Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 12
`Entered: August 22, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`
`Case IPR2016-00622
`Patent 7,149,511 B1
`
`Before JUSTIN T. ARBES, PATRICK R. SCANLON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`and Apple Inc. (collectively “Petitioner”) filed a Petition (Paper 4, “Pet.”)
`requesting an inter partes review of claims 1–10, 19–22, 58–65, and 68–71
`of U.S. Patent No. 7,149,511 B1 (Ex. 1001, “the ’511 patent”) pursuant to
`
`
`Tel: 571-272-7822
`
`Paper 12
`Entered: August 22, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`
`Case IPR2016-00622
`Patent 7,149,511 B1
`
`Before JUSTIN T. ARBES, PATRICK R. SCANLON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`and Apple Inc. (collectively “Petitioner”) filed a Petition (Paper 4, “Pet.”)
`requesting an inter partes review of claims 1–10, 19–22, 58–65, and 68–71
`of U.S. Patent No. 7,149,511 B1 (Ex. 1001, “the ’511 patent”) pursuant to
`
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`IPR2016-00622
`Patent 7,149,511 B1
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`35 U.S.C. §§ 311–19. Patent Owner, Rosetta-Wireless Corporation
`(“Rosetta”), filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), the Director may not authorize an inter
`partes review unless the information in the petition and preliminary response
`“shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” For the
`reasons that follow, we institute an inter partes review as to claims 1–10,
`19–22, 58–65, and 68–71 of the ’511 patent on the asserted grounds of
`unpatentability presented.
`
`
`
`I. BACKGROUND
`
`Related Proceedings
`A.
`Both parties identify the following proceedings related to the ’511
`
`patent (Pet. 6–7; Paper 7, 2):
`Rosetta-Wireless Corp. v. Apple Inc., No. 1:15-cv-00799 (N.D. Ill.,
`filed Jan. 27, 2015);
`Rosetta-Wireless Corp. v. High Tech Computer Corp., No. 1:15-cv-
`10603 (N.D. Ill., filed Nov. 24, 2015);
`Rosetta-Wireless Corp. v. Samsung Elecs. Co., Ltd., No. 1:15-cv-
`10605 (N.D. Ill., filed Nov. 24, 2015);
`Rosetta-Wireless Corp. v. LG Electronics Co., No. 1:15-cv-10608
`(N.D. Ill., filed Nov. 24, 2015); and
`Rosetta-Wireless Corp. v. Motorola Mobility LLC, No. 1:15-cv-10611
`(N.D. Ill., filed Nov. 24, 2015).
`Petitioner has filed another petition for inter partes review of the ’511
`patent in co-pending Case IPR2016-00616.
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`B.
`
`The ’511 patent
`The ’511 patent is directed to “a wireless intelligent personal server
`that receives data transmitted over a wireless communications channel and
`automatically processes it so as to maintain a copy of at least one electronic
`file stored in a source computer.” Ex. 1001, 1:8–12. Figure 1 of the ’511
`patent is reproduced below.
`
`
`Figure 1 depicts wireless communication system 10 having enterprise
`information technology (IT) system 12 connected to one or more personal
`computers 14 and centralized enterprise database 16. Id. at 3:62–4:6.
`Enterprise IT system 12 uses wireless network management system 29 to
`communicate with first wireless network 20 and second wireless network 22
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`via intermediate network 28, which may be a wide-area network (WAN) or a
`local-area network (LAN). Id. at 4:34–41.
`Wireless intelligent personal server (WIPS) 30 receives and stores
`data wirelessly transmitted over downstream channel 34 by first wireless
`network 20. Id. at 4:44–46, 5:35–36. WIPS 30 can use the received data to
`either update one or more of the files stored in its memory or to add a new
`file to its memory. Id. at 5:41–44. WIPS 30 also may transmit signals to
`second wireless network 22 over upstream channel 26. Id. at 6:16–21.
`Moreover, WIPS 30 is able to transfer data stored in its memory to and from
`different types of display devices 32 on an intermittent basis. Id. at 4:48–50.
`Display device 32, which may be a desktop PC or a personal digital
`assistant (PDA), interfaces with WIPS 30 to display data stored in WIPS 30.
`Id. at 4:55–67. This is accomplished by WIPS 30 copying requested data
`and transmitting it to display device 32. Id. at 9:64–10:8. Applications
`running on display device 32 also may allow a user to modify data stored in
`WIPS 30. Id. at 4:55–67; 8:39–41; 10:9–16.
