Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 20
`Entered: July 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioner,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00602
`Patent 9,219,810 B2
`_______________
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`CHRISTOPHER PAULRAJ, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 20
`Entered: July 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioner,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00602
`Patent 9,219,810 B2
`_______________
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`CHRISTOPHER PAULRAJ, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`IPR2017-00602
`Patent 9,219,810 B2
`
`
`Exhibit No.
`Ex. 1002
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`I. INTRODUCTION
`Facebook, Inc. and Instagram LLC (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting an inter partes review of claims 1–7 of U.S.
`Patent No. 9,219,810 B2 (Ex. 1001, “the ’810 patent”). Skky, LLC (“Patent
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the
`Petition.
`In our Institution Decision (Paper 9, “Inst. Dec.”), we instituted an
`inter partes review of claims 1–4, 6, and 7 of the ’810 patent (“the
`challenged claims”)1 on alternative grounds of obviousness over 1) Yukie,
`Gatherer, Prust, and Frodigh (ground 1), and 2) Yukie, Gatherer, Prust,
`O’Hara, Tagg, and Pinard (ground 2). A table of references and evidence
`relied upon in the Petition follows:
`Reference or Declaration
`Declaration of Tal Lavian, Ph.D. (“Lavian Declaration”)
`Pinard et al., U.S. Patent No. 5,815,811 (filed Oct. 27, 1995,
`issued Sept. 29, 1998) (“Pinard”)
`Yukie et al., U.S. Patent No. 6,956,833 B1 (filed April 4,
`2000, issued Oct. 18, 2005) (“Yukie”)
`Gatherer et al., DSP-Based Architectures for Mobile
`Communications: Past, Present and Future, 38:1 IEEE
`COMMUNICATIONS MAGAZINE 84–90 (2000) (“Gatherer”)
`Frodigh et al., U.S. Patent No. 5,726,978 (issued Mar. 10,
`1998) (“Frodigh”)
`Prust, U.S. Patent No. 6,714,968 B1 (filed Feb. 9, 2000,
`issued Mar. 30, 2004) (“Prust”)
`
`Ex. 1006
`
`Ex. 1013
`
`
`1 Prior to its Preliminary Response, Patent Owner filed a statutory disclaimer
`disclaiming claim 5 of the ’810 patent. Prelim. Resp. 4. Accordingly, we
`did not institute on claim 5. See 37 C.F.R. § 42.107 (“No inter partes
`review will be instituted based on disclaimed claims.”); Inst. Dec. 2.
`
`
`2
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`Patent 9,219,810 B2
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`Ex. 1060
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`Tagg, U.S. Patent No. 8,996,698 B1 (filed Nov. 3, 2000,
`issued Mar. 31, 2015) (“Tagg”)
`Bob O’Hara and Al Petrick, IEEE 802.11 HANDBOOK, A
`DESIGNER’S COMPANION (1999) (“O’Hara”)
`See Inst. Dec. 4; Pet. 3, 10–19.
`After institution, Patent Owner filed a Response (Paper 12, “PO
`Resp.”), and Petitioner filed a Reply (Paper 16, “Pet. Reply”). The parties
`waived their right to an oral hearing.
`This Final Written Decision issues pursuant to 35 U.S.C. § 318(a).
`For the reasons set forth below, Petitioner has shown by a preponderance of
`the evidence that claims 1–4, 6, and 7 of the ’810 patent are unpatentable.
`A. Related Proceedings
`The parties indicate that the following district court case involves the
`’810 patent: Skky, LLC v. Facebook, Inc., No. 0:16-cv-00094 (D. Minn.).
`Pet. 1; Paper 4, 2. The following petitions for inter partes review or covered
`business method review relate to the instant proceeding:
`Case No.
`Involved U.S. Patent No.
