Trials@uspto.gov
`571.272.7822
`
`
`
`
`Paper No. 24
`Filed: February 16, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`CORE WIRELESS LICENSING S.A.R.L.,
`Patent Owner.
`____________
`
`Case IPR2015-01983
`Patent 8,498,671 B2
`____________
`
`
`Before JAMESON LEE, DAVID C. McKONE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`INTRODUCTION
`
`I.
`
`A. Background
`LG Electronics, Inc. (“Petitioner”) filed a Petition (“Pet.”) for inter
`partes review of U.S. Patent No. 8,498,671 B2 (Ex. 1001, “the ’671
`patent”). Paper 1. The Petition challenges the patentability of claims 1–5,
`7–12, 15, and 16 of the ’671 patent. In an initial decision, we instituted inter
`partes review of each of these challenged claims. Paper 7 (“Dec. Inst.”).
`
`
`571.272.7822
`
`
`
`
`Paper No. 24
`Filed: February 16, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`CORE WIRELESS LICENSING S.A.R.L.,
`Patent Owner.
`____________
`
`Case IPR2015-01983
`Patent 8,498,671 B2
`____________
`
`
`Before JAMESON LEE, DAVID C. McKONE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`INTRODUCTION
`
`I.
`
`A. Background
`LG Electronics, Inc. (“Petitioner”) filed a Petition (“Pet.”) for inter
`partes review of U.S. Patent No. 8,498,671 B2 (Ex. 1001, “the ’671
`patent”). Paper 1. The Petition challenges the patentability of claims 1–5,
`7–12, 15, and 16 of the ’671 patent. In an initial decision, we instituted inter
`partes review of each of these challenged claims. Paper 7 (“Dec. Inst.”).
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`Core Wireless Licensing S.A.R.L. (“Patent Owner”) filed a Patent
`Owner Response (Paper 16, “PO Resp.”), and Petitioner filed a Reply (Paper
`17, “Reply”). Oral argument was held on November 30, 2016. A transcript
`of the oral hearing is included in the record. Paper 23 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). We determine that
`Petitioner has shown by a preponderance of the evidence that claims 1, 3–5,
`7–12, 15, and 16 of the ’671 patent are unpatentable. We also determine that
`Petitioner has not shown by a preponderance of the evidence that claim 2 of
`the ’671 patent is unpatentable.
`
`Related Matters
`B.
`The parties indicate that the ’671 patent was asserted in Core Wireless
`
`Licensing S.A.R.L. v. LG Electronics, Inc., No. 2:14-cv-00911 (E.D. Tex.);
`Core Wireless Licensing S.A.R.L. v. Apple, Inc., No. 6:14-cv-00751 (E.D.
`Tex.); and Core Wireless Licensing S.A.R.L. v. Apple, Inc., No. 6:14-cv-
`00752 (E.D. Tex.). Paper 1, 1; Paper 5, 2. Petitioner indicates that the last
`two actions are “pending transfer” to the Northern District of California.
`Pet. 1, 1.
`
`The ’671 Patent
`C.
`The ’671 patent discloses displaying certain information on the idle
`
`screen of a mobile telephone device. Ex. 1001, Abstr. That information is
`of a kind or from a source “selected by a user.” Id. The information can be
`financial information, news, traffic information, etc. Id. The ’671 patent
`explains that previously the idle screen had been used to display the name of
`the network operator and certain alert messages such as the number of
`missed calls. Id. The ’671 patent further explains that placing such selected
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`information of interest to the user in the idle screen makes that information
`instantly accessible to the user without having to navigate to the required
`“function” (e.g., a micro-browser) and select it. Id.
`
`The ’671 patent describes that the information may be from a resource
`selected by a user, such as a particular internet portal which the user selects.
