Trials@uspto.gov
`571-272-7822
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` Paper 30
`Entered: April 22, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`IRON DOME LLC,
`Petitioner,
`
`v.
`
`CRFD RESEARCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00055
`Patent 7,191,233 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
` Paper 30
`Entered: April 22, 2016
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`IRON DOME LLC,
`Petitioner,
`
`v.
`
`CRFD RESEARCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00055
`Patent 7,191,233 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`IPR2015-00055
`Patent 7,191,233 B2
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`I. BACKGROUND
`Petitioner Iron Dome LLC filed a Petition (Paper 1, “Pet.”) seeking
`inter partes review of claims 1–6, 8–11, 13–15, 17, 18, 20, and 34 of
`U.S. Patent No. 7,191,233 B2 (Ex. 1001, “the ’233 patent”) pursuant to
`35 U.S.C. §§ 311–19. On April 27, 2015, we instituted an inter partes
`review of claims 1, 4–6, and 8–11 on two grounds of unpatentability
`(Paper 10, “Dec. on Inst.”). Patent Owner CRFD Research, Inc. filed a
`Patent Owner Response (Paper 16, “PO Resp.”), and Petitioner filed a Reply
`(Paper 17, “Reply”). An oral hearing was held on January 19, 2016, and a
`transcript of the hearing is included in the record (Paper 29, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1, 4–6, and 8–11 are
`unpatentable.
`
`
`A. The ’233 Patent1
`The ’233 patent describes a system and method for “user-directed
`transfer of an on-going software-based session from one device to another
`device.” Ex. 1001, col. 1, ll. 8–11. A user may have a number of
`communication-enabled devices (e.g., cellular telephone, wireless personal
`digital assistant (PDA), laptop computer, desktop computer) through which
`the user conducts software application sessions. Id. at col. 1, ll. 15–52. The
`
`1 The ’233 patent also is the subject of Cases IPR2015-00259 and
`IPR2015-00627, in which inter partes reviews were instituted, and was the
`subject of Case IPR2015-00157, in which the request for inter partes review
`was denied.
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`user may conduct a session on one device and then decide to switch to
`another device. Id. at col. 1, ll. 53–59. For example, the user may want to
`switch from a stationary device to a mobile device, or to switch to a device
`with a different graphical user interface. Id. According to the ’233 patent,
`conventional systems that required the user to “discontinue the current
`session on the first device and reinitiate a new session on the second device”
`could entail inconveniences such as the history of the original session being
`lost or time delays involved in logging off and reinitiating. Id. at col. 1,
`ll. 59–66.
`Figure 1 of the ’233 patent is reproduced below.
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`Figure 1 depicts wireless clients 120 (e.g., a cellular telephone or PDA) and
`wired clients 125 (e.g., a desktop or laptop computer) of a user that connect
`over various networks to application services network 105. Id. at col. 4,
`ll. 4–11, 30–33, col. 5, ll. 3–6. Wireless clients 120 and wired clients 125
`execute client programs that support session services for the respective
`devices, and are “configured to have a preferred mode of interaction,
`i.e., modality,” such as a graphical user interface for transferring sessions
`between devices. Id. at col. 4, ll. 33–50. Application services network 105
`provides session-based services (e.g., instant messaging, database querying),
`and application server 140 provides applications for those services
`(e.g., instant messaging application, database querying application), to
`wireless clients 120 and wired clients 125. Id. at col. 5, ll. 21–30.
`The ’233 patent describes the method of session transfer as follows:
`(1) a “redirect or transfer command” is sent from a first device (wireless
`client 120 or wired client 125); (2) session server 145 begins intercepting
`messages destined for the first device; (3) the first device transmits a
`“transaction or session history” to session server 145; (4) session server 145
`retrieves the previously stored “device profile” of the second device to
`which the session is to be redirected, “convert[s] the stored messages [of the
`session history] into a data format” and/or modality compatible with the
`second device, and converts the “state” of the session to a state compatible
`with the second device; and (5) when the user activates the second device,
`session server 145 “pushes the converted session to the redirected device
`over the network 100 as a normal session with the converted transaction
`log.” Id. at col. 7, l. 46–col. 8, l. 58, Figs. 3A–3B.
