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`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2022-01248
`Patent 8,842,653
`____________
`
`PATENT OWNER’S RESPONSE
`
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2022-01248
`Patent 8,842,653
`
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................ 1
`
`II.
`
`AS THE BOARD HAS THRICE FOUND, PETITIONER FAILS TO
`PROVE ITS COMBINATIONS DISCLOSE OR RENDER OBVIOUS
`“MULTIPLEXED” “SIGNALS” (CLAIMS 1-13, 27-30; GROUNDS
`1B, 1D). .......................................................................................................... 1
`
`A. The Board Correctly Found That Petitioner’s Grounds Do Not
`Disclose Or Render Obvious “Multiplexed” “Signals” In Three
`Separate Cases. ...................................................................................... 2
`
`B.
`
`Petitioner Fails To Show That Yegoshin Discloses Or Renders
`Obvious The Claimed “Multiplexed” “Signals.” .................................. 3
`
`1.
`
`2.
`
`3.
`
`As The Board Correctly Found, Petitioner Fails To Meet Its
`Burden To Show Inherency Or Single Reference
`Obviousness. ............................................................................... 5
`
`As The Board Correctly Found, Yegoshin Does Not Teach
`“Simultaneously” Using Cellular And WLAN Signals Or
`Otherwise Disclose “Multiplexing.” ........................................... 8
`
`Petitioner Does Not Demonstrate That Yegoshin
`Multiplexes Under Any Construction, Including
`Petitioner’s District Court Construction. .................................. 12
`
`C.
`
`Petitioner Fails To Show That The Combination Of Yegoshin
`And Bernard Renders Obvious The Claimed “Multiplexed”
`Signals. ................................................................................................ 16
`
`1.
`
`2.
`
`Petitioner Does Not Prove That Bernard Discloses The
`Claimed “Multiplexing.” ........................................................... 17
`
`Petitioner Fails To Prove A POSITA Would Be Motivated
`To Modify Yegoshin/Johnston/ Billström In View Of
`Bernard To Satisfy The Claimed “Multiplexing.” .................... 27
`
`i
`
`

`

`Case IPR2022-01248
`Patent 8,842,653
`
`
`a.
`
`b.
`
`A POSITA Would Not Be Motivated To Connect
`Yegoshin’s Cell Phone To Bernard’s Cradle To Disclose
`The Claims. .....................................................................27
`
`A POSITA Would Not Be Motivated To Add An
`Artificial Bottleneck Inside Yegoshin’s Mobile Phone. 32
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`PETITIONER FAILS TO PROVE ITS COMBINATION DISCLOSES
`“COMBIN[ING] DATA PATHS INTO A SINGLE TRANSMISSION
`INTERFACE TO ONE OR MORE APPLICATIONS” (CLAIMS 17-
`21, 23-26; GROUND 1B)............................................................................37
`
`PETITIONER FAILS TO PROVE ITS COMBINATIONS DISCLOSE
`OR RENDER OBVIOUS MULTIPLE IP ADDRESSES OR
`INTERFACES (CLAIMS 1-13, 14-16; GROUNDS 1A, 1B, 1C). ..........47
`
`A. Petitioner Fails To Explain How Yegoshin’s Device Would Use
`Two IP Addresses. ............................................................................... 50
`
`B. Modifying Yegoshin To Implement Billström’s Cellular Network
`Would Have Been Beyond The Skill Of A POSITA. ......................... 54
`
`PETITIONER FAILS TO SHOW “TWO NETWORK PATHS”
`CONNECTED TO THE SAME “SERVER” (CLAIMS 27-30;
`GROUND 1E). ............................................................................................60
`
`PETITIONER ADDITIONALLY FAILS TO SHOW THAT
`MULTIPLE DEPENDENT CLAIMS ARE DISCLOSED OR
`RENDERED OBVIOUS (CLAIMS 2, 9, 10, 21, AND 26; GROUNDS
`1B AND 1D). ................................................................................................63
`
`A. Claim 2 ................................................................................................ 63
`
`B. Claim 9 ................................................................................................ 64
`
`C. Claim 10 .............................................................................................. 65
`
`D. Claims 21, 26. ...................................................................................... 66
`
`VII. CONCLUSION ...........................................................................................66
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`Case IPR2022-01248
`Patent 8,842,653
`
`
`Page(s)
`
`COURT DECISIONS
`
`Arendi S.A.R.L. v. Apple, Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ............................................................................ 7
`
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) ............................................................................37
`
`Cheese Sys. v. Tetra Pak Cheese & Powder Sys.,
`725 F.3d 1341 (Fed. Cir. 2013) ..........................................................................37
`
`DSS Tech. Mgm’t v. Apple Inc.,
`885 F.3d 1367 (Fed. Cir. 2018) ............................................................................ 7
`
`Ecolochem, Inc. v. S. Cal. Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) ..........................................................................36
`
`Eli Lilly & Co. v. Teva Pharms. Int’l GmbH,
`8 F.4th 1331 (Fed. Cir. 2021) .............................................................................56
`
`Intelligent Bio-Sys, Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 3
`
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ............................................................................ 7
`
`Monarch Knitting Mach. Corp. v. Sulzer Morat Gmbh,
`139 F.3d 877 (Fed. Cir. 1998) ............................................................................37
`
`PAR Pharm. v. TWi Pharms., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) ............................................................................ 5
`
`Southwire Co. v. Cerro Wire LLC,
`870 F.3d 1306 (Fed. Cir. 2017) ........................................................................... 5
`
`iii
`
`

