Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Entered: January 24, 2023
`
`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.
`
`IPR2022-01249
`Patent 9,019,946 B1
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, GARTH D. BAER, and AARON W. MOORE,
`Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`Paper 13
`Entered: January 24, 2023
`
`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.
`
`IPR2022-01249
`Patent 9,019,946 B1
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, GARTH D. BAER, and AARON W. MOORE,
`Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2022-01249
`Patent 9,019,946 B1
`
`INTRODUCTION
`I.
`A. Background and Summary
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`and Apple Inc. (collectively, “Petitioner”) filed a Petition (Paper 3, “Pet.”)
`requesting institution of an inter partes review of claims 1–21 and 26–30 of
`U.S. Patent No. 9,019,946 B1 (Ex. 1001, “the ’946 patent”). Smart Mobile
`Technologies LLC (“Patent Owner”) filed a Preliminary Response (Paper 7,
`“Prelim. Resp.”). With our authorization, the parties filed additional briefs
`directed solely to the issue of inconsistent claim constructions between this
`proceeding and related litigation. Papers 11, 12.
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” Upon
`consideration of the Petition in view of the present record and for the reasons
`explained below, we determine that Petitioner has shown a reasonable
`likelihood of prevailing with respect to at least one of the challenged claims.
`Thus, we institute an inter partes review of claims 1–21 and 26–30 of
`the ’946 patent on all presented challenges. SAS Inst. Inc. v. Iancu, 138 S.
`Ct. 1348, 1359–60 (2018).
`B. Real Parties in Interest
`Petitioner identifies Samsung Electronics Co., Ltd., Samsung
`Electronics America, Inc., and Apple Inc. as real parties in interest. Pet. 86.
`Patent Owner only identifies itself as a real party in interest. Paper 5, 1.
`C. Related Matters
`The parties identify Smart Mobile Techs. LLC v. Apple Inc., 6:21-cv-
`00603 (W.D. Tex.) and Smart Mobile Techs. LLC v. Samsung Elecs. Co.,
`Ltd., 6:21-cv-00701 (W.D. Tex.) as related matters. Pet. 86; Paper 5, 1.
`
`2
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`IPR2022-01249
`Patent 9,019,946 B1
`We instituted inter partes reviews of related patents. Samsung Elecs.
`Co., Ltd. v. Smart Mobile Techs. LLC, IPR2022-00766, Paper 14 (PTAB
`Oct. 26, 2022) (Decision Granting Institution); Samsung Elecs. Co., Ltd. v.
`Smart Mobile Techs. LLC, IPR2022-01004, Paper 13 (PTAB Dec. 5, 2022)
`(Decision Granting Institution); Samsung Elecs. Co., Ltd. v. Smart Mobile
`Techs. LLC, IPR2022-01005, Paper 10 (PTAB Dec. 5, 2022) (Decision
`Granting Institution). Other related patents are challenged in IPR2022-
`01223 and IPR2022-01248.
`D. The ’946 Patent (Ex. 1001)
`The ’946 patent issued on April 28, 2015, from an application filed on
`September 8, 2014, which is a continuation application of several previously
`filed continuation and continuation-in-part applications, the earliest of which
`was filed on June 4, 1999. Ex. 1001, codes (22), (45), (63), 1:8–19.
`According to the ’946 patent, an unfulfilled need exists for multiple
`transmitters and receivers (“T/R”) in a cellular telephone or mobile wireless
`device (“CT/MD”). Ex. 1001, 1:48–49. Figure 5A of the ’946 patent is
`reproduced below.
`
`Figure 5A shows a “a dual antenna, dual T/R unit in a CT/MD
`interfacing with a dual processor.” Ex. 1001, 2:15–17. Dual antenna 508
`and dual T/R unit 504 interface with dual processor 506 in dual band
`
`
`
`3
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`Patent 9,019,946 B1
`system 500. Id. at 4:37–39. System 500 can communicate through
`outputs 510, which can be “fibre optic channel, ethernet, cable, telephone, or
`other.” Id. at 4:42–45.
