Trials@uspto.gov
`571-272-7822
`
`Paper 34
`Date: January 26, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2022-01222
`Patent 8,982,863 B1
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, HYUN J. JUNG, and NATHAN A. ENGELS,
`Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claim Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 34
`Date: January 26, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2022-01222
`Patent 8,982,863 B1
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, HYUN J. JUNG, and NATHAN A. ENGELS,
`Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claim Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2022-01222
`Patent 8,982,863 B1
`
`INTRODUCTION
`I.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Apple Inc. (“Petitioner”) has
`not shown by a preponderance of the evidence that claims 1–12, 14, 19, and
`24 of U.S. Patent No. 8,982,863 B1 (Ex. 1001, “the ’863 patent”) are
`unpatentable.
`A. Background and Summary
`Petitioner filed a Petition (Paper 2, “Pet.”) requesting institution of an
`inter partes review of claims 1–12, 14, 19, and 24 of the ’863 patent. Smart
`Mobile Technologies LLC (“Patent Owner”) did not file a Preliminary
`Response. Pursuant to 35 U.S.C. § 314, we instituted an inter partes review
`of claims 1–12, 14, 19, and 24 of the ’863 patent on all presented challenges.
`Paper 11 (“Inst. Dec.”), 2, 30.
`After institution, Patent Owner filed a Response (Paper 17, “PO
`Resp.”), to which Petitioner filed a Reply (Paper 23, “Pet. Reply”), and
`Patent Owner thereafter filed a Sur-reply (Paper 30, “PO Sur-reply”). An
`oral hearing in this proceeding was held on November 7, 2023; a transcript
`of the hearing is included in the record. Paper 33.
`B. Real Parties in Interest
`Petitioner identifies Apple Inc., Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc. as real parties in interest. Pet. 87.
`Patent Owner only identifies itself as a real party in interest. Paper 5, 1.
`C. Related Matters
`The parties identify Smart Mobile Techs. LLC v. Apple Inc., 6-21-cv-
`00603 (W.D. Tex.) as a related matter. Pet. 87; Paper 5, 1. Related patents
`
`2
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`Patent 8,982,863 B1
`are challenged in IPR2022-00766, IPR2022-01004, IPR2022-01005,
`IPR2022-01223, IPR2022-01248, and IPR2022-01249.
`D. The ’863 Patent (Ex. 1001)
`The ’863 patent issued on March 17, 2015 from an application filed
`on September 22, 2014, which is a continuation application of several
`previously filed continuation and continuation-in-part applications, the
`earliest of which was filed on June 4, 1999. Ex. 1001, codes (22), (45), (63),
`1:7–17.
`The ’863 patent states that an unfulfilled need exists for multiple
`transmitters and receivers (“T/R”) in a cellular telephone or mobile wireless
`device (“CT/MD”). Ex. 1001, 1:48–49. Figure 5A of the ’863 patent is
`reproduced below.
`
`
`
`Figure 5A shows a “a dual antenna, dual T/R unit in a CT/MD
`interfacing with a dual processor.” Ex. 1001, 2:15–17. Dual antenna 508
`and dual T/R unit 504 interface with dual processor 506 in dual band
`system 500. Id. at 4:37–39. System 500 can communicate through
`outputs 510, which can be “fibre optic channel, ethernet, cable, telephone, or
`other.” Id. at 4:42–45. “The multiple processors 506 allow for parallel and
`custom processing of each signal or data stream to achieve higher speed and
`better quality of output.” Id. at 4:51–53.
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`“By extension the feature of multiple antennas, multiple T/R units and
`multiple processors is extendable to the network switch box or network
`switch boxes that form a local, wide area, [v]irtual private network or
`connect to the Internet.” Ex. 1001, 4:45–48. The ’863 patent states that “a
`CT/MD and a network switch box are very similar in many ways” but
`“completely different functional units, with the CT/MD providing personal
`services and the network switch box providing system services.” Id. at
`3:16–19; see also id. at 5:40–45 (describing network switch box 552 and
`CT/MD 502 similarly). The network switch box “may be used in the
`wireless mode only in a wireless network or it may also be connected to one
`or more networks by wired and wireless means to fully leverage all the
`input/output ports.” Id. at 5:16–20. “The network switch box may have a
`universal serial bus (USB) port, a coaxial cable port, a standard telephone
`(POTS) port, a twisted pair port, Ethernet port, and most importantly an
`optical port.” Id. at 9:50–53.
