throbber
Paper 29
`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.
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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.
`
`2
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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
`
`3
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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.
`
`4
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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).
`5
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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
`
`6
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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
`
`7
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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
`
`8
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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
`
`9
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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
`
`10
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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.
`11
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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.
`
`
`
`12
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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.
`
`
`
`13
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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.
`
`14
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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
`
`15
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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.
`
`16
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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
`
`17
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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
`
`

`

`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
`
`

`

`IPR2018-01552
`Patent 5,699,275
`
`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

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket