Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 54
`Date: May 31, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`
`
`
`Before DAVID C. MCKONE, GREGG I. ANDERSON,
`and NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 54
`Date: May 31, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`
`
`
`Before DAVID C. MCKONE, GREGG I. ANDERSON,
`and NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`
`INTRODUCTION
`I.
`On November 25, 2020, Apple, Inc. (“Petitioner”) filed a Petition
`(“Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review
`of claims 1–21 of U.S. Patent No. 10,298,451 B1 (“the ’451 patent”).
`Paper 2. On March 8, 2021, Koss Corporation (“Patent Owner”) filed a
`Preliminary Response. Paper 6. Pursuant to our authorization, Petitioner
`and Patent Owner subsequently filed reply and sur-reply briefs, respectively,
`further addressing discretionary denial pursuant to 35 U.S.C. § 314.
`Papers 20, 21. We instituted inter partes review on June 3, 2021. Paper 22.
`Patent Owner filed a Response on August 27, 2021 (PO Resp.)
`Paper 28. Petitioner filed a Reply on December 23, 2021 (Reply). Paper 42.
`Patent Owner filed a Sur-Reply on February 8, 2022 (Sur-Reply). Paper 50.
`An oral hearing took place on March 3, 2022. The Hearing Transcript
`(“Tr.”) is included in the record as Paper 53. After considering the parties’
`arguments and supporting evidence, we determine that Petitioner has
`demonstrated by a preponderance of the evidence that claims 1–21 of the
`’451 patent are unpatentable.
`
`II. BACKGROUND
`A. The ’451 Patent
`The ’451 patent, titled “Configuring Wireless Devices For A Wireless
`Infrastructure Network,” was filed on August 7, 2018, issued on
`
`
`
`2
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`May 21, 2019, and lists related continuation applications dating to March 15,
`2013.1 Ex. 1001, codes (54), (22), (45), (63).
`The ’451 patent is directed to “permit[ing] a wireless device to receive
`data wirelessly via an infrastructure wireless network, without physically
`connecting the wireless device to a computer in order to configure it, and
`without having an existing infrastructure wireless network for the wireless
`device to connect to.” Ex. 1001, Abstr. Figure 1 of the ’451 patent is
`reproduced below.
`
`
`1 During prosecution, Applicant asserted an invention date of May 14, 2012,
`and, according to Petitioner, in Koss Corporation v. Apple Inc., Case No.
`6:20-cv-00665 (W.D. Tex.) (the Texas litigation), Patent Owner asserts an
`invention date of July 12, 2010. Pet. 8–9 (citing Ex. 1002, 50–57); see also
`Ex. 1014, 4. It is unnecessary to determine the applicability of these dates
`for purposes of this Decision, because the effective dates of the references
`are sufficiently early compared to the May 14, 2012, date, and Patent Owner
`does not assert the July 12, 2010, date in this proceeding.
`3
`
`
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`
`
`Figure 1 is a block diagram depicting earphones 14 which can
`communicate wirelessly with content access point (CAP) 16 via ad hoc
`communications link 18, which can be, for example, a Wi-Fi link or
`Bluetooth. Id. at 3:1–10. The ’451 patent explains that an ad hoc link is a
`point-to-point network that does not utilize preexisting structure such as
`wireless access points. Id. at 3:10–15. CAP 16 can be connected to digital
`audio player (DAP) 20, such as a personal MP3 player, or computer 22, such
`as a laptop, via a USB connector. Id. at 3:17–36. Alternatively, CAP 16
`may be an integral part of DAP 20 or computer 22. Id. at 3:35–36.
`Earphones 14 can also connect to access point 24 via wireless infrastructure
`link 26. Id. at 3:36–40. The ’451 patent explains that a wireless
`
`
`
`4
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`infrastructure link is part of a network that utilizes a wireless access point
`and connects to an Internet service provider, such as Internet 28. Id. at 3:40–
`44. Both computer 22 and access point 24 connect to Internet 28. Id. at
`3:45–40. Remote servers 30 are also connected to Internet 28. Id. at 3:49––
`50.
