Case IPR2018-01552
`Case IPR2019-00106
`Patent No. 5,699,275
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`SAMSUNG TECHNOLOGIES, LTD.,
`Petitioner,
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`
`___________________________
`
`___________________________
`
`IPR2018-01552
`U.S. Patent No. 5,699,275
`
`IPR2019-00106
`U.S. Patent No. 5,699,275
`
`___________________________
`
`PATENT OWNER COMBINED RESPONSE
`
`
`Case IPR2019-00106
`Patent No. 5,699,275
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`SAMSUNG TECHNOLOGIES, LTD.,
`Petitioner,
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`
`___________________________
`
`___________________________
`
`IPR2018-01552
`U.S. Patent No. 5,699,275
`
`IPR2019-00106
`U.S. Patent No. 5,699,275
`
`___________________________
`
`PATENT OWNER COMBINED RESPONSE
`
`
`
`Case IPR2018-01552
`Case IPR2019-00106
`Patent No. 5,699,275
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`INTRODUCTION........................................................................................1
`
`NEITHER PETITION DEMONSTRATED INVALIDITY
`OF CLAIM 1 BY A PREPONDERANCE OF THE EVIDENCE ..............1
`
`A.
`
`Petitioners Have Not Shown That Sugita Anticipated Or
`Rendered Obvious Claim 1 ...............................................................4
`
`1.
`
`Petitioners Failed To Prove That Sugita Disclosed
`Selective Updating Of First And Second Mobile Units
`When Both Are Capable Of Being Updated............................8
`
`a.
`
`b.
`
`Petitioner’s “Group Unit” Argument Is Not
`Adequately Supported By Sugita’s Disclosure ...........10
`
`Petitioner’s “Target List” Argument Also Is
`Not Adequately Supported By Sugita’s Disclosure ....18
`
`2.
`
`Conclusion Concerning Disclosure Of Sugita.......................20
`
`B.
`
`Petitioners Have Not Shown That The Other References
`Combined With Sugita Rendered Obvious Claim 1 ........................21
`
`1. Wortham Was Not Shown To Disclose The Selective
`Updating Required By Claim 1 .............................................21
`
`2.
`
`3.
`
`4.
`
`Burson Was Not Shown To Disclose The Selective
`Updating Required By Claim 1 .............................................22
`
`Kirouac Was Not Shown To Disclose The Selective
`Updating Required By Claim 1 .............................................23
`
`Ballard Was Not Shown To Disclose The Selective
`Updating Required By Claim 1 .............................................24
`
`ii
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`C.
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`Petitioner Samsung Has Not Shown That Claim 1 Was
`Rendered Obvious By Ballard And Shimizu ...................................25
`
`III. CONCLUSION..........................................................................................28
`
`iii
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`I.
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`INTRODUCTION
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`The Board instituted review of claim 1 of U.S. Patent No. 5,699,275 (“the
`
`’275 patent”) based on two petitions, one filed by petitioner Samsung (IPR2018-
`
`1552) and the other filed by petitioner Microsoft (IPR2019-106). Both petitions are
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`based primarily on the Petitioner’s characterizations of the Japanese Sugita reference
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`(Ex. 1005 in both proceedings, but different translations). Petitioner Samsung also
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`based its petition on Ballard as a primary reference. Petitioner Microsoft uses
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`Ballard as a secondary reference (Ex. 1006 in both petitions).
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`This is a combined response to both petitions.
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`Patent Owner presents herein only those arguments necessary to defeat the
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`petitions. Patent Owner does not accede to those arguments and evidence set forth
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`in the petitions, or to the conclusions drawn by the Board in the Institution Decision,
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`that are not directly addressed herein. Patent Owner incorporates herein those
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`arguments presented in its Preliminary Response for all purposes.
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`II.
`
`NEITHER PETITION DEMONSTRATED INVALIDITY OF CLAIM
`1 BY A PREPONDERANCE OF THE EVIDENCE
`
`After institution, Petitioner has the burden of persuasion to establish by a
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`preponderance of the evidence that claim 1 is invalid as alleged in the petition. 35
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`U.S.C. § 316(e); Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016)
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`(“[T]he burden of proof is on the petitioner to prove unpatentable those issued claims
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`that were actually challenged in the petition for review and for which the Board
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`instituted review."). The burden of persuasion never shifts to the Patent Owner.
