Trials@uspto.gov
`571-272-7822
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`Paper: 8
`Date: November 22, 2019
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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.
`____________
`
`IPR2019-01113
`Patent 6,034,621
`____________
`
`
`
`Before LINDA E. HORNER, PATRICK R. SCANLON, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314; 37 C.F.R. § 42.107(e)
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper: 8
`Date: November 22, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
`
`SOUND VIEW INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`IPR2019-01113
`Patent 6,034,621
`____________
`
`
`
`Before LINDA E. HORNER, PATRICK R. SCANLON, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314; 37 C.F.R. § 42.107(e)
`
`
`
`
`
`
`
`
`IPR2019-01113
`Patent 6,034,621
`
`INTRODUCTION
`I.
`Unified Patents Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1‒8, 10‒18, 20‒38, and 40‒44 of
`U.S. Patent No. 6,034,621 (Ex. 1001, “the ’621 patent”). Sound View
`Innovations, LLC (“Patent Owner”) filed a Preliminary Response (Paper 7,
`“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`“unless . . . the information presented in the petition . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” A decision to institute under
`35 U.S.C. § 314 may not institute on fewer than all claims challenged in the
`petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`Patent Owner filed a statutory disclaimer to disclaim claims 1‒8, 15‒
`18, 21‒38, and 40‒44 of the ’621 patent. See Ex. 2001. Thus, of the claims
`challenged in the Petition, only claims 10‒14 and 20 remain in the patent.
`Upon consideration of the Petition and the Preliminary Response, and for the
`reasons explained below, we determine that Petitioner has not shown a
`reasonable likelihood that it would prevail with respect to at least one of the
`remaining challenged claims. Thus, we deny the Petition and do not
`institute an inter partes review of claims 1‒8, 10‒18, 20‒38, and 40‒44 of
`the ’621 patent.
`
`II.
`
`BACKGROUND
`
`A. Related Matters
`Neither Petitioner nor Patent Owner identifies any other judicial or
`administrative matters that would affect, or be affected by, a decision in this
`proceeding. Paper 1, 79; Paper 6, 2.
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`Patent 6,034,621
`B. Real Parties in Interest
`Unified Patents Inc. identifies itself as the real party in interest.
`Paper 1, 78; see also Ex. 1003 (Petitioner’s Voluntary Interrogatory
`Responses in support of its RPI certification). Sound View Innovations,
`LLC, identifies itself and Sound View Innovation Holdings, LLC, as the real
`parties in interest. Paper 6, 2.
`C. The ’621 Patent
`The ’621 patent relates to the automated synchronization of calendar
`and contact-related data between a personal computer (PC) and a remote
`personal digital assistant (PDA). Ex. 1001, 1:9‒12. The ’621 patent
`describes that conventional methods to link a PC with a PDA to synchronize
`data require establishing a fixed, point-to-point, dedicated link. Id. at 2:24‒
`27, Figs. 5‒7. These fixed, dedicated links require either physical placement
`of the PDA within the proximity of the PC to establish a direct serial link or
`an infrared link, or movement of the PDA to a telephone jack to connect the
`PDA to a modem. Id. at 2:27‒33. The ’621 patent describes that the
`requirement to have a fixed, dedicated connection between the PDA and the
`PC for a period of time tends to discourage frequent synchronization of data
`files. Id. at 2:33‒37.
`The ‘621 patent describes a system that uses wireless networks to
`synchronize data between a PC and a PDA. Id. at 3:37‒39. An embodiment
`of the system that uses a Cellular Digital Packet Data (CDPD) network to
`synchronize data is shown below in Figure 3.
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`Figure 3 shows an embodiment of the system that uses a CDPD
`network to transmit data packets over existing cellular telephone channels.
`Id. at 6:55‒59. In Figure 3, PC 600 and PDA 300 contain scheduling
`programs 606, 612 and data files 608, 614. Id. at 6:63‒65. PC 600
`establishes a connection with remote CDPD transceiver 460 to implement a
`two-way synchronization of data files 608, 614 under the control of
`synchronization routine 301. Id. at 6:65‒7:1. PDA 300, which is a roaming
`remote device, may initiate the establishment of the connection with PC 600,
`and synchronization routine 303 may control synchronization of data files
`608, 614. Id. at 6:60‒61, 7:1‒4.
