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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 SUR-REPLY
`
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2022-01248
`Patent 8,842,653
`
`
`Page
`
`I.
`
`PETITIONER FAILS TO SHOW “MULTIPLEXED” “SIGNALS”
`(CLAIMS 1-13, 27-30; GROUNDS 1B, 1D). .............................................. 1
`
`A. The Reply’s Interpretation Of “Multiplexed” Is Contrary To The
`Plain Meaning, Common Sense, And Petitioner’s District Court
`Position. ................................................................................................. 1
`
`B.
`
`C.
`
`1.
`
`2.
`
`The Plain And Ordinary Meaning Of “Multiplexed” Does
`Not Encompass Merely “Selecting” A Stream. .......................... 2
`
`The Plain And Ordinary Meaning Of “Multiplexed” Does
`Not Encompass Sequentially Transmitted Independent
`Streams. ....................................................................................... 5
`
`Petitioner Fails To Show That Yegoshin discloses “Multiplexed”
`“Signals.” ............................................................................................... 9
`
`Petitioner Fails To Show That The Combination Of Yegoshin
`And Bernard Teaches “Multiplexed” Signals. .................................... 11
`
`1.
`
`2.
`
`Petitioner Fails To Show That Bernard Discloses
`“Multiplexed” Signals. .............................................................. 11
`
`Petitioner Fails To Prove A Motivation To Modify
`Yegoshin In View Of Bernard To Disclose “Multiplexed”
`Signals. ...................................................................................... 14
`
`a.
`
`b.
`
`Petitioner’s First Alternative Of Using Bernard’s Cradle
`With Yegoshin’s Phone Fails. ........................................14
`
`Petitioner’s Second Alternative Of Modifying
`Yegoshin’s Phone Fails. .................................................16
`
`i
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`Case IPR2022-01248
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`II.
`
`III.
`
`IV.
`
`PETITIONER FAILS TO SHOW “COMBIN[ING] DATA PATHS
`INTO A SINGLE TRANSMISSION INTERFACE TO ONE OR
`MORE APPLICATIONS” (CLAIMS 17-21, 23-26; GROUND 1B). ....18
`
`PETITIONER FAILS TO SHOW MULTIPLE IP ADDRESSES
`(CLAIMS 1-13, 14-16; GROUNDS 1A, 1B, 1C). .....................................22
`
`PETITIONER FAILS TO SHOW TWO “NETWORK PATHS”
`CONNECTED TO THE SAME “SERVER” (CLAIMS 27-30;
`GROUND 1E). ............................................................................................26
`
`V.
`
`DEPENDENT CLAIMS (GROUNDS 1B AND 1D). ..............................28
`
`A. Claim 2 ................................................................................................ 28
`
`B. Claim 9 ................................................................................................ 28
`
`C. Claim 10 .............................................................................................. 28
`
`D. Claims 21, 26. ...................................................................................... 30
`
`VI.
