Trials@uspto.gov
`571-272-7822
`
`Paper 53
`Entered: January 23, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. and APPLE INC.,
`Petitioner,
`v.
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2022-01249
`Patent 9,019,946 B1
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, GARTH D. BAER, and AARON W. MOORE,
`Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Granting Petitioner’s Motion to Submit Supplemental Information
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`Paper 53
`Entered: January 23, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. and APPLE INC.,
`Petitioner,
`v.
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2022-01249
`Patent 9,019,946 B1
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, GARTH D. BAER, and AARON W. MOORE,
`Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Granting Petitioner’s Motion to Submit Supplemental Information
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2022-01249
`Patent 9,019,946 B1
`
`INTRODUCTION
`I.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Samsung Electronics Co.,
`Ltd., Samsung Electronics America, Inc., and Apple Inc. (collectively,
`“Petitioner”) have shown by a preponderance of the evidence that claims 14,
`15, 17–21, and 27–30, but not claims 1–13, 16, and 26, of U.S. Patent No.
`9,019,946 B1 (Ex. 1001, “the ’946 patent”) are unpatentable. We also grant
`Petitioner’s Motion to Submit Supplemental Information.
`A. Background and Summary
`Petitioner filed a Petition (Paper 3, “Pet.”) requesting institution of an
`inter partes review of claims 1–21 and 26–30 of the ’946 patent. Smart
`Mobile Technologies LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 7). With our authorization, the parties filed additional briefs directed
`solely to the issue of inconsistent claim constructions between this
`proceeding and related litigation. Papers 11, 12. Pursuant to
`35 U.S.C. § 314, we instituted an inter partes review of claims 1–21 and 26–
`30 of the ’946 patent on all presented challenges. Paper 13 (“Inst. Dec.”), 2,
`53.
`
`After institution, Patent Owner filed a Response (Paper 33, “PO
`Resp.”), to which Petitioner filed a Reply (Paper 38, “Pet. Reply”), and
`Patent Owner thereafter filed a Sur-reply (Paper 47, “PO Sur-reply”).
`Petitioner also filed a Motion to Submit Supplemental Information
`(Paper 24), and Patent Owner filed an Opposition (Paper 25). An oral
`hearing in this proceeding was held on October 24, 2023; a transcript of the
`hearing is included in the record. Paper 52.
`
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`IPR2022-01249
`Patent 9,019,946 B1
`B. Real Parties in Interest
`Petitioner identifies Samsung Electronics Co., Ltd., Samsung
`Electronics America, Inc., and Apple Inc. as real parties in interest. Pet. 86.
`Patent Owner only identifies itself as a real party in interest. Paper 5, 1.
`C. Related Matters
`The parties identify Smart Mobile Techs. LLC v. Apple Inc., 6:21-cv-
`00603 (W.D. Tex.) and Smart Mobile Techs. LLC v. Samsung Elecs. Co.,
`Ltd., 6:21-cv-00701 (W.D. Tex.) as related matters. Pet. 86; Paper 5, 1.
`Related patents are challenged in IPR2022-00766, IPR2022-01004,
`IPR2022-01005, IPR2022-01222, IPR2022-01223, and IPR2022-01248.
`D. The ’946 Patent (Ex. 1001)
`The ’946 patent issued on April 28, 2015, from an application filed on
`September 8, 2014, which is a continuation application of several previously
`filed continuation and continuation-in-part applications, the earliest of which
`was filed on June 4, 1999. Ex. 1001, codes (22), (45), (63), 1:8–19.
`According to the ’946 patent, an unfulfilled need exists for multiple
`transmitters and receivers (“T/R”) in a cellular telephone or mobile wireless
`device (“CT/MD”). Ex. 1001, 1:48–49. Figure 5A of the ’946 patent is
`reproduced below.
`
`Figure 5A shows a “a dual antenna, dual T/R unit in a CT/MD
`interfacing with a dual processor.” Ex. 1001, 2:15–17. Dual antenna 508
`
`
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`IPR2022-01249
`Patent 9,019,946 B1
`and dual T/R unit 504 interface with dual processor 506 in dual band
`system 500. Id. at 4:37–39. System 500 can communicate through
`outputs 510, which can be “fibre optic channel, ethernet, cable, telephone, or
`other.” Id. at 4:42–45.
