M2M Solutions LLC

Patent Trials and Appeals Board

Jan 25, 2021

IPR2019-01205 (P.T.A.B. Jan. 25, 2021)

Trials@uspto.gov Paper 43
571-272-7822 Date: January 25, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AMAZON.COM, INC.,
Petitioner,

v.

M2M SOLUTIONS LLC,
Patent Owner.
____________

IPR2019-01205
Patent 10,038,989 B1
____________

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

LANEY, 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.
10,038,989 B1 (Ex. 1002, “the ’989 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 ordered (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 Cir. R. 36) (nonprecedential), as discussed further below.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.”).

1 See Ex. 2032 (Board email authorizing the filing of the corrected Sur-
reply).
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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 ’989 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, IPR2019-01204 (Final Written Decision). 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. 1024 (M2M’s opening appeal brief before the
Federal Circuit). 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 ’989 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 ’989 Patent
The ’989 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. 1002, 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 code (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 16:5–8.

In Figure 2, wireless modules 10 communicate via mobile
telecommunications infrastructure 400. Id. at 16:16–18. 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 16:18–22. In one example, laptop PC 140a manages a small number
of wireless modules. Id. at 16:23–25. In other examples, “[t]he wireless
module (10) is capable of controlling many system operation variables of the
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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
16:26–31. 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
16:32–36. 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,
id. at 11:9–19;
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 11:26–31; 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
improved if the range of options were prioritised automatically
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according to the way the user preferred to use the device or in the
order of access of mostly used features.
id. at 11:56–67.
D. The Challenged Claims
Petitioner challenges claims 1–30 of the ’989 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
similar limitations. Claim 1, reproduced below (including annotations added
by Petitioner to identify each claim element), 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 a
particular feature of the 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;
[Element 1[g]] wherein the remote computer server platform
provides said consumer service on an autonomous basis
unprompted in whole or in part by receipt of any request or
command initiated by a consumer user of one or more of the
plurality of consumer device assets; and
[Element 1[h]] 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. 1002, 26:18–27:12.
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E. Asserted Grounds of Unpatentability
Petitioner asserts that claims 1–30 would have been unpatentable on
the following grounds.
Claim(s) Challenged 35 U.S.C. § References
1–6, 13 103(a) Kloba,2 Multer3
1–6, 13 103(a) Kloba, Multer, Hoyle4
7, 14, 16, 17, 19–25 103(a) Kloba, Multer, Loughran5
7, 14, 16, 17, 19–25 103(a) Kloba, Multer, Hoyle, Loughran
8–12, 15, 18, 26–30 103(a) Kloba, Multer, Loughran, Fong6
8–12, 15, 18, 26–30 103(a) Kloba, Multer, Hoyle, Loughran, Fong
Pet. 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

