`
` Paper ____
`
`Filed on behalf of: LG Electronics, Inc. and
`
`
`
` LG Electronics U.S.A., Inc.
`
`
`
`
` Date filed: March 6, 2017
`
`By: Brian A. Tollefson, Lead Counsel
`Steven Lieberman, Backup Counsel (pro hac vice pending)
`Mark T. Rawls, Backup Counsel (pro hac vice pending)
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: btollefson@rfem.com
`
` slieberman@rfem.com
` mrawls@rfem.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LG ELECTRONICS U.S.A., INC. and LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2016-01516
`Patent 7,149,511 B1
`_______________
`
`
`
`LG’S REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................... iii 
`
`Case IPR2016-01516
`Patent 7,149,511 B1
`
`I. 
`
`II. 
`
`Introduction ...................................................................................................... 1 
`
`Legal Standard ................................................................................................. 2 
`
`III.  The Board misapprehended and overlooked eight grounds for
`obviousness in LG’s Petition that establish invalidity of the challenged
`claims without relying on the Callaghan Book or Microsoft SMB. ................ 2 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`G. 
`
`H. 
`
`The Petition establishes obviousness in view of Saldanha alone. ........ 5 
`
`The Petition establishes obviousness in view of Saldanha and
`Ditzik. .................................................................................................... 6 
`
`The Petition establishes obviousness in view of Saldanha and the
`Callaghan Patent. ................................................................................... 8 
`
`The Petition establishes obviousness in view of Saldanha, Ditzik
`and Callaghan Patent. ............................................................................ 8 
`
`The Petition establishes obviousness in view of Kato alone. ............... 9 
`
`The Petition establishes obviousness in view of Kato and Ditzik. ..... 10 
`
`The Petition establishes obviousness in view of Kato and Masden. ... 11 
`
`The Petition establishes obviousness in view of Kato, Ditzik and
`Masden. ............................................................................................... 12 
`
`IV.  The Board also misapprehended or overlooked that the Callaghan Book
`and Microsoft SMB were cumulative to Callaghan Patent and Masden
`and were used to indicate the knowledge of the skilled person in the art. .... 12 
`
`V. 
`
`The Board Raised This Issue On Its Own, Despite Neither Side Putting
`The Prior Art Status Of Any Of The References In Dispute. ........................ 15 
`
`ii
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`

`Case IPR2016-01516
`Patent 7,149,511 B1
`
`TABLE OF AUTHORITIES
`
`
`
`Cases 
`
`Actifio, Inc. v. Delphix Corp.,
`IPR2015-00052, Paper 58 (March 31, 2016) ....................................................... 15
`
`Arnold P’ship v. Dudas,
`362 F.3d 1338 (Fed. Cir. 2004) ............................................................................... 2
`
`Ex Parte Williams,
`BPAI 2009-005995, 2010 WL 3454271 (Aug. 31, 2010) .................................... 13
`
`PPG Indus. Inc. v. Celanese Polymer Specialties Co. (Fed. Cir. 1988) .................... 2
`
`Samsung Elecs. Co. v. Papst Licenscing GmbH,
` IPR2016-01733, slip op. (Feb. 8, 2017) ....................................................... 13, 14
`
`Sony Corp. v. Imation Corp.,
`IPR2015-01557, Paper 19 (Jan. 3, 2017) ............................................................. 15
`
`Thomas & Betts Corp. v. Litton Sys., Inc.,
`720 F.2d 1572 (Fed. Cir. 1983) ...................................................................... 13, 14
`
`Rules 
`
`37 C.F.R. § 42.71(c) ................................................................................................... 2
`
`37 C.F.R. § 42.71(d) ................................................................................................... 2
`
`iii
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`

