IPR2015-01308
`U.S. Patent No. 8,204,959
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`
`
`
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`Attorney Docket No.
`110717-0004-653
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`DELL INC.
`Petitioner,
`
`v.
`
`NXP B.V.
`Patent Owner
`_____________________________
`
`Case No. IPR2015-01308
`Patent No. 8,204,959
`_____________________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
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`
`
`
`
`i
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`

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`IPR2015-01308
`U.S. Patent No. 8,204,959
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`
`
`TABLE OF CONTENTS
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`Attorney Docket No.
`110717-0004-653
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`Introduction ...................................................................................................... 1 
`I. 
`The ’959 Patent .............................................................................................. 13 
`II. 
`III.  Claim Construction ........................................................................................ 16 
`“Outputting Content” (all challenged claims) ..................................... 18 
`A.
` 
`“Outputting Status-Information” (all challenged claims) ................... 19 
`B.
` 
`“A location . . . where said content can be sent” (claims 8, 11, 18,
`C.
` 
`and 20) ................................................................................................. 21 
`IV.  Each Of Petitioner’s Grounds Fails And Institution Should Be Denied ....... 23 
`Petitioner is not reasonably likely to prevail on its contention that
`A.
` 
`Kimura anticipates claims 1-11 and 13-20 (Ground 1) ....................... 24 
`Petitioner has not established a reasonable likelihood that
`1.
` 
`Kimura discloses controlling the direction of content transfer
`based on whether the initiator and a second device are
`currently outputting content as required in Claim 1 ................. 29 
`Petitioner has not established a reasonable likelihood that
`Kimura discloses controlling the direction of content transfer
`based on whether the claimed device is outputting content as
`required in Claim 13 ................................................................. 41 
`Petitioner is not reasonably likely to prevail on its contention that
`Kimura in view of Geurts renders obvious claims 1-11 and 13-20
`Ground 3) ............................................................................................ 42 
`Petitioner has not established that a POSA would be
`1.
` 
`motivated to combine Kimura with Geurts ............................... 45 
`Petitioner has not established a reasonable likelihood that
`Kimura in view of Geurts renders obvious controlling the
`direction of content transfer based on whether the
`initiator/claimed device and (for claims 13-20) the second
`device are currently outputting content .................................... 53 
`Petitioner is not reasonably likely to prevail on its contention that
`Kimura or Kimura and Geurts combined with Abel renders
`obvious claim 12 (Grounds 2 and 4) ................................................... 56 
`Conclusion ..................................................................................................... 60 
`
`
`V. 
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`
`ii
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`2.
` 
`
`2.
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`B.
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` 
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`C.
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`

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`IPR2015-01308
`U.S. Patent No. 8,204,959
`
`
`
`TABLE OF AUTHORITIES
`
`Attorney Docket No.
`110717-0004-653
`
`
`CASES
`
`Page(s)
`
`Apple Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00441 (July 13, 2015) ....................................................... 48, 49, 52, 58
`
`Dynamic Drinkware, LLC v. National Graphics, Inc.,
`No. 2015-1214, (Fed. Cir. Sept. 4, 2015) .......................................................... 56
`
`Facebook, Inc. v. Mobile-Plan-It, LLC,
`IPR2015-00691 (July 8, 2015) ............................................................... 10, 11, 49
`
`Ford Motor Co. v. TMC Fuel Injection Sys., LLC,
`IPR2014-00272 (June 22, 2015) ......................................................................... 17
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ......................................................................... 47
`
`In re Gorman,
`933 F.2d 982 (Fed. Cir. 1991) ........................................................................... 48
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 48
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) .......................................................................... 17
`
`Liberty Mut. Ins. Co. v. Progressive Casual Ins. Co.,
`CBM2012-00003 (Oct. 25, 2012) ...............................................12, 51, 54, 55, 59
`
`Linear Tech. Corp. v. In-Depth Test LLC,
`IPR2015-00421 (July 21, 2015) .......................................... 44, 45, 47, 48, 49, 58
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .......................................................................... 17
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 17
`
`Tempo Lighting, Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) ............................................................................ 17
`
`iii
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`IPR2015-01308
`
`U.S. Patent No. 8,204,959
`Whole Space Indus. Ltd. v. Zipshade Indus. (B.V.I.) Corp.,
`IPR2015-00488 (July 24, 2015) ............................................................. 46, 49, 50
`
`Attorney Docket No.
