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`Filed: October 13, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2022-01249
`Patent 9,019,946
`____________
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`I.
`
`II.
`
`III.
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1
`
`PETITIONER FAILS TO SHOW MULTIPLE IP ADDRESSES ................ 1
`
`PETITIONER FAILS TO SHOW SIMULTANEOUS USE OF
`MULTIPLE NETWORK PATHS ................................................................. 2
`
`A. Yegoshin’s Phone Does Not Simultaneously Use Cellular and
`WLAN Network Paths. ......................................................................... 2
`
`B.
`
`C.
`
`Johnston May Not Be Relied On and Does Not Disclose Use of
`Multiple Network Paths. ....................................................................... 3
`
`Petitioner Did Not Make an Obviousness Argument in the
`Petition, and Fails to Substantiate One Now. ........................................ 5
`
`IV.
`
`PETITIONER FAILS TO SHOW “TWO NETWORK PATHS”
`CONNECTED TO A “SERVER” AND USE OF THE SECOND
`NETWORK PATH “IN RESPONSE TO A CHANGE IN THE
`SIGNAL STRENGTH AND/OR CONNECTIVITY” .................................. 7
`
`A. Yegoshin Does Not Disclose a Remote Server. .................................... 7
`
`B. Yegoshin’s Phone Does Not Operate/Communicate with a
`Remote Server Over Multiple Network Paths. ..................................... 9
`
`C. Neither Yegoshin Nor Bernard Teaches Communicating to the
`Remote Server on the Second Network Path In Response To A
`Change In The Signal Strength And/Or Connectivity of the First
`or Second Communication Unit. ......................................................... 10
`
`V.
`
`PETITIONER FAILS TO PROVE ITS COMBINATION DISCLOSES
`“COMBIN[ING] DATA PATHS INTO A SINGLE TRANSMISSION
`INTERFACE TO ONE OR MORE APPLICATIONS” ..............................11
`
`A. Petitioner’s New “Virtual Path” Theory is Meritless. ......................... 11
`
`B. Bernard Does Not Disclose the Recited Data Paths. .......................... 14
`
`- i -
`
`
`
`
`
`VI.
`
`PETITIONER FAILS TO SHOW “MULTIPLEXED SIGNALS” .............15
`
`A. Petitioner’s Interpretation Of “Multiplexed” Is Contrary To Plain
`Meaning, Common Sense And Petitioner’s District Court
`Positions. ............................................................................................. 15
`
`B. Yegoshin Does Not Disclose or Suggest Multiplexing. ..................... 19
`
`C. Bernard Does Not Teach Multiplexed Signals. .................................. 20
`
`D. Petitioner Fails to Show Motivation to Modify Yegoshin-
`Johnston- Billström to Add Bernard’s Serial Interface. ...................... 24
`
`1.
`
`2.
`
`Petitioner’s “First Scenario.” .................................................... 24
`
`Petitioner’s “Second Scenario.” ................................................ 25
`
`VII. DEPENDENT CLAIMS ..............................................................................27
`
`A. Claim 2. ............................................................................................... 27
`
`B. Claim 10. ............................................................................................. 27
`
`VIII. THE BOARD SHOULD DISREGARD PETITIONER’S
`IMPROPERLY INCORPORATED EXPERT TESTIMONY ....................29
`
`- ii -
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Alcon Inc. v. AMO Dev., LLC,
`IPR2021-00853, Paper 48 (PTAB Dec. 2, 2022) ................................................. 7
`
`Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC,
`825 F.3d 1373 (Fed. Cir. 2016) ..........................................................................25
`
`Arendi S.A.R.L. v. Apple, Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ..........................................................................19
`
`Chicago Bd. Options Exch., Inc. v. Int'l Securities Exch., LLC,
`677 F.3d 1361 (Fed. Cir. 2012) ............................................................................ 5
`
`Ex Parte Foster,
`Appeal No. 2019-002355, 2020 WL 2731806 (PTAB May 20, 2020) ..............26
`
`Henny Penny Corporation v. Frymaster LLC,
`938 F.3d 1324 (Fed. Cir. 2019) ..........................................................................25
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .................................................................. passim
`
`Lucent Technologies, Inc. v. Gateway, Inc.,
`525 F.3d 1200 (Fed. Cir. 2008) ............................................................................ 5
`
`Qualcomm Incorporated v. Apple Inc.,
`24 F.4th 1367 (Fed. Cir. 2022) .......................................................................6, 24
`
`TQ Delta, LLC v. CISCO Systems, Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ....................................................... 11, 16, 20, 26
`
`Twitter, Inc. v. VidStream LLC,
`825 Fed.Appx. 844 (Fed. Cir. 2020) ...................................................................24
`
`
`
`
`
`- iii -
`
`
`
`
`
`2001.
