Case IPR2019-01113
`Patent 6,034,621
`Attorney Docket No. 170317-017USIPR
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC
`Petitioner
`
`v.
`
`SOUND VIEW INNOVATIONS, LLC
`Patent Owner
`____________
`
`Case IPR2019-01113
`Patent 6,034,621
`____________
`
`PATENT OWNER SOUND VIEW INNOVATIONS, LLC’S
`PRELIMINARY RESPONSE
`TO UNIFIED PATENTS INC’S PETITION
`FOR INTER PARTES REVIEW
`OF UNITED STATES PATENT NO. 6,034,621
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`TABLE OF CONTENTS
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`Case IPR2019-01113
`Patent 6,034,621
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`V. 
`
`B. 
`
`C. 
`
`INTRODUCTION ........................................................................................... 1 
`I. 
`THE DISCLAIMED CLAIMS ........................................................................ 2 
`II. 
`III.  THE CHALLENGED CLAIMS ..................................................................... 3 
`IV.  THE CHALLENGED CLAIMS OF THE ’621 PATENT ARE DIRECTED
`TO METHODS OF WIRELESS REMOTE SYNCRONIZATION OF
`DATA BETWEEN A PC AND A PDA “AUTOMATICALLY WITHOUT
`USER INTERVENTION.” .............................................................................. 6 
`THE PETITON FAILS TO DEMONSTRATE THAT CLARK IN VIEW
`OF CASHMAN RENDER THE CHALLENGED CLAIMS OBVIOUS
`(ALL CHALLENGED CLAIMS, GROUND 1). ......................................... 10 
`A. 
`Clark And Cashman Do Not Teach “Monitoring A Change To Said
`Data File … Automatically Without User Intervention.” ................... 10 
`Clark And Cashman Do Not Teach “Transmitting Said
`Synchronization Data Packet … Over Said Wireless Telephonic
`Network … Automatically Without User Intervention.” .................... 18 
`Clark In View Of Cashman Do Not Teach “Monitoring A Change
`To Said Data File,” “Assembl[ing] A Synchronization Information
`Data Packet Including Information Regarding Said Detected
`Change” And Then “Transmitting Said Synchronization
`Information Packet” “Over [A] Wireless Telephonic Network.” ....... 21 
`VI.  THE PETITON FAILS TO DEMONSTRATE THAT FALLS IN VIEW OF
`FOLADARE RENDERS THE CHALLENGED CLAIMS OBVIOUS (ALL
`CHALLENGED CLAIMS, GROUND 2). .................................................... 29 
`A. 
`Falls And Foladare Do Not Teach “After Detection Of Said Change
`To Said Data File … Triggering A Synchronization Routine.” .......... 30 
`1. 
`The Petition fails to specify where “after detection of said
`change to said data file … triggering a synchronization
`routine” is allegedly found in the asserted references. ........... 30 
`The portions of Falls cited in the Petition fail to teach “after
`detection of said change to said data file … triggering a
`synchronization routine.” ........................................................ 34 
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`2. 
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`B. 
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`Case IPR2019-01113
`Patent 6,034,621
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`2. 
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`Falls And Foladare Do Not Teach “Synchroniz[ing] A Data File …
`Automatically Without User Intervention.” ........................................ 36 
`1. 
`The Petition fails to demonstrate that Falls teaches
`“monitoring,” “triggering,” and “transmitting” steps that “are
`all performed automatically without user intervention.” ........ 37 
`Falls plainly states that its synchronization routine is not
`automatic and does require user intervention. ........................ 40 
`Falls discloses no “triggering” “after detection of said change
`to said data file” that is performed “automatically.” ............. 42 
`Falls’ synchronization requires user intervention such as
`reconnecting to a network and selecting data to be copied prior
`to disconnection from the network. .......................................... 44 
`VII.  ALL CLAIMS CHALLENGED IN THE PETITION’S THIRD GROUND
`HAVE BEEN DISCLAIMED (GROUND 3) ............................................... 48 
`VIII.  CONCLUSION .............................................................................................. 49 
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`3. 
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`4. 
