Trials@uspto.gov
`571–272–7822
`
`
`
`
`Paper 9
`Entered: July 13, 2017
`
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571–272–7822
`
`
`
`
`Paper 9
`Entered: July 13, 2017
`
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-00602
`Patent 9,219,810 B2
`
`
`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. Prior to its Preliminary response, Patent Owner filed a disclaimer
`
`disclaiming claim 5 of the ’810 patent. Id. at 4. Pursuant to the disclaimer,
`
`claim 5 will not be considered in this proceeding. See 37 C.F.R. § 42.107
`
`(“No inter partes review will be instituted based on disclaimed claims.”).
`
`An inter partes review may not be instituted “unless . . . there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the
`
`reasons set forth below, Petitioner demonstrates a reasonable likelihood of
`
`prevailing in showing the unpatentability of claims 1–4, 6, and 7 of the ’810
`
`patent. Accordingly, we institute an inter partes review as to claims 1–4, 6,
`
`and 7 of the ’810 patent on the grounds specified below.
`
`A. Related Proceedings
`
`The parties indicate that the assertion of the ’810 patent in the
`
`following district court case: Skky, LLC v. Facebook, Inc., No. 16-cv-00094
`
`(D. Minn.) (filed Jan. 15, 2016). Pet. 1; Paper 4, 2. The parties also indicate
`
`that the several PTAB proceedings, including inter partes reviews and
`
`covered business method reviews, relate to the instant case. See Pet. 1–2;
`
`Paper 4, 2–3. Additionally, in Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d
`
`1014 (Fed. Cir. 2017), the Federal Circuit affirmed the Board’s final written
`
`decision in IPR2014-01236 determining that certain claims of U.S. Patent
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`2
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`IPR2017-00602
`Patent 9,219,810 B2
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`7,548,875, to which the’810 patent claims priority, were unpatentable as
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`obvious.
`
`B. The ’810 Patent
`
`The ’810 patent describes delivering audio and/or visual files to an
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`electronic device. Ex. 1001, Abstract, 1:19–21. Specifically, the ’810 patent
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`discloses delivering the audio or visual files, such as songs or films, from
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`one or more servers to the electronic device. Id. at Abstract. The system
`
`transmits the files in a compressed format, and the electronic device receives
`
`and plays the files on demand by a user. Id. The system employs an
`
`orthogonal frequency-division multiplex (“OFDM”) modulation technique
`
`to download the files. Id. at 16:57–17:40.
`
`C. Illustrative Claim
`
`
`
`Independent claim 1, from which claims 2–4, 6, and 7 depend, recites
`
`as 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;
`
`storing the data file received from the wireless device in
`the user's virtual storage locker on the 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.
`
`
`
`3
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`IPR2017-00602
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`D. Evidence of Record
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`Petitioner relies on the following references and declaration (Pet. 3):
`
`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, U.S. Patent No. 6,956,833 B1 (filed April 4, 2000,
`issued Oct. 18, 2005) (“Yukie”)
`Alan 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”)
`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”)
`
`E. Asserted Grounds of Unpatentability
`
`Exhibit No.
`Ex. 1002
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1013
`
`Ex. 1060
`
`Ex. 1061
`
`Petitioner asserts that claims 1–4, 6, and 7 are unpatentable under
`
`35 U.S.C. § 103(a) based on the following alternative grounds: 1) Yukie,
`
`Gatherer, Prust, and Frodigh; and 2) Yukie, Gatherer, Prust, O’Hara, Tagg,
`
`and Pinard. Pet. 3.
`
`II. ANALYSIS
`
`A. 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. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
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`136 S. Ct. 2131, 2144–45 (2016). Petitioner submits constructions for two
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`claim terms recited in claim 1, “cellular network” and “virtual storage
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`locker.” Pet. 4. Patent Owner contends Petitioner’s constructions are
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`“unreasonably broad.” Prelim. Resp. 6. Nevertheless, Patent Owner does
`
`not provide an express construction for the terms. Id. at 6–7.
`
`On this record and for purposes of this decision, no claim terms
`
`require express construction to resolve the parties’ disputes regarding the
`
`asserted grounds of unpatentability. 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.”).
