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`IPR2016-00622
`Patent No. 7,149,511
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND APPLE INC.,
`Petitioners,
`
`v.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`______________________
`Case IPR2016-006221
`Patent 7,149,511 B1
`______________________
`
`Before JUSTIN T. ARBES, PATRICK R. SCANLON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`                                                            
`1 Case IPR2016-00616 has been consolidated with this proceeding.
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`
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`IPR2016-00622
`Patent No. 7,149,511
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`LIST OF EXHIBITS
`
`Exhibit
`
`Description
`
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`
`Ex. 1005
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`Ex. 1020
`Ex. 1021
`Ex. 1022
`Ex. 1023
`Ex. 1024
`Ex. 1025
`
`U.S. Patent No. 7,149,511 to Bachner et al. (“the ’511 Patent”)
`U.S. Patent No. 7,149,511 File History
`U.S. Patent No. 7,149,511 Ex Parte Reexamination
`Declaration of Dr. Erez Zadok In Support of the Petition for Inter
`Partes Review of United States Patent No. 7,149,511
`U.S. Patent No. 6,012,063 to Bodnar (“Bodnar”)
`Exhibit A to the Declaration of David Lobato: HP Jornada 820/820e
`Handheld PC User’s Guide (“Jornada”)
`Exhibit B to the Declaration of David Lobato: HP CapShare 920
`Portable E-Copier (“CapShare”)
`IEEE100 The Authoritative Dictionary of IEEE Standards Terms,
`7th ed.
`Declaration of Rogelio Jose
`Declaration of Fred Peal
`Declaration of Sharon Lee
`Exhibit A to the Declaration of Christopher Butler: “EarthmateTM
`GPS Receiver: The Smart Way to Navigate” by DeLorme
`Exhibit B to the Declaration of Christopher Butler: “HP Jornada
`External Keyboard (Part HP F1275A) Impressions” to Todd
`Ogasawara (“Ogasawara”)
`Exhibit C to the Declaration of Christopher Butler: “1.2.3
`Representing Programs” (“Representing Programs”)
`“Proxim Delivering Industry’s Lowest Priced Commercial
`Frequency Hopping Wireless LAN PC Card,” Business Wire (Mar.
`29, 1999) (“Proxim”)
`U.S. Patent No. 6,446,137 to Vasudevan et al. (“Vasudevan”)
`U.S. Patent No. 5,805,804 to Laursen et al. (“Laursen”)
`U.S. Patent No. 6,052,735 to Ulrich et al. (“Ulrich”)
`U.S. Patent No. 5,790,551 to Chan (“Chan”)
`U.S. Patent Pub. 2001/0029178 to Criss et al. (“Criss”)
`U.S. Patent No. 6,311,058 to Wecker et al. (“Wecker”)
`U.S. Patent No. 5,625,673 to Grewe et al. (“Grewe”)
`U.S. Patent No. 6,434,403 to Ausems et al. (“Ausems”)
`U.S. Pub. No. 2004/0204041 to Fillebrown et al. (“Fillebrown”)
`U.S. Pat U.S. Patent No. 6,236,938 to Atkinson et al. ("Atkinson")
`
`i
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`Ex. 1026
`Ex. 1027
`Ex. 1028
`
`Ex. 1029
`Ex. 1030
`
`Ex. 1031
`
`Ex. 1032
`Ex. 1033
`Ex. 1034
`Ex. 1035
`Ex. 1036
`Ex. 1037
`Ex. 1038
`Ex. 1039
`
`Ex. 1040
`
`Ex. 1041
`
`Ex. 1042
`
`Ex. 1043
`
`Ex. 1044
`
`Ex. 1045
`
`Ex. 1046
`
`Ex. 1047
`
`Ex. 1048
`
`Ex. 1049
`
`
`
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`IPR2016-00622
`Patent No. 7,149,511
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`MICROSOFT COMPUTER DICTIONARY 5th Ed (2002)
`U.S. Patent No. 5,297,192 (“Gerszberg”)
`Rosetta's Local Patent Rule 2.2 Initial Infringement Contentions,
`dated January 20, 2016
`Declaration of Ingrid Hsieh-Yee
`Windows CE Developer’s Handbook by Terrence A. Goggin
`(“Goggin”)
`Essential Windows CE Application Programming to Robert Burdick
`(“Burdick”)
`Programming Microsoft Windows CE to Douglas Boling (“Boling”)
`U.S. Patent No. 5,978,805 to Carson (“Carson”)
`U.S. Patent No. 5,845,293 to Veghte et al. (“Veghte”)
`U.S. Patent No. 5,864,853 to Kimura et al. (“Kimura”)
`U.S. Patent No. 5,797,089 to Nguyen (“Nguyen”)
`U.S. Patent No. 6,512,919 to Ogasawara (“Pat. Ogasawara”)
`U.S. Patent No. 6,108,727 to Boals et al. (“Boals”)
`Exhibit D to the Declaration of Christopher Butler: “EarthmateTM
`Accessories” by DeLorme (Originally Part of Exhibit 1012)