2 Kloba et al., US 6,421,717 B1, issued July 16, 2002 (Ex. 1006).
3 Multer et al., US 6,671,757 B1, issued Dec. 30, 2003 (Ex. 1007).
4 Hoyle et al., US 6,141,010, issued Oct. 31, 2000 (Ex. 1011).
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).
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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. See Paper 37.
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 same
analysis and trial” as involved in the ’1892 IPR as follows:
Having the Board repeat the same analysis and trial [from
the ’1892 IPR challenging the ’358 patent] directed to largely
overlapping prior art and arguments is precisely the inefficient
and wasteful burden that the Board has looked to prevent. The
Board should decline to institute a largely duplicative IPR here,
and instead allow the parties to address the validity of the ’989
patent in the pending District Court action aided by the Board’s
Final Written Decision on the ’358 patent and on the Federal
Circuit’s pending resolution of the appeal.
Id. at 10 (quoting Prelim. Resp. 26) (emphases 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
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the parties to litigate those issues simultaneously before the Federal Circuit
and the Board would be overly burdensome to the Patent Owner.” Inst. Dec.
10–11 (quoting Prelim. Resp. 26–27). Patent Owner stated that “[t]he
parties will address the overlapping issues, particularly claim construction
before the Federal Circuit that they would need to address in any new IPR
here.” Prelim. Resp. 27 (emphasis added).
Petitioner similarly contended that “the claims of the ’989 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 Pet. Prelim.
Reply Br. 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 Pet. Prelim. Reply Br. 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. at 11–12 (quoting Pet. Prelim. Reply Br. 1)
(emphasis added).
We determined 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.” Id. at 12. We further noted that “the ’989 patent and the ’358
patent share a common ancestor application.” Id. at 13 (comparing Ex.
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1002, code (63), with ’01892 IPR, Ex. 1002, code (63)). We stated 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.” Id. We determined that “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 ’989 patent claims,” moreover, “[i]nstigating 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.” Id. at 14 (emphasis added). Thus, “where both parties agree
the two inter partes reviews present materially similar issues, and with a
looming Federal Circuit decision potentially controlling the outcome here,”
we declined to exercise our discretion and deny institution. Id. at 14–15.
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 re-litigating an issue if:
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(1) 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
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 recites:
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:
Ex. 1002, 26:18–26. The preamble of claim 20 includes materially similar
recitations.
Citing the ’1892 FWD, Petitioner contends that the preambles of
claims 1 and 20 do not limit the claims. Pet. 21 (citing ’1892 FWD 11–16),
60–61. Patent Owner argues the phrase “nonvolatile memory for storing
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files of data content for display” in the preambles of claims 1 and 20
provides antecedent basis and recites essential structure for terms in the
bodies of those claims and, thus, the “nonvolatile memory” in the preambles
limits the claims. PO Resp. 15–16.
We expressly incorporate by reference our reasoning and analysis set
forth in the ’1892 FWD finding that the “nonvolatile memory” in the
preamble is not limiting, which Patent Owner notably did not appeal in the
M2M Federal Circuit Decision. See ’1892 FWD 11–16. As noted above
(Section II.A), the ’989 patent and the ’358 patent challenged in the ’1892
IPR share a common specification. Patent Owner’s arguments do not
present a sufficient reason to deviate from the claim construction in the
’1892 FWD. The different claim construction standards (i.e., the Phillips
claim construction standard used here vs. the broadest reasonable
interpretation standard used in the ’1892 FWD), arguments, and evidence do
not dictate a different outcome here for this issue. The prior panel’s decision
addresses the preamble issue by citing to the relevant factors applied in
Federal Circuit precedent under the Phillips standard. ’1892 FWD 11–16.
And our decision turned on whether the necessary conditions existed to find
the “nonvolatile memory” recited only in the preamble to be limiting, rather
than interpreting the meaning of “nonvolatile memory” or its breadth.
Nevertheless, generally, as set forth 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
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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.
The bodies of claims 1 and 20 affirmatively refer to “the stored data
display content files,” but not to nonvolatile memory. Ex. 1002, 26:63–64,
30:22. 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. The method claims do not require that any of the
recited steps be performed by the nonvolatile memory on the consumer
device asset; nor does any step of the claimed method refer to any specific
operation being performed by 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 “stored display data content files” language 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).
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Just like the ’358 patent involved in the ’1892 FWD, the ’989 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 id. Figure 1 of the ’989 patent illustrates wireless module 10,
which may be integrated with an asset, as including memory module 70.
Ex. 1002, 14:1–5. The ’989 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 14:25, 15:24–
26 (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.
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, even
though a different claim construction standard applies here, Patent Owner’s
arguments do not present a sufficient reason to deviate from the claim
construction in the ’1892 FWD.
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2. “Management Instructions”
Claims 1 and 20 recite “management instructions.” Ex. 1002, 26:62–
63, 30:21–23. Petitioner contends that “management instructions” means
“commands for a device asset to perform particular actions.” Pet. 10 (citing
Ex. 1005 ¶¶ 100–103). “Patent Owner disagrees with Petitioner’s proposed
construction of the discrete term ‘management instructions,’ (Pet. 9–10), but
the Board need not construe the term because it is immaterial to the
patentability determination here[].” PO Resp. 2 n.1 (emphasis added).
Patent Owner 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 skill in
the art (“POSITA”)] would understand such ‘data’ as comprising
‘management instructions.’” Id. at 5 n.2 (citing Ex. 1005 ¶ 102; Pet. 9–10;
Ex. 1002 10:46–52; Fig. 4, Box 7; 23:32–35; 23:4–10; 3:17–24; 6:23–56;
7:50–59; 9:15–34; 13:25–28; 23:24–28). 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.”
Id. at 4–5 (citing Ex. 1005 ¶ 102; Pet. 9).
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
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“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.
No good reason exists to refine Petitioner’s proposed construction
explicitly given that Patent Owner characterizes the construction thereof as
“immaterial to the patentability determination” here. PO Resp. 2 n.1; 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))).
3. 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, 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
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
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be based on that [consumer usage] information.” Pet. 10–13 (citing
Ex. 1005 ¶¶ 104–110).
In response, Patent Owner urges an alternative claim construction.
Under its construction, Patent Owner contends that a skilled artisan “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. 2 (citing Ex. 2029
¶¶ 50–51). Furthermore, according 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. at 2–3 (citing Pet. 10–11).
Patent Owner also argues that Petitioner’s proposed construction for
claim element 1[f] ignores the ’989 patent’s Specification, and contradicts
Petitioner’s admissions in related litigation and in the ’1892 IPR. Id. at 10–
12 & n.5 (citing Ex. 2006, 3–4; Ex. 2009, 9; Ex. 2010, 22 n.5, 23, 30; 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 ’989
patent Specification or contradicts itself, however.
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
discloses management instructions based in part on consumer usage
information.’” Id. at 12 (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
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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 11 n.6 (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.
Patent Owner relies, inter alia, on the alleged “sole claimed
embodiment,” which includes the “pull down menus” example. See PO
Resp. 6 (quoting Ex. 1002, 4:40–50, 11:56–67). 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 id. at 4–6 (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 informs the claim
construction here as they do with “management instructions” in the previous
section. However, the passages that Patent Owner relies upon for their
broad teachings do not support the narrow construction urged by Patent
Owner. See id. (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
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particular ‘doors and barriers.’” Id. at 5–6 (citing Ex. 1002, 9:21–34; Ex.
2029 ¶ 47). 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. 1002,
9:21–34. 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. 5–6 (citing Ex. 2029
¶ 47).
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
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. 1002, 4:40–45. 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 4:45–50), but on the other hand, vague enough to include
(implicitly) some type of management instructions (without mentioning any)
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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 optimizing the asset and for designing an appropriate range of
services to support the said use of said asset.” Id. at 4:42–45 (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.
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. 1002, 4:48–50. For example, perhaps a local program
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. 7 n.3. 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
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describes in its Preliminary Response and in its Patent Owner Response. See
Prelim. Resp. 11 (quoting Ex. 1002, 4:40–50); PO Resp. 6–7 n.3.
Patent Owner also argues that dependent claims lend meaning to
independent claims 1 (and the similar limitation in claim 20). PO Resp. 2.
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.”
Id. at 9 (emphasis added). 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 the results of having processed at least some of the
consumer usage information.’” Id. (citing Pet. 47; Ex. 1002, 27:35–45).
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 10–11 (“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.”).
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The language of claim 5, which depends from claims 4/3/2/1, 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. 1002, 27:35–45 (emphases 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
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. 85:26–87:2 (arguing the language in question defines, but does not
narrow, claim 1); PO Resp. 9 (citing Spineology, Inc. v. Wright Med. Tech.,
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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” include 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 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
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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. 1002, 3:17–29),
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
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. 13–14 (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.
Id. at 13 (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
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of effectuating ‘management instructions’ . . . and its processing of
‘consumer usage information.’” See id. As discussed further below,
Petitioner shows that the prior art 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 alternative 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
more closely hews to the Specification, the plain language of claims 1 and
20, and the 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
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(citing Ex. 1005 ¶ 53); Prelim. Resp. 4 (citing Ex. 2002 ¶ 28).7 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. Therefore, a person of ordinary skilled in the art
would have had (a) a master’s degree in electrical engineering,
computer engineering, computer science or the equivalent, with
coursework covering networked devices and servers, or (b) a
bachelor’s degree in one of those fields and at least two years of
industry experience working with networked devices and
servers; or (c) four years of industry experience working with
networked devices and servers.
Id.
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
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

7 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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questions might be reordered in any particular case, the [Graham] factors
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
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, code (54),
code (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:
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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). Id. at 4:24–39 (Table 2), 10:41–50. Device 106 may
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
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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.
. . . .
[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
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clients 108 and the server 104 may be performed by a calendar
synchronization module.
Id. at 8:7–26, 9:11–21. During a synchronization, 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.
Server 104 also optimizes the Web 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. Id. at 6:35–41,
28:20–36.

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Figure 1AA illustrates a process that optimizes (via colors, size, etc.)
Web site page 1A1 for display 1A2 on a handheld device.
Id. at 6:35–41, 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.
A user of a device can subscribe to a channel through the use of a user
interface, including that of Figure 12, reproduced below:
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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, code (54), code (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. Id. at 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. Id. at 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. Id. at 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. Hoyle (Ex. 1011)
Hoyle, titled “Computer Interface Method and Apparatus with
Targeted Advertising,” discloses a system “for providing an automatically
upgradeable software application that includes targeted advertising based
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upon demographics and user interaction with the computer.” Ex. 1011, code
(54), code (57). Hoyle discloses a system for targeting advertisements on
user computers, which have a software application with a graphical user
interface that includes a banner region for advertisements. Id. at 7:30–31.
These advertisements are stored in a database on the computer. Id. at 14:59–
60. The application collects “computer usage information” relating to usage
of the computer, “including such things as what programs [users] run, what
information resources they access, what time of day or days of the week they
use the computer, and so forth.” Id. at 3:34–38. This usage information is
periodically sent to an “Advertising and Data Management Server” (ADM),
which is connected to computers via the Internet. Id. at 7:12–13, 7:41–42,
8:30–33. The ADM server uses the usage information to “better target[]
future advertising to the end user.” Id. at 7:43–44. New banner
advertisements are sent as needed from the ADM server to computers. Id. at
7:38–41.
4. 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.
Ex. 1008, code (54), code (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
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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.
5. 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,
code (54), code (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.
Id. at 10:10–16.
F. Alleged Obviousness Based on Kloba, Multer, and Hoyle––
Claims 1–6 and 13
Petitioner argues that claims 1–6 and 13 would have been obvious in
view of (i) the combined teachings of Kloba and Multer, and (ii) the
combined teachings of Kloba, Multer, and Hoyle. Pet. 21–54; Reply 5–29.
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Patent Owner opposes both. PO Resp. 17–65; PO Sur-Reply 7–27. For the
reasons discussed below, Petitioner has shown persuasively that claims 1–6
and 13 would have been obvious and unpatentable in view of the combined
teachings of Kloba, Multer, and Hoyle; as a result, we limit our decision to
those grounds that Petitioner relies on Hoyle.
1. Independent Claim 1
a. 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 memory’
preamble elements are both non-limiting and disclosed.” See Pet. Supp. Br.
10. 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
9–10.
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
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. 23–24; ’1892 FWD 34–38. We adopt and incorporate by reference the
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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 that it raises new
arguments that the ’1892 FWD does not address so that there is “no identity
of issues.” PO Supp. Br. 16–17.
Nevertheless, as quoted above, Petitioner shows, and Patent Owner
does not dispute, that identical issues are involved, and Patent Owner had a
full and fair opportunity to be heard, showing (as discussed further below)
that collateral estoppel applies. See Pet. Supp. Br. 9–10. 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 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).8