`

`Case IPR2022-01248
`Patent 8,842,653
`
`
`Trintec Indus., Inc. v. Top-U.S.A. Corp.,
`295 F.3d 1292 (Fed. Cir. 2002) ............................................................................ 5
`
`TriVascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ............................................................................ 3
`
`
`
`AGENCY DECISIONS
`
`Acclarent, Inc. v. Albritton,
`IPR2018-00268, Paper 12 (Jan. 31, 2019) ..........................................................53
`
`Alcon Inc. v. AMO Dev., LLC,
`IPR2021-00853, Paper 48 (Dec. 2, 2022) ..........................................................53
`
`Broadcom Ltd. v. Tessera Advanced Techs., Inc.,
`IPR2017-00736, Paper 8 (July 27, 2017) ............................................................. 6
`
`Canon, Inc. v. WSOU Invests., LLC,
`IPR2022-01532, Paper 14 (Apr. 14, 2023) .........................................................53
`
`IBM Corp. v. Intellectual Ventures II LLC,
`IPR2014-00682, Paper 11 (Oct. 30, 2014) ........................................................... 6
`
`Norman Int’l, Inc. v. Hunter Douglas, Inc.,
`IPR2014-00282, Paper 8, (June 20, 2014) ..........................................................31
`
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V.,
`IPR2016-01692, Paper 45 (Mar. 2, 2018) ..........................................................31
`
`Samsung Elecs. Co. Ltd. v. KAIST IP US LLC,
`IPR2017-01046, Paper 12 (Oct. 2, 2017) ...........................................................53
`
`Samsung Elecs. Co. Ltd. v. KAIST IP US LLC,
`IPR2017-01046, Paper 14 (Jan. 22, 2018) ..........................................................53
`
`Xerox Corp. v. Bytemark, Inc.,
`IPR2022-00624, Paper 9 (Aug. 24, 2022)
`(precedential) ......................................................................................................14
`
`iv
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`

`

`Case IPR2022-01248
`Patent 8,842,653
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`
`
`
`REGULATIONS
`
`37 C.F.R. § 42.104 ...................................................................................................13
`
`37 C.F.R. § 42.65 .....................................................................................................13
`
`
`
`
`
`
`
`v
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`