`IPR2014-01236
`U.S. Patent No. 7,548,875
`IPR2017-00088
`U.S. Patent No. 9,124,718
`IPR2017-00089
`U.S. Patent No. 9,118,693
`IPR2017-00092
`U.S. Patent No. 9,124,717
`IPR2017-00097
`U.S. Patent No. 8,892,465
`IPR2017-00550
`U.S. Patent No. 9,037,502
`IPR2017-00641
`U.S. Patent No. 9,203,956
`IPR2017-00685
`U.S. Patent No. 9,203,870
`IPR2017-00687
`U.S. Patent No. 9,215,310
`CBM2016-00091
`U.S. Patent No. 9,037,502
`CBM2017-00002
`U.S. Patent No. 9,203,870
`CBM2017-00003
`U.S. Patent No. 9,219,810
`CBM2017-00006
`U.S. Patent No. 9,215,310
`CBM2017-00007
`U.S. Patent No. 9,203,956
`
`Ex. 1061
`
`3
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`IPR2017-00602
`Patent 9,219,810 B2
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`Pet. 1–2; Paper 4, 2. The Board denied institution in each of the covered
`business method reviews after Patent Owner disclaimed claims having a
`financial component or disclaimed all claims. The Board also denied
`institution in IPR2017-00641 in view of Patent Owner’s disclaimer of the
`challenged claims. The Board issued final written decisions in IPR2014-
`01236, IPR2017-00088, IPR2017-00089, IPR2017-00092, and IPR2017-
`00097.2
`
`B. The ’810 Patent
`The ’810 patent discloses delivering the audio or visual files, which
`may represent songs, films, or other recordings, from one or more servers to
`an electronic device. Id., [57]. The system may transmit the files in a
`compressed format, and the electronic device receives and plays the files on
`demand by a user. Id. The system employs a transmitter and receiver that
`use an orthogonal frequency-division multiplex (“OFDM”) modulation
`technique to transfer the files. Id. at 16:57–17:40, Fig. 5.
`C. Illustrative Claim
`Independent claim 1, from which claims 2–4, 6, and 7 depend,
`
`follows:
`1. A method of delivering a data file between one or more
`servers to a user’s wireless device, the method comprising:
`
`receiving the data file from the wireless device, the
`wireless device including a digital signal processor and a receiver
`configured for the handling of digital media transmitted by
`orthogonal frequency-division multiplex modulation, wherein
`the data file is routed through a cellular network;
`
`2 The U.S. Court of Appeals for the Federal Circuit affirmed the Board’s
`decision in IPR2014-01236, finding claims 1–3, 5, and 15–23 of U.S. Patent
`No. 7,548,875 B2 unpatentable. Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d
`1014, 1016 (Fed. Cir. 2017).
`
`4
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`storing the data file received from the wireless device in
`
`the user’s virtual storage locker on the [sic] one or more servers;
`
`receiving a request from the wireless device for the data
`file; and
`
`providing for transmitting the data file to the wireless
`device
`using
`orthogonal
`frequency-division multiplex
`modulation based on the received request.
`
`
`
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner’s declarant, Tal Lavian, Ph.D., states that a person of
`ordinary skill in the art would have had “at least a bachelor’s degree in
`computer science, computer engineering, or electrical engineering (or
`equivalent degree or experience) with at least four years of experience with
`wireless communications systems and at least two years of experience with
`the communication of digital media.” Ex. 1002 ¶ 15. Patent Owner does
`not provide a definition of the level of ordinary skill in the art. Patent
`Owner also does not dispute Dr. Lavian’s definition. Based on the evidence
`of record, including the types of problems and solutions described in the
`’810 patent and the asserted prior art, we agree with and adopt Dr. Lavian’s
`definition of the level of ordinary skill in the art. Id. ¶¶ 15–17.
`B. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–45 (2016). “Under a broadest reasonable interpretation,
`words of the claim must be given their plain meaning, unless such meaning
`is inconsistent with the specification and prosecution history.” TriVascular,
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`Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). An applicant may
`provide a different definition of the term in the specification with reasonable
`clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994). In the absence of such a definition, limitations are not to
`be read into the claims from the specification. In re Van Geuns, 988 F.2d
`1181, 1184 (Fed. Cir. 1993). Regardless of the standard employed, nothing
`in this record indicates that a district court claim construction standard
`would alter the outcome here.