`“The multiple processors 506 allow for parallel and custom
`processing of each signal or data stream to achieve higher speed and better
`quality of output.” Ex. 1001, 4:51–53. Processors 506 include “DSP, CPU,
`memory controller, and other elements essential to process various types of
`signals.” Id. at 4:56–58.
`“The processor contained within the CT/MD 502 is further capable of
`delivering the required outputs to a number of different ports such as optical,
`USB, cable and others” and “capable of taking different inputs, as well as
`wireless.” Id. at 4:60–64. “Thus the CT/MD 502 has universal connectivity
`in addition to having a wide range of functionality made possible through
`the features of multiple antennas, multiple T/R units 504 and processors
`506.” Id. at 4:67–5:3.
`“[T]he CT/MD may use one or more transmission protocols as
`deemed optimal and appropriate,” and “the CT/MD determines the required
`frequency spectrum, other wireless parameters such as power and signal to
`noise ratio to optimally transmit the data.” Ex. 1001, 11:5–7, 11:9–11:11.
`The CT/MD has “the ability to multiplex between one or more transmission
`protocols such as CDMA, TDMA to ensure that the fast data rates of the
`optical network or matched closely in a wireless network to minimize the
`potential data transmission speed degradation of a wireless network.” Id.
`at 11:12–15. “Thus it is possible that various optical and wireless protocols
`can co-exist in a network.” Id. at 11:29–30.
`
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`IPR2022-01249
`Patent 9,019,946 B1
`E. Illustrative Claim
`The ’943 patent includes 30 claims, of which Petitioner challenges
`claims 1–21 and 26–30. Of the challenged claims, claims 1, 14, 17, and 27
`are independent, and reproduced below is claim 14.
`14. An
`Internet-enabled mobile communication device
`comprising:
`
`a memory;
`
`a display;
`
`at least two or more antennas;
`
`at least one or more processors; and
`
`a plurality of wireless transmit and receive units including
`a first wireless transmit and receive unit and a second wireless
`transmit and receive unit, wherein each wireless transmit receive
`unit is configured to communicate using one or more protocols;
`
`wherein the device is enabled for communication using
`Internet Protocol (IP);
`
`wherein the device is enabled for wireless communication
`on a wireless local area network;
`
`wherein the first wireless transmit and receive unit is
`enabled
`to communicate using one or more antennas
`simultaneously; and
`
`wherein
`the mobile device maintains multiple IP
`addresses, wherein the first wireless unit is accessible on a first
`IP address and the second wireless transmit and receive unit is
`accessible on a second IP address and wherein the mobile device
`operates using a plurality of ports; and
`
`wherein data transferred by the plurality of transmit and
`receive units is improved by the simultaneous use of multiple
`network paths including at least one connection to a networked
`server; and
`
`wherein the device is enabled for communication of
`wireless signals representing voice data and for communication
`of wireless signals representing non-voice data.
`
`Ex. 1001, 13:17–47.
`
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`IPR2022-01249
`Patent 9,019,946 B1
`F. Asserted Prior Art and Proffered Testimonial Evidence
`Petitioner identifies the following references as prior art in the
`asserted grounds of unpatentability:
`Name
`Reference
`Bernard US 5,497,339, issued Mar. 5, 1996
`Billström US 5,590,133, issued Dec. 31, 1996
`Johnston US 5,784,032, issued July 21, 1998
`Sainton
`US 5,854,985, issued Dec. 29, 1998
`Preiss
`US 6,031,503, filed Feb. 20, 1997, issued Feb. 29,
`2000
`Yegoshin US 6,711,146 B2, filed Feb. 22, 1999, issued Mar.
