throbber
Paper No. 11
`
`
`Trials@uspto.gov
` Entered: August 22, 2016
`
`
`571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD.,
`and SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`
`Case IPR2016-00616
`Patent 7,149,511 B1
`
`Before JUSTIN T. ARBES, PATRICK R. SCANLON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
`America, Inc. (collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–10 and 58–65 of U.S. Patent
`No. 7,149,511 B1 (Ex. 1001, “the ’511 patent”) pursuant to 35 U.S.C.
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`§§ 311–19. Patent Owner, Rosetta-Wireless Corporation (“Rosetta”), filed a
`Preliminary Response. Paper 7 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), the Director may not authorize an inter
`partes review unless the information in the petition and preliminary response
`“shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” For the
`reasons that follow, we institute an inter partes review as to claims 1–6, 8–
`10, 58–63, and 65 of the ’511 patent on the asserted ground of
`unpatentability presented.
`
`
`
`I. BACKGROUND
`
`Related Proceedings
`A.
`Both parties identify the following proceedings related to the ’511
`
`patent (Pet. 1–2; Paper 6, 2):
`Rosetta-Wireless Corp. v. Apple Inc., No. 1:15-cv-00799 (N.D. Ill.,
`filed Jan. 27, 2015);
`Rosetta-Wireless Corp. v. High Tech Computer Corp., No. 1:15-cv-
`10603 (N.D. Ill., filed Nov. 24, 2015);
`Rosetta-Wireless Corp. v. Samsung Elecs. Co., Ltd., No. 1:15-cv-
`10605 (N.D. Ill., filed Nov. 24, 2015);
`Rosetta-Wireless Corp. v. LG Electronics Co., No. 1:15-cv-10608
`(N.D. Ill., filed Nov. 24, 2015); and
`Rosetta-Wireless Corp. v. Motorola Mobility LLC, No. 1:15-cv-10611
`(N.D. Ill., filed Nov. 24, 2015).
`Petitioner has filed another petition for inter partes review of the ’511
`patent in co-pending Case IPR2016-00622.
`
`2
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`IPR2016-00616
`Patent 7,149,511 B1
`
`B.
`
`The ’511 patent
`The ’511 patent is directed to “a wireless intelligent personal server
`that receives data transmitted over a wireless communications channel and
`automatically processes it so as to maintain a copy of at least one electronic
`file stored in a source computer.” Ex. 1001, 1:8–12. Figure 1 of the ’511
`patent is reproduced below.
`
`
`Figure 1 depicts wireless communication system 10 having enterprise
`information technology (IT) system 12 connected to one or more personal
`computers 14 and centralized enterprise database 16. Id. at 3:62–4:6.
`Enterprise IT system 12 uses wireless network management system 29 to
`communicate with first wireless network 20 and second wireless network 22
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`via intermediate network 28, which may be a wide-area network (WAN) or a
`local-area network (LAN). Id. at 4:34–41.
`Wireless intelligent personal server (WIPS) 30 receives and stores
`data wirelessly transmitted over downstream channel 34 by first wireless
`network 20. Id. at 4:44–46, 5:35–36. WIPS 30 can use the received data to
`either update one or more of the files stored in its memory or to add a new
`file to its memory. Id. at 5:41–44. WIPS 30 also may transmit signals to
`second wireless network 22 over upstream channel 26. Id. at 6:16–21.
`Moreover, WIPS 30 is able to transfer data stored in its memory to and from
`different types of display devices 32 on an intermittent basis. Id. at 4:48–50.
`Display device 32, which may be a desktop PC or a personal digital
`assistant (PDA), interfaces with WIPS 30 to display data stored in WIPS 30.
`Id. at 4:55–67. This is accomplished by WIPS 30 copying requested data
`and transmitting it to display device 32. Id. at 9:64–10:8. Applications
`running on display device 32 also may allow a user to modify data stored in
`WIPS 30. Id. at 4:55–67; 8:39–41; 10:9–16.
`The patent application that issued as the ’511 patent was filed on
`August 31, 2000. Id. at 1.
`
`
`C.
