`
`
`
`
`
`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
`U.S. Patent No. 8,982,863
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`

`

`
`
`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST .............................................................................. 5
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 7
`
`GROUNDS FOR STANDING ........................................................................ 7
`
`III. NOTE ............................................................................................................... 7
`
`IV. SUMMARY OF THE ’863 PATENT ............................................................. 7
`
`V.
`
`PROSECUTION HISTORY ........................................................................... 9
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 9
`
`VII. CLAIM CONSTRUCTION ..........................................................................10
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF .................................................................................13
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE .................13
`
`A. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate .... 13
`
`B.
`
`Discretionary denial under the Fintiv factors is not appropriate ........ 13
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`No evidence regarding a stay ................................................... 13
`
`Parallel proceeding trial date ................................................... 14
`
`Investment in the parallel proceeding ...................................... 14
`
`Overlapping issues with the parallel proceeding ..................... 15
`
`Petitioner is a defendant ........................................................... 15
`
`Other circumstances ................................................................. 16
`
`C.
`
`Discretionary denial under General Plastic is not appropriate .......... 16
`
`2
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`X.
`
`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....16
`
`A.
`
`B.
`
`C.
`
`Challenged Claims ............................................................................. 16
`
`Statutory Grounds for Challenges ...................................................... 17
`
`Ground 1: Claims 1-6, 8, 10-11, 14, 19, and 24 are obvious under
`35 U.S.C. § 103(a) over Ahopelto in view of Matero ........................ 18
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Summary of Ahopelto .............................................................. 18
`
`Summary of Matero ................................................................. 20
`
`Reasons to Combine Ahopelto and Matero ............................. 21
`
`Claim 1 ..................................................................................... 23
`
`Claim 2 ..................................................................................... 45
`
`Claim 3 ..................................................................................... 48
`
`Claim 4 ..................................................................................... 52
`
`Claim 5 ..................................................................................... 53
`
`Claim 6 ..................................................................................... 54
`
`10. Claim 8 ..................................................................................... 55
`
`11. Claim 10 ................................................................................... 57
`
`12. Claim 11 ................................................................................... 58
`
`13. Claim 14 ................................................................................... 61
`
`14. Claim 19 ................................................................................... 71
`
`15. Claim 24 ................................................................................... 73
`
`D. Ground 2: Claims 7 and 9 are obvious under 35 U.S.C. § 103(a)
`over Ahopelto in view of Matero and Hardwick. .............................. 75
`
`3
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`1.
`
`2.
`
`3.
`
`4.
`
`Summary of Hardwick ............................................................. 75
`
`Reasons to combine Ahopelto, Matero, and Hardwick ........... 75
`
`Claim 7 ..................................................................................... 77
`
`Claim 9 ..................................................................................... 78
`
`E.
`
`Ground 3: Claim 12 is obvious under 35 U.S.C. § 103(a) over
`Ahopelto in view of Matero and Sood. .............................................. 79
`
`1.
`
`2.
`
`3.
`
`Summary of Sood..................................................................... 79
`
`Reasons to combine Ahopelto, Matero, and Sood ................... 80
`
`Claim 12 ................................................................................... 82
`
`XI. CONCLUSION ..............................................................................................86
`
`XII. MANDATORY NOTICES ...........................................................................87
`
`A.
`
`B.
`
`C.
`
`Real Parties-in-Interest ....................................................................... 87
`
`Related Matters ................................................................................... 87
`
`Lead and Back-up Counsel and Service Information ........................ 87
`
`CERTIFICATE OF WORD COUNT ......................................................................89
`
`CERTIFICATE OF SERVICE ................................................................................90
`
`4
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`

`
`
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`Ex.1004
`
`Ex.1005
`
`Ex.1006
`Ex.1007
`
`Ex.1008
`
`Ex.1009
`
`Ex.1010
`
`Ex.1011
`
`Ex.1012
`Ex.1013
`
`Ex.1014
`
`Ex.1015
`Ex.1016
`
`Ex.1017
`
`Ex.1018
`Ex.1019
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`PETITIONER’S EXHIBIT LIST
`
`U.S. 8,982,863 (“the ’863 patent”)
`
`Prosecution History of U.S. 8,982,863
`
`Declaration of Dr. Michael Allen Jensen under 37 C.F.R. § 1.68
`Curriculum Vitae of Dr. Michael Allen Jensen
`
`U.S. Patent No. 5,970,059 to Juha-Pekka Ahopelto, et al.
