IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Trevor A. Fiatal, et al.
`In re Patent of:
`9,438,550 Attorney Docket No.: 39521-0075IP1
`U.S. Patent No.:
`September 6, 2016
`
`Issue Date:
`Appl. Serial No.: 14/873,143
`
`Filing Date:
`October 1, 2015
`
`Title:
`MOBILE DEVICE POWER MANAGEMENT IN DATA SYN-
`CHRONIZATION OVER A MOBILE NETWORK WITH OR
`WITHOUT A TRIGGER NOTIFICATION
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 9,438,550 PURSUANT TO 35 U.S.C. §§311–319, 37 C.F.R. §42
`
`
`
`
`
`
`Trevor A. Fiatal, et al.
`In re Patent of:
`9,438,550 Attorney Docket No.: 39521-0075IP1
`U.S. Patent No.:
`September 6, 2016
`
`Issue Date:
`Appl. Serial No.: 14/873,143
`
`Filing Date:
`October 1, 2015
`
`Title:
`MOBILE DEVICE POWER MANAGEMENT IN DATA SYN-
`CHRONIZATION OVER A MOBILE NETWORK WITH OR
`WITHOUT A TRIGGER NOTIFICATION
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 9,438,550 PURSUANT TO 35 U.S.C. §§311–319, 37 C.F.R. §42
`
`
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §42.104 ............................. 1
`A. Grounds for Standing Under 37 C.F.R. §42.104(a) .............................. 1
`B.
`Challenge Under 37 C.F.R. §42.104(b) and Relief Requested ............. 1
`SUMMARY OF THE ’550 PATENT ............................................................. 2
`A.
`Brief Description ................................................................................... 2
`B.
`Prosecution History ............................................................................... 3
`C.
`Effective Filing Date ............................................................................. 3
`1.
`Lack Of Support In Non-Provisional Applications .................... 4
`2.
`Provisional Applications Cannot Provide Support ................... 12
`III. CLAIM CONSTRUCTION UNDER 37 C.F.R. §§42.104(b)(3) ................. 16
`IV. SECTION 314(A) .......................................................................................... 21
`V.
`THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 23
`A.
`[GROUND 1(A)] – Claims 1-40 Would Have Been Obvious In View
`Of Fiatal, Prabu, And Bernard ............................................................ 23
`1.
`Overview Of Fiatal.................................................................... 23
`2.
`Overview Of Prabu ................................................................... 23
`3.
`Overview Of Bernard ................................................................ 25
`4.
`Combination Of Fiatal, Prabu, And Bernard ............................ 26
`VI. PAYMENT OF FEES – 37 C.F.R. §42.103 .................................................. 64
`VII. CONCLUSION .............................................................................................. 65
`VIII. MANDATORY NOTICES UNDER 37 C.F.R §42.8(a)(1) .......................... 65
`A.
`Real Party-In-Interest Under 37 C.F.R. §42.8(b)(1) ........................... 65
`
`i
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`Related Matters Under 37 C.F.R. §42.8(b)(2) .................................... 65
`Lead And Back-Up Counsel Under 37 C.F.R. §42.8(b)(3) ................ 65
`Service Information ............................................................................. 65
`
`B.
`C.
`D.
