UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`SAMSUNG ELECTRONICS CO., LTD. And
`GOOGLE LLC
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`
`___________________________
`
`IPR2018-015521
`U.S. Patent No. 5,699,275
`___________________________
`
`PATENT OWNER SUR-REPLY
`
`1 Google LLC, who filed a petition in IPR 2019-00110, has joined as a petitioner in this proceeding.
`
`
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`SAMSUNG ELECTRONICS CO., LTD. And
`GOOGLE LLC
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`
`___________________________
`
`IPR2018-015521
`U.S. Patent No. 5,699,275
`___________________________
`
`PATENT OWNER SUR-REPLY
`
`1 Google LLC, who filed a petition in IPR 2019-00110, has joined as a petitioner in this proceeding.
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION........................................................................................2
`
`THE SECOND MOBILE UNIT MUST BE CAPABLE
`TO CREATE PATCHED OPERATING CODE FROM THE
`SAME PATCH MESSAGE THAT WAS TRANSMITTED TO
`THE FIRST MOBILE UNIT .......................................................................6
`
`THE PETITION DID NOT ADDRESS ALL OF
`THE CLAIM LIMITATIONS AND THE PETITION
`SHOULD BE DENIED IN ALL RESPECTS .............................................8
`
`IV. CONCLUSION..........................................................................................12
`
`CERTIFICATE OF COMPLIANCE ...................................................................14
`
`CERTIFICATE OF SERVICE.............................................................................15
`
`i
`
`
`
`Petitioner’s burden was to file a Petition that “specif[ied] where each element
`
`of [Claim 1] is found in the prior art patents or printed publications relied upon;” and
`
`“the exhibit number of the supporting evidence relied upon to support the challenge
`
`and the relevance of the evidence to the challenge raised, including identifying
`
`specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104 at
`
`(4). As held in Intelligent Bio-Sys, Inc. v. Illumina Cambridge Ltd, 821 F.3d 1359,
`
`1369 (Fed. Cir. 2016), “[i]t is of the utmost importance that petitioners in the IPR
`
`proceedings adhere to the requirement
`
`that
`
`the initial petition identify ‘with
`
`particularity’ the ‘evidence that support the grounds for the challenge to each
`
`claim.’”
`
`As shown below, among other things, the Petition fails to give effect to all
`
`limitations in the challenged claim and correspondingly fails to reasonably
`
`demonstrate how the prior art discloses the invention as actually claimed.
`
`Specifically, the Petition did not adequately identify where the Sugita or Ballard
`
`references disclosed a Manager Host operable to decide not to initiate transmission
`
`of the at least one patch message to a second mobile unit, which second mobile unit
`
`is operable to create patched operating code by merging the at least one patch with
`
`the current operating code. Because the Petition did not adequately specify where
`
`each claim limitation is found in the prior art, the Petition must be denied.
`
`- 1 -
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner’s Reply highlights construction disputes for two claim elements in
`
`dispute: the “Second Mobile Unit” claim element and the “wherein” claim element,
`
`reprinted below with the Board’s constructions and with emphasis.
`
`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 incorporating the at least one patch into the
`current operating code, without replacing the 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 decide which specific
`mobile unit to send the at least one discrete patch message before
`beginning transmission such that the at least one discrete patch
`message is transmitted to the first mobile unit but not to the second
`mobile unit.
`
`Reading claim 1 as a whole, and giving meaning to each word or phrase in the
`
`claim, demonstrates that the claim requires at least a single patch message, which is
`
`introduced in the first claim element and carried throughout the claim with the
`
`antecedent signal “the.” See Wag Acquisition, LLC v. Webpower, Inc., Slip Op. No.
`
`2018-1617(Fed. Cir. August 26, 2019) (identifying antecedent basis for “said
`
`requests”).
`
`- 2 -
`
`
`
`This patch message is what the Manager Host must be operable to transmit to
`
`the First Mobile Unit but not the Second Mobile Unit. And, this same patch message
`
`is what the Second Mobile Unit must be operable to create “patched operating code”
`
`from. If the alleged Second Mobile Unit cannot create patched operating code from
`
`that patch message (such as because the operating code is already patched) that unit
`
`cannot be the “Second Mobile Unit” of claim 1 for purposes of that patch message.
`
`Figure 5 of the ’275 Patent and associated text discloses that if the “version”
`
`of the patch message does not match the current operating code, an error message is
`
`transmitted because the mobile unit (e.g., second mobile unit) is not operable to
`
`create patched operating code from that patch message. It should be understood that
`
`the Second Mobile Unit of claim 1 is determined not solely by whether the Manager
`
`Host is capable to transmit a message to it, or even whether the Second Mobile Unit
`
`is capable to receive the message. Rather, the Second Mobile Unit also has to be
`
`capable to create patched operating code from the same patch message sent to the
`
`first mobile unit.