`110717-0004-653
`
`Zetec, Inc. v. Westinghouse Elec. Co.,,
`IPR2014-00384 (Jul. 23, 2014) .................................................................... 12, 51
`
`STATUTES
`
`35 U.S.C. § 103 ........................................................................................................ 15
`
`35 U.S.C. § 314 ................................................................................................ 1, 3, 12
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 50
`
`37 C.F.R. § 42.22(a)(2) ................................................................................ 54, 55, 59
`
`37 C.F.R. § 42.100(b) .............................................................................................. 17
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.108(c) ................................................................................................. 3
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`77 Fed. Reg. 48680, 48694 (Aug. 14, 2012) ............................................................. 3
`
`
`
`iv
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`Attorney Docket No.
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`IPR2015-01308
`110717-0004-653
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`U.S. Patent No. 8,204,959
`Pursuant to 37 C.F.R. § 42.107, Patent Owner NXP B.V. (“Patent Owner,”
`
`“NXP”) submits this Preliminary Response to the above-captioned Petition for
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`Inter Partes Review (“Pet.”, Paper 1) filed by Dell Inc. (“Petitioner”) regarding
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`claims 1 to 20 (“challenged claims”) of U.S. Patent No. 8,204,959 (“the ’959
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`patent”).
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`I. INTRODUCTION
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`On its face, Petitioner’s submission fails to provide the Board with the basic
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`evidence required to institute any inter partes review. If the Board nonetheless
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`institutes trial on any of the challenged claims, Patent Owner will address in detail
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`in its § 42.120 Response the substantive errors and shortcomings that underlie each
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`of Petitioner’s arguments and its purported evidence. In this paper, however,
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`Patent Owner addresses only the meaning of certain of the challenged claims’
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`pertinent terms, and some fundamental shortcomings of the Petition under Rule
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`42.107: in particular, Petitioner’s failure to demonstrate, as to any of the
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`challenged claims, a reasonable likelihood of success on any asserted ground of
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`invalidity. Because of this clear threshold failure, the Petition should be denied
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`and no inter partes review should be instituted under 35 U.S.C. § 314.
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`The ’959 patent’s challenged claims are directed to methods and devices that
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`implement new protocols for controlling the transfer of content between two or
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`more devices based on the outputting (e.g., displaying) of the content—as opposed
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`1
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`Attorney Docket No.
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`IPR2015-01308
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`U.S. Patent No. 8,204,959
`to requiring users to separately pick and designate each piece of content they want
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`to transfer. See Ex. 1002 at 1:53-57. Specifically, the ’959 patent protocols
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`require detecting whether one or more devices are outputting (e.g., displaying)
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`content and, based on that information (which the ’959 patent refers to as
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`“outputting status-information”) determining in which direction content should be
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`transferred between devices. See, e.g., id. at 1:53-62, 2:47-51. The devices are
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`referred to as a Near Field Communication (“NFC”) initiator (“initiator”) and one
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`or more NFC targets (“targets”).1
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`Claims 1-12 implement a protocol that determines how to transfer content
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`based on whether the initiator and a second device are currently outputting
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`content. The device acting as NFC initiator transfers content to the other device
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`when the initiator is currently outputting content, and receives content when the
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`initiator is not currently outputting content and the second device is currently
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`outputting content:
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`transferring content from the first device to the second device via
`said interface based on the outputting status-information, wherein
`the first device acts as an NFC initiator and detects whether the
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`
` NFC is a “short-range wireless technology” for communication based on
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` 1
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`standards including ISO/IEC 18092/ECMA-340. See Ex. 1002 at 2:31-35; Exs.
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`1014, 1015.
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`2
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`Attorney Docket No.
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`IPR2015-01308
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`U.S. Patent No. 8,204,959
`first device is currently outputting content and if yes, sends this
`content to the second device or devices acting as NFC target and if
`no, receives content currently being output by the second device.
