Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 49
`Entered: March 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLACKBERRY CORP., and BLACKBERRY LTD.,
`Petitioner,
`
`v.
`
`ZIPIT WIRELESS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01508
`Patent 8,086,678 B2
`
`____________
`
`
`
`Before TREVOR M. JEFFERSON, NEIL T. POWELL, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`

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`IPR2014-01508
`Patent 8,086,678 B2
`
`
`INTRODUCTION
`I.
`Petitioner Blackberry Corp. and Blackberry LTD. filed a Petition on
`September 16, 2014, requesting an inter partes review of claims 1, 2, 5, and
`7 of U.S. Patent No. 8,086,678 B2 (Ex. 1001, “the ’678 patent”). Paper 1
`(“Pet.”). Patent Owner Zipit Wireless, Inc. did not file a Preliminary
`Response to the Petition.
`Based on these submissions, we instituted trial as to claims 1, 2, 5,
`and 7 of the ’678 patent as anticipated by Adams.1 Paper 6, 19 (“Dec. to
`Inst.”).
`After institution, Patent Owner filed a Patent Owner’s Response
`(Paper 10, “PO Resp.”), and Petitioner filed a Reply (Paper 13, “Reply”).
`Additionally, we authorized a Patent Owner Sur-Reply, which Patent Owner
`filed on November 6, 2015 (Paper 24, “Sur-Reply”). Petitioner further filed
`a notice withdrawing portions of its Reply.2 Paper 36.
`Petitioner also filed a Motion to Exclude. Paper 32 (“Pet. Mot.
`Exclude”). Patent Owner filed an Opposition to Petitioner’s Motion to
`Exclude (Paper 39, “PO Exclude Opp.”), and Petitioner filed a Reply (Paper
`43, “Pet. Exclude Reply”).
`Additionally, Patent Owner filed a Motion to Exclude. Paper 35 (“PO
`Mot. Exclude”). Petitioner filed an Opposition to Patent Owner’s Motion to
`Exclude (Paper 40, “Pet. Exclude Opp.”), and Patent Owner filed a Reply
`(Paper 45, “PO Exclude Reply”).
`An oral hearing was conducted on December 7, 2015. A transcript of
`
`1 U.S. Patent Publication No. 2005/0257209 A1, published Nov. 17, 2005
`(Ex. 1004, “Adams”).
`2 Petitioner’s Exhibit 1028 is a red-lined version of its Reply showing
`withdrawn portions.
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`IPR2014-01508
`Patent 8,086,678 B2
`the oral hearing is included in the record. Paper 47 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
`patentability of claims 1, 2, 5, and 7. For the reasons discussed below,
`Petitioner has demonstrated by a preponderance of the evidence that claims
`1, 2, 5, and 7 are unpatentable.
`A. Related Proceedings
`The ’678 patent is involved in a district court proceeding in the U.S.
`District Court for the District of South Carolina captioned Zipit Wireless Inc.
`v. BlackBerry Ltd., No. 6:13-cv-2959-JMC (D.S.C. 2013). Pet. 1.
`Additionally, Petitioner has filed Petitions challenging the patentability of
`certain claims of Patent Owner’s U.S. Patent Nos. 7,292,870 (IPR2014-
`01507); 7,894,837 (IPR2014-01506); and 8,190,694 (IPR2014-
`01509).
`
`B. The ’678 Patent
`The ’678 patent is directed to controls for network communication
`devices such as parental controls for mobile instant messaging terminals.
`Ex. 1001, 1:7–9. Figure 1 of the ’678 patent is reproduced below.
`
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`IPR2014-01508
`Patent 8,086,678 B2
`Figure 1 shows system 10 that regulates usage of a mobile computer
`network communication device. Id. at 3:7–9. System 10 includes home
`location 14, remote site location 18, device regulation/support site 20, and
`internet service provider (“ISP”) site 24. Id. at 3:32–34. As shown, these
`sites and locations are coupled to one another through a computer
`network 28. Id. at 3:34–36. Home location 14 has a local area network
`(“LAN”) that includes personal computer (“PC”) 30 and a mobile computer
`communication device, such as instant messaging terminal 34. Id. at 3:38–
`41. As shown, these devices communicate with ISP site 24 or device
`regulation/support site 20 through wireless router 38. Id. at 3:41–43.
