UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`U.S. Patent No. 8,018,877
`Filing Date: April 4, 2011
`Issue Date: September 13, 2011
`Title: Mobile Conferencing Method and System
`
`Inter Partes Review No.: IPR2019-00701
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,018,877
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.1-100, ET SEQ.
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`TABLE OF CONTENTS
`
`I.
`II.
`
`Page
`Introduction ...................................................................................................... 1
`Compliance with Formal Requirements .......................................................... 1
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4) ........................ 1
`B.
`Proof of Service on the Patent Owner ................................................... 2
`C.
`Power of Attorney ................................................................................. 3
`D.
`Standing ................................................................................................. 3
`E.
`Fees ........................................................................................................ 3
`III. Statement of Precise Relief Requested ............................................................ 3
`A.
`Prior Art ................................................................................................. 3
`B. Grounds ................................................................................................. 5
`IV. This Petition is Proper Under 35 U.S.C. §§ 314(A) and 325(D) .................... 6
`V.
`Full Statement of Reasons for Requested Relief ............................................. 6
`A.
`Summary of the 877 Patent ................................................................... 6
`B.
`Claims of the 877 Patent ....................................................................... 7
`C.
`Effective Filing Date ............................................................................. 8
`D.
`Person of Ordinary Skill in the Art ..................................................... 10
`E.
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ......................... 14
`VI. Ground 1: Kirmse in View of Chambers Renders Obvioius Claims 1-20 ... 16
`A. Kirmse Overview ................................................................................ 16
`B.
`Chambers Overview ............................................................................ 16
`C. Analysis ............................................................................................... 17
`VII. Ground 2: Chambers in View of RSIP Renders Obvious Claims 1-20 ....... 34
`A.
`Chambers Overview ............................................................................ 34
`B.
`RSIP Overview .................................................................................... 34
`C.
`Statement of Rationale for the Combination of Chambers and
`RSIP ..................................................................................................... 35
`D. Analysis ............................................................................................... 39
`
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`TABLE OF CONTENTS
`(continued)
`
`Page
`VIII. Ground 3: Cordenier in View of TURN Rendeers Obvious Claims 1-3,
`5-10, 12-20 ..................................................................................................... 48
`A.
`Cordenier Overview ............................................................................ 48
`B.
`TURN Overview ................................................................................. 50
`C.
`Statement of Rationale for Combining Cordenier and TURN ............ 54
`D. Analysis ............................................................................................... 56
`IX. Conclusion ..................................................................................................... 68
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`EXHIBIT LIST
`
`1009
`
`1010
`
`1011
`1012
`1013
`
`Exhibit No. Description
`1001
`U.S. Patent No. 8,018,877 to Lin
`1002
`Declaration of Dr. Henry Houh
`1003
`File History of U.S. Pat. No. 8,018,877 to Lin
`1004
`File History of U.S. Pat. No. 7,961,663 to Lin
`U.S. Pat. No. 6,699,125 (“Kirmse”)
`1005