`
`In operation, a user, via computer 22, may connect to the remote
`server system 30 to provision or initialize CAP 16 and earphones 14 for
`initial use, and to otherwise manage CAP 16 and earphones 14. Id. at 3:51–
`54. Initial operation of earphones 14 involves plugging CAP 16 into
`DAP 20 or computer 22 (generally, “media devices”), enabling CAP 16 to
`transmit media content from the media devices to be played on
`earphones 14. Id. at 4:35–44. Earphones 14 can also be set up to receive
`content from server 30 via Internet 28 and access point 24, which is
`achieved by the user logging into a website via computer 22, with CAP 16
`connected to the computer. Id. at 4:45–5:22. While logged in, the user
`enters access point credentials and information identifying CAP 16 and
`earphones 14, which are stored in the user’s account on the server, and the
`access point credentials are also transferred to the earphones 14. Id. As
`stated in the ’451 patent:
`This process allows the earphones 14 to be configured for
`infrastructure network (and Internet) access without having to
`physically connect the earphones 14 to the computer 22 to
`configure them and without having an existing different
`infrastructure network that the earphones 14 need to connect to.
`Id. at 5:22–27. Patent Owner argues that requiring a wireless consumer
`product to be plugged into a computer can be a cumbersome process that
`
`
`
`5
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`presents numerous challenges, given that a computer is not always available,
`the plug for connecting the wireless computer device to the computer may
`not be available, or smaller wireless consumer devices may not
`accommodate a port for the plug to the computer. PO Resp. 3 (citing
`Ex. 2022 (Declaration of Joseph C. McAlexander III (“McAlexander
`Decl.”)) ¶¶15–16).
`The ’451 patent also describes using devices such as video players,
`lighting systems, cameras, manufacturing equipment, medical devices,
`gaming systems, “or any other suitable controllable electronic equipment” in
`place of the earphones. Id. at Figs. 4, 5, 5:66, 6:10–15.
`
`B. Illustrative Claim
`Independent claim 1 is reproduced below.
`1. A system comprising:
`a wireless access point;
`an electronic device;
`a mobile computer device that is in communication with
`the electronic device via an ad hoc wireless
`communication link; and
`one or more host servers that are in communication with
`the mobile computer device via the Internet,
`wherein the one or more host servers receive and
`store credential data for an infrastructure wireless
`network provided by the wireless access point,
`wherein:
`the mobile computer device is for transmitting to the
`electronic device, wirelessly via the ad hoc
`wireless communication link between the
`electronic device and the mobile computer device,
`the credential data for the infrastructure wireless
`
`
`
`6
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`
`network stored by the one or more host servers;
`and
`the electronic device is for, upon receiving the credential
`data for the infrastructure wireless network from
`the mobile computing device, connecting to the
`wireless access point via the infrastructure wireless
`network using the credential data received from
`the mobile computer device.
`Ex. 1001, 8:30–53.
`
`C. References
`Petitioner relies on the following references (Pet. 1–2):
`• Brown et al., U.S. Pat. No. 9,021,108 B2. Ex. 1004 (“Brown”).
`• Scherzer et al., US 2007/0033197 A1. Ex. 1005 (“Scherzer”).
`• Baxter et al., US 2007/0245028 A1. Ex. 1008 (“Baxter”).
`• Drader et al., US 2011/0025879 A1. Ex. 1009 (“Drader”).
`• Ramey et al., US 2010/0307916 A1. Ex. 1010 (“Ramey”).
`• Gupta et al., US 2010/0165879 A1. Ex. 1011 (“Gupta”).
`Petitioner also filed a Declaration, and Supplemental Declaration, of
`Dr. Jeremy Cooperstock in support of the Petition. Ex. 1003 (“Cooperstock
`Decl.”); Ex. 1023 (“Cooperstock Suppl. Decl.”).
