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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`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 IPR2022-01249
`Patent 9,019,946 B1
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`

`

`
`
`
`
`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
` MODIFICATION OF YEGOSHIN BASED ON BILLSTRÖM’S IP
`ADDRESS FOR IP-BASED CELLULAR COMMUNICATION WOULD
`HAVE BEEN OBVIOUS (CLAIMS 14-16) ................................................... 1
`A. Modification of Yegoshin Based on Billström’s General Teachings of
`IP-Based Cellular Communication Would Have Been Within a
`POSITA’s Capabilities ............................................................................. 3
` YEGOSHIN-BASED COMBINATIONS RENDER OBVIOUS
`SIMULTANEOUS USE OF MULTIPLE NETWORK PATHS (CLAIMS
`14-21 AND 26) ................................................................................................ 5
`A. The Claims Require Simultaneous Use, Not Simultaneous Data Transfer
`
` ......................................................................................................... 5
`B. Patent Owner’s Distinction Between “Network” Versus
`“Communication” Path is Arbitrary and Unsupported ............................. 7
`C. When a Device Has Multiple, Independent Network Paths, it is Obvious
`to Use Them Simultaneously .................................................................... 9
` YEGOSHIN-JOHNSTON-BILLSTRÖM-BERNARD-PREISS RENDERS
`OBVIOUS TWO “NETWORK PATHS” TO THE SAME “REMOTE
`SERVER” “IN RESPONSE TO A CHANGE IN THE SIGNAL
`STRENGTH AND/OR CONNECTIVITY” (CLAIMS 27-30) .................... 10
`A. Yegoshin Discloses or Renders Obvious a “Remote Server” ................ 10
`B. Patent Owner’s Understanding of Petitioner’s Proposed Combination is
`Wrong ..................................................................................................... 12
`C. Yegoshin and Bernard Render Obvious “In Response To A Change In
`The Signal Strength And/Or Connectivity” ............................................ 13
`THE YEGOSHIN-BERNARD COMBINATION RENDERS OBVIOUS
`“COMBIN[ING] THE DATA PATHS INTO A SINGLE TRANSMISSION
`INTERFACE TO ONE OR MORE APPLICATIONS” (CLAIMS 6-10, 17-
`21, AND 26) .................................................................................................. 14
` YEGOSHIN-BASED COMBINATIONS RENDER OBVIOUS THE
`“MULTIPLEXED” LIMITATIONS (CLAIMS 1-13) .................................. 18
`A. The ’946 Patent Requires No More Than A Known Use of The Term
`“Multiplexed/Multiplexes” ..................................................................... 18
`1.
`The Petition Clarified The Term “Multiplex” ............................... 18
`
`
`
`i
`
`

`

`2.
`3.
`
`2.
`
`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`Parties’ District Court Constructions Are Met .............................. 19
`The Intrinsic Record Supports Petitioner’s Understanding of
`“Multiplex” .................................................................................... 20
`B. Yegoshin, Alone or As Modified, Renders The “Multiplex” Limitations
`Obvious ................................................................................................... 21
`1. Yegoshin Teaches Both Simultaneous and Selective Cellular and
`WLAN Connections ...................................................................... 21
`The Yegoshin-Bernard Combination Renders Obvious
`“Multiplexed Signals” ................................................................... 22
`Patent Owner’s Arguments Do Not Impact Petitioner’s Prior Art
`Analysis ......................................................................................... 25
`Sufficient Motivations Existed To Modify Yegoshin-Johnston-
`Billström Based on Bernard To Satisfy The “Multiplex”
`Limitations ..................................................................................... 27
` GROUND 1B RENDERS OBVIOUS CLAIMS 2, 5, AND 10 ................... 30
`A. Claims 2 and 5 ........................................................................................ 30
`B. Claim 10 .................................................................................................. 30
` CONCLUSION .............................................................................................. 31
`
`3.
`
`4.
`
`
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`
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`
`
`ii
`
`