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`B. Illustrative Claim
`Claim 1 of the ’233 patent recites:
`1. A method for redirecting an on-going, software based
`session comprising:
`conducting a session with a first device;
`specifying a second device;
`discontinuing said session on said first device; and
`transmitting a session history of said first device from
`said first device to a session transfer module after said session
`is discontinued on said first device; and
`resuming said session on said second device with said
`session history.
`
`
`C. Prior Art
`The pending grounds of unpatentability in the instant inter partes
`review are based on the following prior art:
`Thomas Phan et al., A New TWIST on Mobile
`Computing:
`Two-Way
`Interactive
`Session
`Transfer,
`PROCEEDINGS OF THE SECOND IEEE WORKSHOP ON INTERNET
`APPLICATIONS (WIAPP 2001) (Ex. 1002, “Phan San Jose”); and
`Thomas Phan et al., Handoff of Application Sessions
`Across Time and Space, IEEE INTERNATIONAL CONFERENCE ON
`COMMUNICATIONS (ICC 2001) (Ex. 1003, “Phan Helsinki”).2
`
`
`2 The copies of Phan San Jose and Phan Helsinki submitted by Petitioner
`include Library of Congress date stamps of August 28, 2001, and July 31,
`2001, respectively. Petitioner further argues that Phan San Jose was printed
`in a book of articles presented at a symposium in San Jose, California, on
`July 23–24, 2001, and that Phan Helsinki was printed in a book of articles
`presented at a symposium in Helsinki, Finland, on June 11–14, 2001, both of
`which are consistent with what is listed on the cover pages of the references.
`See Pet. 3–4; Ex. 1002, 1; Ex. 1003, 1–6. Patent Owner does not dispute
`Petitioner’s contentions. Based on the record presented, we are persuaded
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`D. Pending Grounds of Unpatentability
`The instant inter partes review involves the following grounds of
`unpatentability:
`Reference(s)
`Phan San Jose
`
`Claim(s)
`Basis
`35 U.S.C. § 102(a) 1
`
`Phan San Jose and Phan
`Helsinki
`
`35 U.S.C. § 103(a) 4–6 and 8–11
`
`
`II. ANALYSIS
`A. Claim Interpretation
`The Board interprets claims using the “broadest reasonable
`construction in light of the specification of the patent in which [they]
`appear[].” 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo
`Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under this
`standard, we interpret claim terms using “the broadest reasonable meaning
`of the words in their ordinary usage as they would be understood by one of
`ordinary skill in the art, taking into account whatever enlightenment by way
`of definitions or otherwise that may be afforded by the written description
`
`
`that Phan San Jose and Phan Helsinki are prior art printed publications under
`35 U.S.C. § 102(a). See Kyocera Wireless Corp. v. ITC, 545 F.3d 1340,
`1350–51 (Fed. Cir. 2008) (holding that a “reference is publicly accessible
`‘upon a satisfactory showing that such document has been disseminated or
`otherwise made available to the extent that persons interested and ordinarily
`skilled in the subject matter or art exercising reasonable diligence, can locate
`it’” (citation omitted)). Also, when citing the references, we refer to the
`page numbers added by Petitioner in the bottom-right corner of each page.
`See 37 C.F.R. § 42.63(d)(2).
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`contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
`1054 (Fed. Cir. 1997). We presume that claim terms have their ordinary and
`customary meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016) (“Under a broadest reasonable interpretation, words of the
`claim must be given their plain meaning, unless such meaning is inconsistent
`with the specification and prosecution history.”); In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary
`meaning is the meaning that the term would have to a person of ordinary
`skill in the art in question.” (internal quotation marks omitted)). A patentee,
`however, may rebut this presumption by acting as his or her own
`lexicographer, providing a definition of the term in the specification with
`“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`
`
`1. Previously Interpreted Terms
`In the Decisions on Institution in Cases IPR2015-00055,
`IPR2015-00157, IPR2015-00259, and IPR2015-00627, we interpreted
`various claim terms of the ’233 patent as follows:
`Claim Term
`Interpretation
`“modality”
`a preferred mode of interaction
`
`“device profile”
`
`“in response to . . .
