Paper No. 7
`Trials@uspto.gov
`571-272-7822 Entered: March 22, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00106
`Patent 5,699,275
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 22, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00106
`Patent 5,699,275
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`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.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`see 37 C.F.R. § 42.108. Upon consideration of the Petition and Preliminary
`Response, we conclude the information presented shows that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of claim 1 of the ’275 patent.
`
`A. Related Matters
`The parties indicate that the ’275 patent is the subject of several court
`proceedings. Pet. 3–4; Paper 3, 2–3. The ’275 patent also is the subject of
`Board proceedings IPR2018-01552, IPR2018-01553, IPR2019-00110, and
`IPR2019-00111. Pet. 3; Paper 3, 3.
`
`B. The ’275 Patent
`The specification of the ’275 patent describes a system “for remote
`patching or updating of operating code located in a mobile unit.” Ex. 1001,
`[57]. The system includes a manager host operable to initiate transmission
`of a discrete patch message to a mobile unit. Id. The mobile unit is operable
`to create patched operating code by merging the patch with the current
`operating code and to switch execution to the patched operating code. Id.
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`The mobile unit also can receive a download message defining new
`operating code to replace current operating code. Id.
`
`C. Illustrative Claims
`Petitioner challenges claim 1 of the ’275 patent. Claim 1 is
`reproduced below.
`1. A system for remote patching of operating code
`located in a mobile unit, comprising:
`a manager host operable to initiate transmission through a
`wireless communication network of at least one discrete patch
`message defining at least one patch;
`a first mobile unit operable to receive the at least one
`discrete patch message, the first mobile unit further operable to
`create patched operating code by merging the at least one patch
`with current operating code located in the first mobile unit and to
`switch execution to the patched operating code; and
`a second mobile unit operable to receive the at least one
`discrete patch message, the second mobile unit further operable
`to create patched operating code by merging the at least one
`patch with current operating code located in the second mobile
`unit and to switch execution to the patched operating code; and
`wherein the manager host is further operable to address the
`at least one discrete patch message such that the at least one
`discrete patch message is transmitted to the first mobile unit but
`not to the second mobile unit.
`Id. at 13:32–53.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claim 1 is unpatentable based on the following
`grounds (Pet. 5–6):
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`Reference(s)
`Sugita1
`Sugita
`Sugita and Burson2
`Sugita and Kirouac3 with
`or without Burson
`Sugita and Ballard4 with
`or without Burson and
`Kirouac
`
`Basis
`§ 102
`§ 103
`§ 103
`§ 103
`
`§ 103
`
`Challenged Claim
`1
`1
`1
`1
`
`1
`
`II. DISCUSSION
`
`A. 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). Moreover, for
`claims of an expired patent, the Board construes claims to generally have
`their ordinary and customary meaning, as that meaning would be understood
`by one of ordinary skill in the art in the context of the entire patent
`disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc). Petitioner contends that the claims should be construed
`consistent with the principles set forth in Phillips. Pet. 13.
`
`Petitioner proposes constructions for the following claim terms found
`in challenged claim 1: “mobile unit,” “current operating code,” “manager
`
`
`1 JP Published Patent Application No. 1993-128022, published May 25,
`1993 (Ex. 1005, “Sugita”).
`2 U.S. Patent No. 5,550,895, issued Aug. 27, 1996 (Ex. 1008, “Burson”).
`3 U.S. Patent No. 5,155,847, issued Oct. 13, 1992 (Ex. 1007, “Kirouac”).
`4 Australian Patent Application No. 77395/91, published May 12, 1991 (Ex.
`1006, “Ballard”).
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`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. 8–16. Patent Owner does not oppose Petitioner’s proposed
`constructions. See generally Prelim. Resp.; id. at 4.
`“merging the at least one patch with current operating code”
`Claim 1 recites “the first mobile unit [second mobile unit] further
`operable to create patched operating code by merging the at least one patch
`with current operating code.” Petitioner argues that “merging the at least
`one patch with current operating code” means “incorporating the at least one
`patch into the current operating code, without replacing the current operating
`code.” Pet. 17. We determine that Petitioner’s proposed construction is
`consistent with the specification of the ’275 patent, which consistently
`describes merging as incorporating at least one patch into the current
`operating code without replacing the entire operating code. Ex. 1001, 1:54–
`61, 2:2–5, 3:63–66, 4:65–5:10, 6:60–7:5, 7:28–30, 10:24–32, 11:22–25,
`11:54–12:26. Therefore, for purposes of this Decision, we adopt Petitioner’s
`proposed claim construction, interpreting “merging the at least one patch
`with current operating code” as “incorporating the at least one patch into the
`current operating code, without replacing the current operating code.”
