) ......................................................... 39, 51, 66
`South-Tek Systems, LLC v. Engineered Corrosion Solutions, LLC,
`748 Fed. Appx. 1003 (Fed. Cir. 2018) .......................................................... 43, 66
`St. Jude Med., LLC v. Snyders Heart Valve LLC,
`977 F.3d 1232 (Fed. Cir. 2020) ............................................................................11
`TQ Delta, LLC v. Cisco Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ......................................................... 11, 25, 57, 58
`Xerox Corp. v. Bytemark, Inc.,
`IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022) ................................................24
`
`- iv -
`
`5
`
`
`
`PATENT OWNER’S UPDATED EXHIBIT LIST
`
`DESCRIPTION
`Declaration of Philip J. Graves in Support of Patent Owner’s
`Unopposed Motion to Appear Pro Hac Vice Admission.
`Declaration of Greer N. Shaw in Support of Patent Owner’s
`Unopposed Motion to Appear Pro Hac Vice Admission.
`Declaration of Steve J. Udick in Support of Patent Owner’s
`Unopposed Motion to Appear Pro Hac Vice Admission.
`Declaration of Dr. Todor Cooklev in Support of Patent Owner’s
`Response.
`Curriculum Vitae of Dr. Todor Cooklev.
`
`Deposition Transcript of Dr. Michael Allen Jensen, taken January
`18, 2023.
`Excerpts from Microsoft Computer Dictionary (3rd Ed. 1997).
`
`Excerpts from IEEE Standard Glossary of Software Engineering
`Terminology (1990).
`Excerpts from Newton’s Telecom Dictionary 12th Ed. 1997.
`
`Excerpts from Collins Dictionary of Computing 3rd. Ed. 2000.
`
`3GPP Specification Release Numbers, Electronics Notes, available
`at https://www.electronics-
`notes.com/articles/connectivity/3gpp/standards-releases.php.
`Panasonic Model KX-T3000BA EASA-Phone Operating
`Instructions.
`
`EXHIBIT
`2001.
`
`2002.
`
`2003.
`
`2004.
`
`2005.
`
`2006.
`
`2007.
`
`2008.
`
`2009.
`
`2010.
`
`2011.
`
`2012.
`
`- v -
`
`6
`
`
`
`Claim Element
`1[pre]
`
`CLAIM LISTING
`Claim Language
`A portable handheld wireless device, comprising:
`
`1a
`
`1b
`
`1c
`
`1d
`
`1e
`
`a processor;
`
`a communication component including a processor, a
`
`transmitter, and a receiver for wireless communication of a
`
`plurality of wireless protocols;
`
`a first antenna; a second antenna;
`
`wherein the portable handheld wireless device is configured to
`
`dynamically switch between use of the first or second antenna;
`
`and
`
`wherein the first antenna is coupled to the transmitter and
`
`receiver, and wherein first radio frequency signals are
`
`transmitted using the first antenna; and wherein second radio
`
`frequency signals are transmitted using the second antenna,
`
`and wherein the first radio frequency signals and the second
`
`radio frequency signals are transmitted at different
`
`frequencies, and
`
`- vi -
`
`7
`
`
`
`Claim Element
`1f
`
`Claim Language
`wherein the first radio frequency signals and the second radio
`
`2
`
`3
`
`4
`
`5
`
`frequency signals are communicated based on at least two
`
`different wireless protocols.
`
`The device of claim 1, wherein the portable handheld wireless
`
`device switches between use of the first and second antenna in
`
`response to a request from an application.
`
`The device of claim 1, wherein the portable handheld wireless
`
`device uses a first antenna for upload of a first stream of data
`
`and a second antenna for download of a second stream of data.
`
`The device of claim 1, wherein the portable handheld wireless
`
`device includes the functions of a cellular telephone.
`
`The device of claim 1, wherein the portable handheld wireless
`
`device uses a first antenna for upload of a first stream of data
`
`and a second antenna for download of a second stream of data,
`
`and wherein the device includes the functions of a cellular
`
`telephone.