`
`Claim 1
`Claims 1 and 58 of the ’511 patent are independent and have been
`amended by Ex Parte Reexamination Certificate US 7,149,511 C1, dated
`Jan. 10, 2012. Ex. 1001, 16–17 (certificate issued from Reexamination
`
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`server,
`
`Control No. 90/011,569).1 The remaining claims have not been amended.
`Claims 2–10 directly or indirectly depend from claim 1, and claims 59–65
`directly or indirectly depend from claim 58. Claim 1 is illustrative of the
`challenged claims and recites:
`1.
`A wireless
`intelligent personal network
`comprising:
`a radio frequency (RF) receiver for receiving downstream
`data transmitted over a first wireless communications channel;
`a memory;
`a central processing unit (CPU);
`a set of embedded machine language instructions within
`said personal network server, said set of embedded machine
`language instructions being executable by said CPU for
`processing said downstream data to provide at least one
`electronic file in said memory; and
`a first interface for allowing an application on an external
`display device to pick and open said at least one electronic file
`while said at least one electronic file remains resident on said
`personal network server, wherein said personal network server is
`hand-portable.
`Ex. 1001, 17 (1:21–2:9). Claim 58 only differs from claim 1 insofar as the
`word “receiver” in “radio frequency (RF) receiver” is replaced with
`“transceiver.” Id. at 17 (2:12).
`
`The Prior Art
`Petitioner relies on the following prior art:
`
`D.
`
`
`1 The ’511 patent also was the subject of a request for ex parte
`reexamination in Reexamination Control No. 90/011,418, which was
`terminated.
`
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`F.
`
`E.
`
`Kimura et al., U.S. Patent No. 5,864,853, filed Sept. 14,
`1995, issued Jan. 26, 1999 (Ex. 1004, “Kimura”).
`
`The Asserted Ground
`Petitioner challenges claims 1–10 and 58–65 of the ’511 patent under
`35 U.S.C. § 103(a) as unpatentable over Kimura. Pet. 8.
`
`Claim Interpretation
`In an inter partes review, we construe claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`Under the broadest reasonable interpretation standard, and absent any
`special definitions, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech. Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or
`phrases must be set forth “with reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`For purposes of this Decision, and based on the current record, we
`construe the challenged claims as follows.
`
`1. Whether the Preambles of Independent Claims 1 and 58 are
`Limiting
`The preambles of independent claims 1 and 58 both recite “[a]
`wireless intelligent personal network server.” Ex. 1001, 17 (1:21, 2:10).
`The parties’ arguments compel us to consider whether the preambles limit
`the invention.
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`“In general, a preamble limits the invention if it recites essential
`structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
`the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
`801, 808 (Fed. Cir. 2002) (citations omitted). “Conversely, a preamble is
`not limiting ‘where a patentee defines a structurally complete invention in
`the claim body and uses the preamble only to state a purpose or intended use
`for the invention.’” Id. (citations omitted).
`Rosetta argues that “each challenged claim references the ‘personal
`network server’ of the preamble within the [body of the] claim, and therefore
`relies on the preamble language for antecedent basis.” Prelim. Resp. 27–28.
`Petitioner does not take a position on whether this language is limiting, and
`it offers a construction of “network server” only “[t]o the extent [Rosetta]
`argues that the preamble is limiting.” Pet. 10. We agree with Rosetta that
`the preambles are limiting based on the use of “personal network server” in
`the bodies of claims 1 and 58. See Eaton Corp. v. Rockwell Int’l Corp., 323
`F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the body of the
`claim rely upon and derive antecedent basis from the preamble, then the
`preamble may act as a necessary component of the claimed invention.”).
`
`“Intelligent” and “Personal Network Server”
`2.
`Having determined that the preamble is limiting, we now consider
`whether the words of the preamble require further interpretation. Petitioner
`proposes that we construe “network server” as “a computer that shares data
`and/or files with at least one other connected computer.” Pet. 10. Petitioner
`contends “such an interpretation of ‘network server’ would encompass the
`broad range of network functionality that the [’]511 Patent discloses as
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`belonging to its WIPS.” Id. (citing, inter alia, Ex. 1001, 3:62–4:54)
`(emphasis omitted). As supported by the testimony of William H.
