Case 3:20-cv-04047 Document 1 Filed 06/17/20 Page 1 of 20
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`Brandon Brown
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, California 94104
`Telephone: (415) 439-1400
`Facsimile: (415) 439-1500
`brandon.brown@kirkland.com
`
`Gregory S. Arovas (pro hac vice forthcoming)
`Todd M. Friedman (pro hac vice forthcoming)
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`Telephone: (212) 446-4800
`Facsimile: (212) 446-4900
`Email: greg.arovas@kirkland.com
`Email: todd.friedman@kirkland.com
`
`David Rokach (pro hac vice forthcoming)
`G. William Foster (pro hac vice forthcoming)
`KIRKLAND & ELLIS LLP
`300 N. LaSalle Avenue
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Facsimile: (312) 862-2200
`Email: david.rokach@kirkland.com
`Email: billy.foster@kirkland.com
`
`Attorneys for Plaintiffs
`Samsung Electronics Co., Ltd. and
`Samsung Electronics America, Inc.
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
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`CASE NO. _________________
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF
`NONINFRINGEMENT AND
`INVALIDITY
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`DEMAND FOR JURY TRIAL
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`))))))))))
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`SAMSUNG ELECTRONICS CO., LTD and
`SAMSUNG ELECTRONICS AMERICA,
`INC.
`
`
`Plaintiffs,
`
`
`v.
`
`IXI MOBILE (R&D) LTD. and IXI IP,
`LLC,
`
`
`Defendants.
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 3:20-cv-04047 Document 1 Filed 06/17/20 Page 2 of 20
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`Plaintiffs Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively,
`“Samsung”) seek a declaratory judgment against Defendants IXI Mobile (R&D), Ltd. and IXI IP, LLC
`that (1) Samsung does not infringe U.S. Patent No. 7,295,532 (the “’532 Patent”) and (2) the ’532
`Patent is invalid.
`
`NATURE OF THE ACTION
`1.
`This is an action for a declaratory judgment arising under the patent laws of the United
`States, Title 35 of the United States Code. Samsung seeks a declaratory judgment that res judicata
`bars IXI from asserting the ’532 Patent against Samsung. In the alternative, Samsung seeks a
`declaratory judgment that Samsung does not infringe the ’532 Patent and that the ’532 Patent is invalid.
`PARTIES
`2.
`Samsung Electronics Corporation, Ltd. (“SEC”) is based in South Korea. SEC designs
`and manufactures a wide variety of products, including cellular mobile devices.
`3.
`Samsung Electronics America, Inc. (“SEA”) is a New York corporation with its
`principal place of business at 85 Challenger Road, Ridgefield Park, New Jersey 07660.
`4.
`On information and belief, Defendant IXI Mobile (R&D) Ltd. (“IXI Mobile (R&D)”),
`formerly known as IXI Mobile (Israel) Ltd., is a company incorporated and registered under the laws
`of Israel with a registered address of 11 Moshe Levi Street Lezion 75658, Israel. On information and
`belief, IXI Mobile (R&D) is a subsidiary of non-party IXI Mobile, Inc. On information and belief, at
`the time the ’532 Patent was prosecuted, and until at least 2007, IXI Mobile, Inc. and its subsidiary
`IXI Mobile (R&D) were based in Belmont, California. IXI Mobile (R&D) has alleged that it
`previously owned the ’532 Patent, and that it now has an exclusive license to the ’532 Patent.
`5.
`On information and belief, Defendant IXI IP LLC (“IXI IP”) is a New York limited
`liability company with its principal place of business at 405 Lexington Avenue, New York, New York
`10174 and with a registered address for service of 1218 Central Avenue, Suite 100, Albany, New York
`12205. IXI IP has alleged that it is the owner of the ’532 Patent and has exclusively licensed the ’532
`Patent to IXI Mobile (R&D). On information and belief, IXI IP is a patent licensing entity formed in
`April 2014 that produces no products, and instead exists solely to assert IXI’s patents.
`
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`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 3:20-cv-04047 Document 1 Filed 06/17/20 Page 3 of 20
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`IXI, FOUNDED IN CALIFORNIA, DEVELOPS, PROSECUTES, ENFORCES, AND
`LICENSES ITS PATENTS IN CALIFORNIA
`
`A.
`
`IXI Was Founded in California and Used California Counsel to Prosecute and
`Obtain the ’532 Patent
`6.
