Trials@uspto.gov
`571–272–7822
`
`
`
`
`Paper 9
`Entered: July 26, 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 IPR2017-00687
`Patent 9,215,310 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 26, 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 IPR2017-00687
`Patent 9,215,310 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
`
`
`
`
`
`
`
`
`IPR2017-00687
`Patent 9,215,310 B2
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`
`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. Prior to its Preliminary response, Patent Owner filed a
`disclaimer disclaiming claims 2 and 11 of the ’310 patent. Id. at 6 (citing
`Ex. 2001). Pursuant to the disclaimer, originally challenged claims 2 and 11
`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, 3, 5–10, 12, and 13 of
`the ’310 patent. Accordingly, we institute an inter partes review as to
`claims 1, 3, 5–10, 12, and 13 of the ’310 patent on the grounds specified
`below.
`A. Related Proceedings
`The parties indicate that the ’310 patent is at issue 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 this 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
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`IPR2014-01236 determining that certain claims of U.S. Patent 7,548,875, to
`which the’810 patent claims priority, were unpatentable as obvious.
`B. The ’310 Patent
`The ’310 patent describes delivering audio and/or visual files to an
`electronic device. Ex. 1001, Abstract, 1:19–21. Specifically, the ’310 patent
`discloses delivering the audio or visual files, such as songs or films, from
`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 16:57–17:39.
`C. Illustrative Claim
`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.
`
`3
`
`
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`Ex. 1004
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`Independent challenged claim 10, from which challenged claims 12
`
`and 13 depend, is similar in scope.
`D. Evidence of Record
`Petitioner relies on the following references and declaration (Pet. 3):
`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”)
`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”)
`E. 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. Pet. 3.
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1013
`
`Ex. 1060
`
`Ex. 1061
`
`Ex. 1069
`
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`II. ANALYSIS
`
`A. Claim Construction
`The claims of an unexpired patent are interpreted 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,
`136 S. Ct. 2131, 2144–45 (2016). Petitioner submits constructions for
`“cellular network” as recited in claim 1, “cellular communication network”
`as recited in similar claim 10, and “virtual storage locker” as recited in
`claims 1 and 10. Pet. 6–8. Patent Owner contends, inter alia, Petitioner’s
`constructions are “unreasonably broad.” Prelim. Resp. 6–7. 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, other than “cellular
`network” and “cellular communication network,” 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.”).
`1. Cellular Network/Cellular Communication Network
`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
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`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 bases its
`construction on extrinsic evidence, including the testimony of its expert, Dr.
`Lavian (Ex. 1002 ¶¶ 63–64), and 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). 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 implies that Petitioner’s construction is too broad in the
`sense that it includes “Wi-Fi” and also too narrow in the sense that it
`includes “large scale commercial cellular telephone providers.” See Prelim.
`Resp. 7. Patent Owner, however, does not offer a construction. See id.
`On this record, Petitioner offers persuasive extrinsic evidence of how
`a person of ordinary skill in the art would construe the term “cellular
`network.” Petitioner contends the ’310 patent does not define the terms “or
`limit the term to a particular technology.” Pet. 6. Accordingly, we adopt
`Petitioner’s proposed construction for purposes of this Decision.
`2. Processing
`Patent Owner requests the Board to construe the claim term
`“processing” as “preparing a digital audio and/or visual file for storage in
`memory and playback.” Prelim. Resp. 8. Claim 1 recites “a digital signal
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`processor configured for receiving and processing data files transmitted by
`orthogonal frequency-division multiplex modulation.”
`Patent Owner cites a disclosed sound clip example to support its
`construction of “processing.” Id. at 8–9 (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 9 (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,
`which recite “processing,” 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). At this preliminary
`stage, the record does not indicate that “processing” should include the
`limitations argued by Patent Owner, even if a certain embodiment discloses
`those features. Also, Patent Owner does not explain how or why the use of
`TCP/IP, and other extrinsic evidence cited, relates to the ordinary meaning
`of processing in the context of the claims or to its proposed construction.
`See Prelim. Resp. 9–10.
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`
`B. Asserted Grounds of Unpatentability
`1. Obviousness of Claims 1, 3, 5–8, and 10–13 over
`Yukie, Gatherer, Prust, and Frodigh
`Petitioner argues that claims 1, 3, 5–8, and 10, 12, and 13 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, 3, 5–8, 10, 12, and 13 would have been
`obvious over Yukie, Gatherer, Prust, and Frodigh.
