DISH Network L.L.C.v.CRFD RESEARCH, INC.

Patent Trial and Appeal Board

Jun 1, 2016

09953408 (P.T.A.B. Jun. 1, 2016)

Trials@uspto.gov Paper 25
571-272-7822 Entered: June 1, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DISH NETWORK CORPORATION, DISH DBS CORPORATION,
DISH NETWORK L.L.C., ECHOSTAR CORPORATION, and
ECHOSTAR TECHNOLOGIES L.L.C.,
Petitioner,

v.

CRFD RESEARCH, INC.,
Patent Owner.
____________

Case IPR2015-00627
Patent 7,191,233 B2
____________

Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

ARBES, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
IPR2015-00627
Patent 7,191,233 B2

2
I. BACKGROUND
Petitioners DISH Network Corporation, DISH DBS Corporation,
DISH Network L.L.C., EchoStar Corporation, and EchoStar Technologies
L.L.C. (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) seeking
inter partes review of claims 1, 4, 23, and 25 of U.S. Patent No. 7,191,233
B2 (Ex. 1001, “the ’233 patent”) pursuant to 35 U.S.C. §§ 311–319. On
June 3, 2015, we instituted an inter partes review of claims 1, 4, 23, and 25
on four grounds of unpatentability (Paper 9, “Dec. on Inst.”). Patent Owner
CRFD Research, Inc. filed a Patent Owner Response (Paper 14,
“PO Resp.”), and Petitioner filed a Reply (Paper 16, “Reply”). An oral
hearing was held on January 19, 2016, and a transcript of the hearing is
included in the record (Paper 23, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1, 4, 23, and 25 are
unpatentable.

A. The ’233 Patent1
The ’233 patent describes a system and method for “user-directed
transfer of an on-going software-based session from one device to another

1 The ’233 patent also is the subject of Cases IPR2015-00055 and
IPR2015-00259, in which inter partes reviews were instituted, and was the
subject of Case IPR2015-00157, in which the request for inter partes review
was denied. On April 22, 2016, we issued a final written decision in
Case IPR2015-00055 determining that claims 1, 4–6, and 8–11 of the
’233 patent had been shown to be unpatentable.
IPR2015-00627
Patent 7,191,233 B2

3
device.” Ex. 1001, col. 1, ll. 8–11. A user may have a number of
communication-enabled devices (e.g., cellular telephone, wireless personal
digital assistant (PDA), laptop computer, desktop computer) through which
the user conducts software application sessions. Id. at col. 1, ll. 15–52. The
user may conduct a session on one device and then decide to switch to
another device. Id. at col. 1, ll. 53–59. For example, the user may want to
switch from a stationary device to a mobile device, or to switch to a device
with a different graphical user interface. Id. According to the ’233 patent,
conventional systems that required the user to “discontinue the current
session on the first device and reinitiate a new session on the second device”
could entail inconveniences such as the history of the original session being
lost or time delays involved in logging off and reinitiating. Id. at col. 1,
ll. 59–66.
Figure 1 of the ’233 patent is reproduced below.

IPR2015-00627
Patent 7,191,233 B2

4
Figure 1 depicts wireless clients 120 (e.g., a cellular telephone or PDA) and
wired clients 125 (e.g., a desktop or laptop computer) of a user that connect
over various networks to application services network 105. Id. at col. 4,
ll. 4–11, 30–33, col. 5, ll. 3–6. Wireless clients 120 and wired clients 125
execute client programs that support session services for the respective
devices, and are “configured to have a preferred mode of interaction,
i.e., modality,” such as a graphical user interface for transferring sessions
between devices. Id. at col. 4, ll. 33–50. Application services network 105
provides session-based services (e.g., instant messaging, database querying),
and application server 140 provides applications for those services
(e.g., instant messaging application, database querying application), to
wireless clients 120 and wired clients 125. Id. at col. 5, ll. 21–30.
The ’233 patent describes the method of session transfer as follows:
(1) a “redirect or transfer command” is sent from a first device (wireless
client 120 or wired client 125); (2) session server 145 begins intercepting
messages destined for the first device; (3) the first device transmits a
“transaction or session history” to session server 145; (4) session server 145
retrieves the previously stored “device profile” of the second device to
which the session is to be redirected, “convert[s] the stored messages [of the
session history] into a data format” and/or modality compatible with the
second device, and converts the “state” of the session to a state compatible
with the second device; and (5) when the user activates the second device,
session server 145 “pushes the converted session to the redirected device
over the network 100 as a normal session with the converted transaction
log.” Id. at col. 7, l. 46–col. 8, l. 58, Figs. 3A–3B.

IPR2015-00627
Patent 7,191,233 B2

5
B. Illustrative Claim
Claim 1 of the ’233 patent recites:
1. A method for redirecting an on-going, software based
session comprising:
conducting a session with a first device;
specifying a second device;
discontinuing said session on said first device; and
transmitting a session history of said first device from
said first device to a session transfer module after said session
is discontinued on said first device; and
resuming said session on said second device with said
session history.

C. Prior Art
The pending grounds of unpatentability in the instant inter partes
review are based on the following prior art:
U.S. Patent No. 6,963,901 B1, filed July 24, 2000, issued
Nov. 8, 2005 (Ex. 1004, “Bates”);
Mun Choon Chan & Thomas Y. C. Woo,
Next-Generation Wireless Data Services: Architecture and
Experience, IEEE PERS. COMM., Feb. 1999, 20 (Ex. 1005,
“Chan”);
Thomas Phan et al., A New TWIST on Mobile
Computing: Two-Way Interactive Session Transfer, PROC.
SECOND IEEE WORKSHOP ON INTERNET APPLICATIONS (WIAPP
2001) (Ex. 1019, “Phan San Jose”); and
Thomas Phan et al., Handoff of Application Sessions
Across Time and Space, IEEE INT’L CONF. ON COMM. (ICC
2001) (Ex. 1020, “Phan Helsinki”).2