`Figure 1 further shows device regulation/support site 20 includes
`mobile device communication gateway 54 that communicates with device
`database 58, profile server 60, and regulation database 64. Ex. 1001, 4:60–
`63. Regulation database 64 stores the controls and rules selected or
`generated by an administrative user for a device registered with
`regulation/support site 20. Id. at 5:13–16. These are the rules and controls
`applied to communications made with a particular mobile device registered
`with the site 20. Id. at 5:16–18. Regulation site 20 may include
`identification data unique for each mobile computer network communication
`device registered with site 20. Id. at 4:65–5:6. The unique identifier enables
`the regulation of the device to be implemented without recourse to a user or
`account identification. Id. at 6:25–27. The ’678 patent indicates regulation
`database 64 may store the controls and rules selected or generated by an
`administrative user for a device registered with regulation/support site 20
`that apply to communications made with a particular mobile device
`registered with site 20. Id. at 5:13–16.
`
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`IPR2014-01508
`Patent 8,086,678 B2
`Figure 3 is reproduced below.
`
`
`Figure 3 shows components of mobile communication device 34 (e.g.,
`instant messaging terminal) having a unique terminal identifier for enabling
`parental regulation of the terminal’s use. Ex. 1001, 3:13–15, 6:4–5. As
`shown, device 34 includes system 150 with processor 154 coupled through
`system bus 158 to memory components 160 and 162. Id. at 6:5–7. The ’678
`patent discloses that memory 160 or 162 may be used to store a unique
`identifier that is installed by the manufacturer of device 34. Id. at 6:20–21.
`The ’678 patent further indicates memories 160 and 162 may be non-volatile
`so the unique identifier remains the same during the life of the device. Id. at
`6:23–25.
`The ’678 patent further discloses that mobile communication device
`34 includes a support communication module configured to communicate
`with regulation/support site 20 in response. Ex. 1001, 6:52–55, 6:62–65.
`For registration of device 34, communication module sends a registration
`message to regulation/support site gateway 54 that includes the unique
`identifier for device 34. Id. at 7:60–64. Gateway 54 determines if the
`unique identifier is in the device database 58. Id. at 7:64–67. The
`communication module also monitors a user’s command input to device 34.
`Id. at 9:7–10; Fig. 6. This process determines whether the entered command
`
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`IPR2014-01508
`Patent 8,086,678 B2
`requires evaluation by control site 20. Id. at 9:10–11. For example, a user
`command may prompt the communication module to generate a monitor
`message that includes the unique device identifier and data from the
`command required for control processing at control site 20. Id. at 9:14–18.
`Control site 20 receives the monitor message and may determine whether it
`is from a device having a unique identifier in device database 58 and
`whether the device is registered. Id. at 9:42–45. Once authenticated, the
`monitor message is parsed and the data compared to rules and control
`parameters stored in association with the device. Id. at 9:52–54. If the data
`violates a rule/parameter, a command message is generated and sent to the
`device for execution. Id. at 9:54–57; Fig. 7.
`For registration of the mobile communication device, the ’678 patent
`discloses in Figure 5 that a device logs in with a user’s account for ISP
`access to enable computer network communication. Ex. 1001, 7:67–8:2.
`The communication module, in response to detection of communication on
`the network 28, sends a registration message to gateway 54 that includes a
`unique identifier. Id. at 8:6–7. Gateway 58 accesses device database 58 to
`verify the unique identifier is in database 58. Id. at 8: 7–9. If not, the
`registration process is aborted. Id. at 8:9–11.
