UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLACKBERRY CORP. and BLACKBERRY LTD.,
`Petitioners,
`
`v.
`
`ZIPIT WIRELESS INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01508
`Patent No. 8,086,678
`____________
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`Blackberry Ex 1058, pg. 1
`Blackberry v. Zipit
`IPR2014-01508
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`

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`Petitioners’ Reply to Patent Owner’s Response
`IPR2014-01508
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`B.
`
`PATENT OWNER’S EXPERT FALSIFIED HIS CREDENTIALS
`REGARDING A PHD IN ELECTRICAL ENGINEERING FROM
`BOURNEMOUTH UNIVERSITY ................................................................. 1
`THE BROADEST REASONABLE INTERPRETATION OF
`“DATABASE” PERMITS A “DEVICE DATABASE” AND
`“CONTROL DATABASE” TO BE COMBINED INTO ONE
`DATABASE .................................................................................................... 4
`A.
`Patent Owner’s and Petitioners’ Experts Agree on the
`Definition of “Database” in all Material Respects ................................ 4
`The ’678 Patent Does Not Require a Separate and Distinct
`“Control Database” and “Device Database” ......................................... 5
`III. ADAMS DISCLOSES A “UNIQUE DEVICE IDENTIFIER” ...................... 6
`IV. ADAMS DISCLOSES A “MONITOR MESSAGE” ..................................... 8
`A. Adams Explicitly Teaches an Embodiment Where the
`Monitor Message Must Contain the Unique Device Identifier ............. 8
`Patent Owner Takes an Erroneously Myopic View of
`Adams’ Express Teachings ................................................................. 10
`V. ADAMS DISCLOSES A “DEVICE DATABASE” AND
`“CONTROL DATABASE” .......................................................................... 12
`A.
`The “Owner Information Store 36” and/or “Owner
`Information Store 60” are the “Device Database” .............................. 13
`The “Owner Control Information” Database is Both the
`“Control Database” and “Device Database” ....................................... 17
`1. A single database can be a combination of both a device
`database and a control database because a field with one
`record meets the definition of database .......................................... 17
`2. Patent Owner improperly requires a “verification” step
`and “two separate comparisons” .................................................... 18
`VI. ADAMS DISCLOSES ESTABLISHING AN ADMINISTRATIVE
`ACCOUNT “IN RESPONSE TO” THE UNIQUE DEVICE
`IDENTIFIER ................................................................................................. 20
`
`B.
`
`B.
`
`i
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`Blackberry Ex 1058, pg. 2
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`Petitioners’ Reply to Patent Owner’s Response
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`VII. ADAMS DISCLOSES THAT THE “COMPUTER NETWORK
`COMMUNICATION DEVICE” “GENERATES A DATA
`MESSAGE FOR USE WITH A SERVICE PROVIDED BY AN ISP” ....... 23
`VIII. PATENT OWNER ADMITS THAT CLAIM 2, 5, AND 7 ARE NOT
`INDEPENDENTLY PATENTABLE ........................................................... 25
`IX. CONCLUSION .............................................................................................. 25
`
`
`
`ii
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`EXHIBIT LIST
`
`iii
`
`1011
`1012
`1013
`1014
`
`1015
`1016
`1017
`
`Exhibit Description
`1001
`U.S. Patent No. 8,086,678 to Heredia et al.
`1002
`Prosecution history of U.S. Patent No. 8,086,678
`1003
`Declaration of Arthur T. Brody, Ph.D.
`1004
`U.S. Patent Application Publication No. 2005/0257209 to Adams et al.
`1005
`U.S. Patent No. 7,996,005 to Lotter et al.
`1006
`Exhibit C to Patentee’s Infringement Contentions dated May 2, 2014
`1007
`Merriam-Webster Dictionary (1997)
`1008
`Prosecution history of U.S. Patent No. 7,996,005
`1009
`Provisional Patent Application No. 60/885,384 to Lotter et al.
`1010
`Allan M Gerrish, et al., The DIMENSION* PBX: A New All-
`Electronic Customer Switching System, Bell Laboratories Record Vol.