`
`2002.
`
`2003.
`
`2004.
`
`2005.
`
`2006.
`
`2007.
`
`2008.
`
`EXHIBIT LIST
`
`Reserved
`
`Declaration of Professor Todor V. Cooklev, Ph.D. [1st-Cooklev-
`Decl.]
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Defendants’ Opening Claim
`Construction Brief (June 8, 2022) [Defendants’-Opening-Claim-
`Construction-Brief]
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Defendants’ Opening Claim
`Construction Brief – Exhibit 1 (June 8, 2022) [Defendants’ Opening
`Claim Construction Brief – Exhibit 1]
`
`Kevin M. Stack, Preambles as Guidance, 84 GEO. WASH. L. REV.
`1252 (2016) (http://www.gwlr.org/wp-content/uploads/2016/09/84-
`Geo.-Wash.-L.-Rev.-1252.pdf) [Stack]
`
`ElectronicsTutorials, The Multiplexer, WWW.ELECTRONICS-
`TUTORIALS.WS, https://www.electronics-
`tutorials.ws/combination/comb_2.html (last visited Oct. 26, 2022)
`[Electronics-Tutorial]
`
`TexasInstruments, 74HC153 Data Sheet, Dec. 1982, revised Feb.
`2022, WWW.TI.COM, https://www.ti.com/lit/gpn/sn74hc153
`[74HC153-Data-Sheet]
`
`Lee Stanton, What is the Difference Between a Landline and a
`Mobile Phone Number?, WWW.ALPHR.COM, Feb. 22, 2022,
`https://www.alphr.com/difference-landline-mobile-phone-number/
`[Alphr]
`
`- iv -
`
`
`
`
`
`2009.
`
`2010.
`
`2011.
`
`2012.
`
`2013.
`
`FOCUS LCDs, Serial Vs. Parallel, LCD RESOURCES,
`https://focuslcds.com/serial-vs-parallel/ (last visited Oct. 19, 2022)
`[LCD-Resources]
`
`Techopedia, Serial Interface, WWW.TECHOPEDIA.COM, Nov. 4, 2014,
`https://www.techopedia.com/definition/9312/serial-interface
`[Techopedia]
`
`Excerpts from The Authoritative Dictionary of IEEE Standards
`Terms, Seventh Edition (2000) [Dictionary of IEEE Standards
`Terms]
`
`Jonathan Valvano et al., Chapter 11: Serial Interfacing, EMBEDDED
`SYSTEMS – SHAPE THE WORLD,
`https://users.ece.utexas.edu/~valvano/Volume1/E-
`Book/C11_SerialInterface.htm (last visited Oct. 20, 2022) [Valvano]
`
`Steve Goldband, Input and output for microprocessors, Behavior
`Research Methods & Instrumentation, 1978, Vol. 10, No. 2, pp.
`249-253 [Goldband]
`
`2014.
`
`Ex parte Orbotech LT Solar, LLC, 2012 Pat. App. LEXIS 2784
`(BPAI May 31, 2012)
`
`2015.
`
`Ex parte Evans, 2017 Pat. App. LEXIS 386 (PTAB Aug. 1, 2017)
`
`2016.
`
`2017.
`
`Declaration of Philip J. Graves in support of Motion for Pro Hac
`Vice Admission
`
`Declaration of Greer N. Shaw in support of Motion for Pro Hac
`Vice Admission
`
`2018.
`
`Declaration of Colette Woo [served, not filed]
`
`2019.
`
`Second Declaration of Professor Todor V. Cooklev, Ph.D. [2nd-
`Cooklev-Decl.]
`
`2020.
`
`Deposition Transcript of Michael Jensen, Ph.D. [Jensen-Depo.]
`
`- v -
`
`
`
`
`
`2021.
`
`2022.
`
`2023.
`
`2024.
`
`2025.
