`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`U.S. Patent No. 5,699,275
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-01552 – Petitioner’s Reply
`
`TABLE OF CONTENTS
`I.
`INTRODUCTION ........................................................................................ 1
`II. PO’S ARGUMENTS IN ITS PRELIMINARY RESPONSE NOT
`RAISED IN ITS RESPONSE ARE WAIVED ........................................... 2
`III. PO’S INTERPRETATION OF THE “WHEREIN” CLAUSE
`SHOULD BE REJECTED ........................................................................... 3
`IV. CLAIM 1 IS UNPATENTABLE BASED ON ALL INSTITUTED
`GROUNDS .................................................................................................... 9
`A. Ground 1: Sugita Discloses the “Wherein” Clause and “Second
`Mobile Unit” Features Recited in Claim 1 ........................................... 9
`1.
`Sugita’s Group ID Features Disclose the “Wherein”
`Clause ......................................................................................... 9
`Sugita’s Individual ID Features Disclose the “Wherein”
`Clause ....................................................................................... 13
`Ground 2: The Combination of Sugita and Wortham
`Discloses the “Wherein” Clause and “Second Mobile
`Unit” Features Recited in Claim 1 ........................................... 16
`Ground 3: The Combination of Ballard and Shimizu
`Discloses the “Wherein” Clause and “Second Mobile
`Unit” Features Recited in Claim 1 ........................................... 17
`V. CONCLUSION ........................................................................................... 18
`
`2.
`
`3.
`
`4.
`
`
`
`i
`
`
`
`IPR2018-01552 – Petitioner’s Reply
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Canfield Scientific, Inc. v. Melanoscan, LLC,
`IPR2017-02125, Paper 62 (Mar. 26, 2019) .......................................................... 2
`Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc.,
`246 F.3d 1336 (Fed. Cir. 2001) .......................................................................... 15
`Ericsson, Inc. v. D-Link Sys., Inc.,
`773 F.3d 1201 (Fed. Cir. 2014) ............................................................................ 5
`Hewlett-Packard Co. v. Bausch & Lomb Inc.,
`909 F.2d 1464 (Fed. Cir. 1990) ............................................................................ 5
`ParkerVision, Inc. v. Qualcomm Inc.,
`903 F.3d 1354 (Fed. Cir. 2018) ............................................................................ 5
`RPX Corp. v. Collision Avoidance Techs. Inc.,
`IPR2017-01337, Paper 35 (Nov. 13, 2018) .......................................................... 2
`Trane U.S. Inc. v. SEMCO, LLC,
`IPR2018-00514, Paper 36 (April 17, 2019) ......................................................... 2
`Unified Patents Inc. v. Convergent Media Solutions, LLC,
`IPR2016-00047, Paper 23 (P.T.A.B. Mar. 29, 2017) ......................................... 15
`Regulations
`37 C.F.R. § 42.6(a)(3) ................................................................................................ 2
`
`ii
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`I.
`
`INTRODUCTION
`Petitioner submits this Reply to Patent Owner’s (“PO”) Response (Paper 16,
`
`“Resp.”) concerning claim 1 of the ’275 patent.
`
`PO makes similar arguments against each of the three grounds, 1) Sugita, 2)
`
`Sugita and Wortham, and 3) Ballard and Shimizu. PO’s arguments fail because they
`
`are based on an incorrect interpretation of the “wherein” clause1 recited in claim 1.
`
`Moreover, even under PO’s interpretation, the prior art in the instituted grounds
`
`discloses or suggests the system recited in claim 1. Thus, none of PO’s positions
`
`warrant disruption of the Board’s initial findings and analysis as to why claim 1 is
`
`unpatentable in view of the prior art asserted in the instituted grounds. Accordingly,
`
`for the reasons set forth in the Petition (Paper 1, “Pet.”) and further explained below,
`
`claim 1 should be found unpatentable and cancelled.
`
`
`1 Petitioner refers to claim element 1(e) as the “wherein” clause, which 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.” (Ex. 1001, 13:50-53.)
`
`1
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`II.
