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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
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`
`Unified Patents Inc.
`Petitioner
`v.
`Sound View Innovations, LLC,
`Patent Owner
`_________________________
`
`Case IPR2019-0113
`U.S. Patent 6,034,621
`_________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,034,621
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` IPR2019-0113
`Patent 6,034,621
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`I.
`Requested Relief .............................................................................................. 1
`II.
`III. U.S. Patent No. 6,034,621 ............................................................................... 2
` Overview ............................................................................................... 2
`Prosecution History ............................................................................... 4
`IV. Level of Ordinary Skill in the Art ................................................................... 5
`V. Ground 1: Clark in view of Cashman Renders Obvious Claims 4-7,
`10-17, 20-21, 28-33, and 40-44 ....................................................................... 5
` Overview of Clark ................................................................................. 5
`Overview of Cashman ........................................................................... 8
`Clark in view of Cashman Renders Obvious Claims 4-7, 10-17,
`20-21, 28-33, and 40-44 ........................................................................ 9
`VI. Ground 2: Falls in view of Foladare Renders Obvious Claims 1-3, 7-
`8, 10-14, 17-18, 20-24, 28-36, and 40-44 ......................................................41
` Overview of Falls ................................................................................41
`Overview of Foladare .........................................................................43
`Falls in view of Foladare Renders Obvious Claims 1-3, 7-14,
`17-24, 28-36, and 40-44 ......................................................................45
`VII. Ground 3: Falls in view of Foladare and Cashman Renders Obvious
`Claims 4-7, 15, 16, 21, 25-27, 33, and 37-38 ................................................70
`Falls in view of Foladare and Cashman Renders Obvious
`Claims 4-7, 15-16, 21, 25-27, 33, and 37-38 ......................................70
`VIII. Mandatory Notices Under 37 C.F.R. § 42.8 ..................................................78
`Real Party-in-Interest ..........................................................................78
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`Related Matters ....................................................................................79
`Lead and Backup Counsel ...................................................................79
`IX. Grounds for Standing .....................................................................................79
`X.
`Conclusion .....................................................................................................80
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`LIST OF EXHIBITS
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`Exhibit Description
`Ex. 1001 U.S. Patent No. 6,034,621 to Kaufman et al. (“the ’621 patent”)
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`Ex. 1002 Prosecution History of U.S. Patent No. 6,034,621
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`Ex. 1003 Petitioner’s Voluntary Interrogatory Responses
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`Ex. 1004 Declaration of Harley R. Myler, Ph.D., (“Myler”)
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`Ex. 1005 C.V. of Harley R. Myler
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`Ex. 1006 U.S. Patent No. 5,666,530 to Clark et al. (“Clark”)
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`Ex. 1007 U.S. Patent No. 6,034,621 to Cashman (“Cashman”)
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`Ex. 1008 U.S. Patent No. 5,991,771 to Falls et al. (“Falls”)
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`Ex. 1009 U.S. Patent No. 6,134,454 to Foladare et al. (“Foladare”)
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`Ex. 1010 U.S. Patent No. 5,790,952 to Seazholtz et al.
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`Ex. 1011 Microsoft Computer Dictionary, 3rd edition, 1997
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`I.
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`Patent 6,034,621
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`Introduction
`Petitioner Unified Patents Inc. (“Petitioner”) requests inter partes review of
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`claims 1-8, 10-18, 20-38, 40-44 (“challenged claims”) of U.S. Patent 6,034,621
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`(Ex. 1001, “the ’621 patent”). The ’621 patent is directed to a portable computing
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`device such as a PDA that synchronizes a data file of the PDA with a data file of a
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`host computer over a pager or mobile telephone. As described below, such
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`portable computing devices and synchronization techniques were well known
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`before the ’621 patent was filed.
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`II. Requested Relief
`Petitioner respectfully requests inter partes review under 35 U.S.C. § 311 of
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`the challenged claims of the ’621 patent and cancellation of those claims as
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`unpatentable in view of the following references and grounds:
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`Primary Prior Art References1
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`Clark
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`Cashman
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`U.S. Patent 5,666,530, issued Sep. 9, 1997, filed on Dec. 2,
`1992 (Ex. 1006).