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`Dynamic Drinkware LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
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`2015) ("In an inter partes review, the burden of persuasion is on the petitioner to
`
`prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and
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`that burden never shifts to the patentee." ).
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`Additionally, the burden of production never shifts to the Patent Owner. In
`
`re Magnum Oil Tools International, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) (“We thus
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`disagree with the PTO's position that the burden of production shifts to the patentee
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`upon the Board's conclusion in an institution decision that "there is a reasonable
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`likelihood that the petitioner would prevail.").
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`In other words, to prevail on its allegation that claim 1 is anticipated by Sugita,
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`a Petitioner must have produced a preponderance of evidence in its petition showing
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`that “each and every element as set forth in the claim is found, either expressly or
`
`inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union
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`Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). As shown below, when the
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`content of Sugita is properly characterized neither Petitioner has met this burden.
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`2
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`To prevail on showing obviousness over Sugita or Ballard, the Petitioners
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`must have produced in its petition a preponderance of evidence showing that the
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`differences between the subject matter of claim 1 and the properly characterized
`
`prior art are such that the claimed subject matter, as a whole, would have been
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`obvious at the time the invention was made to a person having ordinary skill in the
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`art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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`398, 406 (2007). The determination of obviousness involves multiple fact questions,
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`for which Petitioners continually bear the burden of persuasion. Graham v. John
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`Deere Co., 383 U.S. 1, 17 (1966). A fundamental factual inquiry in the obvious
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`analysis is the “content” of the prior art. Id.
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`In other words, Petitioners have the
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`un-shifting burden to prove what a person of skill in the art would have understood
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`each prior art reference disclosed at the time the ’275 patent application was filed.
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`As shown below, both petitions go well beyond the literal disclosure of the prior art
`
`and base arguments of invalidity on conjecture about things not expressly or
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`inherently disclosed. This error that cannot support invalidity of claim 1. See In re
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`Magnum Oil Tools, 829 F.3d at 1380 (conclusory statements, whether by attorney
`
`or expert, cannot satisfy the burden of demonstrating obviousness).
`
`To establish obviousness of claim 1, all of the claim limitations must be
`
`disclosed or suggested by the legitamtely combined prior art. See CFMT, Inc. v.
`
`3
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`Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka, 490 F.2d
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`981, 985 (CCPA 1974). Thus, the petition “must specify where each element of the
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`claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R.
`
`§ 42.104(b)(4); see also Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355 (Fed. Cir.
`
`2016) (reversing Board obviousness determination based on “common sense” that
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`was conclusory and unsupported by substantial evidence).
`
`A.
`
`Petitioners Have Not Shown That Sugita Anticipated or Rendered
`Obvious Claim 1
`
`Among many other things, claim 1 requires that “the manager host is further
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`operable to address the at least one discrete patch message such that the at least one
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`discrete patch message is transmitted to the first mobile unit but not the second
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`mobile unit.” Ex. 1001 at claim 1 (emphasis added).1
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`In the Institution Decisions, the Board concluded that this claim phrase needed
`
`further construction and rewrote the claim phrase to require that
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`1 When a petition exhibit shares the same exhibit number, the citation form is “Ex.
`__” and the exhibit may be found in either Petition. The only exception is the Sugita
`reference. While both petitions identify the exhibit as Ex. 1005, the documents are
`not identical between the petitions because of translation differences.
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`4
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`the manager host is further operable to decide which specific mobile
`unit to send address the at least one discrete patch message to before
`beginning transmission such that the at
`least one discrete patch
`message is transmitted to the first mobile unit but not the second mobile
`unit.
`
`Decisions at 6. With this construction, the Board concluded that the present record
`
`supports that a person of skill would have understood Sugita to disclose that the
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`software updating system sends software updates to less than all of Sugita’s
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`“telecommunication units” when the group unit addressing protocol
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`is used.
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`Decisions at ¶¶ 12-14. As shown below, this is error.
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`Also with this construction, the Board concluded the present record supports
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`that a person of skill would have understood Sugita to disclose that even if all mobile
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`terminals are sent the group unit update, the second individual ID transmission is
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`sent to less than all the mobile units that had been sent the group unit update. Id.