`Exhibit A to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Exhibit B to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Exhibit C to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Exhibit D to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Exhibit E to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Exhibit F to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Exhibit G to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Exhibit H to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Exhibit I to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Exhibit J to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`
`ii
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`Ex. 1050
`
`Ex. 1051
`
`Ex. 1052
`
`Ex. 1053
`
`Ex. 1054
`
`Ex. 1055
`
`Ex. 1056
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`Ex. 1057
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`Ex. 1058
`Ex. 1059
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`Ex. 1060
`Ex. 1061
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`Ex. 1062
`Ex. 1063
`Ex. 1064
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`Ex. 1065
`Ex. 1066
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`IPR2016-00622
`Patent No. 7,149,511
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`Exhibit K to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Exhibit L to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Exhibit M to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Exhibit N to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Exhibit O to the Declaration of Ingrid Hsieh-Yee (Originally Part of
`Exhibit 1029)
`Certificate of Authenticity by Amy Klenke (Originally Part of
`Exhibit 1015)
`Declaration of David Lobato (Originally Part of Exhibits 1006 and
`1007)
`Declaration of Chris Butler (Originally Part of Exhibits 1012, 1013,
`and 1014)
`Declaration of Dr. Nathaniel Polish (Originally AP-1002)
`Patent Owner Rosetta’s Initial Infringement Contentions
`served in Co-Pending Litigation Dec. 14, 2015 (excerpts)
`(Originally AP-1007)
`U.S. 6,222,726 to Cha (Originally AP-1011)
`Graham, THE FACTS ON FILE, DICTIONARY OF
`TELECOMMUNICATIONS (1983) (excerpts) (Originally AP-
`1012)
`Declaration of Mr. David DesRosier
`Bio of Mr. David DesRosier
`Rebuttal Declaration of Dr. Erez Zadok In Support Of Petitioners’
`Reply to Patent Owner’s Response
`Microsoft Press Computer Dictionary, 3rd Ed. (1997)
`Declaration of Sharon Lee
`
`
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`IPR2016-00622
`Patent No. 7,149,511
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`TABLE OF CONTENTS
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`I. PO’S CONSTRUCTIONS READ IN LIMITATIONS .................................. 1
`A. “downstream data” / “source electronic file” ................................................... 2
`B. “network server” ............................................................................................... 6
`C. “personal” ....................................................................................................... 10
`D. “electronic file” ............................................................................................... 11
`II. GOGGIN RENDERS THE CHALLENGED CLAIMS OBVIOUS .......... 12
`A. PO Misunderstands §103 Requirements ........................................................ 12
`B. Goggin Discloses and/or Renders Obvious “Network Server” ...................... 16
`C. Goggin Discloses and/or Renders Obvious “Receiving Downstream Data” . 21
`III. KIMURA RENDERS OBVIOUS EACH CHALLENGED CLAIM ......... 22
`A. PO Mischaracterizes Kimura ......................................................................... 22
`B. Kimura Discloses and/or Renders Obvious “Receiving Downstream Data” 24
`C. Kimura Discloses and/or Renders Obvious a “Personal Network Server” .... 27
`D. Kimura Discloses and/or Renders Obvious “Electronic File” and “Source
`Electronic File” ............................................................................................... 29
`E. Kimura Does Not Teach Away ...................................................................... 31
`IV. SECONDARY CONSIDERATIONS DO NOT OVERCOME
`OBVIOUSNESS ............................................................................................ 31
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`Patent No. 7,149,511
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`Unable to rebut the Petitions’ (“GogginPet.,” Pap.4; “KimuraPet.,”
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`IPR2016-00616, Pap.1) showings that the challenged ’511 claims (“Claims”) are