`“A server such as Server C controls the communication protocols in
`conjunction with the network switching box or other devices, such as
`CT/MD.” Ex. 1001, code (57); see also id. at 4:49–51 (describing similarly
`Server C of CT/MD 502). In one embodiment, “Server C 910 oversees the
`allocation of data to the different channels and keeps the process under
`control.” Id. at 7:9–10. In another embodiment, Server C 1030 interfaces
`with separate data streams or a combined data stream 1028. Id. at 7:28–30,
`Fig. 10. Similarly, Server C 1130 interfaces with combined data
`stream 1128. Id. at 7:55–57, Fig. 11. Server C 1314 can supervise at least
`one of virtual private networks (“VPN”) 1302, 1306, 1310. Id. at 8:45–47,
`8:66–67, Fig. 13.
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`Patent 8,982,863 B1
`E. Illustrative Claim
`The ’863 patent includes 24 claims, of which Petitioner challenges
`claims 1–12, 14, 19, and 24. Claims 1 and 14 are independent, and
`reproduced below is claim 1.
`1.
`A system for controlling Internet Protocol (IP) based
`wireless devices, IP based cellular phones, networks or network
`switches by servers comprising:
`an IP enabled wireless device including a portable device
`or a cellular phone, said IP enabled wireless device comprising a
`plurality of antennas and ports, wherein the IP enabled wireless
`device is configured for voice and data communication and
`comprises a plurality of transmit and receive units;
`a first server connected to at least one internet protocol
`enabled network, said server configured with a controller in
`communication with a plurality of network devices; and
`a network switchbox, wherein the network switchbox is
`configured with a plurality of ports, wherein the network switch
`box is connected to at least two networks, wherein the network
`switchbox is configured to transmit and receive one or more data
`packets between the at least two networks.
`Ex. 1001, 11:59–12:10.
`F. Asserted Prior Art and Proffered Testimonial Evidence
`Petitioner identifies the following references as prior art in the
`asserted grounds of unpatentability:
`Name
`Reference
`Hardwick US 5,550,816, issued Aug. 27, 1996
`Matero US 5,768,691, issued June 16, 1998
`Ahopelto US 5,970,059, filed Jan. 8, 1996, issued Oct. 19,
`1999
`US 6,697,632 B1, filed May 7, 1998, issued Feb. 24,
`2004
`Pet. 17. Petitioner argues that Hardwick is prior art under § 102(b), Matero
`is prior art under § 102(a), and Ahopelto and Sood are prior art under
`
`Exhibit
`1008
`1007
`1005
`
`Sood
`
`1009
`
`5
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`Patent 8,982,863 B1
`§ 102(e). 1 Id. Petitioner also provides a Declaration of Dr. Michael Allen
`Jensen. Ex. 1003.
`Patent Owner provides a Declaration of Dr. Todor Cooklev.
`Ex. 2008. Deposition transcripts for Dr. Jensen (Ex. 2005) and Dr. Cooklev
`(Ex. 1029) were filed.
`G. Asserted Grounds
`Petitioner asserts that claims 1–12, 14, 19, and 24 are unpatentable on
`the following grounds:
`
`35
`Claim(s) Challenged
`U.S.C. §
`1–6, 8, 10, 11, 14, 19, 24 103(a)
`7, 9
`103(a)
`12
`103(a)
`Pet. 17.