`
`B. Asserted Grounds of Unpatentability
`
`1. Obviousness of Claims 1–4, 6, and 7 over
`Yukie, Gatherer, Prust, and Frodigh
`
`Petitioner argues that claims 1–4, 6, and 7 would have been obvious
`
`over Yukie, Gatherer, Prust, and Frodigh. Pet. 3. For the reasons discussed
`
`below, Petitioner demonstrates a reasonable likelihood of prevailing in
`
`showing that claims 1–4, 6, and 7 would have been obvious over Yukie,
`
`Gatherer, Prust, and Frodigh.
`
`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 device that
`
`may include a “cellular phone,” or 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 wireless
`
`device 10 sending 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–
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`5
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`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 telephonic device 10, including storing and accessing
`
`different data on server 16, including data downloaded from the Internet,
`
`audio, video, and a combination of audio with video over IP. See Ex. 1004,
`
`10:64–11:30.
`
`Claim 1 recites “the wireless device including a digital signal
`
`processor and a receiver.” Petitioner relies on Yukie’s disclosure of cellular
`
`phone device 10, as a transmitter, receiver, and transceiver, and a processor
`
`and memory executing software, but acknowledges “Yukie does not
`
`expressly disclose that the cell phone includes a ‘digital signal processor.’”
`
`Id. at 21–22 (citing Ex. 1004, 5:9–12, 10:41–49, Fig. 1) (emphasis omitted).
`
`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,
`demodulating, etc.).) Gatherer therefore discloses a cell phone
`including a DSP.
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`6
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`Id. at 22 (citing Ex. 1002 ¶¶ 24–26, 79–80); Ex. 1005, 4–5).1
`
`Petitioner provides evidence supporting a number of rationales for
`
`suggesting the use of a DSP as a substitute for the more generic processor
`
`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
`
`(quoting Ex. 1005, 9 (“Audio and visual entertainment could be delivered
`
`wirelessly to mobile subscribers.”); citing Ex. 1002 ¶ 82).
`
`Claim 1 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 phone and user 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
`
`
`1 Page number citations herein refer to page numbers provided by Petitioner
`on the bottom of the pages of Exhibit 1005 (Gatherer). Petitioner, however,
`cites to original page numbers in the document. In future papers, the parties
`must cite to the former.
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`7
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`discloses that user device 10 downloads such data in response to a request
`
`from user 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 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, 1006,
`
`7:53–57). Petitioner provides a number of rationales for employing OFDM,
`
`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
`
`challenge that the combination would have rendered obvious a modification
`
`of 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 have
`
`provided flexibility and processing power to handle technology
`
`improvements, including with respect to all manner of digital signals,
`
`including OFDM, thereby motivating a person of ordinary skill in the art to
`
`8
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`implement the cell phone and media player of Yukie using such a DSP. Pet.
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`32–35 (citing Ex. 1002 ¶¶ 33–37, 87–90, 101, 103–107; Ex. 1005, 4–6).
`
`
`
`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
`
`(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). 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 id. at 43–44 (citing Ex. 1002 ¶¶ 119–120).
`
`
`
`Petitioner also sets forth a detailed and persuasive analysis addressing
`
`the remaining limitations of claim 1 and dependent claims 2–4, 6, and 7. See
`
`Pet. 19–54. In addition, Petitioner articulates reasons supporting its
`
`challenge, based on the combination of teachings, addressing the challenged
`
`claims as a whole. See id.
`
`On this limited record, dependent claims 2–4, 6, and 7 appear to add
`
`features of known cellular systems. For example, claim 3 recites “wherein
`
`the wireless device is a cellular phone,” and claim 4 recites “further
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`comprising storing at least a portion of the data on the cellular phone.”
`
`Petitioner sufficiently shows Yukie discloses these added features and that
`
`the cited prior art would have rendered the claims obvious as a whole,
`
`including in its showing related to claim 1. See Pet. 47–54.
`
`In response, Patent Owner focuses on claim 1. See Prelim. Resp. 18–
`
`23. Patent Owner does not provide separate arguments related to
`
`Petitioner’s showing with respect to dependent claims 2–4, 6, and 7. Id. at
`
`23.