`(“Ahopelto”)
`
`U.S. Patent No. 6,636,502 to Per Lager, et al. (“Lager”)
`U.S. Patent No. 5,768,691 to Jorma Matero, et al. (“Matero”)
`
`U.S. Patent No. 5,550,816 to Ken Hardwick, et al. (“Hardwick”)
`
`U.S. Patent No. 6,697,632 to Prem Sood (“Sood”)
`H. Granbohm & J. Wiklund, GPRS-General packet radio service,
`Ericsson Review No. 2, 1999, pp. 82-88 (“Granbohm”)
`
`U.S. Patent No. 6,608,832 to Jan E. Forslöw (“Forslöw”)
`
`U.S. Patent No. 6,532,227 to Arto Leppisaari et al. (“Leppisaari”)
`U.S. Patent No. 6,937,566 to Jan E. Forslöw (“Forslöw”)
`
`U.S. Patent No. 7,649,837 to Mikko Puuskari (“Puuskari”)
`
`U.S. Patent No. 6,584,098 to Stephen Dutnall (“Dutnall”)
`U.S. Patent No. 6,269,254 to James E. Mathis (“Mathis”)
`
`U.S. Patent No. 8,489,860 to Michael McMahon et al.
`(“McMahon”)
`
`U.S. Patent No. 6,430,599 to Mark Baker et al. (“Baker”)
`U.S. Patent No. 6,295,450 to Subramanian S. Lyer et al. (“Lyer”)
`
`5
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`U.S. Patent No. 6,862,622 to Jacob W. Jorgensen (“Jorgensen”)
`C. Rigney et al., “Remote Authentication Dial In User Service
`(RADIUS),” Network Working Group, Request for Comments:
`2138, April 1997 (“RFC2138”)
`William Stallings, Data and Computer Communications (Prentice
`Hall, 5th ed., 1997)
`Daniel D. Gajski et al., Specification and Design of Embedded
`Systems (Prentice Hall, 1994)
`Joint Agreed Scheduling Order; Dkt. 30, Smart Mobile
`Technologies LLC v. Apple Inc., Case No. 6-21-cv-00603 (WDTX)
`Complaint; Dkt. 1, Smart Mobile Technologies LLC v. Apple Inc.,
`Case No. 6-21-cv-00603 (WDTX)
` Amended Joint Agreed Scheduling Order; Dkt. 57, Smart Mobile
`Technologies LLC v. Apple Inc., Case No. 6-21-cv-00603 (WDTX)
`U.S. Patent No. 6,125,388 to Richard R. Reisman (“Reisman”)
`
`
`
`Ex.1020
`
`Ex.1021
`
`Ex.1022
`
`Ex.1023
`
`Ex.1024
`
`Ex.1025
`
`Ex.1026
`
`Ex.1027
`
`
`
`
`
`
`6
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`

`

`
`I.
`
`INTRODUCTION
`
`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`U.S. Patent No. 8,982,863 (“the ’863 patent”) claims concepts related to
`
`controlling Internet Protocol (IP) based wireless devices with multiple
`
`transmit/receive units, with network switch boxes connected to multiple networks,
`
`using servers. But these were already well-known concepts in the art as
`
`demonstrated below.
`
`Apple Inc. (“Petitioner”) respectfully requests that the Board cancel as
`
`unpatentable under (pre-AIA) 35 U.S.C. §103(a) claims 1-12, 14, 19, and 24 (the
`
`“Challenged Claims”) of the ’863 patent.
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’863 patent is eligible for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR challenging the patent claims. 37
`
`C.F.R. § 42.104(a).
`
`III. NOTE
`Petitioner cites to exhibits’ original page numbers. Emphasis in quoted
`
`material has been added. Claim terms are presented in italics.
`
`IV. SUMMARY OF THE ’863 PATENT
`
`The ’863 patent describes a “cellular telephone/mobile device (CT/MD)”
`
`equipped with multiple transmitters and receivers and with multiple antennas.