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`The Board concluded that “[a]s long as the host addresses the at least one discrete
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`patch message such that the message is transmitted to one mobile unit but not another
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`mobile unit, the claim language is satisfied.” Decisions at 14. As shown below, this
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`too is error.
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`As a first threshold issue, a correct characterization or understanding of the
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`“content” of the prior art is fundamental to a proper validity analysis. As the
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`5
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`Supreme Court established in Graham v. John Deere Co., 383 U.S. 1 (1966), “the
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`scope and content of the prior art are to be determined; differences between the prior
`
`art and the claims at issue are to be ascertained; and the level of ordinary skill in the
`
`pertinent art resolved. Against this background, the obviousness or nonobviousness
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`of the subject matter is determined.” Id. at 17. Not surprisingly, Board decisions
`
`are reversed when the “content” of the prior art is not correctly determined. See,
`
`e.g., In Re McNeil-PPC, Inc., 574 F.3d 1393, 1401 (Fed. Cir. 2008) (reversing
`
`Board’s determination of obviousness because of error in understanding prior art);
`
`In Re Chapman, 595 F.3d 1330, 1339-40 (Fed. Cir. 2010) (vacating obviousness
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`determination by Board so that it can “revisit its conclusion of obviousness in light
`
`of a correct understanding of Gonzalez.”) A correct understanding of the content of
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`a reference cannot be obtained by cherry-picking some statements and ignoring
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`others. The reference as a whole must be considered and properly understood.
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`As a second threshold issue, it must be appreciated that the universe of first
`
`and second mobile units described by claim 1 are only those mobile units that: 1)
`
`are “operable to receive the at least one discrete patch message;” 2) that are
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`“operable to create patched operating code” by merging the patch with current
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`operating code; and 3) that are operable to switch execution to the patched operating
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`code. Thus, the second mobile unit of claim 1 must be in a condition that its current
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`operating code could be updated by the patch message sent to the first mobile unit.
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`A mobile unit whose current operating code cannot be updated with the patch
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`message cannot be the “second mobile unit” required by claim 1. For example, a
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`mobile unit whose operating code has been updated by the patch message cannot be
`
`a “second mobile unit” because that unit no longer is “operable to create patched
`
`operating code by merging the at least one patch with current operating code.” See
`
`Ex. 1001 at claim 1.
`
`On this point, the Board opined that
`
`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.
`
`Decisions at 14. But the Board failed to recognize that claim 1 requires that at the
`
`time of transmission of the patch message by the manager host both mobile units
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`must be operable to create patched operating code from current operating code, and
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`that the host transmit the patch to one mobile unit and not the other even though both
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`units are capable of updating current operating code.2 As shown below, this is one
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`element of claim 1 that Petitioners have failed to demonstrate.
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`1.
`
`Petitioners Failed to Prove That Sugita Discloses Selective
`Updating of First and Second Mobile Units When Both are
`Capable of Being Updated
`
`A person of skill would understand that Sugita does not disclose transmitting
`
`a patch message to a first mobile terminal but not a second mobile terminal capable
`
`of being updated by the same patch message, as required by the entirety of claim 1.
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`Sugita discloses only transmitting a patch message to all mobile terminals that are
`
`capable of being updated.
`
`Sugita notes as background that replacing read-only-memory (ROM) in each
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`of the mobile terminals in a fleet (e.g., cargo trucks) is time consuming, as you
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`typically must wait for the vehicle to return to the yard. Ex. 1005 at [0004 -0007].
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`Rather than physically replacing ROM, Sugita discloses a method where the
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`random-access-memory (RAM) in all of the terminals in a fleet of mobile terminals
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`2 Patent Owner sometimes refers to this claim requirement with the shorthand
`“selective updating.” The Patent Office recognized the patentability of claim 1 by
`specifically noting the “selective updating” requirement of claim 1. See IPR2018-
`1552 Ex. 1004 at 110.
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`needig an update are updated in groups, followed by individual updates for those
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`terminals that failed to update as part of the group(s). Ex. 1005 at [0012]. For
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`example, a group update may be sent by the base station to all mobile terminals.