`

`Case IPR2016-01516
`Patent 7,149,511 B1
`
`EXHIBIT LIST
`
`Ex.
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`Reference
`U.S. Patent No. 7,149,511 (filed Aug. 31, 2000) (issued on Dec. 12,
`2006) (the “’511 patent”)
`“A New File System for Mobile Computing” by John Saldahna,
`Dissertation, Department of Computer Science and Engineering,
`University of Notre Dame (November, 1996) (“Saldanha”)
`“Mobile Computing Personae” by A. Banerji, D.L. Cohn, and D.C.
`Kulkarni, Proc. 4th Workshop on Workstation Operating Systems,
`Napa, CA, October 1993, pp. 21-29
`Presentation given at IBM Mobile Computing Workshop on January
`24, 1994 by David Cohn.
`“Realizing Mobile Computing Personae,” by Michael Raymond
`Casey, Dissertation, Department of Computer Science and
`Engineering, University of Notre Dame (April, 1995)
`“A hybrid model for mobile file systems,” by Saldanha, John, and
`David L. Cohn, Mobile Computing Systems and Applications, 1994
`Proceedings, IEEE (1994)
`“A File System for Mobile Computing,” by John Saldanha, A
`Dissertation Proposal, Technical Report 93-17, University of Notre
`Dame, December 1993
`Cohn Expert Declaration
`Patent Owner’s Preliminary Response, Paper 7, IPR2016-00616
`Patent Owner’s Preliminary Response, Paper 8, IPR2016-00622
`U.S. Patent No. 5,983,073 (filed Apr. 4, 1997) (issued Nov. 9, 1999)
`(“Ditzik”)
`1012 Microsoft Networks, SMB File Sharing Protocol, Document Version
`6.0p (Jan. 1, 1996) (“Microsoft SMB” or “SMB”)
`1013 WIPO Publication No. WO 91/003024 (filed Aug. 14, 1990)
`(published Mar. 17, 1991) (“Masden”)
`“A File System for Mobile Computing,” by Carl Downing Tait,
`Dissertation, 1993 Columbia University
`’511 Prosecution history
`’511 Reexamination history
`D.I. 109 (Opinion and Order) filed in Rosetta-Wireless Corp. v. Apple
`Inc. et al., Case No. 1:15-cv-00799 (N.D. Ill. Nov. 10, 2015)
`
`1007
`
`1008
`1009
`1010
`1011
`
`1014
`
`1015
`1016
`1017
`
`iv
`
`
`
`
`
`

`

`Case IPR2016-01516
`Patent 7,149,511 B1
`
`1020
`1021
`
`1022
`
`1023
`1024
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`Reference
`Ex.
`1018 Mangione-Smith Declaration, Exhibit Rosetta-2001 to Patent Owner’s
`Preliminary Response, Paper 7, IPR2016-00616
`1019 Mangione-Smith Declaration, Exhibit Rosetta-2001 to Patent Owner’s
`Preliminary Response, Paper 8, IPR2016-00622
`U.S. Patent No. 5,737,523 (issued Apr. 7, 1998) (“Callaghan Patent”)
`U.S. Patent No. 6,088,730 (filed Jan. 12, 1998) (issued Jul. 11, 2000)
`(“Kato”)
`Disconnected Operation in the Coda File System, by James J. Kistler
`and M. Satyanarayanan, ACM Transactions on Computer Systems,
`Vol. 10, No. 1, February 1992, Pages 3-25 (“Coda”)
`Declaration of Crystal Daugherty
`Declaration of William Baer
`Stanski, Peter, Stephen Giles, and Arkady Zaslavsky. “Document
`archiving, replication and migration container for mobile Web users.”
`Proceedings of the 1998 ACM symposium on Applied Computing.
`ACM, 1998.
`PDF of Wayback archive page https://web.archive.org/web/http://
`www.cse.nd.edu/tech_reports/1993.html
`NFS Illustrated by Brent Callaghan (ISBN 0-201-32570-5)
`(“Callaghan Book”)
`D.I. 112 (Motion for Reconsideration of Court’s Order Regarding
`Motion to Sever) filed in Rosetta-Wireless Corp. v. Apple Inc. et al.,
`Case No. 1:15-cv-00799 (N.D. Ill. Nov. 30, 2015)
`D.I. 117 (Minute Entry) filed in Rosetta-Wireless Corp. v. Apple Inc.
`et al., Case No. 1:15-cv-00799 (N.D. Ill. Dec. 7, 2015)
`D.I. 118 (Minute Entry) filed in Rosetta-Wireless Corp. v. Apple Inc.
`et al., Case No. 1:15-cv-00799 (N.D. Ill. Dec. 7, 2015)
`D.I. 134 (Transcript of Motion Hearing) filed in Rosetta-Wireless
`Corp. v. Apple, Inc. et al., Case No. 1:15-cv-00799 (N.D. Ill. Jan. 12,
`2016)
`D.I. 29 (Order of the Executive Committee) filed in Rosetta-Wireless
`Corp. v. LG Electronics Co. et al., Case No. 1:15-cv-10608 (N.D. Ill.
`Jan. 25, 2016)
`D.I. 31 (Order) filed in Rosetta-Wireless Corp. v. LG Electronics Co.
`et al., Case No. 1:15-cv-10608 (N.D. Ill. Jan. 27, 2016)
`
`1032
`
`1033
`
`v
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`

