Filed: October 26, 2022
`
`
`
`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 B1
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`
`

`

`TABLE OF CONTENTS
`INTRODUCTION .............................................................................................. 1
`I.
`II. THE BOARD SHOULD DENY INSTITUTION ...........................................10
`A. PETITIONER FAILS TO DISCLOSE OR APPLY ITS DISTRICT
`COURT CLAIM CONSTRUCTION POSITIONS IN VIOLATION
`OF 37 C.F.R. § 42.104(b)(3) (ALL CLAIMS, ALL GROUNDS) ............. 10
`B. PETITIONER FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING ON GROUND 1A
`(CLAIMS 14-15) ......................................................................................... 20
` Yegoshin-Johnston-Billström Does Not Teach a Mobile Device
`that Maintains Multiple IP Addresses (14[i]) ........................................ 20
`a) Yegoshin’s Phone Would Not Maintain an IP Address for
`Cellular Communication Because it Does Not Use IP for
`Cellular Communication .................................................................20
`b) Petitioner Fails To Explain Why a POSITA Would Associate
`a Second IP Address With Yegoshin’s Phone ................................24
` Yegoshin-Johnston-Billström Does Not Teach the Simultaneous
`Use of Multiple Network Paths (14[j]) ................................................. 27
`C. PETITIONER FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING ON GROUND 1B
`(CLAIMS 1-11, 16-21) ................................................................................ 30
` Yegoshin-Johnston-Billström-Bernard Does Not Teach a Single
`Interface Comprised of Multiplexed Signals from the Plurality of
`Wireless Transmit and Receive Units(1[i]) ........................................... 30
`a) Yegoshin’s Phone Does Not Multiplex Signals.............................30
`b) Bernard Does Not Teach “Multiplexed” Signals ...........................34
`c) Petitioner Fails To Prove That a POSITA Would Be
`Motivated To Combine Yegoshin And Bernard as Proposed ........39
`
`- i -
`
`

`

`i. A POSITA Would Not Be Motivated to Connect
`Yegoshin’s Cell Phone To Bernard’s Cradle Which Has a
`Cellular Telephone And a Land Phone .....................................40
`ii. A POSITA Would Not Be Motivated to Add an Internal
`Serial Interface to Yegoshin’s Phone ........................................42
` Yegoshin-Johnston-Billström-Bernard Does Not Teach a First
`Interface for Transmission that Uses a Plurality of Interfaces for
`Internet Protocol Communication (1[i]) ................................................ 47
` Yegoshin-Johnston-Billström-Bernard Does Not Teach a First
`Interface for Transmission that Uses a Plurality of Interfaces…to
`Enable a Single Interface (1[i]) ............................................................. 49
` Yegoshin-Johnston-Billström-Bernard’s Processor is Not
`Configured to Combine the Data Paths into a Single Transmission
`Interface (17[i]) ..................................................................................... 53
` Yegoshin Does Not Teach the Simultaneous Use of Multiple
`Network Paths (1[j], 17[j]) .................................................................... 54
`D. PETITIONER FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING ON GROUND 1E
`(CLAIMS 27-30) ......................................................................................... 55
` Neither Yegoshin nor Bernard Discloses a Second Wireless
`Transmit and Receive Unit that Communicates to a Remote Server
`on a Second Network Path in Response to a Change in Signal
`Strength or Connectivity (27[h]) ........................................................... 55
` Petitioner’s Yegoshin-Johnston-Billström-Bernard Combination
`Does Not Disclose that Video or Audio Can Be Accessed
`Simultaneously . . . Through Dedicated or Multiplexed Paths
`(27[h]) ................................................................................................... 59
`E. PETITIONER FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING ON ANY DEPENDENT
`CLAIMS (ALL GROUNDS) ...................................................................... 60
`
`- ii -
`
`