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`Those terminals in the yard likely will receive the update and likely complete the
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`update. Those terminals not in the yard either may not receive the group update or
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`not complete the update, but regardless, according to Sugita all terminals are sent
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`the group update. Based on responses from the mobile terminals, which includes a
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`failure to respond, the base station then resends the update individually to a smaller
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`subset of mobile terminals that were sent the group update but failed to update. Ex.
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`1005 at [0026] (mobile terminals receive both one-to-one and one-to-multiple
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`communication formats). Sugita does not disclose sending an update to a terminal
`
`that has successfully updated. Thus, every mobile terminal in Sugita that is capable
`
`of being updated is sent the update. Sugita never discloses an instance when a
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`mobile terminal that is capable of being updated (e.g, not already updated) is not
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`sent an update. A proper understanding of Sugita as a whole shows that its group
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`unit addressing protocol results in transmitting the patch to all of Sugita’s mobile
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`terminals that are capable of updating current software.
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`a.
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`Petitioner’s “group unit” Argument is not Adequately
`Supported by Sugita’s Disclosure
`
`Petitioners and their experts make two basic arguments concerning the group
`
`unit transmission protocol described by Sugita. First, Petitioners argue that Sugita’s
`
`disclosure of “group units” necessarily discloses that there are mobile terminals
`
`excluded from the group units. See IPR2018-01552 Pet. at 37-38; IPR2018-01552
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`Ex. 1002 (Bederson) at ¶ 101-102; IPR2019-106 Pet. at 43-45; IPR2019-00106 Ex.
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`1003 (White) at ¶¶ 148-152.
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`Second, Petitioners argue that Sugita’s disclosure of “Create list of update
`
`target terminals” in [Figure 1] necessarily discloses that some terminals are excluded
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`from that list. See IPR2018-01552 Pet. at 38-39; IPR2018-01552 Ex. 1002
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`(Bederson) at ¶ 103-105; IPR2019-106 Pet. at 45-47; IPR2019-00106 Ex. 1003
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`(White) at ¶ 153-157.
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`Petitioners’ arguments highlight the need to distinguish between the literal
`
`express “content” of Sugita (e.g.,
`
`transmitting updates via group units) and
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`Petitioners’ conclusions of what a person of skill would have understood from that
`
`content (e.g., what units may be excluded from group unit(s)). As shown below,
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`Petitioner’s conclusions are not supported by the express or inherent content of
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`Sugita but rather are the result of impermissible hindsight.
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`Turning to Petitioner’s first group unit argument, it cannot be disputed that
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`Sugita does not expressly disclose that “group units” do not account for all of the
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`mobile terminals that could be updated by transmission of a patch. Instead, there is
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`more than substantial evidence that Sugita’s group units account for all mobile
`
`terminals that could be updated with the transmitted patch.3
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`Petitioners points to paragraph 13 to support its argument. Paragraph 13,
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`however, is part of Sugita’s [Procedure for Resolving the Issue] discussion that spans
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`paragraphs 12 to 15. Considering this entire section of Sugita, it is clear that the
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`universe of mobile terminals that could be updated by the patch is labeled by Sugita
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`as “a plurality of mobile communication terminals.” Ex. 1005 at ¶ [0012]. Sugita
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`then discloses that each of the plurality may be updated in “group units” followed
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`by updating individually the un-updated terminals remaining in the plurality. See
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`paragraphs 12 -15 below, emphasis added.
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`3 It is irrelevant for claim 1 whether Sugita discloses not sending mobile terminals
`the software patch when that mobile terminal is not operable, for whatever reason,
`to create patched operating code with the patch. See Ex. 1001 at claim 1.
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`It should be noted that Sugita’s [claim 1], and [Field of Industrial Application]
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`discussions are consistent with this understanding that “group units” account for
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`every one of the plurality of mobile terminals that could be updated by the patch. Id.
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`at ¶¶ [Claim 1] & [0001]. Further, Sugita’s background discussion, labeled [Issues
`
`to be Resolved], discusses updating every one of the identified 1,000 cargo transport
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`vehicles, which is consistent with Patent Owner’s characterization of Sugita on this
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`point. Id. at ¶¶ [0003] – [0011]. See, also, Id. at ¶ [Abstract] (“update each mobile
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`communications
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`terminal…”).