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`obvious, Patent Owner’s (“PO”) Response (“POR,” Pap.28) improperly limits the
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`Claims by arguing the claimed “downstream data” must originate from an
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`unclaimed “source server,” and the claimed “network server” cannot be a computer
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`that connects to another in a direct point-to-point communications link. But even
`
`under PO’s constructions, Goggin (Ex1030) and Kimura (Ex1035) render the
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`Claims obvious.2 Further, PO provides no argument that the claims are non-
`
`obvious under Petitioners’ or the Board’s broader constructions, and thus waived
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`any such argument. Pap.13 at 3.
`
`I. PO’S CONSTRUCTIONS READ IN LIMITATIONS3,4
`In an IPR, unexpired patent claims are accorded their broadest reasonable
`
`construction (§42.100(b); GogginPet.12), at least in part because of the opportunity
`
`                                                            
`2 Emphasis added, and internal quotations/citations omitted, unless noted.
`
`3 PO’s improperly incorporated Preliminary Response arguments (Pap.8) (see
`
`POR25 n.6, 35 n.9), violating §42.6(a)(3), are “not entitled to consideration.”
`
`CBM2015-00091, Pap.38 p.6; IPR2013-00046, Pap.81 p.2 n.2; see also Pap.13 p.3
`
`(arguments not in POR waived).
`
`4 PO waived any arguments in the uncited paragraphs of Ex2017 and Ex2022.
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`1
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`Patent No. 7,149,511
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`to narrow the claims by amendment. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
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`2131, 2145 (2016). Under BRI, the Board “look[s] to the specification to see if it
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`provides a definition for claim terms, but otherwise appl[ies] a broad
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`interpretation….[because] applicants may amend claims to narrow their scope....”
`
`In re ICON Health & Fitness, 496 F.3d 1374, 1379 (Fed. Cir. 2007); see also
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`Vibrant Media, Inc. v. Gen. Elec. Co., IPR2013-00170, Pap.56 p.5 (June 26, 2014)
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`(inventor wishing to define term must provide definition “with reasonable clarity,
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`deliberateness, and precision”). While claims are read “in view of the
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`specification,” it is improper to “read limitations from the embodiments” into the
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`claims. Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014).
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`A. “downstream data” / “source electronic file”
`PO improperly reads in an “(upstream) source server” (i.e., a third node).
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`POR15-24, 35-36. This is an attempted claim amendment, not construction, and
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`the Board should reject it.
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`Nothing supports reading in “source server.” Instead, during prosecution,
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`applicants expressly defined “downstream data” without reference to a source
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`server/third node:
`
`The section does not state that the files on host 101 are provided by
`processing downstream data (i.e., data that is transmitted over a
`wireless communications channel) from wireless interface device
`100.
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`2
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`Ex1002, pp.356-57 (bolded italics orig.); Vitronics Corp. v. Conceptronic, Inc., 90
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`F.3d 1576, 1582 (Fed. Cir. 1996) (patentee may define term in file history);
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`Edward Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009) (“i.e.”