`

`EX-1001
`
`EX-1002
`
`EX-1003
`EX-1004
`
`EX-1005
`
`EX-1006
`
`EX-1007
`EX-1008
`EX-1009
`
`EX-1010
`
`EX-1011
`
`EX-1012
`
`EX-1013
`
`EX-1014
`
`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`EXHIBIT LIST
`
`U.S. Patent No. 9,019,946 to Raman K Rao, et al. (“the ’946
`patent”)
`Excerpts from the Prosecution History of the ’946 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.
`(“Johnston”)
`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”)
`International Patent Publication No. WO 98/27748 (“WO748”)
`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.
`(“Preiss”)
`Larry L. Peterson and Bruce S. Davie, Computer Networks: A
`Systems Approach, Morgan Kaufmann Publishers, Inc., San
`Francisco, CA, 1996
`Andrew S. Tanenbaum, Computer Networks, Third Edition,
`Prentice Hall PTR, Upper Saddle River, NJ, 1996
`Merilee Ford, H. Kim Lew, Steve Spanier, and Tim Stevenson,
`Internetworking Technologies Handbook, New Riders
`Publishing, Indianapolis, IN, 1997
`William Stallings, Data and Computer Communications, 5th
`Edition, Prentice Hall, Upper Saddle River, NJ, 1996
`
`iii
`
`

`

`EX-1015
`
`EX-1016
`EX-1017
`EX-1018
`EX-1019
`EX-1020
`EX-1021
`
`EX-1022
`
`EX-1023
`
`EX-1024
`
`EX-1025
`EX-1026
`EX-1027
`
`EX-1028
`
`EX-1029
`EX-1030
`
`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`Dictionary Definition of “time division multiplex” (Newton’s
`Telecom Dictionary, 1998)
`U.S. Patent No. 6,115,615 to Takeshi Ota, et al.
`U.S. Patent No. 6,366,622 Stephen Joseph Brown
`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
`Communications Principles & Practice, Prentice Hall, 1996
`R. G. Vaughan, et al., Antenna diversity in mobile
`communications, in IEEE Transactions on Vehicular
`Technology, vol. 36, no. 4, pp. 149-172, Nov. 1987
`S. M. Alamouti, A simple transmit diversity technique for
`wireless communications, in IEEE Journal on Selected Areas
`in Communications, vol. 16, no. 8, pp. 1451-1458, Oct. 1998
`Excerpts from Douglas E. Comer, Internetworking with
`TCP/IP Volume One, Third Edition, 1995
`U.S. Patent No. 5,768,691 to Jorma Matero, et al.
`U.S. Patent No. 5,960,344 to Ronald L. Mahany
`European Patent Application 0 660 626 A2 to John Daniel
`Byrne
`Excerpts from William C. Jakes, Microwave Mobile
`Communications, IEEE Press, 1974
`[RESERVED]
`Yi-Bing Lin, Cellular digital packet data, in IEEE Potentials,
`vol. 16, no. 3, pp. 11-13, Aug.-Sept. 1997
`
`iv
`
`

`

`EX-1031
`
`EX-1032
`
`EX-1033
`
`EX-1034
`EX-1035
`EX-1036
`EX-1037
`EX-1038
`EX-1039
`
`EX-1040
`EX-1041
`
`EX-1042
`
`EX-1043
`
`EX-1044
`
`EX-1045
`
`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`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
`Internet 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.
`U.S. Patent No. 6,600,734 to Alex Gernert, et al.
`Jon D. Brady, Virtual Private Networking – The Flexible
`Approach, Institution of Electrical Engineers, 1997
`U.S. Patent No. 6,055,575 to Gaige B. Paulsen, et al.
`Complaint, Smart Mobile Technologies LLC v. Samsung
`Electronics 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.
`
`v
`
`

