Trials@uspto.gov
`571-272-7822
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` Paper 36
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` Date: July 29, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS LLC,
`Petitioner,
`v.
`MOBILEPAY LLC,
`Patent Owner.
`____________
`
` IPR2019-00466
`Patent 9,800,706 B2
`____________
`
`Before THU A. DANG, JENNIFER S. BISK, and NEIL T. POWELL,
`Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Exclude (Paper 25)
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
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`
`
`
`
` Paper 36
`
`
` Date: July 29, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS LLC,
`Petitioner,
`v.
`MOBILEPAY LLC,
`Patent Owner.
`____________
`
` IPR2019-00466
`Patent 9,800,706 B2
`____________
`
`Before THU A. DANG, JENNIFER S. BISK, and NEIL T. POWELL,
`Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Exclude (Paper 25)
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2019-00466
`Patent 9,800,706 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`In response to a Petition (Paper 2, “Pet.”) filed by Unified Patents
`
`LLC (“Petitioner”), we instituted inter partes review of claims 1–4 (“the
`challenged claims”) of U.S. Patent No. 9,800,706 B2 (Ex. 1001, “the ’706
`patent”). Paper 10. During trial, MobilePay LLC (“Patent Owner”) filed a
`Response. Paper 16 (“PO. Resp.”), to which Petitioner filed a Reply (Paper
`20, “Pet. Reply”). In turn, Patent Owner filed a Sur-reply. Paper 23 (“PO
`Sur-reply”). Patent Owner then filed a Motion to Exclude New Arguments
`(Paper 25, “PO Exclude Mot.”), and in response, Petitioner filed an
`Opposition to the Motion to Exclude (Paper 27, “Pet. Mot. Opp.”).1 An
`oral hearing was held with the parties on May 4, 2020. A transcript of the
`hearing has been entered into the record. Paper 35 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of claims
`1–4 on which we instituted trial. Based on the record before us, Petitioner
`has shown, by a preponderance of the evidence, that claims 1–4 of the ’706
`patent are unpatentable.
`
`
`1 In an April 29, 2020, call with the parties, we informed the parties that we
`would not issue an Order addressing the Motion to Exclude prior to oral
`hearing, we would not entertain arguments on this issue during oral hearing,
`and we would address the issue thereafter. Accordingly, we will address
`the Motion to Exclude in this Final Written Decision. See Section II(A)
`below.
`
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`B. Related Matters
`According to Petitioner, the ’706 patent is the subject of MobilePay LLC
`v. Bank of America Merchant Services, LLC, No. 6:18- cv-00321 (W.D. Tex.);
`MobilePay LLC v. Intuit Inc., No. 2:18-cv-00414 (E.D. Tex.); MobilePay LLC
`v. Bank of America, N.A., No. 2:18-cv-00413 (E.D. Tex.); MobilePay LLC v.
`Mindbody, Inc., No. 6:18-cv-00286 (W.D. Tex.); and MobilePay LLC v.
`PayPal, Inc., No. 6:18-cv-00287 (W.D. Tex.). Pet. 1–2; Paper 4, 2.
`C. The ’706 Patent (Ex. 1001)
`The ’706 patent issued on October 24, 2017, from an application filed
`March 8, 2010. Ex. 1001, codes (45), (22). The ’706 patent claims priority to
`US Provisional Patent Application No. 61/158,586 (“the Provisional
`Application”) filed on March 9, 2009. Id. at code (60).
`The ’706 patent relates to a system for “coupling a peripheral to a device
`such as a smart phone.” Id., Abstract. Smartphone type devices communicate
`to the Internet using the TCP/IP protocol, while hardware transmission
`standards that support this include “Wi-Fi (802.11); cellular wireless
`networking such as CDMA, UMTS, HSDPA, GPRS and EDGE; and wide-area
`networking such as WiMAX (IEEE 802.16).” Id. at 1:63–2:3. The ’706 patent
`states, “[h]owever, device-to-device and device-to-peripheral communication
`is awkward with these standards.” Id. at 2:3–8. “To have two devices
`communicate in this manner, they must either communicate through an
`intermediary server or website,” thus, “adding delay and complexity of set up.”