`
`6[pre]
`
`A wireless device, comprising:
`
`- vii -
`
`8
`
`
`
`Claim Element
`6a
`
`Claim Language
`a communication component including a processor, a
`
`6b
`
`6c
`
`6d
`
`6e
`
`transmitter, and a receiver, wherein the communication
`
`component is configured for wireless communication of at
`
`least two or more different wireless protocols;
`
`a first antenna, configured to communicate on a first
`
`frequency; and
`
`a second antenna, configured to communicate on a second
`
`frequency;
`
`wherein the first and second antenna are configured to stream
`
`data simultaneously; and
`
`wherein the first antenna is coupled to a first transmitter and
`
`receiver, and wherein first radio frequency signals are
`
`transmitted using the first antenna; and wherein second radio
`
`frequency signals are transmitted using the second antenna,
`
`and
`
`6f
`
`wherein the first radio frequency signals and the second radio
`
`frequency signals are transmitted based on two or more
`
`different wireless protocols and
`
`- viii -
`
`9
`
`
`
`Claim Element
`6g
`
`Claim Language
`wherein the wireless device is a portable handheld wireless
`
`7
`
`8
`
`device.
`
`The device of claim 6, wherein the portable handheld wireless
`
`device includes the functions of a cellular telephone.
`
`The device of claim 6, wherein the portable handheld wireless
`
`device includes the functions of a cellular telephone, wherein
`
`the data is communicated using Internet Protocol.
`
`- ix -
`
`10
`
`
`
`I.
`
`INTRODUCTION1
`Petitioner alleges that all claims of U.S. Patent No. 8,824,434 (“the ‘434
`
`Patent”) are obvious on each of two separate grounds. Petitioner fails to make its
`
`case, for multiple independent reasons.
`
`Petitioner contends that claims 1-7 are obvious over Gillig (Ground 1A). This
`
`ground fails for several reasons. First, Gillig does not disclose a device that
`
`dynamically switches between use of the cordless and cellular antennas; rather,
`
`manual user intervention is required in order to execute the switch. It therefore does
`
`not teach claim 1[d]. Second, Gillig does not teach that its cordless and cellular
`
`antennas are configured to stream data (claims 3, 5, 6[d]), because Gillig’s analog
`
`audio signals do not comprise digital information, i.e., data. Third, Petitioner fails
`
`to prove that Gillig discloses uploading or downloading data streams, because they
`
`conflate “upload/download” with “transmit/receive” despite the fact that intrinsic
`
`evidence suggests that those terms have different scope, and they fail to tie their
`
`showing to a computer-to-computer transfer of data.
`
`Petitioner’s Gillig-Rose-Billström combination (Ground 1B, claims 3, 5-8)
`
`likewise fails for multiple reasons. First, a POSITA would not have been capable of
`
`making the proposed combination, which would have required a nearly entire
`
`
`1 All emphases in this response are added unless otherwise indicated.
`
`- 1 -
`
`11
`
`
`
`redesign of the Gillig phone. Second, Petitioner again fails to prove that the Gillig-
`
`Rose-Billström combination discloses uploading or downloading data streams, for
`
`the same reasons as it failed with respect to Gillig. Third, Petitioner fails to prove a
`
`motivation to modify the Gillig-Rose-Billström phone to communicate via the
`
`cordless antenna using Internet Protocol (claim 8), because the combination device
`
`would have been incapable of displaying or otherwise making any use of email,
`
`webpages or file transfers, and because such a capability would have been redundant
`
`to the cellular IP capability of Billström.
`
`Petitioner’s fallback argument concerning claim 8 is to add yet another
`
`reference, Wong, to the already-cumbersome Gillig-Rose-Billström combination
`
`(Ground 1C). This effort fails for the same reasons that its Internet Protocol
`
`modification to Gillig-Rose-Billström fails, i.e., that Wong would have been a
`
`useless addition to the Gillig-Rose-Billström phone.
`
`Petitioner’s Byrne grounds (Grounds 2A-2B) fare no better. First, Petitioner
`
`fails to prove that Byrne discloses dynamic switching, because Byrne relies on
`
`Gillig’s call forwarding procedure to support its “automatic handover.” Second,
`
`Petitioner fails to prove that Byrne discloses uploading or downloading data streams,
`
`for the same reasons as it failed with respect to Gillig. Third, Petitioner fails to prove
`
`that Byrne discloses simultaneous streaming of data via a first and second antenna,
`
`because they rely on a misreading of Byrne. Finally, Petitioner fails to prove claim
`
`- 2 -
`
`12
`
`
`
`8 obvious over its Byrne-Billström-Wong combination, because (i) it fails to prove
`
`a motivation to make the combination, for much the same reasons as it failed to
`
`prove a basis for its Gillig-Rose-Billström-Wong combination, and (ii) a POSITA
`
`would not have been capable of making the combination device in any event.
