Ixi Mobile (R&D) Ltd. et al v. Apple, Inc.

Northern District of California, cand-4:2015-cv-03755

Letter from John V. Picone, III re Update on IPR.

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6 December 28, 2016 John V. Picone III jpicone@hopkinscarley.com T. 408.299.1388 F. 408.938.6219 Via ECF United States District Judge Haywood S. Gilliam, Jr. United States District Court for the Northern District of California 450 Golden Gate Avenue Courtroom 10, 19th Floor San Francisco, CA 94102 Re: IXI Mobile (R&D) Ltd., et al. v. Samsung Elecs. Co Ltd., et al, Case No. 15-cv- 03752-HSG; IXI Mobile (R&D) Ltd., et al. v. Blackberry Limited, et al., Case No. 15-cv-03754-HSG; IXI Mobile (R&D) Ltd., et al. v. Apple Inc., Case No. 15-cv-03755-HSG Judge Gilliam: Pursuant to Your Honor's Order Continuing Stay entered on January 7, 2016 (Dkt. Nos. 137, 140, and 126 in Case Nos. 15-cv-03752-HSG, 15-cv-03754-HSG, and 15-cv-03755-HSG, respectively), I write on behalf of the parties to provide the Court with an update on the status of the inter-partes review ("IPR") of the patents-at-issue in the above-captioned proceedings. On December 21, 2016, the Patent Trial and Appeal Board ("PTAB") issued Final Decisions that invalidated all of the challenged claims in the IPR proceedings. Copies of these decisions are attached hereto as Exhibits A and B. The PTAB did not institute an IPR for Claim 10 of U.S. Patent No. 7,295,532, the only other claim that Plaintiffs have asserted in the cases before the Court. Plaintiffs further state that the petitioners did not challenge every claim of the patents-in- suit, so several additional claims remain that are not presently asserted against Defendants. Defendants state that those unasserted claims are not properly before the Court. The parties will provide an update on their respective positions on these actions by no later than March 1, 2016, seven days after the deadline to appeal the PTAB's Final Decisions. In the meantime, the parties submit the cases should remain stayed. 692\1420222.1 6 United States District Judge Haywood S. Gilliam, Jr. December 28, 2016 Page 2 Sincerely, HOPKINS & CARLEY A Law Corporation /s/John V. Picone, III John V. Picone III JVP 692\1420222.1 6 Exhibit A 6 Trials@uspto.gov Paper No. 27 571.272.7822 Entered: December 21, 2016 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. IXI IP, LLC, Patent Owner. ____________ Case IPR2015-01444 Patent 7,039,033 B2 ____________ Before KRISTINA M. KALAN, ROBERT J. WEINSCHENK, and JOHN A. HUDALLA, Administrative Patent Judges. HUDALLA, Administrative Patent Judge. FINAL WRITTEN DECISION 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Apple Inc. (collectively "Petitioner") filed a Petition ("Pet.") (Paper 2) to institute an inter partes review of claims 1, 4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46 of U.S. Patent No. 7,039,033 B2 ("the '033 patent") 6 IPR2015-01444 Patent 7,039,033 B2 (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. Patent Owner, IXI IP, LLC ("IXI"), filed a Preliminary Response ("Prelim. Resp.") (Paper 6) to the Petition. Taking into account the arguments presented in IXI's Preliminary Response, we determined that the information presented in the Petition established that there is a reasonable likelihood that Petitioner would prevail in challenging claims 1, 4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46 of the '033 patent under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this proceeding on December 30, 2015, as to these claims of the '033 patent. Paper 7 ("Dec. on Inst."). During the course of trial, IXI filed a Patent Owner Response (Paper 14, "PO Resp."), and Petitioner filed a Reply to the Patent Owner Response (Paper 18, "Pet. Reply"). An oral hearing was held on September 15, 2016, and a transcript of the hearing is included in the record. Paper 26 ("Tr."). Petitioner proffered a Declaration of Dr. Sayfe Kiaei (Ex. 1003) with its Petition, and IXI proffered a Declaration of Dr. Narayan Mandayam (Ex. 2301) with its Response. The parties also filed transcripts of the depositions of Dr. Kiaei (Exs. 2303–2305) and Dr. Mandayam (Exs. 1018, 1019). IXI filed a Motion to Exclude (Paper 21) certain exhibits submitted by Petitioner. Petitioner filed an Opposition (Paper 24) and IXI filed a Reply (Paper 25). We have jurisdiction under 35 U.S.C. § 6. This decision is a Final Written Decision under 35 U.S.C. § 318(a) as to the patentability of claims 1, 4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46 of the '033 patent. For the reasons discussed below, Petitioner has demonstrated by a preponderance of the evidence that these claims are unpatentable under § 103(a). 2 6 IPR2015-01444 Patent 7,039,033 B2 I. BACKGROUND A. Related Proceedings The parties identify the following proceedings related to the '033 patent: IXI Mobile (R&D) Ltd. v. Samsung Electronics Co., Case No. 3:15- cv-03752-HSG (N.D. Cal.); IXI Mobile (R&D) Ltd. v. Apple, Inc., Case No. 4:15-cv-03755-PJH (N.D. Cal.); and IXI Mobile (R&D) Ltd. v. Blackberry Ltd., Case No. 3:15-cv-03754-RS (N.D. Cal.). Pet. 1–2; Paper 5, 1–2; Paper 7, 1–2. B. The '033 Patent The '033 patent issued from an application filed on May 7, 2001. Ex. 1001, at [22]. The '033 patent is directed to "a system that accesses information from a wide area network ('WAN'), such as the Internet, and local wireless devices in response to short-range radio signals." Id. at 4:8– 11. Figure 1 of the '033 patent is reproduced below: 3 6 IPR2015-01444 Patent 7,039,033 B2 Figure 1 illustrates an exemplary system 100 having a personal area network (PAN) and a wide area network. Id. at 4:8–19. The PAN is made up of gateway device 106 and one or more terminals 107, such as, for example, a laptop computer, a personal digital assistant (PDA), or a printer. Id. at 4:17– 25. Gateway device 106 is coupled to cellular network 105, which in turn connects to Internet 103 through carrier backbone 104. Id. at 4:36–39, 49– 55. Software architecture 400 for gateway device 106 may include network management software 404 including, inter alia, PAN application server 404a. Id. at 5:61–6:5, 6:36–42; 6:58–63, Figs. 4, 5a. In turn, PAN application server 404a includes service repository software component 704, which "allows applications 406, which run on a gateway device 106 or terminals 107, to discover what services are offered by a PAN, and to determine the characteristics of the available services." Id. at 10:1–9, 12:9– 14, Fig. 7; see also id. at 12:33–67 (enumerating the many functions of service repository software component 704). C. Illustrative Claim Claims 1, 25, 34, and 42 of the '033 patent are independent. Claims 4–7, 12, 14, 15, 22, and 23 depend from claim 1; claim 28 depends from claim 25; claims 39 and 40 depend from claim 34; and claim 46 depends from claim 42. Independent claim 1 is illustrative of the challenged claims and is reproduced below: 1. A system for providing access to the Internet, comprising: a first wireless device, in a short distance wireless network, having a software component to access information from the Internet by communicating with a cellular network in response to a first short-range radio signal, wherein the first 4 6 IPR2015-01444 Patent 7,039,033 B2 wireless device communicates with the cellular network and receives the first short-range radio signal; and, a second wireless device, in the short distance wireless network, to provide the first short-range radio signal, wherein the software component includes a network address translator software component to translate between a first Internet Protocol ("IP") address provided to the first wireless device from the cellular network and a second address for the second wireless device provided by the first wireless device, wherein the software component includes a service repository software component to identify a service provided by the second wireless device. Ex. 1001, 15:40–59. D. The Prior Art Petitioner relies on the following prior art: PCT Publication No. WO 01/76154 A2 to Marchand, published Oct. 11, 2001 (Ex. 1005, "Marchand"), which claims priority to U.S. Application No. 09/541,529, filed Apr. 3, 2000 (Ex. 1006, "Marchand Priority"); Handley et al., Request For Comments 2543 SIP: Session Initiation Protocol, THE INTERNET SOCIETY, March 1999 (Ex. 1007, "RFC 2543"); U.S. Patent No. 6,836,474 B1 to Larsson, filed Aug. 31, 2000, issued Dec. 28, 2004 (Ex. 1008, "Larsson"); K. Arnold et al., The Jini™ Specification, Addison- Wesley, June 1, 1999 (Ex. 1009, "JINI Spec."); U.S. Patent No. 6,560,642 B1 to Nurmann, filed Oct. 23, 1999, issued May 6, 2003 (Ex. 1010, "Nurmann"); and U.S. Patent No. 6,771,635 B1 to Vilander, filed Mar. 27, 2000, issued Aug. 3, 2004 (Ex. 1011, "Vilander"). 5 6 IPR2015-01444 Patent 7,039,033 B2 E. The Asserted Grounds We instituted this proceeding on the following grounds of unpatentability (Dec. on Inst. 26): References Basis Claim(s) Challenged Marchand, Nurmann, 35 U.S.C. § 103(a) 1, 4, 7, 14 and Vilander Marchand, Nurmann, 35 U.S.C. § 103(a) 5 Vilander, and RFC 2543 Marchand, Nurmann, 35 U.S.C. § 103(a) 6, 23 Vilander, and Larsson Marchand, Nurmann, 35 U.S.C. § 103(a) 12, 15, 22, Vilander, and JINI Spec. 34, 39, 40, 42, 46 Marchand, Larsson, and 35 U.S.C. § 103(a) 25, 28 JINI Spec. F. Claim Interpretation In an inter partes review, we construe claims by applying the broadest reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the broadest reasonable interpretation standard, and absent any special definitions, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or phrases must be set forth "with reasonable clarity, deliberateness, and precision." In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Only those terms which are in controversy need be construed, and only to the extent 6 6 IPR2015-01444 Patent 7,039,033 B2 necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In our Decision on Institution, we determined that no claim terms required construction. Dec. on Inst. 6–7. Based on our review of the complete record, we maintain our determination that no constructions are necessary, with the exception of the term "thin terminal" in claims 7 and 46. The parties' arguments require us to consider whether a printer is commensurate with the broadest reasonable interpretation of "thin terminal." See Pet. 30–31; PO Resp. 42–43; Pet. Reply 18–20. The '033 patent describes "thin terminals" as having "a relatively low power central processor and operating system" and as being "mainly used as peripherals to an Application server in a PAN." Ex. 1001, 5:2–5. The main tasks of a thin terminal are described as "user interaction, rendering output for a user and providing an Application server with a user's input." Id. at 5:5–7. Examples of thin terminals provided in the '033 patent include a watch and a messaging terminal. Id. at 5:5–7. Furthermore, the '033 patent contrasts thin terminals with smart terminals having "a relatively powerful central processor, operating system and applications," such as "a computer notebook and PDA." Id. at 4:62–5:2. In describing a messaging terminal in one embodiment, the '033 patent states that the terminal "has no embedded application code or data." Id. at 10:18–21. Petitioner contends a printer is a thin terminal because, at least, a printer "has a low power central processor and operating system relative to a laptop computer or PDA." Pet. 31 (citing Ex. 1003 ¶ 25) (internal quotation omitted). We agree with Petitioner, and we additionally observe that a printer is a peripheral utilized for rendering user output, which is consistent with the Specification's description of a thin terminal. We also agree with 7 6 IPR2015-01444 Patent 7,039,033 B2 Petitioner that the Specification's reference to "no embedded application code or data" (Ex. 1001, 10:18–21) does not preclude a printer with application code and/or data from being a thin terminal, because the '033 patent also describes the thin terminal locating, downloading, and executing software. Pet. 19 (citing Ex. 1001, 10:13–25). As such, we determine the "thin terminal" recited in claims 7 and 46 encompasses a printer.1 II. ANALYSIS A. Obviousness Ground Based on Marchand, Nurmann, and Vilander Petitioner contends claims 1, 4, 7, and 14 would have been obvious over the combination of Marchand, Nurmann, and Vilander. Pet. 11–29. IXI disputes Petitioner's contention. PO Resp. 16–43. 1. Principles of Law A claim is unpatentable under 35 U.S.C. § 103(a)2 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 1 Although we acknowledge the different standards for claim interpretation before us and before the district courts, IXI's infringement contentions in the co-pending litigation provide additional extrinsic support for our determination. See Pet. 31 (citing Ex. 1012, 20, 45; Ex. 1013, 35, 70). In particular, IXI contends that a printer is a type of "thin terminal" in its infringement case. See id. 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) ("AIA"), amended 35 U.S.C. §§ 102 and 103. Because the '033 patent has an effective filing date before the effective date of the applicable AIA amendments, throughout this Decision we refer to the pre- AIA versions of 35 U.S.C. §§ 102 and 103. 8 6 IPR2015-01444 Patent 7,039,033 B2 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). We also recognize that prior art references must be "considered together with the knowledge of one of ordinary skill in the pertinent art." Paulsen, 30 F.3d at 1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). We analyze Petitioner's obviousness grounds with the principles identified above in mind. 2. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the "type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field." In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). In addition, the prior art of record in this proceeding—namely, Marchand, Nurmann, Vilander, RFC 2543, Larsson, and JINI Spec.—is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Petitioner contends a person of ordinary skill in the art would have had a Master[] of Science Degree (or a similar technical Master's Degree, or higher degree) in an academic 9 6 IPR2015-01444 Patent 7,039,033 B2 area emphasizing electrical engineering, computer engineering, or computer science with a concentration in communication and networking systems or, alternatively, a Bachelor's Degree (or higher degree) in an academic area emphasizing electrical or computer engineering and having two or more years of experience in communication and networking systems. Pet. 7–8. Petitioner's contention is supported by the testimony of Dr. Kiaei, who bases his testimony on his "experience working in industry and academia, with undergraduate and postgraduate students, with colleagues from academia, and with engineers practicing in industry." Ex. 1003 ¶¶ 15– 16. IXI does not dispute Petitioner's definition of the level of ordinary skill in the art, and, in fact, IXI applies it in IXI's Patent Owner Response. PO Resp. 8; see also Ex. 2301 ¶ 16 (IXI's declarant, Dr. Mandayam, applying same definition). Accordingly, we apply Petitioner's definition of the level of ordinary skill in the art for purposes of this Decision. We further observe that Petitioner's proposed definition comports with the qualifications a person would need to understand and implement the teachings of the '033 patent and the prior art of record. 3. Marchand Marchand is a published international patent application, and Petitioner asserts Marchand's priority date under 35 U.S.C. § 102(e) is April 3, 2000, the date of filing for a prior national application (i.e., Marchand Priority) in the United States. See Pet. 4–5. IXI does not contest Petitioner's priority date assertion. Therefore, for purposes of this decision, we find Marchand qualifies as prior art to the '033 patent under 35 U.S.C. § 102(e) because April 3, 2000, predates the May 7, 2001, filing date of the '033 patent. 10 6 IPR2015-01444 Patent 7,039,033 B2 Marchand relates to "an ad-hoc network and a gateway that provides an interface between external wireless IP networks and devices in the ad-hoc network." Ex. 1005, 1:5–7. Figure 3 of Marchand is reproduced below: Figure 3 illustrates "an ad-hoc network 30 utilizing Bluetooth, IP [Internet Protocol], and JINI technologies. . . to enable the use of a gateway mobile phone." Id. at 7:7–9. Ad-hoc network 30 (also called "Bluetooth Piconet (30)") includes laptop computer 31, printer 32, and mobile phone 33, which can communicate via Bluetooth radio link 34. Id. at Abstract, 7:9–11. Mobile phone 33 acts "as a gateway between the ad-hoc network and a 3G wireless IP network 35 such as the General Packet Radio Service (GPRS) network." Id. at 7:12–14. Regarding IP address translation, IP packets from the GPRS are received at mobile phone 33 through its public IP address, and then are forwarded to the private IP address of the device on ad-hoc network 30. Id. at 7:14–16. Address translation in the opposite direction is handled similarly. Id. at 7:16–17. 