`activation of said
`second device”
`
`information pertaining to the operation of a
`device, such as the data format or modality of
`the device
`in response to the second device being made
`active, such as by a user logging on to the
`second device
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`Claim Term
`“session”
`
`“discontinuing”
`
`“discontinued”
`
`“session transfer
`module”
`
`Interpretation
`a series of information transactions between
`communicating devices during a particular
`time period
`terminating or otherwise stopping, with the
`ability to be resumed
`terminated or otherwise stopped, with the
`ability to be resumed
`computer hardware and/or software that
`participates in the transfer of a session
`
`See Dec. on Inst. 6–10; DISH Network Corp. v. CRFD Research, Inc.,
`Case IPR2015-00627, slip op. at 6–9 (PTAB June 3, 2015) (Paper 9);
`Hulu, LLC v. CRFD Research, Inc., Case IPR2015-00259, slip op. at 6–9
`(PTAB June 3, 2015) (Paper 8); Unified Patents Inc. v. CRFD Research,
`Inc., Case IPR2015-00157, slip op. at 6–9 (PTAB Apr. 30, 2015) (Paper 8).
`The parties do not dispute these interpretations in their Patent Owner
`Response and Reply. We do not perceive any reason or evidence that
`compels any deviation from these interpretations. Accordingly, we adopt
`our previous analysis for purposes of this Decision. We also interpret one
`other limitation in claim 1.
`
`
`2. Ordering of the “Specifying” Step
`Although the parties do not address specifically how “specifying a
`second device” in claim 1 should be interpreted, the parties disagree as to
`whether the step must occur in a specific order with respect to the step of
`“discontinuing said session on said first device.” Patent Owner argues in its
`Response that Phan San Jose’s “pull” mode fails to disclose the “specifying”
`step because the user merely clicks “Suspend” to discontinue the session and
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`then chooses a particular device on which to resume the session at a later
`time. PO Resp. 14–18. At the hearing, Patent Owner argued that the
`“specifying” step must occur before the “discontinuing” step, citing as
`support an embodiment described in the Specification of the ’233 patent.
`Tr. 33:5–19, 35:17–21. Petitioner disagreed, arguing that nothing in the
`claim language itself requires the “specifying” step to occur before the
`“discontinuing” step. Reply 2–4; Tr. 7:9–23. We agree with Petitioner.
`To determine whether the steps of a method claim that do not
`otherwise recite an order must nonetheless be performed in a particular
`order, we first “look to the claim language to determine if, as a matter of
`logic or grammar, they must be performed in the order written.” Altiris, Inc.
`v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). “If not, we next
`look to the rest of the specification to determine whether it ‘directly or
`implicitly requires such a narrow construction.’” Id. at 1370 (citation and
`emphasis omitted); see also Mformation Techs., Inc. v. Research In Motion
`Ltd., 764 F.3d 1392, 1398–99 (Fed. Cir. 2014) (“a claim ‘requires an
`ordering of steps when the claim language, as a matter of logic or grammar,
`requires that the steps be performed in the order written, or the specification
`directly or implicitly requires’ an order of steps” (citation omitted)).
`Claim 1 requires certain steps to be performed before others. For
`example, the “transmitting” step must take place “after said session is
`discontinued on said first device” (emphasis added). Likewise, “conducting
`a session with a first device” logically must take place before “discontinuing
`said session on said first device.” There is nothing in the language of the
`claim, however, expressly requiring “specifying a second device” to take
`place before “discontinuing said session on said first device” or requiring
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`such an order as a matter of logic or grammar. The “discontinuing” step, as
`well as the subsequent “transmitting” step, do not even refer to the second
`device.