`CDPD transceiver 460 establishes a wireless connection with CDPD
`base station 464, which in turn routes the synchronization data from data file
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`Patent 6,034,621
`608 through Public Switched Telephone Network (PSTN) 724 to another
`CDPD base station 465, if necessary, before re-transmission to remote
`CDPD transceiver 462. Id. at 7:5‒9. Remote CDPD transceiver 462
`communicates with PDA 602 via a serial port or via a PCMCIA port if PDA
`602 is so equipped. Id. at 7:9‒12.
`The ’621 patent describes that an important feature is “the utilization
`of packetized data to provide efficient utilization of a communication path,
`rather than wasting unused bandwidth of a fixed, dedicated communication
`path as in the prior art. Id. at 5:16‒20. The ’621 patent also describes that
`the system “provides an additional level of freedom of movement” to the
`PDA because “it can be synchronized from any location, at any time,
`without the need to plug the PDA 602 into the PSTN or to co-locate the
`PDA 602 with the PC 600 as in the prior art.” Id. at 5:27‒32.
`The ’621 patent describes that “[i]n a preferred embodiment,
`synchronization between the data files 608, 614 takes place after each update
`or change to either data file 608, 614.” Id. at 4:31‒33. For example, “as a
`data base cell is changed in either data file 608, 614, the same changes are
`mirrored to the other data file 608, 614” over the wireless network. Id. at
`4:35‒38. The ’621 patent describes that “this automatic synchronization
`may take place after n changes to either data file 608, 614, after m minutes
`of activity, and/or upon existing from the scheduling program 606 or 612.”
`Id. at 4:41‒44.
`D. Challenged Claims
`Petitioner challenges claims 1‒8, 10‒18, 20‒38, and 40‒44. Paper 1,
`1. Of these, claims 1, 4, 7, 17, 21, and 33 are independent. Ex. 1001, 7:27‒
`10:65. Claim 7 and its dependent claim 10, reproduced below, are
`illustrative of the challenged subject matter.
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`Patent 6,034,621
`7.
`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:
`monitoring a change to said data file of said PC;
`after detection of said change to said data file of said PC,
`triggering a synchronization routine associated with said PC to
`assemble a synchronization information data packet including
`information regarding said detected change; and
`transmitting said synchronization 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.
`10. The method according to claim 7, 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.
`Ex. 1001, 8:15‒30, 37‒41.
`E. Evidence
`Petitioner relies on the following prior art references in the asserted
`grounds of unpatentability:
`Reference
`U.S. Patent No. 5,666,530, issued Sept. 9, 1997 to Ted H.
`Clark et al. (“Clark”)
`U.S. Patent No. 6,334,062 B1, issued Dec. 25, 2001 to
`Russell P. Cashman (“Cashman”)
`U.S. Patent No. 5,991,771, issued Nov. 23, 1999 to Patrick
`T. Falls (“Falls”)
`U.S. Patent No. 6,134,454, issued Oct. 17, 2000 to Mark
`Jeffrey Foladare et al. (“Foladare”)
`
`Ex. 1007
`
`Exhibit No.
`Ex. 1006
`
`Ex. 1008
`
`Ex. 1009
`
`6
`
`
`
`References
`Clark, Cashman
`
`Falls, Foladare
`
`Falls, Foladare, Cashman
`
`103(a)
`
`103(a)
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`Patent 6,034,621
`Petitioner also supports its challenge with a Declaration of Mr. Harley
`R. Myler, Ph.D., P.E., filed as Exhibit 1004 (“Myler Declaration”).