`“The multiple processors 506 allow for parallel and custom
`processing of each signal or data stream to achieve higher speed and better
`quality of output.” Ex. 1001, 4:51–53. Processors 506 include “DSP, CPU,
`memory controller, and other elements essential to process various types of
`signals.” Id. at 4:56–58.
`“The processor contained within the CT/MD 502 is further capable of
`delivering the required outputs to a number of different ports such as optical,
`USB, cable and others” and “capable of taking different inputs, as well as
`wireless.” Id. at 4:60–64. “Thus the CT/MD 502 has universal connectivity
`in addition to having a wide range of functionality made possible through
`the features of multiple antennas, multiple T/R units 504 and processors
`506.” Id. at 4:67–5:3.
`“[T]he CT/MD may use one or more transmission protocols as
`deemed optimal and appropriate,” and “the CT/MD determines the required
`frequency spectrum, other wireless parameters such as power and signal to
`noise ratio to optimally transmit the data.” Ex. 1001, 11:5–7, 11:9–11:11.
`The CT/MD has “the ability to multiplex between one or more transmission
`protocols such as CDMA, TDMA to ensure that the fast data rates of the
`optical network or matched closely in a wireless network to minimize the
`potential data transmission speed degradation of a wireless network.” Id.
`at 11:12–15. “Thus it is possible that various optical and wireless protocols
`can co-exist in a network.” Id. at 11:29–30.
`
`4
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`IPR2022-01249
`Patent 9,019,946 B1
`E. Illustrative Claim
`The ’943 patent includes 30 claims, of which Petitioner challenges
`claims 1–21 and 26–30. Of the challenged claims, claims 1, 14, 17, and 27
`are independent, and reproduced below is claim 14.
`14. An
`Internet-enabled mobile communication device
`comprising:
`
`a memory;
`
`a display;
`
`at least two or more antennas;
`
`at least one or more processors; and
`
`a plurality of wireless transmit and receive units including
`a first wireless transmit and receive unit and a second wireless
`transmit and receive unit, wherein each wireless transmit receive
`unit is configured to communicate using one or more protocols;
`
`wherein the device is enabled for communication using
`Internet Protocol (IP);
`
`wherein the device is enabled for wireless communication
`on a wireless local area network;
`
`wherein the first wireless transmit and receive unit is
`enabled
`to communicate using one or more antennas
`simultaneously; and
`
`wherein
`the mobile device maintains multiple IP
`addresses, wherein the first wireless unit is accessible on a first
`IP address and the second wireless transmit and receive unit is
`accessible on a second IP address and wherein the mobile device
`operates using a plurality of ports; and
`
`wherein data transferred by the plurality of transmit and
`receive units is improved by the simultaneous use of multiple
`network paths including at least one connection to a networked
`server; and
`
`wherein the device is enabled for communication of
`wireless signals representing voice data and for communication
`of wireless signals representing non-voice data.
`
`Ex. 1001, 13:17–47.
`
`5
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`Patent 9,019,946 B1
`F. Asserted Prior Art and Proffered Testimonial Evidence
`Petitioner identifies the following references as prior art in the
`asserted grounds of unpatentability:
`Name
`Reference
`Bernard US 5,497,339, issued Mar. 5, 1996
`Billström US 5,590,133, issued Dec. 31, 1996
`Johnston US 5,784,032, issued July 21, 1998
`Sainton US 5,854,985, issued Dec. 29, 1998
`Preiss
`US 6,031,503, filed Feb. 20, 1997, issued Feb. 29,
`2000
`Yegoshin US 6,711,146 B2, filed Feb. 22, 1999, issued Mar.