`The patent application that issued as the ’511 patent was filed on
`August 31, 2000. Id. at 1.
`
`
`C.
`
`Claim 1
`Claims 1 and 58 of the ’511 patent are independent and have been
`amended by Ex Parte Reexamination Certificate US 7,149,511 C1, dated
`Jan. 10, 2012. Ex. 1001, 16–17 (certificate issued from Reexamination
`
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`server,
`
`Control No. 90/011,569).1 The remaining claims have not been amended.
`Claims 2–10 and 19–22 directly or indirectly depend from claim 1, and
`claims 59–65 and 68–71 directly or indirectly depend from claim 58. Claim
`1 is illustrative of the challenged claims and recites:
`1.
`A wireless
`intelligent personal network
`comprising:
`a radio frequency (RF) receiver for receiving downstream
`data transmitted over a first wireless communications channel;
`a memory;
`a central processing unit (CPU);
`a set of embedded machine language instructions within
`said personal network server, said set of embedded machine
`language instructions being executable by said CPU for
`processing said downstream data to provide at least one
`electronic file in said memory; and
`a first interface for allowing an application on an external
`display device to pick and open said at least one electronic file
`while said at least one electronic file remains resident on said
`personal network server, wherein said personal network server is
`hand-portable.
`Ex. 1001, 17 (1:21–2:9). Claim 58 only differs from claim 1 insofar as the
`word “receiver” in “radio frequency (RF) receiver” is replaced with
`“transceiver.” Id. at 17 (2:12).
`
`The Prior Art
`Petitioner relies on the following prior art:
`
`D.
`
`
`1 The ’511 patent also was the subject of a request for ex parte
`reexamination in Reexamination Control No. 90/011,418, which was
`terminated.
`
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`Terence A. Goggin, WINDOWS CE DEVELOPER’S
`HANDBOOK (1999) (Ex. 1030, “Goggin”);
`“Proxim Delivering Industry’s Lowest Priced Commercial
`Frequency Hopping Wireless LAN PC Card,” Business Wire
`(Mar. 29, 1999) (Ex. 1015, 3–4, “Proxim”);2
`Bodnar, U.S. Patent No. 6,012,063, filed Mar. 4, 1998,
`issued Jan. 4, 2000 (Ex. 1005, “Bodnar”);
`HEWLETT-PACKARD HP JORNADA 820/820E HANDHELD
`PC USER’S GUIDE (1998) (Ex. 1006, Ex. A, “Jornada”);
`to
`“Earthmate™ GPS Receiver: The Smart Way
`Navigate,” http://www.delorme.com/earthmate/ (as allegedly
`archived by the Internet Archive on Feb. 2, 1999) (Ex. 1012, Ex.
`A, “DeLorme Receiver”), and “Earthmate™ Accessories,”
`http://delorme.com/earthmate/accessories.htm
`(as
`allegedly
`archived by the Internet Archive on May 4, 1999) (Ex. 1012, Ex.
`D, “DeLorme Accessories”) (collectively, “DeLorme”);
`Todd Ogasawara, “HP Jornada External Keyboard (Part
`HP F1275A)
`Impressions,” http://to-tech.com/windowsce/
`jornada/keyboard/index.html (as allegedly archived by the
`Internet Archive on May 8, 1999) (Ex. 1013, Ex. B,
`“Ogasawara”); and
`HEWLETT-PACKARD HP CAPSHARE 920 PORTABLE E-
`COPIER (1999) (Ex. 1007, Ex. B, “CapShare”).
`
`
`
`2 For the Proxim, Jornada, DeLorme, Ogasawara, and CapShare references,
`Petitioner filed the references together with other materials (e.g.,
`declarations, certificates) as combined exhibits. All exhibits in an inter
`partes review, however, must be filed and numbered separately. See
`37 C.F.R. § 42.63. To ensure a clear record, Petitioner shall re-file the prior
`art references separately from the accompanying materials, as explained in
`the Order below.
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`E.