`Case IPR2016-01516
`Patent 7,149,511 B1
`
`Ex.
`1034
`
`1035
`
`1036
`
`1037
`
`
`
`Reference
`D.I. 32 (Order of the Executive Committee) filed in Rosetta-Wireless
`Corp. v. LG Electronics Co. et al., Case No. 1:15-cv-10608 (N.D. Ill.
`Feb. 1, 2016)
`D.I. 42 (Minute Entry) filed in Rosetta-Wireless Corp. v. LG
`Electronics Co. et al., Case No. 1:15-cv-10608 (N.D. Ill. Sept. 7,
`2016)
`U.S. District Court for the Northern District of Illinois Internal
`Operating Procedure 13 – Reassignments and Transfers
`Highlighted copy of original Petition, color coded by prior art
`reference: Saldanha (yellow highlighting), Ditzik (pale green), the
`Callaghan Patent (dark green), the Callaghan Book (dark blue), Kato
`(pink), Masden (gold), and Microsoft SMB (pale blue).
`
`vi
`
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`
`
`

`

`
`
`I.
`
`Introduction
`
`Case IPR2016-01516
`Patent 7,149,511 B1
`
`LG’s Petition for inter partes review of U.S. Patent No. 7,149,511 (the “’511
`
`patent”) was denied based on a misapprehension that the prior art status of two
`
`secondary references (the Callaghan Book and Microsoft SMB) were dispositive of
`
`all grounds in the Petition. Dec. at 4-5, 10-13. Specifically, the Board concluded
`
`that the Petition sets forth only grounds of obviousness that relied on these two
`
`references and found that Petitioners had not established that these two references
`
`were publicly available prior to the filing date of the ’511 patent (an issue not
`
`raised by Patent Owner). Without reaching the merits of any of the obviousness
`
`grounds, the Board ruled that Petitioners had failed to set forth a reasonable
`
`likelihood of success on at least one claim of the challenged patent. Dec. at 10-13.
`
`Rehearing is appropriate because the Board misapprehended and overlooked
`
`the other grounds of obviousness in the Petition that do not rely either on the
`
`Callaghan Book or on Microsoft SMB. As described in detail below, other grounds
`
`in the Petition are based on references that are indisputably prior art and establish
`
`that at least one claim of the ’511 patent is invalid. Since the denial of LG’s
`
`Petition was based on the Board’s misapprehension and overlooking of grounds
`
`expressly set forth in the Petition that do not rely on either the Callaghan Book or
`
`Microsoft SMB, rehearing is appropriate. Moreover, the Board misapprehended
`
`and overlooked that the Callaghan Book and Microsoft SMB are used in the
`
`
`
`1
`
`

`

`
`Petition to indicate the knowledge of the skilled person and, even if technically not
`
`Case IPR2016-01516
`Patent 7,149,511 B1
`
`prior art, should still have been considered as additional evidence supporting
`
`Petitioner’s arguments and its expert’s testimony. Therefore, LG requests that the
`
`Board reconsider its decision and institute inter partes review of the ’511 Patent on
`
`all challenged claims.
`
`II. Legal Standard
`
`A request for reconsideration “must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each
`
`matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
`
`§ 42.71(d). The Board reviews a request for rehearing of a decision on a petition
`
`for an abuse of discretion. Id. § 42.71(c). An abuse of discretion occurs when a
`
`“decision was based on an erroneous conclusion of law or clearly erroneous factual
`
`findings, or … a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer
`
`Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988); Microsoft Corp. v. Virnetx,
`
`Inc., IPR2014-00614, Paper 12, slip op. at 2 (Oct. 30, 2014)(overlooking grounds).
`
`III. The Board misapprehended and overlooked eight grounds for
`obviousness in LG’s Petition that establish invalidity of the challenged
`claims without relying on the Callaghan Book or Microsoft SMB.
`
`The Decision states that the Petition described the unpatentability grounds in
`
`an inconsistent fashion and the Board therefore decided to “consider the asserted
`
`grounds to be based” solely on two four-reference obviousness grounds—even
`
`
`
`2
`
`

