M2M Solutions LLC

Patent Trials and Appeals Board

Jan 20, 2021

IPR2019-01204 (P.T.A.B. Jan. 20, 2021)

Trials@uspto.gov Paper 43
571-272-7822 Date: January 20, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AMAZON.COM, INC.,
Petitioner,

v.

M2M SOLUTIONS LLC,
Patent Owner.
____________

IPR2019-01204
Patent 9,961,477 B2
____________

Before KARL D. EASTHOM, DAVID C. MCKONE, and
FREDERICK C. LANEY, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
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I. INTRODUCTION
Amazon.com, Inc. (“Petitioner”) filed a Petition to institute an inter
partes review of claims 1–30 (the “challenged claims”) of U.S. Patent No.
9,961,477 B2 (Ex. 1001, the “’477 patent”). Paper 2 (“Petition” or “Pet.”).
M2M Solutions LLC (“Patent Owner”) filed a Preliminary Response.
Paper 7 (“Prelim. Resp.”). Prior to institution, the parties submitted
preliminary briefing addressing the Board’s discretion to deny institution.
See Paper 11 (“Pet. Prelim. Reply Br.”); Paper 13 (“PO Prelim. Sur-Reply”).
The Board instituted an inter partes review of the challenged claims
pursuant to 35 U.S.C. § 314. Paper 14 (“Inst. Dec.”). After institution,
Patent Owner filed a Patent Owner Response (Paper 22, “PO Resp.”);
Petitioner filed a Reply (Paper 25); and Patent Owner filed a (corrected) Sur-
reply (Paper 31, “Sur-reply” or “PO Sur-reply”).1 The parties then presented
oral arguments via a (video) Hearing (August 12, 2020), and the Board
entered a Hearing transcript into the record. Paper 40 (“Tr.”).
Subsequent to the Hearing, the Board authorized (Paper 37)
supplemental briefing regarding a collateral estoppel issue premised on final
written decisions on three related patents recently affirmed by the Federal
Circuit in M2M Solutions LLC v. Amazon.com, Inc., 825 F. App’x 893 (Fed.
Cir. 2020) (Fed. Cir. R. 36) (nonprecedential), as discussed further below.
Paper 38 (“PO Supp. Br.”); Paper 39 (“Pet. Supp. Br.”); Paper 41 (“PO
Supp. Reply Br.”); Paper 42 (“Pet. Supp. Reply Br.”).2

1 See Ex. 2032 (Board email authorizing the filing of the corrected Sur-
reply).
2 Pursuant to an email request by Patent Owner, the Board extended the due
dates for the supplemental briefing relative to the due date originally
specified by the Order (Paper 37). See Ex. 3002 (Email chain).
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For the reasons set forth in this Final Written Decision pursuant to 35
U.S.C. § 318(a), we determine that Petitioner demonstrates by a
preponderance of evidence that the challenged claims are unpatentable.
A. Real Party-In-Interest
Petitioner identifies Amazon.com, Inc. as the real party-in-interest.
Pet. 2.
B. Related Proceedings
Patent Owner asserted the ’477 patent and four related patents in
M2M Solutions LLC v. Amazon.com, Inc., Case No. 1:17-cv-00202-LPS-
CJB (D. Del.) and M2M Solutions LLC v. Amazon.com, Inc., No. 1:18-cv-
01532-LPS-CJB (D. Del.). Pet. 2; Paper 4, 2. Related proceedings also
include the following PTAB proceedings: Amazon.com, Inc. v. M2M
Solutions LLC, IPR2017-01891, Paper 32 (PTAB Feb. 7, 2019) (Final
Written Decision); Amazon.com, Inc. v. M2M Solutions LLC, IPR2017-
01892, Paper 32 (PTAB Feb. 7, 2019) (Final Written Decision) (the “’1892
FWD” or the “’1892 IPR”); Amazon.com, Inc. v. M2M Solutions LLC,
IPR2017-01893, Paper 32 (PTAB Feb. 7, 2019) (Final Written Decision);
Amazon.com, Inc. v. M2M Solutions LLC, IPR2017-01894, Paper 8 (PTAB
Feb. 8, 2018) (Denial of Institution); Amazon.com, Inc. v. M2M Solutions
LLC, IPR2017-01895, Paper 30 (PTAB Feb. 7, 2019) (Final Written
Decision); Amazon.com, Inc. v. M2M Solutions LLC, IPR2017-01896,
Paper 35 (PTAB Feb. 7, 2019) (Final Written Decision); Amazon.com, Inc.
v. M2M Solutions LLC, IPR2019-01205 (concurrent decision to institute).
See Pet. 2–3; Paper 4, 2–3.
As indicated above, Patent Owner appealed three related final written
decisions, the ’1892 FWD and the final written decisions in IPR2017-01891
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and IPR2017-01893. See Ex. 1204. The Federal Circuit affirmed the three
final written decisions without issuing an opinion. See M2M Solutions LLC
v. Amazon.com, Inc., 825 F. App’x 893 (Fed. Cir. 2020) (Fed. Cir. R. 36)
(nonprecedential) (the “M2M Federal Circuit Decision”). The ’477 patent
and the patent challenged in the ’1892 IPR, U.S. Patent No. 8,577,358 B2
(the “’358 patent”), share a common specification.
C. The ’477 Patent
The ’477 patent, titled “System and Method for Remote Asset
Management,” describes “[a] remote asset management system” including
“a network of programmable wireless modules, each having an antenna and
an identification module and configured to communicate via a radio
communication protocol” and “a plurality of assets each linked to one of the
wireless modules and configured to be managed by the linked wireless
module.” Ex. 1001, code (54), (57). A remote system server service
platform “receive[s] remote asset data from the wireless modules, pass[es]
the remote asset data to and from the wireless modules, send[s] messages to
at least one of the wireless modules, monitor[s] the wireless modules by
requesting and receiving current mode information, and remotely program[s]
the wireless modules.” Id. at (57). Figure 2, reproduced below, illustrates
applications controlled by wireless modules in an asset management system.
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Figure 2 illustrates different applications 310 controlled by wireless module
10 in a mobile telecommunications network operating according to
the GSM standard. Id. at 15:57–60.

In Figure 2, wireless modules 10 communicate via mobile
telecommunications infrastructure 400. Ex. 1001, 15:66, 16:1–3. Mobile
phone or message-enabled wireless terminal 170 communicates with
specific wireless module 10 or with system server service platform 150 via
point of inter-connection 160 with the mobile telecommunications
infrastructure 400. Id. at 15:66, 16:3–7. In one example, laptop PC 140a
manages a small number of wireless modules. Id. at 16:8–10. In other
examples, “[t]he wireless module (10) is capable of controlling many system
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operation variables of the associated asset such as an asset operating system,
an electronic control system, an electromechanical servo, a stepper motor, an
electricity mains switch, a thermocouple and a means to access or update
data (310).” Id. at 16:11–16. In another example, “[t]he wireless module
has the capability to be integrated with a utilities meter such as a water flow
meter (300) wherein water usage data can be remotely accessed from the
wireless module integrated with the utility meter and forwarded to the water
board.” Id. at 16:17–21.
Other examples follow:
the remote programming of consumer devices such as solid state
video recorders and other household equipment including
heating systems and the like wherein the remote server may
monitor the scheduling of preferred television broadcasts
according to stored user preferences and forward messages of
upcoming programmes to the user and organise the programming
of a home video recorder in response to receiving messages back
from the user,
Ex. 1001, 10:64–11:4;
a mobile phone or similar PDA device such as for the activation
or change of highway traffic speed indicators, wherein the
wireless module receives data from authorised personnel or
systems to change the display of the speed indicator to suit
changing driving conditions due to an accident or change in
weather,
id. at 11:11–16; and
an improved remote asset management system, which gathers
data according to the use of a particular asset and forwards this
data to a remote server for the purpose of optimising the asset
and for designing an appropriate range of services to support the
said use of the asset wherein the wireless module may comprise
a display having a range of options such as pull down menus for
internet or dedicated service access and wherein these might be
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improved if the range of options were prioritised automatically
according to the way the user preferred to use the device or in the
order of access of mostly used features,
id. at 11:41–52.
D. The Challenged Claims
Petitioner challenges claims 1–30 of the ’477 patent. Pet. 1. Claims
2–19 depend from independent claim 1. Claims 21–30 depend from
independent claim 20. Independent claims 1 and 20 recite methods with
materially similar limitations for purposes of this trial. Claim 1, reproduced
below, illustrates the subject matter of the challenged claims:
1. [Element 1[Preamble]] A method of operating a remote
computer server platform to provide a range of consumer
services by autonomously monitoring and managing a plurality
of consumer device assets wirelessly connected to one or more
communications networks, each asset having operating system
and application software, nonvolatile memory for storing files of
data content for display to a consumer user of the device, and a
display apparatus for displaying the stored data content, said
method comprising:
[Element 1[a]] providing a remote computer server platform
connected to the one or more communications networks, the
remote computer server platform configured to execute software
applications for monitoring and managing the plurality of
consumer device assets, [Element 1[b]] each of said assets being
registered with the remote computer server platform;
[Element 1[c]] receiving at the remote computer server
platform communications sent from each of the plurality of
consumer device assets containing operational status information
indicative of an operational status of the particular sending
consumer device asset, said communications having
automatically resulted from at least one selected from the group
consisting of preprogrammed conditions and programming
instructions generated by the remote computer server platform;
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[Element 1[d]] receiving at the remote computer server
platform communications sent from each of the plurality of
consumer device assets containing consumer usage information
identifying a manner in which a consumer user has used the
particular sending consumer device asset, said communications
having automatically resulted from at least one selected from the
group consisting of preprogrammed conditions and
programming instructions generated by the remote computer
server platform;
[Element 1[e]] monitoring the plurality of consumer device
assets by the remote computer server platform by automatically
processing, according to preprogrammed conditions, the
received operational status information and the received
consumer usage information;
[Element 1[f]] managing the plurality of consumer device
assets by the remote computer server platform, based upon the
results of having processed at least some of the received
consumer usage information, by sending communications
containing one or more management instructions that cause the
stored display data content files of one or more assets to be
automatically modified so as to provide a consumer service; and
[Element 1[g]] wherein the aforesaid communications
received by and sent from the remote computer server platform
are transmitted over the one or more communications networks
and comprise at least one selected from the group consisting of
General Packet Radio Service (GPRS) data messages, Enhanced
Data rates for GSM Evolution (EDGE) data messages, and other
wireless packet switched data messages.
Ex. 1001, 26:5–61 (information supplied by Petitioner).
E. Asserted Grounds of Unpatentability
Petitioner asserts that claims 1–30 would have been unpatentable on
the following grounds.
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Claim(s) Challenged 35 U.S.C. § References
1–6 103(a) Kloba,3 Multer4
7, 14, 16, 17, 19–25 103(a) Kloba, Multer, Loughran5
8–12, 15, 18, 26–30 103(a) Kloba, Multer, Loughran, Fong6
13 103(a) Kloba, Multer, Loughran, Fong, Chow7
Pet. 4–5. Petitioner relies on the Declaration of George Kesidis, Ph.D.
(Ex. 1005). Patent Owner relies on the Declarations of Brian A. Berg (Ex.
2002 (filed with the Preliminary Response)), (Ex. 2029 (filed with the
Response)).
II. ANALYSIS
A. Collateral Estoppel Background
As indicated above, the Board ordered preliminary briefing to address
Patent Owner’s request to the Board to deny institution under 35 U.S.C.
§§ 314(a) and 325(d) under the Board’s discretionary authority. Patent
Owner primarily grounded its request for the Board to deny institution on
collateral estoppel assertions, citing the Board’s final written decisions in
three related cases, but primarily the ’1892 FWD, which involved a related
patent as indicated above. Supra § I.A. As also indicated above, after the
M2M Federal Circuit Decision that affirmed the three final written
decisions, the Board ordered additional briefing on the issue of collateral
estoppel.