`
`See Ex. 1002 at 5:48-54. The protocol in claims 13-20 is slightly different in that it
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`can determine how to transfer content based on whether the claimed device is
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`currently outputting content. The claimed device sends content if it is outputting
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`content, and it receives content if it is not:
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`transmit or receive content via said interface based on the
`outputting status-information, wherein content is sent to another
`device or devices acting as an NFC target or targets if the device is
`currently outputting the content, and content is received from the
`other device or devices acting as an NFC target or targets if the
`device is not currently outputting content in the case of the device
`acting as an NFC initiator.
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`Id. at 6:33-39. These claimed protocols control the direction of content transfer
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`based on whether one or more devices is currently outputting content. See, e.g., id.
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`at 5:48-54, 6:33-39. The prior art does not use these protocols.
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`To justify institution of an inter partes review, Petitioner’s papers must
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`make a prima facie showing that, as a factual and legal matter for each asserted
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`ground, it has a reasonable likelihood of proving at least one challenged claim
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`unpatentable. See, e.g., 35 U.S.C. § 314; 37 C.F.R. § 42.108(c); 77 Fed. Reg.
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`48680, 48694 (Aug. 14, 2012). It is apparent from Petitioner’s arguments and
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`3
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`Attorney Docket No.
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`IPR2015-01308
`110717-0004-653
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`U.S. Patent No. 8,204,959
`evidence that it cannot meet that burden for any asserted ground. Its Petition must
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`be denied, and no inter partes review should be instituted.
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`Petitioner relies on two references under four grounds for all 20 claims:
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`Kimura (U.S. Pub. No. 2009/0103124) (Ex. 1005) (all Grounds) and Kimura in
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`combination with Geurts (U.S. Pub. No. 2009/0282102) (Ex. 1006) (Grounds 3
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`and 4). In Grounds 2 and 4, Petitioner also relies on “the knowledge of a person of
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`ordinary skill” to invalidate claim 12, but this purported “knowledge” actually is a
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`third alleged prior art reference—the Abel patent (U.S. Patent No. 8,400,913) (Ex.
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`1007)—which Petitioner contends discloses transferring pictures to a digital
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`picture frame over NFC.2 See Pet. at 44-45 (citing Ex. 1007). But Kimura, Geurts,
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`and Abel all fail to disclose the claimed protocols for transferring content: Kimura
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`requires a user to select content to be transferred separately from the process for
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`outputting content. Geurts synchronizes two devices in proximity with one
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`another, but neither device controls direction of transfer based on whether it is
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`outputting content. And Abel discloses transferring content when devices are “in
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` 2
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` Because Petitioner relies on Abel (Ex. 1007) purportedly to demonstrate the
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`“knowledge of a person of ordinary skill in the art” as a basis for grounds 2 and 4,
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`this will be referred to as “Abel” herein for purposes of Patent Owner’s
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`preliminary response.
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`4
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`IPR2015-01308
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`U.S. Patent No. 8,204,959
`close physical proximity” or “physically touch,” but does not disclose controlling
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`the direction of content transfer based on whether devices are outputting content.
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`Ex. 1007 at 1:18-22.
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`More particularly, Kimura discloses content transfer between two devices: a
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`“multifunctional peripheral” (“MFP”) (e.g., a printer/scanner) and a “mobile
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`device” (e.g., a mobile phone). Pet. at 18; see also Ex. 1005 ¶ [0006]. As
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`described in Section IV(A), Kimura discloses different embodiments in which a
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`document is sent from the MFP to the mobile device if either (a) a document is
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`selected for transfer in the MFP; or (b) a signal from the MFP that a document is
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`being previewed is received by the mobile device and the mobile device then
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`selects the document for transfer. See, e.g., Ex. 1005 ¶¶ [0122], [0128], [0172],
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`[0198]. Kimura also discloses embodiments in which a document is transferred
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`from the mobile device to the MFP when the document is selected for transfer on
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`the mobile. See, e.g., id. ¶¶ [0120], [0128], [0143], [0180].
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`Geurts discloses a “synchronization” process in which content is transferred
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`between two devices: a TV and a mobile phone (“mobile”). As described in
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`Section IV(B), a playlist is sent from the TV to the mobile when the mobile is
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`brought near the TV while the playlist is being displayed on the TV and the mobile
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`has no active applications, but the TV receives information and the mobile sends
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`information regardless of what is (or is not) being output on either device. See
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`5
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`IPR2015-01308
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`U.S. Patent No. 8,204,959
`Ex. 1006 ¶ [0029]. Information concerning new songs on the mobile is sent from
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`the mobile to the TV when the mobile detects that it is close to the TV and the user
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`takes further steps using the TV to effect the transfer. See id. ¶ [0032].3
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`Abel discloses—in a single sentence in the Background section of the
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`disclosure—that content can be transferred either “from a camera enabled cell
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`phone by touching the phone to an [NFC] enabled [device],” or from a computer to
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`a handheld device by “touching the device to the computer.” Ex. 1007 at 1:22-27.