`Thus, we look to the Specification to determine whether it expressly
`or implicitly requires a particular order. The Specification discloses that
`“[t]he client software of the wireless/wired client devices, 120 and 125 may
`be . . . configured to provide a selection of devices that a transferring session
`may be redirected thereto,” and “[t]he selection of the redirected device may
`. . . be forwarded from the user of a wireless/wired client device, 120 and
`125 to the session server [145].” Ex. 1001, col. 4, ll. 53–61. Also, as shown
`in Figures 3A and 3B, session server 145 receives a “redirect or transfer
`command” from the first client device (step 305) before it begins
`intercepting messages destined for the first client device (step 310) and
`“access[es] the device profile of the selected second client (or redirected)
`device” (step 320). Id. at col. 7, l. 49–col. 8, l. 13. These portions of the
`Specification, however, describe only “exemplary” embodiments of the
`invention. Id. at col. 4, ll. 4–6, col. 7, ll. 46–49. They do not show,
`expressly or implicitly, that the “specifying” step of claim 1 must occur
`before the “discontinuing” step. Moreover, the Specification indicates the
`opposite, stating that “although the method of the present invention has been
`described by examples, the steps of the method may be performed in a
`different order than illustrated or simultaneously.” Id. at col. 9, ll. 22–25.
`Applying the broadest reasonable interpretation of the claims in light
`of the Specification, we do not interpret claim 1 to require that the
`“specifying” step take place before the “discontinuing” step.
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`B. Anticipation Ground Based on Phan San Jose
`Petitioner argues that claim 1 is anticipated by Phan San Jose under
`35 U.S.C. § 102(a). Pet. 7–11. We have reviewed the Petition, Patent
`Owner Response, and Reply, as well as the evidence discussed in each of
`those papers, and are persuaded, by a preponderance of the evidence, that
`claim 1 is anticipated by Phan San Jose.
`
`
`1. Phan San Jose
`Phan San Jose describes a research project called the “Interactive
`Mobile Application Support for Heterogeneous Clients (iMASH),” which
`allows physicians and staff at a hospital to use different types of devices
`(e.g., desktop and laptop computers, display tablets) and “seamlessly move
`an application’s session from one machine to another machine” using the
`hospital’s “network as a conduit.” Ex. 1002, 5. The system provides for
`“Two-Way Interactive Session Transfer (TWIST)” by placing a set of
`middleware servers between the client devices and the application server,
`storing state data on the middleware servers for the user’s session on a first
`device (e.g., textual annotations, user preferences, URL history), and
`transferring the data to the second device upon session handoff. Id. at 5–7.
`Phan San Jose describes how the system could be used with a
`“Teaching File” Java applet that displays medical images and associated
`information, and allows users to create and modify instructional “teaching
`files.” Id. at 10. In the Teaching File implementation, when a user requests
`a teaching file, the application server (AS) sends the image file (stored in the
`system’s proprietary picture archiving and communication system (PACS)
`image format) to the middleware server (MWS). Id. at 10–11. The MWS
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`then “performs the image assembly on behalf of the client, including the
`conversion of the proprietary PACS image to [a] Java Image and the
`manipulation of that image according to the teaching file state description.”
`Id. at 11. Phan San Jose describes two ways of performing the session
`handoff. Id. In the “pull” mode, “the user selects a ‘Suspend’ operation, his
`session shall be saved back to the MWS, allowing the application to
`terminate, and at a later time the session can be reinstantiated by the
`Teaching File application running on the target machine.” Id. In the “push”
`mode, “the user can select the hostname of the target from a list. When the
`handoff occurs, the MWS will contact a daemon running on the target
`machine to immediately launch the Teaching File applet and automatically
`retrieve the session state . . . [and the] applet on the first client terminates
`when the state is fully reinstantiated on the second client.” Id. Figure 5 of
`Phan San Jose is reproduced below.
