`
`
`Sanjay K Rao, et al.
`In re Patent of:
`8,842,653 Attorney Docket No.: 39843-0125IP1
`U.S. Patent No.:
`September 23, 2014
`
`Issue Date:
`Appl. Serial No.: 14/139,817
`
`Filing Date:
`December 23, 2013
`
`Title:
`WIRELESS DEVICES WITH TRANSMISSION CONTROL AND
`MULTIPLE PATHS OF COMMUNICATION
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 8,842,653 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`REQUIREMENTS FOR IPR .......................................................................... 1
`A. Grounds for Standing ................................................................................ 1
`B. Challenge and Relief Requested ............................................................... 1
`C. Claim Construction ................................................................................... 2
`D. Level of Ordinary Skill in the Art ............................................................. 3
`SUMMARY OF THE ’653 PATENT ............................................................. 3
`A. Brief Description ....................................................................................... 3
`B. Prosecution History ................................................................................... 4
`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE ............................ 5
`A. Yegoshin in view of Billström and Johnston (Ground 1A – Claims 14-
`16) 5
`1. Overview of Yegoshin .................................................................... 5
`2. Overview of Johnston ...................................................................... 7
`3. Overview of Billström ..................................................................... 7
`4. Analysis ........................................................................................... 8
`B. Yegoshin in view of Johnston, Billström, and Bernard (Ground 1B –
`Claims 1-11, 17-21, and 23) ................................................................... 26
`1. Overview of Bernard ..................................................................... 26
`2. Analysis ......................................................................................... 28
`C. Yegoshin in view of Johnston, Billström, Bernard, and WO748 (Ground
`1C – Claim 12) ........................................................................................ 59
`1. Overview of WO748 ..................................................................... 59
`2. Analysis ......................................................................................... 60
`D. Yegoshin in view of Johnston, Billström, Bernard, and Sainton (Ground
`1D – Claims 13 and 24-26) ..................................................................... 65
`1. Overview of Sainton ...................................................................... 65
`2. Analysis ......................................................................................... 66
`E. Yegoshin in view of Johnston, Billström, Bernard, and Preiss (Ground
`1E – Claims 27-30) ................................................................................. 72
`
`i
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`1. Overview of Preiss ........................................................................ 72
`2. Analysis ......................................................................................... 73
`IV. DISCRETIONARY CONSIDERATIONS ................................................... 83
`V.
`FEES .............................................................................................................. 85
`VI. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 85
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 85
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 85
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 86
`D. Service Information ................................................................................ 87
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`ii
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`EX-1001
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`EX-1002
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`EX-1003
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`EX-1004
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`EX-1005
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`EX-1006
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`EX-1007
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`
`EXHIBITS
`
`U.S. Patent No. 8,842,653 to Sanjay K Rao, et al. (“the ’653 pa-
`tent”)
`
`Excerpts from the Prosecution History of the ’653 Patent (“the
`Prosecution History”)
`
`Declaration 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. (“John-
`ston”)
`
`U.S. Patent No. 5,590,133 to Lars Billström, et al. (“Billström”)
`
`U.S. Patent No. 5,497,339 to Marc A. Bernard (“Bernard”)
`
`EX-1008
`
`International Patent Publication No. WO 98/27748 (“WO748”)
`
`EX-1009
`
`EX-1010
`
`EX-1011
`
`EX-1012
`
`U.S. Patent No. 5,854,985 to Joseph B. Sainton, et al.
`(“Sainton”)
`
`U.S. Patent No. 6,031,503 to Joseph A. Preiss, II, et al. (“Pre-
`iss”)
`
`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
`
`iii
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`
`
`EX-1013
`
`EX-1014
`
`EX-1015
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`EX-1016
`
`EX-1017
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`EX-1018
`
`EX-1019
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`EX-1020
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`EX-1021
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`EX-1022
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`EX-1023
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`EX-1024
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`EX-1025
`
`EX-1026
`
`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Merilee Ford, H. Kim Lew, Steve Spanier, and Tim Stevenson,
`Internetworking Technologies Handbook, New Riders Publish-
`ing, 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 to Stephen Joseph Brown, et al.
`
`U.S. Patent No. 6,560,443 to Ari Vaisanen, et al.
`
`U.S. Patent No. 5,680,633 to Steven E. Koenck, et al.
