Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Date: January 3, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TOYOTA MOTOR CORP.,
`Petitioner,
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`IPR2022-00971
`U.S. Patent No. 7,382,771 B2
`
`
`
`Before SCOTT A. DANIELS, FREDERICK C. LANEY, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`INTRODUCTION
`I.
`Toyota Motor Corp., (“Petitioner”), filed a Petition requesting inter
`partes review (“IPR”) of claims 1–7, 9, 13, and 19 of U.S. Patent No.
`
`
`
`
`571-272-7822
`
`Paper 13
`Date: January 3, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TOYOTA MOTOR CORP.,
`Petitioner,
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`IPR2022-00971
`U.S. Patent No. 7,382,771 B2
`
`
`
`Before SCOTT A. DANIELS, FREDERICK C. LANEY, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`INTRODUCTION
`I.
`Toyota Motor Corp., (“Petitioner”), filed a Petition requesting inter
`partes review (“IPR”) of claims 1–7, 9, 13, and 19 of U.S. Patent No.
`
`
`
`
`
`IPR2022-00971
`Patent 7,382,771 B2
`7,382,771 B2 (Ex. 1001, “the ’771 patent”). Paper 1 (“Pet.”). Intellectual
`Ventures II LLC, (“Patent Owner”) filed a Preliminary Response to the
`Petition. Paper 6 (“Prelim. Resp.”). Petitioner subsequently filed a Pre-
`Institution Reply. Paper 9 (“Prelim. Reply”), and Patent Owner filed a Pre-
`Institution Sur-Reply. Paper 10 (“Prelim. Sur-reply”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” Upon
`consideration of the arguments and evidence presented by Petitioner, we are
`persuaded that Petitioner has demonstrated a reasonable likelihood that it
`would prevail in showing the unpatentability of at least one of the
`challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an
`inter partes review of the challenged claims.
`Real Parties in Interest
`A.
`Petitioner states that Toyota Motor Corp., Toyota Motor North
`America, Inc., Toyota Motor Engineering & Manufacturing North America,
`Inc., and Toyota Motor Sales, U.S.A., Inc., are the real parties in interest.
`Pet. 74. Patent Owner states that Intellectual Ventures II LLC is the real
`party in interest. Paper 3, 1.
`Related Matters
`B.
`The parties indicate that the ’771 patent is at issue in various lawsuits,
`including Intellectual Ventures I LLC et al v. Motorola Mobility LLC, 13-cv-
`61358, in the U.S. District Court for the Southern District of Florida;
`Intellectual Ventures I LLC and Intellectual Ventures II LLC, v. Toyota
`Motor Corp. et al., 2:21-cv-00389 in the U.S. District Court for the Eastern
`District of Texas; Intellectual Ventures I LLC and Intellectual Ventures II
`LLC, v. Honda Motor Co., Ltd. et al., 2:21-cv-00390 in the U.S. District
`
`2
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`IPR2022-00971
`Patent 7,382,771 B2
`Court for the Eastern District of Texas; Intellectual Ventures I LLC and
`Intellectual Ventures II LLC, v. General Motors Company et al., 6:21-cv-
`01088 in the U.S. District Court for the Western District of Texas,
`Noblewood IP, LLC v. Alamo Drafthouse Cinemas, LLC 9:22-cv-00084 in
`the U.S. District Court for the Eastern District of Texas, and Intellectual
`Ventures I LLC and Intellectual Ventures II LLC, v. Honda Motor Co., Ltd.
`et al., 3:22-cv-00761 in the U.S. District Court for the Western District of
`Texas. Pet. 74–75, Paper 3, 2.
`Patent Owner indicates that the ’771 patent was involved in IPR2014-
`00504, Motorola Mobility LLC v. Intellectual Ventures I LLC, (the
`“Motorola IPR”) the Board determining in a Final Written Decision that no
`challenged claims were unpatentable.1 Paper 3, 2.
`The ’771 Patent (Ex. 1001)
`C.