`

`F. PETITIONER’S NEED FOR MULTITUDINOUS REFERENCES
`STRONGLY SUGGESTS THE PRESENCE OF HINDSIGHT BIAS
`(ALL GROUNDS) ...................................................................................... 60
`III. CONCLUSION ................................................................................................66
`
`
`
`- iii -
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`Carefusion Corp. v. Baxter Int’l, Inc.,
`IPR2016-01456, Paper 9 (P.T.A.B. Feb. 6, 2017) ...............................................13
`Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc.,
`725 F.3d 1341 (Fed. Cir. 2013) ..................................................................... 46, 65
`Chemco Sys., L.P. v. RDP Techs., Inc.,
`IPR2019-01562, Paper 9 (P.T.A.B. Jun. 4, 2020) ...............................................10
`Ecolochem, Inc. v. S. Cal. Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) ............................................................................46
`Ex parte Evans,
`2017 Pat. App. LEXIS 386 (P.T.A.B. Aug. 1, 2017) ..........................................64
`Ex parte Orbotech LT Solar, LLC,
`2012 Pat. App. LEXIS 2784 (B.P.A.I. May 31, 2012) ........................................64
`Fid. Fed. Sav. & Loan Ass’n v. de la Cuesta,
`458 U.S. 141 (1982) .............................................................................................15
`Ford Motor Co. v. Mass. Inst. Tech.,
`IPR2020-00010, Paper 9 (P.T.A.B. Mar. 26, 2020) ............................................17
`Gen. Elec. Co. v. Raytheon Techs. Corp.,
`983 F.3d 1334 (Fed. Cir. 2020) ............................................................................60
`Google Inc. v. Koninklijke Philips N.V.,
`IPR2017-00409, Paper 10 (P.T.A.B. Jun. 5, 2017) ..................................... passim
`Halo v. Yale Health Plan,
`819 F.3d 42 (2nd Cir. 2016) .................................................................................15
`Hologic, Inc., v. Enzo Life Sciences, Inc.,
`IPR2018-00019, Paper 17 (P.T.A.B. Apr. 18, 2018) ...........................................13
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .................................................................... passim
`
`- iv -
`
`

`

`In re Anova Hearing Labs, Inc.,
`809 Fed. App’x. 840 (Fed. Cir. 2020) ........................................................... 61, 62
`In re DataTreasury Corp.,
`669 F. App’x 574 (Fed. Cir. 2016) ......................................................................62
`In re Medicis Pharm. Corp.,
`356 F. App’x 411 (Fed. Cir. 2009) ......................................................................63
`In re Neill,
`No. 2015-01431 (Fed. Cir. 2016) .........................................................................62
`In re Schweickert,
`676 F. App’x 988 (Fed. Cir. 2017) ......................................................................63
`Kim v. ConAgra Foods, Inc.,
`465 F.3d 1312 (Fed. Cir. 2006) ............................................................................12
`KioSoft Tech. LLC v. PayRange Inc.,
`CBM2020-00026, Paper 11 (P.T.A.B. Mar. 22, 2021)................................. 16, 17
`Ontel Prod. Corp. v. Guy A. Shaked Invs. Ltd.,
`IPR2020-01728, Paper 37 (P.T.A.B. Apr. 18, 2022) ...........................................20
`Orthopediatrics Corp. v. K2M Inc.,
`IPR2018-01546, Paper 10 (P.T.A.B. Feb. 14, 2019) .................................... 16, 17
`OrthoPediatrics Corp. v. K2M, Inc.,
`IPR2018-01548, Paper 9 (P.T.A.B. Mar. 1, 2019) ..............................................20
`Parsons Xtreme Golf, LLC v. Taylor Made Golf Co., Inc.,
`IPR2018-00518, Paper 14 (P.T.A.B. Jul. 18, 2018) ............................................25
`RPX Corp. et al. v. Parity Networks, LLC,
`IPR2018-00097, Paper 7 (P.T.A.B. Apr. 24, 2018) .............................................25
`Ruiz v. A.B. Chance Co.,
`357 F.3d 1270 (Fed. Cir. 2004) ..................................................................... 46, 65
`Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc.,
`IPR2020-01184, Paper 11 (P.T.A.B. Jan. 5, 2021)..............................................17
`
`- v -
`
`

`

`Toyota Motor Corp. v. Blitzsafe Tex., LLC,
`IPR2016-00422, Paper 12 (P.T.A.B. Jul. 6, 2016) ..............................................13
`Other Authorities
`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) ............................................................................................. 14, 15
`Regulations
`1 C.F.R. § 18.12 .......................................................................................................14
`37 C.F.R. § 42.100(b) ..............................................................................................16
`37 C.F.R. § 42.104 .................................................................................. 2, 10, 13, 20
`37 C.F.R. § 42.65 ............................................................................................. passim
`
`
`
`- vi -
`
`