`
`Ex.1001, Title, 1:24-26, 1:47-57. Distinguishing from “typical CT/MD[s]” having
`
`7
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`

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`“one transmitter and one receiver (T/R), with one antenna,” the ’863 patent’s
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`CT/MD employs multiple transmitters/receivers and antennas, providing
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`“enhanced capabilities” that “allow[] the single CT/MD to perform tasks in
`
`different environments—each T/R being specifically designed or configured for
`
`that specific purpose.” Ex.1001, 1:47-57; see also 4:6-36. Referring to Figures 4
`
`and 5A below, the ’863 patent describes a “dual antenna, dual T/R unit” in a
`
`CT/MD to implement a “dual band system” that includes “multiple antennas 508
`
`and multiple T/R units 504” and “multiple processors 506” for “parallel and
`
`custom processing of each signal or data stream.” Ex.1001, 4:14-5:20; Ex.1003,
`
`¶¶45-46.
`
`Ex.1001, Figures 4 and 5A
`
`
`
`A “Server C” and “network switching box” are in communication with the
`
`8
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`

`

`
`CT/MD. See Ex.1001, Abstract. The “Server C” controls communication
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`protocols, operates with computers that need to “exchange data streams” with each
`
`other, and “allocat[es] channels and transfers of the data.” Ex.1001, 4:49-51, 6:64-
`
`67, 7:2-7. The network switching box provides “system services” with multiple
`
`input/output ports to “fully interface and interact with different environments
`
`sequentially or simultaneously.” Ex.1001, 3:15-19, 5:40-45, 9:26-27, 9:48-55; see
`
`also 5:6-20 (network switch box may be fixed or portable, with wired or wireless
`
`connections); Ex.1003, ¶¶47-49.
`
`V.
`
`PROSECUTION HISTORY
`
`The ’863 patent was filed September 22, 2014 as a continuation of
`
`14/139,817 (December 23, 2013), claiming priority through a chain of
`
`continuations to 09/617,608 (July 17, 2000), a continuation-in-part of 09/281,739
`
`(June 4, 1999). Ex.1002, cover page. After an office action rejecting multiple
`
`claims under obviousness-type double patenting, the applicant cancelled the
`
`affected claims and an allowance was mailed. Ex.1002, 34-45, 71-81, 152-60, 12-
`
`15. The ’863 patent issued on March 17, 2015. Ex.1002, cover page; Ex.1003,
`
`¶¶50-52.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`A Person of Ordinary Skill in The Art (“POSITA”) in June of 1999 would
`
`have had a working knowledge of the wireless communication arts pertinent to the
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`9
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`

`
`’863 patent. That person would have a bachelor’s degree in electrical engineering,
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`IPR2022-01222 Petition
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`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. Lack of work experience can be remedied by additional
`
`education, and vice versa. Ex.1003, ¶¶27-28.
`
`VII. CLAIM CONSTRUCTION
`
`In an inter partes review, claims “shall be construed using the same claim
`
`construction standard that would be used to construe the claim in a civil action
`
`under 35 U.S.C. 282(b), including construing the claim in accordance with the
`
`ordinary and customary meaning of such claim as understood by one of ordinary
`
`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. §
`
`42.100(b). The Board only construes the claims to the extent necessary to resolve
`
`the underlying controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner submits that for the purposes
`
`of this proceeding, the following terms of the challenged claims should be
`
`construed, with the remaining terms being given their plain and ordinary meaning.1
`
`Ex.1003, ¶¶30, 53.
`
`
`1 Petitioner is not conceding that each claim satisfies all statutory requirements,
`
`such as §§101 and 112, nor is Petitioner waiving any arguments concerning claim
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`“said server configured with a controller in communication with a
`plurality of network devices”
`Claim 1 recites “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.” Ex.1001, 12:1-4. The claim language itself is unclear
`
`as to whether the server or the controller is in communication with the plurality of
`
`network devices. However, when read in view of the specification, this claim
`
`language 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.” Ex.1003, ¶54.
`
`First, the ’863 patent’s specification does not describe a server with a
`
`controller, where it is the controller that is in communication with a plurality of
`
`network devices. Instead, any mention of a “controller” is with respect to a
`
`controller in the mobile device “CT/MD.” See, e.g., Ex.1001, 4:51-63 (CT/MD
`
`interfaces with multiple processors that include a memory controller, distinct from
`
`
`scope or grounds that can only be raised in district court. For this petition,
`
`Petitioner applies prior art in a manner consistent with Patent Owner’s allegations
`
`of infringement before the district court.