`
`Petitioner cites to 4:9-17 of the ’275 Patent to support its argument that ’275
`
`Patent discloses not sending the patch to a mobile unit that is capable of updating
`
`current operating code. Reply at 7. However, that portion of the ’275 Patent
`
`discussing Figure 1 explains that the mobile units not receiving the patch “have
`
`different version of operating code than mobile units 26, 28 and 30” and therefore
`
`- 3 -
`
`
`
`would not be capable of creating patched operating code from the different version
`
`patch.
`
`Petitioner’s Reply argues that the “operable to” claim phrasing (i.e., “operable
`
`to” create patched operating code”) means that any prior art that discloses a
`
`reasonable capability of updating software discloses this claim element. Petitioner
`
`relies on ParkerVision v. Qualcomm Inc., 9903 F.3d 1354, 1361 (Fed. Cir. 2018),
`
`which held
`
`Similarly, a prior art reference may anticipate or render obvious an
`apparatus claim — depending on the claim language — if the
`reference discloses an apparatus that is reasonably capable of operating
`so as to meet the claim limitations, even if it does not meet the claim
`limitations in all modes of operation.
`
`ParkerVision, 993 F.3d at 1361 (emphasis added). In this regard, ParkerVision’s
`
`discussion of Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555
`
`F.3d 984 (Fed. Cir. 2009) is instructive. See ParkerVision, 903 F.3d at 1361-1362.
`
`As the ParkerVision court noted (emphasis added)
`
`“[a]nd, unlike in Ball Aerosol, the claims here recite no structural
`limitations that would preclude a prior art reference that discloses a
`different structure from performing the claimed function.”
`
`Here, and unlike in ParkerVision, both the “second mobile unit” claim
`
`element and the “wherein” claim element, recite additional limitations on the
`
`- 4 -
`
`
`
`“operable to” claim language. Specifically, the second mobile unit’s “operable to
`
`create” capability is further limited by the requirement of “incorporating the at least
`
`one patch with current operating code located in the second mobile unit, without
`
`replacing the current operating code.” A prior art reference that discloses a
`
`reasonable capability to create patched operating code without also disclosing that
`
`the patched operating code is created by merging the at least one patch with current
`
`operating code, without replacing the current operating code cannot disclose that it
`
`is “reasonably capable of operating so as to meet the claim limitations”
`
`Further, the “operable to address” requirement of the wherein clause is further
`
`limited by the requirement that “the at least one discrete patch message is transmitted
`
`to the first mobile unit but not the second mobile unit.”
`
`Petitioner’s reliance on Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d
`
`1464, 1468 (Fed. Cir. 1990) is misplaced as well.
`
`In Hewlett-Packard, the Federal
`
`Circuit affirmed the finding of no obviousness because the subject claim language
`
`requiring “grit” was different than the prior art “knurled wheel.” The full quote,
`
`only part of which was cited by Petitioner, puts this in context.
`
`apparatus claims cover what a device is, not what a device does. An
`invention need not operate differently than the prior art
`to be
`patentable, but need only be different.”
`
`Hewlett-Packard, 909 F.2d at 1468 (emphasis in original).
`
`- 5 -
`
`
`
`Claim 1 is different than Sugita, or Ballard or the combinations based on
`
`Sugita and Ballard because the claim language as a whole requires elements not
`
`shown to be present in the prior art.
`
`Because the Panel is charged with determining whether the Petition—as
`
`filed—proved unpatentability of claim 1 by a preponderance of the evidence, the
`
`Panel must determine whether the Petition adequately specified how the prior art
`
`disclosed all limitations of claim 1.
`
`II.
`
`THE SECOND MOBILE UNIT MUST BE CAPABLE TO CREATE
`PATCHED OPERATING CODE FROM THE SAME PATCH
`MESSAGE THAT WAS TRANSMITTED TO THE FIRST MOBILE
`UNIT
`The “Second Mobile Unit” claim element recites
`
`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 incorporating the at least one patch into the current
`operating code, without replacing the entire current operating code,
`located in the second mobile unit and to switch execution to the patched
`operating code;
`
`Among other things recited in the claim element, the Second Mobile Unit has
`
`to be 1) capable to create patched operating code; 2) by incorporating the at least
`
`one patch message (i.e., the at least one patch message transmitted to the first mobile
`
`- 6 -
`
`
`
`unit); and 3) into the current operating code, without replacing the current operating
`
`code.