`Id. at 3:12–14. With regard to “remote information resource,” the ’671
`patent states: “A ‘remote information resource’ contains information of
`interest to a potentially large number of users and is remotely accessible
`over a wireless connection. Web and WAP sites are examples of remote
`information resources.” Id. at 3:15–19. Regarding user selection of a
`“remote information resource,” the ’671 patent explains:
`The user may directly select the remote information
`resource by, for example, navigating to an internet site and
`defining elements of that site to appear in the idle screen. The
`user may also indirectly select the remote information resource
`by setting or agreeing to certain kinds of default profiles; for
`example, if a user selects a “shopping” profile, then location
`specific information relating to nearby shops (e.g. special offers
`etc.) or links to nearby taxi firms or indeed nearby taxis could be
`pushed to the user’s device to appear automatically in the idle
`screen of the user’s mobile telephone device.
`Id. at 3:44–54 (emphasis added). Figure 3 is reproduced below:
`
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`Figure 3, reproduced above, shows a screen shot of how a web site may be
`accessed to set up an idle screen display according to an embodiment of the
`’671 patent. Id. at 4:31–34. In the circumstance of Figure 3, a user has
`logged into “My Yahoo!” and navigated to a place for setting up “Yahoo!
`mobile agent.” Id. at 5:27–32.1 The setup screen allows the user to specify
`what is visible on the idle screen of the user’s mobile device. Id. at 5:33–35.
`In this example, the user selects “My shares” and “My scoreboard,” sets the
`update schedules, and presses “Finished.” Id. at 5:36–38.
`
`The ’671 patent explains that a user can either select an existing Web
`or WAP page, or alternatively generate a Web/Wap page “according to the
`user’s specified preferences for different sorts of information (e.g.[,] sports
`results, cookery, news headlines).” Id. at 6:53–60. In that regard, the ’671
`patent also states: “While the user could select an existing WAP page as the
`idle screen, formatting problems, ad-junk, and the fact that the user might
`want information from disparate sources means that a customized page
`would typically be better.” Id. at 5:4–7.
`Claims 1, 12, 15, and 16 are the only independent claims of all
`challenged claims and are reproduced below:
`1. A mobile communication device capable of supplying
`information to an end-user, the mobile communication device
`being adapted to receive and display the information from a
`remote information resource;
`wherein the mobile communication device is adapted to enable
`the end-user to select the remote information resource prior to
`
`1 According to the ’671 patent, “[t]he illustrated implementation is
`hypothetical only and should not be construed as implying that any such
`service is in fact available from or otherwise supported by Yahoo!.”
`Ex. 1001, 5:23–26.
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`the mobile communication device entering an idle screen
`state, enable the end-user to customize the idle screen to
`display the information according to the end-user’s specified
`preferences, the information is for display on an idle screen
`of the mobile communication device, and the information is
`updated while the mobile communication device is in the idle
`screen state.
`
` A method of displaying information on a mobile
`12.
`communication device, comprising:
`(a) enabling an end-user to select a remote information resource
`prior to the mobile communication device entering an idle
`screen state, wherein information content retrieved from the
`remote information resource is customized according to the
`end-user’s specified preferences and displayed on an idle
`screen of the mobile communication device during the idle
`screen state; and
`(b) retrieving updated information content from the remote
`information resource during the idle screen state.
`
` A mobile device configured to:
`15.
`(a) retrieve or receive, from a remote information resource,
`updated information during an idle screen state; and
`(b) display that updated information on the mobile device
`during the idle screen state;
`wherein (i) the kind of updated information which is to be
`retrieved or received is determined prior to the mobile device
`entering the idle screen state based on a user input, and (ii)
`the updated information is displayed as part or all of an idle
`screen on the mobile device according to an end-user’s
`specified preferences.
`
`16. A method of displaying information on a mobile device,
`comprising:
`(a) retrieving or receiving, by the mobile device, updated
`information from a remote information resource during an
`idle screen state; and
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`(b) displaying that updated information on the mobile device
`during the idle screen state;
`wherein (i) the kind of updated information which is to be
`retrieved or received is determined prior to the mobile device
`entering the idle screen state based on a user input, and (ii)
`the updated information is displayed as part or all of an idle
`screen on the mobile device according to an end-user’s
`specified preferences.
