Trials@uspto.gov
`571-272-7822
`
`Paper10
`Entered: June 11, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE,INC.,
`Petitioner,
`
`V.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`IPR2020-00189
`Patent 9,608,968 B2
`
`Before THU A. DANG, KARL D. EASTHOM,and JONI Y. CHANG,
`Administrative Patent Judges.
`
`DANG,Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`35 US.C. $ 314
`
`
`571-272-7822
`
`Paper10
`Entered: June 11, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE,INC.,
`Petitioner,
`
`V.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`IPR2020-00189
`Patent 9,608,968 B2
`
`Before THU A. DANG, KARL D. EASTHOM,and JONI Y. CHANG,
`Administrative Patent Judges.
`
`DANG,Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`35 US.C. $ 314
`
`
`
`IPR2020-00189
`Patent 9,608,968 B2
`
`1. INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1—38 (the “challenged claims”) of U.S. Patent No.
`
`9,608,968 B2 (Ex. 1001, “the ’968 patent”). Paper 2 (“Pet.”). Seven
`
`Networks, LLC (‘Patent Owner”) filed a Preliminary Response. Paper 8
`
`(“Prelim. Resp.”).
`Under 37 C.F.R. § 42.4(a), the Board has authority to determine
`
`whetherto institute an inter partes review. Institution of an inter partes
`
`. the information presented in the
`.
`review maynotbe authorized “unless .
`petition... and any response. .
`. shows that there is a reasonablelikelihood
`that the petitioner would prevail with respectto at least 1 of the claims
`
`challengedin the petition.” 35 U.S.C. § 314(a).
`Uponconsideration of the Petition and the Preliminary Response, we
`are not persuaded Petitioner demonstrated a reasonable likelihood of
`prevailing in establishing unpatentability claims 1-38 of the ’968 patent.
`
`Accordingly,notrial is instituted.
`
`B. Related Matters
`
`Petitioner identifies the °968 patent as the subject of SEVEN
`
`Networks, LLC v. Apple Inc., 2:19-cv-00115 (E.D. Tex.). Pet. 66. Petitioner
`
`also concurrently challenges claims of the 968 patent in IPR2020-00188.
`
`Td.
`
`C. The ’968 Patent
`
`The 968 patent, titled “Connection Architecture for a Mobile
`
`Network,” issued on March 28, 2017, from an application filed on February
`
`17, 2015, which is a continuation of application Ser. No. 11/470,802 filed on
`
`September 7, 2006, now U.S. Patent No. 8,989,728 (“the ’802 application”
`
`bh
`
`
`
`IPR2020-00189
`Patent 9,608,968 B2
`
`or “the parent application”or “the ’728 patent”), which in turn is a
`
`continuation of application Ser. No. 10/339,368 filed on January 8, 2003,
`
`now U.S. Patent No. 7,139,565 (“the ’368 application” or “the grandparent
`
`application” or “the 565 patent”). Ex. 1001, code (54), (45), (22), (63).
`The ’728 patent and the ’565 patent are “incorporated by referencein their
`
`entirety” in the ’968 patent. Jd. at 1:7—-17.
`The °968 patent describes a mobile device for accessing content stored
`
`on a remote server, such as an email server, over a mobile network. See Ex.
`
`1001, Abstract. Anillustration of one embodimentof the ’968 patent’s
`
`connection architecture is depicted in Figure 6, reproduced below:
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`FIGURE 6
`
`Figure 6 shows a connection architecture depicting the synchronization of a
`
`mobile device to an email server. Jd. at 2:19-20.
`
`It may be necessary from timeto time to synchronizea versionofa
`
`user’s local data on a mobile device with the local version on the email
`
`server. Id. at 7:44-47. In one embodiment as shownin Figure 6, mobile
`
`
`
`IPR2020-00189
`Patent 9,608,968 B2
`
`device 21 periodically sends out synchronization requests 134 to personal
`
`client 40. Id. at 7:47-49. Triggers 132 from personal client 40 may be used
`
`to notify mobile device 21 when new emails arrive on email server 34. Id. at
`
`7:54-55. Filters 138 are configured in personal client 40 that identify the
`
`types of emails or events that cause personal client 40 to send triggers 132.
