`
`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioners,
`
`
`v.
`
`COBBLESTONE WIRELESS, LLC,
`
`Patent Owner.
`
`––––––––––
`Case No. IPR2024-00317
`
`U.S. Patent No. 8,554,196
`
`––––––––––
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,554,196
`
`
`
`02198-00092/14587809.1
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`Cobblestone Wireless, LLC
`Ex. 2025, IPR2024-00315
`Page 1 of 55
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`
`
`I.
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`II.
`
`Standing ........................................................................................................... 3
`
`III.
`
`Identification of Challenge And Relief Requested .......................................... 3
`
`IV. Level Of Ordinary Skill In The Art ................................................................. 3
`
`V.
`
`The ’196 patent ................................................................................................ 4
`
`A. Overview ............................................................................................... 4
`
`B.
`
`Prosecution History of the ’196 patent .................................................. 7
`
`VI. Claim Construction .......................................................................................... 9
`
`VII. Overview Of The Prior Art ............................................................................ 10
`
`A.
`
`Chang (Ex. 1004) ................................................................................ 10
`
`VIII. Ground of Rejection ...................................................................................... 12
`
`A. Ground 1: Claims 23-27 are obvious in view of Chang ..................... 12
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Independent Claim 23 ............................................................... 12
`
`Dependent Claim 24 ................................................................. 31
`
`Dependent Claim 25 ................................................................. 31
`
`Dependent Claim 26 ................................................................. 33
`
`Dependent Claim 27 ................................................................. 35
`
`IX. Discretionary Denial ...................................................................................... 39
`
`A.
`
`Fintiv.................................................................................................... 39
`
`B.
`
`35 U.S.C. §325(d)................................................................................ 40
`
`X.
`
`Ranking of Parallel Petitions ......................................................................... 40
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`U.S. Patent No. 8,554,196
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`XI. Mandatory Notices And Fees ........................................................................ 43
`
`A.
`
`Real Party-In-Interest .......................................................................... 43
`
`B.
`
`C.
`
`Related Matters .................................................................................... 43
`
`Counsel and Service Information ........................................................ 44
`
`D.
`
`Payment of Fees .................................................................................. 45
`
`XII. Conclusion ..................................................................................................... 45
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`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
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`EXHIBIT LIST
`
`Ex.
`
`Description
`
`1001
`
`U.S. Patent No. 8,554,196 B2 (“’196 Patent”)
`
`1002
`
`Prosecution History of U.S. Patent No. 8,554,196
`
`1003
`
`Expert Declaration of Mr. James A. Proctor
`
`1004
`
`U.S. Patent No. 9,830,642 B2 (“Chang”)
`
`1005
`
`U.S. Patent No. 8,433,310
`
`1006
`
`Curriculum Vitae of Mr. James A. Proctor
`
`1007
`
`Plaintiff’s Preliminary Disclosure of Asserted Claims and
`Infringement Contentions, Case No. 2:22-cv-00477-RSP (Mar. 13,
`2023)
`
`
`
`1008
`
`Exhibit D to Plaintiff’s Preliminary Disclosure of Asserted Claims
`and Infringement Contentions, Case No. 2:22-cv-00477-RSP (Mar.
`13, 2023) (“’196 Claim Chart”)
`
`
`
`1009
`
`Vinoth Gunasekaran & Fotois C. Harmantzis, Towards a Wi-Fi
`ecosystem: Technology integration and emerging service models,
`TELECOMMUNICATIONS POLICY 32, 163-181 (2008)
`
`
`
`1010
`
`Cobblestone Wireless, LLC v. T-Mobile USA, Inc., No. 2:22-cv-
`00477-JRG-RSP (Lead Case), Dkt. 62, Docket Control Order
`
`
`
`1011
`
`Cobblestone Wireless, LLC v. Samsung Electronics Co., Ltd., No.