`23, 2004
`WO748 WO 98/27748, published June 25, 1998
`
`Exhibit
`1007
`1006
`1005
`1009
`1010
`
`1004
`
`1008
`
`Pet. 2. Petitioner states that “[t]hese references qualify as prior art based on
`the earliest claimed priority date (6/4/1999; ‘Critical Date’)” but “does not
`concede entitlement to the claimed priority.” Id. at 1. According to
`Petitioner, Bernard and Billström are prior art under § 102(b); Yegoshin and
`Preiss are prior art under § 102(e); and Johnston, WO748, and Sainton are
`prior art under §§ 102(a) and (e).1 Id.
`Petitioner also provides a Declaration of Dr. Michael Allen Jensen
`(Ex. 1003) and a Second Declaration of Dr. Michael Allen Jensen
`(Ex. 1051). Patent Owner provides a Declaration of Professor Todor V.
`Cooklev, Ph.D. (Ex. 2001) and a Second Declaration of Professor Todor V.
`Cooklev, Ph.D. (Ex. 2019). Deposition transcripts for Dr. Jensen (Ex. 2020)
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
`2013. Because the ’946 patent claims priority to an application filed before
`that date, our citations to 35 U.S.C. §§ 102 and 103 in this Decision are to
`their pre-AIA versions. See also Pet. 1 (stating but not conceding that “the
`earliest claimed priority date” is “6/4/1999”).
`
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`Patent 9,019,946 B1
`and Prof. Cooklev have been filed (Ex. 1053). With our authorization,
`Patent Owner also filed a deposition transcript for Dr. Jensen from IPR2022-
`01248 (Ex. 2029).
`G. Asserted Grounds
`Petitioner asserts that claims 1–21 and 26–30 are unpatentable on the
`following grounds:
`35
`Claim(s)
`U.S.C.
`Challenged
`§
`103(a) Yegoshin, Johnston, Billström
`14, 15
`1–11, 16–21 103(a) Yegoshin, Johnston, Billström, Bernard
`12
`103(a) Yegoshin, Johnston, Billström, Bernard, WO748
`13, 26
`103(a) Yegoshin, Johnston, Billström, Bernard, Sainton
`27–30
`103(a) Yegoshin, Johnston, Billström, Bernard, Preiss
`
`References/Basis
`
`Pet. 1.
`
`II. ANALYSIS
`A. Petitioner’s Motion to Submit Supplemental Information
`Petitioner moves to submit a Supplemental Declaration of Dr. Michael
`A. Jensen as supplemental information. Paper 24. Petitioner contends that
`the motion is timely, the declaration is relevant to the challenged claims, and
`numerous Board cases support granting the motion. Id. at 3–8.
`Patent Owner filed an opposition to the motion. Paper 25. Patent
`Owner contends that Petitioner fails to show why the supplemental
`declaration cannot be filed with Petitioner’s reply. Id. at 1–2. Patent Owner
`also contends that the proposed declaration circumvents our word limits and
`adds new citations to the record. Id. at 2–9. Patent Owner further contends
`that the proposed declaration amounts to an additional brief because it
`
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`IPR2022-01249
`Patent 9,019,946 B1
`analyzes claim construction and includes new cites to the record. Id. at 9–
`10.
`
`Having reviewed the parties’ positions, we grant Petitioner’s Motion
`to Submit Supplemental Information. In view of the full record and for the
`reasons below, our determination would not change even if we denied the
`motion.
`B. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent [claim] it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016). This burden of persuasion never shifts to Patent Owner.
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015). To prevail in an inter partes review, the petitioner must
`support its challenges by a preponderance of the evidence. 35 U.S.C.
`§ 316(e) (2018); 37 C.F.R. § 42.1(d) (2021).
`Petitioner contends that the challenged claims of the ’946 patent are
`unpatentable under § 103. Pet. 1. A claim is unpatentable under § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of 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 skill in the art; and (4) where in evidence, so-called
`secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). When evaluating a combination of teachings, we must also
`
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`Patent 9,019,946 B1
`“determine whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at
`418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a
`combination of elements produces a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`C. Level of Ordinary Skill in the Art
`Petitioner asserts that one of ordinary skill in the art “would have had
`a Bachelor’s degree in electrical engineering, computer engineering,
`computer science, or a related field, and at least two years of experience
`related to the design or development of wireless communication systems, or
`the equivalent.” Pet. 3 (citing Ex. 1003 ¶¶ 27–28). Petitioner also states that
`“[a]dditional graduate education could substitute for professional
`experience, or significant experience in the field could substitute for formal
`education.” Id. (citing Ex. 1003 ¶¶ 27–28).
