UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`UNILOC 2017 LLC,
`Patent Owner.
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`Case IPR2019-00251
`Patent 6,993,049 B2
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`PETITIONER’S MOTION TO FILE SUPPLEMENTAL INFORMATION
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`PURSUANT TO 37 C.F.R. § 42.123(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`UNILOC 2017 LLC,
`Patent Owner.
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`Case IPR2019-00251
`Patent 6,993,049 B2
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`PETITIONER’S MOTION TO FILE SUPPLEMENTAL INFORMATION
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`PURSUANT TO 37 C.F.R. § 42.123(a)
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`
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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
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`EXHIBITS
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`APPLE-1001
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`U.S. Patent No. 6,993,049 to Davies (“’049 Patent”)
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`APPLE-1002
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`Prosecution History of the ’049 Patent (“the Prosecution
`History”)
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`APPLE-1003
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`Declaration of Dr. Charles Knutson
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`APPLE-1004
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`Curriculum Vitae of Dr. Charles Knutson
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`APPLE-1005 U.S. Patent No. 6,704,293 (“Larsson”)
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`APPLE-1006 IrDA Object Exchange Protocol (“IrOBEX”)
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`APPLE-1007 Prosecution History of the 7,587,207 Patent (“207 Prosecution
`History”)
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`APPLE-1008 Second Declaration of Dr. Charles Knutson
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`APPLE-1009 U.S. Patent No. 7,587,207 (“Davies” or the “’207 Patent”)
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`APPLE-1010 U.S. Patent No. 6,570,857 (“Haartsen”)
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`APPLE-1011 U.S. Patent No. 6,480,505 (“Johansson”)
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`APPLE-1012
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`APPLE-1013
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`Specification of the Bluetooth System: Wireless connections
`made easy, Profiles, Vol. 2, Bluetooth, Dec. 1, 1999 (“BT
`Profiles”)
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`The New Shorter Oxford English Dictionary on Historical
`Principles, Vol. 1, Clarendon Press, 1993 (“Oxford
`Dictionary”)
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`APPLE-1014
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`Specification of the Bluetooth System: Wireless connections
`made easy, Core, Vol. 1, Bluetooth, Dec. 1, 1999 (“BT Core”)
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`
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`APPLE-1015
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`U.S. Patent No. 6,683,886 (“Tuijn”)
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`i
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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
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`APPLE-1016 Internet Archive Capture of
`http://www.bluetooth.com:80/developer/specification/specificat
`ion.asp from March 1, 2000
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`APPLE-1017 Internet Archive Capture of
`http://www.bluetooth.com:80/developer/specification/core.asp
`from March 1, 2000
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`APPLE-1018 Internet Archive Capture of
`http://www.bluetooth.com:80/developer/specification/order.asp
`from March 1, 2000
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`APPLE-1019
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`APPLE-1020
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`Internet Archive Capture of
`http://www.bluetooth.com:80/news/archive/archive.asp from
`March 4, 2000
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`Declaration of Michael Foley
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`ii
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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
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`Pursuant to 37 C.F.R. § 42.123(a) and Board authorization of August 27,
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`Apple moves to submit Ex. 1020 (Declaration of Dr. Foley) as supplemental
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`information to confirm the public accessibility of Bluetooth (BT) Core (Ex. 1014).
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`Apple meets both requirements of 37 C.F.R. § 42.123(a). First, Apple
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`requested authorization to file this motion on August 21, which is within one
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`month of the July 22 trial institution date. Second, the supplemental information is
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`relevant to a claim for which trial has been instituted because BT Core (Ex. 1014)
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`is part of instituted Ground 2 challenging claims 11 and 12.