`
`THE BOARD SHOULD DISREGARD IMPROPERLY
`INCORPORATED EXPERT TESTIMONY. .........................................30
`
`VII. CONCLUSION ...........................................................................................31
`
`ii
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`TABLE OF AUTHORITIES
`
`Case IPR2022-01248
`Patent 8,842,653
`
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`Page(s)
`
`COURT DECISIONS
`
`Arctic Cat Inc. v. Bombardier Rec. Prods.,
`876 F.3d 1350 (Fed. Cir. 2017) ..........................................................................17
`
`Arctic Cat Inc. v. Polaris Indus.,
`795 Fed. App’x. 827 (Fed. Cir. 2019) ................................................................17
`
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010) ..........................................................................19
`
`Dell Inc. v. Acceleron, LLC,
`884 F.3d 1364 (Fed. Cir. 2018) ..........................................................................15
`
`Henny Penny Corp. v. Frymaster LLC,
`938 F.3d 1324 (Fed. Cir. 2019) ..........................................................................17
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ......................................................................1, 15
`
`U.S. v. Adams,
`383 U.S. 39 (1966) ..............................................................................................17
`
`Wasica Fin. GmbH v. Cont’l Auto. Sys.,
`853 F.3d 1272 (Fed. Cir. 2017) ..........................................................................15
`
`Winner Int’l Royalty Corp. v. Wang,
`202 F.3d 1340 (Fed. Cir. 2000) ..........................................................................17
`
`
`
`AGENCY DECISIONS
`
`3Shape A/S v. Align Tech., Inc.,
`IPR2019-00152, Paper 43 (July 16, 2020) ........................................................... 1
`
`iii
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`Patent 8,842,653
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`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (Aug. 29, 2014)
`(informative) .......................................................................................................30
`
`DIRECTV, LLC v. Qurio Holdings, Inc.,
`IPR2015-02007, Paper 6 (Apr. 4, 2016) .............................................................31
`
`QIAGEN N. Am. Holdings, Inc. v. HandyLab, Inc.,
`IPR2019-00488, Paper 52 (July 14, 2020) ........................................................... 1
`
`RPX Corp. v. Parity Networks, LLC,
`IPR2018-00097, Paper 7 (Apr. 24, 2018) ...........................................................11
`
`Trydel Res. Pty. Ltd. v. ITW Global Tire Repair, Inc.,
`IPR2019-01202, Paper 26 (Dec. 14, 2020) .......................................................... 1
`
`
`
`REGULATIONS
`
`37 C.F.R. § 42.23(b) ................................................................................................15
`
`37 C.F.R. §42.6 (a)(3) ..............................................................................................30
`
`
`
`OTHER AUTHORITIES
`
`Consolidated Trial Practice Guide .................................................................... 11, 15
`
`
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`iv
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`EXHIBIT LIST
`
`2001
`
`Reserved
`
`2002
`
`2003
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`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]
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`v
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`Case IPR2022-01248
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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.]
`
`vi
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`2021
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`2022
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`2023
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`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]
`
`2029
`
`Declaration of Parham Hendifar [served, not filed]
`
`2030
`
`Declaration of Nathan Nobu Lowenstein in support of Motion for
`Pro Hac Vice Admission
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`vii
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`2031
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`2032
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`2034
`
`Declaration of Colette Woo in support of Motion for Pro Hac
`Vice Admission
`
`Second Deposition Transcript of Michael Jensen, Ph.D. [2nd-Jensen-
`Depo.]
`
`Wagdy A. Aziz et al., VoIP Quality in IP-Multimedia Subsystem
`(IMS), Second International Conference on Computational
`Intelligence, Modelling and Simulation 546-552 (2010) (marked as
`Deposition Exhibit 2031)
`
`2035
`
`VoIP Info, IMS, VOIP-INFO.ORG, https://www.voip-info.org/ims/
`(April 4, 2005) (marked as Deposition Exhibit 2032)
`
`viii
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`The Reply only confirms Petitioner’s failure to “make [its] case in the[]
`
`petition.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`
`1369 (Fed. Cir. 2016). Indeed, the Reply includes twenty new exhibits and 44
`
`pages of reply expert testimony and 39 pages of supplemental testimony to boot.1
`
`Such untimely arguments and evidence should not be considered. 3Shape A/S v.
`
`Align Tech., Inc., IPR2019-00152, Paper 43, 46-48 (July 16, 2020); Trydel Res.
`
`Pty. Ltd. v. ITW Global Tire Repair, Inc., IPR2019-01202, Paper 26, 40-42 (Dec.
`
`14, 2020). But, even if this could be overlooked, Petitioner still fails to show
`
`obviousness of any claim.
`
`I.
`
`PETITIONER FAILS TO SHOW “MULTIPLEXED” “SIGNALS”
`(CLAIMS 1-13, 27-30; GROUNDS 1B, 1D).
`
`The Reply fails to rebut the POR’s showing (at 1-37), and the institution
`
`decision’s finding, that Petitioner’s grounds do not disclose or render obvious
`
`“multiplexed” signals.
`
`A. The Reply’s Interpretation Of “Multiplexed” Is Contrary To The
`Plain Meaning, Common Sense, And Petitioner’s District Court
`Position.