`Mangione-Smith, Ph.D., Rosetta proposes that we construe “personal
`network server” to mean “a device configured to be interposed between a
`source server and an external display device that provides source server data
`locally to a user.” Prelim. Resp. 23 (citing Ex. 2001 ¶ 34). Rosetta contends
`this construction reflects “the nature of the personal network server: (1) it is
`designed as an intermediary server between a source server and an external
`display device; (2) it provides source server data; and (3) it operates locally
`to a user.” Id. at 23–27.
`After considering the usage of “network” and “server” in the
`Specification of the ’511 patent, see, e.g., Ex. 1001, 1:17–22, we do not find
`Petitioner’s proposed construction to be particularly illuminating beyond the
`words “network server” themselves, so we decline to adopt Petitioner’s
`construction. Rosetta’s construction also includes language on basic
`network server function that we do not adopt for similar reasons. See
`Prelim. Resp. 23 (“a device . . . that provides source server data . . . to a
`user”). Aside from this language, Rosetta’s construction of “personal
`network server” includes the concepts that the server must be an
`intermediary between two different devices (a source server and an external
`display device) and that it must operate locally to a user. See id. at 24–26.
`Yet, to the extent such concepts may be disclosed in the ’511 patent, we are
`not persuaded they necessarily arise from the words “personal network
`server.” In particular, Rosetta has not persuaded us that “wireless intelligent
`
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`personal server,”2 as used in the Specification of the ’511 patent, requires the
`server to be in an intermediate disposition. Nor has Rosetta persuasively
`shown the Specification requires “personal” to mean “local to a user.” For
`these reasons, we determine that these terms do not require explicit
`construction at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy.”).
`Rosetta also contends we should construe “intelligent” as “configured
`to selectively provide data from the source server without a request from the
`user.” Prelim. Resp. 28. Petitioner does not propose a construction for this
`word. We are not persuaded that “intelligent” means something more than
`what is recited in the body of claim 1 (e.g., being capable of receiving
`downstream data and processing the data to provide at least one electronic
`file in memory). This is confirmed by the Specification of the ’511 patent,
`which does not give “intelligent” any separate, discernable meaning other
`than as a descriptor for the particular “personal server” disclosed therein.
`
`3.
`
`“Downstream Data” and Whether Independent Claims 1 and
`58 Require a Three-Node System
`For claims 1 and 58, Rosetta’s arguments require us to consider
`whether the language of the claims requires that the source of the recited
`“downstream data transmitted over a first wireless communications channel”
`
`
`2 The phrase “wireless intelligent personal network server” appears only in
`the claims, whereas the written description of the ’511 patent uses the phrase
`“wireless intelligent personal server.”
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`that is received by the personal network server must be different from the
`“external display device” that interfaces with the first network server. See
`Prelim. Resp. 33–35; see infra § II.B.1. If it must be different, claims 1 and
`58 would require a three-node system. See Prelim. Resp. 33–35.
`Rosetta contends claims 1 and 58 require a three-node system based in
`part on its construction of “personal network server” as being “a device
`configured to be interposed between a source server and an external display
`device that provides source server data locally to a user.” Id. at 23–27, 34–
`35. Rosetta contends that collapsing a “source server” and the external
`display device into the same node—thus resulting in a two-node system—
`“teaches away from the WIPS system because it creates a system that
`deprives the user of one of the primary benefits of the WIPS system—the
`ability to access updated source server data even when operating remotely
`from the source server.” Id. at 42; see also id. at 44 (stating that the ’511
`patent teaches “that the WIPS can be used remotely from the source
`server.”).
`As further support for its contention that claims 1 and 58 require a
`three-node system, Rosetta cites the testimony of Dr. Mangione-Smith and
`proposes a construction of “downstream data” as being “data transmitted
`from a source server to the personal network server.” Id. at 20–23 (citing
`Ex. 2001 ¶¶ 26–32). Rosetta advances an annotated version of Figure 1 of
`the ’511 patent depicting display device 32 as being “Downstream” from
`enterprise IT system 12 and WIPS 30. See id. at 22. Rosetta contends the
`external display device must be separate from (and downstream from) the
`source of the downstream data. See id. at 22, 36–37. Rosetta also cites the
`recitation in claim 2 that the downstream data reflects changes in a “source”
`
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`electronic file, equating such a file with a file from a “source server” in a
`three-node system. Id. at 22.
