`Trials@uspto.gov
`571-272-7822 Entered: February 7, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`IPR2018-015521
`Patent 5,699,275
`____________
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining the Challenged Claim Unpatentable
`35 U.S.C. § 318(a)
`
`
`1 Google LLC, who filed a petition in IPR2019-00110, has been joined as a
`petitioner in this proceeding.
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`I. INTRODUCTION
`Samsung Electronics Co., Ltd. (“Petitioner”)2 filed a Petition for inter
`partes review of claim 1 of U.S. Patent No. 5,699,275 (Ex. 1001, “the
`’275 patent”). Paper 1 (“Pet.”). Iron Oak Technologies, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). Upon
`consideration of the Petition and Preliminary Response, we instituted inter
`partes review, pursuant to 35 U.S.C. § 314, as to claim 1 based on all
`challenges set forth in the Petition. Paper 9 (“Decision to Institute” or
`“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 16, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`Response (Paper 20, “Pet. Reply”), and Patent Owner filed a Sur-reply
`(Paper 21, “Sur-reply”). On November 4, 2019, we held a consolidated oral
`hearing for this case and related Case IPR2018-01553. A transcript of the
`hearing has been entered into the record. Paper 28 (“Tr.”).
`In our Scheduling Order, we notified the parties that “any arguments
`for patentability not raised in the [Patent Owner] response may be deemed
`waived.” See Paper 10, 5; see also Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) (“The patent owner response . . .
`should identify all the involved claims that are believed to be patentable and
`state the basis for that belief.”). In addition, “[a]rguments must not be
`incorporated by reference from one document into another document.” 37
`C.F.R. § 42.6(a)(3) (2018). In violation of our rule and guidance, Patent
`
`
`2 Petitioner, Samsung Electronics Co., Ltd., identifies Samsung Electronics
`America, Inc. as a real party-in-interest. Pet. 1.
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`Owner argues in its Patent Owner Response: “Patent Owner incorporates
`herein those arguments presented in its Preliminary Response for all
`purposes.” PO Resp. 1. We decline to consider whatever Patent Owner
`considers is “incorporated” from its Preliminary Response as if it were a part
`of Patent Owner’s Response, but only consider arguments substantively
`presented in Patent Owner’s Response. Any arguments for patentability not
`raised in the Patent Owner Response are deemed waived.
`For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that claim 1 of the ’275 patent is
`unpatentable.
`
`A. Related Matters
`The parties indicate that the ’275 patent is the subject of several
`stayed court proceedings. Pet. 1–2; Paper 6, 2–3; Paper 18, 4. The ’275
`patent also is the subject of Board proceedings IPR2018-01553 and
`IPR2019-00106. A Final Written Decision is made in each of IPR2018-
`01553 and IPR2019-00106 concurrently with this Final Written Decision. In
`IPR2019-00110, Google LLC filed a motion to join IPR2018-01552, which
`we granted. See Google LLC v. Iron Oak Techs., LLC, IPR2019-00110,
`Paper 11 (PTAB Apr. 3, 2019). In IPR2019-00111, Google LLC filed a
`motion to join IPR2018-01553, which we granted. See Google LLC v. Iron
`Oak Techs., LLC, IPR2019-00111, Paper 10 (PTAB Apr. 3, 2019).
`
`B. The ’275 Patent
`The specification of the ’275 patent describes a system “for remote
`patching or updating of operating code located in a mobile unit.” Ex. 1001,
`code (57). The system includes a manager host operable to initiate
`transmission of a discrete patch message to a mobile unit. Id. The mobile
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`unit is operable to create patched operating code by merging the patch with
`the current operating code and to switch execution to the patched operating
`code. Id. The mobile unit also can receive a download message defining
`new operating code to replace current operating code. Id.
`
`C. Illustrative Claim
`Petitioner challenges claim 1 of the ’275 patent. Claim 1 is
`reproduced below.
`1. A system for remote patching of operating code
`located in a mobile unit, comprising:
`a manager host operable to initiate transmission through a
`wireless communication network of at least one discrete patch
`message defining at least one patch;
`a first mobile unit operable to receive the at least one
`discrete patch message, the first mobile unit further operable to
`create patched operating code by merging the at least one patch
`with current operating code located in the first mobile unit and to
`switch execution to the patched operating code; and
`a second mobile unit operable to receive the at least one
`discrete patch message, the second mobile unit further operable
`to create patched operating code by merging the at least one
`patch with current operating code located in the second mobile
`unit and to switch execution to the patched operating code; and
`wherein the manager host is further operable to address the
`at least one discrete patch message such that the at least one
`discrete patch message is transmitted to the first mobile unit but
`not to the second mobile unit.