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`U.S. Patent 6,334,062, issued Dec. 25, 2001, filed on Jun. 7,
`1995 (Ex. 1007).
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` Clark, Cashman, Foladare, and Falls each qualify as prior art under at least 35
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`U.S.C. § 102(a), (b), and/or (e).
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`Primary Prior Art References1
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`Falls
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`Foladare
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`U.S. Patent 5,991,771, issued Nov. 23, 1999, noting on its face
`a § 102(e) date of Jul. 3, 1997 [86] (Ex. 1008)
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`U.S. Patent 6,134,454, issued Oct. 17, 2000, filed on Dec. 18,
`1995 (Ex. 1009)
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`Ground No. Grounds of Unpatentability
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`1
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`2
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`3
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`Clark in view of Cashman renders obvious claims 4-7, 10-17, 20-
`21, 28-33, and 40-44
`Falls in view of Foladare renders obvious claims 1-3, 7-8, 10-14,
`17-18, 20-24, 28-36, and 40-44
`Falls in view of Foladare and Cashman renders obvious claims 4-
`7, 15, 16, 21, 25-27, 33, and 37-38
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`Clark, Cashman, Falls, and Foladare were not considered during the original
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`prosecution of the ’621 patent. Furthermore, these prior art references and the
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`arguments presented in the Petition are not substantially similar to those considered
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`during prosecution. Accordingly, denial of institution under 35 U.S.C. § 325(d) is
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`not warranted.
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`III. U.S. Patent No. 6,034,621
` Overview
`Each claim is generally directed to “sychroniz[ing] data files” between a
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`personal digital assistant (“PDA”) and a personal computer (“PC”). ’621 patent,
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`Abstract, 1:7-12. The ’621 patent discloses a synchronization of data in a data file
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`608 of a PC 600 with data in data file 614 of a PDA 602 over a two-way paging
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`network. ’621 patent, 3:43-46, Fig. 1.
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`’621 patent, Fig. 1.
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`Figure 1 illustrates PDA system 100 including PDA 602 that includes
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`scheduling program 612, synchronizing routine 103, and data 614. ’621 patent,
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`Fig. 1, 3:43-52, 4:25-30.
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`Similarly, with reference to Figure 3 reproduced below, the ’621 patent
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`discloses “a connection with a remote CDPD transceiver 460.” ’621 patent, 6:65-
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`7:4.
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`’621 patent, Fig. 3.
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`Figure 3 illustrates how data 608 in PC 600 synchronizes with data 614 in
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`PDA 602. ’621 patent, Fig. 3, 6:55-7:15. CDPD transceiver 462 “communicates
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`with the PDA 602 via a serial port…or via a PCMCIA port….” ’621 patent, 7:5-
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`11.
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`Prosecution History
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`Two office actions were issued during prosecution of the ’621 patent, both
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`rejecting the claims as being obvious. Ex. 1002, Prosecution History of U.S.
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`Patent No. 6,034,621, 80-86, 95-104. In the final office action, the Examiner
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`stated that the ’621 patent claims were rejected because “it would have been
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`obvious to one of ordinary skill in the art at the time of the invention to have
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`modified [the prior art’s device] by including a synchronization routine necessary
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`for synchronizing the device’s data with that of a computer….” Id., 101. The
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`patent was allowed when the applicant amended “all currently pending claims [to]
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`recite…a synchronization routine adapted to transmit a synchronization
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`information data packet over a wireless network in order to synchronize a data file
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`of one computing device with another data file of a remotely located second
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`computing device.” Id., 121 (emphasis in original); Myler, ¶¶30-31.
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`IV. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art (“POSA”) for the ’621 patent would
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`have had a Bachelor’s Degree in Electrical Engineering, Computer Science, or a
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`related subject and one or more years of experience working with
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`telecommunication systems. Less work experience may be compensated by a
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`higher level of education, such as a Master’s Degree, and vice versa. Ex. 1004,
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`Declaration of Harley R. Myler, Ph.D. (“Myler”), ¶24-25.
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`V. Ground 1: Clark in view of Cashman Renders Obvious Claims 4-7, 10-17,
`20-21, 28-33, and 40-44
` Overview of Clark
`Like the ’621 patent, Clark discloses the “automated synchronization of
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`information between [the host computer] and the handheld system.” Clark, Abstract.