`U.S. Pat. App. Pub. No. US 2003/0142654 (“Chambers”)
`1006
`European Pat. App. Pub. EP 1 385 323 A1 (“Cordenier”)
`1007
`1008
`Complaint for Patent Infringement dated February 22, 2018
`(“Uniloc Complaint”)
`Declaration by Alexa Morris with the exhibit “draft-rosenberg-
`midcom-turn-00.txt”, Traversal Using Relay NAT (“TURN”)
`Declaration of Sandy Ginoza for IETF RFC 793: Transmission
`Control Protocol with the exhibit, RFC 793, “Transmission
`Control Protocol” (“RFC793”)
`U.S. Pat. App. Pub. No. 2003/0217174 (“Dorenbosch”)
`U.S. Patent No. 7,961,663 to Lin (“663 Patent”)
`Declaration of Sandy Ginoza for IETF RFC 3103: Realm
`Specific IP: Protocol Specification with exhibit, RFC 3103,
`“Realm Specific IP: Protocol Specification” (“RSIP”)
`Certified Translation and Original of European Pat. App. Pub. EP
`1 009 153 A1 (“Alos”)
`Declaration by Alexa Morris with the exhibit “draft-rosenberg-
`sipping-ice-00.txt,” Interactive Connectivity Establishment
`(ICE): A Methodology for Network Address Translator (NAT)
`Traversal for the Session Initiation Protocol (SIP) (“ICE”)
`U.S. Patent No. 7,969,925 to Lin (“925 Patent”)
`Declaration of Sandy Ginoza for IETF RFC 1918: Address
`Allocation for Private Internets with exhibit, RFC 1918,
`“Address Allocation for Private Internets” (“NAT”)
`
`1014
`
`1015
`
`1016
`1017
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`Exhibit No. Description
`U.S. Patent No. 8,539,552 (“Grabelsky”)
`1018
`1019
`Declaration of Sandy Ginoza for IETF RFC 3489: STUN -
`Simple Traversal of User Datagram Protocol (UDP) Through
`Network Address Translators (NATs) with the exhibit, RFC
`3489, “STUN - Simple Traversal of User Datagram Protocol
`(UDP) Through Network Address Translators (NATs)”
`(“STUN”)
`January 3, 2011 Amendment and Response to Office Action
`from file history of U.S. Pat. No. 7,969,925 to Lin
`U.S. Pat. App. No. 10/817,994 to Lin
`U.S. Pat. App. No. 10/935,342 to Lin
`U.S. Pat. App. No. 11/042,620 to Lin
`Declaration of Sandy Ginoza for IETF RFC 2026: The Internet
`Standards Process – Revision 3 with the exhibit, RFC 2026:
`“The Internet Standards Process – Revision 3” (“Internet
`Standards Process”)
`
`1021
`1022
`1023
`1024
`
`1020
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`I.
`
`INTRODUCTION
`Apple Inc. (“Apple” or “Petitioner”) hereby petitions for inter partes review
`
`of U.S. Patent No. 8,018,877 (Ex. 1001, “877 patent”). The 877 patent describes a
`
`technique for using an SMS invitation message to establish a connection between
`
`two devices through a server. But this is merely an obvious combination of the
`
`prior art technique of using SMS invitation messages to set up communications
`
`with 1) communications always hosted by a server (e.g., online gaming) or 2)
`
`communications hosted by a relay server as a NAT traversal technique.
`
`II.
`
`COMPLIANCE WITH FORMAL REQUIREMENTS
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4)
`1.
`Real Party-In-Interest
`Apple is the real party-in-interest.
`
`Related Matters
`2.
`According to the assignment records at the USPTO, the 877 patent is
`
`currently owned by Uniloc 2017 LLC (“Uniloc”). The 877 patent was asserted
`
`against Apple by Uniloc Luxembourg S.A. and Uniloc USA, Inc. in Uniloc USA,
`
`Inc., et al. v. Apple Inc., Case No. 1:18-cv-00166-LY (W.D. Tex.) (“the Related
`
`Litigation”) in a complaint filed on February 22, 2018. Ex. 1008.
`
`Petitioner is contemporaneously filing IPR2019-00700 on related U.S.
`
`Patent No. 8,406,116, which involves substantially the same issues raised herein.
`
`The 877 and 116 patents claim nearly identical subject matter, but the claims of the
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`116 patent are focused on actions occurring at the server, while the claims of the
`
`877 patent are focused on the corresponding actions occurring at the initiating
`
`device.
`
`Petitioner is contemporaneously filing IPR2019-00702 on related U.S.
`
`Patent No. 7,969,925, which involves many of the same issues addressed herein.
`
`Uniloc has also asserted each of the above patents in the Related Litigation.
`
`Lead and Backup Counsel
`3.
`Lead counsel is Brian Erickson Reg. No. 48,895, of DLA Piper LLP (US),
`
`401 Congress Avenue, Suite 2500, Austin, TX 78701;
`
`brian.erickson@dlapiper.com, 512-457-7059 (phone), 512-457-7001 (fax).