`53 (September 1975)
`AT&T System 25, Release 3, V 3, Reference Manual (1991)
`Centrex Service, Lewis River Telephone Company (July 5, 1996)
`“Computer Porn-Busters,” CBSNews.com (March 15, 1999)
`“Kiddie phones have parental controls,” USAToday.com (August 3,
`2005)
`“Palm Treo Review,” CNET.com (November 17, 2003)
`“Dell Wireless 2300 router Review,” CNET.com (September 25, 2003)
`“Cyber Patrol For Individual Windows and Macintosh,”
`Cyberpatrol.com (August 19, 2000)
`Jay Munro, “At Home: AOL Parental Controls,” PCMag.com
`(September 25, 2001)
`August 20, 2015 Deposition Transcript of Alon Konchitsky
`July 2, 2013 Deposition Transcript of Alon Konchitsky
`September 8, 2015 Declaration of Professor Mark Hadfield
`
`1018
`
`1019
`1020
`1021
`
`Blackberry Ex 1058, pg. 4
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`September 9, 2015 Declaration of Dr. Fiona Knight
`September 9, 2015 Declaration of Emma Jackson
`August 27, 2015 Deposition Transcript of Alon Konchitsky
`Joint Claim Construction and Prehearing Statement - Zipit Wireless
`Inc. v. Blackberry Limited, et al., Civil Action No. 6:13-cv-2959-JMC
`Huawei Respondents’ Corrected Identification of Expert Witnesses –
`Investigation No. 337-TA-868
`Website – Explore the British Library
`British Library – Research Report
`
`1022
`1023
`1024
`1025
`
`1026
`
`1027
`1028
`
`
`
`
`iv
`
`Blackberry Ex 1058, pg. 5
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`Petitioners submit this Reply in response to Patent Owner’s Response (“PO
`
`Resp.”).
`
`I. PATENT OWNER’S EXPERT FALSIFIED HIS CREDENTIALS
`REGARDING A PHD IN ELECTRICAL ENGINEERING FROM
`BOURNEMOUTH UNIVERSITY
`
`Patent Owner’s expert, Alon Konchitsky, claims to have received a PhD in
`
`electrical engineering from Bournemouth University in 2002. Ex. 2004 ¶ 5.
`
`However, the overwhelming evidence indicates that Alon Konchitsky did not
`
`receive a PhD in electrical engineering from Bournemouth University. Ex. 1021;
`
`Ex. 1022; Ex. 1023 Ex. 1024, 82:14–110:22.
`
`Konchitsky claims to have earned his PhD from Bournemouth University
`
`through a “remote program” while living in Ramat Gan, Israel. Ex. 1024, 91:9–
`
`92:2. However, Bournemouth University never had a Ramat Gan campus, and the
`
`School of Design, Engineering & Computing never had a partnership with or
`
`offered research programs through Ramat Gan College. Ex. 1021 ¶¶ 26–27.
`
`According to Konchitsky, he did “most of” his PhD work while living in
`
`Israel (id. at 91:19-21), and then later while living and working in the U.S.
`
`Konchitsky could not remember how often he visited Bournemouth University in
`
`England while supposedly studying for his PhD, other than to say “at least once,”
`
`and did not know how many campuses Bournemouth University had or on which
`
`campus the engineering school was located. Ex. 1024, 91:22–92:24. In the 2001–
`
`1
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`2002 timeframe, however, Bournemouth students pursuing their PhDs outside the
`
`United Kingdom were required to “spend not less than an average of 6 weeks per
`
`year at the University.” Ex. 1021, p. 49.
`
`Konchitsky says he defended his thesis in Ramat Gan before a single
`
`advisor, and graduated with a PhD from Bournemouth’s “campus” in Ramat Gan
`
`in 2002. Ex. 1024, 95:8–96:6. However, Bournemouth PhD candidates in the
`
`2001–2002 timeframe were required to defend their thesis in a viva voce
`
`examination “normally held in the UK” and submit a copy of their thesis to the
`
`British Library. Ex. 1021 ¶ 12, p. 27, 29. Tellingly, Konchitsky’s curriculum vitae
`
`attached to Ex. 2004 does not list either his PhD or his master’s theses. However,
`
`in an older version of his curriculum vitae submitted in a prior matter, Konchitsky
`
`claims to have authored a PhD thesis entitled, “Multi-Mode Multi-Band [Wide
`
`Band Signal] RF Transmitter.” Ex. 1026, p. 152. When contacted about the thesis,
`
`the British Library responded that no record of Konchitsky’s PhD thesis could be
`
`found by the British Library. Ex. 1028; see also Ex. 1027; Ex. 1021 ¶¶ 23–24. At
`
`deposition, Konchitsky had no explanation for why his PhD thesis was not
`
`available at the British Library. Ex. 1024, 131:25–132:22.