`
`PO’S ARGUMENTS IN ITS PRELIMINARY RESPONSE NOT
`RAISED IN ITS RESPONSE ARE WAIVED
`As a preliminary matter, PO’s attempt to incorporate by reference all of its
`
`arguments from its Preliminary Response is improper. (Resp., 1 (“Patent Owner
`
`incorporates herein those arguments presented in its Preliminary Response.”).) By
`
`rule, “[a]rguments must not be incorporated by reference from one document into
`
`another document.” 37 C.F.R. § 42.6(a)(3); see also RPX Corp. v. Collision
`
`Avoidance Techs. Inc., IPR2017-01337, Paper 35 at 20 (Nov. 13, 2018)
`
`(“Incorporation by reference is a direct violation of our rules, which prohibit
`
`incorporation by reference from other documents.”). Additionally, “[a]rguments
`
`that are not developed and presented in the Patent Owner Response, itself, are not
`
`entitled to consideration.” Id. at 20-21 (citations and internal quotation marks
`
`omitted). In fact, the Board’s scheduling order explicitly cautions PO “that any
`
`arguments for patentability not raised in the response may be deemed waived.”
`
`(Paper 10, 5.) Therefore, PO’s arguments raised in its Preliminary Response but not
`
`raised in its Response are waived and not addressed herein. See Trane U.S. Inc. v.
`
`SEMCO, LLC, IPR2018-00514, Paper 36 at 4-6 (April 17, 2019) (finding “waiver
`
`of any argument” in patent owner’s “post-institution response due to improper
`
`incorporation by reference” of arguments “from [patent owner’s] “pre-institution
`
`response”); Canfield Scientific, Inc. v. Melanoscan, LLC, IPR2017-02125, Paper 62
`
`2
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`at 7 (Mar. 26, 2019) (“Patent Owner waived this argument by not substantively
`
`addressing it in the Response.”).
`
`III. PO’S INTERPRETATION OF THE “WHEREIN” CLAUSE SHOULD
`BE REJECTED
`PO does not expressly propose any constructions.2 PO does, however, imply
`
`that the “wherein” clause recited in claim 1 should be read to require that the
`
`manager host address the at least one discrete patch message when both the first and
`
`second mobile units are capable of being updated by the same message:
`
`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 must be operable to create
`patched operating code from current operating code, and
`that the host transmit the patch to one mobile unit and not
`the other even though both units are capable of updating
`current operating code.
`
`
`2 PO does not expressly dispute any of Petitioner’s proposed claim constructions,
`
`including the constructions of the phrases “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,” which were adopted by the Board. (Pet., 8-16; Paper
`
`9 (“Decision” or “Dec.”), 4-7.)
`
`3
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`(Resp., 7.) According to PO, “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.’” (Id., 6.) PO’s
`
`interpretations are confusing and not dispositive because the prior art at-issue
`
`discloses all of the limitations of claim 1 even under PO’s interpretations.
`
`First, there is no dispute that the language of claim 1 recites a “second mobile
`
`unit” that is “operable to receive the at least one discrete patch message” and
`
`“operable to create patched operating code by merging the at least one patch with
`
`current operating code.” (Ex. 1001, 13:44-49.) Also, there is no dispute that the
`
`claim language recites a “manager host” that is “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., 13:50-
`
`53.) To be sure, however, this claim language only means that the manager host is
`
`capable of addressing the message such that it is transmitted to the first mobile unit
`
`but not the second mobile unit. The claim language does not preclude the manager
`
`host from also being capable of addressing the message so that it is also transmitted
`
`to the second mobile unit. This understanding of the claim language is confirmed
`
`by dependent claim 14, which recites that the claimed manager host is “further
`
`operable to address the at least one discrete patch message such that the at least one
`
`4
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`discrete patch message is transmitted to the first mobile unit and to the second mobile
`
`unit.” (Id., 14:22-26.) Based on this understanding, as explained in the Petition and
`
`below, the prior art discloses the features recited in claim 1.
`
`Second, PO’s argument that “a 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,” (Resp., 6 (emphasis omitted)), is inconsistent with the
`
`language of claim 1. Claim 1 recites a “system” comprising a “second mobile unit”
`
`that is “operable to” receive the message and create patched operating code. (Ex.