`“manager host is further operable to address
`the at least one discrete patch message”
`Claim 1 recites that the “manager host is further operable to address
`the at least one discrete patch message such that the at least one discrete
`patch message is transmitted to the first mobile unit but not to the second
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`mobile unit.” Petitioner argues that “manager host is further operable to
`address the at least one discrete patch message” means that the “manager
`host is further operable to decide which specific mobile unit to send the at
`least one discrete patch message to before beginning transmission.” Pet. 18.
`Petitioner argues that its proposed construction is consistent with the claim
`language itself and the specification of the ’275 patent. Id. at 18–19 (citing
`Ex. 1001, 2:6–9, 2:19–24, 3:40–43, 3:61–63, 4:1–4, 4:9–20, 4:48–53, 5:15–
`41, 5:49–52).
`Based on our review of the current record, we determine Petitioner’s
`proposed claim construction for the phrase “manager host is further operable
`to address the at least one discrete patch message” is consistent with the
`specification. Therefore, for purposes of this Decision, we adopt Petitioner’s
`proposed claim construction, interpreting “manager host is further operable
`to address the at least one discrete patch message” as “manager host is
`further operable to decide which specific mobile unit to send the at least one
`discrete patch message to before beginning transmission of the message.”
`For purposes of this decision, we need not expressly construe any
`other claim term at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid
`Techs. in the context of an inter partes review).
`
`B. Principles of Law
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference.
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`See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
`Cir. 2001). Although the elements must be arranged or combined in the
`same way as in the claim, “the reference need not satisfy an ipsissimis verbis
`test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d
`1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed.
`Cir. 1990).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art;5 and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`
`5 Relying on the testimony of Dr. Steve R. White, Petitioner offers an
`assessment as to the level of skill in the art as of the earliest effective filing
`date on the face of the ’275 patent. Pet. 8–9 (citing Ex. 1003 ¶ 32). At this
`time, Patent Owner does not propose an alternative assessment. To the
`extent necessary, and for purposes of this Decision, we accept the
`assessment offered by Petitioner as it is consistent with the ’275 patent and
`the asserted prior art.
`
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`C. Asserted Anticipation of Claim 1 over Sugita
`Petitioner contends claim 1 is unpatentable under 35 U.S.C. § 102(a)
`and (b) as anticipated by Sugita. Pet. 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 ¶ 1.6 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. at ¶ 13.
`
`2. Discussion
`The preamble of claim 1 recites “a system for remote patching of
`operating code located in a mobile unit.” The present record supports
`Petitioner’s contention that Sugita 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 ¶¶ 19–20, 25, 46; Ex. 1003 ¶¶ 78–79). The
`present record further supports the contention that each mobile terminal
`
`
`6 Exhibit 1005 includes a certified English translation of Sugita and a
`declaration from a translator attesting to the accuracy of the translation.
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`stores software in RAM 15 and ROM 14 and that both the RAM 15 and
`ROM 14 are located within each mobile terminal. Id. at 28 (citing Ex. 1005
`¶¶ 24–25, 46; Ex. 1003 ¶ 79). Petitioner asserts 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 explains 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.” The present record
`supports the contention that Sugita’s base station capability 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, for example, 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). The present record
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`further supports the contention that Sugita 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 how Sugita describes the
`claimed “initiates a transmission” in two ways. Id. at 32–35 (citing multiple
`paragraphs from Ex. 1005; Ex. 1003 ¶¶ 87–91). For example, the present
`record supports the contention that the base station (manager host) transmits
`update packets based on an update target list created by the base station and
`IDs before beginning transmission, but that not all mobile terminals may
`receive the transmission addressed to the group. Id. (citing Ex. 1005 ¶¶ 13,
`26, 35, 39, 42; Ex. 1003 ¶¶ 87–88). The present record further supports the
`contention that Sugita describes a second way to initiate a transmission by
`transmitting update information using individual IDs. Id. at 34–35 (citing
`Ex. 1005 ¶¶ 13, 28, 37–39, 42; Ex. 1003 ¶¶ 90–91).