`C. Illustrative Claim
`Of the challenged claims, claim 1 is independent. Claim 1 is
`illustrative of the subject matter of the ’678 patent, and is reproduced below:
`1. A system for controlling computer network communication
`devices that communicate over a computer network comprising:
`a computer network communication device having a non-
`volatile memory containing a unique device identifier;
`a controller operatively connected to a memory in which
`programmed instructions are stored within the computer network
`communication device, the controller being configured to
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`IPR2014-01508
`Patent 8,086,678 B2
`implement a
`to
`instructions
`execute
`the programmed
`communication module that generates a data message for use
`with a service provided by an Internet Service Provider in
`response to a command entered by a user, to generate a monitor
`message containing the unique device identifier and data
`corresponding to the command entered by the user, and to parse
`command messages received by
`the computer network
`communication device; and
`a control site comprising a server operatively connected to
`a device database and a control database, the server being
`configured to compare data in the monitor message received
`from the communication module in the computer network
`communications device to control data stored in the control
`database in response to the monitor message received from the
`communication module
`in
`the
`computer
`network
`communications device having the unique device identifier that
`is also stored in the device database and to establish an
`administrative account for a device in response to the unique
`device identifier corresponding to a device identifier stored in the
`device database.
`
`II. ANALYSIS
`A. Weight Given to Patent Owner’s Declarant
`1. Dr. Konchitsky’s Ph.D.
`Petitioner asserts that Patent Owner’s declarant, Dr. Alon Konchitsky,
`did not receive a genuine Ph.D. from Bournemouth University and, as a
`result, Dr. Konchitsky’s testimony is entitled to no weight. Reply 1. Patent
`Owner responds that Dr. Konchitsky received an electrical engineering
`Ph.D. degree from Bournemouth University Extension in Israel, Campus of
`Ramat Gan College, and submits that several documents, including Dr.
`Konchitsky’s Ph.D. diploma and Ph.D. payment receipts, corroborate Dr.
`Konchitsky’s Ph.D. Sur-Reply 1–3; Exs. 1059–1060. In his declaration, Dr.
`Konchitsky provides that he “unequivocally state[s] – under penalty of
`perjury – that I did in fact receive my Ph.D. in electrical engineering
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`Patent 8,086,678 B2
`from the Bournemouth University Extension in Israel, Campus of
`Ramat Gan College.” Ex. 2082 ¶ 17.
`We note first that the parties do not dispute that Dr. Konchitsky is
`qualified to provide his expert opinion on the subject matter of the ’678
`patent even without considering his Ph.D. from Bournemouth University.
`Sur-Reply 13–15; Tr. 4:14–22, 21:1–15. Petitioner concedes that Dr.
`Konchitsky “worked at Nokia. He worked at a company that was purchased
`by Intel. To be able to testify about emoticons and parental controls on
`devices he meets the low threshold under the federal rules for providing
`expert testimony.” Tr. 4:21–24. Accordingly, the circumstances
`surrounding Dr. Konchitsky’s Ph.D. go to the weight of his testimony rather
`than admissibility.
`Further, we do not find that Petitioner has demonstrated that Dr.
`Konchitsky’s testimony should be afforded diminished weight because Dr.
`Konchitsky falsified his Ph.D. from Bournemouth University Extension
`through Ramat Gan College in Israel. Petitioner concedes that
`[t]he sur-reply shows that it’s possible that Konchitsky did
`receive a degree from either Ramat Gan or the extension at
`Ramat Gan. That was not an authorized diploma, had nothing to
`do with the Bournemouth University. And whether or not he
`knew that or was unwittingly duped into believing that he was
`getting a genuine Bournemouth University diploma, in the time
`allotted in IPR and our resources, there’s just not enough time
`and money available to prove that circumstantial case whether he
`knew that his diploma was not genuine.
`Tr. 5:14–22. Additionally, Petitioner has withdrawn all its allegations that
`Dr. Konchitsky himself engaged in any act of forgery or perjury with respect
`to his Ph.D. Ex. 2106; Tr. 4:11–23, 6:13–8:2. This is not to say that there is
`sufficient evidence to establish whether Dr. Konchitsky’s Ph.D. is genuine.
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`However, as Petitioner argues, the issue is one of Dr. Konchitsky’s veracity
`and credibility. Tr. 7:7–17. Thus, while it may be possible Dr.
`Konchitsky’s Ph.D. is not genuine, Petitioner has not shown that Dr.
`Konchitsky engaged in any wrongdoing in obtaining his Ph.D. or
`representing that he obtained a Ph.D. from Bournemouth University
`Extension in Israel. Thus, we do not diminish the weight of Dr.
`Konchitsky’s on this basis.