`Constructions of “cellular network” and “virtual storage locker”
`follow. No other terms require express construction in this proceeding.
`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.”).
`1. “cellular network”
`Claim 1 recites “receiving the data file from the wireless device . . .
`wherein the data file is routed through a cellular network.” Petitioner
`contends a “cellular network” is “network in which wireless
`communications are provided through a series of ‘cells,’ each cell providing
`network access for a particular geographic area.” See Pet. 6–7. Effectively,
`Petitioner’s proposed construction seeks “cellular network” to include its
`“colloquial[]” meaning (the networks provided by “large scale commercial
`cellular telephone providers”) and its “technical definition” (which would
`include other radio wavelengths, such as specified under the IEEE 802.11
`standard, more commonly known as “WiFi”). Id. Petitioner contends the
`’810 patent neither defines nor limits the term. See id. at 6.
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`6
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`Petitioner relies, inter alia, on the testimony of its expert, Dr. Lavian
`(Ex. 1002 ¶¶ 63–64), and on one of Patent Owner’s related patents (Ex.
`1074, U.S. Patent No. 8,892,465, claims 9–11). Id. at 6–7 & n.2. Dr.
`Lavian, in turn, cites to Pinard (Ex. 1003), which explicitly refers to a
`“cellular network” as relating to a “local area wireless network including a
`plurality of mobile units and plurality of access points.” Ex. 1003, 1:21–25;
`Ex. 1002 ¶ 65 (citing the IEEE 802.11 wireless access point standard).
`Petitioner and Dr. Lavian also cite to a host of dictionaries supporting the
`proposed construction. Pet. 7 (citing Exs. 1055–59, 1067–68); Ex. 1002
`¶ 63 (same).
`Patent Owner contends “Petitioners’ interpretation of ‘cellular
`network’ is unreasonably broad.” PO Resp. 12. Nevertheless, Patent Owner
`does not contend that the term “requires an explicit construction” “beyond
`the broadest reasonable interpretation.” Id. Patent Owner also does not
`provide an explicit claim construction for the term. See id.
`
`Patent Owner contends Petitioner admits the term “cellular network”
`includes a colloquial meaning “understood by the lay public,” and contends
`further Petitioner improperly expands the colloquial meaning to include Wi-
`Fi and other types of communications. Id. at 10. Nevertheless, Petitioner
`does not rely on a colloquial meaning. Rather, Petitioner simply explains, as
`background, that “[t]he term ‘cellular network’ is often colloquially
`understood by the lay public as referring to large scale commercial cellular
`telephone providers, such as AT&T, [but] the term has a more precise and
`technical definition to persons of ordinary skill in the art.” Pet. 6 (citing Ex.
`1002 ¶ 63) (emphasis omitted).
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`As Petitioner argues, the ’810 patent does not specify that a cellular
`network excludes Wi-Fi or other similar “short-range” communications from
`being part of such a cellular network (see Pet. 6), and Patent Owner does not
`contend it does in a clear fashion (see PO Resp. 12 (not relying on the ’810
`patent or any evidence), 32 (equating Wi-Fi and “short-range” wireless
`without specifically contending the ’810 patent excludes either one from
`being part of a cellular network)). Rather, the ’810 patent generally
`describes extending the “playback capabilities of the present invention to
`existing landline and cellular telephones.” Ex. 1001, 2:53–54. It also
`describes as part of the invention, without limitation as to either short- or
`long-range wireless technology, generally downloading items that appear to
`be operable via short-range or long range: “sound and/or image files by
`other electronic devices, such as home phones, computers, pagers, doorbells,
`alarms, palm pilots, watches, clocks, PDAs etc.” See id. at 3:11–14.