`2:22-cv-00285-JRG-RSP, Dkt. 29-1, Docket Control Order
`
`
`
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`LIST OF CHALLENGED CLAIMS
`
`Claim
`
`Limitation
`
`[23.0]
`
`A method for a device to receive data updates comprising:
`
`[23.1]
`
`cycling over time through an update sequence that includes:
`
`[23.2]
`
`[23.3]
`
`deferring, during coverage by a first network, data updates for
`the device;
`
`transmitting a data update request in response to coverage by a
`second network, wherein the second network is a more capable
`network than the first network; and
`
`[23.4]
`
`receiving, during the second coverage configuration, a data
`update.
`
`
`
`
`
`
`
`
`
`24
`
`25
`
`26
`
`27
`
`The method of claim 23, wherein the device comprises at least
`one of a mobile phone, a smartphone, a laptop computer, a
`netbook device, a tablet device or a personal digital assistant.
`
`The method of claim 23, wherein the update sequence further
`comprises: batching the deferred data updates for the device.
`
`The method of claim 23, wherein the data update includes at
`least one of an email update, an Really Simple Syndication
`(RSS) feed update, a social networking update, a software
`update, a map update, or a gaming update.
`
`The method of claim 23, wherein the first network and the
`second network comprise at least one of the following: the first
`network is a Third Generation Mobile (3G) network and the
`second network is an Enhanced Data Rates for Global Evolution
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`Claim
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`Limitation
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`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
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`(EDGE) network, the first network is a Fourth Generation
`Mobile (4G) network and the second network is an Enhanced
`Data Rates for Global Evolution (EDGE) network, the first
`network is a Long Term Evolution (LTE) network and the
`second network is an Enhanced Data Rates for Global Evolution
`(EDGE) network, the first network is an Evolution-Data
`Optimized (EV-DO) network and the second network is a Code
`Division Multiple Access (CDMA) network, the first network is
`a Fourth Generation Mobile (4G) network and the second
`network is a Third Generation Mobile (3G) network, the first
`network is a data network and the second network is a voice
`network, or the first network is a data network and the second
`network is a mixed voice and data network.
`
`
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`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
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`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd.
`
`(“Petitioners”) respectfully requests inter partes review of claims 23-27 (the
`
`“Challenged Claims”) of U.S. Patent No. 8,554,196 (the “’196 Patent”) pursuant to
`
`35 U.S.C. §311 and 37 C.F.R. §42.100. Petitioners note that the grounds of
`
`challenge in this Petition are a “copycat” of the Petition filed in T-Mobile USA,
`
`Inc. et al. v. Cobblestone Wireless, LLC, IPR2024-00135. Both Petitions challenge
`
`the same claims using the same prior art and for the same reasons. The expert
`
`declaration filed in this proceeding is substantively identical to the expert
`
`declaration in IPR2024-00135 and signed by the same expert, and both Petitions
`
`otherwise cite to the same exhibits. If IPR2024-00135 is instituted, Petitioners
`
`intend to move for joinder.
`
`The challenged claims recite a method for deferring data updates on a
`
`mobile device, such as a smartphone. An example of the claimed method would be
`
`a user’s iPhone waiting to download recent purchases until connected to a Wi-Fi
`
`network instead of downloading the recent purchases over a cellular connection.
`
`But this was not new. As shown in the below figure taken from the prior art relied
`
`upon in this petition, Apple’s engineers beat the patentee to this idea:
`
`
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`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
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`
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`
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`Petitioner’s expert, Mr. Proctor, confirms that the challenged claims are
`
`unpatentable over the Ground identified below. Petitioners respectfully request that
`
`the Board cancels the challenged claims.
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`II.
`
`STANDING
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`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
`
`Petitioners certify that the ’196 patent is available for IPR and that Petitioners
`
`are not barred or estopped from presenting the grounds identified in this Petition.
`
`III.
`
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED
`
`Petitioners request cancellation of claims 23-27 (“Challenged Claims”) on the
`
`following grounds:
`
`Ground
`
`Reference(s)
`
`Basis
`
`Claims
`
`1
`
`Chang
`
`§103
`
`23-27
`
`
`
`U.S. Patent No. 9,830,642 to Chang et al. (“Chang”) (Ex. 1004), titled
`
`“Intelligent delivery and acquisition of digital assets,” was filed as U.S. Patent
`
`Application No. 13/171,253 on June 28, 2011, and issued on November 28, 2017.