`On information and belief, IXI Mobile, Inc. was founded in 2000 and was
`headquartered in Redwood City or in Belmont, California, both of which are within this District. On
`information and belief, Defendant IXI Mobile (R&D), the alleged former owner and current exclusive
`licensee of the ’532 Patent, was a subsidiary of IXI Mobile, Inc., and was also located in Redwood
`City or in Belmont, California, within this District, until at least 2007. A true and correct copy of IXI
`Mobile, Inc.’s SEC Form 8-K Report dated August 12, 2008, listing the location of IXI Mobile, Inc.’s
`headquarters in Belmont, California, is attached hereto as Ex. A (IXI Mobile, Inc., Current Report
`(Form 8-k) (Aug. 13, 2008)). IXI has alleged that during the time in which IXI Mobile, Inc. was
`headquartered in California, IXI Mobile, Inc. and its subsidiary IXI Mobile (R&D) designed,
`developed, and commercialized products, including the IXI Ogo family of mobile devices that IXI
`asserts practice the ’532 Patent.
`7.
`On information and belief, IXI retained patent prosecution counsel in California to
`prosecute and secure the ’532 Patent. The ’532 Patent was prosecuted by the California law firm
`Century IP Group.
`8.
`The U.S. Patent and Trademark Office (“PTO”) issued the ’532 Patent, titled “System,
`Device and Computer Readable Medium for Providing Networking Services on a Mobile Device,” on
`November 13, 2007. A true and correct copy of the ’532 Patent is attached as Ex. B, which includes
`an Ex Parte Reexamination Certificate, issued June 17, 2020, that issued new and amended claims for
`the ’532 Patent.
`B.
`IXI Sued Samsung For Infringing Originally Issued Claims Of The ’532 Patent
`In A Case That Was Transferred To And Currently Remains Pending In The
`Northern District of California
`9.
`On June 17, 2014, IXI sued Samsung in the U.S. District Court for the Southern District
`of New York, alleging that Samsung devices that include “Wireless Hotspot” functionality (the
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`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 3:20-cv-04047 Document 1 Filed 06/17/20 Page 4 of 20
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`“accused products”) infringe certain originally issued claims of the ’532 Patent. See Complaint, IXI
`Mobile (R&D) Ltd. et al. v. Samsung Elecs. Co., Ltd. et al, No. 1:14-cv-7954-RJS (S.D.N.Y. June 17,
`2014), Dkt. No. 1.
`10.
`IXI similarly sued Apple Inc. (“Apple”) and BlackBerry Limited and BlackBerry
`Corporation (collectively, “BlackBerry”), in the Southern District of New York for purportedly
`infringing the same patents. See IXI Mobile (R&D) Ltd. et al. v. Apple Inc., No. 1:14-cv-7954-RJS
`(S.D.N.Y. Oct. 2, 2014); IXI Mobile (R&D) Ltd. et al. v. Blackberry Ltd. et al., No. 1:14-cv-4428-RJS
`(S.D.N.Y. filed Jun. 18, 2014). IXI’s lawsuits against Samsung, Apple, and BlackBerry (the “2014
`Litigations”) were related, but not consolidated.
`11.
`On February 3, 2015, Samsung, Apple, and BlackBerry moved to transfer the 2014
`Litigations from the Southern District of New York to the Northern District of California. On August
`6, 2015, the Southern District of New York granted the motions and transferred the cases to the
`Northern District of California. See Opinion and Order, IXI Mobile (R&D) Ltd. et al. v. Apple Inc.,
`No. 1:14-cv-7954-RJS (S.D.N.Y. Aug. 6, 2015), Dkt. No. 79. All of the cases were assigned to Judge
`Gilliam. See IXI Mobile (R&D) Ltd. et al. v. Apple Inc., No. 4:15-cv-3755-HSG (N.D. Cal. filed Aug.
`17, 2015); IXI Mobile (R&D) Ltd. et al. v. Samsung Elecs. Co. et al., No. 4:15-cv-3752-HSG (N.D.
`Cal. filed Aug. 17, 2015); IXI Mobile (R&D) Ltd. et al. v. Blackberry Ltd. et al., No. 4:15-cv-3754-
`HSG (N.D. Cal. filed Aug. 17, 2015)
`12.
`In the 2014 Litigations, Samsung, Apple, and BlackBerry deposed a California-based
`co-inventor of the ’532 and ’033 Patents in Palo Alto, California, which is within this District, on July
`1, 2015.