`We preliminarily adopted Petitioner’s proposed level of ordinary skill
`in the art. Inst. Dec. 8. Patent Owner does not dispute Petitioner’s proposal
`and does not propose its own level of ordinary skill in the art. See generally
`PO Resp.; see also Ex. 2019 ¶ 17 (Patent Owner’s declarant accepting
`Petitioner’s proposed level of ordinary skill in the art).
`Based on the full record, we maintain and affirm that one of ordinary
`skill in the art “would have had a Bachelor’s degree in electrical
`engineering, computer engineering, computer science, or a related field, and
`at least two years of experience related to the design or development of
`wireless communication systems, or the equivalent” and that “[a]dditional
`graduate education could substitute for professional experience, or
`significant experience in the field could substitute for formal education.”
`Pet. 3 (citing Ex. 1003 ¶¶ 27–28).
`
`9
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`IPR2022-01249
`Patent 9,019,946 B1
`D. Claim Construction
`In an inter partes review, the claims are 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),
`including construing 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.
`37 C.F.R. § 42.100(b) (2021); see Phillips v. AWH Corp., 415 F.3d 1303,
`1312–13 (Fed. Cir. 2005) (en banc).
`Petitioner states that “no formal claim constructions are necessary in
`this proceeding.” Pet. 2. For our Institution Decision, we did not need to
`interpret expressly any claim term. Inst. Dec. 9. Patent Owner does not
`propose an interpretation for any term. See generally PO Resp.
`In related litigation, the District Court adopted the plain and ordinary
`meaning for “interface,” “multiplexed,” and “server” recited by the claims of
`the ’946 patent but did not elaborate what would be the plain and ordinary
`meaning for these terms. Ex. 1099 (Claim Construction Order), 7–9.
`Patent Owner responds that Petitioner fails to show that Yegoshin
`multiplexes under any construction, including those asserted in related
`litigation. PO Resp. 10–12 (citing Pet. 2; Ex. 1003 ¶ 127; Ex. 2003
`(Defendants’ Opening Claim Construction Brief Regarding the ’434 Patent
`Family), 7; Ex. 2019 ¶¶ 58–59, 61–64; Ex. 2020, 65:19–66:4).
`Petitioner replies that the “prior art reads on the claims in a manner
`that does not require construction.” Pet. Reply 19. Petitioner argues that the
`“term ‘multiplex’ applies to different signals arriving either simultaneously
`or non-simultaneously.” Id. at 18 (citing Pet. 34–39, 42, 50, 54; Ex. 1050
`¶¶ 6–33; Ex. 1051 ¶ 43); see also id. at 18–19 (citing Ex. 1011, 15, Fig. 1.7;
`
`10
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`IPR2022-01249
`Patent 9,019,946 B1
`Ex. 1013, 33; Ex. 1050 ¶¶ 9–10, 30–32; Ex. 1051 ¶ 45; Ex. 1071, 1;
`Ex. 2020, 66:5–68:6). Petitioner also argues that the asserted art renders
`obvious “multiplex” and “covers both parties district court constructions.”
`Id. at 19–20 (citing Ex. 1050 ¶¶ 5–10; Ex. 1051 ¶¶ 46, 47; Ex. 1053, 9:17–
`21, 11:12–13, 16:6–15; Ex. 1061; Ex. 1062; Ex. 2003, 40). Petitioner
`further argues that the intrinsic record supports Petitioner’s understanding of
`“multiplex.” Id. at 20–21 (citing Ex. 1001, 3:47–48, 5:8–67, 8:32–37, 9:4–
`44, 10:18–21, 11:1–41; Ex. 1050 ¶¶ 11–16; Ex. 1051 ¶¶ 48–53).