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`Clark discloses that its handheld system is “a small handheld computer system
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`capable of operating certain personal information management type software such
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`as calendars, telephone directories, and scheduling, with all the files utilized by all
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`of the programs being automatically synchronized.” Id., 2:36-45. Figure 1C below
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`illustrates one embodiment of Clark’s small handheld computer.
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`Clark, Fig. 1C. Figure 1C illustrates handheld computer H installed in cradle 49
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`directly connected to a host computer C. Id., Fig. 1C, 4:60-62. Clark also teaches
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`the transfer of data across wired networks and wireless networks. Clark, 2:6-10,
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`2:59-63, 4:66-5:1, 6:41-49, 6:66-7:3, 10:55-59, 14:29-32. Clark further teaches the
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`transfer of data over a modem link that is “attached to a long distance line or an
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`external option [which] could include a [data] packet radio or cellular phone
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`interface.” Id., 13:14-26, 13:39-42. Figure 4 below illustrates the connections of
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`Clark’s handheld computer H to its components.
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`Jack 46
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`Fax/Modem
`Interface Unit 116
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`Digital Signal
`Processor 118
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`Clark, Fig. 4 (annotated).2 Clark’s handheld computer H includes modules stored
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`on its ROM including synchronization module 238 and calendar module 218. Id.,
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`10:17-22; 10:60-61; Fig. 5; Myler, ¶¶32-40.
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` All red text and red markings in the figures herein are annotations unless
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`otherwise noted.
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` Overview of Cashman
`Cashman discloses a “handset [that] operates as a data transfer terminal as
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`well as an analog cellular telephone subscriber station.” Cashman, Abstract.
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`Cashman teaches that “[t]he availability of portable computers naturally led to the
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`desire to conduct wireless transmission of digital data from a remote location.” Id.,
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`1:38-50. Cashman explains that the Cellular Digital Packet Data (“CDPD”)
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`system, a wireless communication standard used starting in the mid-1990s, (Myler,
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`¶42)3, “operates to provide service to manage data communications to subscribers
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`over a wide geographic range.” Id., 4:24-26.
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` As shown in Figure 3 below, Clark provides a portable terminal (handset)
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`100 that allows communication, specifically data transfer, over a CDPD network.
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`Id., 9:8-18, Fig. 3.
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` In his expert declaration, Dr. Myler states that “CDPD was a wireless
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`communication standard starting from the mid-1990s.” Ex. 1010, U.S. Patent No.
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`5,790,952 to Seazholtz (incorporating by reference Cellular Digital Packet Data
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`System Specification, Book I of V, Vol. 1--Overview Glossary, Jul. 19, 1993); Ex.
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`1011, Microsoft Computer Dictionary, 3rd ed. p. 92 (1999) (stating that CDPD is
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`“[a] wireless standard providing two-way, 19.2-Kbps packet data transmission…”).
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`Cashman, Fig. 3; Myler, ¶41-44.
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` Clark in view of Cashman Renders Obvious Claims 4-7, 10-17, 20-
`21, 28-33, and 40-44
`Independent Claim 4
`1.
`[4(p)] “A portable computing device comprising:”
`a.
`To the extent that the preamble of claim 4 is limiting, Clark discloses or at
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`least renders obvious these elements. Clark teaches a “handheld computer H” that
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`includes a microprocessor 100, an LCD panel, and memory. Clark, 5:28-30, 5:43-
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`46. Thus, Clark’s handheld computer H is a portable computing device. Myler,
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`¶45. Figure 2 below illustrates Clark’s handheld computer H.
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`Clark, Fig. 1A. Thus, Clark discloses or at least renders obvious a portable
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`computing device as claimed. Myler, ¶45.
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`b.
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`[4(a)] “A personal digital assistant including:
`a scheduling programs
`a data file maintained by said scheduling program,
`and
`a synchronization routine; and”
`Clark discloses or at least renders obvious the claimed “personal digital
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`assistant” that is “capable of operating certain personal information management
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`type software such as calendars, telephone directories, and scheduling….” Clark,
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`4:7-10, Myler, ¶¶46-52.