`F. Asserted Grounds
`Petitioner asserts that claims 1‒8, 10‒18, 20‒38, and 40‒44 are
`unpatentable on the following grounds:
`Claims Challenged
`35 U.S.C. §
`4‒7, 10‒17, 20, 21,
`103(a)
`28‒33, 40‒44
`1‒3, 7, 8, 10‒14, 17,
`18, 20‒24, 28‒36,
`40‒44
`4‒7, 15, 16, 21, 25‒
`27, 33, 37, 38
`
`
`
`III. ANALYSIS
`
`A. Statutory Disclaimer
`As noted above, after Petitioner filed the Petition, Patent Owner filed
`a statutory disclaimer of claims 1‒8, 15‒18, 21‒38, and 40‒44 of the ’621
`patent. Ex. 2001; see Prelim. Resp. 2. Patent Owner contends that “[t]he
`result of this disclaimer is that the ’621 Patent ‘is treated as though the
`disclaimed claims never existed.’” Prelim. Resp. 2 (quoting Vectra Fitness,
`Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Circ. 1998) (“This court has
`interpreted the term ‘considered as part of the original patent’ in section 253
`to mean that the patent is treated as though the disclaimed claims never
`existed.”). Patent Owner also directs us to our rules, which state that “[n]o
`inter partes review will be instituted based on disclaimed claims.” Id.
`(quoting 37 C.F.R. § 42.107(e)). Patent Owner argues that under this rule,
`“no inter partes review may be instituted based on disclaimed claims 1‒8,
`15‒18, 21‒38, and 40‒44.” Id.
`
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`Under 37 C.F.R. § 42.107(e), “patent owner may file a statutory
`disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this
`chapter, disclaiming one or more claims in the patent” and “[n]o inter partes
`review will be instituted based on disclaimed claims.” A disclaimer under
`35 U.S.C. § 253(a) is “considered as part of the original patent” as of the
`date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). See also
`Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1382 (Fed. Cir. 1998)
`(holding that § 253 disclaimer is immediately “recorded” on date that Office
`receives disclaimer meeting requirements of 37 C.F.R. § 1.321(a) and that
`no further action is required in the Office).
`Based on our review of Exhibit 2001 and Office public records, we
`conclude that a disclaimer of claims 1–8, 15‒18, 21‒38, and 40‒44 of the
`’621 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of
`September 4, 2019. Ex. 2001. Because claims 1–8, 15‒18, 21‒38, and 40‒
`44 have been disclaimed under 35 U.S.C. § 253(a) in compliance with
`37 C.F.R. § 1.321(a), we cannot institute a trial on these claims. 37 C.F.R.
`§ 42.107(e); General Electric Co. v. United Techs. Corp., IPR2017-00491,
`Paper 9, 2–3 (PTAB July 6, 2017) (precedential). Thus, we treat claims 1‒8,
`15‒18, 21‒38, and 40‒44 as no longer existing in the ’621 patent, and
`Petitioner cannot seek inter partes review of those claims.
`We now consider the challenges1 to remaining claims 10‒14 and 20.
`
`
`1 Ground 3 challenges only disclaimed claims 4‒7, 15, 16, 21, 25‒27, 33, 37,
`and 38 over the combination of Falls, Foladare, and Cashman. Pet. 70‒78.
`Thus, we do not address the substance of Ground 3 because it addresses only
`claims that no longer exist. Prelim. Resp. 48‒49.
`
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`B. Legal Standards
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved based on underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) objective evidence of nonobviousness.2
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In an inter partes review, a petition must identify “with particularity,
`each claim challenged, the grounds on which the challenge to each claim is
`based, and the evidence that supports the grounds for the challenge to each
`claim.” 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.104(b) (requiring a
`petition for inter partes review to identify how the challenged claim is to be
`construed and where each element of the claim is found in the prior art
`patents or printed publications relied upon).
`C. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation marks and citation omitted).
`
`2 The parties have not directed our attention to any objective evidence of
`non-obviousness.
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`Petitioner argues that a person of ordinary skill in the art for the
`challenged patent “would have had a Bachelor’s Degree in Electrical
`Engineering, Computer Science, or a related subject and one or more years
`of experience working with telecommunication systems” and that “[l]ess
`work experience may be compensated by a higher level of education, such as
`a Master’s Degree, and vice versa.” Pet. 5 (citing Ex. 1004 ¶¶ 24–25).