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`Figure 5 depicts the user interface of the Teaching File applet. Id. at 10. In
`the dropdown menu labeled “Target,” the user is able to choose “Suspend”
`(corresponding to the “pull” mode) or one of three hostnames to which the
`session may be transferred (corresponding to the “push” mode). Id. at
`10–11.
`
`
`2. Analysis
`Petitioner has presented sufficient evidence showing that Phan San
`Jose discloses every limitation of claim 1. For example, Petitioner explains
`how a physician conducts a session with a “first device” (e.g., a PDA), then
`discontinues the session on the “first device” by suspending the session,
`causing the physician’s session history (e.g., user preferences, URL history)
`to be transmitted from the PDA to a “session transfer module” (i.e., the
`MWS), and chooses to reinstantiate the session on a “second device” (e.g.,
`a desktop computer) using the previously saved session history. Pet. 9–11
`(citing Ex. 1002, 5–7, 10).
`Patent Owner makes two arguments. First, Patent Owner argues that
`Phan San Jose’s description of the “push” mode does not disclose
`“transmitting a session history of said first device from said first device to a
`session transfer module after said session is discontinued on said first
`device.” PO Resp. 11–14 (emphasis added). Patent Owner cites as support
`testimony from Prasant Mohapatra, Ph.D., which largely repeats Patent
`Owner’s arguments in its Response. See id. (citing Ex. 2001 ¶¶ 22, 26, 29).
`As explained in the Decision on Institution, we agree with Patent Owner as
`to the “push” mode in Phan San Jose, but find Petitioner’s contentions
`directed to the “pull” mode more persuasive. Dec. on Inst. 13–14.
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`Specifically, in the “pull” mode, “the user selects a ‘Suspend’ operation, his
`session shall be saved back to the MWS, allowing the application to
`terminate, and at a later time the session can be reinstantiated by the
`Teaching File application running on the target machine.” Ex. 1002, 11; see
`also id. at 7 (“When the user decides to move his session he activates the
`handoff mechanism from his client software on C1 to . . . suspend his session
`(to be later reinstantiated explicitly from another machine) . . . .”). Patent
`Owner agreed at the hearing that “[t]he pull mode teaches transfer after the
`session is discontinued.” Tr. 21:3–9. Based on the record presented during
`trial, we are persuaded that Phan San Jose discloses the “transmitting” step
`recited in claim 1.
`Second, Patent Owner argues that Phan San Jose’s description of the
`“pull” mode does not disclose “specifying a second device.” PO Resp. 8–9,
`14–18 (citing Ex. 2001 ¶¶ 22, 25, 27–29). Patent Owner contends that in the
`“pull” mode, the user selects a “Suspend” operation without specifying a
`device on which to resume the session. Id. at 15–17. Selecting “Suspend”
`causes the session history to be sent to the MWS, then, later, if the “user
`wishes to resume a session [on a different device], the session state is
`‘pulled’ from the MWS.” Id. According to Patent Owner, there is no
`disclosure in Phan San Jose of the second device on which the session will
`be resumed being “specified.” Id. We disagree.
`To the extent Patent Owner’s argument is that Phan San Jose does not
`specify a second device because the user does not identify a second device
`before selecting the “Suspend” operation, we are not persuaded. As
`explained above, we do not agree with Patent Owner that the claim requires
`the “specifying” step to take place before the “discontinuing” step. See
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`supra Section II.A.2. In other words, there is nothing preventing the
`specification of the second device from occurring after the user selects the
`“Suspend” operation, discontinuing the session and causing the session
`history to be transmitted to the MWS. The specification of the second
`device may take place at a later time, such as when the user chooses to
`resume the session on a different device.
`To the extent Patent Owner’s argument is that Phan San Jose does not
`specify a second device at all, we also are not persuaded. Petitioner
`contends that the second device is specified when the user takes action on
`the second device to resume the session. See Pet. 10; Reply 2–4. As
`Petitioner points out, Figure 2 of Phan San Jose shows that a physician may
`move from his PDA (“first device”) to a desktop computer (“second
`device”). Pet. 10. Figures 1–3 of Phan San Jose are reproduced below.