`
`11
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`“Server C”); 7:21-30 (controller interfaces data streams to server); 7:48-57 (same);
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`Ex.1003, ¶55.
`
`Second, the ’863 patent specification describes server C as in
`
`communication with the network devices. For example, with respect to FIG. 7, “a
`
`CT/MD 702 having multiple T/R units” connects “to a Server C 706 through a
`
`wireless connection 704.” Ex.1001, 6:20-26. In FIG. 9, “Server C 910”
`
`communicates with endpoint computers 902 and 908 to “oversee[] the allocation of
`
`data to the different channels and keep[] the process under control.” Ex.1001, 6:65-
`
`7:10. Figures 10 and 11 include data streams from CT/MDs being “interfaced to
`
`Server C.” Ex.1001, 7:28-30, 55-57. And with respect to FIG. 13, the specification
`
`describes communication in a VPN “through the network switch box 1316 to
`
`server 1318.” Ex.1001, 8:45-55; Ex.1003, ¶56.
`
`As these examples demonstrate, the ’863 patent specification contemplated
`
`the server C in communication with network devices, not a controller. Therefore, a
`
`POSITA would have understood that the term “said server configured with a
`
`controller in communication with a plurality of network devices” includes the
`
`server is in communication with a plurality of network devices, and is configured
`
`with a controller. Ex.1003, ¶57.
`
`12
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board institute a trial for inter partes review and
`
`cancel the Challenged Claims in view of the analysis below.
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE
`A. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate
`
`Denial under § 325(d) is not warranted because the challenges presented in
`
`this petition are neither cumulative nor redundant to the prosecution of the ’863
`
`patent. The Examiner did not consider any of the references relied upon in this
`
`petition. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). Therefore,
`
`discretionary denial under § 325(d) is not appropriate.
`
`B. Discretionary denial under the Fintiv factors is not appropriate
`
`The six factors considered for § 314 denial strongly favor institution. See
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020).
`
`1. No evidence regarding a stay
`
`No motion to stay has been filed, so the Board should not infer the outcome
`
`of such a motion. Sand Revolution II LLC v. Continental Intermodal Group –
`
`Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020)
`
`(informative); see also Dish Network L.L.C. v. Broadband iTV, Inc., IPR2020-
`
`01359, Paper 15 (Feb. 12, 2021) (“It would be improper to speculate, at this stage,
`
`13
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`what the Texas court might do regarding a motion to stay…”). This factor is
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`neutral.
`
`2. Parallel proceeding trial date
`
`As of the filing of this petition, the parties in the district court litigation have
`
`agreed to amend the district court’s first docket control order (Ex.1024) setting jury
`
`selection for trial to begin on December 4, 2023. Ex.1026, 4. A claim construction
`
`hearing is scheduled for October 5, 2022. Ex.1026, 3. The expected date for a Final
`
`Written Decision in this case is in January 2024, within a month of trial.
`
`As trial is scheduled to begin in such close proximity to a Final Written
`
`Decision, and Petitioner has worked expeditiously to prepare this petition soon
`
`after receiving infringement contentions, this factor weighs against discretionary
`
`denial. Fintiv, Paper 11 at 11–12. And the Board should not rely excessively on
`
`court dates that, as of this filing, are nearly a year away. In re Apple Inc., 979 F.3d
`
`1332, 1344 (Fed. Cir. 2020) (“a court’s general ability to set a fast-paced schedule
`
`is not particularly relevant… where, like here, the forum itself has not historically
`
`resolved cases so quickly.”).
`
`3. Investment in the parallel proceeding
`
`The co-pending litigation is in its early stages, and the investment in it has
`
`been minimal. Claim construction has not yet occurred; fact discovery has not yet
`
`begun and will not close until May 3, 2023, and expert discovery has not yet begun
`
`14
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`and will not close until July 26, 2023. Ex.1026, 3; see PEAG LLC v. Varta
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`Microbattery GmbH, IPR2020-01214, Paper 8 at 17 (Jan. 6, 2021) (finding that
`
`since no claim construction hearing had yet been held and discovery was not
`
`completed, the little investment in the parallel proceeding weighed against
`
`discretionary denial).
`
`4. Overlapping issues with the parallel proceeding
`
`The prior art addressed in the Petition will also be a part of Petitioner’s
`
`invalidity contentions in the litigation. Instituting a proceeding will allow the
`
`Board to address the art, and the issues will be narrowed in the litigation due to the
`
`estoppel provisions of 35 U.S.C. § 315(e)(2).