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`Clark or at least renders obvious the claimed “personal digital assistant,”
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`because Clark teaches a “handheld computer H” that includes a microprocessor
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`100. Clark, 5:28-30. The handheld computer H includes an LCD panel and
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`memory. Clark, 5:43-46. Clark’s handheld computer H is a portable computing
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`device that improves on PDAs of the time, described in Clark as “certain palmtop
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`or handheld units…that were very limited [in] function, i.e. personal organizers
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`and the like”). Clark, 1:30-32; 2:36-44; Myler, ¶47.
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`Figure 5, shown below, illustrates calendar module 218 as one application
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`stored on Clark’s handheld computer H’s ROM 114. Clark, 10:60-11:1.
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`Clark, Fig. 5. Clark discloses that handheld computer H can store data on RAM
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`102, including data for “calendar module 218 [which allows] the user to make
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`appointments.” Clark, Fig. 5, 10:8-22, 11:13-35. Clark also more generally
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`teaches the use of various scheduling programs. Clark, 2:36-39 (“small handheld
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`computer system capable of operating certain personal information management
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`type software such as calendars, telephone directories, and scheduling”),4 14:4-7
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`(“there could be multiple host computers, such as the user's computer and the user's
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`secretary's computer. This would be appropriate where a second party keeps track
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`of certain information such as calendaring or scheduling.”). Accordingly, Clark
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`discloses or at least renders obvious the claimed “scheduling program.” Myler,
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`¶49.
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`Clark discloses that its handheld computer H operates personal information
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`management software such as calendars and other scheduling programs, and that it
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`would “share[] files with a desktop computer, with all of the files utilized by all of
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`the programs being automatically synchronized.” Id., 2:36-44. One of the
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`programs present on Clark’s handheld computer H is “a calendar module 218 to
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`allow the user to make appointments.” Id., 10:18-20. Clark teaches that users can
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`access files and applications on handheld computer H and a file viewer 226 to
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`allow viewing of files of common applications. Clark, 3:51-54, 10:35-37. Further,
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`Clark teaches that “minimal data entry recalculation of spreadsheets, simple
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`editing of word processing without extensive macro capabilities, and so on can be
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`provided directly from the ROM 114.” Id., 11:7-12. Clark further teaches that
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`calendar module 218 maintains data files stored on RAM 102 as Clark’s handheld
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`computer H allows the user to make appointments and perform scheduling tasks
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`allows the user to access files, store files, create files, and edit files. Clark, 3:51-
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`54, 10:18-37, 11:13-35; Myler, ¶50. Accordingly, a POSA would have understood
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`that Clark’s calendar module 218 and associated file management teach the
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`claimed “data file maintained by a scheduling program.” Myler, ¶50.
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`Clark discloses that synchronization module 238 “provides the capability to
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`automatically synchronize the various files used in the computer H, such as the
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`calendar 218, the phone directory 222 and the notepad 220….” Id., 10:61-11:1.
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`Synchronization module 238 is “contained in the ROM 114.” Clark, 10:60-64,
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`Fig. 5. Clark teaches that synchronization module 238 can include multiple
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`synchronization sequences like synchronization sequence 630 and calendar
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`synchronization sequence 550. Clark, 14:20-28.
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`Clark discloses that synchronization sequence 630 synchronizes notebook
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`files, word processors, and spreadsheets. Clark, 15:59-61. Additionally, Clark
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`discloses calendar synchronization sequence 550. Clark, 14:55-15:35, Fig. 12.
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`For example, Clark discloses that the “calendar file synchronization routine
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`operates to determine if new entries are present and if so, scans the new entries for
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`conflicts.” Clark, 3:19-21. Accordingly, Clark’s synchronization module 238 and
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`its associated multiple synchronization sequences discloses or at least render
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`obvious the claimed “synchronization routine.” Myler, ¶51-52.
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`c.