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`Thus,
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`to understand his
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`invention Sugita
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`intentionally set the stage as transmitting an update to each mobile terminal that
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`could be updated with the transmitted information, whether by individual ID or as
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`part of a group unit.4 However, it is not Patent Owner’s burden to prove why Sugita
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`fails to disclose the claim limitation—it was and remains at all times Petitioners
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`burden to show how and where Sugita discloses this claim requirement.
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`In re
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`Magnum Oil Tools, 829 F.3d at 1376-77 (“[I]it is inappropriate to shift the burden
`
`to the patentee after institution to prove that the patent is patentable. Instead, the
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`petitioner continues to bear the burden of proving unpatentability after institution,
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`and must do so by a preponderance of the evidence at trial.”).
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`Petitioner’s argument to the contrary is based on the unsupported conjecture
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`that the only reason for Sugita to organize mobile terminals into groups is for
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`exclusion of certain unidentified and uncharacterized mobile terminals from the
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`group units. Sugita, however, is silent on why the mobile terminals were organized
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`into group units. Sugita does not explain whether such group organization was an
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`4 When describing examples of his invention, Sugita refers to “each mobile terminal
`(m1, m2, m3, m4, …).” Sugita never deviates from this description of all mobile
`terminals as “m1, m2, m3, m4, …”, such as by expressly excluding a terminal, such
`as terminal mn. See Ex. 1005 at ¶¶ [0016] – [Description of symbols].
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`13
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`artifact of his software update process or was an artifact of some factor unrelated to
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`the software update process, such as vehicle type, geographic area, or customer
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`served. It is more likely, based on the whole disclosure of Sugita, that group units
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`simply were an accounting or tracking expedient for dealing with the likely
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`thousands of mobile terminals (e.g., 1,000 cargo transport vehicles described by
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`Sugita) that needed updating. In other words, rather than starting by transmitting an
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`update to 1,000 individual terminal IDs, Sugita’s process could start with, for
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`example, 20 group units representing the 1,000 terminals.
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`Regardless of why Sugita’s inventions used “group units,” Petitioners’
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`unsupported speculation of what a person of skill would have understood on this
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`point is not evidence of the “content” of Sugita required under the validity analysis.
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`Sugita does not disclose or adequately suggest that at least one discrete patch
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`message is transmitted to one mobile unit capable of being updated but not to another
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`mobile unit also capable of being updated.
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`In paragraph 13, Sugita discloses that (emphasis added)
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`Meanwhile, the 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 units residing
`in specified groups) …
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`Ex. 1005 at ¶ [0013]. The emphasized portion above is consistent with the disclosure
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`that all mobile terminals capable of being updated are sent the update information.
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`Petitioner relies primarily on the parenthetical to support its argument that some
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`unidentified and uncharacterized mobile terminals are excluded from the group unit
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`transmission. Notably, the parenthetical has been translated differently from the
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`original Japanese by Petitioner Samsung and by Petitioner Microsoft, as shown
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`below.
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`Samsung
`Translation of
`Sugita,
`IPR2018-1552,
`Ex. 1005 at ¶
`[0013]
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`Microsoft
`Translation of
`Sugita,
`IPR2019-106,
`Ex. 1005 at ¶
`[0013]
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`Indeed, Petitioner Samsung’s expert Bederson appears to quote from Petitioner
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`Microsoft’s translation of Sugita when opining about
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`the meaning of
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`the
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`parenthetical. See IPR2018-1552 Ex. 1002 (Bederson) at ¶ 101. In other words, the
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`Sugita translation provided by Samsung and to which Bederson cites does not say
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`what he testifies it says. Further, Bederson’s declaration (IPR2018-1552 Ex. 1002)
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`is dated August 16, 2018, which is two months before the Microsoft translation of
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`Sugita (IPR2019-106 Ex. 1005) was obtained (i.e., October 9, 2018). So, Bederson’s
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`testimony is incompetent on this point at least because it does not identify the
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`evidence upon which it relies to support his opinions.