`
`References/Basis
`Ahopelto, Matero
`Ahopelto, Matero, Hardwick
`Ahopelto, Matero, Sood
`
`II. ANALYSIS
`
`A. Legal Standards
`In inter partes reviews, the petitioner bears the burden of proving
`unpatentability of the challenged claims, and the burden of persuasion never
`shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in an inter partes review,
`the petitioner must support its challenges by a preponderance of the
`evidence. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2021).
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
`2013. Because the ’863 patent claims priority to an application filed before
`that date, our citations to 35 U.S.C. §§ 102 and 103 in this Decision are to
`their pre-AIA versions. See also Pet. 1 (requesting the challenged claims be
`canceled under “(pre-AIA) 35 U.S.C. § 103(a)”).
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`Petitioner contends that the challenged claims of the ’863 patent are
`unpatentable under § 103. Pet. 17. A claim is unpatentable under § 103 if
`the differences between the claimed subject matter and the prior art are such
`that the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) where in evidence, so-called
`secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). When evaluating a combination of teachings, we must also
`“determine whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at
`418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`B. Level of Ordinary Skill in the Art
`Petitioner argues that one of ordinary skill in the art “would have had
`a working knowledge of the wireless communication arts pertinent to the
`’863 patent” and “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.” Pet. 9–10 (citing Ex. 1003 ¶¶ 27–28).
`Petitioner also argues that “[l]ack of work experience can be remedied by
`additional education, and vice versa.” Id. at 10 (citing Ex. 1003 ¶¶ 27–28).
`We preliminarily adopted Petitioner’s proposed level of ordinary skill
`in the art. Inst. Dec. 8. Patent Owner does not dispute Petitioner’s proposal
`and does not propose its own level of ordinary skill in the art. See generally
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`PO Resp.; see also Ex. 2008 ¶ 22 (Patent Owner’s declarant accepting
`Petitioner’s proposed level of ordinary skill in the art).
`Based on the full record, we maintain and affirm that one of ordinary
`skill in the art “would have had a working knowledge of the wireless
`communication arts pertinent to the ’863 patent” and “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
`“[l]ack of work experience can be remedied by additional education, and
`vice versa.” Pet. 9–10 (citing Ex. 1003 ¶¶ 27–28).
`C. Claim Construction
`In an inter partes review, the claims are construed
`using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. [§] 282(b),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`37 C.F.R. § 42.100(b); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
`(Fed. Cir. 2005) (en banc).
`Petitioner argues that “said server configured with a controller in
`communication with a plurality of network devices” recited by claim 1
`“should be understood to recite that a server is ‘configured with a controller’
`and that it is the server that is ‘in communication with a plurality of network
`devices.’” Pet. 11 (citing Ex. 1001, 12:1–4; Ex. 1003 ¶ 54). We
`preliminarily adopted Petitioner’s understanding of the phrase. Inst. Dec. 9.
`“Patent Owner does not concede that Petitioner’s construction [of a
`‘server configured with a controller in communication with a plurality of
`
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`Patent 8,982,863 B1
`network devices’] is correct” and argues that “Petitioner’s arguments fail
`under any construction so it is not necessary to construe the term to resolve
`this IPR.” PO Resp. 14 n.1.
`Based on the full record, we determine that “said server configured
`with a controller in communication with a plurality of network devices” does
`not require express interpretation to resolve the parties’ dispute. Realtime
`Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is
`required to construe ‘only those terms that . . . are in controversy, and only
`to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`Petitioner also argues that, “for the purposes of this proceeding,” the
`remaining terms should be “given their plain and ordinary meaning.”
`Pet. 10 (citing Ex. 1003 ¶¶ 30, 53). Patent Owner does not propose an
`interpretation for any claim term. See generally PO Resp.
`Based on the full record, we determine that no other claim term
`requires express interpretation. Realtime Data 912 F.3d at 1375.
`D. Asserted Obviousness Based on Ahopelto and Matero
`Petitioner argues with citations to record evidence that claims 1–6, 8,
`10, 11, 14, 19, and 24 would have been rendered obvious in view of
`Ahopelto and Matero. Pet. 23–75. Petitioner notes that it “applies prior art
`in a manner consistent with Patent Owner’s allegations of infringement
`before the district court.” Pet. 10 n.1.
