Paper No. 9
`Trials@uspto.gov
`571-272-7822 Entered: February 27, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01552
`Patent 5,699,275
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 27, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01552
`Patent 5,699,275
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`IPR2018-01552
`Patent 5,699,275
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`I. INTRODUCTION
`Samsung Electronics Co., Ltd. (“Petitioner”)1 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.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`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);
`see 37 C.F.R. § 42.108. Upon consideration of the Petition and Preliminary
`Response, we conclude the information presented shows that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of claim 1 of the ’275 patent.
`
`A. Related Matters
`The parties indicate that the ’275 patent is the subject of several court
`proceedings. Pet. 1–2; Paper 6, 2–3. The ’275 patent also is the subject of
`Board proceedings IPR2018-01553, IPR2019-00106, IPR2019-00110, and
`IPR2019-00111. Pet. 2; Paper 6, 3.
`
`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,
`[57]. The system includes a manager host operable to initiate transmission
`of a discrete patch message to a mobile unit. Id. The mobile unit is operable
`
`
`1 Petitioner, Samsung Electronics Co., Ltd., identifies Samsung Electronics
`America, Inc. as a real party-in-interest. Pet. 1.
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`2
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`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 Claims
`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.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claim 1 is unpatentable based on the following
`grounds (Pet. 3):
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`3
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`Reference(s)
`Sugita2
`Sugita and Wortham3
`Ballard4 and Shimizu5
`
`Basis
`§ 102
`§ 103
`§ 103
`
`Challenged Claim
`1
`1
`1
`
`II. DISCUSSION
`
`A. 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). Moreover, 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 contends that the claims should be construed consistent with the
`principles set forth in Phillips. Pet. 8.
`
`Petitioner proposes constructions for the following claim terms found
`in the challenged 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
`
`
`2 JP Published Patent Application No. 1993-128022, published May 25,
`1993 (Ex. 1005, “Sugita”).
`3 U.S. Patent No. 5,155,689, issued Oct. 13, 1992 (Ex. 1014, “Wortham”).
`4 Australian Patent Application No. 77395/91, published May 12, 1991 (Ex.
`1006, “Ballard”).
`5 JP Published Patent Application No. 05-66937, published Mar. 19, 1993
`(Ex. 1007, “Shimizu”).
`
`4
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`further operable to address the at least one discrete patch message.” Pet. 8–
`16. Patent Owner does not oppose Petitioner’s proposed constructions. See
`generally Prelim. Resp.; id. at 4.
`“merging the at least one patch with current operating code”
`Claim 1 recites “the first mobile unit [second mobile unit] further
`operable to create patched operating code by merging the at least one patch
`with current operating code.” Petitioner argues that “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.” Pet. 11. Petitioner explains that the specification of the
`’275 patent consistently describes merging as incorporating at least one
`patch into the current operating code without replacing the entire operating
`code. Id. at. 12 (citing Ex. 1001, 1:54–61, 2:2–5, 3:63–66, 4:65–5:10, 6:60–
`7:5, 7:28–30, 10:24–32, 11:22–25, 11:54–12:26). Petitioner further argues
`that the specification of the ’275 patent contrasts the patch process with
`downloading messages defining new operating code received to replace
`current operating code in the mobile units. Id. at 12–13 (citing Ex. 1001,
`10:24–32). Petitioner further directs attention to the prosecution history of
`the ’275 patent and “a German counterpart,” in support of its construction.
`Id. at 13–14 (citing Ex. 1004, 86–97; Ex. 1010, 4–5).
`Based on our review of the current record, we determine Petitioner’s
`proposed claim construction for the phrase “merging the at least one patch
`with current operating code” to be consistent with the specification and the
`prosecution history. Therefore, for purposes of this Decision, we adopt
`Petitioner’s proposed claim construction, interpreting “merging the at least
`one patch with current operating code” as “incorporating the at least one
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`patch into the current operating code, without replacing the entire current
`operating code.”
