UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In Re:
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`U.S. Patent 8,204,959
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`Inventor: Zahra Tabaaloute
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`Filed:
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`Issued:
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`October 3, 2011
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`June 19, 2001
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`
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`Assignee: NXP B.V.
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`:
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`:
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`:
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`:
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`Attorney Docket No. 016295.5179
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`IPR No. Unassigned
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`Title:
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`Method of and Device for Transferring Content
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Review Processing System
`
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 1-20 OF U.S.
`PATENT NO. 8,204,959 UNDER 35 U.S.C. §§ 311-319 and 37 C.F.R.
`§§ 42.100 ET SEQ.
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
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`II. MANDATORY NOTICES, STANDING, AND FEES .................................. 1
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`III. OVERVIEW OF THE ’959 PATENT ............................................................ 3
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`A. Summary of the Claimed Subject Matter ........................................................ 3
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`B. Prosecution History of the ’959 Patent ............................................................ 3
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`IV. CLAIM CONSTRUCTION ............................................................................ 5
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`A. “Outputting content” ........................................................................................ 6
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`B. “Outputting status-information” ...................................................................... 6
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`C. “A location . . . where said content can be sent” ............................................. 7
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`V.
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`SUMMARY OF PRIOR ART ......................................................................... 8
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`A. State of the Art During the Relevant Time Period .......................................... 8
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`B. Kimura is Prior Art to the ʼ959 Patent ............................................................. 8
`C. Kimura Discloses Transferring Content Over NFC Based Upon Whether a
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`Device is Outputting the Content ..................................................................10
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`D. Geurts is Prior Art to the ʼ959 Patent ............................................................11
`E. Geurts Discloses Transferring Content Over NFC Based Upon Whether a
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`Device is Outputting the Content ..................................................................11
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`VI. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED
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`CLAIMS ARE UNPATENTABLE ..............................................................12
`A. Ground 1: Kimura Anticipates Claims 1-11 and 13-20 Under 35 U.S.C. §
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`102(e) .............................................................................................................12
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`B. Ground 2: Kimura in Combination With the Knowledge of a Person of
`
`Ordinary Skill in the Art Renders Claim 12 Obvious Under 35 U.S.C. § 103
`
` .......................................................................................................................43
`C. Ground 3: Kimura in view of Geurts Renders Claims 1-11 and 13-20
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`Obvious Under 35 U.S.C. § 103(a) ...............................................................45
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`D. Ground 4: Kimura and Geurts in Combination With the Knowledge of a
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`Person of Ordinary Skill in the Art Renders Claim 12 Obvious Under 35
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`U.S.C. § 103 ...................................................................................................59
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`VII. CONCLUSION ..............................................................................................59
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`ii
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`
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`TABLE OF AUTHORITIES
`
`
`CASES
`Battery Power-Up Functionality, Components Thereof, and Products
`Containing Same,
`Investigation No. 337-TA-950 (“ITC Case”) ....................................................... 2
`
`Page(s)
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 46
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................ 5
`
`Tempo Lighting, Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) .............................................................................. 6
`
`STATUTES
`
`35 U.S.C. § 102(e) ................ 9, 11, 12, 13, 24, 25, 27, 28, 30, 32, 33, 35, 36, 37, 39
`
`35 U.S.C. § 103 ............................................................................................ 43, 46, 59
`
`35 U.S.C. § 103(a) .............................................................. 45, 51, 52, 53, 54, 55, 59
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`35 U.S.C. §§ 311–319 ................................................................................................ 1
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`35 U.S.C. § 314(a) ................................................................................................... 12
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`35 U.S.C. § 318(b) ................................................................................................... 59
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`OTHER AUTHORITIES
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`37 C.F.R. §§ 42.8(b)(3) and 42.10(a) ........................................................................ 2
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`37 C.F.R. § 42.10(b) .................................................................................................. 2
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`37 C.F.R. § 42.15(a) ................................................................................................... 2
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`37 C.F.R. §§ 42.22(a)(1) and 42.104(b)(4)–(5) ....................................................... 12
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`iii
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`37 C.F.R. § 42.100(b) ................................................................................................ 5
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`37 C.F.R. § 42.100 et seq. .......................................................................................... 1
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`37 C.F.R. § 42.103(a) ................................................................................................. 2
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`37 C.F.R. § 42.104(a) ................................................................................................. 2
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`U.S. Patent No. 8,065,389 .................................................................................. 1, 3, 7
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`U.S. Patent No. 8,204,959 ................................................... 1, 2, 3, 5, 6, 8, 12, 22, 59
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`iv
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`LIST OF EXHIBITS
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`U.S. Patent No. 8,065,389 to Zahra Tabaaloute (“the ’389 Patent”)
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`U.S. Patent No. 8,204,959 to Zahra Tabaaloute (“the ʼ959 Patent”)
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`ʼ389 Patent Prosecution History Excerpts
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`ʼ959 Patent Prosecution History Excerpts
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`U.S. Publication No. U.S. 2009/0103124 to Yoshio Kimura et al.