`
`2026.
`
`IPR2022-01223, Paper 13 (PTAB Jan. 30, 2023) (Decision Denying
`Institution) [1223-DDI]
`
`IPR2022-01248, Paper 13 (PTAB Jan. 24, 2023) (Institution
`Decision) [1248-ID]
`
`Additional Excerpts from The Authoritative Dictionary of IEEE
`Standards Terms, Seventh Edition (2000) [IEEE-Dictionary]
`
`Benj Edwards, The Golden Age of PDAs, PC Magazine, Nov. 20,
`2018, https://www.pcmag.com/news/the-golden-age-of-pdas [PC-
`Magazine]
`
`Jeremy Reimer, Remembering Apple’s Newton, 30 Years On, Ars
`Technica, June 1, 2022,
`https://arstechnica.com/gadgets/2022/06/remembering-apples-
`newton-30-years-on/ [Ars-Technica]
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Declaration of Dr. Harry Bims In
`Support of Defendants’ Opening Claim Construction Brief (June 8,
`2022) [Bims-Decl.]
`
`2027.
`
`Excerpts from Newton’s Telecom Dictionary, 16th Edition (2000)
`[Newton’s-Telecom-Dictionary]
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Plaintiff’s Responsive Claim
`Construction Brief Regarding The ’434 Patent Family (Aug. 17,
`2022) [Plaintiff’s-Responsive-Claim-Construction-Brief]
`
`Deposition Transcript of Michael Jensen, Ph.D. [Jensen-Depo.],
`IPR2022-01248
`
`Deposition Transcript of Michael Jensen, Ph.D. [Jensen-Depo.],
`IPR2022-00766
`
`2028.
`
`2029.
`
`2030.
`
`- vi -
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`
`
`
`
`2031. Microsoft Computer Dictionary [Microsoft Computer Dictionary]
`(3rd ed. 1997)
`
`2032.
`
`2033.
`
`2034.
`
`2035.
`
`Newton’s Telecom Dictionary [Newton’s Telecom Dictionary] (12th
`ed. 1997)
`
`Todor Cooklev, et al., Modern Communication Systems, Ch. 2-7.
`
`U.S. Patent No. 8,842,653 [’653 Patent]
`
`Deposition Transcript of Michael Jensen, Ph.D., IPR2022-01248
`
`2036.
`
`Michael Jensen Deposition Exhibit 2031 – W. A. Aziz, S. H.
`Elramly, and M. M. Ibrahim, “VoIP Quality in IP-Multimedia
`Subsystem (IMS),” Second International Conference on
`Computational Intelligence, Modelling and Simulation, pp. 546-552,
`2010. Accessed: Sept. 29, 2023. doi: 10.1109/CIMsiM.2010.102
`[Online]
`2037. Michael Jensen Deposition Exhibit 2032 – VoIP-Info.org, IMS,
`dated Apr. 4, 2005.
`
`- vii -
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`
`
`
`
`I.
`
`INTRODUCTION
`
`After filing the Petition, Petitioner filed 21 new exhibits, 56 pages of reply
`
`expert testimony, and 41 pages of “supplemental” expert testimony, making a
`
`mockery of the “obligation for petitioners to make their case in their petition ….”
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed.
`
`Cir. 2016). But Petitioner still fails to show obviousness of any claim.
`
`II.
`
`PETITIONER FAILS TO SHOW MULTIPLE IP ADDRESSES
`
`In the POR, Patent Owner showed that implementing Billström’s teachings
`
`within Yegoshin’s system would require modifications to Yegoshin that were
`
`beyond the skill of a POSITA. In response, Petitioner argues that its combination
`
`“modifies Yegoshin’s phone to use Billström’s IP address for IP-based cellular
`
`communication.” Reply, 4. But the Petition’s proposed combination requires
`
`“implement[ing] Billström’s cellular network employing IP.” Pet., 20-21. Dr.
`
`Jensen confirmed that in the combination, Yegoshin’s phone would be
`
`communicating over Billström’s network. EX-2035, 33:23-34:5, 34:13-24.
`
`Petitioner also asserts that it was “well-known” to use IP addresses. Reply,
`
`4. But the issue is not whether a mobile device could generically use IP. The issue
`
`is whether a POSITA had a reasonable expectation of success in adding IP data to
`
`an existing GSM cellular network, as required by Petitioner’s combination. The
`
`evidence shows that he did not. See also Exhibit 2035, 46:9-48:11.