`

`
`though, as the Board acknowledged, the Petition expressly states that it is
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`Case IPR2016-01516
`Patent 7,149,511 B1
`
`challenging the patent, inter alia, “on Saldanha alone, or in combination with one
`
`or more of Ditzik, Callaghan Patent, and Callaghan Book”; “Kato alone, or the
`
`combination of Kato with one or more of Ditzik, Microsoft SMB, and Masden”;
`
`etc. Dec. at 4 (emphasis added). By re-characterizing the expressly stated
`
`grounds, the Board misapprehended and overlooked that eight of those grounds do
`
`not rely on the Callaghan Book or Microsoft SMB.
`
`Combinations of references are named in the Petition using open-ended
`
`linking terms (e.g., “and/or”, “one or more of”) to make clear that multiple
`
`combinations of secondary references are asserted (i.e., A alone and/or in
`
`combination with one or more of B, C, and D means: A, or A+B, or A+C, or A+D,
`
`or A+B+C, etc.). See Dec. at 4 (citing Petition). There are just two exceptions,
`
`where open-ended linking terms were not used with the secondary references, both
`
`relating only to the Kato grounds. In two spots in the Petition, the expression
`
`“Kato alone and/or Kato in combination with Ditzik, Microsoft SMB, and
`
`Masden,” is used. Pet. at 60, 61 (italics added). Here, alone and/or is used but one
`
`or more of is omitted. Immediately after the second of these two references,
`
`however, the Petition states that the dependent claims would be obvious over “Kato
`
`alone or the combination of Kato with one or more of Ditzik, Microsoft SMB, and
`
`Masden.” Pet. at 61 (italics added).
`
`
`
`3
`
`

`

`Because the Petition overwhelmingly uses open-ended linking terms when
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`Case IPR2016-01516
`Patent 7,149,511 B1
`
`
`
`describing the secondary references, and also substantively establishes that
`
`multiple references each individually disclose all the claim elements, the
`
`reasonable reading of the Petition is that obviousness is based on alternative
`
`combinations of references (e.g., A, or A+B, or A+C, or A+B+C). For example,
`
`with respect to the Saldanha grounds, the Petition states that:
`
`(1) Saldanha discloses (or would render obvious to a person of ordinary
`
`skill in the art) the “pick and open” limitation (Pet. at 18, 29-33);
`
`(2) the Callaghan Patent also discloses the “pick and open” limitation
`
`(Pet. at 18-19, 21 and 32); and
`
`(3) the Callaghan Book discloses the “pick and open” limitation (id.).
`
`Because the Petition lays out duplicative teachings of each of the prior art
`
`references using open-ended language (e.g., “or,” “and/or,” “[a]dditionally,” or
`
`“[f]or example,” Pet. at 32-33, citing Ex. 1008, ¶¶157-62 (“[y]et another example,”
`
`“also,” “[s]till another example”)), the respective descriptions of prior art teachings
`
`should have been recognized as alternatives. Thus, the Board misapprehended the
`
`Petition as requiring a combination of all of the references cited.
`
`In contrast, the Petition sets forth the following eight grounds of invalidity
`
`(each misapprehended and overlooked by the Board) that do not rely on either the
`
`Callaghan Book or Microsoft SMB: (A) Saldanha alone; (B) Saldanha and Ditzik;
`
`
`
`4
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`

