Paper 21
`Trials@uspto.gov
`571-272-7822 Entered: February 7, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`IPR2019-00106
`Patent 5,699,275
`____________
`
`
`
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining the Challenged Claim Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 7, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`IPR2019-00106
`Patent 5,699,275
`____________
`
`
`
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining the Challenged Claim Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`IPR2019-00106
`Patent 5,699,275
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`I. INTRODUCTION
`
`Microsoft Corporation (“Petitioner”) filed a Petition for inter partes
`review of claim 1 of U.S. Patent No. 5,699,275 (Ex. 1001, “the
`’275 patent”). Paper 1 (“Pet.”). Iron Oak Technologies, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Upon
`consideration of the Petition and Preliminary Response, we instituted inter
`partes review, pursuant to 35 U.S.C. § 314, as to claim 1 based on all
`challenges set forth in the Petition. Paper 7 (“Decision to Institute” or
`“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 12, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`Response (Paper 13, “Pet. Reply”), and Patent Owner filed a Sur-reply
`(Paper 14, “Sur-reply”). On November 4, 2019, we held an oral hearing. A
`transcript of the hearing has been entered into the record. Paper 20 (“Tr.”).
`In our Scheduling Order, we notified the parties that “any arguments
`for patentability not raised in the [Patent Owner] response may be deemed
`waived.” See Paper 8, 5; see also Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) (“The patent owner response . . .
`should identify all the involved claims that are believed to be patentable and
`state the basis for that belief.”). In addition, “[a]rguments must not be
`incorporated by reference from one document into another document.” 37
`C.F.R. § 42.6(a)(3) (2018). In violation of our rule and guidance, Patent
`Owner argues in its Patent Owner Response: “Patent Owner incorporates
`herein those arguments presented in its Preliminary Response for all
`purposes.” PO Resp. 1. We decline to consider whatever Patent Owner
`considers is “incorporated” from its Preliminary Response as if it were a part
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`of Patent Owner’s Response, but only consider arguments substantively
`presented in Patent Owner’s Response. Any arguments for patentability not
`raised in the Patent Owner Response are deemed waived.
`For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that claim 1 of the ’275 patent is
`unpatentable.
`
`A. Related Matters
`
`The parties indicate that the ’275 patent is the subject of several
`stayed court proceedings. Pet. 3–4; Paper 3, 2–3; Paper 9, 3–4. The ’275
`patent also is the subject of Board proceedings IPR2018-01552 and
`IPR2018-01553. A Final Written Decision is made in each of IPR2018-
`01552 and IPR2018-01553 concurrently with this Final Written Decision. In
`IPR2019-00110, Google LLC filed a motion to join IPR2018-01552, which
`we granted. See Google LLC v. Iron Oak Techs., LLC, IPR2019-00110,
`Paper 11 (PTAB Apr. 3, 2019). In IPR2019-00111, Google LLC filed a
`motion to join IPR2018-01553, which we granted. See Google LLC v. Iron
`Oak Techs., LLC, IPR2019-00111, Paper 10 (PTAB Apr. 3, 2019).
`
`B. The ’275 Patent
`
`The Specification of the ’275 patent describes a system “for remote
`patching or updating of operating code located in a mobile unit.” Ex. 1001,
`code (57). The system includes a manager host operable to initiate
`transmission of a discrete patch message to a mobile unit. Id. The mobile
`unit is operable to create patched operating code by merging the patch with
`the current operating code and to switch execution to the patched operating
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`code. Id. The mobile unit also can receive a download message defining
`new operating code to replace current operating code. Id.
`
`C. Illustrative Claim
`Petitioner challenges claim 1 of the ’275 patent. Claim 1 is
`reproduced below.