`

`Ex. No.
`2001.
`
`2002.
`
`2003.
`
`2004.
`
`2005.
`
`2006.
`
`2007.
`
`2008.
`
`2009.
`
`2010.
`
`EXHIBIT LIST
`
`Brief Description
`
`Reserved.
`
`Declaration of Professor Todor V. Cooklev, Ph.D.
`
`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].
`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].
`
`- vii -
`
`

`

`Ex. No.
`2011.
`
`2012.
`
`2013.
`
`2014.
`
`2015.
`
`
`
`Brief Description
`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].
`Ex parte Orbotech LT Solar, LLC, 2012 Pat. App. LEXIS 2784
`(B.P.A.I. May 31, 2012).
`Ex parte Evans, 2017 Pat. App. LEXIS 386 (P.T.A.B. Aug. 1,
`2017).
`
`- viii -
`
`

`

`I.
`
`INTRODUCTION
`The Board should deny institution of Samsung Electronics Co., Ltd., Samsung
`
`Electronics America, Inc., and Apple, Inc.’s (collectively, “Petitioner’s”) Petition
`
`seeking inter partes review (“IPR”) of U.S. Patent No. 9,019,946 (“the ’946
`
`Patent”), for the reason, among others, that numerous elements of the challenged
`
`claims are simply not disclosed in Petitioner’s cited art.
`
`The Petition fails in large part because Petitioner’s arguments are based on a
`
`misunderstanding of the two primary references, Yegoshin and Bernard. Petitioner
`
`cites Yegoshin for its purported disclosure of a phone that can operate over two
`
`networks (cellular and LAN) simultaneously and switch off between the two based
`
`on “various criteria.” However, Yegoshin does not disclose this; to the contrary,
`
`Yegoshin’s phone can only operate over cellular and LAN consecutively, not
`
`simultaneously, and it can only switch between the two networks by user input. The
`
`phone is a simple cell phone with limited networking functionality, primitive in
`
`relation to the mobile device recited in the challenged claims. Petitioner also reads
`
`Yegoshin to disclose the use of Internet Protocol on a cellular network, but it does
`
`not. And with respect to Bernard, the “multiplexer” to which Petitioner points does
`
`not multiplex signals, but rather simply selects an input and connects it to an output.
`
`Because these analytical flaws are fundamental to Petitioner’s arguments, Petitioner
`
`fails to carry its burden.
`
`- 1 -
`
`

`

`There are multiple reasons, procedural and substantive, why the Board should
`
`deny the Petition. First, in co-pending litigation in U.S. District Court, Petitioner
`
`currently asserts that five terms of the ’946 Patent require construction, and in
`
`addition that two limitations are indefinite. Yet here, Petitioner contends that “no
`
`formal claim constructions are necessary” as to any term in the ’946 Patent.
`
`Petitioner was obligated to identify how the claims challenged in this proceeding
`
`were to be construed, 37 C.F.R. § 42.104(b)(3), but they failed to proffer any
`
`constructions while at the same time alleging in District Court that key terms of the
`
`’946 Patent—such as “multiplexing” and “interface” —require narrow constructions
`
`and claiming that limitations 1[i] and 14[h] suffer from multiple “points of
`
`ambiguity” such that a “POSITA would not understand the scope of these terms with
`
`reasonable certainty.” Ex. 2003, p. 10. Petitioner wishes claim construction to be
`
`malleable, broad and undefined in this proceeding and, simultaneously, narrow in
`
`District Court, but that is exactly the sort of gamesmanship Rule 42.104 is intended
`
`to foreclose. The Board should not countenance this disregard of its Rules and basic
`
`fairness. The Petition should be denied.
`
`Second, on the merits, Petitioner’s arguments fail for multiple independent
`
`reasons. In this Preliminary Response Patent Owner Smart Mobile Technologies
`
`LLC (“Smart Mobile” or “Patent Owner”) will address only a subset of the
`
`- 2 -
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`