2 Petitioner refers to Phan San Jose as “Phan WIAPP,” and refers to Phan
Helsinki as “Phan ICC.” Because the two references were discussed
IPR2015-00627
Patent 7,191,233 B2

6
D. Pending Grounds of Unpatentability
The instant inter partes review involves the following grounds of
unpatentability:
Reference(s) Basis Claim(s)
Phan Helsinki 35 U.S.C. § 102(a) 1, 4, 23, and 25
Phan Helsinki and
Phan San Jose
35 U.S.C. § 103(a) 4 and 25
Bates 35 U.S.C. § 102(e) 1 and 23
Bates and Chan 35 U.S.C. § 103(a) 1, 4, 23, and 25

II. ANALYSIS
A. Claim Interpretation
The Board interprets claims using the “broadest reasonable
construction in light of the specification of the patent in which [they]
appear[].” 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo

previously in Case IPR2015-00055, we use the same nomenclature as the
earlier proceeding for consistency. The copies of Phan San Jose and Phan
Helsinki submitted by Petitioner include Library of Congress date stamps of
August 28, 2001, and July 31, 2001, respectively. Petitioner argues that the
references were publicly available “at least as early as” August 18, 2001
(presumably August 28, 2001), and July 31, 2001, respectively. Pet. 3.
Patent Owner does not dispute Petitioner’s contentions. Based on the record
presented, we are persuaded that Phan San Jose and Phan Helsinki are prior
art printed publications under 35 U.S.C. § 102(a). See Kyocera Wireless
Corp. v. ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008). Also, when citing
Phan San Jose and Phan Helsinki, we refer to the page numbers added by
Petitioner in the bottom-right corner of each page. See 37 C.F.R.
§ 42.63(d)(2).
IPR2015-00627
Patent 7,191,233 B2

7
Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under this
standard, we interpret claim terms using “the broadest reasonable meaning
of the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). We presume that claim terms have their ordinary and
customary meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
(Fed. Cir. 2016) (“Under a broadest reasonable interpretation, words of the
claim must be given their plain meaning, unless such meaning is inconsistent
with the specification and prosecution history.”); In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary
meaning is the meaning that the term would have to a person of ordinary
skill in the art in question.” (internal quotation marks omitted)). A patentee,
however, may rebut this presumption by acting as his or her own
lexicographer, providing a definition of the term in the specification with
“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).

1. Previously Interpreted Terms
In the Decisions on Institution in Cases IPR2015-00055,
IPR2015-00157, IPR2015-00259, and IPR2015-00627, we interpreted
various claim terms of the ’233 patent as follows:
Claim Term Interpretation
“modality” a preferred mode of interaction
IPR2015-00627
Patent 7,191,233 B2

8
Claim Term Interpretation
“device profile” information pertaining to the operation of a
device, such as the data format or modality of
the device
“in response to . . .
activation of said
second device”
in response to the second device being made
active, such as by a user logging on to the
second device
“session” a series of information transactions between
communicating devices during a particular
time period
“discontinuing” terminating or otherwise stopping, with the
ability to be resumed
“discontinued” terminated or otherwise stopped, with the
ability to be resumed
“session transfer
module”
computer hardware and/or software that
participates in the transfer of a session
See Dec. on Inst. 6–9; Hulu, LLC v. CRFD Research, Inc., Case
IPR2015-00259, slip op. at 6–9 (PTAB June 3, 2015) (Paper 8); Unified
Patents Inc. v. CRFD Research, Inc., Case IPR2015-00157, slip op. at 6–9
(PTAB Apr. 30, 2015) (Paper 8); Iron Dome LLC v. CRFD Research, Inc.,
Case IPR2015-00055, slip op. at 6–10 (PTAB Apr. 27, 2015) (Paper 10).
The parties do not dispute these interpretations in their Patent Owner
Response and Reply. We do not perceive any reason or evidence that
compels any deviation from these interpretations. Accordingly, we adopt
our previous analysis for purposes of this Decision. We also interpret one
other limitation.

IPR2015-00627
Patent 7,191,233 B2

9
2. Ordering of the “Specifying” Step3
Although the parties do not address specifically how “specifying a
second device” in claims 1 and 23 should be interpreted, the parties disagree
as to whether the step must occur in a specific order with respect to the step
of “discontinuing said session on said first device.” Patent Owner argues in
its Response that Phan Helsinki, in describing the “pull mode” that is further
explained in Phan San Jose, fails to disclose the “specifying” step because
the user merely clicks “Suspend” to discontinue the session and then chooses
a particular device on which to resume the session at a later time. PO Resp.
16–31. At the hearing, Patent Owner argued that the “specifying” step must
occur before the “discontinuing” step, and that it must be the user or the first
device that performs the specifying, citing as support an embodiment
described in the Specification of the ’233 patent. Tr. 21:1–23:18. Petitioner
disagreed, arguing that nothing in the claim language itself requires the
“specifying” step to occur before the “discontinuing” step. Reply 4–5;
Tr. 18:1–22. We agree with Petitioner.
To determine whether the steps of a method claim that do not
otherwise recite an order must nonetheless be performed in a particular
order, we first “look to the claim language to determine if, as a matter of
logic or grammar, they must be performed in the order written.” Altiris, Inc.
v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). “If not, we next
look to the rest of the specification to determine whether it ‘directly or

3 In the final written decision in Case IPR2015-00055, we interpreted
claim 1 not to require that the “specifying” step take place before the
“discontinuing” step. Iron Dome LLC v. CRFD Research, Inc.,
Case IPR2015-00055, slip op. at 8–10 (PTAB Apr. 22, 2016) (Paper 30).
Our analysis herein is similar to that in Case IPR2015-00055.
IPR2015-00627
Patent 7,191,233 B2