`2. Dr. Konchitsky’s Master’s Degree in Tourism and Hospitality
`Management
`Petitioner further argues that Dr. Konchitsky’s mischaracterization of
`his Master’s degree from Bournemouth University (Tr. 6:15–23)
`demonstrates Dr. Konchitsky’s lack of credibility and diminishes the weight
`of his testimony (see id. at 9:7–14). Petitioner does not dispute Dr.
`Konchitsky received a Master’s degree from Bournemouth University. Tr.
`13:9–15. Rather, Petitioner asserts that Dr. Konchitsky has embellished his
`Master’s degree in tourism and hospitality management by describing it as a
`degree in “management and business.” Id. at 5:23–25.
`Dr. Konchitsky and Patent Owner do not dispute that Dr.
`Konchitsky’s curriculum vitae does not state that his Master’s degree was
`issued in “Tourism and Hospitality Management.” Ex. 2082 ¶ 94; see Tr.
`21:5–7. Dr. Konchitsky asserts that he believes his CV is accurate because
`his
`
`Master’s thesis was focused on computers and computer science,
`and how personal computers could best be integrated into a
`hotel’s business. This field, where I was forecasting the trend in
`a particular vertical industry, is part of Information Technology
`in graduate business studies, which is a subcategory of the school
`of management.
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`IPR2014-01508
`Patent 8,086,678 B2
`Ex. 2082 ¶ 94. While the argument may be made that Dr. Konchitsky’s
`description of his Master’s degree is merely harmless embellishment or an
`artful rewording having the same effective meaning, we find that Dr.
`Konchitsky, nevertheless, incorrectly described his Master’s degree and
`misrepresented his credentials to the Board. Further, that Dr. Konchitsky
`may be qualified to testify based on his undergraduate degrees and
`experience, as asserted by Patent Owner (Tr. 21:16–5), does not mitigate Dr.
`Konchitsky’s misrepresentation of his credentials nor preclude us from
`appropriately weighing his testimony in light of such misrepresentation. We
`expect all parties and individuals involved in proceedings before the Board
`to “have a duty of candor and good faith to the Office during the course of a
`proceeding.” 37 C.F.R. § 42.11. Moreover, we agree with the sentiment
`that “[e]ven the slightest accommodation of deceit or a lack of candor in any
`material respect quickly erodes the validity of the process. As soon as the
`process falters in that respect, the people are then justified in abandoning
`support for the system in favor of one where honesty is preeminent.” United
`States v. Shaffer Equip. Co., 11 F.3d 450, 457–59 (4th Cir. 1993).
`Therefore, we will consider Dr. Konchitsky’s statements regarding his
`Master’s degree in affording his testimony the appropriate weight.
`3. Dr. Konchitsky’s Translation of Mr. Cohen’s Statement
`Petitioner further argues that the circumstances of Dr. Konchitsky’s
`incorrect translation of Mr. Cohen’s Statement (Ex. 2092), submitted to
`support his Ph.D. from Bournemouth University Extension through Ramat
`Gan College in Israel, demonstrate a lack of credibility and reliability. Pet.
`Mot. Exclude 4; Ex. 1061. In particular, Petitioner argues that the incorrect
`English translation of Mr. Cohen’s Statement includes the phrase “[d]uring
`the time period 1999-2002, the Extension offered a doctoral program in
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`Patent 8,086,678 B2
`communication systems in electrical engineering,” for which the Hebrew
`counterpart does not appear in the original Hebrew version. Ex. 2092, 2.
`At the Oral Hearing, counsel for Patent Owner indicated that it relied
`on Dr. Konchitsky for the translation of all documents in his supplemental
`declaration (Ex. 2082). Tr. 13:22–14:11. Counsel for Patent Owner further
`represented that there was a “mismatching problem between the drafts” that
`resulted in the submission of an English version that did not match the
`statement in Hebrew. Id. at 14:16–21. Patent Owner’s counsel stated that
`we have now obtained a declaration from Dr. Konchitsky that
`explains how the error occurred. And we also have a certified
`translation and have obtained a corrected, if you will,
`Exhibit 2092 from Mr. Cohen that matches the English version.