`
`Id. at 7:55-58. If a new email is detected, personal client 40 sendstrigger
`
`132 to mobile device 21 through managementserver 28, and trigger 132
`
`causes mobile device 21 to establish mobile connection 23 with management
`
`server 28 and then send synchronization request transaction 134 to personal
`
`client 40. Id. at 7:62-8:3.
`
`The connection architecture shownin Figure 6 mayalso be used for
`
`providing notification of high priority emails. /d. at 8:38-40. In an
`
`embodiment,filters 138 cause personalclient 40 to look for emails sent from
`
`a particular sender email address, and whenever an email arrives in mailbox
`
`136 from the email address, personal client 40 sends a stripped down version
`
`of that email through managementserver 28 to short-message service center
`
`(“SMSC”) 128, and SMSC 128 in turn sends high priority message 124 to
`
`mobile device 21. Id. at 8:42—53.
`
`D. The ’249 Provisional Application
`
`US. Provisional Application No. 60/403,249 (“the ’249 provisional
`
`application”), filed on August 12, 2002, discloses a products guide for
`
`introducing a user to “SEVEN’s award-winning, mobile software
`
`architecture.” Ex. 1017, 1, 10. Anillustration of one embodimentof the
`
`’249 provisional application’s mobile software architecture is depicted in the
`
`figure, reproduced below:
`
`
`
`IPR2020-00189
`Patent 9,608,968 B2
`
`ENTEAPAISE NETWORK payoa
`
`
`
`OPERATOR NETWORK
`
`GATEWAY ,
`
`=---~ ENTERPRISE EDITION
`
`=-~-~- PERSONAL EDITION
`
`The figure showsreal-time mobile access to enterprise applications. Jd. at
`
`10.
`
`The system enables mobile subscribers to access enterprise
`
`information on smart devices. Id. at 147 (4 PALM CLIENT
`
`FUNCTIONALITY,Mail Functionality). “Subscribers can applyfilters in
`
`order to determine which messages to download from the corporate mail
`
`server.” Id. at 149 (4.18 Mail Filters).
`
`E. The ’881 Provisional Application
`
`U.S. Provisional Application No. 60/346,881 (‘the 881 provisional
`
`application”), filed on January 8, 2002, discloses SEVEN’s General System
`
`Overview,titled, “Addressing the Future of Mobile Data Services.” Ex.
`
`1018, 7-8. “Middleware solutions provide enterprises with software than
`
`translates enterprise applications and data into a format that can be delivered
`
`on mobile devices.” Jd. at 14 (Install and maintain middleware).
`
`F. The ’368 Application (“the Grandparent Application
`
`oo\]
`
`' The ’368 application (Ex. 2001) published as US Patent Publication No.
`2003/0157947 Al (Ex. 1004, “Fiatal”). Petitioner relies upon Fiatal to
`
`5
`
`
`
`IPR2020-00189
`Patent 9,608,968 B2
`
`The 10/339,368 application (“the °368 application” or “the
`
`grandparent application”), titled “Connection Architecture for a Mobile
`
`Network,” was filed on January 8, 2003, now U.S. Patent No. 7,139,565.
`
`Ex. 2001; 1.
`
`The ’368 application describes a real-time communication
`
`architecture that establishes a continuous connection between an enterprise
`
`network and a communication management system, wherein the connection
`
`is continuously held open allowing mobile devices real-time access to
`enterprise data sources such as email systems. Jd. at 2:6-9. Anillustration
`
`of one embodimentof the ’368 application’s connection architecture is
`
`depicted in Figure 6, reproduced below:
`
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`FIGURE 6
`
`Figure 6 shows a connection architecture depicting the synchronization of a
`
`mobile device to an email server. Jd. at 12:23-13:3.
`
`challengeall challenged claims underall groundsset forth in the Petition.
`Pet. 1.