`The ’771 patent, titled “Mobile Wireless Hotspot System,” issued on
`June 3, 2008. Ex. 1001, code (45). The ’771 patent relates to “providing a
`mobile wireless access point for use with high-speed wireless devices.” Ex.
`1001, 1:5–7. Figure 2, as annotated by the Board, is reproduced below and
`
`
`1 In IPR2014-00504, the Board’s first Final Written Decision was vacated by
`the Federal Circuit, because “[t]he Board erred in its analysis of whether
`there was prior conception of the LAN routing system limitation.”
`Intellectual Ventures II LLC v. Motorola Mobility LLC, 692 F. App’x 627
`(Fed. Cir. 2017). Subsequently, the Board was persuaded, as described in a
`second Final Written Decision, “that the inventors conceived the stand-alone
`system limitation before November 4, 2002.” Motorola Mobility LLC v.
`Intellectual Ventures II LLC, IPR2014-00504, Paper 84 at 29 (PTAB (Final
`Written Decision) (March 13, 2020). Based at least in part on this
`determination, the Board determined that Petitioner failed to show that any
`of the challenged claims in the ’771 patent are unpatentable. Id. at 68.
`3
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`IPR2022-00971
`Patent 7,382,771 B2
`illustrates Mobile Hotspot System (“MHS”) 40 for accomplishing this
`objective:
`
`
`
`4
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`IPR2022-00971
`Patent 7,382,771 B2
`Figure 2 depicts Mobile Hotspot System (“MHS”) 40. MHS 40 includes
`access point 12 for connecting with client devices 30 and mobile long-range
`wireless (“WAN”) interface 42, highlighted yellow, for establishing an
`Internet connection. Id. at 3:37–42. Mobile WAN interface 42 allows MHS
`40 to be deployed in a moving vehicle. Id. at 3:42–44. Local Area Network
`(“LAN”) Router 16 directs traffic between access point 12 and mobile WAN
`interface 42. Id. at 3:33–34, 4:1.
`Illustrative Claim
`D.
`Claims 1 and 9 are independent. Claims 2–7, 13 and 19 depend from
`claims 1 and 9 respectively. Claim 1 illustrates the claimed subject matter
`and is reproduced below:2
`1. [1Pre] A mobile wireless hot spot system, comprising:
`[1a] a) a short-range, high-speed wireless access point
`operative to communicate with short-range client devices;
`[1b] b) a long-range, wireless Internet access interface
`operative to communicate with the Internet; and
`[1c] c) a Local Area Network (LAN) routing system
`managing the data path between said wireless access point
`and said Internet access interface,
`[1d] wherein said mobile wireless hotspot system is a stand-
`alone system that enables client devices configured for short
`range, high-speed wireless Internet access to use said mobile
`wireless hotspot system to access the Internet without the
`need to access an external service controller server.
`Ex. 1001, 6:16–28.
`
`
`2 For consistency, we reproduce Petitioner’s reference numbers [1Pre]–[1d]
`to identify particular claim limitations. Pet. 21–33.
`
`
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`5
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`Patent 7,382,771 B2
`Prior Art and Asserted Grounds
`E.
`Petitioner asserts that claims 1–7, 9, 13 and 19 would have been
`unpatentable based on the following grounds:3
`Ground Claim(s) Challenged 35 U.S.C. §
`1
`1, 3, 4, 7, 9, and 13
`1024
`2
`2, 4, 6, 7, and 13
`103(a)
`3
`5
`103(a)
`4
`1, 3, 9, and 19
`102
`5
`2, 4, 6, 7, and 13
`103(a)
`
`Reference(s)/Basis
`Gelvin5
`Gelvin and Gresham6
`Gelvin and Brady7
`Jameel8
`Jameel and Gresham
`
`II. ANALYSIS
`
`A. Legal Standards
`A “prior art reference—in order to anticipate under 35 U.S.C. § 102—
`must not only disclose all elements of the claim within the four corners of
`the document, but must also disclose those elements ‘arranged as in the
`claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed.