`(“Kimura”)
`
`U.S. Publication No. U.S. 2009/0282102 to Lucas Jacobus Franciscus
`Geurts (“Geurts”)
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`U.S. Patent No. U.S. 8,400,913 to Miller T. Abel (“Abel”)
`
`International Patent Publication No. WO 2007/026938 to Yoshio
`Kimura et al. (“Kimura PCT Application”)
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`International Patent Publication No. WO 2006/126138 to Lucas J.F.
`Geurts et al. (“Geurts PCT Application”)
`
`U.S. Provisional Application No. 60/939,827 to Miller T. Abel (“Abel
`Provisional Application”)
`
`Declaration of Dean Neikirk (“Neikirk Decl.”)
`
`Curriculum Vitae of Dean Neikirk
`
`International, Ecma/TC32-TG19/2005/012, Near Field
`Ecma
`Communication (2005)
`
`Near Field Communication – Interface and Protocol (NFCIP-1),
`Standard ECMA-340 (December 2002) (“ECMA-340”)
`
`Near Field Communication – Interface and Protocol (NFCIP-1),
`International Standard ISO/IEC 18092 (April 2004) (“ISO/IEC
`18092”)
`
`v
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`I. INTRODUCTION
`Dell Inc. (“Dell” or “Petitioner”) requests inter partes review (“IPR”) under
`35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq. of Claims 1-20 of U.S.
`
`Patent No. 8,204,959 (“the ’959 Patent”) to Tabaaloute, titled “Method of and
`Device for Transferring Content.” See Ex. 1002.
`
`The ’959 Patent relates to transferring content between at least two devices
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`that are capable of outputting the content. See id. at Abstract. In particular, the ʼ959
`
`Patent discloses that the devices are connected via a Near Field Communication
`(“NFC”) interface. Id. at 2:31-46. The devices detect that at least one of the devices
`
`is currently “outputting” content—i.e. reproducing or rendering the content. Id. at
`
`Abstract, 1:62-64. Based upon detecting that a device is outputting content, the
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`ʼ959 Patent teaches that the device outputting the content transfers the content to
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`one or more other devices via the NFC interface. Id. at Abstract.
`
`The ’959 Patent is a continuation of U.S. Patent No. 8,065,389 (“the ʼ389
`
`Patent”). The ʼ389 Patent claims priority to a foreign application filed September
`
`3, 2007. However, as shown in Sections V-VI, infra, the claimed subject matter
`
`had already been disclosed by prior art patents or publications filed or published
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`prior to September 3, 2007. Accordingly, Claims 1-20 are unpatentable.
`
`II. MANDATORY NOTICES, STANDING, AND FEES
`Real Party in Interest: Dell Inc. is the real party in interest.