`1. A system for remote patching of operating code
`located in a mobile unit, comprising:
`a manager host operable to initiate transmission through a
`wireless communication network of at least one discrete patch
`message defining at least one patch;
`a first mobile unit operable to receive the at least one
`discrete patch message, the first mobile unit further operable to
`create patched operating code by merging the at least one patch
`with current operating code located in the first mobile unit and to
`switch execution to the patched operating code; and
`a second mobile unit operable to receive the at least one
`discrete patch message, the second mobile unit further operable
`to create patched operating code by merging the at least one
`patch with current operating code located in the second mobile
`unit and to switch execution to the patched operating code; and
`wherein the manager host is further operable to address the
`at least one discrete patch message such that the at least one
`discrete patch message is transmitted to the first mobile unit but
`not to the second mobile unit.
`Id. at 13:32–53.
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`D. Instituted Grounds of Unpatentability
`
`We instituted trial based on all asserted grounds of unpatentability
`under 35 U.S.C.1 as follows (Dec. 4, 24):
`Claim Challenged
`35 U.S.C. § Reference(s)
`1
` 102
`Sugita2
`1
` 103
`Sugita
`1
` 103
`Sugita, Burson3
`Sugita, Kirouac,4 with or
`1
` 103
`without Burson
`Sugita, Ballard,5 with or
`without Burson and Kirouac
`II. ANALYSIS
`
` 103
`
`1
`
`A. Principles of Law
`
`To prevail in its challenge to Patent Owner’s claim, Petitioner must
`demonstrate by a preponderance of the evidence6 that the claim is
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’275
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`2 JP Published Patent Application No. 1993-128022, published May 25,
`1993 (Ex. 1005, “Sugita”).
`3 U.S. Patent No. 5,550,895, issued Aug. 27, 1996 (Ex. 1008, “Burson”).
`4 U.S. Patent No. 5,155,847, issued Oct. 13, 1992 (Ex. 1007, “Kirouac”).
`5 Australian Patent Application No. 77395/91, published May 12, 1991 (Ex.
`1006, “Ballard”).
`6 The burden of showing something by a preponderance of the evidence
`simply requires the trier of fact to believe that the existence of a fact is more
`probable than its nonexistence before the trier of fact may find in favor of
`the party who carries the burden. Concrete Pipe & Prods. of Cal., Inc. v.
`Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993).
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`unpatentable. 35 U.S.C. § 316(e) (2012); 37 C.F.R. § 42.1(d). To establish
`anticipation, each and every element in a claim, arranged as recited in the
`claim, must be found in a single prior art reference. See Net MoneyIN, Inc.
`v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp.
`v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the
`elements must be arranged or combined in the same way as in the claim,
`“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
`terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
`2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`
`B. Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner relies on the testimony of Dr. Steve R. White,
`who testifies that a person with ordinary skill in the art “would have a
`Bachelor’s degree in computer engineering, computer science, electrical
`engineering, physics, or a similar discipline.” Pet. 8–9 (citing Ex. 1003
`¶ 32). Dr. White further testifies that the “person would also have at least
`two years of relevant experience including, for example, work related to
`device software development and computer or telecommunications
`networking.” Ex. 1003 ¶ 32. Patent Owner does not propose an alternative
`assessment. See generally PO Resp.
`We adopt Dr. White’s assessment of a person with ordinary skill in
`the art as it is consistent with the ’275 patent and the asserted prior art. We
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`further note that the prior art of record in the instant proceeding reflects the
`appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261
`F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific
`findings as to the level of ordinary skill in the art “where the prior art itself
`reflects an appropriate level and a need for testimony is not shown”).
`
`C. Claim Construction
`
`The ’275 patent is expired. Ex. 1001; Pet. 13. For claims of an
`expired patent, our claim interpretation is similar to that of a district court.
`See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In particular, for
`claims of an expired patent, the Board construes claims to generally have
`their ordinary and customary meaning, as that meaning would be understood
`by one of ordinary skill in the art in the context of the entire patent
`disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc). Petitioner, recognizing that the ’275 patent is expired,
`contends that the claims should be construed consistent with the principles
`set forth in Phillips. Pet. 13. Patent Owner does not contend otherwise. See
`PO Resp.