`
`Ex. 1004, Cover.
`
`As stated on the face of the patent, the earliest priority date of the ’196 Patent
`
`is August 24, 2011. Because the application that became the ’196 Patent was filed
`
`before March 16, 2013, (pre-AIA) 35 U.S.C. §§ 102 and 103 are applicable. Chang
`
`qualifies as prior art under at least (pre-AIA) 35 U.S.C. § 102(e).
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`A POSITA at the time of the alleged invention of the ’196 patent would have
`
`had at least a bachelor’s degree in electrical engineering, computer engineering,
`
`computer science, physics, or the equivalent, and at least two years of experience
`
`working in the field. Ex. 1003, ¶41. This description is approximate and a higher
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`level of education might make up for less experience and vice versa. Id. Relevant
`
`working experience would include experience with cellular telecommunications and
`
`networking, radio-access networking architectures, protocols and signal propagation
`
`in wireless networks. Ex. 1003, ¶41. More education can supplement practical
`
`experience and vice versa. Ex. 1003, ¶41.
`
`V. THE ’196 PATENT
`
`A. Overview
`
`The ’196 Patent relates to providing different types of network coverage to
`
`electronic devices, including mobile phones, smart phones, laptops, netbooks,
`
`tablets, and personal digital assistants, among others. Ex. 1001, 10:33-35; Ex. 1003,
`
`¶¶42-43. The ’196 Patent points to alleged problems with prior art network coverage
`
`that potentially caused poor network conditions with a “relatively low power beam
`
`to both active and inactive devices.” Ex. 1001, 1:11-17; Ex. 1003, ¶42.
`
`The ’196 Patent attempts to optimize network usage based on the services
`
`being used. Ex. 1001, 1:22-35; Ex. 1003, ¶43. For example, the ’196 Patent describes
`
`different requirements for “continuous use” and “interval use” service. The ’196
`
`Patent explains that a continuous use service requires “substantially continuous
`
`service [which] may generally include any type of substantially continuous service
`
`including, for example, a voice call, a download, a content streaming, or the like.”
`
`Ex. 1001, 3:47-51; Ex. 1003, ¶43. An interval use service does not require
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`continuous data but only requires data when using particular applications, such as
`
`“social networking applications, email, Really Simple Syndication (RSS) feeds, map
`
`updates, game update, sports score update, or the like. In such examples, the interval
`
`use device may be able to wait for data updates, feeds, or the like.” Ex. 1001, 6:59-
`
`64; Ex. 1003, ¶43. The data needs of a continuous use and an interval service are
`
`thus different.
`
`As a result, the ’196 Patent recognizes that data updates for interval services
`
`may not need to be executed immediately, but can be postponed or batched together.
`
`Ex. 1001, 4:15-22 (“requests by applications requiring intermittent updates may be
`
`postponed and/or batched and not sent during coverage by the less capable network.
`
`Then, during the first coverage configuration when covered by the more capable
`
`network, the interval use devices requiring intermittent updates may request and/or
`
`receive data downloads related to those applications.”); id. at 6:59-64; Ex. 1003,
`
`¶¶45-46. Examples of the types of data updates that could be postponed or batched
`
`include purchased music, apps, books and any other types of data that must be
`
`synced with a mobile device. Ex. 1003, ¶¶44-45; Ex. 1001, 6:59-64, 10:23-35, 11:9-
`
`25.
`
`Because different services have different data needs, the ’196 Patent
`
`contemplates that different coverage configurations could be used to accommodate
`
`devices using different types of services. For example, one network configuration
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`may be more advantageous for a continuous use service while another network
`
`configuration is beneficial for interval use services. The ’196 Patent thus describes
`
`a method for changing coverage configurations for a device. Ex. 1001, 1:22-35; Ex.