`
`U.S. Patent No. 6,047,322 to Aseem Vaid, et al.
`
`Excerpts from Theodore S. Rappaport, Wireless Communica-
`tions Principles & Practice, Prentice Hall, 1996
`
`R. G. Vaughan, et al., Antenna diversity in mobile communica-
`tions, in IEEE Transactions on Vehicular Technology, vol. 36,
`no. 4, pp. 149-172, Nov. 1987
`
`S. M. Alamouti, A simple transmit diversity technique for wire-
`less 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
`
`iv
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`
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`European Patent Application 0 660 626 A2 to John Daniel
`Byrne
`
`Excerpts from William C. Jakes, Microwave Mobile Communi-
`cations, IEEE Press, 1974
`
`[RESERVED]
`
`Yi-Bing Lin, Cellular digital packet data, in IEEE Potentials,
`vol. 16, no. 3, pp. 11-13, Aug.-Sept. 1997
`
`A. K. Salkintzis, Packet data over cellular networks: the CDPD
`approach, in IEEE Communications Magazine, vol. 37, no. 6,
`pp. 152-159, June 1999
`
`C. E. Perkins et al., A mobile networking system based on In-
`ternet protocol, in IEEE Personal Communications, vol. 1, no.
`1, pp. 32-41, 1st Qtr. 1994
`
`K. C. Budka, H. Jiang and S. E. Sommars, Cellular digital
`packet data networks, in Bell Labs Technical Journal, vol. 2,
`no. 3, pp. 164-181, Summer 1997
`
`[RESERVED]
`
`U.S. Patent No. 6,353,443 to Zhinong Ying
`
`U.S. Patent No. 5,790,176 to Bernard Jeff Craig
`
`U.S. Patent No. 6,230,194 to Jean-Marc Frailong et al.
`
`EX-1027
`
`EX-1028
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`EX-1029
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`EX-1030
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`EX-1031
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`EX-1032
`
`EX-1033
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`EX-1034
`
`EX-1035
`
`EX-1036
`
`EX-1037
`
`EX-1038
`
`U.S. Patent No. 6,600,734 to Alex Gernert, et al.
`
`EX-1039
`
`Jon D. Brady, Virtual Private Networking – The Flexible Ap-
`proach, Institution of Electrical Engineers, 1997
`
`EX-1040
`
`U.S. Patent No. 6,055,575 to Gaige B. Paulsen, et al.
`
`v
`
`
`
`EX-1041
`
`EX-1042
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`EX-1043
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`EX-1044
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`EX-1045
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`EX-1046
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`EX-1047
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`EX-1048
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`
`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Complaint, Smart Mobile Technologies LLC v. Samsung Elec-
`tronics Co. Ltd. et al., Case No. 6:21-cv-00701 (WDTX)
`
`Joint Agreed Scheduling Order, Smart Mobile Technologies
`LLC v. Samsung Electronics Co. Ltd. et al., Case No. 6:21-cv-
`00701 (WDTX)
`
`Complaint, Smart Mobile Technologies LLC v. Apple Inc., Case
`No. 6:21-cv-00603 (WDTX)
`
`Joint Agreed Scheduling Order, Smart Mobile Technologies
`LLC v. Apple Inc., Case No. 6:21-cv-00603 (WDTX)
`
`U.S. Patent No. 4,989,230 to Steven F. Gillig, et al.
`
`Amended Joint Agreed Scheduling Order, Smart Mobile Tech-
`nologies LLC v. Samsung Electronics Co. Ltd. et al., Case No.