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`The incompetence of
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`the Bederson testimony notwithstanding,
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`this
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`parenthetical simply means that Sugita forwards the update information to all mobile
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`terminals by first forwarding to “all [mobile communication terminals] or the
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`[mobile communication terminals] addresses belonging to a specific group.” This
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`understanding is clear from considering Sugita as a whole and especially paragraphs
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`13 and 14, which, as shown below, clearly equate “unit” with “mobile
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`communications terminal.”
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`When considered as a whole for all of its teachings, Sugita discloses sending update
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`information to all mobile communication terminals that are operable to update
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`current operating software with the update information. Sugita never discloses,
`
`whether by group unit or by individual ID, not sending update information to a
`
`mobile communications terminal that is operable to update current operating
`
`software with the update information.
`
`To the extent Sugita discloses not sending update information to a mobile
`
`communication terminal (a characterization to which Patent Owner does not
`
`accede), Petitioners failed to show that such “excluded” terminal was operable to
`
`update current operating software with the update information, as required by
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`17
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`claim 1, and that the Sugita base station “decided” (as required by the Board), to not
`
`send the update information to that operable terminal.
`
`Thus, there is no plausible basis for the Board to conclude that Petitioners
`
`have carried their burden to demonstrate that Sugita’s group unit addressing protocol
`
`disclosed transmitting update information to one mobile terminal but not to a second
`
`mobile terminal when both terminals were “operable to create patched operating
`
`code by merging the at least one patch with current operating code located in the
`
`[] mobile unit.”
`
`b.
`
`Petitioner’s “Target List” Argument Also is not
`Adequately Supported by Sugita’s Disclosure
`
`Petitioners also argue that Sugita’s [Figure 1] disclosed to a person of skill
`
`that Sugita transmitted update information to one mobile terminal but not to a second
`
`mobile terminal. The relevant portion of [Figure 1] and the associated text are
`
`reproduced below.
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`18
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`Ex. 1005 at [Figure 1] & [0034].
`
`Petitioners improperly read Sugita with one eye focused on invalidating claim
`
`1. There is nothing in [Figure 1] or the associated text that explains how or which
`
`mobile communication terminals are “targeted for updates.” In contrast, a proper
`
`reading of Sugita is that only those mobile communication terminals that are capable
`
`of being updated are targeted. For example, it is logical that recently deployed
`
`mobile communications terminals already have up-to-date software, and therefore
`
`those terminals would not be “listed up” as a targeted terminal. Such up-to-date
`
`terminals would not qualify as a “second mobile unit” under claim 1 at least because
`
`the current operating code could not be updated with the patch. See Ex. 1001 at
`
`claim 1. See In re Magnum Oil Tools, 829 F.3d at 1376-77 (“[I]it is inappropriate
`
`to shift the burden to the patentee after institution to prove that the patent is
`
`patentable.
`
`Instead,
`
`the petitioner continues to bear the burden of proving
`
`unpatentability after institution, and must do so by a preponderance of the evidence
`
`at trial.”).
`
`Regardless, Petitioners bore the burden of proving that Sugita disclosed to a person
`
`of skill that the manager host was operable to “decide” which specific mobile unit
`
`to send the at least one discrete patch message to before beginning transmission
`
`such that the at least one discrete patch message is transmitted to the first mobile
`
`19
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`unit but not the second mobile unit, when the second mobile unit was “operable to
`
`create patched operating code by merging the at least one patch with current
`
`operating code located in the second mobile unit.” Petitioners have wholly failed
`
`to carry this burden.
`
`Thus, there is no plausible basis for the Board to conclude that Petitioners
`
`have demonstrated that Sugita’s “target
`
`list” addressing protocol disclosed
`
`transmitting update information to one mobile terminal but not to a second mobile
`
`terminal when both terminals are operable to update current operating software
`
`with the update information.
`
`2.
`
`Conclusion Concerning Disclosure Of Sugita
`
`It cannot be legitimately disputed that the second mobile unit of claim 1 of the
`
`‘275 patent must be “operable to create patched operating code by merging the at
`
`least one patch message with current operating code.” Ex. 1001 at claim 1.
`
`It also cannot be legitimately disputed that a mobile unit that has been updated
`
`with “the at least one patch message” is not a mobile unit that is “operable to create
`
`patched operating code by merging the at least one patch message with current
`
`operating code.”