`1. Ahopelto (Ex. 1005)
`Ahopelto “relates to routing data packets independently of protocol
`between a mobile station of a packet radio network and a party connected to
`an external network.” Ex. 1005, 1:11–14. Figure 1 of Ahopelto is
`reproduced below.
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`Figure 1 shows two General Packet Radio Service (“GPRS”)
`networks and associated local and data networks. Ex. 1005, 3:63–64, 4:41–
`43. According to Ahopelto, GPRS is a new service in the Global System for
`Mobile Communication (“GSM”), a digital mobile communication system,
`and Ahopelto “is particularly well suited” for implementing GPRS in GSM.
`Id. at 1:28–35, 4:29–34.
`The telecommunication system of Figure 1 shows two GPRS
`operators 1, 2, and each has two GPRS support nodes (“GPRS SN”), a
`GPRS home support node (“GPRS HSN”), GPRS gateway support node
`(“GPRS GSN” or “GGSN”), and interworking functions (“IWF”), all of
`which are interconnected by an intra-operator backbone network. Ex. 1005,
`4:41–49. The intra-operator backbone network may be a local network. Id.
`at 6:7–10. Each GPRS SN “controls a packet data service within the area of
`one or more cells in a cellular packet radio network” and is connected to a
`part of a GSM mobile system, such as base station controller (“BSS”) or
`
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`base station (“BTS”). Id. at 4:50–58. A mobile station (“MS”), such as
`mobile station 3 and portable computer 4, communicates with BTS over a
`radio interface and with a GPRS SN over a mobile communication network.
`Id. at 4:58–62, 5:16–19. Mobile station 3 and portable computer 4 can be
`“integrated into one unit.” Id. at 5:31–34.
`Each GGSN connects one operator to another operator of the GPRS
`network and other data networks, such as inter-operator backbone network,
`IP network, or X.25 network. Ex. 1005, 6:16–19. An IWF is provided
`between a GGSN and other networks. Id. at 6:20–21. Different operators
`communicate through a GGSN and the inter-operator backbone network. Id.
`at 6:28–30.
`A host computer (“Host”) is connected to a local network and to an
`IPX network via a router. Ex. 1005, 6:50–53. The Host can send data
`packets to and receive data packets from a mobile station even when
`different protocols are used. Id. at 7:17–42, 8:27–45, Figs. 2–5.
`2. Matero (Ex. 1007)
`Matero relates particularly “to circuits used in single and dual band
`radio telephones, such as cellular telephones.” Ex. 1007, 1:5–8. Matero
`describes that band switching was accomplished with a mechanical relay or
`switch, but a mechanical switch required “a large and bulky component with
`a slow switching time.” Id. at 1:40–50. Matero also describes using an
`electronic switch, but such a switch “introduces a significant insertion loss
`into the RF path” or required higher transmitter power. Id. at 1:50–65.
`Matero provides an “antenna switching circuitry for use in a radio
`telephone of a type that includes a first transceiver operable in a first
`frequency band and a second transceiver operable in a second frequency
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`band” and “a first antenna port and a second antenna port.” Ex. 1007, 2:55–
`59. Figure 6 of Matero is reproduced below.
`
`
`Figure 6 shows an embodiment that “employs impedance matching
`lengths of transmission line to couple the duplexers to two antenna
`switches.” Ex. 1007, 4:45–48. The embodiment shown “employs lengths of
`transmission line (LI–L4) to couple the duplexers 5 and 5' to two antenna
`switches 14 and 16” and “thus overcomes the problems associated with the
`conventional approach.” Id. at 5:44–49. “Although the embodiment of
`FIG. 6 employs the two electronic switches 14 and 16 (or mechanical
`switches if so desired), there is only one switch in the RF signal path,” so
`that “the insertion loss is not doubled.” Id. at 5:51–55. Matero also
`describes an embodiment “particularly useful for systems where the
`frequency of the higher band is a multiple of the frequency of the lower
`band, e.g. GSM . . . and PCN.” Id. at 8:19–22.