11 6 IPR2015-01444 Patent 7,039,033 B2 "JINI (Java) technology is utilized to publish and share services between the devices" in network 30, and this technology "provid[es] the capability for an application 21 to discover, join, and download services 22 from a JINI LUS [Lookup Service]." Id. at 6:3–4, 6:21–22. "The LUS contains a list of available services provided by other devices on the network." Id. at 3:11–12. Devices in the network "announce not only value-added services, but also their attributes and capabilities to the network," whereupon these services are published through the LUS. Id. at 3:12–15, 10:17–18. The LUS also provides interfaces for services that are available to the devices in the network. Id. at 3:13–14, 8:12–15. Figure 4 of Marchand is reproduced below. Figure 4 depicts "a simplified functional block diagram of a connection between two devices such as the laptop computer 31 and the mobile phone 33 utilizing the ad-hoc network 30 of FIG. 3." Id. at 7:26–28. Gateway mobile phone 33 publishes in the Bluetooth piconet the call control services that it offers utilizing JINI LUS 46. 12 6 IPR2015-01444 Patent 7,039,033 B2 4. Nurmann Nurmann relates to establishing an "Internet Protocol ('IP') network with several IP hosts and with an IP gateway for connecting the IP network to the [I]nternet." Ex. 1010, 1:9–12. Acting as a Dynamic Host Configuration Protocol (DHCP) client, the IP gateway determines whether a DHCP server is present in the IP network. Id. at 2:62–67. If a DHCP server is present, "[t]he allocation of the IP addresses to the IP hosts functioning as DHCP clients takes place from the DHCP server." Id. at 2:6–27. "If there is no DHCP server[,] the IP gateway is activated automatically as [a] DHCP server," which "allocates IP addresses and IP network masks to the IP hosts in a standard manner." Id. at 2:50–57. 5. Vilander Vilander relates to "the allocation of IP addresses to mobile terminals and in particular to the allocation of a host part of an IP address to a mobile terminal." Ex. 1011, 1:6–8. Vilander teaches that, when a mobile terminal requests Internet access, the request is directed to a Gateway General Packet Radio Service (GPRS) Switching Node (GGSN), which may act as an Internet Access Server. Id. at 1:48–52. 6. Claim 1 Petitioner argues Marchand teaches a "first wireless device, in a short distance wireless network, having a software component to access information from the Internet by communicating with a cellular network in response to a first short-range radio signal," as recited in claim 1. Pet. 21– 23. Petitioner maps Marchand's mobile phone 33 to the recited "first wireless device," and Marchand's ad-hoc Bluetooth piconet to the recited 13 6 IPR2015-01444 Patent 7,039,033 B2 "short distance wireless network." Id. at 21–22 (citing Ex. 1005, 1:29–31, 6:23–25, 7:12–14). Regarding the recited "second wireless device," Petitioner maps "[t]he devices in the ad-hoc Bluetooth Piconet network 30 [that] send signals to the mobile phone 33 over short-range radio links." Id. at 23–24 (citing Ex. 1003 ¶¶ 19, 25–27; Ex. 1005, 7:9–11, 7:18–21). As such, Petitioner maps Marchand's laptop computer 31 and/or printer 32 to the "second wireless device." Id.; Ex. 1005, 7:9–11, Fig. 3. Regarding "access[ing] information from the Internet by communicating with a cellular network in response to a first short-range radio signal," Petitioner contends the IP packets sent among devices in Marchand's Bluetooth piconet over a short-range radio link correspond to the "first short-range radio signal." Pet. 22–23. Petitioner further contends Marchand's disclosure of connecting devices "to an IP-based network such as the Internet" and of "data going out of the Piconet to the GPRS network" teaches the recited Internet access. Id. at 22–24 (citing Ex. 1003 ¶ 27; Ex. 1005, 7:14–17, 13:12–14). According to Petitioner, "Marchand discloses a network address translator to translate between a first IP address and a second IP address" based on Marchand's description of translating and forwarding between public and private IP addresses. Id. at 24 (citing Ex. 1003 ¶ 27; Ex. 1005, 7:14–17, 10:31–11:2). Petitioner contends an ordinarily skilled artisan would have modified Marchand in view of Vilander "such that the public IP address of the mobile phone gateway 33 was provided by the cellular network 35." Id. at 18 (citing Ex. 1003 ¶ 46). In particular, Petitioner cites Vilander's implementation of a device on the cellular network, such as a GGSN, to allocate the public IP address to the gateway. Id. (citing Ex. 1011 at 1:48–52, 1:57–59). Petitioner further contends an ordinarily skilled 14 6 IPR2015-01444 Patent 7,039,033 B2 artisan would have modified Marchand in view of Nurmann "such that the mobile gateway provides the private IP addresses to the devices on the network 30." Id. (citing Ex. 1003 ¶ 47). Specifically, Petitioner proposes implementing Nurmann's DHCP server on Marchand's mobile phone 33 to accomplish IP addressing in Marchand's local network 30. Id. (citing Ex. 1010, 4:51–56). Petitioner associates these citations from Vilander and Nurmann with the recited "network address translator software component" of claim 1. See id. at 24–25. Petitioner maps Marchand's JINI Lookup Service (LUS) to the recited "service repository software component [that] identif[ies] a service provided by the second wireless device" of claim 1. Pet. 25–26 (citing Ex. 1003 ¶ 28; Ex. 1005, 3:11–12, 5:13–14). Claim 1 requires this "service repository software component" to be part of the "software component," which is itself part of the "first wireless device." Ex. 1001, 15:42–43, 15:57–59. Dr. Kiaei acknowledges "Marchand does not expressly state that the JINI LUS is located on mobile phone 33." Ex. 1003 ¶ 37. Petitioner nonetheless contends an ordinarily skilled artisan "would appreciate that Marchand implicitly teaches an implementation in which the JINI LUS is located in the mobile phone 33." Pet. 26 (citing Ex. 1003 ¶¶ 37–41). In particular, Petitioner cites Marchand's description of the mobile phone having "an interface/Application Programming Interface (API) . . . [that] is downloaded to the Bluetooth device involved in an external wireless call in order to have the device behave as a slave device toward the mobile phone which is the master." Ex. 1005, 6:27–31; see also Pet. 26–27 (citing same). Relying on testimony from Dr. Kiaei, Petitioner contends an ordinarily skilled artisan "would [have] underst[ood] that Marchand's API corresponds to a JINI 15 6 IPR2015-01444 Patent 7,039,033 B2 proxy object" and that such "proxy objects are downloaded from a LUS" in JINI. Pet. 27 (citing Ex. 1003 ¶ 38). Petitioner also highlights Marchand's description "that all the devices in the ad-hoc Bluetooth Piconet network 30 publish their services when the mobile phone 33 connects to the ad-hoc Bluetooth Piconet network 30 and cellular network 35." Id. (citing Ex. 1003 ¶ 39; Ex. 1005, 10:12–18). Because a LUS "identifies services provided by devices on the network 30," Petitioner contends an ordinarily skilled artisan would have concluded from this description that Marchand teaches a JINI LUS located on mobile phone 33. Id. at 27–28 (citing Ex. 1003 ¶ 39). Petitioner additionally contends an ordinarily skilled artisan would have recognized that implementing Marchand's LUS in mobile phone 33—the gateway device to the cellular network—would best allow for the other devices in the ad-hoc Bluetooth piconet to join or leave without loss of connectivity between the piconet and the cellular network. Pet. 28 (citing Ex. 1003 ¶ 40). Thus, Petitioner has established that Marchand, Vilander, and Nurmann teach every limitation of claim 1. Petitioner, as supported by Dr. Kiaei's testimony, also has established that a person of ordinary skill in the art would have had reason to combine the teachings of Marchand, Vilander, and Nurmann to achieve the system recited in claim 1. See Pet. 17–20; Ex. 1003 ¶¶ 46–51. We now consider IXI's arguments in opposition to Petitioner's obviousness analysis. a. How an Ordinarily Skilled Artisan Would Have Interpreted Marchand's Teachings Related to the LUS IXI disputes that Marchand teaches a LUS located on mobile phone 33, because IXI contends an ordinarily skilled artisan "would not understand 16 6 IPR2015-01444 Patent 7,039,033 B2 Marchand to disclose that its JINI LUS is on Marchand's cellular-enabled mobile phone 33, and. . . would have no motivation to modify Marchand to place the JINI LUS on the mobile phone in contradistinction to Marchand's explicit teachings to the contrary." PO Resp. 26–27. In particular, IXI contends Petitioner and its declarant wrongly analyzed Marchand's Bluetooth piconet. See id. at 12–15, 27–36. IXI's contention is based on Dr. Mandayam's testimony regarding a Bluetooth scatternet, which is formed when a Bluetooth device participates concurrently in two or more piconets. See Ex. 2301 ¶¶ 28–30. Figure 4 from Dr. Mandayam's Declaration is reproduced below Id. ¶ 30. Figure 4 depicts separate piconets A (in blue) and B (in red) applied to the devices in Marchand's ad-hoc network. Id. ¶ 31. Dr. Mandayam explains: [T]he laptop computer is the master (MA) of piconet A, with the mobile phone (SA) and the printer (SA) as slave devices in piconet A. The mobile phone is the master of piconet B (MB), with only the laptop (SB) as its slave device. Both the laptop and the mobile phone simultaneously act as master and slave devices on independent piconets, with piconet B, being a "sub- piconet" within piconet A. Id. 17 6 IPR2015-01444 Patent 7,039,033 B2 Applying Dr. Mandayam's explanation to Marchand, IXI contends an ordinarily skilled artisan "would [have] appreciate[d] that the JINI LUS 46 must be located on the master device of the Bluetooth piconet, which Marchand discloses is a laptop as clearly shown on Marchand's Figure 4." PO Resp. 28 (citing Ex. 2301 ¶¶ 54–55). IXI further contends "the gateway mobile phone is the master of a sub-piconet within Marchand's Bluetooth piconet." Id. at 27. This purported sub-piconet, in which "the gateway mobile phone acts as the master device with the requesting device as its slave," is formed "[w]hen a device, such as a laptop, seeks to use the call control service offered by Marchand's gateway mobile phone." Id. at 30 (citing Ex. 2301 ¶¶ 54–55). In this case, "the gateway mobile phone sends the requesting device an API which allows the gateway mobile phone to establish its own, independent Bluetooth piconet. . . within the main Bluetooth piconet that connects all of the devices in the network." Id. (citing Ex. 1005, 10:25–29; Ex. 2301 ¶ 54). As such, IXI seeks to distinguish Marchand's teachings on publishing this call control API from Marchand's other teachings on publishing services to a JINI LUS upon entry of the mobile phone into the piconet. Id. at 32 (citing Ex. 2301 ¶ 56). IXI's arguments rely heavily on Marchand's Figure 4, which appears to dispose a LUS within the laptop computer. Id. at 28 (presenting annotated version of Marchand's Fig. 4). Based on this drawing figure, and in consideration of IXI's sub-piconet theory, IXI argues that an ordinarily skilled artisan would not have had a reason to dispose a LUS within Marchand's gateway mobile phone. See id. at 26–37. We do not agree Marchand's disclosure should be read so narrowly, however, particularly because obviousness is determined from the perspective of "a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. 18 6 IPR2015-01444 Patent 7,039,033 B2 § 103(a); see also Dann v. Johnston, 425 U.S. 219, 230 (1976) ("[T]he mere existence of differences between the prior art and an invention does not establish the invention's nonobviousness."). Petitioner presents evidence showing that an ordinarily skilled artisan would have considered Marchand's call control API to be a JINI proxy object. See Pet. 26–27 (citing Ex. 1003 ¶ 38; Ex. 1005, 6:27–7:2). In turn, Petitioner and Dr. Kiaei cite the JINI Spec. as teaching that such proxy objects are stored in a LUS for use when a client wants access to a service.3 See id. (citing Ex. 1003 ¶ 38; Ex. 1009, 5–12). Finally, Petitioner cites Marchand's claim 6 as explicitly reciting "a JINI call control API that is downloaded from the gateway to the other devices on the ad-hoc network." See id. at 27 (citing Ex. 1005, 15:25–27). Petitioner concludes an ordinarily skilled artisan would have would have understood Marchand "as implicitly describing an implementation in which the JINI LUS, which identifies services provided by devices on the network 30, is located on the mobile phone gateway 33." Id. (citing Ex. 1003 ¶ 38). We are persuaded by this rationale, which establishes how an ordinarily skilled artisan would have read Marchand. In addition, Marchand does not expressly prevent the LUS from being disposed on the gateway mobile phone. We agree with Petitioner's 3 We may consider record evidence outside of the asserted ground, such as the JINI Spec., that demonstrates the knowledge and perspective of one of ordinary skill in the art, particularly when it explains why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed invention. See Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015); Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). 19 6 IPR2015-01444 Patent 7,039,033 B2 assessment that Marchand's Figure 4 is merely exemplary and that nothing in Marchand limits or precludes the inclusion of a LUS in the gateway mobile phone. See Pet. Reply 11–12. Furthermore, one of ordinary skill in the art would have known, at least, that it was possible to have multiple LUSs in a network. See Ex. 1009, 5 ("Each Jini system is built around one or more lookup services." (original emphasis omitted and emphasis added)).4 If multiple LUSs are possible, and if a LUS must be disposed on a master device, as IXI contends (see, e.g., PO Resp. 28 (citing Ex. 2301 ¶¶ 54–55)), then Marchand's teaching that a gateway mobile phone is a master (see Pet. 13–14 (citing Ex. 1005, 8:2–2); Pet. Reply 3 (citing Ex. 1005, 3:22–27, 7:26–31, 8:1–3)) supports Petitioner's contention that Marchand suggests disposing a LUS in the gateway mobile phone. We also are not persuaded by Dr. Mandayam's testimony and IXI's arguments that the LUS must be disposed on a device that is "intrinsic to the Piconet" and that is "not the gateway." Ex. 1019, 16:10–14; Tr. 81:1–86:2. The notion of an "intrinsic" device is not apt in Marchand, which is expressly directed to ad-hoc networks. See, e.g., Ex. 1005, 7:7–11, Fig. 3 (including gateway mobile phone in discussion of described "ad-hoc network"). Accordingly, based on the arguments before us, we determine that an ordinarily skilled artisan's understanding of Marchand would not have been limited by IXI's sub-piconet theory in the way suggested by IXI. Therefore, we determine that Marchand would have informed an ordinarily skilled artisan that the "service repository software component" may be disposed in the "first wireless device." 4 Petitioner makes this point citing a reference that is subject to IXI's motion to exclude, see Pet. Reply 11–12 (citing Ex. 1016), but the same point is supported by the JINI Spec. 20 6 IPR2015-01444 Patent 7,039,033 B2 b. Marchand's Teachings on a Network Address Translator IXI also disputes that Marchand teaches a "network address translator software component" located on mobile phone 33, as required by claim 1. PO Resp. 37. In particular, IXI contends that "Marchand discloses that an API should be used to translate between a public IP address and a private IP address." Id. (citing Ex. 1005, 11:17–12:3; 15:29–31). IXI cites Marchand's claim 7, which recites the "JINI call control API includes means for deconflicting public and private IP addresses when devices in the ad-hoc network are utilizing real-time applications over the wireless IP network." Id. (quoting Ex. 1005, 15:29–31). Dr. Mandayam testifies that an ordinarily skilled artisan "would have understood that the use of an API to translate between public and private addresses is significantly different than using a NAT [network address translator]."5 Ex. 2301 ¶ 64. IXI further contends Marchand discourages utilizing a NAT in the gateway mobile phone and encourages using an API translator to avoid the problem of IP address mismatch "for real-time applications such as VoIP [Voice over Internet Protocol]." PO Resp. 39 (quoting Ex. 1005, 11:26–12:2; citing Ex. 2301 ¶ 66). We do not agree with IXI's characterization of Marchand's teachings on address translation, however. As noted by Petitioner, Marchand describes forwarding IP packets received at the gateway mobile phone through a public IP address to a destination device in the piconet having a 5 Even though both parties reference a network address translator, Marchand actually uses the acronym "NAT" to refer to a "National Access Translator." See Ex. 1005, 11:23. Given an opportunity at the oral hearing to explain if there were any meaningful differences in this terminology, IXI's counsel did not offer any. See Tr. 36:11–37:8. 