`We note that Petitioner’s understanding of “multiplex” in its Reply
`argument does not distinguish meaningfully from merely switching between
`data sources. See Pet. Reply 18–20. Also, in its discussion of Exhibit 1011
`and synchronous time-division multiplexing, Petitioner does not address that
`the exhibit states that “[f]or the purposes of this discussion, assume that each
`host on the left has a large supply of data that it wants to send to its
`counterpart on the right,” which tends to undermine Petitioner’s argument
`that “multiple data flows do not have to be simultaneously or continuously
`communicated together for them to be multiplexed into a single output link”
`and the cited testimonial evidence. Id. at 18–19; Ex. 1011, 15; Ex. 1050
`¶¶ 7–8; Ex. 1051 ¶ 44.
`Based on the full record, we agree with the parties that express
`interpretation is not required to resolve the parties’ dispute (Pet. 2; PO
`Resp. 10; Pet. Reply 19) and determine that no claim term requires express
`interpretation. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir.
`2019) (“The Board is required to construe ‘only those terms . . . that are in
`controversy, and only to the extent necessary to resolve the controversy.’”)
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)).
`
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`Patent 9,019,946 B1
`E. Asserted Obviousness Based on Yegoshin, Johnston, and Billström
`1. Yegoshin (Ex. 1004)
`Yegoshin describes a “dual-mode communication device,” one
`embodiment of which includes a “microphone and speaker apparatus
`including converters for rendering audio data as audible speech, and for
`rendering audible speech as audio data.” Ex. 1004, 3:18–21. The device
`includes “a first communication interface comprising circuitry for receiving
`and sending the audio data on a cell-phone network” and “a second
`communication interface comprising circuitry for connecting to a local area
`network (LAN), and for receiving and sending the audio data on the LAN.”
`Id. at 3:22–27. “In some embodiments the dual-mode communication
`device is implemented in the form of a cell phone.” Id. at 27–29.
`Yegoshin’s device “allow[s] a user to switch modes from cellular to
`IP communication, and perhaps to switch from differing types of networks
`using known protocols.” Ex. 1004, 5:33–54. Yegoshin states that the device
`is “capable of taking some calls via cellular path while receiving other calls
`via IP path,” and that it is capable of “taking all cellular calls in IP format.”
`Id. at 5:55–65; 8:47–56.
`2. Johnston (Ex. 1005)
`Johnston describes “diversity antennas” that can “simultaneously
`receive or transmit two or three components of electromagnetic energy.”
`Ex. 1005, 1:5–7. In the embodiment cited by Petitioner––shown in
`Johnson’s Figure 29B––there are three “[a]ntennas 300” connected to
`transceiver 309 “through feed circuit 302, tuning and matching circuit 304
`and combiner 306 or 307 respectively.” Id. at 11:9–23. Johnston states that
`diversity antenna arrangements have a number of advantages, including
`improved radio communication in a “multipath fading environment,”
`
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`Patent 9,019,946 B1
`improved signal reliability, and reduced power requirements. See id.
`at 1:11–29.
`3. Billström (Ex. 1006)
`Billström “relates to digital TDMA (Time Division Multiple Access)
`cellular radio mobile telecommunications systems” and “is directed towards
`apparatuses and mobile stations for providing packet data communications
`services in current TDMA cellular systems.” Ex. 1006, 1:7–12.
`Billström states that “[p]roviding the packet data services on a cellular
`system platform offers potential advantages in terms of widespread
`availability, possibility of combined voice/data services, and comparatively
`low additional investments by capitalizing on the cellular infrastructure.”
`Ex. 1006, 1:54–58. According to Billström, “[o]f particular interest are
`current TDMA cellular systems, through their spectrum efficiency and world
`wide penetration” and identifies “GSM (Global System for Mobile
`communication)” as an example of a TDMA platform. Id. at 1:58–62.