`
`
`
`
`
`
`ii
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`
`
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Pat. No. 9,438,550 to Fiatal, et al. (“the ’550 patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ’550 Patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Mr. Edward R. Tittel
`
`APPLE-1004
`
`U.S. Pat. App. Pub. No. 2003/0157947 (“Fiatal”)
`
`APPLE-1005
`
`U.S. Pat. App. Pub. No. 2012/0221877 (“Prabu”)
`
`APPLE-1006
`
`U.S. Pat. App. Pub. No. 8,019,325 (“Bernard”)
`
`APPLE-1007
`
`U.S. Pat. App. Pub. No. 2008/0057894 (“Aleksic”)
`
`APPLE-1008
`
`U.S. Pat. App. Pub. No. 2006/0265503 (“Jones”)
`
`APPLE-1009
`
`U.S. Provisional App. No. 60/403,249 (“’249 Provisional”)
`
`APPLE-1010
`
`U.S. Provisional App. No. 60/346,881 (“’881 Provisional”)
`
`APPLE-1011
`
`U.S. Pat. App. Pub. No. 2002/0156921 (“Dutta”)
`
`APPLE-1012
`
`U.S. Pat. App. Pub. No. 6,934,267 (“Mannerstrale”)
`
`APPLE-1013
`
`U.S. Pat. No. 7,024,491 (“Hanmann”)
`
`APPLE-1014
`
`Seven Networks, LLC’s Identification Of Alleged Provisional
`Support (Appendix C from Seven’s Second Supplemental Re-
`sponses and Objections to Apple’s Interrogatories 9-10), Seven
`Networks v. Apple Inc. (E.D. Tex. Dec. 16, 2019)
`
`APPLE-1015-1018 [RESERVED]
`
`iii
`
`
`
`APPLE-1019
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`Apple’s P.R. 4-2 Preliminary Claim Constructions And Extrin-
`sic Evidence, Seven Networks, LLC v. Apple Inc. (E.D. Tex.
`Nov. 26, 2019)
`
`APPLE-1020
`
`Seven Networks, LLC P.R. 4-2 Disclosures, Seven Networks,
`LLC v. Apple Inc. (E.D. Tex. Nov. 26, 2019)
`
`APPLE-1021
`
`U.S. Pat. App. Pub. No. 2007/0027832 (“’832 Publication”)
`
`APPLE-1022
`
`U.S. Patent No. 9,608,968 (“the ’968 patent”)
`
`APPLE-1023
`
`APPLE-1024
`
`ZDNet Article: 10 Best Smartphones For The 2015 Holiday
`Season (October 22, 2015), accessed Jan. 12, 2020 from
`https://www.zdnet.com/article/10-best-smartphones-for-the-
`2015-holiday-season/
`
`Verge Article: Here Are The Coolest Things You Can Do With
`The iPhone 6S And 6S Plus (September 25, 2015), accessed
`Jan. 12, 2020 from https://www.thev-
`erge.com/2015/9/25/9392817/iphone-6s-6s-plus-tips-tricks-fea-
`tures
`
`APPLE-1025
`
`Time Article: The 10 Most Popular Podcasts Of 2015 (Decem-
`ber 9, 2015), accessed Jan. 12, 2020 from
`https://time.com/4141439/podcasts-most-popular-year-2015/
`
`
`
`iv
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 1-40 (“the Challenged Claims”) of U.S. Patent No. 9,438,550
`
`(“the ’550 patent”).
`
`I.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §42.104
`A. Grounds for Standing Under 37 C.F.R. §42.104(a)
`Apple certifies that the ’550 patent is available for IPR. The present petition
`
`is being filed within one year of service of a complaint against Apple in SEVEN
`
`Networks, LLC v. Apple Inc., 2:19-cv-00115 (E.D. Tex.). Apple is not barred or
`
`estopped from requesting this review challenging the Challenged Claims on the be-
`
`low-identified ground.
`
`B. Challenge Under 37 C.F.R. §42.104(b) and Relief Requested
`Apple requests an IPR of the Challenged Claims on the ground set forth in
`
`the table shown below, and requests that each of the Challenged Claims be found
`
`unpatentable.
`
`Ground
`1
`
`Claims
`1-40
`
`Basis For Rejection Under §103
`Fiatal in view of Prabu and Bernard
`
`
`
`As explained below in Section II.C, the earliest effective filing date of the
`
`’550 patent can be no earlier than October 1, 2015. TITTEL_DEC, ¶¶39, 41, 53-
`
`65. As such, these references qualify as prior art at least under the bases set forth
`
`1
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`
`below:
`
`Reference
`
`Fiatal
`
`Prabu
`
`Bernard
`
`
`
`Effective Filing/Public
`Availability Date(s)
`January 8, 2003;
`August 21, 2003
`
`February 25, 2011;
`August 30, 2012
`
`December 6, 2007;
`September 13, 2011
`
`Prior Art Basis
`
`§102(a)(1)
`
`§§102(a)(1), 102(a)(2)
`
`§§102(a)(1), 102(a)(2)
`
`None of the references applied in the prior art combination of Ground 1 were
`
`applied in a rejection (or even cited) during the original prosecution of the ’550 pa-
`
`tent, and there is no indication in the file history that the examiner was aware of the
`
`applicant’s choice to claim new matter such that the application was not entitled to
`
`its earlier claimed priority dates. Infra, Section II.C.