`In general, the specification describes “an improved method for
`delivery and play back of sound and image files.” Ex. 1001, 1:63–64. The
`improvement involves files distributed to a cell phone, largely for use to be
`played in lieu of the traditional ringing sound. Id. at 1:22–60 (discussing
`ring tones), 2:22–39 (ring tone embodiment); see also, e.g., id. at 4:65–66
`(“method . . . us[ing] . . . sound and or image clips as alerts”), 5:22–24
`(“snippets . . . to be used for sound and/or image alerts in electronic
`devices”). A section describing the transmission system (id. at 12:32–14:11)
`generically describes a “cellular network infrastructure” (id. at 13:35).
`An example of cellular phone transmission (id. at 14:11–16:28)
`concerns the ability of the phone to play sounds in conjunction with caller
`ID (id. at 14:27–16:28), consistent with the ’810 patent’s focus on ring
`
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`tones. The specification addresses details for OFDM transmission of data
`over the audio channel of a wireless landline phone. Id. at 16:29–36, 57–67
`(describing use of OFDM for data transmission when sending data over an
`audio channel of landline). However, when discussing transmission for a
`cellular phone, the “server . . . uses a modulation protocol compatible with
`the protocol supported by the cellular network provider.” Id. at 18:66–19:1;
`see also id. at 19:34–35 (“using one of the standard modulation protocols
`supported by the cellular provider”), 19:58–60 (same), 20:25–26 (same).
`Accordingly, the ’870 patent does not direct itself to unique technical
`implementations for a cellular network, but rather relies upon the expected
`knowledge of the person of ordinary skill in the art. Similarly, the
`specification describes a cell phone in usual terms. See id. at 25:46–26:11.
`Taking into account the specification as a whole, it does not import or imbue
`a special meaning to the term “cellular network”; rather, the specification
`employs “cellular network” as a familiar term for a person of ordinary skill
`in the art.
`As the Petition points out, claim 10 in a related patent bearing a
`common specification with the ’810 patent recites a limitation of “the server
`and the wireless telephone . . . further operably coupled by a WI-FI data
`channel,” and claim 11 of that related patent recites “wherein the WI-FI data
`channel utilizes . . . OFDM[] modulation.” See Pet. 7–8 n.2 (quoting claims
`10 and 11 of US. Patent No. 8,892,465 (Ex. 1066)). Testimony by Dr.
`Lavian, citing the prior art of record and international standards, generally
`shows that artisans of ordinary skill knew that Wi-Fi connections occurred
`via cells at access points for wireless connections to cell phones. See, e.g.,
`Ex. 1002 ¶¶ 57–68; infra Section II.D.
`
`9
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`In summary, the record supports Petitioner’s claim construction of a
`“cellular network.” See Pet. 6–7 & n.2 (citing Ex. 1002 ¶¶ 21, 63–64; Exs.
`1055–59; Ex. 1066); Pet. Reply 8–9. Petitioner’s evidence demonstrates
`persuasively how a person of ordinary skill in the art would construe the
`term “cellular network.” Petitioner also shows the ’810 patent does not
`define the term “or limit the term to a particular technology.” Pet. 6.
`Accordingly, after consideration of the respective positions of the
`parties and a review of the record, we determine a “cellular network” is
`“network in which wireless communications are provided through a series of
`‘cells,’ each cell providing network access for a particular geographic area.”3
`See Pet. 6–7.
`2. “virtual storage locker”
`Claim 1 recites “storing the data file received from the wireless device
`in the user’s virtual storage locker on . . . one or more servers.” Petitioner
`contends a “virtual storage locker” is a “storage area associated with a user.”
`Pet. 8–9 (emphasis omitted) (citing Ex. 1001, 8:33–44 to support its
`construction). The ’810 patent specification cited by Petitioner describes a
`“virtual personal locker or storage area for storing a selection of clips
`personal to a user.” Ex. 1001, 8:33–36.