`
`Related Matters: The ’959 Patent is currently involved in a pending lawsuit
`at the U.S. International Trade Commission (“ITC”), In re Certain Electronic
`
`Products, Including Products with Near Field Communication (“NFC”) System-
`
`
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`1
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`Level Functionality and/or Battery Power-Up Functionality, Components Thereof,
`and Products Containing Same, Investigation No. 337-TA-950 (“ITC Case”). The
`
`’959 Patent was also involved in a lawsuit in the District of Delaware, NXP B.V. et
`al. v. Dell Inc., 1-15-cv-00146-RGA, that has been administratively closed pending
`
`the ITC investigation. Further, in addition to the present petition, an additional IPR
`
`petition directed at the ʼ389 Patent—the patent issued from the parent application
`
`of the ʼ959 Patent—is being filed concurrently by Dell.
`Lead Counsel: Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Dell
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`designates the following: Lead Counsel is Kevin J. Meek (Reg. No. 33,738) of
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`Baker Botts L.L.P.; Back-up Counsel are Paula D. Heyman (Reg. No. 48,363) and
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`Blaine B. Bassett (Reg. No. 73,345) of Baker Botts L.L.P.
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`Service Information: Service information is as follows: Baker Botts L.L.P.,
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`98 San Jacinto Blvd., Suite 1500, Austin, Texas 78701; Tel. (512) 322-2500; Fax
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`(512) 322-2501. Dell
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`consents
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`to
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`service by
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`electronic mail
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`at:
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`kevin.meek@bakerbotts.com,
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`paula.heyman@bakerbotts.com,
`
`and
`
`blaine.bassett@bakerbotts.com. A Power of Attorney is filed concurrently
`
`herewith under 37 C.F.R. § 42.10(b).
`
`Certification of Grounds for Standing: Dell certifies under 37 C.F.R.
`
`§ 42.104(a) that the ’959 Patent is available for IPR. Dell is not barred or estopped
`from requesting IPR of any claim of the ’959 Patent.
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`Fees: Under 37 C.F.R. § 42.103(a), the Office is authorized to charge the fee
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`set forth in 37 C.F.R. § 42.15(a) to Deposit Account No. 02-0384 as well as any
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`additional fees that might be due in connection with this Petition.
`2
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`III. OVERVIEW OF THE ’959 PATENT
`
`A. Summary of the Claimed Subject Matter
`The ’959 Patent was filed on October 3, 2011, and issued on June 19, 2012.
`
`Ex. 1002, at (45). The ʼ959 Patent is a continuation of an application that issued as
`
`U.S. Patent No. 8,065,389 (“the ʼ389 Patent”). Ex. 1002, at (63). According to
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`assignment records filed in the United States Patent and Trademark Office
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`(“USPTO”), the ’959 Patent is currently assigned to NXP B.V. Claims 1-20 of the
`
`’959 Patent relate to detecting that content is currently being “output” (reproduced
`
`or rendered) by a first device, and, in response, transferring the content from the
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`first device to a second device over an interface configured to the standard for Near
`
`Field Communication (“NFC”). See Ex. 1002, 5:40-6:52. The ʼ959 Patent teaches
`that an NFC initiator device determines whether content is sent (i.e. if the NFC
`initiator is outputting the content), or content is received (i.e. if the NFC initiator is
`
`not outputting content). Id. at 5:41-54, 6:24-39. Additionally, the claims of the
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`ʼ959 Patent describe types of information transferred over the NFC interface,
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`devices used for outputting and transferring the content, and conditions that must
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`be met for the content transfer to start. Id. at 5:55-6:23, 6:40-62.
`
`B. Prosecution History of the ’959 Patent
`The ’959 Patent was filed as U.S. Application No. 13/252,108 (“the ’108
`Application”) on October 3, 2011.1 Ex. 1002, at (22). The ʼ108 Application was
`
`
`1 The ʼ108 Application claims priority to an application filed at the European
`Patent Office on September 3, 2007, which is the earliest priority date to which the
`3
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`filed as a continuation of U.S. Application No. 12/676,307, which issued as the
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`ʼ389 Patent on November 22, 2011. Ex. 1002, at (63).