`
`The Petition did not propose a construction for “multiplex.” Pet., 2. The
`
`Reply does not propose one either. Reply, 14-17. Even though Petitioner in both
`
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`1 Exhibit 1050 should not be admitted into evidence. See Paper 24.
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`1
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`the district court and this IPR purports to apply plain and ordinary meaning, it
`
`asserts that it is “allowed to advance [] different claim construction position[s]” in
`
`the two proceedings. Reply, 15. Indeed, Petitioner’s expert admitted that
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`Petitioner’s “plain and ordinary meaning” of multiplexing in the IPR is “broader
`
`than” Petitioner’s “plain and ordinary meaning” of that same term in the district
`
`court. Ex. 2032 [2nd-Jensen-Depo.] 52:6-12, 54:4-14.
`
`The reason for Petitioner’s Janus-faced approach is simple. While it claims
`
`to apply the plain and ordinary meaning of “multiplexed” in this proceeding, it
`
`does not. Instead, it stretches the term beyond reason, unsupported by evidence
`
`and contrary to its district court position.2
`
`1.
`
`The Plain And Ordinary Meaning Of “Multiplexed” Does Not
`Encompass Merely “Selecting” A Stream.
`
`Yegoshin does not “multiplex” signals. Rather, it uses either cellular or
`
`WLAN for an entire call. This is not “multiplexing.” Nonetheless, Petitioner
`
`argues that Yegoshin’s selection of either cellular or WLAN for the entire duration
`
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`2 The district court’s construction of “multiplexed” is “[p]lain-and-ordinary
`
`meaning,” not including “demultiplexing functionality” or requiring “outputting to
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`physical communications channel(s) or to a single output.” Ex. 1099, 7. Neither
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`caveat is at issue here.
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`2
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`of a call discloses “multiplexed” signals. Reply, 17-18. Petitioner’s position is
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`unsupported and contrary to both the plain meaning and Petitioner’s own district
`
`court position.
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`No dictionary of record—including those cited by Petitioner in the district
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`court—defines multiplexing to encompass merely “selecting” one of two streams:
`
`Ex. 2003 [Defendants’-Opening-Claim-Construction-Brief] 40; see also Ex. 1001
`
`[’653] 3:42-48, 4:14-36, 9:12-20, 10:17-21; 11:1-30.
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`Petitioner’s position here, moreover, contradicts its district court position
`
`that multiplexing’s “plain and ordinary” meaning is “to interleave or
`
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`simultaneously transmit …” Ex. 2003 [Defendants’-Opening-Claim-Construction-
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`Brief] 37. Selecting either cellular or WLAN for an entire call is neither
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`“interleav[ing]” nor “simultaneously transmit[ting]” signals. POR, 14-15.
`
`Petitioner conflates “multiplexed signals” (as the claims require) with the
`
`electronic component called a “multiplexer.” Reply, 16 (“a multiplexer ‘select[s]’
`
`one of multiple input signals …”). But a “multiplexer” has two distinct definitions.
`
`The first, consistent with Petitioner’s dictionary definitions, is a device that
`
`“interleav[es] ... two or more signals.” The second, i.e., less frequent definition, is
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`a “device” that “select[s] one of a number of inputs ...”:
`
`Ex. 2023 [IEEE-Dictionary] 716; Ex. 2019 [2nd-Cooklev-Decl.] ¶¶67-69. But, as
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`the dictionaries of record confirm, including Petitioner’s own dictionaries, merely
`
`“selecting” between inputs would not constitute “multiplexing.” See also Exhibits
`
`1061, 1062 (cited by Reply, 16).
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`Petitioner’s argument that the plain and ordinary meaning of “multiplexed”
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`signals includes “selecting” should be rejected.
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`2.
`
`The Plain And Ordinary Meaning Of “Multiplexed” Does Not
`Encompass Sequentially Transmitted Independent Streams.
`
`Petitioner argues that Yegoshin’s use of WLAN for one call, and subsequent
`
`use of cellular for another call constitutes “multiplexed signals.” Reply, 17.