`

`Case IPR2022-01248
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`
`EXHIBIT LIST
`
`2001
`
`Reserved
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`Declaration of Professor Todor V. Cooklev, Ph.D. [1st-Cooklev-
`Decl.]
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Defendants’ Opening Claim
`Construction Brief (June 8, 2022) [Defendants’-Opening-Claim-
`Construction-Brief]
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Defendants’ Opening Claim
`Construction Brief – Exhibit 1 (June 8, 2022) [Defendants’ Opening
`Claim Construction Brief – Exhibit 1]
`
`Kevin M. Stack, Preambles as Guidance, 84 GEO. WASH. L. REV.
`1252 (2016) (http://www.gwlr.org/wp-content/uploads/2016/09/84-
`Geo.-Wash.-L.-Rev.-1252.pdf) [Stack]
`
`ElectronicsTutorials, The Multiplexer, WWW.ELECTRONICS-
`TUTORIALS.WS, https://www.electronics-
`tutorials.ws/combination/comb_2.html (last visited Oct. 26, 2022)
`[Electronics-Tutorial]
`
`TexasInstruments, 74HC153 Data Sheet, Dec. 1982, revised Feb.
`2022, WWW.TI.COM, https://www.ti.com/lit/gpn/sn74hc153
`[74HC153-Data-Sheet]
`
`Lee Stanton, What is the Difference Between a Landline and a
`Mobile Phone Number?, WWW.ALPHR.COM, Feb. 22, 2022,
`https://www.alphr.com/difference-landline-mobile-phone-number/
`[Alphr]
`
`vi
`
`

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`Case IPR2022-01248
`Patent 8,842,653
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`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`FOCUS LCDs, Serial Vs. Parallel, LCD RESOURCES,
`https://focuslcds.com/serial-vs-parallel/ (last visited Oct. 19, 2022)
`[LCD-Resources]
`
`Techopedia, Serial Interface, WWW.TECHOPEDIA.COM, Nov. 4, 2014,
`https://www.techopedia.com/definition/9312/serial-interface
`[Techopedia]
`
`Excerpts from The Authoritative Dictionary of IEEE Standards
`Terms, Seventh Edition (2000) [Dictionary of IEEE Standards
`Terms]
`
`Jonathan Valvano et al., Chapter 11: Serial Interfacing, EMBEDDED
`SYSTEMS – SHAPE THE WORLD,
`https://users.ece.utexas.edu/~valvano/Volume1/E-
`Book/C11_SerialInterface.htm (last visited Oct. 20, 2022) [Valvano]
`
`Steve Goldband, Input and output for microprocessors, Behavior
`Research Methods & Instrumentation, 1978, Vol. 10, No. 2, pp.
`249-253 [Goldband]
`
`2014
`
`Ex parte Orbotech LT Solar, LLC, 2012 Pat. App. LEXIS 2784
`(BPAI May 31, 2012)
`
`2015
`
`Ex parte Evans, 2017 Pat. App. LEXIS 386 (PTAB Aug. 1, 2017)
`
`2016
`
`2017
`
`Declaration of Philip J. Graves in support of Motion for Pro Hac
`Vice Admission
`
`Declaration of Greer N. Shaw in support of Motion for Pro Hac
`Vice Admission
`
`2018
`
`Declaration of Colette Woo [served, not filed]
`
`2019
`
`Second Declaration of Professor Todor V. Cooklev, Ph.D. [2nd-
`Cooklev-Decl.]
`
`2020
`
`Deposition Transcript of Michael Jensen, Ph.D. [Jensen-Depo.]
`
`vii
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`

`

`Case IPR2022-01248
`Patent 8,842,653
`
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`IPR2022-01223, Paper 13 (PTAB Jan. 30, 2023) (Decision Denying
`Institution) [1223-DDI]
`
`IPR2022-01249, Paper 13 (PTAB Jan. 24, 2023) (Institution
`Decision) [1249-ID]
`
`Additional Excerpts from The Authoritative Dictionary of IEEE
`Standards Terms, Seventh Edition (2000) [IEEE-Dictionary]
`
`Benj Edwards, The Golden Age of PDAs, PC Magazine, Nov. 20,
`2018, https://www.pcmag.com/news/the-golden-age-of-pdas [PC-
`Magazine]
`
`Jeremy Reimer, Remembering Apple’s Newton, 30 Years On, Ars
`Technica, June 1, 2022,
`https://arstechnica.com/gadgets/2022/06/remembering-apples-
`newton-30-years-on/ [Ars-Technica]
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Declaration of Dr. Harry Bims In
`Support of Defendants’ Opening Claim Construction Brief (June 8,
`2022) [Bims-Decl.]
`
`2027
`
`Excerpts from Newton’s Telecom Dictionary, 16th Edition (2000)
`[Newton’s-Telecom-Dictionary]
`
`2028
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Plaintiff’s Responsive Claim
`Construction Brief Regarding The ’434 Patent Family (Aug. 17,
`2022) [Plaintiff’s-Responsive-Claim-Construction-Brief]
`
`viii
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`

