`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`———————
`
`IPR2022-01223
`U.S. Patent No. 9,319,075
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`

`

`
`
`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST .............................................................................. 5
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 7
`
`GROUNDS FOR STANDING ........................................................................ 7
`
`III. NOTE ............................................................................................................... 7
`
`IV. SUMMARY OF THE ’075 PATENT ............................................................. 7
`
`V.
`
`PROSECUTION HISTORY ........................................................................... 9
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 9
`
`VII. CLAIM CONSTRUCTION ............................................................................ 9
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF .................................................................................10
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE .................10
`
`A. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate .... 10
`
`B.
`
`Discretionary denial under the Fintiv factors is not appropriate ........ 11
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`No evidence regarding a stay ................................................... 11
`
`Parallel proceeding trial date ................................................... 11
`
`Investment in the parallel proceeding ...................................... 12
`
`Overlapping issues with the parallel proceeding ..................... 12
`
`Petitioner is a defendant ........................................................... 13
`
`Other circumstances ................................................................. 13
`
`C.
`
`Discretionary denial under General Plastic is not appropriate .......... 13
`
`2
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`

`
`X.
`
`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....14
`
`A.
`
`B.
`
`C.
`
`Challenged Claims ............................................................................. 14
`
`Statutory Grounds for Challenges ...................................................... 14
`
`Ground 1: Claims 1-3, 5 are obvious under 35 U.S.C. § 103(a)
`over Yegoshin in view of Johnston, Bernard, and Preiss................... 15
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Summary of Yegoshin ............................................................. 15
`
`Summary of Bernard ................................................................ 16
`
`Reasons to Combine Yegoshin and Bernard ........................... 18
`
`Summary of Johnston .............................................................. 25
`
`Reasons to Combine Yegoshin, Bernard, and Johnston .......... 26
`
`Summary of Preiss ................................................................... 29
`
`Reasons to Combine Yegoshin, Bernard, Johnston, and
`Preiss ........................................................................................ 29
`
`Claim 1 ..................................................................................... 32
`
`Claim 2 ..................................................................................... 56
`
`10. Claim 3 ..................................................................................... 57
`
`11. Claim 5 ..................................................................................... 58
`
`XI. CONCLUSION ..............................................................................................60
`
`XII. MANDATORY NOTICES ...........................................................................61
`
`A.
`
`B.
`
`C.
`
`Real Parties-in-Interest ....................................................................... 61
`
`Related Matters ................................................................................... 61
`
`Lead and Back-up Counsel and Service Information ........................ 61
`
`3
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`CERTIFICATE OF WORD COUNT ......................................................................63
`
`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
`
`CERTIFICATE OF SERVICE ................................................................................64
`
`4
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`

`

`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
`
`PETITIONER’S EXHIBIT LIST
`
`U.S. 9,319,075 (“the ’075 patent”)
`
`Prosecution History of U.S. 9,319,075
`
`Declaration of Dr. Michael Allen Jensen under 37 C.F.R. § 1.68
`Curriculum Vitae of Dr. Michael Allen Jensen
`
`U.S. Patent No. 6,711,146 to Leonid A. Yegoshin (“Yegoshin”)
`U.S. Patent No. 5,784,032 to Ronald H. Johnston, et al.
`(“Johnston”)
`U.S. Patent No. 5,497,339 to Marc A. Bernard (“Bernard”)
`
`U.S. Patent No. 6,031,503 to Joseph A. Preiss, II, et al. (“Preiss”)
`
`U.S. Patent No. 5,590,133 to Lars Billström, et al. (“Billström”)
`Larry L. Peterson and Bruce S. Davie, Computer Networks: A
`Systems Approach, Morgan Kaufmann Publishers, Inc., San
`Francisco, CA, 1996
`Andrew S. Tanenbaum, Computer Networks, Third Edition,
`Prentice Hall PTR, Upper Saddle River, NJ, 1996
`
`Merilee Ford, H. Kim Lew, Steve Spanier, and Tim Stevenson,
`Internetworking Technologies Handbook, New Riders Publishing,
`Indianapolis, IN, 1997
`
`William Stallings, Data and Computer Communications, 5th
`Edition, Prentice Hall, Upper Saddle River, NJ, 1996
`
`Dictionary Definition of “time division multiplex” (Newton’s
`Telecom Dictionary, 1998)
`
`U.S. Patent No. 6,115,615 to Takeshi Ota, et al.
`U.S. Patent No. 6,366,622 Stephen Joseph Brown
`
`
`
`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
`
`5
`
`

`

`Ex.1017
`
`Ex.1018
`
`Ex.1019
`
`Ex.1020
`
`Ex.1021
`
`Ex.1022
`
`Ex.1023
`
`Ex.1024
`
`Ex.1025
`
`Ex.1026
`
`Ex.1027
`
`Ex.1028
`Ex.1029
`
`Ex.1030
`
`Ex.1031
`
`Ex.1032
`
`
`
`
`
`
`
`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
`
`U.S. Patent No. 6,560,443 to Ari Vaisanen, et al.
`
`U.S. Patent No. 6,047,322 to Aseem Vaid, et al.
`
`Excerpts from Theodore S. Rappaport, Wireless Communications
`Principles & Practice, Prentice Hall, 1996
`R. G. Vaughan, et al., Antenna diversity in mobile
`communications, in IEEE Transactions on Vehicular Technology,
`vol. 36, no. 4, pp. 149-172, Nov. 1987
`S. M. Alamouti, A simple transmit diversity technique for wireless
`communications, in IEEE Journal on Selected Areas in
`Communications, vol. 16, no. 8, pp. 1451-1458, Oct. 1998
`Excerpts from Douglas E. Comer, Internetworking with TCP/IP
`Volume One, Third Edition, 1995
`U.S. Patent No. 5,768,691 to Jorma Matero, et al.
`
`U.S. Patent No. 5,960,344 to Ronald L. Mahany
`European Patent Application 0 660 626 A2 to John Daniel Byrne
`Excerpts from William C. Jakes, Microwave Mobile
`Communications, IEEE Press, 1974
`Excerpts from Constantine A. Balanis, Antenna Theory Analysis
`and Design, Harper & Row, 1982
`U.S. Patent No. 6,353,443 to Zhinong Ying
`U.S. Patent No. 5,854,985 to Joseph B. Sainton, et al. (“Sainton”)
`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)
`
`
`
`6
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`

`

`
`I.
`
`INTRODUCTION
`
`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
`
`U.S. Patent No. 9,319,075 (“the ’075 patent”) claims concepts related to
`
`wireless communication devices with multiple transmit/receive units operating on
`
`different networks at different frequencies using multiple antennas, operating on
`
`different network paths at substantially the same time in response to a change in
`
`signal strength and/or connectivity. 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 1-3 and 5 (“Challenged
`
`Claims”) of the ’075 patent.
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’075 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 ’075 PATENT
`
`The ’075 patent relates to “multiple Internet Protocol (IP) based wireless
`
`data transmissions” that “are simultaneously provided between a wireless device
`
`7
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`

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`and a server, including providing multiple antennas, multiple T/R units, multiple
`
`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
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`processors and multiple I/O ports on the wireless device.” Ex.1001, Abstract.
`
`Referring to Figure 10, the ’075 patent describes that the wireless device includes
`
`“three wireless T/R units 1008, 1010, and 1012” that process “three data streams
`
`1002, 1004, and 1006,” which are then “converted by converters 1014, 1016, and
`
`1018, and presented to processors 1020, 1022, and 1024 under the control of
`
`controller 1026.” Ex.1001, 3:35-36, 7:30-64, 10:18-28. “The data streams may be
`
`interfaced separately with server C 1030 or combined into data stream 1028 and
`
`interfaced to Server C 1030.” Ex.1001, 7:37-39, 7:64-66. The ’075 patent
`
`describes that its techniques achieve “improvement in speed by providing multiple
`
`data paths.” Ex.1001, 7:39-42; Ex.1003, ¶45.
`
`Ex.1001, Figure 10
`
`
`
`8
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`