`“manager host is further operable to address
`the at least one discrete patch message”
`Claim 1 recites that 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 argues that “manager host is further operable to
`address the at least one discrete patch message” means 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. Id. at 14. Petitioner argues that based on the claim language,
`“address” refers to determining the specific mobile unit to which the patch
`message is sent. Id. at 15. Petitioner further explains that the proposed
`construction is consistent with the specification of the ’275 patent. Id. at 15–
`16 (citing Ex. 1001, 2:19–24, 3:40–42, 4:11–20, 5:15–41).
`Based on our review of the current record, we determine Petitioner’s
`proposed claim construction for the phrase “manager host is further operable
`to address the at least one discrete patch message” to be consistent with the
`specification. Therefore, for purposes of this Decision, we adopt Petitioner’s
`proposed claim construction, interpreting “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 transmission” of the
`message.
`
`6
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`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. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid
`Techs. in the context of an inter partes review).
`
`B. Principles of Law
`To establish anticipation, each and every element in a claim, arranged
`as recited in the 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;
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`(3) the level of ordinary skill in the art;6 and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. 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 ¶ 1.7 In Particular, Sugita describes that a
`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.
`
`6 Relying on the testimony of Dr. Benjamin Bederson, Petitioner offers an
`assessment as to the level of skill in the art as of the earliest effective filing
`date on the face of the ’275 patent. Pet. 4 (citing Ex. 1002 ¶¶ 20–21). At
`this time, Patent Owner does not propose an alternative assessment. To the
`extent necessary, and for purposes of this Decision, we accept the
`assessment offered by Petitioner as it is consistent with the ’275 patent and
`the asserted prior art.
`
` 7
`
` 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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`Id. at ¶ 13.
`
`2. Discussion
`The preamble of claim 1 recites “a system for remote patching of
`operating code located in a mobile unit.” The present record supports
`Petitioner’s contention 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.” Pet. 17 (citing Ex. 1005 ¶ 19). The present
`record further supports the contention that the terminals communicate with
`base station BS using wireless channels for software updates. Id. at 17–18
`(citing Ex. 1005 ¶ 20). Petitioner asserts 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 18–19 (citing Ex. 1005 ¶¶ 4, 6, 17, 19, Fig.
`2; Ex. 1002 ¶¶ 69–72). The present record further supports the contention
`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 phrase “operating code located in a
`mobile unit.” Id. at 20–21 (citing Ex. 1005 ¶¶ 11–14, 25; Ex. 1002 ¶ 73).
`Petitioner asserts that Sugita’s description of updating terminal software
`(which can be all or part of the software) performed by wireless channels
`from the base station meets the “system for remote patching of operating
`code located in a mobile unit.” Id. at 22–23 (citing Ex. 1005 ¶¶ 12, 13, 17,
`19, 20, 22, 25, 35; Ex. 1002 ¶¶ 74–76).
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`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.” The present record
`supports the contention that Sugita’s description of using wireless channels
`to the base station BS to perform software updates of the terminals meets the
`“wireless communication network.” Id. at 24–25 (citing Ex. 1005 ¶¶ 8, 13,
`19, 20, Fig. 2; Ex. 1002 ¶ 78). The present record further supports the
`contention that Sugita’s base station capable of transmitting software update
`information through a wireless network meets the “manager host” limitation.
`Id. at (citing Ex. 1005 ¶¶ 13, 28, 30, 33, 36, 41, 47, Fig. 6; Ex. 1002 ¶¶ 79–
`81). Petitioner explains, for example, that the 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 (citing Ex. 1005 ¶¶ 13, 25, 28; Ex. 1002 ¶¶ 82–83).
`The present record further supports the contention 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 contends
`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.
`Petitioner further contends that the update information is divided into
`multiple packets for transmission to the terminals “so that sending one round
`of update information,” (at least one patch) means sending a series of
`packets (at least one discrete patch message). Id. at 30 (citing multiple
`paragraphs from Ex. 1005; Ex. 1002 ¶¶ 86–87).