`23, 2004
`1008
`WO748 WO 98/27748, published June 25, 1998
`Pet. 2. Petitioner states that “[t]hese references qualify as prior art based on
`the earliest claimed priority date (6/4/1999; ‘Critical Date’)” but “does not
`concede entitlement to the claimed priority.” Id. at 1. According to
`Petitioner, Bernard and Billström are prior art under § 102(b); Yegoshin and
`Preiss are prior art under § 102(e); and Johnston, WO748, and Sainton are
`prior art under §§ 102(a) and (e). 1 Id. Petitioner also provides a Declaration
`of Dr. Michael Allen Jensen. Ex. 1003.
`
`Exhibit
`1007
`1006
`1005
`1009
`1010
`
`1004
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
`2013. Because the ’946 patent claims priority to an application filed before
`that date, our citations to 35 U.S.C. §§ 102 and 103 in this Decision are to
`their pre-AIA versions. See also Pet. 1 (stating but not conceding that “the
`earliest claimed priority date” is “6/4/1999”).
`
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`Patent 9,019,946 B1
`G. Asserted Grounds
`Petitioner asserts that claims 1–21 and 26–30 are unpatentable on the
`following grounds:
`35
`Claim(s)
`U.S.C.
`Challenged
`§
`103(a) Yegoshin, Johnston, Billström
`14, 15
`1–11, 16–21 103(a) Yegoshin, Johnston, Billström, Bernard
`12
`103(a) Yegoshin, Johnston, Billström, Bernard, WO748
`13, 26
`103(a) Yegoshin, Johnston, Billström, Bernard, Sainton
`27–30
`103(a) Yegoshin, Johnston, Billström, Bernard, Preiss
`Pet. 1.
`
`References/Basis
`
`II. ANALYSIS
`
`A. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent [claim] it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016). This burden of persuasion never shifts to Patent Owner.
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015). The Board may authorize an inter partes review if we
`determine that the information presented in the Petition shows that there is a
`reasonable likelihood that Petitioner will prevail with respect to at least one
`of the claims challenged in the petition. 35 U.S.C. § 314(a).
`Petitioner contends that the challenged claims of the ’946 patent are
`unpatentable under § 103. Pet. 1. A claim is unpatentable under § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
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`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) where in evidence, so-called
`secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). When evaluating a combination of teachings, we must also
`“determine whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at
`418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a
`combination of elements produces a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`B. Level of Ordinary Skill in the Art
`Petitioner asserts that one of ordinary skill in the art “would have had
`a Bachelor’s degree in electrical engineering, computer engineering,
`computer science, or a related field, and at least two years of experience
`related to the design or development of wireless communication systems, or
`the equivalent.” Pet. 3 (citing Ex. 1003 ¶¶ 27–28). Petitioner also states that
`“[a]dditional graduate education could substitute for professional
`experience, or significant experience in the field could substitute for formal
`education.” Id. (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not propose
`a level of ordinary skill and does not dispute Petitioner’s proposal. See
`generally Prelim. Resp.
`Based on the preliminary record, we adopt Petitioner’s asserted level
`of ordinary skill only to determine whether there is a reasonable likelihood
`that Petitioner would prevail with respect to at least one of the claims
`challenged in the Petition.
`
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`Patent 9,019,946 B1
`C. Claim Construction
`In an inter partes review based on a petition filed on or after
`November 13, 2018, the claims are construed
`using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. [§] 282(b),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`37 C.F.R. § 42.100(b) (2021); see Phillips v. AWH Corp., 415 F.3d 1303,
`1312–13 (Fed. Cir. 2005) (en banc).
`Petitioner states that “no formal claim constructions are necessary in
`this proceeding.” Pet. 2. Patent Owner does not propose an interpretation
`for any term. See generally Prelim. Resp. As discussed below, Patent
`Owner responds that Petitioner fails to disclose or apply its construction
`positions from related litigation. Id. at 10–20.
`At this preliminary stage, we determine that no claim term requires
`express interpretation. 2 Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375
`(Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . .
`that are in controversy, and only to the extent necessary to resolve the
`controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999)).