`
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`3. Claim 1
`a) “A system for controlling Internet Protocol (IP) based wireless
`devices, IP based cellular phones, networks or network
`switches by servers comprising:”
`For the preamble, Petitioner argues that Ahopelto teaches the recited
`“server” because its GGSN has a server functionality “that determines how
`to forward a packet based on the packet’s protocol type” and “exercis[es]
`control over how a packet is routed based on the protocol type” or because
`the GGSN has an “Access Server.” Pet. 23–25 (citing Ex. 1003 ¶¶ 77, 78;
`Ex. 1005, 7:35–42, 8:40–41, 10:22–23, 10:48–50, 10:56–59, Fig. 1; Ex.
`1006, 11:51–55; Ex. 1010, 87; Ex. 1011, 15:10–18, Fig. 9); see also id. at 17
`(citing Ex. 1003 ¶¶ 19–26) (noting that “additional prior art” is cited “to
`demonstrate the background knowledge” of an ordinarily skilled artisan and
`“to provide contemporaneous context to support Petitioner’s assertions
`regarding what a [person of ordinary skill in the art] would have understood
`from the prior art”), 23 (citing Ex. 1003 ¶ 76). Petitioner also argues that the
`GGSN’s server functionality also controlled “mobile stations’ access to
`networks external to the public land mobile network” and would have
`controlled “forwarding traffic or not.” Id. at 25 (citing Ex. 1003 ¶¶ 80–81;
`Ex. 1006, 5:32–39, 14:1–10, 16:44–48; Ex. 1011, 15:13–18; Ex. 1021, 3).
`Petitioner further argues that Ahopelto discloses controlling IP based
`wireless devices, networks, and network switches. Id. at 25–28 (citing
`Ex. 1003 ¶¶ 82–30; Ex. 1005, code (57), 4:41–62, 5:2–7, 5:16–34, 6:16–19,
`Fig. 1; Ex. 1022, 528).
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`b) “a first server connected to at least one internet protocol
`enabled network, . . . and a network switchbox, wherein the
`network switchbox is configured with a plurality of ports,”
`For the required “first server,” Petitioner argues that Ahopelto’s
`GGSN server functionality to determine protocol type would have rendered
`obvious the recited first server. Pet. 33 (citing Ex. 1003 ¶¶ 104–105;
`Ex. 1005, 7:35–40, 8:40–41). Petitioner alternatively argues that the
`GGSN’s Access Server would teach the recited first server. Id. at 33–34
`(citing Ex. 1003 ¶ 106; Ex. 1005, Fig. 1; Ex. 1006, 11:51–55; Ex. 1010, 87;
`Ex. 1011, 15:10–18, Fig. 9). Petitioner also argues that the GGSN server
`functionality is connected to an IP enabled network. Id. at 34–35 (citing
`Ex. 1003 ¶¶ 107–108; Ex. 1005, 6:16–19, 6:37–42, Fig. 1).
`For the “network switchbox,” Petitioner argues that Ahopelto’s
`GGSN includes a routing functionality that connects different data packet
`networks, such as another GPRS system, inter-operator backbone network,
`X.25 network, and IP network, so that the GGSN’s routing functionality
`operates as a network switch box. Pet. 38–39 (citing Ex. 1005, code (57),
`6:16–19), 39–40 (citing Ex. 1003 ¶ 124; Ex. 1005, Fig. 1). Petitioner also
`argues that the GGSN acts like an IP router to external packet networks. Id.
`at 39 (citing Ex. 1003 ¶¶ 119–122; Ex. 1006, 5:15–24; Ex. 1010, 85, 87;
`Ex. 1013, 14:1–3; Ex. 1014, 2:9–11).