3 Kloba et al., US 6,421,717 B1, issued July 16, 2002 (Ex. 1006).
4 Multer et al., US 6,671,757 B1, issued Dec. 30, 2003 (Ex. 1007).
5 Loughran et al., US 2002/0129107 A1, published Sept. 12, 2002
(Ex. 1008).
6 Fong, US 7,197,011 B2, issued Mar. 27, 2007 (Ex. 1010).
7 Chow et al., US 2002/0191557 A1, published Dec. 19, 2002 (Ex. 1009).
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Prior to the M2M Federal Circuit Decision, the Board denied Patent
Owner’s request to exercise the Board’s discretion under 35 U.S.C.
§§ 314(a) and 325(d) to deny institution, stating as follows:
The ’1892 IPR represents the primary basis for Patent
Owner’s discretionary denial arguments. [Prelim. Resp. 22–32].
In the ’1892 IPR, the Board held claims 1–30 of U.S. Patent No.
8,577,358 B2 (the “’358 patent”) unpatentable for obviousness
based on the same prior art as involved here. See ’1892 FWD 2–
4. The parties agree the ’1892 FWD and the proceeding here
involve the same material issues, as discussed further below. As
noted above, Patent Owner appealed the decision in the ’1892
FWD to the Federal Circuit.
Inst. Dec. 9 (emphasis added).
In deciding not to exercise discretion to deny institution, we quoted
Patent Owner as characterizing the instant trial as involving “the exact same
analysis and trial” as involved in the ’1892 IPR as follows:
Petitioner here has simply resubmitted its prior petition
[from the ’1892 IPR challenging the ’358 patent] with the same
art and “mirror image” arguments, asking the Board to repeat the
entire prior trial, analysis and opinion. Having the Board repeat
the exact same analysis and trial is precisely the inefficient and
wasteful burden that the Board has looked to prevent. The Board
should decline to institute a duplicative IPR here, and instead
allow the parties to address the validity of the ’477 patent in the
pending District Court action aided by the Board’s Final Written
Decision on the ’358 patent.
Inst. Dec. 9–10 (quoting Prelim. Resp. 31) (emphasis added).
We further noted that “Patent Owner has appealed the ’1892 FWD to
the Federal Circuit,” and quoted Patent Owner’s argument that “[r]equiring
the parties to litigate those issues simultaneously before the Federal Circuit
and the Board would be overly burdensome to the Patent Owner.” Inst. Dec.
10 (quoting Prelim. Resp. 32). Patent Owner stated that “[t]he parties will
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address the same issues, particularly claim construction before the Federal
Circuit that they would need to address in any new IPR here.” Prelim. Resp.
32 (emphasis added).
We noted that Petitioner similarly contended that “the claims of the
’477 patent challenged in this IPR recite nearly identical subject matter as
claims that the Board has already invalidated in a prior IPR involving a
related patent (IPR2017-01892, ‘the ’[1892] IPR’).” Inst. Dec. 11 (quoting
PO Prelim. Sur-reply 1). And “[a]ccording to Petitioner, Patent Owner
‘attempts to capitalize on this similarity [to the ’1892 IPR] by arguing that
the Board should exercise its discretion to deny institution, thereby sparing
claims that are invalid for precisely the same reasons as those the Board
articulated in the ’[1892] IPR.’” Id. (quoting PO Prelim. Sur-Reply 1). We
also noted that “Petitioner also contends Patent Owner ‘asks the Board to
hold that a patent owner can avoid adverse Board determinations simply by
filing continuation applications with claims that are insubstantially different
from invalidated ones. The Board should not allow [Patent Owner] to game
the patent system in this way.’” Id. (quoting PO Prelim. Sur-reply 1)
(emphasis added).
We determined initially that “the parties agree that the instant case
and the ’1892 IPR involve different patents albeit with materially similar
issues, including the same prior art, materially similar claims, and materially
similar arguments.” Inst. Dec. 11.
We also made the following observations:
Based on this similarity of claims, prior art, and issues, as
indicated above, Patent Owner refers to “mirror image”
arguments (Prelim. Resp. 31), similarly characterizing the instant
Petition as a “mirror[]” of the ’1892 petition:
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Petitioner admits that the current Petition
essentially mirrors its prior Petition against related U.S.
Patent 8,577,358 (“the ’358 patent”) [in the ’1892 IPR],
the results of which are now on appeal to the Federal
Circuit. The appeal is likely to be resolved before a final
written decision would issue in this matter, and
simultaneous litigation of the same issues before the
Federal Circuit and the Board would be inefficient and
wasteful of the Board’s resources.
Inst. Dec. 13 (quoting Prelim. Resp. 2) (emphasis added).
We further initially observed that
[a]s the parties argue, the preliminary record here shows that the
two proceedings involve materially similar issues that the
Federal Circuit likely will rule upon. In addition to materially
similar prior art, claims, arguments, and claim construction, the
’477 patent and the ’358 patent share a common ancestor
application. Compare Ex. 1001, code (63), with ’01892 IPR,
Ex. 1002, code (63).
Inst. Dec. 13 (emphasis added).
We also initially determined as follows:
In other words, it appears most likely the Federal Circuit
will provide guidance (if not serve as basis for collateral
estoppel) here (based on the materially similar issues and
claims) before the inter partes trial ends and before the district
court trial ends in a decision on the validity of one or more ’477
patent claims. Instigating efforts anew in the district court as
compared to pursuing a familiar path here with a controlling
Federal Circuit decision probably forthcoming would foster
inefficiency.
Inst. Dec. 14 (emphasis added).
We stated that “[g]iven the prosecution history record as devoid of an
explanation about the relevance of the ’1892 IPR, where both parties agree
the two inter partes reviews present materially similar issues, and with a
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looming Federal Circuit decision potentially controlling the outcome here,
we decline to exercise our discretion and deny institution.” Inst. Dec. 15.
Given that the parties and the Board agreed prior to institution that a
Federal Circuit decision probably would serve as a basis for collateral
estoppel at some point in this inter partes trial, the stated position of the
parties colors the findings as outlined below that collateral estoppel applies
to materially similar claim limitations here. Nevertheless, as discussed
further below, Patent Owner now argues, for various reasons, that collateral
estoppel does not apply. See PO Supp. Br. 5–20. Petitioner argues that
estoppel applies to various claim limitations and issues, and even where
estoppel might not apply, the ’1892 FWD provides guidance. See Pet. Supp.
Br. 4–19.
As our reviewing court has explained, collateral estoppel precludes a
party from relitigating an issue if
(1) a prior action presents an identical issue; (2) the prior action
actually litigated and adjudged that issue; (3) the judgment in that
prior action necessarily required determination of the identical . . .
issue; and (4) the prior action featured full representation of the
estopped party.
VirnetX Inc. v. Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (quoting
Stephen Slesinger, Inc. v. Disney Enters., Inc., 702 F.3d 640, 644 (Fed. Cir.
2012)).
B. Claim Construction
Petitioner filed the Petition after November 13, 2018. Accordingly,
we apply the same claim construction standard used to construe the claim in
a civil action under 35 U.S.C. § 282(b), as articulated in Phillips v. AWH
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Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b)
(2019).
1. Preambles of claims 1 and 20
The preamble of claim 1 follows:
A method of operating a remote computer server platform
to provide a range of consumer services by autonomously
monitoring and managing a plurality of consumer device assets
wirelessly connected to one or more communications networks,
each asset having operating system and application software,
nonvolatile memory for storing files of data content for display
to a consumer user of the device, and a display apparatus for
displaying the stored data content, said method comprising:
The preamble of claim 20 includes materially similar recitations.
As explained below (§ II.F.1.b), collateral estoppel applies to the issue
of whether Kloba teaches the nonvolatile memory even if the preamble
carries weight. Patent Owner argues that, in general, the different claim
construction standards, Phillips here, and the broadest reasonable
interpretation standard in the ’1892 IPR, render collateral estoppel
inapplicable. See PO Supp. Br. 7.
But Patent Owner does not contend specifically that the Phillips
standard, as opposed to the broadest reasonable standard as applied in the
’1892 FWD, renders the preamble limiting. PO Supp. Br. 10. Rather, Patent
Owner argues the claim construction of the preamble was not necessary to
the prior panel’s judgment “because the prior [panel] also made the
alternative independent determination that Kloba/Multer satisfies the
‘nonvolatile memory’ preamble language even if it were treated as being a
required limitation.” Id. (citing Ex. 1024, 193–98)). As discussed below
(§ 2.F.1.b), however, Patent Owner did not appeal the preamble issue in the
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M2M Federal Circuit Decision. Accordingly, whether the prior panel made
alternative determinations does not matter, because as explained below
(§ 2.F.1.b), the “independent determination that Kloba/Multer satisfies the
[exact same] ‘nonvolatile memory’ preamble language” (PO Supp. Br. 10)
prevents Patent Owner from relitigating the issue under principles of
collateral estoppel.
In other words, as discussed below (§ II.f.1.b), the ’1892 IPR
“presents” the “identical issue” of whether Kloba satisfies the exact same
nonvolatile memory language; (2) the ’1892 IPR “actually litigated and
adjudged that issue;” (3) the ’1892 FWD judgment “necessarily required
determination of the identical issue; and (4) the prior action featured full
representation of the estopped party” by the same parties as involved here.
See VirnetX, 909 F.3d at 1377 (quoting Stephen Slesinger, 702 F.3d at 644).
Even if collateral estoppel does not apply to the “independent
determination” noted, the different claim construction standards, arguments,
and evidence do not dictate a different outcome here with respect to the
claim construction of the preamble. The prior panel’s decision addresses the
preamble issue by citing to factors applied in Federal Circuit precedent
under the Phillips standard. ’1892 FWD 11–16. As a court does under the
Phillips standard, the Board relied on the specification and considered
extrinsic evidence in the form of general statements by Petitioner about the
scope of the claims in related litigation. See id. at 15–16. We adopt and
incorporate by reference the claim construction set forth in the ’1892 FWD.
See ’1892 FWD 11–16.
As noted above (§ II.A), the ’477 patent and the ’358 patent
challenged in the ’1892 IPR share a common specification. As set forth
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in’1892 FWD, “the preamble does not limit the claims.” ’1892 FWD 12
(citing Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1236
(Fed. Cir. 2017)).
However, a preamble may be limiting if “it recites essential
structure or steps”; claims “depend[] on a particular disputed
preamble phrase for antecedent basis”; the preamble “is essential
to understand the limitations or terms in the claim body”; the
preamble “recit[es] additional structure or steps underscored as
important by the specification”; or there was “clear reliance on
the preamble during prosecution to distinguish the claimed
invention from the prior art.”
Id. (quoting Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808 (citations omitted)). None of these considerations exist here.
Claims 1 and 20 affirmatively refer to “the stored data content files,”
but not to nonvolatile memory. Also, nonvolatile memory does not
represent essential structure for any of the recited steps of the method and
does not represent an essential feature for understanding the limitations in
the claim body. The type of memory that stores the files does not play any
role in performing the general steps recited in the claims. See ’1892 FWD
11–16. Notably, claims 1 and 20 recite methods for operating a remote
computer server platform and its stated purpose is to provide a range of
consumer services for a plurality of consumer device assets. These method
claims do not require any of steps recited in the claims to be performed by
the nonvolatile memory on the consumer device asset; nor does any step of
the claimed method include any specific operations for the nonvolatile
memory. Instead, each of the recited steps are performed by a remote
computer server platform, which is separate and apart from the nonvolatile
memory residing on the consumer device asset. The recitation of “the stored
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display data content files” in the body of the claim, while referring back to
display data content files stored in the memory of the consumer asset,
merely describes what the claimed “management instructions” are for (to
cause a modification automatically to the display data content files in the
preamble).
Just like the ’358 patent involved in the ’1892 FWD, the ’477 patent
does not describe the type of memory that stores data content files in the
asset, let alone state that the memory may, should, or must be nonvolatile
memory. See ’1892 FWD 11–16. Figure 1 of the ’477 patent illustrates
wireless module 10, which may be integrated with an asset, as including
memory module 70. Ex. 1001, 13:53–57. The ’477 patent states that
memory module 70 stores subscriber data and GPS data, but it does not
provide any details regarding the structure or type of memory in the memory
module. Id. at 14:10, 15:8–11 (stating GPS “data is stored in the memory
module (70) for the purpose of creating a tracking log of the movement of
the device”). The specification does not identify nonvolatile memory or
describe it as important to the invention. Neither party identifies or argues a
clear reliance on nonvolatile memory in the preamble during prosecution to
distinguish the claimed invention from the prior art. Rather, the Examiner
found a nonvolatile memory feature for storing data files for display to be
known in the prior art. See Ex. 1004, 101.
Even though the specification does not explicitly disclose a
nonvolatile memory, Patent Owner also argues that a “POSITA would have
understood it to be important for numerous reasons including, for example,
nonvolatile memory is required to store the assets’ software and various
forms of data disclosed in the specification, including GPS data, vehicle
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service history data, and others.” PO Sur-reply 10. Contrary to this
argument, “the sole claimed embodiment taught by the specification” relied
upon by Patent Owner (PO Resp. 11–12 (quoting Ex. 1001, 4:28–38
(emphasis added)) as supporting managing limitation 1[f] (see infra
§ II.B.4), which recites the “stored display data content files,” does not
mention any type of memory. And nothing in the passage indicates that
gathering data of a device used by a consumer requires nonvolatile memory
to store “display data content files.” Similarly, claim 1 does not require any
type of GPS data, vehicle service data, or any other software assets data that
requires a nonvolatile memory. See Ex. 1001, 4:28–38. The breadth of
claim 1 and Patent Owner’s characterization of a sole claimed embodiment,
which does not describe any type of memory or imply any importance for
such a memory, indicates that the specification does not attach importance to
the type of memory.
In sum, because “nonvolatile memory,” as recited in the preambles of
claims 1 and 20, does not represent essential structure, does not represent a
necessary term for understanding the limitations of the claims, the
specification does not describe it as important, and Patent Owner did not rely
upon it during prosecution to distinguish the claimed invention from the
prior art, “nonvolatile memory” does not limit the claims. Therefore, the
term “nonvolatile memory for storing files of data content for display” in the
preambles of independent claims 1 and 20 does not limit the scope of the
claims.
Based on the foregoing discussion, the preamble is not limiting as to
the type (“nonvolatile”) of memory. Even though a different claim
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construction standard applies here, Patent Owner’s arguments do not present
a sufficient reason to deviate from the claim construction in the ’1892 FWD.
2. “Consumer Usage Information”
Limitation 1[d] in claim 1 recites “communications sent from each of
the plurality of consumer device assets containing consumer usage
information identifying a manner in which a consumer user has used the
particular sending consumer device asset.” Ex. 1001, 26:31–35.
Independent claim 20 recites a materially similar limitation.
Petitioner submits that a “[c]onstruction of . . . ‘consumer usage
information’ is not necessary . . . because Patent Owner has amended the
’477 patent’s claims to specifically recite the nature of the corresponding
information, and that language is not ambiguous.” Pet. 9 n.3.
Patent Owner disagrees with Petitioner, “because when viewed in isolation
the claim language is actually inconclusive regarding the degree of
specificity with which the ‘consumer usage information’ must identify for
the server ‘a manner in which a consumer user has used the particular
sending consumer device asset.’” PO Resp. 2. Patent Owner submits that
“[t]his open issue has given rise to a claim construction dispute as to the
proper meaning of ‘consumer usage information’ which the Board now
needs to resolve given its potential materiality to the controversy presented
in this proceeding.” Id.
Patent Owner construes “consumer usage information” in claim 1 of
the ’477 patent to mean “information that identifies the particular
manner in which a consumer user has used the particular sending
consumer device asset.” PO Resp. 4 (italics added).
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In urging the above construction, Patent Owner relies on the same
above-discussed “sole claimed embodiment taught by the specification” (PO
Resp. 11–12 , an “optimising” “pull down menus” “example”:
In a further area of application, consumers would benefit
from a system, which gathered data according to the use of a
particular asset and forwarded this data to a remote server for the
purpose of optimising the asset and for designing an appropriate
range of services to support the said use of the asset. For
example, any communication device which comprised a range of
options such as pull down menus for internet or dedicated service
access might be improved if the range of options were prioritized
automatically according to the way the user preferred to use the
device or in the order of access of mostly used features.
Ex. 1001, 4:28–38 (emphasis added); accord id. at 11:41–52; see PO Resp.
2–3 (quoting the above passage as the only specific supporting embodiment
for the claimed “consumer usage information”).
This passage generally describes “gather[ing] data according to the
use of a particular asset . . . for the purpose of optimi[z]ing the asset.” Ex.
1001, 4:28–38. But it does not describe how or what data it gathers. Patent
Owner contends that this lack of detail in description presents “superfluous
issues . . . wholly outside the scope of the claims.” PO Resp. 4 n.1. But
without such detail, the gathered “data” may include some “data” underlying
an instance in which a user informs the computer that the user selected a
certain option or moved the computer to a certain location. The specific
“example” of “pull down menus” does not necessarily limit the more generic
“gathered data” that precedes the “example” in the passage quoted above.
Nevertheless, Patent Owner explains that in the above embodiment,
[t]he asset forwards “consumer usage information” about itself
(i.e., “data gathered according to the use of a particular asset”) to
a remote server expressly “for the purpose” of allowing that
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information to be utilized by the server for determining what
optimizing modifications should be made to the asset that would
“support the said use of the asset” by the consumer. After taking
account of such information, the server is then able to
automatically prioritize the range of pull-down menu options on
the device “according to the way the [consumer] user preferred
to use the device or in the order of access of [his] mostly used
features.”
PO Resp. 3 (second emphasis added). According to Patent Owner, “the
server could achieve that result [i.e., ‘determining what optimizing
modifications should be made to the asset’] only if the ‘consumer usage
information’ it received from the asset was sufficiently detailed to identify
the particular manner in which the consumer had previously been using the
device’s drop-down menu options.” Id. (citing Ex. 2029 ¶¶ 29–31).
But even if the disclosed example requires knowing the particular
manner of use so that the server can optimize an asset, claims 1 and 20 do
not require optimizing an asset. In other words, claims 1 and 20 are broader
than the example in that respect. Also, claims 1 and 20 do not recite a
particular manner, rather they generally recite “consumer usage information
identifying a manner in which a consumer user has used the particular
sending consumer device asset.” In other words, claims 1 and 20 do not
require identifying a particular manner of asset use so that the “server [can]
automatically prioritize the range of pull-down menu options on the device.”
See Ex. 1001, 4:28–38. Rather, claims 1 and 20 more generally require “one
or more assets to be automatically modified” instead of optimized or
prioritized. Therefore, claims 1 and 20 suggest a more generalized link
between the manner of asset use and the modification of the asset.
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Other examples described in the ’477 patent support a general use of
assets, including monitoring assets for location and sending messages to
assets. For example, the ’477 patent states,
it would be beneficial if a remote asset management solution
existed which could determine the location of the computer,
and[/]or change the operational condition of the computer and its
related power supply and or render the computer unusable from
a remote location by making use of data messages transmitted to
the computer from a remote server. Such a solution would both
help to locate the computer remotely and prevent unauthorised
access of stored data. Also, and in general, such a solution would
enable a company to trace the whereabouts of its computer
workstation inventory automatically by sending requests for each
to return its current GPS coordinate.
Ex. 1001, 3:6–17. The tracking of operational conditions or location of a
computer asset as described in this quoted passage does not require a
particular manner of use of the computer.
Patent Owner refers to this passage as “irrelevant to construing
‘consumer usage information’ because it fails to disclose any information
identifying a consumer’s manner of using the particular sending device
asset.” PO Resp. 7 n.3. To the contrary, as Petitioner argues, this passage
and others describe how a company can trace the various locations of a
computer and its operational condition, signifying that “manner” includes a
user’s manner of using a computer at one location versus using it at another
location (including for a different amount of time). See Reply 6–7 (citing
Ex. 1001, 3:5–17, 4:61–5:6, 5:19–27, 7:36–45, 8:5–17).
As Petitioner also points out, the ’477 patent also describes an “object
of the present invention” as generally “monitoring the use of the computer.”
Reply 6 (quoting Ex. 1001, 9:28–34). At the cited passage, the ’477 patent
states that
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[i]t is a further object of the present invention to provide
an improved remote asset management system, which comprises
the means to communicate with a wireless module associated
with a computer for the purpose of remotely monitoring the use
of the computer and[/]or for sending data to the computer for the
purpose of changing the performance of the computer.
Ex. 1001, 9:28–34. This passage generally describes “monitoring the use of
the computer,” which provides some support for the claimed “consumer
usage information identifying a manner in which a consumer user has used
the particular sending consumer device asset.” The passage also implicates
the claimed “sending communications containing one or more management
instructions that cause the stored display data content files of one or more
assets to be automatically modified so as to provide a consumer service,”
because it generally describes “the means to communicate with a wireless
module associated with a computer for the purpose of remotely monitoring
the use of the computer and[/]or for sending data to the computer for the
purpose of changing the performance of the computer.” See id. In other
words, this passage does not describe optimizing computer assets and
generally embraces the language of claims 1 and 20 without requiring an
identification of a “particular manner” that a consumer uses a computer
asset.
Therefore, we decline to read in “the particular manner” requirement
into the claims. Patent Owner presented similar arguments in the ’1892 IPR.
In that case, Patent Owner relied upon the same “pull down menus” option
that Patent Owner relies upon here. Similar to our determination here, the
panel determined as follows: “[T]he [‘pull down menus’] example to which
Patent Owner cites describes gathering data ‘according to the use of a
particular asset,’ not the particular use of that asset.” ’1892 FWD 17
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(quoting the “pull down menus” example as described at ’1892 IPR,
Ex. 1002, 3:60–4:3)). As the panel in the ’1892 IPR determined, “[t]he
passage on which Patent Owner relies . . . does not support Patent Owner’s
narrow construction because it merely describes a desired result at a high
level of generality and provides little detail as to how an asset would collect
and use data on particular consumer usage.” Id. at 18. As the panel in the
’1892 IPR also determined, the passage suffers from “the same deficiencies”
that Patent Owner describes with respect to other embodiments, namely, the
following:
Patent Owner points to no description in its example ([’1892
IPR,] Ex. 1002, 3:60–4:3) of the pull-down menu data being used
consistent with the other claimed aspects of consumer usage
information, such as being communicated automatically as a
result of a preprogrammed conditions or instructions, being
processed by the server, or management instructions being
communicated based on such processing.
’1892 FWD 20 (citing the same pull down menus example as involved here).
Patent Owner argues that other passages in the specification that “fail to
disclose information that a monitored ‘consumer device asset’ is
automatically sending to the server about its own usage by a consumer as the
’477 claims expressly require” are “irrelevant.” PO Resp. 6 (citing a utility
meter example and others). However, while none of the passages in the ’477
patent specification track the claim language in detail, they shed some light
on the meaning of consumer usage information.
Accordingly, the plain language of the claims governs the
construction, under the Phillips standard and the broadest reasonable
standard applied in the ’1892 FWD. Similar to the determination in the
’1892 FWD under the broadest reasonable standard, on this record under the
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Phillips standard, we interpret “consumer usage information” as information
“identifying a manner in which a consumer user has used the particular
sending consumer device asset.” See ’1892 FWD 22.
3. “Management Instructions”
Claims 1 and 20 recite “management instructions.” Ex. 1001,
26:50–51, 29:67–30:1. Petitioner contends that “management instructions”
means “commands for a device asset to perform particular actions.” Pet. 10
(citing Ex. 1005 ¶¶ 100–103). Patent Owner contends that it “disagrees with
Petitioner’s proposed construction of the discrete term ‘management
instructions,’ but the Board need not construe that term because it is
immaterial to the patentability determinations herein.” PO Resp. 7 n.4
(emphasis added).
Patent Owner also notes that “[t]he parties likewise agree that as to
those specification passages describing wireless ‘data message’
transmissions sent by the server for purposes of modifying device assets, [a
person of ordinary skill in the art (POSITA)] would understand such ‘data’
as comprising ‘management instructions.’” PO Resp. 10 n.5 (citing Ex.
1005 ¶ 102; Pet. 9–10; Ex. 1001 10:32–38, Fig. 4, Box 7, 23:17–20, 22:55–
61, 3:5–12, 6:9–42, 7:36–45, 9:1–20, 13:10–13, 23:8–12). This argument
indicates that management instructions may include “data” as a “command”
in some circumstances, for example when “sent by the server for purposes of
modifying device assets.” See id. Patent Owner also argues that “Patent
Owner agrees with Petitioner’s assessment that the specification discloses a
‘wide range’ of ‘various examples of instructions sent from a server that
command devices to perform actions that result in a service to consumers.’”
PO Resp. 9 (citing Ex. 1005 ¶ 102; Pet. 9).
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In the ’1892 FWD, Petitioner advanced the same construction it
advances here, and Patent Owner contended that Petitioner’s construction
impermissibly narrows the term. ’1892 FWD 10. Accordingly,
“management instructions” includes Petitioner’s construction wherein
“commands for a device asset to perform particular actions” may include
what Patent Owner urges, namely data or other information sent by the
server for purposes of modifying device assets.
Therefore, we adopt, as supported by the record, Petitioner’s proposed
construction as supplemented by Patent Owner’s inclusive interpretation
regarding data instructions above. No good reason exists to refine
Petitioner’s proposed construction explicitly given that Patent Owner
characterizes the construction thereof as “immaterial to the patentability
determinations here.” PO Resp. 7 n.4; see Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need
only construe terms ‘that are in controversy, and only to the extent necessary
to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
4. Limitation 1[f]: “Managing . . . consumer device assets
by the remote computer server platform, based upon the
results of having processed at least some of the received
consumer usage information, by sending communications
containing . . . management instructions that cause the
stored display data content files of . . . assets to be
automatically modified so as to provide a consumer
service”
Claim 1’s limitation 1[f] materially tracks a similar “managing”
limitation in independent claim 20. The Petition states that the “managing”
limitation requires that “the act of managing/sending—not the content of the
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management instructions—is ‘based upon the results of having processed at
least some of the received consumer usage information,’” and does not
require that “the server sends management instructions with content that is
based upon the received consumer usage information”; that is, the claim
limitation does not require that “the content of the management instructions
be based on that [consumer usage] information.” Pet. 11–13 (citing
Ex. 1005 ¶¶ 104–110).
In response, Patent Owner urges a narrower claim construction than
that urged by Petitioner. Under its construction, Patent Owner contends that
a “POSITA viewing the intrinsic record as a whole would understand these
claim elements as requiring that the claimed ‘management instructions’
themselves need to be based upon the results of the server’s processing of at
least some of the received ‘consumer usage information.’” PO Resp. 8
(citing Ex. 2029 ¶¶ 40–41). According further to Patent Owner, “[u]nder
Petitioner’s [contrary] reading, these claim elements ostensibly fail to
require ‘management instructions with content that is based upon the
received consumer usage information.’” Id. (citing Pet. 10–11).
Patent Owner also argues that Petitioner’s proposed construction for
claim element 1[f] ignores the ’477 patent’s specification, and contradicts
Petitioner’s admissions in related litigation and in the ’1892 IPR. PO Resp.
15–17 & n.8 (citing Ex. 2006, 3–4; Ex. 2009, 9; Ex. 2010, 17 n.9, 23, 33;
Ex. 2011, 11, 17; Ex. 2012, 33; Ex. 2020, 16; Ex. 2021, 101–02). None of
the citations provided by Patent Owner shows that Petitioner ignores the
’477 patent specification or contradicts itself.
As one example, Patent Owner contends that “Petitioner argu[es] [in
its reply brief in the ’1892 IPR that] the claim element is met because ‘Kloba
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discloses management instructions based in part on consumer usage
information.’” PO Resp. 17 (citing Ex. 2011, 17). But arguing that Kloba
meets the claim language does not contradict anything Petitioner advances
by way of claim construction. In another example, Patent Owner argues that
“[t]he [c]ourt itself consistently interpreted these claim elements as requiring
that the server’s ‘management instructions communicated back to the
consumer device assets are based on the processing of at least some of the
received consumer usage information.’” Id. at 17 n.9 (quoting Ex. 2010
(district court), 22 n.5; citing Ex. 2010, 23, 30). Here, however, the court
simply draws a distinction between processing based on received consumer
usage information and “not the operational status information,” without
particularly addressing the interpretation of the claim language at issue here.
See Ex. 2010, 22 n.5.
As with the “consumer usage information” limitation discussed
above, Patent Owner relies, inter alia, on the alleged “sole claimed
embodiment,” which includes the “pull down menus” example discussed
above. See PO Resp. 11–12 (quoting Ex. 1001, 4:28–38); Ex. 1001, 4:28–
38, 11:41–52. Arguing that a “sole claimed embodiment taught by the
specification” governs the claim construction cuts against Patent Owner’s
other arguments that other embodiments “broadly” support its construction.
See PO Resp. 9–10 (citing several “managing” embodiments “central to
these disputed claim elements”). In any event, we agree with Patent Owner
that different passages in the specification and the claim language inform the
claim construction here as they do with “consumer usage information” or
“management instructions” in the previous sections. However, the passages
that Patent Owner relies upon for their broad teachings do not support the
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narrow construction urged by Patent Owner. See PO Resp. 9–11 (relying on
examples that relate to pre-programmed conditions or other operational
conditions instead of consumer usage information).
As one example, Patent Owner contends that a server effectuates
management instructions after processing “changes in [intruder alarm] data
values” by sending a “‘data message’ for effectuating a system lockdown of
particular ‘doors and barriers.’” Id. at 11 (citing Ex. 1001, 9:7–20; Ex. 2029
¶ 37). But this example does not describe “consumer usage information” at
the heart of the claim construction dispute, unless one considers the asset to
be a building. For example, the passage describes monitoring “access to a
building” including perhaps “the presence or movement of any persons
within the monitored facilities.” See Ex. 1001, 9:7–20. So it is unclear how
this passage shows the relationship between “management instructions” and
“consumer usage information” that Patent Owner argues exists. The other
cited passages suffer from similar deficiencies. Mr. Berg’s testimony tracks
Patent Owner’s arguments in that it relies on the same passages. See, e.g.,
PO Resp. 11 (citing Ex. 2020 ¶ 37). As noted above, Patent Owner argues
that certain passages are “irrelevant” to the construction of “consumer usage
information” because those passages do not relate to the consumer’s use of
the asset (PO Resp. 6), while other passages broadly teach the “managing”
limitation, which recites “consumer usage information,” even if the cited
passages do not relate to a consumer’s use of the asset and merely generally
teach “processing various types of information” (PO Resp. 11).
The description of the alleged sole claimed embodiment also does not
mention management instructions. See ’1892 FWD 20 n.4 (noting that
Patent Owner admitted as much during the oral hearing of that case). This
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alleged sole claimed embodiment at column 4 generalizes “gather[ing] data”
per “the use of a particular” asset and forwarding it to a server for the
purpose of “optimising the asset” and “designing an appropriate range of
services,” without describing any particular management instruction or
communication resulting from processing particular consumer usage
information. See Ex. 1001, 4:29–31. Also, as discussed above, none of the
claims require optimizing. The passage is vague enough, on one hand, to
include a server that simply sends an “improved” “pull down menu[]”
“according to the way the user preferred to use the device or in the order of
access of mostly used features” (see id. at 4:33–38), but on the other hand,
vague enough to include (implicitly) some type of management instructions
(without mentioning any) wherein the server sends management instructions
to the consumer asset to facilitate an improvement. The passage supports
the former reading, because it describes “forward[ing] . . . data to a remote
server for the purpose of optimising the asset and for designing an
appropriate range of services to support the said use of said asset.” Id. at
4:31–33 (emphasis added). In other words, the server optimizes the asset
and designs services for the asset, but it does not necessarily send
instructions to the asset so that the asset optimizes the asset or alters the
range of services or does anything other than display what the server sent it.8
The passage does not even describe how the device or server
determines “the way the user preferred to use the device” as set forth in the
passage. See Ex. 1001, 4:29–37. For example, perhaps a local program