`Cir. 1983)). “A single prior art reference may anticipate without disclosing a
`feature of the claimed invention if such feature is necessarily present, or
`inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958
`
`
`3 Petitioner supports its challenges with a Declaration of Robert Akl, Ph.D.
`(Ex. 1002). See infra.
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102–103, effective March
`16, 2013. Because the application from which the ’771 patent issued has an
`effective filing date prior to March 16, 2013, the pre-AIA version of §§ 102–
`103 applies. See Ex. 1001, code (22).
`5 Ex. 1005, US Patent No. 7,484,008 B1 (issued Jan. 27, 2009).
`6 Ex. 1006, US Patent Pub. No. 2002/0160773 (published Oct. 31, 2002).
`7 Ex. 1007, US Patent No. 9,602,608 B2 (issued Mar. 21, 2017).
`8 Ex. 1008, Jameel, Fuchs, Stuempfle, INTERNET MULTIMEDIA ON WHEELS:
`CONNECTING CARS TO CYBERSPACE, IEEE 0-7803-4269-0/97 (1998).
`6
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`(Fed. Cir. 2014) (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373,
`1377 (Fed. Cir. 2003).
`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. 35 U.S.C. § 103; KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 406 (2007). “[W]hen a patent claims a structure already known in
`the prior art that is altered by the mere substitution of one element for
`another known in the field, the combination must do more than yield a
`predictable result.” KSR, 550 U.S. at 416 (citing United States v. Adams,
`383 U.S. 39, 50‒51 (1966)). 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) when in evidence,
`objective evidence of non-obviousness. Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`Level of Ordinary Skill in the Art
`B.
`Petitioner asserts that a person of ordinary skill in the art at the time of
`the ’771 patent
`would have been someone with a good working knowledge of
`communications via data networks such as wireless local area
`networks, wide area-networks, and the Internet. The person
`would have gained
`this knowledge either
`through an
`undergraduate education in computer science or comparable
`field, in combination with training, or three to five years of
`practical working experience.
`Pet. 9 (citing Ex. 1002 ¶ 23; Ex. 1018, 9–10).
`
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`IPR2022-00971
`Patent 7,382,771 B2
`Patent Owner did not provide a level of ordinary skill in the art on this
`record, and does not expressly dispute Petitioner’s definition of a person of
`ordinary skill in the art. See gen. Prelim. Resp.
`On this record, Petitioner’s proposed level of ordinary skill in the art
`is not disputed and is consistent with our review and understanding of the
`technology and descriptions in the ’771 patent and the asserted prior art
`references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`For purposes of this Decision, we rely on Petitioner’s proposed level of
`ordinary skill in the art.
`Claim Construction
`C.
`We interpret a claim “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) (2020). Under this standard, we construe
`the claim “in accordance with the ordinary and customary meaning of such
`claim as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent.” Id. Furthermore, at this stage in the
`proceeding, we expressly construe the claims only to the extent necessary to
`determine whether to institute inter partes review. 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))).
`Petitioner explained that in the Motorola IPR the Board construed the
`following terms:
`(1) the phrase “a Local Area Network (LAN) routing system
`managing the data path between said wireless access point and
`said Internet access interface” (the “LAN routing system
`limitation”) as “a system that directs data between a local area
`
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`IPR2022-00971
`Patent 7,382,771 B2
`network and the Internet by managing the data path between a
`wireless access point and an Internet access interface;”
`(2) the term “Internet access” as “the ability to send and/or
`receive information via the Internet;” and
`(3) the term “stand-alone system” as “a system capable of
`operating independently of any other system.”
`Pet. 10 (citing Ex. 1018, 11–12).
`Petitioner argues that even though the Board construed these terms
`under the broadest reasonable standard in the Motorola IPR, “[f]or purposes
`of this Petition, the Phillips standard does not require any different
`construction, and Petitioner’s proffered grounds are consistent with the
`above constructions.” Id. at 11. Patent Owner does not provide any express
`claim constructions nor dispute Petitioner’s proposed constructions from the
`Motorola IPR.