`C.
`Cancellation of IXI’s Originally Asserted Claims of the ’532 Patent
`13.
`On June 19, 2015, Samsung and Apple filed two petitions for inter partes review
`(“IPR”) with the Patent Trial and Appeal Board (“PTAB”) on all of the originally issued claims of the
`’532 Patent that were asserted in the 2014 Litigations. Samsung Elecs. Co., Ltd. et al. v. IXI IP, LLC,
`No. IPR2015-01442 (P.T.A.B. Jun. 19, 2015) (the “-01442 IPR”); Samsung Elecs. Co., Ltd. et al. v.
`IXI IP, LLC, No. IPR2015-01443 (P.T.A.B. Jun. 19, 2015) (the “-01443 IPR). Each petition
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`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 3:20-cv-04047 Document 1 Filed 06/17/20 Page 5 of 20
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`challenged the same claims, but on different grounds based on different combinations of prior art
`references.
`14.
`On December 30, 2015, the PTAB instituted review of all the challenged claims of the
`’532 Patent in the -01443 IPR petition except for claim 10. The PTAB declined to institute the -01442
`IPR petition. On December 21, 2016, the PTAB found that all of the instituted claims in the -01443
`IPR were obvious.
`15.
`IXI did not appeal PTAB’s final written decision regarding the ’532 Patent. The PTO
`issued an IPR certificate cancelling all challenged claims of the ’532 Patent except for claim 10 on
`February 27, 2018.
`16.
`IXI subsequently disclaimed claim 10 on December 12, 2019.
`D.
`Ex Parte Reexamination of the ’532 Patent and IXI’s Accusations Against
`Samsung for Infringement of Claims Involved in the Reexamination
`17.
`On April 3, 2018, Apple filed a request for ex parte reexamination of claims 2, 3, 6, 10,
`and 11 of the ’532 Patent. The PTO ordered the reexamination and subsequently rejected all
`challenged claims. Ex. C (2018-09-25 Non-Final Office Action). In response, IXI cancelled or
`amended the rejected claims of the ’532 patent, and proposed new claims. Ex. D (2019-02-20 Office
`Action Response).
`18.
`On March 5, 2019, IXI sent an email to Samsung regarding the then-pending claims in
`the ongoing ex parte reexamination of the ’532 Patent. The letter stated: “Attached to this email is a
`set of the new claims that IXI recently submitted in conjunction with that reexamination proceeding.
`Please let this serve as notice of infringement to your clients in this matter for these new claims and
`as notice that IXI intends to seek leave to amend its infringement contentions [in the 2014 Litigations]
`to include the new claims of the ’532 Patent.” See Ex. E (Email from IXI to Samsung (March 5,
`2019)).
`19.
`On March 7, 2019, IXI filed a motion in the 2014 Litigations to amend its preliminary
`infringement contentions to add, inter alia, unspecified pending claims of the ongoing ex parte
`reexamination of the ’532 Patent. Samsung argued that IXI’s motion should be barred because the
`Court did not have subject matter jurisdiction over claims that had yet to issue or, alternatively, that
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`DECLARATORY JUDGMENT
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`Case 3:20-cv-04047 Document 1 Filed 06/17/20 Page 6 of 20
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`IXI’s motion should be denied for failure to show “good cause.” IXI argued that it was not yet trying
`to literally assert the pending claims of the ongoing reexamination, but was requesting leave to amend
`its contentions to add any patent claims that might issue. The Court determined that IXI had not met
`its burden to amend its infringement contentions because: (1) IXI did not demonstrate sufficient
`diligence; and (2) Samsung would be unduly prejudiced by the amendment. The Court stated that “[i]f
`Plaintiffs want to enforce their newly-minted claims, they can try to do so in a new case.”
`E.
`Dismissal Of The 2014 Litigations And Samsung’s Declaratory Judgment Action
`Regarding The ’033 Patent
`20.
`Following the Court’s denial of IXI’s motion to amend its infringement contentions,
`and the PTO’s continued rejection of the sole claim still asserted in the 2014 Litigation—claim 10 of
`the ’532 Patent—the Court granted Samsung’s and IXI’s joint stipulation to dismiss the 2014
`Litigation.
`21.
`On October 18, 2019, Samsung filed a complaint for declaratory judgment that res
`judicata bars IXI from asserting claims that issued from an ex parte reexamination of the ’033 Patent,
`or in the alternative, that Samsung does not infringe the ’033 Patent, and that the ’033 Patent is invalid.