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`TABLE OF AUTHORITIES
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`Case IPR2019-01113
`Patent 6,034,621
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`Page(s)
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`COURT DECISIONS 
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ............................................................................ 34
`Intelligent Bio-Sys. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 30
`Vectra Fitness, Inc. v. TNWK Corp.,
`162 F.3d 1379 (Fed. Cir. 1998) ....................................................................... 2, 49
`AGENCY DECISIONS 
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2013-00510, Paper 9 (PTAB Feb. 12, 2014) .................................................. 12
`Whole Space Indus. Ltd. v. Zipshade Indus. (B.V.I.) Corp.,
`IPR2015-00488, Paper 14 (PTAB July 24, 2015) ................................................ 12
`STATUTES 
`35 U.S.C. § 253 ................................................................................................... 2, 48
`35 U.S.C. § 312 ........................................................................................................ 33
`RULES AND RULEMAKING 
`37 C.F.R. § 1.321 ....................................................................................................... 2
`37 C.F.R. § 42.104 ................................................................................ 30, 33, 34, 38
`37 C.F.R. § 42.107 .............................................................................................. 2, 49
`37 C.F.R. § 42.22 ..................................................................................................... 33
`77 Fed. Reg. 48,680, 48,689 (Aug. 14, 2012) ........................................................... 2
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`Case IPR2019-01113
`Patent 6,034,621
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`EXHIBIT LIST
`Disclaimer in Patent Under 37 CFR 1.321(a), U.S. Pat.
`No. 6,034,621, cls. 1-8, 15-18, 21-38, and 40-44 (08/972,453
`Sept. 4, 2019)
`IBM Article, ACID Properties of Transactions (accessed Aug. 31,
`2019) (available at https://www.ibm.com/support/
`knowledgecenter/en/SSGMCP_5.4.0/product-overview/acid.html)
`
`
`
`2001
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`2002
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`INTRODUCTION
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`I.
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`Case IPR2019-01113
`Patent 6,034,621
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`The Petition should be denied because it fails to demonstrate a reasonable
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`likelihood that at least one Challenged Claim of the ’621 Patent is unpatentable
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`under any of the Petition’s three proposed grounds.
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`Most of the claims challenged in the Petition, including all of those
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`challenged in Ground 3, have been disclaimed. As for those that are still in the
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`Patent, i.e., claims 10–14 and 20, the Petition’s remaining two grounds each are
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`missing multiple limitations that were demonstrably critical to the claims’
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`allowance and patentability. The claims recite novel methods of wirelessly
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`synchronizing data on personal digital assistants (“PDAs”) in which the
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`monitoring, triggering and transmitting steps are all performed automatically
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`without human intervention. The Petition’s combinations bear little resemblance
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`to these claimed methods. Indeed, they are materially indistinguishable from the
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`inferior methods the Patent expressly disparaged. They do not synchronize
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`automatically without human intervention. In Ground 1, they do not update over
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`the wireless network. And in Ground 2, they do not trigger synchronization based
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`on detecting a change. So far afield are the Petition’s arguments from the patented
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`technology that Petitioner at one point appears to contend that performing a step
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`“atomically” in the combination is the same as performing it “automatically” as
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`Patent 6,034,621
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`claimed.
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`The fact that these flawed arguments are presented by a professional patent
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`attacker, which has so little at stake that it that would lack standing to raise the
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`same arguments in federal court, only confirms that there is no reasonable
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`likelihood that these grounds are worthy of institution and trial.
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`For the foregoing reasons, the Board should deny the Petition in its entirety.
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`II.
`
`THE DISCLAIMED CLAIMS
`
`In compliance with 37 C.F.R. § 1.321(a), Patent Owner has filed in the
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`patent file a statutory disclaimer under 35 U.S.C. § 253(a) of claims 1-8, 15-18, 21-
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`38, and 40-44 of the ’621 patent (the “Disclaimed Claims”). Ex. 2001
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`[Disclaimer]; 77 Fed. Reg. 48,680, 48,689 (Aug. 14, 2012) (codified at 37 C.F.R.
`
`§ 42.107(e)). The result of this disclaimer is that the ’621 Patent “is treated as
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`though the disclaimed claims never existed.” Vectra Fitness, Inc. v. TNWK Corp.,
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`162 F.3d 1379, 1383 (Fed. Cir. 1998). “No inter partes review will be instituted
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`based on disclaimed claims.” 37 C.F.R. § 42.107(e). Therefore, no inter partes
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`review may be instituted based on disclaimed claims 1-8, 15-18, 21-38, and 40-44.