`At this preliminary stage of the proceeding, at least for the sake of
`consistency at institution, we rely on the Board’s earlier constructions in the
`Motorola IPR. We acknowledge that Patent Owner has not yet provided any
`substantive claim construction in its Preliminary Response, however Patent
`Owner has the opportunity to address this matter in its Patent Owner’s
`Response should it desire to do so.
`Apart from the above discussed constructions, our analysis does not
`turn on any particular claim construction, and therefore we need not
`expressly determine any other specific claim construction at this time. And,
`because no claim terms are currently in dispute, we apply the plain and
`ordinary meaning of any remaining claims terms as discussed to any extent
`necessary in our analysis below. The parties are free to develop any claim
`construction arguments and supporting evidence they believe necessary
`during trial.
`
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`Patent 7,382,771 B2
`D. Ground 1: Claims 1, 3, 4, 7, 9, and 13 – Alleged Anticipation
`by Gelvin (Ex 1005)
`On this record, Petitioner has established a reasonable likelihood of
`prevailing on its assertion that at least one of claims 1, 3, 4, 7, 9, and 13 are
`anticipated by Gelvin (Ground 1), for the reasons explained below.
`Gelvin (Ex. 1005)
`1.
`Gelvin is titled “Apparatus for Vehicle Internetworks” and describes
`
`that
`
`[t]he vehicle internetwork comprises specific devices, software,
`and protocols, and provides for security for essential vehicle
`functions and data communications, ease of integration of new
`devices and services to the vehicle internetwork, and ease of
`addition of services linking the vehicle to external networks such
`as the Internet.
`Ex. 1005, Abstract code (57). Gelvin’s network facilitates secure connection
`of devices coupled to the vehicle network with the Internet, where “most
`configuration takes place automatically and with no intervention by a
`vehicle owner.” Id. at 4:26–30. Gelvin’s Figure 3, as annotated by the
`Board, is reproduced below.
`
`10
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`Patent 7,382,771 B2
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`
`
`Gelvin’s Figure 3 illustrates WINS (Wireless Integrated Network Sensor)
`vehicle internetwork architecture 300 including AMI-C (Automotive Multi-
`media Interface Consortium) bus 306, and OEM (Original Equipment
`Manufacturer) bus 304. Id. at 8:46–50. Gelvin teaches OEM bus 304 and
`AMIC bus 306 are linked to external networks, for instance the Internet, via
`gateway 302 which “control[s] the flow of information between vehicle
`networks, and between these networks and external networks. Id. at 8:58–
`61.
`
`For connected devices, Gelvin describes that “port nodes 310 provide
`protocol translation for devices and networks connected to either bus 304 or
`306, and additionally enable security functions to prevent unauthorized or
`misbehaving devices from disrupting the network.” Id. at 8:63–67. As
`shown in Figure 3, multi-media devices such as PDAs (private digital
`
`11
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`IPR2022-00971
`Patent 7,382,771 B2
`assistants) (highlighted orange), pagers, and audio/video multi-media players
`connect to the WINS via wireless LAN port (highlighted yellow) and AMIC
`bus 306. Id. at 9:7–11. OEM devices, for example, GPS, cellular modem,
`and climate control systems connect to WINS via OEM bus 304. Id. at 9:1–
`7.
`
`Gelvin’s Figure 5, reproduced below, illustrates an embodiment of
`vehicular network architecture 500 showing both internal and external
`couplings. Id. at 4:52–53.
`
`
`
`Gelvin’s Figure 5 depicts an embodiment illustrating automotive IP router
`502 “resident on the gateway, which serves to couple, for example, an IDB-
`C bus 504, 100 Base TX Ethernet 506, and an IEEE 1394 bus 508.” Id. at
`9:40–42. Gelvin explains that “[s]upported couplings to the Internet 599
`include, but are not limited to, a Bluetooth modem 510, an IEEE 802.11
`radio 512, and a mobile telephone 514.” Id. at 9:42–44.