`22.
`On February 24, 2020, IXI answered Samsung’s declaratory judgment complaint and
`filed counterclaims alleging that Samsung infringes the reexamined claims of the ’033 patent. In its
`answer, IXI admitted that venue is proper in this District and that this Court has personal jurisdiction
`over IXI Mobile (R&D) and IXI IP. That case remains pending.
`F.
`Issuance of the ’532 Reexamination Claims and Continued Threat of Assertion.
`23.
`On June 2, 2020, Apple and Samsung inquired whether IXI intended to assert the
`Reexam Claims, and if so, whether IXI would agree to an amendment to add those claims to existing
`litigation between the parties. On June 4, 2020, IXI responded that it was unwilling to discuss these
`issues nor provide the requested information.
`24.
`On June 17, 2020, the ex parte reexamination of the ’532 Patent concluded, resulting
`in one amended claim (claim [11]) and 15 new claims (claims [32 through 46]) (collectively, the
`“Reexam Claims”). Ex. B at 24-28.
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`DECLARATORY JUDGMENT
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`Case 3:20-cv-04047 Document 1 Filed 06/17/20 Page 7 of 20
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`25.
`Therefore, there is a real and justiciable controversy between IXI and Samsung
`regarding the enforceability of the ’532 Patent against Samsung.
`JURISDICTIONAL STATEMENT
`26.
`This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., and
`under the patent laws of the United States, Title 35 of the United States Code.
`27.
`This Court has subject matter jurisdiction over this action under 28 U.S.C. §§ 1331,
`1338(a), and 2201(a).
`28.
`This Court has personal jurisdiction over IXI Mobile (R&D). Among other things, on
`information and belief, IXI Mobile (R&D) was, at the time the ’532 Patent was prosecuted, based in
`this District and was a subsidiary of IXI Mobile, Inc., a California company. IXI Mobile (R&D) has
`also taken steps, in this District, to assert the ’033 Patent against Samsung.
`29.
`This Court also has personal jurisdiction over IXI IP. Among other things, on
`information and belief, IXI IP has purposefully directed development, prosecution, licensing, and
`enforcement activities into California for its patents, including the ’532 Patent, which it allegedly
`exclusively licenses to IXI Mobile (R&D). See supra ¶¶ 3-8.
`30.
`IXI has also taken steps, in this District, to assert the ’532 Patent against Samsung. See
`IXI Mobile (R&D) Ltd. v. Samsung Elecs. Co. Ltd. et al, Case No. 4:15-cv-03752-HSG Dkt. 166
`(motion to amend infringement contentions to assert reexamined claims of the ’532 Patent against
`Samsung).
`31.
`IXI has also previously litigated and is currently litigating offensive claims for
`infringement of its patents in this District, further supporting personal jurisdiction over IXI. See, e.g.,
`IXI Mobile (R&D) Ltd. et al. v. Blackberry Ltd. et al., No. 3:15-cv-03754 (voluntarily dismissed
`without prejudice in February 2019); IXI Mobile (R&D) Ltd. et al. v. Samsung Elecs. Co., Ltd. et al.,
`No. 4:15-cv-03752 (stipulated dismissal in January 2020); IXI Mobile (R&D) Ltd. et al. v. Apple Inc.,
`No. 4:15-cv-03755 (stipulated dismissal in January 2020); and Samsung Elecs., Co., Ltd. et al. vs. IXI
`Mobile (R&D) Ltd. et al., No. 4:19-cv-06773 (current pending).
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`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 3:20-cv-04047 Document 1 Filed 06/17/20 Page 8 of 20
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`32.
`Venue is proper in this District under 28 U.S.C. §§ 1391(b)-(c) because a substantial
`part of the events giving rise to Samsung’s claim occurred in this District, and because IXI is subject
`to personal jurisdiction here.
`33.
`An immediate, real, and justiciable controversy exists between IXI and Samsung as to
`whether IXI is estopped from asserting the ’532 Patent against Samsung, whether Samsung is
`infringing or has infringed the ’532 Patent, and whether the ’532 Patent is invalid. Because this action
`presents an actual controversy with respect to the enforceability, the noninfringement, and the
`invalidity of the ’532 Patent, the Court may grant the declaratory relief sought pursuant to 28 U.S.C.
`§ 2201 et seq.