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`III.
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`THE CHALLENGED CLAIMS
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`Patent 6,034,621
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`As a result of the statutory disclaimer, see supra Section III, the only claims
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`still at issue in this proceeding are claims 10–14 and 20 (the “Challenged Claims”).
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`Claims 11–14 depend from, and are narrower than, claim 10. See Ex. 1001 [’621
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`Patent], cls. 11-14. Therefore, the analysis below demonstrating that institution
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`should be denied with respect to Claims 10 and 20 is sufficient to demonstrate that
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`institution should be denied for all Challenged Claims.
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`Claims 10 and 20 depend from disclaimed Claims 7 and 17, respectively.
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`Ex. 1001 [’621 Patent], cls. 10, 20. With the limitations from disclaimed Claims 7
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`and 17 included, Claims 10 and 20 require the following:
`
`Claim 10
`
`Claim 20
`
`A method of utilizing a wireless
`telephonic network to synchronize a
`data file of a PDA
`in
`two-way
`communication with said wireless
`telephonic network with a data file of a
`PC, comprising:
`
`A method of utilizing a wireless
`telephonic network to synchronize a
`data file of a PC with a data file of a
`PDA in two-way communication with
`said wireless
`telephonic network,
`comprising:
`
`monitoring a change to said data file of
`said PC;
`
`monitoring a change to said data file
`of said PDA;
`
`after detection of said change to said
`data file of said PC, triggering a
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`after detection of said change to said
`data file of said PDA, triggering a
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`associated
`routine
`synchronization
`to
`assemble
`a
`with
`said PC
`information
`data
`synchronization
`packet including information regarding
`said detected change; and
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`Case IPR2019-01113
`Patent 6,034,621
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`synchronization routine associated with
`said
`PDA
`to
`assemble
`a
`synchronization
`information
`data
`packet including information regarding
`said detected change; and
`
`synchronization
`said
`transmitting
`information data packet to said PDA
`over said wireless telephonic network,
`said synchronization information data
`packet being receivable by said PDA
`over said wireless telephonic network
`to synchronize said data file of said
`PDA with said data file of said PC.
`
`synchronization
`said
`transmitting
`information data packet to said PC over
`said wireless telephonic network, said
`synchronization
`information
`data
`packet being adapted receivable by said
`PC over said wireless
`telephonic
`network to synchronize said data file of
`said PC with said data file of said PDA.
`
`wherein:
`
`wherein:
`
`said step of monitoring said change,
`said
`step
`of
`triggering
`said
`synchronization routine, and said step
`of transmitting said synchronization
`information data packet
`are
`all
`performed automatically without user
`intervention.
`
`said step of monitoring said change,
`said
`step
`of
`triggering
`said
`synchronization routine, and said step
`of transmitting said synchronization
`information data packet
`are
`all
`performed automatically without user
`intervention.
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`Id., cls. 10, 20 (color added for clarity). For purposes of this Preliminary
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`Response, it is assumed that Claims 10 and 20 claim materially similar methods,
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`with Claim 10 directed towards a method for synchronizing a data file of a PC with
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`a data file of a PDA, and Claim 20 directed towards a corresponding method for
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`synchronizing a data file of a PDA with a data file of a PC. The Petition treats
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`claims 10 and 20 the same way. Pet., 39 (describing these claims as “substantially
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`similar”). In particular, the Petition’s arguments in Grounds 1 and 2 regarding
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`Claim 20, which are the Petition’s only challenges to Claim 20, rely essentially
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`entirely on the Petition’s arguments regarding Claim 10. Pet., 39 (Ground 1) (“The
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`limitations of claims 17 and 20 are substantially similar to those of claims 7 and 10
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`…. [T]hus, Petitioner relies upon the arguments set forth above in Sections V.C.4-
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`V.C.5 for claims 17 and 20.”), 68 (Ground 2) (“The limitations of claims 17-18,
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`and 20 are substantially similar to those of claims 7-8 and 10 … thus, Petitioner
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`relies upon the arguments set forth above in VI.C.4-VI.C.6 for claims 17-18 and
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`20”).
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`The Petition’s arguments regarding both Claims 10 and 20, being
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`substantially similar, fail for substantially similar reasons, as discussed below. See
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`infra §§ V and VI.