`Petitioner further argues that it would have been obvious that
`connecting between networks would have done through the GGSN’s routing
`functionality. Pet. 39 (citing Ex. 1003 ¶ 123; Ex. 1010, 84, 87; Ex. 1022,
`12). Petitioner additionally argues that it would have been obvious that the
`GGSN has multiple ports for its routing functionality. Id. at 40 (citing
`Ex. 1003 ¶¶ 125–126; Ex. 1005, Fig. 1; Ex. 1013, 14:1–3).
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`c) Patent Owner’s Response
`Patent Owner responds that, because claim 1 recites “server” and
`“network switch box” separately, the claim requires those elements to be
`separate and distinct. PO Resp. 4. According to Patent Owner, Petitioner
`fails to establish that the asserted “server functionality” and “router
`functionality” are two separate and distinct elements. Id. at 4–5 (citing
`Pet. 33, 38–39, 62, 69). Patent Owner argues that Petitioner’s evidence and
`argument, instead, show that the asserted functionalities are not separate and
`distinct because Petitioner contends that the functionalities do the same
`thing. Id. at 5 (citing Pet. 24, 40; Ex. 1005, 7:35–42, 8:40–41, 10:22–23,
`10:48–50, 10:56–59; Ex. 1013, 14:1–3), 6 (citing Pet. 24, 69).
`Patent Owner also argues that Petitioner’s declarant testified that
`determining how to forward a data packet is part of routing, contrary to his
`declaration. PO Resp. 5 (citing Ex. 1003 ¶ 80; Ex. 2005, 46:22–47:1).
`Patent Owner further argues that Petitioner relies on the same disclosure that
`describes the functionalities and, thus, relies on the same disclosure for
`teaching the recited server and network switch box. Id. at 6 (citing Pet. 24,
`34, 43–44; Ex. 1003 ¶¶ 132–133; Ex. 1005, 6:16–19, 7:21–42, 8:27–45;
`Ex. 1006, 5:15–24).
`Patent Owner contends that Ahopelto does not teach Petitioner’s
`asserted server and routing functionalities, never uses the terms “server
`functionality” and “routing functionality,” and, thus, cannot make a
`distinction between the asserted server and routing functionalities of its
`GGSN. PO Resp. 7 (citing Pet. 38). Patent Owner also contends that the
`cited support for Petitioner’s alleged implementation of the server and
`routing functionalities does not teach or suggest separate logical or hardware
`entities. Id. (citing Pet. 39; Ex. 1010, 84; Ex. 1022, 12).
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`Patent Owner further contends that, for the hardware implementation
`argument, Petitioner cites to a part of its declaration that only describes
`software. PO Resp. 7–8 (citing Pet. 39; Ex. 1003 ¶ 123). Patent Owner
`argues that one of ordinary skill in the art would have expected to implement
`a routing functionality on a router, not a separate piece of hardware. Id. at 8
`(citing Ex. 2008 ¶ 41). According to Patent Owner, the cited support is
`silent on implementing on hardware any routing functionality separate from
`a server functionality. Id. at 8 (citing Ex. 2008 ¶ 41).
`As for a separate implementation in logic, Patent Owner argues that
`Petitioner’s declarant admitted that the cited support does not show a routing
`functionality separately from a server functionality and could not explain
`how any reference shows the asserted separate functionalities. PO Resp. 8
`(citing Ex. 1003 ¶ 123; Ex. 2005, 56:16–57:2, 57:19–58:1, 63:21–64:17).
`Patent Owner also argues that one of ordinary skill in the art would not have
`viewed the asserted functionalities to be separate in Ahopelto’s GGSN. Id.
`at 9–10 (citing Ex. 2008 ¶¶ 34–43).
`Patent Owner also responds that Ahopelto does not disclose the
`asserted “Access Server” of Petitioner’s alternative argument. PO Resp. 10.
`Patent Owner argues that Petitioner cites other exhibits to support an alleged
`disclosure, but these exhibits are not part of the proposed combination. Id.