`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 device that
`includes 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
`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). 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.
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`Regarding the virtual storage locker limitations, Petitioner provides
`evidence that Yukie and/or Prust teach or suggest the limitation. Pet. 20–29.
`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). Supporting the showing, Petitioner
`contends “Yukie itself confirms that data server 16 may be ‘accessible to
`multiple users for storage’ (Yukie, 4:4–6), and that files stored on data
`server 16 may be organized by author or owner (id., 20:54–56).” Id. at 24.
` Claim 1 recites “said cellular phone including a receiver and a digital
`signal processor.” Petitioner relies on Yukie’s disclosure of cellular phone
`device 10, as a including a transmitter, receiver, and/or transceiver for bi-
`directional communications, and further including a processor, but
`acknowledges “Yukie does not expressly disclose that the cell phone
`includes a ‘digital signal processor.’” Id. at 30–31 (citing Ex. 1004, 3:56–
`57, 5:9–12, 10:41–49.
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`
`Addressing the recited digital signal processor (“DSP”), 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, ¶ 110.)
`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.
`Id. at 22 (citing Ex. 1005, 4–5) (emphases by Petitioner omitted).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 31–32
`(citing Ex. 1002 ¶¶ 112–116; Ex. 1005, 4–6).
`Claim 1 recites “configured for receiving and processing data files
`transmitted by orthogonal frequency-division multiplex modulation.” It also
`recites the following related OFDM clause: “providing for the transmission
`of the data file to the cellular phone using orthogonal frequency-division
`
`
`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
`should cite to the former.
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`multiplex (OFDM) modulation in response to the received request from the
`cellular phone.” Acknowledging Yukie does not disclose OFDM
`modulation, Petitioner relies on Yukie for its teachings related to receiving,
`processing, and requesting data from server 16 via device 10 (which
`includes a cellular phone embodiment). See Pet. 33. Yukie teaches that user
`device 10 requests and downloads modulated data content from server 16
`including video, audio, and generic data, for playback and other uses. See
`Ex. 1004, 3:42–48, 7:14–20, 8:2–7, 8:49–56, 10:41–43, 11:2–6; 16:64–17:6;
`Pet. 33 (citing Ex. 1004, 4:23–26, 2:31–41, 11:2–6, 13–22.
`Petitioner identifies evidence indicating that Frodigh teaches using
`OFDM to transmit voice and data to a mobile station in a cell system. Pet.
`33–36 (citing Ex. 1006, 1:59–2:18, 7:51–63, 8:1–14, 8:33–63, Fig. 3C, Ex.
`1002 ¶ 119), 46–47 (citing Ex. 1002 ¶¶ 90–95, 110, 125–126, 1006, 7:53–
`57). Petitioner provides a number of rationales for employing OFDM, citing
`efficient use of bandwidth, reduction of multipath interference, reduction of
`intersymbol interference, and multiple access functionality (an allegedly
`known cell feature requirement). See Pet. 33–35 (citing Ex. 1002
`¶¶ 120–122; Ex. 1006, 2:38–60). Petitioner also provides persuasive
`rationale supporting its challenge that the combination would have rendered
`obvious configuring of Yukie’s cellular telephone to include a DSP and
`receiver to handle OFDM. See Pet. 35–40 (citations omitted).
`
`
`For example, Petitioner identifies evidence indicating that Yukie,
`Frodigh, and Gatherer all relate to delivering data wirelessly to cell phones.
`Id. at 33–40 (citing Ex. 1002 ¶¶ 34–37, 129–132; Ex. 1004, 4:23–26, 2:31–
`41, 8:34–35, 11:2–6, 11:13–22; Ex. 1005, 4, 5, Ex. 1006,); see also Ex.
`1006, 1:13–29, 59–66, 2:38–50 (describing cellular systems with mobile
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`stations implementing OFDM). Petitioner also identifies evidence indicating
`that DSPs were known to have provided flexibility and processing power to
`handle technology improvements in cell phones, including with respect to all
`manner of digital signals, including OFDM, thereby motivating a person of
`ordinary skill in the art to implement the cellular phone and media player of
`Yukie using a DSP. See id.