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`IV.
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`Case IPR2019-01113
`Patent 6,034,621
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`THE CHALLENGED CLAIMS OF THE ’621 PATENT ARE
`DIRECTED TO METHODS OF WIRELESS REMOTE
`SYNCRONIZATION OF DATA BETWEEN A PC AND A PDA
`“AUTOMATICALLY WITHOUT USER INTERVENTION.”
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`To orient the Board as to the issues in this Preliminary Response, certain
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`selected aspects of the claimed inventions are discussed in further detail next.
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`The ’621 Patent was originally developed at Lucent Technologies, which
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`included Bell Labs. Ex. 1001 [’621 Patent], face page. It “relates to simplified,
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`discrete and automated synchronization of calendar and contact-related data
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`between a personal computer (PC) and a remote personal digital assistant (PDA).”
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`Id., 1:9-12. The Patent describes problems associated with prior art methods of
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`synchronization, and provides a solution in the form of the simplified, discrete and
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`automatic synchronization process explained below.
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`The ’621 Patent explains that a problem of using then-conventional methods
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`to synchronize files was that it “requires the establishment of a fixed, point-to-
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`point, dedicated link.” Id., 2:25-26. Of particular relevance, the ’621 Patent
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`explains that these links would “require physical placement of the PDA to be
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`within the proximity of the PC” or a “telephone jack where a cable can be inserted
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`between a modem connected to the PDA.” Id., 2:27-33.1 Such prior art methods,
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`the Patent explains, would only synchronize files “on demand” and “requir[e] a
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`fixed, dedicated connection between the PDA and the PC for a period of time,
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`which tends to discourage frequent synchronization of data files,” especially in the
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`case of, for example, “a traveling user who is away from the office containing the
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`PC, or a user who carries the PDA into an isolated meeting.” Id., 1:64, 2:34-37.
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`In other words, the Patent discloses that the prior art methods’ need for user
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`intervention in synchronization, such as plugging a PDA into a PC or modem and
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`making on-demand synchronization selections, can be disadvantageous because
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`they discouraged users from synchronizing frequently. Id. As a result,
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`synchronization, since it was less frequent, was less effective, as the PDA and PC
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`were relatively rarely in sync with one another, meaning that important
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`information, such as changed or added appointments, was not shared between the
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`PDA and PC until long after it is entered. Id.; see id., 5:27-32. The ’621 Patent
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`recognized a “need to simplify and automate the synchronization of a user’s date
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`files.” Id., 2:47-48.
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`1 In quotations of the Patent and references herein, feature numbers are
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`omitted and emphases are added unless otherwise noted.
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`The Patent further addresses the problems associated with “fixed, dedicated
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`communication paths,” by utilizing “packetized data to provide efficient utilization
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`of a communication path, rather than wasting unused bandwidth of a fixed,
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`dedicated communication path as in the prior art.” Id., 5:17-20.
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`The inventions claimed in the ’621 Patent’s claims 10–14 and 20 address the
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`problems the patent identifies, by “utiliz[ing] wireless networks in general to
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`accomplish synchronization between a PC and a PDA type device.” Id., 3:37-39.
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`One of the critical aspects of the invention, as described in the Patent, is that the
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`devices “can be synchronized from any location, at any time, without the need to
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`plug the PDA into [a network] or co-locate the PDA with the PC as in the prior
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`art.” Id., 5:30-33. In addition, the invention’s patented method
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`the
`allows for discrete synchronization of data files without
`knowledge of others in the room with the user, or even the user, of the
`PDA. For example, in a long meeting, the user of the PDA does not
`have to excuse him or herself to plug the PDA into the telephone
`system and press an “on demand” selection switch or other means to
`get updated, synchronized information about changed or added
`appointments.
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`Id., 5:33-40. Thus, the present invention solves problems in prior synchronization
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`methods by synchronizing over a wireless network, and doing so automatically
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`without user intervention such as physically connecting the PDA type device to the
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`computer, plugging the device into a network, or manually initiating the
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`synchronization routine. Id.; see also id., 2:17-50.
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`
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`For example, claims 10 and 20, and by dependency all other remaining
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`Challenged Claims, expressly require
`
`a method of utilizing a wireless telephonic network to synchronize a
`data file . . . wherein . . . said step of monitoring said change, said step
`of
`triggering said synchronization routine, and said step of
`transmitting said synchronization information data packet are all
`performed automatically without user intervention.