`
`- 1 -
`
`
`
`
`
`III. PETITIONER FAILS TO SHOW SIMULTANEOUS USE OF
`MULTIPLE NETWORK PATHS
`
`A. Yegoshin’s Phone Does Not Simultaneously Use Cellular and
`WLAN Network Paths.
`Petitioner first asserts that claims 14 and 17 do not require that data be
`
`transmitted simultaneously. Patent Owner does not argue to the contrary.
`
`Petitioner next contends that the claimed device need not simultaneously
`
`connect to different networks. This is incorrect. The claims recite that “data
`
`transferred by the plurality of transmit and receive units is improved by the
`
`simultaneous use of multiple network paths ....” EX-1001, cls. 14, 17 (emphasis
`
`added).1 In order for the data transferred by the transmit and receive units to be
`
`improved by the simultaneous use of multiple network paths, the transmit and
`
`receive units must be configured to simultaneously use, i.e., connect to, the
`
`multiple network paths.
`
`Petitioner asserts that its read is confirmed by additional claim language, but
`
`Petitioner misquotes the claims. Compare Reply, 5-6 (“network server”) with EX-
`
`1001, cls. 14, 17 (“networked server”).
`
`Petitioner next argues that “[b]ecause 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.” Reply, 6. However, the processing
`
`
`1 All emphases in original unless otherwise indicated.
`
`- 2 -
`
`
`
`
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`for redirecting a cellular call to the LAN is not executed on Yegoshin’s phone, but
`
`rather at MSC 34. EX-1004, 8:16-27; Fig. 3. So, regardless of what the cellular,
`
`PSTN and IP networks may be doing in this example, the phone is only using the
`
`WLAN network path, not the cellular path.
`
`Petitioner next points to two snippets in Yegoshin, neither of which suggest
`
`simultaneous use of the cellular and WLAN networks. The first indicates that the
`
`phone may communicate over a cellular or LAN network. EX-1004, 6:67-7:3.
`
`The succeeding paragraph explains that once the phone is logged onto the LAN,
`
`“[f]orwarded calls to cell phone 9 will arrive via PSTN 25 over trunk 37 to IP
`
`switch 35 where they are distributed accordingly.” EX-1004, 7:15-18. So here the
`
`phone only uses the LAN. The second snippet describes routing certain cellular
`
`calls that are “exempt from IP delivery at the user’s discretion” to the phone via the
`
`local cellular network. EX-1004, 8:47-56. Here, the phone uses only the cellular
`
`network. In neither case does it use both networks simultaneously.
`
`B.
`
`Johnston May Not Be Relied On and Does Not Disclose Use of
`Multiple Network Paths.
`In the POR, Patent Owner explained that Johnston’s “multipath effects” are
`
`a natural propagation phenomenon that is fundamentally different from “network
`
`paths,” which are traced node to node. POR, 51-52; EX-2019, ¶¶132-33. In
`
`response, Petitioner offers no contrary evidence concerning how a POSITA
`
`would have understood these terms, but instead makes a claim construction
`
`- 3 -
`
`
`
`
`
`argument attempting to conflate “network paths” with communication paths.
`
`Petitioner’s argument, based on a purported lack of antecedent basis, makes no
`
`grammatical sense: “improved by the simultaneous use of ...” does not require
`
`antecedent basis.
`
`Petitioner then asserts that “a POSITA would have viewed the term ‘network
`
`path’ as generically covering any ‘path’ of a signal in a network,” Reply, 8-9,
`
`because the ’946 Patent’s specification refers to “communication paths.”
`
`Petitioner’s construction would read the adjective “network” out of the claim, and
`
`is therefore incorrect. Lucent Technologies, Inc. v. Gateway, Inc., 525 F.3d 1200,
`
`1213-16 (Fed. Cir. 2008). Moreover, the patentee used both “communication
`
`paths” and “network paths” in the claims, which further indicates that “network
`
`paths” is not synonymous with “communication paths.” Chicago Bd. Options
`
`Exch., Inc. v. Int'l Securities Exch., LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012).