`
`Evidence Relied Upon by Petitioner
`
`D.
`
`
`Reference
`Farber
`Martin
`
`Date
`Oct. 6, 1998
`U.S. Patent No. 5,819,284
`U.S. Patent No. 6,363,419 B1 Mar. 26, 2002
`(filed Apr. 5, 1999)
`Not Applicable
`Not Applicable
`Admitted Prior Art2
`APA
`Petitioner also relies on the Declaration of Dr. V. Thomas Rhyne, III.
`Ex. 1004. Patent Owner has not submitted the declaration of any declarant
`to rebut the testimony of Dr. Rhyne.
`
`Exhibit
`Ex. 1002
`Ex. 1003
`
`E.
`
`
`The Asserted Grounds of Unpatentability
`Trial was instituted on the following grounds of unpatentability:
`Reference(s)
`Basis
`Claims Challenged
`Farber and APA
`§ 103(a)
`1–5, 7–12, 15, and 16
`
`Martin, Farber, and APA
`
`§ 103(a)
`
`1–5, 7–12, 15, and 16
`
`
`2 According to Petitioner, the ’671 patent states that it was known (1) for a
`mobile telephone device to retrieve information from a remote source for
`displaying on an idle screen (Ex. 1001, 3:20–24), and (2) to use the idle
`screen of a mobile telephone to display advertisement and other information
`selected and sent by the network provider (Ex. 1001, 2:41–47). Pet. 9. By
`“Admitted Prior Art,” we refer to those statements. Patent Owner does not
`dispute that those statements constitute admitted prior art.
`
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`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016).
`Consistent with that standard, we assign claim terms their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art at the time of the invention, in the context of the entire patent disclosure.
`See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`There are, however, two exceptions: “1) when a patentee sets out a
`definition and acts as his own lexicographer,” and “2) when the patentee
`disavows the full scope of a claim term either in the specification or during
`prosecution.” Thorner v. Sony Comp. Entm’t Am. LLC, 669 F.3d 1362, 1365
`(Fed. Cir. 2012). It is inappropriate to limit a claim to a preferred
`embodiment without a clear intent in the specification to redefine a claim
`term or a clear disavowal of claim scope. See id. Limitations that are not a
`part of the claim should not be imported into the claim. See SuperGuide
`Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
`
`If an inventor acts as his or her own lexicographer, the definition must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. See Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
`1243, 1249 (Fed. Cir. 1998). It is improper to add into a claim an extraneous
`limitation, i.e., one that is added wholly apart from any need for the addition
`to interpret what is meant by the words or phrases in the claim. See
`Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993); E.I.
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`Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433
`(Fed. Cir. 1988).
`
`Only terms that are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. See Wellman, Inc. v.
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`1. “remote information resource”
`Each of independent claims 1, 12, 15, and 16 recites the term “remote
`
`information resource.” Petitioner does not propose any construction for the
`term. According to Patent Owner, the term is expressly defined in the
`specification as follows:
`A ‘remote information resource’ contains information of interest
`to a potentially large number of users and is remotely accessible
`over a wireless connection. Web and WAP sites are examples of
`remote information resources.
`PO Resp. 11 (citing Ex. 1001, 3:15–19). The above-quoted text first
`provides a definition, and then identifies examples. Petitioner’s witness,
`Dr. Rhyne, agrees that the above-quoted text in the specification functionally
`defines a remote information resource and provides examples. Ex. 2004,
`21:15–22:12. In accordance with the definition given in the specification,
`we construe “remote information resource” as: a remotely wirelessly
`accessible location or object that contains information of interest to a
`potentially large number of users.3
`
`
`
`
`3 Patent Owner correctly notes that a remote information resource is a
`container of information and is not the information itself. PO Resp. 13.
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`2. “select [a/the] remote information resource”
`Claim 1 recites “select the remote information resource.” Claim 12
`
`recites “select a remote information resource.” The ’671 patent does not
`specially define either phrase or the term “select.” Thus, both phrases and
`the term “select” take on their ordinary and customary meanings as would be
`understood by one with ordinary skill in the art in light of the specification.