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–14 of the
`’451 patent on the following grounds (Pet. 1):
`
`
`
`7
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`
`Claims Challenged
`1, 6, 11–13, 15–20
`2, 7–10, 21
`3–4
`5
`14
`
`35 U.S.C. §
`1032
`103
`103
`103
`103
`
`References
`Brown, Scherzer
`Brown, Scherzer, Baxter
`Brown, Scherzer, Drader
`Brown, Scherzer, Ramey
`Brown, Scherzer, Gupta
`
`E. Real Parties in Interest
`The parties identify themselves as the real parties in interest. Pet. 78;
`Paper 4, 2.
`
`F. Related Proceedings
`The parties identify the above-referenced Texas litigation, and Apple
`Inc. v. Koss Corporation, Case No. 5:20-cv-05504 (N.D. Cal.), as related
`matters. Pet. 78; Paper 4, 2.
`The ’451 Patent is also involved in Apple Inc. v. Koss Corporation,
`IPR2021-00600, filed March 7, 2021. Paper 17, 1.
`
`III. ANALYSIS
`A. Obviousness: Legal Standards
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the
`March 15, 2013, effective filing date for the claims of the ’451 patent
`appears to be before the March 16, 2013, effective date of the applicable
`AIA amendment, we refer to the pre-AIA version of 35 U.S.C. § 103. Our
`conclusions would not change under the post-AIA version of this statute.
`8
`
`
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.” Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`Additionally, secondary considerations, such as “commercial success,
`long felt but unsolved needs, failure of others, etc., might be utilized to give
`light to the circumstances surrounding the origin of the subject matter sought
`to be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18.
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. Rather, an obviousness determination requires finding
`“both ‘that a skilled artisan would have been motivated to combine the
`teachings of the prior art references to achieve the claimed invention, and
`that the skilled artisan would have had a reasonable expectation of success in
`doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
`1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`(for an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements [in the way the claimed] new invention does”).
`“Although the KSR test is flexible, the Board ‘must still be careful not to
`allow hindsight reconstruction of references . . . without any explanation as
`
`
`
`9
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`to how or why the references would be combined to produce the claimed
`invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`2016) (citation omitted).
`Further, an assertion of obviousness “cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
`(Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed.
`Cir. 2016) (stating that “‘conclusory statements’” amount to an “insufficient
`articulation[] of motivation to combine”; “instead, the finding must be
`supported by a ‘reasoned explanation’” (citation omitted)); In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its
`burden of proving obviousness, a petitioner cannot employ mere conclusory
`statements. The petitioner must instead articulate specific reasoning, based
`on evidence of record, to support the legal conclusion of obviousness.”).
`The motivation to combine must be “accompanied by a reasonable
`expectation of achieving what is claimed in the patent-at-issue.” Intelligent
`Bio-Sys, 821 F.3d at 1367. “The reasonable expectation of success
`requirement refers to the likelihood of success in combining references to
`meet the limitations of the claimed invention.” Id.
`
`B. Level of Skill in the Art
`Petitioner’s expert Dr. Cooperstock, testifies:
`[A] person of ordinary skill in the art at the time of the
`’451 patent’s Critical Date (“POSITA”) would have had at least
`a Bachelor’s Degree in an academic area emphasizing electrical
`engineering, computer science, or a similar discipline, and at
`
`
`
`10
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`
`least two years of experience in wireless communications
`across short distance or local area networks.
`Cooperstock Decl. ¶ 26.
`Patent Owner’s expert, Dr. Joseph C. McAlexander III, testifies:
`A person of ordinary skill in the art (“POSITA”) to which the
`’451 Patent pertains would be someone working in the
`electrical engineering field with experience in wireless
`networks and wireless products. Such a person would have a
`bachelor’s degree in electrical engineering and at least two or
`more years of work experience in the industry. In my opinion,
`extensive work experience and technical training might
`substitute for educational requirements, while advanced
`degrees, such as a relevant M.S. or Ph.D., might substitute for
`experience. Accordingly, such a person would have studied
`and have practical experience with circuit design, speaker
`components, and wireless communications and networking.