`6:21-cv-00701 (WDTX)
`
`Amended Joint Agreed Scheduling Order, Smart Mobile Tech-
`nologies LLC v. Apple Inc., Case No. 6:21-cv-00603 (WDTX)
`
`Excerpts from Constantine A. Balanis, Antenna Theory Analy-
`sis and Design, Harper & Row, 1982
`
`
`
`vi
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`
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`CLAIM LISTING
`
`Claim Language
`An Internet-enabled mobile communication device compris-
`
`Claim Element
`1[pre]
`
`1[a]
`
`1[b]
`
`1[c]
`
`1[d]
`
`1[e]
`
`ing:
`
`a memory;
`
`display electronics;
`
`at least two or more antennas;
`
`at least one or more processors; and
`
`a plurality of wireless transmit and receive components includ-
`
`ing a first wireless transmit and receive component and a sec-
`
`ond wireless transmit and receive component, wherein each
`
`wireless transmit receive component is configured to com-
`
`municate using one or more protocols;
`
`1[f]
`
`wherein the device is configured for multi-band wireless com-
`
`munication;
`
`1[g]
`
`wherein the device is enabled for communication using Inter-
`
`net Protocol (IP);
`
`1[h]
`
`wherein the device is enabled for wireless communication on a
`
`wireless local area network;
`
`vii
`
`
`
`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Claim Language
`wherein the first wireless transmit and receive component is
`
`Claim Element
`1[i]
`
`configured to communicate using a plurality of antennas; and
`
`1[j]
`
`wherein a transmission interface is created and wherein said
`
`transmission interface uses a plurality of IP enabled interfaces
`
`on the mobile device which utilize the plurality of wireless
`
`transmit and receive components on the mobile device to ena-
`
`ble a single interface comprised of multiplexed signals from
`
`the plurality of wireless transmit and receive components.
`
`2
`
`The device of claim 1, wherein a single transmission connec-
`
`tion is further comprised of at least two or more wireless trans-
`
`mit and receive connections simultaneously transmitting and
`
`receiving using the plurality of antennas, and wherein the pro-
`
`cessor multiplexes the receiving signals into the single trans-
`
`mission connection.
`
`3
`
`The device of claim 1, wherein a single transmission connec-
`
`tion is further comprised of at least two or more wireless trans-
`
`mit and receive connections sequentially transmitting and re-
`
`viii
`
`
`
`Claim Element
`
`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Claim Language
`ceiving using the plurality of antennas, and wherein the pro-
`
`cessor multiplexes the receiving signals into the single trans-
`
`mission connection.
`
`4
`
`The device of claim 1, wherein the device is configured to
`
`communicate with at least one server, wherein the rate at
`
`which data is transferred between the device and the server is
`
`improved by parallel paths and wherein data transmitted and
`
`received is multiplexed at each end.
`
`5
`
`The device of claim 2 wherein the mobile device transmits and
`
`receives multiple IP data packets and uses protocols including
`
`ethernet protocol, USB protocol, internet protocol, transmis-
`
`sion control protocol, transport layer communication proto-
`
`cols, or application interfaces.
`
`6
`
`The device of claim 1, wherein the first wireless transmit and
`
`receive component is configured to communicate over Internet
`
`Protocol with a remote system over a first network path and
`
`the second wireless transmit and receive component is config-
`
`ured to communicate with the same or different remote system
`
`using a second network path and wherein the processor on the
`
`ix
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`
`
`Claim Element
`
`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Claim Language
`mobile device is configured to combine the data paths into a
`
`single transmission interface to one or more applications on
`
`7
`
`8
`
`9
`
`the mobile device.
`
`The device of claim 1, wherein the device is comprised of a
`
`cellular telephone.
`
`The device of claim 1, wherein the device is configured to use
`
`a Virtual Private Network (VPN).
`
`The device of claim 1, wherein the use of two or more wireless
`
`transmit and receive units create connections to a plurality of
`
`remote systems simultaneously and transmit and receive data
`
`in a parallel path to increase the rate at which data is trans-
`
`ferred.
`
`10
`
`The device of claim 1, wherein multiple wireless transmit and
`
`receive components are presented to the application as a single
`
`connection interface such that the multiple transmission inter-
`
`faces are virtualized into a single transmission interface.
`
`11
`
`The device of claim 1, wherein an application executed by the
`
`processor on the mobile device is configured to use a single
`
`x
`
`
`
`Claim Element
`
`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Claim Language
`transport connect interface comprised of two or more wireless
`
`connections.
`
`12
`
`The device of claim 1, further in communication with a net-
`
`work box, which is configured with a plurality of antennas and
`
`a wireless transmit and receive component, wherein the net-
`
`work switch box wireless transmit and receive component is
`
`configured to communicate a signal stream using the network
`
`switch box plurality of antennas simultaneously.
`
`13
`
`The device of claim 1, further comprising of a processor for
`
`voice communication and a second processor for data commu-
`
`nication.