`
`Backup counsel is James M. Heintz, Reg. No. 41,828, of DLA Piper LLP
`
`(US), 11911 Freedom Drive, Suite 300; Reston, VA 20190;
`
`jim.heintz@dlapiper.com, 703-773-4148 (phone), 703-773-5200 (fax).
`
`Service Information
`4.
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel above. Apple consents to electronic
`
`service to lead and back-up counsel and to Apple-Uniloc-IPR@dlapiper.com.
`
`Proof of Service on the Patent Owner
`B.
`As identified in the attached Certificate of Service, a copy of this Petition
`
`and supporting evidence is being served electronically by agreement of the parties
`
`and pursuant to 37 C.F.R. §§ 42.6&42.105(b).
`2
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`Power of Attorney
`C.
`Powers of attorney are being filed with designation of counsel in accordance
`
`with 37 C.F.R. § 42.10(b).
`
`Standing
`D.
`In accordance with 37 C.F.R. §42.104(a), Petitioner certifies that the 877
`
`patent is available for inter partes review and that Petitioner is not barred or
`
`estopped from requesting an inter partes review challenging the patent claims on
`
`the grounds identified in this Petition.
`
`Fees
`E.
`The undersigned authorizes the Director to charge the fee specified by 37
`
`C.F.R. § 42.15(a) and any additional fees that might be due in connection with this
`
`Petition to Deposit Account No. 50-3266.
`
`III.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`A.
`Prior Art
`The following references are pertinent to the grounds of unpatentability
`
`under Title 35 United States Code, pre-AIA:
`
` “Kirmse” (Ex. 1005) – U.S. Patent No. 6,699,125, issued March 2,
`
`2004, published July 4, 2002 (as 2002/0086732), and filed on July 2,
`
`2001 (as 09/898,746), and prior art under Sections 102(a), (b) and (e).
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` “Chambers” (Ex. 1006) – U.S. Patent Application Publication No.
`
`2003/0142654, published July 31, 2003, filed January 21, 2003 (as
`
`10/348,244), and prior art under Sections 102(a), (b) and (e).
`
` “Cordenier” (Ex. 1007) – European Patent Application Publication
`
`No. EP 1 385 323 A1, published January 28, 2004 and is prior art
`
`under Sections 102(a) (regardless of the effective filing date of the
`
`Challenged Claims) and (b) (to the extent the Challenged Claims are
`
`not entitled to an earlier effective filing date) .
`
` “TURN” (Ex. 1009) – Draft Request for Comment published by IETF
`
`no later than November 14, 2001. As explained in the declaration of
`
`Alexa Morris, TURN was indexed and published on a publicly
`
`available website and repository making it available and accessible to
`
`any interested person no later than November 14, 2001. Ex. 1009 at
`
`1-2. As explained by Dr. Houh, anyone, including a POSITA, would
`
`have had access to, and would have been able to locate TURN no later
`
`than November 14, 2001. Ex. 1002 at ¶5; Ex. 1024 at 12-13. Indeed,
`
`the purpose of publishing Requests for Comments was to publicly
`
`solicit input from POSITAs for the standards setting processes. Id.
`
`TURN was in fact available and located by POSITAs, as established
`
`by its citation in contemporaneous documents. Ex. 1015 at 7-8.
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` “RSIP” (Ex. 1013) – Request for Comment 3103 was published by
`
`IETF no later than October 2001. As explained in the declaration of
`
`Sandy Ginoza, RSIP was indexed and published on a publicly
`
`available website and repository making it available and accessible to
`
`any interested person no later than October 2001. Ex. 1013 at 1-3. As
`
`explained by Dr. Houh, anyone, including a POSITA, would have had
`
`access to, and would have been able to locate RSIP no later than
`
`October 2001. Ex. 1002 at ¶6; Ex. 1024 at 10-11. Indeed, the
`
`purpose of publishing Requests for Comments was to publicly solicit
`
`input from POSITAs for the standards setting processes. Id. RSIP
`
`was in fact available and located by POSITAs, as established by its
`
`citation in contemporaneous documents. Ex. 1009 at 5-6; Ex. 1015 at
`
`7-8, 10-15.