`
`1003, ¶¶43-46. In one embodiment, the ’196 Patent describes using different
`
`“beam[s]” to provide coverage depending on the network configuration. Ex. 1001,
`
`1:22-35; Ex. 1003, ¶43. In another proposed embodiment, the different coverage
`
`configurations could include different types of networks. Ex. 1001, 3:51-53 (“the
`
`second coverage configuration may also include coverage by a second type of
`
`network.”); Ex. 1003, ¶43.
`
`By allowing coverage configurations using different networks, the ’196 Patent
`
`allows for more data intensive services, like continuous use services, to be covered
`
`by “more capable” networks. Ex. 1001, 3:54-56; Ex. 1003, ¶¶ 45-46. The ’196 Patent
`
`explains that “a more capable network may provide greater uplink and/or downlink
`
`rates, may be more stable, may be of a more advanced standard, or the like.” Ex.
`
`1001, 9:10-13; Ex. 1003, ¶45.
`
`The ’196 Patent further discloses that many different combinations of
`
`networks can be used together to provide the network coverages, including EDGE,
`
`3G, 4G, and Wi-Max among others. Ex. 1001, 9:10-46; Ex. 1003, ¶45. To take
`
`advantage of the more capable network, the ’196 Patent further discloses deferring
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`some services while on the less capable network, until the electronic device has
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`coverage by the more capable network. Ex. 1001, Fig. 3; Ex. 1003, ¶¶ 45-46.
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`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
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`’196 Patent (Ex. 1001), Fig. 3.
`
`B.
`
`Prosecution History of the ’196 patent
`
`
`
`
`
`The ’196 Patent originated with the filing of U.S. Patent Application No.
`
`13/321,792 (“the ’792 App.”) on November 21, 2011. Ex. 1001, Cover. The ’196
`
`Patent claims ultimate priority to PCT Application No. PCT/US2011/049003, which
`
`was filed on August 24, 2011. Id. The Patentee also petitioned to join the Patent
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`Prosecution Highway program based on the PCT application, which was granted on
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`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
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`March 7, 2012. Ex. 1002 at 69.
`
`After joining the Patent Prosecution Highway program, the ’196 Patent had a
`
`very brief prosecution history. The examiner first issued a Non-Final Rejection of
`
`all claims on November 21, 2012, focused on a single obviousness combination,
`
`rejecting all claims under 35 U.S.C. § 103(a) as unpatentable over Vendryes (U.S.
`
`Patent No. 6,546,259) in view of Gale et al. (U.S. Patent App. Pub. No.
`
`2011/0223925). Ex. 1002 at 164-70. The Non-Final Rejection focused the majority
`
`of discussion on the first independent claim, with the only discussion of the
`
`challenged claims (23-27) being that “[c]laims 14-27 incorporate the limitations of
`
`claims 1-13, and are therefore rejected for the same reasons as claims 1-13.”
`
`Ex. 1002 at 169; Ex. 1003, ¶49.
`
`With regard to the challenged claims, the applicant did not submit an
`
`amendment. Instead, the applicant distinguished independent claim 23 (and
`
`dependent claims 24-27) from the prior art because claim 23 required “in part
`
`‘transmitting a data update request in response to coverage by a second network,
`
`wherein the second network is a more capable network than the first network.”
`
`Ex. 1002 at 198; Ex. 1003, ¶50. The examiner then allowed all claims, with claims
`
`23-27 not receiving any substantive rejections or discussion. Ex. 1002 at 213-14; Ex.
`
`1003, ¶50.
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`VI. CLAIM CONSTRUCTION
`
`In an inter partes review, claims are “construed using the same claim
`
`construction standard that would be used to construe the claim in a civil action under
`
`35 U.S.C. 282(b).” 37 C.F.R. 42.100(b) §42.100(b). When a trial is instituted, claim
`
`terms must be given their plain ordinary and customary meaning as understood by a
`
`POSITA during the relevant timeframe in light of the specification and the
`
`prosecution history. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir.
`
`2015) (en banc); see 83 Fed. Reg. 51340.
`
`Claim 23 requires “wherein the second network is a more capable network
`
`than the first network.” Ex. 1001, cl. 23. “More capable” is a term of degree.