`Patent Owner asserts “Petitioners’ interpretation of ‘virtual storage
`locker’ is . . . unreasonably broad.” PO Resp. 13. Patent Owner contends
`“[a]s the specification explains, a storage locker has two physical
`components: a storage chip and a server.” Id. (citing Ex. 1001, 12:36–41).
`
`
`3 The claim construction of a “cellular network” only arises with respect to
`one of the grounds discussed below. See infra Section II.D.
`
`
`10
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`Patent Owner does not provide any further explanation as to how to construe
`a “virtual storage locker.” Id.
`In any event, contrary to Patent Owner’s characterization of the
`alleged disclosed storage locker as including server and chip components,
`the cited passage states “[t]he system is described in terms of two main
`components: a storage chip 104, and a server 106.” Ex. 1001, 12:36–37
`(emphasis added). Also, claim 1 refers to “the user’s virtual storage locker
`on the . . . one or more servers” (emphasis added) whereas described chip
`104 attaches to telephone 102. See id. at 12:33–41. Accordingly, the ’810
`patent specification does not support Patent Owner’s characterization of a
`virtual storage locker as requiring a server and a chip. See also Pet. Reply
`18–19 (making a similar point). Rather, the specification supports
`Petitioner’s construction as indicated above. See Ex. 1001, 8:33–36
`(describing a “virtual personal locker or storage area for storing a selection
`of clips personal to a user”); Pet. 8 (quoting Ex. 1001, 8:33–44 and arguing
`“[t]he patent . . . describes a ‘virtual personal locker’ as a storage area
`associated with a particular user for storing files”).
`Accordingly, after consideration of the respective positions of the
`parties and a review of the record, we determine a “virtual storage locker” is
`a “storage area associated with a user.”4
`
`
`4 Patent Owner does not present an argument that turns on the claim
`construction of a “virtual storage locker” for either of the two grounds
`addressed in this trial. See infra Sections C and D; Pet. Reply 19
`(contending “Patent Owner does not dispute that the prior art discloses the
`‘virtual storage locker’ limitation”).
`
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`C. Obviousness of Claims 1–4, 6, and 7 over
`Yukie, Gatherer, Prust, and Frodigh, Ground 1
`Petitioner argues that claims 1–4, 6, and 7 would have been obvious
`over Yukie, Gatherer, Prust, and Frodigh per ground 1. See Pet. 3. For the
`reasons discussed below, Petitioner shows by a preponderance of evidence
`that claims 1–4, 6, and 7 would have been obvious over Yukie, Gatherer,
`Prust, and Frodigh.
`1. Overview of Yukie, Gatherer, Frodigh, and Prust
`Yukie describes a method by which a “user device 10 establishes a
`wireless connection to data server 16 and sends data to data server 16 for
`storage and later access by user device 10.” Ex. 1004, 4:23–26. Figure 1 of
`Yukie follows:
`
`
`
`Yukie’s Figure 1 illustrates user wireless device 10 with wireless
`interface 12 and local storage 32 for connecting to base station 14 to access
`
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`server 16 and Internet 22. See id. at 10:40–11:6. Device 10 includes “a
`telephonic communication device such as a . . . cellular phone.” Id. at
`10:41–42. User device 10 may include “audio input and output components,
`available for telephony functions for audio recording and playback.” Id. at
`11:13–19. Yukie’s wireless connection can be “implemented in various
`ways,” including via “readily available wireless internet protocol (IP)
`networks,” using “an IP packet switch” connection type, “a high speed
`broadband connection suitable for transmission of audio and video data,”
`and additional “different wireless systems suitable for the connection, such
`as analog cellular systems.” See id. at 5:14–29. Other types of data stored
`on “local storage media 32” include “directories, documents, or data
`downloaded from the Internet.” Id. at 10:64–66.
`Gatherer discloses digital signal processors (“DSPs”). Ex. 1005, 4.5
`Gatherer states “[p]rogrammable DSPs are pervasive in the wireless handset
`market for digital cellular telephony.” Id. at Abstract. Gatherer also
`explains “DSPs will continue to play a dominant, and in fact increasing, role
`in wireless communications devices.” Id.