`
`The Asserted Grounds
`Petitioner challenges claims 1–10, 19–22, 58–65, and 68–71 of the
`’511 patent on the following grounds (Pet. 7–8):
`References
`Basis
`
`Claims Challenged
`
`Goggin
`
`35 U.S.C. § 103(a) 1–10, 19, 58–65, 68
`
`Goggin, Proxim
`
`35 U.S.C. § 103(a) 1–10, 19, 58–65, 68
`
`Goggin, Bodnar
`
`35 U.S.C. § 103(a) 2 and 59
`
`Goggin, Proxim,
`Bodnar
`Goggin, Jornada
`
`Goggin, Proxim,
`Jornada
`Goggin, DeLorme
`
`Goggin, Proxim,
`DeLorme
`Goggin, Ogasawara
`
`Goggin, Proxim,
`Ogasawara
`Goggin, Capshare
`
`Goggin, Proxim,
`Capshare
`
`35 U.S.C. § 103(a) 2 and 59
`
`35 U.S.C. § 103(a) 8 and 9
`
`35 U.S.C. § 103(a) 8 and 9
`
`35 U.S.C. § 103(a) 20 and 69
`
`35 U.S.C. § 103(a) 20 and 69
`
`35 U.S.C. § 103(a) 21 and 70
`
`35 U.S.C. § 103(a) 21 and 70
`
`35 U.S.C. § 103(a) 22 and 71
`
`35 U.S.C. § 103(a) 22 and 71
`
`
`F.
`
`Claim Interpretation
`In an inter partes review, we construe claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`Under the broadest reasonable interpretation standard, and absent any
`
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`special definitions, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech. Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or
`phrases must be set forth “with reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`For purposes of this Decision, and based on the current record, we
`construe the challenged claims as follows.
`
`1. Whether the Preambles of Independent Claims 1 and 58 are
`Limiting
`The preambles of independent claims 1 and 58 both recite “[a]
`wireless intelligent personal network server.” Ex. 1001, 17 (1:21, 2:10).
`The parties’ arguments compel us to consider whether the preambles limit
`the invention.
`“In general, a preamble limits the invention if it recites essential
`structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
`the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
`801, 808 (Fed. Cir. 2002) (citations omitted). “Conversely, a preamble is
`not limiting ‘where a patentee defines a structurally complete invention in
`the claim body and uses the preamble only to state a purpose or intended use
`for the invention.’” Id. (citations omitted).
`Rosetta argues that “each challenged claim references the ‘personal
`network server’ of the preamble within the [body of the] claim, and therefore
`relies on the preamble language for antecedent basis.” Prelim. Resp. 24.
`Petitioner does not take a position on whether this language is limiting, and
`it offers a construction of “network server” only “to the extent [Rosetta]
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`argues the preamble is limiting.” Pet. 13. We agree with Rosetta that the
`preambles are limiting based on the use of “personal network server” in the
`bodies of claims 1 and 58. See Eaton Corp. v. Rockwell Int’l Corp., 323
`F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the body of the
`claim rely upon and derive antecedent basis from the preamble, then the
`preamble may act as a necessary component of the claimed invention.”).
`
`“Intelligent” and “Personal Network Server”
`2.
`Having determined that the preamble is limiting, we now consider
`whether the words of the preamble require further interpretation. Petitioner
`proposes that we construe “network server” as “a computer that shares data
`and/or files with at least one other connected computer.” Pet. 13. Petitioner
`contends “such an interpretation of ‘network server’ would encompass the
`broad range of network functionality that the ’511 [patent] discloses belongs
`to its WIPS.” Id. (citing, inter alia, Ex. 1001, 3:62–4:54). As supported by
`the testimony of William H. Mangione-Smith, Ph.D., Rosetta proposes that
`we construe “personal network server” to mean “a device configured to be
`interposed between a source server and an external display device that
`provides source server data locally to a user.” Prelim. Resp. 20 (citing Ex.
`2001 ¶ 34). Rosetta contends this construction reflects “the nature of the
`personal network server: (1) it is designed as an intermediary server between
`a source server and an external display device; (2) it provides source server
`data; and (3) it operates locally to a user.” Id. at 20–24.
`After considering the usage of “network” and “server” in the
`Specification of the ’511 patent, see, e.g., Ex. 1001, 1:17–22, we do not find
`Petitioner’s proposed construction to be particularly illuminating beyond the
`
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`words “network server” themselves, so we decline to adopt Petitioner’s
`construction. Rosetta’s construction also includes language on basic
`network server function that we do not adopt for similar reasons. See
`Prelim. Resp. 20 (“a device . . . that provides source server data . . . to a
`user”). Aside from this language, Rosetta’s construction of “personal
`network server” includes the concepts that the server must be an
`intermediary between two different devices (a source server and an external
`display device) and that it must operate locally to a user. See id. at 21–23.