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`Id., cls. 10, 20.
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`The inventions described and claimed in the ’621 Patent and its Challenged
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`Claims thus improve upon the state of the art by, in part, providing a method for
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`using a wireless telephonic network to synchronize a data file automatically
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`without user intervention. This improvement alone is more than sufficient to
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`distinguish the Challenged Claims from the references asserted in the Petition,
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`which lack this capability or insight. Furthermore, both of the combinations in the
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`proposed grounds are also missing additional limitations. See infra §§ V, VI.
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`THE PETITON FAILS TO DEMONSTRATE THAT CLARK IN
`VIEW OF CASHMAN RENDER THE CHALLENGED CLAIMS
`OBVIOUS (ALL CHALLENGED CLAIMS, GROUND 1).
`
`V.
`
`As explained above in Section IV, a significant, express aspect of the
`
`invention described and claimed in the ’621 Patent is that the synchronization
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`method’s monitoring, triggering, and transmitting steps are performed
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`“automatically without user intervention.” The Petition’s first ground, however,
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`fails to demonstrate a reasonable likelihood that the asserted combination, Clark in
`
`view of Cashman, teaches “monitoring a change to [a] data file … automatically
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`without user intervention” as claimed. Nor does the Petition show that the
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`combination teaches “transmitting said synchronization data packet … over said
`
`wireless telephonic network … automatically without user intervention.” In
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`addition, the Petition also fails to demonstrate that Clark and Cashman teach
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`“transmitting [a] synchronization information data packet … over [a] wireless
`
`telephonic network” containing “information regarding [a] detected change,” as
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`further required in the claims. For these three independently sufficient reasons,
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`Ground 1 should be rejected as a basis for institution.
`
`A. Clark And Cashman Do Not Teach “Monitoring A Change To
`Said Data File … Automatically Without User Intervention.”
`
`As explained above, the Patent describes prior art synchronization that
`
`involves user intervention, such as requiring the user to physically place the PDA
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`“within the proximity of the PC,” as a disadvantage of conventional
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`synchronization methods that “tends to discourage frequent synchronization of data
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`files.” Ex. 1001 [’621 Patent], 2:29-47. Claim 10 and Claim 20 thus require
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`“monitoring a change to [a] data file … wherein: said step of monitoring said
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`change … [is] performed automatically without user intervention.” For this
`
`limitation, the Petition’s Ground 1 relies solely on Clark. Clark’s teachings,
`
`however, are in direct conflict with this limitation. Just like the conventional
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`synchronization systems the Patent expressly distinguishes from the invention,
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`Clark’s synchronization requires significant user intervention. For example,
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`Clark’s alleged “monitoring” step not only requires the user to physically intervene
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`to place the alleged PDA within the proximity of the PC, it in fact requires the
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`alleged “PDA” to be physically connected to the alleged “PC” in order for Clark’s
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`synchronization to be accomplished. Petitioner’s combination of Clark and
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`Cashman thus fails to teach this limitation of the claimed invention, as explained in
`
`more detail below.
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`With regards to the “monitoring” step, Ground 1 argues based on Clark that:
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`[a] POSA [i.e., person having ordinary skill in the art] would have
`understood that Clark’s disclosure that “capture and update software
`is operating on both the host computer and on the handheld computer
`H so that synchronization occurs as a particular file in the
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`synchronization list or group is updated or so that file transfer occurs,”
`teaches the claimed “monitoring a change to said data file of said PC.”
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`Pet., 31 (citing Ex. 1006 [Clark], 12:65-13:10; Ex. 1004 [Myler Decl.] ¶ 76).2
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`The section of Clark relied on by Petitioner for this limitation describes a
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`mode called “capture and update.” This disclosure corresponds, naturally enough,
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`2 Paragraph 76 of Dr. Myler’s declaration includes additional arguments not
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`found in the Petition regarding “monitoring” in Clark. Ex. 1004 [Myler Decl.]
`
`¶ 76. This argument should be rejected as improper incorporation by reference,
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`and an attempt by the 13,997-word Petition to circumvent the 14,000 word limit.