`

`Case IPR2022-01248
`Patent 8,842,653
`
`
`I.
`
`INTRODUCTION
`
`Petitioner fails to prove that any of the challenged claims are invalid. As the
`
`Board has thrice found, including in the Institution Decision (“ID”) here, Petitioner
`
`fails to show that its grounds disclose or render obvious “multiplexed” “signals,”
`
`as required by claims 1-13 and 27-30. See Section II. Petitioner similarly fails to
`
`show that claims 17-26, requiring “combin[ing] data paths into a single
`
`transmission interface to one or more applications” is obvious. See Section III.
`
`Petitioner also fails to show disclosure of a mobile device with multiple IP
`
`addresses or interfaces as required by claims 1-16. See Section IV. Petitioner
`
`further fails to show the claimed “remote server” of claims 27-30. See Section V.
`
`Petitioner additionally fails to show that dependent claims 2, 9, 10, 21 and 26 are
`
`obvious. See Section VI.
`
`II. AS THE BOARD HAS THRICE FOUND, PETITIONER FAILS TO
`PROVE ITS COMBINATIONS DISCLOSE OR RENDER OBVIOUS
`“MULTIPLEXED” “SIGNALS” (CLAIMS 1-13, 27-30; GROUNDS 1B,
`1D).
`
`Claims 1-13 and 27-30 require “multiplexed” “signals.” Ex. 1001 [’653]
`
`cl. 1 (“a single interface comprised of multiplexed signals”); cl. 27 (“wherein a
`
`plurality of signal[s] are multiplexed”). Petitioner contends the “multiplexed”
`
`“signals” are rendered obvious by Yegoshin or, alternatively, the combination of
`
`Yegoshin and Bernard. Pet., 31-33, 38-41. The Board, however, has previously
`
`1
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`

`

`Case IPR2022-01248
`Patent 8,842,653
`
`
`rejected Petitioner’s argument three times. See Section II.A. The Board should
`
`again find that Petitioner failed to show that Yegoshin alone (Section II.B) or in
`
`combination with Bernard (Section II.C) discloses or renders obvious “multiplexed
`
`signals.”
`
`A. The Board Correctly Found That Petitioner’s Grounds Do Not
`Disclose Or Render Obvious “Multiplexed” “Signals” In Three
`Separate Cases.
`
`Petitioner’s argument that Yegoshin and/or Bernard disclose or render
`
`obvious “multiplexed signals” has been thrice rejected by the Board. In the
`
`Institution Decision, the Board found that Petitioner failed to even meet the
`
`“reasonable likelihood of prevailing” threshold, finding that “Petitioner does not
`
`sufficiently show multiplexed signals in any of the asserted references,” and, thus,
`
`“d[id] not provide enough argument and evidence that its proposed combination of
`
`Yegoshin, Johnston, Billström, and Bernard would have ‘a single interface
`
`comprised of multiplexed signals from the plurality of wireless transmit and
`
`receive components,’ as required by claim 1.” ID, 21-25; see also id., 25-26
`
`(“Petitioner has not shown a reasonable likelihood that it will prove claim 1
`
`unpatentable…”). Notably, the Board made this same finding in denying
`
`institution in IPR2022-01223 and a third time in IPR2022-01249. Ex. 2021 [1223-
`
`DDI] 30 (“Petitioner’s arguments do not show adequately that Yegoshin would
`
`have been understood to have multiplexed signals or that Bernard ‘includes or
`
`2
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`

`

`Case IPR2022-01248
`Patent 8,842,653
`
`
`operates as a multiplexer for combining the data packets.’”); Ex. 2022 [1249-ID]
`
`38 (same).
`
`Having failed to even show a reasonable likelihood of prevailing, Petitioner
`
`cannot satisfy the higher preponderance of the evidence standard, particularly as
`
`petitioners are obligated to “make their case in their petition.” TriVascular, Inc. v.
`
`Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“[T]here is a significant difference
`
`between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at
`
`institution, and actually proving invalidity by a preponderance of the evidence at
`
`trial . . . .”); Intelligent Bio-Sys, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359,
`
`1369 (Fed. Cir. 2016) (“the expedited nature of IPRs bring with it an obligation for
`
`petitioners to make their case in their petition to institute.”).
`
`B.
`
`Petitioner Fails To Show That Yegoshin Discloses Or Renders
`Obvious The Claimed “Multiplexed” “Signals.”
`
`Petitioner first argues that Yegoshin’s alleged disclosure of “selectively or
`
`simultaneously” transmitting cellular and WLAN data renders obvious
`
`“multiplexed signals”:
`
`… Yegoshin’s phone switches between cellular and IP-LAN modes,
`
`and also “capable of taking some calls via cellular path while receiving
`
`other calls via IP path.” EX-1004, 5:33-65. ... It would have been
`
`obvious that Yegoshin’s phone selectively or simultaneously uses its
`
`first/cellular and second/WLAN communication interfaces to receive
`
`signals for calls and output the signals through a single interface that
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`3
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`Case IPR2022-01248
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`includes or is coupled to the “speaker apparatus” of the phone. EX-
`
`1003, ¶122; EX-1004, 3:18-22.
`
`Again, Yegoshin-Johnston-Billström’s phone communicates on
`
`cellular and WLAN selectively or simultaneously (as taught by
`
`Yegoshin) using IP-enabled cellular and WLAN communication
`
`interfaces (as taught by Yegoshin and Billström). EX-1003, ¶123; EX-
`
`1004, 5:33-65; EX-1006, 1:6:12, 1:54-60, 3:53-61. A POSITA would
`
`have found it obvious that, to receive calls on both cellular and WLAN
`
`simultaneously or to switch between two networks, the phone
`
`multiplexes the signals communicated on two network paths. EX-1003,
`
`¶123.
`
`Pet., 31-32. The Board should again reject this argument. As discussed below,
`
`Petitioner’s argument seems rooted in inherency or, at best, single reference
`
`obviousness, but, as the Board found, Petitioner fails to prove that either standard
`
`is met. See Section II.B.1. Moreover, the Board’s finding is correct because
`
`Yegoshin does not disclose “simultaneously” using cellular and WLAN networks
`
`and does not otherwise disclose “multiplexed” “signals.” See Section II.B.2.
`
`Petitioner simply fails to establish any basis upon which Yegoshin discloses or
`
`renders obvious multiplexed signals. Petitioner does not proffer any construction
`
`of “multiplexed” “signals” here, and Yegoshin does not “multiplex” according to
`
`Petitioner’s own district court construction. See Section II.B.3.
`
`4
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`