`McAlexander Decl. ¶ 23.
`The proposals are similar and consistent with the level of ordinary
`skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995). On this record, the level of ordinary skill is neither in dispute nor
`dispositive of any challenge. For purposes of this Decision, we apply
`Petitioner’s articulation.
`
`C. Claim Construction
`The Petition was accorded a filing date of November 25, 2020.
`Paper 3, 1. In an inter partes review for a petition filed on or after
`November 13, 2018, a claim “shall be construed using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). We apply
`
`
`
`11
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`the claim construction standard from Phillips v. AWH Corp., 415 F.3d 1303,
`1312–13 (Fed. Cir. 2005) (en banc).
`Claim terms need only be construed to the extent necessary to resolve
`the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017).
`Petitioner states, “[n]o formal claim constructions are necessary.”
`Pet. 9. Patent Owner does not address claim construction. For purposes of
`this Decision, we do not construe any claim terms.
`However, we note that the claim term, “mobile computer device,”
`appears nowhere in the ’451 specification. For example, Figure 1 of the
`’451 patent does not explicitly depict a device that is both “in
`communication with the electronic device via an ad hoc wireless
`communication link” and which is “in communication” with host servers
`“via the Internet.” However, the specification describes an embodiment in
`which CAP 16 may be an integral part of computer 22. Id. at 3:35–36. We
`find such a device is an example of the claimed “mobile computer device.”
`
`D. Ground 1A: Obviousness of Claims 1, 6, 11–13, and 15–20 Over Brown
`and Scherzer
`Petitioner challenges claims 1, 6, 11–13, and 15–20 as obvious over
`the combination of Brown and Scherzer. Pet. 16–59.
`1. Brown
`Brown, titled “Method, System And Apparatus For Enabling Access
`Of A First Mobile Electronic Device To At Least One Network Accessible
`By A Second Mobile Electronic Device,” was filed February 25, 2011, and
`issued April 28, 2015, with a related provisional application filed September
`
`
`
`12
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`27, 2010.3 Ex. 1004, codes (54), (22), (45), (60). Brown is directed to
`automatically enabling access of a first mobile electronic device to a
`network accessible by a second mobile electronic device that has stored on it
`the configuration data for accessing the network. Id. at Abstr. Figure 1 of
`Brown is reproduced below.
`
`
`Figure 1 is a block diagram depicting mobile electronic device 101 and 105,
`which can be, for example, tablets or personal digital assistants (PDAs). Id.
`at 4:10–17, 5:57–6:5. Device 105 is set up to communicate with network
`
`
`3 Petitioner asserts that Brown is entitled to the benefit of the provisional
`filing date of September 27, 2010. Pet. 2–4 (citing Ex. 1012; Cooperstock
`Decl. ¶ 35). It is unnecessary to determine whether Brown is entitled to this
`earlier priority date for purposes of this Decision, because the February 15,
`2011, application date is sufficient to establish the prior art status of Brown,
`given the complete record.
`
`
`
`13
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`103 (e.g., the Internet) via wireless link 185 connecting to access point 180,
`based on configuration data 182 stored in memory 162. Id. at 4:39–49.
`Initially, device 101 is not configured to communicate with access
`point 180. Ex. 1004, 4:64–67. However, device 101 is paired with device
`105 via link 190, which can be, for example, a Bluetooth connection. Id. at
`5:1–9. In operation, when in close proximity, communication between
`device 101 and device 105 is automatically established via link 190, and
`configuration data 182 is transferred to device 101 so that it can wirelessly
`communicate with access point 180. Id. at Figs. 2–4, 1:58–2:5, 7:28–8:15.
`This exchange is handled by applications 136 and 176 installed in devices
`101 and 105, respectively. Id. at 4:24–25, 4:34–36, 7:23–27.