`
`Bournemouth University’s Research Degrees Committee (“RDC”) approves
`
`PhD candidates’ research programs, supervision arrangements, and examination
`
`arrangements. Ex. 1021 ¶ 13, p.40. The RDC assigns a panel of examiners to PhD
`
`2
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`candidates during committee meetings, which take place approximately every two
`
`months. Ex. 1021 ¶ 13. The RDC keeps minutes of such meetings. Id.; Ex. 1022
`
`¶ 3. No record of anyone name Alon Konchitsky was found in RDC minutes
`
`between the 1996–97 and 2006–07 academic years. Ex. 1022 ¶¶ 4–5. Further, there
`
`is no record of anyone with the surname Konchitsky in the student records of
`
`Bournemouth University. Ex. 1021 ¶¶ 16–17, pp. 67–68.
`
`Following his deposition, Konchitsky produced a black and white copy of
`
`what purports to be his PhD diploma issued in September 2002. Ex. 1023, p. 3.
`
`Konchitsky’s “PhD,” however, bears an unmistakably different signature of
`
`Chancellor John Taylor than other PhD’s issued in 2002, and does not contain the
`
`name of a thesis, as is the practice for PhDs issued by Bournemouth University.
`
`Ex. 1023 ¶¶ 4-11.1
`
`Accordingly, Alon Konchitsky is a wholly unreliable witness and his
`
`opinions should be given absolutely no weight. See, e.g., Mitchell v. Holt,
`
`Interference No. 105,746, Decision on Motions, 19–24 (BPAI Apr. 27, 2012)
`
`(excluding testimony of witness who lied under oath and was not qualified as an
`
`expert).
`
`
`
` 1
`
` Fake diplomas from Bournemouth University can easily be purchased online. See,
`
`e.g., http://www.diplomasmarket.com/industry_show.php?id=108.
`
`3
`
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`Similarly, Patent Owner’ expert admitted in a previous deposition to having
`
`falsely characterized a graduate “certificate” as a “degree” on his curriculum vitae.
`
`Ex. 1020, 147:20–149:14.
`
`II. THE BROADEST REASONABLE INTERPRETATION OF
`“DATABASE” PERMITS A “DEVICE DATABASE” AND
`“CONTROL DATABASE” TO BE COMBINED INTO ONE
`DATABASE
`
`A. Patent Owner’s and Petitioners’ Experts Agree on the Definition of
`“Database” in all Material Respects
`
`Patent Owner’s expert broadly defined the term “database” to be a
`
`“collection of information or data” that is “structured or organized.” Ex. 2004 ¶ 50.
`
`This definition of database is not appreciably different from the definition provided
`
`by Petitioners’ expert. Ex. 1003 ¶ 24 (defining a database as “a collection of
`
`information stored for retrieval and use by a computer system”). Obviously, 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.”
`
`Further, Patent Owner’s expert admits that a collection of information to can
`
`constitute a database if it has one record (entry in the database), one field (a
`
`column in the database), and “the ability to retrieve the information stored in one
`
`or more fields.” Ex. 1004 ¶ 51. Patent Owner’s expert uses Figure 5 from U.S.
`
`4
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`Patent No. 7,996,005 to Lotter (“Lotter,” Ex. 1005) as an example of a database.
`
`Based on Patent Owner’s expert’s characterization of a database, the section of
`
`Lotter’ permission database outlined in red below constitutes a “database.”
`
`Specifically, the area outlined in red includes one record, one field, and the ability
`
`to retrieve the information because it is organized in cells in numerical order.
`
`
`
`Ex. 1005, Figure 5 (annotated).
`
`B. The ’678 Patent Does Not Require a Separate and Distinct “Control
`Database” and “Device Database”
`
`Patent Owner argues that “the ‘device database’ and ‘control database’ are
`
`separate and distinct databases.” PO Resp. 22. 2 However, Patent Owner’s expert
`
`
`
` 2
`
` In the concurrent district court litigation, Patent Owner has taken the position that
`
`the “control database” and “device database” do not need to be distinct databases
`
`under the narrow Philips claim construction standard. See Ex. 1025, pp. 12–13 of
`
`5
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`admits that combining two or more databases into a single database was possible.