`
`Petitioner next attacks Dr. Cooklev’s testimony as conclusory, but it was
`
`not; Dr. Cooklev explained why a POSITA would understand that Johnston’s
`
`“multipath effects” are not network paths. EX-2019, ¶¶132-33. Petitioner also
`
`asserts that Dr. Cooklev’s testimony supports its position, but this too is false—the
`
`quoted sentence in its entirety reads “A ‘network path’ is typically understood as a
`
`path through a network or from one network to another, and, depending on the
`
`- 4 -
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`
`
`
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`type of network, is typically traced via nodes.” EX-2019, ¶132 (material excised
`
`from Petitioner’s quotation emphasized).
`
`Finally, Petitioner asserts that it did not cite only to Yegoshin for
`
`“simultaneous use of multiple network paths,” because there was “extensive
`
`discussion of the Yegoshin-Johnston combination.” Reply, 8 n. 1. The Petition
`
`says what it says; Petitioner did not cite Johnston for this element, Pet., 23, 25;
`
`POR, 51, so the Board may not look to Johnston to supply it. Intelligent Bio-Sys,
`
`821 F.3d at 1369.
`
`C.
`
`Petitioner Did Not Make an Obviousness Argument in the
`Petition, and Fails to Substantiate One Now.
`Petitioner contends that “the Petition explained why it would have been
`
`obvious to transmit data simultaneously using Yegoshin’s cellular and WLAN
`
`interfaces.” Reply, 9. This is flatly false. Petitioner cites to page 25 of the
`
`Petition, but page 25 contains no such argument. In fact, the content at this page
`
`reiterates that Petitioner relied solely on unmodified Yegoshin for this element:
`
`“Yegoshin’s phone uses both cellular and WLAN connections (simultaneous use
`
`of multiple network paths).” Pet., 25. As to Dr. Jensen, his original declaration
`
`largely parrots the Petition on this point, and contains no explanation or suggestion
`
`that a POSITA would have found it obvious to modify Yegoshin to simultaneously
`
`use cellular and WLAN networks. EX-1003, ¶¶97-98. The Board cannot rely on
`
`this newly-proffered ground. Intelligent Bio-Sys, 821 F.3d at 1369.
`
`- 5 -
`
`
`
`
`
`In addition, Petitioner’s new ground is meritless. Dr. Jensen asserts that “a
`
`POSITA would have found it obvious to use [cellular and WLAN interfaces]
`
`simultaneously.” EX-1051, ¶21. The only example to which he points is three-
`
`way calling, as disclosed in Gillig, EX-1051, ¶22, which he proposes to implement
`
`in Petitioner’s Yegoshin-Billström phone. However, Dr. Jensen proffers no
`
`testimony concerning the modifications that would have been necessary to
`
`Yegoshin’s phone to support this additional capability, and no testimony to show
`
`that a POSITA would have had a reasonable expectation of success in modifying
`
`the phone in such a manner. Accordingly, even had Petitioner made this argument
`
`in the Petition, there is no substantial evidence to support the proposed
`
`modification. Alcon Inc. v. AMO Dev., LLC, IPR2021-00853, Paper 48, 50-56
`
`(PTAB Dec. 2, 2022).
`
`Petitioner also contends that “data” includes analog voice communications,
`
`but none of Petitioner’s new evidence supports the proposition that “data” as used
`
`in the claims included analog information such as the voice information
`
`transmitted by Gillig’s analog phone.
`
`- 6 -
`
`
`
`
`
`IV. PETITIONER FAILS TO SHOW “TWO NETWORK PATHS”
`CONNECTED TO A “SERVER” AND USE OF THE SECOND
`NETWORK PATH “IN RESPONSE TO A CHANGE IN THE
`SIGNAL STRENGTH AND/OR CONNECTIVITY”
`
`A. Yegoshin Does Not Disclose a Remote Server.
`Petitioner begins by asserting that it mapped the “remote server” of claim 27
`
`onto Yegoshin’s “PSTN-connected routing server” and “IP telephony server,” in
`
`addition to PSTN switch 31. Reply, 11. In fact, Petitioner mapped claim 27’s
`
`remote server only onto “the PSTN switch (remote server) ....” Pet., 80-81.
`
`Driving the point home, the Petition stated that the mapping for limitation 27[h]
`
`was “as described in 17[i],” where Petitioner depicts the mapping as follows:
`
`Pet., 58. Petitioner refers to “the PSTN switch”—the purported “remote server”—
`
`not as a “routing server” but rather as a “COST telephony switch.”