`
`Additional explanation and support for each ground is set forth in the expert
`
`declaration of Mr. Tittel, referenced throughout this petition. See TITTEL_DEC,
`
`¶¶40-42 (setting forth level of ordinary skill in the art).
`
`II.
`
`SUMMARY OF THE ’550 PATENT
`A. Brief Description
`The ’550 patent describes a system that allows a mobile device to synchro-
`
`nize data with a host over a network. APPLE-1001, 1:58-2:2, 2:35-3:3, Abstract,
`
`2
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`FIGS. 1, 2, 6; TITTEL_DEC, ¶¶46-48. In some embodiments, the mobile device
`
`periodically initiates synchronization by sending synchronization request transac-
`
`tions over the network at a defined frequency. APPLE-1001, 7:48-55. The ’550
`
`patent further describes that the frequency of synchronizations can be adjusted
`
`based on the battery charge level of the device. APPLE-1001, 9:2-24.
`
`B.
`Prosecution History
`A new claim set and interview were used to address a rejection based on a
`
`combination of Dutta (APPLE-1011) and Mannerstrale (APPLE-1012). APPLE-
`
`1002, 127-144; see also id., 337-391, 106-116, 17-37; TITTEL_DEC, ¶¶49-52.
`
`Among other things, the amendment added limitations in claim 59 corresponding
`
`to language in claim elements [1.3] and [1.5]-[1.7]. APPLE-1002, 23-24. Similar
`
`amendments were made to other claims. Reasons for allowance identified Han-
`
`mann (APPLE-1013) and Dutta (APPLE-1011) as the closest prior art, but found
`
`the prior art missing multiple independent claim limitations. Id., 33-35.
`
`A combination of Fiatal-Prabu-Bernard was not considered, which provides
`
`meaningfully distinct teachings from Hanmann, Dutta, and Mannerstrale. TIT-
`
`TEL_DEC, ¶51.
`
`C. Effective Filing Date
`The application that issued as the ’550 patent was filed October 1, 2015, but
`
`claims priority through a chain of applications to much earlier dates—including as
`
`3
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`early as January 8, 2002. APPLE-1001, 1. Yet, the Challenged Claims all require
`
`at least one feature never described in a valid priority document. The non-provi-
`
`sional applications in the priority chain (including the specification of the ’550 pa-
`
`tent itself) fail to describe this feature, and Patent Owner cannot legitimately rely
`
`on the disclosures of its provisional applications for “essential material” to fill the
`
`gaps necessary to meet §112 requirements in the Challenged Claims. Still, even if
`
`the provisional applications could be relied upon, they too fail to support the claim
`
`feature at issue. TITTEL_DEC, ¶¶63-65.
`
`The ’550 patent is not entitled to the benefit of any earlier filing date in its
`
`priority chain. Instead, the earliest effective filing date of the ’550 patent can be no
`
`earlier than its actual filing date, i.e., October 1, 2015. Dr. Reddy’s Laboratories,
`
`Ltd. et al. v. Galderma Laboratories, Inc., IPR2015-01778, Paper 11 at 6-8 (PTAB
`
`Feb. 16, 2016) (accepting that “the Board has the authority to determine priority
`
`entitlement” and proceeding to “address the substance of Petitioner’s priority chal-
`
`lenge”) (citing Bioactive Labs. V. BTG Int’l Inc., IPR2015-01305, Paper 19 (PTAB
`
`Dec. 15, 2015)); see also SAP America, Inc. v. PI-Net Int’l, Inc., IPR2014-00414,
`
`Paper 11 at 11-16 (PTAB Aug. 18, 2014).