`Id.
`
`According to the ’706 patent, “[t]he teachings provided herein could be
`used in a variety of ways.” Id. at 11:59–60. For example:
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`A ‘cloud service’ could decode the signals. That is, the phone
`could be relatively “dumb,” and a device could be used to
`communicate to the ‘cloud’ through a mobile phone. A
`software vendor could implement a solution, whereby users
`transmit data from an accessory, through the audio input of
`their phone. The data would then be uploaded without
`significant change to a server, where it would be decoded.
`Id. at 12:15–22.
`D. The Provisional Application (Ex. 1004)
`The Provisional Application relates to an apparatus “for connecting
`
`peripherals to devices and for enabling unidirectional and bi-directional
`communication between portable devices.” Ex. 1004, Abstract. Similar to the
`’706 patent, the Provisional Application also discloses devices communicating
`to the Internet using the TCP/IP protocol while hardware transmission
`standards that support this include CDMA, HSDPA, GPRS, and the like.
`Compare Ex. 1001, 1:63–2:3, with Ex. 1004 ¶ 6. Like the ’706 patent, the
`Provisional Application indicates that device-to-device and device-to-
`peripheral communication is “awkward” with these standards. Ex.1004 ¶ 6.
`Accordingly, the Provisional Application attempts to overcome the
`shortcomings of the prior art by providing unidirectional and bi-directional
`communication between mobile devices that can be implemented by any
`mobile application developer. Id. ¶¶ 15–16.
`The Provisional Application indicates that the invention applies to any
`device with audio input capability, for example, smart phones such as the
`Apple iPhone™ (id. ¶ 98), wherein smart phones incorporate “general purpose
`computing technology” coupled with an “always-on” Internet connection. Id.
`¶ 3.
`
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`One embodiment of the Provisional Application relates to a mobile
`device that receives textual or binary data “by decoding modulated information
`from ambient audio in the environment.” Id. ¶ 37. For example, “at a club,
`concert, speech, or presentation, a subtitle track corresponding to the presented
`media could be embedded in the audio,” and the mobile device running the
`appropriate application “would listen to and decode the modulated data
`embedded in the ambient audio.” Id.
`Another embodiment of the Provisional Application relates to multiple
`mobile devices that receive textual or binary data “by decoding modulated
`information from ambient audio in the environment containing URLs, codes,
`digital signatures, encryption payloads, or time-based or location-based
`information.” Id. ¶ 38. The devices acquire the information by listening for
`“packets” of data in which the devices are interested. Id. The packets of data
`can, for example, include URLs, and the URLs can be used to automatically
`register the device for a mailing list or automatically access a website to
`download credentials or licenses. Id.
`Another embodiment of the Provisional Application relates to a system
`of two devices to be used in a “museum environment.” Id. ¶ 39. The two
`devices communicate with each other via audio transmitted from one of the
`devices and received by the other device. Id. The transmitting device conveys
`a URL corresponding to content for a presentation in the museum, and the
`receiving device accesses the presentation via the Internet at the URL. Id.
`Another embodiment of the Provisional Application relates to a system
`of two devices that directly communicate with each other. Id. ¶ 41. The two
`devices communicate “by positioning the speaker of a first said device near the
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`microphone of a second said device to exchange small notes or a larger data
`transaction to take place,” which is then “consummated on another high-
`bandwidth link such as 3G, WiFi, WiMax or others.” Id. The data transaction
`takes place by transmission of a URL from the first device to the second by
`audio communication, and subsequently, the second device accesses the data
`from an Internet-based server. Id.
`For example, when the operator of a first device wishes to select a group
`of photographs to beam to a newly encountered user of a second device, the
`first device uploads the photographs to an Internet-based server and then sends
`sounds to the second device to inform the second device of the URL to retrieve
`the photos. Id.