`
`Petitioner also argues that sequential, non-overlapping transmission of independent
`
`streams in Bernard constitutes “multiplexed signals” simply because both streams
`
`happen to pass through the serial interface 701 at different times. Id., 18-19. But,
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`two independent, non-overlapping, sequentially transmitted streams, sent at
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`different times are not “multiplexed” under the plain meaning.
`
`Applying Petitioner’s IPR purported plain and ordinary meaning of
`
`“multiplexed” signals creates absurd results. For example, Petitioner’s expert
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`testified that a “phone call ... made using the cellular network today and another
`
`phone call ... made 50 years from now on the WLAN network” would,
`
`nonetheless, be multiplexed. Ex. 2032 [2nd-Jensen-Depo.] 56:1-7; 55:12-21
`
`(similar); 67:7-15 (similar), 55:22-25.
`
`Petitioner’s extreme position here contradicts its district court construction,
`
`defining multiplexing as “simultaneous” transmission or “interleav[ing]” of two
`
`streams. Ex. 2003 [Defendants’-Opening-Claim-Construction-Brief] 37. Two
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`independent streams sequentially transmitted (i.e., one has finished transmitting
`
`before the other transmits) are neither “simultaneously” transmitted nor
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`interleaved. Ex. 2023 [IEEE-Dictionary] 577 (“interleaving” requires alternating
`
`parts); Ex. 2019 [2nd-Cooklev-Decl.] ¶76.
`
`Petitioner’s untimely evidence in support of its de facto construction does
`
`not withstand scrutiny. Petitioner argues that in an STDM multiplexing method,
`
`“multiple data flows do not have to be simultaneously or continuously
`
`communicated ….” Reply, 14-15 (citing Exhibit 1011). Petitioner misapprehends
`
`Exhibit 1011, which addresses “how ... several hosts share the same link when they
`
`all want to use it at the same time[.]” Ex. 1011, 14. It then discloses statistical
`
`time-division multiplex (STDM), which works “to divide time into equal-sized
`
`quanta, and in a round-robin fashion, give each flow a chance to send its data over
`
`the physical link.” Id., 15. In that context, if one flow happens to not have data at
`
`one time slot, no data is sent during that specific time slot. But the flows are still
`
`interleaved overall and in other time slots. If the entirety of the two streams were
`
`to be sent at different times with no overlap, there would be no need for time slots
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`and STDM. One flow would be sent in its entirety first, and a second flow would
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`subsequently be sent in its entirety.3
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`While Petitioner claims that “intrinsic record” supports its position, it does
`
`not, as evidenced by the fact that the Reply (at 16-17) chose to include only a few
`
`conclusory sentences on this point, and instead incorporated by reference many
`
`pages of its new expert declarations, which should be disregarded. See Section VI,
`
`infra. The ’653 never suggests that “multiplexing” encompasses either “selecting”
`
`a stream, or multiple independent streams that may happen to pass the same
`
`channel at different, non-overlapping times. Petitioner’s improperly incorporated
`
`expert declaration cites Ex. 1001, 5:52-54, which states that “[o]ne, all, or some of
`
`the connections may be used simultaneously or sequentially for combining
`
`multiple data paths into a single path.” Ex. 1050, ¶11 (cited by Reply, 16). But
`
`this sentence describes “combining data paths,” a separate limitation of claim 17,
`
`and not “multiplexing.” Moreover, even if it did describe “multiplexing,” it
`
`describes combining sequential “data paths” such that, for example, a first half of a
`
`message is transmitted through one network and the second half of the same
`
`
`3 The Reply (at 15) also incorporates by reference Ex. 1050, ¶¶9-10, 30-32;
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`Ex. 1013, 33; Ex. 1071, 1, which should be disregarded (see Section VI, infra) but
`
`also do not change this analysis.
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`message is transmitted through another network, for example to increase
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`throughput (Ex. 1001 [’653] 6:64-7:10; Ex. 2019, ¶100), which neither Yegoshin
`
`nor Bernard teach.