`
`1.
`Lack Of Support In Non-Provisional Applications
`The ’550 patent is a continuation of application 14/623,514 (filed February
`
`17, 2015) (APPLE-1022), which in turn is a continuation of application 11/470,802
`
`4
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`(filed September 7, 2006) (APPLE-1021), which in turn is a continuation of appli-
`
`cation 10/339,368 (filed January 8, 2003) (APPLE-1004). APPLE-1001, 1-2. Nei-
`
`ther the specification of the ’550 patent itself, nor the disclosures of the ’514, ’802,
`
`or ’368 applications describe the feature recited in independent claim elements
`
`[1.6], [15.8], and [32.11], namely that “the frequency at which some application
`
`data requests are sent is not changed to the second frequency while the mobile de-
`
`vice is in the low power mode.”1 APPLE-1001, 10:9-11, 11:16-19, 12:45-48; TIT-
`
`TEL_DEC, ¶¶54-62.
`
`For context, the features recited in independent claims 1, 15, and 32 are prin-
`
`cipally drawn from a section added to the end of the non-provisional disclosures
`
`captioned “Power Management,” which contains just three short paragraphs. See
`
`APPLE-1001, 9:1-24; supra Section II.A. This section describes, for example, that
`
`“the mobile device 21 may synchronize every 5 minutes when the battery 123 has
`
`75% or more charge remaining,” “may synchronize every 10 minutes when the
`
`battery 123 is between 75% and 50% charged,” and “[w]hen the battery 123 is be-
`
`tween 50% and 25% charged, the mobile device 21 may only synchronize … every
`
`
`1 For simplicity, and because the ’550 patent shares a substantially identical speci-
`
`fication with the ’514, ’802, and ’368 applications, Petitioner cites the ’550 patent
`
`to demonstrate deficiencies in each. TITTEL_DEC, ¶54.
`
`5
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`30 minutes.” Id., 9:12-20. Independent claims 1, 15, and 32 each recite language
`
`referring to “a plurality of power management modes,” and provide for the selec-
`
`tion of a mode from among the “plurality of power management modes.” APPLE-
`
`1001, 9:59-60, 10:64-65, 12:27-28. The term “power management mode,” and re-
`
`lated claim terms such as “normal operations mode” and “low power mode,” are
`
`never used in the specifications of the non-provisional applications, although these
`
`specifications do provide for the selection of a particular synchronization fre-
`
`quency for a given range of battery charge of the mobile device. Id., 9:12-20. The
`
`’550 claims thus appear to draw from the specification’s disclosure of different
`
`synchronization frequencies for different ranges of battery charge levels as the al-
`
`leged basis for the recited “power management modes.” TITTEL_DEC, ¶56.
`
`Each power management mode corresponds to a particular synchronization fre-
`
`quency at a particular range of battery charge of the mobile device, as the only de-
`
`scription of the selection of a mode of operation of the device for power manage-
`
`ment purposes is the selection of a particular synchronization frequency for a par-
`
`ticular range of battery charge levels of the device. APPLE-1001, 9:10-20.
`
`With this background, it is clear that the non-provisional applications do not
`
`describe the feature recited in claim elements [1.6], [15.8], and [32.11]—i.e., that
`
`the frequency at which some application data requests are sent is not changed to
`
`6
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`the second frequency while the mobile device is in a low power mode. TIT-
`
`TEL_DEC, ¶57. As explained above, the non-provisional applications (e.g., in the
`
`“Power Management” section) describe how the mobile device shifts from one
`
`power management mode to another according to the level of battery charge re-
`
`maining on the device, and in so doing the mobile device adjusts its synchroniza-
`
`tion frequency (including the frequency at which it sends synchronization requests)
`
`to synchronize more frequently when the battery charge level is higher and less fre-
`
`quently when the battery charge level is lower. APPLE-1001, 9:1-24. For exam-
`
`ple, as the battery charge of a device decreases, the device shifts from a higher-
`
`level mode to a lower-level mode, and decreases the frequency of synchronizations
`
`to a particular frequency corresponding to the lower-level mode. Id. Noticeably
`
`missing from the descriptions of the non-provisional applications is the notion of
`
`not changing the frequency of some application data requests to the (second) fre-
`
`quency while the device is in a low power mode. TITTEL_DEC, ¶57. Indeed, this
`
`feature is simply never described.2 Id.