8 As discussed below (§ II.F1.e), Patent Owner argues that Kloba’s system
only performs such optimization at the server and sends an optimized service
to the asset (i.e., without any instructions).
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monitors how the user uses the device and then sends data to the server, or
perhaps the user informs the device or server as to how it prefers to use a
device by selecting among various options and sends the selected preference
to the server. The broad passage raises different possible outcomes.
Responding to the Decision on Institution, Patent Owner characterizes
as “completely unsupported” and “not raised in the Petition” the notion that
the sole embodiment passage does not state whether the server sends
management instructions to the consumer asset to facilitate that
improvement or whether it simply sends an improved menu ready for
downloading. See PO Resp. 13 n.6. To the contrary, as noted above, the
passage neither describes management instructions nor ties any management
instructions to consumer usage information and it supports broad scenarios
as outlined above. And Patent Owner raises the issue of what the passage
describes in its Preliminary Response and in its Patent Owner Response. See
Prelim. Resp. 15 (quoting Ex. 1001, 4:28–38); PO Resp. 11–13 n.6.
Patent Owner also argues that dependent claims lend meaning to
independent claims 1 (and the similar limitation in claim 20). PO Resp. 7.
Patent Owner relies on dependent claim 5, which recites “wherein the
automatic modifications of the stored display data content files of the one or
more consumer device assets caused by the one or more management
instructions that are based upon the results of having processed at least some
of the consumer usage information or consumer preference information.”
Patent Owner contends that by referring back to the “management
instructions” in claim 1, this “illuminating language” in claim 5 “expressly
describe[s] them as being ‘management instructions that are based upon
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the results of having processed at least some of the consumer usage
information.’” Id. at 15 (citing Pet. 44; Ex. 1001, 27:16–26).
Normally, “the presence of a dependent claim that adds a particular
limitation gives rise to a presumption that the limitation in question is not
present in the independent claim.” Phillips, 415 F.3d at 1315 (citing Liebel–
Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).
Petitioner contends that “[t]he proper way to read claims 5 and 23 consistent
with claims 1 and 20 is that ‘based upon . . .’ modifies the overall ‘the
automatic modifications’ phrase.” Reply 15 (“Claims 1 and 20 provide that
these ‘automatic modifications’ ultimately result from the claimed
‘managing . . . by sending,’ which is based upon the server processing
consumer usage information. Thus, the ‘automatic modifications’ are
indirectly based upon that processing.”).
The language of claim 5, which depends from claims 4/3/2, supports
Petitioner. Claim 5 follows:
A method according to claim 4 wherein the automatic
modifications of the stored display data content files of the one
or more consumer device assets caused by the one or more
management instructions that are based upon the results of
having processed at least some of the consumer usage
information or consumer preference information are comprised
of at least one selected from the group consisting of storing one
or more new display data content files on said assets, updating
one or more existing stored display data content files on said
assets, and deleting one or more existing stored display data
content files from said assets.
Ex. 1001, 27:6–26 (emphasis added). The “are comprised of . . . consisting
of storing . . . files . . . , updating . . . files,” etc., language in claim 5 clearly
refers back to the “automatic modifications.” It follows that the “that are
based upon the results” language also refers back to “the automatic
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modifications,” based on the parallel structure of “are comprised of” and
“are based upon” language––i.e., both phrases refer to the same thing, “the
automatic modifications.” In addition, Petitioner’s interpretation properly
adds a narrowing limitation with respect to claim 4, because it defines three
different ways (storing, updating, and deleting files) to render the automatic
modifications.
Accordingly, claim 5 does not support a narrow construction. To the
contrary, it supports the broad claim construction of claim 1 that Petitioner
proposes.
Nevertheless, Patent Owner contends that the limitation in question
does not narrow claim 1, and relies on case law to support its position. See
Tr. 86:1–87:2 (arguing the language in question defines, but does not
narrow, claim 1); PO Resp. 14 (citing Spineology, Inc. v. Wright Med. Tech.,
Inc., 739 Fed. App’x 633, 637–38 (Fed. Cir. 2018); Pods, Inc., v. Porta
Stor., Inc., 484 F.3d 1359, 1366 (Fed. Cir. 2007)).
In Spineology, the issue was whether the “body” includes the “barrel”
in independent claims 15 and 33. See Spineology, 739 Fed. App’x at
634–37. The court noted that two dependent claims, claims 16 and 36,
recited that “the ‘body’ must be a structure that can include a ‘view port.’”
Id. at 637. Then the court found that the specification clearly displayed the
“view port” on the “barrel,” so the court reasoned that dependent claims 16
and 36 showed that the body in the independent claims includes the barrel.
Id. But the court did not read specific limitations as recited in dependent
claims 16 and 36, namely the “view port” on the “barrel,” into the “body” as
recited in the independent claims. See id. In contrast, Patent Owner here
seeks to narrow independent claim 1 by incorporating limitations
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specifically recited with respect to the “management instructions” in
dependent claim 5, as opposed to shedding light on what the managing
limitation as recited in claim 1 means. Also, here, unlike in Spineology, the
specification does not provide clear guidance.
In Pods, the court construed the same claim term in two independent
claims to be the same. See Pods, 484 F.3d at 1366 (“PODS has pointed to
no evidence in the specification or the prosecution history that the term
‘carrier frame’ in [independent] claim 29 has any meaning other than the
uncontested meaning in [independent] claim 1.”). In contrast, claim 5 is
dependent upon claims 4/3/2/1, and for the reasons above, reading it under
Patent Owner’s theory does not clarify how to read claim 1.
For these reasons, and for reasons explained in the ’1892 IPR, the
alleged “lone claimed embodiment” and other intrinsic and extrinsic
evidence cited by Patent Owner does not alter the plain language of claims 1
and 20 in the manner urged by Patent Owner. See ’1892 FWD 23–24; ’1892
IPR, Paper 37 (rehearing decision), 8. Other embodiments, including the
monitoring of computers embodiment described above (Ex. 1001, 3:5–17),
lend meaning to the claim phrase as the panel determined in the ’1892 FWD
and in a subsequent rehearing decision. See ’1892 FWD 23–24; ’1892 IPR,
Paper 37, 8 (“As we stated in the Final Written Decision, according to the
plain language of claims 1 and 20, it is the communication of management
instructions, not the management instructions themselves, that is based upon
the results of processing at least some of the received consumer usage
information.”).
Patent Owner also argues that Petitioner’s construction is improperly
“detached from the essential function of the invention,” which is that the
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server processes received “consumer usage information” to determine what
resulting modifications to then make to an asset by way of effectuating
“management instructions.” PO Resp. 19 (quoting Sophos Ltd. v. Iancu, 727
Fed. Appx. 656, 661 (Fed. Cir. 2018)). Stated differently, Patent Owner
contends that
[b]y interpreting these claim elements as requiring no
relationship whatsoever between the nature or content of the
server’s managing by way of effectuating “management
instructions” on the one hand, and its processing of “consumer
usage information” on the other hand, Petitioner clearly errs by
construing these elements in an unreasonably broad fashion that
effectively reads the crucial “based upon the results of”
limitation out of the claim language.
PO Resp. 18 (emphasis added). Under Patent Owner’s narrow construction
then as set forth above, the managing instructions require at least some
“relationship . . . between the nature . . . of the . . . server’s managing by way
of effectuating ‘management instructions’ . . . and its processing of
‘consumer usage information.’” See id. As discussed further below,
Petitioner shows that Kloba’s management instructions satisfies Patent
Owner’s narrow construction and also Petitioner’s broader construction.
As determined below, this Final Written Decision applies collateral
estoppel based on the ’1892 FWD with respect to the issue of whether Kloba
teaches the managing limitation under Petitioner’s broad claim construction
of the managing limitation, but not under Patent Owner’s narrow claim
construction. See infra § II.F.1.e. Because we determine below that Kloba
teaches the limitation under both constructions, no need exists to choose one
construction over the other. See id. However, based on the discussion
above, we determine that under Phillips, Petitioner’s claim construction
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more closely hews to the specification, the plain language of claims 1 and
20, and language in the dependent claims 5 and 22.
C. Level of Ordinary Skill in the Art
The level of ordinary skill in the art provides “a prism or lens”
through which to view the prior art and the claimed invention. Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The prior art at issue in
the case often reflects the level of ordinary skill. See Okajima, 261
F.3d at 1355. Adding to the determination, the Court finds “[a] person of
ordinary skill is . . . a person of ordinary creativity, not an automaton.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
The parties, relying on their respective experts, provide materially
similar characterizations of the level of ordinary skill in the art. Pet. 20
(citing Ex. 1005 ¶ 53); Prelim. Resp. 4 (relying on the Declaration of
Mr. Brian A. Berg, Ex. 2002) (citing Ex. 2002 ¶ 28).9 No material
difference exits between the parties’ proposals, and neither party argues any
issue turns on any such difference. Based on virtually the same showings by
the parties, the Board made materially the same finding in the ’1892 FWD.
’1892 FWD 25–26.
D. Principles of Law
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,” 35 U.S.C. § 103 renders the

9 Patent Owner’s Response does not address the level of ordinary skill in the
art. See PO Resp. ii–iii (Table of Contents).
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claim obvious. KSR, 550 U.S. at 406. The question of obviousness involves
resolving underlying factual determinations, including (1) the scope and
content of the prior art; (2) any differences between the claimed subject
matter and the prior art; (3) the level of ordinary skill in the art; and (4)
when available, evidence such as commercial success, long felt but unsolved
needs, and failure of others. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966); see KSR, 550 U.S. at 407 (“While the sequence of these questions
might be reordered in any particular case, the [Graham] factors continue to
define the inquiry that controls.”).
The Court sets forth “an expansive and flexible approach” to the
question of obviousness. KSR, 550 U.S. at 415. Whether a patent claiming
the combination of prior art elements would have been obvious involves
determining whether any improvement amounts to more than the predictable
use of prior art elements according to their established functions. Id. at 417.
Reaching this determination, however, requires more than merely showing
that the prior art includes separate references covering each separate
limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655
F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires
that a person of ordinary skill at the time of the invention “would have
selected and combined those prior art elements in the normal course of
research and development to yield the claimed invention.” Id.
E. Overview of the Asserted References
1. Kloba (Ex. 1006)
Kloba, titled “System, Method, and Computer Program Product for
Customizing Channels, Content, and Data for Mobile Devices,” describes
techniques for enabling Web content to be loaded onto mobile devices and
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for users of the mobile devices to interact with the Web content on their
mobile devices during an off-line mode of the devices. Ex. 1006, codes
(54), (57). Kloba’s Figure 1A, reproduced below, illustrates an exemplary
data processing environment 102 including server 104, one or more devices
106, one or more adapters 118, and one or more providers 128:

Figure 1A is a block diagram illustrating data processing environment 102
including server 104 and mobile computing devices 106. Id. at 7:21–27.

In Figure 1A, “devices 106 [(e.g., devices 106A, 106B)] may be any
type of data processing device,” such as mobile computing devices including
handheld computers, cellular phones, Internet-enabled phones, pagers,
radios, TVs, audio devices, car audio systems, recorders, text-to-speech
devices, bar-code scanners, net appliances, mini-browsers, and personal data
assistants (PDAs). Ex. 1006, 4:24–39 (Table 2), 10:41–50. Device 106 may
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include software, hardware, and/or combinations thereof related to client
functionality (e.g., layout and rendering, control, user interface, client
interface, database), rendering the device a client (e.g., clients 108A and
108B correspond to devices 106A, 106B, respectively). Id. at 10:51–65.
“Client communications module 110 enables the client 108 to interact with
external entities, such as server 104. In embodiments, the client
communications module 110 enables TCP/IP traffic.” Id. at 12:13–16.
Server 104 maintains channels of data, and adds selected channels to clients
108A, 108B. See id. at 8:4–6. A channel includes a collection of objects,
such as applications, services, images, movies, music, and links that can be
transferred to client 108. Id. at 7:27–31.
According to Kloba,
[t]he server 104 offers channels to clients 108. A client
108 may access the server 104 and view the collection of
channels. The client 108 may then select any combination of the
channels in the collection. The server 104 maintains a list of the
channels associated with each of the clients 108.
During a synchronization process, the server 104 loads a
device 108 with the channels associated with the client 108.
Generally, the server 104 does this by obtaining from providers
128 the objects defined by the channels, and causing those
objects to be stored on the client 108. Thus, during the
synchronization process, the server 104 will load the client 108
with the selected channels. More particularly, the server 104 will
load the client 108 with the objects associated with the channels.
The client 108 may process and use those objects when not
connected to the server 104. The invention enables the client 108
to actively interact with the objects and channels.
In one embodiment, the client 108A directly interacts with
the server 104 via some transmission medium 120B, which may
be any wired or wireless medium using any communication
protocol.
. . . .
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[A] web synchronization module 124 [of server 104] is an
application/instance of server extension module 156 [of server
104], and controls synchronization of web content to client 108.
The invention may include other synchronization modules
(which are application/instances of server extension module 156)
that control synchronization of other types of objects to clients
108. For example, the server 104 may administer a calendar that
may be installed on clients 108. The synchronization of
appointments, events and/or dates on this calendar between
clients 108 and the server 104 may be performed by a calendar
synchronization module.
Id. at 8:7–26, 9:10–21. During a synchronization, in one embodiment,
control module 142 (of a client 108) identifies “deltas” (differences between
versions of objects offered and those in the client) in the client databases
identified by server 104 and sends the deltas to a synchronization module of
server 104, or a synchronization module generated by third parties (as shown
in Figure 1B). Id. at 10:35–40, 19:51–67. The synchronization modules
synchronize the deltas with providers 128 and compile instructions to
synchronize clients 108A, 108B with providers 128. Id. at 20:11–17.
Control modules 142A, 142B on clients 108A, 108B then execute the
instructions. Id. at 20:23–25. In another more generic teaching, Kloba
synchronizes differences based on user data, changes, or selections that the
user “wishes to receive.” See id. at 20:50–21:2, Fig. 1X.
During synchronization, server 104 may also optimize Web or other
third party content to display the content within parameters of the client
devices 108, for example, by scaling the content as shown in Figure 1AA,
reproduced below. Ex. 1006, 6:35–41, 23:48–55 (server side optimization
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of content during synchronization), 28:20–36.

Figure 1AA illustrates a process that optimizes (via colors, size, etc.)
Web site page 1A1 for display 1A2 on a handheld device.
Id. at 6:35–40, 21:55–60, 28:30–31.

In Figure 1AA, Web page graphic display 1A1 represents a large
screen desktop display, and Web page graphic display 1A2 represents an
optimized version 1A2 of Web page graphic display 1A1 optimized to fit on
handheld device 106/client 108. Id. at 28:32–36. Optimization of Web
content display by server 104 enables the display to fit within the client’s
parameters, such as the client’s dynamic memory specifications, high
memory specifications, protected memory, storage memory, database
memory, available storage space, screen size, user profile(s), color depth,
applications on the device, buttons on the device, data markers, preferences,
fonts, font specifications, sync type, supported data types, supported mime
types, and connection/network profile. Id. at 28:21–30.
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A user of a device can subscribe to a channel through the use of a user
interface, including that of Figure 12, reproduced below:

Figure 12 illustrates a screen shot of a channel subscription page
displayed on client 108. Id. at 34:49–50.

During a synchronization, the server loads channels (e.g., FOX SPORTS,
BLOOMBERG) selected by client 108 using the interface of Figure 12.
Id. at 34:49–54.
2. Multer (Ex. 1007)
Multer, titled “Data Transfer and Synchronization System,” describes
systems for transferring data between two devices that require information to
be shared between them. Ex. 1007, codes (54), (57), 5:11–13. Figures 1 and
2, reproduced below, illustrate configuration examples for transferring data
between two devices:
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Figures 1 and 2 illustrate block diagrams of systems using
differencing routines. Id. at 4:45–47, 5:57–60, 6:31–34.

In Figure 1, differencing transmitter 100 of System A examines a data
structure of information to be transmitted to differencing receiver 102 of
System B, extracts the information from System A, and converts it to
difference information Δ. Ex. 1007, 5:57–6:8. Difference information Δ
comprises only the changes to System B’s data that have occurred and
instructions for implementing those changes on System B. Id. at 6:8–11.
Differencing transmitter 100 transmits the difference information Δ to
differencing receiver 102 via communication line 110. See id. at 5:60–65.
“Difference information Δ received by differencing receiver 102 at System
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B is reconstructed at System B, and the changes reflected therein are updated
on System B.” Id. at 6:16–19.
In Figure 2, both System A and System B include functional blocks
104, each representing a differencing synchronizer that will allow difference
information Δ to be both transmitted and received. Ex. 1007, 6:31–37. For
example, System A and System B represent a portable computer and a
desktop computer, respectively, and differencing synchronizer 104 extracts
changes to contact information on either System A or System B at
predetermined times, transmits the information Δ between the systems, and
reconstructs the data on the receiving system to update information from the
sending system, thereby synchronizing contact information between Systems
A and B. Id. at 6:37–46.
Multer describes a “pull” synchronization and a “push”
synchronization. Ex. 1007, 35:4–18, 37:40–61, Fig. 15, Fig. 16.
Synchronization can be triggered automatically:
Each device has its own triggering mechanism for initiating
synchronization. Some devices, such as Windows clients and
Palm® pilots are triggered manually when the user presses a
“sync” button. Other devices, such as a cellular telephone, may
be triggered automatically after another device completes a sync.
Regular, time-based triggers are supported as well.
Id. at 35:4–18, Fig. 15. In a “push” synchronization, a device uploads
difference information (Δs) to a server. Id. at 37:40–61, Fig. 16.
3. Loughran (Ex. 1008)
Loughran, titled “Method and Apparatus for Automatic Content
Handling,” describes a system for performing autonomous data transfer
between an email server and a mobile device such as a notebook computer.
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Ex. 1008, codes (54), (57), Fig. 1. The mobile device connects to the email
server via a wireless data connection and downloads the email. Id. at code
(57). For example, the email server compiles an SMS message
incorporating a digital signature and transmits the email to the mobile device
using SMS messages sent in accordance with the GSM short messaging
service. Id. ¶¶ 37–38, code (57). Loughran also notes
it is usual for laptops and other mobile computing devices to be
switched off when not in use. . . . The alert module [GSM
transceiver] associated with the mobile device could be
maintained in a low power consumption standby mode and on
receipt of an SMS message containing an “EMAIL” header,
power up the notebook.
Id. ¶ 40.
4. Fong (Ex. 1010)
Fong, titled “System, Computer Program Product and Method for
Managing and Controlling a Local Network of Electronic Devices,”
describes “a main server including software for managing network resources
from a single point of administration, wirelessly connecting a plurality of
electronic devices to the main server to create a wireless local area network
(LAN), and managing the electronic devices using the software.” Ex. 1010,
codes (54), (57). In Fong’s system, “main server 200 monitors the
management initiating parameters of all electronic devices 202–212
connected to the wireless LAN.” Id. at 9:49–51. In one example,
if the main server 200 is set up to monitor the battery power of
mobile terminals 208 and 212 and send a message to all terminals
indicating that a particular terminal battery must be charged, the
management initiating parameter is the battery power and the
action is sending a message to all terminals on the wireless
network.
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Id. at 10:10–16.
5. Chow (Ex. 1009)
Chow, titled “Broadband Network with Enterprise Wireless
Communication System for Residential and Business Environment,”
describes a network-centric service distribution architecture that integrates a
wireless access system/service in a residence, SOHO (Small Office Home
Office), business, or public environment through the use of a local
broadband network (a Residential/Business Broadband Network—RBN) to a
service provider’s broadband transport network and to a service provider’s
broadband packet network. Ex. 1009, code (54), ¶ 11. The integration of an
RBN to a service provider’s broadband packet network allows a subscriber
to communicate at home and at the office with one communication device.
Id. ¶ 11. According to Chow, “[t]he invention extends the scheme of wired
Virtual Private Networks (VPNs) to include duplicate wireless elements in
home and office.” Id. ¶ 2.
Chow states “[t]hree key wireless access technologies/standards,
TIA/EIA-136, General Packet Radio Service (GPRS)/Enhanced Data for
Global Evolution (EDGE), and IEEE 802.11b Wireless LAN, are used to
define basic residential and/or small business services,” but notes “these
standards are for illustrative purposes only and any practices that are based
on differences or variations of given home or small business network
apparatuses and/or broadband network access to the home and/or small
business environments and/or wireless protocols shall be within the scope of
the invention,” and gives the example of Wideband CDMA (WCDMA).
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Ex. 1009 ¶ 30. Chow also explains “[a]nother instantiation of the [access
port] can be to support a high-speed wireless data access via the IEEE
802.11b wireless LAN standard.” Id. ¶ 95.
F. Obviousness Based on Kloba and Multer
Petitioner argues that claims 1–6 would have been obvious over the
combined teachings of Kloba and Multer. Pet. 21–49. Patent Owner
opposes. PO Resp. 22–55.
1. Independent Claims 1 and 20
a. Limitations 1[a]–1[e] and 1[g]
Petitioner contends that Kloba teaches most of limitations 1[a]–1[e]
and 1[g] as recited in claim 1, with Multer’s synchronization techniques
suggesting that certain synchronization communications in Kloba
(containing consumer usage information and operational status information)
automatically would have resulted from preprogrammed conditions as
limitations 1[c] and 1[d] require. See Pet. 28–32, 39–40. Petitioner’s
specific citations to the record and Dr. Kesidis’s testimony support
Petitioner’s contentions. See Ex. 1005. Apart from disputing certain aspects
of limitations 1[a]–1[e] and 1[g], Patent Owner does not otherwise dispute
Petitioner’s showing with respect to limitations 1[a]–1[e] and 1[g]. See PO
Resp. 22–44 (presenting arguments regarding nonvolatile memory in the
preamble, consumer usage information in limitations 1[d], 1[e], and
automatically communicating in limitation 1[d]) (the “three argued
limitations”).
Based on a review of the record, setting aside the specific arguments
with respect to the three argued limitations for now, Petitioner’s showing is
persuasive as to the remaining portions of claim limitations 1[a]–1[e] and
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1[g]. See Pet. 28–32, 39–40. In addition, Petitioner shows that these
limitations present materially the same limitations at issue in the ’1892 FWD
and the determination that the combined teachings of Kloba and Multer
render them obvious was actually litigated, necessary to the judgment, and
involved the same parties. See Pet. Supp. Br. 2 & n.1, 7–8 (citing Ex. 1012
(comparing claim elements between the ’477 patent and the ’358 patent));
’1892 FWD 32–55. As Petitioner argues, Patent Owner had a full and fair
opportunity to litigate the issue of whether Kloba and Multer render these
claim limitations obvious, so that collateral estoppel prevents Patent Owner
from re-litigating these specific claim limitations. See Pet. Supp. Br. 1–3 &
n.1, 7–8. Patent Owner does not contest Petitioner’s collateral estoppel
showing with respect to these claim limitations that it does not argue. See
PO Supp. Br. 1 (arguing that collateral estoppel does not prevent it “from
litigating any of the issues that have been raised in the instant proceedings”).
b. Limitation 1[Preamble] (each consumer device
asset having “nonvolatile memory for storing files of
data content for display”)
Petitioner asserts that in view of the “underlying rationale behind the
doctrine” of collateral estoppel and “nearly identical records,” “the Board
should not depart from its prior holding that the ‘nonvolatile’ preamble
elements are both non-limiting and disclosed.” See Pet. Supp. Br. 15–16.
Petitioner also asserts that Patent Owner “had a full and fair opportunity to
litigate the issues of whether the nonvolatile memory elements are limiting
and whether Kloba teaches nonvolatile memory as claimed.” Id. at 15.
We agree with Petitioner. First, based on the claim construction
adopted here (supra § II.B.1), the preamble portion of claim 1 that recites a
nonvolatile memory does not limit the claims. As noted above, the Board
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reached the same determination in the ’1892 FWD, which we adopt and
incorporate by reference. ’1892 FWD 33–34. Second, even if the
“nonvolatile” preamble portion limits the challenged claims, similar to its
showing in the ’1892 IPR, Petitioner points to Kloba’s disclosure of
different types of memory, including nonvolatile memory, applicable to
different types of generic mobile devices, not limited to cellular phones. See
Pet. 22–23; ’1892 FWD 34–38. We adopt and incorporate by reference the
Board’s findings and determination that Kloba teaches a nonvolatile memory
irrespective of whether the preamble is limiting. ’1892 FWD 34–38.
Patent Owner asserts that Petitioner admits that collateral estoppel
does not apply because “the prior [panel] made ‘independently sufficient
alternative holdings’” by “treating this limitation as both limiting and not
limiting.” PO Supp. Reply Br. 8; see PO Supp. Br. 4–5 (citing TecSec, Inc.
v. Int’l Bus. Mach. Corp., 731 F.3d 1336, 1343 (Fed. Cir. 2013) (“[W]here
the court in the prior suit has determined two issues, either of which could
independently support the result, then neither determination is considered
essential to the judgment.”). Patent Owner also asserts it raises new
arguments that the ’1892 FWD does not address so that there is “no identity
of issues.” Id. at 16–17.
Nevertheless, as summarized above and as discussed further below,
Petitioner shows, and Patent Owner does not dispute, that the two
proceedings involve the identical issue of whether Kloba teaches the same
claim limitation, and Patent Owner had a full and fair opportunity to be
heard on that issue. See Pet. Supp. Br. 15–16. Also, Patent Owner’s
arguments fail to faithfully adhere to the precedent as outlined in the Order
for Supplemental Briefing (Paper 37) (“Order”), as Patent Owner seeks to
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rely on other precedent that does not apply to the circumstances here. As we
noted in the Order, “[i]f the differences between the unadjudicated patent
claims and adjudicated patent claims do not materially alter the question of
invalidity, collateral estoppel applies.” Order 2 (quoting Nestle USA v.
Steuben Foods, 884 F.3d 1350, 1352 (Fed. Cir. 2018)).10
Here, Petitioner shows that no difference in the claim terms occurs
with respect to the preamble, let alone a material difference, even though
different claim construction standards apply. See Pet. Supp. Br. 14–16.
Moreover, Patent Owner had the opportunity to, and did, fully and fairly
litigate the issue of the claim construction of “nonvolatile memory” and
whether Kloba teaches the nonvolatile memory even if the preamble limits
the claims. ’1892 FWD 33–38 (finding Kloba teaches materially the same
limitation even if the preamble is limiting). Patent Owner did not raise any
issue regarding the preamble and whether Kloba teaches it in its opening
brief at the Federal Circuit. See Ex. 1024, 1–11 (table of contents and
opening pages of Patent Owner’s opening brief focusing on the
“management instructions” in the “managing” limitation of related claims in
related patents, including the ’358 patent).
“A full and fair opportunity to litigate is the touchstone of any
preclusion analysis.” Aspex Eyewear, Inc. v. Zenni Optical Inc., 713 F.3d
1377, 1382 (Fed. Cir. 2013) (citing Taylor v. Sturgell, 553 U.S. 880, 892,
(2008)). “The ‘desire not to deprive a litigant of an adequate day in court’ is
balanced against the ‘desire to prevent repetitious litigation of what is