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`[4(b)] “a Cellular Digital Packet Data transceiver in two-
`way communication with said personal digital assistant;”
`Claim element 4(b) requires that the PDA is in two-way communication
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`with a CDPD transceiver. Myler, ¶53. Clark in combination with Cashman
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`renders obvious the claimed “Cellular Digital Packet Data transceiver in two-way
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`communication with said personal digital assistant.” Myler, ¶54. Both Clark and
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`Cashman disclose systems for data transfer over wireless communications. Clark,
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`Abstract; Cashman, Abstract; Myler, ¶54. For example, Clark discloses that
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`“[H]andheld computer H can automatically synchronize files and data with a host
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`computer when remotely located…[which] greatly improves the usefulness of the
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`handheld computer H as a portable device.” Id., 16:34-39. Clark’s handheld
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`computer H allows synchronization using “cellular telephones.” Clark, 2:59-3:6,
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`6:45-49. Although Clark does disclose that handheld computer H can
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`communicate “over various telephone networks,” including “cellular telephones,”
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`Clark does not expressly disclose the use of the specific Cellular Digital Packet
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`Data (“CDPD”) cellular telephone standard. Clark, 2:59-3:6, 6:41-45, 13:39-42;
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`Myler, ¶54.
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`Cashman teaches a portable terminal (handset) 100, however, that allows
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`communication, including data transfer, over a CDPD network. Id., 9:8-18, Fig. 3.
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`Cashman explains that “[t]he CDPD network is designed to operate as an
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`extension of existing communication networks, such as [] the Internet network.”
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`Id., 2:23-25. Further, “the CDPD network is simply a wireless mobile extension of
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`traditional networks.” Id., 2:25-27. Cashman teaches that “[t]he availability of
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`portable computers naturally led to the desire to conduct wireless transmission of
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`digital data from a remote location.” Id., 1:38-50. Cashman explains that “the
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`CDPD system…operates to provide service to manage data communications to
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`subscribers over a wide geographic range.” Id., 4:24-26. “CDPD communication
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`systems [provide] reliable, high speed data transmission in many areas where
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`signal quality is inadequate for good cellular modem performance.” Id., 5:5-8.
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`Cashman describes the transfer of digital data via CDPD to be “as if currently
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`connected to a local area network.” Id., 5:12-13; Myler, ¶55.
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`Because Clark discloses the use of “cellular telephones” to connect to
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`external networks, a POSA would have been motivated to connect Cashman’s
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`portable terminal handset 100 to Clark’s handheld computer H to enable Clark’s
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`handheld computer H to use the “reliable, high speed data transmission” CDPD
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`network disclosed in Cashman. Cashman, 4:24-26, 5:5-8; Myler, ¶56. A POSA
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`would have understood that enabling Clark’s handheld computer H to transfer
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`data, including synchronization data, with a host computer over CDPD, as
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`disclosed in Cashman, would have been an obvious and desirable improvement to
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`Clark’s system to provide a faster and more reliable connection to remotely located
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`computer devices. Cashman, 4:24-26, 5:5-8; Myler, ¶56. Such an improvement
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`would have facilitated Clark’s handheld computer H to “conduct wireless
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`transmission of digital data from a remote location” using “reliable, high speed
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`data transmission.” Cashman, 1:38-50; Myler, ¶56. Clark’s handheld computer H
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`modified by Cashman would have provided a improved network link to
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`“automatically synchronize files and data with a host computer when remotely
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`located.” See Clark, 16:34-39; Myler, ¶56.
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`A POSA would have had a reasonable expectation of success in making this
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`modification because of the minimal design change required to connect Clark’s
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`handheld computer H, capable of being configured to connect to various external
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`units, Clark, 6:58-7:3, to Cashman’s portable terminal handset 100 that provides
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`standard connection hardware for PDAs and other electronic devices. Cashman,
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`9:3-7; Myler, ¶57. Clark teaches the transfer of data across local area networks
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`and across various telephone networks. Clark, 2:6-10, 2:59-63, 6:41-49, 6:66-7:3,
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`10:55-59, 14:29-32. Specifically, Clark teaches the transfer of data between
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`handheld computer H and a network through the fax/modem interface unit 116
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`“with connection to the RJ11 jack 46 to allow use with an external line for
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`connection into the telephone network.” Clark, 6:41-45. Jack 46 can connect to
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`“various external units, such as foreign country DAA units, cellular telephones and
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`packet radio transceivers.” Id., 6:45-49, 13-39-42. Thus, a POSA would have
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`been motivated to connect Clark’s handheld computer H to an external unit like
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`Cashman’s portable terminal handset 100, a cellular telephone, to enable data
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`transfer over a telephone network like the CDPD network, a prevalent wireless
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`communication standard of the time. Myler, ¶57.