`
`Petitioner also sets forth a detailed and persuasive analysis addressing
`the remaining claim limitations in independent claim 1, similar claim 10, and
`limitations in dependent claims 3, 5–8, 12, and 13. See Pet. 15–53.
`Petitioner articulates reasons supporting its challenge, based on the
`combination of teachings, of the challenged claims as a whole. See id. On
`this limited record, dependent claims 3, 5–8, 10, 12, and 13 appear to add
`features of known cellular systems.
`For example, claim 3 recites the use of a second cellular phone––
`reciting “[t]he method of claim 1, wherein receiving the request for the data
`file comprises receiving the request from a second cellular phone, and
`wherein transmitting the data file based on the received request comprises
`transmitting the data file to the second cellular phone using OFDM
`modulation.” Petitioner sufficiently shows Yukie discloses a user with
`multiple wireless devices, and sufficiently shows that Yukie, as modified by
`Gatherer, Prust, and Frodigh would have rendered obvious using a second
`cellular phone by one or more users as claim 3 recites. See Pet. 43–44
`(citations omitted).
`As other examples, by way of summary, claims 5–7 add features
`related to displaying and listing data files in specified orders, for example,
`alphabetical and chronological order. Petitioner sufficiently relies on Prust
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`to suggest these features in order to improve the interface of Yukie’s display
`for readily accessing the files, among other reasons. See Pet. 44–48
`(citations omitted). Petitioner contends claims 12 and 13 add features
`similar to those addressed either in claim 1 or claim 3. See Pet. 53. Similar
`to its showing with respect to claims 1, 3, and 5–7, Petitioner sufficiently
`shows claims 8, 10, 12, 13 would have been obvious on this limited record.
`See Pet. 15–53.
`In response, Patent Owner focuses on claim 1. See Prelim. Resp. 19–
`29. Patent Owner does not provide separate arguments related to
`Petitioner’s showing with respect to challenged claims 3, 5–8, 10, 12, and
`13. Id. at 29–30. For example, addressing claim 1, Patent Owner responds
`that Petitioner has not shown sufficiently that the cellular phone in Yukie
`includes a DSP configured for processing files via OFDM. Id. at 21–28.
`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. 22 (quoting Ex. 1005, Abstract).
`Patent Owner contends, however, that “Gatherer does not explain the
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`relationship between a digital signal processor and the remaining parts of the
`cell phone, or how a digital signal processor would be integrated into the
`‘user device’ disclosed by Yukie.” Id.
`Nevertheless, the challenged claims do not recite an explicit
`integration of the claimed DSP with any other user device elements. In
`addition, the ’310 patent provides generic disclosure of processor and DSP
`tasks, referring to simple “tasks performed by the processor,” including
`“computational tasks . . . . control of the board’s units, monitoring of keys,”
`etc.. See Ex. 1001, 22:11–20 (referring to “processor element 1301 [e.g., a
`Digital Signal Processor (DSP)]”).
`In any event, Petitioner proposes using Gatherer’s DSP as a substitute
`for Yukie’s generic “processor,” each of which control similar functions of a
`cellular phone. See Pet. 30–32, 38–40. 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, demodulation, noise suppression, and
`other functions, as pervasive for being performed by a DSP in a cell phone.
`See Pet. 31 (citing Ex. 1005, 4–5, Figs. 1 & 2; Ex. 1002 ¶110). 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 ¶¶ 112–116).
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`Patent Owner argues “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. 23. Patent
`Owner also argues no motivation existed for artisans of ordinary skill to
`combine the teachings, because the references teach different modulation
`schemes. See id. at 23–24. Patent Owner adds that “persons of
`extraordinary skill in the art chose CDMA [“Code Division Multiple
`Access”], and rejected OFDM, for use in the 3G standard.” Id. at 24.
`These arguments also are not persuasive on this limited record.
`“[P]ersons of extraordinary skill in the art” do not provide the proper frame
`of reference from which to view obviousness, and Patent Owner’s other
`arguments improperly address the references individually. See Keller, 642
`F.2d at 426. As discussed above, Petitioner identifies evidence indicating
`that Yukie teaches requesting different types of data files, including audio
`and video files, from a database using a cellular phone, 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.
`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. 23–24. 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 24 (citing Ex. 2003, 23–25; Ex. 2004, 2, 4).