`E. Illustrative Claim
`Of the challenged claims, claim 1 is independent. Claims 2–4 depend
`from claim 1. Claim 1 is illustrative:
`1. A system for coupling a credit card reader to a mobile
`device, the system comprising:
`a hardware component that connects to the mobile device
`and the credit card reader, the hardware component including:
`a first mechanism configured to receive data provided
`by the credit card reader;
`a communication controller for buffering the data
`received from the credit card reader prior to conversion by a
`first circuit;
`the first circuit configured to convert the data to an
`analog audio signal;
`a connector to couple the hardware component to an
`audio input port of the mobile device, wherein: the connector
`bridges a microphone pin of the audio input port such that
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`the mobile device detects a presence of the connector in the
`audio input port; and
`the connector provides an audio communication
`between the hardware component and the mobile device and
`communicates the analog audio signal from the hardware
`component to the mobile device;
`a second mechanism on the mobile device configured to
`receive the analog audio signal and convert the analog audio signal
`into binary data; and
`a third mechanism on the mobile device configured to upload
`the binary data to a cloud service for decoding.
`Ex. 1001, 12:42–13:2.
`F. Evidence of Record
`Petitioner relies upon the references listed below (Pet. 23–70).
`
`
`
`Reference
`WO 2010/097711 A2, published September
`2, 2010
`US Patent No. 6,052,603, issued April 18,
`2000
`US Patent No. 7,058,842 B2, issued June 6,
`2006
`US 8,265,553 B2, issued September 11,
`2012
`
`Exhibit
`
`1005
`
`1006
`
`1007
`
`1008
`
`Tang et al.
`(“Tang”)
`Kinzalow et al.
`(“Kinzalow”)
`Inoue
`Cheon et al.
`(“Cheon”)
`
`
`
`Petitioner also relies on the Declarations of Peter Alexander, Ph.D.
`Exs. 1002, 1012. Dr. Alexander was cross-examined by Patent Owner, and
`a transcript of his deposition was entered into record. Ex. 2008. Patent
`Owner relies on the Declarations of Dean Sirovica, Ph.D. Exs. 2001, 2007.
`
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`
`G. Asserted Grounds of Unpatentability
`We instituted inter partes review on all grounds in the Petition on all
`challenged claims. Petitioner asserts the following grounds of unpatentability
`(Pet. 5):
`
`Claims
`
`Basis
`
`References
`
`§ 1032
`
`Tang, Kinzalow, Inoue
`
`§ 103
`
`Tang, Kinzalow, Inoue, Cheon
`
`1, 4
`
`2, 33
`
`
`
`II. ANALYSIS
`A. Motion to Exclude (Paper 25)
`Patent Owner moves to exclude “new arguments submitted by Petitioner
`[in Petitioner’s Reply].” PO Excl. Mot. 1. In particular, Patent Owner
`contends that, in its Reply, Petitioner submits new arguments that “w[ere]
`never suggested in the Petition.” Id. at 1–3. According to Patent Owner,
`“Petitioner now presents a new theory based on new allegations not presented
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16, 2013.
`Because the application from which the ’706 patent issued was filed before this
`date, the pre-AIA version of § 103 applies.
`3 Although Petitioner initially sought to include claims 19, 21, 22, and 25 in its
`challenge, Patent Owner statutorily disclaimed those claims after the Petition
`was filed. See Ex. 2002. For the reasons discussed in this Decision, we do not
`regard disclaimed claims 19, 21, 22, and 25 as claims challenged in the
`Petition, and instead regard claims 1–4 as the only challenged claims.
`8
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`in the Petition,” wherein, “advancing these new arguments now is improper
`and should be excluded from consideration when evaluating the actual grounds
`for review as presented in the Petition.” Id. at 3.