10
implicitly requires such a narrow construction.’” Id. at 1370 (citation and
emphasis omitted); see also Mformation Techs., Inc. v. Research In Motion
Ltd., 764 F.3d 1392, 1398–99 (Fed. Cir. 2014) (“a claim ‘requires an
ordering of steps when the claim language, as a matter of logic or grammar,
requires that the steps be performed in the order written, or the specification
directly or implicitly requires’ an order of steps” (citation omitted)).
Claims 1 and 23 require certain steps to be performed before others.
For example, the “transmitting” step must take place “after said session is
discontinued on said first device” (emphasis added). Likewise, “conducting
a session with a first device” logically must take place before “discontinuing
said session on said first device.” There is nothing in the language of the
claims, however, expressly requiring “specifying a second device” to take
place before “discontinuing said session on said first device” or requiring
such an order as a matter of logic or grammar. See Altiris, 318 F.3d at
1370–71 (concluding that the claim at issue required “several of the steps” to
take place in order, but not the particular step argued by the plaintiff). The
“discontinuing” step, as well as the subsequent “transmitting” step, do not
even refer to the second device.
Thus, we look to the Specification to determine whether it expressly
or implicitly requires a particular order. The Specification discloses that
“[t]he client software of the wireless/wired client devices, 120 and 125 may
be . . . configured to provide a selection of devices that a transferring session
may be redirected thereto,” and “[t]he selection of the redirected device may
. . . be forwarded from the user of a wireless/wired client device, 120 and
125 to the session server [145].” Ex. 1001, col. 4, ll. 53–61. Also, as shown
in Figures 3A and 3B, session server 145 receives a “redirect or transfer
IPR2015-00627
Patent 7,191,233 B2

11
command” from the first client device (step 305) before it begins
intercepting messages destined for the first client device (step 310) and
“access[es] the device profile of the selected second client (or redirected)
device” (step 320). Id. at col. 7, l. 49–col. 8, l. 13. These portions of the
Specification, however, describe only “exemplary” embodiments of the
invention. Id. at col. 4, ll. 4–6, col. 7, ll. 46–49. They do not show,
expressly or implicitly, that the “specifying” step of the claims must occur
before the “discontinuing” step. Moreover, the Specification indicates the
opposite, stating that “although the method of the present invention has been
described by examples, the steps of the method may be performed in a
different order than illustrated or simultaneously.” Id. at col. 9, ll. 22–25.
Applying the broadest reasonable interpretation of the claims in light
of the Specification, we do not interpret claims 1 and 23 to require that the
“specifying” step take place before the “discontinuing” step.

B. Grounds Based on Phan Helsinki and Phan San Jose
Petitioner argues that claims 1, 4, 23, and 25 are anticipated by Phan
Helsinki under 35 U.S.C. § 102(a), and that claims 4 and 25 are unpatentable
over Phan Helsinki and Phan San Jose under 35 U.S.C. § 103(a), relying on
the supporting testimony of W. Leo Hoarty. Pet. 40–56 (citing Ex. 1018).4
We have reviewed the Petition, Patent Owner Response, and Reply, as well

4 In numerous paragraphs of his Declaration, Mr. Hoarty repeats the
testimony of Mark Claypool, Ph.D., from Case IPR2015-00259, states that
he agrees with Dr. Claypool’s analysis and conclusions, and adopts them
“as [his] own.” See, e.g., Ex. 1018 ¶¶ 43, 52, 55–64. Petitioner filed a copy
of Dr. Claypool’s declaration from Case IPR2015-00259 in this proceeding
as Exhibit 1003.
IPR2015-00627
Patent 7,191,233 B2

12
as the evidence discussed in each of those papers, and are persuaded, by a
preponderance of the evidence, that claims 1, 4, 23, and 25 are anticipated
by Phan Helsinki, and that claims 4 and 25 are unpatentable over Phan
Helsinki and Phan San Jose.

1. Phan Helsinki
Phan Helsinki describes a research project called the “Interactive
Mobile Application Support for Heterogeneous Clients (iMASH),” which
allows medical practitioners at a hospital to use different types of devices
(e.g., desktop computers, PDAs) and “experience uninterrupted and
seamless data access across multiple devices by performing application
session handoff.” Ex. 1020, 7 (emphasis omitted). The system provides for
session handoff by placing a set of middleware servers between the client
devices and the application server, storing state data on the middleware
servers for the user’s session on a first device (e.g., user preferences,
URL history), and transferring the data to the second device upon session
handoff. Id. at 8–10. Figure 1 of Phan Helsinki is reproduced below.

IPR2015-00627
Patent 7,191,233 B2

13
Figure 1 depicts wired and wireless client devices, a “distributed set of
middleware servers” that is “the source for all services for clients,” and an
application server. Id. at 8. A client device “contacts only the local
middleware server for all services,” and the middleware server “takes
responsibility for getting the data from the right [application] servers, and
makes necessary conversion to fit the clients’ needs.” Id. at 9. Figure 2 of
Phan Helsinki is reproduced below.

Figure 2 depicts functionality provided by the middleware server, such as
user authentication and profiling, data caching, and presentation conversion
(i.e., converting data for the particular client device requesting it). Id.
“When a user moves an on-going application session from one device to
another, middleware servers act as a ‘home’ for the application state
(including active connections, cached data, etc.) to facilitate migration
between devices.” Id.
Phan Helsinki also describes the “Middleware-Aware Remote Code”
(MARC) on the client device that facilitates “session saving and
IPR2015-00627
Patent 7,191,233 B2

14
restoration,” and the process by which a session is transferred using MARC
and a web browser. Id. at 9–10. Specifically, Phan Helsinki describes the
following steps:
1. The user starts the client application and provides it
with a unique user id.
2. The MARC within the application discovers and
contacts the middleware server using Jini and begins a new
session using the user id. The last saved state, if it exists, is
retrieved from the middleware server. This step uses Java
[Remote Method Invocation (RMI)] to acquire the most
recently saved bookmarks, history, and user preferences, all of
which are stored on and transported from the middleware as
serialised Java Objects.
3. The returned data from the middleware is received by
the MARC and then incorporated into the client before the
user’s current interactive application session begins. Within
Mozilla, the data is deserialised by the MARC and then read
into Mozilla’s bookmark, history, and user preference
dataspace. . . .
4. As the user changes the current session state, the state
is updated at the middleware server at the appropriate times.
For example, whenever Mozilla flushes the bookmarks to disk,
our MARC will also transmit this data to the middleware via
RMI.
5. When the user exits the session, the client updates the
state at the middleware. Because Mozilla flushes all data upon
exiting, our MARC likewise updates data on the middleware.
Id. at 10.