`

`deficiencies in the Petition, reserving its right to address additional failures of proof
`
`should the Board institute trial.
`
`Ground 1A: Claim 14 is the sole independent claim covered by Ground 1A.
`
`Limitation 14[i] requires that the claimed device “maintain[] multiple IP addresses,
`
`. . .” Regarding limitation 14[i], Petitioner contends that Yegoshin discloses a phone
`
`that includes an IP address for LAN connections and the capability to make and
`
`receive calls using Internet Protocol (IP) over both cellular and LAN networks, and
`
`that Billström discloses a mobile device that includes an IP address for cellular
`
`networks. Thus, according to Petitioner, a POSITA would have modified Yegoshin’s
`
`phone to include Billström’s IP address for cellular. However, the premise is false:
`
`Yegoshin clearly discloses that its phone does not use IP over a cellular network.
`
`Therefore, a POSITA have seen no reason to incorporate Billström’s cellular IP
`
`address into Yegoshin’s phone. Petitioner’s proposed combination therefore fails,
`
`as does Ground 1A. Moreover, the Petition fails here for a second reason: Yegoshin
`
`already discloses associating the LAN IP address with the phone’s cellular number,
`
`and Petitioner proffers no reason why a POSITA would find it advantageous to
`
`maintain another IP address on the phone for the cellular network path.
`
`In addition, limitation 14[j] recites that “data transferred by the plurality of
`
`transmit and receive units is improved by the simultaneous use of multiple
`
`communication paths including at least one connection to a networked server, . . .”
`
`- 3 -
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`

`

`Petitioner contends that Yegoshin’s phone “is capable of taking some calls via
`
`cellular path while receiving other calls via IP path.” Pet. 25. However, the very
`
`paragraph from which this text is snipped clearly teaches that the mobile device may
`
`use the cellular and LAN connections consecutively, not simultaneously: “[f]or
`
`example, if engaged with an IP call, an incoming cell call would get a busy signal
`
`and so on, or it would be redirected to the IP call point, where it would then be
`
`presented as a call-waiting call, . . .” Ex. 1004, 5:55-65. Yegoshin therefore does
`
`not teach the simultaneous use of cellular and LAN network paths. Similarly,
`
`Johnston’s diversity antenna does not suggest “multipath communication,” but
`
`rather addresses multipath fading, which results from signal reflections creating
`
`interference at a receiving antenna. Here again, Petitioner either misunderstands or
`
`mischaracterizes the teaching of its references. Ground 1A therefore fails.
`
`Ground 1B: Ground 1B covers independent claims 1 and 17. Limitation 1[i]
`
`recites a “first interface for transmission” that “uses a plurality of interfaces for
`
`Internet Protocol communication on the mobile device . . . to enable a single interface
`
`comprised of multiplexed signals from the plurality of wireless transmit and receive
`
`units.” Petitioner’s arguments with respect to limitation 1[i] fail for multiple
`
`reasons, including:
`
`• Neither Yegoshin nor Bernard discloses “multiplexed” signals as either
`
`Petitioner or Patent Owner have proposed to construe that term in
`
`- 4 -
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`

`

`District Court. The “multiplexor” in Bernard on which Petitioner relies
`
`to satisfy this element does not, in fact, multiplex signals (it is just a
`
`line selector) under either Patent Owner or Petitioner’s proposed
`
`District Court constructions of “multiplexing,” and Petitioner fails to
`
`point to any other supported disclosure to support its showing of
`
`“multiplexing.” Moreover, there would have been no motivation to
`
`combine Yegoshin’s phone and Bernard’s cradle as proposed by
`
`Petitioner, because (i) combining Yegoshin’s phone with Bernard’s
`
`landline-equipped cradle would have yielded a non-mobile, non-
`
`wireless, non-portable device, and (ii) integrating Bernard’s cradle
`
`functionality into Yegoshin’s phone via Bernard’s serial interface
`
`would have been seen by a POSITA as disadvantageous.
`
`• Petitioner fails to identify any “first interface for transmission” in any
`
`of its cited references.
`
`• Yegoshin’s phone does not use IP for cellular communication and
`
`cannot use the cellular and LAN networks simultaneously, so it does
`
`not use “a plurality of interfaces for Internet Protocol communication”
`
`to enable a single interface.
`
`• Yegoshin’s speaker is not a “single interface” comprised of signals
`
`from the cellular and LAN communication circuits, for at least the
`
`- 5 -
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`