`Yet, to the extent such concepts may be disclosed in the ’511 patent, we are
`not persuaded they necessarily arise from the words “personal network
`server.” In particular, Rosetta has not persuaded us that “wireless intelligent
`personal server,”3 as used in the Specification of the ’511 patent, requires the
`server to be in an intermediate disposition. Nor has Rosetta persuasively
`shown the Specification requires “personal” to mean “local to a user.” For
`these reasons, we determine that these terms do not require explicit
`construction at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy.”).
`Rosetta also contends we should construe “intelligent” as “configured
`to selectively provide data from the source server without a request from the
`user.” Prelim. Resp. 25. Petitioner does not propose a construction for this
`word. We are not persuaded that “intelligent” means something more than
`
`
`3 The phrase “wireless intelligent personal network server” appears only in
`the claims, whereas the written description of the ’511 patent uses the phrase
`“wireless intelligent personal server.”
`
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`what is recited in the body of claim 1 (e.g., being capable of receiving
`downstream data and processing the data to provide at least one electronic
`file in memory). This is confirmed by the Specification of the ’511 patent,
`which does not give “intelligent” any separate, discernable meaning other
`than as a descriptor for the particular “personal server” disclosed therein.
`
`3.
`
`“Downstream Data” and Whether Independent Claims 1 and
`58 Require a Three-Node System
`For claims 1 and 58, Rosetta’s arguments require us to consider
`whether the language of the claims requires that the source of the recited
`“downstream data transmitted over a first wireless communications channel”
`that is received by the personal network server must be different from the
`“external display device” that interfaces with the first network server. See
`Prelim. Resp. 41–43; see infra § II.A.4.b. If it must be different, claims 1
`and 58 would require a “three-node system.” See Prelim. Resp. 41–43.
`Rosetta contends claims 1 and 58 require a three-node system based in
`part on its construction of “personal network server” as being “a device
`configured to be interposed between a source server and an external display
`device that provides source server data locally to a user.” Id. at 20–24, 42.
`Rosetta contends that collapsing a “source server” and the external display
`device into the same node—thus resulting in a two-node system—would
`“obviate the purpose of having a WIPS, which is to allow access to data on
`the source server when operating remotely from the source server.” Id. at
`43; see also id. at 48 (“[S]uch an arrangement would not allow the external
`display device to ever be remote from the source server, if they are the same
`device.”). According to Rosetta, “[t]here is no need for routing data through
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`an intermediate ‘personal network server’ when using the desktop as both
`the source server and the external display device.” Id. at 48.
`As further support for its contention that claims 1 and 58 require a
`three-node system, Rosetta cites the testimony of Dr. Mangione-Smith and
`proposes a construction of “downstream data” as being “data transmitted
`from a source server to the personal network server.” Id. at 18–20 (citing
`Ex. 2001 ¶¶ 26–32). Rosetta advances an annotated version of Figure 1 of
`the ’511 patent depicting display device 32 as being “Downstream” from
`enterprise IT system 12 and WIPS 30. See id. at 19. Rosetta contends the
`external display device must be separate from (and downstream from) the
`source of the downstream data. See id. at 47–48. Rosetta also cites the
`recitation in claim 2 that the downstream data reflects changes in a “source”
`electronic file, equating such a file with a file from a “source server” in a
`three-node system. Id. at 19.
`We have considered all of the parties’ arguments and evidence, but
`are not persuaded, based on the current record, by Rosetta’s arguments that
`the claims require a three-node arrangement. At the outset, we decline to
`adopt Rosetta’s proposed construction of “downstream data,” because we
`are not persuaded that the Specification of the ’511 patent sets forth a clear,
`deliberate, and precise definition of the term that inexorably ties it to a
`network topology including a source server and a personal network server.
`Rather, we determine “downstream data” simply reflects data moving
`downstream from one place to another, so the term needs no further
`elucidation at this time.