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`20
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`Petitioners have failed to establish that Sugita discloses updating less than all
`
`mobile terminals that are capable of being updated with the update information. For
`
`at least this reason, Petitioners have failed to establish that claim 1 is anticipated by
`
`Sugita.
`
`Because Petitioners have not accurately characterized the disclosure or
`
`content of Sugita, Petitioners’ obviousness allegations over Sugita must be rejected
`
`as well. Further, Petitioners have provided no evidence or argument why a person
`
`of skill would be motivated to modify Sugita to not send update information to a
`
`mobile terminal that is operable to update the current operating code. For this reason
`
`also, Petitioners’ obviousness allegations over Sugita must be rejected as well.
`
`B.
`
`Petitioners Have Not Shown That The Other References
`Combined With Sugita Rendered Claim 1 Obvious.
`
`1. Wortham Was Not Shown To Disclose The Selective
`Updating Required By Claim 1
`
`Petitioner Samsung relies on Wortham (Ex. 1014) to conclude that “a person
`
`of ordinary skill in the art would have been motivated to modify Sugita such that its
`
`terminals are portable, battery-powered device [sic] for use while in motion.”
`
`IPR2018-01552 Pet. at 39-45; IPR2018-01552 Ex. 1002 (Bederson) at ¶ 110.
`
`Because the mobile units of claim 1 are not limited to a battery-powered-devices,
`
`Petitioner’s reliance on Wortham is irrelevant.
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`21
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`Moreover, Petitioner failed to show that Wortham disclosed the claim element
`
`missing from Sugita’s disclosure; that is, selective updating.
`
`In other words,
`
`Petitioner provided no evidence or argument that Wortham disclosed transmitting
`
`update information to one mobile terminal but not to a second mobile terminal when
`
`both terminals were operable to update current operating software with the update
`
`information. See IPR2018-1552 Pet. at 39-45; IPR2018-1552 Ex. 1002 (Bederson)
`
`at ¶¶ 109 – 113.
`
`For at least this reason, Petitioner Samsung’s proposed combination of Sugita
`
`and Wortham fails to disclose or adequately suggest the combination of all elements
`
`in claim 1.
`
`2.
`
`Burson Was Not Shown To Disclose The Selective Updating
`Required By Claim 1
`
`Petitioner Microsoft relies on Burson (IPR2019-106 Ex. 1008) “[t]o the extent
`
`one may argue Sugita’s mobile terminal is not a ‘battery-powered-device’...”
`
`IPR2019-106 Pet. at 48-50. Because the mobile units of claim 1 are not limited to
`
`a battery-powered-devices, Petitioner’s reliance on Burson is irrelevant.
`
`Moreover, Petitioner failed to show that Burson discloses the claim element
`
`missing from Sugita’s disclosure; that is, selective updating.
`
`In other words,
`
`Petitioner provided no evidence or argument that Burson disclosed transmitting
`
`22
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`update information to one mobile terminal but not to a second mobile terminal when
`
`both terminals were operable to update current operating software with the update
`
`information. See IPR2019-00106 Pet. at 48-50; IPR2019-00106 Ex. 1003 (White)
`
`at ¶¶ 101 – 110.
`
`For at least this reason alone, Petitioner Microsoft’s proposed combination of
`
`Sugita and Burson fails to disclose or adequately suggest the combination of all
`
`elements in claim 1.
`
`3.
`
`Kirouac Was Not Shown To Disclose The Selective Updating
`Required By Claim 1
`
`Petitioner Microsoft
`
`relies on Kirouac (IPR2019-00106 Ex. 1007)
`
`to
`
`supplement its arguments that Sugita discloses “merging” the at least one patch with
`
`current operating code. See IPR2019-00106 Pet. at 51-55; IPR2019-00106 Ex. 1003
`
`(White) at ¶¶ 120 – 128.
`
`Petitioner failed to show that Kirouac disclosed the claim element missing
`
`from Sugita’s disclosure; that is, selective updating.
`
`In other words, Petitioner
`
`provided no evidence or argument that Kirouac disclosed transmitting update
`
`information to one mobile terminal but not to a second mobile terminal when both
`
`terminals were operable to update cu
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