`
`Grounds
`B.
`This Petition, supported by the declaration of Dr. Henry Houh (“Houh
`
`Declaration”) (EX. 1002), requests cancellation of claims 1-20 of the 877 patent on
`
`the following grounds under Title 35, United States Code, pre-AIA:
`
` Ground 1: Claims 1-20 are invalid under Section 103 over the
`
`combination of Kirmse and Chambers
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` Ground 2: Claims 1-20 are invalid under Section 103 over the
`
`combination of Chambers and RSIP
`
` Ground 3: Claims 1-3, 5-10, 12-17, 19-20 are invalid under Section
`
`103 over the combination of Cordenier and TURN
`
`IV. THIS PETITION IS PROPER UNDER 35 U.S.C. §§ 314(A) AND
`325(D)
`None of the combinations asserted herein was considered during prosecution
`
`or any post-grant proceeding of the 877 Patent, and none is cumulative of any
`
`references of record.
`
` Chambers, Kirmse, Cordenier, and RSIP were not considered during
`
`prosecution.
`
` TURN was not considered during prosecution. A later version of
`
`TURN, dated February 21, 2005, after the 877 patent’s claimed
`
`effective filing date of April 5, 2004, was made of record. The
`
`February 21, 2005 version of TURN was not substantively addressed.
`
`V.
`
`FULL STATEMENT OF REASONS FOR REQUESTED RELIEF
`A.
`Summary of the 877 Patent
`The 877 patent describes a technique for establishing a connection and then
`
`transferring data between mobile devices through a server. Ex. 1001 at Figs. 1 and
`
`2, 5:20-30. With this technique, the initiating device (1) sends a request to a server
`
`for an IP address and port, (2) receives the IP address and port from the server, (3)
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`sends the IP address and port to another mobile device via SMS, and then (4)
`
`exchanges data with the other mobile device through the server. Id. at Fig. 2 (steps
`
`225, 230, 240, 260) and 4:39-5:30. Ex. 1002 at ¶34.
`
`Claims of the 877 Patent
`B.
`Claim 1 tracks the disclosed technique of establishing a communication by
`
`claiming (1.pre) a method for an initiating a data transfer among mobile devices
`
`(1.a) transmitting a request to a server to allocate a network address and port, (1.b)
`
`receiving the network address and port, (1.c) sending the address and port via
`
`page-mode messaging service to another mobile device, and (1.d) participating in a
`
`data exchange session with that mobile device through the server. Ex. 1001 at
`
`8:20-35 (claim 1). These steps are highlighted in annotated Figure 2 below. Ex.
`
`1002 at ¶35.
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`Claim 2 specifies that the page-mode messaging service may be used for
`
`other purposes. Claim 3 specifies that the page-mode message is encoded to be
`
`recognized by software on the participating mobile device. Claim 4 specifies that
`
`additional devices are invited to participate in the data exchange session. Claim 5
`
`specifies that the initiating device is a non-mobile device. Claim 6 specifies that
`
`the unique identifier is associated with a telephone number. Claim 7 specifies that
`
`the session identifier further comprises an IP address. Claims 8-14 (Beauregard)
`
`and claims 15-20 (mobile device) parallel claims 1-7. Ex. 1002 at ¶36.
`
`Effective Filing Date
`C.
`The 877 patent claims priority to continuation and continuation-in-part
`
`applications dating back to April 5, 2004. However, no claim of the 877 patent is
`
`entitled to an effective filing date earlier than Mar. 28, 2005, because no claim of
`
`the 877 patent is supported by any of application nos. 10/817,994 (Ex. 1021),
`
`10/935,342 (Ex. 1022), or 11/042,620 (Ex. 1023) (collectively, the “P2P
`
`applications”). Ex. 1002 at ¶¶37-38.