`
`If the Board institutes trial, Petitioner will cease asserting in the district court
`
`litigation any invalidity contention based on the grounds presented in this petition.
`
`Institution will not result in any overlapping consideration of invalidity arguments.
`
`This factor favors institution.
`
`5. Petitioner is a defendant
`
`Petitioner is a defendant in the litigation. Ex.1025, 1. That is true of most
`
`Petitioners in IPR proceedings. Accordingly, this factor should not be a basis for
`
`denying institution.
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`6. Other circumstances
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`The prior art presented in this Petition renders the Challenged Claims
`
`unpatentable as obvious. The merits of Petitioner’s arguments are compelling
`
`because they would plainly lead to a conclusion that one or more claims are
`
`unpatentable by a preponderance of the evidence. This factor therefore weighs
`
`against discretionary denial.
`
`Because the Fintiv factors are either neutral or weigh against discretionary
`
`denial, and because this Petition was filed more than two months before the
`
`statutory bar date, institution should not be denied on discretionary factors.
`
`C. Discretionary denial under General Plastic is not appropriate
`
`The ’863 patent has not been challenged in any prior IPR petition, so none of
`
`the General Plastic discretionary institution factors apply to this Petition. See
`
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
`
`Paper 19 at 16 (PTAB Sept. 6, 2016) (Section II.B.4.i. precedential).
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
`
`Petitioner challenges claims 1-12, 14, 19, and 24, including all claims
`
`asserted in the plaintiff’s infringement contentions in the co-pending litigation.
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`B.
`
`Statutory Grounds for Challenges
`
`Grounds
`#1
`
`#2
`
`#3
`
`Claims
`1-6, 8, 10-11,
`14, 19, 24
`7, 9
`
`12
`
`Basis
`§ 103 (Pre-AIA) Ahopelto in view of Matero
`
`§ 103 (Pre-AIA) Ahopelto in view of Matero and
`Hardwick
`§ 103 (Pre-AIA) Ahopelto in view of Matero and Sood
`
`U.S. Patent No. 5,970,059 to Ahopelto has a § 371 date of July 9, 1997,
`
`
`
`
`
`issuing October 19, 1999. U.S. Patent No. 6,697,632 to Sood was filed May 7,
`
`1998, issuing February 24, 2004. Ahopelto and Sood are prior art under 35 U.S.C.
`
`§ 102(e).
`
`U.S. Patent No. 5,768,691 to Matero issued June 16, 1998. Matero is prior
`
`art under 35 U.S.C. § 102(a).
`
`U.S. Patent No. 5,550,816 to Hardwick issued August 27, 1996. Hardwick is
`
`prior art under 35 U.S.C. § 102(b).
`
`Petitioner’s analysis also cites additional prior art to demonstrate the
`
`background knowledge of a POSITA and to provide contemporaneous context to
`
`support Petitioner’s assertions regarding what a POSITA would have understood
`
`from the prior art. See Yeda Research v. Mylan Pharm. Inc., 906 F.3d 1031, 1041-
`
`1042 (Fed. Cir. 2018) (affirming the use of “supporting evidence relied upon to
`
`support the challenge”); Ex.1003, ¶¶19-26.
`
`17
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`C. Ground 1: Claims 1-6, 8, 10-11, 14, 19, and 24 are obvious under
`35 U.S.C. § 103(a) over Ahopelto in view of Matero
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`1.
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`Summary of Ahopelto
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`Ahopelto describes packet radio systems including the General Packet Radio
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`Service (GPRS), a “service in the GSM system” with interconnected sub-network
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`service areas. Ex.1005, Abstract, 1:24-38, 4:29-40. Figure 1 illustrates “GPRS
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`packet radio networks, local networks, data networks,” with “two GPRS operators,
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`operator 1 and operator 2,” each having two GPRS support nodes (GPRS SN), a
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`GPRS gateway support node (GPRS GSN, or “GGSN”), and interworking
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`functions (IWF). Ex.1005, 4:41-47; see Figure 1:
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`Ex.1005, FIG. 1; Ex.1003, ¶¶ 58-59
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`A mobile station can connect to “a portable computer 4” via PCMCIA card
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`or be integrated together while supporting the protocol the PC4 uses, like X.25 or
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`IP. Ex.1005, 5:16-19, 22-34. The mobile station communicates with a “host
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`computer Host” in a local network, and with other data networks such as IPX, IP,
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`and/or X.25. Ex.1005, 6:50-53. Ahopelto describes how to route packets between
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`different networks that use different network protocols. Ex.1005, 6:66-7:2
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`Ex.1003, ¶60.