`
`Thus, because the second mobile unit recites “the at least one discrete patch
`
`message” instead of “a second discrete patch message,” claim 1 requires at least a
`
`single patch message that is capable of being received by and updating both the first
`
`and the second mobile units.
`
`Claim 1 also requires that the Second Mobile Unit be capable of creating
`
`patched operating code from the at one patch message. If the Second Mobile Unit
`
`has already created patched operating code from the at least one patch message, the
`
`Second Mobile Unit is no longer capable of creating patched operating code from
`
`the at one patch message. This is because once the “current operating code” is
`
`patched, the patched operating code becomes the “current operating code” and the
`
`patch can no longer be merged therein.
`
`Thus, a mobile unit that has created “patched operating code” by incorporating
`
`the “at least one patch” into the current operating code cannot be the “Second Mobile
`
`Unit” required by Claim 1 at least because it is not “further operable” to create
`
`“patched operating code” from “the at least one patch message.”
`
`Petitioner’s arguments in Reply read out these very claim limitations that the
`
`Patent Office noted in its reasons for allowance. See Ex. 1004 at 102 (Prior art does
`
`not disclose “a manager host is operable to address the at least one discrete patch
`
`- 7 -
`
`
`
`message such that at least one discrete patch message is transmitted to a first mobile
`
`unit but not to a second mobile unit recited in claim 1;”) (emphasis added).
`
`If claim 1 is to be construed as argued by Petitioner, there is no reason for the
`
`“Second Mobile Unit” element at all. In other words, Petitioners’ construction of
`
`claim 1 would be complete without the “Second Mobile Unit” claim element and
`
`with the wherein clause simply reciting
`
`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]] a second mobile
`unit.
`
`Petitioner did not seek construction of these aspects of Claim 1 in the Petition,
`and its arguments presented post-petition are inconsistent with the actual wording
`and organization of Claim 1.
`
`III. THE PETITION DID NOT ADDRESS ALL OF THE CLAIM
`LIMITATIONS AND THE PETITION SHOULD BE DENIED IN ALL
`RESPECTS
`In the Decision instituting review, the Panel addressed the Manager Host
`
`claim element directed to addressing the patch message to one mobile unit but not
`
`the other (i.e., the “wherein” clause”). The Panel held 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
`
`- 8 -
`
`
`
`message is transmitted to one mobile unit but not another mobile unit,
`the claim language is satisfied.
`
`Decision at 14. This holding is true only so far as it goes. The Board, however, did
`
`not address whether the Second Mobile Unit (i.e., the “but not another mobile unit”)
`
`was operable to (1) receive the at least one discrete patch message; and (2) further
`
`operable to create patched operating code by incorporating the at least one patch
`
`[from the at least one patch message] into the current operating code, without
`
`replacing the current operating code. There is a difference between the Manager
`
`Host being operable to transmit the patch and the Second Mobile being operable to
`
`create patched operating code from the transmitted patch. The Petition conflates the
`
`“transmission and addressing” aspects of the Manager Host with the separate
`
`“patching” aspect of the Second Mobile Unit.
`
`The Petition argues that Sugita discloses two methods of transmitting the
`
`update information to terminals on the “list of update target terminals:” Individual
`
`ID Addressing and Group ID Addressing.
`
`Concerning Sugita’s “Group ID Addressing,” the Petition argues that Sugita’s
`
`disclosure that the software update is “addressed to all [terminal] units or units
`
`residing in specified groups” means that some unit not in the specified groups are
`
`not sent the software update. The Petition does not provide direct support for this
`
`- 9 -
`
`
`
`conclusion from Sugita, and relies on conclusory testimony of its expert, which also
`
`provides no direct support from Sugita.
`
`Reading Sugita as a whole demonstrates that in the Group ID addressing
`
`scheme, all mobile units that can be updated are sent the software update. 2 There
`
`is no disclosure in Sugita of a unit that could be updated that is not sent the update
`
`software. Figure 1 clearly shows this. Step 2 is “Create list of update target
`
`terminals.” There is no disclosure that this list is anything other than the universe of
`
`targets (“units”) that can be or need to be updated. Step 3 is “Use group ID to send
`
`2 Sugita describes his invention as achieving “updates of multiple mobile
`
`communications terminals using a small number of transmission packets by, in the
`
`initial stage of the update, using a group ID that applies to the group of multiple
`
`mobile communications terminals to transmit update information to each mobile
`
`communications terminal within said group, while in the final stage of the update,
`
`in other words, the stage in which the number of mobile communications terminals
`
`within the above-mentioned group that have not been updated has decreased, by
`
`transmitting update information to each mobile communications terminal using an
`
`individual ID that applies to each mobile communications terminal. The method in
`
`this invention is particularly effective in data communication systems with small
`
`communication capacities.” Ex. 1005 at [0014].