`
`However, the prior art discloses a first and second network combination coextensive
`
`with the examples given in the 196 Patent specification. For example, the ’196 Patent
`
`describes “a more capable network may provide greater uplink and/or downlink
`
`rates, may be more stable, may be of a more advanced standard, or the like.” Ex.
`
`1001, 9:10-13; Ex. 1003, ¶53. The prior art disclosure is consistent with these
`
`examples. Thus, while Petitioners do not take a position as to the definiteness of the
`
`full scope of this limitation, it is unnecessary for the Board to determine whether the
`
`full scope of the claims are definite. See, e.g., Mylan Pharms. Inc. v. Horizon
`
`Pharma USA, IPR2017-01995, Paper 72 at 5-6 (Mar. 28, 2019) (“[W]e need not
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`necessarily determine the outer boundaries of a claim in reaching a conclusion as to
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`whether the asserted prior art anticipates a claim or renders it obvious.”).
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`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
`
`VII. OVERVIEW OF THE PRIOR ART
`
`A. Chang (Ex. 1004)
`
`Chang issued on November 28, 2017, from U.S. Patent Application No.
`
`13/171,253, which was filed on June 28, 2011. Ex. 1004, Cover; Ex. 1003, ¶55.
`
`Chang also claims priority to U.S. Provisional Patent Application No. 61/451,057,
`
`which was filed on March 9, 2011. Ex. 1004, Cover; Ex. 1003, ¶¶55, 104-5. Chang
`
`is prior art to the ’196 Patent under at least 35 U.S.C. § 102(e) (pre-AIA). The
`
`inventors assigned their interest in Chang to Apple Inc. Ex. 1004, Cover.
`
`Chang discloses “[i]mproved techniques and systems for delivery and
`
`acquisition of digital assets . . . that are available for acquisition and electronic
`
`delivery from online stores to electronic devices” where “digital assets” include
`
`“various types of media related items (e.g., musical albums, songs, movies, audio,
`
`video,
`
`textual content, books) as well as various application programs
`
`(‘applications’) that can be provided for electronic devices.” Ex. 1004, Abstract,
`
`4:53-58; Ex. 1003, ¶56.
`
`Chang, like the ’196 Patent, discloses methods for limiting data updates
`
`depending on the coverage configuration (e.g., data updates only occur over specific
`
`networks, such as Wi-Fi). Ex. 1001, 3:51-56; Ex. 1004, 13:41-56; Ex. 1003, ¶¶57-
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`58. For example, Chang discloses that, in certain configurations, digital assets are
`
`automatically downloaded when purchased by a user. Ex. 1004, 1:60-67. Chang,
`
`however, discloses that the automatic downloads can be deferred if particular
`
`network conditions are not met. Ex. 1004, 11:53-57, 13:12-16, 13:41-56. For
`
`example, even if a user purchases a digital asset and has automatic downloading
`
`enabled, the automatic download might not occur if the target device is not
`
`connected to the correct network type, network connectivity is poor, and/or a
`
`minimum network bandwidth is not met. Ex. 1004, 11:53-57, 13:12-16, 13:41-56.
`
`In addition to the identified criteria for delaying automatic downloads, Chang
`
`particularly identifies a proposed embodiment that describes providing a user
`
`interface through which the user can choose whether to automatically download
`
`digital assets over Wi-Fi networks only, or instead also allow for automatic
`
`downloads to occur over cellular networks. Ex. 1004, Fig. 9 (below).
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`Chang (Ex. 1004), Fig. 9 (annotated).
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`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
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`VIII. GROUND OF REJECTION
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`A. Ground 1: Claims 23-27 are obvious in view of Chang
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`1.
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`Independent Claim 23
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`(a)
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`[23.0] A method for a device to receive data updates
`comprising:
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`Chang renders obvious “[a] method for a device to receive data updates.” Ex.
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`1003, ¶¶60-67.