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`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.” The present record supports the contention that
`Sugita describes multiple mobile communications terminals, any one of
`which is a first mobile unit. See, e.g., Ex. 1005. Fig. 2. Further, the present
`record supports the contention that Sugita describes that the terminals
`receive one or more packets of software updates (at least one discrete patch
`message). Pet. 31–32 (citing Ex. 1005 ¶¶ 28, 36, 43–45, Figs. 4, 6; Ex. 1002
`¶¶ 90–91). The present record also supports the contention that Sugita’s
`description that the terminal copies received software update packets to an
`area where the software program that is to be updated operates, meets “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.” Id. at 32–34 (citing Ex. 1005 ¶¶ 43–48, Fig. 6; Ex. 1002 ¶¶
`92–96). The current record further supports the contention that a person
`having ordinary skill in the art would have understood that following the
`software update, the processor stops executing non-updated software
`program and begins executing the updated software program. Id. at 35
`(citing Ex. 1002 ¶¶ 23–28, 31, 32, 45–48, 97).
`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
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`phrase is similar to the showing for the claimed “first mobile unit.” The
`present record supports the contention that Sugita meets this phrase of claim
`1. Id. at 36 (citing multiple paragraphs from Ex. 1005; Ex. 1002 ¶¶ 98–99).
`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.” Petitioner contends that Sugita discloses this limitation
`in at least two ways. First, 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. Id. at 37 (citing Ex.
`1005 ¶¶ 13, 34–39). Petitioner contends the base station transmits update
`packets based on an update target list created by the base station and IDs
`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. Id. at 37–38 (citing Ex. 1005 ¶¶ 13, 34–39;
`Ex. 1002 ¶¶ 101–102). The present record supports the contention 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.
`Id. at 38 (citing Ex. 1005 ¶¶ 34–39, 43–47). Second, Petitioner contends
`that Sugita discloses the use of individual IDs for updating individual
`terminals. Id. at 38–39 (citing Ex. 1005 ¶¶ 13, 17, 26–28, 37, 41, Fig. 1).
`Petitioner further contends that because software updates are forwarded to
`one terminal at a time, in an one-to-one update process, Sugita discloses that
`the base station is operable to address one or more update packets such that
`the update packet(s) is transmitted to a first terminal that is addressed using
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`its individual ID but not a second terminal. Id. at 38–39 (citing Ex. 1002
`¶¶ 103–105).
`Patent Owner argues that Petitioner has failed to establish that Sugita
`is configured such that the base station addresses an update to a first mobile
`terminal, but not to a second mobile terminal as required by claim 1. Prelim.
`Resp. 7–9. In particular, Patent Owner argues that there is no disclosure in
`Sugita that a mobile terminal within the plurality of mobile terminals is not
`sent the group update. Id. As explained above, Petitioner contends that
`Sugita meets the disputed limitation in two ways. Pet. 37–39. First, as
`pointed out by Petitioner, Sugita describes that the base station (manager
`host) may send one or more packet(s) of software updates “addressed to all
`[terminal] units or to units residing in specified groups.” Ex. 1005 ¶ 13.
`Petitioner contends that the base station transmits update packets based on
`an update target list created by the base station and IDs before beginning
`transmission, and thus meets Petitioner’s construction for the disputed
`phrase. Pet. 38 (citing Ex. 1005 ¶¶ 34–39). Dr. Bederson explains that a
`person having ordinary skill in the art would have understood that only
`terminals in specific groups, where one of them is the “first mobile unit,”
`receive software updates, while terminals not in these specific groups, where
`one of them is the “second mobile unit,” do not receive the software updates.
`Ex. 1002 ¶¶ 101–102. Patent Owner does not address these contentions at
`all, but focuses its arguments on Petitioner’s second showing of how the
`disputed claim phrase is met by Sugita. Prelim. Resp. 7–9. For this reason
`alone, Patent Owner’s argument that Petitioner has failed to establish that
`Sugita is configured such that the base station addresses an update to a first
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`mobile terminal, but not to a second mobile terminal as required by claim 1
`is without merit.