`Brown describes an example, in which device 105 is a PDA which is
`typically carried by the user to multiple locations, and thus is configured to
`connect with multiple access points, while device 101 is a tablet that is less
`travelled. Id. at 5:18–56. Using the method of Brown, when devices 101
`and 105 are proximate to an access point already accessible by device 105,
`rather than manually configuring device 101 with the required credentials,
`the credentials can be transferred from device 105. Id. Brown states that
`this approach avoids the alternative of manually configuring device 101,
`which is “inconvenient, inefficient and a waste of computing resources.” Id.
`at 5:54–56.
`
`2. Scherzer
`Scherzer, titled “Providing And Receiving Network Access,” was
`filed May 25, 2006, and published February 8, 2007. Ex. 1005, codes (54),
`(22), (43). Scherzer is directed to a collaborative arrangement providing
`
`
`
`14
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`wireless network access for a number of users to a number of separate
`wireless access points. Id. ¶ 14. Figure 1 of Scherzer is reproduced below.
`
`
`Figure 1 depicts wireless access points 100 and 102, accessing Internet 114,
`to which can be connected user devices such as laptops 104, 106, and 108,
`and personal digital assistants (PDAs) 110 and 112. Id. ¶ 20. Application
`server 116 is also connected to Internet 114. Id. In operation, a user
`registers with the application server, provides credentials for that user’s
`access point, and in return for allowing other registered users to receive
`
`
`
`15
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`those credentials, can receive credentials for other access points that have
`been provided to the application server by other registered users. Id. An
`accounting system on application server 116 keeps track of usage and can
`control the extent and manner in which the users can share each other’s
`usage of the access points. Id.
`Each user device is provided with a software client, which enables the
`user to access another user’s access point either directly or by relaying
`information through another registered user’s device. Ex. 1005 ¶ 20. As
`stated in Scherzer:
`Access point information . . . can be provided to a user via a
`wired network by preloading the user’s device, a cell phone
`network, a Wi-Fi network, or any other appropriate network. In
`some embodiments, access information is provided to a user not
`in real time — for example, the user down loads access
`information [from] server while connected to his own access
`point before going to a new location where user desires to use[]
`other user’s access points.
`Id. Thus, “a collaborative community of users allows a percentage of
`bandwidth of the user’s access point to be accessed by one or more other
`users in order to be able to use other access points when in locations not
`within range of the user’s own access point.” Id. ¶ 15.
`
`3. The Combination of Brown and Scherzer
`Petitioner argues that one of ordinary skill would have been motivated
`to combine the user devices of Brown with the application server of
`Scherzer in the manner depicted in the figure reproduced below, provided by
`Petitioner.
`
`
`
`16
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`
`
`The above figure, entitled “Brown-Scherzer Combination,” depicts Figure 1
`of Brown modified to include “Scherzer-like Software Client” in the
`memory of device 105, and showing device 105 communicating via the
`Internet with a “Scherzer-like Provider Application Server.” Pet. 27.
`Petitioner argues that Brown does not “consider the challenges of
`obtaining the credentials needed to access WiFi connections at different
`locations,” and that therefore one of ordinary skill would have been
`motivated to incorporate into Brown’s device the software client of
`Scherzer. Pet. 24–25 (citing Cooperstock Decl. ¶¶ 42–43). Petitioner points
`out that Brown describes device 105 as connecting to networks in multiple
`
`
`
`17
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`locations, and that use of a Scherzer-like software application would have
`increased the number of available locations, given that both Brown and
`Scherzer use the same types of credentials (such as SSIDs and passwords) to
`access networks. Id. at 25–26 (citing Cooperstock Decl. ¶¶ 44–46).
`Petitioner’s expert Dr. Cooperstock testifies that “a POSITA would have
`been motivated to combine Brown and Scherzer given advantages to
`network connectivity provided by the combination to the types of devices
`described in Brown.” Id. at 27–28 (citing Cooperstock Decl. ¶ 47).