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`signals intent to define word to which it refers); Abbott Labs. v. Novopharm Ltd.,
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`323 F.3d 1324, 1327, 1330 (Fed. Cir. 2003) (language following “i.e.” “explicitly
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`define[s]” term).
`
`
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`Thus, if the Board construes “downstream data,” it should construe it as
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`“data that is transmitted over a wireless communications channel,” and reject PO’s
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`requirement of a three-node system with an unclaimed “source server.”
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`PO’s construction of “source electronic file” flows from its erroneous
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`“downstream data” construction (see POR36: “Because that data flows
`
`downstream, the ‘source’ is upstream…”), and is overly narrow for the same
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`reasons. Applicants could have claimed a third node (e.g., a “source server”) or
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`sought to amend, but did not.
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`Neither the Claims nor the specification require “downstream data” “flowing
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`in one direction” “from the source server…toward the display device,” or that a
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`“source electronic file” be “a file stored on an upstream source server,”5 as PO
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`                                                            
`5 Indeed, PO’s cited specification excerpt merely says an electronic file may be
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`stored in a “source computer”—not an “upstream source server.” POR35 (citing
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`3
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`Patent No. 7,149,511
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`argues (POR16, 35). Pap.12 (“GogginInst.”) pp.12-13; see also Ex1004¶¶50, 83-
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`88, 127-29, 165-83. Indeed, “source server” never even appears in the ’511. And
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`while PO relies on Figure 1’s description to assert three nodes are required
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`(POR16-18), Figure 1 is an “exemplary embodiment” and, thus, non-limiting.6
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`                                                                                                                                                                                                
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`Ex1001, 1:8-12).
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`6 PO incorrectly suggests its cases determined a narrower construction was
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`appropriate based solely on the specifications’ treatment of the terms (POR18-20).
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`There, the claim language suggested the terms had narrower meanings and the
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`specifications confirmed those interpretations. E.g., In re Man Mach. Interface
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`Techs. LLC, 822 F.3d 1282, 1286-87 (Fed. Cir. 2016) (construction overly broad in
`
`light of claims and specification); Microsoft v. Proxyconn, Inc., 789 F.3d 1292,
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`1299 (Fed. Cir. 2016) (“Beginning with the language of the claims….The
`
`specification confirms that the phrase…is limited.”); PPC Broadband, Inc. v.
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`Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 753 (Fed. Cir. 2016)
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`(construction overly broad given context of technology claimed); Pride Mobility
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`Prods. Corp. v. Permobil, Inc., 818 F.3d 1307, 1314-15 (Fed. Cir. 2016) (broader
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`construction contradicted express claim language, “reinforce[d]” by specification);
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`Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1346 (Fed. Cir. 2016) (affirmed narrower
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`construction in light of “express claim language”).
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`4
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`Ex1001, 3:46-48, 3:62-64; Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,
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`906 (Fed. Cir. 2004).
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`The prosecution history further confirms the Claims do not require three
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`nodes. Applicants provided “a demonstration of an implementation of the
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`invention” comprising a two-node system: “(1) a wireless server that stored files
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`received over a wireless communications channel and (2) a laptop computer, as
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`display device, coupled to the wireless server….” Ex1002, p.246. There was no
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`mention of a third node or “source server” from which “downstream data”
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`originated.
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`Moreover, applicants distinguished art by arguing it failed to teach WIPS
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`files “originat[ing]” from the “external display device,” confirming that
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`“downstream data” may originate from the display device and not from a separate
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`“source server”:
`
`The Examiner’s claim rejections are also premised on the
`misconception that the files on host 101, which wireless interface
`device 100 are able to access, also originate from wireless
`interface device….[¶] In rejecting claim 1, the Examiner alleged that
`this element was inherent in col. 6, lines 51-54 of Boals. However,
`that section simply refers to wireless interface device 100 being able
`to access “files residing at the host computer 101.” The section does
`not state that the files on host 101 are provided by processing
`downstream data (i.e., data that is transmitted over a wireless
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`5
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`Patent No. 7,149,511
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`communications channel) from wireless interface device 100….[¶]
`Thus, the data from wireless interface device 100 does not provide the
`electronic files stored in host 101.