`
`1001, 13:44-49.) System claims “cover what a device is, not what a device does.”
`
`Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
`
`Therefore, prior art may anticipate or render obvious a system claim “if the reference
`
`discloses [a system] 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 (Fed. Cir. 2018); see also id. at
`
`1362 (“In contrast, where claim language recites ‘capability, as opposed to actual
`
`operation,’ an apparatus that is ‘reasonably capable’ of performing the claimed
`
`functions ‘without significant alterations’ can infringe those claims.” (citing
`
`Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1217 (Fed. Cir. 2014))). That
`
`means a mobile device whose operating code has been updated by the patch message
`
`5
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`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.
`
`PO does not point to any evidence that would compel a different result or, for
`
`that matter, any evidence at all. (See Resp., 3-7.) Nor could it. None of the claims
`
`of the ’275 patent exclude a mobile unit whose operating code has been updated by
`
`the patch message from the scope of the claimed “second mobile unit.” (See Ex.
`
`1001, 13:33-16:65.) Likewise, the specification of the ’275 patent does not disclose
`
`that such a mobile unit cannot be a “second mobile unit,” as claimed. (See generally
`
`id.)
`
`Again, as explained in the Petition and below, the prior art discloses the
`
`features recited in claim 1.
`
`Third, even if PO were correct that a mobile unit whose operating code has
`
`been updated by the patch message cannot be the claimed “second mobile unit,”
`
`claim 1 is still unpatentable because, as explained in the Petition and below, the prior
`
`art discloses addressing a message such that it is transmitted to a first mobile unit
`
`but not to a second mobile unit that is operable to receive the message and create
`
`patched operating code by merging the message with current operating code. In fact,
`
`the prior art is similar to the embodiments described in the specification of the ’275
`
`patent and covered by the claims.
`
`The specification of the ’275 patent alleges that the advantages of its invention
`
`6
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`include allowing remote patching of operating code in a mobile unit, where the
`
`“mobile units [are] operable to interpret patch messages and create patched operating
`
`code therefrom.” (Ex. 1001, 5:52-55.) The specification explains that a central
`
`location can “broadcast [the patches] to a number of mobile units” or “can also tailor
`
`the broadcasts of patches to different mobile units.” (Id., 2:18-23.) According to
`
`the specification, the “manager host 16” may “desire to enhance, correct, or replace
`
`current operating code located in one or more of the mobile units” (id., 3:39-41) and
`
`that patch messages are transmitted to “appropriate mobile units” and “each” of the
`
`units. (Id., 3:61-4:1 (emphasis added).)
`
`The specification discloses three ways that the “[m]anager host 16 can address
`
`a patch message”: the manager host can address a patch message (1) “to one of the
`
`mobile units,” (2) “to all of the mobile units,” or (3) “to a group of mobile units.”
`
`(Id., 5:14-24; see also id., 5:37-48.) Thus, consistent with the “wherein” clause of
`
`claim 1, the specification discloses a manager host that is capable of addressing a
`
`patch such that it is only transmitted to one mobile unit and not others and capable
`
`of addressing a message such that it is transmitted to a group of mobile units (e.g.,
`
`units 22, 24 in FIG. 1) but not to a different group of mobile units (e.g., units 26, 28,
`
`30 in FIG. 1), even though the mobile units that do not receive the message are
`
`operable to receive the message and create patched operating code. (Id., 4:9-17,
`
`5:49-56, 13:18-21 (“The mobile units are capable of receiving the patch messages,
`
`7
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`creating patched operating code, and switching execution to the patched operating
`
`code without interrupting normal functions.”).) The “wherein” clause in claim 1
`
`covers at least both of these possibilities.3 And, as explained in the Petition and
`
`below, the prior art’s disclosure is similar, in that it discloses a “manager host” that
`
`is operable to address a patch message such that it is transmitted to a first mobile
`
`unit (alone or in a group of mobile units that includes the first mobile unit) but not a
`
`second mobile unit (alone or in a group of different mobile units) that includes the
`
`second mobile unit, where both the first and second mobile units are “operable to”
`
`receive the message and create patched operating code, like recited in claim 1.