21 6 IPR2015-01444 Patent 7,039,033 B2 private IP address, and vice versa. Pet. 24 (citing Ex. 1003 ¶ 27; Ex. 1005, 7:14–17, 10:31–11:2). In addition, Dr. Mandayam testifies that address translation is done at the gateway in Marchand. Pet. Reply 13 (citing Ex. 1018, 147:5–7, 152:25–153:1). Accordingly, and regardless of whether this address translation is performed by a NAT or an API translator, Marchand teaches a network address translator software component located on the gateway mobile phone. See Pet. Reply 14–15. Furthermore, we agree with Petitioner that the use of an API translator for certain real-time applications would have been viewed as "as a supplement to NAT [and] not a substitute for NAT." Pet. Reply 14 (citing Ex. 1003 ¶ 27). For these reasons, Petitioner has established that Marchand teaches a "network address translator software component." c. Rationale for Modifying Marchand in View of Vilander and Nurmann IXI disputes Petitioner's contention that, in view of Vilander, an ordinarily skilled artisan "would have modified Marchand's system such that the public IP address of the mobile phone gateway 33 was provided by the cellular network 35." PO Resp. 40 (quoting Pet. 17–18). IXI argues that Marchand and Vilander do not indicate a need for the cellular network to provide a public IP address for the gateway mobile phone. Id. (citing Ex. 2301 ¶ 70). Nevertheless, we agree with Petitioner that "using Vilander's address allocation in Marchand would have amounted to nothing more than the use of a known technique to improve similar devices in the same way or the combination of prior art elements according to known methods to yield predictable results." Pet. Reply 15 (citing, inter alia, KSR v. Teleflex, 550 U.S. 398, 417 (2007)); see also Pet. 19 (citing same). 22 6 IPR2015-01444 Patent 7,039,033 B2 Although Marchand describes gateway mobile phone as having "a public IP address recognized in the wireless IP network," Marchand does not explicitly describe how the public IP address is assigned. Pet. Reply 16 (quoting Ex. 1005, 4:23–30). In light of this, Petitioner identifies evidence that Vilander's GGSN would have improved Marchand by allocating the public IP address to Marchand's gateway mobile phone 33. Pet. 18 (citing Ex. 1003 ¶ 46; Ex. 1011, 1:48–52, 1:57–59). IXI likewise disputes Petitioner's contention that, in view of Nurmann, an ordinarily skilled artisan "would have modified [Marchand's] mobile gateway 33 such that the mobile gateway provides the private IP addresses to the devices on the network 30." PO Resp. 40 (quoting Pet. 18). According to IXI, a person of ordinary skill in the art "would have understood that the master device, containing the JINI LUS, . . . provide[s] the private IP addresses," so that person "would not have been motivated to require a slave device [i.e., the mobile gateway] in the network to assign private IP addresses." PO Resp. 40 (citing Ex. 2201 [sic, 2301] ¶ 71). For the same reasons expressed above, however, we determine that an ordinarily skilled artisan would not have read Marchand to preclude the gateway from being a master device with a LUS. See supra § II.A.4.a. d. Secondary Considerations of Nonobviousness IXI did not put forth any evidence of secondary considerations of nonobviousness. e. Conclusion Regarding Claim 1 Based on all of the evidence of record, we determine, by a preponderance of the evidence, that the subject matter of claim 1 would have 23 6 IPR2015-01444 Patent 7,039,033 B2 been obvious over the combination of Marchand, Vilander, and Nurmann under 35 U.S.C. § 103(a). 7. Claims 4, 7, and 14 Claim 4 depends from claim 1 and recites "the service repository software component identifies whether the service is available at a particular time." Ex. 1001, 16:4–6. Building on Petitioner's analysis for claim 1, in which Marchand's LUS corresponds to the recited "service repository software component," Petitioner contends "Marchand teaches that '[t]he LUS contains a list of available services provided by other devices on the network.'" Pet. 29 (quoting Ex. 1005, 3:11–12) (emphasis added by Petitioner). Claim 7 depends from claim 1 and recites "the second wireless device is a thin terminal." Ex. 1001, 16:14–15. Mirroring its unpatentability contentions for claim 1, Petitioner maps Marchand's printer 32 to the recited "second wireless device" that is a "thin terminal." Pet. 30–31 (citing, inter alia, Ex. 1005, 7:9–11). As stated above, we determine a printer is a type of "thin terminal." See supra § I.F. Claim 14 depends from claim 1 and recites "the second wireless device includes an application software component that registers an availability of the service with the service repository software component." Ex. 1001, 16:34–36. Petitioner cites Marchand for teaching that "[o]ther devices (e.g., printer 32) on [Marchand's] ad-hoc Bluetooth Piconet network 30 may use their respective Java and JINI layers 19 and 20 to discover, join, and download services 22 from [the] JINI LUS." Pet. 31–32 (citing Ex. 1005, 6:19–22, 7:23–25, 8:11–28) (internal quotation omitted). Petitioner contends an ordinarily skilled artisan "would [have] underst[ood] 24 6 IPR2015-01444 Patent 7,039,033 B2 that one or more software elements, such as Marchand's Java technology layer 19, JINI technology layer 20, and any other application (e.g., application 21) in a network 30 device. . . help [to] implement registration of an availability of a service with the LUS." Id. at 32; Ex. 1003 ¶¶ 28, 32. Therefore, having considered Petitioner's unpatentability contentions and supporting evidence, we are persuaded that Petitioner presents sufficient evidence to support a finding that these prior art references teach the claimed subject matter recited in claims 4, 7, and 14. For the same reasons as above with respect to claim 1, we also are satisfied that Petitioner has presented sufficient reasons for the combination, as supported by Dr. Kiaei's testimony. See Pet. 17–20; Ex. 1003 ¶¶ 46–51. Furthermore, regarding claims 4 and 14, IXI relies on its same arguments from claim 1 (see PO Resp. 41), which we do not find persuasive for the reasons mentioned above. For claim 7, IXI's arguments pertain to claim interpretation of the term "thin terminal," (see id. at 42–43), and we already have considered those arguments above. See supra § I.F. Therefore, based on the entire record before us, we conclude Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claims 4, 7, and 14 would have been obvious over the combination of Marchand, Vilander, and Nurmann. B. Obviousness Ground Based on Marchand, Nurmann, Vilander, and RFC 2543 Petitioner contends claim 5 would have been obvious over the combination of Marchand, Nurmann, Vilander, and RFC 2543. Pet. 32–35. IXI disputes Petitioner's contention. PO Resp. 43–45. 25 6 IPR2015-01444 Patent 7,039,033 B2 1. RFC 2543 RFC 2543 is an Internet standards document related to Session Initiation Protocol (SIP), which is "an application-layer control (signaling) protocol for creating, modifying and terminating sessions with one or more participants." Ex. 1007, 1. An SIP-capable "client queries the DNS [Domain Naming Service] server for address records for the host portion of the Request-URI [Uniform Resource Identifier]." Id. at 13. Such a client "MAY cache a successful DNS query result." Id. 2. Claim 5 Claim 5 depends from claim 1 and recites "the software component includes a domain naming service ('DNS') software component to translate between a human readable name and a second Internet Protocol ('IP') address." Ex. 1001, 16:7–10. Petitioner cites RFC 2543's teachings regarding a client querying a DNS server to obtain and cache an IP address corresponding to a human-readable name, such as "company.com." Pet. 33 (citing Ex. 1003 ¶¶ 54–55; Ex. 1007, 13, 146). Petitioner proposes adding "RFC 2543's disclosure of DNS query and response. . . with Marchand's SIP client in the combination of Marchand, Nurmann, and Vilander to implement full SIP capabilities (e.g., DNS) in Marchand's SIP client and comply with SIP standards." Id. at 34 (citing Ex. 1003 ¶ 57). According to Petitioner, this would be useful when a device in Marchand's piconet requests "access to the Internet (e.g., a web page, online call)." Id. at 33–34 (citing Ex. 1003 ¶ 56). Supported by Dr. Mandayam's testimony, IXI argues that devices on Marchand's piconet access the cellular network through a call control client, and Marchand does not teach that the client provides access to a webpage. 26 6 IPR2015-01444 Patent 7,039,033 B2 Id. at 44–45; Ex. 2301 ¶¶ 74–75.6 IXI further notes that "Marchand does not teach that the devices in the Bluetooth piconet have human-readable names." Id. at 45 (drawing a contrast with Ex. 1001, 8:25–29). IXI also argues an ordinarily skilled artisan would not have been motivated to add such unnecessary functions. Id. As noted by Petitioner, however, Marchand's gateway mobile phone includes a second interface/API, depicted as SIP client 42 in Figure 4, which enables the use of the full SIP client capabilities. Pet. 33; Pet. Reply 20 (both citing Ex. 1003 ¶ 54; Ex. 1005, 8:5–7, 9:20–30). In light of this teaching, we are persuaded that an ordinarily skilled artisan would have known to implement RFC 2543's disclosure of DNS query, response, and caching in Marchand's SIP client 42. See Ex. 1003 ¶¶ 54, 57. We further agree with Petitioner that this amounts to using a known technique to improve similar devices in the same way to yield predictable results. See Pet. 34; Pet. Reply 21 (both citing KSR, 550 U.S. at 417). For these reasons, we are satisfied that Petitioner has presented sufficient reasons for the combination of Marchand, Nurmann, Vilander, and RFC 2543. We also are persuaded that Petitioner presents sufficient evidence to support a finding that RFC 2543 teaches the additional limitation recited in claim 5. Finally, to the extent IXI again relies on its arguments for claim 1 (see PO Resp. 44), we do not find them persuasive for the same reasons mentioned above. Accordingly, based on the complete trial record, we conclude Petitioner has demonstrated by a preponderance of the evidence 6 Although IXI cites paragraphs 75–76 of Dr. Mandayam's declaration, the context makes clear that IXI intended to cite paragraphs 74–75. 27 6 IPR2015-01444 Patent 7,039,033 B2 that the subject matter of claim 5 would have been obvious over the combination of Marchand, Vilander, Nurmann, and RFC 2543. C. Obviousness Ground Based on Marchand, Nurmann, Vilander, and Larsson Petitioner contends claims 6 and 23 would have been obvious over the combination of Marchand, Nurmann, Vilander, and Larsson. Pet. 35–39. IXI disputes Petitioner's contention. PO Resp. 46–48. 1. Larsson Larsson "relates to WAP [Wireless Application Protocol] sessions between a mobile terminal and a WAP gateway, and more particularly, to the organization of protocol layers in a WAP gateway." Ex. 1008, 1:25–27. Figure 1 of Larsson is reproduced below: Figure 1 illustrates mobile terminal 10, i.e., "a portable laptop computer, personal digital assistant (PDA), mobile telephone, pager, etc.," accessing private network 15 via WAP gateway 30. Id. at 2:31–46. Private network 15 may be a corporate network or a virtual private network (VPN). Id. at 2:47–55. The mobile terminal 10 obtains access to access server 25 via wireless link 26 to Public Land Mobile Network (PLMN) 20. Id. at 2:40– 28 6 IPR2015-01444 Patent 7,039,033 B2 44. The WAP gateway 30 includes first stage proxy 35 and second stage proxy 40, which are "functionally separated" by firewall 37. Id. at 2:62–64, 3:1–7. 2. Claims 6 and 23 Claim 6 depends from claim 1 and recites "the software component includes a security software component to control access between the cellular network and the first wireless device." Ex. 1001, 16:11–13. Petitioner proposes adding Larsson to the combination of Marchand, Nurmann, and Vilander for teaching the security software component. Pet. 37. Petitioner contends an ordinarily skilled artisan would have "include[d] security software components such as Larsson's firewall 37, first stage proxy 35, and second stage proxy 40 in Marchand's mobile phone gateway 33 which is situated between two networks (e.g., Marchand's cellular network 35 and ad-hoc Bluetooth Piconet network 30)." Id. (citing Ex. 1003 ¶ 61). Petitioner also contends an ordinarily skilled artisan would have been motivated to add Larsson's firewall 37, first stage proxy 35, and second stage proxy 40 in Marchand's gateway 33 to provide secure access to Marchand's piconet from the cellular network. Id. (citing Ex. 1003 ¶ 62). According to Petitioner, this would result in more efficient authentication because such authentication need only be performed once at the time of the first network access request. Id. at 37–38 (citing Ex. 1003 ¶ 62; Ex. 1008, 2:8–15). IXI contends Larsson does not teach "that the WAP gateway can be incorporated in the mobile terminal 10 or even that the WAP gateway is on a local area network with mobile terminal 10." PO Resp. 48 (citing Ex. 2201 ¶ 78). We agree with Petitioner, however, that Petitioner's proposed 29 6 IPR2015-01444 Patent 7,039,033 B2 combination seeks to add Larsson's security components to Marchand's gateway mobile phone, not Larsson's own mobile terminal 10. See Pet. Reply 22. As such, IXI misapprehends the proposed combination. Furthermore, we are persuaded by Petitioner's showing that Larsson and Marchand both involve a gateway situated between two networks such that an ordinarily skilled artisan would have known to apply Larsson's security features to Marchand's similar topology. See Pet. 37 (citing Ex. 1003 ¶ 61); Pet. Reply 23 (citing Ex. 1003 ¶¶ 58–61; Ex. 1008, 1:8, 1:67–2:1, 2:30–54, Fig. 1). We are further persuaded by Petitioner's contention that an ordinarily skilled artisan would have been motivated by the efficiency gained through performing authentication only once at the time of the first request for network access. See Pet. 37–38 (citing Ex. 1003 ¶ 62; Ex. 1008, 2:8–15). Claim 23 depends from claim 1 and recites "the first wireless device further includes a virtual private network ('VPN') software component." Ex. 1001, 16:59–61. Regarding the recited VPN, Petitioner contends the asserted 4-way obviousness combination "discloses a second stage proxy that resides within the VPN side of a firewall in a gateway cellular phone, and authenticates access requests from users." Pet. 39 (citing Ex. 1003 ¶ 59; Ex. 1008, 3:1–7; 4:13–22. This is supported by Larsson's teachings on private network 15 potentially being a VPN; because the second stage proxy interacts with the VPN, the second stage proxy acts as the recited "virtual private network. . . software component." See 1003 ¶¶ 58–59; Ex. 1008, 2:47–55, Fig. 1. Finally, to the extent IXI relies on the same arguments from claim 1 relative to claims 6 and 23 (PO Resp. 46), we find them unpersuasive for the same reasons mentioned above. 