`
`Addressing claim 1, Patent Owner responds that Petitioner has not
`
`shown sufficiently that the cellular phone in Yukie includes a DSP (id. at
`
`18–19) configured for processing files via OFDM (id. at 20–23). Patent
`
`Owner’s arguments are not persuasive on this limited record for several
`
`reasons, including that the arguments assert bodily incorporation as a
`
`requirement for obviousness and address the references individually, instead
`
`of addressing what the combined teachings cited by Petitioner fairly suggest.
`
`See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-
`
`obviousness by attacking references individually where, as here, the
`
`rejections are based on combinations of references.”).
`
`As discussed above, Petitioner identifies evidence indicating that
`
`Gatherer discloses or suggests using a DSP in a cellular phone like that of
`
`Yukie. Patent Owner acknowledges that Gatherer states “[p]rogrammable
`
`digital signal processors [] are pervasive in the wireless handset market for
`
`digital cellular telephony.” Prelim. Resp. 19 (quoting Ex. 1005, Abstract).
`
`Patent Owner contends, however, that “Gatherer does not explain the
`
`relationship between a digital signal processor and the remaining parts of the
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`cell phone, or how a digital signal processor would be integrated into the
`
`‘user device’ disclosed by Yukie.” Prelim. Resp. 19.
`
`These arguments by Patent Owner also are not persuasive on this
`
`limited record. The challenged claims do not require integration of the DSP
`
`into the user’s wireless device in any particular manner or with respect to
`
`any specific user device elements. In any event, Petitioner proposes
`
`Gatherer’s explicit DSP as a substitute for Yukie’s generic “processor,” each
`
`of which control similar functions of a cell phone. See Pet. 21–22, 32–35.
`
`Gatherer discloses a functional block diagram of a cellular phone (Fig. 1),
`
`with a DSP at least controlling baseband functions, and states “[a]s DSPs
`
`became more powerful, they started to take on other physical layer 1 tasks,”
`
`and “mission creep” occurred as designers began using DSPs for a variety of
`
`functions. Ex. 1005, 4–5, Figs. 1 and 2. Petitioner identifies several
`
`programmable “basic phone functions,” including voice coding, as pervasive
`
`for being performed by a DSP. See Pet. 22 (citing Ex. 1005, 84–85, Figs. 1
`
`& 2). In other words, Gatherer and Yukie indicate that artisans of ordinary
`
`skill used processors and/or DSPs in cellular phones for performing a wide
`
`variety of basic tasks well-known in the industry, with DSPs providing
`
`flexibility. See Ex. 1005, 4–5; Ex. 1004, 5:9–12, Fig. 2; Ex. 1002 ¶¶ 24–26,
`
`79–80.
`
`Patent Owner also contends “Yukie does not disclose files transmitted
`
`by OFDM” and “Frodigh does not teach a system for requesting and
`
`transmitting audio and audio-visual data files.” Prelim. Resp. 20. Patent
`
`Owner also argues “no . . . motivation exists” to combine the teachings,
`
`because the references teach different modulation schemes. See id. at 20–
`
`21.
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`Patent Owner’s arguments are not persuasive on this limited record,
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`because, as noted above, they primarily address the references individually.
`
`See Keller, 642 F.2d at 426. As also discussed above, Petitioner identifies
`
`evidence indicating that Yukie teaches requesting different types of data,
`
`including audio and video files, from a database using a cellular phone (Pet.
`
`19–20, 25–26 (citing Ex. 1004, 3:42–48, 6:27–34, 7:14–20, 8:2–7, 8:49–56,
`
`10:41–43, 11:16–22, 16:64–17:6)), and that Frodigh teaches using OFDM
`
`advantageously (e.g., to provide bandwidth efficiency and minimize
`
`interference) in order to transmit data to a cellular phone (Pet. 26–28 (citing
`
`1006, 1:59–2:18, 2:38–60, 7:51–63, 8:1–9; Ex. 1001 ¶¶ 22, 33, 91, 94, 95)).
`
`
`
`With further respect to the modulation types disclosed by the
`
`references, Patent Owner contends that it would not have been obvious to
`
`combine the cited teachings in Yukie and Frodigh because Yukie relates to a
`
`3G network that uses Space Division Multiple Access (“SDMA”), instead of
`
`OFDM. Prelim. Resp. 20–23. Patent Owner points out that the Special
`
`Mobile Group (“SMG”) of the European Telecommunications Standards
`
`Institute (“ETSI”) chose CDMA over OFDM for use in the 3G standard. Id.