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`Regardless of which device Petitioner relies on as the initiator for claims 1-
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`12 or the claimed device for claims 13-20, as shown in the table below, neither
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`
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` 3
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` Petitioner also cites to—but never bothers to explain—another embodiment in
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`Geurts where users stream sound over a common channel that all devices play
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`simultaneously. See Ex. 1006 ¶ [0030]. In this protocol, content is transferred
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`between devices based on whether a device in the ad-hoc network does or does not
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`have a song in the group playlist – not whether any of the devices is outputting
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`(i.e., playing) the songs. See id. When the devices are playing (i.e., outputting) the
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`songs, all of the devices already have the song they are playing. See id. This
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`embodiment therefore does not disclose or render obvious a method or device that
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`receives content if a device is not “currently outputting content.” Cf. Ex. 1002 at
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`5:48-54, 6:32-39.
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`6
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`Attorney Docket No.
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`IPR2015-01308
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`U.S. Patent No. 8,204,959
`Kimura, nor Geurts, nor (for claim 12, which depends from claim 1) Abel discloses
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`a method or a device that implements the protocols in claims 1 and 13 that control
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`the direction of content transfer based on whether the initiator (claims 1-
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`12)/claimed device (claims 13-20) is currently outputting content and, for claims 1-
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`12, whether the second device is currently outputting content.4
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`Prior art does not disclose the claimed protocols5
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`Dell Argument Deficiencies
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` 4
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` Petitioner does not assert that Abel discloses a method or a device that
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`implements the protocols in claims 1 and 13 that control the direction content
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`should be transferred based on whether the initiator (claims 1-12) / the claimed
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`device (claims 13-20) is currently outputting content and, for claims 1-12, whether
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`the second device is currently outputting content. Nor does Petitioner rely on Abel
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`for this purpose. Abel does not disclose devices that transfer content based on
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`whether any device is outputting content. Ex. 1007 at 1:22-27.
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`5 Dependent claims 2-12 ultimately depend from claim 1. See Ex. 1002 at 5:55-
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`6:23. Claims 14-20 depend from claim 13. See id. at 6:40-62. As discussed
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`above, this preliminary response addresses only some of the many deficiencies in
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`the prior art.
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`7
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`Attorney Docket No.
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`IPR2015-01308
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`U.S. Patent No. 8,204,959
`Kimura: MFP is
`Claims 1 and 13: MFP does not receive content based on
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`initiator /
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`whether MFP is outputting content
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`claimed device
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`Claim 1: MFP does not receive content being output on mobile
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`Kimura: Mobile
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`Claims 1 and 13: Mobile does not send or receive content based
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`is initiator /
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`on whether mobile is outputting content
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`claimed device
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`Geurts: TV is
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`Claims 1 and 13: TV does not receive content based on whether
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`initiator /
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`TV is outputting content
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`claimed device
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`Claim 1: TV does not receive content being output on mobile
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`Geurts: mobile
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`Claims 1 and 13: Mobile does not send content based on
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`is initiator /
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`whether mobile is outputting content
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`claimed device
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`Kimura and Geurts thus fail to disclose the protocols claimed in the ’959
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`patent. The Kimura protocol subjects users to the same cumbersome processes for
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`transferring content that existed before the ’959 patent. Cf. Ex. 1002 at 1:30-32,
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`1:53-62. By requiring the selection of content and/or using mere proximity to
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`control the content that is transferred, Kimura’s and Geurts’s protocols do not
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`control the direction of content transfer based on whether the initiator (claims 1-
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`12) / the claimed device (claims 13-20) and a second device (claims 1-12) are
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`currently outputting content, and do not disclose or render obvious the novel
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`8
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`IPR2015-01308
`U.S. Patent No. 8,204,959
`protocols claimed in the ’959 patent.