`
`Petitioner also asserts that claims 2 and 3 confirm that “multiplex” “covers
`
`both simultaneous and non-simultaneous (or sequential) communications.” Reply,
`
`17. Not so. Those claims’ use of “simultaneous[]” and “sequential[]” transmission
`
`does not relate to multiplexing. Rather, those claims recite that the transmitting
`
`and receiving can be simultaneous (claim 2) or sequential (claim 3), but do not
`
`recite that the transmitted and received signals be multiplexed together. Rather, it
`
`requires the received signals alone be multiplexed.
`
`Petitioner also claims that the ’653’s priority application supports its
`
`position. Reply, 17 (citing Ex. 1052). Petitioner relies upon untimely and
`
`improperly incorporated expert testimony (Ex. 1050, ¶¶13-16; Ex. 1051, ¶¶30-33),
`
`and new Exhibit 1052, which should be disregarded. See Section VI, infra.
`
`Petitioner is also wrong. Exhibit 1052 (at 11:32) discloses a “multiplexing[]
`
`transmit/receive device.” But, that a multiplexer device performs selecting in
`
`addition to multiplexing does not mean that selecting a stream is multiplexing. See
`
`also Section I.A.1, supra. In fact, Ex. 1052 (at 14:27-31) expressly explains that
`
`“the central multichannel multiplexing transmitter/receiver can be built to have a
`
`combination of various input and output channels with and without multiplexing
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`capability,” confirming that merely selecting a channel is not a “multiplexing
`
`capability.” Furthermore, this device contains a “buffer” that stores data
`
`sequentially received, and, after storing the data in the buffer, may or may not be
`
`able to multiplex them on the output channel, for example by interleaving them.
`
`Id., Fig. 3 (showing “input buffer block”); 14:22-26. But nothing there teaches that
`
`multiplexing encompasses independent streams that may happen to pass through
`
`the same channel at different, non-overlapping times.
`
`The Reply (at 12) also argues that “interleaving” “employs no temporal
`
`limitation” and “can be performed for data being communicated both
`
`simultaneously and sequentially.” Reply, 12. But “interleaving” requires parts of
`
`the first sequence to “alternate” with parts of the second sequence. Ex. 2023
`
`[IEEE-Dictionary] 577. Such alternating is impossible, however, if the first
`
`sequence is completed before the second sequence even starts as in Yegoshin or
`
`Bernard. Ex. 2019 [2nd-Cooklev-Decl.] ¶¶59-60.
`
`B.
`
`Petitioner Fails To Show That Yegoshin discloses “Multiplexed”
`“Signals.”
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`Petitioner relied on Yegoshin allegedly “selectively or simultaneously”
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`using cellular and WLAN networks for different calls as disclosing “multiplexed”
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`signals. Pet., 31-32. The POR (at 4-15) showed that “selectively” using either
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`WLAN or cellular for different calls does not disclose multiplexing, and Yegoshin
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`does not disclose “simultaneous” use of those networks. The Reply fails to rebut
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`either showing.
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`With respect to Yegoshin selecting either WLAN or cellular networks for
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`different calls, Petitioner’s only response is to expand the construction of
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`“multiplexed” signals to encompass selecting between two networks. Reply, 16.
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`This construction is unsupported. See Section I.A.
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`The Board, moreover, rightly rejected Petitioner’s allegation that Yegoshin
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`teaches “simultaneous” use of its cellular and WLAN networks. ID, 21-22; POR,
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`8-11. The Reply again cites Yegoshin’s statement that “cell phone 9 is capable of
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`taking some calls via cellular path while receiving other calls via IP path,” arguing
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`that it is an “alternative example[]” to “call-busy” signals, and teaches
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`simultaneous use of cellular and WLAN. Reply, 17-18 (citing Ex. 1004, 5:55-57).
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`But Yegoshin expressly states that “call-busy” is not an “alternate,” but an
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`“example” of how it handles calls that are received “if engaged with [another]
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`call.” Ex. 1004 [Yegoshin] 5:55-65. Yegoshin’s “preferred embodiment”
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`“switch[es]” from one network to another; it does not use both simultaneously. Id.,
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`5:63-65.