`
`
`
`IPR2020-00189
`Patent 9,608,968 B2
`
`It may be necessary from time to time to synchronize a version of a
`
`user’s local data on a mobile device with the local version on the email
`
`server. Id. at 12:23-24. In one embodiment as shownin Figure 6, mobile
`
`device 21 periodically sends out synchronization requests 134 to personal
`
`client 40. Jd. at 12:24-13:1. Triggers 132 from personal client 40 may be
`
`used to notify mobile device 21 when new emails arrive on email server 34.
`Id. at 13:45. Filters 138 are configured in personalclient 40 that identify
`
`the types of emails or events that cause personal client 40 to send triggers
`
`132. Id. at 13:5-8. If anew emailis detected, personal client 40 sends
`
`trigger 132 to mobile device 21 through managementserver 28, andtrigger
`
`132 causes mobile device 21 to establish mobile connection 23 with
`
`managementserver 28 and then send synchronization request transaction
`
`134 to personalclient 40. Jd. at 13:9-14.
`
`The connection architecture shown in Figure 6 mayalso be usedfor
`
`providing notification of high priority email. Jd. at 14:16-17. In an
`embodiment,filters 138 cause personalclient 40 to look for emails sent from
`
`a particular sender email address, and whenever an emailarrives in mailbox
`136 from the email address, personal client 40 sends a stripped down version
`
`of that email through managementserver 28 to short-message service center
`
`(“SMSC”) 128, and SMSC 128 in turn sends high priority message 124 to
`
`mobile device 21. Jd. at 14:24—25.
`
`
`
`IPR2020-00189
`Patent 9,608,968 B2
`
`G. The 11/470,802 Application (‘the Parent Application”’)
`
`The 11/470,802 application (“the ’802 application”or “the parent
`
`application”), filed on September 7, 2006, published as US Patent
`Publication No. 2007/027832 A1, is a continuation of the ’368 application.
`
`Ex. 1021, code (10), (21), (22), (63). The ’368 application is “incorporated
`by referencein its entirety” in the ’802 application. Jd. { 1.
`
`H. The Challenged Claims
`Ofthe challenged claims, claims 1 and 20 are the independentclaims.
`Claims 2-19, and 21-38 dependrespectively from claims 1 and 20. Claim 1
`
`is illustrative, and is reproduced below:
`
`A server that managestransactions betweenfirst and
`1,
`second devices, the server comprising:
`a communication interface;
`a processor communicatively coupled to the communication
`interface; and
`a memory communicatively coupled to the processor, the
`memory containing instructions executable by the processor whereby
`the server is operable to:
`receive a first connection fromafirst device;
`authenticate the first device overthe first connection;
`receive a first transaction from the first device in
`responseto user input at the first device, wherein thefirst
`connection is maintained independently of the first transaction;
`generate a trigger for a second device based onthefirst
`transaction from the first device, wherein the trigger is pushed
`to the second device;
`after the generation of the trigger for the second device,
`receive a second connection from the second device while the
`first connection is maintained;
`authenticate the second device over the second
`connection,
`wherein thetrigger notifies the second device of new data
`from the first transaction to be received by the second device
`from the server for display to a user; and
`
`
`
`IPR2020-00189
`Patent 9,608,968 B2
`
`send a secondtransaction to the second device using the
`second connection, wherein the second transaction contains the
`new data,
`whereinthe trigger is pushed over a connection different
`from the second connection,
`wherein a third transaction is received by the server in
`response to user input at the second device.
`
`Ex. 1001, 9:42-10:8.
`
`I. Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1-38 of the
`
`’968 patent on the following grounds(Pet. 1—2):
`
`
`
`
`
`
`
`16-19, 35-38
`
`Petitioner relies on the Declaration of Mr. Edward R.Tittel (Ex. 1003)in
`
`Claim(s) Challenged|35 U.S.C. § Reference(s)/Basis
`
`1-8, 10, 14, 15,
`1032
`Fiatal,? Kiss,* Spacey,°
`20-28, 30, 33, 34
`Outlook2000°
`Fiatal, Kiss, Spacey,
`
`
`
`
`11-13,31, 32
`
`Fiatal, Kiss, Spacey,
`Outlook2000, Yamamoto®
`
`Fiatal, Kiss, Spacey,
`
`
`Outlook2000, Stevens’
`
`
`support ofits unpatentability contentions.