`
`Accordingly, PO’s arguments regarding the “wherein” clause are not only
`
`wrong but also irrelevant because, as explained below, the prior art in the instituted
`
`grounds discloses this clause under all proposed interpretations.
`
`
`
`
`
`
`3 Claim 1 recites that the manager host is “operable to” address the patch message
`
`such that it is transmitted “to the first mobile unit but not to the second mobile unit,”
`
`(Ex. 1001, 13:50-53), and dependent claim 14 recites that the manager host is
`
`“further operable to” address the patch message such that it is transmitted “to the
`
`first mobile unit and to the second mobile unit,” (id., 14:21-25).
`
`8
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`IV. CLAIM 1 IS UNPATENTABLE BASED ON ALL INSTITUTED
`GROUNDS
`A. Ground 1: Sugita Discloses the “Wherein” Clause and “Second
`Mobile Unit” Features Recited in Claim 1
`PO raises two arguments with respect to Sugita. (See Resp., 7-19.) First, PO
`
`argues that Sugita’s use of group IDs to facilitate patch updates for mobile units
`
`cannot disclose a “manager host” that addresses the first mobile unit but not the
`
`second mobile unit, as recited in claim 1. (Resp., 9-16.) Second, PO argues that
`
`Sugita’s use of individual IDs to facilitate patch updates to mobile units does not
`
`disclose these same claim features. (Id., 16-18.) Both arguments fail.
`
`Sugita’s Group ID Features Disclose the “Wherein” Clause
`1.
`PO’s first argument relates to Sugita’s use of a group ID to facilitate patch
`
`updates for mobile units. (Resp., 9-16.) PO assumes that the group ID techniques
`
`disclosed by Sugita encompass all mobile units in the universe of mobile units that
`
`may be in Sugita’s system. However, PO ignores the disclosures in Sugita
`
`explaining that multiple group IDs can be used for updating operating code of mobile
`
`units in “group units” to allow for efficient transmission of the patch update to
`
`separate sets of multiple mobile units in Sugita.
`
`Sugita’s invention addresses problems with updating operating code in
`
`systems including many mobile units (e.g., 1,000) using limited capacity wireless
`
`channels with “small capacity.” (Ex. 1005, ¶¶[0004], [0009], [0011], [0012].)
`
`According to Sugita, one way to address these problems involves “updating the
`
`9
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`plurality of mobile communications terminals in group units” (id., ¶[0012]) by
`
`“performing the forwarding [of the update information (all or part of the software)]
`
`based on the group ID of each group unit (addressed to all units or to units residing
`
`in specified groups)” (id., [0013] (emphasis added)).4 (See also id., Abstract,
`
`¶¶[0014] (“a group ID is used for the multiple mobile communications terminals, to
`
`transmit update information to each mobile communications terminal in said group”
`
`(emphasis added)), [0015] (“multiple mobile communications terminals are updated
`
`in group units” (emphasis added)), [0026] (“a one-to-multiple communication
`
`format using a group ID for updating the above-mentioned multiple mobile
`
`communication terminals m1, m2, m3, m4 . . . in groups” (emphasis added)), [0029]
`
`(“when using the above-mentioned group ID, since the update information is sent at
`
`the same time for multiple mobile communications terminals resident in the
`
`group” (emphasis added)), [0034]-[0039], [0043]-[0047], [0049] (“the multiple
`
`
`4 PO’s allegations against Dr. Bederson’s direct testimony in paragraph 101
`
`regarding the translation of Sugita (Ex. 1005) are wrong. (Resp., 14-15.) A simple
`
`review of paragraph [0013] of Ex. 1005 (Sugita) and paragraph 101 of Dr.
`
`Bederson’s declaration shows they are in accord and are not as PO represents in its
`
`Response. (Id., 14.)
`
`10
`
`
`
`communications terminals are updated in group units” (emphasis added)); Pet., 37-
`
` IPR2018-01552– Petitioner’s Reply
`
`38.)