`
`V.
`
`PROSECUTION HISTORY
`
`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
`
`The ’075 patent was filed April 13, 2015 as a continuation of 14/634,910
`
`(March 2, 2015), 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. The first office action was a notice of allowance. Ex.1002, 7-15. The
`
`’075 patent issued on April 19, 2016. Ex.1002, cover page; Ex.1003, ¶¶46-47.
`
`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
`
`’075 patent. That person would have 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. 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. §
`
`9
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`

`

`
`42.100(b). The Board only construes the claims to the extent necessary to resolve
`
`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
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`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 terms of the challenged claims should be given their plain
`
`and ordinary meaning, and no terms require specific construction.1 Ex.1003, ¶30.
`
`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 ’075
`
`patent. The Examiner did not consider any of the references relied upon in this
`
`
`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
`
`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.
`
`10
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`

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`petition. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`
`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
`
`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,
`
`what the Texas court might do regarding a motion to stay…”). This factor is
`
`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.1030) setting jury
`
`selection for trial to begin on December 4, 2023. Ex.1032, 4. A claim construction
`
`hearing is scheduled for October 5, 2022. Ex.1032, 3. The expected date for a Final
`
`Written Decision in this case is in January 2024, within a month of trial.
`
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`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
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`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 more than 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
`
`and will not close until July 26, 2023. Ex.1032, 3-4; see PEAG LLC v. Varta
`
`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
`
`12
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`

`
`Board to address the art, and the issues will be narrowed in the litigation due to the
`
`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
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`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.1031, 1. That is true of most
`
`Petitioners in IPR proceedings. Accordingly, this factor should not be a basis for
`
`denying institution.
`
`6. Other circumstances
`
`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, institution should not be denied on discretionary factors.
`
`C. Discretionary denial under General Plastic is not appropriate
`
`The ’075 patent has not been challenged in any prior IPR petition, so none of
`
`13
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`