`We have considered all of the parties’ arguments and evidence, but
`are not persuaded, based on the current record, by Rosetta’s arguments that
`the claims require a three-node arrangement. At the outset, we decline to
`adopt Rosetta’s proposed construction of “downstream data,” because we
`are not persuaded that the Specification of the ’511 patent sets forth a clear,
`deliberate, and precise definition of the term that inexorably ties it to a
`network topology including a source server and a personal network server.
`Rather, we determine “downstream data” simply reflects data moving
`downstream from one place to another, so the term needs no further
`elucidation at this time.
`In addition, claims 1 and 58 are directed to a single node: the personal
`network server. Additional nodes are intuited with reference to the radio
`frequency (RF) receiver/transceiver, which receives downstream data from
`an unspecified source, and the “first interface” for interfacing with an
`“external display device.” Claim 1 does not contain any explicit limitations
`regarding the source of the downstream data, which Rosetta calls a “source
`server” in its proposed constructions. See Prelim. Resp. 23–27, 34–35.
`Similarly, the “external display device” only is limited by its function: an
`application on the external display device can “pick and open” an electronic
`file on the portable network server. Importantly, the only “downstream”
`relationship between nodes specified in the claims is between the
`unspecified source of the downstream data and the receiver/transceiver (i.e.,
`the latter must receive downstream data from the former). Unlike that
`recitation, and contrary to Rosetta’s suggestions, see Prelim. Resp. 22, 36–
`
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`37, claims 1 and 58 do not recite explicitly that the external display device is
`in a “downstream” relationship with the personal network server. Nor is
`there any express recitation requiring the external display device to be
`“remote[] from the source server.” See id. at 44. We have reviewed the
`Specification as well, and do not find at this time any language that would
`limit the claims in the manner proposed by Rosetta. See, e.g., Ex. 1001,
`3:46–48, 3:62–7:40 (describing the arrangement of Figure 1 as “an
`exemplary embodiment of the present invention”).
`Thus, in the absence of any limitation on a specific topology among
`the various elements interacting with the personal network server, we do not
`agree with Rosetta on this record that claims 1 and 58 require the source of
`the downstream data and the “external display device” to be different
`entities. We therefore are not persuaded, based on the current record, that
`claims 1 and 58 require a three-node system. As such, a reference
`describing a personal network server in accordance with claims 1 and 58
`could render those claims obvious even if the reference describes a two-node
`system. The parties, however, are encouraged to address the meaning of the
`claims during trial, and our ultimate interpretation of the claims will be
`based on the complete record at the end of trial.
`
`
`II. ANALYSIS
`We now consider Petitioner’s asserted ground and Rosetta’s
`arguments in its Preliminary Response to determine whether Petitioner has
`met the “reasonable likelihood” threshold standard for institution under 35
`U.S.C. § 314(a). Petitioner’s unpatentability contentions are supported by
`the testimony of Nathaniel Polish, Ph.D. See Ex. 1002. Rosetta’s
`
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`Preliminary Response is supported by the testimony of Dr. Mangione-Smith.
`See Ex. 2001.
`Petitioner contends claims 1–10 and 58–65 would have been obvious
`over Kimura. Pet. 13–59. Rosetta disputes Petitioner’s contention. Prelim.
`Resp. 33–47.
`
`Kimura
`Kimura is directed to “a portable file system in which files stored in a
`portable personal data device are accessible from a data processing device
`for executing a desired processing on data of the files.” Ex. 1004, 1:7–10.
`Figure 2 of Kimura is reproduced below.
`
`A.
`
`
`Figure 2 depicts portable personal data device (PPDD) 1 having
`communication unit 2, access processing unit 3, and file system 4. Id. at
`6:58–60. Stationary computer 5, which may be a work station or a personal
`computer, includes communication unit 6 and file system 7. Id. at 6:60–62.