2. Phan San Jose
Phan San Jose pertains to the same iMASH research project as Phan
Helsinki, and explains how the system allows physicians and staff at a
hospital to use different types of devices (e.g., desktop and laptop
IPR2015-00627
Patent 7,191,233 B2

15
computers, display tablets) and “seamlessly move an application’s session
from one machine to another machine” using the hospital’s “network as a
conduit.” Ex. 1019, 5.
Phan San Jose describes how the system could be used with a
“Teaching File” Java applet that displays medical images and associated
information, and allows users to create and modify instructional “teaching
files.” Id. at 10. In the Teaching File implementation, when a user requests
a teaching file, the application server (AS) sends the image file (stored in the
system’s proprietary picture archiving and communication system (PACS)
image format) to the middleware server (MWS). Id. at 10–11. The MWS
then “performs the image assembly on behalf of the client, including the
conversion of the proprietary PACS image to [a] Java Image and the
manipulation of that image according to the teaching file state description.”
Id. at 11. Phan San Jose describes two ways of performing the session
handoff. Id. In the “pull” mode, “the user selects a ‘Suspend’ operation, his
session shall be saved back to the MWS, allowing the application to
terminate, and at a later time the session can be reinstantiated by the
Teaching File application running on the target machine.” Id. In the “push”
mode, “the user can select the hostname of the target from a list.” Id.
“When the handoff occurs, the MWS will contact a daemon running on the
target machine to immediately launch the Teaching File applet and
automatically retrieve the session state . . . [and the] applet on the first client
terminates when the state is fully reinstantiated on the second client.” Id.
IPR2015-00627
Patent 7,191,233 B2

16
Figure 5 of Phan San Jose is reproduced below.

Figure 5 depicts the user interface of the Teaching File applet. Id. at 10. In
the dropdown menu labeled “Target,” the user is able to choose “Suspend”
(corresponding to the “pull” mode) or one of three hostnames to which the
session may be transferred (corresponding to the “push” mode). Id. at
10–11.

3. Anticipation Ground (Claims 1, 4, 23, and 25)
Petitioner has presented sufficient evidence showing that Phan
Helsinki discloses every limitation of claims 1, 4, 23, and 25. For example,
as to claim 1, Petitioner explains how a user conducts a session with a “first
device” (e.g., an office desktop computer), then discontinues the session on
the “first device” by suspending the session, causing the user’s session
history (e.g., bookmark list, history file, user preferences) to be transmitted
IPR2015-00627
Patent 7,191,233 B2

17
from the computer to a “session transfer module” (i.e., the middleware
server), and chooses to reinstantiate the session on a “second device”
(e.g., a PDA) using the previously saved session history. Pet. 40–48 (citing
Ex. 1020, 8–10, Ex. 1018 ¶¶ 84, 85, 87–90).
Patent Owner makes two arguments. First, Patent Owner argues that
“[t]o better understand Phan Helsinki, it is useful to first examine the
teachings of Phan San Jose,” and Phan San Jose’s description of the “push”
mode does not disclose “transmitting a session history of said first device
from said first device to a session transfer module after said session is
discontinued on said first device,” as recited in claim 1. PO Resp. 17–19
(emphasis added). Patent Owner cites as support testimony from Prasant
Mohapatra, Ph.D., which largely repeats Patent Owner’s arguments in its
Response. See id. (citing Ex. 2001 ¶¶ 27, 31). We do not see the relevance
of Phan San Jose to Petitioner’s asserted anticipation ground, however,
because the ground is based on Phan Helsinki alone. See Corning Glass
Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir.
1989) (“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.”). The parties agree that Phan Helsinki and Phan San Jose
both describe a “pull” mode, which is different from the “push” mode that
also is disclosed in Phan San Jose. See PO Resp. 12, 17, 22–23, 29;
Ex. 2004, 67:23–68:5 (Petitioner’s declarant, Mr. Hoarty, testifying that he
“believe[s] that the skilled person would perceive steps 1 through 3 [in Phan
Helsinki] to be a pull mechanism as defined by Phan San Jose”). Patent
Owner agreed at the hearing that Phan Helsinki, in describing the “pull”
mode, discloses the “transmitting” step of claim 1. Tr. 24:6–15. Based on
IPR2015-00627
Patent 7,191,233 B2

18
the record presented during trial, we are persuaded that Phan Helsinki
discloses the “transmitting” step recited in claim 1.
Second, Patent Owner argues that Phan Helsinki (as further explained
by Phan San Jose) does not disclose “specifying a second device.” PO Resp.
8–12, 16–24 (citing Ex. 2001 ¶¶ 32–35). Patent Owner contends that in the
“pull” mode described in the references, the user selects a “Suspend”
operation without specifying a device on which to resume the session. Id. at
19–24. Selecting “Suspend” causes the session history to be sent to the
middleware server, then, later, if the “user wishes to resume a session [on a
different device], the session state is ‘pulled’ from the [middleware server].”
Id. According to Patent Owner, there is no disclosure in the references of
the second device on which the session will be resumed being “specified.”
Id. We disagree.
As an initial matter, although we agree that Phan Helsinki and Phan
San Jose pertain generally to the same system, Petitioner’s anticipation
ground is based on Phan Helsinki alone. Thus, we evaluate only whether
Phan Helsinki discloses, expressly or inherently, the limitations of claim 1.
To the extent Patent Owner’s argument is that Phan Helsinki does not
specify a second device because the user does not identify a second device
before choosing to suspend the session on the first device, we are not
persuaded. As explained above, we do not agree with Patent Owner that the
claim requires the “specifying” step to take place before the “discontinuing”
step. See supra Section II.A.2. In other words, there is nothing preventing
the specification of the second device from occurring after the user chooses
to suspend the session on the first device, discontinuing the session and
causing the session history to be transmitted to the middleware server. The
IPR2015-00627
Patent 7,191,233 B2