`In addition, claims 1 and 58 are directed to a single node: the personal
`network server. Additional nodes are intuited with reference to the radio
`
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`frequency (RF) receiver/transceiver, which receives downstream data from
`an unspecified source, and the “first interface” for interfacing with an
`“external display device.” Claims 1 and 58 do not contain any explicit
`limitations regarding the source of the downstream data, which Rosetta calls
`a “source server” in its proposed constructions. See Prelim. Resp. 18–22,
`24–27. Similarly, the “external display device” only is limited by its
`function: an application on the external display device can “pick and open”
`an electronic file on the portable network server. Importantly, the only
`“downstream” relationship between nodes specified in the claims is between
`the unspecified source of the downstream data and the receiver/transceiver
`(i.e., the latter must receive downstream data from the former). Unlike that
`recitation, and contrary to Rosetta’s suggestions, see Prelim. Resp. 19, 47–
`48, claims 1 and 58 do not recite explicitly that the external display device is
`in a “downstream” relationship with the personal network server. Nor is
`there any express recitation requiring the external display device to be
`“remote from the source server.” See id. at 48. We have reviewed the
`Specification as well, and do not find at this time any language that would
`limit the claims in the manner proposed by Rosetta. See, e.g., Ex. 1001,
`3:46–48, 3:62–7:40 (describing the arrangement of Figure 1 as “an
`exemplary embodiment of the present invention”).
`Thus, in the absence of any limitation on a specific topology among
`the various elements interacting with the personal network server, we do not
`agree with Rosetta on this record that claims 1 and 58 require the source of
`the downstream data and the “external display device” to be different
`entities. We therefore are not persuaded, based on the current record, that
`claims 1 and 58 require a three-node system. As such, a reference
`
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`describing a personal network server in accordance with claims 1 and 58
`could render those claims obvious even if the reference describes a two-node
`system. The parties, however, are encouraged to address the meaning of the
`claims during trial, and our ultimate interpretation of the claims will be
`based on the complete record at the end of trial.
`
`
`II. ANALYSIS
`We now consider Petitioner’s asserted grounds and Rosetta’s
`arguments in its Preliminary Response to determine whether Petitioner has
`met the “reasonable likelihood” threshold standard for institution under 35
`U.S.C. § 314(a). Petitioner’s unpatentability contentions are supported by
`the testimony of Erez Zadok, Ph.D. See Ex. 1004. Rosetta’s Preliminary
`Response is supported by the testimony of Dr. Mangione-Smith. See Ex.
`2001.
`
`A.
`
`
`Obviousness Ground Based on Goggin
`Petitioner contends claims 1–10, 19, 58–65, and 68 would have been
`obvious over Goggin. Pet. 17–39. Rosetta disputes Petitioner’s contention.
`Prelim. Resp. 40–53.
`
`Goggin
`1.
`Goggin is a book for software developers regarding Windows CE,
`which is a “stripped-down version” of the Windows 98/NT operating
`systems “engineered specifically for small, low-resource, portable devices.”
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`Ex. 1030, 21–22, 30–31.4 Window CE devices include handheld personal
`computers (HPC) with a memory, a processor, a display, and wireless
`networking capability. Id. at 32, 34–35, 51–55, 62–63, 177.
`Goggin describes Remote Application Programming Interface
`(RAPI), which is “a special set of functions that allows developers . . . to
`access any files, databases, or system information on a [Windows] CE
`device” for importing to desktop software, among other things. Id. at 308.
`RAPI includes file access functions that allow other machines in a system
`“to create directories, read and write files, and find files matching a certain
`criteria” on a Windows CE device. Id. at 314–15, 328. Examples of these
`file access functions include “CeWriteFile()” for writing data to an open file
`and “CeReadFile()” for reading data from an open file. Id. at 528–29, 545.
`RAPI also includes miscellaneous shell and system functions “to retrieve
`information about the various applications running on the CE device, work
`with CE shortcuts, and start CE applications remotely.” Id. at 318–19.
`
`Prior Art Status of Goggin
`2.
`Petitioner contends Goggin “is prior art under at least pre-AIA
`§ 102(b).”5 Pet. 15. Supported by a declaration from Dr. Ingrid Hsieh-Yee,
`Petitioner contends Goggin “was published in April 1999, copyrighted in
`1999, and stamped in 1999 by the Library of Congress” and that “[i]t would
`
`
`4 We refer to the 5-digit page numbers applied by Petitioner to Goggin.
`5 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’511
`patent has an effective filing date before the effective date of the applicable
`AIA amendment, throughout this Decision we refer to the pre-AIA versions
`of 35 U.S.C. §§ 102 and 103.