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`Ex1002, p.356-57 (bolded italics original); see also id. p.354 (“[T]he Examiner
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`misapprehended…Boals…[by] assum[ing] that the files on host 101 accessed by
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`wireless interface device 100 are provided by downstream data from wireless
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`interface device 100.”).
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`B. “network server”7
`If construed, this term should be construed as “a computer that shares data
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`and/or files with at least one other connected computer,” consistent with its plain
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`and ordinary meaning. GogginPet.13; KimuraPet.10-12.
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`Although PO initially asserted a different construction (Pap.8 p.2; POR25),
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`PO now construes “network server” as “a computer in a network configured to
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`receive and share data resources with other devices in that network.” POR26.
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`While this construction seems similar to Petitioners’, PO adds a negative limitation
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`that excludes “two computers…connected in a direct point-to-point
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`communications link…in which no other devices are permitted to communicate on
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`the connection.” POR26.
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`First, PO conspicuously fails to address Petitioners’ contemporaneous IEEE
`                                                            
`7 Here, Petitioners do not dispute the Claim 1 and 58 preambles are limiting.
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`6
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`dictionary defining “computer network” as a “complex consisting of two or more
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`interconnected computers.” KimuraPet.11-12; Ex1058¶25; GogginPet.13 (each
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`citing Ex1008). Such evidence confirms the reasonableness of Petitioners’
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`construction, and contradicts PO’s negative limitation.
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`Second, PO admits the link between the “network server” (WIPS) and the
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`“external display device” “may be a direct point-to-point communications link”
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`(POR29), but argues the “network server” cannot be connected to an unclaimed
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`“remote” “upstream network” through a direct point-to-point communications link
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`(POR29-30). But the Claims do not specify the type of connection between the
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`WIPS and external display device, let alone between the WIPS and some
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`unclaimed “upstream network.”
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`Moreover, while (as PO acknowledges) “network” was added at Examiner’s
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`suggestion (POR31; Ex1002, p.247), this was unrelated to “clarifying” the claimed
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`WIPS is “connected to and exchanging information with an upstream network,
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`such as an enterprise IT network” in a non-direct, non-point-to-point connection, as
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`PO argues (POR31). Instead, “network” was added to clarify the display device’s
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`ability to access files on the WIPS just as it would on an external hard drive. In a
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`prior Response to an Office Action, to overcome a rejection based on prior art
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`Criss in view of Wecker, applicants distinguished Criss by arguing the file on Criss’
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`mobile terminal “is the mobile terminal’s operating software, not information
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`7
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`Patent No. 7,149,511
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`that would normally be stored on or accessed by a personal computer.”
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`POR32 (citing Ex1002, pp.205-06 (italics orig.)). Accordingly, applicants added
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`“selectively” “to make clear that the external display device can selectively access
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`the electronic file” Ex1002, p.206 (emph. orig.). In support of its amendment,
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`applicant cited specification portions describing the display device’s ability to
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`access files on the WIPS just as it would on, e.g., an external hard drive. See
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`Ex1002, p.206 (citing p.13, lns.13-17 (i.e., Ex1001, 6:25-28) (“Preferably, display
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`device 32 accesses the memory in WIPS 30 as it would an external device, such
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`as an external hard drive or a server on a local area network (LAN).”); p. 27,
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`lns.7-14 (i.e., Ex1001, 13:10-14)). After receiving another rejection, applicants
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`demonstrated “the invention” and “showed how the display device was able to
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`selectively access files stored on the wireless server.” Ex1002, pp.246-47.