`
`14[pre]
`
`An Internet-enabled mobile communication device compris-
`
`ing:
`
`a memory;
`
`a display;
`
`at least two or more antennas;
`
`at least one or more processors; and
`
`14[a]
`
`14[b]
`
`14[c]
`
`14[d]
`
`xi
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`
`
`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Claim Language
`a plurality of wireless transmit and receive components includ-
`
`Claim Element
`14[e]
`
`ing a first wireless transmit and receive component and a sec-
`
`ond wireless transmit and receive component, wherein each
`
`wireless transmit receive component is configured to com-
`
`municate using one or more protocols;
`
`14[f]
`
`wherein the device is enabled for communication using Inter-
`
`net Protocol (IP);
`
`14[g]
`
`wherein the device is enabled for wireless communication on a
`
`wireless local area network;
`
`14[h]
`
`wherein the first wireless transmit and receive component is
`
`enabled to communicate using one or more antennas simulta-
`
`neously; and
`
`14[i]
`
`wherein the mobile device maintains multiple IP addresses,
`
`wherein the first wireless component is accessible on a first IP
`
`address and the second wireless transmit and receive compo-
`
`nent is accessible on a second IP address and wherein the mo-
`
`bile device operates using a plurality of ports.
`
`15
`
`The device of claim 14, further in communication with a
`
`server, wherein the mobile device is configured to receive
`
`xii
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`
`
`Claim Element
`
`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Claim Language
`multiple IP data packets on a plurality of ports at substantially
`
`the same time and send multiple data packets to the server, to
`
`allow multiple simultaneous communication paths over con-
`
`nections between the device and the server such that the com-
`
`munication rate between the server and device is increased.
`
`16
`
`The device of claim 14, wherein the device is configured for a
`
`plurality of protocols including transmission control, CDMA,
`
`TDMA, internet protocol (IP) and/or combinations thereof.
`
`17[pre]
`
`A mobile communication device, comprising:
`
`17[a]
`
`17[b]
`
`17[c]
`
`17[d]
`
`17[e]
`
`a memory;
`
`a display electronics;
`
`at least two or more antennas;
`
`at least one or more processors; and
`
`a plurality of wireless transmit and receive unit including a
`
`first wireless transmit and receive unit and a second wireless
`
`transmit and receive unit, wherein each wireless transmit re-
`
`ceive unit is configured to communicate using one or more
`
`protocols;
`
`xiii
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`
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Claim Language
`wherein the device is configured for multi-band wireless com-
`
`Claim Element
`17[f]
`
`munication;
`
`17[g]
`
`wherein the device is enabled for communication using Inter-
`
`net Protocol (IP);
`
`17[h]
`
`wherein the device is enabled for wireless communication on a
`
`local area network;
`
`17[i]
`
`wherein the first wireless transmit and receive component is
`
`configured to communicate using a plurality of antennas; and
`
`17[j]
`
`wherein the first wireless transmit and receive component is
`
`configured to communicate over Internet Protocol with a re-
`
`mote system over a first network path and the second wireless
`
`transmit and receive component is configured to communicate
`
`with the same or a different remote system using a second net-
`
`work path and wherein the processor on the mobile device is
`
`configured to combine the data paths into a single transmission
`
`interface to one or more applications on the mobile device.
`
`18
`
`The communication device of claim 17, wherein each of the
`
`plurality of communication paths employs a different network.
`
`xiv
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Claim Language
`The communication device of claim 18, wherein at least one of
`
`Claim Element
`19
`
`the different networks comprises a voice network and wherein
`
`at least one of the different networks comprises an Internet
`
`protocol data network.
`
`20
`
`The communication device of claim 17, wherein each of the
`
`plurality of communication paths employs a different commu-
`
`nication protocol and wherein each of the plurality of commu-
`
`nication paths involves wireless signals transmitted at a differ-
`
`ent frequency.
`
`21
`
`The communication device of claim 17, wherein one of the
`
`plurality of communication paths is used for wireless signals
`
`representing voice data, and another of the plurality of com-
`
`munication paths is used for wireless signals representing non-
`
`voice data.
`
`23
`
`The communication device of claim 17, wherein the one or
`
`more processors are programmed to differentiate between
`
`wireless signals received via one of the plurality of communi-
`
`cation paths and another of the plurality of communication
`
`paths.