`
`Addressing and transmitting patch updates to multiple mobile units within
`
`separate “group units” with corresponding group IDs is different from a single
`
`broadcast message that is sent to all mobile units in Sugita’s system, which is how
`
`PO appears to interpret Sugita. (Resp., 10-11.) PO’s interpretation is unsupported
`
`and inconsistent with Sugita’s teachings. For example, Sugita expressly discloses
`
`techniques that avoid using a single broadcast message sent to all mobile units at
`
`once because of the large number of mobile units involved (e.g., 1,000) and the
`
`capacity limitations of the wireless networks used in Sugita’s system. (Id., ¶¶[0004],
`
`[0009], [0011], [0012].) Thus, while Sugita does look to eventually update all
`
`mobile units, it does so by addressing and transmitting the same message using
`
`separate and distinct group units comprised of mobile units with corresponding
`
`group IDs to enable the efficient transmission of patch information. (See, e.g., id.,
`
`¶¶[0011]-[0012].) PO agrees with this understanding. (Resp., 13 (PO arguing that
`
`“[i]t is more likely, based on the whole disclosure of Sugita, that group units simply
`
`were an accounting or tracking expedient for dealing with the likely thousands of
`
`mobile terminals (e.g., 1,000 cargo transport vehicles described by Sugita) that
`
`needed updating” and that “[i]n other words, rather than starting by transmitting an
`
`update to 1,000 individual terminal IDs, Sugita’s process could start with, for
`
`11
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`example, 20 group units representing the 1,000 terminals”).)
`
`Despite these teachings, PO suggests that Sugita “does not expressly disclose
`
`that ‘group units’ do not account for all of the mobile terminals that could be updated
`
`by transmission of a patch.” (Resp., 10.) However, that is exactly what Sugita
`
`discloses. At any one time, mobile units in a first group unit with a first group ID
`
`can be updated while a second group unit with a second group ID may not be. While
`
`the base station (“manager host”) aims to update all mobile units in the system, it
`
`uses group IDs and group units to stage that update process so as not to overload the
`
`network. (See, e.g., Ex. 1005, ¶¶[0004], [0009], [0011], [0012]; see also id., ¶[0010]
`
`(“updating over a data communication system with small line capacity is likely to
`
`be troublesome due to the need to transmit vast amounts of data to each mobile
`
`communication terminal”).) Thus, the base station uses a group ID to target and
`
`transmit a patch message to one group unit separate from a different group unit with
`
`a different group ID. And because the base station (“manager host”) is operable to
`
`address and transmit the same patch update to all mobile units in Sugita’s system (as
`
`separate group units), any mobile unit in another group unit that has not yet been
`
`addressed by the base station using that unit’s group ID is a “second mobile unit”
`
`that is “operable to” receive the patch message and create the patched operating
`
`code, like recited in claim 1 of the ’275 patent. (See, e.g., Pet., 37-38; Ex. 1002,
`
`¶¶101-102.)
`
`12
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`2.
`
`Sugita’s Individual ID Features Disclose the “Wherein”
`Clause
`PO’s second argument, that Sugita’s use of individual IDs to target specific
`
`mobile units does not meet claim 1, is equally unavailing. (Resp., 16-18.)
`
`PO’s argument focuses solely on Figure 1 of Sugita. (See id., 16-17.)