`In its Opposition to Patent Owner’s Motion to Exclude, Petitioner argues
`that the Motion to Exclude “is in clear violation of the rules” because “[a]
`motion to exclude is intended to challenge the admissibility of evidence,”
`wherein the moving party is required to “(1) object during a deposition, file
`objections within ten business days of the institution decision, or file objects
`within five business days of service of the evidence,” and “(2) preserve the
`objection by filing a motion to exclude that both identifies the objection and
`explain the objection.” Pet. Mot. Opp. 1–2 (citing 37 C.F.R. § 42.64(a),
`(b)(1)), (2), (c); Consolidated Trial Practice Guide (“TPG”), 79–80) (emphasis
`in original). According to Petitioner, “any arguments the Motion attempts to
`have stricken at pages 1 and 5-11 are not the proper subject of a motion to
`exclude evidence,” and “it is unclear what evidence MobilePay is attempting to
`exclude in its Motion at pages 3 and 11-15.” Id. (citing 37 C.F.R. § 42.64(c)
`(emphasis in original). In particular, according to Petitioner, the only citations
`to evidence are: pages of Tang, the primary reference, but “there was never
`any objection to Tang filed within ten days of the institution decision;” and
`excerpts from the deposition of Petitioner’s witness, but “there is no objection
`in the deposition record on which to base a motion.” Id. at 3 (citing 37 C.F.R.
`§ 42.64(b)(1)), (c)).
`In weighing the evidence before us, we find more persuasive the
`position of Petitioner.
`
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`
`A party wishing to challenge the admissibility of evidence must file any
`objections within five business days of service of evidence to which the
`objection is directed, or ten days after institution of trial. 37 C.F.R.
`§§ 42.64(a), 42.64(b)(1). Further, as set forth in the Trial Practice Guide
`(TPG) Update (2018), a motion to exclude evidence should:
`(a) Identify where in the record the objection originally was
`made;
`(b) Identify where in the record the evidence sought to be
`excluded was relied upon by an opponent;
`(c) Address objections to exhibits in numerical order; and
`(d) Explain the basis and grounds for each objection.
`
`
`See TPG Update, 16.
`A motion to exclude “must explain why the evidence is not admissible
`(e.g., relevance or hearsay).” Id. Further, a motion to exclude should not
`“address arguments or evidence that a party believes exceeds the proper scope
`of reply or sur-reply.”4 Id.
`In the Motion to Exclude, Patent Owner merely contends that
`Petitioner’s new argument “of using an unknown and undisclosed buffer
`instead of Inoue’s buffer” is “a new ground and not alleged in the Petition”
`(PO Excl. Mot. 5–11), and “that Tang’s transaction server individual credit
`card data” (id. at 11) should not be considered. That is, in its Motion, Patent
`
`
`4 As made clear in the TPG, the proper route to challenge allegedly new or
`untimely argument is in a motion to strike. TPG Update 17 (explaining that
`“[i]f a party believes that a brief . . . raises new issues, is accompanied by
`belatedly presented evidence, or otherwise exceeds the proper scope of reply or
`sur-reply, it may request authorization to file a motion to strike”). Here, Patent
`Owner never sought authorization to file a motion to strike.
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`Owner does not identify in the record any objection made, let alone explain
`why the objection is made (for example, explain why the evidence is not
`admissible). See TPG Update, 16. Further, as Petitioner points out, the
`Motion does not “challenge the admissibility of evidence,” but rather requests
`the striking of arguments submitted. See Pet. Mot. Opp. 1–3.
`Accordingly, we agree with Petitioner that the Motion is improper for
`failing to identify any evidence to exclude, wherein no objection to the
`evidence was properly made within five business days of service or ten days
`after institution of trial. Pet. Mot. Opp. 1–3; see TPG Update, 16. In
`particular, we agree with Petitioner that, although the Motion points to several
`pages of the primary reference to Tang cited, “there was never any objection to
`Tang filed within ten days of the institution decision,” and although the Motion
`points to excerpts from the deposition of Petitioner’s witness, “there is no
`objection in the deposition record on which to base a motion.” Pet. Mot. Opp.
`3.
`
`On this record, we DENY Patent Owner’s Motion to Exclude as
`improper for failing to identify any evidence to exclude with reference to a
`proper objection as set forth in 37 C.F.R. § 42.64(b)(1)), (c).
`B. Level of Ordinary Skill in the Art
`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). Citing its declarant, Dr. Alexander, Petitioner contends that a person
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`with ordinary skill in the art at the time of the invention would have held a
`Bachelor’s degree in computer science, electrical engineering, or a similar
`discipline, and one or two years of work experience in operating systems or
`networked computing device communication and power consumption of
`networked computing devices, or a related area. Pet. 17 (citing Ex. 1002 ¶ 15).