`
`xv
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`
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Claim Language
`The communication device of claim 23, wherein one or more
`
`Claim Element
`24
`
`processors are programmed to process data represented by
`
`wireless signals received via the one communication path sep-
`
`arately from data represented by wireless signals received via
`
`the other communication path.
`
`25
`
`The communication device of claim 24, wherein the one or
`
`more processors comprise a plurality of processors, a first pro-
`
`cessor of the plurality of processors being programmed to pro-
`
`cess data represented by wireless signals received via the one
`
`communication path, and a second processor of the plurality of
`
`processors being programmed to process data represented by
`
`wireless signals received via the other communication path.
`
`26
`
`The communication device of claim 17, wherein the one or
`
`more processors are programmed to process voice data repre-
`
`sented by wireless signals received via one of the plurality of
`
`communication paths, and to process non-voice data repre-
`
`sented by wireless signals received via another of the plurality
`
`of communication paths.
`
`27[pre]
`
`An IP-enabled communication device comprising:
`
`xvi
`
`
`
`Claim Element
`27[a]
`
`a memory;
`
`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Claim Language
`
`27[b]
`
`27[c]
`
`27[d]
`
`one or more processors;
`
`display electronics;
`
`a plurality of wireless communication units, wherein the wire-
`
`less device supports a plurality of transmit and receive fre-
`
`quencies and a plurality of wireless protocols;
`
`27[e]
`
`wherein a first wireless communication unit is coupled to a
`
`first set of antennas configured to transmit and receive on a
`
`first network and wherein a second wireless communication
`
`unit is coupled to a second set of antennas and configured to
`
`transmit and receive on a second network;
`
`27[f]
`
`wherein the at least one wireless communication unit is con-
`
`figured for radio frequency communication;
`
`27[g]
`
`wherein the first wireless communication unit is configured to
`
`operate at a lower frequency than the second wireless commu-
`
`nication unit such that the first wireless communication unit
`
`and second wireless communication unit operate as comple-
`
`mentary systems;
`
`xvii
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`
`
`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Claim Language
`wherein the device is capable of voice, data, and Internet con-
`
`Claim Element
`27[h]
`
`nectivity; and
`
`27[i]
`
`wherein the first wireless transmit and receive unit operates on
`
`a first network path to a remote server and the second wireless
`
`transmit and receive unit communicates to the remote server
`
`on a second network path at the same time and wherein a plu-
`
`rality of signal are multiplexed to increase throughput and ena-
`
`ble simultaneous multi path communication.
`
`28
`
`The device of claim 27, further in communication with the re-
`
`mote server, wherein the mobile device is configured to re-
`
`ceive multiple IP data packets on a plurality of ports at sub-
`
`stantially the same time and send multiple data packets to the
`
`server, to allow multiple simultaneous communication paths
`
`over connections between the device and the server.
`
`29
`
`The device of claim 27, wherein the first wireless transmit and
`
`receive unit operates on the first network path to a remote
`
`server and the second wireless transmit and receive unit com-
`
`municates to the remote server on the second network path in
`
`response to a change in the signal strength and/or connectivity
`
`xviii
`
`
`
`Claim Element
`
`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Claim Language
`of the first wireless communication unit or second wireless
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`communication unit.
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`30
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`The device of claim 29, wherein the IP enabled communica-
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`tion device is a mobile device, and wherein the mobile device
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`is configured as a server and wherein the mobile device is con-
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`figured to transmit and receive a signal stream with a second
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`mobile device.
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`xix
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
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`Samsung Electronics Co., Ltd. and Apple Inc. (“Petitioner”) petition for In-
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`ter Partes Review (“IPR”) of claims 1-21 and 23-30 (“Challenged Claims”) of
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`U.S. Patent No. 8,842,653 (“the ’653 patent”).
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`I.
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`REQUIREMENTS FOR IPR
`A. Grounds for Standing
`Petitioner certifies that the ’653 Patent is available for IPR. This petition is
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`being filed within one year of service of a complaint against Petitioner. Petitioner
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`is not barred or estopped from requesting this review.
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`B. Challenge and Relief Requested
`Petitioner requests IPR on the grounds set forth below. Additional explana-
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`tion and support is found in EX-1003, the Declaration of Dr. Jensen. EX-1003,
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`¶¶1-257.