`
`Petitioner asserts that both phrases should be construed to mean
`“select a remote information resource either directly or indirectly.” Pet. 14.
`Petitioner’s assertion is fully supported by this description in the ’671 patent:
`“The user may directly select the remote information resource by, for
`example, navigating to an [I]nternet site and defining elements of that site to
`appear in the idle screen. The user may also indirectly select the remote
`information resource by setting or agreeing to certain kinds of default
`profiles.” Ex. 1001, 3:44–49.
`A specific example of indirect selection is also provided in the
`specification. The ’671 patent states:
`[F]or example, if a user selects a ‘shopping’ profile, then location
`specific information relating to nearby shops (e.g.[,] special
`offers etc.) or links to nearby taxi firms or indeed nearby taxis
`could be pushed to the user’s device to appear automatically in
`the idle screen of the user’s mobile telephone device.
`Id. at 3:44–54.
`
`Patent Owner argues that in the context of claims 1 and 12, which add
`the language “an end-user is enabled to” just prior to the phrase “select the
`remote information resource” (claim 1) and the phrase “select a remote
`information resource” (claim 12), claims 1 and 12 should be construed to be
`limited to “direct” selection of the remote information resource. PO Resp.
`13–15. The argument is unpersuasive. The presence of the phrase “an end-
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`user is enabled to” in claims 1 and 12 does not restrict the selection by the
`end-user to the direct approach. The end-user still can make its selection
`indirectly, such as by selecting a default profile, as is described in the
`specification and discussed above.
`
`We construe “select [a/the] remote information resource” broadly, but
`reasonably, to mean “select a remote information resource either directly or
`indirectly.” We also clarify that indirect selection, in that context, means a
`selection made on the basis of information provided by the user that does not
`itself identify the remote information resource.
`3. “idle screen”
`Each independent claim refers to an “idle screen.” With respect
`
`to an “idle screen,” the specification of the ’671 patent states:
`The term ‘idle screen’ refers to the default screen displayed when
`the mobile telephone device is switched on and therefore capable
`of receiving a voice call. The idle screen is the screen which is
`displayed when the user is not navigating to a particular function,
`nor actively using a particular application, such as contacts
`application, or a messaging application. Personal computers
`have no equivalent to an idle screen.
`Ex. 1001, 1:28–36. Citing to the first two sentences in the above-quoted
`text, and without explanation, Petitioner proposes a construction for “idle
`screen” that is differently worded from that stated above. Pet. 12. It is
`inappropriate to rephrase the first two sentences in the above-quoted
`definition provided in the specification. The meaning of “idle screen” is
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`provided in the specification by the entirety of the above-quoted text and
`needs no further construction.4
`4. “mobile communication device” and “mobile device”
`Independent claims 1 and 12 each recite the term “mobile
`
`communication device,” and independent claims 15 and 16 each recite the
`term “mobile device.” Petitioner asserts that both terms should be construed
`to include a portable electronic device with communications capabilities.
`Pet. 11. Patent Owner asserts that the term “mobile communication device”
`should be construed as wireless mobile communication device, and the term
`“mobile device” should be construed as wireless mobile device. PO Resp.
`12–13. Because the prior art in the involved grounds of unpatentability
`accounts for a wireless communication capability of a portable device, we
`discern no need to specify any express construction for either “mobile
`communication device” or “mobile device.”
`5. “a source selected by a user”
`Claim 2 depends from claim 1 and further recites: “in which the
`
`information is from a source selected by the user.” According to Patent
`Owner, the phrase requires “direct” selection of a source of information. PO
`Resp. 19. We will address Patent Owner’s position in the context of analysis
`
`
`4 The last sentence, “Personal computers have no equivalent to an idle
`screen,” indicates only that the ’671 patent defines “idle screen” to exclude
`anything on a personal computer, such as a screen saver. It acts as a
`disclaimer, and does not mean a screen saver on a personal computer is not
`reasonably pertinent to what the ’671 patent regards as an idle screen. By
`adopting the definition in the specification, we are not finding that teachings
`about screen savers on a personal computer may not be relied on to render
`the claimed invention obvious.