`
`The ʼ959 Patent issued without any office actions and only superficial claim
`amendments requested by the Examiner in a telephone interview. See Ex. 1004,
`
`pp. 12-16. However, the claims of the ʼ389 Patent—which were amended
`
`significantly during prosecution—are nearly identical in scope to several claims of
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`the ʼ959 Patent and required a terminal disclaimer because of their similar scope.
`Compare, e.g., Ex. 1002, 5:41-54, with Ex. 1001, 6:5-18; Ex. 1004, pp. 12-16.
`
`During prosecution, the Patent Office rejected all claims of the ʼ389 Patent
`as anticipated over U.S. Publication No. 2006/0223556 to Xu et al. (“Xu”). Ex.
`1003, pp. 2, 5-7. In response to these rejections, the Applicant argued that Xu’s
`
`detection of “identity and presence” was “clearly not the same as ‘detecting an
`outputting status-information’” recited in the claims. Id. at 18. The Applicant
`
`emphasized that it was “clear from the specification” that detecting outputting
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`status-information was “find[ing] out which of the devices . . . is currently
`
`outputting or rendering content,” or, in other words, which device was performing
`“any form of reproduction or rendering of audio and/or video information.” Id.
`
`On April 3, 2012, the USPTO issued a notice of Allowance allowing Claims
`1-20. Id. at 13. The ʼ959 Patent issued on June 19, 2012.
`
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`claims of the ʼ959 Patent are entitled. Dell, however, does not concede that the
`
`ʼ959 Patent is entitled to this priority date.
`4
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`IV. CLAIM CONSTRUCTION
`This Petition shows that the challenged claims of the ’959 Patent (Ex. 1002)
`
`are unpatentable when the claims are given their “broadest reasonable construction
`
`in light of the specification,” see 37 C.F.R. § 42.100(b), in view of statements
`
`made in the prosecution history (Ex. 1003, 1004). The constructions set forth
`below are provided for purposes of this IPR only.2
`Consistent with the broadest reasonable standard, claim terms given their
`
`ordinary and customary meaning, which is “the meaning that the term would have
`
`to a person of ordinary skill in the art in question at the time of the invention.”
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005). “However, a
`
`claim term will not receive its ordinary meaning if the patentee acted as his own
`
`lexicographer and clearly set forth a definition of the disputed claim term in either
`
`the specification or prosecution history.” Intellectual Ventures Management, LLC
`v. Xilinx Inc., IPR2012-00018 at 8 (Feb. 10, 2014) (internal quotations removed).
`
`The relevance of the prosecution history “remains true in construing patent claims
`
`
`2 District Courts and the International Trade Commission employ different
`standards of proof for claim construction than are applied by the USPTO for inter
`partes review. Accordingly, any interpretation or construction of the challenged
`
`claims in this Petition, either implicitly or explicitly, should not be viewed as
`
`constituting, in whole or in part, Dell’s interpretation or construction, except as
`
`regards the broadest reasonable interpretation of the claims. Dell reserves the right
`
`to seek different constructions of these claim terms in a different forum.
`5
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
`
`before the PTO.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir.
`
`2014). Here, most claim terms should be given their plain and ordinary meaning.
`
`However, proposed constructions for certain claim terms are provided below.
`A. “Outputting content”
`The term “outputting content,” as recited in Claims 1 and 13 should be
`
`construed as “any form of reproduction or rendering of image, audio, or video
`
`information, or any combination thereof,” which is its broadest reasonable
`interpretation in light of the specification. See Ex. 1011, ¶ 27. The specification of
`
`the ’959 Patent discloses that “[t]he term ‘outputting content’ in this context may
`
`be understood as any form of reproduction or rendering of audio and/or video
`
`information.” Ex. 1002, 1:62-64; Ex. 1011, ¶¶ 24-25. However, the ʼ959 Patent
`
`also describes outputting other types of content. For example, the specification
`
`teaches that “content is one of a picture, an audio clip or a music track, a video clip
`
`or a movie, a text, or a combination of any of these,” while Claim 4 includes the
`
`same broad list of content types that may be output and transferred by the device.