`In addition, we are not persuaded by Patent Owner’s arguments that
`because Sugita sends a group update with some in the group receiving a
`redundant individual update, Sugita “never discloses an instance when a
`mobile terminal does not receive an update transmission.” Id. at 9. Claim 1
`does not foreclose sending an update to both mobile units, followed by
`sending an update to only one mobile unit. As long as the host addresses the
`at least one discrete patch message such that the message is transmitted to
`one mobile unit but not another mobile unit, the claim language is satisfied.
`Sugita describes updating mobile terminals individually, e.g., where the
`message from the host is transmitted to one mobile unit but not another
`mobile unit. Ex. 1005 ¶¶ 13, 26–28.
`Patent Owner argues that the Petition does not show that Sugita
`discloses merging a patch with current operating code or switching
`execution to patched operating code. Prelim. Resp. 10–11. Patent Owner
`argues that Sugita does not include the word patch or patching when
`describing its method of updating software on mobile communication
`terminals. Id. Patent Owner further argues that Petitioner’s assertion that
`Sugita’s disclosure of software updates means patching of operating code is
`in error. Id. At this juncture of the proceeding, we are not persuaded by
`these arguments.
`First, it is of no moment that the words “patch” or “patching” are not
`found in Sugita. Rather, what is relevant is what Sugita would have
`conveyed to a person having ordinary skill in the art at the time of the
`invention. Petitioner relies at least on Sugita’s description that the base
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`station “forwards the update information (all or part of the software) to each
`of the mobile communication terminals.” Ex. 1005 ¶ 13. Dr. Bederson
`explains that updating at least a part of the software meets the claimed
`“patching” of software. Ex. 1002 ¶ 75. Patent Owner does not address
`Sugita’s description that the update information can include only part of the
`software. Rather, Patent Owner argues that “updating” can also include
`downloading the entire operating code. Prelim. Resp. 10. Patent Owner’s
`attorney arguments, however, are not persuasive and further do not address
`the passage Petitioner relies on in Sugita that describes updating only part of
`the software. Patent Owner fails to explain why Sugita’s description of
`updating only part of the software means that the entire operating code is
`being downloaded. Based on the current record, we are not persuaded by
`Patent Owner’s arguments.
`Patent Owner argues that Petitioner’s reliance on Sugita’s copying
`update information to an area in RAM where the program is operating
`cannot disclose patching current operating code by merging as required by
`claim 1. Id. at 11. As explained above, we adopt Petitioner’s proposed
`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.” Patent Owner, at this
`point, does not aver a different construction. Id. at 4. Petitioner explains,
`with supporting evidence, that Sugita’s description that the mobile terminal
`copies received software update packets to an area where the software
`program that is to be updated operates, meets “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.” Pet. 32–34
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`(citing Ex. 1005 ¶¶ 43–48, Fig. 6; Ex. 1002 ¶¶ 92–96); see also Ex. 1002 ¶
`97. Patent Owner’s conclusory attorney arguments are not persuasive to
`show why Petitioner’s showing, which is based on record evidence, is
`insufficient.
`Lastly, Patent Owner argues that Petitioner has failed to show that
`Sugita discloses switching execution from current operating code to patched
`operating code, because Sugita has no discernable disclosure of switching
`execution. Prelim. Resp. 11. Patent Owner argues that instead, Petitioner
`relies on the conclusory opinions of its expert. Id. We disagree that
`Dr. Bederson’s accounting of switching execution to the patched operating
`code is conclusory. We have reviewed his testimony and determine at this
`point in the proceeding it is sufficient. In particular, Dr. Bederson explains
`how Sugita discloses a first mobile unit with software for a processor that
`operates on a RAM. Ex. 1002 ¶ 97. He further explains that software
`updates are eventually copied over to the area where the program is actually
`operating, i.e., the RAM to create an updated software program. Id. This is
`all supported by Sugita itself. Ex. 1005 ¶¶ 13, 46, Fig. 6. Dr. Bederson
`further explains that a person having ordinary skill in the art at the time of
`the invention would have understood that “following the software update,
`the processor switches execution to the updated software program from the
`non-updated software program because the area ‘where the program is
`actually operating’ includes the patched software following the software
`update.” Ex. 1002 ¶ 97. For these reasons, we disagree with Patent Owner
`that Petitioner’s showing is conclusory.