`
`at 21–22 (citing Ex. 2003, 23–25; Ex. 2004, 2, 4).
`
`On this limited record, Patent Owner’s arguments are not persuasive.
`
`Yukie generally states that the invention “pertains generally to data storage
`
`methods . . . that provide for remote storage and retrieval of data that would
`
`otherwise be provided locally.” Ex. 1004, 2:7–11. Yukie discloses using
`
`wireless telephone networks for such data retrieval (id. at 1:29–67) and
`
`states “[t]hose skilled in the art will appreciate that the wireless connection
`
`between user device 10 and base station 14 can be implemented in a variety
`
`of ways.” Id. at 5:14–16. Although, Yukie lists SDMA as a “preferred
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`form” of modulation, Yukie generally discloses “other forms of packet-
`
`based protocols.” See id. at 5:29–31.
`
`Hence, contrary to Patent Owner’s arguments, on this preliminary
`
`record, Yukie does not suggest limiting its invention to a 3G network or
`
`SDMA. Further, the evidence cited by Patent Owner regarding the SMG’s
`
`decision to use CDMA in the 3G standard indicates that skilled artisans
`
`would have recognized both advantages and drawbacks to OFDM (Ex. 2004,
`
`1–2) and CDMA (id. at 3–4). As such, the preliminary record does not show
`
`that a person of ordinary skill in the art reading the cited SMG documents
`
`would have been discouraged from using OFDM with a cellular system like
`
`that of Yukie, where Frodigh lists several advantages of using OFDM as
`
`noted above. On this preliminary record, Petitioner has shown sufficiently
`
`that a person of ordinary skill in the art would have had persuasive reasons
`
`to combine the cited teachings in Yukie and Frodigh.
`
`Patent Owner also contends generally that it would not have been
`
`obvious to combine the “disparate” teachings in Yukie, Gatherer, Prust and
`
`Frodigh. See Prelim. Resp. 16. Similar to some of Patent Owner’s
`
`arguments outlined above, the arguments attack the references individually,
`
`and assume obviousness requires bodily incorporation. See id. On this
`
`preliminary record, Patent Owner’s arguments are not persuasive.
`
`Petitioner’s proposed combination does not rely on bodily incorporating
`
`features from the cited references into Yukie’s cell phone, but rather on
`
`applying known modulation techniques, such as OFDM, and using known
`
`devices, such as DSPs, memory, and transceivers, for their known purposes,
`
`including for the transfer of data, in the cellular technology field. On this
`
`preliminary record, Petitioner has shown sufficiently that a person of
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`IPR2017-00602
`Patent 9,219,810 B2
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`ordinary skill in the art would have had valid reasons to combine the cited
`
`teachings of Gatherer, Prust, and Frodigh, with Yukie.
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`For the foregoing reasons, Petitioner demonstrates a reasonable
`
`likelihood of prevailing in showing that claims 1–4, 6, and 7 would have
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`been obvious over Yukie, Gatherer, Prust, and Frodigh.
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`2. Obviousness of Claims 1–4, 6, and 7 over
`Yukie, Gatherer, Prust, O’Hara, Tagg, and Pinard
`
`Petitioner argues that claims 1–4, 6, and 7 would have been obvious
`
`over Yukie, Gatherer, Prust, O’Hara, Tagg, and Pinard. Pet. 3. According
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`to Petitioner, this alternative ground “substitutes O’Hara, Tagg and Pinard in
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`place of Frodigh” with respect to the OFDM and cellular network limitations
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`recited in claim 1. See Pet. 55. With respect to all other limitations of
`
`claims 1–4, 6, and 7, according to Petitioner, the mapping provided in the
`
`first ground “remains applicable” to the alternative ground. See id.
`
`Petitioner contends the alternative ground (or “Ground 2”)
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`cites O’Hara, Tagg, and Pinard for three propositions: that (1)
`prior art IEEE 802.11a wireless networking transmits digital
`information to mobile devices using OFDM (O’Hara), that (2)
`IEEE 802.11 wireless networking functionality could have been
`incorporated into a cell phone (Tagg), and that (3) a “cellular
`network” could have been built based on IEEE 802.11 wireless
`access points (Pinard). It therefore would have been obvious, as
`shown below, to adapt the user device 10 of Yukie to transmit
`and receive digital files using OFDM through the use of IEEE
`802.11a wireless networking.