`Id. at 2:16-18; 5:59-61; Ex. 1011, ¶ 26. Thus, the specification describes
`
`“outputting” content to include playing back, displaying, or otherwise rendering
`
`any of these types of content. Id. at 2:47-67; Ex. 1011, ¶ 27.
`B. “Outputting status-information”
`The term “outputting status information,” as recited in Claims 1 and 13,
`
`should be construed to mean “information indicating whether a device is currently
`
`outputting content,” which is its broadest reasonable interpretation in light of the
`specification. See Ex. 1011, ¶ 29. As explained above, the broadest reasonable
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`construction of “outputting content” is “any form of reproduction or rendering of
`image, audio, or video information, or any combination thereof.” See Section IV.A,
`
`supra; Ex. 1011, ¶ 28. Moreover, the specification of the ʼ959 Patent explains that
`
`the “aim” of detecting outputting status information “is to find out which of the
`devices . . . is currently outputting or rendering content.” Id. at 1:62-64, 3:29-32.
`
`Indeed, the Applicant emphasized these definitions during prosecution of the ’389
`
`Patent to distinguish detecting an outputting status-information from detecting
`other types of status such as the mere “presence” of a device. See Ex. 1003, p. 18;
`
`see also Section III.B, supra; Ex. 1011, ¶¶ 28-29.
`C. “A location . . . where said content can be sent”
`The term “a location . . . where said content can be sent,” as recited in
`
`Claims 8 and 18 (“a location on the NFC target where said content can be sent”)
`
`and Claims 11 and 20 (“a location on the NFC initiator where said content can be
`
`sent”), should be construed to mean “information related to a physical location on
`
`a device where said content can be sent,” which is its broadest reasonable
`interpretation in light of the specification. See Ex. 1011, ¶ 32. The specification
`
`explains that information is sent or received that describes, among other things, a
`
`“[l]ocation on the [receiving] device where received content can be dumped.” Ex.
`
`1002, 4:53-64; Ex. 1011, ¶ 30. Thus, the receiving device (whether NFC initiator
`or NFC target) provides a physical location—e.g., a memory circuit, a storage
`
`medium, or some other physical component for storing content—where the
`
`sending device can dump the content. Ex. 1011, ¶¶ 30-31. Because the physical
`location itself (e.g., the tangible memory circuit) cannot be sent over a wireless
`7
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`interface, the specification clearly suggests that information relating to the physical
`location must be sent and received. See e.g., id. at 4:36-39. Ex. 1011, ¶¶ 31-32.
`
`V. SUMMARY OF PRIOR ART
`
`A. State of the Art During the Relevant Time Period
`The ʼ959 Patent relates to transferring content between consumer electronics
`
`devices such that the devices seem to “intuitively know[] what to do.” See Ex.
`
`1002, 1:26-32, 1:53-62. Contrary to the conventional “cumbersome” and complex
`
`content transfers involving “nested menus and a high number of clicks” that the
`
`’959 Patent describes, intuitive methods of transferring content between devices
`
`were already well known when the priority application of the ʼ959 Patent was
`filed. See Ex. 1011, ¶¶ 33-34. For example, ISO/IEC 18092 and ECMA-340—the
`
`NFC interfaces which are disclosed in the ʼ959 Patent—were well defined and
`
`rapidly maturing as convenient means for communicating information between
`devices during the relevant time period. See Ex. 1014; Ex. 1015; Ex. 1011, ¶ 34.