`
`However, as the Petition demonstrates, Petitioner’s argument is not limited to this
`
`figure. (Pet., 38-39, citing Ex. 1005, ¶¶[0013], [0017], [0026]-[0028], [0034]-
`
`[0039], [0041], [0043]-[0047]; Ex. 1002 ¶¶ 23-29, 31-32, 45-48, 103-105.) The
`
`cited portions of Sugita that PO ignores, in addition to Figure 1, make clear that
`
`individual IDs are used “to perform updates of one unit at a time” for efficient
`
`updating performance (Ex. 1005, ¶[0013]) and thus clearly disclose a base station
`
`(“manager host”) that is operable to decide which specific mobile unit to send the at
`
`least one discrete patch message to before beginning transmission of the packet
`
`message, such that the base station addresses a “first mobile station” but not a
`
`“second mobile station.” (Id.; see also id., ¶¶[0014] (“individual IDs are used for
`
`each of the mobile communications terminals”), [0017] (“in the end stage of the
`
`above-mentioned update, so that the above-mentioned multiple communications
`
`terminals . . . are updated . . . individually”), [0026] (“one-to-one communication
`
`format whereby individual IDs used to individually update the above-mentioned
`
`multiple mobile communication terminals”), [0037] (“the process checks whether
`
`any mobile communications terminals remain on the target list”), [0038]-[0039]
`
`13
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`(disclosing that if “there are non-update mobile communication terminals
`
`remaining,” the process may “use[] the individual ID to send the update information
`
`to the remaining terminals”), [0048] (“the individual ID is used to update each
`
`mobile communications terminal one unit at a time, enabling efficient (with a small
`
`number of packets) updating performance of each mobile communications
`
`terminal”).) By targeting individual mobile units one at a time, the base station is
`
`“operable to” address a message such that it is transmitted to a first mobile unit but
`
`not a second mobile unit. The message would be transmitted to the second mobile
`
`unit later and separately.
`
`Rather than addressing these teachings of Sugita cited in the Petition and
`
`relied upon by Dr. Bederson, PO speculates 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” and that “[s]uch up-to-date
`
`terminals would not qualify as a ‘second mobile unit.’” (Resp., 16-17.) Not true.
`
`As discussed above, Sugita discloses sending updates to one terminal at a time based
`
`on a target list of remaining terminals to be updated. Accordingly, Sugita’s
`
`disclosure sufficiently supports the second way of disclosing the “wherein” clause
`
`of claim 1 as set forth in the Petition. (Pet., 38-39.) PO’s attorney arguments have
`
`“marginal probative value” given that PO “does not cite to any expert testimony
`
`explaining how one of ordinary skill in the art would have understood [the prior art]
`
`14
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`disclosure.” Unified Patents Inc. v. Convergent Media Solutions, LLC, IPR2016-
`
`00047, Paper 23 at 24-25 (P.T.A.B. Mar. 29, 2017).
`
`PO’s argument also fails because it assumes that claim 1 precludes mobile
`
`units from receiving previous updates or previously attempted updates. But claim 1
`
`does not preclude such updates. Claim 1 is a “system” claim that comprises first and
`
`second mobile units, each of which is “operable to” receive the patch message and
`
`create patched operating code. While the claimed “manager host” must be “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,” (Ex. 1001, 13:50-53), the claim does not preclude the “manager host” from
`
`being “operable to” perform other functions, including addressing the “second
`
`mobile unit” for receiving the patch message at some point. See Crystal
`
`Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348
`
`(Fed. Cir. 2001) (“In the parlance of patent law, the transition ‘comprising’ creates
`
`a presumption that the recited elements are only a part of the device, that the claim
`
`does not exclude additional, unrecited elements.”) Indeed, dependent claim 14
`
`requires that the same claimed “manager host” be capable of performing this feature
`
`by reciting that the manager host of claim 1 is further operable to address the patch
`
`message such that it is transmitted to both the first and second mobile units. (Ex.
`
`1001, 14:21-25.)
`
`15
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`Thus, even if the disclosed Sugita system attempts to provide patch updates
`
`to a certain set of mobile units in a group unit, Sugita discloses that the base station
`
`is capable of using individual IDs to address specific mobile units one at a time for
`
`receiving the same patch update (and performing that feature). These disclosures
`
`demonstrate that the base station (“manager host”) is “operable to” address a first
`
`mobile unit but not a second mobile unit, and that the “second mobile unit” is
`
`operable to receive that patch message and create patched operating code, as required
`
`by claim 1 and as explained in the Petition. (See e.g., Pet., 30-39; Ex. 1002, ¶¶ 89-
`
`105.)
`
`Accordingly, as demonstrated in the Petition and the supporting evidence in
`
`the record, the combined Sugita system discloses the limitations of claim 1.