`
`The 877 patent identifies the original 10/817,994 application as the “peer-to-
`
`peer” or “P2P patent application” and explains that the technology described
`
`therein will only work within a private network and will not work across Network
`
`Address Translation (NAT). Ex. 1001 at 1:44-2:18. This is because, in the P2P
`
`applications, the peer devices exchange their own addresses and communicate
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`directly in a peer-to-peer fashion without an intervening server. Id. Thus, if the
`
`devices are assigned private addresses from different private networks, the device
`
`that receives that foreign-private address via SMS will not be able to use it on its
`
`own private network to reach the initiating mobile device. Id. The 877 patent
`
`admits that the specification of the P2P patent does not disclose how to address this
`
`problem. Ex. 1001 at 1:44-2:18; Ex. 1002 at ¶39. These statements apply equally
`
`to all the P2P applications. Ex. 1002 at ¶39. This disclosed technique is reflected
`
`in the claims of the patents that issued from the P2P applications. E.g. Ex. 1016 at
`
`claim 1 (“wherein the data transfer session is established in a peer-to-peer fashion
`
`without a server intermediating communications … .”) Ex. 1002 at ¶39.
`
`In contrast, all of the claims of the 877 patent are drawn to new matter, not
`
`described in any P2P application because (1) the 877 patent claims that the devices
`
`exchange a network address and port number of a relay server, not the devices’
`
`own addresses as disclosed in the P2P applications and (2) the 877 patent claims
`
`that the devices communicate through that relay server, not in a peer-to-peer
`
`fashion without an intermediating server as disclosed in the P2P applications. Ex.
`
`1001 at claim 1 (“a network address and port associated with the server …
`
`participating in the data exchange session with the participating mobile device
`
`through the server … .”), claim 8 (same), claim 15 (same). Ex. 1002 at ¶40.
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`Thus, the P2P applications do not demonstrate to a POSITA that the inventor
`
`was in possession of the subject matter claimed in the claims of the 877 patent.
`
`Ex. 1002 at ¶41; see New Railhead Mfg., L.L.C v. Vermeer Mfg. Co., 298 F.3d
`
`1290, 1295 (Fed. Cir. 2002) (“the disclosure must show he had invented each
`
`feature that is included as a claim limitation.”). Indeed, the discussion of the P2P
`
`application in the specification of the 877 patent highlights that the 877 patent is
`
`addressing a problem that was not even recognized, much less addressed, by the
`
`inventor at the time he filed the P2P applications. Ex. 1001 at 1:44-2:18. Ex. 1002
`
`at ¶41. Thus, no claim of the 877 patent is entitled to the effective filing date of
`
`any P2P application.
`
`Person of Ordinary Skill in the Art
`D.
`A person of ordinary skill in the art at the time of the alleged invention of
`
`the 877 patent (a “POSITA”) would have had a Bachelors’ degree in computer
`
`science or a comparable field of study, plus approximately two to three years of
`
`professional experience with cellular phone and IP networks, or other relevant
`
`industry experience. Additional graduate education could substitute for
`
`professional experience, and significant experience in the field could substitute for
`
`formal education. The knowledge of a POSITA would include the subject matter
`
`below. Ex. 1002 at ¶42.
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`SMS Invitations and IP-Based Responses
`1.
`A POSITA would have been familiar with the well-known technique of
`
`sending SMS invitations and providing IP-based responses. The 925 patent, which
`
`is related to the 877 patent (Ex. 1001 at 1:7-19; Ex. 1016 at 1:7-12), discusses
`
`MMS protocol, which was one well known and standardized example of that
`
`technique. Ex. 1016 at 1:23-42. In the MMS protocol, a server sends its URL to
`
`the target mobile device using a “WAP Push over the Short Message Service
`
`(‘SMS’) protocol.” Id. The mobile device responds by using the server’s URL to
`
`initiate a TCP/IP connection to obtain the multimedia content. Id.; Ex. 1002 ¶43.