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`The Board has precedence for granting motions under similar facts. See, e.g.,
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`IPR2013-00369, Paper 37, 3-5; IPR2013-00093, Paper 39, 2 (“relates to the claims
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`… because it is directed to the public accessibility”); IPR2014-01204, Paper 26, 2-
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`5 (“demonstrated online accessibility and attested to the publication and public
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`availability of exhibits”); IPR2018-00643, Paper 18, 3-5 (pertains to “public
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`availability and status as a prior art reference”). Under Rule 42.123(a), “Petitioner
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`need not demonstrate that the supplemental information proffered could not have
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`been obtained earlier” (IPR2014-01204, Paper 26, 4) and “[t]here can be no
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`dispute … that evidence of a reference’s qualification as prior art … is relevant to a
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`claim for which trial has been instituted” (IPR2018-00643, Paper 18, 4).
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`Moreover, Uniloc would not be prejudiced by entry of the supplemental
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`information. Uniloc has not disputed that BT Core (Ex. 1014) is prior art to the
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`1
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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
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`’049 patent, or objected to its inclusion in evidence. Further, ample time remains in
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`the schedule for Uniloc to address the supplemental information – no depositions
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`have been taken and the Patent Owner Response is not due until October 17.
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`In an email to the Board on August 22, Uniloc professed prejudice,
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`proclaiming that had it “previously argued … that the same BT Core reference
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`does not qualify as prior art (see IPR2018-01092, Paper 8, pp. 2-4).” Not so. In the
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`cited paper (attached as Appendix A), “Patent Owner dispute[d] Petitioner’s
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`allegation that a person of ordinary skill in the art as of January 2002 would
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`‘readily be familiar with the Bluetooth [] communication standards and
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`implementation of wireless communication using such standards.’” IPR2018-
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`01092, Paper 8, pp. 2-3. Specifically, Uniloc explained that “Petitioner’s definition
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`of POSITA” was incorrect “because the Bluetooth standard was not ratified by the
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`IEEE until June of 2002” and POSITA “would most likely not be familiar with
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`Bluetooth.” Id., pp. 3-4. Uniloc’s dispute over the POSITA definition is not an
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`argument that BT Core fails to qualify as a prior art printed publication. On several
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`occasions, Petitioner reached out to Uniloc’s counsel indicating concerns over his
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`inaccurate portrayal of the argument to the Board. Rather than correct the record,
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`Uniloc’s counsel responded with – “the references we cited speak for themselves.”
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`Indeed, they do. Contrary to its statement to the Board, Uniloc did not previously
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`make such an argument.
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`2
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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
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`In its August 22 email, Uniloc also raised Ooma, Inc. v. Deep Green
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`Wireless LLC, IPR2017-01541, Paper 14, 3-4. There, the Board denied evidence
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`“pertain[ing] to the level of ordinary skill in the art” because “[s]upplemental
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`information is not intended to provide a petitioner an advantageous ‘wait-and-see’
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`opportunity … to refine or bolster petitioner’s position.” Id. The facts here are
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`readily distinguishable, as the requested evidence is of a different type that is
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`regularly accepted as supplemental information and neither Uniloc nor the Board
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`has raised any questions of the public accessibility of BT Core.
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`Although Apple believes that its petition already contains sufficient evidence
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`to support a finding that BT Core is prior art, this supplemental information
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`provides additional evidence in support of the evidence originally submitted. Entry
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`of the supplemental information was not withheld intentionally and does not limit
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`the Board or Patent Owner’s ability to complete this proceeding in a timely
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`manner. Indeed, Apple identified and engaged Dr. Foley after filing of the instant
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`petition and timely requested authorization within one month of institution.
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`Accordingly, Apple, on its own initiative and without reacting to Uniloc
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`arguments, requested to supplement the record with evidence secured after filing to
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`bring the evidentiary record in this proceeding in line with other proceedings
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`before the Board involving the same BT Core reference. See IPR2019-01337,
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`Exhibit 1008. Thus, Apple’s motion should be granted.