8 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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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. 9–10.
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
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.,
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Inc., 575 U.S. 138, 148 (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 in Maxlinear. Id. 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
(“[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,
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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. 9–10. 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.9 See ’1892
FWD 33–38; supra § I.B.
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,

9 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
and of infringement by [one model] and non-infringement by [another
model], bars judicial redetermination of those issues.”).
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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. Cl. 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
’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. 41:3–8.10
Moreover, Patent Owner acknowledges that in cases where the
“‘identity-of-issues’ test factor cannot be satisfied due to ‘the mere existence

10 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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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. 3 (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. 9); therefore, “the
Board should not depart from its prior holding that the ‘nonvolatile memory’
preamble elements are both nonlimiting and disclosed” (id. at 10). 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), 9
(arguing the Board applied two alternate claim constructions so that issue
preclusion does not apply); PO Resp. 15–16 (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. 9–10.
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 re-
litigating whether Kloba teaches consumer device assets each having
“nonvolatile memory for storing files of data content for display,” as recited
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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.11 Supra § I.B.1. Accordingly,
Petitioner shows by a preponderance of evidence that Kloba teaches the
limitation even if the preamble is afforded weight.
b. Limitations 1[a], 1[b], 1[h]
Petitioner contends correctly that limitations 1[a], 1[b], and 1[h] are
“materially identical” to limitations that were addressed in the ’1892 FWD
for U.S. Patent No. 8,577,358 B2 (“the ’358 patent”). Pet. Supp. Br. 7–8
(citing Ex. 1013 (a chart comparing claim 1 from the ’358 patent and the
’989 patent)). Relying on substantially the same evidence that Petitioner
cites from Kloba in this case (see Pet. 28–29, 43–44), in the ’1892 FWD we
concluded that Kloba disclosed limitations 1[a], 1[b], and 1[h]. ’1892 FWD
38. Moreover, we noted there that Patent Owner did not dispute Kloba
teaches these limitations. Id. And, on appeal, Patent Owner did not
challenge our determination that Kloba discloses limitations 1[a], 1[b], and
1[h]. See Ex. 1024. Similarly, Patent Owner again does not challenge
Petitioner’s contention that Kloba discloses these limitations in this
proceeding. See generally PO Resp. 17–55.
Therefore, because the prior action presented the identical issues of
whether Kloba discloses limitations 1[a], 1[b], and 1[h], which Patent Owner

11 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. 1004, 101; Inst. Dec. 19 (citing Ex. 1004, 101).