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`As shown in the figures, the physician conducts an “application session” on
`his PDA in Figure 1, then on his desktop computer “[a]fter handoff” of the
`session to the new device in Figure 2, and then on his laptop computer
`“[a]fter another handoff” of the session in Figure 3. Ex. 1002, 6. The
`physician “recogni[zes] that his duties would be better served by migrating
`to another machine, indicating to the iMASH system to make it so (with
`something as simple as a push of a button), and then continu[es] his actions
`on the second machine.” Id. “The iMASH runtime system provides the
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`mechanism to perform these actions seamlessly and automatically.” Id.
`In the “pull” mode, the user would select “Suspend” on the PDA, then
`resume the session on the desktop computer by taking some action (e.g.,
`clicking a button or buttons to log on) on the desktop computer. See id. at 6,
`11; Ex. 2001, 13 (depicting a full-color version of Figure 5 of Phan San
`Jose). The session is “reinstantiated by the Teaching File application
`running on the target machine,” and the target machine “retrieves the session
`state from the MWS.” Ex. 1002, 11.
`Petitioner’s contention that the second device in Phan San Jose is
`specified when the user takes action on the second device to resume the
`session is persuasive. See Pet. 10; Reply 2–4. Claim 1 is broadly worded.
`It does not specify who or what does the specifying, or to whom or what the
`second device is specified. See Tr. 24:14–22 (acknowledging that the user
`or another entity could do the specifying). The claim only requires that the
`second device be specified. Phan San Jose discloses that the user chooses a
`device on which he or she wants to resume the session and takes action on
`that device to do so, which causes the Teaching File application on the
`second device to communicate with the MWS to retrieve the session history.
`We are persuaded that this constitutes “specifying” the second device.
`Patent Owner argued at the hearing that at the time of resuming the
`session on the second device, the MWS may “know[]” the identification of
`the user (via the user logging on to the second device), but identifying a user
`is not the same as specifying a device. Id. at 22:15–23:5. Patent Owner
`further argued that the MWS would know an address (e.g., IP address) to
`which to send the session history, but that address may not be the actual
`
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`address of the second device because the device may be behind a firewall.
`Id. at 22:15–28:2, 41:2–9.
`Patent Owner’s arguments are not persuasive. First, as explained
`above, we do not see anything in the claim that would prohibit the user from
`specifying a second device by taking action on that particular device (as
`opposed to a different device) to resume the session. Second, even if the
`second device had to be specified to the MWS, the MWS in Phan San Jose
`must receive enough information from the second device to be able to
`distinguish the chosen second device from other potential devices, even if
`only by virtue of the second device’s association with a user account;
`otherwise, the MWS would not be able to transmit the session history to the
`second device. See Reply 3; Ex. 1002, 6–9, 11 (describing how the MWS is
`able to communicate with both the first client device C1 and the second
`client device C2). Petitioner has provided sufficient evidence that Phan San
`Jose discloses “specifying a second device,” as recited in claim 1.
`Based on all of the evidence of record, we determine that Petitioner
`has shown, by a preponderance of the evidence, that claim 1 is anticipated
`by Phan San Jose under 35 U.S.C. § 102(a).
`
`C. Obviousness Ground Based on Phan San Jose and Phan Helsinki
`Petitioner argues that claims 4–6 and 8–11 are unpatentable over Phan
`San Jose and Phan Helsinki under 35 U.S.C. § 103(a). Pet. 7–9, 14–21.
`We have reviewed the Petition, Patent Owner Response, and Reply, as well
`as the evidence discussed in each of those papers, and are persuaded, by a
`preponderance of the evidence, that claims 4–6 and 8–11 are unpatentable
`over Phan San Jose and Phan Helsinki.