`D. Asserted Obviousness Based on Yegoshin, Johnston, and Billström
`Petitioner contends with citations to the record that Yegoshin,
`Johnston, and Billström would have rendered obvious claims 14 and 15.
`Pet. 8–28. Petitioner also asserts a reason that one of ordinary skill in the art
`
`
`2 We also determined that no claim term in IPR2022-00766, IPR2022-
`01004, and IPR2022-01005 required express interpretation.
`
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`Patent 9,019,946 B1
`would have combined these references with citations to the record. Id. at
`11–13, 16–22.
`Patent Owner responds that Petitioner (1) fails to disclose or apply its
`proposed constructions from related litigation, (2) fails to show the proposed
`combination of Yegoshin, Johnston, and Billström disclose maintaining
`multiple Internet Protocol (“IP”) addresses, (3) fails to show that the same
`proposed combination includes simultaneous use of multiple communication
`paths, and (4) the proposed combinations with multiple references indicate
`Petitioner uses impermissible hindsight. Prelim. Resp. 10–29, 60–66.
`For the reasons that follow, Petitioner shows a reasonable likelihood
`of prevailing with respect to claims 14 and 15.
`1. Yegoshin (Ex. 1004)
`Yegoshin describes a “dual-mode communication device,” one
`embodiment of which includes a “microphone and speaker apparatus
`including converters for rendering audio data as audible speech, and for
`rendering audible speech as audio data.” Ex. 1004, 3:18–21. The device
`includes “a first communication interface comprising circuitry for receiving
`and sending the audio data on a cell-phone network” and “a second
`communication interface comprising circuitry for connecting to a local area
`network (LAN), and for receiving and sending the audio data on the LAN.”
`Id. at 3:22–27. “In some embodiments the dual-mode communication
`device is implemented in the form of a cell phone.” Id. at 27–29.
`Yegoshin’s device “allow[s] a user to switch modes from cellular to
`IP communication, and perhaps to switch from differing types of networks
`using known protocols.” Ex. 1004, 5:33–54. Yegoshin states that the device
`is “capable of taking some calls via cellular path while receiving other calls
`
`10
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`Patent 9,019,946 B1
`via IP path,” and that it is capable of “taking all cellular calls in IP format.”
`Id. at 5:55–65; 8:47–56.
`2. Johnston (Ex. 1005)
`Johnston describes “diversity antennas” that can “simultaneously
`receive or transmit two or three components of electromagnetic energy.”
`Ex. 1005, 1:5–7. In the embodiment cited by Petitioner––shown in
`Johnson’s Figure 29B––there are three “[a]ntennas 300” connected to
`transceiver 309 “through feed circuit 302, tuning and matching circuit 304
`and combiner 306 or 307 respectively.” Id. at 11:9–23. Johnston states that
`diversity antenna arrangements have a number of advantages, including
`improved radio communication in a “multipath fading environment,”
`improved signal reliability, and reduced power requirements. See id.
`at 1:11–29.
`3. Billström (Ex. 1006)
`Billström “relates to digital TDMA (Time Division Multiple Access)
`cellular radio mobile telecommunications systems” and “is directed towards
`apparatuses and mobile stations for providing packet data communications
`services in current TDMA cellular systems.” Ex. 1006, 1:7–12.
`Billström states that “[p]roviding the packet data services on a cellular
`system platform offers potential advantages in terms of widespread
`availability, possibility of combined voice/data services, and comparatively
`low additional investments by capitalizing on the cellular infrastructure.”
`Ex. 1006, 1:54–58. According to Billström, “[o]f particular interest are
`current TDMA cellular systems, through their spectrum efficiency and world
`wide penetration” and identifies “GSM (Global System for Mobile
`communication)” as an example of a TDMA platform. Id. at 1:58–62.