`Absent opposition from Patent Owner, we adopt Petitioner’s
`definition of the level of ordinary skill in the art for purposes of this
`decision. Moreover, the prior art itself may be sufficient to demonstrate the
`level of skill in the art at the time of the invention. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific
`findings regarding ordinary skill level are not required “where the prior art
`itself reflects an appropriate level and a need for testimony is not shown”)
`(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
`163 (Fed. Cir. 1985)).
`D. Claim Construction
`Neither Petitioner nor Patent Owner proposes claim constructions for
`any elements of the challenged claims. We do not need to construe any
`claim terms to reach our decision in this matter. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(“[W]e need only construe terms ‘that are in controversy, and only to the
`extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
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`Patent 6,034,621
`E. Ground 1: Obviousness of claims 10‒14 and 20 over Clark and
`Cashman
`Clark
`1.
`Clark relates to “handheld computer systems capable of sharing data
`with desktop and network computer systems.” Ex. 1006, 1:11‒12. Clark
`describes a small handheld computer that includes a combined fax/modem
`unit so that the computer can communicate with a host desktop computer
`over various telephone networks “to allow automated synchronization of
`information between the host and the local handheld system.” Id. at 2:48‒
`63. Clark describes, “Preferably the synchronization is performed at several
`user selectable levels, such as whenever the computer is first turned on or at
`certain periodic intervals if a communications path to the host computer is
`available or can be made available.” Id. at 2:63‒3:1.
`Clark describes alternative communication paths are “a modem, a
`parallel printer port, a conventional serial port, a cradle assembly connected
`to the host computer, and various wireless short distance techniques such as
`radio frequency or infrared transmission.” Id. at 3:1‒6. When the handheld
`computer is in the cradle and actively connected to the host computer, the
`system performs automatic synchronization of the data in the two systems in
`real time. Id. at 3:7‒13. When the handheld computer is removed from the
`cradle, then synchronization using one of the above-mentioned alternative
`communication paths is employed. Id. at 3:13‒15. Clark describes, with
`reference to Figure 4, that handheld computer H includes wireless interface
`circuitry 120 that “can be adapted for radio frequency operation . . . or could
`conform to various cellular telephone or packet radio protocols.” Id. at
`6:58‒7:3.
`
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`Clark describes that flash ROM 114 of handheld computer H has
`stored software modules, including synchronization module 238 that
`provides the capability to automatically synchronize various files used in
`handheld computer H with copies of the same files maintained in the host
`computer. Id. at 10:60‒11:1. These files include calendar 218, phone
`directories 222, notepad 220 and application software programs. Id. “Thus
`the handheld computer H can automatically synchronize files and data with a
`host computer when remotely located and continuously synchronizes
`common files when directly connected to the host computer C by a cradle
`interface 49.” Id. at 16:33‒37. Synchronization can occur even when the
`handheld computer H is not in the cradle. Id., Fig. 7. Clark describes that
`synchronization sequence 450 (Fig. 9A) can occur via an external cellular
`phone connected to the serial port of the handheld computer H. Id. at 13:22‒
`24, 13:39‒42.
`Cashman
`2.
`Cashman relates to wireless communication devices and switching
`wireless portable subscriber stations between both data and voice modes.
`Ex. 1007, 1:15‒18. Cashman teaches that “[t]he availability of portable
`computers naturally led to the desire to conduct wireless transmission of
`digital data from a remote location.” Id. at 1:48‒50. Cashman describes a
`Cellular Data Packet Data (CDPD) system that operates to provide service to
`manage data communications to subscribers over a wide geographic range.
`Id. at 4:24‒26. Specifically, Cashman provides portable terminal 100 that
`allows data transmission over a CDPD network. Id. at 9:8‒18, Fig. 3.
`Analysis of Claim 10
`3.