`
`12
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`Patent 7,382,771 B2
`Gelvin discloses in Figure 7, as reproduced below and annotated by
`the Board, “the gateway functions of an embodiment linked or distributed
`using Internet Protocol (IP) techniques.” Id. at 12:25–26.
`
`
`
`Gelvin’s Figure 7, as annotated by the Board, is a block diagram illustrating
`gateway functions using Internet Protocol (IP) techniques “to enable
`continued use of legacy systems, provide security, and provide flexibility of
`implementation.” Id. at 12:27–29. Gelvin describes that “router 702 detects
`the networks that attach to it and assigns addresses to them. Nodes on those
`networks get their addresses via the dynamic host configuration protocol
`(DHCP) 706.” Id. at 12:39–40.
`Independent Claim 1
`2.
`We consider initially the elements of claim 1.
`Petitioner’s Arguments
`a)
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`
`1[preamble] – A mobile wireless hot spot
`(1)
`system, comprising:
`Petitioner argues that to the extent the preamble is limiting, “Gelvin
`discloses a ‘vehicle internetwork’ that ‘provid[es] distributed network and
`Internet access to processors, controls, and devices in vehicles’ including
`local ‘wireless communication devices.’” Pet. 21 (citing Ex. 1005, 1:42–44,
`6:12–13, 6:23–26, 6:32–35). Petitioner’s declarant, Dr. Akl, testifies that
`“[b]y coupling local devices to outside networks, Gelvin provides a mobile
`wireless hot spot system.” Ex. 1002 ¶ 53 (citing Ex. 1001, 1:20-29).
`Limitation 1[a] – a short-range, high-speed
`(2)
`wireless access point operative to communicate with
`short-range client devices;
`Petitioner argues Gelvin’s WINS includes “an ‘AMIC bus 306’ which
`connects through port nodes 310 to such devices and functions as ‘personal
`digital assistants, and wireless local area network (LAN) ports.’” Pet. 22
`(citing Ex. 1005, 9:7–11). Petitioner points out Gelvin discloses that
`“wireless port nodes can be designed with particular protocols (e.g.,
`Bluetooth) that can directly network to consumer products.” Pet. 23 (citing
`Ex. 1005, 19:45–55. Dr. Akl testifies that a person of ordinary skill in the
`art “would have understood that ‘Bluetooth’—i.e., the example wireless
`protocol discussed in Gelvin (Gelvin, 19:45-55)—‘is a high-speed, short-
`range, low-power microwave wireless link technology designed to connect
`various types of devices such as laptops, cell phones, pagers, PDAs and
`other portable equipment together with little or no work by the user.’” Ex.
`1002 ¶ 57.
`
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`
`Limitation 1[b] – a long-range, wireless
`(3)
`Internet access interface operative to communicate
`with the Internet;
`For limitation 1[b], Petitioner argues that one way Gelvin connects the
`vehicle network to the Internet is via mobile telephone 514, as shown in
`Figure 5. According to Petitioner “[o]f various methods for connecting to
`the Internet, “the cell phone network has the broadest geographic context . .
`.” Pet. 23–24 (quoting Ex 1005, 10:37–38). Another way Petitioner asserts
`that Gelvin’s network connects to the Internet is using a cellular modem as
`shown in Figure 3. Id. at 24–25. According to Petitioner, Gelvin teaches
`that the cellular modem “may for example provide PCS [Personal
`Communications Service] and GSM [Global System for Mobile
`Communications] wide-area access to the Internet.” Id. at 24 (citing Ex.
`1005, 28:24–25). Dr. Akl testifies that “Gelvin’s use of a mobile telephone
`or cellular modem (e.g., PCS and GSM) provides the same type of long-
`range, wireless Internet access interface that the later ’771 Patent described
`as being operative to communicate with the Internet.” Ex. 1002 ¶ 61 (citing
`Ex. 1034, 141–142).