`
`* The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the 968 patentis a
`continuation of an application with a filing date of September 7, 2006, which
`is prior to the effective date of the applicable AIA amendments,werefer to
`the pre-AIA version of § 103. See Ex. 1001, code (63).
`3 U.S. Patent Publication No. 2003/0157947 Al, published August 21, 2003,
`filed January 8, 2003 (Ex. 1004,“Fiatal”).
`4U.S. Patent Publication No. 2005/0201320 Al, published September 15,
`2005, filed March 10, 2004 (Ex. 1014, “Kiss”).
`> U.S. Patent Publication No. 2002/0038371 Al, published March 28, 2002,
`filed July 20, 2001 (Ex. 1006, “Spacey”).
`
`9
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`
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`IPR2020-00189
`Patent 9,608,968 B2
`
`II. ANALYSIS.
`
`A.
`
`Claim Construction
`
`Claimsshall be construed using the same claim construction standard
`
`that would be used to construe the claim in a civil action under 35 U.S.C. §
`
`282(b), including construing the claim in accordance with the ordinary and
`
`customary meaning of such claim as understood by oneof ordinary skill in
`
`the art and the prosecution history pertaining to the patent. 37 C.F.R. §
`
`42.100(b) (2018). Thus, we apply the claim construction standard asset
`
`forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`Only termsthat are in controversy need to be construed, and only to
`
`the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
`
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp.v.
`Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir.
`
`2017) (applying Vivid Techs. in the context of an inter partes review).
`In responseto Petitioner’s contention that there is no written
`
`description support for a serverthat receives “a first transaction from the
`
`first device in responseto user inputat the first device” (see Pet. 8-11),
`
`Patent Ownerrespondsthat “‘[u]ser input’ is a broad term.” Prelim. Resp.
`
`17. Accordingly, we determinethat it is necessary to construe “in response
`
`to user input at the first device” to resolve this disputed issue beforeus.
`
`® Bill Dyszel, Microsoft Outlook 2000 For Windows For Dummies,
`published 1999 (Ex. 1016, “Outlook2000”).
`TUS. Patent No. 6,138,158, issued October 24, 2000, filed April 30, 1998
`(Ex. 1007, “Boyle’”’).
`8 U.S. Patent No. 8,326,940 B2, issued December4, 2012, filed December6,
`2004 (Ex. 1005, “Yamamoto”).
`° W. Richard Stevens, TCP/IP Illustrated: The Protocols, Vol. 1, published
`1994 (Ex. 1008, “Stevens”).
`
`
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`IPR2020-00189
`Patent 9,608,968 B2
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`As Patent Ownerpoints out and Petitioner agrees, the Specification of
`
`the ’968 patent “does not specifically define” the term “user input.” Prelim.
`
`Resp. 17; see also Pet. 9. Nevertheless, Patent Owner does not propose any
`
`claim construction for the term, and Petitioner similarly does not propose
`
`any construction but merely asserts that“all terms should be given their
`
`plain meaning.” See generally Prelim. Resp.; Pet. 17.
`Independentclaim 1 of the ’968 patentrecites, in part, that the
`claimed serveris operable to “receive a first transaction from the first device
`
`in response to user input at the first device.” Ex. 1001, 9:52-53. According
`to the Specification of the ’968 patent, in one embodiment,filters 138 are
`configured in personal client 40 to detect when a new emailarrives in the
`user’s mailbox, and if a new emailis detected, personalclient 40 sends
`
`trigger 132 to mobile device 21 through managementserver 28. Jd. at 7:54—
`
`64.
`
`Weconstrue the claims based upon our consideration of those
`descriptions in the Specification and the plain language of independent claim
`1. Claim 1 recites receiving a first transaction from a first device “in
`
`response to user input at the first device,” and thus, we construethe plain
`languageof the claim to encompass, upon detection of a “user input”at a
`first device, receiving a transaction from thefirst device, wherein “input”is
`
`data providedto the first device associated with user.