`
`Accordingly, the Board should conclude that Petitioner has failed to
`
`demonstrate that the challenged claims are unpatentable.
`
`II. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner asserts that a person of ordinary skill in the art (“POSITA”) “would
`
`have had a Bachelor’s degree in electrical engineering, computer engineering,
`
`computer science, or a related field, and at least two years of experience related to
`
`the design or development of wireless communication systems, or the equivalent”
`
`and that “[a]dditional graduate education could substitute for professional
`
`experience, or significant experience in the field could substitute for formal
`
`education. Pet. at 2-3 (citing EX-1003, ¶¶27-28). During deposition, Petitioner’s
`
`expert, Dr. Michael Jensen, testified that a POSITA would have “a demonstrated
`
`capability in just designing some component of the system and working on that” and
`
`“starting to work at a higher level” where “maybe they’re only designing some piece
`
`based on the expertise, but they’re understanding the architecture into which their
`
`piece will fit and how their design is going to impact that architecture and the overall
`
`functioning of the system.” EX-2006 (Dep Tr.) 29:13-31:5. For the purpose of this
`
`- 3 -
`
`13
`
`
`
`proceeding, Patent Owner does not contest Petitioner’s definition of a POSITA as
`
`Dr. Jensen clarified during deposition.
`
`III. CLAIM CONSTRUCTION
`Petitioner asserts that no formal claim construction is necessary. Pet. 2. But
`
`Petitioner’s expert indicated that he applied an understanding of two terms that
`
`Patent Owner believes require construction: “dynamically switch” and “data.”
`
`“Dynamically Switch”
`A.
`A POSITA would understand that “dynamically switch” as used in claim 1 of
`
`the ’434 Patent means “switch when and as needed, responsive to variable conditions
`
`and without the need for user intervention.” EX-2004, ¶25 (Cooklev Dec.).
`
`Petitioner did not provide a construction of “dynamically switch.” However,
`
`Dr. Jensen shared the understanding that he used in preparing his declaration:
`
`So dynamically switch to me would mean kind of at its basic level
`being able to switch, say, in the middle of a communication because
`something changed that warrants that switching to happen.
`* * *
`I think the idea of switching in the middle of a communication is
`the one that lends itself to the most value when we add that – when we
`kind of talk about dynamically switching. So I would say that is the
`main one that I applied, but I think there are other ways that you could
`– you could and I think in my report did sort of consider options for
`how that might be done.
`
`* * *
`
`- 4 -
`
`14
`
`
`
`I think a better one is what I said at the beginning, that you are in
`the middle of some sort of a communication, conditions changed and
`you are able to switch right in the middle between radio interfaces to be
`able to preserve the integrity of that communication.
`
`EX-2004, ¶26; EX-2006, 54:4-56:11.2
`
`So, Dr. Jensen agrees with Smart Mobile that “dynamically switch” requires
`
`that the switching occur when and as need, responsive to variable conditions. The
`
`sole distinction between Smart Mobile’s construction and Dr. Jensen’s
`
`understanding of the term is whether the phrase requires that the switching happen
`
`without the need for user intervention. The claim, specification, prosecution file and
`
`contemporaneous evidence indicates that it does. EX-2004, ¶¶ 28-31 (Cooklev
`
`Dec.).
`
`
`2 Jensen also referenced a second “definition”: “So you could look at a timeframe
`
`of today the channel conditions are good on one radio interface, tomorrow they're
`
`better on another interface, is that dynamic? Is that dynamically switching? I think
`
`you could argue that.” EX-2006, 54:4-56:11. This testimony is entitled to no weight,
`
`because Jensen did not rely on it and because it is too vague to apply in any coherent
`
`way. See Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1358 (Fed.
`
`Cir. 2018).