`
`
`
`- 7 -
`
`
`
`
`
`While the Petition did refer to Yegoshin’s “PSTN-connected routing server”
`
`and “IP telephony server” in its mapping of limitation 14[j]2, claim 14 does not
`
`require that both the first and second network paths converge on the “remote
`
`server” as in claim 27. Accordingly, Petitioner’s mapping of various “servers”
`
`onto claim 14 did not put Patent Owner on notice that it should have looked to the
`
`different mappings of different claims to supplement the clearly-described
`
`mapping of claim 27.
`
`Petitioner also contends that Patent Owner’s “interpretation” is inconsistent
`
`with Figure 2. If so, that is a problem with Petitioner’s mapping. The Petition was
`
`clear as to the mapping for claim 27’s “remote server,” and it was “PSTN switch
`
`31,” i.e., the “COST telephony switch.”
`
`Regardless, Petitioner does not dispute that switch 31 is not a server, and is a
`
`distinct element from CTI processor 49. POR, 56-59; EX-2019, ¶¶152-58. Dr.
`
`Jensen does not disagree. EX-1051, ¶29 (“PSTN switch 31 … works with other
`
`components to enable switching in the PSTN network ....”). And while he opines
`
`that “PSTN switch 31 ... constitutes at least a part of a server system in the PSTN
`
`
`2 Petitioner asserts that it also mapped these components onto limitation 17[j]. It
`
`did not; it merely mapped PSTN switch 31, as with claim 27, onto a “system,” not
`
`a server.
`
`- 8 -
`
`
`
`
`
`network,” EX-1051, ¶29 (emphasis added), this is irrelevant because the claim
`
`does not recite a “server system” but rather a “remote server.”
`
`B. Yegoshin’s Phone Does Not Operate/Communicate with a Remote
`Server Over Multiple Network Paths.
`Petitioner first complains that Patent Owner did not address the Petition’s
`
`discussion of Preiss. Patent Owner did not address Preiss because Preiss is
`
`irrelevant to the argument.
`
`In the Institution Decision, the Board stated that Petitioner had shown that
`
`“Yegoshin combined with Johnston would have simultaneous use of multiple
`
`network paths.” ID, 52. In the POR, Patent Owner showed that Petitioner had
`
`never made that argument, which Petitioner does not contest. Accordingly, the
`
`Board may not rely on it to find obviousness. Intelligent Bio-Sys., 821 F.3d at
`
`1369-70.
`
`Next, Patent Owner showed that the Board’s combination fails on the merits,
`
`for two reasons. First, because Johnston’s diversity array does not disclose
`
`multiple network paths. POR, 51-52; EX-2019, ¶¶132-33. Second, Johnston’s
`
`diversity array is incompatible with the structure recited in claim 27. POR, 60-61;
`
`EX-2019, ¶¶161-64. This point, too, is uncontested. Reply, 12; EX-1051, ¶30.
`
`Accordingly, the Board’s Yegoshin-Johnston combination does not disclose
`
`limitation 27[h].
`
`- 9 -
`
`
`
`
`
`C. Neither Yegoshin Nor Bernard Teaches Communicating to the
`Remote Server on the Second Network Path In Response To A
`Change In The Signal Strength And/Or Connectivity of the First
`or Second Communication Unit.
`Petitioner asserts that “Yegoshin describes several examples where the
`
`phone selectively uses one of WLAN and cellular networks.” Reply, 13. But none
`
`of Petitioner’s examples discloses communicating on any network path in
`
`response to a change in signal strength or connectivity. Petitioner’s first example
`
`just discloses that it would be desirable to have calls forwarded to a local LAN to
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`avoid roaming charges. EX-1004, 2:53-3:16. Petitioner’s second example
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`describes the process of initially connecting the phone to a LAN. EX-1004, 5:33-
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`54; EX-2019, ¶169.
`
`Dr. Jensen’s commentary concerning these examples is not rooted in
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`Yegoshin’s actual disclosure and so is entitled to no weight. TQ Delta, LLC v.
`
`CISCO Systems, Inc., 942 F.3d 1352, 1362 (Fed. Cir. 2019). For instance, Dr.