`Based on the current record before us, we determine the information
`presented shows a reasonable likelihood that Petitioner would prevail in
`
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`
`establishing that claim 1 is unpatentable under § 102 as anticipated by
`Sugita.
`
` D. Asserted Obviousness of Claim 1 over Sugita and Wortham
`
`Petitioner contends claim 1 is unpatentable under 35 U.S.C. § 103(a)
`as obvious over Sugita in view of Wortham. Pet. 39–45. In support of its
`showing, Petitioner relies upon the declaration of Dr. Bederson. Id. (citing
`Ex. 1002).
`Petitioner argues that to the extent Sugita’s mobile communication
`terminal does not necessarily disclose the mobile unit limitations under
`Petitioner’s construction (portable, battery-operated device for use while in
`motion), Wortham describes a mobile unit. Pet. 40. Petitioner further
`argues that to the extent Sugita does not explicitly or necessarily disclose
`“initiate transmission” under Petitioner’s construction, it would have been
`obvious to modify Sugita such that it initiates transmission. Id. at 43–45.
`Petitioner further provides reasons for combining a modified Sugita with
`Wortham. Id. at 41–45. For this challenge, Patent Owner’s arguments are
`the same with respect to those addressed previously. Prelim. Resp. 7–11.
`Based on the current record before us, we determine the information
`presented shows a reasonable likelihood that Petitioner would prevail in
`establishing that claim 1 is unpatentable under § 103 as obvious over Sugita
`in view of Wortham.
`
`E. Asserted Obviousness of Claim 1 over Ballard and Shimizu
`
`Petitioner contends claim 1 is unpatentable under 35 U.S.C. § 103(a)
`as obvious over Ballard in view of Shimizu. Pet. 45–70. In support of its
`
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`showing, Petitioner relies upon the declaration of Dr. Bederson. Id. (citing
`Ex. 1002).
`
`1. Ballard
`Ballard describes “a software downloading device for
`telecommunications terminal, such as a mobile radiophone for cellular
`network, cordless phone or fixed terminal in an integrated services digital
`network.” Ex. 1006, 2:1–3.8 In Particular, Ballard describes that
`[t]he software program executed by each of these terminals must
`be able to evolve with time in order to: either correct software
`anomalies, improve the terminal operation, provide new services
`to subscribers, follow the changes made to telecommunication
`network technical specifications, or be matched to various
`networks where different software programs need to be executed,
`when a terminal is moved to another country for instance.
`
`
`Id. at 2:6–11. Ballard describes that general broadcast can be used to
`simultaneously update software to an entire fleet of radiophones or point-to-
`point transmission can be used to download in a specific radiophone entering
`an area serviced by a network requiring execution of operating software not
`yet stored in one of the radiophone RAMS. Id. at 6:31–34.
`2. Shimizu
`Shimizu describes a data processing device and process modification
`method. Ex. 1007, Title. Data to be modified for the processing sequence
`of a data process is received by a wireless communications means. Id. at
`Abstract. Shimizu further describes segmenting a patch command into
`multiple patch commands and transmitting the segmented patch commands.
`
`8 Line citations are to those annotated in red on the right hand side of the
`respective cited page.
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`Id. at ¶ 21. Shimizu describes that the patch address ADR is the address of
`the portion where the patch data was entered into the program and that the
`patch data DATA is the patch data constituting the revised portion of the
`program. Id.
`
`3. Discussion
`The preamble of claim 1 recites “a system for remote patching of
`operating code located in a mobile unit.” The present record supports
`Petitioner’s contention that Ballard describes “operating code located in a
`mobile unit,” because Ballard describes a software program, such as
`operating software (“operating code”) that is executed by a
`telecommunications terminal, such as a mobile radiophone (“mobile unit”),
`where the software is saved in a RAM of the radiophone. Pet. 46 (citing Ex.
`1006, 2:1–5, 2:19–24, 3:24–30). Petitioner asserts that Ballard’s description
`of upgrading operating terminal software a
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