`

`EX-1046
`
`EX-1047
`
`EX-1048
`
`EX-1049
`
`EX-1050
`
`EX-1051
`EX-1052
`
`EX-1053
`
`EX-1054
`
`EX-1055
`
`EX-1056
`EX-1057
`EX-1058
`
`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`Amended Joint Agreed Scheduling Order, Smart Mobile
`Technologies LLC v. Samsung Electronics Co. Ltd. et al.,
`Case No. 6:21-cv-00701 (WDTX)
`Amended Joint Agreed Scheduling Order, Smart Mobile
`Technologies LLC v. Apple Inc., Case No. 6:21-cv-00603
`(WDTX)
`Excerpts from Constantine A. Balanis, Antenna Theory
`Analysis and Design, Harper & Row, 1982
`Declaration of Aamir A. Kazi in Support of Pro Hac Vice
`Admission
`Supplemental Declaration of Dr. Michael Allen Jensen in
`Petitioner’s Motion To Submit Supplemental Information [Not
`Yet Filed – Pending Resolution of Motion]
`Second Declaration of Dr. Michael Allen Jensen
`U.S. Patent No. 6,169,789 to Sanjay K. Rao, et al. (“’789
`patent”)
`Certified Copy of Deposition Transcript of Patent Owner’s
`Expert, Dr. Todor V. Cooklev, July 24, 2023
`Certified Copy of Deposition Transcript of Patent Owner’s
`Expert, Dr. Todor V. Cooklev, August 4, 2023, in Case
`IPR2022-01248 for U.S. Patent No. 8,842,653
`Institution Decision, Samsung Electronics Co., Ltd. et al v.
`Smart Mobile Technologies LLC PTAB-IPR2022-01248,
`Paper 13, January 24, 2023
`U.S. Patent No. 6,477,164 to Michael F. Vargo, et al.
`[RESERVED]
`RS-485, Wikipedia, available at
`https://en.wikipedia.org/wiki/RS-
`485#:~:text=RS%2D485%20supports%20inexpensive%20loca
`l,1%2C200%20m%20(4%2C000%20ft), retrieved on August
`31, 2023
`
`vi
`
`

`

`EX-1059
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`EX-1060
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`EX-1061
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`EX-1062
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`EX-1063
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`EX-1064
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`EX-1065
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`EX-1066
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`EX-1067
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`EX-1068
`EX-1069
`
`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`IEEE 802.11, Wikipedia, available at
`https://en.wikipedia.org/wiki/IEEE_802.11, retrieved on
`August 31, 2023
`General Packet Radio Service, Wikipedia, available at
`https://en.wikipedia.org/wiki/General_Packet_Radio_Service,
`retrieved on August 31, 2023
`Copy of Ex. 49 cited in EX-2003 (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, June
`8, 2022) – dictionary definition of “multiplex,” “multiplexing,”
`and “multiplexer,” The Authoritative Dictionary of IEEE
`Standards Terms, 7th Ed., 2000
`Copy of Ex. 50 cited in EX-2003 (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, June
`8, 2022) – Hargrave’s Communications Dictionary, IEEE
`Press, 2001
`Dictionary definition of “while” (Encarta World English
`Dictionary, St. Martin’s Press, 1999)
`Dictionary definition of “while” (Collins English Dictionary,
`HarperCollins Publishers, 1998)
`Dictionary definition of “while” (Longman Dictionary of
`American English, 1997)
`Excerpts from the Prosecution History of U.S. Patent
`Application No. 08/764,903, filed by Sanjay K. Rao, et al. on
`December 16, 1996
`U.S. Patent Application Publication No. 2016/0037505 to
`Todor V. Cooklev
`U.S. Patent No. 6,359,998 to Todor Cooklev
`U.S. Patent No. 6,490,295 to Todor Cooklev, et al.
`
`vii
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`

`

`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`
`EX-1070
`EX-1071
`
`[RESERVED]
`Petitioner’s Schematic Diagram Illustrating “Multiplexing” as
`noted in EX-1053 at page 5 as “Exhibit 6000”
`
`
`
`
`
`viii
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`