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` “[A] combination of familiar elements according to known methods is
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`likely to be obvious when it does no more than yield predictable results.” KSR,
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`550 U.S. at 401. The familiar elements of the standard communication hardware
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`in Cashman would have been easily combined with Clark’s handheld computer H.
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`Myler, ¶58. A POSA would have understood that this combination would yield
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`the predictable results of providing “a wireless mobile extension of traditional
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`networks.” Cashman, 2:25-27; Myler, ¶58. A POSA would have been motivated
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`to use the known technique of data transfer over a CDPD network disclosed in
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`Cashman to improve Clark’s handheld computer H to enable two-way
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`communication via a CDPD network. Myler, ¶58.
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`Accordingly, the combined teachings of Clark and Cashman render obvious
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`the limitations of claim element 4(b).
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`d.
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`[4(c)] “said synchronization routine being arranged to
`transmit a synchronization Information data packet
`including information regarding at least one change made
`to said first data file, via said Cellular Digital Packet Data
`transceiver to a remotely located separate computing device
`having an associated second data file; and,”
`Clark alone, or in combination with Cashman, at least renders obvious the
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`limitations of claim 4(c). Myler, ¶¶60-67. Clark discloses that handheld computer
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`H includes “the capability to automatically synchronize the various files used in
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`the computer H [including calendar 218, directory 222, and notepad 220] and any
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`application software programs or miscellaneous files and directories which may be
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`designated by the user with copies of the same files maintained in the host
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`computer.” Clark, 10:60-11:1. Clark teaches that “different sets of files and
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`information to be synchronized must be kept for [the] host computer.” Id., 14:6-8.
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`Clark teaches synchronization module 238 compares files on the host computer
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`and handheld computer H to determine the differences between the two files. Id.,
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`15:59-16:24, Fig. 12. In one embodiment, the synchronization module 238
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`implements synchronization sequence 630, shown below, which enables “handheld
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`computer H [to] automatically synchronize files and data with a host computer
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`when remotely located….” Id., 16:34-36.
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`Clark, Fig. 12. As shown above, Clark’s synchronization sequence 630 “begin[s]
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`at step 632 where the various host and handheld file names, types and directories
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`are developed” or, as shown in Figure 12, where the host and handheld file names
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`are obtained. Id., 14:55-60, 15:62-64, Fig. 12. Clark’s “handheld file” of step 632
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`refers to a file stored on the handheld device, teaching the claimed first data file of
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`the PDA recited in claim element 4(c). Myler, ¶62. Clark’s “host file” of step 632
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`refers to a file stored on the remotely located host computer, teaching the claimed
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`second data file of the separate computing device of claim element 4(c). Myler,
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`¶62. Clark teaches that the first and second data files are associated because the
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`handheld computer H files have “copies of the same files maintained in the host
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`computer.” Clark, 10:61-11:1; Myler, ¶62.
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`Clark teaches that the two files of the host and the handheld are compared
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`“to determine if the dates or times are different for the particular files.” Id., 15:63-
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`66. Specifically, step 634 involves determining if the “last date or time [is]
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`different.” Clark, Fig. 12. This information regarding the differences in the files is
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`used for synchronization; thus, Clark discloses or least renders obvious the claimed
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`“synchronization information.” Myler, ¶63. Additionally, differences in the files
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`reflect changes in the files. Myler, ¶63. Thus, Clark discloses or at least renders
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`obvious the claimed “information regarding at least one change made to said first
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`data file.” Clark, 6:1-10; Myler, ¶63.
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`Clark further discloses using this information to proceed to step 640, “where
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`the first different file is indicated,” then to step 642, “where the two files are
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`scanned to determine if there are any differences,” and then to step 644 “to
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`determine if any differences were found.” Clark, 16:3-7, Fig. 12. Thus, a POSA
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`would have understood that “determin[ing] if the dates or times are different for
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`the particular files” in step 634 would include determining if handheld computer H
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`or the host computer files were changed, including the synchronization information
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`of the first data file or the second data file. Myler, ¶64.