`Id. at 13:32–53.
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`D. Instituted Grounds of Unpatentability
`We instituted trial based on all asserted grounds of unpatentability
`under 35 U.S.C.3 as follows (Dec. 4, 26):
`Claim Challenged
`35 U.S.C. § Reference(s)
`1
`102
`Sugita4
`1
`103
`Sugita, Wortham5
`1
`103
`Ballard,6 Shimizu7
`II. ANALYSIS
`
`A. Principles of Law
`To prevail in its challenge to Patent Owner’s claim, Petitioner must
`demonstrate by a preponderance of the evidence8 that the claim is
`unpatentable. 35 U.S.C. § 316(e) (2012); 37 C.F.R. § 42.1(d). To establish
`anticipation, each and every element in a claim, arranged as recited in the
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’275
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`4 JP Published Patent Application No. 1993-128022, published May 25,
`1993 (Ex. 1005, “Sugita”).
`5 U.S. Patent No. 5,155,689, issued Oct. 13, 1992 (Ex. 1014, “Wortham”).
`6 Australian Patent Application No. 77395/91, published May 12, 1991 (Ex.
`1006, “Ballard”).
`7 JP Published Patent Application No. 05-66937, published Mar. 19, 1993
`(Ex. 1007, “Shimizu”).
`8 The burden of showing something by a preponderance of the evidence
`simply requires the trier of fact to believe that the existence of a fact is more
`probable than its nonexistence before the trier of fact may find in favor of
`the party who carries the burden. Concrete Pipe & Prods. of Cal., Inc. v.
`Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993).
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`claim, must be found in a single prior art reference. See Net MoneyIN, Inc.
`v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp.
`v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the
`elements must be arranged or combined in the same way as in the claim,
`“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
`terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
`2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`B. Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner relies on the testimony of Dr. Benjamin
`Bederson, who testifies that a person with ordinary skill in the art “would
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`have had at least a Bachelor’s degree in computer science, electrical
`engineering, or a similar discipline and at least two years additional relevant
`experience relating to, for example, device software management, including
`the remote update of code, such as mobile device software development and
`mobile device software updates.” Pet. 4; Ex. 1002 ¶ 20. Patent Owner does
`not propose an alternative assessment. See generally PO Resp.
`We adopt Dr. Bederson’s assessment of a person with ordinary skill in
`the art as it is consistent with the ’275 patent and the asserted prior art. We
`further note that the prior art of record in the instant proceeding reflects the
`appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261
`F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific
`findings as to the level of ordinary skill in the art “where the prior art itself
`reflects an appropriate level and a need for testimony is not shown”).
`
`C. Claim Construction
`The ’275 patent is expired. Ex. 1001; Pet. 8. For claims of an expired
`patent, our claim interpretation is similar to that of a district court. See In re
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In particular, for claims of
`an expired patent, the Board construes claims to generally have their
`ordinary and customary meaning, as that meaning would be understood by
`one of ordinary skill in the art in the context of the entire patent disclosure.
`See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en
`banc). Petitioner, recognizing that the ’275 patent is expired, contends that
`the claims should be construed consistent with the principles set forth in
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`Phillips. Pet. 8. Patent Owner does not contend otherwise. See generally
`PO Resp.
`
`Petitioner proposes constructions for the following claim terms found
`in claim 1: “mobile unit,” “operating code,” “manager host operable to
`initiate transmission through a wireless communication network of at least
`one discrete patch message defining at least one patch,” “merging the at least
`one patch with current operating code,” and “manager host is further
`operable to address the at least one discrete patch message.” Pet. 8–16.
`In our Decision to Institute, we adopted Petitioner’s proposed claim
`construction for “merging the at least one patch with current operating code”
`to mean “incorporating the at least one patch into the current operating code,
`without replacing the entire current operating code.” Dec. 5–6. Neither
`party has indicated that our interpretation was improper, and we do not
`perceive any reason or evidence that now compels any deviation from our
`initial interpretation. Accordingly, “merging the at least one patch with
`current operating code” means “incorporating the at least one patch into the
`current operating code, without replacing the entire current operating code.”