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`of claim 2 below. It is not necessary, however, to provide an express
`construction of the phrase. Note, however, a “source” is not the same as a
`“remote information resource.” A “remote information resource” is
`specially defined in the specification and construed above.
`
`Level of Ordinary Skill in the Art
`B.
`With regard to the level of ordinary skill in the art, Petitioner asserts:
`
`“A person of ordinary skill in the art in the field of the [’]671 patent is a
`person who has, through formal education or extensive practical experience,
`the equivalent of a Bachelor’s Degree in Computer Science or Electrical
`Engineering and 2–3 years of experience in graphical user interfaces.”
`Pet. 10–11. Patent Owner does not explicitly take a position on the level of
`ordinary skill and does not dispute Petitioner’s articulation. Petitioner’s
`assertion is supported by the testimony of Dr. Rhyne. We accept and adopt
`Petitioner’s statement of the level of ordinary skill in the art.
`
`Claims 1–5, 7–12, 15, and 16,
`C.
`as Obvious over Farber and APA
`
`We have reviewed the arguments and evidence presented by
`
`Petitioner, and determine that, notwithstanding the arguments of Patent
`Owner, Petitioner has established by a preponderance of the evidence that
`claims 1, 3–5, 7–12, 15, and 16 are unpatentable as obviousness over Farber
`and APA. Petitioner, however, has not established by a preponderance of
`the evidence that claim 2 is unpatentable as obvious over Farber and APA.
`
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`APA
`1.
`APA refers to admitted prior art. As noted above, by “admitted prior
`
`art,” we refer to (1) the statement in the specification of the ’671 patent, in
`column 3, lines 20–24, indicating that it was known for a mobile telephone
`device to retrieve information from a remote source for displaying on an idle
`screen (Ex. 1001, 3:20–24), and (2) the statement in the specification of the
`’671 patent, in column 2, lines 41–47, indicating that it was known to use the
`idle screen of a mobile telephone to display advertisement and other
`information selected and sent by the network provider (Ex. 1001, 2:41–47).
`Patent Owner does not dispute that those statements constitute admitted
`prior art.
`Farber
`2.
`Farber discloses a screen saver for a personal computer or other
`
`similar display devices. Ex. 1002, Abstr. The screen saver displays
`personalized up-to-date information that is of interest to that particular user.
`Id. Each user has a personalized user profile indicating (a) the categories or
`types of information that the user desires to receive, such as sports
`information, weather, investment advisories, and (b) parameters that specify,
`for that user, the exact information desired to be received in that category.
`Id. The personal profile is stored in a database at a service node away from
`the personal computer. Id. at 4:32–47.
`
`When the screen saver is activated, such as when the personal
`computer display has remained inactive for a predetermined period of time,
`the personal computer accesses the service node to retrieve information for
`display, based on the user’s individual profile, without interrupting the
`screen saver function. Id. at Abstr., 1:47–60. The displayed personalized
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`data is thereafter updated periodically such that the information displayed as
`a screen saver is always current. Id. at 1:60–64.
`
`Figure 1 of Farber is reproduced below:
`
`
`Figure 1, reproduced above, is a block diagram of a described
`
`embodiment of Farber. Id. at 2:24–26. Personal computers 101 are
`connected to service node 120 through telecommunications network 110.
`Id. at 2:57–58. Service node 120 includes server 130 and information feed
`interface 140. Id. at 2:65–66. Information feed interface 140 is connected to
`server 130 and also a plurality of information providers that may be at
`different locations, such as weather provider 150, traffic provider 152, and
`financial information provider 154. Id. at 3:3–11. Information feed
`interface 140 includes a plurality of clients, such as traffic client 142,
`weather client 143, and financial client 144, which provide an interface to a
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`corresponding one of the providers, to download or receive information from
`the providers. Id. at 3:61–4:5.
`Server 130 in service node 120 includes database 135. Id. at 4:32–34.
