Trials@uspto.gov
`571–272–7822
`
`
`
`
`Paper 21
`Entered: July 19, 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 IPR2017-00687
`Patent 9,215,310 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 21
`Entered: July 19, 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 IPR2017-00687
`Patent 9,215,310 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
`
`
`
`
`
`
`
`
`IPR2017-00687
`Patent 9,215,310 B2
`
`
`I. INTRODUCTION
`Facebook, Inc. and Instagram LLC (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting an inter partes review of claims 1–3 and 5–13 of
`U.S. Patent No. 9,215,310 B2 (Ex. 1001, “the ’310 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, 3, 5–10, 12, and 13 of the ’310 patent (“the
`challenged claims”) 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 3); and, claim 9 on alternative grounds
`based on each of those two grounds further in view of Chan (grounds 2 and
`4). See Inst. Dec. 30.1
`A table of references and evidence relied upon in the Petition follows:
`Reference or Declaration
`Exhibit No.
`Declaration of Tal Lavian, Ph.D. (“Lavian Declaration”)
`Ex. 1002
`Pinard et al., U.S. Patent No. 5,815,811 (filed Oct. 27, 1995,
`Ex. 1003
`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”)
`
`Ex. 1004
`
`Ex. 1005
`
`
`1 Prior to its Preliminary Response, Patent Owner filed a statutory disclaimer
`disclaiming claim 2 and 11 of the ’310 patent. Prelim. Resp. 6.
`Accordingly, we did not institute on claims 2 and 11. 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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`Ex. 1006
`
`Ex. 1013
`
`Ex. 1060
`
`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”)
`Terrence Chan, UNIX SYSTEM PROGRAMMING USING C++
`(1997) (“Chan”)
`See Inst. Dec. 4; Pet. 3, 9–15.
`After institution, Patent Owner filed a Response (Paper 12, “PO
`Resp.”), and Petitioner filed a Reply (Paper 17, “Pet. Reply”). The parties
`did not request 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, 3, 5–10, 12, and 13 of the ’310 patent are
`unpatentable.
`
`Ex. 1061
`
`Ex. 1069
`
`A. Related Proceedings
`The parties indicate that the following district court case involves the
`’310 patent: Skky, LLC v. Facebook, Inc., No. 16-cv-00094 (D. Minn., filed
`Jan. 15, 2016). Pet. 1; Paper 3, 2–3. 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
`
`3
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`IPR2017-00687
`Patent 9,215,310 B2
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`
`U.S. Patent No. 9,219,810
`IPR2017-00602
`U.S. Patent No. 9,037,502
`CBM2016-00091
`U.S. Patent No. 9,203,870
`CBM2017-00002
`U.S. Patent No. 9,219,810
`CBM2017-00003
`U.S. Patent No. 9,215,310
`CBM2017-00006
`U.S. Patent No. 9,203,956
`CBM2017-00007
`See Paper 3, 2–3. 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 ’310 Patent
`The ’310 patent discloses delivering audio or visual files, which may
`represent songs, films, or other recordings, from one or more servers
`wirelessly to an electronic device. Ex. 1001, [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.
`
`
`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).
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`
`C. Illustrative Claims
`Independent challenged claim 1, from which challenged claims 3 and
`
`5–9 depend, follows:
`1. A method for wirelessly transmitting over a cellular network
`a data file between a cellular phone and a server, the server
`comprising a non-transitory virtual storage locker, the method
`comprising:
`
`creating the virtual storage locker associated with the
`cellular phone;
`
`receiving a data file from the cellular phone, said cellular
`phone including a receiver and a digital signal processor
`configured for receiving and processing data files transmitted by
`orthogonal frequency-division multiplex modulation;
`
`storing, in the virtual storage locker, the data file received
`from the cellular phone;
`
`receiving a request for the data file;
`
`and providing for the transmission of the data file to the
`cellular phone using orthogonal frequency-division multiplex
`(OFDM) modulation in response to the received request from the
`cellular phone.
`Ex. 1001, 32:62–33:12.
`
`Independent challenged claim 10, from which challenged claims 12
`
`and 13 depend, tracks claim 1 with similar limitations, as follows:
`10. A system for wirelessly transmitting a digital data file to a
`cellular phone, the system comprising:
` a server including a non-transitory virtual storage locker
`configured to store a plurality of data files; and
` a cellular communication network operably coupling the
`server and the cellular phone, said cellular phone including a
`receiver and a digital signal processor configured for receiving
`and processing files transmitted by orthogonal frequency-
`division multiplex modulation wherein the server is configured
`to:
` create the virtual storage locker associated with the cellular
`phone;
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`5
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` receive a data file from the cellular phone over the
`communication network, store, in the virtual storage locker, the
`data file received from the cellular phone,
` receive a request for the data file over the cellular
`communication network, and
` providing for the transmission of the data file over the
`cellular communication network using orthogonal frequency-
`division multiplex modulation in response to the received
`request.