`
`Ex. 1019, 90:24–91:5 (Q. “Can a PHOSITA combine two databases into one
`
`database? … A. In general. So it could be ….”). Patent Owner argues that “[t]he
`
`specification of the ‘678 Patent also never mentions or suggests that the ‘device
`
`database’ or ‘control database’ may be the same database.” PO Resp. 23.
`
`Conversely, nothing in the ’678 patent precludes or limits the terms “control
`
`database” and “device database” from being combined in to a single database.
`
`As discussed above, the term “database” is a broad term that simply means
`
`that the information or data is stored for retrieval. Adding a word that identifies the
`
`type of information stored in the database (e.g., “device” or “control”) does not
`
`limit or prevent the information from being combined with another collection of
`
`information. Accordingly, there is no intrinsic or extrinsic evidence that would
`
`limit the broadest reasonable interpretation of “control database” and “device”
`
`database to separate and distinct databases.
`
`III. ADAMS DISCLOSES A “UNIQUE DEVICE IDENTIFIER”
`
`Patent Owner argues that “The ‘Owner Information’ Of Adams Is Not The
`
`‘Unique Device Identifier’ Of Claim 1.” PO Resp. 29. However, Adams explicitly
`
`
`
`Exhibit A (where ZipIt disagreed with BlackBerry’s proposed construction that the
`
`control and device databases are “distinct”).
`
`6
`
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`teaches that “owner information” is simply the name that is broadly given to
`
`“source authentication information.” Ex. 1004 ¶ 45 (emphasis added). A
`
`PHOSITA would understand that source authentication information would include
`
`information that uniquely identifies the corresponding device. As Patent Owner’s
`
`expert even admitted, “[t]he use of unique device identifiers is fairly common in
`
`telecommunications even before the priority date of the subject patents.” Ex. 1019,
`
`69:21–24. Patent Owner’s expert further admitted that Adams requires the
`
`electronic device to have source authentication information, i.e., a unique device
`
`identifier, because that is the only way that the control information stored on the
`
`remote server can be “associated with a particular electronic device.” Ex. 1004 ¶
`
`118; Ex. 1019, 81:22–82:3.
`
`Lastly, Patent Owner’s expert admitted that Adams explicitly teaches that
`
`the control information is associated with the particular device, not a particular
`
`owner. Ex. 1004 ¶ 118; Ex. 1019, 83:12–84:2. This makes perfect sense because
`
`Adams’s system must be able to determine which control information goes with
`
`which device. Accordingly, the purpose of the “owner information” of Adams,
`
`among other things, is to uniquely identify the source, i.e., the device, when the
`
`device is communicating with a remote server.
`
`In further explaining the interaction between the electronic device and the
`
`remote server, Adams clarifies that the remote server must receive an “individual
`
`7
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`device identifier” in order to determine the appropriate policy information “for the
`
`requested device.” Ex. 1004 ¶ 122. Patent Owner attempts to avoid this explicit
`
`disclosure by arguing that paragraph 122 of Adams is directed to a completely
`
`separate “embodiments were the determination of any controls are made by the
`
`device and not a remote control site.” PO Resp. 32 (emphasis in original).
`
`However, this argument directly conflicts with the express teachings of Adams,
`
`which explain that “[u]pon receipt of a request by a remote server, the server
`
`would determine the list appropriate for the requested device ….” Ex. 1004 ¶ 122
`
`(emphasis added). Patent Owner’s erroneous characterization of Adams is further
`
`evidence by looking to the paragraph preceding paragraph 122, which explains that
`
`“application lists can be either locally or remotely … queried” and that, “[i]n
`
`either case, the supported lists can be maintained by a remote server ….” Ex. 1004
`
`¶ 121. Accordingly, Adams teaches that the application lists are stored and
`
`maintained at the remote server, where the “server would determine the list
`
`appropriate for the requested device.” Ex. 1004 ¶ 122.
`
`IV. ADAMS DISCLOSES A “MONITOR MESSAGE”
`
`A. Adams Explicitly Teaches an Embodiment Where the Monitor
`Message Must Contain the Unique Device Identifier
`
`Patent Owner argues that “The Cited Portions Of Adams Do Not Disclose
`
`That A ‘Monitor Message’ Must Contain A ‘Unique Device Identifier.’” PO Resp.