`
`11
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`Billström provides “general purpose packet data communication
`services in current digital TDMA cellular systems, based on providing
`spectrum efficient shared packet data channels optimized for packet data and
`compatible with cellular requirements” with GSM as a target system and “a
`mobile station for packet data communication over digital TDMA cellular
`shared packet data channels.” Ex. 1006, 3:53–59, 4:59–61. Billström also
`provides “new packet data services in a closely integrated way, utilizing the
`current TDMA cellular infrastructure” and “with minimum impact on the
`current TDMA cellular infrastructure.” Id. at 3:63–65, 4:5–8. “The basic
`packet data network service provided is a standard connectionless network
`(datagram) service based on a standard connectionless IP protocol,” and “IP
`is here used to denote the Internet Protocol.” Id. at 7:58–61.
`4. Independent Claim 14
`For “[a]n Internet-enabled mobile communication device,” Petitioner
`argues that, to the extent the preamble is limiting, Yegoshin teaches cellular
`telephone 9 that can communicate on an IP data network. Pet. 8 (citing
`Ex. 1003 ¶ 59; Ex. 1004, 1:9–14, 1:30–57, 4:63–5:3); see also id. at xi
`(labeling the preamble “14[pre]”).
`For “a memory,” Petitioner argues that Yegoshin teaches that its
`phone includes memory for storing client software suite 19 and that it was
`well known that phones used memory to store and process data for
`transmission. Pet. 9 (citing Ex. 1003 ¶ 60; Ex. 1004, 2:1–14); see also id. at
`xii (labeling the limitation “14[a]”). For “a display,” Petitioner argues that
`Yegoshin teaches that its phone includes a display to present information
`and that it was well known that phones had displays. Id. at 9 (citing
`Ex. 1003 ¶ 61; Ex. 1004, 2:1–15, Fig. 1; Ex. 1009, 10:42–65, 12:65–13:19);
`see also id. at xii (labeling the limitation “14[b]”).
`
`12
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`For “at least two or more antennas,” Petitioner argues that Yegoshin
`teaches that its phone includes antennas and that it would have been obvious
`to use different antenna for cellular and WLAN communications. Pet. 10
`(citing Ex. 1003 ¶¶ 62, 63; Ex. 1004, 1:52–2:15, 6:65–7:14, Fig. 1); see also
`id. at xii (labeling the limitation “14[c]”). Petitioner also argues that it was
`well known to provide such phones with multiple antennas for different
`frequencies and communications requirements. Id. (citing Ex. 1025, Abstr.;
`Ex. 1026, 10:10–21; Ex. 1027, 7:11–15).
`Petitioner further argues that it would have been obvious to modify
`Yegoshin to have multiple cellular antennas as taught by Johnston for the
`antenna diversity benefits described by Johnston. Pet. 10–12 (citing
`Ex. 1003 ¶¶ 64–67; Ex. 1004, 2:14–41; Ex. 1005, 1:10–30, 2:17–23, 11:9–
`23, 11:53–59, 12:40–46, Figs. 29A–29B; Ex. 1021, 3; Ex. 1022, 1–6;
`Ex. 1023, 1–2, 6–7). According to Petitioner, the proposed combination
`would have been within ordinary skill, yielded predictable results, and had a
`reasonable expectation of success. Id. at 12–13 (citing Ex. 1003 ¶¶ 68, 69).
`For “at least one or more processors,” Petitioner argues that one of
`ordinary skill in the art would have understood that Yegoshin’s phone had a
`processor to execute client software suite 19 and it would have been obvious
`that a processor performed communication processes and other telephone
`functionalities. Pet. 13 (citing Ex. 1003 ¶¶ 70, 71; Ex. 1004, 5:33–65;
`Ex. 1019, 13:20–14:8, 18:23–59, 21:54–22:19, 25:65–67, Figs. 2, 6); see
`also id. at xii (labeling the limitation “14[d]”). Petitioner also argues that
`Billström confirms that use of processors in cellular telephones. Id. at 13–14
`(citing Ex. 1003 ¶ 72; Ex. 1006, 24:29–60).