10 As noted in the Order, the quote in Nestle originates from Ohio Willow
Wood Co. v. Alps Sl, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013)). See Order
2.
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essentially the same dispute.’” Id. (quoting In re Freeman, 30 F.3d 1459,
1465 (Fed. Cir. 1994)). “The court correctly found that Aspex had a full and
fair opportunity to litigate this issue.” Id.
In Maxlinear, Inc. v. CF Crespe LLC, 880 F.3d 1373 (Fed. Cir. 2018),
which we also cited in our Order, the court stated that “[i]t is well
established that collateral estoppel, also known as issue preclusion, applies
in the administrative context,” including Board final written decisions. See
Maxlinear, 880 F.3d at 1376 (citing B & B Hardware, Inc. v. Hargis Indus.,
Inc., 135 S. Ct. 1293, 1303 (2015)). In Maxlinear, the court held that “the
preclusive effect of the prior [Board] adjudications, and subsequent
affirmations, has finally resolved the issue of the unpatentability of
independent claims 1 and 17 and dependent claim 20 in this proceeding.”
Id. at 1377. The prior adjudications and subsequent affirmations involved
Rule 36 judgments of inter partes Board decisions, as is the case here. See
id. at 1375–76.
Moreover, the prior adjudications that served as the basis for collateral
estoppel in Maxlinear involved different prior art (i.e., different issues) than
the underlying Board decision on appeal. Maxlinear, 880 F.3d at 1375–76.
Nevertheless, Maxlinear vacated and remanded the Board’s determination
that the sole independent claims 1 and 17 were patentable, based on the prior
Board adjudications and subsequent Federal Circuit Rule 36 affirmations
that these claims were unpatentable over that different prior art. The court
also remanded for the Board to determine the “preclusive effect of the prior
adjudications, and subsequent affirmations,” on the validity of dependent
claims “not addressed in the earlier IPRs.” Maxlinear, 880 F.3d at 1377
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(“[T]he sole remaining question at issue is whether the dependent claims 4,
6–9, and 21, not addressed in the earlier IPRs, are unpatentable.”).
Accordingly, Patent Owner’s argument that the ’1892 FWD and
subsequent affirmation by the Federal Circuit does not have preclusive effect
because the Board entertained different issues or decided that Kloba teaches
the nonvolatile memory under two alternate theories is misplaced. The
question of preclusion involved here is not whether one of two alternatives
in claim construction apply. Rather, the question is “whether the . . . claims
present materially different issues that alter the question of patentablity,
making them patentably distinct from” the claims adjudicated in the ’1892
IPR. See Maxlinear, 880 F.3d at 1377–78. As discussed above, Petitioner
shows that the nonvolatile memory limitation is not patentably distinct in
both sets of claims involved in the two proceedings and it raises the exact
same issue of whether Kloba teaches the limitation, even if the preamble
limits the claims. See Pet. Supp. Br. 14–16. That issue was actually
litigated and necessary to the Board’s determination in the ’1892 FWD that
the Federal Circuit affirmed in the M2M Federal Circuit Decision.11 See
’1892 FWD 33–38; supra § I.B.

11 Patent Owner’s reliance on TecSec is misplaced. See PO Supp. Br. 4–5.
In TecSec, although the court held that the claim construction could not be
given preclusive effect, it simply did not decide if the ultimate judgment of
non-infringement would not have been given preclusive effect. See TecSec,
731 F.3d at 1344 (“For collateral estoppel to apply to a court’s claim
construction, the construction ‘had to be the reason for the loss,’ Jackson
Jordan, Inc. v. Plasser Am. Corp., 747 F.2d 1567, 1577 (Fed. Cir. 1984), a
conclusion that does not apply here.”); cf. Del Mar Avionics, Inc. v. Quinton
Instrument Co., 836 F.2d 1320, 1323 (Fed. Cir. 1987) (“The prior
determination of certain issues, including the issues of claim construction
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In Masco Corp. v. United States, 303 F.3d 1316 (Fed. Cir. 2002), the
court analyzed the “general rule” that Patent Owner urges here regarding
“two [alternate] issues” for purposes of collateral estoppel: “If a judgment
of a court of first instance is based on determinations of two issues, either of
which standing independently would be sufficient to support the result, the
judgment is not conclusive with respect to either issue standing alone.”
Masco, 903 F.3d at 1330 (quoting Restatement of Judgments, Second, § 27,
Comment i). However, the court quoted with approval the Court of Claims
as follows:
when a lower court’s decision on a question of fact is challenged
in a proper appeal, and the appellate court does not pass upon
that finding of fact in reaching its decision [because it reaches an
alternative finding], the lower court’s finding is not conclusive
against the appellant in a subsequent suit on a different cause of
action. The doctrine of res judicata must be so limited since a
factual issue cannot, consistent with the statutory right to
appellate review, be said to have been finally adjudicated when
the appellant has been precluded from obtaining the appellate
review which he sought and to which he would have been entitled
if the fact had been material.
Id. (quoting Hannahville Indian Community v. United States, 180 Ct. Cl.
477, 485 (Ct. C. 1967)) (emphasis added). In other words, assuming for the
sake of argument that the “two [alternate] issues” rule otherwise might apply
here, at a minimum, Patent Owner must have “challenged” the issue during
“appellate review,” and then been “precluded from obtaining the appellate
review which he sought.” See id. As noted above, Patent Owner did not
seek appellate review of the nonvolatile memory limitation at issue in the

and of infringement by [one model] and non-infringement by [another
model], bars judicial redetermination of those issues.”).
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’1892 FWD. See Ex. 1024, 1–11, 55–73. Patent Owner verified this during
the Oral (video) Hearing, noting that it only challenged “a single issue . . .
related to the claim construction for the management instructions” at the
Federal Circuit. Tr. 41:3–8.12
Moreover, Patent Owner acknowledges that in cases where the
“‘identity-of-issues’ test factor cannot be satisfied due to ‘the mere existence
of different language,’ . . . [Patent Owner] ‘must show that the differences
between the unadjudicated patent claims and the adjudicated patent claims
. . . materially alter the question of invalidity.’” See PO Supp. Br. 2 (quoting
Ohio Willow, 735 F.3d at 1342). Here, Petitioner shows that the preambles
in the ’1892 FWD and here are “identical” (Pet. Supp. Br. 14); therefore,
“the Board should not depart from its prior holding that the ‘nonvolatile
memory’ preamble elements are both nonlimiting and disclosed” (id. at 16).
Patent Owner does not dispute Petitioner’s showing that the terms are
materially the same (identical). See PO Supp. Br. 6–7 (generally arguing
that different claim construction standards preclude a finding of collateral
estoppel), 10 (arguing the Board applied two alternate claim constructions so
that issue preclusion does not apply); PO Resp. 20–22 (claim construction).
The different claim construction standards in the two proceedings are
irrelevant, because Patent Owner did not appeal the Board’s holding in the
’1892 FWD that Kloba teaches the nonvolatile memory limitation even if the
preamble is limiting. See Pet. Supp. Br. 14–16.

12 The reference to “management instructions” implicates the whole
“managing” limitation 1[f] and the interplay between the processing of the
consumer usage information and the management instructions central to the
dispute here as discussed further below.
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In other words, the ’1892 IPR “presents” the “identical issue” of
whether Kloba satisfies the exact same nonvolatile memory language; (2)
the ’1892 IPR “actually litigated and adjudged that issue;” (3) the ’1892
FWD judgment “necessarily required determination of the identical issue;
and (4) the prior action featured full representation of the estopped party” by
the same parties as involved here. See VirnetX, 909 F.3d at 1377 (quoting
Stephen Slesinger, 702 F.3d at 644).
Based on collateral estoppel, Patent Owner is precluded from
relitigating whether Kloba teaches consumer device assets each having
“nonvolatile memory for storing files of data content for display,” as recited
in the preamble of claim 1. If the preamble is not afforded weight under
Phillips as determined above in the claim construction section, no need
exists to reach collateral estoppel, because no need exists to determine if
Kloba teaches a nonvolatile memory.13 Supra § I.B.1. Accordingly,
Petitioner shows by a preponderance of evidence that Kloba teaches the
limitation even if the preamble is afforded weight.
c. Limitations 1[d], 1[e], and 1[f] (“consumer usage
information”)
For the claimed “consumer usage information” found in limitations
1[d]–1[f] of claim 1, Petitioner relies on Kloba. Limitation 1[d] of claim 1
follows:
receiving at the remote computer server platform
communications sent from each of the plurality of consumer

13 Nevertheless, as noted above (§ II.A.B.1) and in the Decision on
Institution, during prosecution of the ’477 patent, the Examiner found a
nonvolatile memory feature for storing data files for display to be known in
the prior art. See Ex. 1003, 84; Inst. Dec. 19 (citing Ex. 1003, 84).

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device assets containing consumer usage information identifying
a manner in which a consumer user has used the particular
sending consumer device asset, said communications having
automatically resulted from at least one selected from the group
consisting of preprogrammed conditions and programming
instructions generated by the remote computer server platform.
Petitioner contends “Kloba’s mobile devices send two types of
consumer usage information to the server that identifies a manner in which a
consumer user has used the particular sending consumer device,” the two
types of consumer usage information including (i) “information related to
channels (i.e., Internet content) that the user ‘elect[ed] to subscribe to’ while
using the device [asset]” as shown in Kloba’s Figure 12, and (ii)
“information related to ‘preferences’ [such as state information and
operation preferences of the device/asset] set by the user on the device” as
shown in Kloba’s Figure 17. Pet. 32–33 (citing Ex. 1006, 6:25, 20:51–53,
21:44–45, 24:37, 28:28, 34:50–52, 35:12–15, Figs. 1X, 12 and 17; Ex. 1005
¶¶ 234–238). Petitioner asserts Kloba’s device/asset “sends both types of
‘consumer usage information’ in [a] single ‘one-up’ transmission of the
synchronization process.” Id. at 33.
Kloba’s server causes new channels and new preferences to be
displayed and implemented on the consumer asset in an optimized fashion
after a user selects channels and preferences from Figures 12 and 17
respectively. See Pet. 15–16, 33–34 (citing Figs. 12, 17); Ex. 1006, Fig. 12
(allowing menu selections for “FOX SPORTS,” “BLOOMBERG,” etc.),
Fig. 17 (allowing menu selections for “SHOW IMAGES,” “SHOW
TABLES,” etc.). During synchronization operations, “server 104 checks to
see if the object differs [selected by a client] differs from the instance of the
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object already resident on the client 108,” before it sends a particular object.
See Ex. 1006, 24:54–58.
Petitioner contends that the Board should not allow Patent Owner to
relitigate the issue of consumer usage information, “even if collateral
estoppel may not apply per se because the relevant claim language of the
’358 patent [addressed in the ’1892 FWD] and the ’477 patent is not
identical.” Pet. Supp. Reply 19 (citing B & B Hardware, Inc. v. Hargis
Indus., Inc., 575 U.S. 138, 140 (2015)). Petitioner also contends that “the
language that [Patent Owner] attempted to read into the ’358 claims [in the
’1892 proceeding] is nearly identical to the language that [Patent Owner]
actually added to the ’477 claims.” Id. at 17 (emphasis added).
Petitioner produces the following charts to illustrate its point (Pet.
Supp. Reply 17):

The chart above compares the language of element 1[c] of the ’358
patent with the language of element 1[d] of the ’477 patent, with annotations
added by the Petitioner.
Petitioner adds the bracketed information on the left (“identifying the
manner in which a consumer as used a consumer device asset”) to signify
that the panel in the ’1892 FWD analyzed the claims in the ’358 patent
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under Patent Owner’s proposed construction (which includes the bracketed
information under Patent Owner’s construction). See id. at 18 (“Applying
[Patent Owner’s] proposed construction [in brackets], the Board held that
channel and preference selections made through the user interfaces shown in
Figures 12 and 17 of Kloba constitute ‘consumer usage information’ as
recited in the ’358 patent.”) (citing ’1892 FWD 40–41).
Patent Owner contests Petitioner’s assertions regarding the “consumer
usage information,” arguing that Kloba’s disclosure in Figures 12 and 17
fails to teach the claimed term “consumer usage information” under either
parties’ proposed construction of the term. See PO Resp. 27–38.
However, the Board already determined that the combination of Kloba
and Multer renders this limitation obvious in the ’1892 FWD under a claim
construction that materially tracks the claim construction adopted here. See
’1892 FWD 22, 40–41. Nevertheless, Patent Owner argues that the Board
“never meaningfully considered Patent Owner’s arguments below that the
FIGS. 12 and/or 17 types of information would fail identify for the server
the particular manner in which a consumer had used the clients.”
PO Resp. 27.
But this argument turns on Patent Owner’s proposed claim
construction, which we do not adopt. See supra § II.B.2. As Petitioner
argues, the Board determined that the combination of Kloba and Multer
renders this limitation obvious under a claim construction that materially
tracks the claim construction adopted here. See ’1892 FWD 41–42; Pet.
Supp. Reply Br. 16–19; supra § II.B.2 (Claim Construction). Accordingly,
as Petitioner also argues, Patent Owner should not be able to relitigate this
issue here by relying on materially similar claim language as a patentable
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distinction, because “the Board has effectively decided the issue of whether
Kloba discloses ‘consumer usage information.’” See Pet. Supp. Br. 18–19
(citing B & B Hardware, 575 U.S. at 140); Ohio Willow 735 F.3d at 1342
(“The application of collateral estoppel is not limited to patent claims that
are identical.”). In other words, the same material issue was necessary to the
’1892 FWD judgement and actually litigated by the same parties during the
’1892 IPR.
Specifically, in the ’1892 FWD, the Board stated that “below, we
analyze the claims under the construction Patent Owner proposed in the
Preliminary Response, namely ‘information identifying the manner in which
a consumer has used a consumer device asset,’ to the extent that this
construction is more narrow than Petitioner’s proposal.” ’1892 FWD 22.
Although the Board did not analyze the claims to determine “the particular
manner in which a consumer has used a consumer device asset,” as the
Board determined, this “particular” limitation does not appear in the claims.
See id. We do not adopt this additional “particular” limitation here either as
construed above. See supra § II. B.2. Similar to the preamble issue, Patent
Owner chose not to litigate whether Kloba teaches consumer usage
information in the ’1892 FWD. See Ex. 1204, 1–5, 47–61. Therefore, for
reasons similar to those in the previous section addressing the nonvolatile
memory as recited in the preamble, principles of collateral estoppel preclude
Patent Owner from relitigating the materially same issue here. Accordingly,
Petitioner shows by a preponderance of evidence that Kloba teaches the
consumer usage information limitation.