`
`
`
`- 5 -
`
`15
`
`
`
`Turning first to the claim, limitation 1[d] recites that “the portable handheld
`
`wireless device is configured to dynamically switch between use of the first or
`
`second antenna.” EX1001, 12:2-4 (emphasis added). So, the surrounding claim
`
`language makes it clear that the handheld device itself is configured to “dynamically
`
`switch” between the two antennas. This forecloses a construction of “dynamically
`
`switch” that would entail a user manually executing the switching. See Innova/Pure
`
`Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir.
`
`2004).
`
`Patent Owner’s construction is further supported by claim 2, which recites
`
`that the handheld device “switches between use of the first and second antenna in
`
`response to a request from an application.” EX. 1001, 12:15-17. Here again, the
`
`claim requires that the device itself switch between the two antennas, not that it
`
`enable a user to manually execute the switch. EX-2004, ¶¶ 28-31 (Cooklev Dec.).
`
`Second, the specification provides context to what it means to “dynamically”
`
`perform a function:
`
`the software capability that is resident internally to the unit, at the local
`server C level or network server C level, is capable of dynamically
`determining a number of factors for best data transfer. As an example,
`the unit can determine the best transmission frequencies and protocols,
`determine the best error correction and channel coding algorithms and
`multiplexes the transmission paths and tasks.
`
`- 6 -
`
`16
`
`
`
`EX. 1001, 11:15-22 (emphasis added). This bears directly on the structure recited
`
`in the claims, which looks to dynamically switching between two antennas or two
`
`network flows. EX-2004, ¶30 And it is clear from this example that “dynamically”
`
`performing a function is done without user intervention, as the specification recites
`
`that it is “the software capability” that enables the “dynamic” determination. EX-
`
`2004, ¶ 30.
`
`And relevant extrinsic texts also confirm Patent Owner’s understanding. For
`
`example, the Microsoft Press Computer Dictionary defines “dynamic” as:
`
`Occurring immediately and concurrently. The term is used in
`describing both hardware and software; in both cases it describes some
`action or event that occurs when and as needed. In dynamic memory
`management, a program is able to negotiate with the operating system
`when it needs more memory.
`
`EX-2007, 165 [Microsoft Computer Dictionary, p. 165 (3rd ed. 1997)]. An action
`
`typically will not occur “immediately and concurrently” if it requires manual user
`
`intervention. EX-2004, ¶31; EX-2007 (Microsoft Computer Dictionary). Similarly,
`
`the IEEE Standard Glossary of Software Engineering Terminology defines
`
`“dynamic” as: “Pertaining to an event or process that occurs during computer
`
`program execution; for example, dynamic analysis, dynamic binding.” EX-2008,
`
`29 [IEEE Standard Glossary of Software Engineering Terminology, p. 29 (1990)].
`
`Again, the reference to an event or process that occurs “during computer program
`
`- 7 -
`
`17
`
`
`
`execution” indicates to a POSITA that manual user intervention is not involved. EX-
`
`2004, ¶31.
`
`Thus, the Board should construe “dynamically switch” as “switch when and
`
`as needed, responsive to variable conditions and without the need for user
`
`intervention.” EX-2004, ¶¶25-31.
`
`“Data”
`B.
`A POSITA would understand that the plain and ordinary definition of “data”
`
`as used in the ’434 Patent means “digital information.” EX-2004, ¶32. Dr. Jensen
`
`testified in deposition that he understood data to mean “information to be
`
`communicated” and he used that understanding in his analysis. EX. 2006 (Jensen
`
`Dep.) at 60:6-14. Dr. Jensen applied his understanding of the term so as to include
`
`analog voice communications as “data.” EX-2004, ¶¶33-34. However, “data” as
`
`used in the ‘434 Patent does not include analog communications.
`
`First, the surrounding claim language confines the scope of “data” to digital
`
`information. The only uses of “data” in the claims are in claims 3, 5, 6 and 8. In
`
`claims 3 and 5, the claims recite that the handheld device uses the first and second
`
`antennas for upload and download, respectively, of a first and second “stream of
`
`data.” Claim 6 recites that the antennas are “configured to stream data
`
`simultaneously.” And claim 8 (which depends from claim 6) recites that “the data
`
`is communicated using Internet Protocol.” EX1001, 12:18-21, 24-28, 38-39, 51-53.