`
`the General Plastic discretionary institution factors apply to this Petition. See
`
`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
`
`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 1-3 and 5, including all claims asserted in the
`
`plaintiff’s infringement contentions in the co-pending litigation.
`
`B.
`
`Statutory Grounds for Challenges
`
`Grounds
`#1
`
`Claims
`1-3, 5
`
`Basis
`§ 103 (Pre-AIA) Yegoshin in view of Bernard,
`Johnston, and Preiss
`
`
`
`U.S. Patent No. 6,711,146 to Yegoshin was filed February 22, 1999. U.S.
`
`Patent No. 6,031,503 to Preiss was filed February 20, 1997. Yegoshin and Preiss
`
`are prior art under 35 U.S.C. § 102(e).
`
`U.S. Patent No. 5,784,032 to Johnston issued July 21, 1998. Johnston is
`
`prior art under 35 U.S.C. § 102(a).
`
`U.S. Patent No. 5,497,339 to Bernard issued March 5, 1996. Bernard 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
`
`14
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`support Petitioner’s assertions regarding what a POSITA would have understood
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`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
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`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.
`
`C. Ground 1: Claims 1-3, 5 are obvious under 35 U.S.C. § 103(a)
`over Yegoshin in view of Johnston, Bernard, and Preiss
`
`1.
`
`Summary of Yegoshin2
`
`Yegoshin relates to “a dual-mode device capable of both cell phone
`
`communication and telephone communication on a local area network (LAN).”
`
`Ex.1005, Abstract, 4:59-5:3. Yegoshin’s dual-mode device can be a “normal
`
`cellular phone” or “any type of wireless communication device” that “becomes a
`
`multi-purpose device” “through additional circuitry and software” such as “client
`
`software suite 19.” Ex.1005, 5:4-54; Ex.1003, ¶48.
`
`
`2 General descriptions provided for the references and combinations thereof are
`
`incorporated into each subsection and mapping of the claims that includes citations
`
`to these references.
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`15
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`Ex.1005, Figure 2
`
`
`
`Yegoshin’s phone “allow[s] a user to switch modes from cellular to IP
`
`communication, and perhaps to switch from differing types of networks using
`
`known protocols that are made available via client software 19.” Ex.1005, 5:33-
`
`54. “Alternatively, the program may be given a series of preferences by the user,
`
`and then may negotiate the best possible connection accordingly.” Ex.1005, 5:33-
`
`54. Yegoshin’s phone is “capable of taking some calls via cellular path while
`
`receiving other calls via IP path.” Ex.1005, 5:55-65. Further, Yegoshin’s phone is
`
`capable of “taking all cellular calls in IP format.” Ex.1005, 8:47-56; Ex.1003, ¶49.
`
`2.
`
`Summary of Bernard
`
`Referring to Figures 2-3, Bernard describes a “portable multiple integrated
`
`communication device” that cradles a “palm computer” like a PDA and connects to
`
`16
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`it using a single serial/power connector. Ex.1007, 1:10-17, 1:39-52, 3:8-58, claims
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`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
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`1, 8; Ex.1003, ¶50.
`
`
`
`Ex.1007, Figures 2 and 3 (annotated)
`
`Bernard’s cradle enables the connected PDA for communication on multiple
`
`different networks and “provides a powerful processing device with convenient
`
`access to vast stores of information over a variety of possible media,” such as “a
`
`phone modem, a cellular telephone, a packet radio and a Global Positioning
`
`System engine.” Ex.1007, 1:10-17, 1:39-52. Referring to Figure 10, Bernard’s
`
`cradle 100B includes multiple communication circuits for different network
`
`connections, such as “GPS engine 120,” “cellular telephone 126,” “phone modem
`
`114” for “land phone 708,” “packet radio 124,” and “pass-thru or external serial
`
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`port 110” for connecting external devices like “printers, phone modems or an
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`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
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`Appletalk™ network.” Ex.1007, 17:40-18:8, 4:37-40; Ex.1003, ¶51.
`
`
`
`Ex.1007, Figure 10 (annotated)
`
`3.
`
`Reasons to Combine Yegoshin and Bernard
`
`A POSITA would have found it obvious to modify Yegoshin’s phone based
`
`on Bernard’s teachings in at least two alternative ways. Ex.1003, ¶55. In a first
`
`scenario, it would have been obvious to modify the phone in Yegoshin to be used
`
`with Bernard’s cradle to provide multiple network connections. Ex.1003, ¶55.
`
`Yegoshin actually suggests two alternative configurations to implement its dual-
`
`mode operation, and, in one of the two implementations, Yegoshin’s phone uses
`
`the adapter port 13 for connecting a wireless network adapter to enable wireless
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`connection to IP-LAN if the IP-LAN has “different protocols than the currently
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`IPR2022-01223 Petition
`Inter Partes Review of U.S. 9,319,075
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`available cellular/PCS networks (CCNs) of such types of PCM, GSM, CDMA
`
`etc.” Ex.1003, XX; Ex.1005, 5:23-32. In this case, a POSITA would have
`
`understood or found obvious that Bernard’s cradle is an example of the adapter that
`
`can be plugged into Yegoshin’s phone (or “any type of wireless communication
`
`device” Ex.1005, 5:4-8) because Bernard’s cradle provides various wireless
`
`connections that are not available at the phone itself. Ex.1003, ¶55; Ex.1005, 5:4-
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`8.
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`In a second scenario, it would have been obvious to implement or modify
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`the internal circuitry of Yegoshin’s phone to include the multiplexing features of
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`Bernard, so that the phone integrally contains the functionality executed in
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`Bernard’s cradle. Ex.1003, ¶56. In fact, Yegoshin does not present the internal
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`architectural details of its mobile device, leaving those details to be specified by a
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`POSITA. Id. Although Bernard’s technique (e.g., providing a mobile device with
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`multiple network connectivity) is described primarily in the context of a PDA
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`connected to the cradle, it would have been obvious that Bernard’s software and
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`hardware architecture may be predictably implemented and housed in a single