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`Applicants again attempted to overcome Criss in view of Wecker. Id. Applicants
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`and Examiner then agreed to add “network” to the Claims “to more clearly define
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`the invention” and “overcome the prior art of record.” Id. p.247. And applicants
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`again cited the portions of the specification that describe the display device’s
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`ability to access files on the WIPS just as it would on, e.g., an external hard drive.
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`See Ex1002, p.247 (citing p.13, lns.13-17 (i.e., Ex1001, 6:25-28) and p.27, lns.7-14
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`(i.e., Ex1001, 13:10-14)). Indeed, after that amendment, applicants distinguished
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`Boals from the WIPS because Boals’ host 101 “act[ed] as a video display driver”
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`8
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`Patent No. 7,149,511
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`for the display device, rather than as, e.g., an external hard drive (Ex1002, pp.353,
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`355-56) —not because Boals’ host 101 (the potential WIPS) received data over a
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`direct point-to-point communications link, as PO argues (POR33).
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`Therefore, contrary to PO’s assertion that “[n]owhere in the specification is
`
`the term ‘network’ used to refer to a direct point-to-point communications link,
`
`like that established between a personal computer and a peripheral device over a
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`serial connection” (POR29), the very portions of the specification applicants relied
`
`on to add “network” actually describe accessing files on WIPS the same way as
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`accessing files on external devices, such as hard drives (i.e., via direct point-to-
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`point communications links). When a computer accesses external hard drive files,
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`“no other devices [i.e., computers] are permitted to communicate [with that hard
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`drive] on the connection” simultaneously (POR24), but that is exactly what PO
`
`excludes. Ex1064¶¶12-14. In other words, PO excludes connections and systems
`
`that PO used as support for adding “network” to the Claims. Id.
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`Further, none of PO’s supposedly “contemporaneous” dictionaries (from,
`
`e.g., 1993 (Ex2024) and 2007 (Ex2025)) preclude “computers connected in a direct
`
`point-to-point communications link” from being network servers. See
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`Ex2022¶¶58-63.8 Rather, each definition simply requires a “computer” or
`
`                                                            
`8 Contrary to PO (Ex2022¶¶60-61), Ex2025, p.4 distinguishes “server” and
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`9
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`“functional unit” that provides “service[s]” (Ex2024, p.4; Ex2025, p.4), which is
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`entirely consistent with Petitioners’ 2002 dictionary defining a “server” “[o]n the
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`Internet or other network” as “a computer or program that responds to commands
`
`from a client” (GogginPet.13; Ex1026, p.5) and Petitioners’ 2000 definition
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`confirming a “computer network” can consist of only two computers (Ex1008).
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`Because nothing in the record precludes the “network server” from being
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`connected to another computer in a direct point-to-point communications link (and
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`indeed, the specification prefers it), PO’s negative limitation should be rejected.
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`Omega Eng’g v. Raytek, 334 F.3d 1314, 1322-23 (Fed. Cir. 2003).
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`C. “personal”
`PO construes “personal” (POR34-35), but this is unnecessary: PO does not
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`contend the art fails to disclose this claim term under any proposed construction.
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`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`In any event, PO’s construction—“configured to provide access to a user’s
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`individual data”—is overly narrow. While PO argues this is consistent with the
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`specification (POR35 (citing Ex2022¶84)), its citations do not define “personal”;
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`instead, they make clear that the WIPS provides access to “data” generally, without
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`                                                                                                                                                                                                
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`“network server.” PO fails to address Ex2025’s “network server” description,
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`which is unrelated to the Claims.
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`10
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`restricting the type of data stored therein. See, e.g., Ex1001, 5:3-6, 5:47-48. PO
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`fails to address citations showing the data is not limited to “a user’s individual
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`data.” E.g., Ex1001, 6:44-50 (“data files may include…inventory availability and
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`current pricing.”), 7:35-40 (files may include “subscription data transmissions such
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`as stock closing prices,” “audio files,” and “calendars of others”).