`
`Limitation 1[c] – a Local Area Network
`(4)
`(LAN) routing system managing the data path
`between said wireless access point and said Internet
`access interface,
`For limitation 1[c], Petitioner argues that Gelvin’s gateway 302
`includes IP router 702 illustrated in detail at Figure 7. Pet. 26. Petitioner
`contends that in conjunction with router 701, dynamic host configuration
`protocol, DHCP 706, assigns addresses to devices connected on the LAN.
`Id. Petitioner also contends that “[b]y assigning an address to local devices
`via DHCP and routing external traffic from the Internet to such devices
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`based on the assigned IP address, Gelvin discloses ‘a system that directs data
`between a local area network and the Internet by managing the data path
`between a wireless access point and an Internet access interface.’” Id. at 26–
`27 (citing Ex. 1002 ¶ 64).
`Petitioner points out that “in the Motorola IPR, the Board determined
`that functionalities such as a ‘built-in access point controller, Internet
`connection sharing functionality, DHCP functionality, and Wired Equivalent
`Privacy (WEP) functionality’ could constitute ‘managing the data path.’”
`Pet. 27 (quoting Ex. 1018, 29). Additionally, Dr. Akl testifies
`Gelvin’s DHCP functionality routes Internet traffic to and from
`devices on the LAN. Gelvin’s routing system further includes a
`“proxy 708” that “acts as a central point for managing security
`and acts as a proxy for all traffic to and from the Internet” and
`“controls what devices are allowed to access the public
`Internet”—i.e., it manages the data path between the wireless
`access point (1[a] above) and the Internet access interface (1[b]
`above).
`Ex. 1002 ¶ 66 (citing Ex. 1005, 13:11–16).
`Limitation 1[d] – wherein said mobile
`(5)
`wireless hotspot system is a stand-alone system that
`enables client devices configured for short-range,
`high-speed wireless Internet access to use said
`mobile wireless hotspot system to access the Internet
`without the need to access an external service
`controller server.
`Petitioner argues that Gelvin’s Figure 5 discloses a “stand-alone
`system” because it is “a system capable of operating independently of any
`other system.” Pet. 28 (citing Ex. 1018, 11–12), see also Section II.C.(3)
`(the Board previously construing “the term ‘stand-alone system’ as ‘a
`system capable of operating independently of any other system.’”).
`Petitioner points to mobile phone 514, as it is connected within the WINS
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`IPR2022-00971
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`network architecture, and used as an access point to the internet. Id.
`Petitioner’s annotated Figure 5 from Gelvin is reproduced below.
`
`
`
`Gelvin’s Figure 5, as annotated by Petitioner highlights the Internet
`connection provided by phone 514 on the WINS network 500. Dr. Akl
`testifies that through phone 514 “Gelvin provides access to the Internet
`independently of any other system in the same way that the ’771 patent
`depicts providing such Internet access.” Ex. 1002 ¶ 69 (citing Ex. 1001, Fig.
`2).
`
`Additionally, Petitioner argues that Gelvin’s Figure 7 discloses that
`the gateway includes IP router 702 and DHCP 706 that “assigns addresses to
`nodes on various onboard networks” connect Gelvin’s system to the Internet
`Id. at 28–29 (citing Ex. 1005, 12:39–43). According to Petitioner, in Gelvin
`“the proxy 708 ‘centrally manages the network and is responsible for
`security’. . . [t]he proxy 708 ‘acts as a central point for all traffic to and from
`the Internet.’” Id. at 29 (citing Ex. 1005, 12:44–45, 13:11–12). Dr. Akl
`testifies in support that based on an “understanding of DHCP functionality,
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`and consistent with the ’771 Patent’s discussion of a DHCP, it is my opinion
`that a POSITA would understand Gelvin’s system to be a ‘stand-alone
`system’ due to its inclusion of such DHCP functionality on the LAN.” Ex.
`1002 ¶ 72 (citing Ex. 1024, 224).