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`Attorney Docket No.
`110717-0004-653
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`Attempting to address these deficiencies, Petitioner repeatedly
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`mischaracterizes the actual disclosures in Kimura and Geurts to obfuscate the
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`differences between prior art protocols that use selecting content and
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`synchronization of devices to control transfer and the claimed protocols in the ’959
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`patent that rely on outputting (e.g., displaying) content to control the direction of
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`transfer. For example, Petitioner and Petitioner’s expert mischaracterize flowchart
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`decision points called “File selected in mobile device?” and “File selected in
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`multifunctional peripheral?” in Kimura as steps where a device “detects that it is”
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`or “is NOT outputting content.” Ex. 1011 ¶ 57; Pet. at 23; Ex. 1005 Fig. 24.
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`Similarly, Petitioner argues that Kimura discloses “previewing” a document in a
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`mobile device “as an alternative [to] highlighting the document.” See Pet. at 19.
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`While Kimura discloses that a document can be previewed, it never describes
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`previewing as an alternative to highlighting or selecting the document. Cf., e.g.,
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`Ex. 1005 ¶¶ [0205]-[0209]. Rather, the “preview” screen is a separate and optional
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`screen that is closed before the user can select a document for transfer. See id. ¶¶
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`[0205], [0208], [0209] (identifying document selection screen in Fig. 4 and
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`preview screens in Fig. 12A-12C, characterizing the preview as optional, and
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`explaining that after previewing a document, “[s]election of the Exit soft key 138
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`returns the user to the Document Selection screen”); Figs. 4, 12A-12C. These
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`9
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`U.S. Patent No. 8,204,959
`misreadings of Kimura only further serve to illustrate the deficiencies in
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`Petitioner’s arguments.
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`As yet another indicator of the weakness of Petitioner’s assertions, Petitioner
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`attempts to supplement Kimura with Geurts, even though neither Geurts nor
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`Kimura discloses the claimed protocols. Kimura discloses a protocol based on
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`selecting documents to send and receive, which in turn governs the direction
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`content is transferred between the devices. Geurts discloses a protocol wherein—
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`like the prior art cited by the Examiner—content transfer in at least one direction is
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`controlled based on the proximity of devices to one another. Neither reference
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`discloses a protocol that controls the direction of content transfer based on whether
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`the initiator (claims 1-12) or the claimed device (claims 13-20) and, for claims 1-
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`12, the second device, are currently outputting content.
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`Petitioner also fails to show the requisite motivation to combine. See
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`Facebook, Inc. v. Mobile-Plan-It, LLC, IPR2015-00691, Paper 10 at 14 (Decision
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`Denying Institution of Inter Partes Review) (July 8, 2015) (“Petitioner’s
`
`contentions that one of ordinary skill in the art would have consulted [two prior art
`
`references] and found them to be analogous is not sufficient reasoning to
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`demonstrate that it would have been obvious to one of ordinary skill in the art to
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`combine the different features and functions identified by Petitioner in the manner
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`recited in claim 1.”). Like the unsuccessful Petitioner in Facebook (id.), Petitioner
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`10
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`Attorney Docket No.
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`argues that Kimura and Geurts both relate to a similar field—“simplifying content
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`transfer between devices by using NFC.” See Pet. at 46. As the Board held in
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`Facebook, this is simply “not sufficient.” Facebook, Paper 10 at 14. Petitioner
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`does not identify anything in Kimura that would motivate a combination with
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`Geurts, or vice versa. Additionally, Kimura and Geurts are not from the same
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`field: Kimura describes improving operation of a phone interacting with an MFP,
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`whereas Geurts is directed to exchanging digital rights management (“DRM”)
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`protected content within the bounds of DRM restrictions. See Ex. 1005 ¶¶ [0005]-
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`[0006]; Ex. 1006 ¶ [0002]. Moreover, Petitioner’s explanation of how either of the
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`protocols in Geurts or Kimura should be modified by the other reference to render
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`obvious the protocols in the ’959 patent’s claims is nebulous, at best— and does
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`not explain which of the various embodiments (e.g., MFP, TV, and/or mobile
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`device or phone) described in each of these two references a POSA would
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`combine, why the POSA would choose those particular embodiments, or how this
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`newly-concocted Kimura-Geurts protocol could function in those embodiments.