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`3
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`Date: September 3, 2019
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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
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`/Jeremy J. Monaldo/
`W. Karl Renner, Reg. No. 41,265
`Jeremy Monaldo, Reg. No. 58,680
`Roberto Devoto, Reg. No. 55,108
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
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`4
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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on September 3, 2019, a complete and entire copy of Petitioner’s
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`Motion to File Supplemental Information and accompanying exhibit was provided
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`via email to the Patent Owner by serving the email correspondence addresses of
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`record as follows:
`
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
`
`Email:
`
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
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`
`
`/Diana Bradley/
`
`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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`APPENDIX A
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`APPENDIX A
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
`
`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A. 1
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`Patent Owner
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`
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`IPR2018-01092
`PATENT 6,961,561
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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` 1
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` The owner of this patent is Uniloc 2017 LLC.
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`
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`IPR2018-01092
`U.S. Patent 6,961,561
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`Table of Contents
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`
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`
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`I.
`II.
`III.
`IV.
`V.
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`C.
`
`INTRODUCTION.................................................................................. 1
`THE ’561 PATENT ............................................................................... 1
`RELATED PROCEEDINGS ................................................................. 2
`LEVEL OF ORDINARY SKILL IN THE ART ..................................... 2
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM ....................................................................... 4
`A.
`Claim Construction ...................................................................... 5
`B.
`The Petition Fails to Show “establishing a wireless
`communication link between the control computer and a
`mobile electronic device upon the mobile electronic
`device entering the environment and receiving the
`control message” .......................................................................... 5
`The Petition Fails to Show “communicating instructions
`from the central control computer to the mobile
`electronic device to provide the mobile electronic device
`with access to one or more features associated with the
`central control computer” ............................................................. 9
`The Petition Fails to Show “wherein the one or more
`features associated with the central control computer are
`substitutes for the one or more disabled features within
`the mobile electronic device” ..................................................... 13
`The Petition Fails to Show “wherein the one or more
`features associated with the central control computer are
`enhancements to the mobile electronic device, wherein
`the enhancements provide one or more features not
`possessed by the mobile electronic device” ................................ 14
`
`D.
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`E.
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`ii
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`F.
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`IPR2018-01092
`U.S. Patent 6,961,561
`The Petition Fails to Show “wherein the features within
`the mobile electronic device are selected from user input
`devices, user output devices, transmitter, receiver,
`memory, transceiver, I/O controller, drivers for
`peripheral devices or combinations thereof” ............................... 14
`The Petition Fails as The Remaining Challenged Claims ........... 15
`G.
`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL .................................... 15
`CONCLUSION .................................................................................... 16
`
`VI.
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`VII.
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`
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`List of Exhibits
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`Exhibit No.
`2001
`
`Description
`Declaration of William C. Easttom
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`iii
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`
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`IPR2018-01092
`U.S. Patent 6,961,561
`
`I.
`
`INTRODUCTION
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
`Response to Petition IPR2018-01092 for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 6,961,561 (“the ’561 Patent” or “EX1001”) filed by
`Apple, Inc. (“Petitioner”). The instant Petition is procedurally and substantively
`defective for at least the reasons set forth herein.
`
`II. THE ’561 PATENT
`The ’561 patent is titled “Enhancing/limiting use of mobile electronic
`devices.” The ʼ561 patent issued November 1, 2005, from U.S. Patent Application
`No. 10/047,005 filed January 16, 2002.
`The inventors of the ’561 patent observed that at the time, the convenience of
`taking mobile devices almost anywhere was very enabling, but there were
`nonetheless times and places where devices should be and need to be limited, but
`compliance was primarily left to the user. EX1001, 1:15-21. At the time there were
`various approaches to imposing restrictions upon users of mobile devices, however,
`the problem with those approaches was that the user of the mobile electronic device
`were presented with no alternatives to the imposed constraints and thus became
`frustrated or annoyed by being denied the full use of the user's mobile electronic
`device. Id., 1:26-51. Therefore, what was needed was an enhancement capability that
`allowed a user of a mobile electronic device to maximize the features of the mobile
`electronic device while still maintaining the constraints imposed within an
`environment. Id., 1:51-57.