`
`B. Whether the '968 Patent Can Rely on the Filing Date ofthe
`Grandparent Application (the ’368 Application) as Its Priority Date
`
`Petitioner contendsthat the priority date for the 968 patent “can be no
`
`earlier than its actual filing date, i.e., February 17, 2015.” Pet. 7.
`
`Support In the Parent
`Applications
`
`(?802) and Grandparent
`
`(°368
`
`11
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`IPR2020-00189
`Patent 9,608,968 B2
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`Petitioner contendsthat the disclosures of the ’802 (“‘parent’”) and
`
`°368 (“grandparent”) applications, and even the disclosure of the ’968 patent
`itself, fail to describe features recited in both independent claims 1 and 20 of
`
`the 968 patent. Pet. 7-10. In particular, Petitioner contendsthat the °968
`patent, the ’802 application, and the ’368 applicationfail to disclose 1)
`“receiv[e]/[ing] a first transaction from the first device in response to user
`input at the first device;” and 2) “the trigger notifies the second device of
`new data from thefirst transaction to be received by the second device
`from the server.” Id. (emphasis added by Petitioner). According to
`Petitioner, in the 968 patent, “trigger 132 must correspondtothe recited
`‘first transaction’” because “it is the only disclosed message that is received
`
`at the managementserver 28 (‘server’), and that inspires the SMS message
`126 (‘trigger’) to be pushed to the mobile device 21 (‘second device’).” Jd.
`at 9. However, accordingto Petitioner, “neither the 968 patent, nor any of
`the non-provisional priority applications, disclose that the trigger 132 is
`received bythe server‘in response to user inputat the first device,’”as
`required by independent claims 1 and 10. Jd. at 9. Further, Petitioner
`contends that“only trigger 132 is available as the claimed ‘first
`transaction,” but trigger 132 “does not contain the ‘new data’thatis
`subsequently sent to the mobile device 21 (‘second device’),” as required by
`
`claims | and 20. /d. at 10.
`
`Patent Ownerarguesthat “the grandparent application more than
`sufficiently describes the subject matter ofthe independent claims, including
`all features alleged to be missing from the disclosure.” Prelim. Resp. 16.
`According to Patent Owner,““[u]ser input’ is a broad term in the context of
`the 968 patent,” wherein “[t]he patent’s descriptionoffilters 138 adequately
`supports the recited ‘user inputat the first device.’” Jd. at 17. In particular,
`
`12~
`
`
`
`IPR2020-00189
`Patent 9,608,968 B2
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`“(t]he grandparent application teachesthat the filters 138 ‘are configured in
`the personal client 40 [on PC 38]that identify the types of emails or other
`types of events that cause the mobile device 21 to send a trigger 132.’” Id.
`(citing Ex. 2001, 14:5-6). Patent Owner also contendsthat the grandparent
`application discloses an architecture that “‘can also be used for providing
`notification of high priority emails,” wherein “managementserver 28
`receives a ‘stripped downversion of the email’ from PC 38/40(thefirst
`device) which contains new data... that is subsequently transmitted from
`managementserver 28 (the server) to mobile device 24 (second device).”
`
`Id. at 21-22 (quoting Ex. 2001, 15:16—-17).
`a. Principles of Law Regarding ClaimsofPriority to the
`Non-Provisional (Parent and Grandparent) Applications
`
`Entitlementto priority under 35 U.S.C. § 120 “is a matter of law, and
`receives plenary review on appeal.” Jn re Daniels, 144 F.3d 1452, 1455
`(Fed. Cir. 1998). Whether an earlier-filed application possessessufficient
`written description to qualify it as a priority documentoris instead
`invalidating priorart is a fact-finding to be reviewed “for substantial
`evidence.” Hologic, Inc. v. Smith & Nephew,Inc., 884 F.3d 1357, 1361
`(Fed. Cir. 2018) (aff?g PTAB that ancestor PCT hadsufficient written
`description for claims). Continuing applications can only receivethe benefit
`of an earlier-filed parent application if that parent fully supports the claims.
`If not supported in the parent application, “fundamentalfairness requires that
`claims to new matter receive, at best, the filing date of the continuing
`
`application.” Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366,
`1383 (Fed. Cir. 2009)(interference context; no single embodiment had each
`
`claim limitation).