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`1. Phan Helsinki
`Phan Helsinki pertains to the same iMASH research project as Phan
`San Jose, and describes the architecture and operation of the system in
`additional detail. Ex. 1003, 7. For example, Phan Helsinki explains that the
`“[m]iddleware servers fetch data based on user requests (or pre-fetch data
`based on prediction of [a] user’s near-future need) and perform conversion
`as needed,” and “[w]hen a user moves an on-going application session from
`one device to another, middleware servers act as a ‘home’ for the application
`state (including active connections, cached data, etc.) to facilitate migration
`between devices.” Id. at 9. Phan Helsinki also describes the
`“Middleware-Aware Remote Code” (MARC) on the client device that
`facilitates “session saving and restoration,” and the process by which a
`session is transferred using MARC and a web browser. Id. at 9–10.
`
`
`2. Level of Ordinary Skill in the Art
`“Section 103(a) forbids issuance of a patent when ‘the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007) (quoting 35 U.S.C. § 103(a)). In their papers, the parties do not state
`specifically what they believe to be the level of ordinary skill in the art for
`the ’233 patent. Dr. Mohapatra, though, testifies that a person of ordinary
`skill in the art would have had “a Bachelor of Science degree in computer
`science or computer engineering with approximately 2 years of practical
`work experience or post-graduate research in a field such as computer
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`networking and/or distributed systems.” Ex. 2001 ¶ 11. We agree with this
`assessment in part. Based on our review of the ’233 patent, the types of
`problems and solutions described in the ’233 patent and cited prior art, and
`the testimony of Patent Owner’s declarant, we conclude that a person of
`ordinary skill in the art would have had a bachelor’s degree in computer
`science or computer engineering (or its equivalent), and at least two years of
`experience with computer networking, distributed systems, or similar fields.
`See, e.g., Ex. 1001, col. 1, ll. 5–67 (disclosing that “[t]he invention generally
`relates to session management in a distributed computer network,” and
`describing issues in the prior art when a user has “several communication-
`enabled devices” and wants to switch between them). We apply this level of
`ordinary skill in the art for purposes of this Decision.
`
`
`3. Analysis
`Petitioner has presented sufficient evidence that the combination of
`Phan San Jose and Phan Helsinki teaches all of the limitations of claims 4–6
`and 8–11, and that a person of ordinary skill in the art would have
`considered their teachings regarding the same research project together. See
`Pet. 7–9, 14–21. For example, with respect to claim 4, which recites
`“accessing a device profile of said second device” and “restructuring said
`session data3 to conform with said device profile of said second device,”
`
`
`3 Claim 1 refers to a “session history” rather than “session data.” Based on
`how the terms are used in the claims, and how “session history” is used in
`the Specification, we conclude that a person of ordinary skill in the art
`would understand the terms to refer to the same thing. See, e.g., claims 1
`(“resuming said session on said second device with said session history”),
`4 (“restructuring said session data to conform with said device profile of said
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`Petitioner cites Phan San Jose’s disclosure of client device characteristics
`stored in a device profile in the MWS and Phan Helsinki’s disclosure of the
`same MWS performing data conversions as necessary for a second client
`device. Id. at 14–16 (citing Ex. 1002, 7, Ex. 1003, 9). Petitioner contends
`that Phan San Jose and Phan Helsinki “together describe the operation,
`architecture, and capabilities of the [iMASH] platform developed by the
`Thomas Phan group at UCLA,” and Phan Helsinki “provides additional
`information about how the [iMASH] platform works.” Id. at 8, 15.
`Patent Owner acknowledges that Phan Helsinki describes the “pull”
`mode disclosed in Phan San Jose, and argues that Phan Helsinki likewise
`fails to teach or render obvious the step of “specifying a second device” in
`claim 1. PO Resp. 22–24. As explained above, we are persuaded that Phan
`San Jose alone discloses “specifying a second device.” See supra Section
`II.B.2. Patent Owner’s argument as to the challenged claims depending
`from claim 1, therefore, is not persuasive.
`Based on all of the evidence of record, we determine that Petitioner
`has shown, by a preponderance of the evidence, that claims 4–6 and 8–11
`are unpatentable over Phan San Jose and Phan Helsinki under 35 U.S.C.
`§ 103(a).
`
`
`
`second device
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