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`Petitioner also presents an untimely argument relying upon Gillig that
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`“simultaneous use of two different networks was well-known.” Reply, 18 (citing
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`Ex. 1045). “[N]ew evidence or argument in reply that it could have presented
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`earlier, e.g. to make out a prima facie case of unpatentability” should be
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`disregarded. CTPG, 73. Furthermore, Gillig is not a part of Petitioner’s
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`combination and does not change Yegoshin’s unambiguous disclosure. RPX Corp.
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`v. Parity Networks, LLC, IPR2018-00097, Paper 7, 14 (Apr. 24, 2018) (Rejecting
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`Petitioner’s cited references that were not “part of the combination.”). Further still,
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`at the time of the invention, three-way calling was a feature implemented by the
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`service provider (such as AT&T), and the two signals would be combined at the
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`provider’s servers, not at the phone. Ex. 2032, 61:17-62:5.
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`Thus, Petitioner fails to show that Yegoshin discloses or renders obvious
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`“multiplexed” signals.
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`C.
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`Petitioner Fails To Show That The Combination Of Yegoshin And
`Bernard Teaches “Multiplexed” Signals.
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`The Board properly rejected Petitioner’s arguments as to the combination of
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`Yegoshin and Bernard. ID, 23; POR, 16-37. Petitioner failed to show that Bernard
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`discloses “multiplexed” signals or that a POSITA would be motivated to modify
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`Yegoshin in view of Bernard to “multiplex” its cellular and WLAN signals. Id.
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`The Reply fails to remedy these shortcomings.
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`1.
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`Petitioner Fails To Show That Bernard Discloses “Multiplexed”
`Signals.
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`The Petition argued that Bernard discloses “multiplexed” signals because
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`signals from Bernard’s various networks all happen to pass through the serial
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`connection 701 at different times. Pet., 33-37. This disclosure does not teach
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`“multiplexed” signals. POR, 22-26; Section I.A.2, supra. The Reply fails to
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`remedy this deficiency.
`
`The Reply first argues that as long as data is passed “through the single
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`serial interface 701,” it would disclose multiplexing “regardless of the timing of
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`each data packet’s arrival at serial interface 701 ….” Reply, 20. Not so. As
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`explained (Section I.A.2), independent streams transmitted at different, non-
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`overlapping times are not “multiplexed” by virtue of simply passing through the
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`same conduit. Similarly, “[i]n Bernard, communication packet interface 752
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`completes servicing an application request from a given network before moving to
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`service the same or a different application’s request from the same or a different
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`network.” Ex. 2019 [2nd-Cooklev-Decl.] ¶72. Thus, as each independent stream
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`is completely transmitted before another independent stream is transmitted at a
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`different, non-overlapping time, Bernard’s streams from different networks are not
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`multiplexed. Id., ¶¶74-76.
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`Patent Owner demonstrated (Ex. 2019 [2nd-Cooklev-Decl.] ¶¶72-73) that
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`Bernard even precludes simultaneously pending requests by different applications
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`for the same type of data. Petitioner responds that each data packet includes an
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`address to an application and, thus, Petitioner surmises, Bernard can establish
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`simultaneous connections. Reply, 22 (citing Ex. 1007, 18:19-20). This is
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`incorrect. The “address” is for outgoing packets from the applications, and point
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`to the device’s “communication circuit[],” and do not relate to an incoming packet
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`identifying a destination application. Ex. 1007, 18:9-11, 20-22.
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`Petitioner also argues that “Bernard describes other scenarios where
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`simultaneous connections are established, such as a single application requesting
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`data of different types from different communication circuits.” Reply, 22 (citing
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`Ex. 1007, 17:66-18:1). But Bernard simply describes that an application “may
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`utilize” two communication circuits with no disclosure of using the circuits
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`simultaneously. Ex. 1007, 17:66-18:1.