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d. Limitations 1[c] and 1[d] (“automatically resulted
from . . . preprogrammed conditions”)
As indicated above, limitation 1[d] recites
receiving at the remote computer server platform
communications . . . containing consumer usage information . . .,
said communications having automatically resulted from at least
one selected from the group consisting of preprogrammed
conditions and programming instructions generated by the
remote computer server platform.
Limitation 1[c] recites a similar limitation with respect to the
“automatically resulted from . . . preprogrammed conditions” limitation,
albeit requiring the automatic sending of “operational status information.”
Regarding limitation 1[c], Petitioner cites the ’1892 FWD as informative and
contends that various state information disclosed by Kloba, including
memory specifications, available storage space, screen size, profile types,
and other information, constitute the claimed “operational status
information.” See Pet. 29–30 (citing ’1892 FWD 39; Ex. 1006, 6:9–34,
21:34–47, 23:62–63, 24:18–45, 28:23–30, 28:38–39). As indicated in the
previous section, regarding limitation 1[d], Petitioner cites to the ’1892
FWD as informative and preclusive, and contends that objects, including
those selected using the menus represented in Figures 12 and 17, represent
“consumer usage information.” See id. at 31–32 (citing Ex. 1005 ¶¶ 213–
218, 239; ’1892 FWD 42–49).
Petitioner contends both “operational status information” and
“consumer usage information” result automatically from pre-programmed
conditions. See Pet. 31–32 (citing Ex. 1006, 19:57–67, 20:50–53; Ex. 1005
¶¶ 213–218, 239; ’1892 FWD 42–49; Ex. 1007, 35:15–18), 34 (similar
citations). Petitioner relies on the combined synchronization features of
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Kloba and Multer to arrive at the “automatically resulted from . . . pre-
programmed conditions” feature as recited in limitations 1[c] and 1[d]. See
id. at 33–34 (citing Ex. 1007, 35:15–18; Ex. 1005 ¶¶ 213–218, 239; ’1892
FWD 42–49).
Referring to the motivation to combine advanced regarding the
preamble (Pet. 34), Petitioner asserts Kloba does not “expressly disclose
how devices that do not have a manual ‘sync’ button could initiate
synchronization with the server,” but “Multer provides that detail by
teaching that ‘[o]ther devices, such as a cellular telephone, may be triggered
automatically’ or based on ‘regular, time-based’ triggers.” Id. at 26 (citing
Ex. 1007, 35:17–18). Petitioner asserts the artisan of ordinary skill “would
have seen the benefit in incorporating this teaching from Multer into Kloba’s
system to provide an additional or alternative synchronization technique
appropriate for devices such as cellular telephones that lacked a manual
‘sync’ button.” Id. (citing Ex. 1005 ¶ 214).
Petitioner generally contends “Multer teaches that synchronization
may be triggered manually or automatically and can occur in both a ‘pull
direction’ (i.e., sending information from the server to a device as shown in
Figure 15) as well as a ‘push’ direction (i.e., from device to server as shown
in Figure 16).” Id. at 18 (citing Ex. 1007, 35:4–22, Fig. 15, Fig. 16).
Patent Owner contests Petitioner’s assertions regarding the
“automatic[]” communications in limitation 1[d] of claim 1, arguing that
neither Kloba nor Multer, alone or in combination, teach or suggest
automatically communicating information from a device/asset to a server.
PO Resp. 38–45. In particular, Patent Owner argues Kloba merely discloses
manual, not automatic synchronization. Id. at 39. Patent Owner contends
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that Multer’s synchronization “does not disclose automatically
communicating particular information from the device [asset] to the server
(i.e., uploading) as required by the claims.” Id. (citing Ex. 2029 ¶¶ 79–92).
Patent Owner argues that Multer merely discloses “automatically sending a
request for synchronization in the reverse direction (i.e., from the server to
the device [Multer’s ‘pull’ direction]),” which “is completely opposite of
what is claimed (i.e., from the device to the server).” Id.
Many of Patent Owner’s arguments materially track arguments the
Board dismissed in the ’1892 FWD. Toward that end, we adopt and
incorporate by reference the findings and reasoning set forth in the ’1892
FWD. See ’1892 FWD 42–49; Reply 22–26 (noting similarities with
arguments in the ’1892 FWD). Although Patent Owner raises some new
arguments and evidence here, none give rise to a reason to deviate from the
Board’s prior holding on the same issue. For example, citing Mr. Berg’s
testimony, Patent Owner argues that periodic synchronization would not be
optimal for a user, because “she would know the optimal time to initiate a
manual synchronization with the server.” See PO Resp. 42 (citing Ex. 2029
¶ 89). Petitioner persuasively replies that “POSITAs would have seen value
in periodic synchronization in addition to manual synchronization.” Reply
24–25 (showing that “Mr. Berg admitted that he had not considered
scenarios in which periodic device-to-server communications was among
several options” (citing Ex. 1029, 169:14–170:25)).
Moreover, collateral estoppel prevents Patent Owner from re-litigating
the issue of whether the combined teachings of Kloba and Multer render
limitations 1[c] and 1[d] obvious, as Petitioner argues. Reply 22–26; Pet.
Supp. Reply 4–7. As Petitioner argues, element [1c] of the ’477 patent
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contains “identical limitations” to elements 1[c] and 1[d] of the ’358 patent
previously litigated in the ’1892 proceeding. Nothing in the respective
elements relates to other claim elements in a manner that raises a materially
different issue with respect to the previous determination by the Board that
the combination of Kloba and Multer renders this limitation obvious. See
’1892 FWD 39–49.
As Petitioner also argues, Patent Owner “cannot argue that the
intervening change in claim construction standard bars collateral estoppel
because [Patent Owner’s] arguments regarding Multer do not implicate any
disputed claim constructions.” Reply 23. Patent Owner does not advance a
claim construction argument that implicates the “automatically resulted
from” limitation at issue here, let alone an argument that turns on the claim
construction standard. See PO Resp. 1–20 (no claim construction for
“automatically resulted from” proffered).
Notwithstanding Patent Owner’s arguments that Patent Owner “raised
new issues” here “[f]or the first time in any forum” (PO Supp. Br. 17),
Patent Owner had a full and fair opportunity to litigate, and did litigate, the
issue of whether the combination of Kloba and Multer renders this limitation
obvious, which was necessary to the judgment. See ’1892 FWD 39–49.
Also, the record shows, as Petitioner argues, that Patent Owner did not
appeal the Board’s holding in the ’1892 FWD that Kloba and Multer teach
the materially same “automatically resulting from” limitation at issue here.
See Ex. 1204, 1–5, 47–61; Pet. Supp. Br. 5 (Patent Owner “chose not to
appeal these findings, rendering the Board’s decision final with respect to
those issues for purposes of collateral estoppel.”) (citing Smith Int’l, Inc. v.
Hughes Tool Co., 718 F.2d 1573, 1580 (Fed. Cir. 1983) (recognizing that the
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district court’s adjudication of infringement was final and conclusive
because “[n]o issue relating to infringement was appealed”); Power
Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d
1306, 1312 (Fed. Cir. 2019) (collateral estoppel would have applied to non-
appealed decision but for lack of incentive to litigate exception); Daniels v.
Merit Sys. Prot. Bd., 306 F. App’x 567, 569 (Fed. Cir. 2009) (recognizing
that collateral estoppel applied because the Merit Systems Protection Board
decision “became final by operation of law” when petitioner did not appeal
the Board’s decision to the Federal Circuit)).
Accordingly, Patent Owner is precluded from relitigating the
materially identical issue of whether Kloba and Multer teach the
“automatically result[ing] from . . . preprogrammed conditions” as recited in
limitations 1[c] and 1[d] of claim 1. Based on the foregoing discussion,
Petitioner shows by a preponderance of evidence that the combination of
Kloba and Multer would have rendered obvious the subject matter of claim 1
involving the communications “automatically result[ing] from . . .
preprogrammed conditions” as recited in limitations 1[c] and 1[d] of claim
1.

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e. Limitation 1[f] (“managing the plurality of
consumer device assets by the remote computer server
platform, based upon the results of having processed at
least some of the received consumer usage information,
by sending communications containing one or more
management instructions that cause the stored display
data content files of one or more assets to be
automatically modified so as to provide a consumer
service”)
For limitation 1[f], Petitioner relies on Kloba. Pet. 35–39. Petitioner
argues that (i) Kloba’s server provides “instructions . . . [that] are
‘management instructions’ [as claimed] because they command mobile
devices [(‘consumer device assets’)] to perform a particular action: to
synchronize their content with the content of outside providers” (id. at 36
(citations omitted)); (ii) Kloba teaches that “the server sends the instructions
to the mobile devices and . . . the instructions cause the stored display data
content files of the [mobile] devices to be automatically modified” (id. at
36–37 (citations omitted)); and (iii) Kloba’s “one-down” synchronization
transmission (which includes synchronization instructions, including deltas
instructions, and objects sent from the server to mobile devices) “is based
upon the results of the server having processed the information it received in
the ‘one-up’ [synchronization] transmission (which includes consumer usage
information sent by mobile device to server, and relating to a user’s selection
of channels and preferences)” (id. at 37–39 (citations omitted)). Petitioner
asserts that even under Patent Owner’s narrow construction for claim
limitation 1[f] (supra § II.B.4), “Kloba’s ‘management instructions’ are
based upon the server’s processing of ‘consumer usage information’ about
the user’s selections.” Id. at 39.
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Patent Owner does not address Petitioner’s persuasive showing based
on Petitioner’s broad construction. See PO Resp. 45, 45–55 (arguing against
Petitioner’s showing regarding managing limitation 1[f] “when properly
construed” according to Patent Owner’s narrow construction); Reply 17
(arguing that Patent Owner “limits its arguments regarding the ‘managing’
limitation to its own [narrow] construction and does not dispute that Kloba
discloses this limitation under the plain language”). As discussed further
below, collateral estoppel prevents Patent Owner from relitigating whether
Kloba and Multer render limitation [f] obvious under the broad construction.
As will be apparent in the discussion below, Petitioner’s showing with
respect to the narrow construction overlaps with its showing with respect to
the broad construction, because if Kloba teaches limitation [f] under the
narrow construction it also teaches it under the broad construction.
Regarding the application of collateral estoppel to the narrow
construction, Patent Owner asserts that “the prior [panel] [in the ’1892
FWD] declined to address or reach the merits on any of the issues [Patent
Owner] has raised herein on grounds that [Patent Owner] had waived the
right to make any patentability arguments under its ‘new construction’” so
that “none of these issues was ever ‘actually determined’ by the prior
[panel].” PO Supp. Br. 13 (citing Ex. 1024, 248 (a portion of the ’1892
Rehearing Decision)). Based on the respective briefing of the parties, Patent
Owner raises a valid point.
Although Petitioner shows that limitations in the ’358 patent
independent claims 1 and 20 are materially the same as those at issue here in
the ’477 patent, Petitioner “does not contend that the Rule 36 affirmance or
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the Board’s alternative findings have preclusive effect under Federal Circuit
law.” See Pet. Supp. Br. 11.
Also, Patent Owner shows that it lacked an opportunity to fully and
fairly litigate the issue of whether Kloba teaches the respective limitations
under Patent Owner’s narrow claim construction of the managing limitation
(see supra § II.B.4), and also that the Federal Circuit may have affirmed the
’1892 FWD for alternate reasons (including waiver of the narrower
construction). See PO Supp. Br. 4–5 (arguing collateral estoppel does not
apply if the reason for the holding is ambiguous, and “collateral estoppel
does not apply where that judgment was ‘independently predicated on
alternative grounds’” (quoting TecSec, 731 F.3d at 1343)), 7 (asserting
different claim construction standards preclude estoppel), 12–13 (noting the
prior panel’s finding of waiver in the ’1892 FWD); supra § II.B.4 (claim
construction of the managing limitation); Ex. 1024, 47–61 & n.15 (Patent
Owner arguing the managing limitation of claims in the ’358 patent and
noting the Board’s finding of waiver on the narrow construction).
As indicated above, Patent Owner argues under its narrow
construction of limitation 1[f], that the “‘management instructions’
themselves [must] be based upon the results of the server’s processing of
‘consumer usage information’ in at least the sense that the server’s ultimate
determination to include those particular instructions in a transmission it
sends for purposes of causing resulting modifications to a ‘consumer device
asset’ is what needs to be predicated upon such processing.” PO Resp. 45
(emphasis added); see supra II.B.4 (Claim Construction of limitation 1[f]).
Patent Owner characterizes Petitioner’s showing under Patent
Owner’s narrow construction as
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offer[ing] two alternative theories for how Kloba
ostensibly teaches that its server would make a particular
determination to send “management instructions” based upon its
processing of Petitioner’s alleged FIGS. 12 and/or 17 examples
of “consumer usage information” -- one theory purportedly
premised on an express disclosure, and the other on an inherent
disclosure.
PO Resp. 45–46 (citing Pet. 36–39).
According to Patent Owner, Petitioner’s first theory fails because “it
is demonstrably incorrect that Kloba’s ‘deltas’ instructions are downloading
instructions for causing new data files to be stored on mobile devices, or that
they are therefore in any manner based upon the results of the server’s
processing of FIGS. 12 and/or 17 information.” PO Resp. 47 (citing
Ex. 2029 ¶¶ 94–96) (emphasis added).
Quoting Kloba, Patent Owner explains that
in Kloba “a delta is a set of differences between versions of
content or, more generally, objects (i.e., different versions of the
same pages, documents, links, images, applications, services,
etc.). In other words, deltas are sets of differences in the state of
the objects currently being offered [by provider 128 websites]
and the state of the objects in client 108.”
PO Resp. 47–48 (quoting Ex. 1006, 19:54–59; citing Ex. 2029 ¶ 95).
Although Patent Owner quotes this passage, Patent Owner does not
even assert that selecting an object via the menu of Figures 12 (e.g., FOX
SPORTS channel) or Figure 17 (e.g., SHOW IMAGES) does not correspond
to a delta according to this passage. See PO Resp. 47–49. Rather, Patent
Owner contends, in a footnote, that Petitioner distinguishes Kloba’s deltas
from information regarding a user’s selection by referring to “information
about a user’s selection of channels [FIG. 12] and preferences [FIG. 17] as
well as ‘deltas.’” PO Resp. 48 n. 14 (quoting Pet. 38 (emphasis added)).
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But in context, in view of Kloba’s teachings, and Petitioner’s showing, “as
well as deltas” simply includes providing information about the difference
between what is selected (i.e., what is selected by the device and offered on
the server) and what exists on the device in terms of the state of a channel or
object, where a difference might include the name of the channel/object, its
location (including a root object URL), its size, and other properties.14
Supporting this understanding, Petitioner relies on Kloba’s server providing
“synchronization instructions and objects” after receiving “‘delta’
information about existing objects and channel/preference selections.”
Reply 18 (citing Ex. 1006, 19:51–20:13, 20:50–53, Figs. 1I1 and1X)
(emphasis added).
Patent Owner also contends that during the oral hearing in the ’1892
IPR, Petitioner admitted that a “delta is a change in a file that already exists
on a device,” and that “the specific delta instructions that are transmitted
from the server [based on the delta] to the device are instructions for causing
existing content on the device to be modified.” PO Resp. 49 (citing
Ex. 2023, 14:9–11, 16–20, 15:1–4, 41:1–3). Patent Owner also argues that
“Kloba’s ‘deltas’ instructions are indisputably not downloading instructions
for adding new data files such as FIGS. 12/17 files to mobile devices, but
rather updating instructions for modifying existing files that already reside

14 According to Kloba, “[a] channel includes a number of properties,”
including, “[a] name of the channel,” “[a] location of a root object (such as
not limited to a URL),” “[a] maximum size of a channel,” “an indication of
which resource objects are enabled,” “[a]n indication of whether or not
images are to be included in or excluded from objects in the channel.” See
Ex. 1006, 7:27–32.
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on mobile devices so as to ‘synchronize the deltas from the client 108 with
providers 128.’” Id. at 49 (citing Ex. 1006, 20:12).15
Patent Owner also argues that “Kloba expressly distinguishes
information relating to newly requested data files (‘desired information’)
from ‘deltas’ information that reflects ‘synchronization changes’ to existing
data files already residing on mobile devices.” PO Resp. 48 n.14 (citing
Ex. 1006, 20:51–56). Patent Owner also argues that Kloba’s delta
instructions in the one-down transmission only respond to the deltas in the
one-up transmission, so “that the server would make the exact same
determination to include a needed ‘deltas’ instruction in a subsequent one-
down sync transmission to a mobile device irrespective of whether or not
any given one-up transmission had ever included any FIGS. 12/17
information at all.” Id. at 51 (emphasis added).
Contrary to the thrust of Patent Owner’s arguments, Kloba does not
refer to a selection of a new channel or preference as distinct from using at
least some delta information to facilitate the selection. And as noted above,
Petitioner relies on Kloba’s teachings of a consumer asset providing delta
information about existing objects and new channel and preference

15 Essentially, Patent Owner refers to all server instructions in Kloba as
“delta instructions” or “deltas instructions” to the client, because Patent
Owner contends that Kloba’s server only produces such instructions based
on coordinating deltas information from the client. See, e.g., Tr. 101:5–10
(Patent Owner arguing that “[i]f your read column 19 and 20 in context,
it’s crystal clear that what this is saying is that these delta instructions are
based exclusively on deltas information . . . from the mobile device and
the server and coordination between the two and it’s sent down as an
instruction to make a delta change to an existing file on the mobile
device.”).
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selections to a server, which then provides the desired information and
instructions. See Pet. 38; Reply 18; Ex. 1006, 21:1.
In particular, Petitioner relies on Kloba’s server as providing
“synchronization instructions and objects” after receiving “‘delta’
information about existing objects and channel/preference selections.” See
Reply 18 (“The server then processes that information and, based on that
processing, sends synchronization instructions and objects to the client in the
one-down transmission. . . . These instructions cause the client’s display
data content files to be modified.”) (citing Ex. 1006, 5:53–61, 8:7–19,
19:22–38, 19:51–20:25, 20:51–56, 34:52–54, Fig. 1I1, Fig. 1X).
The Petition and Dr. Kesidis reproduce Kloba’s Figure 1X, which
follows (see Pet. 31; Ex. 1005 ¶ 231):

Kloba’s Figure 1X above shows “another view of the synchronization
process” (Ex. 1006, 20:50) wherein the server responds to “USER DATA[,]
DEVICE DATA[,] . . . RESOURCES[, and] CHANGES,” in a one-up
transmission with a one-down transmission. In describing Figure 1X, Kloba
states that initially, “the device 106 or client 108 provides information about
itself and the content it wishes to receive in a single ‘up’ transmission, and
the server 104, upon identifying the device 106 or client 108, returns the
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desired information along with new synchronization changes in a single
‘down’ transmission.” Ex. 1006, 20:51–56 (emphasis added). The server
also responds to “future transmissions” from the client device, which sends
“information which has changed since the last synchronization,” and then, in
response, the server responds with “[s]ynchronization tokens” that represent
“the information which has changed since the last synchronization session.”
Id. at 20:56–60. Kloba also states that in response to a single up
transmission, in one embodiment, server “module 156 would cache all the
information and instructions on behalf of the client and transmit them in all
at once.” Id. at 21:1–2 (emphasis added).16
In other words, by selecting a new channel via Figure 12 or preference
via Figure 17, this represents “USER DATA[,] DEVICE DATA[,] . . .
RESOURCES[,] CHANGES,” or “information about itself [i.e., the client]
and the content it wishes to receive in a single ‘up’ transmission.” In

16 In the ’1892 FWD, the Board made a similar finding with respect to
Figure 1X:
Thus, Figure 1X reaffirms that Kloba sends all instructions and
objects (including deltas, new channels, and preferences) in a
single transmission, not as separate synchronizations as Patent
Owner argues. The server communicates its single set of
instructions to the client as a result of processing all of the
information it receives in the single-up transmission from the
client. This includes deltas, requests for new channels, and
changes to preferences. Id. at 8:7–19, 19:51–22, 20:50–56.
Thus, we find that the server sends communications containing
management instructions to the client, and thereby manages the
client, “based upon the results of processing at least some of the
received consumer usage information,” as recited in claim 1.
’1892 FWD 53 (emphasis added).
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response, the server transmits “information and instructions on behalf of the
client . . . all at once.” Ex. 1006, 21:1–2 (emphasis added).
Citing the same column 20 passage describing Kloba’s Figure 1X,
Patent Owner contends that it shows that “Kloba expressly distinguishes
information relating to newly requested data files (‘desired information’)
from ‘deltas’ information that reflects ‘synchronization changes’ to existing
data files already residing on mobile devices.” PO Resp. 48 n.14 (quoting
Ex. 1006, 20:51–56). But contrary to Patent Owner’s arguments, the cited
passage does not describe restricting “synchronization changes” to “existing
files.” Rather, the server responds with these “synchronization changes” to
“information about [the client] and the content it wishes to receive.” See
Ex. 1006, 20:51–56. And even if Kloba restricts “synchronization changes”
to changes to existing files and only existing file changes relate to deltas, as
set forth above, Kloba defines a channel or object state in terms of channel
properties such as the name, location (URL), size, etc., of the channel. See
supra note 14 (quoting Ex. 1006, 7:27–32); Pet. 33 (relying on Kloba’s
device to send information related to channels using Figures 12 and 17), 37–
38 (relying on selecting channels or objects including deltas to invoke
management instructions).
Therefore, as Petitioner shows, Kloba discloses or at least suggests
that selecting a new channel with a delta simply involves providing a change
(delta) to one or more of these properties relative to an existing channel on
the device. See Ex. 1006, 7:27–32 (describing channels as any content,
including a “collection of objects,” including “applications,” “services,” or
“links, etc.”), Ex. 1006, 19:54–59 (defining deltas under “one embodiment”
as a “set of differences” applicable to any “content” or “object” version,
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including “applications” or “services”); PO Resp. 47–48 (quoting Ex. 1006,
19:54–59; citing Ex. 2029 ¶ 95).
Moreover, the relied-upon passage describes the server as responding
with “information and instructions” to any one-up sync input from a device
requesting changes. Ex. 1006, 21:1–2 (emphasis added), Fig. IX (one-up
sync includes “USER DATA,” “DEVICE DATA” “CHANGES ETC”). It
alternately and similarly describes the server as transmitting “desired
information along with new synchronization changes in a single ‘down’
transmission” (id. at 20:55–56), in response to “the device 106 or client 108
provid[ing] information about itself and the content it wishes to receive in a
single ‘up’ transmission” (id. at 20:51–53). Based on the one-up “USER
DATA,” “DEVICE DATA” “CHANGES ETC” input as portrayed in Figure
1X, the “content” the user “wishes to receive” in a first synchronization does
not exclude, but includes, reliance on existing data files, even if it relates to
adding new data files, as Patent Owner concedes. See PO Resp. 48 n.14
(arguing that “desired information” relates to “newly requested data files”).
In other words, the server generally responds to change requests
during a first synchronization with “desired information along with new
synchronization changes,” and in general during a synchronization, the
server transmits “the [desired] information and instructions.” See Ex. 1006,
20:54–55, 21:1–2 (emphasis added). So Kloba expressly discloses sending
“information and instructions” or “desired information along with new
synchronization changes,” even when a user requests new information or
objects (e.g., CHANGES, see Fig. 1X), as Petitioner shows. See, e.g., Pet.
33–39.
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Tying the general view of one-up and one-down synchronization of
Figure 1X and specific teachings at column 20 to one up and one down
synchronization teachings with respect to described channel menu selections
of Figure 12 at column 34, Petitioner describes the following:
First, a device sends information related to channels (i.e., Internet
content) that the user “elect[ed] to subscribe to” while using the
device “in the off-line mode.” [Ex. 1006,] 34:50–52, Fig. 12
(showing “an example screen shot representing a channel
subscription page displayed on the client 108”). The device
sends that information to the server during synchronization. Id.
20:51–53 (“the device 106 or client 108 provides information
about . . . the content it wishes to receive in a single ‘up’
transmission”), Fig. 1X (showing the single up (“1Up”)
transmission from a device to the server).
Pet. 33 (emphasis added). Petitioner also states that “[a]s with all other
information sent from user devices to the server, the device sends both types
of ‘consumer usage information’ in the single ‘one-up’ transmission of the
synchronization process.” Id. (citing Ex. 1006, 19:65–67, 20:18–21, 20:51–
53, Fig. 1X; Ex. 1006, ¶ 238). Then, Petitioner relies on Kloba’s one-down
transmission to send all synchronization instructions and objects. Id. at 37–
38.
Stated another way, Petitioner relies on Kloba’s one-down
synchronization instructions to add new files or objects after a consumer
uses the menus of Figures 12 or 17 in a one-up transmission for selecting
changes. See Pet. 36–39 (citing Ex. 1006, Figs. 1I1, 1X; Ex. 1005 ¶¶ 231,
247–248; Reply 13–22. Petitioner similarly contends that Figure 17’s menu
provides for requesting object changes for existing files using Kloba’s delta
instructions. See Reply 21–22.
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At the top of the column 20, referring to process steps in relation to
Figures 1H1 and 1I1, Kloba describes processing “deltas from client 108”
and describes instructions generated as a result of processing the deltas and
other information from providers: “Based on the information from
provider(s) 128, synchronization modules 155 compile instructions to
synchronize the client 108 with providers 128 (step 172D). Synchronization
module 155 sends such instructions to client 108, plus updated data marker
(step 172E).” See Ex. 1006, 20:13–18 (emphasis added); see also id. at
20:19–22 (“Thus, the invention achieves a one-up/one-down
synchronization process, thereby improving performance. The instructions
are transmitted via any reliable transport medium.”) (emphasis added); PO
Sur-reply 19 (citing Ex. 1006, 5:53–61, 8:7–19, 19:51–20:22, 20:50–56,
Figs. 1I1 and 1X); Reply 20–21 (citing Ex. 1006, 20:18–20, 20:53–56, Fig.
1X).17
At one point, Petitioner refers to Kloba’s “alleged ‘delta instructions’”
(Reply 21 (emphasis added)), signifying that it uses the term to respond to