`
`3. Ground 2: The Combination of Sugita and Wortham
`Discloses the “Wherein” Clause and “Second Mobile Unit”
`Features Recited in Claim 1
`PO’s argument against the Sugita-Wortham combination is the same argument
`
`made against Ground 1. (Resp., 20.) As such, for the same reasons discussed above
`
`and in the Petition, the combination of Sugita and Wortham discloses and suggests
`
`each limitation of claim 1, including the “wherein” limitation. (Pet., 39-45.)
`
`16
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`4. Ground 3: The Combination of Ballard and Shimizu
`Discloses the “Wherein” Clause and “Second Mobile Unit”
`Features Recited in Claim 1
`PO’s arguments against the Ballard-Shimizu combination focuses on its
`
`interpretation of claim 1 where a mobile unit that has already received the patch
`
`update cannot be a “second mobile unit” that is “operable to” receive the patch
`
`message and create patched operating code as recited in the claim. (Resp., 21-23.)
`
`But, as noted above in Section III, PO’s interpretation of claim 1 is incorrect. (Supra
`
`Section III.)
`
`Moreover, PO fails to appreciate that a scenario where one terminal may have
`
`already downloaded the patch update (“second mobile unit”) means the terminal
`
`(“second mobile unit”) is indeed “operable to” receive the patch message and create
`
`patched operating code as claimed because it actually performed those functions to
`
`update the software. For instance, as explained in the Petition, a POSITA would
`
`have understood that when two terminals enter a new zone the manager host of the
`
`combined system must decide where to send software updates based on, e.g., the
`
`versions of the terminals before beginning transmission of the software updates, as
`
`one of the terminals (“second mobile unit”) may have already downloaded the
`
`software update while the other terminal (“first mobile unit”) has not. (Pet., 70; Ex.
`
`1002, ¶186.) Also, Ballard discloses that transmissions to a specific terminal (“first
`
`mobile unit”) may be performed when the terminal enters a network service area
`
`17
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`requiring a software update (Ex. 1006, 4:32-34, 5:4-7), and that the terminal sends a
`
`message indicating (1) that the terminal has entered a new zone, (2) the version of
`
`terminal, (3) whether the terminal may download software update, and (4) which
`
`type of downloading the terminal will likely accept. (Id., 5:1-7.) Thus, a POSITA
`
`would have recognized that the manager host of the Ballard-Shimizu system must
`
`decide whether to send software updates to the specific terminal (“first mobile unit”)
`
`before beginning transmission. (Pet., 69-70; Ex. 1002, ¶185.) As noted above, given
`
`the “second mobile unit” in the Ballard-Shimizu system may have already received
`
`the same patch update, it is “operable to” provide the same functionalities recited in
`
`claim 1 that PO alleges is not disclosed in the combination.
`
`Accordingly, as demonstrated in the Petition and the supporting evidence in
`
`the record, the combined Ballard-Shimizu system discloses the limitations of claim
`
`1.
`
`V. CONCLUSION
`For the reasons set forth above, in the Petition and accompanying exhibits,
`
`and the Board’s Decision, claim 1 of the ’275 patent should be found unpatentable
`
`and cancelled.
`
`Dated: August 23, 2019
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Joseph E. Palys /
` Joseph E. Palys, Reg. No. 46,508
` Counsel for Petitioner
`
`
`
`18
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
`
`Petitioner’s Reply to Patent Owner’s Response contains, as measured by the
`
`word-processing system used to prepare this paper, 4,247 words. This word count
`
`does not include the items excluded by 37 C.F.R. § 42.24(a).
`
`Dated: August 23, 2019
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
` Joseph E. Palys, Reg. No. 46,508
` Counsel for Petitioner
`
`
`
`
`
`
`
`
`
` IPR2018-01552– Petitioner’s Reply
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
`
`counsel for Patent Owner a true and correct copy of the foregoing Petitioner’s Reply
`
`to Patent Owner’s Response by electronic means on August 23, 2019, at the
`
`following address of record:
`
`
`
`Dated: August 23, 2019
`
`
`
`
`
`
`
`
`
` Albert B. Deaver
`Robert J. McAughan, Jr.
`Christopher M. Lonvick
`McAugha
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