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`Ground
`1A
`1B
`1C
`1D
`1E
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`Basis for Rejection
`Claims
`Yegoshin, Johnston, Billström
`14-16
`1-11, 17-21, 23 Yegoshin, Johnston, Billström, Bernard
`12
`Yegoshin, Johnston, Billström, Bernard, WO748
`13, 24-26
`Yegoshin, Johnston, Billström, Bernard, Sainton
`27-30
`Yegoshin, Johnston, Billström, Bernard, Preiss
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`These references qualify as prior art based on the earliest claimed priority
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`date (6/4/1999; “Critical Date”), as shown below. Petitioner does not concede that
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`the ’653 patent is entitled to the claimed priority.
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`1
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`Notably, none of the references was considered during prosecution. See EX-
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`1002.
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`Reference
`Yegoshin
`Johnston
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`Billström
`Bernard
`WO748
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`Sainton
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`Preiss
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`Date
`02/22/1999 (filing)
`7/21/1998 (published)
`11/1/1995 (filing)
`12/31/1996 (published)
`3/5/1996 (published)
`6/25/1998 (published)
`12/15/1997 (filing)
`12/29/1998 (published)
`9/4/1996 (filing)
`2/20/1997 (filing)
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`Statutory Ground
`§102(e)
`§102(a), (e)
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`§102(b)
`§102(b)
`§102(a), (e)
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`§102(a), (e)
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`§102(e)
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`C. Claim Construction
`Based on the prior art’s description of the claimed elements being similar to
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`that of the ’653 patent specification, no formal claim constructions are necessary in
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`this proceeding because “claim terms need only be construed to the extent neces-
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`sary to resolve the controversy.” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
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`1355, 1361 (Fed. Cir. 2011).1
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`1 Petitioner is not conceding that each claim satisfies all statutory requirements,
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`such as §§101 and 112, nor is Petitioner waiving any arguments concerning claim
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`2
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`D. Level of Ordinary Skill in the Art
`For purposes of IPR, a person of ordinary skill in the art at the time of al-
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`leged invention (“POSITA”) would have had a Bachelor’s degree in electrical en-
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`gineering, computer engineering, computer science, or a related field, and at least
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`two years of experience related to the design or development of wireless communi-
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`cation systems, or the equivalent. EX-1003, ¶¶27-28. Additional graduate educa-
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`tion could substitute for professional experience, or significant experience in the
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`field could substitute for formal education. Id.
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`II.
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`SUMMARY OF THE ’653 PATENT
`A. Brief Description
`The ’653 patent relates to “multiple Internet Protocol (IP) based wireless
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`data transmissions” that “are simultaneously provided between a wireless device
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`and a server, including providing multiple antennas, multiple T/R units, multiple
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`processors and multiple I/O ports on the wireless device.” EX-1001, Abstract. Re-
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`ferring to Figure 10, the ’653 patent describes that the wireless device includes
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`“three wireless T/R units 1008, 1010, and 1012” that process “three data streams
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`1002, 1004, and 1006,” which are then “converted by converters 1014, 1016, and
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`scope or grounds that can only be raised in district court. For this petition, Peti-
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`tioner applies prior art in a manner consistent with Patent Owner’s allegations of
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`infringement before the district court.
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`3
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`1018, and presented to processors 1020, 1022, and 1024 under the control of con-
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`troller 1026.” Id., 3:26-27, 7:21-55, 10:11-21. “The data streams may be inter-
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`faced separately with server C 1030 or combined into data stream 1028 and inter-
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`faced to Server C 1030.” Id., 7:28-30, 7:55-57. The ’653 patent describes that its
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`techniques achieve “improvement in speed by providing multiple data paths.” Id.,
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`7:30-33; EX-1003, ¶45.
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`EX-1001, Figure 10
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`B.
`Prosecution History
`The claims were allowed after a single office action. EX-1002, 9-98. How-
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`ever, the claimed features were well-known and, had the examiner been aware of
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`the prior art advanced in this Petition, the application would not have been al-
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`lowed. EX-1003, ¶¶46-47.