`“second mobile unit” and the “wherein” limitation
`Claim 1 recites “wherein the manager host is further operable to
`address the at least one discrete patch message such that the at least one
`discrete patch message is transmitted to the first mobile unit but not to the
`second mobile unit” (the “wherein limitation”). In our Decision to Institute,
`we adopted Petitioner’s claim construction and interpreted “manager host is
`further operable to address the at least one discrete patch message” as
`“[manager host is further operable to] decide which specific mobile unit to
`send [the at least one discrete patch message] to before beginning
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`transmission” of the message. Dec. 6. Neither party has indicated that our
`interpretation was improper, and we do not perceive any reason or evidence
`that now compels any deviation from our initial interpretation. See
`generally PO Resp.; Pet. Reply; see also Tr. 29:6–8.
`Patent Owner, however, argues that the wherein limitation, and claim
`1 in general, implicates a narrow construction having temporal restrictions.
`See PO Resp. 4–7; Sur-reply 2–10; Tr. 5:24–26, 30:1–3. Patent Owner
`argues that the “second mobile unit of claim 1 must be in a condition that its
`current operating code could be updated by the patch message sent to the
`first mobile unit” and that a “mobile unit whose operating code has been
`updated by the patch message cannot be a ‘second mobile unit.’” PO Resp.
`6 (emphasis in original); see also Sur-reply 7 (“If the Second Mobile unit
`has already created patched operating code from the at least one patch
`message, the Second Mobile Unit is no longer capable of creating patched
`operating code from the at one patch message.” (emphasis in original)).
`Patent Owner further argues that “at the time of transmission of the patch
`message by the manager host both mobile units must be operable to create
`patched operating code from current operating code.” PO Resp. 7 (emphasis
`added).
`Patent Owner does not direct us to evidence, such as the prosecution
`history or specification of the ’275 patent, to support its contentions. In
`particular, Patent Owner does not direct us to evidence to support reading
`claim 1 to include that at the time of transmission of the patch message by
`the manager host, both mobile units must be operable to create patched
`operating code from current operating code. The claim language does not
`specify when the mobile units must be “operable to create patched operating
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`code” from current operating code, only that they are “operable to” do so.
`Ex. 1001, 13:37–49.
`Moreover, we disagree that a second mobile unit that has already
`created patched operating code from the at least one patch message cannot
`meet the “second mobile unit” limitation as Patent Owner argues. PO Resp.
`6; Sur-reply 7. We note that claim 14, which depends directly from claim 1,
`recites “wherein the manager host is further operable to address the at least
`one discrete patch message such that the at least one discrete patch message
`is transmitted to the first mobile unit and to the second mobile unit.” Ex.
`1001, 14:22–26 (emphasis added). Accordingly, the full scope of claim 1
`encompasses that the at least one patch message is transmitted to the second
`mobile unit. There is nothing in claim 1 that excludes a second mobile unit
`that has already created patched operating code from the at least one patch
`message from meeting the claim 1 wherein limitation. A second mobile unit
`that is capable of creating patched operating code in some circumstances still
`satisfies the claim. Claim 1 is an apparatus claim, not a method claim. “[A]
`prior art reference may anticipate or render obvious an apparatus claim—
`depending on the claim language—if the reference discloses an apparatus
`that is reasonably capable of operating so as to meet the claim limitations,
`even if it does not meet the claim limitations in all modes of operation.”
`ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018).
`We agree with Petitioner that a mobile device “whose operating code has
`been updated by the patch message can be a ‘second mobile device’ because,
`for it to have been updated, it must be ‘operable to’ receive the message and
`create patched operating code.” Pet. Reply 5–6. A mobile unit that has
`created patched operating code is clearly operable to do so, because it has
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`created the patched operating code. Again, there are no timing requirements
`for apparatus claim 1 as Patent Owner argues.
`Accordingly, as in our Decision to Institute, we construe “manager
`host is further operable to address the at least one discrete patch message” to
`mean that the “[manager host is further operable to] decide which specific
`mobile unit to send [the at least one discrete patch message] to before
`beginning transmission” of the message. See Dec. 6.
`For purposes of this decision, we need not expressly construe any
`other claim term at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`D. Asserted Anticipation of Claim 1 over Sugita
`Petitioner contends claim 1 is unpatentable under 35 U.S.C. § 102(a)
`and (b) as anticipated by Sugita. Pet. 3, 16–39. In support of its showing,
`Petitioner relies upon the declaration of Dr. Bederson. Id. (citing Ex. 1002).