`

`Case IPR2022-01248
`Patent 8,842,653
`
`
`1.
`
`As The Board Correctly Found, Petitioner Fails To Meet Its
`Burden To Show Inherency Or Single Reference Obviousness.
`
`As quoted above, Petitioner does not contend that Yegoshin expressly
`
`teaches “multiplexing.” Instead, Petitioner contends that a POSITA “would have
`
`found it obvious” that Yegoshin’s alleged use of cellular and WLAN networks
`
`“selectively or simultaneously” multiplexes signals. Pet., 31-32. Thus,
`
`Petitioner’s argument lies in inherency or, at best, single-reference obviousness.
`
`Petitioner, however, fails to show that either standard is met.
`
`To establish inherently, Petitioner must demonstrate that the limitation is
`
`“necessarily present.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292,
`
`1295 (Fed. Cir. 2002) (inherency requires that the missing element must be
`
`“‘necessarily present,’ not merely probably or possibly present, in the prior art.”);
`
`see also PAR Pharm. v. TWi Pharms., Inc., 773 F.3d 1186, 1195-1196 (Fed. Cir.
`
`2014) (“A party must [] meet a high standard in order to rely on inherency to
`
`establish the existence of a claim limitation in the prior art in an obviousness
`
`analysis—the limitation at issue necessarily must be present, or the natural result of
`
`the combination of elements explicitly disclosed by the prior art.”); Southwire Co.
`
`v. Cerro Wire LLC, 870 F.3d 1306, 1310-1311 (Fed. Cir. 2017) (similar).
`
`Petitioner falls well short of demonstrating that, even assuming arguendo
`
`that Yegoshin “selectively or simultaneously” uses cellular and WLAN networks,
`
`5
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`Case IPR2022-01248
`Patent 8,842,653
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`such a teaching would inherently—i.e., necessarily—disclose multiplexed signals.
`
`Instead, Petitioner provides only the conclusory assertion that “[a] POSITA would
`
`have found it obvious that, to receive calls on both cellular and WLAN
`
`simultaneously or to switch between two networks, the phone multiplexes the
`
`signals communicated on two network paths,” citing paragraph 123 of the Jensen
`
`Declaration. Pet., 32. But an inherent disclosure may not be established through
`
`such conclusory statements. IBM Corp. v. Intellectual Ventures II LLC, IPR2014-
`
`00682, Paper 11, 18 (Oct. 30, 2014) (expert statement that a POSITA “would have
`
`understood” reference to teach limitation “does not support either an explicit or
`
`inherent disclosure of [the] limitation” and “is conclusory and not persuasive.”);
`
`see also Broadcom Ltd. v. Tessera Advanced Techs., Inc., IPR2017-00736, Paper
`
`8, 18 (July 27, 2017) (declaration’s conclusory testimony does not show
`
`inherency).
`
`In accord, in the Institution Decision, the Board correctly found that
`
`“Petitioner’s arguments do not show adequately that Yegoshin would have been
`
`understood to have multiplexed signals,” (ID, 25) finding that “[t]he portion of
`
`Yegoshin Petitioner cites does not expressly teach multiplexed signals.” Id., 21.
`
`As for Petitioner’s argument that a POSITA “would have understood that
`
`Yegoshin includes multiplexed signals,” the Board rightly “f[ou]nd that
`
`6
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`