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had a full and fair opportunity to litigate, and because our finding that Kloba
discloses limitations 1[a], 1[b], and 1[h] was necessary for the Board’s
determination of unpatentability for claim 1 of the related ’358 patent, we
find collateral estoppel prevents Patent Owner from re-litigating these
specific claim limitations. Patent Owner notably does not contest
Petitioner’s contention that collateral estoppel applies to these claim
limitations. 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”).
Regardless, and in the alternative, after considering the evidence
Petitioner cites from Kloba, we find Kloba’s server 104, connected to clients
108A, 108B via communication medium 120, satisfies limitation 1[a];
Kloba’s Figures 1S, 5A–5J, and 49–62, which are flowcharts and screen
shots related to registering a client with a server, and the corresponding
description in Kloba, shows that clients are registered with its server, as
required by limitation 1[b]; and Kloba discloses limitation 1[h] by teaching
that TCP/IP, which uses “packet switched data messages,” is used as a
means for the mobile devices to communicate with the server. See Ex. 1006,
3:12–14, 4:48–63, 5:29–32, 9:31–33, 9:57–67, 12:13–20, 21:67–22:1,
29:31–33:67, 36:51–54, Figs. 1S, 1V, 5D, 5F; Ex. 1005, ¶¶ 211, 212, 227,
228, 252, 253, 440; Pet. 28–29, 43–44. As a result, even without collateral
estoppel, we are persuaded that Kloba discloses limitations 1[a], 1[b], and
1[h].
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c. Limitations 1[c] and 1[d] (“automatically resulted
from . . . preprogrammed conditions”)
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.
Ex. 1002, 26:43–52. And 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.” Id. at 26:34–42. 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
“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, 24:48–52, 25:38–39, 28:23–
30). Petitioner contends that limitation [d] “is similar to Element 1[c],”
except “[t]he tracked user behavior information is ‘consumer usage
information identifying the manner in which a consumer user has used a
particular feature’ of the user’s device because it specifies how and in what
ways the user has interacted with the displayed page and song content.” See
id. at 32–34 (citing Ex. 1006, 16:64–17:5, 17:19–23, 19:65–67, 20:18–21,
20:51–53, Figs. 1X, 1F1; Ex. 1005 ¶¶ 213–218, 239, 413, 415; ’1892 FWD
42–49). Patent Owner does not dispute these facts and we find the evidence
cited supports Petitioner’s contentions by a preponderance of the evidence.
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Petitioner contends that both “operational status information” and
“consumer usage information” result automatically from pre-programmed
conditions. See id. at 31 (citing Ex. 1006, 19:57–67, 20:50–53; Ex. 1005,
¶¶ 213–218, 232; ’1892 FWD 42–49; Ex. 1007, 35:15–18), 34 (citing
Ex. 1007, 35:15–18; Ex. 1005 ¶¶ 213–218, 239; ’1892 FWD 42–49).
Petitioner relies on the combined synchronization features of 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 31, 34.
Relying on its showing regarding the preamble (id.), Petitioner asserts
that, although Kloba does not describe how synchronization would work or
be initiated for each of the variety of disclosed non-PDA devices that
typically lacked a manual ‘sync’ button, “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 that 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 like cellular telephones that lacked a
manual ‘sync’ button.” Id. (citing Ex. 1005 ¶ 214; ’1892 FWD 43–44).
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, Figs. 15, 16).
Patent Owner contests Petitioner’s assertions regarding the
“automatic[]” communications in limitation 1[d] of claim 1, arguing that
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neither Kloba nor Multer, alone or in combination, teach or suggest
automatically communicating information from a device/asset to a server.
PO Resp. 48–55. In particular, Patent Owner argues Kloba merely discloses
manual, not automatic synchronization. Id. at 49. Patent Owner contends
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. at 49–50 (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 [i.e., Multer’s ‘pull’ direction]),” which “is completely
opposite of what is claimed (i.e., from the device to the server).” Id. at. 50
(citing Ex. 2029 ¶ 80).
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 21–25 (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
Boards’ 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. 53 (citing Ex. 2029
¶ 89). Petitioner persuasively replies that “POSITAs would have seen value
in periodic synchronization in addition to manual synchronization.” Reply
24 (showing that “Mr. Berg admitted that he had not considered scenarios in
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which periodic device-to-server communications was among several
options” (citing Ex. 1021, 169:14–170:25) (Berg Deposition)).
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 21–25; Pet.
Supp. Reply 4–7. As Petitioner argues, element [1c] of the ’989 patent
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 22. 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. 1–17 (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
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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. 5–6 (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
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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d. Limitations 1[e] (“monitoring . . . by automatically
processing . . . the received consumer information”)
Limitation 1[e] of claim 1 recites
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.
Ex. 1002, 26:53–57. Petitioner contends, “[a]fter receiving operational
status and consumer usage information from a mobile device, Kloba’s server
automatically processes that information.” Pet. 34. In particular, Petitioner
asserts that the server in Kloba must be pre-programmed to process the
operational status information and the consumer usage information to
perform the described tasks of optimizing objects for use by a user and
forwarding the tracked information received from a client to a third-party
provider. Id. at 34–35 (citing Ex. 1006, 2:59–61, 6:4–41, 8:16–19, 17:20–
21, 24:10–45; Ex. 1005, ¶¶ 243, 419). Patent Owner only disputes
Petitioner’s contention that the server in Kloba processes the consumer
usage information; it does not dispute the server in Kloba receives the
tracked information and automatically forwards it to a particular destination.
See PO Resp. 18–20.
Patent Owner argues that “merely forwarding the [tracked client
behavior information (“TCBI”)] to the provider cannot qualify as the type of
‘processing’ of ‘consumer usage information’ that is contemplated and
required by the claims.” Id. at 19 (citing Ex. 2029, ¶¶ 124–125). What is
contemplated and required by the claims, according to Patent Owner, is
“substantively processing the content of ‘consumer usage information’ in a
manner that would allow the server to then make informed and intelligent
decisions based thereon.” Id. at 20. Patent Owner argues that this is so
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because limitation [f] recites “managing . . . consumer device assets . . .
based upon the results of having processed at least some of the received
consumer usage information” and “processed” in that limitation is allegedly
“referencing the same antecedent ‘processing’ of [limitation 1[e].” Id. at 19.
Patent Owner argues that “the results” recited in limitation 1[f] are
derived from having “processed” the consumer usage information “in the
sense of critically examining” it and that managing the consumer device
assets occurs by intelligently acting upon those results. Id. at 20. When
limitations 1[e] and 1[f] are viewed together, Patent Owner argues that “they
serve to clarify that the server’s ‘managing’ [recited in limitation 1[f]] needs
to be substantively predicated on the outcome of that ‘processing’ [recited in
limitation 1[e]].” Id. at 19–20. In other words, Patent Owner argues that
“the entire claim clearly conveys that the processing that has occurred in
[limitation 1[f]] is the same processing required by [limitation 1[e]].” PO
Sur-reply 7. Thus, Patent Owner concludes, “the claims are indisputably
using the term ‘processing’ to refer to substantively processing the content
of ‘consumer usage information’ in a manner that would allow the server to
then make informed and intelligent decisions based thereon.” Id. at 20
(citing Ex. 2029, ¶¶ 124–125).
In response, Petitioner argues persuasively that the meaning of
“processing” in limitation 1[e] is not limited by the subsequent limitation
1[f]. Reply 6–7. As Petitioner argues, the “processing” in limitation 1[e]
describes the step of “monitoring,” whereas “processed” in limitation 1[f]
describes how “the results” are derived for “managing” a consumer device
asset, and limitation 1[f] does not use any of the normal identifiers, such as
“said processing,” “aforesaid processing,” or “the processing,” to indicate
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that the processing for monitoring and managing are the same. See id.
Contrary to Patent Owner’s argument, we find also that the context of
limitations 1[e] and 1[f] suggests the scope of “processing” is not co-
extensive with “processed.”
Limitation 1[e] is directed to the recited step of “monitoring,” which
is recited to occur “by automatically processing, according to
preprogrammed conditions, the received operational status information and
the received consumer usage information.” Ex. 1002, 26:53–57 (emphasis
added). Limitation 1[e] clearly recites processing both types of information.
Patent Owner’s argument would require “operational status information” to
be “substantively processed” in the same manner as “consumer usage
information,” which is a result that is neither supported by the claims nor the
Specification. Additionally, there is no evidence of record that even
suggests it is necessary to substantively analyze the content of either
“consumer usage information” or “operational status information” in order
to watch for or keep track of this information. Limitation 1[e] notably also
does not recite monitoring “based upon the results” of processing the
information received, as limitation 1[f] does. Rather, in context, a skilled
artisan would understand that “monitoring” is the result achieved by the
processing in limitation 1[e].
Limitation 1[f], in contrast, is directed to the recited step of
“managing,” which is “based on the results of having processed at least
some of the received consumer user information.” Ex. 1002, 26:58–61
(emphasis added). Several points are evident from this claim language that
demonstrate “processed” in this limitation is not necessarily co-extensive
with the “processing” recited in limitation 1[e]. First, the process of
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limitation 1[f] serves a different purpose––i.e., to affect the management of
consumer device assets. Second, limitation 1[f] recites that only “some of
the received consumer user information” needs to be processed, rather than
both the “consumer usage information” and the “operational status
information.” Third, the processed information must provide a result, which
in turn affects the server’s management of a consumer device asset.
Because we disagree the ’989 patent supports the contention that a
skilled artisan would understand the “processing” in limitation 1[e] to be
limited to the same operations required by “processed” in limitation 1[f], we
disagree also with Patent Owner’s argument that it was incumbent upon
Petitioner to demonstrate Kloba substantively analyzed the content of the
consumer usage information to show it performs the monitoring step of
limitation 1[e]. Petitioner has shown persuasively that Kloba teaches a
server that, according to preprogrammed conditions, automatically looks for
the consumer user information received from a consumer device asset and
forwards it to a particular destination, which we find to be within the scope
of what is required by limitation 1[e]. Therefore, Petitioner has shown by a
preponderance of evidence that Kloba discloses limitation 1[e].
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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 alone and the combined
teachings of Kloba and Hoyle. Pet. 36–42. Petitioner summarizes these
arguments as follows:
First, after processing [tracked client behavior information
(“TCBI”)] and other information sent by a client in a combined
“one-up” synchronization transmission, the server sends
instructions to the client in a combined “one-down”
transmission. Second, it would have been obvious to
incorporate Hoyle’s teaching of targeted advertisements based
on “computer usage information” into Kloba so that Kloba’s
server would send instructions for clients to load
advertisements based on the server having processed TCBI.
Reply 8 (citing Pet. 36–42). We address each argument in turn.
Before we do, however, it is worth repeating that Petitioner contends,
and Patent Owner does not dispute, that the “consumer usage information”
from Kloba in this proceeding is the tracked client behavior information (see
Pet. 33–34), which is different than the channels or preferences information
associated with Kloba’s Figures 12 and 17 that Petitioner relied upon in the
’1892 FWD. ’1892 FWD 40.
Addressing Kloba alone first, 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
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outside providers” (Pet. 36–37 (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 37 (citations omitted)); and