`
`Database 135 includes traffic database 171, weather database 172, and
`financial database 173, which store information obtained from the various
`information providers. Id. at 4:34–38. Database 135 also includes user
`profile database 174 which contains profile information of each user in the
`system. Id. at 4:41–44. Database 135 is illustrated in Figure 2, reproduced
`below:
`
`
`Figure 2, reproduced above, illustrates the components within database 135
`of server 130 shown in Fig. 1. Id. at 2:27–28.
`
`Farber describes that the information displayed by the screen saver is
`up-to-date because it was recently obtained from service node 120, and is
`customized because it was selected by the user and set forth in his or her
`profile. Id. at 6:59–60.
`
`
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`3.
`
`Independent Claims 1 and 12
`
`Claim 1 is drawn to an apparatus and claim 12 is drawn to a method.
`
`The steps recited in method claim 12 correspond to the respective functions
`the mobile communication device is adapted to perform. Petitioner relies on
`the same analysis and evidence to address both claims 1 and 12, and Patent
`Owner does not have arguments that apply to one of claims 1 and 12 but not
`the other. Accordingly, claim 1 is representative. Although we specifically
`discuss only claim 1, the analysis applies to claim 12 as well.
`
`Claim 1 recites: “A mobile communication device capable of
`supplying information to an end-user, the mobile communication device
`being adapted to receive and display the information from a remote
`information resource.” Petitioner points out that Farber describes a system
`and method for personalizing a screen saver display on a personal computer
`or other visual display devices. Pet. 15. Petitioner also points out that the
`content for the screen saver is obtained by request to a service node accessed
`through a telecommunication network. Id.
`
`The various “other visual display devices” described in Farber, as
`identified by Petitioner, are “a PicturephoneTM 2500 available from AT&TTM
`Corp.,” “a personal digital assistant, such as a MagicLinkTM personal digital
`assistan[t] available from [SONY],” a “screen telephone” and a “display
`device” similar to a personal computer. Id. Petitioner fails to explain,
`however, why any of the identified devices necessarily constitutes a mobile
`communication device.
`
`Petitioner does, however, provide obviousness reasoning to account
`for the requirement of the idle screen of a mobile communication device.
`Petitioner explains that in light of Farber and APA, it would have been
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`obvious for one with ordinary skill in the art to put information of special
`interest to an end-user on the idle screen of a mobile telephone in the same
`way that Farber describes such information would be applied as a screen
`saver to a screen phone or a personal digital assistant. Pet. 16–17. The
`reasoning has rational underpinnings and is persuasive. APA refers to
`admitted facts that it was known (1) for a mobile telephone device to retrieve
`information from a remote source for displaying on an idle screen, and (2) to
`use the idle screen of a mobile telephone to display an advertisement and
`other information selected and sent by the network provider. The benefit of
`having desirable information on the screen saver of a screen phone or a
`personal digital assistant similarly applies to an idle screen on a mobile
`telephone. As is persuasively explained by Petitioner, combining the
`teachings of Farber and APA in the manner proposed by Petitioner would
`have been obvious “because it is the straightforward result of using the user-
`customization techniques Farber describes to improve a similar device in the
`same way.” Pet. 16. In the Patent Owner’s Response, Patent Owner does
`not dispute Petitioner’s reasoning for combining the teachings of Farber and
`APA.
`We determine that this element of claim 1 is rendered obvious by the
`
`combined teachings of Farber and APA as applied by Petitioner. In essence,
`what Farber describes for selection, customization, and display on a screen
`saver would have been recognized by one with ordinary skill in the art to
`apply to the selection, customization, and display of information in the idle
`screen state of a mobile telephone.
`
`Claim 1 further recites: “wherein the mobile communication device is
`adapted to enable the end-user to select the remote information resource
`
`17
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`IPR2015-01983
`Patent 8,498,671 B2
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`prior to the mobile communication device entering an idle screen state.”