`Id. at 34:3–23.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1, 3, 5–8, 10, 12, and 13 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. Petitioner asserts that claim 9 is
`unpatentable under 35 U.S.C. § 103(a) based on the following alternative
`grounds: 1) Yukie, Gatherer, Prust, Frodigh, and Chan; and 2) Yukie,
`Gatherer, Prust, O’Hara, Tagg, Pinard, and Chan. Id.
`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
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`’310 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,
`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”/ “cellular communication
`network,” “virtual storage locker,” and “processing” follow. No other 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.”).
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`
`1. “cellular network”/“cellular communication network”
`The preamble of claim 1 recites “[a] method for wirelessly
`transmitting over a cellular network a data file between a cellular phone and
`a server.” Claim 10, a system claim, recites “a cellular communication
`network operably coupling the server and the cellular phone.” The parties
`address “cellular network” and “cellular communication network” as
`meaning the same thing. See Pet. 6–7; PO Resp. 13.3
`Petitioner asserts that a “cellular network” and “cellular
`communication network” each is a “network in which wireless
`communications are provided through a series of ‘cells,’ each cell providing
`network access for a particular geographic area.” 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
`’310 patent neither defines nor limits the term. Id. at 6.
`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
`
`3 In other words, the parties appear to assume a “cellular network” as recited
`in the preamble of claim 1 carries weight. The Institution Decision proceeds
`under the same assumption. See Inst. Dec. 5–6. Absent input on the issue
`by the parties, and given our holding of unpatentability, no good reason
`exists to deviate from that assumption at this late stage of the trial.
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`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). The
`Petition and Dr. Lavian also cite to a host of dictionaries supporting his
`position. 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. at 12. 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 (emphasis
`omitted) (citing Ex. 1002 ¶ 63).
`As Petitioner argues, the ’310 patent does not specify that a cellular
`network excludes a 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 ’310 patent or any evidence), 32 (equating Wi-Fi and “short-range”
`wireless without specifically contending the ’310 patent excludes either one
`from being part of a cellular network)). Rather, the ’310 patent generally
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`describes extending the “playback capabilities of the present invention to
`existing landline and cellular telephones.” Ex. 1001, 2:54–55. 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 technology: “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 14:28–16:29), consistent with the ’310 patent’s focus on ring
`tones. The specification addresses details for OFDM transmission of data
`over the audio channel of a wireless landline phone. Id. at 16:29–62
`(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;
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`10
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`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 ’310 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. See Paulsen, 30 F.3d at 1480 (“Here, the specification . . . does
`not clearly redefine the term ‘computer’ such that one of ordinary skill in the
`art would deem it to be different from its common meaning.”).
`As the Petition points out, claim 10 in a related patent bearing a
`common specification with the ’310 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 U.S. 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.
`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
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`term “cellular network.” Petitioner also shows the ’310 patent does not
`define the term “or limit the term to a particular technology.” Pet. 6.
`Accordingly, based on the respective positions of the parties and a
`review of the record, 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.”4 See Pet. 6–7.
`2. “virtual storage locker”
`The preamble of claim 1 recites “the server comprising a non-
`transitory virtual storage locker.” The body of claim 10 recites “a server
`including a non-transitory virtual storage locker configured to store a
`plurality of data files.” 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 ’310 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. As
`Petitioner also argues, the “specification does not use the term ‘virtual
`storage locker’ or provide a definition.” Pet. 8.
`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).
`Patent Owner does not provide any further explanation as to how to construe
`a “virtual storage locker.” Id.
`
`
`4 The claim construction of a “cellular network” only arises tangentially with
`respect to one of the grounds discussed below. See infra Section D.
`
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`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 server comprising a non-
`transitory virtual storage locker” (emphasis added), and claim 10 recites a
`similar limitation, whereas described chip 104 attaches to telephone 102.
`See id. at 12:33–41. Accordingly, the ’310 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, based on the respective positions of the parties and a
`review of the record, a “virtual storage locker” is a “storage area associated
`with a user.”
`3. “processing”
`Claims 1 and 10 recite “a digital signal processor configured for
`receiving and processing data files transmitted by orthogonal frequency-
`division multiplex modulation.”
`Patent Owner requests that the Board construe the claim term
`“processing” as “preparing a digital audio and/or visual file for storage in
`memory and playback.” PO Resp. 14. In the Institution Decision, we
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`determined the term “processing” does not require an express construction.
`See Inst. Dec. 5–7. Patent Owner presents the same arguments in its
`Response that we considered in the Preliminary Response. Compare PO
`Resp. 14–16, with Prelim. Resp. 8–10.
`For example, Patent Owner cites a disclosed sound clip example to
`support its construction of “processing.” PO Resp. 15 (citing Ex. 1001,
`18:45–49). Patent Owner also cites extrinsic evidence as supporting it and
`showing “[a]t the time of invention, it was common to transfer digital data
`on the Internet using TCP/IP.” Id. at 15 (citing Ex. 2003, 16 (“Transmission
`Control Protocol/Internet Protocol (TCP/IP) is a suite of protocols that
`enable networks to be interconnected. TCP/IP forms the basic foundation of
`the Internet.”)).