`PPDD 1 and stationary computer 5 use communication units 2 and 6,
`respectively, for communicating with one another by radio or by online
`
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`communication mode. Id. at 7:6–10. PPDD 1 and stationary computer 5
`also have a mechanism for making file system 4 operate as if it were a part 8
`of file system 7. Id. at 7:10–13.
`Figure 3 of Kimura is reproduced below.
`
`
`Figure 3 depicts an embodiment of Kimura with PPDD 11 having
`communication unit 16, file access processing unit 17, and file memory unit
`18. Id. at 7:55–57. Stationary computer 10 includes application execution
`unit 12, file access unit 13, communication unit 14, and file memory unit 15.
`
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`Id. at 7:53–55. Communication unit 14 communicates with communication
`unit 16 such that PPDD 11 handles access requests from stationary computer
`10 for files stored in file memory unit 18. Id. at 8:31–36, 15:60–67.
`
`B.
`
`Claims 1 and 58
`Claim 1 is unpatentable “if the differences between the subject matter
`[claimed] and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.” 35 U.S.C.
`§ 103(a).3 In its obviousness analysis for claim 1, Petitioner relies on the
`disclosure of Kimura and argues that an ordinarily skilled artisan would have
`understood Kimura to render obvious the devices recited in claims 1 and 58.
`Pet. 13–40. Petitioner maps Kimura’s PPDD to the recited personal network
`server of claim 1. Id. at 14–18 (citing Ex. 1004, 6:56-7:35, 15:60–67, Figs.
`2, 3). For the recited “radio frequency (RF) receiver,” Petitioner cites
`Kimura’s teachings on various iterations of the communication unit in the
`PPDD, which can include file transmission and reception unit 161. Id. at 19
`(citing Ex. 1004, Figs. 2, 3). Petitioner cites Kimura’s file transmission and
`reception unit in the stationary computer for transmitting data to the PPDD
`as part of a write operation; Petitioner contends the PPDD’s reception of this
`data teaches “receiving downstream data transmitted over a first wireless
`communications channel.” Id. at 20–21 (citing Ex. 1004, 8:45–50, 15:54–
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’511 patent has an
`effective filing date before the effective date of the applicable AIA
`amendment, throughout this Decision we refer to the pre-AIA version of
`35 U.S.C. § 103.
`
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`59). Petitioner contends the transmission is made wirelessly based on
`Kimura’s description of “radio” communication and Kimura’s use of a
`dotted line denoting a “wireless transmission path/link” in Figure 2. Id. at
`21 (citing Ex. 1002 ¶ 42; Ex. 1004, 7:6–9).
`Petitioner maps Kimura’s file access request reception unit (FARRU)
`163 in the PPDD to the recited “first interface” of claim 1. Id. at 28–31
`(citing Ex. 1004, Fig. 3). According to Petitioner, FARRU 163 interfaces
`with stationary computer 12, which Petitioner maps to the “external display
`device” of claim 1. Id. at 31–32 (citing Ex. 1002 ¶¶ 63–64). Petitioner
`contends “an ‘application’ (i.e., a computer software process) on Kimura’s
`stationary computer (the claimed ‘external display device’) . . . accesses,
`picks, and opens files on Kimura’s PPDD.” Id. at 32 (Ex. 1002 ¶ 64).
`Petitioner explains this is accomplished by “mounting . . . the file system of
`the portable personal data device 11 to the file system of the stationary
`computer 10,” whereby files on the PPDD “appear to a user of the stationary
`computer as if they are stored on the stationary computer.” Id. at 33
`(quoting Ex. 1004, 11:57–12:25). As supported by the testimony of Dr.
`Polish, Petitioner contends the stationary computer can pick and access files
`from the PPDD after the drive is mounted. Id. at 32–38 (citing Ex. 1002
`¶¶ 65–75).
`Considering Petitioner’s analysis and submitted evidence, and the
`arguments presented in Rosetta’s Preliminary Response, we are satisfied
`there is a reasonable likelihood that Petitioner would prevail in showing
`claim 1 would have been obvious over Kimura. We add the following for
`additional explanation.
`
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`Network Topology Requirements of Claim 1
`1.