`

`
`(C) Saldanha and the Callaghan Patent; (D) Saldanha, Ditzik, and the Callaghan
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`Case IPR2016-01516
`Patent 7,149,511 B1
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`Patent; (E) Kato alone; (F) Kato and Ditzik; (G) Kato and Masden; and (H) Kato,
`
`Ditzik, and Masden. See, e.g., Pet. at 7, 13, 20, 34-35, 48, 52, 60-61. Because the
`
`Board misapprehended and overlooked these grounds, the Board should grant
`
`rehearing and institute an IPR on all challenged claims.
`
`A. The Petition establishes obviousness in view of Saldanha alone.
`
`Claim 1 of the ’511 Patent includes 7 features, referenced herein as elements
`
`[1]-[7].1 See Pet. at ii-iii, iv (table of contents), 10, 23-33 (headings in Saldanha
`
`grounds) and 54-60 (headings in Kato grounds).2 The Petition establishes elements
`
`[1]-[7] would have been obvious in view of Saldanha alone:
`
`“[T]he persona carrier is a wireless intelligent personal network server.”
`
`Pet. at 24; see also Pet. at 23-25 (element [1]). “A person of ordinary skill in the
`
`art would have found it obvious to include an RF receiver as part of the persona
`
`carrier at least for the reason that an RF receiver is a known element for achieving
`
`wireless communication and that it is well known and understood how to use an
`
`
`1 Claim 58 differs from claim 1 only in that the RF receiver element of claim 1 is
`instead an RF transceiver. It also (for the same reason as claim 1) does not rely on
`the Callaghan Book or Microsoft SMB. See Pet. at 34-35, 60-61. The same is true
`for the dependent claims. Microsoft SMB is only cited for claims 4-5 and 61-62,
`and only in the alternative as cumulative support. See Pet. at 35-47, 61-65.
`2 A highlighted copy of the Petition color coded by prior art reference is attached,
`which shows where and how Saldanha (yellow highlighting), Ditzik (pale green),
`the Callaghan Patent (dark green), the Callaghan Book (dark blue), Kato (pink),
`Masden (gold), and Microsoft SMB (pale blue) are used. See Ex. 1037.
`5
`
`
`
`

`

`
`RF receiver to receive downstream data over a wireless communications channel.”
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`Case IPR2016-01516
`Patent 7,149,511 B1
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`Pet. at 27; see also Pet. at 25-27 (element [2]). “The persona carrier clearly
`
`includes local file storage and other memory.” Pet. at 27 (element [3]). “The
`
`persona carrier clearly includes a processor or CPU (e.g., a 486DX-33).” Pet. at
`
`28 (element [4]). “The persona carrier receives downstream data that are then
`
`processed by the CPU executing embedded machine language instructions into
`
`files.” Pet. at 28; see also Pet. at 28-29 (element [5]).
`
`“When a satellite opens a file on the persona carrier, Dr. Cohn explains that
`
`a copy of the file remains resident on the persona carrier…. This is exactly what
`
`the ’511 patent describes regarding the file being picked and opened by the display
`
`device while remaining resident on the WIPS.” Pet. at 31; see also Pet. at 18, 29-
`
`33 (element [6]). “Saldanha’s persona carrier is preferably carried with the user at
`
`all times…. Further, Dr. Cohn explains that it would have been obvious to
`
`combine the persona carrier with known portable devices.” Pet. at 33; see also
`
`Pet. at 33-34 (element [7]).
`
`Thus, the Board overlooked a ground “based on Saldanha alone,” Pet. at 34.
`
`B.
`
`The Petition establishes obviousness in view of Saldanha and
`Ditzik.
`
`As described above, all 7 elements of claim 1 would have been obvious to
`
`the person skilled in the art in view of Saldanha alone. The Petition simply
`
`
`
`6
`
`