19
specification of the second device may take place at a later time, such as
when the user chooses to resume the session on a different device.
To the extent Patent Owner’s argument is that Phan Helsinki does not
specify a second device at all, we also are not persuaded. Petitioner
contends that the second device is specified when the user “logs on to or
starts a new device to continue the session.” See Pet. 43–45; Reply 2–5.
The system described in Phan Helsinki “enable[s] a user to experience
uninterrupted and seamless data access across multiple devices by
performing application session handoff,” i.e., from one client device (e.g.,
desktop computer) to another (e.g., PDA). Ex. 1020, 7–9 (emphasis
omitted). “When a user changes devices or spawns a new branch of a
session to a new device, the middleware server authenticates the user on the
new device.” Id. at 9. Specifically, “[w]hen the user exits the session [on a
first client device], the client updates the state at the middleware.” Id. at 10.
Later, the user chooses a second client device on which to resume the
session, “[t]he user starts the client application [on the second client device]
and provides it with a unique user id,” the second client device retrieves the
session state from the middleware server, and the session continues. Id.
Petitioner’s contention that the second device in Phan Helsinki is
specified when the user takes action on the second device to resume the
session (e.g., logging on or starting the new device) is persuasive. See
Pet. 43–45; Reply 2–5. Claim 1 is broadly worded. It does not specify who
or what does the specifying, or to whom or what the second device is
specified. See Tr. 22:14–19 (acknowledging that “the claim language does
not state explicitly who does the specifying”). The claim only requires that
the second device be specified. Phan Helsinki discloses that the user
IPR2015-00627
Patent 7,191,233 B2

20
chooses a device on which he or she wants to resume the session and takes
action on that device to do so, which causes the client application on the
second device to communicate with the middleware server to retrieve the
session state. We are persuaded that this constitutes “specifying” the second
device. Indeed, Patent Owner’s declarant, Dr. Mohapatra, acknowledged
that in the “pull” mode of Phan Helsinki and Phan San Jose, the “[s]econd
device is specified at some point in time.” Ex. 1027, 67:19–24.
Dr. Mohapatra appears to disagree that Phan Helsinki discloses the
“specifying” step only to the extent that “specifying” the second device must
occur before “discontinuation” of the session on the first device. Id. at
42:9–17. As explained above, however, we do not agree with Patent Owner
that the claim requires such ordering. See supra Section II.A.2.
Patent Owner argued at the hearing that at the time of resuming the
session on the second device, the middleware server only knows the identity
of the user (via the user logging on and providing a unique user ID to the
second device), but identifying a user is not the same as specifying a device.
Tr. 21:10–14. Patent Owner further argued that the middleware server may
not know the address (e.g., IP address) to which to send the session state
because the device may be behind a firewall. Id. at 23:8–18.
Patent Owner’s arguments are not persuasive. First, as explained
above, we do not see anything in the claim that would prohibit the user from
specifying a second device by taking action on that particular device (as
opposed to a different device) to resume the session. Second, even if the
second device had to be specified to the middleware server, the middleware
server in Phan Helsinki must receive enough information from the second
device to be able to distinguish the chosen second device from other
IPR2015-00627
Patent 7,191,233 B2

21
potential devices, even if only by virtue of the second device’s association
with a user account; otherwise, the middleware server would not be able to
transmit the session history to the second device. See PO Resp. 22
(acknowledging that the client devices involved in the session communicate
with the middleware server); Ex. 1020, 8–10 (describing how the
middleware server is able to communicate with both the first client device
and the second client device); Ex. 1027, 41:11–42:2 (Dr. Mohapatra
acknowledging that “to resume at that second device, the MARC server
would need to know the IP address of the second device in order to send the
session information from the MARC server to the second device,” and “the
MARC server would learn the IP address of the second device when the
second device contacted the MARC server to request a resumption of the
session”); Tr. 23:18–24:5 (characterizing Dr. Mohapatra’s testimony as “a
recognition that at some point the middleware server knows what the second
device is”). Petitioner has provided sufficient evidence that Phan Helsinki
discloses “specifying a second device,” as recited in claim 1.
As to the remaining claims, claim 23 recites similar limitations to
claim 1. Claim 4 recites “accessing a device profile of said second device”
and “restructuring said session data5 to conform with said device profile of
said second device,” and claim 25 recites similar limitations. Petitioner cites

5 Claim 1 refers to a “session history” rather than “session data.” Based on
how the terms are used in the claims, and how “session history” is used in
the Specification, we conclude that a person of ordinary skill in the art
would understand the terms to refer to the same thing. See, e.g., claims 1
(“resuming said session on said second device with said session history”),
4 (“restructuring said session data to conform with said device profile of said
second device”), 8 (“reformatting said session history of said session to
conform with said device profile of said second device”).
IPR2015-00627
Patent 7,191,233 B2

22
Phan Helsinki’s disclosure of “[d]evice profiling” functionality in the
middleware server and Phan Helsinki’s disclosure of “[p]resentation
conversion” where “[m]iddleware servers fetch data based on user requests
. . . and perform conversion as needed.” See Ex. 1020, 9; Pet. 48–51 (citing
Ex. 1018 ¶ 92). Patent Owner disputes only the “specifying” step of claims
1 and 23, and we are not persuaded for the reasons explained above. See
PO Resp. 16–24. Based on the record presented during trial, Petitioner has
presented sufficient evidence showing that Phan Helsinki discloses every
limitation of claims 4, 23, and 25.
Based on all of the evidence of record, we determine that Petitioner
has shown, by a preponderance of the evidence, that claims 1, 4, 23, and 25
are anticipated by Phan Helsinki under 35 U.S.C. § 102(a).