`(citing Ex. 1006; Ex. 1010; Ex. 1011). Patent Owner also argues that there
`is no explanation or analysis as to why one of ordinary skill in the art would
`have looked to these exhibits. Id. In Patent Owner’s view, Petitioner is
`relying on general knowledge in the art to supply a critical missing element
`without a reasoned explanation. Id. at 11. Merely arguing that it would
`have been obvious to include an Access Server in Ahopelto’s GGSN is,
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`according to Patent Owner, conclusory and is not a reasoned explanation.
`Id.
`
`Patent Owner contends that the alternative Access Server argument is
`also “undeveloped and fails to connect all the relevant claim limitations,”
`such as how the asserted Access Server is “in communication with a
`plurality of network devices.” PO Resp. 11 (citing Pet. 36–37). Patent
`Owner also contends that Petitioner’s only argument for that limitation uses
`the “server functionality,” not the Access Server. Id. at 11–12. Patent
`Owner further contends that Petitioner fails to connect the asserted Access
`Server with other arguments about the preamble of claim 1 and claim 14’s
`limitation that a “server is configured for communication with the first
`network switch box and the second network switch box.” Id. at 12–13
`(citing Pet. 24–25, 69).
`d) Petitioner’s Reply
`Petitioner replies that one of ordinary skill in the art “would have
`understood Ahopelto’s teachings of GGSNs to include the generic functions
`known in the art for a ‘server’ and a ‘network switch box,’ since the claims
`themselves do not impose distinguishing limits on the terms” as
`demonstrated by testimonial evidence. Pet. Reply 6 (citing Pet. 33, 35–39;
`Ex. 1003 ¶¶ 105, 111, 113, 117, 123), 7 (citing Ex. 1001, 12:1–10, 12:64–
`13:10). Petitioner argues that the analysis should focus “on the teachings of
`the prior art,” not missing words. Id. at 6 (citing PO Resp. 7).
`Petitioner contends that GGSN’s were known to “include logical
`components for different functions, such as ‘server’ and ‘network switch
`box’ functionalities,” and “Ahopelto teaches implementing different
`equipment functions (such as GGSN and SGSN) ‘in a single computer.’”
`Pet. Reply 8 (citing Pet. 37; Ex. 1005, 6:10–15). Petitioner also contends
`
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`that other record evidence shows that GGSNs were known to have “modular
`software,” “[m]odular functions included a ‘router function,’ ‘access-server
`functionality,’ border gateway function, and charging function,” and that
`routers and servers were implemented on the same GGSN hardware. Id.
`(citing Pet. 25, 34–36, 39; Ex. 1003 ¶¶ 111, 122; Ex. 1010, 84, 85, 87;
`Ex. 1011, 15:10–18; Ex. 1015, 10:9–13, 11:14–16, 11:20–24, Fig. 7).
`According to Petitioner, one of ordinary skill in the art would have
`understood that Ahopelto teaches the server functionality that would have
`rendered obvious the “server” and connecting two networks that would have
`rendered obvious the “network switch box.” Pet. Reply 9–10 (citing Pet. 24,
`33–34; Ex. 1003 ¶¶ 77, 105, 121, 128; Ex. 1005, Abstract, 6:16–19, Fig. 1;
`Ex. 1029, 62:5–6). Petitioner also argues that GGSNs were known to have
`multiple ports for different connections to different networks for receiving
`and transmitting packets. Id. at 10–11 (citing Pet. 40, 43–44, 45; Ex. 1003
`¶¶ 121, 125, 134–136; Ex. 1005, 7:21–29, 7:40–42, Fig. 1; Ex. 1013, 14:1–
`3).
`
`Petitioner also replies that the Petition demonstrates that the
`functionalities are logically separate and “there is simply no blanket
`requirement for separate claim limitations to be physically separate or
`distinct.” Pet. Reply 11 (citing PO Resp. 4, 5, 7–8). Petitioner argues that
`its declarant “explained with supporting evidence that a ‘server’ and a
`‘network switch box’ were known to [persons of ordinary skill in the art] to
`be implemented logically on the same physical hardware, beginning with
`Ahopelto itself.” Id. at 11–12 (citing Pet. 39; Ex. 1003 ¶ 123; Ex. 1005,
`6:10–15; Ex. 1010, 84; Ex.1015, 10:9–13, 11:14–16; Ex. 1022, 12).