`

`Case IPR2022-01248
`Patent 8,842,653
`
`
`Petitioner’s argument ... does not explain sufficiently that Yegoshin’s handling of
`
`IP and cell calls would be recognized as ‘multiplexed signals.’” Id., 21.
`
`To the extent Petitioner’s arguments with regard to Yegoshin could be
`
`interpreted as single reference obviousness, Petitioner falls short of meeting that
`
`standard too. Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355, 1362-63 (Fed. Cir.
`
`2016) (“In cases in which ‘common sense’ is used to supply a missing limitation,
`
`as distinct from a motivation to combine, moreover, our search for a reasoned basis
`
`for resort to common sense must be searching.”); DSS Tech. Mgm’t v. Apple Inc.,
`
`885 F.3d 1367, 1374-75 (Fed. Cir. 2018) (rejecting “ordinary creativity” as a basis
`
`for overcoming a missing limitation); K/S HIMPP v. Hear-Wear Techs., LLC, 751
`
`F.3d 1362, 1366 (Fed. Cir. 2014).
`
`Petitioner has not shown why a POSITA would be motivated or able to
`
`modify Yegoshin to multiplex cellular and WLAN signals that are separately
`
`received for different calls. Instead, the Institution Decision correctly found that:
`
`[E]ven if multiplexing techniques were well-known, Petitioner
`
`does not argue sufficiently that Yegoshin uses multiplexing
`
`techniques during cellular calls when another call is received through
`
`WLAN. The additional evidence cited also does not expressly
`
`indicate that multiplexing is used when receiving a WLAN call
`
`during a cellular call. Petitioner’s cited testimonial evidence (Ex.
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`1003 ¶ 124) likewise does not explain further how Yegoshin must be
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`multiplexing cellular and WLAN calls. Nor does Petitioner provide
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`a reason why one of ordinary skill in the art would have been
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`motivated to modify Yegoshin’s system to use multiplexing.
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`ID, 22.
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`2.
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`As The Board Correctly Found, Yegoshin Does Not Teach
`“Simultaneously” Using Cellular And WLAN Signals Or
`Otherwise Disclose “Multiplexing.”
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`As noted, Petitioner relies on the allegation that Yegoshin “selectively or
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`simultaneously” uses cellular and WLAN networks to argue that it teaches
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`“multiplexed signals.” Pet., 32. As explained below, the Board correctly found
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`that Yegoshin does not disclose “simultaneously” using cellular and WLAN
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`networks, and Petitioner has not shown how Yegoshin may otherwise disclose
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`multiplexed signals, including by “selectively” using either cellular or WLAN, but
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`not both, for a given call.
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`First, neither Petitioner nor Dr. Jensen demonstrate that Yegoshin
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`“simultaneously” uses cellular and WLAN networks. Petitioner alleges that
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`Yegoshin is “capable of taking some calls” “when the phone communicates with
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`both cellular and WLAN.” Pet., 32 (citing Ex. 1004 [Yegoshin] 5:33-65), 40-41
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`(“when [Yegoshin’s] phone communicates with both cellular and WLAN
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`simultaneously (as taught in Yegoshin (EX-1004, 5:55-65))”); see also id., 45 (“As
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`also described in 1[j], Yegoshin’s cellular and WLAN connections can be used to
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`transmit/receive signals for calls over respective paths simultaneously. EX-1004,
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`5:55-65.”).
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`But Yegoshin confirms that the user can only use either the cellular or
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`WLAN networks for a given call, not both. As the Board correctly found,
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`Yegoshin’s system merely provides a “busy signal” or a “call-waiting call” if there
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`is a second call:
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`The portion of Yegoshin quoted above regarding “a busy signal”
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`or “call-waiting call” undermines Petitioner’s argument
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`that
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`Yegoshin’s “phone multiplexes the signals communicated on two
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`network paths.” Petitioner appears to focus on the phrase “cell phone 9
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`is capable of taking some calls via cellular path while receiving other
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`calls via IP path,” without considering Yegoshin’s further elaboration
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`on how IP and cell calls are handled.
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`Moreover, even if Petitioner did consider Yegoshin’s further
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`details, Petitioner does not address directly how a busy signal or call-
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`waiting leads to one of ordinary skill in the art understanding that would
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`teach multiplexed signals. Petitioner’s cited testimonial evidence (Ex.
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`1003 ¶¶ 122, 123) also does not sufficiently explain how Yegoshin’s
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`phone uses multiplexing.
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`ID, 21-22; see also Ex. 1004 [Yegoshin] 5:55-65.
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`The Board is correct. As Dr. Cooklev explains:
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`Petitioner is fundamentally wrong that Yegoshin discloses using
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`cellular and WLAN calls “simultaneously.” Pet., 32. In my opinion,
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`Yegoshin makes clear that the user can use either the cellular or WLAN
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`networks for a given call, but not both simultaneously. When Yegoshin
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`states its cell phone “is capable of taking some calls via cellular path
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`while receiving other calls via IP path” (Ex. 1004 [Yegoshin] 5:55-65),
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`the word “while” is not used in the simultaneous sense. Instead,
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`Yegoshin simply teaches that some calls may be taken via the cellular
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`path and other calls may be taken via the WLAN path. This
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`understanding is confirmed two sentences later, when Yegoshin states
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`“[f]or example, if engaged with an IP call, an incoming cell call would
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`get a busy signal and so on, or it would be redirected to the IP call
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`point, where it would then be presented as a call-waiting call.” Id.,
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`5:59-62; see also ID, 21. From this, a POSITA would understand that
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`Yegoshin teaches the precise opposite of simultaneously using cellular
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`and WLAN. Instead, Yegoshin teaches that the second incoming call