`
`Transferring content over NFC with minimal setup was also well known at the
`time. See Ex. 1013, pp. 1, 3; Ex. 1014, pp. 5, 15; Ex. 1015, pp. 6, 48; Ex. 1011,
`¶ 35. Additionally, transferring content over faster interfaces (e.g., Bluetooth,
`
`WiFi, etc.) initialized using NFC with minimal user input required was also well
`
`established and growing in popularity during the relevant time period. Ex. 1013,
`
`p. 4; Ex. 1011, ¶ 36.
`
`B. Kimura is Prior Art to the ʼ959 Patent
`U.S. Publication No. 2009/0103124 to Yoshio Kimura et al. (“Kimura”) was
`
`
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`8
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`filed as PCT Application No. PCT/JP2006/317595 on August 29, 2006, more than
`a year before the earliest priority date of the ʼ959 Patent. Ex. 1008; see also Ex.
`
`1005, at (22), (86). Accordingly, Kimura predates the ’959 Patent’s earliest priority
`date of September 3, 2007 and thus qualifies as prior art under 35 U.S.C. § 102(e).
`Kimura and the PCT Application contain identical subject matter. See Ex.
`
`1005, at (43), (86); Ex. 1011, ¶¶ 41-42. For example, both publications disclose
`
`connecting devices via an NFC interface while at least one of the devices is
`outputting content. Compare, e.g., Ex. 1005, ¶¶ [0098], [0100], [0123], [0185],
`
`[0206], FIG. 24, with Ex. 1008, ¶¶ [0071], [0073], [0092], [0158], [0179], FIG.
`
`24; Ex. 1011, ¶ 42. Both publications also disclose detecting an outputting status-
`
`information of the devices to determine whether they are outputting the content.
`
`Compare, e.g., Ex. 1005, ¶¶ [0121]-[0128], FIG. 24, with Ex. 1008, ¶¶ [0094]-
`
`[0101], FIG. 24; Ex. 1011, ¶ 42. Additionally, both publications teach that the
`
`content being output may then be transferred over the NFC interface, and that the
`
`transfer may begin based on a user confirmation. Compare, e.g., Ex. 1005,
`¶¶ [0131], [0134], [0136], [0143], [0146]-[0148], [0185], FIGS. 24-27, 31-33, with
`
`Ex. 1008, ¶¶ [0104], [0107], [0109], [0116], [0119]-[0121], [0158], FIGS. 24-27,
`
`31-33; Ex. 1011, ¶ 42. Both publications further teach that unique identifier and
`
`location information is sent from one device to the other based on the direction of
`the content transfer. Compare, e.g., Ex. 1005, ¶¶ [0109], [0131], [0134], with Ex.
`
`1008, ¶¶ [0082], [0104], [0107]; Ex. 1011, ¶ 42.
`
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`9
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
`
`C. Kimura Discloses Transferring Content Over NFC Based Upon
`Whether a Device is Outputting the Content
`Kimura was not considered during prosecution of the ʼ959 Patent. See Ex.
`
`1002, at (56). Like the ʼ959 Patent, which purports to make content transfer
`between devices more “intuitive” and less “cumbersome,” Kimura “improve[s] the
`
`operability” of devices transferring content over short-range wireless interfaces by
`
`determining content transfer direction based upon detecting the outputting status of
`
`the devices. Ex. 1002, 1:52-56; Ex. 1005, ¶ [0006]; Ex. 1011, ¶ 43. Specifically,
`Kimura discloses automatically transferring content upon detecting that the devices
`
`are in close proximity and that at least one of the devices is outputting the content.
`
`Ex. 1005, at Abstract, FIG. 42, ¶¶ [0207]-[0208], [0212]; Ex. 1011, ¶ 44.