17 The top of column 20 describes steps 172C–E, involved in Figure 1H1 as
shown also in full in Figures 1I1 and 1I2. Ex. 1006, 19:51–20:28. The
bottom of column 20 describes Figure 1X, which “is used to generally
describe [an] embodiment[] of the invention.” Id. at 3:21–23. Even though
the two embodiments include some differences, in the ’1892 FWD, the
Board found that “Figure 1X is consistent with Figure 1I1. Figure 1X is
‘another view of the synchronization process,’ not a separate
synchronization process for new channels.” ’1892 FWD 53 (quoting
Ex. 1006, 20:50). As to the consistency between the two embodiments (i.e.,
Figure 1X and 1I1), the Board found that “Figure 1X reaffirms that Kloba
sends all instructions and objects (including deltas, new channels, and
preferences) in a single transmission, not as separate synchronizations as
Patent Owner argues.” ’1892 FWD 53.

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Patent Owner, whereas Patent Owner contends that Kloba discloses delta
instructions, even though Kloba does not explicitly refer to delta
instructions. See PO Sur-reply 18–20. The description of Figure 1X does
not mention deltas or delta instructions explicitly. In any event, as explained
above with respect to Figure 1X, and as Petitioner shows, requesting a new
channel using Figure 12’s channel menu or Figure 17’s preference menu
falls into the ambit of providing “information about itself [i.e., the consumer
asset] and the content [the consumer asset] wishes to receive” (Ex. 1006,
20:52), and the server responds by transmitting “information and
instructions” to update the “content [the consumer asset] wishes to receive”
(id. at 21:1–2).
As discussed above, Petitioner shows that “Kloba’s server processes
all information in a one-up transmission from a client—including
channel/preference selections and ‘deltas’—to determine what new content
to obtain and what changes to make to existing content.” See Reply 20
(citing Ex. 1006, 8:12–19, 20:11–17). Then, as Petitioner argues, “[b]ased
on processing that information, the server compiles new content and
instructions into a unified one-down transmission to the client.” Id. (citing
Ex. 1006, 20:53–56) (emphasis added).
As Petitioner notes, Patent Owner “does not dispute that at least the
alleged ‘delta instructions’ constitute ‘management instructions.’” Reply 21.
Petitioner also relies on Kloba’s disclosure that the “server compiles new
content and instructions into a unified one-down transmission to the client.”
Reply 20 (citing Ex. 1006, 8:12–19, 20:11–17 (“synchronization modules
155 compile instructions to synchronize the client 108 with providers 128”).
According further to Petitioner, “the server’s determination of specific
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content to include in the one-down transmission—including [but not limited
to] the alleged ‘delta instructions’—is based on the server having processed
the consumer usage information in the one-up transmission.” See id. at 21
(emphasis added).
Quoting Kloba, the Petition also states that “‘[s]ynchronization’ refers
to the ‘process of copying, adding, filtering, removing, updating and
merging the information between a client and a server.’” Pet. 36 (quoting
Ex. 1006, 5:48–50) (emphasis added). Further quoting Kloba, the Petition
states that “the selected channels are loaded on the client 108 during the next
synchronization operation.” Id. (quoting Ex. 1006, 34:52–54).
In its Sur-reply, Patent Owner contends that Petitioner fails to show
that “Kloba satisfies elements 1[f]/20[g] as properly construed by either
expressly or inherently disclosing that its server makes a particular
determination to include ‘management instructions’ in a one-down synch
transmission based upon the results of processing of [Petitioner’s] FIGS.
12/17 examples of ‘consumer usage information.’” PO Sur-reply 18.
According to Patent Owner, Petitioner offers “no new expert testimony to
counter [Mr.] Berg,” and Petitioner merely “presumes that Kloba’s one-
down synch transmissions inherently must contain downloading
‘management instructions’ for ‘adding’ new FIGS. 12/17 data files.” Id. at
20–21. In an apparent reference to its argument that the Petition relies on
inherency, Patent Owner also contends that Petitioner “contravenes
§42.23(b) by newly arguing that Kloba contains an ‘express disclosure that
instructions are needed’ to perform all types of synchronization, including
both ‘adding’ and ‘updating’ objects on the client.” Id. at 21 (quoting Reply
20).
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To support its arguments that adding new channel/object files to a
client via the menus of Figures 12 and 17 does not require any management
instructions from Kloba’s server, Patent Owner relies on “sophisticated
software residing on mobile . . . . devices,” including browser software to
handle new objects, and also Kloba’s teachings for optimizing content at the
server, so that the mobile devices do not need “management instructions.”
See PO Resp. 53–54; PO Sur-reply (“Kloba expressly teaches that all
optimizations that the server performs based upon such ‘state information’
are applied only to new data file objects on the server itself prior to sending
them down to the mobile devices.”) (citing Ex. 1006, 5:63–6:41, 24:10–52,
28:20–36).18
The record does not support Patent Owner’s arguments or
characterization of Kloba’s teachings. As discussed above, Petitioner’s
showing does not relate to merely requesting new data files, even if Kloba
teaches applying state information to new data files. Contrary to Patent
Owner’s arguments and Mr. Berg’s testimony, Kloba does not expressly
teach applying state information only to new data files at any of the cited
passages. Kloba does not even mention new data files at the cited passages.
See Ex. 1006, 5:63–6:41, 24:10–52, 28:20–36. Rather, Kloba refers to
transforming or optimizing an object from a third party that a client

18 Patent Owner argues “these facts were . . . admitted in the Petition.” PO
Sur-reply 20 (citing PO Resp. 55 n.16). Contrary to Patent Owner’s
characterization, Petitioner simply explained that Kloba’s “server optimizes
the content for display within the preferences and other parameters of the
device.” See PO Resp. 55 n.16 (citing Pet. 15–16). As explained herein,
optimizing is simply a separate operation within synchronizations that
include instructions.
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requested using the client’s state information. See Ex. 1006, 23:30–24:47.
But as discussed above in connection with Figure 1X, a client requests new
objects via the synchronization process that involves existing files and
instructions. In other words, even though Kloba’s server provides
optimization, transformation, and translation, and Kloba’s browser may
process downloads, Kloba describes such server operations as part and
parcel of the synchronization process that also includes instructions. See,
e.g., Ex. 1006, 23:49–55 (server may simply pass an object to a client to
optimize it during synchronization), Ex. 1006, 24:15–18 (translation,
transformation, and optimization during synchronization step 176G using
synchronization module 124).
Mr. Berg’s testimony narrowly relates to optimization in, for example,
the size of delivered objects or other similar transformations, to allow “the
display to fit within the parameters of client 108.” See Ex. 2029 ¶ 106. Mr.
Berg’s testimony also narrowly relates to generic layout and rendering
software and/or a generic operating system with a browser in the mobile
device to display objects. See id. ¶¶ 107–110. Based on these software and
rendering teachings in Kloba, Mr. Berg concludes that “a POSITA would
understand that . . . the Kloba device would already know how to receive,
store and display content from the server, and that there would be no need
for any additional instructions from the server (which has already optimized
the content).” Id. ¶ 110. But this testimony glosses over the fact that Kloba
describes the synchronization process as including both synchronization
instructions and optimizing for display, etc. See, e.g., Ex. 1006, 23:49–55
(server may simply pass an object to a client optimize it during
synchronization), 20:1–21:2 (discussing synchronization instructions in
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general); Ex. 1006, 24:15–18 (web synchronization module responds to state
information).
For example, as the Petition notes, “the server’s web synchronization
module ‘obtains an object from provider 128 . . . which conforms to that
which is requested by client’s 108 state information.’” Pet. 35 (quoting
Ex. 1006, 24:10–13 (emphasis added)). According to the Kloba passage
relied upon by Petitioner, if Kloba’s server decides to optimize an object
from a third party selected by a consumer, “web synchronization module
124 translates/transforms/optimizes the object for use by a particular client.
The state information of the device 106 and/or client 108 is considered in
this optimization process.” Ex. 1006, 24:15–18 (emphasis added); see PO
Resp. 53–54 (addressing optimization). During synchronization, the server
module considers, inter alia, user profiles, dynamic and other memory
specifications, cookies, and applications on the device, “when determining
what, if any, transformations/conversions/optimizations to perform” during
synchronization. Ex. 1006, 24:20–47.
So even though Kloba’s server optimizes objects and responds to state
information as Patent Owner argues, Kloba also describes instructions sent
during a general synchronization process, as discussed above in connection
with Kloba’s teachings (including Figure 1X). See, e.g., Ex. 1006, 20:1–
21:2, 24:20–47. In other words, as Petitioner persuasively argues, Patent
Owner’s arguments that Kloba’s browser, rendering, state information, and
other software teachings preclude Kloba’s server instructions are
“inconsistent with Kloba’s express disclosure that instructions are needed to
‘synchronize the client . . . with providers’ and that such synchronization
includes ‘adding’ and ‘updating’ objects on the client.” Reply 20 (citing
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Ex. 1006, 5:48–50, 20:14–25, Figs. 1H1, 1I1) (emphasis added).
Quoting Kloba, the Petition states that “during the synchronization
process, . . . the server 104 will load the client 108 with the objects
associated with the channels.” See Pet. 35 (quoting Ex. 1006, 8:16–19)
(emphasis added); Reply 19 (describing loading (quoting Ex. 1006, 8:11–13,
34:52–54)). Because the “server . . . load[s] the client” as a response to a
client request during a synchronization process, and the server sends
“synchronization” “instructions” or “synchronization changes” (see
Ex. 1006, 20:14–24, 20:50–21:2, Fig. 1X) as part of the general
synchronization process, Kloba discloses “management instructions.”
At the cited column 34 passage, Kloba specifically describes Figure
12 as a “channel subscription page” wherein “a user can subscribe to
channels listed” thereon and “the selected channels are loaded on the client
108 during the next synchronization operation.” Ex. 1006, 34:49–54. At the
cited column 8 passage, Kloba states as follows:
During a synchronization process, the server 104 loads a
device 108 with the channels associated with the client 108.
Generally, the server 104 does this by obtaining from providers
128 the objects defined by the channels, and causing those
objects to be stored on the client 108. Thus, during the
synchronization process, the server 104 will load the client 108
with the selected channels. More particularly, the server 104 will
load the client 108 with the objects associated with the channels.
Ex. 1006, 8:12–19 (emphasis added).
Further supporting Petitioner’s showing that Kloba’s server causes
loading of a client with objects/channels via instructions during
synchronization, Kloba broadly teaches that creating new channels or user
preferences, or any new information ordered by a client, occurs as part of the
synchronization process: “The usage of the term ‘sync,’ as described herein,
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refers to the overall operation of connecting a client to a server for the
exchange, interaction, creation, and removal of data.” Id. at 5:32–35
(emphasis added). “Synchronization is meant to refer to the specific process
of copying, adding, filtering, removing, updating and merging the
information between a client and a server.” Id. at 5:48–50 (emphasis added).
See Pet. 36–37 (quoting the passage and other related passages in Kloba
(citing Ex. 1005 ¶¶ 246, 248; Ex. 1006, 3:63–4:19, 5:48–50, 8:13–16,
20:16–17, 20:23–25; ’1892 FWD 51)).
These synchronization teachings go hand-in-hand with the explicit
server synchronization and compiling instructions that Kloba teaches at
columns 20–21 and Figure 1X. Patent Owner characterizes Petitioner’s
reliance on Kloba’s “adding,” “updating,” and loading teachings as a mere
“inherency theory,” alleging that Kloba at most teaches “instructions . . .
used in certain preferred embodiments that pertain strictly to updating
existing files . . . with ‘deltas’ changes.” See PO Sur-reply 21. However, as
noted above, Kloba’s Figure IX teachings include “USER DATA,”
“DEVICE DATA,” “CHANGES,” “ETC.” (i.e., consumer usage
information) with or as deltas, from a client. See Ex. 1006, 21:50–21:2,
Fig. 1X. Based on this usage data and selections for changes from the client,
the server provides the selected “information along with new
synchronization” or “all the information and instructions on behalf of the
client” (management instructions) to effectuate the adding and updating (i.e.,
change) requests. See Ex. 1006, 21:50–21:2. That is, Figure 1X represents
“another view of the synchronization process” that includes the adding and
updating changes in Kloba’s synchronization process. See Ex. 1006, 20:50;
accord ’1892 FWD 53 (“Figure 1X is ‘another view of the synchronization
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process,’ not a separate synchronization process for new channels.” (quoting
Ex. 1006, 20:50)).
Accordingly, Petitioner shows that creating, exchanging, removing,
and adding new data, including channels or preferences with respect to a
specific client asset’s use of Figure 12’s and 17’s menus during Kloba’s
synchronization process, includes instructions and involves more than
merely rendering, optimizing, and otherwise processing data for display.
Also, contrary to Patent Owner’s argument that Petitioner’s showing
related to the server’s updating and adding with instructions during
synchronization raises an improper new argument in the Reply under
§ 42.23(b) (PO Sur-reply 21), as indicated above, the Petition relies on and
quotes explicit synchronization instruction teachings in Kloba and the
testimony of Dr. Kesidis (which similarly relies on and cites to Kloba). See
Pet. 36–39 (citing Ex. 1005 ¶¶ 231, 246–249; citing Ex. 1006, 3:63–4:19,
5:48–62, 8:12–16, 19:51–20:25, 20:50–56, 28:20–36, 34:52–54, Fig. 1I1
(synchronization process), 1X (same)).
For example, quoting directly from Kloba in support of the Petition,
Dr. Kesidis testifies that synchronization processes of copying, updating,
merging, and adding data or objects, goes hand-in-hand with Kloba’s
synchronization instructions, as follows:
Kloba teaches that its mobile devices have a “control module”
that executes the instructions received from the server. Id. at
20:23–25 (“Control module 142 on the client 108 then executes
the instructions (step 172F).”). As I have just discussed, these
instructions cause the devices to be “synchronize[d] . . . with
providers 128.” Id. at 20:11–15. This synchronization process
results in information being “cop[ied], add[ed], filter[ed],
remov[ed], updat[ed] and merg[ed]” on the devices. Id. at 5:48–
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50. These actions (i.e., copying, adding, filtering, removing,
updating, and merging) are all “modifi[cations].”
Ex. 1005 ¶ 248.
As also noted above, the Petition quotes Kloba’s Figure 1X teachings
and states that “the device 106 or client 108 provides information about
itself and the content it wishes to receive in a single ‘up’ transmission, and
the server . . . returns the desired information along with new
synchronization changes in a single ‘down’ transmission.” Pet. 38 (quoting
Ex. 1006, 20:51–56) (emphasis added). This “information about itself and
the content it wishes to receive” shows that Kloba’s process includes adding
new information with synchronization changes as discussed above.
The Petition also quotes Kloba as stating that “‘[s]ynchronization’
refers to the ‘process of copying, adding, filtering, removing, updating and
merging the information between a client and a server.’” Id. at 36 (quoting
Ex. 1006, 5:48–50) (emphasis added). As opposed to a theory of inherency
or raising an improper Reply argument (see PO Sur-reply 21), in addition to
quoted paragraph 248 above, Dr. Kesidis similarly relies on disclosed
“instructions” and “adding” of “information” in Kloba such that Kloba’s
server loads selected channels and preferences during a synchronization
operation. See Ex. 1005 ¶ 246 (citing Ex. 1006, 8:12–13, 20:11–17, 20:23–
25, 34:52–54), ¶ 247 (citing Ex. 1006, 5:58–61, 20:11–15, 20:51–56, 24:15–
17).19

19 Patent Owner concedes that Dr. Kesidis testifies about instructions for
displaying objects at paragraph 247 of his declaration, but characterizes his
testimony as conclusory. See PO Sur-reply 20–21 (citing Ex. 1005 ¶ 247).
Contrary to Patent Owner’s characterization, Dr. Kesidis provides specific
citations to Kloba at paragraph 247 and other paragraphs to support his
testimony as noted.
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Dr. Kesidis also testifies that Kloba’s “server can only ‘synchronize
the client 108 with providers 128’ ([Kloba,] 20:11–15) if the server knows
and processes the user’s selection of content provider channels.” Ex. 1005
¶ 247. Patent Owner does not challenge the premise that Kloba
synchronizes different types of client requests, and Kloba supports the
premise as discussed above in connection with Figure 1X and other
synchronization teachings in Kloba. See PO Resp. 52 (citing Ex. 1005 ¶
247); Ex. 1006, 20:1–21:2. This premise is merely one supporting
evidentiary statement from Kloba that Dr. Kesidis relies upon in testifying
that “a PHOSITA would have understood that the server must necessarily
compile and send the instructions to the devices based on processing at least
some of the data related to user-selected channels and/or preferences.” See
Ex. 1005 ¶ 247. In a preceding declaration paragraph, Dr. Kesidis quotes
Kloba as stating that “the server ‘compile[s] instructions to synchronize the
client 108 with [content] providers 128.’” Id. ¶ 246 (quoting Ex. 1006,
20:11–15). Patent Owner does not challenge this factual predicate either,
but seizes on the “must necessarily” testimony at paragraph 247 as
conclusory and based on inherency. See PO Resp. 52.
Nevertheless, based on the foregoing discussion, Dr. Kesidis supports
the testimony with a logical reading of Kloba based on the perspective of
what an artisan of ordinary skill would understand from Kloba’s
synchronization teachings. See Ex. 1005 ¶¶ 246–247. In context, the “must
necessarily” language refers to what Kloba implies to an artisan of ordinary
skill––simply, the server sends compiled instructions in response to client
requests for new information or objects from third party providers. See Ex.
1006, 20:1–21:2.
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Further supporting Petitioner, as part of the synchronization process of
channels/objects as discussed above, Kloba’s flow diagrams also show that
the server “SENDS INSTRUCTIONS TO CLIENT PLUS AN UPDATED
DATA MARKER,” and then, a “CONTROL MODULE EXECUTES
INSTRUCTIONS.” Ex. 1006, Fig. 1I1 (elements 172E and 172F); see
Pet. 37 (citing Ex. 1006, 20:23–25, element 172F); Inst. Dec. 61 (citing this
teaching as raised in the Petition).
Petitioner also persuasively explains that claim 1 “do[es] not require
that instructions tell the client how to handle objects. Rather, they require
only that instructions ‘cause the stored display data content files . . . to be
automatically modified.’ The server’s one-down transmission does just
that.” Reply 20. In Kloba, as noted above, “[d]uring a synchronization
process, the server 104 loads a device 108 with the channels associated with
the client 108. Generally, the server 104 does this by obtaining from
providers 128 the objects defined by the channels, and causing those objects
to be stored on the client 108.” Ex. 1006, 8:11–13 (emphasis added); see
Reply 19 (citing Ex. 1006, 8:11–13; Pet. 36–39). And as Figure 1X shows,
in response to consumer requests for certain information, Kloba’s server
transmits “information and instructions on behalf of the client” to effectuate
a client device change. Ex. 1006, 21:1–2 (emphasis added).
But even if, as Patent Owner contends, Kloba’s explicit server
instructions that Petitioner relies upon do not relate to Kloba’s
synchronization teachings of adding, updating, and loading data objects,
Kloba still satisfies the narrow claim construction of the managing
limitation, under the parties’ agreed upon construction of “management
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instructions,” as Petitioner also argues. See Reply 19–20 (citing Ex. 1006,
5:48–50, 8:11–13, 20:14–25, 34:52–54, Figs. IH1, 1I1); Pet. 36–39; supra
§ II.B.3 (adopting the agreed-upon construction of “management
instructions”). The server’s responsive loading or adding of objects pursuant
to Figure 12 or 17’s menu request amounts to a particular responsive data
instruction that updates a specific mobile device’s files based on consumer
usage information from that specific device. This responsive loading is a
“management instruction” under the parties’ agreed upon construction
because it includes data transmissions “sent by the server for purposes of
modifying device assets.” See Reply 19 (quoting PO Resp. 10); PO Resp.
10 n.5 (“The parties likewise agree that as to those specification passages
describing wireless ‘data message’ transmissions sent by the server for
purposes of modifying device assets, POSITA would understand such ‘data’
as comprising ‘management instructions.’”); supra § II.B. 3 (claim
construction of “management instructions”).20