`
`1. Sugita
`Sugita describes “a method for updating mobile communications
`terminals when updating software on each of a plurality of mobile
`communications terminals using wireless channels to perform
`communication.” Ex. 1005 ¶ 1.9 In particular, Sugita describes
`
`9 Exhibit 1005 includes a certified English translation of Sugita and an
`affidavit from a translator attesting to the accuracy of the translation.
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`base station side (sending side) forwards the update information
`(all or part of the software) to each of the mobile communication
`terminals, first performing the forwarding based on the group ID
`of each group unit (addressed to all units or to units residing in
`specified groups), investigating the number of terminals in this
`group unit where updating by one round of forwarding has
`ended, and if the remaining unit number has become fewer, using
`individual IDs to perform updates of one unit at a time . . . .
`Id. ¶ 13.
`Figure 1 of Sugita is reproduced below.
`
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`Figure 1 of Sugita shows the transmission process with multiple
`mobile units. As seen in Sugita’s Figure 1, when the update process starts,
`there is a list of targeted mobile units that require an update. Id. ¶ 34. Once
`the targeted terminals are listed, their group ID is used in order to send the
`targeted terminals the update. Id. ¶¶ 35–37. If there are terminals that did
`not receive the update, then those terminals’ individual IDs are used to send
`the update information to the terminal individually. Id. ¶¶ 38–39.
`
`Figure 2 of Sugita is reproduced below.
`
`
`Figure 2 discloses a communication system with multiple
`communication terminals communicating with a base station. Id. ¶ 19.
`Sugita explains that “the software updates for these mobile communication
`terminals m1, m2, m3, m4, . . . are performed by using wireless channels to
`the base station BS.” Id. ¶ 20.
`
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`2. Discussion
`The preamble of claim 1 recites “a system for remote patching of
`operating code located in a mobile unit.” Petitioner argues, to the extent that
`the preamble is limiting, Sugita meets the preamble. Pet. 17.10 Petitioner
`contends, and we agree, that Sugita’s description, with reference to Figure 2,
`that its system includes multiple mobile communication terminals m1, m2,
`m3, m4, which may be used for vehicle mounting in automobiles, meets the
`claim 1 preamble “mobile unit.” Id. at 17 (citing Ex. 1005 ¶ 19). We further
`agree with Petitioner’s contention that Sugita’s terminals communicate with
`base station BS using wireless channels for software updates. Id. at 17–18
`(citing Ex. 1005 ¶ 20). We further determine that Petitioner has shown by a
`preponderance of the evidence that a person having ordinary skill in the art
`would have understood that Sugita’s mobile units are portable, capable of
`use while in motion, and necessarily battery-powered devices, because
`Sugita’s terminals are mounted on automobiles and have continuous
`operation while in motion. Id. at 18–20 (citing Ex. 1005 ¶¶ 4–6, 17, 19, Fig.
`2; Ex. 1002 ¶¶ 69–72). Petitioner further contends, and we agree, that
`Sugita’s description that each mobile terminal includes a processor 11 and a
`RAM 15, where the software for processor 11 operates on RAM 15 (e.g.,
`“terminal software”) meets the recited “operating code located in a mobile
`unit.” Id. at 20–21 (citing Ex. 1005 ¶¶ 11–14, 25; Ex. 1002 ¶ 73).
`Moreover, we agree with Petitioner’s contentions that Sugita’s description of
`updating terminal software (which can be all or part of the software)
`
`
`10 We need not resolve the issue of whether the preamble is limiting
`because, regardless of whether the preamble is limiting, Petitioner shows
`that Sugita meets the preamble.
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`performed by wireless channels from the base station meets “patching of
`operating code,” as recited in claim 1. Id. at 22–23 (citing Ex. 1005 ¶¶ 12,
`13, 17, 19, 20, 22, 25, 35; Ex. 1002 ¶¶ 74–76).