`

`reason that Yegoshin teaches that only one network (cellular or LAN)
`
`may be used for any particular transmission. And, a POSITA would
`
`not have been motivated to integrate Bernard’s serial interface between
`
`Bernard’s cradle and mobile device into Yegoshin’s phone because no
`
`POSITA would have used a serial interface for that purpose, and
`
`Petitioner fails to show that Bernard’s serial interface is enabled by a
`
`first interface for transmission as recited in the claim.
`
`With respect to claim 17, limitation 17[i] recites, e.g., that “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, 14:18-21. The Petition
`
`relies on Bernard to supply the “combining.” However, Bernard does not disclose
`
`that signals received over cellular and LAN are combined into a single transmission
`
`interface. Nor does Bernard teach that its microcontroller combines or multiplexes
`
`anything. So Ground 1B fails with respect to limitation 17[i].
`
`Limitations 1[j] and 17[j] recite “wherein data transferred by the plurality of
`
`transmit and receive units is improved by the simultaneous use of multiple
`
`communication paths . . ..” Ex. 1001, 12:17-19. However, as outlined above,
`
`Yegoshin does not disclose the simultaneous use of multiple network paths. Rather,
`
`Yegoshin discloses the consecutive use of cellular and LAN networks, which is the
`
`- 6 -
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`

`

`opposite of simultaneous use. Accordingly, for this reason as well, Ground 1B fails
`
`with respect to both independent claims.
`
`Ground 1E: Limitation 27 is the sole independent claim covered by Ground
`
`1E. Limitation 27[h] recites:
`
`wherein the first wireless transmit and receive unit operates on the first
`network path to a remote server and the second wireless transmit and
`receive unit communicates to the remote server on the second network
`path in response to a change in the signal strength and/or connectivity
`of
`the first wireless communication unit or second wireless
`communication unit; . . .
`
`Ex. 1001, 16:1-11. The Petition identifies the cellular and LAN networks paths of
`
`Yegoshin as the first and second network paths of limitation 27[h], respectively and
`
`states that Yegoshin’s cellular and LAN interfaces “are selectively used depending
`
`on various criteria, . . . .” Pet. 81. However, Yegoshin does not teach selecting a
`
`network path in response to a change in signal strength or connectivity, or anything
`
`else other than a user input or setting. The portion of Yegoshin to which Petitioner
`
`points to allegedly supply this element merely describes the process by which the
`
`phone establishes a particular network on which it will receive calls at a particular
`
`LAN-enabled site; it does not describe communicating to a remote server (or any
`
`server) in response to a change in signal strength or connectivity (or any other
`
`parameter). Moreover, Yegoshin’s phone communicates with a remote server in
`
`- 7 -
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`

`

`response to either user input (to place an outgoing call) or an incoming signal via
`
`cellular or LAN (to receive an incoming call), not in response to a change in signal
`
`strength or connectivity (or any other parameter).
`
`The Petition also points to Bernard’s PDA, noting that the PDA performs the
`
`tasks of “determining the current signal strength’ of each of the available networks”
`
`and “setting a channel for transmission or reception.” Pet. 81. However, there is no
`
`explanation in Bernard as to why the PDA performs these functions, and no
`
`disclosure in Bernard suggesting that the PDA or the cradle could communicate to a
`
`remote server in response to a change in either of the listed parameters. Moreover,
`
`as shown above, Yegoshin does not disclose communicating to a remote server in
`
`response to a change in any specified parameter, so Yegoshin cannot supply any
`
`motivation for Petitioner’s combination. Accordingly, Dr. Jensen’s opinion of
`
`obviousness is wholly unsupported.
`
`In addition, Yegoshin’s phone does not operate to “a remote server” over a
`
`first network path and communicate with “the remote server” on a second network
`
`path. Petitioner points to Yegoshin’s PSTN switch 31 as the remote server, but this
`
`is not a server, it is a switch in a traditional circuit-switched PSTN network. So the
`
`Petition fails to identify anything in Yegoshin that satisfies the “remote server”
`
`element.
`
`- 8 -
`
`