`
`Petitioner proposes constructions for the following claim terms found
`in claim 1: “mobile unit,” “current operating code,” “manager host operable
`to initiate transmission through a wireless [communication] network of at
`least one discrete patch message defining at least one patch,” “merging the at
`least one patch with current operating code,” and “manager host is further
`operable to address the at least one discrete patch message.” Pet. 13–19.
`In our Decision to Institute, we adopted Petitioner’s proposed claim
`construction for “merging the at least one patch with current operating code”
`to mean “incorporating the at least one patch into the current operating code,
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`without replacing the entire current operating code.” Dec. 5. Neither party
`has indicated that our interpretation was improper and we do not perceive
`any reason or evidence that now compels any deviation from our initial
`interpretation. Accordingly, “merging the at least one patch with current
`operating code” means “incorporating the at least one patch into the current
`operating code, without replacing the entire current operating code.”
`“second mobile unit” and the “wherein” limitation
`Claim 1 recites that the “manager host is further operable to address
`the at least one discrete patch message such that the at least one discrete
`patch message is transmitted to the first mobile unit but not to the second
`mobile unit,” (the “wherein limitation”). In our Decision to Institute, we
`adopted Petitioner’s claim construction and interpreted “manager host is
`further operable to address the at least one discrete patch message” as
`“manager host is further operable to decide which specific mobile unit to
`send the at least one discrete patch message to before beginning
`transmission” of the message. Dec. 5–6. Neither party has indicated that
`our interpretation was improper and we do not perceive any reason or
`evidence that now compels any deviation from our initial interpretation. See
`generally PO Resp. and Pet. Reply.
`Patent Owner, however, argues that the wherein limitation, and claim
`1 in general, implicates a narrow construction having temporal restrictions.
`See PO Resp. 4–7; Sur-reply 2–10; Tr. 4:17–25, 9:22–24. Patent Owner
`argues that the “second mobile unit of claim 1 must be in a condition that its
`current operating code could be updated by the patch message sent to the
`first mobile unit” and that a “mobile unit whose operating code has been
`updated by the patch message cannot be a ‘second mobile unit.’” PO Resp.
`
`8
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`6 (emphasis in original); see also Sur-reply 6 (“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”). Patent Owner further argues, “at the time of transmission of
`the patch message by the manager host both mobile units must be operable
`to create patched operating code from current operating code.” PO Resp. 7
`(emphasis added).
`Patent Owner does not direct us to evidence, such as the prosecution
`history or specification of the ’275 patent, to support its contentions. In
`particular, Patent Owner does not direct us to evidence to support reading
`claim 1 to include that at the time of transmission of the patch message by
`the manager host both mobile units must be operable to create patched
`operating code from current operating code. The claim language does not
`specify when the mobile units must be “operable to create patched operating
`code” from current operating code, only that they are “operable to” do so.
`Ex. 1001, 13:37–49.
`Moreover, we disagree that a second mobile unit that has already
`created patched operating code from the at least one patch message cannot
`meet the “second mobile unit” limitation as Patent Owner argues. PO Resp.
`6; Sur-reply 6. We note that claim 14, which depends directly from claim 1,
`recites “wherein the manager host is further operable to address the at least
`one discrete patch message such that the at least one discrete patch message
`is transmitted to the first mobile unit and to the second mobile unit.” Ex.
`1001, 14:22–26 (emphasis added). Accordingly, the full scope of claim 1
`encompasses that the at least one patch message is transmitted to the second
`mobile unit. There is nothing in claim 1 that excludes a second mobile unit
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`that has already created patched operating code from the at least one patch
`message from meeting the claim 1 wherein limitation. A second mobile unit
`that is capable of creating patched operating code in some circumstances still
`satisfies the claim. Claim 1 is an apparatus claim, not a method claim. “[A]
`prior art reference may anticipate or render obvious an apparatus claim—
`depending on the claim language—if the reference discloses an apparatus
`that is reasonably capable of operating so as to meet the claim limitations,
`even if it does not meet the claim limitations in all modes of operation.”
`ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018).
`We agree with Petitioner that mobile devices “that have already created
`patched operating code via the system of Sugita are demonstrably ‘operable’
`to do so precisely because they have already created patched operating
`code.” Pet. Reply 7 (emphasis in original). A mobile unit that has created
`patched operating code is clearly operable to do so, because it has created
`the patched operating code. Again, there are no timing requirements for the
`apparatus claim 1 as Patent Owner argues.
`Accordingly, as in our Decision to Institute, we construe “manager
`host is further operable to address the at least one discrete patch message” to
`mean that the “[manager host is further operable to] decide which specific
`mobile unit to send [the at least one discrete patch message] to before
`beginning transmission” of the message. See Dec. 6.
`For purposes of this decision, we need not expressly construe any
`other claim term at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
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`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`D. Asserted Anticipation of Claim 1 over Sugita
`Petitioner contends claim 1 is unpatentable under 35 U.S.C. § 102(a)
`and (b) as anticipated by Sugita. Pet. 20, 27–47. In support of its showing,
`Petitioner relies upon the declaration of Dr. White. Id. (citing Ex. 1003).
`
`1. Sugita
`Sugita describes a method for updating software within multiple
`mobile communication terminals using a wireless circuit. Ex. 1005 ¶ 1.7 In
`particular, Sugita describes that a
`base station side (sending side) transmits the update information
`(all or part of the software) to each mobile communications
`terminal, with transmission at first performed based on the group
`ID of the group unit (all units, or the unit addresses belonging to
`a specific group), then the number of terminals in the group unit
`that complete the update in one round of transmission is
`investigated, and if the remaining number of units has decreased,
`the individual ID is used to perform updates of each unit one at
`a time.
`Id. ¶ 13.
`Figure 1 of Sugita is reproduced below.8
`
`
`7 Exhibit 1005 includes a certified English translation of Sugita and a
`declaration from a translator attesting to the accuracy of the translation.
`8 Figure 1 reproduced below is an accurate depiction from the translated
`version of Sugita that is in the record. Ex. 1005, 7.
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`Figure 1 of Sugita shows the transmission process completed with the
`multiple mobile units. As seen in Sugita’s Figure 1, when the update
`process starts, there is a list of targeted mobile units for updating. Id. ¶ 34.
`Once the targeted terminals are listed, their group ID is used in order to send
`the targeted terminals the update. Id. ¶¶ 35–37. If there are terminals that
`did not receive the update, then those terminals’ individual IDs are used to
`send the update information to the individual terminals. Id. ¶¶ 38–39.
`Figure 2 of Sugita is reproduced below.
`
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`Figure 2 discloses a communication system with multiple
`communication terminals communicating with a base station. Id. ¶ 19.
`Sugita explains that “updates of software for said mobile communications
`terminals m1, m2, m3, m4, … are performed by using wireless circuit with
`base station BS.” Id. ¶ 20.
`
`2. Discussion
`The preamble of claim 1 recites “a system for remote patching of
`operating code located in a mobile unit.”9 Petitioner contends, and we are
`persuaded, that Sugita describes a system with multiple mobile
`communication terminals m1, m2, m3, m4 (“mobile unit”) containing
`software that is updated wirelessly from a communication base station (BS).
`Pet. 27–28 (citing Ex. 1005 ¶¶ 12–13, 17, 19–20, 24–25, 46, Figs. 2, 3; Ex.
`1003 ¶¶ 78–79). Petitioner further explains that each mobile terminal, in
`Sugita, stores software in RAM 15 and ROM 14, which are located within
`
`
`9 We need not resolve the issue of whether the preamble is limiting
`because, regardless of whether the preamble is limiting, Petitioner shows
`that Sugita meets the preamble.