`
`13
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`IPR2020-00189
`Patent 9,608,968 B2
`
`“A patent must contain a specific reference to eachprior-filed
`application to be entitled to those applications’ earlier filing dates.”
`Droplets, Inc. v. E*Trade Bank, 887 F.3d 1309, 1322 (Fed.Cir. 2018)(aff’g
`PTAB thatpriority claim to only immediately preceding parent butnotits
`earlier ancestor applications necessary to reach back to provisional, failed
`“specific reference” requirement of 37 C.F.R. § 1.78, despite incorporation
`by reference of that immediate parent which hadcorrectpriority claim back
`to provisional and despite cross reference to that provisional; and aff’g
`obviousnessof claims over ancestor application publication). 35 U.S.C.
`§ 120 places the burden on the patent ownerto provide a “clear, unbroken
`
`chain ofpriority.” Id.
`Althoughthe written description requirement does not require the
`applicant “to describe exactly the subject matter claimed” (in re Gosteli, 872
`F.2d 1008, 1012 (Fed. Cir. 1989)), the application “must describe the later
`claimed invention ‘in sufficient detail that one skilled in the art can clearly
`
`conclude that the inventor invented the claimed invention as ofthe filing
`
`date sought.’” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1331
`(Fed. Cir. 2008), citing to Lockwood v. Am Airlines, Inc., 107 F.3d 1565,
`
`1572 (Fed. Cir. 1997).
`
`b. Whether the Parent Application and Grandparent
`Application Provide Support for the Claim Limitation
`“receiving a first transaction from thefirst device in
`responseto user inputat the first device” (Independent
`claims 1 and 20)
`
`Although Petitioner contendsthat neither the ’968 patent nor any of
`the non-provisional applications, such as the parent applicationor the
`grandparentapplication, discloses a “first transaction”that is received bythe
`server “in response to userinputat the first device” (Pet. 9), we are
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`unpersuaded. In particular, we are unpersuaded by Petitioner’s contention
`that, because the ’968 patent (and thus the parent and grandparent
`
`applications, which are “incorporated by reference in their entirety” (see Ex.
`1001, 1:7—17)) uses filters 138, personal client 40 “automatically” generates
`
`trigger 132, andthus,trigger 132 is “never described as being generated ‘in
`
`responseto user input’ at PC 38 (‘first device’).” Jd.
`Weagree with Patent Owner’s contention that “user input” is a broad
`term. Prelim. Resp. 17. In the embodimentset forth in the Specification of
`
`the grandparent application and the parent application (which incorporates
`the grandparent application by reference (see Ex. 1021 { 1)), referenced by
`Patent Owner, filters 138 configured in personal client 40 detect when a new
`
`email arrives in the user’s mailbox, and if a new email is detected, the
`
`personalclient 40 sendstrigger 132 to mobile device 21 through
`managementserver 28. Ex. 2001, 13:4-14. As discussed above in Section
`II(A), given the ordinary and customary meaning in consideration of the
`Specification as well as the plain language of claims, we construe the
`claims’ “user input” to encompassreceiving trigger 132 from PC 38 of
`personalclient 40 upon detection of data providedat client 40 associated
`
`with a user.
`
`As Patent Ownerpoints out, the grandparent application teaches that,
`
`in the embodimentreferenced,“filters 138 may cause the personal client 40
`
`to look for any emails sent from a particular sender email address.” Prelim.
`
`Resp. 17; see Ex. 2001, 14:17—20. Like the ’968 patent, the grandparent
`application disclosesthat, if a new email from a particular sender email
`address is detected at personal client 40, personal client 40 sendstrigger 132
`
`to the mobile device 21 through the managementserver 28. See Ex. 2001,
`
`13:9-14. Thatis, the grandparent application discloses that trigger 132 from
`
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`personalclient 40 is provided upon detection of an email being detected at
`
`client 40, wherein the email is associated with a particular user email
`
`address. Jd. On this record, we are persuaded by Patent Owner’s contention
`
`that the evidence showsthat the grandparent application and the parent
`
`application provide written description support for “receivinga first
`
`transaction from the first device in response to user input at the first device”
`
`of independent claims 1 and 20.