`According to the invention of the ’561 Patent, the ’561 Patent provides a
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`1
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`IPR2018-01092
`U.S. Patent 6,961,561
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`method for controlling and enhancing the use of wireless electronic devices within
`a given environment comprising transmitting a wireless control message within the
`given environment from a central control computer; establishing a wireless
`communication link between the control computer and a mobile electronic device
`upon the mobile electronic device entering the environment and receiving the control
`message; communicating instructions from the central control computer to the
`wireless electronic device to disable one or more of features within the wireless
`electronic device; and communicating instructions from the central control computer
`to the wireless electronic device to provide the mobile electronic device with access
`to one or more features associated with the central control computer. Id., 1:60-2:7
`
`III. RELATED PROCEEDINGS
`There are no other proceedings concerning the U.S. Patent No. 6,961,561.
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`The Petition alleges that “[a] person having ordinary skill in the art
`(PHOSITA) as of the priority date in January 2002 would have had a bachelor’s
`degree in computer science, computer engineering, electrical engineering, or a
`similar field with two to three years of experience in wireless device communication
`and control. For example, a PHOSITA would readily be familiar with the Bluetooth
`and IrDA communication standards and implementation of wireless communication
`using such standards.” Pet. 3.
`Patent Owner disputes Petitioner’s allegation that a person of ordinary skill in
`the art as of January 2002 would “readily be familiar with the Bluetooth []
`communication standards and implementation of wireless communication using
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`2
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`
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`such standards.” EX2001, ¶ 6. The Bluetooth specification wasn’t ratified by the
`IEEE until 2002, as shown by the following excerpt from Wikipedia:
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`IPR2018-01092
`U.S. Patent 6,961,561
`
`
`Source:
`https://en.wikipedia.org/wiki/Bluetooth#Bluetooth_1.0_and_1.0B
`(highlighting added).
`As the name of the standard itself suggests, it was published in 2002, and the
`IEEE website confirms this. See https://ieeexplore.ieee.org/document/1016473/
`(“Date of Publication: 14 June 2002”).
`Therefore, because the Bluetooth standard was not ratified by the IEEE until
`June of 2002, the evidence is against Petitioner’s contention that a POSITA would
`“readily be familiar with the Bluetooth [] communication standards and
`implementation of wireless communication using such standards” as of the priority
`date in January 2002. Further, as Mr. Easttom opines, while there were some
`advanced research articles and work towards a standard on Bluetooth that an
`advanced engineer or computer scientist would have been aware of at the time,
`because the Bluetooth standard was not ratified by the IEEE until June of 2002, a
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`3
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`IPR2018-01092
`U.S. Patent 6,961,561
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`person at the time of the invention who only had a bachelor’s degree and two to three
`years of experience (which is the Petitioner’s definition of POSITA), would most
`likely not be familiar with Bluetooth. EX2001, ¶ 6.
`Finally, given that Petitioner fails to meet its burden of proof in establishing
`prima facie obviousness when applying its own definition of a person of ordinary
`skill in the art (“POSITA”), Patent Owner does not offer a competing definition for
`POSITA at this preliminary stage, though it reserves the right to do so in the event
`that trial is instituted.
`
`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`unpatentable”). The Petition should be denied as it fails to meet this burden.
`The raises the following obviousness challenges under 35 U.S.C. § 103:
`Ground
`Claims
`Reference(s)
`1
`1, 3-10, 13-16, 18, 20-
`Bernstein2 and Jonsson3
`26, and 28-32
`2 and 19
`17 and 33
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`Bernstein, Jonsson, and Heiman 4
`Bernstein, Jonsson, and Squilla 5
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`V.
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`2
`3
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`
`
` 2
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` EX1004, U.S. Patent No. 6,970,189
`3 EX1005, U.S. Patent No. 7,164,885
`4 EX1006, U.S. Publication No. 2002/0085111
`5 EX1007, U.S. Patent No. 6,396,537
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`4
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`IPR2018-01092
`U.S. Patent 6,961,561
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`A. Claim Construction
`Patent Owner submits that the Board need not construe any claim term in a
`particular manner in order to arrive at the conclusion that the Petition is
`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
`controversy”).