`
`
`Pet. 57 (citing Ex. 1001 ¶¶ 148–168, Ex. 1003 (Pinard), Ex. 1060 (Tagg),
`
`Ex. 1061 (O’Hara)).
`
`Petitioner relies on O’Hara for its explicit OFDM teachings: “O’Hara
`
`clearly confirms that the IEEE 802.11a variant of IEEE 802.11 uses OFDM
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`14
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`to wirelessly transmit data,” and O’Hara discloses using OFDM on mobile
`
`devices. See Pet. 57–58 (citing Ex. 1061, 33, 37, 38); Ex. 1061, 11
`
`(describing “two major components of the WLAN described by IEEE
`
`802.11, the mobile station and the access point (AP)”).2 Petitioner similarly
`
`cites O’Hara to show “it was well-known and understood that IEEE 802.11a,
`
`one of the two variants of IEEE 802.11 introduced in the late 1990s, used
`
`OFDM.” Pet. 66 (citing Ex. 1002 ¶¶ 166–167; Ex. 1061, 33).
`
`Petitioner relies on Tagg to provide evidence that mobile devices
`
`employ digital data transmission over a cellular network using the IEEE
`
`802.11 standard. See Pet. 60–61 (citing Ex. 1060, 5:22, 5:27–29, 11:67–
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`12:6). For example, the “Petition cites Tagg for the more straightforward
`
`proposition that a cell phone can incorporate IEEE 802.11 wireless
`
`networking, and can use that capability to receive data such as media files.”
`
`Id. at 61 (citing Ex. 1001 ¶¶ 61, 152–155).
`
`Regarding reasons to combine the reference teachings, according to
`
`Petitioner,
`
`[i]t would have been obvious to a person of ordinary skill
`in the art to combine Yukie with O’Hara, Tagg, and Pinard,
`predictably resulting in a user device 10 of Yukie configured to
`handle digital files transmitted over an IEEE 802.11a-based
`cellular network using OFDM modulation. . . . As noted
`previously, Pinard expressly confirms
`that a “cellular
`communications network” can be built from IEEE 802.11 access
`points. And Tagg, as noted, discloses the ability to incorporate
`IEEE 802.11 wireless networking technology into a wireless
`device such as a cell phone.
`
`
`2 Again, page citations herein refer to pages provided by Petitioner in
`Exhibit 1061. The parties should cite to these page numbers instead of
`original page numbers.
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`Id. at 63 (citing Ex. 1001 ¶ 160).
`
`Petitioner provides additional evidence of benefits associated with
`
`implementing IEEE 802.11 and using OFDM for cellular data transmission:
`
`speed, cost, and performance benefits. See Pet. 64–65 (citing Ex. 1001
`
`¶¶ 146, 164, 165; Ex. 1060, 5:31–33, 11:24–28; Ex. 1061, 33 (54 megabit
`
`data speed allowing for multimedia)); Ex. 1002 ¶¶ 61–62 (ability to hand off
`
`mobile device access at different access points); Ex. 1060, 5:27–33 (cost and
`
`speed), 11:24–46 (variable access points); Ex. 1061, 33 (describing vendor
`
`products starting to emerge with the standards). Like Frodigh, O’Hara
`
`discloses that OFDM overcomes intersymbol interference. Ex. 1061, 37
`
`(“Intersymbol interference is generally not a concern for lower speed carrier,
`
`however the subchannels may be subjected to frequency selective fading.
`
`Therefore, bit interleaving and, convolutional encoding is used to improve
`
`the bit error rate performance.”).
`
`
`
`Similar to its arguments presented with respect to the first ground,
`
`Patent Owner responds that OFDM had drawbacks, other groups advanced
`
`different cellular standards, and that combining OFDM would not have been
`
`obvious because Yukie relies on “a cellular standard,” “a wireless SDMA
`
`network, not OFDM.” Prelim. Resp. 25. Patent Owner also contends
`
`“O’Hara, Tagg, and Pinard . . . relate to [an] industry standard for short-
`
`range wireless working technology (or Wi-Fi) which is a non-cellular
`
`standard and is inapplicable to 3G. Thus, a person of ordinary skill would
`
`not be motivated to combine the two references.” Id.