`

`
`
`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`
`INTRODUCTION
`Patent Owner’s arguments should be rejected.
`
` MODIFICATION OF YEGOSHIN BASED ON BILLSTRÖM’S IP
`ADDRESS FOR IP-BASED CELLULAR COMMUNICATION
`WOULD HAVE BEEN OBVIOUS (CLAIMS 14-16)
`Patent Owner asserts that Petitioner’s combination of Yegoshin and
`
`Billström fails to address how “Yegoshin’s phone decides and enforces which IP
`
`address to use to route each data packet.” POR, 39. In this argument, Patent
`
`Owner reads requirements into the claims (14[i]), and asks Petitioner to prove
`
`more than what the claims require. Notably, claim 14 does not state selecting
`
`between a first IP address or a second IP address, but, instead, recites that “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.” EX-1001, 13:35-38; POR, 39 (citing EX-
`
`2019, [114]); EX-1051, [2]. To the extent any selection is required (it is not), the
`
`selection would be simple and straightforward—use the first IP address when
`
`communicating over the cellular network and use the second IP address when
`
`communicating over the WLAN. EX-1051, [3] (citing EX-1016).
`
`As discussed in the Petition, a POSITA would have found it obvious to
`
`implement Yegoshin’s phone, which already describes IP-based cellular
`
`communication, to maintain and use an IP address dedicated for cellular
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`1
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`

`

`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`communication as described by Billström, so that the phone maintains two IP
`
`addresses, one accessible for WLAN communication (as taught by Yegoshin) and
`
`the other accessible for IP-based cellular communication (as taught by Billström).
`
`Pet., 17-18; EX-1004, 8:47-56, 5:33-54, 7:7-14, 7:44-58, Figures 2-3; EX-1006,
`
`1:6-12, 1:54-60, 3:53-4:22, 4:63-5:28, 5:60-6:14, 21:26-24:28, Figures 2-3, 14-15;
`
`EX-1051, [4]-[5]. Indeed, Yegoshin describes how cellular networks were known
`
`to use IP (EX-1004, 2:30-36, 5:6-9, 9:19-29) and known to include a mobile-
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`switching-center (MSC) (EX-1004, 6:27-35), and Billström describes assigning a
`
`“MS’s IP address [to identify] the MS as belonging to a particular MSC” using
`
`“the de facto standard IP protocol” (EX-1006, 5:60-6:2, 7:40-8:3). EX-1051, [5].
`
`Again, as evidenced in Billström, a POSITA would have understood that, in
`
`addition to an IP address for WLAN communication as disclosed in Yegoshin, a
`
`separate IP address would be a useful and well-known option for implementing IP-
`
`based cellular communication. EX-1051, [6]; EX-1006, 5:63-6:2 (“an MS’s IP
`
`address identifies the MS”), 10:64-66. By considering Billström’s disclosure of an
`
`IP address used in cellular communication, a POSITA would have found it
`
`predictable to use an IP address for IP-based cellular communication in Yegoshin.
`
`Id.
`
`Patent Owner contends that Yegoshin assigns an IP address based on a
`
`phone number and Yegoshin-Billström’s two IP addresses would not work. POR,
`
`2
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`

`

`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`40-41 (citing EX-2019, [115], [117]-[118]); POPR, 48-49. However, Yegoshin’s
`
`description of the phone number does not disrupt the combination. EX-1051, [7].
`
`As acknowledged by Patent Owner (POPR, 49), Yegoshin’s association between
`
`the IP address and phone number is an example way to forward a regular cellular
`
`call (using a telephone number) to the WLAN when the phone is “not within the
`
`range of the local service area.” EX-1004, 8:16-27, 4:10-14. This forwarding
`
`mechanism does not disrupt the combination because the combination is not
`
`limited to call forwarding. As correctly found by the Board, Billström’s use of an
`
`IP address would not be redundant because it is for IP-based cellular data
`
`communication, which is independent from IP-based WLAN communication using
`
`another IP address. EX-1051, [7]; Institution Decision (ID), 22; EX-1006, 9:41;
`
`EX-1053, 18-25; EX-1054, 50:8-13, 58:4-9.
`
`A. Modification of Yegoshin Based on Billström’s General Teachings
`of IP-Based Cellular Communication Would Have Been Within a
`POSITA’s Capabilities
`Based on Dr. Cooklev’s unsubstantiated testimony, Patent Owner alleges
`
`that the modification would have been beyond a POSITA’s skill. POR, 42-48
`
`(citing EX-2019, [123]-[126]). Notably, Patent Owner requires Petitioner’s
`
`demonstration of how to modify Yegoshin’s system to incorporate Billström’s
`
`entire infrastructure for providing packet data communication services over
`
`cellular systems. Id. This represents an overly narrow view of the combination
`
`3
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`