`For “a plurality of wireless transmit and receive units including a first
`wireless transmit and receive unit and a second wireless transmit and receive
`
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`unit,” Petitioner argues that Yegoshin teaches first and second
`communication interfaces for cellular and IP-LAN that correspond to the
`recited wireless transmit and receive units. Pet. 14 (citing Ex. 1003 ¶ 73;
`Ex. 1004, 3:17–7:25); see also id. at xii (labeling the limitation “14[e]”).
`For “wherein each wireless transmit receive unit is configured to
`communicate using one or more protocols,” Petitioner argues that cellular
`and WLAN networks would use different protocols. Id. (citing Ex. 1003
`¶ 74; Ex. 1004, 5:23–54, 6:5–14, 6:52–64, 7:48–58, 9:19–29).
`For “wherein the device is enabled for communication using Internet
`Protocol (IP),” Petitioner argues that Yegoshin teaches that its phone can use
`IP communication over an IP network. Pet. 14–15 (citing Ex. 1003 ¶ 75;
`Ex. 1004, 4:59–5:3); see also id. at xii (labeling the limitation “14[f]”). For
`“wherein the device is enabled for wireless communication on a wireless
`local area network,” Petitioner argues that Yegoshin teaches cell phone 9
`communicating in a “wireless mode on wireless IP-LAN 38.” Id. at 15
`(citing Ex. 1003 ¶ 76; Ex. 1004, 1:31–67, 2:21–4:14, 4:65–5:32, 6:62–7:14,
`8:28–34, Fig. 2); see also id. at xii (labeling the limitation “14[g]”).
`For “wherein the first wireless transmit and receive unit is enabled to
`communicate using one or more antennas simultaneously,” Petitioner argues
`that Yegoshin teaches the first wireless transmit and receive unit and
`Yegoshin as modified by the multiple antennas of Johnston would
`simultaneously receive electromagnetic energy. Pet. 15–16 (citing Ex. 1003
`¶¶ 77, 78; Ex. 1005, 1:5–7, 6:5–15, 11:9–23, 12:6–46, Fig. 29B; Ex. 1028,
`316–321); see also id. at xii (labeling the limitation “14[h]”). Petitioner,
`thus, argues that Yegoshin modified by Johnston would be enabled to
`communication using multiple antennas simultaneously. Id. at 16 (citing
`Ex. 1003 ¶ 79)
`
`14
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`For “wherein the mobile device maintains multiple IP addresses,
`wherein the first wireless unit is accessible on a first IP address and the
`second wireless transmit and receive unit is accessible on a second IP
`address,” Petitioner argues that Yegoshin teaches the use of a temporary IP
`address when communicating on an IP network. Pet. 16–18 (citing Ex. 1003
`¶¶ 80, 81; Ex. 1004, 58:33–37, 5:49–54, 7:7–14, 7:48–58, Fig. 2); see also
`id. at xii–xiii (labeling the limitation “14[i]”). Petitioner also argues that it
`would have been obvious that Yegoshin assigns another IP address when
`taking a cellular call in IP format. Id. at 18 (citing Ex. 1003 ¶ 82; Ex. 1004,
`8:47–56).
`Petitioner further argues that Billström confirms the well-known
`technique of communicating data using a cellular telephone. Pet. 18 (citing
`Ex. 1003 ¶ 82). According to Petitioner, one of ordinary skill in the art
`would have been motivated to combine Yegoshin and Billström to use IP
`and have packet data communications in a cellular system. Id. at 18–19
`(citing Ex. 1003 ¶ 83; Ex. 1004, 4:63–5:3, 5:23–28, 6:5–14; Ex. 1006,
`Abstr., 1:6–12, 1:54–60, 3:53–4:22). Petitioner contends that Billström
`teaches the use of an IP address for a cellular network, so that the
`combination of Yegoshin and Billström would have an IP address for
`Yegoshin’s first communication interface. Id. at 19 (citing Ex. 1003 ¶ 84;
`Ex. 1006, 5:60–6:2, 21:26–24:28, Figs. 2, 3, 14, 15; Ex. 1030; Ex. 1031;
`Ex. 1032; Ex. 1033). Petitioner also contends that it was known to maintain
`different IP addresses for routing packet over different channels. Id. (citing
`Ex. 1003 ¶ 85; Ex. 1016, 6:42–56, 9:6–10).