`
`c. Whether the Parent Application and Grandparent
`Application Provide Support for the Claim Limitation
`“the trigger notifies the second device of new data from
`the first transaction to be received by the second device
`from the server” (Independent claims 1 and 20)
`
`Weare also unpersuadedby Petitioner’s contention that the claim
`
`limitation “the trigger notifies the second device of new data from thefirst
`
`transaction to be received by the second device from the server”is not
`
`supported in the non-provisional applications, such as the parent application
`
`or grandparent application. Pet. 9-10 (emphasis omitted).
`
`Petitioner contends that “claim 1 was written to require that the ‘first
`
`transaction’ which is sent from the first device to the server includes the
`
`‘new data,’” wherein “when the second device later connects to the server
`
`after generation ofthe trigger, the server sends the ‘new data from thefirst
`
`transaction’ to the second device.” Pet. 10 (citing Ex. 1001, 10:1—3).
`However, we are unpersuaded by Petitioner’s contention that “the °968
`patent and non-provisionalpriority applications fail to disclose a ‘first
`
`transaction’ that contains ‘new data’ as claimed.” Jd. Here, Petitioner
`
`assumestrigger 132 as the claimed“first transaction” in the ’968 patent, and
`
`contendsthat trigger 132 is “a message with no payload,” and “does not
`
`contain the ‘new data’ that is subsequently sent to the mobile device 21
`
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`(‘second device’).” Jd. (citing Ex. 1001, 7:64-67). But, as Petitioner also
`acknowledges, the ’968 patent discloses sending a “stripped-down”high-
`
`priority email to the mobile device, wherein that stripped-down email may
`be considered by Patent Ownerasa “first transaction” containing “new
`
`data.” Id. at 11 (citing Ex. 1001, 8:54~—56). In fact, in its Preliminary
`
`Response, Patent Owner does contendthat, as shownin the Figure 6
`embodimentof the 968 patent, as supported in the grandparent application,
`“management server 28 receives a ‘stripped down version of the email’ from
`PC 38/40 (the first device) which contains new data... that is subsequently
`transmitted from managementserver 28 (the server) to mobile device 24 (the
`
`second device) when it receivesthe fuller high-priority email after
`synchronization.” Prelim. Resp. 21-22 (citing Ex. 2001, Fig.6).
`Although Petitioner contendsthat the stripped-down high-priority
`email “is not a message that causes the server to generate a trigger for the
`mobile device 21 (‘second device’),” and thus cannot be the claimed “first
`transaction”(Pet. 11), we are not persuaded. As Patent Owner contends,in
`the grandparentapplication and the parent application (which incorporates
`the grandparent application by reference (see Ex. 1021 § 1), “[t]he server
`(managementserver 28) generates a trigger (high-priority message 124)
`based onthe first transaction that includes the ‘stripped downversion’ ofthe
`
`high-priority email from thefirst device (PC 38/40),” wherein “the trigger
`(message 124) is pushed to the second device (mobile device 21).” Prelim.
`
`Resp. 30 (citing Ex. 2001, 15:21—25). That is, according to Patent Owner,
`“the trigger (message 124) notifies the second device (mobile device 21) of
`
`new data (including ‘the sender, time, date, ...’) from the first transaction
`(including the ‘stripped downversion’ ofthe high-priority email) to be
`
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`received by the second device (mobile device 21) from the server
`
`(managementserver 28).” Id. at 30-31 (citing Ex. 2001, 15:21—25).
`Onthis record, we are persuaded by Patent Owner’s contention that
`
`the evidence showsthat the grandparent application and the parent
`
`application also provide written description support for “the trigger notifies
`the second device of new data from the first transaction to be received by the
`
`second device from the server.”
`
`d. Whether There is a Clear, Unbroken Chain ofPriority
`from the Grandparent Application
`
`Wefind that there is a “clear, unbroken chain ofpriority” from the
`
`grandparentapplication to the ’968 patent. See Droplets, 887 F.3d at 1317.