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`Each reference discloses a variety of embodiments. Without explanation or
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`rationale, Petitioner conveniently directs attention to only certain aspects of those
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`embodiments to allegedly teach the claimed invention without explaining why
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`those particular aspects of the embodiments would be considered or why other
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`aspects would be replaced or removed.
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`11
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`Attorney Docket No.
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`U.S. Patent No. 8,204,959
`But even this deficient attempt to articulate why and how a POSA would
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`combine Kimura and Geurts pales in comparison to Petitioner’s failure to establish
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`a motivation to combine Abel with Kimura or Kimura and Geurts in the second
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`and fourth grounds in the Petition. Petitioner calls its second and fourth grounds
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`combinations with “the knowledge of a [POSA].” See Pet. at 43, 59. But the only
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`purported “knowledge” Petitioner cites is Abel. See Pet. at 43-45. This is a bald-
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`faced attempt by Petitioner to combine references without having to identify a
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`sufficient motivation to combine. But even these combinations do not render
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`obvious the protocol in claim 1, from which claim 12 depends, because Abel
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`controls content transfer using only “physical proximity” or contact between
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`devices. Ex. 1007 at 1:18-22.
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`Petitioner cannot rely on the Board and Patent Owner to fill in the gaps in
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`Petitioner’s own analysis: Petitioner must meet its burden in the Petition. “It
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`would be unfair to expect the Patent Owner to conjure up arguments against its
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`own patent and just as inappropriate for the Board to take the side of the Petitioner
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`to salvage an inadequately expressed ground proposing an alternative rationale.”
`
`Liberty Mut. Ins. Co. v. Progressive Casual Ins. Co., No. CBM2012-00003, Paper
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`8 at 14 (Order—Denial of Grounds) (Oct. 25, 2012); see also Zetec, Inc. v.
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`Westinghouse Elec. Co., LLC, IPR2014-00384, Paper 10 at 14 (Decision denying
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`institution) (Jul. 23, 2014). The very purpose of the § 314 threshold is to avoid the
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`Attorney Docket No.
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`IPR2015-01308
`110717-0004-653
`
`U.S. Patent No. 8,204,959
`empty, wasteful exercise Petitioner asks this Board to commence. Because the
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`Petition on its face fails to show a reasonable likelihood of success as to any
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`asserted ground, Petitioner’s request for a trial should be denied.
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`II. THE ’959 PATENT
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`At the time of the invention of the ’959 patent, consumer electronic devices,
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`such as MP3 players, phones, and computers, were becoming increasingly popular
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`in part because of their ability to play and display music, photos, videos, and other
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`content. See Ex. 1002 at 1:26-30. When consumers played and displayed such
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`content for friends and family, they sometimes wanted to share copies of that
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`content. See id. Consumers therefore increasingly demanded a simple and
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`intuitive way to share. Id. at 1:30-32.
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`Unfortunately, prior systems and techniques for transferring content were
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`cumbersome and not intuitive: for example, when a user wanted to transfer content,
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`the user had to first select the content and then start a dedicated operation to
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`transfer that content. See Ex. 1002 at 1:36-38, 1:53-56, 5:13-15. Thus, when a
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`consumer decided to, for example, send a friend another picture, the user had to
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`repeat the process of selecting and then starting the transfer of that picture. See id.
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`Zahra Tabaaloute of NXP invented and patented a way to streamline this
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`process by reducing the need to separately select content to be transferred. Ex.
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`1002 at 1:36-38, 1:53-61. Instead, devices could control the direction of content
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`Attorney Docket No.
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`IPR2015-01308
`110717-0004-653
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`U.S. Patent No. 8,204,959
`transfer using a protocol that determined whether a device was outputting (e.g.,
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`displaying or playing) content—as opposed to whether the device was used to
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`select a document to transfer. See id. For example, a user can show someone a
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`picture, then transfer the picture to another device simply by bringing the two
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`devices together while the picture is being shown—reducing the need for
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`separately selecting content to transfer. See id. This content transfer protocol
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`controls the direction of transfer to account for situations where multiple devices
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`are, for example, outputting content.
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`The disclosed technique uses an “NFC initiator” to control content transfer
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`using “outputting status-information”—information about whether a device is
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`currently outputting content (e.g., pictures being displayed or music tracks being
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`played)—to determine whether and in what direction the transfer should occur.