`
`
`2 While the non-provisional applications disclose that “synchronization” involves
`
`transmission of a “synchronization request 134” from the mobile device on a peri-
`
`odic basis, these applications describe no other application data requests that are
`
`7
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`To illustrate, consider how the “Power Management” description could pos-
`
`sibly map to the features recited by independent claim 32. This description from
`
`the non-provisional applications expressly provides three power management
`
`modes:
`
`Mode
`A
`
`B
`
`C
`
`Battery Charge
`75-100%
`
`Synchronization Frequency
`Once every 5 minutes / 12 times per hour
`
`50-75%
`
`25-50%
`
`Once every 10 minutes / 6 times per hour
`
`Once every 30 minutes / 2 times per hour
`
`APPLE-1001, 9:10-20.
`
`Claim 32 recites that the “plurality of power management modes” includes a
`
`“normal operations mode” and a “low power mode.” APPLE-1001, 12:16-54. If
`
`Mode-A corresponds to the claimed “normal” mode and Mode-B corresponds to
`
`the claimed “low power mode,” then the operations of claim 32 would involve “se-
`
`lect[ing] a low power mode” by selecting Mode-B, and “chang[ing] the frequency
`
`
`transmitted by the mobile device periodically or otherwise with a defined fre-
`
`quency. APPLE-1001, 7:49-59. The “Power Management” section does not im-
`
`plicitly differentiate classes of application data requests (e.g., synchronization re-
`
`quests and other requests) merely through its description of changing “synchroni-
`
`zation” frequencies without mention of other application data requests. Id.
`
`8
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`that application data requests are sent from the first frequency to a second fre-
`
`quency associated with the low power management mode” corresponds to chang-
`
`ing the frequency of sending synchronization requests from once every 5 minutes /
`
`12 times per hour (first frequency) to once every 10 minutes / 6 times per hour —
`
`i.e., the second frequency associated with Mode-B (low power mode). TIT-
`
`TEL_DEC, ¶¶58-59. But this mapping breaks down at element [32.11], as there is
`
`no description in the non-provisionals of the frequency of some application data re-
`
`quests not changing to the frequency of once every 10 minutes / 6 times per hour
`
`(second frequency) while in Mode-B (low power mode). Id. The non-provisionals
`
`merely describe that the frequency of synchronizations are reduced in Mode-B rel-
`
`ative to Mode-A, without the recited qualification about some requests not being
`
`changed to the Mode-B frequency while operating in Mode-B. Id.
`
`Likewise, other mappings of the disclosed modes also fail to support all lim-
`
`itations of the Challenged Claims. For example, if Mode-C were mapped to the
`
`“low power mode” of claim 32, the claimed operations would involve “select[ing]
`
`a low power mode” by selecting Mode-C, and “chang[ing] the frequency that ap-
`
`plication data requests are sent from the first frequency to a second frequency asso-
`
`ciated with the low power management mode” by changing the frequency of send-
`
`ing synchronization requests from a first frequency to a second frequency of once
`
`every 30 minutes (i.e., Mode C’s frequency). TITTEL_DEC, ¶60. But yet again,
`
`9
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`this mapping breaks down at element [32.11], as there is no description in the non-
`
`provisionals of the frequency of some application data requests not changing to the
`
`frequency of once every 30 minutes (second frequency) while in Mode-C (low
`
`power mode). Id. The non-provisionals lack adequate written description support
`
`for independent claims 1 and 15 for similar reasons. There is simply no descrip-
`
`tion of changing the frequency at which certain application data requests are sent to
`
`a second frequency while in the low power mode, even as the frequency of some
`
`requests are not so changed as required by claim elements [1.6] and [15.8].