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`D. “electronic file”
`“Electronic file” need not be construed and encompasses its plain and
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`ordinary meaning, i.e., a (digital) file in electronic format.9 PO’s construction—“a
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`copy of a source electronic file”—is not supported. “Electronic file” was (and is) a
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`well-known computing term (Ex1064¶¶18-20; see also Ex1004¶¶2, 5, 29, 33-38,
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`45-49, 50, 126-129) and nothing in the record limits it to a specific type of
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`electronic file, as PO proposes.
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`PO’s sole purported support for its construction is that “a wireless intelligent
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`personal server…maintain[s] a copy of at least one electronic file stored in a
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`source computer.” POR36 (citing Ex1001, 1:8-12). But this is neither an express
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`definition nor a disclaimer of all file types other than “copies of source electronic
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`files.” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016).
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`                                                            
`9 This is consistent with how Petitioners analyzed the term. GogginPet.24-34, 41-
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`44, 47-49; KimuraPet.25-38, 40-49, 53-55.
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`11
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`To the contrary, far from defining “electronic file,” this sentence merely states such
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`a file could be copied, and could be stored in a source computer.
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`II. GOGGIN RENDERS THE CHALLENGED CLAIMS OBVIOUS
`A. PO Misunderstands §103 Requirements
`PO argues Goggin does not render the Claims obvious because it does not
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`“disclose an actual application” or “device that carries out the functionality
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`claimed.” POR39-40. But, even for anticipation (let alone obviousness) there is
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`no requirement—indeed, PO cites none—that an actual application or device be
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`described or built for a reference to invalidate. E.g., Kennametal, Inc. v. Ingersoll
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`Cutting Tool Co., 780 F.3d 1376, 1383 (Fed. Cir. 2015) (“evidence” of “actual
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`performance…not required”); In re Antor Media Corp., 689 F.3d 1282, 1289-90
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`(Fed. Cir. 2012).
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`Further, contrary to POR39-41, an important aspect of CE devices was
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`allowing other machines access to data and files on those devices; Goggin
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`discloses that RAPI functions are the tools needed to achieve that benefit. E.g.,
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`GogginPet.17; Ex1030, p.328 (“RAPI … giv[es] the other machines in your
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`system access to the data and files on the CE device…the data on these devices
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`wouldn’t be worth very much if you couldn’t get that data circulated to other
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`machines….”); see also id. 308. A POSITA would have identified “Chapter 10:
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`RAPI: How the Outside World Talks to CE” in Goggin’s table of contents, which
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`identifies six categories of RAPI functions. Ex1030, p.18; Ex1064¶¶21, 22.
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`Among these categories is the four-page “File Access Functions” section—
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`identifying just nine APIs that “allow you to create directories, read and write files,
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`and find files matching a certain criteria.” Ex1030, pp.314-15; Ex1064¶¶21, 22;
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`POR39. And, a POSITA would have been motivated to implement these basic
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`functions to allow other machines to access the CE device’s data and files.
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`Ex1064¶¶21, 22; see also Ex1004¶¶29, 57-59, 87, 89, 113-129, 202; Blue Calypso,
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`LLC v. Groupon, Inc., 815 F.3d 1331, 1343-44 (Fed. Cir. 2016) (anticipation
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`where “skilled artisan would ‘at once envisage’ the combination of…the disclosed
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`tools…to arrive at the system claimed”); Kennametal, 780 F.3d at 1382-83 (even
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`for anticipation, express discussion of claimed combination not necessary if
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`disclosed components combinable and POSITA would be able to implement the
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`combination). And, as PO admits, this “specific set of RAPI functions” on which
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`Petitioners’ rely “allow[s] a developer to manage files on a CE device, including
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`opening files, writing to files, and reading from files.”10 POR39. PO’s argument
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`                                                            
`10 This case is unlike In re Bell, 991 F.2d 781, 784 (Fed. Cir. 1993) (POR41)
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`concerning unpredictable biotechnology results, where the prior art’s amino acid
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`sequence could be coded for by more than 1036 nucleotide sequences, only a few of
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`which were claimed.