`At this preliminary stage, Patent Owner submits that the Board need not
`construe any claim term, including the term “control message,” in a particular
`manner in order to arrive at the conclusion that the Petition is substantively deficient.
`Wellman, 642 F.3d at 1361. Therefore, at this preliminary stage, Patent Owner does
`not submit a competing definition, however, in the event that trial is instituted,
`Patent Owner reserves the right to object to Petitioner’s proposed construction and
`provide Patent Owner’s proposed construction.
`
`B.
`
`The Petition Fails to Show “establishing a wireless communication
`link between the control computer and a mobile electronic device
`upon the mobile electronic device entering the environment and
`receiving the control message”
`The Petition contends that Bernstein in combination with Jonsson discloses
`this limitation. However, neither reference disclosed the claimed “mobile electronic
`device entering the environment and receiving the control message.”6
`Bernstein merely receives settings at a camera from a server – not control
`
`
`
` 6
`
` It is not clear that Petitioner is actually alleging Bernstein discloses such a feature;
`however, since the combination is relied upon, Petitioner addresses Bernstein in
`addition to Jonsson.
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`5
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`IPR2018-01092
`U.S. Patent 6,961,561
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`messages. EX2001, ¶¶ 31-48. Petitioner’s own expert, Dr. Kiaei, confirmed that a
`“control message” means something more than settings. More particularly, in ¶80
`of his declaration, Dr. Kiaei indicated that control messages “requests or otherwise
`prompts a receiving device to perform a task.” However, neither petitioner nor Dr.
`Kiaei identify anything in Bernstein or Jonsson that meets such a requirement – if
`true. EX2001, ¶47. Moreover, discovery signals cannot be relied upon to disclose
`control messages. As acknowledged by Dr. Kiaeu in his declaration at ¶42, control
`messages and discovery requests are not the same thing. EX2001, ¶46.
`Likely recognizing such a lack of a control message in Bernstein, Petitioner
`points to Jonsson’s “INQUIRY message” as allegedly disclosing a “control
`message.” See Pet. 18-21. However, even if Jonsson INQUIRY message were a
`control message, it still fails to disclose the claim feature because the alleged mobile
`device never receives the alleged control message.
`The claim language requires that “the mobile device entering the
`environment [receives] the control message”. However, while the Petition cites to
`a passage in Jonsson for support, a review of the text of the cited passage in facts
`shows that the “hand-held device” of Jonsson (e.g. “mobile device”) in fact does
`not receive the control message, as required by the claim language:
`
`6
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`IPR2018-01092
`U.S. Patent 6,961,561
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`
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`Pet. 20 citing EX1005, 1:37-42 (highlighting added, underlining in original).
`As shown by the passage above, it is the “hand-held device” (e.g. mobile
`device) that sends the “inquiry message,” and therefore Jonsson does not disclose
`the mobile device receiving the control message as required by the claim language.
`In fact, Jonsson teaches away from the mobile device receiving the control message
`as required.
`And specifying that the “hand-held device” sends the “inquiry message”
`makes sense in the context of what Jonsson seeks to accomplish: “a person moving
`about in a shopping mall being able to receive and/or query local information
`networks regarding sales, products, etc. using his or her hand-held device.” EX1005,
`1:30-33. In that circumstance, the “hand-held device, wants to identify other
`Bluetooth devices that are in the vicinity, e.g., those associated with a number of
`different shops in the mall”. EX1005, 1:38-40. And because the “hand-held device”
`of Jonsson would receive “several answers to an inquiry,” “a selection is required
`to determine the answering device to which a connection should be made.” EX1005,
`1:64-66. Or put differently, because the purpose of Jonsson is to allow a shopper to
`view and select sales and product information from multiple stores while walking
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`7
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`IPR2018-01092
`U.S. Patent 6,961,561
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`through a shopping mall, it requires the “hand-held device” of the shopper send the
`“inquiry message” so that the “hand-held device” presents a list of the numerous
`stores and the shopper can then choose to connect to one from the list.
`In sum, Jonsson does not disclose the mobile electronic device receiving the
`control message as required by the claims, and in fact, it would frustrate the purpose
`of Jonsson to do so.