`Billström provides “general purpose packet data communication
`services in current digital TDMA cellular systems, based on providing
`spectrum efficient shared packet data channels optimized for packet data and
`compatible with cellular requirements” with GSM as a target system and “a
`mobile station for packet data communication over digital TDMA cellular
`shared packet data channels.” Ex. 1006, 3:53–59, 4:59–61. Billström also
`provides “new packet data services in a closely integrated way, utilizing the
`current TDMA cellular infrastructure” and “with minimum impact on the
`current TDMA cellular infrastructure.” Id. at 3:63–65, 4:5–8. “The basic
`packet data network service provided is a standard connectionless network
`(datagram) service based on a standard connectionless IP protocol,” and “IP
`is here used to denote the Internet Protocol.” Id. at 7:58–61.
`
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`4. Independent Claim 14
`a) “An Internet-enabled mobile communication device,”
`For the preamble, Petitioner argues that, to the extent the preamble is
`limiting, Yegoshin teaches cellular telephone 9 that can communicate on an
`IP data network. Pet. 8 (citing Ex. 1003 ¶ 59; Ex. 1004, 1:9–14, 1:30–57,
`4:63–5:3); see also id. at xi (labeling the preamble “14[pre]”).
`The relied-upon portions describe that Yegoshin “is in the field of
`telephony communications including data network telephony (DNT), which
`encompasses Internet Protocol Network Telephony (IPNT)” and that cellular
`telephone 9 is “capable of communicating on an IP data network in either a
`wired or wireless form.” Ex. 1004, 1:9–14, 1:30–57, 4:63–5:3. We credit
`Petitioner’s testimonial evidence regarding the preamble because the cited
`portions of Yegoshin support it. Ex. 1003 ¶ 59; Ex. 1004, 1:9–14, 1:30–57,
`4:63–5:3. Patent Owner does not provide a responsive argument regarding
`the preamble of claim 14. See generally PO Resp.
`Based on the full record before us, Petitioner persuades us, and we
`find, that Yegoshin teaches or suggests, to the extent the preamble is
`limiting, an “Internet-enabled mobile communication device.”
`b) “a memory”
`Petitioner argues that Yegoshin teaches that its phone includes
`memory for storing client software suite 19 and that it was well known that
`phones used memory to store and process data for transmission. Pet. 9
`(citing Ex. 1003 ¶ 60; Ex. 1004, 2:1–14, 5:37–40); see also id. at xii
`(labeling the limitation “14[a]”).
`A relied-upon portion describes that “[c]lient software 19 . . . may be
`pre-loaded into a suitable built-in memory provided and adapted for the
`purpose.” Ex. 1004, 5:37–40. We credit Petitioner’s testimonial evidence
`
`14
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`Patent 9,019,946 B1
`regarding the limitation because the cited portions of Yegoshin support it.
`Ex. 1003 ¶ 60; Ex. 1004, 2:1–14, 5:37–40. Patent Owner does not provide a
`responsive argument regarding the “memory” of claim 14. See generally PO
`Resp.
`Based on the full record before us, Petitioner persuades us, and we
`find, that Yegoshin teaches or suggests “a memory.”
`c) “a display”
`Petitioner argues that Yegoshin teaches that its phone includes a
`display to present information and that it was well known that phones had
`displays. Id. at 9 (citing Ex. 1003 ¶ 61; Ex. 1004, 2:1–15, Fig. 1; Ex. 1009,
`10:42–65, 12:65–13:19); see also id. at xii (labeling the limitation “14[b]”).
`A relied-upon portion shows that Yegoshin’s cellular phone 9
`includes a display. Ex. 1004, Fig. 1. We credit Petitioner’s testimonial
`evidence regarding the limitation because the cited portions of the record
`support it. Ex. 1003 ¶ 61; Ex. 1004, 2:1–15, Fig. 1; Ex. 1009, 10:42–65,
`12:65–13:19. Patent Owner does not provide a responsive argument
`regarding the “display” of claim 14. See generally PO Resp.
`Based on the full record before us, Petitioner persuades us, and we
`find, that Yegoshin teaches or suggests “a display.”