`And in short, just like I said Friday during the call,
`Dr. Konchitsky says it was a mismatching problem between the
`drafts that were discussed and exchanged with Mr. Cohen. He
`apparently mixed up the English translation with the Hebrew
`version. We don’t, of course, speak Hebrew, so we couldn't
`catch the mistake ourselves.
`Id. at 14:12–21. Patent Owner did not provide a certified translation of
`Exhibit 2092 at the time of filing as it was required to do per 37 C.F.R.
`§ 42.63(b).
`We find that this “mismatching” situation could have been avoided if
`a proper certified translation of Exhibit 2092 had been completed and
`submitted as required by Rule 42.63. Although we do not dismiss Dr.
`Konchitsky’s testimony on this basis,3 the misleading translation proffered
`
`
`3 Petitioner has requested authorization to file a motion for sanctions based
`on Dr. Konchitsky’s translation of Exhibit 2092. Specifically, at the Oral
`Hearing, Petitioner requested reimbursement for the cost of obtaining
`certified translations of Exhibits 2087, 2091, and 2092. Tr. 9:13–16. On
`February 12, 2016, by email correspondence, the parties informed us that
`Patent Owner “has fully reimbursed Petitioner for the cost of obtaining
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`IPR2014-01508
`Patent 8,086,678 B2
`by Patent Owner erodes the foundation of Dr. Konchitsky’s declaration and
`the weight we grant his testimony, and undermines the foundation of our
`trial process.
`
`With these considerations in mind, we now turn to the construction of
`certain claim terms.
`
`B. Claim Construction
`In an inter partes review, “[a] claim in an unexpired patent shall be
`given its broadest reasonable construction in light of the specification of the
`patent in which it appears.” 37 C.F.R. § 42.100(b); see also In re Cuozzo
`Speed Techs., LLC, 793 F.3d 1268, 1277–79 (Fed. Cir. 2015) (“We conclude
`that Congress implicitly approved the broadest reasonable interpretation
`standard in enacting the AIA” and “the standard was properly adopted by
`PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 890 (mem.) (2016) . There is a presumption that a claim term
`carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`“Control database” and “device database” (claim 1)
`For purposes of our Decision to Institute, we determined that no claim
`terms needed express construction. Dec. to Inst. 7.
`In the Patent Owner’s Response, Patent Owner proposes a
`construction for the claim term “database” as meaning “a collection of
`information or data that is structured or organized to allow quick access and
`retrieval of the information by a computer.” PO Resp. 18. Patent Owner
`
`
`certified translations of Exhibits 2087, 2091, and 2092.” Ex. 3001.
`Accordingly, we treat Petitioner’s request to file a motion for sanctions as
`moot.
`
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`IPR2014-01508
`Patent 8,086,678 B2
`further urges that a database excludes “any file or list,” and includes data
`organized in records with each record having one or more fields. Id. at 19.
`Patent Owner asserts additionally that the claim phrases “control database”
`and “device database” require two separate and distinct databases under the
`broadest reasonable construction. Patent Owner asserts that Petitioner’s
`declarant, Dr. Arthur Brody testified in his “Litigation Declaration” that the
`“plain language of the asserted claims require that the ‘device database’ and
`‘control database’ are two distinct databases.” Id. at 13–14 (citing Ex. 2001
`¶ 190).
`Petitioner responds that Patent Owner’s proposed definition is
`essentially the same definition proposed previously by Petitioner. Reply 4.
`In the Petition, Petitioner proposes that “database” means “a collection of
`information stored for retrieval and use by a computer system.” Pet. 8;
`Reply 4. Petitioner further asserts that “a collection of information with
`absolutely no structure or organization could not be retrieved and used by a
`computer system. Accordingly, any collection of information with even the
`simplest structure or organization satisfies both experts’ definition of
`‘database.’” Reply 4. Petitioner, however, disagrees with Patent Owner’s
`position that the terms “control database” and “device database” require
`separate databases because the plain meaning of the claim language and the
`disclosure of the ’678 patent do not require separate databases. Id. at 5–6.