`Petitioner persuasively explains how this limitation is met by the combined
`teachings of Farber and APA. Pet. 17–19. Specifically, as discussed above,
`APA is relied on to extend Farber’s teachings to a mobile communication
`device. The rest of this limitation is accounted for by Farber’s disclosure.
`
`Petitioner explains that in Farber the selection of remote information
`resource is done by the user’s creation of “a personalized user profile” that
`indicates “(a) the categories or types of information that the user desires to
`receive, such as sports information, weather, investment advisories, and so
`on, and (b) parameters that specify, for that user, the exact information
`desired to be received in each category.” Pet. 17 (citing Ex. 1002, 1:41–47,
`6:56–60). Petitioner explains that in Farber the personalized user profile is
`created when a user initially arranges to use the display system. Id. (citing
`Ex. 1002, 1:41–47, 6:56–60). Petitioner further explains that, subsequently,
`when the user’s device enters an idle or inactive state, the process for
`retrieving current up-to-date data is initiated by establishing a
`communication session with the service node. Id. (citing Ex. 1002, 5:15–22,
`5:47–50, 2:45–49). And Petitioner explains that based on the customized
`profile, the service node obtains the specific information desired by the user
`and sends it to the mobile device for display. Id. (citing Ex. 1002, 5:44–
`6:17). The explanations are supported by evidence and persuasive,
`notwithstanding the arguments of Patent Owner, which are discussed below.
`
`Because “to select the remote information resource” is construed to
`encompass indirect selection, in the sense of relying on a default profile
`containing certain information such as a broader class of information, to
`make the selection, Petitioner has adequately accounted for how Farber
`
`18
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`IPR2015-01983
`Patent 8,498,671 B2
`
`satisfies the limitation enable the end-user to select the remote information
`resource (the “to-select limitation”).
`
`Claim 1 specifically requires that the user selection be enabled by the
`mobile communication device. We are persuaded by Petitioner (Pet. 18–19)
`that in light of Farber’s disclosing that the customized profile may be created
`by using an “interactive voice platform,” it would have been obvious to one
`with ordinary skill to use the mobile telephone in the combined teachings of
`Farber and APA to create the personalized user profile at the service node.
`A mobile telephone provides the interactive voice platform. Petitioner’s
`position is supported by the testimony of Dr. Rhyne. Ex. 1004 ¶ 49.
`
`Patent Owner asserts that the Petition is unclear as to what Petitioner
`regards, in Farber, as the remote information resource. PO Resp. 41 n.15.
`We explained in the initial decision, however, that, in light of Dr. Rhyne’s
`testimony, it is evident that Petitioner identifies providers 150, 152, and 154
`as the remote information resource. Dec. Inst. 21–22. Patent Owner
`acknowledges that the initial decision understood the Petition as equating
`Farber’s information providers as the remote information resources. PO
`Resp. 41 (citing Dec. Inst. 21–22). Patent Owner has had clear notice of
`how Farber is applied to the claims.
`
`Patent Owner argues that the limitation of enabling an end-user to
`select a remote information resource is restricted to the “direct” selection
`embodiment which is not met by a user’s setting or agreeing to a certain
`profile as is the case in the disclosure of Farber. PO Resp. 14–15. Patent
`Owner further notes that “direct” selection is not disclosed by Farber,
`because Farber’s system is arranged to insulate information providers from
`direct connection to users. PO Resp. 41 (citing Ex. 1002, 1:66–2:1, 4:14–
`
`19
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`IPR2015-01983
`Patent 8,498,671 B2
`
`16). Patent Owner further notes that direct selection is akin to a user’s
`navigating to the remote information resource to make the selection. PO
`Resp. 40–41.
`
`As discussed above, however, we have rejected Patent Owner’s
`proposed construction of the phrase “select [a/the] remote information
`resource” to require direct selection by the user.5 Instead, we have construed
`the phrase to cover the case of indirect selection, i.e., selection made on the
`basis of information provided by the user that does not itself identify the
`remote information resource. Patent Owner further states: “The user profile
`is only used by the service node to retrieve information from the data base
`135 within the service node, and does not
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