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`The POR also demonstrated that, even though Bernard explains that in a
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`modified version of its second embodiment, including with “an alternative
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`interconnection,” multiple connections can be established simultaneously, there is
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`no reason to believe that this ill-defined modified Bernard would still use a single
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`serial interface 701 to service multiple connections. POR, 25-26; Ex. 2019 [2nd-
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`Cooklev-Decl.] ¶79; Ex. 1007 [Bernard] 26:56-60. Petitioner’s Reply argues that
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`“Bernard does not expressly require removing or replacing serial interface 701” to
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`implement simultaneous connections. Reply, 23. This is irrelevant. Bernard is
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`clear that its second embodiment cannot use two communication circuits
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`simultaneously without modification. Ex. 2019 [2nd-Cooklev-Decl.] ¶79; Ex. 1007
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`[Bernard] 26:56-60. This is supported by the balance of Bernard’s logic, which,
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`for example, can only route one data type to a single application. Ex. 2019 [2nd-
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`Cooklev-Decl.] ¶¶72-73. The Petition did not propose modifying Bernard to allow
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`multiple simultaneous connections.
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`Consequently, Petitioner fails to prove that Bernard discloses or renders
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`obvious “multiplexed” signals.
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`2.
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`Petitioner Fails To Prove A Motivation To Modify Yegoshin In
`View Of Bernard To Disclose “Multiplexed” Signals.
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`The POR (at 27-37) explained why “alternative ways” of modifying
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`Yegoshin/Johnston/Billström’s phone in view of Bernard fail. The Reply fails to
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`rebut the POR’s showing.
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`a.
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`Petitioner’s First Alternative Of Using Bernard’s Cradle
`With Yegoshin’s Phone Fails.
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`Petitioner first proposes using Yegoshin’s phone with Bernard’s cradle.
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`Pet., 38-39. Petitioner, however, failed to show that a POSITA would have been
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`motivated to make this combination or, even if made, that this combination
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`discloses the claims. POR, 27-31. The Reply fails to remedy these shortcomings.
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`Patent Owner explained that Petitioner had not shown a motivation for its
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`combination because, inter alia, “Bernard states that its cradle is designed for use
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`with PDAs which, at the time of Bernard in 1994, had limited communication
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`capabilities,” and that it was not “intended for a mobile device with already
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`existing cellular and WLAN capabilities.” Ex. 2019 [2nd-Cooklev-Decl.] ¶87;
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`POR, 30-31. In response, Petitioner’s Reply (at 24) attempts to change its
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`combination from relying on Yegoshin’s phone to relying on some unidentified
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`PDA. The Petition, however, consistently relied upon Yegoshin’s phone precisely
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`because, unlike a PDA, it has cellular and wireless capabilities. See, e.g., Pet., 8
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`(“Yegoshin’s phone includes ….”); 18 (“motivated to modify Yegoshin’s cellular
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`phone …”); 30 (“Yegoshin’s phone uses cellular and WLAN …”). Petitioner’s
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`combination thus hinges upon Yegoshin’s device being a phone and would not
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`disclose other claim limitations if it were just a PDA. Nor can Petitioner change its
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`combination in the Reply. Intelligent Bio-Systems, Inc. v. Illumina Cambridge,
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`Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016); Wasica Fin. GmbH v. Cont’l Auto.
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`Sys., 853 F.3d 1272, 1286‐1287 (Fed. Cir. 2017); 37 C.F.R. § 42.23(b); CTPG, 45,
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`74; see Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018).
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`Petitioner also does not dispute its expert’s admission that the combined
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`Yegoshin-Bernard phone-cradle would still use Yegoshin’s internal cellular and
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`WLAN radio systems, which do not pass through the serial connection to the
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`cradle and, therefore, would not be “multiplexed.” Ex. 2020 [1st-Jensen-Depo.]
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`72:2-73:14; Ex. 2019 [2nd-Cooklev-Decl.] ¶¶84-85. Instead, Petitioner appears to
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`shift its combination to argue that Bernard’s cradle would support different cellular
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`and WLAN protocols than Yegoshin’s phone, and Petitioner now relies on those
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`different components from the cradle, rather than Yegoshin’s own cellular and
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`15
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`Case IPR20
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