20 As indicated above, Kloba ties specific server loadings of objects to a
specific device or client: “[T]he device 106 or client 108 provides
information about itself and the content it wishes to receive in a single ‘up’
transmission, and the server 104, upon identifying the device 106 or client
108, returns the desired information along with new synchronization
changes in a single ‘down’ transmission.” Ex. 1006, 20:51–56 (emphasis
added). Tying a specific information response to a specific device based on
processing the consumer usage information satisfies the narrow claim
construction for this additional reason. Stated differently, a non-identified
device cannot load the specifically requested object because the server only
causes loading of an identified device; rather, only the identified device
processes the information, indicating a management instruction as construed
narrowly by the parties––i.e., a specific instruction based on consumer usage
information from a specific device tailored for that specific device. See
supra § II.B.3
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Although Patent Owner does not dispute Petitioner’s construction of
“management instructions” (supra § II.B.3), Patent Owner argues that
Petitioner’s claim construction argument is “a gross mischaracterization of
any position taken by” Patent Owner “in these proceedings.” Sur-reply 22.
Patent Owner explains that “based on the overall disclosures and teachings
of the intrinsic record in its own ’477 patent, POSITA would understand that
the ‘communicated data’ or ‘data messages’ recited in certain specific
passages in that patent would comprise ‘management instructions.’” Id. at
22 (emphasis added). Nevertheless, Patent Owner’s argument directly
supports Petitioner’s argument that the ’477 patent specification
contemplates “management instructions” as including “data messages” from
a server that result in modifications to object files as requested by a client.
See id.; PO Resp. 10 n.5 (quoted above).
The ’477 patent specification lends context to the management
instructions based on consumer usage information at issue here. Namely, in
the embodiment at column 4 directed to the “pull down menus” example
(Ex. 1001, 4:28–38), no mention of management instructions exists in the
’477 patent’s description of that embodiment as discussed above. See also
PO Sur-reply 5 (referring to the “specification’s sole claimed embodiment”
and relying on Mr. “Berg’s testimony” to contend the embodiment supports
“management instructions”;21 supra § II.B.4 (claim construction). Similar to

21 Patent Owner does not provide a citation to Mr. Berg’s testimony here, but
generally refers to its Response at pages 11–14. See Sur-reply 5 (citing PO
Resp. 11–14). At pages 13–14 of the Response, Patent Owner cites to
paragraphs 39–41 of Mr. Berg’s declaration. PO Resp. 13 (citing Ex. 2029
¶¶ 39–41). But even here, Patent Owner and Mr. Berg only contend that the
sole claimed embodiment of the ’477 patent teaches what a “POSITA would
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Patent Owner’s characterization of Kloba, the ’477 patent’s “pull down
menus” example does not indicate that the server necessarily sends any
instructions with an optimized or “improved” “pull down menu,” and it does
not indicate clearly whether the server itself optimizes or improves the menu
or sends instructions for the client to do so. See Ex. 1001, 4:28–38. Even
assuming some type of implied management instructions with respect to the
pull down menu embodiment (see Reply 14; PO Sur-reply 5), based on the
discussion above and a review of the record, Petitioner persuasively shows
that Kloba discloses much more with respect to management instructions
than the ’477 patent specification.
In any event, as determined above, the Petition persuasively cites
explicit synchronization instruction teachings in Kloba to tie those to
Kloba’s synchronization loading or adding teachings, supported by the
testimony of Dr. Kesidis. Petitioner persuasively reiterates in its Reply that
“Kloba’s server processes all information in a one-up transmission from a
client—including channel/preference selections and ‘deltas’—to determine
what new content to obtain and what changes to make to existing content.”
Reply 20 (citing Ex. 1006, 8:12–19, 20:11–17). Then, “[b]ased on

appreciate” about the server as sending management instructions. See PO
Resp. 13. This testimony and evidence do not contradict Petitioner’s
showing that any disclosed management instructions in the ’477 patent are at
best implicit in the menus embodiment. As explained above, the claims are
broader than the embodiment, at least because they do not require any
optimization. See supra § II.B.3–4. Yet Mr. Berg relies on such
optimization to support Patent Owner’s claim construction theory. See, e.g.,
Ex. 2029 ¶ 39 (“Such information is forwarded ‘for the purpose’ of allowing
its utilization by the server as the basis for determining what optimizing
modifications should be made to the asset that would ‘support the said use of
the asset.’” (quoting Ex. 1006, 4:28–38)).
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processing that information, the server compiles new content and
instructions into a unified one-down transmission to the client.” Id. at 20
(citing Ex. 1006, 20:18–20, 20:53–56, Fig. 1X) (emphasis added).
In response to Patent Owner’s argument that Kloba does not send
delta instructions to add new channels, and assuming for the sake of
argument Patent Owner is correct, Petitioner relies on delta instructions to
modify existing data files selections selected during a previous
synchronization, as follows:
in Kloba, if an existing channel was first added to or optimized
on a client through the Figures 12 and/or 17 interfaces in a prior
synchronization, the server’s determination to include “delta
instructions” for that channel in a later synchronization would be
based on the server’s processing of channel/preference selection
information obtained during the prior synchronization. Thus, the
server’s choice of those “delta instructions” would be based on
its processing of consumer usage information from an earlier
synchronization.
Id. at 21(emphasis added).
Patent Owner responds that the Reply improperly raises a new
argument under § 42.23(b) and also raises an “unsupported attorney
argument.” PO Sur-reply 20. However, Petitioner’s argument merely
employs what Patent Owner concedes––that management instructions
include Kloba’s deltas instructions. The Reply’s showing, like the Petition,
relies on Kloba’s Figures 12 and 17, and the Reply simply fills in gaps in
response to Patent Owner’s arguments that Kloba’s deltas do not relate to
new channel or object selections and that Kloba’s server only provides
optimizations (without delta instructions). See Pet. 36–39; PO Resp. 47–51
nn.14–15 (addressing arguments in the Petition and arguing that deltas do
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not update new data files) (citing Pet. 36, 38, 39).22 To support its argument
that this Reply scenario fits into the bounds of claim 1, Petitioner
persuasively points out that the above-discussed and relied-upon menus
embodiment at column 4 in the ’477 patent specification allows for
cumulative monitoring of an asset. See Reply 21.
Substantively, Patent Owner argues that Petitioner “fails to explain
how or why this [prior sync scenario] would be true, and clearly during a
‘deltas’ sync the Kloba server would already know what channels and files
reside on the mobile devices without needing to revert back to prior
synchronization requests, even were that somehow possible.” PO Sur-reply
19–20 (citing Ex. 1006, 8:9–10, 19:51–53) (emphasis added). Nevertheless,
Patent Owner’s argument supports Petitioner’s multi-step synchronization
scenario based on Kloba. As quoted above, Patent Owner acknowledges
that Kloba’s “server would already know what channels and files reside on
the mobile devices without needing to revert back to prior synchronization
requests.” See id. at 19–20 (emphasis added). But Petitioner does not argue
that Kloba’s server must “revert back” to the prior requests.23 Patent
Owner’s argument does not refute Petitioner’s showing that Kloba’s server

22 At page 39, the Petition states that “even if the Board adopts the incorrect
[narrow] construction [by Patent Owner] . . . . [a]s discussed above, the one-
up transmission from Kloba’s devices includes information regarding a
user’s selected content and preferences related to that content, and the
instructions sent by Kloba’s server to the user’s device contain information
about how and in what ways the user-selected content should be downloaded
onto the device.” Pet. 39 (citing Ex. 1005 ¶ 249; Ex. 1006, 8:12–13, 20:51–
56, 28:20–36, 34:52–54, Fig. 1X) (emphasis added).
23 It is not clear what Patent Owner means by “revert back” or how the
“revert back” characterization undermines Petitioner’s showing.
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processes a new channel selection via Figure 12’s menu (consumer usage
information) during a prior synchronization step, and then the server
provides deltas management instructions in a subsequent synchronization
step based in part on that previous consumer usage information (stored in
existing files) and based on an update request (deltas) using the preference
selection of Figure 17’s menu.24
The claim 1 limitation at issue, “managing . . . based upon the results
of having processed at least some of the received consumer usage
information, by sending . . . one or more management instructions,” neither
requires nor precludes “revert[ing] back to prior synchronization requests.”
The limitation does require having processed “received” (i.e., current or
prior) consumer usage information, and then, under the narrow construction
at issue here, basing particular management instructions on that processing.
Therefore, Petitioner shows that Kloba satisfies Patent Owner’s narrow
construction by employing delta instructions in a subsequent
synchronization to modify existing channel files “based upon the results of

24 The Petition raises a similar multiple step synchronization process with
respect to consumer preference information as recited in claim 4 (which
ultimately depends from claim 1), as addressed below. See infra § II.F.1.2;
Pet. 43–44 (describing a “first synchronization” and a “future
synchronization”) (citing Ex. 1006, 10:15–24; Ex. 1005 ¶¶ 266–268).
Moreover, as discussed above, Petitioner has maintained consistently
throughout this trial that Kloba’s server adds new channels (Fig. 12) or
preferences (Fig. 17) during a synchronization process. By specifying a
previous synchronization occurrence in the instant scenario outlined in the
Reply, Petitioner does not alter the thrust of its showing and merely responds
to Patent Owner’s specific arguments that Kloba’s server only optimizes
new files content without instructions and does not add new channels using
deltas, pursuant to Patent Owner’s narrow claim construction.
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having processed at least some of the received consumer usage information”
from a previous synchronization, where Patent Owner agrees the server
“would already know what channels and files reside on the mobile devices”
and that management instructions include delta instructions. See PO Sur-
reply 19.
Continuing with its multiple-step synchronization scenario, Petitioner
relies on delta sync instructions to update “existing content” with respect to
the menu of Figure 17:
[T]he Figure 17 preferences are not limited to newly selected
channels; even previously-existing channels need to conform to
user preferences. [Ex. 1006] 5:63–6:41. For example, if an
existing channel has a new image or the user changed his/her
preference for an existing channel by selecting “show images,”
the server would need to determine whether and how to load that
image onto the device according to the user’s preferences.
Accordingly, the server’s choice of particular “delta
instructions” to send to the client to update existing content
would be based, at least in part, on the server having processed
any Figure 17 preference selections.
Reply 21–22 (emphasis added).
Patent Owner replies that this related (i.e., continued from the
previous) scenario advanced by Petitioner is also an improper new argument
that violates § 42.23(b). PO Sur-reply 20. Again, however, the Reply
properly maintains the Petition’s reliance on menu selections per Figures 12
and 17 (see supra note 24) and only responds to Patent Owner’s theory in its
Response that Kloba’s server only optimizes new content and does not
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employ server deltas instructions to add new channels with respect to Figure
12.25
Substantively, Patent Owner maintains the Response’s line of
argument, and replies that Kloba only applies optimizations based on “state
information” and that deltas instructions do not apply to new optimized data
files with respect to Figure 17. PO Sur-reply 21. This line of argument
about optimizations and state information relates to routine functions
performed in Kloba during synchronization as explained above, and it fails
to undermine Petitioner’s showing that relies on providing modifications via
Figure 12’s and Figure 17’s menu selections (consumer usage information)
to which Kloba’s server responds with deltas (management) instructions to
modify existing data files.
As discussed at the outset to this section above, Patent Owner does
not address Petitioner’s broad claim construction of limitation 1[f]. Based
on a full review of the record, Petitioner’s showing is persuasive. See Pet.
35–39. We also adopt and incorporate the findings and rationale in the
’1892 FWD that address the broad construction. See ’1892 FWD 50–55. In
summary, pursuant to Petitioner’s broad claim construction advanced by
Petitioner and under the claim construction applied in ’1892 IPR, “claim 1
only requires that the sending of communications containing management
instructions, and thus the managing of the plurality of consumer device
assets by the remote server computer platform, be based upon the results of
such processing.” ’1892 FWD 54 (emphasis added).