`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.” The present record supports
`the contention that Sugita describes a first and a second mobile unit m1 and
`m2, for example, of Sugita Figure 2. Petitioner contends that each mobile
`terminal has an individual ID and belongs to a “group unit” indicated by a
`group ID and there are multiple group units. Id. at 35–36 (citing Ex. 1005 ¶¶
`13, 26–27). Petitioner further contends that the base station addresses
`update information using the individual or group ID to send update
`information to specific mobile terminals. Id. at 36 (citing Ex. 1005 ¶ 13).
`The present record supports the contention that each mobile terminal uses a
`transceiver to receive wireless communications from the base station which
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`wirelessly transmits update information to the mobile terminals using
`multiple packets (“at least one discrete patch message”). Id. at 36–37 (citing
`Ex. 1005 ¶¶ 21–23, 35, 45, Fig. 3; Ex. 1003 ¶¶ 96–97). Petitioner contends
`that the mobile unit’s processor then uses the packets to update its software.
`Id. at 37 (citing Ex. 1005 ¶¶ 25, 43–44). Petitioner further provides
`supporting evidence that each of Sugita’s mobile terminals necessarily has a
`battery and is capable of use while in motion. Id. (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. The present record supports the contention that Sugita discloses
`that 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). The present record further
`supports the contention that Sugita describes 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 contends
`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). Petitioner further contends that because the update information only
`contains “part of the software,” 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).
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`The present record supports the contention 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 (“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
`contends 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. Id. at 42–43 (citing Ex. 1005 ¶¶ 13, 46–47; Ex. 1003
`¶ 130–131).
`Claim 1 recites “wherein the manager host is further operable to
`address the at least one discrete patch message such that the at least one
`discrete patch message is transmitted to the first mobile unit but not to the
`second mobile unit.” Petitioner contends that Sugita discloses this limitation
`in at least two ways as Sugita’s update information can be addressed either
`to a group of mobile terminals or to individual mobile terminals. Id. at 43–
`44 (citing Ex. 1005 ¶¶ 32–33, 48; Ex. 1003 ¶ 149). For example, the present
`record supports the contention that the base station (manager host) transmits
`update packets based on an update target list created by the base station and
`IDs before beginning transmission, but that not all mobile terminals may
`receive the transmission addressed to the group. Id. at 44–45 (citing Ex.
`1005 ¶¶ 13, 15, 26, 34–35, 49; Ex. 1003 ¶¶ 150–152). The present record
`further supports the contention that Sugita describes a second way to initiate
`a transmission by transmitting update information using individual IDs. Id.
`at 45–47 (citing Ex. 1005 ¶¶ 28, 35–39, 42; Ex. 1003 ¶¶ 153–157).
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`Patent Owner argues that Petitioner has failed to establish that Sugita
`is configured such that the base station addresses a patch to a first mobile
`terminal, but not to a second mobile terminal as required by claim 1. Prelim.
`Resp. 7–9. In particular, Patent Owner argues that there is no disclosure in
`Sugita that a mobile terminal within the plurality of mobile terminals is not
`sent the group update. Id. As explained above, Petitioner contends that
`Sugita meets the disputed limitation in two ways. Pet. 43–47. First, as
`pointed out by Petitioner, the base station (manager host) transmits update
`packets based on an update target list created by the base station and IDs
`before beginning transmission, but that not all mobile terminals may receive
`the transmission addressed to the group. Id. at 44–45 (citing Ex. 1005 ¶¶ 13,
`15, 26, 34–35, 49; Ex. 1003 ¶¶ 150–152). Petitioner contends that the base
`station decides which specific mobile unit to send the update information
`prior to transmission, and thus meets Petitioner’s construction for the
`disputed phrase. Pet. 44. Dr. White explains that a skilled artisan would
`have understood that Sugita’s disclosure of multiple “group units” means
`that some mobile terminals belong to different groups, such that update
`information using the group ID for one group would not be meant for mobile
`terminals in a second group. Ex. 1003 ¶ 151. ¶ 101–102. Patent Owner
`does not address these contentions at all, but focuses its arguments on
`Petitioner’s second showing of how the disputed claim phrase is met by
`Sugita. Prelim. Resp. 7–9. For this reason alone, Patent Owner’s argument
`that Petitioner has failed to establish that Sugita is configured such that the
`base station addresses an update to a first mobile terminal, but not to a
`second mobile terminal as required by claim 1 is without merit.