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`INTRADISTRICT ASSIGNMENT
`
`34.
`For purposes of intradistrict assignment under Civil Local Rules 3-2(c) and 3-5(b), this
`Intellectual Property Action will be assigned on a district-wide basis.
`CLAIMS FOR RELIEF
`FIRST CLAIM FOR RELIEF
` (Declaratory Judgment of Noninfringement of U.S. Patent No. 7,295,532)
`35.
`Samsung repeats and realleges each and every allegation contained in paragraphs 1
`through 33 of this Complaint as if fully set forth herein.
`36.
`IXI has alleged and continues to allege that Samsung infringes the ’532 Patent. The
`Court should enter judgment declaring that Samsung does not infringe the ’532 Patent.
`37.
`Exemplary claim 32 of the ’532 Patent recites:
`
`Limitation
`
`Claim Language (emphasis added)
`
`[P]
`
`[a]
`
`[b]
`
`[c]
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`A hand-held cellular telephone for enabling communication between one
`or more devices connected to one or more cellular networks and one or
`more programmable devices connected to a wireless local area network,
`the hand-held cellular telephone comprising:
`
`a touchscreen;
`
`a graphical user interface;
`
`a first transceiver having a cellular network address, the first transceiver
`to communicate with the one or more programmable devices connected
`to said one or more cellular networks by sending and receiving cellular
`signals;
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`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 3:20-cv-04047 Document 1 Filed 06/17/20 Page 9 of 20
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`a second transceiver to communicate with the one or more programmable
`devices connected to the wireless local area network by sending and
`receiving short-range radio signals;
`
`a storage device to store:
`a router software component to transfer a plurality of data packets
`between the one or more devices connected to the one or more cellular
`networks and the one or more programmable devices connected to the
`wireless local area network by the cellular signals and the short-range
`radio signals, wherein said plurality of data packets includes an internet
`Protocol ("IP") packet;
`and an interface software component to add a first network service
`software component to provide one or more network services to the
`wireless local area network, the first network service software component
`loaded into the storage device from the one or more devices connected to
`the one or more cellular networks;
`and
`
`one or more processors connected to the storage device to process the
`cellular signals and the short-range radio signals,
`
`wherein the one or more cellular networks include a plurality of public IP
`addresses and the wireless local area network includes a plurality of
`private IP addresses,
`
`wherein the router software component is a router software component to
`translate a first IP address in the plurality of public IP addresses to a
`second IP address in the plurality of private IP addresses,
`
`wherein the one or more programmable devices connected to the wireless
`local area network comprises a wearable device having at least one
`processor, and
`
`wherein the hand-held cellular telephone is a hand-held cellular telephone
`to enable programming of the wearable device over the wireless local
`area network by at least one manager server connected to the hand-held
`cellular telephone,
`
`wherein the hand-held cellular telephone comprises a messaging software
`component to enable one of the one or more programmable devices
`connected to the wireless local area network to send messages, and
`
`wherein the messaging software component comprises a short message
`system (SMS) software component,
`
`and wherein the router software component, the interface software
`component. and the messaging software component are stored in the
`storage device during manufacture of the hand-held cellular telephone.
`
`
`
`[d]
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`[e.1]
`[e.2]
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`
`
`[e.3]
`
`
`[f]
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`[g]
`
`[h]
`
`[i]
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`[j]
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`[k]
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`[l]
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`[m]
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`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`38.
`Samsung has not infringed and does not infringe any valid and/or enforceable claim of
`the ’532 Patent, directly or indirectly, literally or under the doctrine of equivalents, through the
`manufacture, use, sale, and/or offer for sale of Samsung’s accused products. By way of example,
`Samsung’s accused products do not satisfy at least limitations 32[e.3] and 32[h] of exemplary claim
`32.
`
`39.
`First, Samsung’s accused products do not include “an interface software component”
`claimed in limitation 32[e.3] of exemplary claim 32. To the extent that this claim language is not
`found indefinite due to failure to provide sufficient corresponding structure under Section 112(f),
`Samsung’s accused devices do not satisfy the functionality that is arguably disclosed in the
`specification in connection with this claim language. For example, Samsung’s accused devices do not
`satisfy the disclosures at 10:2-4, 10:12-15, 10:18-23, 10:45-11:10 of the specification of the ’532
`patent.
`
`40.