`Based on the complete record before us, we agree with the parties that
`the broadest reasonable interpretation of the term “database” is “a collection
`of information or data that is structured or organized to allow access and
`retrieval of the information by a computer.” This interpretation is consistent
`with the Specification, which, for example, describes device database 58 as
`storing identification data and allowing access of stored identification data
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`by gateway 54. Ex. 1001, 4:60–63, 7:65–67. Therefore, we adopt this
`construction. Moreover, we agree with Petitioner’s position that a
`“database” as claimed does not require specific type of structure and even
`the “simplest” structure or organization of information would satisfy the
`element. The literal language of the claim language does not require fields,
`records, etc., and does not exclude the use of files or lists.
`Additionally, we determine that the literal language of the claim terms
`“control database” and “regulation database” do not require separate and
`distinct databases. Further, we have considered both parties’ arguments
`regarding the respective position each has taken in the related district court
`proceeding. These arguments are instructive, but not binding on our
`construction of the claim term “database” in our review. For example, Dr.
`Brody’s testimony in the district court proceeding that the Specification
`describes individual control and regulation databases (Ex. 2001 ¶ 191) does
`not persuade us that the claim terms require separate and distinct databases.
`It is well-settled that even “the fact that the specification describes only a
`single embodiment, standing alone, is insufficient to limit otherwise broad
`claim language.” Howmedica Osteonics Corp. v. Wright Med. Tech., Inc.,
`540 F.3d 1337, 1345 (Fed. Cir. 2008); see also Phillips v. AWH Corp., 415
`F.3d 1301, 1323 (Fed. Cir. 2005) (en banc) (“Although the specification
`often describes very specific embodiments of the invention, we have
`repeatedly warned against confining the claims to those embodiments.”).
`Accordingly, we construe the term “database” as “a collection of
`information or data that is structured or organized to allow access and
`retrieval of the information by a computer,” and do not limit “control
`database” and device database” to separate and distinct databases.
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`C. Claims 1, 2, 5, and 7 – Anticipated by Adams (Ex. 1004)
`Petitioner argues claims 1, 2, 5, and 7 are anticipated under 35 U.S.C.
`§ 102 by Adams. Pet. 29–56. Patent Owner contests Petitioner’s position.
`PO Resp.17–46. As explained below, we have considered the arguments
`and evidence presented by both parties, and we determine Petitioner has
`shown by a preponderance of the evidence that claims 1, 2, 5, and 7 are
`anticipated by Adams.
`To establish anticipation under 35 U.S.C. § 102, each and every
`element in a claim, arranged as recited in the claim, must be found in a
`single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
`1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242
`F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must
`disclose more than “multiple, distinct teachings that the artisan might
`somehow combine to achieve the claimed invention.” Net MoneyIN, 545
`F.3d at 1371; see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“The
`[prior art] reference must clearly and unequivocally disclose the claimed
`[invention] or direct those skilled in the art to the [invention] without any
`need for picking, choosing, and combining various disclosures not directly
`related to each other by the teachings of the cited reference.”). Although the
`elements must be arranged or combined in the same way as in the claim,
`“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
`terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
`2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior
`art reference is read from the perspective of one with ordinary skill in the art.
`In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates
`a claim if it discloses the claimed invention such that a skilled artisan could
`take its teachings in combination with his own knowledge of the particular
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`art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826
`(CCPA 1968) (“[I]t is proper to take into account not only specific teachings
`of the reference but also the inferences which one skilled in the art would
`reasonably be expected to draw therefrom.”).
`1. Summary of Adams (Ex. 1004)
`Adams is directed to systems and methods of controlling an electronic
`device through “owner application control.” Ex. 1004, Abstract. Adams
`explains that “[o]wner application control information is stored on the
`electronic device and/or one or more remote servers” and “is consulted to
`determine if one or more required applications are available for execution on
`the electronic device.” Id. Figure 1 is reproduced below.
`
`
`Figure 1 shows communication system 10 in which electronic devices such
`as computer system 28 and mobile device 22 are used. Id. ¶ 15. Adams
`teaches that in order to maintain control over the use of computer system 28
`or mobile device 22, an owner may establish local settings directly on the
`
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`device. Id. ¶ 24. In other instances, owner control information such as
`owner application control information can reside on a remote server rather
`than on the electronic device. Id. ¶ 133.