`

`
`buttresses Saldanha’s teaching of elements [2]-[5] and [7] with Ditzik. “Further,
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`Case IPR2016-01516
`Patent 7,149,511 B1
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`Ditzik teaches that mobile devices include an RF transceiver for voice or data
`
`communication and such an RF transceiver would have been combined with
`
`Saldanha at least for providing wireless communication.” Pet. at 27 (element [2]).
`
`“Ditzik teaches (and it was also well known in the art) that mobile devices include
`
`ROM, flash memory, magnetic disk memory, or other memory means.” Id.
`
`(element [3]). “Ditzik teaches that mobile devices include a microprocessor.” Pet.
`
`at 28 (element [4]). “Ditzik teaches that mobile devices include a microprocessor
`
`which has instructions (including a Windows OS) for carrying out communication
`
`applications … and E-mail functions.” Pet. at 29 (element [5]). “Ditzik teaches
`
`that mobile devices are hand portable.” Pet. at 34 (element [7]).
`
`In addition to the obviousness analysis found within each element, and in the
`
`corresponding portions of Dr. Cohn’s declaration cited in each element, the Petition
`
`explains that Ditzik is “an exemplary portable wireless computing device” and
`
`offers rationales for combining Ditzik with Saldanha. See Pet. at 20-23. Pet. at 34.
`
`Thus, the Board overlooked the ground of obviousness “based on … Saldanha in
`
`combination with Ditzik,” Pet. at 34.
`
`
`
`7
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`C. The Petition establishes obviousness in view of Saldanha and the
`Callaghan Patent.
`
`Like the ground based on Saldanha and Ditzik, the Petition buttresses
`
`Saldanha’s teaching of element [6] with the Callaghan Patent. “Dr. Cohn explains
`
`that the network file sharing protocol described in … Call[a]ghan Patent teaches
`
`the ‘pick and open’ limitation.” Pet. at 32; see also id. at 18-19 (describing
`
`conventional filesystem technology described by the Callaghan Patent including
`
`“pick and open”), 21 (“NFS (as disclosed in Callaghan Patent…) is an exemplary
`
`distributed file system that allows a remote computer to access or open files on a
`
`file server while those files remain resident on the file server.”) (element [6]).
`
`In addition to the obvious analysis found within element [6], and in the
`
`corresponding portions of Dr. Cohn’s declaration cited there, the Petition further
`
`explains that NFS as disclosed in Callaghan Patent is an “an exemplary distributed
`
`file system” and offers rationales for combining Callaghan Patent with Saldanha.
`
`See Pet. at 20-23. Thus, the Board overlooked a ground of obviousness “based on
`
`… Saldanha in combination with … Callaghan Patent,” Pet. at 34.
`
`D. The Petition establishes obviousness in view of Saldanha, Ditzik
`and Callaghan Patent.
`
`As explained above, the Petition further buttresses Saldanha’s teaching of
`
`elements [2]-[5] and [7] with Ditzik, and Saldanha’s teaching of element [6] with
`
`the Callaghan Patent, and as also explained above, offers an obviousness analysis
`
`
`
`8
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`