`
`35. Notably, Patent Owner admits that Adams discloses sending a monitor message
`
`8
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`by teaching that the remote server is “queried upon request from the device.” PO
`
`Resp. 36 (citing Ex. 1004 ¶ 118 and equating “monitor message/query from the
`
`device”). Accordingly, Patent Owner’s only disagreement with Petitioners’
`
`position with respect to the monitor message is whether the monitor message/query
`
`from the device contains a unique device identifier.
`
`Adams explicitly teaches that the “policy information can be stored remotely
`
`and queried upon request from the device.” Ex. 1004 ¶ 118. Such policy
`
`information must be associated with a unique identifier for the device in order for
`
`the query to retrieve the correct policy information for the device. Patent Owner
`
`myopically focuses on Adams’ teaching that the policy information can be
`
`“deliver[ed] to” the electronic device. PO Resp. 36 (citing Ex. 1004 ¶ 118 and
`
`focusing on the “for delivery to” language). However, in the same paragraph,
`
`Adams teaches that, “[a]lternatively, some or all of such policy information can
`
`be stored remotely and queried upon request from the device.” Ex. 1004 ¶ 118
`
`(emphasis added). Accordingly, Adam’s teaches that the policy information stored
`
`on the remote server can be delivered to or queried by the electronic device. Ex.
`
`1019, 81:17–19 (“Q. Paragraph 118 of Adams also teaches that the device can
`
`query the remote server, right? A. That’s correct.”).
`
`Patent Owner turns a blind eye to the express teachings of Adams by
`
`asserting that “[n]othing in paragraph 118 of Adams suggests or requires any
`
`9
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`‘unique device identifier’ that ‘must’ be associated with the ‘owner control
`
`information.’” PO Resp. 36. But Adams explicitly states that “[t]he policy
`
`information [] for an application can be associated with a particular electronic
`
`device or a particular group of electronic devices.” Ex. 1004 ¶ 118; see also id. at ¶
`
`102 (“the owner can specify the particular control information associated with a
`
`device”). Patent owner ignores this express teaching in Adams and, therefore, Dr.
`
`Brody’s expert opinion that “a PHOSITA would have understood that in order for
`
`the monitor message to determine if the requested operation is allowed for ‘a
`
`particular electronic device,’ the monitor message must contain information that
`
`uniquely identifies the device, i.e., the owner information” goes unrebutted. Ex.
`
`1003 ¶ 58. In fact, Patent Owner’s own expert agrees with Dr. Brody. Ex. 1019,
`
`81:22–82:3 (“Q. If the policy information is stored on a remote server in
`
`association with a particular electronic device, the query would have to include
`
`some information to identify the particular electronic device, right? … THE
`
`WITNESS: Right.”) (emphasis added).
`
`B. Patent Owner Takes an Erroneously Myopic View of Adams’
`Express Teachings
`
`Patent Owner studiously avoids Adams’ express teachings that the policy
`
`information “can be associated with a particular electronic device or a particular
`
`group of electronic devices.” Ex. 1004 ¶ 118; see also id. at ¶ 122 (“Upon receipt
`
`of a request by the remote server, the server would determine the list appropriate
`
`10
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`Petitioners’ Reply to Patent Owner’s Response
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`for the requested device based upon device type and/or an individual device
`
`identifier.”) (emphasis added). Accordingly, Adams teaches two alternative
`
`methods for storing policy information in the remote server: (1) in association with
`
`“a particular electronic device” or (2) in association with “a particular group of
`
`electronic devise.” Id.
`
`Patent Owner argues that “The Only Disclosed Embodiment For Entering
`
`‘Owner Control Information’ Does Not Teach A ‘Unique Device Identifier.’” PO
`
`Resp. 37. Specifically, Patent Owner cites Figure 9 of Adams and argues that
`
`“Figure 9 of Adams is the only disclosed embodiment of the user interface where
`
`the owner inputs the ‘owner control information’ into the alleged ‘control
`
`database.’” Id. However, Adams explicitly notes that “FIG. 9 depicts one possible
`
`user interface….” Ex. 1004 ¶ 119 (emphasis added). Accordingly, Patent Owner
`
`completely ignores Adams’ first method of storing policy information in the
`
`remote server’s database(s), i.e., by “particular electronic device,” and focuses
`
`solely on Adams’ second method, i.e., by “group of electronic device.”