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`In addition, we are not persuaded by Patent Owner’s arguments that
`because Sugita sends a group update with some in the group receiving a
`redundant individual update, Sugita “never discloses an instance when a
`mobile terminal is not sent the update transmission.” Id. at 9. Claim 1 does
`not foreclose sending an update to both mobile units, followed by sending an
`update to only one mobile unit. As long as the host addresses the at least
`one discrete patch message such that the message is transmitted to one
`mobile unit but not another mobile unit, the claim language is satisfied.
`Sugita describes updating mobile terminals individually, e.g., where the
`message from the host is transmitted to one mobile unit but not another
`mobile unit. Ex. 1005 ¶¶ 13, 26–28.
`Patent Owner argues that the Petition does not show that Sugita
`discloses merging a patch with current operating code or switching
`execution to patched operating code. Prelim. Resp. 10–12. Patent Owner
`argues that Sugita does not include the word patch or patching when
`describing its method of updating software on mobile communication
`terminals. Id. at 10–11. Patent Owner further argues that Petitioner’s
`assertion that Sugita’s disclosure of software updates means patching of
`operating code is in error. Id. At this juncture of the proceeding, we are not
`persuaded by these arguments.
`First, it is of no moment that the words “patch” or “patching” are not
`found in Sugita. Rather, what is relevant is what Sugita would have
`conveyed to a person having ordinary skill in the art at the time of the
`invention. Petitioner relies at least on Sugita’s description that the base
`station “transmits the update information (all or part of the software) to each
`mobile communications terminal.” Ex. 1005 ¶ 13. Dr. White explains that
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`“patching” means any alteration of software code operable on a processor
`and that Sugita’s software updates, for example part of the software, are
`patches for operating code. Ex. 1003 ¶ 81 (citing Ex. 1011, 293). Patent
`Owner does not address Sugita’s description that the update information can
`include only part of the software. Rather, Patent Owner argues that Sugita’s
`“updating” can also include downloading the entire operating code. Prelim.
`Resp. 10. Patent Owner’s attorney arguments, however, are not persuasive
`and further do not address the passage Petitioner relies on in Sugita that
`describes updating only part of the software. Patent Owner fails to explain
`why Sugita’s description of updating only part of the software means that
`the entire operating code is being downloaded. Based on the current record,
`we are not persuaded by Patent Owner’s arguments.
`Patent Owner argues that Petitioner’s reliance on Sugita’s copying
`update information to an area in RAM where the program is operating
`cannot disclose patching current operating code by merging as required by
`claim 1. Id. at 11. Patent Owner further argues that the claim requires that
`the mobile unit, and not the manager host, be operable to create the patched
`operating code by merging. Id. at 11–12. As explained above, we adopt
`Petitioner’s proposed construction for “merging the at least one patch with
`current operating code” to mean “incorporating the at least one patch into
`the current operating code, without replacing the entire current operating
`code.” Patent Owner, at this point, does not aver a different construction.
`Id. at 4. Petitioner contends that a software program has corresponding
`code, and that Sugita’s processor 11 uses the software code to operate the
`mobile terminal. Pet. 38 (citing Ex. 1005 ¶¶ 25, 46; Ex. 1003 ¶ 113).
`Petitioner further contends that once reception of the update information is
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`completed, the update information is combined with the mobile terminal’s
`software (“merging the at least one patch with the current operating code”).
`Id. at 39 (citing Ex. 1005 ¶ 46). Petitioner contends that because the update
`information only contains “part of the software,” 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). The present record supports the contention 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 (“patched
`operating code”), e.g., that it is the mobile unit, and not the manager host,
`that creates the patched operating code by merging. Id. at 40–41 (citing Ex.
`1005 ¶¶ 46–47; Ex. 1003 ¶¶ 117–118). Patent Owner’s conclusory attorney
`arguments are not persuasive to show why Petitioner’s showing, which is
`based on record evidence, is insufficient.