`For example, Kimura teaches that when a mobile device comes into
`
`proximity with a “multifunctional peripheral device” (e.g., a combination
`
`apparatus that can be used “not only as a copying machine, but also as a facsimile
`
`apparatus, printer apparatus, and scanner apparatus”), the devices initiate
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`communication and then either transfer content to the mobile device for saving, to
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`the multifunctional peripheral for printing, or both, depending on if the devices are
`
`outputting or otherwise “selecting” the content. Ex. 1005, FIG. 42, ¶¶ [0091],
`
`[0164]-[0180], [0207]-[0208], [0212]; Ex. 1011, ¶ 45. Kimura also discloses that
`
`the content transfer between the mobile device and the multifunctional peripheral
`
`can be performed directly over NFC, and that information such as a unique
`
`identifier or a location where content can be sent may also be sent over NFC. See,
`e.g., Ex. 1005, ¶ [0185]; Ex. 1011, ¶ 45.
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`D. Geurts is Prior Art to the ʼ959 Patent
`U.S. Publication No. 2009/0282102 to Lucas Geurts (“Geurts”) was filed as
`
`PCT Application No. PCT/IB06/51536 on May 16, 2006, more than a year before
`
`the earliest priority date of the ʼ959 Patent. Ex. 1009; see also Ex. 1006, at (22),
`(86). Accordingly, Geurts predates the ’959 Patent’s earliest priority date of
`September 3, 2007 and thus qualifies as prior art under 35 U.S.C. § 102(e).
`
`Geurts and the PCT Application contain identical subject matter. Ex. 1006,
`
`at (43), (86); Ex. 1011, ¶¶ 156-57. For example, both publications disclose
`
`connecting devices via an NFC interface while at least one of the devices is
`
`outputting content. Compare, e.g., Ex. 1006, ¶¶ [0002], [0004], [0006], [0029]-
`[0030], with Ex. 1009, 1:8-21, 2:1-5, 2:13-17, 5:29-6:11; Ex. 1011, ¶ 157. Both
`
`publications also teach detecting an outputting status-information of the devices to
`
`determine whether they are outputting the content. Compare, e.g., Ex. 1006, ¶
`[0129], with Ex. 1009, 5:29-6:3; Ex. 1011, ¶ 157. Both publications further teach
`
`that the content being output may then be transferred over the NFC interface, and
`
`that the transfer may begin based on a user confirmation. Compare, e.g., Ex. 1006,
`¶¶ [0125], [0129], [0132], with Ex. 1009, 5:5-10, 5:29-6:3, 6:16-26; Ex. 1011,
`
`¶ 157.
`
`E. Geurts Discloses Transferring Content Over NFC Based Upon
`Whether a Device is Outputting the Content
`Geurts was not considered during prosecution of the ʼ959 Patent. See Ex.
`
`1002, at (56). Like the ʼ959 Patent, which purports to make content transfer
`between devices more “intuitive” and less “cumbersome,” Geurts discloses devices
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`that automatically transfer content over short-range wireless interfaces based upon
`
`detecting the outputting status of the devices to distribute content with less
`
`“hassle.” Ex. 1002, 1:52-56; Ex. 1006, ¶¶ [0004]-[0005]; Ex. 1011, ¶ 158.
`Specifically, Geurts teaches automatically transferring content upon detecting that
`
`the devices are in close proximity and that at least one of the devices is outputting
`
`the content. Ex. 1006, ¶¶ [0004], [0029]-[0030]; Ex. 1011, ¶ 159.
`For example, Geurts describes mobile playback devices
`
`that can
`
`communicate over NFC with stationary devices such as television screens in home
`
`media centers. Ex. 1006, ¶ [0029] ; Ex. 1011, ¶ 159. Geurts teaches that a mobile
`
`device “tags” or “touch-links” a marked part of the television screen to initiate a
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`“smart synchronization” where content is transferred over NFC from the screen of
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`the home media center—which is showing the content—to the mobile device—
`
`which “is in neutral mode.” Ex. 1006, ¶¶ [0029], [0032] ; Ex. 1011, ¶¶ 159-160.