30 6 IPR2015-01444 Patent 7,039,033 B2 Accordingly, we are persuaded that Petitioner presents sufficient evidence to support a finding that the combination of Marchand, Nurmann, Vilander, and Larsson teaches the subject matter recited in claims 6 and 23 (see Pet. 38–39), and that there are sufficient reasons for the combination (see id. at 37–38). Therefore, based on the entire record before us, we conclude Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claims 6 and 23 would have been obvious over the combination of Marchand, Nurmann, Vilander, and Larsson. D. Obviousness Ground Based on Marchand, Nurmann, Vilander, and JINI Spec. Petitioner contends claims 12, 15, 22, 34, 39, 40, 42, and 46 would have been obvious over the combination of Marchand, Nurmann, Vilander, and JINI Spec. Pet. 39–55. IXI disputes Petitioner's contention. PO Resp. 48–56 1. JINI Spec. The JINI Spec. is a textbook directed to the Jini architecture, which is "designed for deploying and using services in a network." Ex. 1009, xix. The JINI Spec. teaches a process by which a Lookup Service (LUS) is used to register proxy objects associated with available services. Id. at 5–12. A client wishing to use a service loads an appropriate proxy object from the LUS and executes the proxy object to access the service. Id. at 72–75; see also Ex. 1003 ¶¶ 63, 69 (explaining the use of proxy objects in the JINI Spec.). 31 6 IPR2015-01444 Patent 7,039,033 B2 2. Claim 22, 34, and 39 Independent claims 1 and 34 include some limitations that are similar in scope, so the parties' positions relative to claim 34 are similar to those in claim 1. Therefore, we focus on certain differences in the analyses between claims 1 and 34. Petitioner maps Marchand's gateway mobile phone 33 to the recited "handheld device" of claim 34, and Petitioner maps Marchand's Bluetooth piconet to the recited "short distance wireless network." Pet. 44 (citing Ex. 1003 ¶¶ 24–26; Ex. 1005, 4:21–23, 6:16–29, 7:18–23, 8:11). For the recited "storage device," Petitioner cites Marchand's description of programming interfaces and protocol stack layers and contends that an ordinarily skilled artisan would have understood that a storage device would have been necessary to store software associated with these features in Marchand's gateway mobile phone. Id. at 45 (citing Ex. 1003 ¶¶ 33–36; Ex. 1005, 6:16–29). Petitioner likewise contends an ordinarily skilled artisan would have appreciated that software in the gateway, including software for "implement[ing] routing and communication over the cellular and local wireless networks," would require execution by a processor coupled to the storage device. Id. at 45–46 (citing Ex. 1003 ¶¶ 34–36; Ex. 1005, 2:14–16, 2:27–31, 6:18–20, 6:27–30). Regarding claim 34's recitations on providing an IP data packet to a terminal and translating between first and second IP addresses, Petitioner cites Marchand's description of receiving IP data packets from a public IP network at the gateway and forwarding them to other devices in the Bluetooth piconet. Id. at 24–25, 46–48 (citing Ex. 1003 ¶ 27; Ex. 1005, 7:14–17, 10:31–11:2). For "control[ling] access" between the networks, Petitioner cites this same teaching on IP data packets and also cites 32 6 IPR2015-01444 Patent 7,039,033 B2 Marchand's description of the gateway functioning as "a call-control server for client devices in the ad-hoc network, and. . . as a call-control client for a server in the wireless IP network." Id. (citing Ex. 1003 ¶¶ 24, 25, 58–62; Ex. 1005, 4:23–27, 7:12–14). For enumerating and searching a list of services, Petitioner cites Marchand's teachings on listing services in a JINI LUS and on allowing devices to discover, join, and download services from the LUS. Id. at 48–49 (citing Ex. 1003 ¶¶ 28, 32; Ex. 1005, 6:19–22, 7:9– 25, 8:11–28, 11:12–14). Petitioner also cites the JINI Spec. for teaching that the LUS can provide a proxy object to a requesting device so that the device may access the requested service. Id. (citing, inter alia, Ex. 1003 ¶¶ 38, 63, 68; Ex. 1009, 4–11, 72–75). Thus, Petitioner has established that Marchand, Vilander, Nurmann, and JINI Spec. teach every limitation of claim 34. Claim 39 depends from claim 34 and recites "the search includes searching the list of services by class, attribute or instance." Ex. 1001, 18:3– 4. Citing the JINI Spec., Petitioner contends "a JINI LUS stores information about a service's ID, its class or type, and its attributes," all of which can be searched. Pet. 50 (citing Ex. 1003 ¶ 64; Ex. 1009, 9–11, 16–20, 73, 77–79, 217–230). Claim 22 depends from claim 1 and contains a similar limitation; Petitioner's analysis is nearly identical to that of claim 39. See id. at 43–44. Petitioner, therefore, has established that the combination of Marchand, Nurmann, Vilander, and JINI Spec. teaches the additional limitations in claims 22 and 39. Building on its reasons for combining Marchand, Nurmann, and Vilander, Petitioner contends an ordinarily skilled artisan would have combined the JINI Spec. with these references "to fully implement and realize JINI technology in Marchand's ad-hoc Bluetooth Piconet network 30." Id. at 42 (citing Ex. 1003 ¶ 70). According to Petitioner, this would 33 6 IPR2015-01444 Patent 7,039,033 B2 allow each device in Marchand's piconet "to register, search for, and execute services in the [piconet] according to the JINI Spec." Id. (citing Ex. 1003 ¶ 70). We agree with Petitioner that this amounts to nothing more than the use of a known technique to improve similar devices in the same way or the combination of prior art elements according to known methods to yield predictable results. Id. (citing KSR, 550 U.S. at 417). As such, Petitioner has established that a person of ordinary skill in the art would have had reason to combine the teachings of Marchand, Vilander, Nurmann, and JINI Spec. to achieve the system recited in claim 34. With respect to claims 34 and 39, IXI argues Marchand cannot teach the recited enumerated list of services operative in the software component of the handheld device's processor because Marchand's LUS cannot be in gateway mobile phone 33. PO Resp. 53–54. IXI's reasoning behind this argument is the same as for the argument it made for claim 1. See id. Therefore, for the same reasons mentioned above with respect to claim 1, we are not persuaded by this argument. We also are unpersuaded by IXI's arguments for claim 22, which recapitulate arguments it made for claim 1. See id. at 52. Accordingly, based on the entire trial record, we conclude Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claims 22, 34, and 39 would have been obvious over the combination of Marchand, Nurmann, Vilander, and JINI Spec. 3. Claims 42 and 46 Claim 42 is an independent claim that shares many similar limitations to those in independent claim 34. See Ex. 1001, 18:14–40. Petitioner's mapping of prior art elements to claim 42 is nearly identical to that of claim 34 6 IPR2015-01444 Patent 7,039,033 B2 34. See Pet. 50–55. In contrast, however, claim 42 recites that the processor of a first handheld device provides short-range radio signals to second and third wireless handheld devices. See Ex. 1001, 18:14–40. Petitioner maps Marchand's network devices, such as a laptop computer, a printer, or a PDA, to the second and third wireless handheld devices. Pet. 52 (citing Ex. 1003 ¶¶ 25, 26; Ex. 1005, 6:23–27, 7:9–11, 10:18–21). In support of its mapping, Petitioner notes that non-asserted claim 45 from the '033 patent indicates that "a laptop computer [and] a personal digital assistant" are wireless handheld devices. Id. (citing Ex. 1001, 18:50-54). Petitioner also references the '033 patent's description of a "hand-held" device 350 in Figure 3b, which, in one embodiment, "is one of the terminals 107"; in turn, Petitioner references that a printer is one of the enumerated terminals 107 in the '033 patent. Id. at 52 (citing Ex. 1001, 4:17–25, 5:43–46). In light of this, Petitioner contends an ordinarily skilled artisan "would [have] consider[ed] any of Marchand's network 30 devices, such as the laptop computer, printer, or PDA, as corresponding to the second and third wireless handheld devices." Pet. 52 (citing Ex. 1001, 4:17–25; 5:43–46; Ex. 1003 ¶ 26). Petitioner additionally notes that IXI mapped a printer to the "second wireless handheld device" limitation in its infringement contentions from the related district court litigation. Id. at 52–53 (citing Ex. 1012, 45; Ex. 1013, 70). IXI does not dispute Petitioner's evidence showing that an ordinarily skilled artisan would have understood Marchand's laptop computer, printer, and PDA as corresponding to the recited second and third wireless handheld devices. Nor does IXI dispute that Marchand's laptop computer, printer, and PDA are "handheld device[s]" commensurate with claim 42; indeed, IXI does not propose a construction of "handheld." IXI's only argument against 35 6 IPR2015-01444 Patent 7,039,033 B2 Petitioner's analysis for claim 42 recapitulates its argument from claim 34, namely, that Marchand cannot teach a wireless handheld device that enumerates a list of services because Marchand's LUS cannot be in the gateway mobile phone. PO Resp. 53–55. As stated above, we do not agree that Marchand's teachings on the LUS are so limited. See supra § II.A.6.a. Accordingly, we determine that Marchand teaches the recited second and third "wireless handheld device[s]" of claim 42. Claim 46 depends from claim 42 and further recites "the second wireless handheld device is a thin terminal." Ex. 1001, 18:55–57. As stated above, we determine a printer is a type of "thin terminal" (see supra § I.F.), and Petitioner maps Marchand's printer 32 to the second wireless handheld device. Pet. 55. IXI's arguments disputing Petitioner's analysis relate to claim interpretation (see PO Resp. 42–43, 56), which we have addressed above. Therefore, having reviewed Petitioner's unpatentability contentions for claims 42 and 46 (see id. at 50–55), we determine Petitioner has established that Marchand, Vilander, Nurmann, and JINI Spec. teach every limitation of these claims. Petitioner's rationale for combining these references is also sufficient for the reasons stated above. Based on the entire trial record, we conclude Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claims 42 and 46 would have been obvious over the combination of Marchand, Nurmann, Vilander, and JINI Spec. 4. Claims 12, 15, and 40 Claim 12 recites "the software component includes a plug and play software component to load and execute software for the second wireless 36 6 IPR2015-01444 Patent 7,039,033 B2 device." Ex. 1001, 16:27–29. Claim 40 recites "the software component includes a plug and play software component to identify the terminal in the short distance wireless network and obtain the application software component for the terminal." Id. at 18:5–9. Petitioner relies on Marchand and JINI Spec., as supported by Dr. Kiaei's testimony, for teaching these limitations. See Pet. 39–43, 50. Specifically, Petitioner contends "a network 30 device (e.g., printer 32) registers a service (e.g., printing service) with the JINI LUS in gateway mobile phone 33 by loading a proxy object corresponding to its service onto the JINI LUS." Id. at 39–42 (citing Ex. 1003 ¶¶ 63, 67; Ex. 1009, 4–11, 72–73, 217–230). According to Petitioner, when a request for a service is received, the proxy object is loaded and executed to allow access to the service. Id. at 41–43 (citing Ex. 1003 ¶¶ 38, 63, 68–69; Ex. 1009, 4–11, 16–20, 73–74, 77–79, 217–230). As supported by Dr. Mandayam's testimony, IXI contends an ordinarily skilled artisan would not have understood JINI Spec's proxy object that is published to a LUS upon joining a network as constituting a "plug and play software component." PO Resp. 50 (citing Ex. 2301 ¶ 84). Specifically, IXI contends "there is no disclosure of a software component that functions in a 'plug and play' manner." Id. IXI explains "the LUS does not determine, find, or otherwise resolve the software necessary to support the joining terminal, consistent with the plain and ordinary meaning of the term 'plug and play' and the specification of the -033 Patent." Id. at 50–51 (citing Ex. 2301 ¶ 84). Yet the JINI Spec. describes the concept of "[n]etwork plug-and- work" as being a goal of the JINI architecture: "You should be able to plug a service into the network and have it be visible and available to those who want to use it. Plugging something into a network should be all or almost all 37 6 IPR2015-01444 Patent 7,039,033 B2 you need to do to deploy the service." Ex. 1009, 4. This is commensurate with the recited "plug and play" concept recited in claims 12 and 40. The JINI Spec. also describes downloading of code for a proxy object and "invoking methods on the proxy object" in response to a request for a service. Id. at 5–7, 9–10. This is commensurate with the recited "load[ing] and execut[ing]" of software in claim 12 and "obtain[ing] the application software component" in claim 40. We additionally agree with Petitioner (Pet. Reply 23–24) that certain of IXI's arguments turn on features not appearing in the claims, such as "determin[ing], find[ing], or otherwise resolv[ing] the software." See PO Resp. 50–51. These arguments are not persuasive. Petitioner's obviousness analysis for claim 15 is similar to that for claim 12, and it likewise establishes that the asserted obviousness combination teaches the additional limitation in claim 15. See Pet. 43 (citing Ex. 1003 ¶¶ 38, 63, 67). Regarding claim 15, IXI again relies on its arguments for claim 1 (see PO Resp. 52), which are not persuasive for the same reasons mentioned above. Based on all of the evidence of record, we determine, by a preponderance of the evidence, that the subject matter of claims 12, 15, and 40 would have been obvious over the combination of Marchand, Vilander, Nurmann, and JINI Spec. under 35 U.S.C. § 103(a). E. Obviousness Ground Based on Marchand, Larsson, and JINI Spec. Petitioner contends claims 25 and 28 would have been obvious over the combination of Marchand, Larsson, and JINI Spec. Pet. 55–60. IXI disputes Petitioner's contention. PO Resp. 56–57. 38 6 IPR2015-01444 Patent 7,039,033 B2 Petitioner's analysis for independent claim 25 incorporates elements of the analysis above for independent claim 34 and for dependent claim 6. In particular, Petitioner cites Marchand for teaching the basic Bluetooth system architecture, the transfer of IP data packets, and the use of a JINI LUS. Pet. 56–59. Petitioner cites Larsson for teaching the recited "security software component." Id. at 58–59. Petitioner cites the JINI Spec. for teaching details on registering and listing services with a LUS and using proxy objects to implement services. Id. at 59. For claim 28, which depends from claim 25, Petitioner relies on the same analysis for claim 23, in which Petitioner cites Larsson for teaching staged proxies that are used with a VPN. See id. at 39, 60; supra § II.C.2. Thus, for the same reasons discussed above, Petitioner establishes that the combination of Marchand, Larsson, and JINI Spec. teaches the subject matter recited in claims 25 and 28. Petitioner also presents sufficient reasons for combining Marchand, Larsson, and JINI Spec. that mirror those given with respect to other grounds discussed above. Pet. 56; see supra §§ II.C.2., II.D.2. IXI again contends Marchand does not teach or suggest locating the JINI LUS and its service searching capabilities (i.e., the "service repository software component") on mobile phone 33, which corresponds to the recited "second wireless device" in claim 25. PO Resp. 57. For the same reasons discussed above, however, we are not persuaded by this argument. Accordingly, based on the entire trial record, we conclude Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claims 25 and 28 would have been obvious over the combination of Marchand, Larsson, and JINI Spec. 39 6 IPR2015-01444 Patent 7,039,033 B2 F. Testimony of Dr. Kiaei IXI argues that "Dr. Kiaei's opinions are unreliable because they misunderstand and mischaracterize the inner workings of Marchand's network and devices." PO Resp. 12. Dr. Kiaei's "opinions regarding Bluetooth, the proposed modifications of Marchand, and the purported motivations for modifying Marchand should be entitled to little weight, if any," IXI argues, because of "Dr. Kiaei's lack of understanding Bluetooth and failure to consider the implications of Marchand's reliance on Bluetooth with respect to the proposed combinations." Id. at 15. IXI's arguments are rooted in IXI's sub-piconet theory discussed above. See supra § II.A.6.a. Petitioner replies that the "portion of Marchand relied upon in the Petition does not rely on a device being connected in more than one piconet." Pet. Reply 25. Thus, IXI's sub-piconet theory is supported by hypothetical drawings and testimony of Dr. Mandayam, not by Marchand, according to Petitioner. Id. Moreover, Dr. Kiaei testified that the question of whether a device could be connected in more than one piconet was a hypothetical question that he could not answer without more information because it was outside of the scope of what he considered. See id. at 24–25 (quoting Ex. 2302, 98:2–3, 98:22–99:9). In sum, Petitioner argues that IXI's "attack on Dr. Kiaei's credibility is misguided and [is] not germane to any substantive issues involved in this proceeding." Id. at 25. We have the discretion to determine the appropriate weight to be accorded to the evidence presented, including opinion testimony, based on the disclosure of the underlying facts or data upon which the opinion is based. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to credit one witness's testimony over another "unless no reasonable trier of fact could have done so"). In this 40 6 IPR2015-01444 Patent 7,039,033 B2 instance, we are not persuaded by IXI's arguments that Dr. Kiaei's testimony as a whole should be given "little weight, if any." Specifically, we have considered IXI's and Dr. Mandayam's sub-piconet theory in detail, and we determine that it would not have limited an ordinarily skilled artisan's understanding of Marchand. See supra § II.A.6.a. Thus, we accord an appropriate weight to Dr. Kiaei's testimony as indicated in this Decision. G. Motion to Exclude IXI moves to exclude Exhibits 1002, 1014, and 1015 on the basis of relevance "because they are not referenced or explained at all in the Petition or the Reply." Paper 21, 10–11. In its Opposition, Petitioner contends Dr. Kiaei referenced these exhibits in his declaration. Paper 24, 2–3 (citing Ex. 1003 ¶¶ 35, 36, 42, 60). Because Dr. Kiaei relies on these exhibits in support of his testimony in this case, IXI has not shown that they are irrelevant under FRE 401 and 402. Accordingly, we deny IXI's motion to exclude Exhibits 1002, 1014, and 1015. IXI also moves to exclude Exhibits 1016 and 1017 on the basis of relevance, hearsay, and authenticity. Paper 21, 5–9. IXI further contends Exhibits 1016 and 1017 constitute improper supplemental information that was submitted without authorization pursuant to 37 C.F.R. § 42.123. Id. at 2–5. Because we do not rely upon Exhibits 1016 and 1017 in rendering this Decision, we dismiss as moot IXI's motion to exclude these exhibits. 41 6 IPR2015-01444 Patent 7,039,033 B2 III. CONCLUSION Petitioner has demonstrated, by a preponderance of the evidence, that (a) claims 1, 4, 7, and 14 are unpatentable over Marchand, Nurmann, and Vilander under 35 U.S.C. § 103(a); (b) claim 5 is unpatentable over Marchand, Nurmann, Vilander, and RFC 2543 under 35 U.S.C. § 103(a); (c) claims 6 and 23 are unpatentable over Marchand, Nurmann, Vilander, and Larsson under 35 U.S.C. § 103(a); (d) claims 12, 15, 22, 34, 39, 40, 42, and 46 are unpatentable over Marchand, Nurmann, Vilander, and JINI Spec. under 35 U.S.C. § 103(a); and (e) claims 25 and 28 are unpatentable over Marchand, Larsson, and JINI Spec. under 35 U.S.C. § 103(a). IV. ORDER In consideration of the foregoing, it is ORDERED that claims 1, 4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46 of the '033 patent are held unpatentable; FURTHER ORDERED that IXI's motion to exclude Exhibits 1002, 1014, and 1015 is denied; FURTHER ORDERED that IXI's motion to exclude Exhibits 1016 and 1017 is dismissed as moot; and FURTHER ORDERED that because this is a Final Written Decision, parties to the proceeding seeking judicial review of the decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. 42 6 IPR2015-01444 Patent 7,039,033 B2 PETITIONER: W. Karl Renner Kevin Greene FISH & RICHARDSON P.C. 3200 RBC Plaza, 60 South Sixth Street Minneapolis, MN 55402 IPR00035-0004IP1@fr.com PATENT OWNER: Andy H. Chan PEPPER HAMILTON LLP 333 Twin Dolphin Drive, Suite 400 Redwood City, CA 94065 chana@pepperlaw.com George S. Haight Andrew Schultz PEPPER HAMILTON LLP 125 High Street, 19th Floor, High Street Tower Boston, MA 02110 haightg@pepperlaw.com schultza@pepperlaw.com Tuhin Ganguly PEPPER HAMILTON LLP 600 Fourteenth Street, N.W. Washington, DC 20005 gangulyt@pepperlaw.com 43 6 Exhibit B 6 Trials@uspto.gov Paper 27 Tel: 571-272-7822 Entered: December 21, 2016 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. IXI IP, LLC, Patent Owner. ____________ Case IPR2015-01443 Patent 7,295,532 B2 ____________ Before KRISTINA M. KALAN, ROBERT J. WEINSCHENK, and JOHN A. HUDALLA, Administrative Patent Judges. KALAN, Administrative Patent Judge. FINAL WRITTEN DECISION 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 6 IPR2015-01443 Patent 7,295,532 B2 I. INTRODUCTION Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Apple Inc. (collectively "Petitioner") filed a Petition (Paper 2, "Pet.") to institute an inter partes review of claims 1, 4, 5, 7–10, 12, 14–16, and 23–24 of U.S. Patent No. 7,295,532 B2 (Ex. 1001, "the '532 patent") pursuant to 35 U.S.C. §§ 311–319. IXI IP, LLC ("Patent Owner") filed a Preliminary Response (Paper 6, "Prelim. Resp."). We instituted an inter partes review of claims 1, 4, 5, 7–9, 12, 14–16, and 23–24 on certain grounds of unpatentability alleged in the Petition (Paper 8, "Dec."). After institution of trial, Patent Owner filed a Patent Owner Response (Paper 14, "PO Resp.") and Petitioner filed a Reply (Paper 18, "Reply"). An oral hearing was held on September 15, 2016. A transcript of the hearing has been entered into the record. Paper 26 ("Tr."). The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, we determine that Petitioner has shown by a preponderance of the evidence that all claims for which trial is instituted, namely, claims 1, 4, 5, 7–9, 12, 14–16, and 23–24, are unpatentable. II. BACKGROUND A. Related Matters The parties indicate that the '532 patent is the subject of the following district court proceedings: IXI Mobile (R&D) Ltd. v. Samsung Electronics Co., Case No. 3:15-cv-03752-HSG (N.D. Cal.); IXI Mobile (R&D) Ltd. v. Apple, Inc., Case No. 4:15-cv-03755-PJH (N.D. Cal.); and IXI Mobile (R&D) Ltd. v. Blackberry Ltd., Case No. 3:15-cv-03754-RS (N.D. Cal.). Pet. 1–2; Paper 5, 1–2, Paper 7, 1–2. 2 6 IPR2015-01443 Patent 7,295,532 B2 B. The '532 Patent The '532 patent describes a system, device and computer readable medium that monitors and reconfigures a local area network ("LAN") by a wide area network ("WAN") operator. Ex. 1001 at [54], Abstract. The '532 patent is directed to "a hand held device for providing communication between a wide area network and a wireless local area network." Id. at 1:61– 63. Figure 1, reproduced below, illustrates an exemplary system of the '532 patent. Id. at 4:55–56. Figure 1 above shows wireless device 106 and one or more terminals 107 communicating via short-range radio signals 110 to form LAN 116. Id. at 5:30–35. Figure 1 also shows WAN 105 coupled to device 106; WAN 105 includes a cellular network transmitting and receiving cellular signals 111. Id. at 5:52–55. WAN 105, carrier backbone 104, and manager server 102 3 6 IPR2015-01443 Patent 7,295,532 B2 are, singly or in combination, a telecommunication network managed and monitored by operator 115. Id. at 5:62–65. WAN 105 is shown as being coupled to wireless carrier internal network or carrier backbone 104; carrier backbone 104 may be coupled to manager server 102 or Internet 103. Id. at 6:20–25. In one embodiment, servers 101 and 102 provide information to terminals 107 by way of device 106. Id. at 6:26–29. Microrouter 404 of device 106 "enables an IP based network between the device 106 and terminals 107." Id. at 8:29–30. Software components, or plug-ins 406, may be added to microrouter 404, using software components called hooks 590. Id. at 8:33–36, 45–49. A remote operator on WAN 105 is able to load software on device 106 to provide LAN network services to devices on LAN 116. Id. at 5:10–13, 10:11–17. C. Illustrative Claim Claim 1 of the '532 patent is reproduced below: 1. A hand-held device for enabling communication between one or more devices connected to one or more cellular networks and one or more devices connected to a wireless local area network, comprising: a) a first transceiver to communicate with the one or more devices connected to said one or more cellular networks by sending and receiving cellular signals, the first transceiver having a cellular network address; b) a second transceiver to communicate with the one or more devices connected to the wireless local area network by sending and receiving short-range radio signals; c) a storage device to store: c.1. a router software component to transfer a plurality of data packets between the one or more devices connected to the one or more cellular networks and the one or more devices connected to the wireless local area network by the cellular signals and the short-range radio signals; and 4 6 IPR2015-01443 Patent 7,295,532 B2 c.2. an interface software component to add a first network service software component that provides one or more network services to the wireless local area network, the first network service software component loaded into the storage device from the one or more devices connected to the one or more cellular networks: and one or more processors connected to the storage device to process the cellular signals and the short-range radio signals, wherein the cellular network includes a plurality of public IP addresses and the wireless local area network includes a plurality of private IP addresses, and wherein the router software component translates a first IP address in the plurality of public IP addresses to a second IP address in the plurality of private IP addresses. Ex. 1001, 16:40–17:7. Claims 4, 5, 7–10, 12, 14–16, and 23–24 all depend, directly or indirectly, from claim 1. D. Prior Art References Relied Upon by Petitioner 1. PCT Pub. No. WO 01/76154 A2 to Marchand, published October 11, 2001 ("Marchand") (Ex. 1005); 2. Dan Decasper et al., Router Plugins A Software Architecture for Next Generation Routers, Proceedings of ACM SigComm '98 Conference, 28 COMP. COMM. REV. No. 4, 229–240 (October 1998) ("Router Plugins") (Ex. 1006); 3. U.S. Patent No. 6,622,017 B1 to Hoffman, issued September 16, 2003 ("Hoffman") (Ex. 1007). 4. IEEE Std. 802.11b-1999, Part 11: Wireless LAN Medium Access Control (MAC) and Physical Layer (PHY) specifications: Higher-Speed Physical Layer Extension in the 2.4 GHz Band, IEEE-SA Standards Board (published January 20, 2000) ("802.11b") (Ex. 1008); 5. P. Srisuresh & M. Holdredge, RFC 2663: IP Network Address Translator (NAT) Terminology and Considerations, The Internet Society (August 1999) ("RFC 2663") (Ex. 1009); and 6. U.S. Patent No. 6,963,912 B1 to Schweitzer et al., issued November 8, 2005 ("Schweitzer") (Ex. 1011). 5 6 IPR2015-01443 Patent 7,295,532 B2 E. Instituted Grounds of Unpatentability We instituted inter partes review of claims 1, 4, 5, 7–9, 12, 14–16, and 23–24 of the '532 patent on the following grounds: References Basis Claim(s) Challenged Marchand, Router Plugins, and § 103 1, 4, 5, 8, 12, 14, and 23 Hoffman Marchand, Router Plugins, § 103 7 Hoffman, and 802.11b Marchand, Router Plugins, § 103 9 Hoffman, and RFC 2663 Marchand, Router Plugins, § 103 15, 16, and 24 Hoffman, and Schweitzer In support of its challenges, Petitioner relies on the Declaration of Dr. Sayfe Kiaei (Ex. 1003). Patent Owner relies on the Declaration of Dr. Narayan Mandayam (Ex. 2201). III. ANALYSIS A. Claim Interpretation The Board interprets claim terms in an unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. See Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard); 37 C.F.R. § 42.100(b). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 6 6 IPR2015-01443 Patent 7,295,532 B2 See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In our Decision on Institution, we determined that the claim 1 phrase "software component. . . loaded. . . from the one or more devices connected to said one or more cellular networks" needed no express construction. Dec. 7–8. Patent Owner, in its Response, agrees that "a person of ordinary skill in the art would have understood this recitation without an explicit construction." PO Resp. 11. We see no reason to modify our position in light of the record developed at trial. No other claim terms have been presented to us for construction, and we determine that no other claim terms require express construction. B. Principles of Law A claim is unpatentable under 35 U.S.C. § 1031 if the differences between the subject matter sought to be 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 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 ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) ("AIA"), amended 35 U.S.C. § 103. Because the '532 patent has an effective filing date before the effective date of the applicable AIA amendments, throughout this Decision we refer to the pre-AIA versions of 35 U.S.C. § 103. 7 6 IPR2015-01443 Patent 7,295,532 B2 decision on the ground of obviousness must include "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The obviousness analysis "should be made explicit" and 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." KSR, 550 U.S. at 418. We analyze the asserted grounds of unpatentability in accordance with the above-stated principles. We note that, regarding objective evidence of nonobviousness, Patent Owner has not put forth any evidence of secondary considerations of nonobviousness in this case. C. Level of Skill in the Art For the purpose of this Decision, we accept Petitioner's undisputed contention that a person of ordinary skill in the art as of the critical date would have had a Master's of Science Degree in an academic area emphasizing electrical engineering, computer engineering, or computer science (or a similar technical Master's Degree, or higher degree) with a concentration in communication and networking systems or, alternatively, a Bachelor Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science and having two or more years of experience in communication and networking systems. Ex. 1003 at 15. Additional education in a relevant field, such as computer science, computer engineering, or electrical engineering, or industry experience may compensate for a deficit in one of the other aspects of the requirements stated above. Pet. 9–10. Patent Owner applied Petitioner's definition in its Patent Owner Response. PO Resp. 10–11. The level of ordinary skill in the art is further 8 6 IPR2015-01443 Patent 7,295,532 B2 demonstrated by the prior art asserted in the Petition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D. Obviousness Analysis 1. Ground Based on Marchand, Router Plugins, and Hoffman Petitioner challenges claims 1, 4, 5, 8, 12, 14, and 23 as obvious under 35 U.S.C. § 103 over Marchand, Router Plugins, and Hoffman. Pet. 12–42. Patent Owner disputes Petitioner's contentions. PO Resp. 18–46. a. Marchand Marchand is directed to "an ad-hoc network and a gateway that provides an interface between external wireless IP networks and devices in the ad-hoc network." Ex. 1005, 1:6–7. Figure 3 of Marchand is reproduced below: Figure 3 of Marchand illustrates "an ad-hoc network 30 utilizing Bluetooth, IP [Internet Protocol], and JINI technologies. . . to enable the use 9 6 IPR2015-01443 Patent 7,295,532 B2 of a gateway mobile phone." Id. at 7:7–9. Ad-hoc network 30 includes laptop computer 31, printer 32, and mobile phone 33, which can communicate via Bluetooth radio link 34. Id. at 7:9–11. Mobile phone 33 acts "as a gateway between the ad-hoc network and a 3G wireless IP network 35 such as the General Packet Radio Service (GPRS) network." Id. at 7:12– 14. Regarding IP address translation, IP packets from the GPRS are received at mobile phone 33 through its public IP address, and then they are forwarded to the private IP address of the device on the ad-hoc network. Id. at 7:14–16. Mobile phone 33 also translates in the other direction for data going out of the ad-hoc network to the GPRS network. Id. at 7:16–17. b. Router Plugins Router Plugins is directed to a software architecture that can "dynamically upgrade router software in an incremental fashion" and that is designed to be compatible with operating systems of small and mid-sized routers. Ex. 1006, Abstract, 230 col. 1 ¶ 5. The router software architecture is based on implementation of specific algorithms in the form of modules called plugins. Id. at Abstract, 229 col. 2 ¶ 2. A software component called a Plugin Control Unit ("PCU") manages plugins that are loaded into the kernel of a router. Id. at 231 col. 1 ¶ 2. c. Hoffman Hoffman is directed to over-the-air programming of wireless terminal features, namely, downloading software in the form of a plug-in