`Yet, the Petition speculates that a POSITA would have implemented the
`“INQUIRY message” of Jonsson with Bernstein to somehow end up with the
`claimed invention. See Pet. 20-21. However, Petitioner provides no evidence that a
`POSITA would flip the express teaching of Jonssson, which teaches away from the
`mobile device receiving the control message. Furthermore, nothing in Bernstein
`shows any level of detail of how communication is established between the “photo
`opportunity site” and the “camera” of Bernstein.
`For example, the Petition cites to a passage from Bernstein and a drawing,
`however in both the passage and drawing, all that is disclosed by Bernstein is that a
`process starts with “establish wireless communication with the camera once the
`camera comes within range of the photo op transceiver.” EX1004, Fig. 2; see also
`EX1004, 4:65-5:6 (“The process begins by establishing wireless communication
`between the photo opportunity site and the camera”); Pet. 18-19. There is nothing
`that discloses or specifies the sequence and logistics of “establish[ing] wireless
`communication”. In other words, Bernstein is silent as to which system or device
`sends or receives
`the required “control message”. “[E]stablish wireless
`communication” is merely the end result, not a sequence of events.
`
`8
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`IPR2018-01092
`U.S. Patent 6,961,561
`
`Therefore, because Bernstein is silent as to the sequence and procedure of
`“establishing wireless communication” under the Bluetooth standard (which is only
`mentioned in passing twice in Bernstein), a POSITA would not have made the exact
`opposite choices of the express teachings of Jonsson when in fact Jonsson teaches
`away from the mobile device receiving the control message as required, and
`Petitioner provides no evidence to the contrary. See In re Grasselli, 713 F.2d 731,
`743 (Fed. Cir. 1983) (“It is improper to combine references where the references
`teach away from their combination.”); In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
`1994) (“A prior art reference teaches away from the claimed invention when a
`person of ordinary skill, upon reading the reference, ‘would be led in a direction
`divergent from the path that was taken by the applicant.’”)
`Thus, the Petition fails to show that Bernstein and Jonsson discloses “the
`mobile electronic device entering the environment and receiving the control
`message”, as required by the claim language.
`Finally, for the reasons already stated, the Petition also fails as to independent
`claim 18, because the Petition relies solely and exclusively on its discussion of claim
`1 for claim 18. Pet. 50 (“See Element 1(b)”).
`
`C. The Petition Fails to Show “communicating instructions from the
`central control computer to the mobile electronic device to provide
`the mobile electronic device with access to one or more features
`associated with the central control computer”
`The Petition relies solely and exclusively on Bernstein for this limitation. See
`Pet. 24-27. However, Bernstein fails to disclose at least providing the mobile
`electronic device with access to “one or more features associated with the central
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`computer”, as required by the claim language.
`During the prosecution of the ’561 Patent, the applicant responded to an office
`action by expressly distinguishing merely downloading data from the central
`computer to the mobile device, and further expressly stated that data “merely
`downloaded” to the mobile device “would not be a feature associated with the
`central computer”:
`
`
`
`
`
`EX1002, at pp. 20-21 (highlighting added).
`And at the next event after the applicant’s above response, the examiner
`allowed the claims. See Notice of Allowability, EX1002, at p. 7. Therefore, as the
`claim language plainly states, and as the prosecution history and examiner
`confirmed, merely downloading data from the central computer to the mobile device
`is not a feature associated with the central computer, and therefore would fail to
`meet the requirements of the claim language.
`The Petition cites a couple of examples from Bernstein for this limitation,
`both of which fail to meet the required claim language.
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`10
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`First, the Petition cites to so-called “additional content relating to the photo
`op subject”:
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`
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`Pet. 24.
`However, each of the examples of so-called “additional content” are merely
`data that is transferred, there is no evidence or example of the central computer
`providing the “mobile electronic device with access to one or more features
`associated with the central control computer,” as required by the claim language.