`As an example, Adams describes in Figure 2 a system for inserting
`owner information and owner control information onto an electronic device.
`Figure 2 is reproduced below.
`
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`The system in Figure 2 includes electronic device 210, owner information
`store 212, and owner control information store 220. Id. Owner information
`store 212 stores information such as an owner name or other identification
`information, which identifies an owner of electronic device 210. Id. Owner
`control information store 214 stores information that is used to control the
`operation of electronic device 210. Id.
`In Figure 7, reproduced below, Adams shows mobile device 500 as a
`two-way communication device having at least voice and data
`communication capabilities. Ex. 1004 ¶ 135.
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`Adams teaches mobile device 500 may communicate with other computer
`systems on the Internet as a data messaging device, a two-way pager, a
`cellular telephone with data messaging capabilities, a wireless Internet
`appliance, or a data communication device (with or without telephony
`capabilities). Id. Mobile device 500 includes transceiver 511,
`microprocessor 538, display 522, and non-volatile memory 524. Id. ¶ 136.
`Within non-volatile memory 524, the mobile device 500 includes a plurality
`of software modules 524A–524N that can be executed by the
`microprocessor 538 (and/or the DSP 520), including a voice communication
`module 524A, a data communication module 524B, and a plurality of other
`operational modules 524N for carrying out a plurality of other functions.
`Id. ¶ 136. Operating system software used by the microprocessor 538
`preferably is stored in a persistent store such as the non-volatile memory
`524. Id. ¶ 146. The non-volatile memory 524 may also include data stores
`for owner information and owner control information. Id.
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`2. Analysis
`Below we discuss independent claim 1, which is illustrative of
`challenged claims 2, 5, and 7.
`Claim 1 is directed to a system for controlling computer network
`communication devices that communicate over a computer network that
`includes “a computer network communication device having a non-volatile
`memory containing a unique device identifier.” To satisfy this limitation,
`Petitioner asserts Adams discloses mobile device 500 that includes non-
`volatile memory 524. Pet. 32 (citing Ex. 1004 ¶ 136). Petitioner argues
`non-volatile memory 524 contains a “unique device identifier” in the form of
`“owner information and owner control information.” Id. at 32–33 (citing
`Ex. 1004 ¶¶ 45, 146).
`In its Reply, Petitioner asserts that Adams refers to “owner
`information” broadly as source authentication information, and a person
`having ordinary skill in the art would have understood that source
`authentication information would include information that uniquely
`identifies a device. Reply 7. Petitioner further explains that in paragraph
`122, Adams discloses an “individual device identifier” that is used by a
`server to determine appropriate updates for the specific device. Reply 7–8;
`Tr. 46:12–23. Petitioner argues that Adams expressly provides the example
`of “control data being stored remotely and in association with a particular
`electronic device by means of an individual device identifier.” Tr. 47:3–7.
`Petitioner further explains that Adams teaches both associating control data
`with a “particular electronic device” and/or “device type,” and that Petitioner
`relies on the disclosure of the former for a “unique device identifier.” Tr.
`43:17–44:2 (citing Adams ¶¶ 102, 118, 122).
`Patent Owner argues that Adams’s owner information is not a unique
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`device identifier because a skilled artisan would have understood that
`identifying the owner of a device is different from identifying the device.
`PO Resp. 29. Specifically, Patent Owner asserts paragraph 45 of Adams
`discloses that the “owner information store 36” stores information about the
`owner of the device and different “owner control information” specifies
`information for the mobile device. Id. at 30. Patent Owner further
`challenges Petitioner’s reliance on paragraph 122 of Adams, arguing that
`paragraph 122 describes an “individual device identifier” that is not taught
`by Adams to be “owner information.” Id. at 31–32. Patent Owner contends
`that the “owner information” and “individual device identifier” are separate
`features in Adams that Petitioner cannot rely upon to each teach a “unique
`device identifier” as claimed. Id. at 32.
`Upon review of the complete record, we agree with Petitioner’s
`argument that Adams’s “owner information,” described in paragraph 45 of
`Adams, includes the “individual device identifier,” disclosed in paragraph
`122 of Adams. P