(iii) Kloba’s “one-down” synchronization transmission (which includes
synchronization instructions and objects/files sent from server to mobile
device) “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 relating to tracked user
behavior)” (id. at 37–39 (citations omitted)).
Patent Owner contests that Kloba alone supports Petitioner’s
assertions regarding claim limitation 1[f]. PO Resp. 21–27. Patent Owner
asserts that Kloba fails to disclose any “management instructions” that the
server determines to send to mobile devices/assets based upon results of
having processed “consumer usage information.” Id. Patent Owner argues
first that Petitioner fails to show Kloba alone discloses limitation 1[f]
because Kloba’s teachings regarding “deltas” do not have any correlation to
the results of having processed the tracked client behavior information. Id.
at 21–25. However, Patent Owner does not identify anywhere within the
Petition that Petitioner actually makes this argument; nor do we find this
argument in the Petition. See id. Although Petitioner refers to “deltas” as
part of the information exchanged during the synchronization process,
Petitioner is not relying solely on the “deltas” in this case to be the
“management instructions,” as Patent Owner argues. Instead, for the recited
“management instructions,” Petitioner relies on the synchronization process
more generally, which includes modules that compile instructions to
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synchronize (see Pet. 36–39), which Kloba states “is meant to refer to the
specific process of copying, adding, filtering, removing, updating and
merging the information between a client and a server” (Ex. 1006, 5:46–50).
Patent Owner argues additionally that the particular
synchronization process Petitioner identifies in this Petition fails to show the
process is based on the results of having processed the TCBI relied upon for
consumer usage information. PO Resp. 26–27. Patent Owner argues,
“[i]ndeed, far from teaching that the server processes TCBI as part of its
basis for determining whether to send a one-down sync transmission,
Kloba’s only express disclosure about what the server does with TCBI is that
it “sends the information to the appropriate [third party] provider 128.” Id.
at 26 (citing Ex., 1006, 17:19–22; Ex. 2029, ¶¶ 129–132). Patent Owner
argues that “Kloba fails to explain anything about what happens to the TCBI
thereafter.” Id. Patent Owner argues that, while “Kloba teaches that the
server’s purpose for sending such transmissions is to cause modifications to
occur to the mobile devices,” Kloba provides no teaching “that TCBI would
ever be used for altering mobile devices.” Id. at 26–27.
We need not reach Petitioner’s argument that Kloba alone discloses
limitation 1[f] because Petitioner relies on the combination of Kloba and
Hoyle under an alternative contention. See SAS Inst. Inc. v. Iancu, 138 S. Ct.
1348, 1359 (2018) (holding a petitioner “is entitled to a final written
decision addressing all of the claims it has challenged”); Boston Sci. Scimed,
Inc. v. Cook Grp. Inc., 809 Fed. Appx. 984, 990 (Fed. Cir. Apr. 30, 2020)
(non-precedential) (recognizing that the “Board need not address issues that
are not necessary to the resolution of the proceeding” and, thus, agreeing
that the Board has “discretion to decline to decide additional instituted
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grounds once the petitioner has prevailed on all its challenged claims”). In
particular, Petitioner contends that Kloba and Hoyle demonstrate that a
skilled artisan would have known Kloba’s server may send synchronization
instructions to automatically modify the stored display data content files on a
client’s device based upon the results of having processed the TCBI
received. Pet. 39–42. Petitioner contends “Kloba renders [limitation 1[f]]
obvious in combination with Hoyle’s teachings relating to using a central
server to target advertisements to users.” Id. at 39. Petitioner contends,
[a person of ordinary skill in the art] would have been motivated
to incorporate Hoyle’s teaching of targeting advertisements to
users based on information about how users used their devices
into the Kloba-Multer system, such that Kloba’s server would
send instructions for loading context-sensitive advertisements
onto user devices in the one-down transmission specifically in
response to the server having processed tracked user behavior
information received from the devices in the one-up
transmission.
Id. at 40 (citing Ex. 1005, ¶ 433). As support, Petitioner identifies that
Kloba teaches that the server is able to load “context sensitive objects,” such
as advertisements, onto a user’s device and Hoyle’s teachings that a server
can also be used to customize the selection of advertisements sent to a user’s
device based on TCBI. Id. at 39–40 (citing Ex. 1006, 17:19–23, 17:25–29,
17:36–45, 18:11–15; Ex. 1011, 3:34–38, 7:12–13, 7:38–44, 8:37–52, 14:46–
60, 18:65–19:2, Fig. 10; Ex. 1005, ¶ 432).
At the time of the invention, Petitioner contends “[i]t was well-known
that targeted advertisements were more effective at engaging users than non-
targeted advertisements,” and a skilled artisan would have been motivated to
combine these teachings of Kloba and Hoyle to improve the effectiveness of
the advertisements Kloba’s server provides a user. Id. at 40–41 (citing
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Ex. 1005, ¶ 433 (“[The proposed modification] would allow the operator of
Kloba’s server and/or content providers to better ‘profil[e] the end user’ and
to ‘better target’ advertising to the user.”); Ex. 1011, 7:41–44). Petitioner
contends further that “[l]oading advertisements based on tracked user
behavior information would have simply been a variant of, and completely
consistent with, Kloba’s existing operation” and a skilled artisan would have
had “a reasonable expectation of success in modifying the Kloba-Multer
system to incorporate Hoyle’s teachings in this way because Kloba already
discloses loading channels and other objects onto user devices based on the
server processing consumer usage information.” Id. at 41 (citing Ex. 1006,
34:52–54; Ex. 1005, ¶ 434).
Patent Owner makes two arguments disputing Petitioner’s contention
that the combined teachings of Kloba and Hoyle disclose limitation 1[f].
First, Patent Owner asserts that Petitioner has not established that a skilled
artisan would have been motivated to combine these references in the
manner claimed. PO Resp. 30–36. Second, Patent Owner asserts that, even
in combination, Kloba and Hoyle fail to disclose that the synchronization
instructions “are themselves based upon the results of the server’s
processing of Petitioner’s alleged TCBI . . . , at least in the sense that the
Kloba server’s ultimate determination to include those particular instructions
. . . [to] caus[e] modifications to a mobile device would . . . be predicated
upon such processing.” Id. at 37–43.
First, Patent Owner contends that Petitioner failed to prove that a
POSITA would have been motivated to combine Kloba and Hoyle because
“[t]here would have been no motivation to modify Kloba in view of Hoyle
because Kloba already provides an effective and beneficial way to direct
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suitable advertisements to its mobile devices.” PO Resp. 27. Patent Owner
contends that Kloba already “discloses [a] complete method for displaying
advertisements on its mobile devices, and for collecting TCBI, and for
deriving monetary benefits for doing so” and “Petitioner’s sole alleged
motivation to combine Kloba and Hoyle is unsupported speculation that the
combination ‘could have allowed the operator of Kloba’s server to charge
providers more money.’” Id. at 28 (citing Ex. 1006, 17:20–23, 17:25–29,
17:36–45, 18:11–15; Pet. 41). Patent Owner argues that the motivation to
have more effective advertisement is “one and the same” to the motivation
to “gain some economic benefit.” See id. at 29. And because Petitioner’s
declarant, Dr. Kesidis, “admitted that he has no expertise, experience,
employment history, or education in advertising, and no experience in
determining relative fees that an advertiser would pay for different types of
advertising,” Patent Owner argues that his testimony should be afforded no
weight because it is conclusory. Id. (citing Ex 2028, 113:22–114:14;
115:16–22 (Kesidis deposition)).
Patent Owner argues further that Petitioner’s alleged motivation is
deficient because it would require substantial reconstruction and redesign of
Kloba’s server and the client device. Id. at 30. Patent Owner contends that
“Kloba’s server and Hoyle’s ADM server function very differently with
respect to tracked user information.” Id. at 31 (citing 2029, ¶¶ 134–135).
Patent Owner contends that “Kloba’s server simply receives tracked user
information and exports it to a third-party provider,” whereas “[w]hen the
ADM server receives and processes computer usage information, ‘the server
us[es] the data to select and download an appropriate advertisement’ from an
Ad Database [to the client’s device].” Id. (citing Ex. 1011, 16:44–48, Ex.
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2029, ¶ 135). Patent Owner contends that it is undisputed that the ADM
server of Hoyle “performs the complex task of analyzing computer usage
information and, based on that analysis, selecting appropriately targeted
advertisements—even ‘the best advertisement’—from among a larger
collection of potential advertisements” to provide to the client device. Id. at
32 (citing Ex. 2028, 80:9–15; 83:19–84:3).
Additionally, Patent Owner contends that Petitioner “ignores that
Hoyle’s selection of new advertisements is performed by the interaction of
Hoyle’s ADM server and a separate ADM module which is a client software
application located on Hoyle’s computer clients.” Id. at 32–35 (citing Ex.
1011, 6:62–7:4; Ex. 2029, ¶¶ 136–139). As support for this contention,
Patent Owner relies on Hoyle’s teachings associated with a “critical and
prevalent role” that the ADM module plays to govern the operations of the
advertisements stored on the client’s device. Id. at 32–35 (citing Ex. 1011,
4:35–37, 6:62–7:4, 8:14–17, 8:25–29, 11:41–43, 11:50–63, 15:10–14,
15:17–24, 15:29–63; Ex. 2028, 63:15–24, 64:20–35:19, 69:24–70:23,
71:22–72:1, 108:9–14; Ex. 2029, ¶¶ 136–139).
We find that Petitioner’s argument and evidence persuasively show
that combining the teachings of Kloba and Hoyle in the manner limitation
1[f] recites would have been an obvious adaptation of the disclosed
technology at the time of the invention. The Supreme Court has held that
“when a patent simply arranges old elements with each performing the same
function it had been known to perform and yields no more than one would
expect from such an arrangement, the combination is obvious.” KSR, 550
U.S. at 417. We “must ask whether the improvement is more than the
predicable use of prior art elements according to their established functions”
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because “if a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id. And when making this analysis,
we are not confined to “seek[ing] out precise teachings directed to the
specific subject matter of the challenged claims;” instead we look more
broadly to what the evidence as a whole shows was known and “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. Notably, here, that skilled artisan is someone
who has a substantial amount of education and training in the relatively
complex technology at issue. See § II.C.
Having considered the evidence and arguments from both sides, we
are persuaded it would have been obvious to one of ordinary skill in the art
to modify the server of Kloba to perform an analysis of the tracked client
behavior information and, based on that analysis, to send a communication
to the client’s device to either copy, add, remove, and/or update information
from the server into the stored display data content files on the device, which
causes the stored display data content files on the device to be automatically
modified so as to provide a consumer service. We find that Petitioner has
persuasively shown that Kloba teaches a server that already receives tracked
client behavior information and the server is able to send synchronization
commands that cause the client device to automatically copy, add, remove,
and/or update information stored on the client device so as to cause the
stored information to be automatically modified. See Ex. 1006, 17:6–23,
20:13–17. We find also that Petitioner has persuasively shown Hoyle to
teach that skilled artisans knew a server may be used to perform an analysis
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of the tracked client behavior information to make determinations about
what information should be either copied, added, removed, and/or updated in
the stored display data content files on the client’s device. See id. at 7:41–
44, 8:37–52, 8:60–63, 14:46–58, 16:26–23, 16:44–52. Hoyle additionally
teaches that this functionality is beneficial because it allows the server more
accurately to target the information to the interests of the user of the client
device. Id. at 7:41–44.
In view of these facts, we are persuaded that a skilled artisan would
have been motivated to combine these teachings of Kloba and Hoyle in the
manner claimed by limitation 1[f] to improve the effectiveness of the
advertisements Kloba’s server provides a user. Pet. 40–41 (citing Ex. 1005,
¶¶ 433–434). We find that the evidence persuasively shows that the
improvement is nothing more than the predicable use of prior art elements
according to their established functions. Hoyle provides a technique that has