`

`Limitation 27[h] recites “wherein video or audio can be accessed
`
`simultaneously with performance optimized for each through dedicated or
`
`multiplexed paths.” The Petition asserts that each of Yegoshin’s cellular and WLAN
`
`interfaces communicates both voice and non-voice data. Pet. 82. However,
`
`Petitioner makes no effort to show that either of the cellular or LAN network paths
`
`in this scenario is a dedicated path, nor does it attempt to show that these paths are
`
`multiplexed. In addition, as already discussed, Yegoshin does not teach the
`
`simultaneous use of multiple network paths. So, even were Yegoshin’s cellular and
`
`LAN paths either dedicated or multiplexed, there is no teaching in Yegoshin that
`
`they should or could be used to transmit any type of data simultaneously.
`
`Accordingly, Ground 1E fails.
`
`Grounds 1C-1D: These grounds cover only dependent claims, so they fail
`
`for the reasons addressed above.
`
`Finally, it is significant that Petitioner found it necessary to combine three (for
`
`Ground 1A), four (Ground 1B), or five (Grounds 1C-1E) references to purportedly
`
`supply the content of the challenged claims. While the sheer number of references
`
`in an obviousness combination is not alone proof of nonobviousness, the fact that
`
`Petitioner has been forced to resort to so many different references is highly
`
`suggestive that Petitioner’s combinations result from hindsight bias. As explained
`
`in Section II(F) below, members of the Federal Circuit have repeatedly indicated
`
`- 9 -
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`

`

`that more searching scrutiny is required for obviousness combinations with many
`
`references. The Petition here clearly qualifies for such treatment.
`
`For the reasons outlined above, the Board should deny institution.
`
`II. THE BOARD SHOULD DENY INSTITUTION
`A. PETITIONER FAILS TO DISCLOSE OR APPLY ITS DISTRICT
`COURT CLAIM CONSTRUCTION POSITIONS IN VIOLATION
`OF 37 C.F.R. § 42.104(b)(3) (ALL CLAIMS, ALL GROUNDS)
`An IPR petition “must identify . . . [h]ow the challenged claim is to be
`
`construed.” 37 C.F.R. § 42.104(b)(3). “This is particularly important when a claim
`
`term is ambiguous.” Chemco Sys., L.P. v. RDP Techs., Inc., IPR2019-01562, Paper
`
`9, 9-12 (P.T.A.B. Jun. 4, 2020).
`
`Here, Petitioner states that “no formal claim constructions are necessary in
`
`this proceeding,” and that “[f]or this petition, Petitioner applies prior art in a manner
`
`consistent with Patent Owner’s allegations of infringement before the district court.”
`
`Pet. 2 & n.1. A month before the Petition was filed, however, Petitioner proffered
`
`constructions for several terms in the District Court Action that it insists are their
`
`legally correct constructions:
`
`- 10 -
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`

`

`Petitioner’s Irreconcilable Claim Constructions
`Term
`IPR Position
`District Court Position
`“multiplex /
`No construction necessary
`“Plain and ordinary
`multiplexes /
`meaning, which is ‘to
`multiplexed /
`interleave or
`multiplexing”
`simultaneously transmit
`two or more messages
`on a single
`communications
`channel.’”
`“Plain and ordinary
`meaning, which is
`‘actually programmed
`to’”
`Indefinite
`
`“is configured to”
`
`No construction necessary
`
`“wherein a first
`interface for
`transmission is created
`and wherein said first
`interface for
`transmission uses a
`plurality of interfaces
`for Internet Protocol
`communication on the
`mobile device which
`utilize the plurality of
`wireless transmit and
`receive units on the
`mobile device to enable
`a single interface
`comprised of
`multiplexed signals
`from the plurality of
`wireless transmit and
`receive units”
`“wherein the first
`wireless transmit and
`receive unit is enabled
`to communicate using
`one or more antennas
`simultaneously”
`
`No construction necessary
`
`No construction necessary
`
`Indefinite
`
`- 11 -
`
`