`
`For reasons similar to those addressed above, these arguments largely
`
`attack the references individually in an unpersuasive fashion, and the
`
`evidence shows that the different schemes would have presented trade-offs
`
`16
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`for the skilled artisan to consider. Petitioner shows that Yukie generally
`
`discloses or suggests a cellular network, because Yukie discloses a base
`
`station and cellular phone embodiments. See Pet. 10–11 (citing Ex. 1004,
`
`10:41–43 (“cellular phone”), Fig. 1 (base station 14)), 36 (citing Ex. 1004,
`
`Fig. 1; Ex. 1002 ¶¶ 108–109), 64 (citing Ex. 1002 ¶ 162; Ex. 1004, Fig. 1
`
`(arguing “[o]ne of ordinary skill in the art would have found it obvious that
`
`base station 14 [of Yukie] could have been an IEEE 802.11 access point”)).
`
`Tagg similarly discloses a cell phone using the IEEE 802.11 standard as the
`
`basis for a “mobile network.” See Ex. 1060, 11:30–36. O’Hara discloses
`
`OFDM for mobile stations as part of the IEEE 802.11a standard to provide
`
`“data rates up to 54Mbps for WLAN networks where transmission of
`
`multimedia content is a consideration.” Ex. 1061, 11, 33.
`
`On this preliminary record, the cited references sufficiently suggest
`
`using OFDM modulation on a wireless local area network (WLAN), and for
`
`providing a connection to cellular networks, in order to transfer multimedia
`
`data files between an access point (and/or a server storing the data through
`
`the access point) and a wireless device/ cell phone. See Pet. 58–66. On this
`
`record, the challenged claims do not require OFDM modulation to be used
`
`throughout a whole cell system. Even if the challenged claims require
`
`relaying OFDM files throughout portions of a cellular system, the record
`
`shows that artisans of ordinary skill knew “OFDM[] is a particular method . .
`
`. that is particularly suited for cellular systems” as Frodigh evidences. See
`
`Ex. 1061, 6:61–63. Patent Owner acknowledges Yukie employs a “cellular
`
`standard.” Prelim. Resp. 25. On this limited record, the Petition sufficiently
`
`establishes that it would have been obvious to transfer media files using
`
`OFDM via WLANs or other networks, with further transfer to and from
`
`17
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`IPR2017-00602
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`cellular networks connected thereto, in order to gain access to other mobile
`
`users and obtain the benefits of access, speed, and cost associated with
`
`OFDM.
`
`In particular, claim 1 recites the “data file is routed through a cellular
`
`network,” but it does not appear to require that such routing must occur
`
`concurrently with OFDM modulation of the data file. Rather, claim 1 only
`
`explicitly requires using OFDM modulation to download the data file to the
`
`wireless device. See, e.g., Ex. 1001, 33:9–11 (last claim 1 clause reciting
`
`“providing for transmitting the data file to the wireless device using
`
`[OFDM] modulation based on the received request”). Tracking claim 1, the
`
`’810 patent describes a wide variety of applications for downloading data,
`
`including for “home phones, computers, pagers, doorbells, alarms, palm
`
`pilots, watches, clocks, PDAs etc.” Ex. 1001, 3:12–14.
`
`The Petition also presents persuasive extrinsic evidence, on this
`
`preliminary record, that the ordinary meaning of a cellular network includes
`
`a series of cells. See Pet. 6–7 (citing Ex 1002 ¶¶ 21, 63–63; Exs. 1055–59,
`
`1067–68). In summary, on this preliminary record, Petitioner sufficiently
`
`shows it would have been obvious to implement OFDM either to connect to,
`
`or within, cellular networks as suggested by the combination of Yukie,
`
`Gatherer, Prust, O’Hara, Tagg, and Pinard, in order to provide ready access
`
`points for connection to, and communication within, a variety of networks,
`
`including cellular networks, and to provide cost effective data speeds, low
`
`intersymbol interference, and other benefits, including multimedia
`
`transmission. See Pet. 65 (citing speed, cost, and improved network
`
`performance).
`
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`As indicated above, Petitioner relies on its showin
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