`
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`have been available in libraries starting in 1999.” Id. at 15 n.6 (citing Ex.
`1029 ¶¶ 9–20; Ex. 1030, 5–6).6
`Rosetta contends Petitioner has failed to establish that Goggin is a
`§ 102(b) reference, because Petitioner’s declaration “shows only that Goggin
`was publicly available by September 17, 1999, which is after the August 31,
`1999 critical date.” Prelim. Resp. 5, 28–32.
`We agree with Rosetta that Petitioner has not established publication
`of Goggin by the one-year critical date, August 31, 1999, so Goggin is not
`available as prior art under 35 U.S.C. § 102(b). Petitioner nonetheless
`proffers a threshold amount of evidence, via the declaration of Dr. Hsieh-
`Yee,7 that shows Goggin was available as a printed publication before the
`filing date of the application that issued as the ’511 patent, which was
`August 31, 2000. See Ex. 1030, 5 (Library of Congress date stamp of
`December 1, 1999); Ex. 1029 ¶ 12, pp. 39–41 (testimony and evidence that
`Goggin was added to the collection at the Library of Congress on March 22,
`2000); ¶¶ 17–19, pp. 46–71 (testimony and evidence that Goggin was
`available in the George Mason University Library by September 17, 1999).
`This evidence is cited at page 15 of the Petition, and Rosetta acknowledges
`that “Petitioner[’s] declaration shows only that Goggin was publicly
`available by September 17, 1999.” See Prelim. Resp. 5. In the absence of
`
`
`6 Dr. Zadok testifies that Goggin was “published in April 1999, and that it is
`at least a § 102(a) reference.” Ex. 1004 ¶ 56.
`7 Petitioner filed multiple different papers together with Dr. Hsieh-Yee’s
`declaration as a single exhibit. Again, exhibits must be filed separately from
`other papers, such as declarations, so that they may be referenced
`individually by number. See 37 C.F.R. § 42.63. To ensure a clear record,
`Petitioner shall re-file the materials, as explained in the Order below.
`
`16
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`record evidence showing an earlier invention date than August 31, 2000,8 we
`determine based on the current record that Goggin is available as prior art
`under 35 U.S.C. § 102(a). We decline to deny the Petition on the basis that
`Goggin is unavailable as prior art under § 102(b) when the Petition and
`record before us indicate a threshold showing that it is available as prior art
`under § 102(a). See 37 C.F.R. 42.108(c) (“Inter partes review shall not be
`instituted for a ground of unpatentability unless the Board decides that the
`petition supporting the ground would demonstrate that there is a reasonable
`likelihood that at least one of the claims challenged in the petition is
`unpatentable.” (second emphasis added)).
`
`3.
`
`Purported Similarity of Goggin to References Already
`Considered by the Office During Reexamination
`Rosetta contends that Goggin provides no new disclosure beyond
`what the Office has already considered. Prelim. Resp. 5. Specifically,
`Rosetta contends that certain “Nokia Communicator” references considered
`during the previous ex parte reexamination of the ’511 patent do not “differ
`in any relevant way” from Goggin. Id. at 5–6, 32–33. Among the alleged
`similarities are Rosetta’s contention that the Nokia Communicator
`references pertain to a two-node system. Id. at 10. Rosetta also contends
`“the Goggin disclosures are even less enabling than the Communicator
`disclosures,” because the Nokia Communicator references include
`descriptions of developed applications, whereas Goggin only includes
`descriptions of an Application Programming Interface (API). Id. at 38–39.
`
`
`8 To the extent such evidence exists, Rosetta is free to proffer it during trial
`with the aim of antedating Goggin.
`
`17
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`IPR2016-00622
`Patent 7,149,511 B1
`
`For these reasons, Rosetta contends the Petition should be denied under
`35 U.S.C. § 325(d) as being “the same or substantially the same prior art or
`arguments [that] previously were presented to the Office.” Id. at 33.
`We have reviewed Rosetta’s arguments regarding the purported
`similarities between the Nokia Communicator references and Goggin. We
`are not persuaded that the similarities are so great as to warrant denying the
`instant Petition as being based on substantially the same prior art.
`Furthermore, Goggin, and the specific combinations of Goggin and other
`prior art proposed by Petitioner, were not considered during prosecution of
`the ’511 patent or reexamination. Finally, we observe that 35 U.S.C.