`
`- 10 -
`
`
`
`updated information.” There is no disclosure that that this Group ID transmission,
`
`which may involve multiple Groups, is sent to less than all the units in the target list
`
`of Step 2. There is no disclosure that a Sugita unit that could be updated was not
`
`sent the update information by its group ID. Steps 5 and 6 allow the update
`
`information to be resent to all targets on the list based on how many targets
`
`responded. Again, there is no disclosure that that this Group ID transmission is to
`
`less than all the units in the target list of Step 2. There is no disclosure that a Sugita
`
`unit that could be updated was not sent the update information by its group ID. Once
`
`a sufficient number of responses is confirmed, Step 7 switches the addressing
`
`scheme to the targets’ individual ID. The Sugita targets from Step 2 that are not
`
`individually addressed in Step 7 already have patched operating code. Thus, not all
`
`units listed in the target list will be individually addressed. But there is no disclosure
`
`in Sugita that a unit that still needs the update information was not sent the update
`
`information by individual ID addressing. In the words of claim 1, Sugita does not
`
`disclose a second mobile unit that is 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.
`
`Concerning Sugita’s “Individual ID Addressing,” the Petition argues that
`
`Sugita terminal “m1” may not have received the update information using the Group
`
`ID Addressing (m1 was presumably in the first Sugita update group). In that case,
`
`- 11 -
`
`
`
`the Petition argues that the base station would then transmit update information
`
`addressed only to terminal “m1” and not to some other mobile terminal, such as
`
`“m2.” Pet. at 47. However, the Petition does not establish that this other Sugita
`
`terminal “m2” that is not sent the update information, was (1) operable to receive
`
`the specific update information, and that it was (2) operable to create patched
`
`operating code from the update information (i.e., not already updated and removed
`
`from the “list of update target terminals”).
`
`In summary, claim 1 requires that the Second Mobile Unit is capable of
`
`creating patched operating code by incorporating the patch message used by the
`
`First Mobile Unit, but the Manager Host decides not to send the patch message to
`
`the Second Mobile Unit. The Petition and Petitioners’ expert failed to specifically
`
`address this claim limitation and provided no particularized evidence or argument
`
`on this point. Petitioner failed to carry its burden of showing that every claim
`
`element is found in Sugita, or the combination of Sugita and Wortham, or the
`
`combination of Ballard and Shimizu.
`
`IV. CONCLUSION
`
`Petitioner had the burden to demonstrate in its Petition that each element of
`
`claim 1 of the ’275 patent was disclosed in a legitimate combination of prior art
`
`references. Among other failures, the petition failed to demonstrated that the prior
`
`art disclosed a manager host that “decides” not to send an operating code patch to a
`- 12 -
`
`
`
`second mobile unit that is both operable to receive the patch and operable to create
`
`patched operating code from the patch, as required by claim 1. For at least this
`
`reason, the Petition should be denied.
`
`Date: September 23, 2019
`
`Respectfully submitted,
`
`Reg. No. 34,318
`Lead Counsel for Patent Owner
`
`By: /Al Deaver/
`Albert B. Deaver, Jr.
`
`- 13 -
`
`
`
`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. § 42.24(d), I certify that this paper complies with the
`
`type-volume limitation of 37 C.F.R. § 42.24(c)(1) because it contains fewer than the
`
`limit of 5,600 words, as determined by the word processing program used to prepare
`
`the document, excluding the parts of the document exempted by 37 C.F.R.
`
`§ 42.24(c).
`
`Date: September 23, 2019
`
`Respectfully submitted,
`
`By: /Al Deaver/
`Albert B. Deaver, Jr.
`Reg. No. 34,318
`Lead Counsel for Patent Owner
`
`- 14 -
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §42.6(e), I certify that an electronic copy of the foregoing
`
`paper was served along with any accompanying exhibits via the Patent Review
`
`Processing System and via email to Petitioner’s counsel:
`
`PH-Samsung-IronOak-IPR@paulhastings.com
`
`smith@smithbaluch.com
`
`baluch@smithbaluch.com
`
`Date: September 23, 2019
`
`Respectfully submitted,
`
`By: /Al Deaver/
`Albert B. Deaver, Jr.
`Reg. No. 34,318
`Lead Counsel for Patent Owner
`
`- 15 -
`
`
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