`Second, Samsung’s accused products do not include a “router software component”
`claimed in limitation 32[h] of exemplary claim 32 at least because Samsung’s accused devices do not
`translate a first IP address in a plurality of public IP addresses to a second IP address in a plurality of
`private IP addresses, as claimed in limitation 32[h]. For example, Samsung’s accused devices do not
`translate between a first public IP address provided to the device from a cellular network and a second
`private IP address for a device connected to the device via the mobile hotspot functionality.
`41.
`Thus, Samsung’s accused products do not satisfy at least limitations 32[e.3] and 32[h]
`of exemplary claim 32. Samsung does not infringe the remaining claims of the ’532 Patent for at least
`similar reasons.
`42.
`As a result of the acts described in the foregoing paragraphs, there exists a substantial
`controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.
`43.
`A judicial declaration is necessary and appropriate so that Samsung may ascertain its
`rights regarding the ’532 Patent.
`44.
`Samsung is entitled to a judicial declaration that it has not infringed and does not
`infringe the ’532 Patent.
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 3:20-cv-04047 Document 1 Filed 06/17/20 Page 11 of 20
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`SECOND CLAIM FOR RELIEF
`(Declaratory Judgment of Invalidity of U.S. Patent No. 7,295,532)
`45.
`Samsung repeats and realleges each and every allegation contained in paragraphs 1
`through 43 of this Complaint as if fully set forth herein.
`46.
`The ’532 Patent is invalid under 35 U.S.C. §§ 102 and/or 103 because its claims are
`anticipated and/or rendered obvious by prior art. By way of example, exemplary claim 32 is invalid
`under 35 U.S.C. §§ 102 and/or 103 because it is anticipated and/or obvious in view of prior art.
`47.
`As an example, claim 32 is invalid as obvious in view of International Publication No.
`WO 2001/076154 A2 (“Marchand”), printed publication “Router Plugins: A Software Architecture
`for Next Generation Routers,” Computer Communication Review (1998), vol. 28, No. 4, p. 229-240
`(“Router Plugins”), U.S. Patent No. 6,622,017 (“Hoffman”), U.S. Patent No. 5,537,608 (“Beatty”),
`and International Publication No. WO 2001/048977 A2 (“Baranowski”). Claim 32 is identical to
`original claim 1 of the ’532 Patent (which the PTAB found unpatentable over Marchand, Router
`Plugins, and Hoffman), with the exception that claim 32 further includes (i) a cellular telephone with
`a touchscreen and graphical user interface; (ii) a wearable device; (iii) software to enable programming
`of the wearable device; (iv) SMS software to enable tethered devices to send messages; and (v)
`software installed on the cellular telephone during manufacture.
`48. Marchand discloses “an ad-hoc network . . . established for a plurality of devices, and
`a gateway that provides access through the ad-hoc network to external wireless IP networks.”
`Marchand at 4:15-19. Marchand also discusses mobile phones having multiple IP addresses and
`receiving IP packets from a network through a “public IP address” and forwarding those packets to a
`“private IP address” of a destination device. Marchand at 4:23-30; 7:12-17; 10:30-31. Router Plugins
`discloses a software architecture that “allows code modules, called plugins, to be dynamically added
`and configured” on a router. Router Plugins, abstract. Hoffman teaches a “microprocessor 51” that
`“controls all operations of the handset[.]” Hoffman at 12:47-50. Hoffman also discloses downloading
`software plugins, from the internet, using cellular over-the-air programming, and loading the plugins
`into memory storage. Hoffman at 3:15-17, 9:42-48, 10:61-65, 13:5-8. Beatty discloses a hand-held
`cellular telephone that includes a graphical user interface and a touchscreen. Beatty at 4:21-33.
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`DECLARATORY JUDGMENT
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`Case 3:20-cv-04047 Document 1 Filed 06/17/20 Page 12 of 20
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`Baranowski discloses a communication system including in which a gateway device communicates
`messages between an external network and other devices on a subnet. Baranowski at 4:24-5:2. The
`gateway device may be a hand-held cellular telephone and the subnet devices can include wearable
`devices. Baranowski at 21:8-10, 26:29-27:4.
`49.