`Claim 1 further recites “a manager host operable to initiate
`transmission through a wireless communication network of at least one
`discrete patch message defining at least one patch.” Petitioner contends, and
`we are persuaded, that Sugita’s base station capable of initiating
`transmission of software update information through a wireless network
`meets the “manager host” limitation. Id. at 23–26 (citing Ex. 1005 ¶¶ 13,
`28, 30, 33, 36, 41, 47, Fig. 6; Ex. 1002 ¶¶ 79–81). Petitioner has shown by a
`preponderance of the evidence that Sugita’s base station is operable to
`initiate transmission of software updates because Sugita describes that the
`base station side is the sending side that forwards the update information to
`the terminals. Id. at 26–27 (citing Ex. 1005 ¶¶ 13, 25, 28; Ex. 1002 ¶¶ 82–
`85). Petitioner further contends, and we agree, that Sugita discloses that the
`base station is operable to initiate transmission of at least one discrete patch
`message defining at least one patch. Id. at 29–30 (citing Ex. 1005 ¶¶ 8, 13,
`19, 20, Fig. 2; Ex. 1002 ¶¶ 86–87). For example, Petitioner explains that a
`person having ordinary skill in the art would have understood that Sugita’s
`described software update is used for patching operating code. Id.
`Claim 1 further recites “a first mobile unit operable to receive the at
`least one discrete patch message, the first mobile unit further operable to
`create patched operating code by merging the at least one patch with current
`operating code located in the first mobile unit and to switch execution to the
`patched operating code.” We agree with Petitioner’s showing that Sugita
`describes multiple mobile communications terminals, any one of which is a
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`first mobile unit that can receive a software update packet and update the
`software program where the software update is the “one discrete patch
`message” transmitted by the manager host. See Pet. 31–34 (citing Ex. 1005
`¶¶ 28, 36, 43–48, Figs. 4, 6; Ex. 1002 ¶¶ 90–91). As explained above, we
`adopt Petitioner’s proposed construction of “merging the at least one patch
`with current operating code” to mean “incorporating the at least one patch
`into the current operating code, without replacing the entire current
`operating code.” Thus, as Petitioner explains, Sugita’s mobile units
`consisting of software for a processor to operate on a RAM that can receive
`software update information, which is then incorporated into the existing
`operating software code, meets this limitation. Id. at 32–34 (citing Ex. 1005
`¶¶ 43–48, Fig. 6; Ex. 1002 ¶¶ 92–96); see also Ex. 1002 ¶ 97. Moreover,
`Petitioner has shown by a preponderance of the evidence that a person
`having ordinary skill in the art would have understood that following the
`software update, the processor stops executing the non-updated software
`program and begins executing the updated software program. Id. at 35
`(citing Ex. 1005 ¶¶ 13, 25, 46, Fig. 3; Ex. 1002 ¶¶ 23–28, 31, 32, 45–48, 97).
`Patent Owner does not dispute Petitioner’s showing with respect to
`Sugita meeting the claim elements discussed above. See generally PO Resp.
`Claim 1 further recites a “a second mobile unit operable to receive the
`at least one discrete patch message, the second mobile unit further operable
`to create patched operating code by merging the at least one patch with
`current operating code located in the second mobile unit and to switch
`execution to the patched operating code.” Petitioner’s showing for this
`limitation is similar to its showing for the claimed “first mobile unit.” Pet.
`36 (citing Ex. 1005 ¶¶ 11–15, 17, 19–21, 27–28, 43–47, Figs. 2, 3, 6; Ex.
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`1002 ¶¶ 98–99). Notwithstanding Patent Owner’s arguments regarding the
`“second mobile unit” in connection with the wherein limitation, discussed
`below, we determine that Petitioner has shown by a preponderance of the
`evidence that Sugita describes a “second mobile unit” as follows.
`
`Petitioner explains, and we agree, that Sugita describes multiple
`mobile communications terminals, any one of which is a first mobile unit
`and any other one of which is a second mobile unit, which can receive a
`software update packet and update the software program where the software
`update is the “one discrete patch message” transmitted by the manager host.
`See Pet. 31–34 (citing Ex. 1005 ¶¶ 28, 36, 43–48, Figs. 4, 6; Ex. 1002 ¶¶ 90–
`91). We agree with Petitioner that Sugita discloses that each mobile
`terminal operates like the first mobile unit, which creates patched operating
`code from the patch message sent from the manager host. Ex. 1005 ¶¶ 43–
`47. Accordingly, we find that Sugita discloses a second mobile unit that is
`operable to perform the updating process the same way as the first mobile
`unit, because Sugita discloses multiple mobile communication terminals.