`Patent Owner does not dispute Dr. Alexander’s assessment on the level of
`ordinary skill in the art. See generally PO Resp. We adopt the level of
`ordinary skill as articulated by Petitioner because, based on the record, this
`proposal appears to be consistent with the ’706 patent, the asserted prior art,
`and is supported by the testimony of Dr. Alexander.
`C. Claim Construction
`The instant Petition was filed December 31, 2018. Thus, the new rules
`amending the claim construction standard apply here because the Petition was
`filed after the November 13, 2018, effective date of the amendment. See
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
`51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November
`13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Accordingly, for
`this inter partes review, the Board applies the same claim construction
`standard as that applied in federal courts.
`
`Under this standard, claim terms “are generally given their ordinary and
`customary meaning” as understood by a person of ordinary skill in the art in
`question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
`1312–13 (Fed. Cir. 2005) (en banc). “In determining the meaning of the
`disputed claim limitation, we look principally to the intrinsic evidence of
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`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor
`Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17). Extrinsic evidence is “less significant than the intrinsic record in
`determining ‘the legally operative meaning of claim language.’” Phillips, 415
`F.3d at 1317.
`Only terms that are in controversy need to be construed, and then only to
`the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`Petitioner contends that “third mechanism on the mobile device
`configured to upload the binary data to a cloud service for decoding” appearing
`in claim 1 should be construed to mean “hardware (e.g., a transceiver) that is
`configured (e.g., by mobile phone operating system or other software) to
`upload binary data to a cloud service for decoding.” Pet. 21–22. Petitioner
`asserts that “[t]he ’706 patent goes on to explain the action that a ‘software
`vendor’ could implement a device to communicate to the cloud through a
`mobile phone, after which the ‘data would then be uploaded without
`significant change to a server, where it would be decoded.’” Id. at 21, (citing
`Ex. 1001, 12:15–22). According to Petitioner, the ’706 patent “identifies the
`destination: a ‘“cloud service’ could decode the signals.” Id.
`
`Patent Owner merely asserts that the “plain and ordinary meaning of
`‘cloud service’” as understood by a person of ordinary skill in the art is “a
`collection of functionality and/or services that are provided by remote devices
`and software, and is interacted with via a network, such as the Internet.” PO
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`Resp. 9–12 (citing Ex. 2001 ¶¶ 31–34).
`The Specification of the ’706 patent does not specifically define the term
`“third mechanism” or even “cloud service.” See generally Ex. 1001, Spec.,
`Figs. The nearest support in the Specification indicates that:
`
`A ‘cloud service’ could decode the signals. That is, the phone
`could be relatively “dumb,” and a device could be used to
`communicate to the ‘cloud’ through a mobile phone. A software
`vendor could implement a solution, whereby users transmit data
`from an accessory, through the audio input of their phone. The
`data would then be uploaded without significant change to a
`server, where it would be decoded.
`Id. at 12:15–22.
`We agree with Patent Owner that “cloud service” should be given its
`“plain and ordinary meaning” as understood by a person of ordinary skill in the
`art. PO Resp. 9–12. We are not persuaded that anything in the claims or the
`Specification, including the language quoted above, defines or limits the “third
`mechanism” to include “hardware (e.g., a transceiver) that is configured (e.g.,
`by mobile phone operating system or other software) to upload binary data to a
`cloud service for decoding,” as Petitioner contends. Pet. 22. Rather, we
`conclude the “ordinary and customary meaning” of the “third mechanism . . .
`configured to upload the binary data to a cloud service for decoding” as recited
`in claim 1 is a mechanism that is capable of uploading the binary data to a
`
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`cloud service for decoding, wherein a “cloud service” is a service that is
`capable of decoding the uploaded binary data. Ex. 1001, Claim 1.