`
`A POSITA would know that the mobile device opens the WAP port to listen for
`
`the WAP Push over SMS, so that the message can be routed to the WAP browser,
`
`which can then use the URL to initiate the TCP/IP connection. A POSITA also
`
`understands that the server opens and listens on a TCP port for the expected
`
`TCP/IP response. An example of a WAP Push over SMS followed by a TCP/IP
`
`response is U.S. Pat. App. No. 2003/0217174 (Dorenbosch). Ex. 1011 at Fig. 3,
`
`[0027]-[0037]; Ex. 1002 ¶43.
`
`Additional examples of using an SMS invitation containing an IP address to
`
`set up an IP-based communication session are Chambers (Ex. 1006 at Figs. 1-2,
`
`[0026-39] (using SMS with an IP address to set up IP-based chat session)),
`
`Cordenier (Ex. 1007 at 6:44-8:2 (using SMS with an IP address to set up a VoIP
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`call)), and Alos (Ex. 1014 at Fig. 2A, [0025-28] (using SMS with an IP address to
`
`set up a VoIP or data session)). Thus, this technique was well known and utilizing
`
`it was well within the skill of a POSITA. Ex. 1002 ¶44.
`
`Network Address Translation (NAT)
`2.
`“Network Address Translation” or “NAT” was developed to address the
`
`limited number of IPv4 addresses, which were rapidly being depleted. Ex. 1017
`
`at 5-6; Ex. 1002 at ¶45. In NAT, a translator, commonly referred to as a “NAT
`
`server” (or sometimes just “a NAT”) maps addresses and port numbers between
`
`two different address spaces. One address space is often the public Internet
`
`comprising public IP addresses, and the other address space is often a private
`
`address space. Ex. 1002 at ¶45. The Internet Assigned Numbers Authority
`
`(IANA) initially reserved three blocks of the IP address space for private networks.
`
`Ex. 1017 at 8 (reserving 10.0.0.0; 172.16.0.0; 192.168.0.0). NAT succeeded in
`
`allowing the reuse of these blocks of IPv4 addresses on private networks, thereby
`
`slowing the depletion of addresses. Ex. 1002 at ¶45.
`
`However, NAT created problems for many applications, particularly peer-to-
`
`peer applications. Outbound calls to known public addresses, like a popular web
`
`site, usually were not affected. A device on a private network could easily reach
`
`out to a known server on the public Internet, e.g., a known web site. A NAT server
`
`on the private network would receive the request for the website, translate the
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`address, and forward the request to the website over the public Internet. Any
`
`response from the web server (assuming it was from the same socket) would be
`
`routed back to the NAT server, which would re-translate the response into the
`
`original private address space and send to the initiator. Inbound calls, however,
`
`were adversely impacted by NAT. Devices on the public Internet do not know the
`
`address of devices on the private network and, therefore, could not call them
`
`directly. This led to the development of NAT Traversal Techniques discussed
`
`below. Ex. 1002 at ¶46.
`
`NAT Traversal Techniques
`3.
`The problems caused by NAT, and the solutions provided by NAT Traversal
`
`Techniques, were well known in the art. Ex. 1002 at ¶47; Ex. 1015 at 6.
`
`Numerous NAT traversal techniques were standardized, such as STUN, TURN,
`
`and RSIP. Id.; Ex. 1019; Ex. 1009, Ex. 1013. The ICE protocol (“Interactive
`
`Connectivity Establishment (ICE) : A Methodology for Network Address
`
`Translator (NAT) Traversal for the Session Initiation Protocol (SIP)”) makes use
`
`of the STUN, TURN, and RSIP protocols to find the best NAT Traversal
`
`Technique to use in any given circumstance. Ex. 1015 at 7-8; Ex. 1002 at ¶47.
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`Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`E.
`The Challenged Claims are interpreted using the same claim construction
`
`standard that is used to construe the claim in a civil action in federal district court.
`
`83 FR 51340-59.