`Claim 1 further recites the wherein limitation, namely “wherein the
`manager host is further operable to address the at least one discrete patch
`message such that the at least one discrete patch message is transmitted to
`the first mobile unit but not to the second mobile unit.” Petitioner contends
`that Sugita discloses this limitation in at least two ways. In the first way,
`Petitioner contends that Sugita discloses that the base station (manager host)
`may send one or more packet(s) of software updates addressed to all
`terminal units or units residing in specified groups. Pet. 37 (citing Ex. 1005
`¶¶ 13, 34–39). Petitioner contends that the base station transmits update
`packets based on an update target list created by the base station and IDs
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`before beginning transmission such that only terminals in specific groups
`receive software updates, while terminals not in the specific groups do not
`receive the software updates. Pet. 37–38 (citing Ex. 1005 ¶¶ 13, 34–39; Ex.
`1002 ¶¶ 101–102). Petitioner explains that the base station (manager host)
`transmits update packets based on an update target list created by the base
`station and IDs before beginning transmission. Pet. 38 (citing Ex. 1005
`¶¶ 34–39, 43–47).
`Patent Owner argues that Petitioner has failed to show that the first
`way, i.e., Sugita’s group unit embodiment, meets the wherein limitation. PO
`Resp. 7–16. Patent Owner argues that Sugita discloses only transmitting a
`patch message to all mobile terminals that are capable of being updated and
`that a group update is sent by the base station to all mobile terminals. Id.
`We are not persuaded by such arguments, because they are not based on
`record evidence.
`We first address Patent Owner’s argument that Dr. Bederson’s
`“testimony is incompetent” regarding what is described at paragraph 13 of
`Sugita. Id. at 14–15. Patent Owner’s argument is based on the assertion that
`Dr. Bederson’s testimony (Ex. 1002 ¶ 101) is based on Microsoft
`Corporation’s11 translated version of Sugita, and not based on Petitioner’s
`translated version. This argument has no merit, because Dr. Bederson’s
`testimony at paragraph 101 of his declaration is clearly based on Petitioner’s
`translated version of Sugita. Compare Ex. 1005 ¶ 13, with Ex. 1002 ¶ 101.
`As such, we are not persuaded that Dr. Bederson’s “testimony is
`incompetent.”
`
`
`11 Microsoft Corporation is the petitioner in related IPR2019-00106.
`18
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`IPR2018-01552
`Patent 5,699,275
`
`We further give substantial weight to Dr. Bederson’s testimony that
`“only terminals in specific groups, where one of them being the ‘first mobile
`unit,’ receive packets of software updates (‘at least one discrete patch
`message’), while terminals not in these specific groups, where one of them
`being the ‘second mobile unit,’ do not receive the software updates.” Ex.
`1002 ¶ 101. His testimony is supported by record evidence. Ex. 1005 ¶ 13.
`The relevant portion of paragraph 13 of Sugita is reproduced as follows:
`
`[T]he base station side (sending side) forwards the update
`information (all or part of the software) to each of the mobile
`communication terminals, first performing the forwarding based
`on the group ID of each group unit (addressed to all units or to
`units residing in specified groups), investigating the number of
`terminals in this group unit where updating by one round of
`forwarding has ended, and if the remaining unit number has
`become fewer, using individual IDs to perform updates of one
`unit at a time. With this method, highly efficient updating is
`enabled.
`Id. (emphasis added). Sugita describes sending update information to each
`of the mobile communication terminals by first performing the forwarding
`based on the group ID of each group unit. Id. The forwarding of the update
`information is addressed to all units or to units residing in specified groups.
`Id. We agree with Petitioner’s position, which is supported by Dr.
`Bederson’s testimony, that terminals in specified groups receive the update,
`while those that are not in specified groups do not receive the update. Pet.
`37–38 (citing Ex. 1002 ¶ 101). Patent Owner’s attorney argument that the
`same Sugita description makes clear that Sugita forwards the update
`information to all mobile terminals (see, e.g., PO Resp. 15) does not rebut
`sufficiently Petitioner’s showing, which we determine is supported by the
`preponderance of the evidence. Ex. 1002 ¶ 101; Ex. 1005 ¶ 13.
`
`19
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`IPR2018-01552
`Patent 5,699,275
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`We further are not persuaded by Patent Owner’s argument that to the
`extent Sugita describes not sending update information to a mobile
`communication terminal, Petitioner fails to show that such an “excluded”
`terminal was operable to update current operating software with the update
`information, as required by claim 1. PO Resp. 16. We agree with Petitioner
`that Sugita describes updating its terminals by grouping them and that the
`base station uses a group ID to target and transmit a patch message to one
`group unit separate from a different gro