`
`D. Whether the ’706 Patent can claim the Filing Date of the Provisional
`Application as its Priority Date
`Petitioner asserts that the priority date for the ’706 patent cannot be
`earlier than its actual filing date. Pet. 9. In particular, Petitioner contends that
`the Provisional Application does not support “a [third] mechanism on the
`mobile device configured to upload the binary data to a cloud service for
`decoding” as set forth in the claims of the ’706 patent. Pet. 9–10 (emphasis
`added by Petitioner). Petitioner contends that, instead, the Provisional
`Application discloses only peripheral-to-device and device-to-device
`communication and fails to disclose client-to-cloud communication. Id.
`Patent Owner contends that the Provisional Application fully
`supports the invention defined by claim 1. PO Resp. 14–25. According to
`Patent Owner, the Provisional Application supports claim 1 at least with
`respect to a digital camera embodiment, wherein a mobile device uploads
`the binary data of digital photographs to an “Internet-based server [that]
`decodes the data,” the data including encoded TCP/IP packets incoming
`from the mobile device. Id. at 16 (citing Ex. 2001 ¶ 38). Thus, Patent
`Owner argues that the challenged claims are entitled to the priority benefit
`of the Provisional Application’s March 9, 2009, filing date, and therefore,
`Tang is not available as prior art.” Id. at 25.
`
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`1. Principles of Law Regarding Claims of Priority to Provisional
`Applications
`Claims in a patent are entitled to the benefit of a prior filed
`provisional application under 35 U.S.C. § 119(e) if the provisional
`application supports the claims in the way required by 35 U.S.C. § 112(a)
`or 35 U.S.C. § 112 ¶ 1. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1378 (Fed. Cir. 2015). “In other words, the specification of
`the provisional must ‘contain a written description of the invention and the
`manner and process of making and using it, in such full, clear, concise, and
`exact terms,’ 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan to
`practice the invention claimed in the non-provisional application.” Id.
`(citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290,
`1294 (Fed. Cir. 2002) with emphasis from New Railhead). Although the
`written description requirement does not require the applicant “to describe
`exactly the subject matter claimed” (In re Gosteli, 872 F.2d 1008, 1012
`(Fed. Cir. 1989)), the application “must describe the later claimed invention
`‘in sufficient detail that one skilled in the art can clearly conclude that the
`inventor invented the claimed invention as of the filing date sought.’”
`Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1331 (Fed. Cir.
`2008), citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
`Cir. 1997).
`
`2. Whether the Provisional Application Provides Support for the
`Claim Term “Third Mechanism . . . configured to upload the
`binary data to a cloud service for decoding”
`Petitioner contends that the Provisional Application does not support “a
`[third] mechanism on the mobile device configured to upload the binary data to
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`a cloud service for decoding.” Pet. 10 (emphasis added by Petitioner). In
`particular, Petitioner highlights, “nowhere in the ’586 Provisional Application
`did the applicant disclose a cloud service for decoding binary data and [a]
`mechanism on a mobile device configured to upload such data to the cloud
`service.” Pet. 11 (citing Ex. 1002 ¶ 38) (emphasis added). Indeed, the
`Provisional Application fails entirely to mention a cloud service for any
`decoding function. See generally, Ex. 1004.
`However, Patent Owner contends that one embodiment of the
`Provisional Application supports the contested limitation, wherein, in the
`embodiment, the mobile device uploads the binary data to a domain name
`server (DNS), the DNS provides the cloud service of decoding domain names
`to identify number-based Internet addresses, and this address is then used for
`connecting the mobile device and the Internet-based server. PO Resp. 17–18
`(citing Ex. 1004 ¶ 6; Ex. 2001 ¶ 40). Further, Patent Owner contends that the
`Provisional Application discloses support for a smartphone, such as an iPhone,
`with “an ‘always-on Internet connection’” uploading “encoded data (e.g., data
`encoded in TCP/IP packets) to an Internet server (e.g. cloud service),” where
`“the TCIP/IP packets are decoded upon reception.’” Id. at 18–22 (citing
`Ex. 1004 ¶¶ 3, 4, 6, 52, 61, 88, 98; Ex. 1002 ¶¶ 63, 123, 127; Ex. 2001
`¶¶ 43,45, 46).
`In weighing the evidence before us, we find more persuasive the
`position of Petitioner.