module to a terminal device. Ex. 1007, at [54], Abstract. Hoffman includes a wireless communication terminal device 5, generally a digital cellular telephone, able to implement standard cellular telecommunication functions. Id. at 5:8–17. Hoffman's terminal device 5 initially contains a blank "second section" of 10 6 IPR2015-01443 Patent 7,295,532 B2 programming memory, which is designed for storage of plugin feature programs or modules. Id. at 5:32–33. The second section is later occupied by selected software that is downloaded from hard media or by air-link. Id. at 5:43–6:14. Hoffman's terminal device 5 includes processor 51 and flash memory 53. Id. at 12:48–55. It may also allow "a user to connect a laptop computer or other device to the terminal [device] 5, via wire or short-distance wireless link." Id. at 13:33–39. d. Petitioner's Arguments Petitioner argues one of ordinary skill in the art would have modified Marchand's mobile gateway 33 to implement its routing and address translation functionality by utilizing the routing software technology described in Router Plugins, and would have included the PCU of Router Plugins in Marchand's mobile gateway software architecture to "glue the individual plugins to the networking subsystem" as described in Router Plugins. Pet. 23–24. Petitioner further argues that, in view of Hoffman, a person of ordinary skill in the art would have modified Marchand's plugin- enabled gateway 33 to download plugins over the cellular network in Marchand. Id. at 25. In addition, Petitioner contends a person of ordinarily skill in the art would have understood that Marchand's gateway would include a storage device and processor. Id. at 26–27 (citing Ex. 1003 ¶¶ 58– 59). Petitioner relies on this purported understanding, together with Hoffman's explicit disclosure of a storage device and processor, to teach those elements of the challenged claims. Id. Regarding the combination of references, Petitioner argues one of ordinary skill in the art would have been motivated to implement the plugin- based software architecture of Router Plugins into Marchand because doing 11 6 IPR2015-01443 Patent 7,295,532 B2 so amounts to the use of a known technique to improve similar devices in the same way. Id. at 27–28 (citing Ex. 1003 ¶ 54). One of ordinary skill in the art, according to Petitioner, would have understood that Marchand's mobile gateway 33 would have been made more "flexible and modular" by using the plugin-based routing software of Router Plugins. Id. at 28 (citing Ex. 1003 ¶ 54). Because both Marchand and Router Plugins describe devices that utilize software to route IP packets and perform network address translation, Petitioner argues, one of ordinary skill in the art would have understood that "Marchand's mobile phone gateway 33 is the type of "small and mid-sized" router for which the Router Plugins software architecture was designed." Id. (citing Ex. 1005 at Abstract; 1:5–7; 54:30–31; 55:9–13; Ex. 1006, 230, col. 1, ¶ 5; Ex. 1003 ¶ 55). Petitioner also argues one of ordinary skill in the art would have been motivated to implement Hoffman's cellular download of plugins into the mobile gateway of Marchand/Router Plugins, also as the use of a known technique to improve similar devices in the same way. Id. at 29 (citing Ex. 1003 ¶ 56). e. Combination of Marchand and Router Plugins i. Routing Layer Issue Patent Owner argues, generally, that Petitioner "offers no explanation regarding how a person would implement the plugin-based software architecture of Router Plugins into the architecture described in Marchand." PO Resp. 33. Patent Owner further argues the routing technologies taught by Marchand and Router Plugins "are fundamentally different and are not compatible because the routing technology in each reference is implemented in a different layer of the system network architecture." Id. at 34. Referring 12 6 IPR2015-01443 Patent 7,295,532 B2 to Figure 4 of Marchand, Patent Owner argues that Marchand's routing and address translation functionality is implemented in the JINI technology layer 20 of its protocol stack (id. at 34 (citing Ex. 2201 ¶ 67–68)), whereas Router Plugins' functionality is implemented in the kernel of the operating system layer 18. Id. at 35 (citing Ex. 2201 ¶ 69). Accordingly, Patent Owner argues, the routing software technology of Router Plugins "cannot be implemented in Marchand's JINI technology layer without changing the fundamental operation of both Marchand and Router Plugin's routing software technology." Id. at 36. Petitioner replies that Patent Owner's argument is "based on incorrect factual premises, and attempts to create a false dichotomy between Marchand and Router Plugins." Reply 2. More particularly, Petitioner argues, Marchand's Application Programming Interface ("API") routes calls, rather than IP packets. Id. at 2–3. Although Marchand discusses routing both calls and IP packets, only the routing of IP packets is relevant to the combinability of Marchand and Router Plugins, according to Petitioner. Id. at 3. Marchand uses Network Transport layer 17 to route IP packets, argues Petitioner, and not JINI layer 20 or Application layer 21. Id. (citing Ex. 1005, 7:14–16, 11:13–16). Moreover, Petitioner argues, Router Plugins does not describe routing IP packets at the operating system layer, but rather, at the network layer. Id. at 4–5. Petitioner points to Dr. Mandayam's testimony as confirming that Router Plugins performs routing of IP packets (citing Ex. 1016, 145:15–24), and that routing of IP packets occurs at a network layer of the protocol stack (citing Ex. 1016, 21:21–22:2). Id. at 5–6; see also Tr. 15:19–24. Thus, Petitioner argues, because both Marchand and Router Plugins route IP 13 6 IPR2015-01443 Patent 7,295,532 B2 packets at the network layer, one of ordinary skill in the art would have been motivated to make Marchand's IP routing "more 'flexible and modular' by using the plugin-based router software of Router Plugins." Id. at 6 (citing Ex. 1003 ¶ 55). We are persuaded by Petitioner's arguments in this regard. We understand Petitioner as premising the combinability of Marchand and Router Plugins on the routing of IP packets. Pet. 14 (Marchand's "mobile gateway 33 performs routing for IP packets"), 23 ("Marchand discloses a mobile phone gateway 33 that routes IP packets between a local area network and an external cellular network. . . ."); Reply 3. Petitioner relies on Router Plugins' "plugin-based routing software" to be "implemented in Marchand's mobile phone gateway 33 to implement various types of router functionality, such as routing of IP packets and IP address translation." Pet. 24. Indeed, Dr. Mandayam agrees that routing of IP packets is done by Marchand, and is done at a network layer of the protocol stack. Reply 3–4 (citing Ex. 1016, 21:21–22:2, 160:16–19; Ex. 2201 ¶¶ 34, 35). Dr. Mandayam also agrees that Router Plugins performs routing of IP packets, and that routing of IP packets occurs at a network layer of the protocol stack. Id. at 5–6 (citing Ex. 1016, 145:15–24, 21:21–22:2). We further agree with Petitioner's contention that, even though the Router Plugins routing framework fits within an operating system kernel, "Router Plugins does not describe routing IP packets at the operating system layer," but rather, performs routing of IP packets at a network layer of the protocol stack. Id. at 4–5 (citing Ex. 1006, 229 col. 2, 231 col. 2, Fig. 1). We credit Dr. Kiaei's testimony that one of ordinary skill in the art, understanding that both "Marchand and Router Plugins describe devices that utilize software to route IP packets and perform network address 14 6 IPR2015-01443 Patent 7,295,532 B2 translation," would have been motivated to make Marchand's IP routing "more 'flexible and modular' by using the plugin-based router software of Router Plugins." Ex. 1003 ¶ 55. The enhanced routing of IP packets at the network layer, as demonstrated by Router Plugins, would have led one of ordinary skill in the art to consider the inclusion of Router Plugins' technology to better the IP routing of Marchand, which also takes place at the network layer. ii. Routing Redundancy Issue Patent Owner further argues that Marchand teaches that the gateway's Session Initiation Protocol ("SIP") and H.323 technologies are implemented using JINI technology, and thus, Petitioner's proposed scenario "would render Marchand's SIP client redundant as both the SIP client and the plugin- based technology would be responsible for routing the same information." PO Resp. 37. Marchand and Router Plugins are compatible, Petitioner argues, because Marchand's SIP client is implemented using APIs at Application layer 21, which is "separate and distinct from Marchand's Network IP layer 17." Reply 7. Thus, in Petitioner's proposed combination, Marchand's SIP client routes calls at Application layer 21 and Router Plugins' software performs the "lower level functionality of routing IP packets at the Network Layer," and each perform "their respective functions at different layers in the protocol stack." Id (citing Pet. 16, 23, 24). Patent Owner's arguments on this issue appear to derive from its earlier argument that both IP packet routing and call routing occur at Application layer 21 in Marchand's protocol stack. As explained above, we are persuaded by Petitioner's arguments that routing of IP packets in the 15 6 IPR2015-01443 Patent 7,295,532 B2 proposed combination would take place in Network Transport layer 17, and we are persuaded by the evidence that Marchand's routing of calls would be performed by the SIP client in Application layer 21. Ex. 1016, 129:23– 130:3. We are thus persuaded that Petitioner's proposed combination would allow the SIP's call routing and the routing of IP packets to coexist in a manner that would not render the SIP client redundant. iii. Devices Issue Patent Owner further argues that Marchand and Router Plugins are not directed to similar devices: Marchand is directed to a Bluetooth piconet that has been extended into an Internet Protocol wireless local area network, with a mobile phone configured to act as a gateway to provide a call control interface between the devices on the piconet and the wireless IP network, whereas Router Plugins is directed to modular software architecture for use in a modern, extended integrated services router. PO Resp. 37–38. According to Patent Owner, "[a] person of ordinary skill in the art would not have been motivated to combine the dedicated router technology in Router Plugins with Marchand's gateway, which only includes minimal routing functionality." Id. at 38. Petitioner faults Patent Owner for overlooking Marchand's disclosure of IP routing software, and the applicability of Router Plugins' software to such IP routing. Reply 8. According to Petitioner, Router Plugins' description of its software as being a perfect fit for "small and mid-sized routers" would include Marchand's mobile phone. Id. (citing Pet. 16, 28). Petitioner further points to Router Plugins' disclosure of its software in "NetBSD," which Petitioner alleges was available on hand-held devices during the relevant time frame. Id. at 9 (citing Ex. 1006, Abstract). 16 6 IPR2015-01443 Patent 7,295,532 B2 On this record, the disclosure of Router Plugins does not rule out its applicability to a system such as Marchand's. Petitioner has demonstrated Router Plugins' reference to "small and mid-sized routers" would have led one of ordinary skill in the art to understand that Router Plugins' software architecture could be included in Marchand's mobile gateway 33. Pet. 16, 28 (citing Ex. 1003 ¶¶ 35, 55). Petitioner's explanation of NetBSD, disclosed in Router Plugins' Abstract, also supports its argument that Router Plugins' software architecture could be included in a mobile phone. Reply 9. Patent Owner's arguments against the combination appear to be directed to the purported mismatch of the size and scope of the respective devices, but there does not appear to be an incompatibility based on the record before us. Marchand's gateway, although housed in mobile phone, nevertheless features router functionality that could be enhanced by the improvements of Router Plugins. Ex. 1003 ¶¶ 50–55. f. Combination of Marchand, Router Plugins, and Hoffman i. Compatibility of Router Plugins and Hoffman Regarding the combination of Marchand and Router Plugins with Hoffman, Patent Owner argues that a "person of ordinary skill in the art would not have been motivated to combine Hoffman's download of plugins into a Marchand/Router mobile gateway because there is no teaching in the references regarding how one would implement such a combination." PO Resp. 39. Specifically, because Router Plugins uses a PCU and an Association Identification Unit ("AIU"), and Hoffman's architecture does not use these components, a person of ordinary skill in the art would not have considered implementing the architecture of Hoffman into a device already using the Router Plugins architecture, Patent Owner argues. Id. at 39–40. 17 6 IPR2015-01443 Patent 7,295,532 B2 Patent Owner also argues that Router Plugins loads plugins directly into the kernel space, whereas Hoffman implements plugins in user mode/space. Id. at 40. Petitioner replies that Patent Owner mischaracterizes Petitioner's proposed grounds of unpatentability and the role Hoffman plays in the proposed combination. Reply 10. Specifically, Petitioner argues that the implementation of particular software components or even the mobile phone software architecture are already disclosed in the Marchand/Router combination, and therefore Hoffman is not relied upon for those features. Id. (citing Pet. 27–30, 23–27). Rather, Petitioner argues, Hoffman is relied upon for "teaching that the plugins of Marchand/Router can be downloaded over Marchand's cellular connection." Id. at 11 (citing Pet. 29). The Petition supports Petitioner's assertion that it relies upon Hoffman for its teaching that plugins can be downloaded over a cellular connection. Pet. 29 (discussing implementing "Hoffman's cellular download of plugins into the Marchand/Router combination's mobile gateway"), 30 ("Hoffman's over-the-air programming would have enabled a user of Marchand's mobile phone gateway 33 to dynamically and quickly add or update features to the gateway 33"). In this instance, Petitioner does not appear to rely on Hoffman for any elements of the architecture already established by the Marchand/Router Plugins combination. Tr. 18:20–19:3. Importantly, "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of a primary reference." In re Keller, 642 F.2d 413, 425 (CCPA 1981). The architecture of Hoffman need not be imported wholesale into the structure of Marchand/Router Plugins, and the feature of Hoffman upon which Petitioner relies here is compatible 18 6 IPR2015-01443 Patent 7,295,532 B2 with the structure of Marchand/Router Plugins. Pet. 29–30; Reply 11. Given this, and in the absence of persuasive evidence to the contrary, we agree with Petitioner's position on this issue. ii. Compatibility of Marchand and Hoffman Patent Owner argues that the architecture of Hoffman has compatibility issues with the architecture of Marchand, in that Hoffman "also describes a plugin architecture which is written to the program interface specification of the kernel of the operating system." PO Resp. 40. Namely, Patent Owner argues, "a person of ordinary skill in the art would not have known how to modify Marchand's protocol stack to successfully implement the teachings of Hoffman." Id. Petitioner replies, again, that Patent Owner mischaracterizes Marchand and Petitioner's proposed grounds of unpatentability. Reply 12. Specifically, Petitioner argues that Marchand's protocol stack is already equipped to handle cellular communications, so Patent Owner's arguments regarding modifying Marchand's protocol stack to implement Hoffman's plugin architecture are irrelevant. Id. (citing Ex. 1003 ¶ 26). As discussed in the section concerning compatibility of Router Plugins and Hoffman, above, we understand Petitioner's reliance on Hoffman to be limited to Hoffman's over-the-air programming feature, rather than any elements of its architecture. As acknowledged by both parties, Hoffman and Marchand both download software updates over a cellular network. Pet. 25– 26, 29–30; PO Resp. 30–31; Ex. 2201 ¶¶ 81, 83; Reply 12–13; Ex. 1005, 13:16–19. As Petitioner's proposed combination does not require bodily incorporation of Hoffman's architecture into the system of Marchand/Router 19 6 