`Petitioner describes an example of how this combination improves the
`functionality of Brown, in which a user is at a new location and wishes to
`stream video from the Internet, and has a smartphone that has cellular
`connection capabilities, but which is not suited for viewing streaming video,
`and a tablet which is better suited for video viewing but does not have
`cellular access, and neither the smartphone nor the tablet has the local access
`point credentials. Pet. 30 (citing Cooperstock Decl. ¶ 55). Petitioner argues
`that one of ordinary skill would have been motivated to use the Scherzer
`approach to load the necessary credentials for the access point from the
`Scherzer-like server into the smartphone via the cellular connection, and
`then use the Brown capability to transfer those credentials into the tablet for
`viewing video content via the access point. Id. at 30–33 (citing Cooperstock
`Decl. ¶¶ 56–61).4
`
`
`4 Patent Owner argues that the testimony of Petitioner’s expert,
`Dr. Cooperstock, should be given little weight “because his methodology
`fails to follow the Graham framework and embodies a clear case of
`hindsight reconstruction of the claimed invention.” PO Resp. 9, 17, 36–38.
`We find the testimony of Dr. Cooperstock helpful in our analysis as set forth
`herein.
`
`
`
`18
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`
`Patent Owner’s argument against Petitioner’s proposed combination
`of Brown and Scherzer is, in summary: “Petitioner’s case ignores the
`registration requirements and security considerations of Scherzer’s
`community-based system, which effectively prohibit the combinations of
`Brown and Scherzer relied upon in the Petition.” PO Resp. 2. Patent Owner
`argues that Scherzer requires the devices used in its described approach to be
`registered, and that the Brown approach of transmitting access credentials
`obtained from a Scherzer-like server from one device to another would not
`be allowed or considered if the receiving device is not registered. Id. at 7–8,
`20, 22, 25–26, 29–30 (citing McAlexander Decl. ¶¶ 42, 48, 51–55); Sur-
`Reply 5–6, 18–19. Patent Owner relies on the disclosure in Scherzer that, as
`part of the user registration process, the media access control (MAC) address
`of the user’s device is provided as user identification information, in effect
`also registering the device — therefore, an unregistered device, such as
`posited in the Brown/Scherzer combination, would be prevented from
`accessing credentials from a registered device. Id. at 16 (citing
`McAlexander Decl. ¶ 50; Scherzer ¶ 21).
`Patent Owner further argues that if the device registration
`requirements of Scherzer were overridden or ignored, such that Scherzer’s
`access credentials could be freely disseminated to and used by unregistered
`devices, the foundation supporting Scherzer’s “community”-based
`system — a mutual exchange of access credentials for the benefit of
`registered users — would be undermined. PO Resp. 8; Sur-Reply 9–10.
`Patent Owner’s challenge to the proposed combination argues that the
`combination would ignore the account acceptability requirement and
`associated tracking and bandwidth allocation in Scherzer, which prevents
`
`
`
`19
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`unregistered devices from accessing a registered user’s wireless access
`point. PO Resp. 21 (citing McAlexander Decl. ¶¶ 51–56). According to
`Patent Owner:
`If access credentials were freely disseminated from the
`Scherzer-like server to unregistered devices as proposed in the
`Petition, however impractical in view of practical
`considerations and common security features, Scherzer’s
`service would inevitably reduce into an unwieldy and
`undesirable service in which unregistered users are rewarded,
`i.e., they can freely take advantage of other’s wireless networks,
`while registered users are penalized, i.e., they sacrifice the
`bandwidth on their own wireless network and risk becoming
`crowded out of their own wireless network entirely. . . . Such
`an approach would undermine Scherzer’s exchange of access
`credentials for the mutual benefit of the registered users in the
`community. . . . Indeed, it is unlikely users would register with
`Scherzer’s service if their access credentials could be freely
`disseminated, as permitted by the Petition’s combination.
`PO Resp. 21–22 (citing McAlexander Decl. ¶ 56), see also PO Resp. 27–29.
`Relying on its expert, Patent Owner argues that the “Scherzer system would
`likely include security features to safeguard the registered users’ access
`credentials [which] would likely preclude the transfer of those access
`credentials to unregistered devices.” Id. at 21, n.1 (citing McAlexander
`Decl. ¶ 60).