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`is not connected and gets “a busy signal” or is “redirected” rather than
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`simultaneously received.
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`Ex. 2019 [2nd-Cooklev-Decl.] ¶ 55.
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`Yegoshin further explains that the user selects one of cellular or WLAN for
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`use in a call, clarifying that they are not used simultaneously. Ex. 1004 [Yegoshin]
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`5:33-35; 5:40-41. As Dr. Cooklev explains:
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`In Yegoshin, a “client software suite 19” enables a user to “select
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`a protocol for voice communication,” i.e., whether to use cellular or
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`WLAN. Ex. 1004 [Yegoshin] 5:33-35; see also id., 5:40-42 (“A series
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`of selection buttons such as 15 and 17 allow a user to switch modes
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`from cellular to IP communication …”). When a call arrives at the
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`cellular provider, the provider determines whether the user is within
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`range of the local service area, in which case, the call would be routed
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`to the user through the cellular network. Id., 8:15-20. If the user is
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`outside of the range of the local service area (i.e., is roaming), the call
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`would be routed to the user through the WLAN network. Id., 8:20-27.
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`Yegoshin explains that a user can specify certain calls to be routed
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`through the cellular network even if the user is outside of the local
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`network area. Id., 8:47-56. In either case, a given call is serviced in its
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`entirety either via the cellular or WLAN networks, but never both. This
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`is shown schematically in Yegoshin’s annotated Figure 2 below:
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`Ex. 2019 [2nd-Cooklev-Decl.] ¶ 56.
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`Petitioner additionally argues that “[a] POSITA would have found it obvious
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`that … to switch between two networks, the phone multiplexes the signals
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`communicated on two network paths.” Pet., 32. But, as discussed above,
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`Petitioner provides no analysis or explanation for how merely switching between
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`two networks for two different calls could disclose or render obvious multiplexing.
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`See id. As the Board found, Petitioner simply has not shown that a POSITA would
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`consider this to be (or render obvious) multiplexing. ID, 21. Indeed, as discussed
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`in the following section, Petitioner does not demonstrate that “switching” between
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`two networks for two different calls would qualify as “multiplexing” even under its
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`own district court construction.
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`3.
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`Petitioner Does Not Demonstrate That Yegoshin Multiplexes
`Under Any Construction, Including Petitioner’s District Court
`Construction.
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`Petitioner did not even attempt to demonstrate that Yegoshin discloses or
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`renders obvious multiplexing under any claim construction, including its own
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`district court construction and, in fact, did not even explain what “multiplexing”
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`means.
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`Petitioner did not proffer any construction of “multiplexing,” instead
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`insisting that no constructions were necessary. Pet., 2 (“no formal claim
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`constructions are necessary in this proceeding”). In the parallel district court
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`litigation, however, Petitioner contends that “multiplexing” means “to interleave or
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`simultaneously transmit two or more messages on a single communications
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`channel.” Ex. 2003 [Defendants’-Opening-Claim-Construction-Brief] 37. Though
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`the same claim construction standard applies in both proceedings, Petitioner does
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`not argue that this construction should apply in this proceeding and does not
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`otherwise address its district court construction, nor does Petitioner argue or
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`demonstrate that its district court construction is met. If Petitioner wished to
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`proffer this (or some other) construction in support of its position, the Office’s
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`rules required Petitioner to identify “how the challenged claim is to be construed”
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`and “how the construed claim is unpatentable” in the Petition. 37 C.F.R.
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`§§ 42.104(b)(3)-(4).
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`Dr. Jensen provides no further clarity. Instead, he merely repeats the
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`conclusory allegations of Petition (at 32) in substantially identical language:
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`Based on my knowledge and experience in the field and my review of
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`the prior art, it would have been obvious and predictable that, in order
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`to receive calls on both cellular network and WLAN simultaneously or
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`to switch between two networks, the phone includes multiplexing of the
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`signals communicated on two network paths.
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`Ex. 1003 [Jensen-Decl.] ¶ 123.
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`Dr. Jensen’s conclusory testimony is entitled to little or no weight. See, e.g.,
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`37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts
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`or data on which the opinion is based is entitled to little or no weight.”). Indeed, it
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`is precisely the sort of ipse dixit testimony rejected in Xerox:
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`Petitioner’s only evidence in support of its assertion that blocking the
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`purchaser would require recording the blocking in a record in the user’s
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`account is the opinion of its Declarant, Dr. Jones. We have reviewed
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`this excerpt from Dr. Jones’ declaration and note that it merely repeats,
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`verbatim, the conclusory assertion for w