IPR2015-01443 Patent 7,295,532 B2 Plugins, see In re Keller, 642 F.2d at 425, we are persuaded by the evidence before us that the references are otherwise compatible. g. Claims 4 and 5 Claims 4 and 5 depend from claim 1, and recite, respectively, "wherein the one or more cellular networks are connected to a corporate network" and "wherein the one or more cellualr [sic] networks are connected to a private IP network." Ex. 1001, 17:12–17. Regarding claim 4, Petitioner argues that the combination of Marchand, Router Plugins, and Hoffman "discloses a data network operated by the telecommunications carrier (a corporate network) that is connected, via the intermediate [interworking function] IWF equipment, to a cellular network." Pet. 38. Petitioner also points to Marchand's ad-hoc local network 30 as an example of a corporate network connected to a cellular network, concluding that the Marchand, Router Plugins, and Hoffman combination "discloses several examples of a corporate network that is indirectly coupled to the cellular network." Id. Regarding claim 5, Petitioner points to several examples of a cellular network connected to a private IP network, such as Hoffman's "private data network operated by the carrier, shown as an IP network 35" and Marchand's "networks in the home," "control networks such as security surveillance systems and temperature-control thermostats," and local ad-hoc network 30 that uses private IP addresses for its devices. Id. at 39. Patent Owner argues that the combination of Marchand, Router Plugins, and Hoffman "would render one or more of the asserted references inoperable for its intended purpose." PO Resp. 41. Patent Owner challenges Petitioner's reliance on Hoffman's private data network, stating that the connection to a private data network as described in Hoffman would conflict 20 6 IPR2015-01443 Patent 7,295,532 B2 with the teachings of Marchand. Id. at 41–42. Particularly, Patent Owner argues, "Hoffman's use of IWF equipment to provide an interface to the internet or a private data network conflicts with Marchand's description of the mobile gateway and the mobile gateway's call control service" and "Hoffman's IWF equipment would provide a redundant operation that introduces a conflicting IP address if combined with Marchand." Id. at 43. Patent Owner also argues that "claims 4 and 5 refer to corporate and private IP networks, respectively, that are located on the WAN," and thus, "Petitioner's alternative argument is also deficient." Id. at 44. Petitioner replies, first, that Hoffman's over-the-air download of plugins to Marchand's cellular network is not limited to specific equipment. Reply 13. Petitioner also argues that these references could have been combined so that Hoffman's over-the-air programming does not require Hoffman's IWF equipment, as Marchand's cellular connection would provide a connection to the corporate/private network of Hoffman's carrier or manufacturer. Id. at 13–14. Second, Petitioner argues that claims 4 and 5 only require a connection between cellular and corporate/private IP networks and do not specify that the corporate/private IP network must be located on the WAN. Reply 14–15. According to Petitioner, Marchand's LAN 30 is a corporate/private IP network that is connected to cellular network 35 via mobile gateway 33, thereby satisfying claims 4 and 5. Id. (citing Pet. 38–39). As above, we accept Petitioner's reliance on Hoffman for its teaching of over-the-air programming and a corporate/private IP network connected to a cellular network; we also agree with Petitioner that the IWF equipment of Hoffman does not have to be bodily incorporated into the architecture already present in the Marchand and Router Plugins combination. Accordingly, we 21 6 IPR2015-01443 Patent 7,295,532 B2 accept as persuasive Petitioner's argument that Marchand's cellular connection would provide a connection to the corporate/private network of Hoffman's carrier or manufacturer. Pet. 37–39; Reply 14. Regarding Petitioner's second argument that claims 4 and 5 only require a connection between cellular and corporate/private IP networks, we agree that the claims, as written, do not require that the corporate/private IP network be located on the WAN. Although the specification discusses examples of corporate networks and private IP networks that are located on the WAN, these examples are characterized as: "According to still another embodiment;" "In an embodiment;" and "In this scenario." Ex. 1001, 2:13–15; 6:3–6; 14:26– 28. They are not identified as being exclusive, nor need they be read as such. See Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988) ("[T]he claims define the invention. . . . [L]imitations from the specification are not to be read into the claims."). The claims do not impose restrictions on and the specification does not impart additional required characteristics to the "corporate network" or the "private IP network." Similarly, having considered the descriptions of various connections in the specification, we are not persuaded that the term "connected" should be read so narrowly as to require a particular type of connection. Petitioner's reliance on Marchand to disclose LAN 30 (i.e., either private or corporate IP network) connected to cellular network 35 satisfies the limitations of claims 4 and 5. h. Claim 8 Claim 8 requires "wherein the router software component includes a network address translator ('NAT') software component to translate between the cellular network address and a first wireless local area network address." Ex. 1001, 17:24–28. To disclose a router software component that includes a 22 6 IPR2015-01443 Patent 7,295,532 B2 network address translation software component, Petitioner relies on Marchand's mobile gateway 33 performing network address translation by receiving IP packets from public network 35 through its public IP address, forwarding them to the private IP address of the destination device, and translating them in the other direction for data going out of local network 30 to public network 35. Pet. 40. Petitioner posits that the routing and address translation functionality of gateway 33 is implemented using the routing software technology of Router Plugins. Id. Patent Owner argues that Marchand fails to disclose this claim element, and teaches away from using a NAT software component.2 PO Resp. 44. Marchand, according to Patent Owner, teaches address translation using an API, and expressly provides "that a NAT should not be used." Id. at 45 (citing Ex. 2201 ¶ 51). Specifically, Patent Owner argues that Marchand "discourages a person of ordinary skill in the art from utilizing NAT in the Marchand's mobile phone for providing call control services so as to avoid the IP address mismatch that 'creates problems for real-time applications such as [Voice-over-IP (VoIP)].'" Id. at 46. Petitioner replies that Marchand uses an API to supplement NAT and resolve problems caused by NAT, not as a substitute for NAT. Reply 17 (citing Ex. 1005, 11:17–12:3). As explained by Petitioner, Marchand uses NAT for non-real-time applications; for real-time applications, it uses API to resolve any IP address mismatches introduced by NAT. Id. Additionally, 2 Even though both parties use the acronym "NAT" to refer to a "network address translator," Marchand actually uses the acronym "NAT" to refer to a "National Access Translator." See Ex. 1005, 11:23. Given an opportunity at the oral hearing to explain if there were any meaningful differences in this terminology, Patent Owner's counsel did not offer any. See Tr. 36:11–37:8. 23 6 IPR2015-01443 Patent 7,295,532 B2 Petitioner argues that nothing in the subject patent precludes the NAT software component itself from being implemented as an API. Id. at 17–18. Petitioner relies on Marchand and Router Plugins to teach the router software component that transfers data packets. Pet. 33. This router software component, per claim 1, also translates a first IP address to a second IP address. Petitioner identifies that Marchand's mobile gateway 33 translates IP addresses for data being transmitted from local network 30 and for data being received at local network 30. Id. at 37 (citing Ex. 1005, 7:14–17). In addition, Dr. Mandayam testifies that address translation is done at the gateway in Marchand. Reply 16 (citing Ex. 1016, 147:5–7, 152:25–153:1). Regardless of whether this address translation is performed by a NAT or an API translator, Marchand teaches a network address translator software component located on the gateway mobile phone. Ex. 1005, 11:17–12:3. We also agree with Petitioner that the use of an API translator for certain real- time applications would have been viewed as "as a supplement to NAT [and] not a substitute for NAT." Reply 17. For these reasons, Petitioner has established that Marchand teaches a "network address translator software component." i. Claims 12, 14, and 23 Petitioner observes that Patent Owner does not raise separate challenges to claims 12, 14, and 23. Reply 1 n.1. In considering Patent Owner's arguments to the challenged claims, we reconsider Petitioner's challenges to those claims based on our standard for final decisions, and are persuaded that Petitioner has shown by a preponderance of the evidence that the subject matter of claims 12, 14, and 23 would have been obvious over the combination of Marchand, Router Plugins, and Hoffman. 24 6 IPR2015-01443 Patent 7,295,532 B2 Therefore, based on the entire record before us, we conclude Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claims 1, 4, 5, 8, 12, 14, and 23 would have been obvious over the combination of Marchand, Router Plugins, and Hoffman. 2. Ground Based on Marchand, Router Plugins, Hoffman, and 802.11b Petitioner challenges claim 7 as obvious under 35 U.S.C. § 103 over Marchand, Router Plugins, Hoffman, and 802.11b. Pet. 43–45. Patent Owner disputes Petitioner's contentions. PO Resp. 46–49. Claim 7 depends from claim 1, and further provides "wherein the wireless local area networks include a 802.11 wireless local area network." Ex. 1001, 17:21–23. a. 802.11b 802.11b discloses a standard for implementation of a High Rate extension of the PHY (physical layer) for the DSSS (Direct Sequence Spread Spectrum) system that builds on existing data rate capabilities. Ex. 1008, 11 ¶¶ 2–3. Clause 18, in which this 802.11b standard implementation is discussed, indicates that it builds on the data rate capabilities as described in Clause 15 of IEEE Std. 802.11, 1999 Edition. Id. 802.11b discloses providing higher speed extension to the DSSS system and improvement to the performance the radio frequency LAN system via a number of optional features. Id. ¶ 3. b. Analysis Petitioner argues one of ordinary skill in the art would have modified the Marchand/Router Plugins/Hoffman combination using the 802.11b standard "to provide higher-rate and longer-range local area wireless communication." Pet. 43–44 (citing Ex. 1003 ¶ 62). Petitioner further argues one of ordinary skill in the art would have been motivated to make such a 25 6 IPR2015-01443 Patent 7,295,532 B2 modification, which amounts to "simple substitution of one known element for another to obtain predictable results." Id. at 44 (citing Ex. 1003 ¶ 63). Specifically, Petitioner argues one of ordinary skill in the art would have understood that either Bluetooth or 802.11b could have been used, but that 802.11b technologies provided certain advantages over Bluetooth in the form of higher data rates and longer range. Id. at 44–45 (citing Ex. 1003 ¶ 63). Patent Owner argues that one of ordinary skill in the art would not have been motivated to make this combination, "because the 802.11b Supplement describes a data sharing standard for a local area network that is not compatible with the functionality of the Bluetooth piconet taught by Marchand." PO Resp. 47. According to Patent Owner, Bluetooth networks require a master-slave relationship between the devices on the network of the Bluetooth piconet, as in Marchand. Id. at 47–48. Conversely, argues Patent Owner, 802.11b is "based on CSMA and a flat and distributed architecture where each device is treated as equal without any precedence or hierarchy as in the master-slave structure of Bluetooth." Id. at 48. Thus, "this master- slave relationship would be lost if the 802.11b standard replaced Bluetooth in Marchand." Id. Petitioner replies that this argument is "contradicted by the 802.11 standard itself and the knowledge of a [a person of ordinary skill in the art] that the 802.11 standard supports master-slave configurations." Reply 18 (citing Ex. 1018, 7:37–42; Ex. 1021, 4:46–49). Petitioner further replies that 802.11b would be compatible with Marchand, because the proposed combination "only affects the underlying communication technology, not the higher-layer JAVA or JINI software," (citing Pet. 44–45; Ex. 1003 ¶¶ 60–63) and "Bluetooth and 802.11 are implemented at the same levels of the protocol 26 6 IPR2015-01443 Patent 7,295,532 B2 stack, as evidenced by the prior art and acknowledged by [Dr. Mandayam]" (citing Ex. 1016, 68:23–25, 70:10–14; Ex. 1005, Fig. 2; Ex. 1008, iii). Id. at 19. On the full record, we are persuaded by Petitioner's analysis of the references and the evidence presented. We credit Dr. Kiaei's testimony that one of ordinary skill in the art would have known to substitute 802.11b for Bluetooth, and would have been motivated to do so, in order to provide higher-rate and longer-range local area wireless communication to replace the lower-rate and shorter-range Bluetooth wireless standard. Ex. 1003 ¶¶ 62–63. Patent Owner's Bluetooth-piconet-based arguments entail an alleged requirement of a master-slave relationship in Bluetooth, which Petitioner has demonstrated is not the case. As such, Patent Owner's arguments do not sufficiently counter Petitioner's arguments and evidence illustrating that the 802.11b standard would have been a viable and interchangeable alternative to Marchand's Bluetooth. 3. Ground Based on Marchand, Router Plugins, Hoffmann, and RFC 2663 Petitioner challenges claim 9 as obvious under 35 U.S.C. § 103 over Marchand, Router Plugins, Hoffman, and RFC 2663. Pet. 46–48. Patent Owner disputes Petitioner's contentions. PO Resp. 49–52. Claim 9 depends from claim 1, and requires "wherein the router software component includes a network address port translation ('NAPT') software component." Ex. 1001, 17:29–31. a. RFC 2663 RFC 2663 discloses a basic Network Address Translator ("NAT") and a Network Address Port Translation ("NAPT"), which is an extension of NAT. Ex. 1009 ¶¶ 4.0–4.4. NAPT "allows the transport identifiers of a 27 6 IPR2015-01443 Patent 7,295,532 B2 number of private hosts to be multiplexed into the transport identifiers of a single external address." Id. ¶ 4.1.2. b. Analysis Petitioner argues one of ordinary skill in the art would have modified the Marchand/Router Plugins/Hoffman combination using RFC 2663 standard "to provide the ability to multiplex multiple private hosts into the transport identifiers of a single external IP address." Pet. 46–47 (citing Ex. 1003 ¶ 65). Petitioner further argues one of ordinary skill in the art would have been motivated to make such a modification, which amounts to "the use of a known technique to improve similar devices in the same way." Id. at 47. Specifically, Petitioner argues one of ordinary skill in the art would have understood that NAPT functionality would have improved the overall capacity of the Marchand/Router Plugins/Hoffman combination with its ability to multiplex multiple private hosts into the transport identifiers of a single external IP address. Id. (citing Ex. 1003 ¶ 65). Patent Owner argues that there are many variations of address translation, and that RFC 2663 identifies four NAT flavors: Traditional NAT (or) Outbound NAT; Bi-direction NAT (or) Two-Way NAT; Twice NAT; and Multihomed NAT. PO Resp. 49. NAPT, according to Patent Owner, is one of the two variations of Traditional NAT. Id. at 51 (citing Ex. 1009, 10– 14). Patent Owner refers to its earlier argument for claim 8 that Marchand teaches away from using NAT based address translation to avoid problems that can arise. Id. at 51. Furthermore, Patent Owner argues, implementation of NAPT functionality in Marchand's mobile gateway would be unnecessary, and Marchand instead teaches that only one device makes a call at a time. Id. at 51–52. 