`

`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`because, as discussed above, Petitioner’s combination simply modifies Yegoshin’s
`
`phone to use Billström’s IP address for IP-based cellular communication. EX-
`
`1051, [8]. Patent Owner’s argument that Billström’s teachings would not be
`
`physically combinable with Yegoshin improperly requires bodily incorporation
`
`from Billström into Yegoshin, which is not the law. In re Keller, 642 F.2d 413,
`
`425; In re Sneed, 710 F.2d 1544, 1550; In re Nievelt, 482 F.2d 965, 968.
`
`Further, implementing IP-based cellular communication using an IP address
`
`(Billström’s or generally) was well-known and within the skill of a POSITA. EX-
`
`1051, [9]-[10]; POR, 42-48. In fact, Dr. Cooklev acknowledged that “the concept
`
`that a mobile device could access the Internet ... was known.” EX-1053, 28:14-16,
`
`29:10-12. Even Yegoshin acknowledges that “such [IP] networks may also
`
`operate in various wireless technology modes such as a code-division-multiple-
`
`access CDMA or a time-division-multiple-access (TDMA) convention,” which is a
`
`“well-known cellular system.” EX-1004, 2:30-36. And, Billström references
`
`“standard” IP technology. EX-1006, 5:60-6:2.
`
`Further, the ’946 patent has limited disclosure of implementing IP,
`
`indicating that a POSITA would have had the skill needed to implement IP-based
`
`technologies. Indeed, the ’946 patent is silent as to how to use IP addresses and
`
`only provides superficial discussion of Internet technology. EX-1001, 2:28-31,
`
`4:44-48, 6:14-41, 10:48-11:8. Therefore, the ’946 patent relies on the state of the
`
`4
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`

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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`art for its disclosure and does not teach anything new about implementing IP,
`
`which confirms that a POSITA would have had sufficient knowledge/skill to
`
`implement IP-based cellular communication, such as Billström’s known IP
`
`communication. EX-1051, [11]; EX-1053, 98:17-101:3; KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 418 (2007); Randall Mfg. v. Rea, 733 F.3d 1355, 1363 (Fed.
`
`Cir. 2013).
`
` YEGOSHIN-BASED COMBINATIONS RENDER OBVIOUS
`SIMULTANEOUS USE OF MULTIPLE NETWORK PATHS
`(CLAIMS 14-21 AND 26)
`Patent Owner’s interpretation of “simultaneous use of multiple network
`
`paths” is overly narrow and its views of obviousness are unduly restrictive.
`
`A. The Claims Require Simultaneous Use, Not Simultaneous Data
`Transfer
`Patent Owner’s argument is erroneously premised on a requirement that data
`
`be simultaneously transferred by two “transmit and receive units.” POR, 48-55.
`
`This language is not in the Challenged Claims. In fact, limitations 14[j]/17[j]
`
`merely recite “data transferred by the plurality of transmit and receive units,”
`
`which does not require that data be transmitted simultaneously, as acknowledged
`
`by Dr. Cooklev. EX-1051, [12]-[13]; EX-1053, 105:1-13. Further, limitations
`
`14[j]/17[j] do not require that the device simultaneously connects to different
`
`networks (e.g., cellular and WLAN), but merely requires “the simultaneous use of
`
`multiple network paths.” EX-1051, [13]. Limitations 14[j]/17[j] confirm this by
`
`5
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`