`Patent Owner also argues that the examples provided by Petitioner are
`motivated by hindsight reconstruction based on the claimed subject matter.
`PO Resp. 8–9, 19, 22–23, 30–36 (citing McAlexander Decl. ¶¶ 63–64, 67).
`For example, argues Patent Owner, rather than using the Brown approach to
`transfer credentials from one device to another, it would be more
`straightforward for a user to directly obtain credentials from the Scherzer
`server for each device, allowing the Scherzer system to track usage as
`20
`
`
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`expected by the Scherzer approach — thus removing any motivation for the
`asserted combination. Id. at 22–23, 30, 34–36 (citing McAlexander Decl.
`¶¶ 57, 64, 67); Sur-Reply 16.
`Petitioner replies that Patent Owner would limit Scherzer to specific
`disclosed embodiments, ignoring the overall teaching of that reference, and
`that the described accounting and tracking of subsequent access in Scherzer
`are added features limited to only certain embodiments. Reply 8–9, 13
`(citing Cooperstock Suppl. Decl. ¶¶ 11–12, 19–24). In particular, argues
`Petitioner, the focus in Scherzer is on registered users, not registered devices
`— Scherzer nowhere discusses the concept of registered devices. Id. at 9–
`11, 14 (citing Cooperstock Suppl. Decl. ¶¶ 13–16, 63). Scherzer only states
`that the user registration process “can include” providing a MAC address,
`and therefore providing a MAC address is not required for all embodiments,
`and in any event, there is no disclosure of how a MAC address is used even
`if required. Id. at 11–12, 15–16 (citing Cooperstock Suppl. Decl. ¶ 23;
`Scherzer ¶¶ 16, 21, 24, 27).
`Petitioner also disputes Patent Owner’s criticism of Petitioner’s
`example of how the Brown/Scherzer combination would be used, arguing
`that it solves a problem when the user is in a location where neither the
`smartphone nor tablet has the access information necessary to establish a
`connection with any WiFi access points in their vicinity since the devices are
`out of range of the user’s work WiFi access point. Reply 16. As discussed,
`“[w]ith the Brown-Scherzer combination, a user could not only obtain
`network credential information (using Scherzer’s teachings) on the
`smartphone, but then utilize Brown’s automated configuration technique to
`allow the tablet to access the Internet without requiring any manual entry.”
`
`
`
`21
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`Id. at 17 (citing Cooperstock Suppl. Decl. ¶ 29). Petitioner disputes Patent
`Owner’s alternative solution — where a user directly obtains credentials
`from the Scherzer server for each device — as ignoring the premise of the
`example, in which neither the smartphone nor the tablet has access to
`credential information and the tablet is not able to access the Internet to
`download the Scherzer-like software. Id. (citing Cooperstock Suppl. Decl.
`¶ 30); see also Reply 24–25.
`Upon consideration of the complete record and the parties’ arguments,
`we determine that Petitioner has proved by a preponderance of the evidence
`that a person of ordinary skill would have been motivated to combine Brown
`and Scherzer as argued by Petitioner. We are not persuaded that combining
`Brown with a Scherzer-like provider application client and server
`necessarily would involve the tracking and control provisions that Patent
`Owner relies on in its arguments. “The test for obviousness is not whether
`the features of a secondary reference may be bodily incorporated into the
`structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA
`1981). Instead, the relevant issue is “what the combined teachings of the
`references would have suggested to those of ordinary skill in the art.” Id.
`“Combining the teachings of references does not involve an ability to
`combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA
`1973).
`In addition, Patent Owner’s reliance on Scherzer’s disclosed use of a
`media access control (MAC) address as part of the user registration process
`is unpersuasive, given that Scherzer only indicates that the registration
`information “can include” a MAC address, and there is no explanation in
`Scherzer of how the MAC address is used even if included. Scherzer is not
`
`
`
`22
`
`
`
`IPR2021-00255
`Patent 10,298,451 B1
`
`lim
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