`Lastly, Patent Owner argues that Petitioner has failed to show that
`Sugita discloses switching execution from current operating code to patched
`operating code, because Sugita has no discernable disclosure of switching
`execution. Prelim. Resp. 12. Patent Owner argues that instead, Petitioner
`relies on the conclusory opinions of its expert. Id. We disagree that
`Dr. White’s accounting of switching execution to the patched operating code
`is conclusory. We have reviewed his testimony and determine at this point
`in the proceeding it is sufficient. In particular, Dr. White explains how
`Sugita discloses a first mobile unit with software for a processor that
`operates on a RAM. Ex. 1003 ¶ 131. He further explains that software
`updates are eventually copied over to the area where the program is actually
`operating, i.e., the RAM to create an updated software program. Id. This is
`
`16
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`Patent 5,699,275
`
`all supported by Sugita itself. Ex. 1005 ¶¶ 13, 46, Fig. 6. Dr. White further
`explains that a person having ordinary skill in the art at the time of the
`invention would have understood that “the updated program information
`would thereafter be the code that is executed, since that is the code stored in
`‘the area where the program actually operates.’” Ex. 1003 ¶ 131. For these
`reasons, we disagree with Patent Owner that Petitioner’s showing is
`conclusory.
`Based on the current record before us, we determine the information
`presented shows a reasonable likelihood that Petitioner would prevail in
`establishing that claim 1 is unpatentable under § 102 as anticipated by
`Sugita.
`
` D. Asserted Obviousness of Claim 1 over Sugita
`
`Petitioner contends claim 1 is unpatentable under 35 U.S.C. § 103(a)
`as obvious over Sugita. Pet. 47–48. In support of its showing, Petitioner
`relies upon the declaration of Dr. White. Id. (citing Ex. 1003).
`Claim 1 requires that the first and second mobile units must be
`operable to “switch execution to the patched operating code.” Petitioner
`argues that to the extent Sugita does not sufficiently disclose this claim
`limitation it would have been obvious to include it in the system of Sugita
`from Sugita itself. Pet. 47. Petitioner argues that Sugita discloses
`downloading new information to mobile units in order to update the program
`code in the mobile units and that it would be common sense, and a skilled
`artisan would have been motivated, to switch to execution of the newly
`updated program code to obtain the benefits of and fulfill the purposes of
`those updates. Id. at 47–48 (citing Ex. 1005 ¶¶ 9–11; Ex. 1003 ¶ 132). For
`
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`Patent 5,699,275
`
`this challenge, Patent Owner’s arguments are the same with respect to those
`addressed previously. Prelim. Resp. 13.
`Based on the current record before us, we determine the information
`presented shows a reasonable likelihood that Petitioner would prevail in
`establishing that claim 1 is unpatentable under § 103 as obvious over Sugita.
`
`E. Asserted Obviousness of Claim 1 over Sugita and Burson
`
`Petitioner contends claim 1 is unpatentable under 35 U.S.C. § 103(a)
`as obvious over Sugita in view of Burson. Pet. 48–50. In support of its
`showing, Petitioner relies upon the declaration of Dr. White. Id. (citing
`Ex. 1003).
`Burson describes “a bimodal portable telephone [that] provides wide
`area cellular service and improved cordless or neighborhood area service in
`a common handset.” Ex. 1008, 2:24–26. The portable telephone includes a
`microprocessor 340. Id. at 2:65–66, 5:44–47, Fig. 3. “Power for the
`operation of each of the components in the handset is provided by a battery
`345.” Id. at 5:4–6.
`Petitioner argues that to the extent Sugita’s mobile terminal does not
`necessarily disclose the mobile unit limitations under Petitioner’s
`construction, e.g., that it is not a battery-powered device, it would have been
`obvious to include in Sugita’s mobile terminal a battery as a power source in
`view of Burson. Pet. 48. Petitioner provides reasons for combining Sugita
`with Burson. Id. at 49–50. For this challenge, Patent Owner argues that
`Burson is irrelevant because claim 1 is not limited to a battery-powered
`device. Prelim. Resp. 13. Based on the current record before us, and until
`the record is fully developed on the meaning of “mobile unit,” we determine
`the information presented shows a reasonable likelihood that Petitioner
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`IPR2019-00106
`Patent 5,699,275
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`would prevail in establishing that claim 1 is unpatentable under § 103 as
`obvious over Sugita in view of Burson.
`
`F. Asserted Obviousness of Claim 1 over Sugita and Kirouac with or
`without Burson
`
`Petitioner contends claim 1 is unpatentable under 35 U.S.C. § 103(a)
`as obvious over Sugita in view of Kirouac with or without Burson. Pet. 51–
`55. In support of its showing, Petitioner relies upon the declaration of Dr.
`White. Id. (citing Ex. 1003).
`Kirouac describes a method and system for updating software used in
`remote computer systems from a central computer system. Ex. 1007,
`Abstract. Kirouac further describes
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