`Rosetta contends Petitioner’s mapping of Kimura’s two-node
`system—namely, a PPDD and stationary computer—is not sufficient to
`teach the alleged three-node system of the ’511 patent claims. Prelim. Resp.
`33–35. An illustration of Rosetta’s argument is reproduced below.
`
`
`In this illustration from page 34 of the Preliminary Response, Rosetta
`purports to distinguish the WIPS system of the ’511 patent (i.e., the three-
`node system on the left) from the system described in Kimura (i.e., the two-
`node system on the right). Id. at 34–35. Rosetta’s argument is based in part
`on its proposed construction of “personal network server,” namely, “a device
`configured to be interposed between a source server and an external display
`device that provides source server data locally to a user.” See id. at 23–27,
`33–35. Under this construction, Rosetta argues, Kimura cannot teach a
`personal network server because Kimura’s system is “fundamentally
`different in both design and purpose.” Id. at 34.
`As stated above, we do not construe claim 1 at this time as requiring a
`three-node system. See supra § I.F.2. Accordingly, the fact that Petitioner
`may count Kimura’s stationary computer both as the source of downstream
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`data and as the external display device does not, in and of itself, undermine
`Petitioner’s analysis. For this reason, we are not persuaded on this record by
`Rosetta’s arguments related to network topology.
`
`“Receiving downstream data”
`2.
`Petitioner contends Kimura teaches that “downstream data” is
`received by the PPDD from the stationary computer as part of a write
`operation. Pet. 20–21. Rosetta contends Petitioner’s mapping of Kimura’s
`stationary computer as both the source of the received downstream data and
`the external display device of claim 1 is internally inconsistent. Prelim.
`Resp. 35. Rosetta argues the write operation data of Kimura cannot be
`considered “downstream data” because it comes from the external display
`device, which is “the final component in the downstream communication
`chain.” Id. at 36–39. According to Rosetta, data from the external display
`device does not correctly reflect the downstream flow of data from a server
`toward a user, so it should be considered “upstream data.” Id. (citing Ex.
`2001 ¶¶ 62–63).
`Rosetta’s arguments are premised on the notion that the external
`display device must be “downstream” from the personal network server of
`claim 1, in the same sense that the RF receiver receives “downstream” data
`from the source of the data. See id. at 36–39. But, as we stated above, the
`latter is required expressly by claim 1, but the former is not. See supra
`§ I.F.3. Furthermore, Kimura’s write operation results in data moving
`downstream from the stationary computer to the PPDD (i.e., the personal
`network server), where it is received. See Pet. 20–21. This is all that
`
`18
`
`
`

`
`IPR2016-00616
`Patent 7,149,511 B1
`
`“receiving downstream data” requires. Accordingly, we are not persuaded
`by Rosetta’s arguments.
`
`“Intelligent”
`3.
`Regarding the word “intelligent” in the preamble of claim 1, Rosetta
`argues “[t]he PPDD of Kimura is not intelligent because it simply maintains
`original source files in accordance with the user’s specific requests.” Prelim.
`Resp. 44 (citing Ex. 1004, 6:65–7:2). Rosetta’s argument is premised on its
`proposed construction of “intelligent” as meaning “configured to selectively
`provide data from the source server without a request from the user.” Id. at
`27–29, 44–45. Petitioner offers no argument regarding this issue.
`As mentioned above, we decline to construe “intelligent” in claim 1 as
`requiring anything more than is recited in the body of the claim. See supra
`§ I.F.2. Therefore, based on the current record, Petitioner’s obviousness
`showing for the limitations in the body of claim 1 suffices to teach the
`“intelligent” recitation.
`
`Secondary Considerations of Nonobviousness
`4.
`Rosetta puts forth some evidence of secondary considerations of
`nonobviousness for the invention of the ’511 patent. Prelim. Resp. 45–47.