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`each mobile terminal. Id. at 28 (citing Ex. 1005 ¶¶ 24–25, 46; Ex. 1003 ¶
`79). Petitioner asserts, and we agree, that a person having ordinary skill in
`the art would have understood that the software in ROM 14 and RAM 15
`has corresponding software code which is the “operating code” of the mobile
`terminal and that any software updates to program code stored on Sugita’s
`RAM alters the “operating code.” Id. at 29 (citing Ex. 1005 ¶¶ 13, 25; Ex.
`1003 ¶ 80). Petitioner further establishes, by a preponderance of the
`evidence, that a person having ordinary skill in the art would have
`understood that alteration of software code operable on a processor is
`“patching,” and that Sugita’s description of replacement of “part of the
`software” using update information alters part of the stored “operating
`code,” and thus, meets the “patching of operating code” limitation. Id. at
`29–30 (citing Ex. 1001, 2:9–13, 9:16–56, 46; Ex. 1005 ¶¶ 13, 35; Ex. 1003
`¶¶ 81–82 (citing Ex. 1011, 293)).
`Claim 1 further recites “a manager host operable to initiate
`transmission through a wireless communication network of at least one
`discrete patch message defining at least one patch.” Petitioner contends, and
`we are persuaded, that Sugita’s base station, capable of transmitting software
`update information through a wireless network, meets the “manager host”
`limitation. Id. at 31 (citing Ex. 1005 ¶¶ 13, 20, Fig. 2; Ex. 1003 ¶ 85).
`Petitioner explains, and we agree, that the base station is operable to initiate
`transmission of software updates because Sugita describes that the base
`station creates a list of update target terminals containing the mobile
`terminals that require software updates and that the base station sends the
`update to those mobile terminals on the list using wireless channels. Id.
`(citing Ex. 1005 ¶¶ 8, 13, 34–36, Fig. 1; Ex. 1003 ¶ 85). We find that Sugita
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`discloses that the update information is divided into multiple packets (at
`least one discrete patch message) before transmission to the terminals. Id.
`(citing Ex. 1005 ¶¶ 35, 45; Ex. 1003 ¶ 86). Petitioner further explains, and
`we are persuaded, Sugita describes the claimed “initiates a transmission” in
`two ways. Id. at 32–35 (citing multiple paragraphs from Ex. 1005; Ex. 1003
`¶¶ 87–91). Petitioner shows, and we find, that base station (manager host)
`initiates transmission of update packets to mobile terminals using a group
`ID. Id. (citing Ex. 1005 ¶¶ 13, 26, 35, 39, 42; Ex. 1003 ¶¶ 87–88).
`Petitioner further contends, and we find, that Sugita teaches how the base
`station (manager host) can also initiate transmission by using individual IDs
`associated with each mobile unit. Id. at 34–35 (citing Ex. 1005 ¶¶ 13, 28,
`37–39, 42; Ex. 1003 ¶¶ 90–91).
`Patent Owner does not dispute Petitioner’s showing with respect to
`Sugita meeting the claim elements discussed above. See generally PO Resp.
`Claim 1 further recites “a first mobile unit operable to receive the at
`least one discrete patch message” and “a second mobile unit operable to
`receive the at least one discrete patch message.” Petitioner addresses these
`limitations together. Id. at 35. Notwithstanding Patent Owner’s arguments
`regarding the “second mobile unit” in connection with the wherein limitation
`discussed below, we determine that Petitioner has shown by a preponderance
`of the evidence that Sugita describes a “first mobile unit” and a “second
`mobile unit” as follows.