`Frodigh discloses “[a] method and system of adaptive channel
`allocation in a frequency division multiplexed system.” Ex. 1006, [57].
`Frodigh teaches that frequency division multiplexing (“FDM”) applies to
`cellular systems, and that orthogonal frequency division multiplexing
`(“OFDM”) “is a particular method of FDM that is particularly suited for
`cellular systems.” Id. at 1:59–63. Frodigh also states “OFDM offers several
`advantages that are desirable in a cellular system.” Id. at 2:38–39.
`
`5 Page citations refer to the page numbers added to the bottom of Exhibit
`1005 by Petitioner. The Petition cites to original page numbers of Gatherer.
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`Specifically, Frodigh explains that using OFDM creates an “overall
`spectrum . . . close to rectangular,” which “results in efficient use of the
`bandwidth available to a system.” Id. at 2:40–42. Also, OFDM “reduc[es]
`intersymbol interference” due to multipath delays caused by scattering from
`buildings and other structures. Id. at 2:42–60.
`Prust’s system provides “seamless access to remote data storage
`areas” with “a plurality of virtual storage areas.” Ex. 1013, [57]. Figures 2
`and 6 of Prust show a conventional web browser embodiment on client
`computer 205 with which “the user can browse the directories within virtual
`storage area 225 and can perform many common file management
`operations including uploading, downloading and deleting files, as well as
`creating and removing directories.” Id. at 7:3–6; see id. at 6:59–7:6, Fig. 2.
`In Prust’s storage system,
`[s]torage server 210 stores attached files 705 to the target
`directory within the appropriate virtual storage area 225 assigned
`to the user. In this manner, the user is able to email one or more
`files directly into a specified directory within virtual storage area
`225 from any remote location via network 215.
`Id. at 7:21–26; see id. at Fig. 2, Fig. 7.
`2. Petitioner’s Showing, Claim 1
`The preamble of claim 1 recites “[a] method of delivering a data file
`between one or more servers to a user’s wireless device, the method
`comprising.” Claim 1 also recites “receiving the data file from the wireless
`device.” Petitioner relies on Yukie’s disclosure of allowing a user to upload
`and retrieve data to and from a remote server wirelessly, using a “cellular
`phone” or a telephonically enabled personal digital assistant (PDA). Pet. 19
`(citing Ex. 1004, 2:31–41, 3:42–48, 10:41–43, 16:64–17:6). Petitioner also
`relies on Yukie’s disclosure of user cellular wireless device 10 sending
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`different types of data to data server 16 for storage and later access by user
`device 10. Id. at 20–21 (citing Ex. 1004, 2:31–41, 4:23–26). For example,
`Petitioner identifies uploading audio, still images, video images, and other
`file data types for storage at server 16. See id. (citing Ex. 1004, 6:44–51,
`6:58–63, 7:37–47). As Petitioner contends, Yukie discloses several
`functions for cellular device 10, including storing and accessing different
`data types on server 16, including data downloaded from the Internet, and
`including audio, video, and a combination of audio with video over IP. See
`Ex. 1004, 10:64–11:29.
`Claim 1 also recites “the wireless device including a digital signal
`processor and a receiver.” Petitioner relies on Yukie’s disclosure of cellular
`device 10, which includes a transmitter, receiver, and transceiver, and a
`processor and memory executing software, but Petitioner acknowledges
`“Yukie does not expressly disclose that the cell phone includes a ‘digital
`signal processor.’” Id. at 21–22 (emphasis omitted) (citing Ex. 1004, 5:9–
`12, 10:41–49, Fig. 1).