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`See, e.g., Ex. 1002 at 3:22-40, 3:52-55, 4:23-28, 4:46-56. To begin the process,
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`one of the devices serves as an NFC initiator, and then the devices connect via
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`their respective interfaces. See, e.g., 2:47-51, 4:23-28; claims 1, 13. After the
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`connection is established, the initiator device uses one of several protocols
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`disclosed in the ’959 patent specification to determine the direction of content
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`transfer. For example, as claimed in the ’959 patent, the initiator device can
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`implement a protocol that controls the direction content is transferred based upon
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`whether more than one of the devices is currently outputting content (see, e.g., Ex.
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`14
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`

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`Attorney Docket No.
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`IPR2015-01308
`110717-0004-653
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`U.S. Patent No. 8,204,959
`1002 at 5:48-54 (claims 1-12)) or at least one device is currently outputting content
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`(see, e.g., id. at 6:33-39 (claims 13-20)). See also, e.g., Ex. 1002 at 1:65-2:5, 2:9-
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`11, 3:32-39, 3:47-51, 3:59-67, 4:5-11, 4:39-5:6.
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`The transfer control protocols based on the use of “outputting status-
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`information” recited in the ’959 patent’s claims did not exist in the prior art. For
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`example, some prior art protocols relied on users separately selecting content. As
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`explained in the ’959 patent, a major advantage to using outputting status-
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`information is that users no longer have to navigate through the process of
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`separately selecting content they want to transfer because the device “intuitively”
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`knows what to do. Ex. 1002 at 1:53-62. Thus, users are less dependent on using
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`“a high number of clicks” in order to “explicitly start a dedicated transfer function
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`each time a new picture or music track is opened.” Ex. 1002 at 1:55-56, 5:13-15.
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`Other prior art protocols detected only the identity and presence of another
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`device. During prosecution of the parent application to the ’959 patent and in
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`response to a rejection under 35 U.S.C. § 103 over the Xu et al. reference (U.S.
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`Pub. No. 2006/0223556), the Applicant explained that detecting the mere “identity
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`and presence” of a device is not the same as detecting outputting status-
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`information:
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`Xu et al. disclose detecting “identity and presence”[0036]. Xu et
`al. nowhere disclose, teach or suggest detecting “content” as the
`term is used in the instant application. This is clearly not the same
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`Attorney Docket No.
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`IPR2015-01308
`110717-0004-653
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`U.S. Patent No. 8,204,959
`as “detecting an outputting status-information”. As is clear from
`the specification of the instant application: “[t]he aim is to find out
`which of the devices DEV1 and DEV2 is currently outputting or
`rendering content, that is to say an outputting status-information is
`detected” (emphasis added) (page 4, lines 11-12).
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`Ex. 1003 at 18 (emphasis in original).
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`The technology disclosed in the ’959 patent can be implemented on devices
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`“used to store, output, and transfer content.” Ex. 1002 at 2:28-30. Examples of
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`such devices include “a digital picture frame, a MP3 player, a stereo, or Dolby
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`surround device, a TV set, a DVD recorder, a satellite receiver, a digital book, a
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`PC, a mobile phone, or a PDA.” Id. at 2:25-28. These devices use corresponding
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`interfaces to transfer content. See e.g., Ex. 1002 at 2:31-46, 3:35-40, 4:31-35,
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`5:43-54, 6:28-30, 6:33-39. The interfaces can be used to transfer content either via
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`Near Field Communication (NFC) standards or “by means of other standards such
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`as WLAN, Bluetooth or GPRS, USB network, wired Ethernet, etc., or by the
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`combination of any of these.” Ex. 1002 at 2:42-46. These interfaces can also be
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`adapted to use wired communication in addition to NFC standards. Ex. 1002 at
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`3:40-41 (“It should be mentioned that the interfaces may be adapted as wired
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`interfaces.”).
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`III. CLAIM CONSTRUCTION
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`Petitioner concedes, as it must, that for purposes of inter partes review “[a]
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`

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`Attorney Docket No.
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`IPR2015-01308
`110717-0004-653
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`U.S. Patent No. 8,204,959
`claim in an unexpired patent shall be given its broadest reasonable construction in