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`37 C.F.R. §42.6(a)(3); see Whole Space Indus. Ltd. v. Zipshade Indus. (B.V.I.)
`
`Corp., IPR2015-00488, Paper 14 at 12 (PTAB July 24, 2015). “Arguments must
`
`not be incorporated by reference from one document into another document,” 37
`
`C.F.R. § 42.6(a)(3), and this Board routinely “decline[s] to consider information
`
`presented in a supporting declaration, but not discussed in a petition”. Conopco,
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`Inc. v. Procter & Gamble Co., IPR2013-00510, Paper 9, 8-9 (PTAB Feb. 12, 2014)
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`(denying institution). Even if these additional contentions were properly subject to
`
`consideration, they rely exclusively on the same section of Clark (12:65-13:10) as
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`cited in the Petition’s argument above, and fail for the same reasons.
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`to when Clark’s “capture and update software is operating.” Ex. 1006 [Clark],
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`12:56-13:10. Clark, however, makes clear that this “capture and update” mode in
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`is not automatic—and indeed is only performed with user intervention. In order
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`for Clark’s “capture and update” mode to operate, Clark’s handheld computer H,
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`the alleged “PDA,” must be inserted by the user into a cradle which is physically
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`connected to a computer (the alleged claimed “PC”), and the software must be
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`activated.
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`First, Clark teaches that to use the “capture and update” mode, the handheld
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`computer H must be inserted into the cradle by the user—exactly the sort of user
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`intervention requirement that the ’621 Patent describes as a defect of conventional
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`methods. Compare Ex. 1006 [Clark], 12:63-13:2 (the “handheld computer H [is
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`put] in capture and update mode” after “[t]he cradle insertion sequence 400
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`commences”); with the description of the invention - see Ex. 1001 [’621 Pat.], e.g.,
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`5:27-40 (“Perhaps most importantly the present invention provides an additional
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`level of freedom of movement to the wireless remote PDA system such that it can
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`be synchronized . . . without the need to plug the PDA into the PSTN or to co-
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`locate the PDA with the PC. . . . For example, in a long meeting, the user of the
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`PDA does not have to . . . plug the PDA into the telephone system . . . .”).
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`From its outset, Clark is quite clear that its “automatic capture of updated
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`data in the host computer is performed” only “[w]hen the handheld computer is in
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`a cradle and actively connected to the host computer.” Ex. 1006 [Clark], Abstract;
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`see also id., 3:7-11 (“When the handheld computer is in the cradle and actively
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`connected to the host computer, the handheld computer enters a mode where it
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`automatically captures updated data…”), 3:11-13 (“while the two are physically
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`connected automatic synchronization of the data is performed in real time”).
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`Clark’s Figure 1C, reproduced below, is consistent with Clark’s universal
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`description elsewhere of its “capture and update” mode only transpiring when the
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`handheld computer is inserted in cradle by user. The figure clearly shows the
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`handheld computer (H) has been inserted in the cradle (49) which is physically
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`connected to the computer (C):
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`Ex. 1006 [Clark], Fig. 1C; see also id. 4:60-62 (“In FIG. 1C the handheld computer
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`H is shown installed in a cradle 49, which is directly connected to a host computer
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`C. Cradle”); id., 4:1-3.
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`Indeed, Clark further makes it clear that it is user intervention that also ends
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`its capture and update mode. According to Clark’s teachings, “if the computer H
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`[is] removed from the cradle … capture and update mode is ended.” Id., 13:10-12;
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`see also id., Fig. 8. Clark does not disclose—and Petitioner does not even attempt
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`to argue—that Clark’s handheld computer H can be physically inserted into
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`Clark’s cradle “automatically without user intervention.”
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`As explained above, Clark’s requirement of user intervention to both co-
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`locate and physically connect the two synchronizing devices is precisely the
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`problem in the prior art that the ’621 Patent described, criticized, and set out to
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`solve. See Section II supra; see also Ex. 1001 2:27-29 (“These fixed, dedicated
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`links require physical placement of the PDA to be within the proximity of the
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`PC”), 4:58-60 (the present invention allows the user to “synchronize the data file at
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`any time without the need to hook-up to a telephone jack or co-locate the PDA
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`with the PC”). And the Petition offers no basis to conclude that Clark contains any
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`teaching of such a monitoring step performed automatically without user
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`intervention. Indeed, the Petition’s discussion of this limitation is limited to
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`arguments about what is “automatic” in Clark, and nowhere mentions “without
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`user intervention.” E.g., Pet., 31. The Petition simply does not address Clark’s
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`description of its capture mode as being initiated by inserting the handheld
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`computer H into the cradle and terminated by removing it from the cradle.