`
`Jensen states that a POSITA would “find it obvious to consider the change in the
`
`signal strength as one possible way to identify the ‘best possible connection.’”
`
`EX-1051, ¶31. However, he fails to explain why a change in signal strength or
`
`connectivity would be relevant to determining the best network for establishing the
`
`LAN connection.
`
`Petitioner next asserts that the configuration of Yegoshin’s phone is not
`
`static because a user may change it. This misses the point—the claim requires that
`
`- 10 -
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`
`
`
`
`the device be configured to communicate over the second network path in
`
`response to a change in signal strength or connectivity. If the user has to manually
`
`input the command, the device is not taking the action in response to the specified
`
`criteria. Neither Petitioner nor Dr. Jensen responds to Dr. Cooklev on this point.
`
`EX-2019, ¶¶169-73.
`
`Petitioner also asserts that “Bernard operates its PDA based on ‘determining
`
`the current signal strength’ of respective networks,” and therefore suggests use of
`
`signal strength to select the best connection. Reply, 14. This mischaracterizes
`
`Bernard. Bernard does not explain why the PDA performs these functions, and
`
`does not suggest that the PDA or the cradle could communicate to a remote server
`
`in response to a change in either of the listed parameters—selecting a connection
`
`based on signal strength is not the same thing as selecting a connection in response
`
`to a change in signal strength. POR, 64.
`
`V.
`
`PETITIONER FAILS TO PROVE ITS COMBINATION DISCLOSES
`“COMBIN[ING] DATA PATHS INTO A SINGLE TRANSMISSION
`INTERFACE TO ONE OR MORE APPLICATIONS”
`
`Petitioner’s New “Virtual Path” Theory is Meritless.
`A.
`Petitioner contends that Yegoshin discloses multiple data paths combined
`
`into a single interface to an application because the “data paths” exist regardless of
`
`whether data is being sent or received by the phone. Reply, 14-15, EX-2035,
`
`42:20-23. This theory fails for multiple reasons.
`
`- 11 -
`
`
`
`
`
`First, it is a new theory. The Petition states that “the phone in the
`
`combination multiplexes (combines) the signals received over cellular and WLAN
`
`into the single interface (e.g., serial interface) (single transmission interface)
`
`connected/integral to the phone, ....” Pet., 58. Petitioner did not rely on abstract
`
`“data paths” that exist independent of the signals carrying the data; Petitioner
`
`relied on “the signals received over cellular and WLAN.” The Board may not
`
`consider this new theory. Intelligent Bio-Sys., 821 F.3d at 1369.
`
`Second, it is inconsistent with the claim. Limitation 17[i] recites: “the
`
`processor on the device is configured to combine the data paths into a single
`
`transmission interface to one or more applications on the device.” EX-1001, cl. 17.
`
`The requirement that the processor be configured to combine the data paths into a
`
`single interface connotes that the processor acts on the data paths, and the only way
`
`that could happen is that the processor processes actual data.
`
`Third, in attempting to explain this theory, Petitioner’s expert testified that
`
`the phone application itself is the claimed “transmission interface” where the data
`
`paths are combined. Ex. 2035, 64:9-17. But claim 17 requires that the processor
`
`combine the data paths into a single transmission interface “to” the application, so
`
`the application must receive the already combined data paths and cannot itself be
`
`the “transmission interface.” Becton, Dickinson & Co. v. Tyco Healthcare Group,
`
`LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010).
`
`- 12 -
`
`
`
`
`
`Fourth, it is not supported by the cited art. One of Petitioner’s purported
`
`data paths is “the WLAN path.” Yegoshin’s WLAN is a packet-switched network,
`
`in which the path taken by the data is determined on a packet-by-packet basis. EX-
`
`2035, 14:25-15:4.3 In a packet switched network, therefore, the “path” does not
`
`exist until the data is sent. And the same is true for Yegoshin’s circuit-switched
`
`cellular network, in which the network provides a dedicated path for at least some
`
`duration of the communication. EX-2035, 15:12-21.
`
`Finally, it does not make sense. In defending Petitioner’s new theory, Dr.