`d) “at least two or more antennas”
`Petitioner argues that Yegoshin teaches that its phone includes
`antennas and that it would have been obvious to use different antenna for
`cellular and WLAN communications. Pet. 10 (citing Ex. 1003 ¶¶ 62, 63;
`Ex. 1004, 1:52–2:15, 6:65–7:14, Fig. 1); see also id. at xii (labeling the
`limitation “14[c]”). Petitioner also argues that it was well known to provide
`such phones with multiple antennas for different frequencies and
`
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`communications requirements. Id. (citing Ex. 1025, Abstr.; Ex. 1026,
`10:10–21; Ex. 1027, 7:11–15).
`Petitioner further argues that it would have been obvious to modify
`Yegoshin to have multiple cellular antennas as taught by Johnston for the
`antenna diversity benefits described by Johnston. Pet. 10–12 (citing
`Ex. 1003 ¶¶ 64–67; Ex. 1004, 2:14–41; Ex. 1005, 1:10–30, 2:17–23, 11:9–
`23, 11:53–59, 12:40–46, Figs. 29A–29B; Ex. 1021, 3; Ex. 1022, 1–6;
`Ex. 1023, 1–2, 6–7). According to Petitioner, the proposed combination
`would have been within ordinary skill, yielded predictable results, and had a
`reasonable expectation of success. Id. at 12–13 (citing Ex. 1003 ¶¶ 68, 69).
`A relied-upon portion of Yegoshin shows that its cellular phone 9
`includes an antenna. Ex. 1004, Fig. 1. The relied-upon portions of Johnston
`show multiple antennas and describe the advantages of antenna diversity.
`Ex. 1005, 1:10–30, 2:17–23, 11:9–23, 11:53–59, 12:40–46, Figs. 29A–29B.
`We credit Petitioner’s testimonial evidence regarding Yegoshin’s teachings
`and that Yegoshin’s phone 9 would have obviously had two antennas based
`on what was known in the art because the cited portions of the record
`support it. Ex. 1003 ¶¶ 62, 63; Ex. 1004, 1:52–2:15, 6:65–7:14, Fig. 1;
`Ex. 1025, Abstr.; Ex. 1026, 10:10–21; Ex. 1027, 7:11–15.
`We also credit Petitioner’s testimonial evidence that one of ordinary
`skill in the art would have been motivated to modify Yegoshin based on
`Johnston for the reasons provided with a reasonable expectation of success
`because the cited portions of the record support the testimony. Ex. 1003
`¶¶ 64–69; Ex. 1004, 2:14–41; Ex. 1005, 1:10–30, 2:17–23, 11:9–23, 11:53–
`59, 12:40–46, Figs. 29A–29B; Ex. 1021, 3; Ex. 1022, 1–6; Ex. 1023, 1–2, 6–
`7. Patent Owner does not provide a responsive argument regarding the
`“antennas” of claim 14. See generally PO Resp.
`
`16
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`IPR2022-01249
`Patent 9,019,946 B1
`Based on the full record before us, Petitioner persuades us, and we
`determine, that Yegoshin teaches or suggests or that Yegoshin modified by
`Johnston would have had “at least two or more antennas.”
`e) “at least one or more processors”
`Petitioner argues that one of ordinary skill in the art would have
`understood that Yegoshin’s phone had a processor to execute client software
`suite 19 and it would have been obvious that a processor performed
`communication processes and other telephone functionalities. Pet. 13 (citing
`Ex. 1003 ¶¶ 70, 71; Ex. 1004, 5:33–65; Ex. 1019, 13:20–14:8, 18:23–59,
`21:54–22:19, 25:65–67, Figs. 2, 6); see also id. at xii (labeling the limitation
`“14[d]”). Petitioner also argues that Billström confirms the use of
`processors in cellular telephones. Id. at 13–14 (citing Ex. 1003 ¶ 72;
`Ex. 1006, 24:29–60).
`The relied-upon portion of Yegoshin describes phone 9 being able to
`communicate on a cellular path and an IP path. Ex. 1004, 5:33–65. The
`relied-upon portion of Billström describes a microprocessor. Ex. 1006,
`24:29–60.