`§ 325(d) includes permissive language indicating that we may consider a
`petition that presents the same prior art or arguments previously presented to
`the Office. See 35 U.S.C. § 325(d) (“In determining whether to institute or
`order a proceeding under . . . chapter 31 [Inter Partes Review], the Director
`may take into account whether, and reject the petition or request because, the
`same or substantially the same prior art or arguments previously were
`presented to the Office.” (emphasis added)). On this record, we decline to
`deny the instant Petition under § 325(d).
`
`Claims 1 and 58
`4.
`Claim 1 is unpatentable “if the differences between the subject matter
`[claimed] and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.” 35 U.S.C.
`§ 103(a). In its obviousness analysis for claim 1, Petitioner relies on the
`disclosure of Goggin and argues that an ordinarily skilled artisan would have
`
`18
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`IPR2016-00622
`Patent 7,149,511 B1
`
`understood Goggin to render obvious the devices recited in claims 1 and 58.
`Pet. 19–32. Petitioner cites Goggin’s teachings on portable devices running
`Windows CE as teaching the recited “wireless intelligent personal network
`server” of claim 1. Id. at 20 (citing Ex. 1030, 30–31, 63, 308, 328), 22. For
`the recited “radio frequency (RF) receiver,” Petitioner cites Goggin’s
`teachings on wireless Local Area Network (LAN) cards and Ethernet cards
`in Windows CE devices. Id. (citing Ex. 1030, 63, 177, 389–90, 392).
`Petitioner contends Goggin teaches “receiving downstream data” via its
`disclosure of a desktop computer executing the function “CeWriteFile()” and
`wirelessly transmitting “data pointed to by [the] ‘szBuf’ parameter in
`‘CeWriteFile()’” to a Windows CE device, where it is received by an RF
`receiver/transmitter. Id. at 20–23 (citing, inter alia, Ex. 1004 ¶ 85; Ex.
`1030, 314–15, 545–46). Petitioner contends Goggin’s descriptions of
`software/firmware functions on Windows CE devices that are invoked by
`RAPI functions, such as “CeCreateFile(),” “CeWriteFile(),” and
`“CeReadFile(),” teach the “set of embedded machine instructions.” Id. at
`24–26 (citing Ex. 1030, 309, 314–16, 333, 505–06, 545).
`Petitioner maps Goggin’s desktop PC that issues RAPI commands to
`the recited “external display device.” Id. at 27, 29–30 (citing, inter alia, Ex.
`1030, 328). Petitioner also contends Goggin’s description of RAPI
`functions teaches the recited “first interface” on Windows CE devices,
`because RAPI function calls from the desktop computer result in sending the
`requested information, and the Windows CE device is able to respond with
`the requested information. Id. at 29 (citing Ex. 1004 ¶¶ 137, 154).
`Petitioner further maps Goggin’s teachings on RAPI functions for
`manipulating files to the “pick and open” language of claim 1. Id. at 26–28,
`
`19
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`IPR2016-00622
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`30–32 (citing, inter alia, Ex. 1030, 314–16, 505–06, 528–29). According to
`Petitioner, the files created, read from, and/or written to remain resident on
`the Windows CE device based on Goggin’s teachings of an “active handle”
`for files in the Windows CE device’s memory. Id. at 26–27 (citing Ex.
`1030, 107–08, 505–06), 31 (citing Ex. 1004 ¶¶ 143–50, 158).
`Considering Petitioner’s analysis and submitted evidence, and the
`arguments presented in Rosetta’s Preliminary Response, we are satisfied
`there is a reasonable likelihood that Petitioner would prevail in showing
`claim 1 would have been obvious over Goggin. We add the following for
`additional explanation.
`
`
`Petitioner’s Obviousness Rationale
`a.
`A patent claim “can be obvious in light of a single reference if it
`would have been obvious to modify that reference in a way that results in the
`patented invention.” Kroy IP Holdings, LLC v. Safeway, Inc., 107 F. Supp.
`3d 656, 672 (E.D. Tex. 2015) (Bryson, J., sitting by designation), aff’d, 639
`F. App’x 637 (Fed. Cir. 2016). Nevertheless, “there must be a showing of a
`suggestion or motivation to modify the teachings of that reference to the
`claimed invention in order to support the obviousness conclusion.” SIBIA
`Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir.
`2000). In this case, we must determine if Petitioner has presented a rational
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