28 6 IPR2015-01443 Patent 7,295,532 B2 Petitioner replies that "Marchand's use of NAT makes Marchand suitable for NAPT and a [person of ordinary skill in the art] would have understood NAPT to be useful in handling the various types of data traffic in Marchand." Reply 21 (citing Ex. 1003 ¶¶ 64–65). Petitioner maintains that, further to Patent Owner's acknowledgment that NAPT is one of the two variations of Traditional NAT, one of ordinary skill in the art would contemplate use of a variation of NAT, such as NAPT, when reviewing Marchand. Pet. 47; Ex. 1003 ¶¶ 64–65; Reply 21–22. Regarding Patent Owner's argument that NAPT is unnecessary because Marchand does not discuss allowing two devices to place a call at the same time, Petitioner argues that (a) Marchand describes that the API is only downloaded to a device involved in a call, without limitation on the number of devices that can be involved in a call at any given time (citing Ex. 1005, 6:29–31); and (b) Patent Owner fails to consider the entire teachings of Marchand, including the various types of data communications routed by mobile gateway 33, such as those associated with "security surveillance systems and temperature-control thermostats (citing Ex. 1003 ¶ 28; Ex. 1005, 13:16–19)." Id. at 22–23. Accepting that NAPT is one of the two variations of Traditional NAT, and given that we have found that the subject matter of claim 8, which requires NAT, would have been obvious in view of Petitioner's proposed combination, we agree that use of a variation of NAT, i.e. NAPT, would amount to "the use of a known technique to improve similar devices in the same way." See KSR, 550 U.S. at 417. We credit Dr. Kiaei's testimony that such functionality would have the advantage of improving the overall capacity of Marchand's mobile gateway 33 and allow multiple devices to 29 6 IPR2015-01443 Patent 7,295,532 B2 simultaneously communicate with network 35. Ex. 1003 ¶¶ 64–65. Patent Owner's reliance on a particular teaching of Marchand, without accounting for the variety of disclosures in Marchand related to situations in which various types of data communications may be routed by Marchand's mobile gateway 33, does not change this determination. We are persuaded by Petitioner's presentation of the evidence and its arguments that the subject matter of claim 9 would have been obvious over the proposed combination of references. 4. Ground Based on Marchand, Router Plugins, Hoffman, and Schweitzer Petitioner challenges claims 15, 16, and 24 as obvious under 35 U.S.C. § 103 over Marchand, Router Plugins, Hoffman, and Schweitzer. Pet. 52–59. Patent Owner disputes Petitioner's contentions. PO Resp. 52–56. Claim 14 (from which 15 and 16 depend) and claim 24 each recite a "network service software component." a. Schweitzer Schweitzer discloses a method and apparatus for session reconstruction using a first analyzer coupled to a second analyzer. Ex. 1011, Abstract. Schweitzer's analyzer 104 analyzes packets to be assigned to flows and then to sessions, and can gather statistics about flows and sessions and about the corresponding application usage. Id. at 5:9–13, 7:2–48. The statistics gathered by Schweitzer can be analyzed to meter and monitor usage (id. at 4:33–38) and to generate service detail records for usage (id. at 2:10–15). Schweitzer may also implement policy 114 to allocate certain bandwidth to certain users or groups, or to determine treatment of different application events. Id. at 5:15–21. One or more filters may be implemented to control different flows on a network and to enforce policies. Id. at 9:17–22. 30 6 IPR2015-01443 Patent 7,295,532 B2 b. Analysis Petitioner argues one of ordinary skill in the art would have "implemented the application-level network monitoring and policy enforcement of Schweitzer in the mobile gateway 33 of the Marchand/Router/Hoffman combination." Pet. 55. This implementation, according to Petitioner, would result in mobile gateway 33 implementing a modified statistics gathering plugin to gather statistics regarding network usage of individual applications. Id. Also, according to Petitioner, a person of ordinary skill in the art would have modified Schweitzer's filter to implement application-level filtering, such as limiting or allowing traffic for a particular application. Id. at 56 (citing Ex. 1003 ¶ 76). Petitioner further argues one of ordinary skill in the art would have been motivated to make such a modification, which amounts to "the use of a known technique to improve similar devices in the same way." Id. Specifically, Petitioner argues the "statistics gathering plugin" and the "packet scheduling plugin" in the Marchand/Router Plugins/Hoffman combination would have been "improved by the ability to collect application-level statistics using Schweitzer's application recognizer 110 and application tests 206, and the ability to filter traffic based on particular applications, as implemented by Schweitzer's filter 102." Id. at 56–57 (citing Ex. 1003 ¶ 77). Regarding claim 15, Petitioner maps the modified "statistics gathering plugin" of the combination to the statistics software component that collects usage information of a first wireless device. Pet. 57. Regarding claim 16, Petitioner reasons that the modified "statistics gathering plugin" would have been implemented in gateway 33 and would have gathered statistics regarding network usage of individual applications running on devices in the 31 6 IPR2015-01443 Patent 7,295,532 B2 LAN. Id. at 57. Regarding claim 24, Petitioner alleges that the modified "packet scheduling plugin" of the combination would have been able to enforce different application level policies and rules based on statistics gathered, using the RealAudio(TM) example given in Schweitzer. Id. at 58– 59 (citing Ex. 1011, 8:11–17). Patent Owner argues that one of ordinary skill in the art would not have been motivated to make this combination such that the "statistics gathering plugin" and "packet scheduling plugin" of Schweitzer would have been located on Marchand's gateway mobile phone, because "the only IP packets that the mobile gateway device could filter and/or analyze are the IP packets directed at it while providing the call control service." PO Resp. 54– 55. Patent Owner refers to its theory that the requesting device and the device providing the service in Marchand establish their own, independent piconet, as illustrated in Figure 4 of Dr. Mandayam's declaration, in which mobile gateway 33 is not necessarily involved. Id.; Ex. 2201 ¶¶ 33–34, 100. Patent Owner additionally states that the size and ease of mobility of Marchand's mobile phone would make the mobile gateway ineffective, and that it has less memory, processing power, and battery life. PO Resp. 55–56. Petitioner replies that the gateway provides access to an external cellular network and therefore is a natural location to gather statistics of the LAN. Reply 23–25 (citing Ex. 1003 ¶¶ 75–77). Petitioner challenges Patent Owner's theory that a separate piconet is disclosed in Marchand as "hypothetical and unsupported." Id. at 24. Petitioner also challenges Patent Owner's contention that Marchand's gateway would have insufficient resources as uncorroborated opinion. Id. at 25. 32 6 IPR2015-01443 Patent 7,295,532 B2 Figure 4 of Dr. Mandayam's declaration is an annotated version of Marchand's Figure 3 that was created by Dr. Mandayam to illustrate a hypothetical situation. Ex. 2201 ¶¶ 33–34. We do not regard the "exemplary Bluetooth network" shown in this figure as the only possible configuration of Marchand's network. PO Resp. 16. We also agree with Petitioner that Marchand itself does not disclose a separate piconet between the laptop and printer that excludes mobile gateway 33. Reply 24. The more persuasive argument is Petitioner's, wherein "local devices on Marchand's LAN 30 can only access the external wireless IP network 35 by passing through the gateway." Id. (citing Ex. 1016, 141:12–15; Ex. 1003 ¶¶ 75–77). In view of this, we are persuaded by Petitioner's rationale that a person of ordinarily skill in the art would have implemented a statistics gathering plugin and a packet scheduling plugin in mobile gateway 33. See Pet. 55–56 (citing, inter alia, Ex. 1003 ¶¶ 75–76). Regarding the resources on mobile gateway 33, we are not aware of evidence in the record demonstrating that mobile gateway 33 would be deficient in the resources required to implement Schweitzer's statistics-gathering and packet-scheduling plugins. In view of the many other types of software running on mobile gateway 33 and functions performed by mobile gateway 33 (Pet. 56–57; Reply 25 (referring to JINI, SIP, and various information-aggregating functions of Marchand)), one of ordinary skill in the art would not have been deterred from implementing plugins such as those found in Schweitzer in mobile gateway 33. We are persuaded by Petitioner's presentation of the evidence and its arguments that the subject matter of claims 15, 16, and 24 would have been obvious over the proposed combination of references. 33 6 IPR2015-01443 Patent 7,295,532 B2 E. Testimony of Dr. Kiaei Patent Owner argues that "Dr. Kiaei's opinions are unreliable because they misunderstand and mischaracterize the inner workings of Marchand's network and devices." PO Resp. 14. Dr. Kiaei's "opinions regarding Bluetooth, the proposed modifications of Marchand, and the purported motivations for modifying Marchand should be entitled to little weight, if any," Patent Owner argues, because of "Dr. Kiaei's lack of understanding Bluetooth and failure to consider the implications of Marchand's reliance on Bluetooth with respect to the proposed combinations." Id. at 17. Specifically, Patent Owner argues that "Dr. Kiaei testified that he did not believe that one device could be connected in more than one piconet" and "admitted that he did not study these types of connections." Id. Petitioner replies that the "portion of Marchand relied upon in the Petition does not rely on a device being connected in more than one piconet." Reply 26. Thus, Patent Owner's "sub-piconet" theory is supported by hypothetical drawings and testimony of Dr. Mandayam, but not by Marchand, according to Petitioner. Id. It is "not surprising" that Dr. Kiaei responded that whether the device could be connected in more than one piconet was outside of the scope of what he was looking at, and a "hypothetical question" that he could not answer without more information, according to Petitioner. Id. In sum, Petitioner argues that Patent Owner's "attack on Dr. Kiaei's credibility is misguided and [is] not germane to any substantive issues involved in this proceeding." Id. at 27. We have the discretion to determine the appropriate weight to be accorded to the evidence presented, including opinion testimony, based on the disclosure of the underlying facts or data upon which the opinion is 34 6 IPR2015-01443 Patent 7,295,532 B2 based. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to credit one witness's testimony over another "unless no reasonable trier of fact could have done so"). We are not persuaded by Patent Owner's arguments that Dr. Kiaei's testimony as a whole should be given "little weight, if any." We have considered Patent Owner's sub-piconet theory, and we determine that it would not have limited an ordinarily skilled artisan's understanding of Marchand. Thus, we accord an appropriate weight to Dr. Kiaei's testimony as indicated in this Decision and for the reasons articulated in this Decision. F. Motion to Exclude The party moving to exclude evidence bears the burden of proof to establish that it is entitled to the relief requested, e.g., that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). Patent Owner filed a Motion to Exclude (Paper 21), to which Petitioner responded (Paper 24) and to which Patent Owner filed a Reply (Paper 25). Patent Owner's motion seeks to exclude (a) Exhibits 1017 and 1020 as inadmissible pursuant to 37 C.F.R. § 42.123(b); (b) Exhibits 1017, 1019, and 1020 as not authenticated; (c) Exhibits 1017, 1019, and 1020 as hearsay; and (d) Exhibits 1013 and 1017–1021 as irrelevant. Paper 21, 1–13. Petitioner responds that (a) Exhibits 1017 and 1020 are proper reply evidence; (b) Exhibits 1017, 1019, and 1020 meet FRE 901; (c) Exhibits 1017, 1019, and 1020 do not constitute inadmissible hearsay, as date information is admissible; and (d) Exhibits 1013 and 1017–1021 are relevant. Paper 24, 1–15. 35 6 IPR2015-01443 Patent 7,295,532 B2 Because we do not rely upon Exhibits 1013 or 1019 in this Decision, Patent Owner's Motion to Exclude need not be decided as to these exhibits. Accordingly, Patent Owner's Motion to Exclude is dismissed as moot as to Exhibits 1013 and 1019. We disagree that Exhibits 1017 and 1020 are inadmissible pursuant to 37 C.F.R. § 42.123(b), or that they are improper reply evidence. Petitioner may submit evidence with its Reply in support of Petitioner's properly responsive arguments. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1078 (Fed. Cir. 2015). In particular, Petitioner argues these articles elaborate on the NetBSD software plugins discussed in Router Plugins' Abstract, to counter Patent Owner's argument that Marchand and Router Plugins are directed to different devices. Paper 24, 4–5. We find that Exhibits 1017 and 1020 were properly submitted by Petitioner as evidence in rebuttal to Patent Owner's argument. We further disagree that Exhibits 1017 and 1020 are not authenticated. Patent Owner fails to provide evidence that these documents are not, on their face, what they appear to be. Specifically, Petitioner refers to the "'AUUG' marks, an ISBN number, a copyright notice, and date and contact information" in Exhibit 1017, as well as the "IEEE marks, a copyright notice, and date information" in Exhibit 1020. Id. at 6. We are persuaded that Exhibits 1017 and 1020 are authenticated at least under Federal Rule of Evidence 901(b)(4). On this record, we accept Exhibits 1017 and 1020 for what they purport and are alleged to be. Moreover, we see no reason that Exhibit 1020 would not fall under the ancient document exception. FRE 901(b)(8). 36 6 IPR2015-01443 Patent 7,295,532 B2 Similarly, we do not find that the date information on Exhibits 1017 and 1020 constitutes inadmissible hearsay. We find credible the testimony of Petitioner's declarant, Jessica Coral Sheldon-Hess, attesting to the date information on those exhibits, at least as to information in a learned treatise, periodical, or pamphlet under FRE 803(18). Ex. 1023. As to Exhibit 1020, we credit Ms. Sheldon-Hess's testimony that the date information therein qualifies as a statement in an ancient document under FRE 803(16). Id. Finally, Patent Owner's arguments regarding relevance are directed more to the weight to be given to the evidence before us, rather than its admissibility. We are in a position to assign the appropriate weight to be accorded to a particular piece of evidence. Accordingly, Patent Owner's Motion to Exclude is denied as to Exhibits 1017, 1018, 1020, and 1021. G. Conclusion Based on the information presented, we conclude that Petitioner has demonstrated by a preponderance of the evidence that (a) claims 1, 4, 5, 8, 12, 14, and 23 are unpatentable over Marchand, Router Plugins, and Hoffman under 35 U.S.C. § 103; (b) claim 7 is unpatentable over Marchand, Router Plugins, and 802.11b under 35 U.S.C. § 103; (c) claim 9 is unpatentable over Marchand, Router Plugins, and RFC2663 under 35 U.S.C. § 103; and (d) claims 15, 16, and 24 are unpatentable over Marchand, Router Plugins, and Schweitzer under 35 U.S.C. § 103. 37 6 IPR2015-01443 Patent 7,295,532 B2 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that claims 1, 4, 5, 7–9, 12, 14–16, and 23–24 are held unpatentable; FURTHER ORDERED that Patent Owner's Motion to Exclude is denied as to Exhibits 1017, 1018, 1020, and 1021, and dismissed as to Exhibits 1013 and 1019; and FURTHER ORDERED because this is a Final Written Decision, parties to the proceeding seeking judicial review of the decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. 38 6 IPR2015-01443 Patent 7,295,532 B2 FOR PETITIONER: W. Karl Renner Kevin Greene FISH & RICHARDSON P.C. 3200 RBC Plaza, 60 South Sixth Street Minneapolis, MN 55402 IPR00035-0003IP2@fr.com FOR PATENT OWNER: Andy H. Chan PEPPER HAMILTON LLP 333 Twin Dolphin Drive, Suite 400 Redwood City, CA 94065 chana@pepperlaw.com George S. Haight Andrew Schultz PEPPER HAMILTON LLP 125 High Street, 19th Floor, High Street Tower Boston, MA 02110 haightg@pepperlaw.com schultza@pepperlaw.com Tuhin Ganguly PEPPER HAMILTON LLP 600 Fourteenth Street, N.W. Washington, DC 20005 gangulyt@pepperlaw.com 39