25 Moreover, the Sur-reply provides Patent Owner a fair opportunity to
respond to the Reply arguments at issue here.
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With further respect to the management and management instructions
under the broad construction, we include as adopted and incorporated by
reference the following:
Kloba describes sending [management] instructions that cause
the data content files on the client to be modified. Ex. 10[06],
19:22–32, 19:36–38, 20:13–17, 20:21–25. Those instructions
are sent in communications as part of the synchronization
process that is based, at least in part, on the processing of new
channel (Fig. 12) and preference (Fig. 17) information. Id. at
8:7–19, 19:60–20:25. This is all the claim requires.
’1892 FWD 54–55. Kloba’s synchronization instructions cause the data
content files on the client to be modified. See Ex. 1006, 19:22–32, 19:36–
38, 20:13–17, 20:21–25; ’1892 FWD 54–55.
Alternatively, collateral estoppel prevents Patent Owner from
relitigating the issue of whether Kloba teaches limitation 1[f] under
Petitioner’s broad construction in part because Patent Owner had a full and
fair opportunity to litigate the issue. See ’1892 FWD 50–55; Ex. 1012
(showing nearly identical claim limitations); Pet. Supp. Br. 9–10 (showing
nearly identical claim limitations). It was also necessary to the Board’s
judgement. See ’1892 FWD 50–55. And it was necessary to the M2M
Federal Circuit Decision as a first step prior to reaching waiver or any
arguments related to the narrow construction because a finding that Kloba
does not teach the broad construction necessarily means it does not teach the
narrow construction (to which the alleged waiver applies). See Ex. 1204,
47–64 (Patent Owner’s opening brief culminating in the M2M Federal
Circuit Decision, addressing the broad construction and arguing the Board
did not adequately consider the narrow construction under the proper burden
of proof framework).
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Based on the foregoing discussion, Petitioner persuasively shows that
Kloba teaches the subject matter of claim limitation 1[f].
f. Summary, Claim 1
Based on the foregoing discussion, Petitioner shows by a
preponderance of evidence that claim 1 would have been obvious over
Kloba and Multer.
2. Dependent Claims 2–6
Petitioner asserts that the proposed combination teaches each of the
additional limitations of dependent claims 2–3, which depend from claim 1.
Pet. 41–49. Petitioner primarily relies on teachings in Kloba and supports
these assertions with citations to the record and the testimony of Dr. Kesidis.
Id. (citing Ex. 1005). Petitioner also cites the ’1892 FWD to support its
showing, noting that the ’1892 FWD addresses materially similar claim
limitations in dependent claims. Id. (citing ’1892 FWD 55, 57–59); Pet. 41–
42 & n.8 (“Patent Owner’s alterations to the dependent claims are minor and
do not save them.”). We adopt and incorporate by reference the cited
portions of the ’1892 FWD. Aside from limitation 1[f] discussed above,
collateral estoppel also applies to the added limitations of claims 2–3,
because Patent Owner had a full and fair opportunity to address materially
similar limitations in similar claims 2 and 9 of the ’358 patent, issues that
were actually litigated and necessary to the judgment, as Petitioner shows.
See Pet. 41–42 & n.8 (citing Ex. 1005, Ex. AA); Pet Supp. Br. 1–2 & n.1;
Ex. 1021 (claim chart showing materially similar claim limitations).
Patent Owner does not address claims 2–3 separately from its
arguments that address claim 1. See PO Resp. 65 n.18. Claim 2 requires
one or more of the claimed networks to include “at least one selected from
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the group consisting of a cellular mobile network and the Internet.” Claim 3
requires the server to store “information indicative of preferences . . . for
particular display date content files” on computer assets. Based on a review
of the record, Petitioner also persuasively shows that the combination of
Kloba and Multer renders claims 2 and 3 obvious.
Claim 4 depends from claim 3 and requires that the server “manages .
. . consumer device assets, based upon the results of having processed at
least some of the consumer preference information, . . . by sending one or
more additional management instructions that cause the stored display data
content files for one or more assets to be automatically modified . . . wherein
said communications comprise at least one selected from the group
consisting of GPRS data messages, EDGE messages, or other wireless
packet switched data messages.” Claims 5 and 6 depend from claim 4.
To reach claim 4, Petitioner relies on similar server “instructions” that
it relies on for limitation 1[f] during a “first synchronization,” and adds
Kloba’s teachings related to “another synchronization” including a “future
synchronization” to reach “additional management instructions” as recited in
claim 4:
As discussed above for Element 1[f], during synchronization the
server sends “instructions” that cause devices to store or update
objects and channels. Kloba, 20:13–17. The server sends these
instructions based upon the results of having processed the
information about objects requested in advance or the user’s
preferred channels (i.e., “consumer preference information”).
Kesidis ¶ 266. The synchronization (and accompanying
instructions) that causes storage of information based on the
user’s preferences may be in addition to another synchronization.
Kesidis ¶ 269. For example, during a first synchronization, the
server may load a device with channels actually selected by the
user. Kloba, 8:16–17 (“[D]uring the synchronization process,
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the server 104 will load the client 108 with the selected
channels.”). “[A]t some other future synchronization,” the server
“might send channels to clients 108 when such channels are
identified to be similar to those already selected by the clients
108.” Id. 10:15–24. Providing and updating channels and other
objects for display to a consumer’s device provides a service to
the consumer. Kesidis ¶ 267.
Pet. 43–44.
Regarding the “wireless packet switched data messages” that claim 4
recites, Petitioner contends the following:
As discussed above in connection with Element 1[g], the
communications between that the server and mobile devices may
include wireless packet switched data messages. Kloba, 4:59–
63, 9:57–67, 12:13–20, 21:67–22:1; Kesidis ¶ 270.
Alternatively, for the reasons discussed above in connection with
Element 1[g], PHOSITAs would have found it obvious to use the
packet-switched TCP/IP protocol for communications involving
the Kloba’s wireless consumer device assets. Kesidis ¶ 270.
Pet. 44.
In response, Patent Owner argues that a
POSITA would understand claims 4/22 as requiring their recited
“management instructions” themselves be based upon the results
of the server’s processing of “consumer preference information,”
in at least the sense that the server’s ultimate determination to
include those particular instructions in a transmission it sends for
purposes of causing resulting modifications to a “consumer
device asset” is what needs to be predicated upon such
processing.
PO Resp. 56–57.
Patent Owner also argues that “the ‘management instructions’
limitations of Claims 4/22 have the same linguistic structure as those recited
in claim elements 1[f]/20[g], merely swapping ‘consumer preference
information’ in place of ‘consumer usage information.’” PO Resp. 57.
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Then, Patent Owner relies “on the same reasoning previously discussed
above,” namely, a “POSITA would analogously appreciate here that the
server could only possibly perform its recited type of managing by
determining what particular ‘management instructions’ would need to be
sent to an asset based upon its claimed processing of ‘consumer preference
information.’” Id.
Patent Owner characterizes Petitioner as postulating that “Kloba’s
server stores two alternative types of ‘consumer preference information’”:
First, the server stores information about “objects…requested by
client 108 in advance,” which can result in the server sending
new notification data files to the mobile device “when an event
happens, such as when a stock reaches a target price.” [(Pet. 42
(citing Ex. 1006, 10:7–10))]. Second, the server stores a “list of
channels associated with each of clients 108,” which can result
in the server’s unprompted sending of new data files to the
mobile device relating to other unlisted channels “identified to
be similar” by the server to those already contained on the list.
[(Id. (citing Ex. 1006, 8:9–11, 10:12–17))].
PO Resp. 58.
Patent Owner contends that Petitioner relies upon “deltas” instructions
(see PO Resp. 58–59) and that for the same reasons as argued with respect to
claim 1, these “‘deltas’ instructions, and the server’s determinations to
include them in transmissions sent to mobile devices, are completely
unrelated to -- and in no sense ‘based upon’ – its processing of Petitioner’s
alleged examples of ‘consumer preference information’” (id. at 59).
Tracking its arguments with respect to limitation 1[f], according to
Patent Owner, Petitioner relies on downloading “deltas” instructions for
“new data files.” Id. (citing Ex. 1005 ¶¶ 266, 269). Still tracking its
arguments with respect to limitation 1[f], Patent Owner argues that “Kloba
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explicitly teaches instead that its server compiles and sends ‘deltas’
instructions based exclusively upon processing of ‘deltas’ information.” Id.
Petitioner responds that Patent Owner’s arguments “mirror its
‘management instructions’ arguments” for claim 1. Reply 29. Petitioner is
correct. Patent Owner explicitly states that
Patent Owner has already demonstrated above in the context of
claim elements 1[f]/20[g], Petitioner’s arguments must fail
because Kloba indisputably and admittedly teaches instead that
its “deltas” instructions are not downloading instructions used
for storing new data files on mobile devices, but rather updating
instructions for modifying existing files already residing on
mobile devices. . . . Moreover, Kloba explicitly teaches instead
that its server compiles and sends “deltas” instructions based
exclusively upon processing of “deltas” information.
PO Resp. 59 (citations by Patent Owner to its previous analysis of limitation
1[f] omitted) (emphasis added).
With respect to the specific consumer usage information advanced by
Petitioner as quoted above (Pet. 44), Patent Owner does not challenge it.
Rather, as quoted above, Patent Owner essentially characterizes it without
pointing to any deficiency. See PO Resp. 58 (quoted above). The record
supports Petitioner. As quoted above, similar to its persuasive showing
connection with limitation 1[f], according to Petitioner, at least some future
synchronizations with respect to consumer preference information in Kloba
pertains to existing files and hence delta instructions. See Pet. 43–44 (citing
Ex. 1006, 10:15–24); Reply 21 (arguing with respect to limitation 1[f] that
“the server’s determination to include ‘delta instructions’ for that channel in
a later synchronization would be based on the server’s processing of
channel/preference selection information obtained during the prior
synchronization”). As also noted above, Patent Owner does not dispute that
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deltas instructions constitute management instructions. See PO Resp. 51;
Reply 18. In other words, Petitioner persuasively relies on deltas
instructions here to be sent with similar channels “at some other future
synchronization.” See Pet. 43–44 (citing Ex. 1006, 10:15–24); Reply 21.
And similar to its showing with respect to limitation 1[f], Petitioner
persuasively relies on instructions disclosed in Kloba “that cause devices to
store or update objects and channels” with respect to newly requested
objects. See Pet. 43–44 (citing Ex. 1006, 20:13–17; Ex. 1005 ¶ 266).
In its Sur-reply, Patent Owner does not address Petitioner’s Reply
argument that Patent Owner’s arguments “mirror its ‘management
instructions’ arguments” for claim 1. Reply 29. Patent Owner largely
repeats its arguments directed to limitation 1[f]. Sur-reply 22–23. In
addition, Patent Owner adds the wholly new argument “that examples of
‘consumer preference information’ already residing on the server are not
contemporaneously sent in a one-up sync transmission like FIGS. 12/17
information, and [Petitioner] has provided no evidence that they are
processed as a basis for the server’s determination to send a one-down sync
transmission or to include any ‘deltas’ instructions therein.” Id. at 23–24.
We decline to address this new improper argument at this late stage.
To the extent an analysis of the untimely argument is warranted, as
summarized above, Petitioner shows that at a future synchronization and
based on a previous client request during a previous synchronization,
Kloba’s server sends channel or object information related to the previously
requested consumer usage information (object or channel) from a previous
synchronization. See Pet. 43–44 (citing Ex. 1005 ¶¶266–268; Ex. 1005,
8:16–17, 10:15–24). Based on Petitioner’s showing with respect to
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limitation 1[f], which Petitioner relies upon with respect to claim 4, Figure
1X and the discussion at columns 20–21 teach that Kloba’s server sends
such requested information with instructions during a synchronization
request. See supra § II.F.1e. Also, with respect to the broad claim
construction of limitation 1[f], Petitioner shows that “[c]laim 4 is similar to
claim 10 of the ’358 patent, which the Board found that Kloba discloses.”
Pet. 42 (citing ’1892 FWD 57–59). We adopt and incorporate by reference
the cited rationale and findings in the ’1892 FWD.
Accordingly, Petitioner persuasively shows that Kloba teaches the
limitations of claim 4.
Claim 5 depends from claim 4, and claim 6 depends from claim 5.
Tracking its showing with respect to claim 1, Petitioner presents reasons
supported by the record to show that the proposed combination of Kloba and
Multer teaches each of the additional limitations of dependent claims 5–6,
and renders those claims obvious. Pet. 41–49. Petitioner supports these
assertions with citations to the record and the testimony of Dr. Kesidis. Id.
(citing Ex. 1005). Petitioner also cites the ’1892 FWD to support its
showing to the extent claims 5 and 6 present similar limitations to those
present in the ’1892 FWD. Id. at 44–45 (citing ’1892 FWD 55, 59). We
adopt and incorporate by reference the cited portions of the ’1892 FWD.
Patent Owner relies on the same arguments it presented with respect
to claims 1 and 4 to address claim 5. PO Resp. 59–60. For the reasons
noted above with respect to claims 1 and 4, and based on the record evidence
and arguments, Petitioner’s showing is persuasive.
Claim 6 depends from claim 5 and requires “the . . . wireless packet
switched data message communications . . . are encrypted according to a key
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pair encryption scheme.” Petitioner contends that claim 6 tracks “claim 5 of
the ’358 patent, which the Board found that Kloba discloses” in the ’1892
FWD. Pet. 45 (contending that the “primary differences” include that claim
5 of the ’358 patent requires encrypted communications (citing ’1892 FWD
55)).
Petitioner cites Kloba to teach or suggest a key encryption scheme.
First, Petitioner cites Kloba’s disclosure of “secure socket layer stack”
(SSL) and cites the testimony of Dr. Kesidis to support its argument that 1)
“SSL is a set of cryptographic protocols designed to provide
communications security over a computer network,” 2) “[b]y the mid-1990s,
SSL was widely used to encrypt client/server-based Internet
communications,” and 3) “SSL [protocols] included symmetric and
asymmetric encryption algorithms, both of which used key pairs to encrypt
and decrypt communications.” Pet. 45–46 (citing Ex. 1006, 9:57–67;
Ex. 1005 ¶ 278.
Second, Petitioner contends that Kloba’s Figure 28 discloses an
asymmetric encryption algorithm, specifically, a “Genuine RSA
Encryption Engine.” Pet. 46 (quoting Ex. 1006, Fig. 28). Citing the
testimony of Dr. Kesidis, Petitioner contends that “[i]n 2002, RSA was a
widely-used public-key algorithm for encrypting data transmissions
over computer networks,” and “RSA used a pair of ‘public’ and ‘private’
keys to encrypt and decrypt communications.” Id. (citing Ex. 1005 ¶¶ 279–
282).
Third, Petitioner relies on other “security” teachings as disclosed in
Kloba’s Figure 30. Pet. 47 (citing Ex. 1006, 35:48–49, Fig. 30; Ex. 1005
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¶¶ 283–284). Fourth, Petitioner also points to Kloba’s Figure 34, which
provides mobile device menu options for a user to “connect securely” to a
server. Id. at 47–48 (citing Ex. 1006, 34:65, Fig. 34; Ex. 1005 ¶¶ 285–286).
Finally, Petitioner contends that an artisan of ordinary skill would
have understood that Kloba’s disclosure of SSL and the RSA algorithm of
Figure 28 in conjunction with the selectable security features of Figures 30
and 34 teaches “that the server and mobile devices can encrypt all network
communications—including wireless packet-switched cellular and/or
Internet communications received by and sent from the server (. . . Element
1[g])—using the RSA algorithm, which utilizes a key-pair encryption
scheme.” Pet. 48 (citing Ex. 1005 ¶ 287; ’1892 FWD 55).
Alternatively, Petitioner maintains that even if Kloba does not
expressly disclose “encrypt[ing] wireless packet-switched cellular and/or
Internet communications using a key-pair scheme, doing so would have been
obvious.” Pet. 48 (citing Ex. 1006 ¶ 289). According to Petitioner:
In 2002, SSL and RSA were commonly used in electronic
communications to encrypt messages, and RSA Data Security,
Inc. was a well-known provider of RSA encryption software.
[Ex. 1005 ¶ 289]. In view of Kloba’s disclosure that the server
communicates with user devices using SSL and uses an “RSA
Encryption Engine” and “encryption software” by RSA Security,
Inc. and that provides “security” and mobile devices that can
“connect securely” to the server, it would have been obvious to
PHOSITAs that wireless packet-switched cellular and/or Internet
communications between Kloba’s server and mobile devices
could have been encrypted according to SSL and the RSA key-
pair encryption algorithm. Id. Furthermore, because key-pair
encryption schemes were commonplace by 2002, PHOSITAs
would have had more than a reasonable expectation of success in
adding key-pair encrypted communications to Kloba’s system.
Id.
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Pet. 49.
According to Patent Owner,
none of the Kloba passages cited by Petitioner teach or suggest
the use of key pair encryption to secure such “wireless packet
switched data message communications” as the claim language
requires. See (Pet. 45–48) (citing EX1006 7:57–67, 34:65,
35:48–49, 36:45–46, FIGS. 28, 30, 65 34). Accordingly,
Petitioner is left to rely only upon [Dr.] Kesidis’ conclusory and
unsupported assertion that it would have been obvious to
POSITA to use SSL/RSA to encrypt Kloba’s alleged wireless
packet switched data message communications. (Pet. 49;
EX1005 ¶[]289). This naked assertion provides no credible
explanation for why this would be true, no evidence that it was
actually being done prior to the invention of the ’477 patent, and
no proof of how or why it would have been technically feasible.
An expert’s conclusory and unsupported assertions are legally
insufficient to prove obviousness. TQ Delta, 942 F.3d at 1359,
1361.
PO Resp. 64–65 (citing TQ Delta, LLC, v. Cisco Sys., 942 F.3d 1352, 1359,
1361 (Fed. Cir. 2019)).
Contrary to Patent Owner’s arguments, Petitioner’s showing is
persuasive and supported by the record. Petitioner generally shows that it
would have been obvious in view of Kloba’s express disclosures of SSL and
RSA to encrypt all manner of communications, including wireless packet-
switched messages over a cellular network or the Internet, in order to
provide communications security using a well-known key pair encryption
scheme. See Pet. 48–49. As Petitioner shows, Kloba, filed in April 2000
and issued in 2002, supports Petitioner and Dr. Kesidis as showing the
common use of SSL/RSA to securely encrypt well-known networks,
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including wireless packet switching and the Internet at least by early 2002.
See Ex. 1006, codes (22), (55).26
Kloba and record evidence show that artisans of ordinary skill would
have had a reasonable expectation of success and been motivated to employ
“key-pair encryption” via well-known SSL/RSA techniques to securely
encrypt well-known networks including the Internet and cellular wireless
packet-switched networks. See Ex. 1005 ¶ 289 (citing Ex. 1006, Figs. 28,
30, 34; App’x S; App’x T). Dr. Kesidis relies on Kloba’s express teachings
and the background knowledge of artisans of ordinary skill prior to the
invention (see supra note 26), citing to documentary evidence (e.g., textbook
Chapter 7.2, Principles of Cryptography, Ex. 1005, 657, 669, App’x S) that
shows that skilled artisans would have known how to implement RSA and
other algorithms using dual encryption keys (public and private). See Ex.
1005 ¶ 289 (testifying that “[b]y 2002, RSA was so widely used that it had
‘become almost synonymous with public key cryptography’” (quoting
Ex. 1005, 669 (App’x S, 493)) and “RSA Data Security, Inc., meanwhile,
was a well-known provider of RSA encryption software that was founded by
the inventors of RSA.” (citing App’x T)); Ex. 1005, 687 (App’x T) (“MIT
was granted U.S. Patent 4,405,829 . . . for a ‘Cryptographic communications
system and method’ that used the algorithm, on September 20, 1983.
Though the patent was going to expire on September 21, 2000 . . . the

26 The earliest possible effective filing date of the ’477 patent is May 21,
2003. See Ex. 1001, code (63).
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algorithm was released to the public domain by RSA Security on September
6, 2000, two weeks earlier.”).27
Based on the foregoing discussion, Petitioner shows by a
preponderance of evidence that claims 2–6 would have been obvious over
Kloba and Multer.
G. Alleged Obviousness Based on Kloba, Multer, and Loughran
1. Independent Claim 20
Petitioner asserts that the combination of Kloba, Multer, and
Loughran renders obvious the subject matter of independent claim 20.
Pet. 56–60. Independent claim 20 includes limitations materially similar to
limitations in independent claim 1. See id. at 60 (mapping similar claims
elements of claim 20 to those in claim 1 and claim 7). Petitioner primarily
adds the teachings of Loughran for its wireless cellular phone teachings. See
id. at 58. Petitioner supports its showing with citations to the record, the
testimony of Dr. Kesidis, and citations to the ’1892 FWD. Id. 58–59 (citing
Ex. 1005 ¶¶ 319–322, 328–343; Ex. 1006; Ex. 1007; Ex. 1008; ’1892 FWD
64). Patent Owner argues claims 1 and 20 together. See PO Resp. 1–55.
For the similar reasons as those discussed in connection with claim 1,
including a finding of collateral estoppel with respect to most of the claim
limitations, and further considering the teachings of Loughran as advanced
by Petitioner, Petitioner shows that the combination of Kloba, Multer, and
Loughran renders obvious the subject matter of claim 20. See id. at 56–60.
Patent Owner argues claims 1 and 20 together. See PO Resp. 22–55.

27 Citations refer to both the page numbers of Ex. 1005 for App’x S and
App’x T, and to the original page numbers of the textbook (App’x S).
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Based on the foregoing discussion, including the discussion of claim
1, and the determination of collateral estoppel with respect to the materially
similar limitations of claim 20 as compared to claim 1, Petitioner shows by a
preponderance of evidence that claim 20 would have been obvious over
Kloba, Multer, and Loughran.
2. Dependent Claims 7, 14, 16, 17, 19, and 21–25
Petitioner asserts that the combination of Kloba, Multer, and
Loughran renders obvious the subject matter of dependent claims 7, 14, 16,
17, 19, and 21–25, which ultimately depend respectively from claims 1 and
20. Pet. 49–55, 60–62. Petitioner supports these assertions with citations to
the record and the testimony of Dr. Kesidis. Id. (citing Ex. 1005). Petitioner
also cites the ’1892 FWD in addressing claims 7 and 16. Id. at 49–51, 53,
54 (citing ’1892 FWD 55–56, 63). We adopt and incorporate by reference
the cited portions of the ’1892 FWD.
Patent Owner groups claims 4 and 22 together. PO Resp. 56–59.
Patent Owner groups claims 5, 10, 14, 17, 23, and 25 together. Id. at 59–60.
Patent Owner groups claims 6 and 24 together. Id. at 64–65. Patent Owner
does not address claims 7 and 21 separately from its arguments that address
claims 1, 6, and 20. See id. at 65 n.18. Based on our determination above,
Petitioner establishes the obviousness of claims 1, 4–6, and 20 by a
preponderance of evidence. Accordingly, based on the materially same
reasons and findings with respect to claims 1, 4–6, and 20 above, Petitioner
shows the obviousness of claims 7, 10, 14, 17, and 21–25 by a
preponderance of evidence.
Patent Owner groups claims 16 and 19 together. PO Resp. 60–61.
These claims require that management instructions sent to a consumer
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device asset include “a unique identifier of the particular receiving consumer
device asset” and that “said unique identifier comprises in whole or in part
an identification code specific to that receiving consumer device asset.”
In summary, Petitioner contends that Kloba’s teaching of a server
sending messages to mobile devices using TCP/IP teaches the sending of the
claimed unique identifier. Pet. 54 (Ex. 1005 ¶ 305).
Patent Owner responds that “Petitioner’s argument is simply false.”
PO Resp. 61 (citing Ex. 2029 ¶¶ 112–114). Patent Owner contends that a
“POSITA would understand the mobile devices of Kloba were typically
wirelessly connected to the Internet through a wireless router, in which case
the server would communicate directly with the wireless router and the
wireless router would then, in turn, communicate with each of the mobile
devices.” Id. (citing Ex. 2029 ¶ 113; Ex. 2028, 115:23–116:22, 117:10–14).
“Therefore,” according to Patent Owner, “the IP address the server would
include in the communications would be the public IP address of the
wireless router, NOT an IP address belonging to a mobile device wirelessly
connected to the wireless router.” Id. (citing Ex. 2029 ¶ 113; Ex. 2028,
115:23–116:22, 117:10–14).
Quoting Dr. Kesidis’s deposition testimony, Patent Owner further
contends that Dr. Kesidis admits that
when the server is sending a message “[i]t’s sending a message
actually to the wireless router, and what’s in that -- the way that
message is addressed, it goes -- the destination IP address of the
message is the wireless router’s destination IP address[]. . . [.]”
(Ex. 2028[,] 162:22–163:4; see also 154:6–16). Next, [Dr.]
Kesidis admitted that when the router forwards the message to
the mobile device, it “swaps out” its own IP address and inserts
the IP address of the mobile device. (Id. at 163:12–24).
PO Resp. 62.
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Under Patent Owner’s view, even if the wireless router (which
includes a public address for itself further shared by all the mobile devices
connected thereto) assigns individual private IP addresses, the claimed
server does not. See PO Resp. 62. “Accordingly, given that the Petitioner’s
only alleged ‘unique identifiers’ are the IP addresses of Kloba’s mobile
devices, Petitioner has failed to prove dependent claims 9/16/19/27/28 are
obvious.” Id. at 62–63.
Petitioner replies that Kloba discloses connections without using
routers in several embodiments. In particular, Petitioner provides evidence
that Kloba’s Figure 1V, Figure 30, and Figure 36 portray direct access
between mobile devices and a server over the internet (using IP/HTTP for
example in Figure 30) without using a router. Reply 26–28. Petitioner also
shows that Mr. Berg admits that “devices can directly connect to a server
through the Internet.” Id. at 26 (citing Ex. 1021, 147:13–20. And Petitioner
also shows that Mr. Berg “also concede[s] that Kloba does not disclose using
routers.” Id. (citing Ex. 1021, 156:16–20). In other words, a reading of Mr.
Berg’s cited deposition testimony and testimony surrounding it shows that
Petitioner fairly and accurately characterizes it.
In its Sur-reply, Patent Owner does not directly address Petitioner’s
showing and evidence that Kloba employs a direct connection between a
server and mobile devices that involve a unique IP address sent by the
server. Sur-reply 25–26. Patent Owner also does not address Petitioner’s
reliance on and characterization of Mr. Berg’s deposition testimony.
Instead, Patent Owner simply contends that Petitioner “does not dispute that
Kloba’s server sends no unique identifier for a particular device when that
device is connected to a router.” Id. at 25 (emphasis added). According to
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Patent Owner, Petitioner “admits that the unique identifier for a particular
device is only sometimes sent by the server [(i.e., in the absence of a router).
Petitioner’s] inherency argument therefore fails as a matter of law.” See id.
at 25–26.
Based on the above discussion, Petitioner shows that Kloba teaches
the disputed limitations of claims 16 and 19. As discussed above, Kloba
discloses implementing networks without connecting mobile devices to a
router. Patent Owner and Mr. Berg do not dispute this showing by
Petitioner. Therefore, based on Petitioner’s undisputed showing, Kloba
discloses a unique IP address sent by the claimed server that satisfies the
“unique identifier” limitation at dispute in claims 16 and 19. Contrary to
Patent Owner’s arguments, inherency is not at issue here.
Based on the foregoing discussion, Petitioner shows by a
preponderance of evidence that claims 7, 14, 16, 17, 19, and 21–25 would
have been obvious over Kloba, Multer, and Loughran.
H. Alleged Obviousness Based on Kloba, Multer, Loughran, and
Fong, Dependent Claims 8–12, 15, 18, and 26–30
Petitioner contends that claims 8–12, 15, 18, and 26–30, which
ultimately depend respectively from claims 1 and 20, would have been
obvious over Kloba, Multer, Loughran, and Fong. Pet. 62–67. Petitioner
supports these assertions with citations to the record and the testimony of
Dr. Kesidis. Id. (citing Ex. 1005). Petitioner also cites the ’1892 FWD in
addressing claims 8, 11, 12. Id. at 62, 64, 65 (citing ’1892 FWD 56, 62, 70–
71). We adopt and incorporate by reference the cited portions of the ’1892
FWD. Patent Owner does not address claims 8–12, 15, 18, and 26–30
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separately from its arguments that address claims 1, 4–6, 16, 19, and 20. See
PO Resp. 65 n.18.28
Based on the foregoing discussion, Petitioner shows by a
preponderance of evidence that claims 8–12, 15, 18, and 26–30 would have
been obvious over Kloba, Multer, Loughran, and Fong.
I. Alleged Obviousness Based on Kloba, Multer, Loughran, Fong,
and Chow, Dependent Claim 13
Claim 13 depends from claims 1/2/3/4/5/6/7/8/9/10/11/12. Petitioner
contends that claim 13 would have been obvious over Kloba, Multer,
Loughran, Fong, and Chow. Pet. 67–68. Petitioner supports these assertions
with citations to the record and the testimony of Dr. Kesidis. Id. (citing
Ex. 1005 ¶ 395). Petitioner also cites the ’1892 FWD to support its
showing. Id. at 67 (citing ’1892 FWD 69). We adopt and incorporate by
reference the cited page of the ’1892 FWD. Patent Owner does not address
claim 13 separately from its arguments that address claims 1 and 4–6. See
PO Resp. 65 n.18.
Based on the foregoing discussion of claims 1 and 4–6, and a review
of the record, Petitioner shows by a preponderance of evidence that claim 13
would have been obvious over Kloba, Multer, Loughran, Fong, and Chow.
III. CONCLUSION
The outcome for the challenged claims of this Final Written Decision
follows.29 In summary:

28 As noted above, for example, Patent Owner groups claims 9, 16, 19, 27,
and 28 together in its arguments. See PO Resp. 60–64; PO Sur-reply 25–26.
29 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
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Claims 35 U.S.C. §
References/
Basis
Claims
Shown
Unpatent-
able
Claims
Not
shown
Unpatent
-able
1–6

103(a)
Kloba, Multer 1–6

7, 14, 16, 17,
19–25

103(a)
Kloba,
Multer,
Loughran
7, 14, 16, 17,
19–25

8–12, 15, 18,
26–30

Kloba,
Multer,
Loughran,
Fong
8–12, 15, 18,
26–30

13

Kloba,
Multer,
Loughran,
Fong, Chow
13

Overall
Outcome
1–30

Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).

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IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 1–30 of the ’477 patent are unpatentable; 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.

PETITIONER:
Christina J. McCullough
Daniel T. Shvodian
Wing Liang
PERKINS COIE LLP
mccullough-ptab@perkinscoie.com
shvodian-ptab@perkinscoie.com
liang-ptab@perkinscoie.com

PATENT OWNER:
Andrew C. Ryan
CANTOR COLBURN LLP
ryan@cantorcolburn.com