`
`The fact that Adams does not include an exemplary figure for a user
`
`interface where the policy information is stored in the remote server’s database(s)
`
`in association with the particular electronic devices does not negate Adams’
`
`express teachings that the remote server can determine the appropriate policy
`
`information for a “particular electronic device” based upon an “individual device
`
`11
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`Petitioners’ Reply to Patent Owner’s Response
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`identifier.” Ex. 1004 ¶ 122 (“Upon receipt of a request by the remote server, the
`
`server would determine the list appropriate for the requested device based upon
`
`device type and/or an individual device identifier.”) (emphasis added).
`
`V. ADAMS DISCLOSES A “DEVICE DATABASE” AND “CONTROL
`DATABASE”
`
`Patent Owner argues that “Adams Does Not Disclose The ‘Device Database’
`
`And ‘Control Database’ Of Elements 1[f]-[h].” PO Resp. 40. However, Patent
`
`Owner does not dispute that Adams discloses the “control database” of elements
`
`1[f]–[h]. See PO Resp. 40–53. Adams teaches that the remote server maintains an
`
`owner control information database that governs the operation of the electronic
`
`device by using control lists, “such as the software application lists and the
`
`application operation restrictions.” Ex. 1004 ¶ 101. Patent Owner does not dispute
`
`that the owner control information database taught in Adams discloses the control
`
`database, as claimed in the ’678 patent. See PO Resp. 40–53. Accordingly, Patent
`
`Owner only disputes whether or not Adams teaches a “device database.” Because
`
`the broadest reasonable interpretation of database is not limited by any intrinsic or
`
`extrinsic evidence, there are two structures in Adams that a PHOSITA would have
`
`considered a “device database,” as claimed in the ’678 patent. See Petition 43–46.
`
`The first examples of a device database in the ’678 patent are the “owner
`
`information store[s].” Adams teaches that owner information stores 36 and 60 are
`
`databases that store “source authentication information,” such as an “individual
`
`12
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`device identifier.” Ex. 1004 ¶¶ 45, 122. Accordingly, Adams’s owner information
`
`stores 36 and 60 teach the device database, as claimed in the ’678 patent.
`
`The second example of a device database in the ‘678 patent is the owner
`
`control information database. Specifically, the owner control information database
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`is a combination of the device database and control database. Adams teaches that
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`owner control information is stored in the owner control information database in
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`association “with a particular electronic device.” Ex. 1004 ¶ 118. The owner
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`control information database necessarily includes a structured collection of unique
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`device identifiers to identify the electronic devices that are subject to control. Ex.
`
`1003 ¶ 60. Accordingly, Adams’s owner information control database is another
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`example of a device database, as claimed in the ’678 patent.
`
`A. The “Owner Information Store 36” and/or “Owner Information
`Store 60” are the “Device Database”
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`Patent Owner first argues that Adams’s owner information stores are not
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`device databases because “there is no disclosure or suggestion in Adams that either
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`of these ‘stores’ are databases at all.” PO Resp. 41. However, Adams notes that
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`“stores” can be databases:
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`The remote server can maintain a device data store, that may be in the
`form of a database, that stores the control information, including
`application control information, associated with owned devices.
`
`13
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`Blackberry Ex 1058, pg. 18
`Blackberry v. Zipit
`IPR2014-01508
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`

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`Petitioners’ Reply to Patent Owner’s Response
`IPR2014-01508
` Ex. 1004 ¶ 101. It is irrelevant that Adams described the owner information
`
`databases as owner information stores because the Federal Circuit has repeatedly
`
`held that a prior art “reference need not satisfy an ipsissimis verbis test.” In re
`
`Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Even under Patent Owner’s
`
`construction of “database,” Adams’ owner information stores are databases.
`
`Adams’ owner information stores 36 and 60 are clearly “a collection of
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`information or data.” Ex. 1004 ¶ 45 (“owner information store 36 stores
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`information”); id. ¶ 49 (“owner information store 60 stores owner information”).
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`Additionally, the information or data stored in Adams’ owner information stores
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`36 and 60 “is structured or organized to allow quick access and retrieval of the
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`information by a computer.” Ex. 1004 ¶ 45 (“a user of the mobile device 30 may
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`be able to retrieve data from the stores 34, 36”); id. ¶ 54 (“owner information is
`
`retrieved from the owner information store 60”).