`Addressing the recited digital signal processor (“DSP”) requirement,
`Petitioner contends
`[d]igital signal processers (DSPs) were well-known to
`persons of ordinary skill in the art, and it was also known that
`cell phones of the sort disclosed in Yukie could include a digital
`signal processor. (Lavian, ¶¶ 24–26, 79–80.) This is confirmed
`by Gatherer, which explains that “[p]rogrammable digital signal
`processors (DSPs) are pervasive in the wireless handset market
`for digital cellular telephony.” (Gatherer, at p. 84, left column.)
`Gatherer identifies a number of cell phone functions that could
`be performed by a DSP, including basic phone functions such as
`voice coding. (Id., at p. 84, right column; id., p. 85, Figs 1 & 2
`(listing a number of typical DSP functions including vocoding,
`speech
`coding, noise
`suppression,
`echo
`cancellation,
`
`15
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`IPR2017-00602
`Patent 9,219,810 B2
`
`
`demodulating, etc.).) Gatherer therefore discloses a cell phone
`including a DSP.
`Id. at 22 (emphasis omitted) (citing Ex. 1002 ¶¶ 24–26, 79–80; Ex. 1005, 4–
`5).
`
`Petitioner provides evidence supporting a number of rationales for
`suggesting a DSP and its functions as a substitute for the more generic
`processor and its functions as disclosed by Yukie, including flexibility in
`programming, cost, commercial availability, and ability to respond to
`evolving standards for a variety of applications, including MP3 and video
`decompression. See id. at 23–24 (citing Ex. 1002 ¶¶ 83–86; Ex. 1005, 4–6).
`Petitioner adds “like Yukie, Gatherer recognized that cell phones can be
`used to download data files,” and artisans of ordinary skill would have
`recognized “that the two references pertain to the same technology and are
`readily combinable.” Id. at 24–25 (citing Ex. 1002 ¶ 82; quoting Ex. 1005, 9
`(“Audio and visual entertainment could be delivered wirelessly to mobile
`subscribers.”)).
`Claim 1 also recites “configured for the handling of digital media
`transmitted by orthogonal frequency-division multiplex modulation.” It also
`recites the following related OFDM clause: “providing for transmitting the
`data file to the wireless device using orthogonal frequency-division
`multiplex modulation based on the received request.” As indicated above,
`Petitioner provides evidence that Yukie discloses downloading decoded
`content including video data, audio data (including music data), and generic
`data, for playback and other uses on cellular device 10 from server 16. Id. at
`25–26 (citing Ex. 1004, 3:42–48, 7:14–20, 8:2–7, 8:49–56, 10:41–43,
`16:64–17:6). Petitioner also provides evidence that Yukie discloses that
`server 16 provides downloads of such data in response to a request from
`
`16
`
`
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`IPR2017-00602
`Patent 9,219,810 B2
`
`cellular device 10. See Pet. 46–47 (citing Ex. 1004, 7:14–17, 8:2–4, 8:49–
`52, 11:19–22, 17:48–53; Ex. 1002 ¶ 125).
`Petitioner identifies evidence indicating that Frodigh teaches using
`OFDM modulation to transmit voice and data to a mobile station in a
`cellular system. Pet. 26–27 (citing Ex. 1006, 1:62–63, 7:51–63, 8:10–14,
`8:33–63, Figs. 2, 3C; Ex. 1002 ¶ 90), 46–47 (citing Ex. 1002 ¶¶ 90–95, 110,
`125–126; Ex. 1006, 7:53–57). Petitioner provides a number of rationales for
`employing OFDM modulation, including that known “telecom
`heavyweights” had been using and developing it for commercial purposes,
`and citing efficient use of bandwidth, reduction of multipath interference,
`and reduction of intersymbol interference. See Pet. 27–28 (citing Ex. 1002
`¶¶ 35–37, 94–95; Ex. 1006, 2:38–60). Petitioner also provides persuasive
`rationale supporting its assertion that based on the teachings of the
`references the ordinary artisan would have modified Yukie’s cellular
`telephone to include a DSP and receiver configured for OFDM transmission.
`See Pet. 22–35 (citations omitted).