`Contrary to the proposed construction, challenged claims 1 and 10 do
`not specify processing audio or visual files in particular, let alone any
`requirement for either storage or playback of audio or visual files.
`“[A]lthough the specifications may well indicate that certain embodiments
`are preferred, particular embodiments appearing in a specification will not
`be read into the claims when the claim language is broader than such
`embodiments.” Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34
`F.3d 1048, 1054 (Fed. Cir. 1994). Accordingly, the record does not indicate
`that “processing” must be limited as argued by Patent Owner, even if a
`certain embodiment discloses certain features and processing covers those
`features.5 Also, Patent Owner does not explain how or why the use of
`
`
`5 Construing “processing” as recited in similar claims of related patents
`having a common disclosure with the ’310 patent, other PTAB panels
`consistently have indicated what the claim may include without construing
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`TCP/IP, and other extrinsic evidence cited, relates to the ordinary meaning
`of processing in the context of the specification, the claims, and Patent
`Owner’s proposed construction. See PO Resp. 14–16.
`As Petitioner persuasively argues, Patent Owner’s proposed
`construction would exclude other examples of processing in the ’310 patent
`specification. See Reply Br. 9–10 & n.3 (citing Ex. 1001, 14:8–61
`(processor performs all manner of tasks)); Ex. 1001, 14:51–53 (“[P]rocessor
`300 executes the device firmware, provides control for all other blocks and
`performs the computational tasks for the board 203.”), 14:53–63 (listing
`myriad processing functions, including, in general, “performance of other
`auxiliary functions”). Accordingly, the ’310 specification verifies that the
`ordinary meaning of the term “processing” includes many cell phone
`functions.6
`C. Obviousness of Claims 1, 3, 5–8, and 10, 12, and 13 over
`Yukie, Gatherer, Prust, and Frodigh, Ground 1
`Petitioner argues that claims 1, 3, 5–8, 10, 12, and 13 would have
`been obvious over Yukie, Gatherer, Prust, and Frodigh pursuant to ground 1.
`See Pet. 3. For the reasons discussed below, Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that claims 1, 3, 5–8, 10, 12,
`and 13 would have been obvious over Yukie, Gatherer, Prust, and Frodigh.
`
`
`the term explicitly. See, e.g., Facebook, Inc. v. Skky, LLC, Case IPR2017-
`00602, slip op. at 7 (PTAB April 25, 2018) (“‘processing’ include[s]
`preparing a digital audio and/or visual file for storage in memory and
`playback,” “may include other functions,” and “further construction of the
`term ‘processing’ is not necessary”) (Paper 29).
`6 As discussed further below, Petitioner also persuasively contends that the
`prior art teaches “processing” even under Patent Owner’s narrow
`construction. See Pet. Reply 10.
`
`15
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`IPR2017-00687
`Patent 9,215,310 B2
`
`
`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
`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
`
`16
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`IPR2017-00687
`Patent 9,215,310 B2
`
`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, 4.7
`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.
`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
`
`7 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.
`
`17
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`IPR2017-00687
`Patent 9,215,310 B2
`
`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 Initial Showing
`The preamble of claim 1 recites “[a] method for wirelessly
`transmitting over a cellular network a data file between a cellular phone and
`a server, the server comprising a non-transitory virtual storage locker.”
`Claim 1 also recites “creating the virtual storage locker associated with the
`cellular phone” and “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 telephonically enabled personal digital assistant (PDA). Pet. 16
`(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 cellular device 10 sending
`different types of data to data server 16 for storage and later access by user
`device 10. Id. at 30 (citing Ex. 1004, 2:31–41, 4:23–26). For example,
`Petitioner identifies uploading and downloading audio and other file data
`types for storage at server 16. See id. at 16 (citing Ex. 1004, 11:16–22). As
`Petitioner shows, Yukie’s cellular device 10 performs various functions,
`
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`IPR2017-00687
`Patent 9,215,310 B2
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`including storing and accessing different data on server 16, via a wireless
`cell network, including audio, video, and a combination of audio with video.
`See Ex. 1004, 10:64–11:30, Figs. 1, 2; Pet. 16, 30.
`Regarding the non-transitory virtual storage locker limitations,
`Petitioner provides evidence that Yukie and/or Prust teach or suggest the
`limitation. Pet. 20–29 (citations omitted). Petitioner 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 20–21 (quoting
`Ex. 1004, 4:1–4). 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 22 (quoting Ex. 1013, 7:3–6,
`citing Ex. 1002 ¶ 87).
`Petitioner provides persuasive reasons for combining Prust with Yukie
`to support its challenge, including allowing several users to store files on
`data server 16 while maintaining security and privacy of a personal server.
`See id. at 23–24 (citing Ex. 1002 ¶¶ 91–92; Ex. 1004, 4:1–4, 10. 50–51,
`20:54–56; Ex. 1013, 1:20–22, 6:58–60).
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