`In particular, Rosetta cites a $2 million grant from the National Institute of
`Standards and Technology for WIPS technology. Id. at 46 (citing Exs. 2010,
`2011). Rosetta also cites praise in the press and in personal correspondence
`for WIPS technology. Id. at 46–47 (citing Exs. 2012, 2013). Rosetta
`additionally alleges that WIPS technology was “shunned as an unworkable
`
`19
`
`
`

`
`IPR2016-00616
`Patent 7,149,511 B1
`
`solution” in the face of an alternative approach, namely, “better
`infrastructure and software.” Id. at 47 (citing Ex. 2001 ¶¶ 77–78).
`The issue of secondary considerations of nonobviousness is highly
`fact-specific. We have reviewed the evidence submitted by Rosetta, but we
`do not find it sufficient at this stage to preclude trial. For example, the
`evidence in Exhibits 2010 and 2011 does not establish that the WIPS project
`and requested funds mentioned in Exhibit 2011 are related to the grant
`mentioned in Exhibit 2010 and actually resulted in a $2 million award. See
`Exs. 2010, 2011. In addition, the article cited by Rosetta for purported
`praise of the patented invention includes an equal measure of skepticism
`about WIPS technology. See Ex. 2012, 2 (“It’s unclear what the problems
`are that [Rosetta is] really solving . . . . [WIPS] may be another layer that
`encumbers rather than helps.”). Based on the present record, Rosetta’s
`evidence of secondary considerations of nonobviousness does not outweigh
`Petitioner’s evidence of obviousness for claim 1. We nonetheless anticipate
`that secondary considerations of nonobviousness will be more completely
`evaluated in the context of a trial when the ultimate determination of
`obviousness is made.
`
`Conclusion Regarding Claims 1 and 58
`5.
`For these reasons, we conclude there is a reasonable likelihood that
`Petitioner would prevail in showing that claim 1 would have been obvious
`over Kimura. Claim 58 only differs from claim 1 in that the word “receiver”
`in claim 1 is replaced by the word “transceiver” in claim 58. See Ex. 1001,
`17 (2:12). For the transceiver, Petitioner cites the same file transmission and
`reception unit 161 in Kimura’s PPDD as for the receiver of claim 1. Pet. 19
`
`20
`
`
`

`
`IPR2016-00616
`Patent 7,149,511 B1
`
`(citing Ex. 1004, Figs. 2, 3). Because this difference does not impact our
`analysis, we also conclude there is a reasonable likelihood that Petitioner
`would prevail in showing that claim 58 would have been obvious over
`Kimura.
`
`C.
`
`Claims 2 and 59
`Claim 2 depends from claim 1 and further recites “said downstream
`data reflects changes made to at lease one source electronic file, said at least
`one electronic file being an updated version of at least one existing
`electronic file stored in said memory.” Ex. 1001, 13:46–49. Claim 59
`depends from claim 58 and includes the same limitation. Id. at 18:14–17.
`Petitioner cites Kimura’s teachings on producing “a back-up for the
`file system of the portable personal data device in the stationary computer
`side” when the file system of the PPDD is mounted to the file system of the
`stationary computer. Pet. 41 (citing Ex. 1004, 16:39–43, 17:33–37).
`According to Petitioner, this is accomplished by transferring data from the
`PPDD to the stationary computer. Id. (citing Ex. 1004, 17:33–37).
`Petitioner acknowledges “Kimura does not disclose that the downstream
`data received by the PPDD from the stationary computer” reflects file
`changes on the stationary computer, but nonetheless contends this would
`have been obvious based on Kimura’s teachings on this functionality in the
`reverse direction. Id. at 42 (citing Ex. 1002 ¶ 81). In support of this
`contention, Petitioner cites Dr. Polish’s testimony that file synchronization
`was well-known, that there would be no technical barriers to such
`synchronization, and that it would have been useful to update a PPDD based
`on changes made to files on a stationary computer. Id. at 40–44 (citing Ex.
`
`21
`
`
`

`
`IPR2016-00616
`Patent 7,149,511 B1
`
`1002 ¶¶ 80–83). Dr. Polish contends an ordinarily skilled artisan would
`have been motivated to modify Kimura by, for example, the desire “to keep
`Kimura’s PPDD synchronized with one particular source stationary
`computer (such as a work computer)” so that a user would “have updated
`work files on her PPDD for when she wants to access those files using . . . a
`different

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