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`Chang discloses “[i]mproved techniques and systems for delivery and
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`acquisition of digital assets” where “[t]he techniques and systems are especially
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`suitable and useful for delivering digital assets (e.g., media assets) that are available
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`for acquisition and electronic delivery from online stores to electronic devices.” Ex.
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`1004, Abstract; Ex. 1003, ¶60. Chang defines “digital assets” as including “various
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`types of media related items (e.g., musical albums, songs, movies, audio, video,
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`textual content, books) as well as various application programs (“applications”) that
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`can be provided for electronic devices (e.g., productivity products, games, computer
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`applications for computing devices).” Ex. 1004, 4:53-58 (emphasis added); Ex.
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`1003, ¶60.
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`Chang proposes a method for delivering these digital assets that includes
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`“automatically download[ing] a digital asset when it receives a notification (e.g., a
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`push notification) directly or indirectly via an online store server.” Ex. 1004, 4:32-
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`38; Ex. 1003, ¶61. The automatic downloading can also be limited, for example, by
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`allowing “the user to select whether the automatic downloads should take place via
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`a cellular network (which may have a data transfer fee).” Ex. 1004, 13:41-56, Fig.
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`9. Chang goes on to state, “If the selectable option is set to ‘off’, then automatic
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`download will only occur when the electronic device is connected to a Wi-Fi
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`connection.” Ex. 1004, 13:41-56, Fig. 9; Ex. 1003, ¶61. Chang also provides a user
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`interface to select between allowing Wi-Fi only automatic downloads, or also
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`allowing automatic downloads on cellular networks as well. Id.
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`Chang (Ex. 1004), Fig. 9 (annotated).
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`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
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`The ’196 Patent describes data updates as being sent for interval use services
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`such as “social networking applications, email, Really Simple Syndication (RSS)
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`feeds, map updates, game update, sports score update, or the like. In such examples,
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`the interval use device may be able to wait for data updates, feeds, or the like.”
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`Ex. 1001, 6:59-64; Ex. 1003, ¶62. The ’196 Patent also notes that data updates can
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`be for a single application or multiple applications. Ex. 1001, 11:4-7; Ex. 1003, ¶62.
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`A POSITA would have understood the data updates disclosed in the ’196 Patent to
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`describe any data that needs to be pushed to the device to ensure that the mobile
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`device is up to date, including the specifically enumerated types of data described
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`above. Ex. 1001, 4:15-22 (“the interval use devices requiring intermittent updates
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`may request and/or receive data downloads related to those applications.”); id. at
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`6:59-64; Ex. 1003, ¶62. Likewise, purchased music, apps, books and any other types
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`of data that must be synced with a mobile device would also be considered “data
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`updates,” because they are data updates for the supporting application. Ex. 1003,
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`¶62; Ex. 1001, 6:59-64, 10:23-35, 11:9-25. Thus, for example, Chang describes
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`foregoing automatic downloading of “books” if the “book reading/presenting
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`application has been uninstalled.” Ex. 1004, 15:12-22; Ex. 1003, ¶65. It should also
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`be noted that in the district court case Patent Owner likewise asserts that application
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`updates and software updates meet the “data updates” limitation of element [23.0].
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`Ex. 1008 at 3-7; Ex. 1003, ¶63.
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`Both Chang and the ’196 Patent are related to mobile device applications, and
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`transmitting data related to those applications. Ex. 1003, ¶64. A POSITA would have
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`understood the digital assets of Chang to comprise the data updates of the ’196
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`Patent, as both describe data that needs to be sent to the mobile device. Ex. 1003,
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`¶64; Ex. 1001, 11:4-7; Ex. 1008 at 3-7; Ex. 1004, 1:23-24, 4:53-58. Chang expressly
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`discusses transmitting data related to applications, and further discloses that the
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`required version of the application will be checked before transmission, so that “a
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`new or revised version of an asset can be effectively automatically downloaded if
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`available at the time the download takes place.” Ex. 1004, 14:52-55; Ex. 1003, ¶¶65-
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`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
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`66.
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`Chang also discloses requiring “determining an appropriate type, version
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`and/or format [of the digital asset] to be delivered to a particular electronic device.”