`In other words, the claim language requires the central computer to provide access
`to a resource of the central computer to the mobile electronic device. And here, the
`mobile device of Bernstein is not provided access to any resource of the central
`computer, instead some so-called “additional content” is merely transferred to the
`mobile device. To reiterate, the claim language requires the mobile device to have
`access to one or more features (i.e. resource) associated with the central computer,
`and Bernstein’s mere transfer of data (the so-called “additional content”), is not
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`access to a feature, or resource, associated with the central computer. The Petition
`itself makes this distinction more clearly by acknowledging that in Bernstein the so-
`called “additional content” “is stored in database 14 associated with and accessible
`to the server.” Pet. 26. As the Petition admits, the mobile device of Bernstein is not
`given access to the database that stores the so-called “additional content”, instead,
`the mobile device is only transferred some of the “additional content” that was
`stored in the database. The mobile device is not able to query, write, list, or issue
`any commands to the database, instead, the server of Bernstein prevents access to
`the database and only provides the “additional content” of the server’s choosing.
`This
`is exactly
`the same circumstance and scenario
`that was “merely
`download[ing]” data and not a feature associated with the central computer, which
`got the claims allowed during the prosecution history.
`In the Petition’s second example, the Petition cites to the server of Bernstein
`transferring “camera setting parameter instructions to the camera, including
`instructions to set camera settings for the focus distance, shutter speed, and aperture
`to previously stored optimized values based on current conditions.” Pet. 27. Just as
`in the Petition’s first example, the transferring of camera parameters here also fails
`because it is merely transferring data to the mobile device and does not provide
`access to a feature of the central computer, as required by the claim language. In
`other words, the server of Bernstein selects the camera parameters and then merely
`transfers that data to the mobile device, therefore the server of Bernstein does not
`provide access to a feature of the central computer, as required by the claim
`language.
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`Thus, the Petition fails to show that Bernstein discloses communicating
`instructions from the central control computer to the mobile electronic device to
`provide the mobile electronic device with access to one or more features associated
`with the central control computer”, as required by the claim language.
`Finally, for the same reasons stated above, the Petition also fails as to
`independent claim 18, because the Petition relies solely and exclusively on its
`discussion of claim 1 for claim 18. Pet. 50 (“See Element 1(d)”).
`
`D. The Petition Fails to Show “wherein the one or more features
`associated with the central control computer are substitutes for the
`one or more disabled features within the mobile electronic device”
`The petitioner alleges changes to an aperture as a result of flash being turned
`off is a “substitute” according to claim 3. Pet. at 28-30. This is incorrect. The
`substitute is associated with the central computer. However, Bernstein’s alleged
`central computer says nothing of changing an aperture setting of a camera. EX2001,
`¶58. Rather, the camera controls aperture settings – not the alleged central computer.
`Id. Storing a setting that the camera choose to make itself is not a command from
`the central computer to make such a modification. And, the reference in Bernstein
`to a camera makings changes is clearly described as the “in-camera” process, not
`something provided by the central computer. See EX1004 at 6:15-45. The so-called
`N-camera values are values communicated to the server, not vice-versa as
`apparently alleged. Id at 5:7-20.
`Finally, for the same reasons above the Petition also fails as to dependent
`Claims 16, 20, 23, and 32 because the Petition relies solely and exclusively on the
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`same portions of Bernstein. Pet. 49, 50 and 55.
`
`E.
`
`The Petition Fails to Show “wherein the one or more features
`associated with the central control computer are enhancements to
`the mobile electronic device, wherein the enhancements provide
`one or more features not possessed by the mobile electronic device”
`The petitioner points to “additional information transmitted to the camera” in
`Bernstein as alleged enhancements associated with the central computer in Claim 4
`However, this is incorrect. Bernstein says nothing about these features being
`associated with the central computer. EX2001, ¶60.
`Finally, for the same reasons stated above, the Petition also fails as to
`dependent Claim 21 because the Petition relies solely and exclusively on the same
`portions of Bernstein. Pet. 51.
`
`F.
`
`The Petition Fails to Show “wherein the features within the mobil
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