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`Mobile stations send packets (mobile originated) and receive packets
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`(mobile terminated) within their home networks and across other networks.
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`Ex.1005, 7:4-9 (home network), 10:13-19 (visited network). For mobile originated
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`packets, the operator’s GPRS GSN (referred to for the remainder of this Petition as
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`“GGSN,” see Ex.1006, 1:7-15) checks the protocol used in packets from the
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`mobile stations and, if supported, sends the packet via the corresponding network
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`to the Host. Ex.1005, 9:56-10:1 (Fig. 8), 10:7-50 (Figures 10, 12). If unsupported,
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`the GGSN sends the packet via a different network path. See Ex.1005, 10:23-33
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`(FIG. 10); 10:50-55 (Fig. 12). Or the packets can be routed “in a forced manner,”
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`such as “for billing or security reasons.” Ex.1005, 10:34-36. Mobile terminated
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`packets (from the Host) reach a GGSN en route to the target mobile station.
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`Ex.1005, 7:17-29, 8:60-9:22 (processing when not in home network); Ex.1003, ¶¶
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`61-64.
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`2.
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`Summary of Matero
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`Matero describes “circuitry for coupling first and second transceivers of a
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`dual band radio telephone to” multiple antennas. Ex.1007, Abstract. The circuitry
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`connects “to one or more antennas” and is used in “dual band radio telephones,
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`such as cellular phones” operating in different systems including GSM and PCN
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`(Personal Communication Network). Ex.1007, 1:5-8, 8:19-25. The cellular phone
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`includes a first transceiver and a second transceiver, operable in different
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`frequency bands, with “a first antenna port and a second antenna port.” Ex.1007,
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`2:55-60; see also 3:20-30, 3:55-4:3, and Figure 6:
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`Ex.1007, FIG. 6; Ex.1003, ¶65
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`Inter Partes Review of U.S. 8,982,863
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`3.
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`Reasons to Combine Ahopelto and Matero
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`A POSITA considering the teachings of Ahopelto would have also
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`considered the teachings of Matero, as they are analogous prior art pertaining to
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`wireless networking. See Ex.1005, Abstract; Ex.1007, Abstract; Ex.1003, ¶¶68-69.
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`Ahopelto describes how GPRS systems operate. Ex.1005, Abstract; see also
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`1:11-14. Ahopelto discloses mobile stations as endpoints within the GPRS systems
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`that support IP and communicate via a “circuit switched connection” or a “packet
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`switched data transmission.” Ex.1005, 5:2-7, 16-34. Ahopelto’s focus is on the
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`routing between networks, leaving up to a POSITA details about the mobile
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`stations serving as endpoints. Ex.1003, ¶69.
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`A POSITA would have therefore been motivated to turn to Matero, which
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`provides details of mobile stations that would operate in Ahopelto’s system.
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`Matero describes “single and dual band radio telephones, such as cellular
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`telephones.” Ex.1007, 1:5-8. These telephones include “a first transceiver operable
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`in a first frequency band and a second transceiver operable in a second frequency
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`band,” as well as “a first antenna port and a second antenna port.” Ex.1007, 2:55-
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`60. A POSITA would have been motivated to implement Matero’s radio telephone
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`details in Ahopelto’s packet radio network to flesh out the operation of Ahopelto’s
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`endpoints. Ex.1003, ¶¶70-71.
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`Ahopelto’s disclosure is applicable to “packet radio systems of different
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`
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`types,” including “GPRS in … or in corresponding mobile communication
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`systems, such as … PCN (Personal Communication Network).” Ex.1005, 4:29-40.
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`It was well known that GPRS used GSM’s air interface, including frequency
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`bands. See, e.g., Ex.1005, 1:32-67, Ex.1012, 1:37-41. Matero is compatible with
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`both GSM and PCN, with its radio telephone operable in “systems where the
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`frequency of the higher band is a multiple of the frequency of the lower band, e.g.