been used to improve another similar server that a skilled artisan would
recognize would improve Kloba’s server in the same way by processing the
tracked behavior information to determine whether to automatically add,
remove or update advertising stored in the display data content files on the
device through the Kloba’s disclosed synchronization process.
As evidenced by the general nature of the descriptions used by all of
the prior art references to teach these server techniques to a skilled artisan,
such a modification would have been well within the abilities of such a
highly educated and experienced person because it would have simply
involved programming the server to have the functionalities that Kloba and
Hoyle demonstrate a skilled artisan knew the server could be programmed to
perform. Patent Owner’s argument regarding the “substantial reconstruction
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and redesign” lacks substantial weight because, as Petitioner argues, and we
agree, “the test for obviousness . . . ‘is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference, . . . but rather whether a skilled artisan would have been
motivated to combine the teachings of the prior art references to achieve the
claimed invention.’” Reply 20 (quoting Allied Erecting & Dismantling Co.
v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016)).
Likewise, we do not give much weight to Patent Owner’s argument
that Petitioner failed to establish a motivation to modify Kloba’s server in
the manner recited because Patent Owner concedes that Kloba “discloses a
complete method for displaying advertisements on its mobile devices, and
for collecting TCBI, and for deriving monetary benefits for doing so.” See
PO Resp. 28. Simply because Kloba describes benefits associated with a
disclosed embodiment does not undermine Petitioner’s contention that a
skilled artisan would have also recognized Kloba’s server may include
additional benefits by incorporating Hoyle’s teaching of having the server
process the tracked client behavior information to control the display data
content (i.e., the advertising display content) stored on the client device to
better target that information to the particular user of the device. The
benefits taught by Hoyle and Kloba are not necessarily mutually exclusive or
counter-productive; moreover, Kloba makes clear that the server it teaches is
intended to be versatile with many different features and benefits available.
See generally Ex. 1006, 3:55–37:44. Petitioner has shown persuasively that
“[l]oading advertisements based on tracked user behavior information would
have simply been a variant of, and completely consistent with, Kloba’s
existing operation” and a skilled artisan would have had “a reasonable
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expectation of success in modifying the Kloba-Multer system [in the manner
claimed] to incorporate Hoyle’s teachings . . . because Kloba already
discloses loading channels and other objects onto user devices based on the
server processing consumer usage information.” Pet. 41 (citing Ex. 1006,
34:52–54; Ex. 1005, ¶ 434).
Patent Owner’s second argument that the combination of Kloba and
Hoyle fails to disclose all of the elements of limitation 1[f] (see PO Resp.
37–43) likewise fails to overcome Petitioner’s persuasive showing. In short,
Patent Owner argues that the combined teaching of Kloba and Hoyle fail to
disclose communicating a “management instruction” from the server to the
client device based on having processed tracked client behavior information.
PO Resp. 37–43. We disagree, regardless of whether that term is interpreted
as proposed by Petitioner or Patent Owner.
As Patent Owner concedes, Hoyle teaches having a server “perform[]
the complex task of analyzing computer usage information and, based on
that analysis, selecting appropriately targeted advertisements—even ‘the
best advertisement’—from among a larger collection of potential
advertisements” to provide to the client device. Id. at 31; see also Ex. 1011,
16:44–52. What is clear from this teaching is that a server was known to be
used to process a user’s tracked behavioral information to control what
display data content is stored in the related files of a client’s device and, as
such, the server determines two things: (1) the relevant information for a
particular client; and (2) whether to add, remove or update the information
stored in a display data content file in the client’s device. Kloba teaches that
its synchronization module receives information that allows it to “compile
instructions to synchronize the client” and “sends such instructions to [the]
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client.” Ex. 1006, 20:13–17. We find, therefore, that a skilled artisan would
have understood from the combined teachings of Kloba and Hoyle that
Kloba’s server may be used to process the received client behavior
information to select the appropriate display content data for adding,
removal, or updating in the stored display content files of client’s device
and, based on this process, communicate using a synchronization module the
relevant synchronization instructions to the client’s device to cause the
stored display data content files on the client’s device to be automatically
modified by adding, removing, or updating the selected data. Regardless of
whether limitation 1[f] is interpreted as proposed by Petitioner or Patent
Owner, we find the combined teachings of Kloba and Hoyle disclose each
and every element required by this limitation.
Therefore, for the foregoing reasons, we find that Petitioner has
shown by a preponderance of the evidence that the subject matter of claim
limitation 1[f] would have been obvious in view of Kloba and Hoyle.
f. Limitations 1[g] (“wherein the remote computer
server platform provides said consumer service on an
autonomous basis unprompted . . . by a consumer user
. . . of consumer device assets”)
Petitioner contends that the combined teachings of Kloba and Multer
disclose limitation 1[g]. Pet. 42. Petitioner contends that the Kloba system
modified with Multer’s teaching of automatic synchronization would result
in “the Kloba’s devices synchroniz[ing] with the server automatically based
on the occurrence of an event or at regular intervals.” Id. (citing Ex. 1006,
35:15-18; Ex. 1005, ¶¶ 213-218, 438). Petitioner notes that “Multer
contrasts event- or time-based synchronization with synchronizations that
are ‘triggered manually when the user presses a ‘sync’ button’” and teaches
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that the event- or time-based synchronization is on an “autonomous basis
unprompted in whole or in part by the receipt of any request or command
initiated by a consumer user” of the device being synchronized. Id. (citing
Ex. 1006, 35:13–15; Ex. 1006, ¶ 438). Patent Owner does not contest these
contentions by Petitioner for limitation 1[g]. Petitioner’s evidence is
persuasive and we find that Petitioner has shown by a preponderance of the
evidence that limitation 1[g] would have been obvious in view of the
combined teachings of Kloba and Multer.
g. Summary, Claim 1
Based on the foregoing discussion, and after all of the evidence and
argument have been considered as a whole, we find that Petitioner has
shown by a preponderance of evidence that claim 1 would have been
obvious in view of Kloba, Multer, and Hoyle.
2. Dependent Claims 2–6, 13
Petitioner asserts that the proposed combination of Kloba, Multer, and
Hoyle teaches each of the additional limitations of dependent claims 2–3,
which depend from claim 1. Pet. 44–54. 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). Except for claim 13,
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. 44–46 & n.9 (“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
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had a full and fair opportunity to address materially similar limitations in
similar claims 2 and 9 of the ’358 patent, as Petitioner shows. See Pet. 44–
45 & n.9 (citing Ex. 1005, Ex. AB); Pet Supp. Br. 1–2 & n.1; Ex. 1013
(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.15. Claim 2 requires
one or more of the claimed networks to include “at least one selected from
the group consisting of a cellular mobile network and the Internet.” Ex.
1002, 27:13–16. Claim 3 requires the server to store “information indicative
of preferences . . . for particular display date content files” on computer
assets. Id. at 27:18–22. Based on a review of the record, Petitioner also
persuasively shows that the combination of Kloba, Multer, and Hoyle
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.” Id. at 2723–34. Claims 5 and 6 depend
from claim 4. Id. at 27:35–51.
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
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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, 447. 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, 477. 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, 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, 477.
Pet. 46–47.
Regarding the “wireless packet switched data messages” that claim 4
recites, Petitioner contends the following:
As discussed above in connection with Element 1[h], 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, 477.
Alternatively, for the reasons discussed above in connection
with Element 1[h], 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, 477.
Id. at 47.
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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.
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.’” Id. 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)].
Id. at 57–58.
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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.).
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, 447). Still tracking its
arguments with respect to limitation 1[f], Patent Owner argues that “Kloba
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. 58 (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, Patent Owner does not challenge it. Rather, as quoted above,
Patent Owner essentially characterizes it without pointing to any deficiency.
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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 pertain to existing files and hence
delta instructions. See Pet. 47 (citing Ex. 1006, 10:15–24). As also noted
above, Patent Owner does not dispute that deltas instructions constitute
management instructions. See PO Resp. 21–22. In other words, Petitioner
persuasively relies on deltas instructions here to be sent with channels “at
some other future synchronization.” See Pet. 47 (citing Ex. 1006, 10:15–
24). 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. Se id. 46–47 (citing Ex. 1006, 20:13–17; Ex. 1005 ¶¶ 266, 447).
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]. PO 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 [consumer user
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 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
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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. 46–47 (citing Ex. 1005 ¶¶266–270, 447; Ex. 1006,
8:16–17, 10:15–24). Based on Petitioner’s showing with respect to
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. 46 (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,
Multer, and Hoyle teaches each of the additional limitations of dependent
claims 5–6, and renders those claims obvious. Pet. 47–53. 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 47–48 (citing ’1892 FWD 55, 59).
We adopt and incorporate by reference the cited portions of the ’1892 FWD.
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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
pair encryption scheme.” Ex. 1002, 27:46–51. Petitioner contends that
claim 6 tracks “claim 5 of the ’358 patent, which the Board found that Kloba
discloses” in the ’1892 FWD. Pet. 48–49 (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.” Id. (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. 49 (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,”
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and “RSA used a pair of ‘public’ and ‘private’ keys to encrypt and decrypt
communications.” Id. at 50 (citing Ex. 1005 ¶¶ 279–282).
Third, Petitioner relies on other “security” teachings as disclosed in
Kloba’s Figure 30. Pet. 50–51 (citing Ex. 1006, 35:48–49, Fig. 30; Ex. 1005
¶¶ 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 51–52 (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[h])—using the RSA algorithm, which utilizes a key-pair encryption
scheme.” Pet. 52 (citing Ex. 1005 ¶¶ 287, 451; ’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. 52–53 (citing Ex. 1005 ¶¶ 289, 451). 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, 451]. 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
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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.
Pet. 53.
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. 48–52) (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. 52–53;
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 ’989 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
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scheme. See Pet. 52–53. As Petitioner shows, Kloba, filed 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, including
wireless packet switching and the Internet at least by early 2002. See Ex.
1006, codes (22), (56).12
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 28), 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 id. ¶
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