`
`Petitioner does not contend that the constructions proposed herein are
`
`complete constructions of these limitations or the claims for any other purpose,
`
`including for issues that have been raised in the related litigation. Because the
`
`prior art asserted herein discloses the preferred embodiment within the indisputable
`
`scope of the claims, the Board need not construe the outer bounds of the claims as
`
`part of these proceedings. The district court may have to address other bounds of
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`the claims in addressing infringement. See, e.g., 83 FR 51340 at 47-48, 55
`
`(“[O]nly those terms that are in controversy need be construed, and only to the
`
`extent necessary to resolve the controversy”), 65-71.
`
`1.
`
`“page-mode messaging service” (claims 1-3, 6, 8-10, 13, 15-
`17, 20)
`This limitation need not be construed explicitly for purposes of the issues
`
`raised in the Petition. The specification requires that “page-mode messaging
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`service” encompasses the Short Message Service (“SMS”). Ex. 1001 at Fig. 1,
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`2:43-50; 3:41-45; 4:12-13; 5:8-14; 5:55-59; see also Ex. 1016 at claim 4; Ex. 1002
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`at ¶48. The prior art asserted herein discloses SMS. Ex. 1002 at ¶48.
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`The preambles are not limiting (all claims)
`2.
`None of the preambles of the independent claims is limiting because the
`
`body of each independent claim defines a complete invention. Ex. 1002 at ¶49.
`
`Additionally, with respect to 8.pre, the preamble is not limiting because claims 8-
`
`14 are to be treated as method claims for purposes of invalidity. Digital-Vending
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`Services International, LLC v. The University of Phoenix, Inc., 672 F.3d 1270,
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`1275-76 (Fed. Cir. 2012) (Beauregard claims treated as method claims to avoid
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`exalting form over substance).
`
`3.
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`“wherein the unique identifier utilized by the page-mode
`messaging service is associated with a telephone number of
`the participating mobile device”(claims 6, 13, 20)
`This limitation need not be construed explicitly for purposes of the issues
`
`raised in the Petition. The ordinary meaning of this phrase includes the case where
`
`the unique identifier is the telephone number. Moreover, that is the only
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`“association” disclosed in the specification as the unique identifier utilized by SMS
`
`is the telephone number. Ex. 1001 at 4:4-5; Ex. 1002 at ¶50. Construing this
`
`limitation to exclude use of the telephone number as the unique identifier would be
`
`improper because it would exclude all disclosed embodiments. Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
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`15
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`VI. GROUND 1: KIRMSE IN VIEW OF CHAMBERS RENDERS
`OBVIOIUS CLAIMS 1-20
`A.
`Kirmse Overview
`Kirmse discloses a server for transferring data between mobile devices.
`
`Kirmse discloses a client-server online gaming system in which a game server
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`intermediates communications between a plurality of game clients. Ex. 1005 at
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`Abstract, Fig. 1, 2:28-3:23, 4:33-54. The game and messenger clients can be
`
`merged into a single application, and the game and messenger servers can be
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`operated as a single server. Id. at 4:3-11. In a preferred embodiment, a player
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`starts a multiplayer game instance and receives from the game server the
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`connection details, including the server’s IP address and game instance’s port
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`number. Id. at Figs. 4-5, 7:26-8:15. The player then sends an invitation to other
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`players that includes the server’s IP address and port number. Id. The other
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`players then use the server’s IP address and port number to join the game. Id.
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`Players can play using wireless devices. Id. at 4:37-45. Kirmse’s disclosure and
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`embodiments are not limited to games and apply to other multi-user activities and
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`applications. Id. at 4:11-18. Ex. 1002 at ¶51.
`
`Chambers Overview
`B.
`Chambers discloses a multi-user chat conferencing system in which an
`
`inviting mobile device sends an SMS invitation message that includes an IP
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`address for a chat session to a plurality of other mobile devices. Ex. 1006 at Figs.
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`1-2, [0026-39]. The other mobile devices then connect to the Internet and use the
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`IP address to connect to the chat session. Id.; Ex. 1002 at ¶52.
`
`C.
`
`Analysis
`1.