`
`Lastly, Petitioner notes that the non-provisional applications disclose various
`
`asynchronous transactions or requests that are not transmitted periodically from the
`
`mobile device. See, e.g., APPLE-1001, 5:5-7, 6:16-20, 3:1-3, 4:33-67. However,
`
`these asynchronous transactions cannot support the missing claim feature, as they
`
`do not have a defined frequency in the first instance (contrary to the claim require-
`
`ment: “the frequency at which some application data requests are sent …”). In-
`
`deed, the description in the non-provisionals merely addresses what happens to the
`
`mobile device’s synchronization frequency as the battery level changes, but never
`
`connects this disclosure to other capabilities of the device such as the transmission
`
`of asynchronous transactions. For example, the non-provisionals do not address
`
`whether asynchronous transactions would even be available as the battery level de-
`
`creases, or if they were available, when the transactions would be sent. There is
`
`10
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`certainly no description addressing what happens to the asynchronous transactions
`
`“while in the low power mode.” TITTEL_DEC, ¶61.
`
`In sum, the non-provisional applications fail to demonstrate that the inven-
`
`tors were in possession of the feature recited by elements [1.6], [15.8], and [32.11]
`
`before it was introduced during prosecution of the ’550 patent. Vas-Cath Inc. v.
`
`Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991) (whether a patent claim satis-
`
`fies the written description requirement depends upon whether the description
`
`“clearly allow[s] persons of ordinary skill in the art to recognize that [the inventor]
`
`invented what is claimed”); Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
`
`1351 (Fed. Cir. 2020) (en banc); TITTEL_DEC, ¶¶54-62. Nothing in the ’550 pa-
`
`tent or the other non-provisional applications describes a scenario in which some
`
`application data requests are not changed to the second frequency while in the low
`
`power mode, consistent with the requirements of the claims as a whole. The lack
`
`of clear description in this regard is striking.
`
`Beyond the express failure noted, it is noteworthy that the Federal Circuit
`
`has placed exacting requirements on patentees to demonstrate adequate written de-
`
`scription support of a negative limitation. Absent verbatim support, negative limi-
`
`tations are typically only “adequately supported when the specification describes a
`
`reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., 694
`
`F.3d 1344, 1351 (Fed. Cir. 2012). Here, there is clearly no such reason provided in
`
`11
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`the description of the non-provisional applications with respect to the feature re-
`
`cited in claim elements [1.6], [15.8], and [32.11].
`
`Petitioner and the Board are instead left to speculate how these claim fea-
`
`tures could possibly align with any aspect of the specification (which they do not);
`
`this circumstance falls woefully short of the burden for the description to “clearly
`
`allow persons of ordinary skill in the art to recognize that [the inventor] invented
`
`what is claimed.” Vas-Cath, 935 F.2d at 1562-63.
`
`For each of these reasons, the Board should find that the non-provisionals
`
`lack the description necessary to support the ’550 patent’s priority claims.
`
`2.
`Provisional Applications Cannot Provide Support
`The ’550 patent claims priority to a pair of incorporated-by-reference provi-
`
`sional applications (i.e., 60/403,249 and 60/346,881). APPLE-1001, 2; see also
`
`APPLE-1009 (’249 Provisional); APPLE-1010 (’881 Provisional). Neither provi-
`
`sional, however, can legitimately be relied upon for §112 requirements necessary
`
`to establish a proper priority claim.
`
`(a)
`
`Rule 1.57 Prohibits Reliance On Provisional Dis-
`closure For “Essential Material”
`First, Patent Office rules do not allow Patent Owner to reach back to the pro-
`
`visional applications for “essential material”—i.e., material that is necessary for
`
`the claims to satisfy the requirements of 35 U.S.C. §112, including the written de-
`
`scription and enablement requirements. 37 C.F.R. §1.57(d)(1). Specifically, Rule
`
`12
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`1.57(d) provides that “‘essential material’ may be incorporated by reference, but
`
`only by way of an incorporation by reference to a U.S. patent or U.S. patent appli-
`
`cation publication.” Id. Noticeably, Rule 1.57(d) excludes provisional applica-
`
`tions from being relied upon for “essential material” even when incorporated by
`
`reference.