`In particular, the °968 patent claims priority from the parent application
`(now “the ’728 patent”) and the grandparent application (now “the *565
`patent”). See Ex. 1001, code (63). In the 968 patent, the parent and
`grandparent Applications are “incorporated by referencein their entirety.”
`Id. at 1:7-17. The parent application (also “the ’802 application”) in turn
`claimspriority to the grandparent application (also “the °368 application”),
`wherein the grandparent Application is “incorporated by referenceinits
`
`entirety” in the parent Application. See Ex. 1021, code (63), { 1.
`
`Onthis record, the ’968 patent does contain a “specific reference”
`
`requirement of 37 C.F.R. § 1.78 to each ofthe prior-filed parent and
`
`grandparent application, andis entitled to the parent’s and grandparent’s
`earlier filing dates. Thus, the grandparent application as well as the parent
`
`application do support a priority date prior to the ’968 patent’s filing date of
`
`February 17, 2015 for claim 1.
`
`Therefore, based on the totality of the circumstances, we determine
`
`that Petitioner has not sufficiently shown that the filing date of January 8,
`
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`2003 of the grandparent application cannot be the priority date of the 968
`
`patent.
`
`2. Support In the ’249 and the ’881 Provisional Applications
`
`Petitioner also contendsthat, although the ’968 patent claimspriority
`
`to a pair of provisional applications (the ’249 and the ’881 provisional
`applications), neither provisional application “can legitimately be relied
`
`upon”written description support. Pet. 12. However, as Patent Owner
`points out, “[i]t is unnecessary to confront the question whether the
`provisional applications provide an independentbasis for antedatingFiatal,
`for the simple reasonthat, as already explained above, the grandparent
`
`application does.” Prelim. Resp. 52
`Weagree with Patent Owner. Asdiscussed above, we are persuaded
`by Patent Owner’s argumentsthat the °968 patent is entitled to the priority
`date of the grandparentapplication of January 8, 2003, through the parent
`application. With the benefit of the priority date of January 8, 2003, the
`°968 patent predates Fiatal. Accordingly, based on the record before us, we
`are unpersuadedthat Fiatal is prior art. Therefore, it is unnecessary for usto
`determine whetherthe provisions applications provide written description
`
`support for the claims of the ’968 patent.
`
`C. Whether Claims 1-38 of the 968 Patent Would Have Been
`Obvious over Fiatal, Kiss, Spacey, and Outlook2000 (in view ofBoyle,
`Yamamoto, or Stevens).
`
`Petitioner contends that claims 1-8, 10, 14, 15, 20-28, 30, 33, and 34
`
`of the 968 patent would have been obvious overFiatal, Kiss, Spacey, and
`
`Outlook2000 (Pet. 18-49); claims 9 and 29 would have been obviousover
`
`Fiatal, Kiss, Spacey, Outlook2000, and Boyle (Pet. 49-53); claims 11-13,
`
`31, and 32 would have been obviousoverFiatal, Kiss, Spacey,
`
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`Outlook2000, and Yamamoto (Pet. 53—58); and claims 16-19, and 35-38
`
`would have been obvious overFiatal, Kiss, Spacey, and Outlook2000, and
`
`Stevens (Pet. 59-66). However, Patent Owner contendsthat the priority
`
`date of the 968 patent predates the publication date of the primary reference
`
`to Fiatal relied on by Petitioner for all grounds. Prelim Resp. 9-48. In
`
`particular, according to Patent Owner,“the grandparent application’s filing
`date necessarily predates Fiatal’s publication date.” Jd. at 11.
`
`1. Fiatal
`
`Fiatal, titled “Connection Architecture for a Mobile Network,”
`
`published on August 21, 2003, as U.S. Patent Publication No. 2003/0157947
`
`Al. Ex. 1004, code (54), (43), (10).
`
`2. Fiatal as Prior Art
`
`Asdiscussed abovein section II(B)(1), we are persuaded by Patent
`
`Owner’s argumentsthat the ’968 patent is entitled to the priority date of the
`grandparent application of January 8, 2003. With the benefit of the priority
`date of January 8, 2003, the ’96
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