`Patent Owner’s Arguments
`b)
`Patent Owner makes two particular arguments with respect to
`anticipation by Gelvin. First, that “Gelvin fails to teach a mobile wireless
`Hotspot through which client devices access the Internet.” Prelim. Resp. 5–
`11 (emphasis omitted). Second, Patent Owner argues that “Gelvin fails to
`teach a “mobile wireless hotspot system . . . that enables client devices . . . to
`access the Internet without the need to access an external service controller”
`as recited in independent claims 1 and 9. Id. at 11–13 (emphasis omitted).
`We address these arguments below in turn.
`Whether Gelvin teaches a mobile wireless
`(1)
`hotspot through which client devices access the
`Internet
`Patent Owner argues that Gelvin’s Figure 5 merely shows “a client
`device uses the Bluetooth protocol to access a data bus internal to the
`vehicle.” Id. at 5. Supported by testimony from its declarant, Dr. Lomp,
`Patent Owner argues that “[s]ignificantly, the client device does not
`communicate with the Internet via the vehicle’s internal data bus; rather, the
`client device uses its own internal cellular modem to directly access the
`Internet.” Id. (citing Ex. 2001 ¶ 30). Patent Owner contends also that “the
`Petition fails to even allege that Gelvin’s client device (Bluetooth PDA 522)
`uses mobile phone 514 to access the Internet.” Id. at 6 (citing Pet. 28–33).
`Similarly, referring to Petitioner’s annotated Figure 3, reproduced
`below, Patent Owner argues that like Figure 5, “Fig. 3 and the corresponding
`
`18
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`IPR2022-00971
`Patent 7,382,771 B2
`text of Gelvin teach only that a client device (PDA Palm PC, highlighted
`yellow) uses a short-range wireless protocol to connect to a wireless LAN
`port (highlighted green) to access a data bus internal to the vehicle. Id. at 8
`(citing Ex. 2001¶ 33).
`
`
`
`Patent Owner argues that neither of Figures 3 or 5 show that the client
`device, i.e., “PDA Palm PC,” actually uses Gelvin’s internal data bus and
`gateway to access the internet. Id. According to Patent Owner “the Petition
`fails to identify any disclosure (because there is none) that the PDA Palm PC
`uses this short-range connection for any purpose other than communicating
`with vehicle’s internal data bus (e.g., to play music from the PDA Palm PC
`on the car speakers).” Id. (citing Ex. 2001 ¶ 33). Dr. Lomp testifies that
`“Gelvin does not expressly teach a “mobile wireless hotspot system . . . that
`enables client devices configured for short-range, high-speed wireless
`Internet access to use said mobile wireless hotspot system to access the
`Internet,” as required by Claim 1 of the ‘771 Patent.” Ex. 2001 ¶ 35.
`
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`IPR2022-00971
`Patent 7,382,771 B2
`Petitioner argues in its Reply that it is presumptuous to “conclude[]
`that because a PDA with a Bluetooth radio may be used to couple the vehicle
`to the Internet, any PDA connected to the vehicle must connect to the
`Internet only via its own internal cellular modem.” Prelim. Reply 1. (citing
`Prelim. Resp. 9). Petitioner argues that Gelvin’s Figure 5 teaches several
`ways for WINS vehicle network architecture 500 to connect to the Internet:
`(a) Bluetooth modem 510, (b) IEEE 802.11 radio 512, and (c) cellular or
`mobile telephone 514. Id. at 1–2. Petitioner asserts that “Gelvin uses these
`network couplings to provide Internet access to devices (e.g., client-devices)
`on various local buses.” Id. at 2 (citing Pet. 28–33; Ex. 1002 ¶ 71).
`We consider Patent Owner’s argument, and agree to an extent, that
`Gelvin describes the PDA in Figure 5 as “coupl[ing] to the Internet 599
`through a service provider that specializes in low-rate communications,”
`rather than through WINS network architecture 500. Ex. 1005, 9:48–50.