`We agree with Petitioner that the Provisional Application is lacking in
`support for “a [third] mechanism on the mobile device configured to upload
`the binary data to a cloud service for decoding” as claimed. Pet. 11. In
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`particular, although the sections of the Provisional Application referenced by
`Patent Owner disclose mobile devices such as iPhones for communicating to
`the Internet using TCP/IP protocol (Ex. 1004 ¶¶ 3, 4, 6, 52, 61, 88, 98), we do
`not find any disclosure in the Provisional Application of a step of uploading
`“encoded data (e.g., data encoded in TCP/IP packets) to an Internet server (e.g.
`cloud service),” where “the TCIP/IP packets are decoded upon reception.’”
`PO Resp. 18–22. In particular, we do not find any disclosure of any decoding
`in the referenced portions of the Provisional Application, let alone of encoded
`data in TCP/IP packets. Id.
`We also do not find any disclosure of a mobile device that uploads the
`binary data to a DNS that provides the cloud service of decoding domain
`names to identify number-based Internet addresses. PO Resp. 17–18. In
`particular, we do not find any DNS, let alone one that decodes domain names
`to identify number-based Internet addresses used for connecting the mobile
`device and the Internet-based server. Id.
`As Petitioner points out, “cloud service” is only mentioned in one
`section of the Specification, the section being “added to the specification [of
`the ’706 patent] when it was filed on May 8, 2010,” not when the Provisional
`Application was filed. Tr. 7–8. A comparison of the Provisional Application
`and the ’706 patent shows that Patent Owner added significant portions of text
`to support the new claims at the time of filing the ’706 patent. Compare
`Provisional Application (Ex. 1004), with the ’706 patent (Ex. 1001). For
`example, the ’706 patent includes the following newly added text:
`A ‘cloud service’ could decode the signals. That is, the phone
`could be relatively “dumb,” and a device could be used to
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`communicate to the ‘cloud’ through a mobile phone. A software
`vendor could implement a solution, whereby users transmit data
`from an accessory, through the audio input of their phone. The
`data would then be uploaded without significant change to a
`server, where it would be decoded.
`
`Ex. 1001, 12:15–22.
`
`During oral arguments, Patent Owner contends that the Provisional
`Application discloses an embodiment in which a user uploads multiple
`photographs at one time to an Internet-based server, and the Internet-based
`server in turn receives those photographs, stores the photographs, generates a
`URL (“uniform resource locator”), and then provides the URL back down to
`the user. Tr. 21. Thus, the user is then able to send to another user the URL,
`and the other user uses that URL to access the photos from the Internet-based
`server. Id. Patent Owner contends that, in this embodiment, the uplink from
`the user’s phone to the Internet-based server would use traditional
`communication links such as WiFi, 3G, etc., built into the iPhone, and the
`packets are then decoded from WiFi and 3G, wherein, since multiple
`photographs are sent at one time, there is a need to “separately parse [the
`photographs] out and stick them in some kind of a data file and then generate
`the URL link.” Id. at 22, 24–25.
`Patent Owner explains that this embodiment of the Provisional
`Application is similar to Tang, the primary reference in the Petition, in that
`“the internal data is going to have to be rearranged in some form to be handed
`off and then processed later.” Tr. 28. That is, the network “is necessarily
`going to have to parse those photographs from the entire stream of data packets
`that it receives” so that it can process and send the data packet to the other
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`user’s device when received. According to Patent Owner, Tang is similar in
`that “multiple data fields of a credit card . . . are read” and then “would be
`parsed out by the transaction server.” Id. at 28–29.
`However, as Petitioner points out in response, in the paragraphs cited by
`Patent Owner for support for the above assertions, “there is little support for
`anything that [Patent Owner] said about the parsing of the photos that’s going
`to happen on the server.” Tr. 39. In particular, we agree with Petitioner that
`“[i]t’s unclear what exactly of the binary data of the photos is actually going to
`actually be decoded at the server,” because “there’s no indication that the
`phone is then just being used as a transmission unit,” wherein it could be “the
`phone that actually parses those photos to present the photos.” Id. In fact, in
`various exemplary embodiments set forth in the Provis
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