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`In addition to the requirement of being inserted in the cradle, Clark still
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`further teaches that its capture and update “software must be activated.” Id., 12:55.
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`Clark does not specifically teach how the capture and update software is activated,
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`but makes clear, in a so-called “third alternative,” that software is activated by the
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`physical “configuration” of “[s]liding the computer H into the cradle 49”—
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`“sliding” that specifically requires “user intervention.” Id., 7:31-37. Petitioner
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`fails to even address these teachings in Clark of how its capture and update
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`software is activated by “user intervention,” much less demonstrate (or even argue)
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`that Clark contains any teaching of automatically activating the software without
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`user intervention.
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`Therefore, even aside from the user intervention of inserting the handheld
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`computer into a cradle described above, Petitioner still further fails to demonstrate
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`that the activation of Clark’s capture and update software, a necessary step for
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`Clark’s alleged “monitoring,” can be done “automatically without user
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`intervention” as the Challenged Claims all require. On the contrary, as set forth
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`above, Clark’s alleged “monitoring a change to said data file” teachings require
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`user intervention twice or thrice over: placing the handheld computer in close
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`proximity with the computer, inserting the handheld computer into a cradle
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`connected to the computer, and activating the capture and update software. In
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`sum, the Petition’s combination of Clark in view of Cashman fails to teach
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`“monitoring a change to said data file … wherein[] said step of monitoring said
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`change …[is] performed automatically without user intervention,” as required by
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`all of the Challenged Claims. This missing limitation is sufficient in and of itself
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`to reject Ground 1 at institution as to all Challenged Claims.
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`B. Clark And Cashman Do Not Teach “Transmitting Said
`Synchronization Data Packet … Over Said Wireless Telephonic
`Network … Automatically Without User Intervention.”
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`Ground 1’s combination is also missing still more limitations.
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`As explained above, the Patent describes synchronization that involves user
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`intervention, such as requiring the user to select an on demand synchronization, as
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`a problem in conventional synchronization methods that “tends to discourage
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`frequent synchronization of data files,” and that the claimed inventions overcome.
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`Ex. 1001 [’621 Patent], 1:64, 2:29-47. Accordingly, Claim 10 and Claim 20 each
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`expressly requires “transmitting said synchronization data packet … over said
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`wireless telephonic network … wherein … said step of transmitting said
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`synchronization data packet [is] performed automatically without user
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`intervention.” The Petition relies solely on Clark for this limitation.3 Pet., 33.
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`Clark’s relied-upon “transmitting,” however, requires multiple instances of user
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`intervention, as discussed below.
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`The Petition argues that this limitation is met because supposedly “Clark
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`teaches the transmission of synchronization information to handheld computer H
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`3 The Petition also cites Cashman, but only for its alleged teaching of “data
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`transfer via a … CDPD network.” Pet., 33.
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`over the wireless telephonic network,” and also supposedly “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.’” Pet., 33 (referencing Pet., 15); id., 15
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`(citing Ex. 1006 [Clark], 16:34-39), 33 (brackets added by Petitioner). To be sure,
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`the cited section of Clark does use the word “automatically.” However, nothing in
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`this section states or even suggests that Clark’s synchronization is performed
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`“without user intervention,” as required by the Challenged Claims. The Petition
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`fails to address this deficiency. Indeed, the words “user intervention” do not
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`appear in the Petition’s entire argument in Ground 1, aside from a quote of the
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`’621 Patent’s limitations.
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`The Petition’s failure is understandable, for Clark’s synchronization process,
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`and its alleged “transmitting,” in fact describe multiple user interventions. First, in
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`order to allow a communication channel to be established, the user in Clark must
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`first physically attach a modem link to a long distance line, or physically connect
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`“an external unit such as a cellular phone or packet radio” to the serial port of
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`handheld computer H. Ex. 1006 [Clark], 6:41-49; 13:22-24.
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`Second, in establishing a connection for synchronization, Clark teaches that
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`if th