`
`These limits on incorporation of essential subject matter have been borne out
`
`in the jurisprudence. In Nomadix, Inc. v. Second Rule LLC, 2009 U.S. Dist. LEXIS
`
`138174 (C.D. Cal. Jan. 16, 2009) the question of whether “essential” material
`
`could be incorporated by reference to a provisional application was squarely ad-
`
`dressed, and that court confirmed, stating that “there would be no question” that a
`
`“provisional application was improperly incorporated” under Rule 1.57 if a patent
`
`was filed after October 21, 2004—the date the rule went into effect. Id., 71-72.
`
`Here, the ’550 patent was filed in October 2015, long after Rule 1.57 became ef-
`
`fective. See also In re Hawkins, 486 F.2d 569 (C.C.P.A 1973) (“[T]he Commis-
`
`sioner is vested with broad discretion to determine in what instances mere incorpo-
`
`ration by reference is proper and in what instances the material incorporated must
`
`be added to the disclosure.”) (citing General Electric Co. v. Brenner, 407 F.2d
`
`1258, 1262-63 (1550)). Also, in Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309
`
`(Fed. Cir. 2018), the Federal Circuit applied Rule 1.57 and its definitions of “es-
`
`sential” and “non-essential” in a consistent manner when addressing the related
`
`13
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`question of whether a patent had properly incorporated a priority claim by refer-
`
`ence. Droplets, 887 F.3d at 1318-1320. There, the court clarified that Rule 1.57
`
`extends beyond applications pending examination to reach issued patents. Accord-
`
`ingly, even if the ’249 and/or ’881 Provisionals adequately described the essential
`
`material related to the missing features from claims 1, 15, and 32 (which they do
`
`not, for the reasons explained below), these applications could not be properly re-
`
`lied upon since it violates the prescription of Rule 1.57.
`
`(b)
`
`Break In Continuity Of Disclosure To Provisionals
`Precludes Reliance On Provisional Disclosure For
`Earlier Effective Filing Date
`Non-provisional application 10/339,368 failed to incorporate the provisional
`
`applications by reference, and the resulting lack of continuity of disclosure to the
`
`provisional applications provides an independent basis that precludes reliance on
`
`the provisional disclosures. Holmer v. Harari, 681 F.3d 1351, 1355 (Fed. Cir.
`
`2012). Even the subsequent incorporation by reference of the provisionals in ap-
`
`plications 11/470,802 and 14/623,514 is ineffective to permit reliance on the provi-
`
`sional disclosures at any date earlier than the filing of the ’550 patent (October 1,
`
`2015), because the provisional disclosures would only be available at an earlier
`
`date through the ’550 patent’s incorporation by reference of the ’802 and ’514 ap-
`
`plications—contrary to the requirements that “essential material” not be incorpo-
`
`14
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`rated by reference from a provisional application and not be incorporated by refer-
`
`ence through another reference that in turn incorporates the essential material by
`
`reference. 37 C.F.R. 1.57(d).
`
`(c)
`
`The Disclosures Of The Provisional Applications
`Lack Written Description Support
`Even if contents of the noted provisional applications were somehow availa-
`
`ble to provide §112 support for “essential material” despite the provisions of Rule
`
`1.57 (which they cannot (see Section II.C.2.a)) and even if the incorporation of
`
`these provisional applications was properly set forth (which it was not (see Section
`
`II.C.2.b)), the substance of their disclosures would be insufficient to cure the defi-
`
`ciencies of the non-provisional applications with respect to the missing claim fea-
`
`tures. TITTEL_DEC, ¶¶63-65.
`
`For example, the ’249 provisional describes a “Smart Power Management”
`
`capability for “dynamically chang[ing] [a] sync schedule based on the amount of
`
`power left on [a] device”:
`
`APPLE-1009, 154; see also id., 102-103.
`
`As shown by the table reproduced above, the “Smart Power Management”
`
`
`
`15
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`description of the ’249 provisional disclosed how the synchronization schedule for
`
`a device could be adjusted based on battery power level, day of week, and time.