12 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.”).13
Claim 13 depends from claim 1 and further recites that the operational
status information “comprises information indicative of whether or in what
manner a setting or a feature on the particular sending consumer device asset
has been enabled or actuated.” Ex. 1002, 28:35–37. Petitioner identifies
Kloba’s disclosure of sending “state” information from devices to the server
relating to the devices’ “font specifications,” “supported data types,”
“supported mime types,” and “connection/network profile,” moreover, that
Kloba teaches that “[t]he synchronization process may ‘include only kinds
of content 414 supported by various devices/clients.’” Pet. 53 (citing Ex.
1006, 24:42–45, 24:50–53). Petitioner contends that this “state” information
satisfies claim 13 “because the information indicates to the server what
fonts, data types, mime (Multipurpose Internet Mail Extensions), and
network connections are supported by the device.” Id. at 53–54 (citing Ex.
1005, ¶ 453). Patent Owner does not dispute Petitioner’s contentions, other
than stating that claim 13 is non-obvious because it depends from claim 1.
See PO Resp. 65. Petitioner’s evidence is persuasive and we find that Kloba
discloses the recited elements of claim 13.
Therefore, based on the foregoing discussion, Petitioner has shown by
a preponderance of evidence that claims 2–6 and 13 would have been
obvious over Kloba, Multer, and Hoyle.