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`GSM (900 MHz) and PCN (1800 MHz).” Ex.1007, 8:19-25. Therefore, a POSITA
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`would have had a reasonable expectation of success because Matero’s cellular
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`telephones are compatible with GSM and PCN, both protocols used in Ahopelto.
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`Ex.1003, ¶¶71-72.
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`A POSITA would have been motivated to combine Matero with Ahopelto
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`for Matero’s benefits. Matero addresses insertion loss and switching time issues for
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`a radio telephone switching between bands (e.g., GSM and PCN). Mechanical
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`switches resulted in slow switching time and large device size, while electronic
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`switches were smaller and faster but introduced significant insertion loss. Ex.1007,
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`1:40-65. Matero’s solution overcomes these problems with configurations
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`imposing “only one switch in the RF signal path,” avoiding the larger insertion loss
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`of prior approaches. Ex.1007, 5:44-59. A POSITA would have been motivated to
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`turn to Matero so that Ahopelto’s mobile stations may benefit from reduced
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`insertion loss while maintaining a fast switching speed. Ex.1003, ¶¶73-74.
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`In combination, Ahopelto’s mobile stations are compatible with multiple
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`bands (per Matero), and therefore systems, providing the added benefit of broader
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`usability/flexibility (e.g., both GSM and PCN). Ahopelto’s mobile stations would
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`also beneficially have reduced power consumption from reduced insertion loss,
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`providing better battery life. Ex.1003, ¶74.
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`Combining Ahopelto’s and Matero’s teachings would result in a radio
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`telephone operable in both GSM and PCN bands. This was nothing more than the
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`combination of known elements (Ahopelto’s mobile station operating in GSM
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`and/or PCN networks, and Matero’s transceiver circuitry used in GSM and/or PCN
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`radio telephones), according to known methods (using Matero’s dual-band
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`transceivers in Ahopelto’s packet radio network), to yield predictable results
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`(Matero’s radio telephone operating in Ahopelto’s GSM and/or PCN network(s)).
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`Ex.1003, ¶75.
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`Claim 1
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`4.
`1[pre] A system for controlling Internet Protocol (IP) based wireless devices, IP
`based cellular phones, networks or network switches by servers comprising:
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`Ahopelto renders obvious a system for controlling devices and networks by
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`servers. Ex.1003, ¶76.
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`First, Ahopelto renders obvious “servers,” because Ahopelto discloses a
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`GPRS gateway support node (“GGSN”) with functionality that determines how to
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`forward a packet based on the packet’s protocol type (referred to simply herein as
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`“server functionality”). Ex.1005, 7:35-42, 8:40-41 and 10:22-23, 48-50, 56-59. The
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`GGSN’s server functionality for making the determination is a “server.” Figure 1
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`illustrates multiple GGSNs within a GPRS system, each having the same type of
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`server functionality (and, therefore, disclosing “servers”). Ex.1005, FIG. 1:
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`Server functionality
`of GGSN
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`Ex.1005, FIG. 1 (annotated); Ex.1003, ¶77
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`It would have been further obvious that the GGSN’s server functionality,
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`exercising control over how a packet is routed based on the protocol type, would
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`do so using hardware and software. Ex.1003, ¶78. In addition to the GGSN’s
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`server functionality for controlling how a packet is routed, it was also well-known
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`that GGSNs included an “Access Server,” yet another example of a “server.” See,
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`IPR2022-01222 Petition
`Inter Partes Review of U.S. 8,982,863
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`e.g., Ex.1006, 11:51-55; see also Ex.1010, p. 87 (“access-server functionality in
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`the GGSN” defined by Internet Engineering Task Force (IETF)); Ex.1011, 15:10-
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`18, FIG. 9; Ex.1003, ¶79.
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`Second, Ahopelto discloses that the GGSN’s server functionality (a
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`“server”) controls mobile stations’ access to networks external to the public land
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`mobile network (PLMN). See, e.g., Ex.1006, 14:1-10, 16:44-48; see also Ex.1011,
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`15:13-18 (allows or disallows mobile stations “to reach the destination in the
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`external network.”); Ex.1021, p. 3 (using configuration information). It would have
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`been obvious that the GGSN’s server functionality controls the networks by either
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`forwarding traffic or not. See Ex.1006, 5:32-39 (GGSN forwards packets to
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`appropriate data networks); Ex.1003, ¶¶80-81.
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`By controllin