`[1.pre] “A method of initiating a data exchange session
`among mobile devices, the method comprising:”
`
`[8.pre] “A non-transitory computer-readable storage
`medium including instructions for initiating a data
`exchange session among mobile devices, which when
`executed cause a processor to perform the steps of:”
`
`[15.pre] “A mobile device configured to initiate a data
`exchange session among mobile devices, the mobile device
`configured to perform the steps of:”
`To the extent these preambles are limiting, they are disclosed or at least
`
`rendered obvious by Kirmse. With respect to 1.pre, Kirmse discloses a method of
`
`initiating a data exchange session (e.g., online gaming, conferencing,
`
`whiteboarding) among mobile devices (e.g., wireless phones). See infra
`
`limitations 1.a-1.e; Ex. 1005 at Figs. 1 and 4-5, 4:33-45 (wireless phones), 7:25-
`
`8:15. With respect to 8.pre, Kirmse discloses a non-transitory computer-readable
`
`storage medium (e.g., RAM, hard drive disk) including instructions for initiating a
`
`data exchange session (e.g., online gaming, chat, white boarding programs) among
`
`mobile devices (e.g., wireless phones), which when executed cause a processor to
`
`perform the steps of the claim as shown below. See infra limitations 1.a-1.e; Ex.
`
`1005 at 2:39-55 (describing logic in server), 4:1-8 (describing programs running on
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`clients and server), 4:33-5:26 (describing CPUs, RAM, hard drive disks for storing
`
`programs on client devices and “Internet-connected server”), 5:54-6:20 (describing
`
`online game server hosting many simultaneous games), 19:9-19 (describing logic
`
`in server). In the alternative, it would have been obvious to a POSITA to
`
`implement the servers and clients disclosed in Kirmse using the memory,
`
`instructions and processor recited in the preamble because that would have been
`
`the most obvious way to implement the disclosed functionality. Ex. 1020 at 7-8
`
`(relying on the disclosure of a “computer program” as inherently disclosing the
`
`same type of preamble). With respect to 15.pre, Kirmse discloses a mobile device
`
`(e.g., wireless phones) configured to initiate a data exchange session (e.g., online
`
`gaming) among mobile devices (e.g., wireless phones). See infra limitations 1.a-
`
`1.d; Ex. 1005 at Fig. 1, 4:33-5:26; Ex. 1002 ¶53-55.
`
`2.
`
`Claim 1.a, 8.a, 15.a: “transmitting a request to a server to
`allocate a network address and port associated with the
`server to use in a data exchange session with a participating
`mobile device”
`Kirmse discloses transmitting a request to a server (game server) to allocate
`
`a network address and port associated with the server (IP address and port of game
`
`instance on game server) to use in a data exchange session (online game) with a
`
`participating mobile device (invitee’s wireless phone). Ex. 1005 at Fig. 2, Fig. 4
`
`(steps S1-S2), Fig. 5, 4:33-45 (wireless phones), 5:61-65 (“specific port
`
`reference ... that specifies a specific game in progress”), 6:21-48, 7:27-36 (“IP
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`address and port number”), 8:1-15 (IP address 192.168.0.17 and port 28001),
`
`10:53-11:4 (port 28001), 15:35-42 (“+connect ip:port where ip is the IP address of
`
`the remote game server, and port is the port on the remote game server to send
`
`packets to.”). Kirmse discloses that the online game is a data exchange session,
`
`e.g., as the cards played by users in the online game are communicated between the
`
`players. Ex. 1005 at 1:38-61. Kirmse also discloses that the data exchange session
`
`is not limited to online gaming, and could include any multi-user activity, such as
`
`whiteboarding and conferencing. Ex. 1005 at Fig. 10, 4:10-18, 9:14-55, 17:35-52.
`
`The request from the inviter is a request that the server allocate, i.e., distribute to
`
`the requester, the network address and port associated with the game server so that
`
`the requester can join the session and invite others to do so. Ex. 1002 ¶56.
`
`Figure 4 of Kirmse is reproduced below, with steps S2-S3 highlighted,
`
`showing the initiating phone transmitting the request to allocate a network address
`
`and port to the game server. Ex. 1002 at ¶57
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