4. Level of Ordinary Skill in the Art
Section 103(a) forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C.
§ 103(a)). Petitioner argues that a person of ordinary skill in the art would
have had “either (1) a Bachelor of Science in Computer Science, Computer
Engineering, Electrical Engineering, or an equivalent field as well as at least
2 years of academic or industry experience in the software field or (2) at
least four years of industry experience in the field of the ’233 Patent,” citing
the testimony of Mr. Hoarty. Pet. 20 (citing Ex. 1018 ¶¶ 48–50).
Dr. Mohapatra similarly testifies that a person of ordinary skill in the art
IPR2015-00627
Patent 7,191,233 B2

23
would have had “a Bachelor of Science degree in computer science or
computer engineering with approximately 2 years of practical work
experience or post-graduate research in a field such as computer networking
and/or distributed systems.” Ex. 2001 ¶ 11. Based on our review of the
’233 patent, the types of problems and solutions described in the ’233 patent
and cited prior art, and the testimony of the parties’ declarants, we conclude
that a person of ordinary skill in the art would have had a bachelor’s degree
in computer science or computer engineering (or its equivalent), and at least
two years of experience with computer networking, distributed systems, or
similar fields. See, e.g., Ex. 1001, col. 1, ll. 5–67 (disclosing that “[t]he
invention generally relates to session management in a distributed computer
network,” and describing issues in the prior art when a user has “several
communication-enabled devices” and wants to switch between them). We
apply this level of ordinary skill in the art for purposes of this Decision.

5. Obviousness Ground (Claims 4 and 25)
Petitioner has presented sufficient evidence that the combination of
Phan Helsinki and Phan San Jose teaches all of the limitations of claims 4
and 25, and that a person of ordinary skill in the art would have considered
their teachings regarding the same research project together and combined
their teachings. See Pet. 51–56. For example, with respect to claim 4, which
recites “accessing a device profile of said second device” and “restructuring
said session data to conform with said device profile of said second device,”
Petitioner cites Phan San Jose’s disclosure of content adaptation of data
based on a device profile for a particular client device. See id.; Ex. 1019,
7–9 (“[O]ur system is designed to allow for the filtration, or content
IPR2015-00627
Patent 7,191,233 B2

24
adaptation, of data sent from the MWS to the various clients. We can
specify the client’s characteristics in a device profile that will be made
available to the MWS.”). Petitioner contends that a person of ordinary skill
in the art would have combined the teachings of Phan Helsinki and Phan San
Jose because together they describe the same system, they are directed to the
same problem, and a person of ordinary skill in the art would have
understood that including content adaptation, as described in Phan San Jose,
would have been an improvement to the disclosed system. See Pet. 51–56
(citing Ex. 1018 ¶¶ 93–97, 102–103). Claim 25 recites a similar limitation
to claim 4.
Patent Owner argues that both references fail to teach or render
obvious the step of “specifying a second device” in claim 1, and that a
person of ordinary skill in the art would not have combined the ordering of
steps from the “push” mode in Phan San Jose with the “pull” mode
disclosure of Phan Helsinki. PO Resp. 24–31. As explained above, we are
persuaded that Phan Helsinki alone discloses “specifying a second device,”
which need not occur before the “discontinuing” step. See supra Sections
II.A.2, II.B.3. Patent Owner’s argument as to the challenged claims
depending from claims 1 and 23, therefore, is not persuasive.
Based on all of the evidence of record, we determine that Petitioner
has shown, by a preponderance of the evidence, that claims 4 and 25 are
unpatentable over Phan Helsinki and Phan San Jose under 35 U.S.C.
§ 103(a).

IPR2015-00627
Patent 7,191,233 B2

25
C. Grounds Based on Bates and Chan
Petitioner argues that claims 1 and 23 are anticipated by Bates under
35 U.S.C. § 102(e), and that claims 1, 4, 23, and 25 are unpatentable over
Bates and Chan under 35 U.S.C. § 103(a). Pet. 24–40. We have reviewed
the Petition, Patent Owner Response, and Reply, as well as the evidence
discussed in each of those papers, and are not persuaded, by a preponderance
of the evidence, that the challenged claims are unpatentable based on either
of the asserted grounds.

1. Bates
Bates describes a method of “sharing . . . browser information
between at least two browser applications.” Ex. 1004, col. 1, ll. 63–66.
A user may operate one browser program (e.g., Netscape Navigator) on a
first client computer, and then choose to use a different browser program
(e.g., Internet Explorer) on a second client computer. Id. at col. 4, ll. 41–47.
The first client computer stores “browser information” and transmits the
information to the second client computer for use with the second browser
program. Id. at col. 4, ll. 49–61. Bates describes the browser information as
“information generated during a browsing session, i.e., a period of time
when the browser 240 is executing on a client computer 106 and a network
connection exists between the client 106 and the network 104 allowing a
user to traverse network addresses corresponding to the servers 108.” Id. at
col. 4, ll. 61–67. For example, browser information may include a history of
websites visited during a browsing session, bookmarks, cookies, and
browser configurations. Id. at col. 4, l. 67–col. 5, l. 6.
IPR2015-00627
Patent 7,191,233 B2

26
Bates discloses various data input windows that allow the user to
input parameters for the transfer. Id. at col. 5, l. 47–col. 8, l. 54. The user
may enter “an e-mail address for a computer (e.g., a remote client computer
106) to which the browser information” will be sent. Id. at col. 5, ll. 51–56,
Fig. 3. Bates discloses an exemplary embodiment where browser
information is transmitted via email, but states that “any method or system
(e.g., file transfer protocol (FTP))” may be used. Id. at col. 3, ll. 21–26. The
user also may choose what browser information to share with the second
client computer and when. Id. at col. 5, l. 64–col. 8, l. 54, Figs. 4, 5. Figure
5 of Bates is reproduced below.