`Petitioner also argues that it is irrelevant whether the functionalities have
`distinct hardware and one of ordinary skill in the art would have found the
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`“server” and “network switch box” obvious from the logically distinct
`GGSN functions. Id. at 12 (citing Pet. 24; PO Resp. 6, 8; Ex. 1003 ¶¶ 77,
`130, 208–216; Ex. 1005, 7:37–40, 8:40–45, 10:22–27, 10:48–62).
`Petitioner contends that “‘where’ to forward was not the ‘server
`functionality’ identified in Ahopelto,” but how. Pet. Reply 12–13 (citing
`Pet. 24, 39–40; PO Resp. 5; Ex. 1003 ¶¶ 77, 123–125; Ex. 2005, 46:22–
`47:18). Petitioner also contends that one of ordinary skill in the art would
`have recognized the functionalities, even if they are not expressly stated. Id.
`at 13–14 (citing Pet. 24, 38–39; PO Resp. 6–7; Ex. 1003 ¶ 77; Ex. 1005,
`7:37–40, 8:40–45, 10:22–27, 10:48–62).
`Petitioner further replies that one of ordinary skill in the art would
`have understood that the GGSN includes an access server for connecting
`operators of GPRS systems and data networks. Pet. Reply 14 (citing Pet. 25,
`34; Ex. 1003 ¶ 106; Ex. 1005, 6:16–19; Ex. 1006, 11:51–55; Ex. 1010, 87;
`Ex. 1011, 15:10–18). Petitioner contends that its declarant’s analysis
`provided copious support and Patent Owner’s declarant admitted that a
`GGSN includes an access server. Id. at 14 (citing Pet. 25, 34; PO Resp. 10–
`11; Ex. 1029, 57:8–16). Petitioner also contends that the “access server”
`would meet the preamble, further rendering obvious the above-quoted
`limitation. Id. at 14–15 (citing Pet. 25, 35, 36; PO Resp. 11–12; Ex. 1003
`¶¶ 80, 112, 113; Ex. 1006, 14:1–10, 16:44–48; Ex. 1011, 15:13–18).
`e) Patent Owner’s Sur-Reply
`Patent Owner replies that “Petitioner still cannot show any difference
`between the alleged ‘server functionality’ and alleged ‘routing
`functionality.’” PO Sur-reply 1. According to Patent Owner, “Petitioner
`does not dispute that the ‘server’ and ‘network switch box’ of claims 1 and
`14 are separate and distinct components.” Id. (citing Pet. Reply 11–12).
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`Patent Owner argues that it “does not contend that the claimed ‘server’ and
`‘network switch box’ must be physically separate” and that “Petitioner still
`must establish the ‘server’ and ‘network switch box’ ‘as distinct
`components, regardless of whether [they] are on a single or multiple
`physical machines.’” Id. at 2.
`Patent Owner also argues that Ahopelto does not make a distinction
`between “server functionality” and “routing functionality,” but Petitioner
`imagines a distinction that is inaccurate and inconsistent with Ahopelto and
`undermined by arguments in the Petition. PO Sur-reply 2 (citing Pet. 33,
`38–39; PO Resp. 4–10; Pet. Reply 9). Patent Owner further argues that
`Ahopelto does not support Petitioner’s reply argument that how and where
`to forward a packet are distinctions, and Petitioner does not identify any
`description in Ahopelto for support. Id. (citing PO Resp. 7; Pet. Reply 13).
`In Patent Owner’s view, Ahopelto does not contemplate implementing
`separate functionalities for how and where to forward a packet.
`Patent Owner contends that “the absence of any express
`differentiation in Ahopelto weighs against Petitioner’s argument that the
`alleged functionalities a
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