`

`“ports”
`
`“application”
`
`No construction necessary
`
`Petitioner’s Irreconcilable Claim Constructions
`Term
`IPR Position
`District Court Position
`No construction necessary
`“Plain and ordinary
`meaning, which is a jack
`or socket that a cable
`connector plugs into”
`“Plain and ordinary
`meaning, which is a
`software program
`designed to assist in the
`performance of a
`specific task”
`“Plain and ordinary
`meaning, which is ‘a
`shared electrical or
`mechanical boundary
`between two hardware
`devices.’”
`
`“interface”
`
`No construction necessary
`
`
`Compare Pet. 2 with Ex. 2003, 7, 10, 13, 17, 23, 33, 37. The Petition neither
`
`mentions these constructions, nor attempts to justify the inconsistency of its
`
`positions here and in the District Court.
`
`Petitioner may wish to enjoy the benefit of one construction for purposes of
`
`infringement and another, narrower construction for validity, but that approach is
`
`inconsistent with the rules and rudimentary claim construction principles. Kim v.
`
`ConAgra Foods, Inc., 465 F.3d 1312, 1324 (Fed. Cir. 2006) (“The same claim
`
`construction governs
`
`for validity determinations
`
`as
`
`for
`
`infringement
`
`determinations.”). The Board’s rules require Petitioner to set forth in the Petition
`
`“how the challenged claim is to be construed” and “how the construed claim is
`
`unpatentable.” 37 C.F.R. § 42.104(b)(3)-(4). In other words, the Petitioner is
`
`- 12 -
`
`

`

`required to “take ownership” of its constructions rather than hiding behind a “plain
`
`meaning” smokescreen. Toyota Motor Corp. v. Blitzsafe Tex., LLC, IPR2016-
`
`00422, Paper 12, 26 (P.T.A.B. Jul. 6, 2016) (“The ‘construction’ referred to by 37
`
`C.F.R. § 42.104(b)(3) is the construction proposed by the Petitioner, one that
`
`Petitioner believes is the correct construction under applicable law and should
`
`apply in the involved proceeding…Petitioner does not take ownership of the district
`
`court’s constructions by indicating, in some way, that it agrees with, proposes, or
`
`adopts the construction of this district court.”) (denying petition); see also
`
`Carefusion Corp. v. Baxter Int’l, Inc., IPR2016-01456, Paper 9, 7 (P.T.A.B. Feb. 6,
`
`2017) (“Petitioner states that it relies on constructions advanced by Patent Owner in
`
`the related litigation; remarkably, however, Petitioner also states that it does not
`
`agree that those constructions are in fact correct.”) (denying petition); Hologic,
`
`Inc., v. Enzo Life Sciences, Inc., IPR2018-00019, Paper 17, 9 (P.T.A.B. Apr. 18,
`
`2018) (“… Petitioner was free to advocate unpatentability under a claim
`
`construction it considered to be correct. It did not do so. …Petitioner should bring
`
`petitions for inter partes review asserting unpatentability based on constructions that
`
`their petitions seek.”) (denying petition).1
`
`
`1 All emphasis added unless otherwise noted.
`
`- 13 -
`
`

`

`As the Preamble2 to the rule that was codified at § 42.100(b) explains, this
`
`rule was promulgated specifically to foreclose the two-faced approach that Petitioner
`
`takes here. In a comment and response section of the preamble entitled “fairness,”
`
`the Office explained it “agrees with [] comments” that “harmonizing the claim
`
`construction standards would prevent parties from taking inconsistent [claim
`
`construction] positions.” See 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 (Oct. 11, 2018) (“Final Rulemaking”).
`
`Furthermore, a patent challenger “will [] be required to choose a single claim
`
`construction that best captures the true meaning of the claim.” Id., 51,350. Similarly,
`
`in a section titled “consistency,” the Office stated it agreed with comments that the
`
`rule change would “prevent[] parties from taking inconsistent positions, such as
`
`
`2 The Federal rules require that an “agency submitting a proposed or final rule
`
`document for publication shall prepare a preamble which will inform the reader,
`
`who is not an expert in the subject area, of the basis and purpose for the rule or
`
`proposal.” 1 C.F.R. § 18.12(a). This preamble shall contain “supplementary
`
`information” which may include “a discussion of the background and major issues
`
`involved” and “a response to substantive public comments received.” 1 C.F.R. §
`
`18.12(b)-(c).
`
`- 14 -
`
`

`

`a patent challenger arguing for a broad scope in a PTAB proceeding (under BRI)
`
`and a narrow scope (under Phillips) in district court to avoid a finding of
`
`infringement.” Id., 51,347-51,348. Fur