`In Petitioner’s view, one of ordinary skill in the art would have
`combined Yegoshin as modified by Johnston with Billström to use
`Billström’s well-known standard, provide an integrated system, expand
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`Patent 9,019,946 B1
`coverage, and provide packet data services. Pet. 19–21 (citing Ex. 1003
`¶¶ 86–89; Ex. 1004, 5:66–9:32; Ex. 1006, 3:53–4:20; Ex. 1024, 18).
`Petitioner further contends that proposed combination would have been a
`combination of known prior art elements combined according to known
`methods with predictable results and would not change the “hallmark
`aspects” of the references. Id. at 21 (citing Ex. 1003 ¶ 90; Ex. 1004, 8:47–
`56; Ex. 1006, Abstr., 3:53–4:22). Petitioner additionally contends that the
`proposed combination would have been within ordinary skill. Id. at 21–22
`(citing Ex. 1003 ¶ 91).
`For “wherein the mobile device operates using a plurality of ports,”
`Petitioner argues that Yegoshin teaches that its phone has an adapter port
`and a communication port and that Johnson teaches three input or output
`ports for its antennas. Pet. 22–23 (citing Ex. 1003 ¶ 92; Ex. 1004, 5:14–32,
`6:65–7:14, Fig. 1; Ex. 1005, 8:60–63). Petitioner, thus, argues that
`Yegoshin as modified by Johnston would have Johnston’s antenna ports. Id.
`at 23 (citing Ex. 1003 ¶ 93; Ex. 1018, 6:54–8:37).
`For “wherein data transferred by the plurality of transmit and receive
`units is improved by the simultaneous use of multiple network paths
`including at least one connection to a networked server,” Petitioner argues
`that Yegoshin teaches that its phone communicates with a public switched
`telephone network (“PSTN”)-connected routing server and IP telephony
`server, and that the proposed combination would have multiple IP data
`packets being communicated simultaneously over multiple IP-based cellular
`network paths as taught by Johnston. Pet. 23–25 (citing Ex. 1003 ¶¶ 94–96;
`Ex. 1004, 1:31–67, 2:21–4:34, 4:65–5:8, 5:23–32, 5:66–6:4, 6:38–7:37,
`8:28–34, Fig. 2; Ex. 1005, 1:10–30, 6:48–7:32, 8:33–43, 9:35–41, 10:15–31,
`11:9–23, 12:8–30; Ex. 1028, 313–323); see also id. at xiii (labeling the
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`IPR2022-01249
`Patent 9,019,946 B1
`limitation “14[j]”). Petitioner alternatively argues that Yegoshin teaches the
`simultaneous use of cellular and WLAN interfaces, and those connections
`are routed through servers. Id. at 25 (citing Ex. 1003 ¶ 97; Ex. 1004, 3:35-
`51, 5:55–57). Petitioner further argues that data transferred using both
`cellular and WLAN paths would be an improvement. Id. (citing Ex. 1003 ¶
`98; Ex. 1004, 1:17–2:41; Ex. 1013, 33; Ex. 1045, 6:35–7:16).
`For “wherein the device is enabled for communication of wireless
`signals representing voice data and for communication of wireless signals
`representing non-voice data,” Petitioner argues that Yegoshin teaches voice
`communication and the proposed combination would have Billström’s
`packet data services for providing non-voice data. Pet. 25–26 (citing
`Ex. 1003 ¶¶ 99, 100; Ex. 1004, 1:53–54, 2:1–15; Ex. 1006, 1:54–58); see
`also id. at xiii (labeling the limitation “14[k]”).