`Patent Owner argues that the Petition fails to demonstrate a reasonable
`likelihood that Clark combined with Cashman teaches “monitoring a change
`
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`to [a] data file . . . automatically without user intervention” and “transmitting
`said synchronization data packet . . . over said wireless telephonic
`network . . . automatically without user intervention.” Prelim. Resp. 10.3
`“monitoring a change to said data file of said PC”
`a)
`that is “performed automatically without user
`intervention”
`Independent claim 7 recites a synchronization method that includes
`the step of “monitoring a change to said data file of said PC” and dependent
`claim 10 recites that this monitoring step is “performed automatically
`without user intervention.” Ex. 1001, 8:19, 37‒41.
`(1) Petitioner’s Contentions
`In the discussion of the monitoring step of claim 7, the Petition directs
`our attention to the embodiment in Clark in which cradle transfer and remote
`operation module 214 monitors for updates to entries made on the host
`computer. Pet. 31 (citing Ex. 1006, 12:65‒13:10; Ex. 1004 ¶ 76)4. In the
`discussion of the additional limitation of dependent claim 10, the Petition
`cites portions of Clark that describe that the synchronization is automatically
`performed when the handheld computer is in the cradle and actively
`
`
`3 Patent Owner further argues that the Petition fails to show a reasonable
`likelihood that Clark teaches “transmitting [a] synchronization information
`data packet . . . over [a] wireless telephonic network” containing
`“information regarding [a] detected change.” Prelim. Resp. 10, 21‒29. We
`do not reach this additional argument because we find that the Petition fails
`to show how the combination renders obvious the claimed monitoring and
`transmitting steps occurring “automatically without user intervention.”
`4 As noted by Patent Owner, paragraph 76 of the Myler Declaration includes
`additional arguments not found in the Petition, yet these additional
`contentions, even if considered, point to the same portion of Clark (12:65‒
`13:10) as cited in the Petition. Prelim. Resp. 12.
`
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`connected to the host computer. Pet. 34‒35 (citing Ex. 1006, 3:7‒16, 3:55‒
`59, 12:48‒55, 12:65‒13:8; Ex. 1004 ¶¶ 82‒83).
`(2) Patent Owner’s Argument
`Patent Owner argues that Clark’s alleged “monitoring” step is not
`accomplished automatically without user intervention because it “requires
`the alleged ‘PDA’ to be physically connected to the alleged ‘PC’ in order for
`Clark’s synchronization to be accomplished.” Prelim. Resp. 11. Patent
`Owner asserts that “[i]n order for Clark’s ‘capture and update’ mode to
`operate, Clark’s handheld computer H . . . must be inserted by the user into a
`cradle which is physically connected to a computer . . . and the software
`must be activated.” Prelim. Resp. 13. Patent Owner argues that this action
`of connecting the handheld computer to the host computer is “exactly the
`sort of user intervention requirement that the ’621 Patent describes as a
`defect of conventional methods.” Id. (citing Ex. 1006, 12:63‒13:2;
`Ex. 1001, 5:27‒40). Patent Owner also argues “the Petition offers no basis
`to conclude that Clark contains any teaching of such a monitoring step
`performed automatically without user intervention. Indeed, the Petition’s
`discussion of this limitation is limited to arguments about what is
`‘automatic’ in Clark, and nowhere mentions ‘without user intervention.’”
`Prelim. Resp. 16.
`
`(3) Analysis
`We agree with Patent Owner that the ’621 patent describes that prior
`art methods for synchronization require user intervention “such as plugging
`a PDA into a PC or modem and making on-demand synchronization
`selections.” Prelim. Resp. 7 (citing Ex. 1001, 1:64, 2:34‒37). We also agree
`with Patent Owner that the ’621 patent describes that the claimed method
`“allows for discrete synchronization of data files without the knowledge of
`
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`others in the room with the user, or even the user, of the PDA” such that the
`method synchronizes over a wireless network “automatically without user
`intervention such as physically connecting the PDA type device to the
`computer, plugging the device into a network, or manually initiating the
`synchronization routine.” Id. 8‒9 (citing Ex. 1001, 2:17‒50, 5:33‒40).