Figure 5 depicts a data input window that allows a user to “select when
browser information will be transmitted to a remote client computer 106,”
such as upon user request, at shutdown, or when the first client computer is
idle (“e.g., when the computer 106 enters a standby or hibernation mode”).
Id. at col. 7, l. 53–col. 8, l. 5. The first client computer transmits the browser
information (e.g., in an email message) to the second client computer
IPR2015-00627
Patent 7,191,233 B2

27
whenever such a “share event” occurs, and the second client computer uses
the information to configure its browser program. Id. at col. 8, l. 55–col. 10,
l. 55, Figs. 7, 8.

2. Anticipation Ground (Claims 1 and 23)
Independent claims 1 and 23 recite transmitting the session history of
a first device from the first device to a session transfer module “after said
session is discontinued on said first device.” Petitioner contends that Bates
discloses transmitting the session history (i.e., browser information, such as
website history, bookmarks, and browser configurations) after session
discontinuation, citing Bates’s disclosure of “terminat[ing] the browsing
session” and three “share events” shown in Figure 5: “upon user request,”
“at shutdown,” and “at idle period.” Pet. 26–31. Specifically, Petitioner
argues that
Figure 5 of Bates discloses that a user may choose when to send
the browser information (i.e., the session history), including
“upon user request,” “at shutdown” or “at idle period” . . . .
These time periods include time periods after discontinuation of
the session on the first computer. “At shutdown” on the first
computer, the session is “discontinued” because it would be
stopped, but could be resumed. A session entering an “idle
period” on the first computer would also be “discontinued”
because it would be stopped, but could be resumed. Finally, the
“upon user request” option of Bates allows for browser
information transmission at any number of user-selected times,
including after the session is discontinued on the first device.
Id. at 31 (citations and emphasis omitted). Petitioner cites the testimony of
Dr. Claypool and Mr. Hoarty in support. Id. (citing Ex. 1003 ¶ 122,
Ex. 1018 ¶¶ 63–64).
IPR2015-00627
Patent 7,191,233 B2

28
Patent Owner responds that Petitioner’s assertions as to when the
three share events occur with respect to discontinuation of the session on the
first client computer do not demonstrate that Bates discloses transmitting the
session history “after said session is discontinued on said first device,”
relying on the testimony of Dr. Mohapatra. PO Resp. 31–41 (citing
Ex. 2001 ¶¶ 51–55). According to Patent Owner, transmission does not
necessarily occur after discontinuation of the session in Bates, and it is
equally likely that transmission occurs during a session or concurrently with
the session being discontinued. Id. at 36–38. Patent Owner also points out
that Bates describes the sequence of events in Figure 7, including the
transmission of browser information (step 720), as occurring “during a
browsing session”—not after a session is discontinued on the first client
computer. Id. at 31–36 (citing Ex. 1004, col. 8, ll. 55–57).
Having reviewed all of the parties’ arguments and supporting
evidence, we conclude that Petitioner has not shown, by a preponderance of
the evidence, that Bates expressly or inherently discloses transmitting the
session history “after said session is discontinued on said first device.” See
Corning, 868 F.2d at 1255–56 (Fed. Cir. 1989) (“Anticipation requires that
every limitation of the claim in issue be disclosed, either expressly or under
principles of inherency, in a single prior art reference.”).
We begin by noting that there is nothing in Bates explicitly disclosing
when the alleged “session” ends. Bates, however, does disclose what occurs
during a “session.” The term “session” in the claims means a series of
information transactions between communicating devices during a particular
time period. See supra Section II.A.1. Bates uses the slightly different term
“browsing session,” which it defines as the “period of time when the
IPR2015-00627
Patent 7,191,233 B2

29
browser 240 is executing on a client computer 106 and a network connection
exists between the client 106 and the network 104 allowing a user to traverse
network addresses corresponding to the servers 108.” Ex. 1004, col. 4,
ll. 61–67. Thus, the “browsing session” in Bates is the period of time when
the browser program is “executing” on the client computer and the client
computer has an open connection to the network servers with which it is
communicating. During this time, the client computer in Bates generates
browser information in response to user input (e.g., by creating a history of
websites visited by the user). See id. at Abstract (“A first browser executing
on a first computer generates browser information in response to user
input.”), col. 9, ll. 17–46 (describing the generation and storage of browser
information in buffer 242), col. 2, ll. 2–10 (reciting “generating the
user-configured browser information during execution of a first network
browser on a first computer in response to user-input commands”), claim 1
(same). Accordingly, the alleged “session” in Bates (i.e., the series of
information transactions between communicating devices) occurs during the
time period of what Bates refers to as the “browsing session.”6

6 We do not agree with Petitioner that the term “browsing session” in Bates
is “broader” than “session” in the claims. See Reply 11. The terms are
directed to different concepts (“browsing session” referring to a period of
time and “session” referring to a series of information transactions), and it
cannot be said that one is “broader” than the other. Rather, a “session”
occurs during the “browsing session” period of time. Nor do we agree with
Petitioner that “Bates’s ‘browsing session’ . . . spans the time when there is a
network connection between the client and servers,” so “Bates’s ‘browsing
session’ may therefore span several claimed ‘sessions.’” See id. Bates
discloses that the “browsing session” is the period of time when a
connection exists and the browser program is executing. Ex. 1004, col. 4,
ll. 61–67. Petitioner’s argument ignores the latter.
IPR2015-00627
Patent 7,191,233 B2

30
Figure 7 of Bates depicts the steps performed by the client computer
“during a browsing session,” id. at col. 8, ll. 55–57, and is reproduced
below.