`
`for why these references would have been obvious to combine. Thus, the Board
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`Case IPR2016-01516
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`overlooked a ground of obviousness “based on … Saldanha in combination with
`
`Ditzik, [and] Callaghan Patent,” Pet. at 34.
`
`E.
`
`The Petition establishes obviousness in view of Kato alone.
`
`The Petition establishes that each of the elements [1]-[7] would have been
`
`obvious in view of Kato alone: “Kato’s IPA is a wireless intelligent personal
`
`network server.” Pet. at 54 (element [1]). It would have been obvious in view of
`
`Kato “to make the connection wireless on implementations of the IPA including
`
`mobile devices such as notebooks with wireless capability like the IBM Thinkpad
`
`disclosed by Kato.” Pet. at 54-55. “As explained in connection with Ground 1, it
`
`was well known in the art for mobile devices to include an RF transceiver for
`
`receiving downstream data, and would have been obvious to do so at least because
`
`it would obviate the need for connecting cables.” Pet. at 55 (element [2]). “Kato’s
`
`IPA includes main memory 14 and hard disk drive 25.” Pet. at 55 (element [3]).
`
`“Kato’s IPA includes a processor (e.g., CPU 11).” Pet. at 56 (element [4]). “The
`
`IPA receives downstream data that are then processed by the CPU executing
`
`embedded machine language instructions into files.” Pet. at 56 (element [5]).
`
`“Thus, Kato discloses, and it would have been obvious in view of Kato, that
`
`an application on a PDA may pick and open (e.g. “browse” or “manage”) personal
`
`information (e.g. “an address book”), such as the personal information that may be
`
`
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`9
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`transmitted from the IPA to the PDA via the infrared link.” Pet. at 57. “As
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`explained in connection with Ground 1, numerous file-system art (e.g., Microsoft
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`SMB, Masden, NFS, and Coda) teach that a remote computer may pick and open
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`files stored on a server while those files remain resident on the server.” Pet. at 58;
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`see also Pet. at 57-59 (element [6]). “The IPA may be a notebook PC such as the
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`IBM Thinkpad…. Further, Dr. Cohn explains that it would have been obvious to
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`combine the IPA with known portable devices.” Pet. at 60 (element [7]).
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`Thus, the Board overlooked a ground “based on Kato alone,” Pet. at 60.
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`F.
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`The Petition establishes obviousness in view of Kato and Ditzik.
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`The Petition further buttresses Kato’s teaching of elements [2]-[5] and [7]
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`with Ditzik. “Further, Ditzik teaches that mobile devices include an RF transceiver
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`for voice or data communication and such an RF transceiver would have been
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`combined with Kato at least for providing wireless communication.” Pet. at 55
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`(element [2]). “Ditzik teaches (and it was also well known in the art) that mobile
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`devices include ROM, flash memory, magnetic disk memory, or other memory
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`means.” Id. (element [3]). “Ditzik teaches that mobile devices include a
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`microprocessor.” Pet. at 56 (element [4]). “Ditzik teaches that mobile devices
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`include a microprocessor which has instructions (including a Windows OS) for
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`carrying out communication … and E-mail functions.” Pet. at 56-57 (element [5]).
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`“Ditzik teaches that mobile devices are hand portable.” Pet. at 60 (element [7]).
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`In addition to the obviousness analysis for each element, and in Dr. Cohn’s
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`declaration cited for each element, the Petition further explains that Ditzik is “an
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`exemplary portable wireless computing device” and offers rationales for
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`combining Ditzik with Kato. See Pet. at 52-54. Thus, the Board overlooked a
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`ground of obviousness based on “Kato and … Ditzik.” Pet. at 52.
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`G. The Petition establishes obviousness in view of Kato and Masden.
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`The Petition further buttresses Kato’s teaching of element [6] by Masden.
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`“As explained in connection with Ground 1, numerous file-system art (e.g., …
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`Masden…) teach that a remote computer may pick and open files stored on a
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`server while those files remain resident on the server.” Pet. at 58. “[I]t would have
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`been obvious to include these features of … Masden (or other file systems …) in
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`the IPA at least because it is combining known elements in predictable ways to
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`achieve what those elements are designed to do.” Pet. at 59 (element [6]).
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`In addition to the obvious analysis found within element [6], and in the
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`corresponding portions of Dr. Cohn’s declaration cited there, the Petition further
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`explains that Masden is an “an exemplary distributed file system[]” and offers
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`rationales for combining Masden with Kato. See Pet. at 52-54. Thus, the Board
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`overlooked a ground of obviousness based on “Kato and … Masden,” Pet. at 52.
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`H. The Petition establishes obviousness in view of Kato, Ditzik and
`Masden.
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`As explained above, the Petition further buttresses Kato’s teaching of
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`elements [2]-[5] and [7] by Ditzik, and its teachings of element [6] by Masden, and
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`as also explained above, offers an obviousness analysis for why the references
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`would be combined. Thus, the Board overlooked a ground of obviousness based
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`on the combination of “Kato and … Ditzik … and Masden,” Pet. at 52.
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`IV. The Board also misapprehended or overlooked that the Callaghan Book
`and Microsoft SMB were cumulative to Callaghan Patent and Masden
`and were used to indicate the knowledge of the skilled person in the art.
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`The Petition relies on the unrebutted testimony of Dr. Cohn for establishing