`We credit Petitioner’s testimonial evidence that it would have been
`known or obvious that Yegoshin’s phone includes one or more processors
`because the cited portions of the record support it. Ex. 1003 ¶¶ 70, 71;
`Ex. 1004, 5:33–65; Ex. 1019, 13:20–14:8, 18:23–59, 21:54–22:19, 25:65–
`67, Figs. 2, 6. We also credit Petitioner’s testimonial evidence that
`Billström confirms the known use of processors in cellular telephones
`because the cited portions of Billström support it. Ex. 1003 ¶ 72; Ex. 1006,
`24:29–60. Patent Owner does not provide a responsive argument regarding
`the “processors” of claim 14. See generally PO Resp.
`
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`Based on the full record before us, Petitioner persuades us, and we
`determine, that Yegoshin teaches or suggests or that Yegoshin and Billström
`would have had “at least one or more processors.”
`f) “a plurality of wireless transmit and receive units including a
`first wireless transmit and receive unit and a second wireless
`transmit and receive unit, wherein each wireless transmit
`receive unit is configured to communicate using one or more
`protocols”
`Petitioner argues that Yegoshin teaches first and second
`communication interfaces for cellular and IP-LAN that correspond to the
`recited wireless transmit and receive units. Pet. 14 (citing Ex. 1003 ¶ 73;
`Ex. 1004, 3:17–7:25); see also id. at xii (labeling the limitation “14[e]”).
`For “wherein each wireless transmit receive unit is configured to
`communicate using one or more protocols,” Petitioner argues that cellular
`and WLAN networks would use different protocols. Id. (citing Ex. 1003
`¶ 74; Ex. 1004, 5:23–54, 6:5–14, 6:52–64, 7:48–58, 9:19–29).
`The relied-upon portion describes first and second communication
`interfaces. Ex. 1004, 3:21–25. We credit Petitioner’s testimonial evidence
`regarding the required transmit and receive units because the cited portions
`of Yegoshin support it. Ex. 1003 ¶ 73; Ex. 1004, 3:17–4:42, 4:59–7:25.
`We also credit Petitioner’s testimonial evidence that the transmit and
`receive units use different protocol because the cited portions of Yegoshin
`support it. Ex. 1003 ¶ 74; Ex. 1004, 5:23–54, 6:5–14, 6:52–64, 7:48–58,
`9:19–29. Patent Owner does not provide a responsive argument regarding
`the above-quoted limitations. See generally PO Resp.
`Based on the full record before us, Petitioner persuades us, and we
`find, that Yegoshin teaches or suggests “a plurality of wireless transmit and
`receive units including a first wireless transmit and receive unit and a second
`
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`wireless transmit and receive unit, wherein each wireless transmit receive
`unit is configured to communicate using one or more protocols.”
`g) “wherein the device is enabled for communication using
`Internet Protocol (IP)”
`Petitioner argues that Yegoshin teaches that its phone can use IP
`communication over an IP network. Pet. 14–15 (citing Ex. 1003 ¶ 75;
`Ex. 1004, 4:59–5:3); see also id. at xii (labeling the limitation “14[f]”).
`The relied-upon portion describes “a cellular-capable device to
`receive calls routed . . . over a private IP network.” Ex. 1004, 4:59–5:3. We
`credit Petitioner’s testimonial evidence because the cited portion of
`Yegoshin supports it. Ex. 1003 ¶ 75; Ex. 1004, 4:59–5:3. Patent Owner
`does not provide a responsive argument regarding the above-quoted wherein
`clause. See generally PO Resp.
`Based on the full record before us, Petitioner persuades us, and we
`find, that Yegoshin teaches or suggests “wherein the device is enabled for
`communication using Internet Protocol (IP).”
`h) “wherein the device is enabled for wireless communication on
`a wireless local area network”
`Petitioner argues that Yegoshin teaches cell phone 9 communicating
`in a “wireless mode on wireless IP-LAN 38.” Id. at 15 (citing Ex. 1003
`¶ 76; Ex. 1004, 1:31–67, 2:21–4:14, 4:65–5:32, 6:62–7:14, 8:28–34, Fig. 2);
`see also id. at xii (labeling the limitation “14[g]”).
`The relied-upon portion teaches “cell phone 9 may communicate in
`wireless mode on wireless
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