As shown in Figure 7, the client computer begins processing an event at
step 704, determines whether the event is a share event (e.g., “upon user
request,” “at shutdown,” or “at idle period”) at step 710, and transmits the
browser information at step 720. Id. at col. 8, l. 55–col. 9, l. 37. Thus, we
agree with Patent Owner and Dr. Mohapatra that transmission of the session
history in Bates occurs during the session, not after the session is
discontinued as required by the claims. See PO Resp. 31–36; Ex. 2001
¶¶ 50–51.
Petitioner also argues that the following disclosure in Bates discloses
the required session discontinuation:
IPR2015-00627
Patent 7,191,233 B2

31
[C]onsider a user reading messages posted on a bulletin board,
inputting data into a web page or performing some other task
during a browsing session. Prior to completing the task, the
user may be required to terminate a browsing session. In such
an event, the necessary browser information may be collected
and transmitted to a remote computer containing another
browser program.
Ex. 1004, col. 10, ll. 58–65; see Pet. 26–27. We are not persuaded that this
portion of Bates implies a sequential order for the last two sentences (i.e.,
that the browsing session is terminated before transmission of the browser
information). The fact that “the user may be required to terminate a
browsing session” before completing a task does not mean necessarily that
the browsing session actually is terminated at that time. To the contrary, as
discussed above, Bates’s description of Figure 7 indicates that transmission
of browser information occurs “during a browsing session.” See Ex. 1004,
col. 8, l. 55–col. 9, l. 37.
Petitioner further points to the three share events themselves (“upon
user request,” “at shutdown,” and “at idle period”) and argues that when
they occur, transmission of the session history necessarily would be after
discontinuation of the session. Pet. 31–32; Reply 9–10. Mr. Hoarty’s
corresponding testimony (agreeing with Dr. Claypool’s testimony) largely
repeats Petitioner’s arguments in the Petition. See Ex. 1018 ¶¶ 63–64. We
are not persuaded. Petitioner does not explain sufficiently or point to
sufficient supporting evidence showing that transmission must occur after
discontinuing the session in any of the three cited share events in Bates, as
would be required for a finding of inherency. See MEHL/Biophile Int’l
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (explaining that
inherency requires that “the prior art necessarily functions in accordance
IPR2015-00627
Patent 7,191,233 B2

32
with, or includes, the claimed limitations”). In particular, Petitioner points
to two portions of Dr. Mohapatra’s cross-examination testimony regarding
the idle period and shutdown procedures in Bates. Reply 9–10 (citing Ex.
1027, 89:3–14, 93:13–24). As explained above, however, Petitioner does
not account for the actual disclosure of Bates indicating that a “session”
would occur during the “browsing session” time period, which includes
transmission of the session history. See Ex. 1004, col. 8, l. 55–col. 9, l. 37.
Further, the second question posed to Dr. Mohapatra asked what he would
“expect” would happen in Bates, not what necessarily would happen, and so
is not directly probative on the issue of inherency. See Ex. 1027, 93:13–24.
Finally, Patent Owner explains in its Response why, for each of the three
share events cited by Petitioner, it is at least equally likely that transmission
occurs before discontinuing the session. PO Resp. 36–41. For example,
Dr. Mohapatra testifies that
a transmission that occurs “immediately upon user request” is
not necessarily concurrent with a transmission after a session is
discontinued. User requests may occur at any time, and are
especially likely to occur during a browsing session as a user
comes across interesting information or performs actions that
the user wishes to preserve as browsing history or other session
events. Therefore, it is equally, if not more, likely that such a
user request will be made (and a corresponding transmission of
session state effected) while the user is engaged in a current
session.
Ex. 2001 ¶ 52. We find Dr. Mohapatra’s testimony on these points
persuasive and supported by the disclosure of Bates. See id. ¶¶ 50–55.
Based on all of the evidence of record, we are not persuaded that
Bates discloses, either expressly or inherently, transmitting the session
history “after said session is discontinued on said first device,” as recited in
IPR2015-00627
Patent 7,191,233 B2

33
claims 1 and 23. Accordingly, we determine that Petitioner has not shown,
by a preponderance of the evidence, that claims 1 and 23 are anticipated by
Bates under 35 U.S.C. § 102(e).

3. Obviousness Ground (Claims 1, 4, 23, and 25)
Independent claims 1 and 23 each recite the transmission of a session
history of a first device from the first device to a session transfer module
“after said session is discontinued on said first device.” Claim 4 depends
from claim 1, and claim 25 depends from claim 23. In its asserted
obviousness ground, Petitioner relies solely on Bates as allegedly teaching
this limitation. See Pet. 26–31, 33–40. We are not persuaded for the reasons
explained above. See supra Section II.C.2. Petitioner relies on Chan only
for a teaching of a “session transfer module” and the limitations of the
dependent claims, and does not argue that the transmission limitation is
taught or suggested by the combined teachings of Bates and Chan. See
Pet. 33–40. Accordingly, based on all of the evidence of record, we
determine that Petitioner has not shown, by a preponderance of the evidence,
that claims 1, 4, 23, and 25 are unpatentable over Bates and Chan under
35 U.S.C. § 103(a).

III. ORDER
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1, 4, 23, and 25 are anticipated by Phan Helsinki under 35 U.S.C.
§ 102(a) and that claims 4 and 25 are unpatentable over Phan Helsinki and
Phan San Jose under 35 U.S.C. § 103(a). Petitioner has not demonstrated,
by a preponderance of the evidence, that claims 1 and 23 are anticipated by
IPR2015-00627
Patent 7,191,233 B2

34
Bates under 35 U.S.C. § 102(e) or that claims 1, 4, 23, and 25 are
unpatentable over Bates and Chan under 35 U.S.C. § 103(a).
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 4, 23, and 25 of the ’233 patent have been
shown to be unpatentable.
This is a final 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.
IPR2015-00627
Patent 7,191,233 B2

35
PETITIONER:

Eliot D. Williams
G. Hopkins Guy, III
BAKER BOTTS L.L.P.
eliot.williams@bakerbotts.com
hop.guy@bakerbotts.com

PATENT OWNER:

Tarek N. Fahmi
Holly J. Atkinson
ASCENDA LAW GROUP, PC
tarek.fahmi@ascendalaw.com
holly.atkinson@ascendalaw.com