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Yegoshin in view of Billström and Johnston (Ground 1A –
`Claims 14-16)
`1. Overview of Yegoshin2
`Yegoshin relates to “a dual-mode device capable of both cell phone commu-
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`nication and telephone communication on a local area network (LAN).” EX-1004,
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`Abstract, 4:59-5:3. Yegoshin’s dual-mode device can be a “normal cellular phone”
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`or “any type of wireless communication device” that “becomes a multi-purpose de-
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`vice” “through additional circuitry and software” such as “client software suite
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`19.” Id., 5:4-54; EX-1003, ¶48.
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`2 General descriptions provided for the references and combinations thereof are in-
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`corporated into each subsection and mapping of the claims that includes citations
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`to these references.
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`5
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
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`EX-1004, Figure 2
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`Yegoshin’s phone “allow[s] a user to switch modes from cellular to IP com-
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`munication, and perhaps to switch from differing types of networks using known
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`protocols that are made available via client software 19.” EX-1004, 5:33-54; EX-
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`1003, ¶49. “Alternatively, the program may be given a series of preferences by the
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`user, and then may negotiate the best possible connection accordingly.” Id.
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`Yegoshin’s phone is “capable of taking some calls via cellular path while receiving
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`other calls via IP path.” EX-1004, 5:55-65. Further, Yegoshin’s phone is capable
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`of “taking all cellular calls in IP format.” Id., 8:47-56.
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
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`2. Overview of Johnston
`Johnston provides “a compact diversity antenna” for a cellular telephone of-
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`fering “reduced radiation into the head and neck of the cellular phone user” in ad-
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`dition to well-known benefits of antenna diversity. EX-1005, Abstract, 1:10-32,
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`6:5-67, 7:42-45. Referring to Figure 29B, Johnston’s diversity includes three
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`“[a]ntennas 300” connected to transceiver 309 “through feed circuit 302, tuning
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`and matching circuit 304 and combiner 306 or 307 respectively.” Id., 11:9-23;
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`EX-1003, ¶50.
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`EX-1005, Figure 29B (annotated)
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`3. Overview of Billström
`Billström’s “mobile stations … provide packet data services in TDMA
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`(Time Division Multiple Access) cellular systems, based on providing shared
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`packet data channels optimized for packet data.” EX-1006, Abstract, 3:53-4:22,
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
`4:59-5:8, Figure 1; EX-1003, ¶51. Billström uses Internet Protocol to provide
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`packet data in digital cellular systems. Id., 7:58-8:21, Figure 2.
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`EX-1006, Figure 2 (annotated)
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`4.
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`Analysis
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`Claim 14
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`14[pre]
`To the extent the preamble is limiting, Yegoshin’s “[c]ellular telephone 9 is
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`… capable of communicating on an IP [Internet Protocol] data network” and thus
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`teaches an Internet-enabled mobile communication device. EX-1004, 4:63-5:3,
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`1:9-14, 1:30-57; EX-1003, ¶59.
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
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`14[a]
`Yegoshin’s phone includes a “suitable built-in memory” to store “client soft-
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`ware 19.” EX-1004, 5:37-40. Indeed, phones or communication devices were
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`well-known to use memory to store and process data for transmission. EX-1003,
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`¶60; EX-1004, 2:1-14.
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`14[b]
`Referring to Figure 1, Yegoshin’s phone includes a display for presenting in-
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`formation by graphics and texts. EX-1003, ¶61; EX-1004, 2:1-15. Indeed, it was
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`well-known that a phone had a display for that purpose. EX-1003, ¶61; EX-1009,
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`10:42-65, 12:65-13:19.
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`EX-1004, Figure 1 (annotated)
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`9
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`Attorney Docket No. 39843-0125IP1
`IPR of U.S. Patent No. 8,842,653
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`14[c]
`Referring to Figure 1, Yegoshin’s phone includes one or more antennas for
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`wireless transmission. EX-1003, ¶62; EX-1004, 1:52-2:15, 6:65-7:14.
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`EX-1004, Figure 1 (annotated)
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`It would have been obvious to use different antennas in a dual-mode device
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`(like Yegoshin’s phone) for respective communication channels (e.g., cellular and
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`WLAN). EX-1003, ¶63. Indeed, it was known to equip a wireless device with
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`multiple antennas to accommodate different frequencies and communication re-
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`quirements. Id.; EX-1025, Abstract; EX-1026, 10:10-21; EX-1027, 7:11-15.
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`It would have been further predictable and obvious to modify Yegoshin’s
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`phone to