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`the well-known functionality of state of the art file systems (Pet. at 32-33, citing
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`Ex-1008 ¶¶157-162), but also cites to exemplars including Masden, the Callaghan
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`Patent, and Coda, for disclosing the same and supporting his testimony. See Pet. at
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`18 (citing Ex. 1008, ¶¶119-20). The Petition explains that exemplary file-system
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`art was within the knowledge of an ordinary person of skill in the art at the time of
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`the filing of the ’511 Patent. Id. at 32-33. “Indeed,” as the Petition explains, “the
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`ubiquitous nature of distributed file systems that provide an interface for allowing
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`an application on a remote device to ‘pick and open’ a file that remains resident on
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`the file system is evidence of the claim element’s obviousness.” Pet. at 33; see
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`also Id. at 58-59. The Callaghan Book and Microsoft SMB are provided as
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`additional examples of well-known file systems that could “pick and open” prior to
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`the ’511 patent, and are cumulative evidence supporting Dr. Cohn’s testimony and
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`confirming the relevant knowledge of the skilled person. See Pet. 29-33, 57-59.
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`The Callaghan Book and Microsoft SMB are unnecessary for institution of
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`an IPR since, as expressly stated, each of the exemplary file-system art references
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`taught the “pick and open” limitation on its own. See Pet. at 32-33, 53, 58.
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`Nevertheless, the Board still should have considered the Callaghan Book and
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`Microsoft SMB because, even if technically not considered prior art for purposes
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`of instituting an IPR, the references are properly used as indicators of the level of
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`ordinary skill in the art. See Samsung Elecs. Co. v. Papst Licenscing GmbH,
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`IPR2016-01733, slip op. at 19 (Feb. 8, 2017) (citing to Thomas & Betts after Patent
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`Owner challenged prior art status of source code) (“source code [that] does not
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`qualify as prior art … may be relied upon to show the level of ordinary skill in the
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`art....”); Thomas & Betts Corp. v. Litton Sys., Inc., 720 F.2d 1572, 1580-81 (Fed.
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`Cir. 1983); Ex Parte Williams, BPAI 2009-005995, 2010 WL 3454271, at *1 (Aug.
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`31, 2010). The Petition expressly argued that both the Callaghan Book and
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`Microsoft SMB were indicative of the level of ordinary skill in the art. See, e.g.,
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`Pet. at 18 (citing Ex. 1008, ¶¶119-20), 21-22, 32-33, 57-59.
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`In the Saldanha grounds, the Callaghan Patent (whose prior art publication
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`status is undisputed) also discloses the NFS file system, and the same “pick and
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`open” teaching as the Callaghan Book. See Pet. at 21, 32-33; Ex. 1008 ¶ 114. In
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`the Kato grounds, Masden (prior art status also undisputed) is offered as an
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`alternate exemplary file-system reference that discloses the same “pick and open”
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`teaching as Microsoft SMB. See Pet. at 53 (“Microsoft SMB and Masden are
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`each exemplary distributed file systems allowing a remote computer to access or
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`open files on a file server while those files remain resident on the file server.”)
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`(emphasis added); 58-59 (“As explained in connection with Ground 1, numerous
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`file-system art (e.g., Microsoft SMB, Masden, NFS, and Coda) teach that a
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`remote computer may pick and open files stored on a server while those files
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`remain resident on the server.”) (emphasis added).
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`Even if the Board were to have accurately interpreted the Petition as being
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`limited to two four-reference combinations (which LG disputes), the Board abused
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`its discretion by failing to reach the merits of those grounds. In addition to both
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`the Callaghan Book and Microsoft SMB being unnecessary for institution of an
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`IPR, both should have been considered at least as additional evidentiary support to
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`Dr. Cohn’s testimony (which itself established obviousness) and indicative of the
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`knowledge of the skilled person at the time of the filing of the ’511 patent.
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`IPR2016-01733, slip op. at 19; Thomas & Betts Corp., 720 F.2d at 1580-81. Thus,
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`even if Callaghan Book and Microsoft SMB are not prior art publications, the
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`Board still should have addressed the merits of LG’s Petition also for this reason.
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`V. The Board Raised This Issue On Its Own, Despite Neither Side Putting
`The Prior Art Status Of Any Of The References In Dispute.
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`Rosetta did not challenge the prior art status of any of the references
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`(including the Callaghan Book and Microsoft SMB) in its preliminary response.
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`The reason it did not is because there is no dispute about those references being
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`prior art. In addition, both the Callaghan Book and Microsoft SMB were first
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`presented to Rosetta in the corresponding litigation in the Northern District of
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`Illinois, in the form of invalidity contentions. Rosetta responded to the contentions
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`under the local rules, never disputing their prior art status.
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`Because LG asserted a prior art date for the Callaghan Book and Microsoft
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`SMB that was not contested by Rosetta either in the related litigation or