`
`
`For example, Petitioner identifies evidence indicating that Yukie,
`Frodigh, and Gatherer all relate to delivering data to a cellular phone. Id. at
`22, 26–27, 32–33 (citing Ex. 1002 ¶¶ 86, 102–106; Ex. 1005, 4, 5, 9), 46–47
`(citing Ex. 1006, 7:53–57, Fig. 2); see also Ex. 1006, 1:13–29, 59–66, 2:38–
`50 (describing cellular systems with mobile stations implementing OFDM).
`Petitioner also identifies evidence indicating that DSPs were known to
`provide flexibility and processing power to handle technology improvements
`with respect to all manner of digital signal modulation types, including
`OFDM modulation, thereby motivating a person of ordinary skill in the art
`to implement the cell phone and media player of Yukie using such a DSP.
`
`17
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`IPR2017-00602
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`Pet. 32–35 (citing Ex. 1002 ¶¶ 33–37, 87–90, 101, 103–107; Ex. 1005, 4–6;
`Ex. 1015, 761; Ex. 1016, 4:26–4:44).
`
`Claim 1 also recites “storing the data file received from the wireless
`device in the user’s virtual storage locker on the the [sic] one
`or more servers.” Petitioner provides evidence that Yukie and/or Prust teach
`or suggest the limitation. See Pet. 39–45. For example, Petitioner states
`Figure 6 of Prust “shows a web browser embodiment in which ‘the user can
`browse the directories within virtual storage area 225 and can perform many
`common file management operations including uploading, downloading and
`deleting files, as well as creating and removing directories.’” Id. at 42
`(emphasis omitted) (quoting Ex. 1013, 7:3–6). Petitioner also points out
`“Yukie discloses that data server 16 may be ‘a personal server of the user for
`storing a user’s personal data files,’ and ‘can be secure, such as by using
`encryption and/or password access, to protect the user’s data.’” Id. at 43
`(quoting Ex. 1004, 4:1–4); Ex. 1004, Fig. 2 (local storage 32), 10:64–11:29
`(providing audio and other files from and to local storage 32 to and from
`server 16). Petitioner provides persuasive reasons for combining the
`teachings to support its challenge, including allowing several users to store
`files on data server 16 while maintaining security and privacy of a personal
`server for specific users. See Pet. 43–44 (citing Ex. 1002 ¶¶ 119–120).
`
`As summarized above, Petitioner sets forth a detailed and persuasive
`analysis addressing the remaining limitations of claim 1. See Pet. 19–47. In
`addition, Petitioner articulates reasons supporting its challenge with factual
`underpinnings, based on the combination of teachings, addressing
`challenged claim 1 as a whole. See id.
`
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`
`3. Petitioner’s Showing, Claims 2–4, 6, and 7
`Dependent claims 2–4, 6, and 7 add features of known cellular
`systems. For example, claim 2 recites “further providing for selection of the
`data file from a library associated with the virtual storage locker for
`transmission to the wireless device.” Claim 3 recites “wherein the wireless
`device is a cellular phone.” Claim 4 recites “further comprising storing at
`least a portion of the data on the cellular phone.” Claim 6 requires
`transmission of the data file “to a device other than the wireless device.”
`Claim 7 recites “receiving the request for the data file comprises receiving
`the request from a device other than the wireless device.”
`Relying partly on the testimony of Dr. Lavian, Petitioner shows
`persuasively that Yukie, or Yukie and Prust, teach these added features using
`known cell phone features, including known base station and library data file
`storage functionality, such that the cited prior art would have rendered the
`claims obvious as a whole. See Pet. 47–54. Petitioner articulates reasons
`supporting its challenge with factual underpinnings, based on the
`combination of teachings. See id.
`4. Analysis of Parties’ Positions, Claims 1–4, 6, and 7
`In response to the Petition and Institution Decision, Patent Owner
`focuses on claim 1. See PO Resp. 23–30. Patent Owner does not provide
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