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`Patent Owner then erroneously argues that the owner information store 36
`
`cannot be the device database because it is located inside the mobile device. PO
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`Resp. 42. Claim 1 of the ’678 patent only requires “a control site comprising a
`
`server.” Ex. 1001, 12:41–42. The control site is not comprised of either the device
`
`or control databases; rather, the control site’s server is “operatively connected” to
`
`the device and control databases. Ex. 1001, 12:41–42 (“a control site comprising a
`
`server operatively connected to a device database and a control database …”). As
`
`14
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`Blackberry Ex 1058, pg. 19
`Blackberry v. Zipit
`IPR2014-01508
`
`

`
`Petitioners’ Reply to Patent Owner’s Response
`IPR2014-01508
`Patent Owner’s expert admitted, the device and control databases “could be in a
`
`remote location, in another country or somewhere or the Cloud.” Ex. 1019, 71:9–
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`72:19. Accordingly, it is irrelevant that Adams’ owner information store 36 is
`
`located inside the mobile device.
`
`Patent Owner further argues that Adams’ owner information store 36 cannot
`
`be the device database because it (1) is not “used by … any remote server,”
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`(2) does not “communicate with any remote server,” or (3) is not used for a
`
`“comparison of any information … by any remote server.” However, claim 1 of the
`
`’678 patent simply requires that the device database and control site server be
`
`“operatively connected,” i.e., the operation of the remote server is connected to the
`
`device database. Looking to Figure 6 of Adams, upon the occurrence of an
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`operation request at the electronic device (step 110), the mobile device must
`
`perform the operation of confirming that owner information exists in the owner
`
`information store (step 112). Ex. 1004, ¶¶ 123–24, Figure 6. This operation must
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`occur before the remote server can determine whether the owner control
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`information permits the requested operation to occur on the mobile device (steps
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`114 and 118). Id. at ¶¶ 118, 124–25, Figure 6; see also Ex. 1019, 96:8–11 (“Q.
`
`Would a PHOSITA understand that Steps 114 and 118 of Figure 6 of Adams do
`
`not occur until after Step 112 confirms that owner information exists? A. That’s
`
`15
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`Blackberry Ex 1058, pg. 20
`Blackberry v. Zipit
`IPR2014-01508
`
`

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`Petitioners’ Reply to Patent Owner’s Response
`IPR2014-01508
`correct.”). Accordingly, the remote server’s operations are operatively connected
`
`to the device database through the mobile device.
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`With respect to Adams’ owner information store 60, Patent owner argues
`
`that owner information store 60 cannot be “the recited ‘device database’ of claim 1
`
`to which the remote server compares information received from the mobile device
`
`during operation of the mobile device.” PO Resp. 43. However, claim 1 of the ’678
`
`patent does not require that the remote server “compare[] information received
`
`from the mobile device during operation of the mobile device” to the device
`
`database. As noted above, all that is required is that the remote server and device
`
`database be “operatively connected.” Ex. 1001, 12:41–42. Additionally, claim 1 of
`
`the ’678 patent requires the server to perform only one “comparison,” and that
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`comparison is between the monitor message and the control database. Ex. 1001,
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`12:43–46 (“the server being configured to compare data in the monitor message
`
`received from the communication module in the computer network
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`communications device to control data stored in the control database”). This one
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`and only “comparison” is done “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.” As
`
`Patent Owner admits, “in response to” simply can mean “after.” PO Resp. 53.
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`Accordingly, the one and only comparison in claim 1 simply must occur “after” the
`
`16
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`Blackberry Ex 1058, pg. 21
`Blackberry v. Zipit
`IPR2014-01508
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`

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`Petitioners’ Reply to Patent Owner’s Response
`IPR2014-01508
`monitor message has the unique device identifier that is also stored in the device
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`database. Patent Owner admits in its Response that the remote server-control
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`database comparison of Adams cannot occur until after owner information store
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`60 inserts the owner information onto the mobile device. PO Resp. 43. In this
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`regard, Patent Owner admits that owner information transfer operation is necessary
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`to make the mobile device operational and, therefore, make the remote server’s
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`monitor message-to-control database comparison possible. Id. (“such operation
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`only [occurs] before the device is operable ….”).
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`B. The “Owner Control Information” Database is Both the “Control
`Database” and “Device Database”
`
`1. A single database can be a combination of both a device
`database and a control database because a field with one
`record meets the definition of database
`
`Patent Owner argues that “The Single ‘Owner Control Database’ Is Not A
`
`Sepa