`
`Jensen took the position in his deposition that cellular and WLAN data paths were
`
`combined into a single interface even when the calls being “combined” were
`
`separated by a year or more. EX-2035, 35:12-38:13. Dr. Jensen also testified that
`
`even where the processor uses only the cellular connection for the entirety of a
`
`communication, “that is a form of combining the two data paths.” EX-2035, 45:9-
`
`46:6. Dr. Jensen’s testimony highlights the gap between Petitioner’s new “virtual
`
`path” theory, on the one hand, and the claim language, the evidence and common
`
`sense, on the other.
`
`
`3 The Board authorized Patent Owner to file this transcript in this proceeding.
`
`- 13 -
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`
`
`
`
`Bernard Does Not Disclose the Recited Data Paths.
`B.
`In the POR, Patent Owner showed that packets sent over Bernard’s serial
`
`interface are not combined into a single interface to any application, because the
`
`packets are delivered to each application separately:
`
`
`
`EX-1007, Fig. 10 (annotated).
`
`Petitioner responds that the claims do not require the data paths “to be
`
`directly delivered or connected ‘to one or more applications on the mobile device’”
`
`Reply, 17. This is a non sequitur. A “path” is a course from A to B, and the claim
`
`- 14 -
`
`
`
`
`
`recites that the data paths are combined into an interface “to one or more
`
`applications ....” EX-1001, cl. 17 (emphasis added). So, the combined data paths
`
`must be interfaced to an application.
`
`Patent Owner also showed that Bernard does not combine data paths over its
`
`serial interface because it services one application at a time. Petitioner responds
`
`that “combining” is “not necessarily distinct from” interleaving. But Bernard does
`
`not “interleave” data, because “a request pending by a given application from a
`
`given network is serviced before servicing a different request for a different
`
`network.” EX-2019, ¶¶61, 76, 78; EX-2023, 577.
`
`Finally, Petitioner asserts it would have been “obvious to communicate
`
`simultaneously over Yegoshin’s cellular and WLAN paths.” Reply, 17-18. This
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`argument is untimely and meritless for the reasons set forth in Section III.C above.
`
`VI. PETITIONER FAILS TO SHOW “MULTIPLEXED SIGNALS”
`Petitioner’s Interpretation Of “Multiplexed” Is Contrary To Plain
`A.
`Meaning, Common Sense And Petitioner’s District Court
`Positions.
`In the POR, Patent Owner showed that neither Yegoshin nor Bernard
`
`teaches multiplexing under the constructions submitted in the pending district court
`
`litigation because (i) Yegoshin does not use cellular and WLAN simultaneously,
`
`and terminates one call before servicing another, and (ii) in Bernard “a given
`
`application using a single network is serviced before the system moves to servicing
`
`- 15 -
`
`
`
`
`
`a different application using the same network or the same application using a
`
`different network.” POR, 11-12, 16-17.
`
`In response, Petitioner first asserts that multiplexing does not require
`
`simultaneous communication of signals. Patent Owner does not dispute this.
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`However, in order to stretch “multiplexing” to purportedly cover the cited art,
`
`Petitioner goes beyond this to assert that any two signals, even if unrelated,
`
`randomly distributed and separated by days or years, are multiplexed. EX-2035,
`
`55:5-56:11, 67:7-15 (“So in your opinion, if on Yegoshin's phone, a phone call is
`
`made using the cellular network today and another phone call is made 50 years
`
`from now on the WLAN network, in your opinion, those two signals are
`
`multiplexed? A: Again, these are extreme examples. But --but yes.”). In fact, Dr.
`
`Jensen testified that there is no time frame that would change his answer “from
`
`being multiplex to not being multiplex.” EX-2035, 55:22-25. Dr. Jensen testified
`
`that “that’s the plain and ordinary meaning of how a person would understand the
`
`verb multiplex,” but later admitted that he has no opinion “on what the plain and
`
`ordinary meaning of the verb multiplex is.” EX-2035, 56:8-12, 63:13-16. Dr.
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`Jensen’s contradictory and self-impeaching testimony is entitled to no weight. TQ
`
`Delta, 942 F.3d at 1359-63.
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`Moreover, Petitioner’s construction of “multiplexing” is supported by none
`
`of the treatises or dictionaries submitted by the parties, and is flatly contrary to
`
`- 16 -
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`
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`several. For example, Petitioner prominently cites EX-1011, a treatise (Peterson)
`
`that describes “synchronous time division multiplexing” (STDM). As Peterson
`
`explains, “[t]he idea of STDM is to divide tim
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