`Based on the preliminary record, Petitioner sufficiently shows that the
`proposed combination teaches all the limitations and that one of ordinary
`skill in the art would have combined the references in a manner asserted
`with a reasonable expectation of success.
`a) Preliminary Response
`(1) Failure to Disclose or Apply Claim Constructions from
`Related Litigation
`Patent Owner responds for all of the challenges that “in co-pending
`litigation in U.S. District Court, Petitioner currently asserts that five terms of
`the ’946 Patent require construction,” but “failed to proffer any
`constructions” in the Petition. Prelim. Resp. 2; see also id. at 10 (citing
`Pet. 2 n.1), 11–12 (providing Petitioner’s claim constructions from related
`litigation). Patent Owner argues that Petitioner does not mention its
`proposed claim constructions from related litigation and does not justify
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`Patent 9,019,946 B1
`proposing interpretations in litigation but not in this proceeding. Id. at 12.
`Patent Owner also argues that Petitioner’s inconsistency is more egregious
`because Petitioner contends that certain limitations are indefinite in litigation
`but taught by the references in this proceeding. Id. at 17–18 (citing Pet. 2,
`16, 32–46; Ex. 1003 ¶ 30; Ex. 2003, 10–13; Ex. 2004 ¶ 80)
`According to Patent Owner, “Petitioner wishes claim construction to
`be malleable, broad and undefined in this proceeding and, simultaneously,
`narrow in District Court.” Prelim. Resp. 2. Patent Owner argues with
`citations to Federal Circuit and Board cases that Petitioner’s “approach is
`inconsistent with the rules and rudimentary claim construction principles.”
`Id. at 12–13.
`Patent Owner also argues that Rule 42.104 forecloses Petitioner’s
`“gamesmanship,” and the Petition should be denied. Prelim. Resp. 2; see
`also id. at 19–20 (arguing that gaming Board and District Court proceedings
`should result in denial of institution). In Patent Owner’s view, the Preamble
`to Rule 42.100(b) explains that the rule “was promulgated specifically to
`foreclose the two-faced approach that Petitioner takes here.” Id. at 14.
`Patent Owner contends that, “in a comment and response section of the
`preamble,” harmonizing claim construction standards was to prevent parties
`from taking inconsistent claim construction positions. Id. at 14–15 (citing
`Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,342–51,343; 51,345; 51,347–51,348; 51,350 (Oct. 11, 2018)).
`Patent Owner further argues that “Petitioner’s abdication of claim
`construction also results in a failure of proof, because Petitioner makes no
`effort to show that the references asserted here teach the claims according to
`Petitioner’s District Court constructions.” Prelim. Resp. 18–19.
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`Patent 9,019,946 B1
`These arguments do not provide a reason for denying institution.
`There is nothing to prevent a petitioner from advancing one construction in
`the District Court as an infringement defendant and a different construction
`as a Petitioner before the Board. It is not uncommon for litigation
`defendants to seek a narrow construction in the district court in an effort to
`avoid infringement, but file a petition before the Board presenting a broader
`construction to prove unpatentability. Similarly, patent owners may seek a
`broader construction in court to prove infringement but present a narrower
`construction before the Board to avoid unpatentability.
`Rule 42.100(b) provides that the Board shall use the same claim
`construction standard as the courts, not that the Board shall use the same
`construction. And, in any event, there is no court construction before us. If
`the court were to construe these claim terms, we would, as rule 42.100(b)
`provides, consider that in making our determination. But even then, there
`would be no requirement that the constructions be the same.
`Patent Owner’s arguments concerning the rulemaking “preamble” fare
`no better. Prelim. Resp. 14–16. It does not, as Patent Owner argues,
`“preclude[] a petitioner from taking inconsistent claim constructions in AIA
`proceedings and district court.” Id. at 16. Instead, it speaks of “harmonizing
`the claim
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