`

`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`reciting “at least one connection to a network server,” which is clearly not limited
`
`to multiple established connections to multiple networks. Id.
`
`Even assuming Patent Owner is correct that Yegoshin’s disclosure does not
`
`render obvious simultaneous transmission of data through its cellular and WLAN
`
`interfaces (it is not), Yegoshin still simultaneously uses both of its interfaces to
`
`improve its data transfer process. EX-1051, [14]. Although we disagree that
`
`Yegoshin’s use of the term “while” would not render obvious a temporal
`
`understanding to a POSITA, we understand and appreciate the Board’s assessment
`
`that the example described in Yegoshin’s column 5 does not establish cellular and
`
`WLAN calls at the same. EX-1051, [14] (citing EX-1063, EX-1064, and EX-1065
`
`for definitions of “while”). But, as mentioned above, the claims do not require
`
`simultaneous calls. And, even in Yegoshin’s column 5 example, the cellular and
`
`WLAN paths are used simultaneously. EX-1004, 5:55-65. Specifically,
`
`“integrating software is provided to coordinate activity between the two paths.”
`
`Id. As an example, Yegoshin describes that, “if engaged with an IP call” (WLAN
`
`path in use), “an incoming cell call” (cellular path in use) “would get a busy signal
`
`… or it would be redirected to the IP call point.” Id. Because a cellular call is
`
`processed (e.g., redirected to the IP call point) while engaged with a WLAN call,
`
`both cellular and WLAN networks are in use simultaneously, even if the phone
`
`does not establish cellular and WLAN calls simultaneously. EX-1051, [15].
`
`6
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`

`

`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`Further, Yegoshin’s description is not limited to the column 5 example. For
`
`instance, Yegoshin describes that “cell phone 9 may communicate via cellular
`
`network in normal fashion,” and “[i]n addition to normal cellular communication,
`
`cell phone 9 may communicate in wireless mode on wireless IP LAN 38.” EX-
`
`1004, 6:65-7:3. Yegoshin also describes that “certain cellular calls will be exempt
`
`from IP delivery” and “will be routed to local cell network 23” and “received by
`
`the user of telephone 9 in normal cell-phone mode.” EX-1004, 8:47-56. Here, a
`
`cellular call would not be redirected to the IP call point as in the column 5
`
`example, but, instead, would be delivered to the cellular interface despite another
`
`IP WLAN call, indicating simultaneous use of both networks. EX-1051, [16].
`
`B.
`
`Patent Owner’s Distinction Between “Network” Versus
`“Communication” Path is Arbitrary and Unsupported
`As the Board correctly found, simultaneous network paths is met at least
`
`based on Johnston’s teaching of antenna diversity. ID, 23-24; EX-1051, [17]. As
`
`discussed in the Petition, the Yegoshin-Johnston combination would implement
`
`Yegoshin’s “first communication interface” for cellular to be “enabled to
`
`communicate using one or more antennas simultaneously” (14[h]), as taught by
`
`Johnston’s multiple antennas that “simultaneously receive or transmit two or three
`
`components of electromagnetic energy.” Petition, 15-16; EX-1005, 1:5-7.
`
`Therefore, the data transferred by the modified “first communication interface” of
`
`Yegoshin “is improved by the simultaneous use of multiple network paths,” as
`
`7
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`taught by Johnston’s antenna structure which results in multiple paths. EX-1051,
`
`[17]; Pet., 23-25.1
`
`Patent Owner recognizes that Johnston teaches multiple, simultaneous paths,
`
`but contends that these paths are communication paths, not network paths. Patent
`
`Owner is incorrect. Claim 14 recites “the simultaneous use of multiple network
`
`paths.” The only other instance of “simultaneous use” in claim 14 is “using one or
`
`more antennas simultaneously.” EX-1001, 13:32-34, 41-44. Thus, a POSITA
`
`would have understood that “the simultaneous use of multiple network paths”
`
`refers to communication “using one or more antennas simultaneously.” EX-1051,
`
`[18]. Otherwise, “the simultaneous” would lack antecedent basis. Id.
`
`To rebut the Petition’s analysis, Patent Owner introduces an arbitrary
`
`distinction between “network paths” and “communication paths,” and argues that
`
`“network paths” would indicate different types of networks. POR, 51-52 (citing
`
`EX-2019, [132]-[133]). This distinction finds no support, other than in Dr.
`
`Cooklev’s conclusory testimony. Id. In the ’946 patent, the term “network path”
`
`is only found in the claims. With this limited description, a POSITA would have
`
`
`1 Patent Owner asserts that “Petitioner cited only to Yegoshin for ‘simultaneous’
`
`use of multiple network paths.” POR, 51. This is wrong given extensive
`
`discussion of the Yegoshin-Johnston combination. Pet., 24-25.
`
`8
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`