`Petitioner explains, and we agree, that Sugita describes a first and a
`second mobile unit m1 and m2, for example, of Sugita Figure 2. Petitioner
`contends, and we are persuaded, that each mobile terminal has an individual
`ID (e.g., m1 for “first mobile unit” and m2 for “second mobile unit”) or a
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`unique group ID, and that the base station addresses update information
`using the unique identifiers (individual or group ID) to send update
`information to specific mobile terminals. Id. at 36 (citing Ex. 1005 ¶¶ 13,
`26–27). Petitioner shows, and we find, that Sugita discloses that each
`mobile terminal uses a transceiver to receive wireless communications from
`the base station, which wirelessly transmits update information to the mobile
`terminals using multiple packets (“at least one discrete patch message”) that
`is used to update the mobile terminal’s software. Id. at 36–37 (citing
`Ex. 1005 ¶¶ 21–23, 25, 35, 43–45, Fig. 3; Ex. 1003 ¶¶ 96–97). We further
`agree with Petitioner that each of Sugita’s mobile terminals necessarily is
`battery-powered and capable of use while in motion. Id. at 37 (citing Ex.
`1005 ¶¶ 4, 19; Ex. 1003 ¶ 98; Ex. 1009, 9:27–29, 10:54–60, 12:43–45).
`Claim 1 further recites that the first mobile unit (and second mobile
`unit) are “operable to create patched operating code by merging the at least
`one patch with current operating code located” in the first (and second)
`mobile unit. Petitioner explains, and we find, that Sugita discloses each
`mobile terminal executes a software program installed in its memory and
`that such software is “current operating code.” Id. at 38–39 (citing Ex. 1005
`¶¶ 25, 46; Ex. 1003 ¶ 113). Petitioner shows, and we agree, that each mobile
`terminal temporarily stores update information in RAM before using it and
`that the update information can replace part of the software in the mobile
`terminal. Id. at 39 (citing Ex. 1005 ¶¶ 25, 35, 46; Ex. 1003 ¶ 114).
`Petitioner explains, and we are persuaded, that once reception of the update
`information is completed, the update information is combined with the
`mobile terminal’s software (“merging the at least one patch with the current
`operating code”). Id. (citing Ex. 1005 ¶ 46). We agree with Petitioner that
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`the update information only contains “part of the software,” and that a
`person having ordinary skill in the art would have understood Sugita’s
`implementation of the update information not to be a full replacement of the
`software. Id. (citing Ex. 1003 ¶ 114). Petitioner contends, and we agree,
`that the entire update is moved to the program area at step S14 of Figure 6
`and that once in the program area, the mobile terminal uses the updated
`software, which is the “patched operating code”. Id. at 40–41 (citing
`Ex. 1005 ¶¶ 46–47; Ex. 1003 ¶¶ 117–118).
`Claim 1 requires that the first and second mobile units must be
`operable to “switch execution to the patched operating code.” Petitioner
`explains, and we find, that Sugita discloses creating and copying update
`information from two areas within a single RAM and that the update
`information is copied from the area where it is temporarily stored in the
`RAM to the area where the program operates, and that the updated program
`information would be the code that is executed. Id. at 42–43 (citing Ex.
`1005 ¶¶ 13, 46–47; Ex. 1003 ¶¶ 130–131).
`Claim 1 further recites the wherein limitation, namely “wherein the
`manager host is further operable to address the at least one discrete patch
`message such that the at least one discrete patch message is transmitted to
`the first mobile unit but not to the second mobile unit.” Petitioner argues
`that Sugita discloses this limitation in two ways. In the first way, Petitioner
`contends that Sugita discloses that the base station (manager host) initially
`addresses update information to multiple mobile terminals using a group ID.
`Id. at 44 (citing Ex. 1005 ¶ 35; Ex. 1003 ¶ 150). Petitioner further contends
`that the base station (manager host) transmits update packets based on an
`update target list using a group ID. Id. at 44 (citing Ex. 1005 ¶ 35).
`
`17
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`Petitioner argues that a person of ordinary skill in the art would have
`understood that Sugita’s disclosure of multiple “group units” means that
`some mobile terminals belong to different groups. Id. at 44 (citing Ex. 1005
`¶¶ 15, 26, 49; Ex. 1003 ¶ 151). Petitioner further contends that Sugita’s base
`station sends update information addressed to a first group unit containing a
`first mobile unit, but that does not include a second mobile unit (e.g.,
`transmitted to a first mobile unit, but not to the second mobile unit). Id. at
`44–45 (citing Ex. 1005 ¶¶ 13, 15, 26, 34–35, 49; Ex. 1003 ¶¶ 150–152).