`Based on this description provided in the ’621 patent, we agree with
`Patent Owner that Clark’s monitoring step, which requires a user to place a
`handheld device into a cradle to establish a fixed, dedicated link in order to
`monitor for a change to a data file, involves human intervention. The
`Petition fails to explain sufficiently how the embodiment in Clark that
`requires the user to place the handheld computer into the cradle, identified
`by Petitioner for the monitoring step, comprises “monitoring a change to
`said data file of said PC” that is “performed automatically without user
`intervention.”
`
`b)
`
`“transmitting said synchronization information
`data packet . . . over said wireless telephonic
`network . . . automatically without user
`intervention”
`Independent claim 7 recites the synchronization method and includes
`the step of “transmitting said synchronization information data packet5 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.” Ex. 1001, 8:25‒30. Dependent claim 10 recites that this
`
`
`5 Claim 7 defines that “said synchronization information data packet”
`includes “information regarding said detected change” that was detected in
`the monitoring step. Ex. 1001, 8:19‒24.
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`transmitting step is “performed automatically without user intervention.” Id.
`at 8:37‒41.
`
`(1) Petitioner’s Contentions
`In the discussion of the transmitting step of claim 7, Petitioner asserts
`that Clark teaches transmission of synchronization information to handheld
`computer H over the wireless telephonic network. Pet. 33 (cross-referencing
`the analysis of claim 4, limitation (b) on page 15 of the Petition and citing
`Ex. 1004 ¶ 81). Petitioner also asserts that “[t]he combination of Clark’s
`handheld computer H connected with Cashman’s portable terminal handset
`100 teaches data transfer via a wireless telephone network, namely a CDPD
`network.” Id. The Petition points to disclosure in Clark that describes
`connection of an external unit, such as a cellular telephone, to jack 46, with
`the digital signal processor (DSP) 118 adapting to the connected external
`unit. Id. at 15 (citing Ex. 1006, 6:45‒49). Clark describes use of an external
`unit connected to jack 46 as an alternative communication path as compared
`to the cradle assembly connected to the host computer. Ex. 1006, 2:59‒3:6.
`Petitioner proposes that it would have been obvious to modify Clark to use
`Cashman’s portable terminal handset 100, which allows communication
`over a CDPD network, as the external unit connected to jack 46. Pet. 15‒16.
`In the discussion of the additional limitation of dependent claim 10, the
`Petition cites portions of Clark that describe the synchronization being
`performed automatically when the handheld computer is in the cradle and
`actively connected to the host computer. Pet. 34‒35 (citing Ex. 1006, 3:7‒
`16, 3:55‒59, 12:48‒55, 12:65‒13:8; Ex. 1004 ¶¶ 82‒83).
`(2) Patent Owner’s Argument
`Patent Owner argues that Petitioner’s ground as to claim 10
`improperly relies on a combination of different embodiments of Clark.
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`Prelim. Resp. 22. Patent Owner explains that the problem with the
`combination is that “because Clark’s only ‘monitoring’ is when its handheld
`computer H is in the cradle, the supposed ‘packet’ ‘transmitted’ in Clark is
`‘assembled’ from alleged monitoring while Clark’s handheld computer H is
`in the cradle, so Clark contains no teaching that this supposed data packet is,
`or ever would be, transmitted over the wireless network as the claims
`require.” Id. According to Patent Owner, “Petitioner fails to explain how or
`why Clark’s alleged ‘synchronization information data packet’ concerning
`its alleged ‘monitor[ed]’ ‘change to said data file’ would ever be transmitted
`from Clark’s handheld computer H to Clark’s host computer over a wireless
`network as required by the claims.” Id. at 24.
`(3) Analysis
`We agree with Patent Owner that the Petition fails to show how or
`why a change detected during monitoring while the handheld computer H is
`in the cradle would be transmitted as a data packet via a wireless telephonic
`network. Also, the Petition fails to address sufficiently how this
`transmission via the wireless telephonic network occurs automatically
`without user intervention, because the claim 10 analysis points only to the
`cradle embodiment which requires user intervention.