13 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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G. Alleged Obviousness Based on Kloba, Multer, Hoyle, and
Loughran––Claims 7, 14, 16, 17, and 19–25
Claims 7, 14, 16, 17, and 19 depend, directly or indirectly, from
independent claim 1. Claim 20 is independent and claims 21–25 depend
therefrom either directly or indirectly. We address independent claim first
and then address the dependent claims.
Petitioner contends that claims 7, 14, 16, 17, and 19–25 would have
been obvious in view of (i) the combined teachings of Kloba, Multer, and
Loughran and (ii) the combined teachings of Kloba, Multer, Hoyle, and
Loughran. Pet. 5, 54–66. For the reasons discussed above (see supra
§ II.F.1e), we need not decide if claims 7, 14, 16, 17, and 19–25 would have
been obvious in view of the combined teachings of Kloba, Multer, and
Loughran.
Therefore, our discussion below focuses on Petitioner’s contentions
regarding the combined teachings of Kloba, Multer, Hoyle, and Loughran.
1. Independent Claim 20
Petitioner asserts that the combination of Kloba, Multer, Hoyle, and
Loughran renders obvious the subject matter of independent claim 20.
Pet. 60–65. Independent claim 20 includes limitations materially similar to
limitations in independent claim 1. See id. at 64–65 (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 63. Petitioner supports its showing with citations to the record, the
testimony of Dr. Kesidis, and citations to the ’1892 FWD. Id. 62–64 (citing
Ex. 1005 ¶¶ 319–322, 328–343, 466–86; Ex. 1006; Ex. 1007; Ex. 1008;
’1892 FWD 64). Patent Owner argues claims 1 and 20 together. See PO
Resp. 1–55.
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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,
Hoyle, and Loughran renders obvious the subject matter of claim 20. See
Pet. 60–65.
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, Hoyle, and Loughran.
2. Dependent Claims 7, 14, 16, 17, 19, and 21–25
Petitioner asserts that the combination of Kloba, Multer, Hoyle, 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. 54–60, 65–66. 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 54–56, 58–
59 (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. 55–59.
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
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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. These
claims require that management instructions sent to a consumer 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.” Ex.
1002, 28:57–65, 29:18–26.
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. 58–59 (Ex. 1005 ¶¶ 305, 459).
Patent Owner responds that “Petitioner’s argument is false as a factual
matter.” 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 in the
server’s 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).
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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). He further
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. 61.
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 id. at 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.
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 25–27. Petitioner also
shows that Mr. Berg admits that “devices can directly connect to a server
through the Internet.” Id. at 25 (citing Ex. 1021, 147:13–20. And Petitioner
also shows that Mr. Berg “also concede[s] that Kloba does not discuss
routers.” Id. at 26 (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.
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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. PO 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 26 (emphasis added).
According to 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.
We find that Petitioner has shown 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.
Therefore, 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, Hoyle, and Loughran.
H. Alleged Obviousness Based on Kloba, Multer, Hoyle, Loughran,
and Fong, Dependent Claims 8–12, 15, 18, and 26–30
Claims 8–12, 15, 18 depend from claim 1 and claims 26–30 depend
claim 20. We again point out that Petitioner contends that claims 8–12, 15,
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18, and 26–30 would have been obvious in view of (i) the combined
teachings of Kloba, Multer, Loughran, and Fong and (ii) the combined
teachings of Kloba, Multer, Hoyle, Loughran, and Fong. Pet. 5, 67–72. Our
discussion below addresses only Petitioner’s contentions regarding the
combined teachings of Kloba, Multer, Hoyle, Loughran, and Fong.
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, Hoyle, Loughran, and Fong. Pet. 67–72.
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 67, 69, 70 (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 separately from its arguments that address claims 1, 4–6, 16,
19, and 20. See PO Resp. 65 n.15.14
Therefore, based on the foregoing discussion, Petitioner has shown by
a preponderance of evidence that claims 8–12, 15, 18, and 26–30 would
have been obvious over Kloba, Multer, Hoyle, Loughran, and Fong.
III. CONCLUSION
The outcome for the challenged claims of this Final Written Decision
follows.15 In summary:

14 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.
15 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
Regarding Options for Amendments by Patent Owner Through Reissue or
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Claims 35 U.S.C. § References/Basis
Claims
Shown
Unpatent-
able
Claims
Not shown
Unpatent-
able
1–6, 13 103(a)
Kloba, Multer,
Hoyle 1–6, 13

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

8–12, 15,
18, 26–30 103(a)
Kloba, Multer,
Loughran,
Hoyle, Fong
8–12, 15,
18, 26–30

Overall
Outcome
1–30

IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 1–30 of the ’989 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.

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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For PETITIONER:

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

For PATENT OWNER:

Andrew Ryan
CANTOR COLBURN LLP
ryan@cantorcolburn.com