`

`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`viewed the term “network path” as generically covering any “path” of a signal in a
`
`network, including multiple paths in the same network. EX-1051, [19]-[20]. Dr.
`
`Cooklev’s own explanation aligns with this understanding. EX-2019, [131].
`
`C. When a Device Has Multiple, Independent Network Paths, it is
`Obvious to Use Them Simultaneously
`The Petition offered an alternative rationale to preempt the POR’s argument.
`
`Pet., 25; POR, 52-55. Particularly, the Petition explained why it would have been
`
`obvious to transmit data simultaneously using Yegoshin’s cellular and WLAN
`
`interfaces. Pet., 25. Yegoshin’s cellular and WLAN interfaces are separate,
`
`independent modes of communication and a POSITA would have found it obvious
`
`to use them simultaneously. EX-1051, [21]. In fact, a POSITA would have
`
`considered only two options for the simultaneity of Yegoshin’s cellular and
`
`WLAN interfaces—simultaneous or non-simultaneous—and viewed the
`
`simultaneous option as an obvious option to consider, particularly in the
`
`combination with Billström where two IP addresses are maintained. Id. Dr.
`
`Cooklev even admitted that using two different networks simultaneously was well-
`
`known in various scenarios. EX-1053, 64:2-15; EX-1007, 26:60-65; EX-1045,
`
`6:35-7:16.
`
`As an example, the Petition referred to three-way calling and explained how
`
`a POSITA would have found it obvious to employ three-way calling in Yegoshin.
`
`Pet., 25. Patent Owner’s only argument against the obviousness of three-way
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`9
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`

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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`calling is to attack the reference cited for corroboration, Gillig. Patent Owner
`
`contends that the term “data” should be limited to “digital” data and Gillig is
`
`analog. POR, 53-55. But this misses the point of the obviousness argument
`
`advanced in the Petition, which contemplated adding three-way calling, not
`
`Gillig’s analog calling. Even if “data” is limited to digital, the Yegoshin-Billström
`
`combination teaches digital data communication over both of the WLAN and
`
`cellular networks and a POSITA would have employed three-way calling using
`
`these digital technologies, rather than turning back to Gillig’s older, analog
`
`functionality. EX-1051, [22]. As acknowledged by Dr. Cooklev, it was well-
`
`known for calls to be simultaneously connected over two different networks. EX-
`
`1053, 64:2-15; Pet., 25; EX-1045, 6:35-7:16 (“three-way linking”). And, as Dr.
`
`Jensen explains, the term data should not exclude analog data. EX-1051, [23]-[26]
`
`(citing EX-1001, EX-1052, EX-1066, EX-1067, EX-1068, EX-1069). As
`
`explained in the Petition, a POSITA would have found it obvious to implement
`
`known “three-way linking” in Yegoshin-Billström to connect IP-based cellular and
`
`WLAN calls simultaneously for known benefits (e.g., cost-effective manner to
`
`communicate with multiple people). EX-1051, [27].
`
` YEGOSHIN-JOHNSTON-BILLSTRÖM-BERNARD-PREISS
`RENDERS OBVIOUS TWO “NETWORK PATHS” TO THE SAME
`“REMOTE SERVER” “IN RESPONSE TO A CHANGE IN THE
`SIGNAL STRENGTH AND/OR CONNECTIVITY” (CLAIMS 27-30)
`A. Yegoshin Discloses or Renders Obvious a “Remote Server”
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`10
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`