`
`- 8 -
`
`18
`
`
`
`The recitation that the data is “a stream” or is “stream[ed]” informs a POSITA that
`
`the data is digital information, because that terminology was (and is) typically used
`
`to refer to data transmitted between computers. EX-2004, ¶35; EX-2009, 184, 616
`
`[Newton’s Telecom Dictionary, p. 616 (12th ed., 1997)] (“data stream” is
`
`“Collection of characters and data bits transmitted through a channel”) (“Streaming”
`
`is “[a]n Internet term” that typically refers to delivery of content for a webpage.
`
`“Streaming Media” refers to “video coming to you in packets over the Internet.”);
`
`see also EX-2007, 88 [Microsoft Computer Dictionary 3rd Ed. (1997)] (“data stream”
`
`is “An undifferentiated, byte-by-byte flow of data”). And the requirement in claims
`
`3 and 5 that the data be uploaded and downloaded reinforces that “data” refers to
`
`digital information, because, as shown in Section IV.A.3 below, a POSITA would
`
`have understood that data that is uploaded or downloaded is transmitted between
`
`computers, which require that the transmitted information be digital. EX-2004, ¶35.
`
`The specification also makes clear that “data” as used in the claims means
`
`digital information. First, the summary of the invention states that an object of the
`
`invention
`
`is
`
`to “provide wireless enhancements
`
`to
`
`IP based cellular
`
`telephones/mobile wireless devices.” EX-1001, 1:41-43. “IP based” refers to
`
`enhancements to Internet Protocol-based communications, which points to digital
`
`information and not just any “information to be communicated,” such as an analog
`
`voice signal. EX-2004, ¶36.
`
`- 9 -
`
`19
`
`
`
`Further, the specification is replete with uses of the term data that makes clear
`
`it is digital information. For example, in disclosing a benefit of the invention “for
`
`improving the data rates of a wireless/device network” it indicates that “[c]urrently
`
`the CT/MD data rates are very low and pose a severe limitation for high speed
`
`wireless data networking. 14.4KBPS (kilobits per second) is probably the best
`
`reliable speed for a wireless network that is commercially available.” EX-1001,
`
`2:52-62. Further, the specification states that “[d]ata transferred to a CT/MD over a
`
`wireless network comes in encoded form and must be decoded at the CT/MD after
`
`the data is received.” EX-1001, 3:6-8. The specification describes Figure 2 as
`
`showing data being transferred from computer to computer. EX-1001, 3:31-33; EX-
`
`2004, ¶¶36-37
`
`Further discussion throughout the specification is also consistent with the
`
`understanding that the term “data” means “digital information.” EX-2004, ¶¶36-37.
`
`And nowhere in the specification is there an indication that a POSITA would
`
`understand data to mean just any “information to be communicated” including a
`
`voice analog communication. EX-2004, ¶¶32-37. As a result, “data” as used in the
`
`‘434 Patent means “digital information,” and Dr. Jensen’s understanding of the term
`
`as encompassing any “information to be communicated” is incorrect. EX-2004,
`
`¶¶32-37.
`
`- 10 -
`
`20
`
`
`
`IV. GILLIG GROUNDS (GROUNDS 1A-1C)
`Petitioner Fails to Prove Obviousness Based on Gillig (Ground
`A.
`1A, Claims 1-7)
`Petitioner Fails to Prove that Gillig Discloses a Device
`1.
`Configured to “Dynamically Switch” Between Antennas
`(Claims 1-5)
`Petitioner bears the burden of proving that the challenged claims were
`
`obvious. St. Jude Med., LLC v. Snyders Heart Valve LLC, 977 F.3d 1232, 1242-43
`
`(Fed. Cir. 2020). Conclusory allegations and expert testimony are insufficient. TQ
`
`Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1359-62 (Fed. Cir. 2019); In re
`
`Magnum Oil Tools International, Ltd., 829 F.3d 1364, 1380-81 (Fed. Cir. 2016).
`
`Limitation 1[d] recites that “the portable handheld wireless device is
`
`configured to dynamically switch between use of the first or second antenna.” EX-
`
`1001, Claim 1. Petitioner and Dr. Jensen rely on Gillig, and solely Gillig, to meet
`
`Limitation 1[d], arguing that “a POSITA would have understood or found obvious
`
`that Gillig’s automated switching between cordless and cellular telephone
`
`connections involves dynamic switching . . . .” Pet. 18 (emphasis in original); EX-
`
`1003, ¶¶84-87. So as to claims 1-5, Petitioner’s Gillig grounds stand or fall based
`
`on whether Gillig discloses dynamic switching between antennas. Gillig does not
`
`disclose dynamic switching, so Petitioner’s Gillig grounds fail as to those claims.