`
`Id. However, the provisional does not differentiate between different synchroniza-
`
`tions or show that some application data requests are not changed to a second fre-
`
`quency while in a low power mode. TITTEL_DEC, ¶¶63-64. At most, it delays
`
`synchronizing of messages to prescribed time periods or durations. Id. And alt-
`
`hough the ’249 provisional does identify different types of data supported by the
`
`disclosed system (e.g., mail, contacts, calendar, tasks), no identified disclosure in
`
`the lengthy provisional documents (totaling more than 1,800 pages) provided de-
`
`scription that would support the features recited in claim elements [1.6], [15.8],
`
`and [32.11]. The ’881 provisional is similarly unavailing. TITTEL_DEC, ¶¶64-
`
`65; see also APPLE-1014 (SEVEN’s identification of alleged provisional support).
`
`For each of the reasons described above, Petitioner submits the ’550 patent
`
`is not entitled to priority any earlier than its actual filing date of October 1, 2015.
`
`Fiatal, Prabu, and Bernard each therefore qualify as prior art to the ’550 patent.
`
`III. CLAIM CONSTRUCTION UNDER 37 C.F.R. §§42.104(b)(3)
`When determining validity, “claim terms need only be construed to the ex-
`
`tent necessary to resolve the controversy.” Wellman, Inc. v. Eastman Chem. Co.,
`
`642 F.3d 1355, 1361 (Fed. Cir. 2011). Petitioner reserves the right to respond to
`
`any constructions that may later be offered by the Patent Owner or adopted by
`
`16
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`Board. Petitioner is not waiving any arguments under 35 U.S.C. §112 or argu-
`
`ments regarding claim scope that may be raised in litigation. Petitioner acknowl-
`
`edges that the present analysis is performed under the Phillips construction stand-
`
`ard. TITTEL_DEC, ¶¶38-39; see also APPLE-1019, APPLE-1020 (preliminary
`
`district court claim construction briefings).
`
`Independent claims 15 and 32 each recite “a processor configured to allow
`
`the mobile device to: … ”. APPLE-1001, 10:59, 12:19. Petitioner submits that, in
`
`this proceeding, the following construction is the correct construction for the term
`
`“processor” – a processing device, such as a microcontroller, programmable logic
`
`device, or microprocessor of a mobile device (e.g., mobile device 21). APPLE-
`
`1001, 9:28-30; TITTEL_DEC, ¶39.
`
`Although Petitioner advances the above construction in this proceeding, Pe-
`
`titioner notes that a question exists as to whether the language “processor config-
`
`ured to …” should be interpreted under 35 U.S.C. §112(f) (formerly 35 U.S.C.
`
`§112 para. 6 under pre-AIA law). “[W]hether claim language invokes 35 U.S.C. §
`
`112, para. 6…as well as its ultimate interpretations of the patent claims are legal
`
`questions.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346 (Fed. Cir.
`
`2015). The absence of the word “‘means’…creates a rebuttable presumption that
`
`section 112, paragraph 6, does not apply.” Phillips v. AWH Corp., 415 F.3d 1303,
`
`17
`
`
`
`Attorney Docket No. 39521-0075IP1
`IPR of U.S. Patent No. 9,438,550
`1311 (Fed. Cir. 2005). In district court, the parties dispute whether the presump-
`
`tion should be rebutted. Although claim construction arguments are not yet final in
`
`district court, Petitioner argued in district court that 112(f) applies and claims 15
`
`and 32 are indefinite. APPLE-1019, 9-11. However, Patent Owner contends that
`
`the presumption applies and the claim language in claims 15 and 32 regarding a
`
`“processor configured to” does not invoke §112(f). APPLE-1020, 2-3, 5-6. The
`
`dispute in district court remains unresolved and Petitioner is unable to raise indefi-
`
`niteness here; as such, Petitioner applies the presumption in this proceeding and, in
`
`this petition, applies prior art to the ordinary meaning of this claim language con-
`
`sistent with Patent Owner’s litigation position. See, e.g.,
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