`

`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`Patent Owner mischaracterizes Petitioner’s mapping for “remote server”
`
`(27[h]) by asserting that the Petition only considered “PSTN switch 31” as the
`
`“remote server.” POR, 55-59. Patent Owner ignores the entirety of Petitioner’s
`
`analysis, which references analysis of the same term in other claims (17[i] and
`
`14[j]). Pet., 56-57, 23. The Petition explained that “Yegoshin’s phone is in
`
`communication with several remote systems” (citing 14[j]), identifying “networked
`
`servers,” such as “PSTN-connected routing server” and “IP telephony server.”
`
`Pet., 56, 23 (citing EX-1004, 3:35-4:34, 5:66-6:4, 6:38-64, 7:15-37, Figure 2). As
`
`generally illustrated in annotated Figure 2 and recognized by Patent Owner (POR,
`
`57), “PSTN switch 31” is included in or associated with the “PSTN-connected
`
`routing server” along with “T-server software.” EX-1004, 3:35-4:34, 7:26-37, 9:1-
`
`12; EX-1051, [28].
`
`
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`11
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`

`

`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`
`Pet., 23.
`
`Patent Owner’s interpretation is inconsistent with the schematic illustration
`
`of Yegoshin’s Figure 2. Figure 2 is “an overview of network connection” and does
`
`not disclose all elements constituting “PSTN network 25.” EX-1051, [29]. As
`
`acknowledged by Patent Owner, Yegoshin’s “PSTN network 25” includes more
`
`than “PSTN switch 31.” EX-1004, 7:26-8:34. A POSITA would have understood
`
`that PSTN switch 31 does not operate alone, but works with other components to
`
`enable switching in PSTN network 25 and thus constitutes at least a part of a server
`
`system. EX-1051, [29].
`
`B.
`
`Patent Owner’s Understanding of Petitioner’s Proposed
`Combination is Wrong
`Patent Owner assumes that the Petition only relied on Johnston for teaching
`
`a “first set of antennas” and a “second set of antennas” that are coupled to the first
`
`and second wireless communication units, respectively. POR, 59-60. Based on
`
`this assumption, Patent Owner argues that Johnston is deficient because its
`
`“antennas feed into a single transceiver.” POR, 60-61 (emphasis original).
`
`However, Patent Owner’s assumption is clearly wrong because the Petition relied
`
`on Preiss (EX-1010) for the “second set of antennas” while relying on Johnston for
`
`the “first set of antennas.” Pet., 75-78. Patent Owner completely omits the
`
`Petition’s discussion of Preiss and, thus, its arguments against Johnston alone fail.
`
`EX-1053, 119:11-18; EX-1054, 9:13-20; EX-1051, [30].
`
`12
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`

`

`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`C. Yegoshin and Bernard Render Obvious “In Response To A Change
`In The Signal Strength And/Or Connectivity”
`Yegoshin describes several examples where the phone selectively uses one
`
`of WLAN and cellular networks. Pet., 81. Yegoshin illustrates an example where
`
`a person visits an “IP LAN-connected site” and has “incoming calls forwarded to”
`
`the person’s cellular phone on the IP LAN. EX-1004, 2:53-3:16. In this example,
`
`as the person moves into the “IP LAN-connected site,” Yegoshin’s phone switches
`
`use of its cellular interface to its WLAN interface in response to a new or improved
`
`WLAN signal (“in response to a change in the signal strength” of WLAN) or a
`
`new connection to WLAN (“connectivity”). EX-1051, [31]. Further, to “select a
`
`type of network for communication,” Yegoshin’s phone “negotiate[s] the best
`
`possible connection” among “a series of preferences by the user.” EX-1004, 5:33-
`
`51. As Dr. Jensen explains, a POSITA would have found it obvious to consider
`
`the change in the signal strength to identify the “best possible connection.” EX-
`
`1004, 5:33-51; EX-1051, [31]; EX-1027, 3:43-51. Yegoshin’s phone also selects
`
`one of multiple networks “by availability” (“connectivity”). EX-1004, 5:53-54;
`
`EX-1051, [31].
`
`Patent Owner incorrectly characterizes Yegoshin’s disclosure of user
`
`selection as “a static conf