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`Clark discloses or at least renders obvious the claimed “synchronization
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`routine” by teaching various synchronization sequences such as synchronization
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`sequence 630 and synchronization sequence 550. Clark, 14:20-28, 16:34-36 (“the
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`handheld computer H can automatically synchronize files and data with a host
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`computer when remotely located”), 10:60-11:1 (“the capability to automatically
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`synchronize the various files used in the computer H [including calendar 218,
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`directory 222, and notepad 220] and any application software programs or
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`miscellaneous files and directories which may be designated by the user with
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`copies of the same files maintained in the host computer.”). Myler, ¶65.
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`As to the claimed “said synchronization routine being arranged to transmit a
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`synchronization Information data packet,” Clark discloses that for synchronization
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`sequence 600 “the handheld file is transmitted to the host computer.” Clark,
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`15:51-52. Furthermore, for synchronization sequence 630, Clark discloses that the
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`“the various host and handheld file names, types and directories are developed”
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`and that ultimately the “user selects whether to keep the handheld or host or both
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`files or merge the files.” Id., 15:63-16:19. Accordingly, a POSA would have
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`understood that Clark’s teaches that its synchronization routines transmit the
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`handheld file, host files, and associated information about those files (“file names,
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`types and directories,” and “dates or times”) from the handheld computer H
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`(claimed “personal digital assistant”) to the host computer (claimed “remotely
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`located separate computing device”) in order to enable the disclosed functionality
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`of “keep[ing] the handheld or host or both files or merg[ing] the files” on the host
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`computer. Id., 16:19-20; Myler, ¶66.
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`Clark in combination with Cashman also at least renders obvious the
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`claimed “synchronization information data packet.” A POSA would have
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`understood that Clark’s disclosure of transmitting synchronization information via
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`communication with “cellular telephones and packet radio transceivers” would
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`have involved packetizing the synchronization information for transmission.
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`Clark, 6:45-49; Myler, ¶66. In his expert declaration, Dr. Myler states “the
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`transfer of information over a packet-switching network, like cellular telephone
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`networks, the Internet, or the CDPD network, requires the packetization of the
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`data.” Myler, ¶66 (citing Ex. 1011, Microsoft Computer Dictionary, 3rd ed.
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`(defining packet switching as “[a] message-delivery technique in which small units
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`of information (packets) are relayed through stations in a computer network along
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`the best route available between the source and the destination.”)). Further, a
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`POSA would have understood that enabling Clark’s handheld computer H to
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`communicate via Cashman’s Cellular Digital Packet Data handset 100 would
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`require the synchronization information to be packetized as Cashman teaches that
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`CDPD is a packet-switched data service that uses data packets. Cashman, 2:23-45;
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`Myler, ¶66. Thus, it would have been obvious to a POSA in view of Clark and
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`Cashman for the synchronization information, such as the data files and host and
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`handheld file names, dates, types, directories, and times, to be transmitted between
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`Clark’s host computer and handheld computer H in a synchronization information
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`data packet because transmission with Cashman’s Cellular Digital Packet Data
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`(“CDPD”) network requires information be transferred in data packets. Myler,
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`¶66. To the extent the Patent Owner argues otherwise, a POSA would have
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`understood that a finite number of options were available for the transmission of
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`synchronization information between the host computer and handheld computer H,
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`including a synchronization information data packet. Myler, ¶66.
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`Furthermore, a POSA would have understood that Clark’s handheld
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`computer H receives synchronization information, such as when it “obtains” file
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`names in step 654 of synchronization routine 630. Myler, ¶67; Clark, 15:62-64,
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`Fig. 12. As described above in Section V.C.1.c., the Clark/Cashman combination
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`provides transmission via a CDPD cellular telephone. Accordingly, the
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`Clark/Cashman combination renders obvious claim element 4(c) requiring that the
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`transmission of the synchronization information data packet occurs via CDPD
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`transceiver.
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`e.
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`[4(d)] “said synchronization information data packet being
`utilizable by said remotely located separate computing
`device in order to synchronize data of said second data file
`to data of said first data file.”
`Clark discloses or at least renders obvious the