`
`IS A REASONABLE LIKELIHOOD THAT THE
`VI. THERE
`CHALLENGED CLAIMS ARE UNPATENTABLE
`Pursuant to 37 C.F.R. §§ 42.22(a)(1) and 42.104(b)(4)–(5), Dell challenges
`
`Claims 1-20 of the ’959 Patent and requests cancellation of the claims for the
`
`reasons set forth in detail below. As demonstrated below, for each of the grounds,
`
`there is a reasonable likelihood that Dell will prevail with respect to at least one of
`
`the challenged claims. See 35 U.S.C. § 314(a).
`
`A. Ground 1: Kimura Anticipates Claims 1-11 and 13-20 Under 35
`U.S.C. § 102(e)
`As shown below, each and every element of Claims 1-11 and 13-20 are
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`disclosed by Kimura. Accordingly, Kimura anticipates Claims 1-11 and 13-20 of
`
`the ʼ959 Patent under 35 U.S.C. § 102(e).
`
`Claim 1
`
`Claims
`1[p] A method
`of transferring
`content
`between at
`least two
`devices,
`comprising:
`
`Kimura
`See, e.g., Ex. 1005, ¶ [0128], “The above process is
`summarized as follows. To print a file saved in the mobile
`device 2200, the file is selected. To save, to the mobile device
`2200, a file saved in the multifunctional peripheral 2100, the
`operation unit 2107 of the multifunctional peripheral 2100 is
`operated to select the file. One or both of the multifunctional
`peripheral 2100 and mobile device 2200 are operated, the
`mobile device 2200 is held over a predetermined position of the
`multifunctional peripheral 2100, and then a PIN and user
`information are authenticated. In response to this, the mobile
`device 2200 displays an operation screen for performing file
`transfer from the multifunctional peripheral 2100 to the mobile
`device 2200, from the mobile device 2200 to the
`multifunctional peripheral 2100, or between the multifunctional
`peripheral 2100 and the mobile device 2200. In at least the
`mobile device 2200, an operation screen corresponding to a file
`selection status is displayed on the mobile device.” (Emphasis
`added).
`See, e.g., Ex. 1005, ¶ [0231], “Document data may be
`transferred between a mobile phone and a device other than an
`MFP, for example a personal computer. When transferring a
`document from the mobile phone to the computer, a window
`may appear on the computer display, showing the contents of a
`previously configured user directory into which the document
`is transferred.” (Emphasis added).
`See also, Ex. 1005, ¶¶ [0008]-[0032], [0082], [0100], [0105],
`[0134], [0138], [0143], [0150], [0156], [0161], [0180], [0182]-
`[0183], [0186], [0190]-[0192], [0193], [0199]-[0204], [0205],
`[0207], [0216], [0218], [0231], Claims 7-12, 16-17, FIGS. 1, 8,
`10, 21, 23, 25-27, 29, 41-42.
`
`Claim limitation 1[p] is directed at transferring content between at least two
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`Petition for Inter Partes Review of U.S. Patent No. 8,204,959
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`devices. Kimura teaches that a mobile device (e.g., a mobile phone) and a
`multifunctional peripheral (e.g., a printer/scanner device) exchange content in
`
`either direction or in both directions to send image content from the mobile device
`to the multifunctional peripheral for printing or to send image content (e.g., an
`
`image scan) to the mobile device for saving. Ex. 1005, ¶¶ [0128], [0143], [0156];
`
`Ex. 1011, ¶ 48. Kimura also teaches that the image content “may be transferred
`
`between a mobile phone and a device other than [the multifunctional peripheral],
`
`for example a personal computer.” Ex. 1005, ¶ [0231]; Ex. 1011, ¶ 48.
`
`Claims
`1[a]
`connecting a
`first device to a
`second device
`via an
`interface, the
`interface
`configured to
`the standard for
`Near Field
`Communicatio
`n (NFC),
`
`Kimura
`See, e.g., Ex. 1005, ¶ [0089], “A card reader 2117 transmits
`(writes) and receives (reads) commands and data with a non-
`contact type IC card using a short distance wireless
`communication technique such as NFC (Near Field
`Communication; ISO/IEC IS 18092). The card reader 2117
`