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`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 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 suggests not limiting its invention to a 3G network, such as
`CDMA or SDMA. Further, the evidence cited by Patent Owner regarding
`the SMG’s decision to use CDMA in the 3G standard indicates there were
`advantages and drawbacks to both 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 “Yukie, alone or in combination with any
`of Petitioners’ prior art, does not disclose” that “the receiver and processor
`[could have] be[en] configured to receive and process files transmitted by
`OFDM.” Prelim. Resp. 26. According to Patent Owner, “the processing
`referenced by the claims takes place prior to the storing and subsequent play
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`back of the file.” Id. at 33. Patent Owner argues “Petitioners rely only on
`Yukie’s ability to play a file. Pet. at 33 (‘receive an audio file and present
`the received content to the user’). Petitioners, however, do not cite
`any support that playing a file is processing it.” Id.
`Patent Owner’s arguments rely on an unduly restrictive view of
`Yukie’s system and the term “processing.” On this record, Petitioner
`sufficiently shows Yukie’s system necessarily performs the processing of
`received data. See Pet. 9–10, 30–33 (discussing Yukie); Ex. 1004, 10:50–51
`(“The telephonic device can include software for accessing content on the
`Internet, such as web-browsing software.”), 11:19–21 (“For playback, the
`device would download audio data in an audio 20 stream from data server 16
`and outputs the audio in realtime.”). Patent Owner acknowledges that
`Yukie’s phone receives modulated signals, thereby implying it must process
`the modulated signals to obtain the data modulating the signals. See Prelim.
`Resp. 24 (citing Ex. 1004, 5:30–35 as teaching “wireless communication
`networks such as . . . SDMA”). Even if Yukie does not imply that its
`processor must process modulated data streams, as noted above, Patent
`Owner relies further on Gatherer’s DSP to handle processing in Yukie’s
`cellular phone.
`Patent Owner also contends “Yukie alone does not disclose a virtual
`storage locker or render it obvious. As the specification explains, a storage
`locker has two physical components: a storage chip and a server.” Prelim.
`Resp. 28 (citing Ex. 1001, 12:36–41). Similarly, Patent Owner contends
`Prust does not disclose a virtual storage locker. Prust
`teaches a data storage system and method that allows a user to
`access remote storage areas via a global computer network. . . .
`Prust does not explicitly disclose a storage chip and Petitioners
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`have not shown that the user computers in Prust would satisfy
`the storage chip element.
`Id. at 29 (citing Ex. 1013, 1:32–42).
`Contrary to these arguments, the challenged claims do not require a
`storage chip element as part of a virtual storage locker. Although Patent
`Owner argues “the [S]pecification explains . . . a storage locker has two
`physical components: a storage chip and a server,” Patent Owner does not
`argue that the claim construction of a “virtual storage locker” requires the
`two components. See Prelim. Resp. 7–8 (emphasis added). Moreover, the
`Specification indicates “storage chip 104” stores downloads and “attaches to
`the phone”––i.e., apart from server 104. Ex. 1001, 12:37–40 (emphasis
`added). Therefore, the cited chip disclosure has nothing to do with the
`claimed “virtual storage locker,” because claim 1, similar to claim 10, recites
`“the server comprising a non-transitory virtual storage locker.” Ex. 1001,
`32:63–64 (emphasis added). Furthermore, as Petitioner argues, the
`“[S]pecification does not use the term ‘virtual storage locker’ or provide a
`definition. The patent does describes a ‘virtual personal locker’ as a storage
`area associated with a particular user for storing files.” Pet. 8 (citing Ex.
`1001, 8:33–44 (describing the “virtual personal locker or storage area” as
`being included on “the website”)).
`Patent Owner also contends no motivation exists to combine Prust and
`Yukie because “Yukie focuses on storing data files for a single user.” Id. at
`29. This argument improperly attacks the references individually rather than
`looking at the combination of references. Moreover, the no foundation
`supports Patent Owner’s underlying premise that Yukie’s system is limited
`to a single user. For example, contrary to the argument, as discussed above,
`Patent Owner acknowledges Yukie discloses well-known modulation
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`systems such as SDMA. Such a standard system implies or suggests a
`system standardized for multiple users. As other examples, Yukie discloses
`“files organized by data author or owner” and basing access to the storage on
`a number of user profile data types, including “user settings for electronic
`devices” and “[b]illing information such as a user name,” further implying
`or suggesting multiple users. See Ex.
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