`Further, even if Clark’s system were modified as proposed by
`Petitioner to connect Cashman’s portable terminal handset 100 as an
`external unit to port 46 of Clark’s handheld computer H, Petitioner has not
`explained how the claimed synchronization steps would occur without user
`intervention in such a modified device. For reasons similar to those
`discussed above regarding the cradle embodiment, requiring a user to
`physically connect an external unit to a port of the handheld computer to
`establish a fixed, dedicated link to effect synchronization involves a certain
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`IPR2019-01113
`Patent 6,034,621
`degree of human intervention that is not encompassed by claim 10. Thus,
`the Petition fails to explain sufficiently how the system of Clark, as modified
`by Cashman, renders obvious “transmitting said synchronization information
`data packet . . . over said wireless telephonic network . . . automatically
`without user intervention.”
`Conclusion as to claims 10‒14
`c)
`For the reasons discussed above, we find that Petitioner has not met
`its burden to show a reasonable likelihood that claim 10 is unpatentable over
`Clark and Cashman. Claims 11‒14 depend from, and include all of the
`limitations of, claim 10. Thus, Petitioner likewise has not met its burden as
`to these dependent claims.
`Analysis of Claim 20
`4.
`Claim 20 depends from disclaimed independent claim 17. Ex. 1001,
`9:16‒20. As discussed above, claim 20 is similar to claim 10, except that
`instead of synchronizing a data file of a PDA with a data file of a PC, as
`recited in claim 10, claim 20 is directed to synchronizing a data file of a PC
`with a data file of a PDA. Compare Ex. 1001, 8:15‒30 (independent claim
`7), with id. at 8:61‒9:9 (independent claim 17). Petitioner relies on the
`arguments presented for claims 7 and 10 in support of the challenge to claim
`20. Pet. 39‒40. For the same reasons discussed above regarding claim 10,
`we find that Petitioner has not met its burden to show a reasonable
`likelihood that claim 20 is unpatentable over Clark and Cashman.
`F. Ground 2: Obviousness of claims 10‒14 and 20 over Falls and
`Foladare
`Falls
`1.
`Falls relates to the synchronization of transactions performed on a
`mobile computer and on a computer network while they are disconnected,
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`Patent 6,034,621
`where the synchronization occurs when the separate computers are
`reconnected. Ex. 1008, 1:10‒18. Falls describes that prior to disconnection
`of the mobile computer from the network, users select data that should be
`copied from the network to the mobile computer through selection of target
`database subtrees. Id. at 3:18‒21. During disconnected operation of the
`mobile computer, the user interacts with a virtual network environment. Id.
`at 3:21‒25. Upon reconnection of the mobile computer to the network,
`operations performed on the mobile computer during the disconnected
`interval are synchronized with operations performed on the network during
`that interval. Id. at 3:26‒30. Falls describes that “[s]ynchronization is both
`substantially automatic and transactional, so minimal user intervention is
`needed.” Id. at 3:30‒31.
`Falls describes, “Suitable network links include packet-based, serial,
`internet-compatible, local area, metropolitan area, wide area, and wireless
`network links.” Id. at 3:45‒47. The synchronization process uses replica
`managers to identify a transaction that targets an object in a replica on the
`mobile computer and transfers an update based on the transaction over the
`network connection to the network computer. Id. at 5:20‒31. The replica
`manager on the network computer performs similar steps to transfer updates
`to the mobile computer. Id. at 5:32‒37. Falls describes, “During
`synchronization the replica managers detect mutually inconsistent updates to
`a given entry, and attempt to resolve such ‘clashes’ automatically or with
`user assistance.” Id. at 5:55‒57. “A ‘clash’ occurs during synchronization
`when two desired changes to the database are inconsistent. Clashes arise
`from ‘independent’ updates, namely, updates performed on separate replicas
`while the computers holding the replicas were disconnected.” Id. at 28:57‒
`61. Specifically, Falls describes a merging process that occurs when two
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`replicas are resynchronized after the computers on which the replicas reside
`are reconnected following a period of disconnection. Id. at 16:35‒37. Falls
`describes, “A set of updates are ‘merged atomically’ if they are merged
`transactionally on an all-or-nothing basis.” Id. at 16:39‒40.
`With reference to Figure 1, Falls describes a synchronization process
`in which, during first transferring step 106, an update based on a firs
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