`The preamble of claim 32 recites “[a] hand-held cellular telephone for enabling
`communication between one or more device connected to one or more cellular networks and one or
`more programmable devices connected to a wireless local area network, the hand-held cellular
`telephone,” the system for providing access to the Internet. This limitation is substantially similar to
`the preamble of claim 1 (which was previously found by the PTAB to be taught by Marchand as
`supplemented by Router Plugins and Hoffman), with the exception that it recites that the hand held
`device is a “cellular telephone” and the one or more devices connected a wireless local area network
`are “programmable.” Marchand discloses, or at a minimum renders obvious, this limitation. For
`example, Marchand’s system includes a hand-held cellular telephone that operates as a gateway
`“between an external wireless Internet Protocol (IP) network and devices in the ad-hoc network.”
`Marchand at 4:21-23, 13:12-14. The external wireless IP network may be a “cellular network.” Id. at
`6:23-25. The devices in the wireless local area network (the ad-hoc network/piconet) include devices
`such as a printer and laptop, and are programmable in that, for example, “repairmen can call the
`Piconet and . . . remotely download new software versions into the digital control systems of [the
`devices].” Id. at 13:15-19.
`50.
`Limitations 32[a] and 32[b] recite that the cellular telephone comprises “a touchscreen”
`and “a graphical user interface.” Marchand and Beatty render obvious this limitation. For example,
`Marchand discloses a cellular telephone, mobile phone 33. Marchand at 7:12-14. Beatty discloses a
`hand-held cellular telephone that includes a graphical user interface and a touchscreen. Beatty at Fig.
`2, 4:21-33. Implementing a touchscreen and graphical user interface, as disclosed in Beatty, on a
`hand-held cellular telephone, such as Marchand’s mobile phone, was well-known prior to the ’532
`Patent.
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`51.
`Limitation 32[c] of claim 32 recites “a first transceiver having a cellular network
`address, the first transceiver to communicate with the one or more programmable devices connected
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`Case 3:20-cv-04047 Document 1 Filed 06/17/20 Page 13 of 20
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`to said one or more cellular networks by sending and receiving cellular signals.” This limitation is
`identical to the first limitation of claim 1, which was previously found by the PTAB to be taught by
`Marchand as supplemented by Router Plugins and Hoffman. Marchand discloses, or at a minimum
`renders obvious, this limitation. For example, Marchand discloses that a mobile phone includes a
`“cellular radio modem” to connect to the wireless IP network, which may be a cellular network made
`up of one or more programmable devices. Marchand at 7:19-23.
`52.
`Limitation 32[d] of claim 32 recites “a second transceiver to communicate with the one
`or more programmable devices connected to the wireless local area network by sending and receiving
`short-range radio signals.” This limitation is identical to the second limitation of claim 1 (which was
`previously found by the PTAB to be taught by Marchand as supplemented by Router Plugins and
`Hoffman), with the exception that the one or more devices connected to the wireless local area network
`are “programmable.” Marchand discloses, or at a minimum renders obvious, this limitation. For
`example, Marchand discloses the mobile phone sends and receives short-range radio signals with
`various programmable devices (e.g., a laptop and printer) in a Bluetooth network. Marchand at 7:9-
`11; 7:18-21.
`53.
`Limitation 32[e.1] and 32[e.2] together recite “a storage device configured to store” “a
`router software component to transfer a plurality of data packets between the one or more devices
`connected to the one or more cellular networks and the one or more programmable devices connected
`to the wireless local area network by the cellular signals and the short-range radio signals, wherein
`said plurality of data packets includes an internet Protocol ("IP") packet.” This limitation is nearly
`identical to limitations of claim 1, which were previously found by the PTAB to be taught by Marchand
`as supplemented by Router Plugins and Hoffman. Marchand discloses, or at a minimum renders
`obvious, these limitations. For example, Marchand’s “mobile phone receives IP packets from the
`GPRS network through its public IP address, and forwards the received packets to the private IP
`address of the destination device in the Piconet.” Marchand at 7:14-16. The mobile phone “also
`translates in the other direction for data going out of the Piconet to the GPRS network.” Marchand at
`7:16-17. That translation of a “public IP address” of the mobile phone in an IP packet received from
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`Case 3:20-cv-04047 Document 1 Filed 06/17/20 Page 14 of 20
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`the GPRS network “to the private IP address of the appropriate device” is performed by a router
`software component stored in a storage device of the mobile phone.
`54.
`Limitation 32[e.2] of claim 32 recites “an interface software component to add a first
`network service software component to provide one or more network services to the wireless local
`area network, the first network service software component loaded into the storage device from the
`one or more devices connected to the one or more cellular networks.” This limitation is identical to
`part of the fifth limitation of claim