`
`- 11 -
`
`21
`
`
`
`Dr. Jensen asserts:
`
`Gillig’s cellular cordless telephone switches its operation between a
`cordless telephone and a cellular telephone depending on one or more
`variable situations (“dynamically switch”), such as the telephone’s
`location relative to cordless or cellular base stations, availability of the
`cellular and cordless systems, or user selectable preference between a
`cellular telephone call or a cordless telephone call.
`
`X1003, ¶85 (exhibit cites omitted). He then opines that:
`
`Based on my knowledge and experience in the field and my review of
`the prior art, Gillig’s teaching of switching between the cordless and
`cellular telephone based on different situations amounts to dynamically
`switching between use of the first or second antenna, as required in
`Element 1[d].
`
`Id. Dr. Jensen then points to Figure 6 as exemplary of a “dynamic switching”
`
`process, and quotes some language to the effect that Gillig’s phone monitors
`
`specified parameters such as signal strength. EX-1003, ¶87.
`
`Dr. Jensen’s declaration testimony is entitled to no weight, for multiple
`
`reasons. First, the construction of “dynamically switch” that Dr. Jensen applied in
`
`his analysis does not address whether manual user intervention to execute the
`
`“switch” is required. EX-2006, (Jensen Dep.) at 54:4-56:11. However, as shown in
`
`Section III.A above, the proper construction of the phrase precludes user
`
`intervention. Because Dr. Jensen applied a materially incorrect understanding of the
`
`- 12 -
`
`22
`
`
`
`meaning of “dynamically switch,” his opinion testimony is entitled to no weight.
`
`See Elbit, 881 F.3d at 1358.
`
`Moreover, even were the Board to reject Patent Owner’s construction of
`
`“dynamically switch,” the surrounding claim language—“the portable handheld
`
`wireless device is configured to dynamically switch . . . .”—independently precludes
`
`manual user intervention to execute the switch. As discussed in Section III.A above,
`
`the claim requires that the device be configured to dynamically switch between the
`
`antennas, not that it be configured to enable a user to dynamically switch. See
`
`Innova/Pure Water, Inc., 381 F.3d at 1116. Dr. Jensen does not address this in his
`
`declaration. So, here again, his testimony is conclusory.
`
`Moreover, even were Dr. Jensen’s opinion not deficient for the reasons
`
`outlined above, it would still fail because it is contrary to Gillig. Gillig’s phone does
`
`not “dynamically” switch between the cellular and cordless antennas because direct
`
`user intervention is required in order to execute the switch. EX-2004, ¶46. As shown
`
`in Section III.A above, a dynamic process is one that does not require user
`
`intervention. Dr. Jensen relies on Gillig’s disclosure of switching between cellular
`
`and cordless reception based on variable conditions, and points to the Figure 6 flow
`
`chart and related disclosure as exemplary. EX1003, ¶85. However, Figure 6
`
`describes “a flow chart . . . for receiving a telephone call as a cellular telephone call
`
`or a cordless telephone call according to user selectable preference.” EX-1004, 5:33-
`
`- 13 -
`
`23
`
`
`
`37. But this disclosure references receiving a call in the first instance, not switching
`
`between antennas. The entry block into this flow chart is 500, where the user
`
`activates the CCT and then at decision block 502, a check is made to determine if a
`
`call is being received. EX-1004, 7:37-40. There is no switching of antennas in the
`
`condition described by Figure 6; only a determination of which antenna to use in the
`
`first instance. EX-2004, ¶48.
`
`Figures 7 and 8 disclose situations where a call is ongoing and then switched
`
`between antennas and systems. EX-2004, ¶49; EX-1004, 6:35-39, 7:17-21. Figure
`
`7 is clear that there must be user acknowledgement and user selection for linking to
`
`occur:
`
`- 14 -
`
`24
`
`
`
`EX-1004, Figure 7. In this embodiment, a user must act during the call to employ
`
`call waiting to switch between calls. See id. 6
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