`Patent Owner argues that Petitioner has failed to show that the first
`way, i.e., Sugita’s group unit embodiment, meets the wherein limitation. PO
`Resp. 7–15. Patent Owner argues that Sugita discloses only transmitting a
`patch message to all mobile terminals that are capable of being updated and
`that a group update is sent by the base station to all mobile terminals. Id.
`We are not persuaded by such arguments, because they are not based on
`record evidence.
`We give substantial weight to Dr. White’s testimony that “update
`information sent to the one or more mobile terminals using the group ID for
`the first group unit would not be meant for the one or more mobile terminals
`in the second group unit” such that “update information transmitted to the
`first group ID is ‘transmitted to the first mobile unit but not to the second
`mobile unit.’” Ex. 1003 ¶ 151 (emphasis in original). His testimony is
`supported by record evidence. Ex. 1005 ¶ 13. A portion of paragraph 13 of
`Sugita is reproduced as follows:
`
`[T]he base station side (sending side) transmits the update
`information (all or part of the software) to each mobile
`communications terminals, with transmission at first performed
`based on the group ID of the group unit (all units, or the unit
`
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`IPR2019-00106
`Patent 5,699,275
`
`addresses belonging to a specific group), then the number of
`terminals in the group unit that complete the update in one round
`of transmission is investigated, and if the remaining number of
`units has decreased, the individual ID is used to perform updates
`of each unit one at a time. With this action, highly efficient
`updates can be performed.
`Id. (emphasis added). Sugita describes sending update information to each
`of the mobile communication terminals by first transmitting based on the
`group ID of each group unit. Id. The transmitting of the update information
`“at first” is addressed to all units or to units belonging to a specific group.
`Id. We agree with Petitioner’s position, which is supported by Dr. White’s
`testimony, that terminals in a specified group receive the update, while those
`terminals that are not in the specified group do not receive the update. Pet.
`44–45 (citing at least Ex. 1003 ¶ 151). Patent Owner’s attorney argument
`that the same Sugita description makes clear that Sugita forwards the update
`information to all mobile terminals (see, e.g., PO Resp. 1410) does not rebut
`sufficiently Petitioner’s showing, which we determine is supported by the
`preponderance of the evidence. Ex. 1003 ¶ 151; Ex. 1005 ¶ 13.
`For similar reasons, we are not persuaded by Patent Owner’s
`argument that to the extent Sugita describes not sending update information
`to a mobile communication terminal, Petitioner fails to show that such an
`“excluded” terminal was operable to update current operating software with
`the update information, as required by claim 1. PO Resp. 15; Sur-reply 10.
`We agree with Petitioner that Sugita describes that each mobile unit in the
`
`
`10 Patent Owner cites to, and discusses, a translated version of Sugita that is
`not of record in this proceeding, but in IPR2018-01552 (Ex. 1005). PO
`Resp. 14. Our analysis relies on the translated version of Sugita that is of
`record in this proceeding.
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`system has the same ability to create patched operating code from the patch
`and its own current operating code. Pet. Reply 8 (citing Ex. 1005 ¶¶ 43, 46);
`see also Pet. 38–42. And as explained above, the transmitting of the update
`information “at first” is addressed to all units or to units belonging to a
`specific group. Id. Terminals in a specified group receive the update, while
`those terminals that are not in the specified group do not receive the update,
`such as those terminals belonging to a different group that does not receive
`the update in the first round transmission. Pet. Reply 9–11; Pet. 44–45
`(citing at least Ex. 1003 ¶ 151). Patent Owner’s apparent assertion that in
`Sugita the base station sends the message to all of the m
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