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`device, such as Yegoshin’s phone. Id. Indeed, a POSITA would have seen benefits
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`to implementing Bernard’s cradle functionality internal to the mobile device to
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`avoid the need for a separate cradle device and/or to achieve the benefits of
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`Bernard’s multi-network connectivity without requiring the mobile device to be
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`connected to the cradle. Id.
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`For example, if the IP-LAN uses “the currently available cellular/PCS
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`networks,” Yegoshin’s phone can use the same internal circuitry for both cellular
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`and WLAN connections. Ex.1005, 5:23-32. In this case, a POSITA would have
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`found it obvious to implement or modify the internal circuitry of Yegoshin’s phone
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`to incorporate the features of Bernard’s cradle including the multiplexing
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`features. Ex.1003, ¶57. Specifically, the phone in the combination would have
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`included at least communication server 750 (including communication packet
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`interface 752 and communication packet distributor 754), which is connected to
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`multiple networks such as Yegoshin’s cellular network and WLAN (similar to
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`Bernard’s cellular phone 126 and packet radio 124 connections), and multiplexes,
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`demultiplexes, and routes multiple data packets between one or more applications
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`running at the phone and the respective multiple networks according to Bernard’s
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`teachings. Ex.1003, ¶57. One benefit of Bernard’s configuration (e.g., software as
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`in Figure 12 and hardware as in Figure 13), as applied to implement Yegoshin’s
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`phone, is that communication server 750 (including packet interface 752 and
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`packet distributor 754) provides an interface that masks from particular
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`applications (e.g., voice and/or data applications) the complexity of
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`communicating directly with the cellular and WLAN communication components.
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`Ex.1003, ¶57.
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`Additionally, in either of the scenarios, it would have been obvious to
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`implement or modify Yegoshin’s phone based on Bernard’s teachings of the PDA
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`that runs one or more applications 702, 704, 706 and includes the application
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`server 710 that is connected to communication server 750 via a single interface
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`(e.g., serial interface 701). Ex.1003, ¶58.
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`Therefore, in the combination, when the phone communicates with both
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`cellular and WLAN simultaneously (as taught in Yegoshin (Ex.1005, 5:55-65)),
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`Bernard’s packet interface 752, as implemented in the combination, would receive
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`packets from both the cellular network and the WLAN and interleave these into a
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`single output to the processor of the connected phone via the single interface.
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`Ex.1003, XX; Ex.1010, 16-17, Figure 1.8; Ex.1014. Indeed, in Bernard, an
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`application on the connected PDA can utilize two of the communication circuits
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`together, thereby supporting Yegoshin’s idea of the simultaneous use of cellular
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`and WLAN. Ex.1007, 17:64-18:2; Ex.1003, ¶59. Bernard also presents an
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`example of using two communication circuits simultaneously. Ex.1007, 26:56-65;
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`Ex.1003, ¶59.
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`Alternatively, in the combination, the phone uses either the cellular or the
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`WLAN for a call depending on whether the device is “within range of the local
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`service area,” as taught in Yegoshin. Ex.1005, 8:15-27; Ex.1003, ¶60. A POSITA
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`would have found obvious that, depending on which service the phone is
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`connected to, Bernard’s packet interface 752, as implemented in the combination,
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`would route packets from either of the cellular and LAN services into a single
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`output to the processor of the connected phone via the single interface. Ex.1003,
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`¶60; see also Ex.1007, 4:7-9.
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`Several reasons would have motivated a POSITA to modify Yegoshin’s
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`phone based on Bernard’s teachings. Ex.1003, ¶61.
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`Notably, Yegoshin discloses a dual-mode phone for regular cellular and
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`WLAN connections. Ex.1005, 3:17-4:42, 4:59-7:25. Further, Yegoshin’s phone
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`includes “communication port 11” and “adapter port 13” for adding “additional
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`circuitry and software” that enable the phone to be a “multiple purpose device.”
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`Ex.1005, 5:14-32. Other than this statement, however, Yegoshin lacks a detailed