`But read in context, Gelvin does not appear limited to this embodiment. For
`example, after describing the three ways that Gelvin’s WINS network
`architecture 500 can couple to the internet, Gelvin broadly describes that
`“[t]he WINS vehicle internetwork of an embodiment includes functionality
`that enables convenient and secure coupling of diverse networks and
`devices.” Id. at 9:58–60. Also, Gelvin explains other ways in which the
`vehicle network connects with the Internet. Gelvin for instance, describes
`with respect to Figure 6 that “[i]n operation, the vehicular network 602 tries
`to select the most cost-effective communication alternative that provides the
`desired level of service.” Id. at 10:20–22. When connecting to an external
`ISP (Internet Service Provider), Gelvin explains that one option is “the ISP
`uses the vehicle’s cellular phone number to attempt to establish a coupling
`over the telephone network, and tunnel the packet through. While the cell
`
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`IPR2022-00971
`Patent 7,382,771 B2
`phone network has the broadest geographic extent, it also has a higher
`associated cost, and thus the reason for attempting other means of
`communication.” Id. at 10:35–40. Gelvin’s disclosure does not, on the
`record at this stage of the proceeding, appear limited to the PDA
`communicating via the internet on its own network. Particularly, where
`Gelvin provides various embodiments and communication methods and
`explains that given the WINS architecture, “[p]otentially, any number of
`available methods of communication can be attempted.” Id. at 10:40–41.
`We acknowledge Dr. Lomp’s testimony that “Gelvin does not
`expressly teach a ‘mobile wireless hotspot system . . . that enables client
`devices configured for short-range, high-speed wireless Internet access to
`use said mobile wireless hotspot system to access the Internet.’” Ex. 2001
`¶ 35. However, this testimony appears somewhat contradictory to Gelvin’s
`example of
`a PDA being used for a remote banking transaction. In this case,
`reliance is placed upon the general design that applications
`assume
`insecure connections. Thus,
`the application-level
`security of the banking application is employed, with the vehicle
`enabling Internet access by acting as an HTTP proxy.
`Ex. 1005, 17:24–30 (emphasis added). In addition, although Gelvin may not
`provide a specific example of the PDA in Figures 3 and 5 utilizing the
`vehicle internetwork architecture 500 to access the Internet, Gelvin explains
`with respect to Figure 7 that “[t]he proxy 708 acts as a central point for
`managing security and acts as a proxy for all traffic to and from the Internet .
`. . [i]t also manages vehicle internetwork connectivity, and controls what
`devices are allowed to access the public Internet.” Id. at 13:11–16.
`Based at least in part on Gelvin’s express disclosure, at this stage of
`the proceeding, we are persuaded that a person of ordinary skill in the art
`
`21
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`IPR2022-00971
`Patent 7,382,771 B2
`would understand that “devices” includes “client devices” and that Gelvin’s
`vehicle internetwork architecture can provide Internet access to such client
`devices, even if those devices, such a PDA, can themselves access the
`Internet. See Ex. 1002 ¶ 70 (Dr. Akl testifying that “as shown below in
`Figure 7, Gelvin discloses a 'port and proxy architecture’ in which an IP
`router 702 and a proxy 708 together provide secure Internet access to
`devices on various local buses independent of any other system.”) (citing Ex.
`1005, 12:25–38).
`
`Whether Gelvin fails to teach a “mobile
`(2)
`wireless hotspot system . . . that enables client
`devices . . . to access the Internet without the need to
`access an external service controller”
`Patent Owner argues that simply having DHCP functionality within
`the LAN does not support Petitioner’s contention that “Gelvin’s automotive
`network enables Internet access to the PDA Palm PC ‘without the need to
`access an external service controller server.’” Prelim. Resp 11–13. Patent
`Owner argues, specifically, that the AMI-C standard bus through which the
`PDA in Gelvin’s Figure 3 connects to the vehicle network “does not require
`or utilize DHCP.” Id. at 12. Dr. Lomp testifies that “it is unclear how the
`PDA PALM PC . . . could receive a DCHP address provided from t
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