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`13
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`that the Claims are not obvious because Goggin discloses 80+ RAPI functions
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`combinable in an “infinite number of combinations” (POR39-41) is belied by its
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`own admissions. 11,12 KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007)
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`(“When there…are a finite number of identified, predictable solutions, a [POSITA]
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`has good reason to pursue the known options within his or her technical grasp.”).
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`And, contrary to PO’s assertion that a POSITA would not have understood
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`how to assemble the file access functions, find the right tools for the desired
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`application, and code the tools appropriately (POR39-41), these functions are
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`presented in the form of “APIs”—the entire purpose of which is to make it easier
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`for developers to build programs by providing tools to implement the functionality.
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`Ex1064¶¶23-24; see also Ex1004¶¶86, 113-124. Using APIs (here, the file access
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`function APIs) to develop programs was well within the skill of a POSITA, and,
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`particularly given the technical field, the results would have been predictable and a
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`                                                            
`11 PO also incorrectly argues that Petitioners’ Goggin grounds rely on a single
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`reference. POR38. Only one ground relies on Goggin alone. GogginPet.7-8.
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`PO’s attempts to turn this into an anticipation case are misplaced.
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`12 Further, a POSITA would have been motivated to include code for all of the file
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`access functions in a single program to ensure the data on the CE device can be
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`circulated to other machines. Ex1064¶25; see also Ex1030, pp.314-317.
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`14
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`POSITA would have had a reasonable expectation of success.13 Ex1064¶¶24-25;
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`see also Ex1004¶¶23, 87, 143-49, 156-58; Ex1030, pp.21-22; Ex1032, pp.405-408.
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`Indeed, Goggin explains “RAPI programs can be written in any desktop
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`application development language” and the CE code for these file access functions
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`is “virtually indistinguishable from standard, Desktop-specific file access code.”
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`Ex1030, pp.24, 316; see also id. 308 (“One of the best things about RAPI is that,
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`because it’s a standard Win32 API and the code runs only on Desktop Windows,
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`you can use any development tool that will produce Win32 executables.”).14 In
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`contrast to the ’511, which—though presumed enabled—provides no detail on how
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`to develop an application implementing the claimed functionality, Goggin provides
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`examples of coding and implementing the RAPI functions. Ex1030, p.25.
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`Finally, Goggin is a single, bound book with interrelated teachings directed
`                                                            
`13 This is unlike PO’s cases (POR41-42) where, inter alia, teachings were
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`combined from six separate references (see ActiveVideo Networks, Inc. v. Verizon
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`Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012)) or distinct embodiments
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`(see In re Kotzab, 217 F.3d 1365, 1369-70 (Fed. Cir. 2000)).
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`14 Similarly, if PO is arguing a POSITA would not have understood how to
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`implement Proxim’s wireless functionality (POR40), PO has not explained why
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`Petitioners’ previous explanation is incorrect. GogginPet.17-19; Ex2022¶¶100-101.
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`15
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`to advantageous ways of using CE devices. GogginPet.22; Ex1004¶¶56-59, 85, 89.
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`A POSITA would have considered those teachings together (Ex1064¶26), and
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`Goggin’s teachings are all applicable to a CE device and how it connects and
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`communicates with other devices. Id.; e.g., Ex1030, p.12 (table of contents listing
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`“Chapter 10: RAPI: How the Outside World Talks to CE” and “Chapter 11: How
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`CE Talks to the Outside World”); see also Purdue Pharma L.P. v. Epic Pharma,
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`LLC, 811 F.3d 1345, 1358-59 (Fed. Cir. 2016) (reference anticipatory where
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`disclosure in different section “directly related” to primary disclosure).
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`B. Goggin Discloses and/or Renders Obvious “Network Server”
`PO’s argument that Goggin does not disclose a “network server” rests
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`entirely on its incorrect negative construction.15 POR42-49. Even if PO’s
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`construction were co