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`implementation of how the phone is a multi-purpose device. Ex.1003, ¶62.
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`Therefore, a POSITA would have looked at other references like Bernard, which
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`teaches an actual device (e.g., cradle) that can be connected to Yegoshin’s phone
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`for enabling multi-purpose functionality (e.g., connectivity to multiple network
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`services including cellular and WLAN for data packet services), or teach the
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`hardware and software functionality that can be implemented in Yegoshin’s phone.
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`Ex.1003, ¶62.
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`In addition, the combination would have improved Yegoshin’s purpose of
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`supporting roaming users (e.g., visitors, mobile employees, etc.) by allowing them
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`to connect to different available network services as taught in Bernard. Ex.1003,
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`¶63; Ex.1005, 2:42-3:15. For example, Bernard’s solution is designed to “place or
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`receive a cellular telephone call or a land line telephone call, to transmit or receive
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`packet radio data, to obtain three-dimensional location data from the Global
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`Positioning System (GPS) and to send or receive data over a telephone cellular link
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`or over a land line using a built in phone modem,” thereby “greatly enhanc[ing] the
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`utility of” the connected device” and “provid[ing] a powerful processing device
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`with convenient access to vast stores of information over a variety of possible
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`media.” Ex.1007, 1:39-57; Ex.1003, ¶63.
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`A POSITA would have recognized that the benefits offered by Yegoshin and
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`Bernard were compatible, and the combination would have accomplished those
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`benefits in the same or similar way that each reference achieves. Ex.1003, ¶64. A
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`POSITA would have appreciated that the Yegoshin-Bernard combination does not
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`change the hallmark aspects of the references, and the respective teachings would
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`work in combination similar to how they did apart, with Bernard’s suggestions
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`merely adding multiple network connectivity to Yegoshin’s system and providing
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`implementation details related to multiplexing in Yegoshin’s dual-mode phone. Id.
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`Therefore, a POSITA would have been motivated to achieve the benefits provided
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`by Bernard’s multiple network connection and data packet routing techniques
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`while maintaining the advantages of Yegoshin’s dual-mode technology. Id.
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`Specifically, Yegoshin’s system, as modified to connect to Bernard’s cradle
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`or implemented to incorporate Bernard’s hardware and software, would remain
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`unaffected and still achieve its intended objectives—adding WLAN capability to a
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`cellular device to “allow[] a mobile user to save roaming cellular charges by
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`routing over an IP network instead of through a cellular service area” and “realize
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`significant cost savings” for a “corporation having many mobile reps wherein the
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`company pays for cellular charges.” Ex.1005, 5:33-65, 9:13-18, 2:42-3:15;
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`Ex.1003, ¶64. Similarly, Bernard’s overall structures and operations, which are
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`designed to “provide[] a powerful processing device with convenient access to vast
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`stores of information over a variety of possible media,” would operate similarly in
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`the combination. Ex.1007, 1:38-57; Ex.1003, ¶64. As such, a POSITA would
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`have been motivated and found it obvious to combine Yegoshin with Bernard to
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`incorporate the additional benefits proffered by Bernard into the combined system
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`with its own advantages. Ex.1003, ¶64.
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`Further, a POSITA would have had a reasonable expectation of success in
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`combining Yegoshin and Bernard. Ex.1003, ¶65. Notably, Yegoshin’s phone
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`provides “adapter port 13” for receiving a “wireless network adapter” to enable
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`“different protocols than the currently available cellular/PCS networks.” Ex.1005,
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`5:23-32. Further, although Yegoshin describes a cellular phone as a primary
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`example, its techniques are also applied to “any type of wireless communication
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`device” that is “adapted for having at least one mode of IP communication via
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`wireless and or wired connection.” Ex.1005, 5:4-14. A POSITA would have
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`recognized that Bernard’s PDA is an example of “any type of wireless
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`communication device” described in Yegoshin. Ex.1003, ¶65. A POSITA would
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`have also recognized that Bernard’s mechanism of connecting the PDA with the
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`cradle (e.g., PDA’s “serial