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`Ex. 1004, 11:35-44; Ex. 1003, ¶¶65-66. This information can be used to create
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`automatic download configuration user interfaces which are dependent on the
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`particular versions and types of applications supported by a given mobile device.
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`Ex. 1003, ¶65; Ex. 1004, 13:3-18. The identified version of a digital asset can also
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`be used to make sure the mobile device is receiving the most up-to-date digital asset.
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`Ex. 1003, ¶¶65-67; Ex. 1004, 14:52-55.
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`Therefore, Chang discloses evaluating the current version of a digital asset to
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`be transmitted and sending a “new or revised version” of the digital asset if available,
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`which a POSITA would have understood to include updated versions of each digital
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`asset. Id. Taking Patent Owner’s view that at least application updates and software
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`updates are “data updates” as argued in its infringement contentions, Chang
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`expressly discloses these same updates. Ex. 1003, ¶¶63-67; Ex. 1004, 11:35-44,
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`14:52-60; Ex. 1008 at 3-7.
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`It also would have been obvious to a POSITA that the “appropriate . . . version
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`[of a digital asset] to be delivered” and installed would constitute a “new or revised
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`version” of an older digital asset already installed on the device. Ex. 1004, 11:35-
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`44, 14:52-55; Ex. 1003, ¶67. A POSITA would be motivated to deliver and install
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`the most up-to-date version of a digital asset in order to improve user experience,
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`such as providing improvements, new features, or bug fixes to the older digital asset.
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`Ex. 1003, ¶67. Indeed, Chang does not disclose foregoing the delivery and
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`installation of “new or revised version[s]” of digital assets if the device contains an
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`older version of the digital asset. Id. Thus, no modification to Chang’s system is
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`necessary in order to deliver updated versions of assets already installed on a user
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`device. Id. Thus, a POSITA would have reasonably expected the provision of such
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`data updates to succeed. Id.
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`Chang also discusses automatically downloading purchases to new devices,
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`where it would have been obvious to a POSITA that Chang would check the version
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`of the digital assets to be transmitted and make sure the most recent version is sent.
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`Ex. 1003, ¶67; Ex. 1004, 8:57-64. It would also have been obvious to a POSITA that
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`checking the current version of a digital asset and sending the newest version to a
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`new electronic device would be equally applicable to electronic devices that have
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`received previous versions of the digital asset. Ex. 1003, ¶67. Thus, Chang renders
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`obvious the elements of [23.0].
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`(b)
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`[23.1] cycling over time through an update sequence
`that includes:
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`Chang renders obvious “cycling over time through an update sequence.” Ex.
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`1003, ¶¶68-73. Specifically, the proposed method 600 of Chang is cycled over time
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`to provide automatic download of digital assets to an electronic device. Ex. 1003,
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`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
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`¶¶68-69.
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`First, method 600 continuously evaluates whether a digital asset (data update)
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`has been purchased that requires automatic download. See Ex. 1003, ¶¶68-69; Ex.
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`1004, Fig. 6 at 602.
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`Chang (Ex. 1004), Fig. 6 (annotated).
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`Petition for Inter Partes Review
`U.S. Patent No. 8,554,196
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`Method 600 will continue to cycle through the first step 602 to check whether
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`a digital asset has been purchased and whether the content needs to be provided to
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`the mobile device. Id. If no digital asset is purchased, the method will return to the
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`start of the sequence. Id. Chang also discloses that method 600 can be cycled for a
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`given period of time. Ex. 1003, ¶69; Ex. 1004, 11:60-62 (“Method 600 can, for
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`example, end after the arranged automatic downloads have been completed or
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`canceled, or after a determined amount of time has lapsed.”). Thus, Chang expressly
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`discloses cycling over time through an update sequence, as described in element
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`[23.1].
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`Second, Chang discloses that the automatic updates can be sent in only certain
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`scenarios, such as when particular criteria are met. Ex. 1003, ¶70; Ex. 1004, 11:53-
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`57, 13:12-16, 13:41-56. These criteria c