IOENGINE, LLC

Patent Trials and Appeals Board

Jul 13, 2020

IPR2019-00416 (P.T.A.B. Jul. 13, 2020)

Trials@uspto.gov Paper 60
571-272-7822 Date: July 13, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

INGENICO INC.,
Petitioner,
v.
IOENGINE, LLC,
Patent Owner.

IPR2019-00416
Patent 8,539,047 B2

Before ELIZABETH M. ROESEL, SHEILA F. McSHANE, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Granting Petitioner’s Motion to Exclude
Dismissing Patent Owner’s Motion to Exclude
35 U.S.C. § 318(a); 37 C.F.R. § 42.64(c)

INTRODUCTION
A. Background and Summary
Ingenico Inc. (“Petitioner”) filed a Petition to institute an inter partes
review of claims 1–21, 23–25, 27, and 28 of U.S. Patent No. 8,539,047 B2
IPR2019-00416
Patent 8,539,047 B2
2
(Ex. 1001, “the ’047 patent”). Paper 1 (“Petition” or “Pet.”). IOENGINE,
LLC (“Patent Owner”) filed a Patent Owner Preliminary Response. Paper 6.
In accordance with our authorization (Paper 12), Petitioner filed a
Preliminary Reply (Paper 13, “Pet. Claim Construction Reply”) and Patent
Owner filed a Preliminary Sur-Reply (Paper 17, “PO Claim Construction
Sur-Reply”). We instituted an inter partes review of claims 1–21, 23–25,
27, and 28 of the ’047 patent on all grounds of unpatentability alleged in the
Petition. Paper 20 (“Institution Decision” or “Inst. Dec.”).
After institution of trial, Patent Owner filed a Response (Paper 35,
“PO Resp.”), Petitioner filed a Reply (Paper 39, “Pet. Reply”), and Patent
Owner filed a Sur-reply (Paper 43, “PO Sur-reply”).
Both parties also filed motions to exclude, which have been fully
briefed. See Papers 47, 51, 53 (briefing related to Petitioner’s Motion to
Exclude); Papers 48, 50, 55 (briefing related to Patent Owners’ Motion to
Exclude).
An oral hearing was held on March 31, 2020, and the record contains
a transcript of this hearing. Paper 59 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
follow, we determine that Petitioner has shown by a preponderance of the
evidence that claims 1–21, 23–25, 27, and 28 of the ’047 patent are
unpatentable.
B. Real Parties in Interest
Petitioner identifies (i) Ingenico Inc., (ii) Ingenico Corp., and (iii)
Ingenico Group S.A. as the real parties in interest. Pet. 3.
Patent Owner identifies IOENGINE, LLC as the real party in interest.
Paper 4, 2 (Patent Owner’s Mandatory Notices).
IPR2019-00416
Patent 8,539,047 B2
3
C. Related Matters
The parties identify the following district court proceedings involving
the ’047 patent: (i) Ingenico Inc. v. IOENGINE, LLC, No. 1:18-cv-00826-
UNA (D. Del.) and (ii) IOENGINE, LLC v. Paypal Holdings, Inc., No. 1:18-
cv-00452-UNA (D. Del.). Pet. 2–3; Paper 4, 2. The parties also identify
other inter partes review proceedings involving the ’047 patent and two
related patents, U.S. Patent Nos. 9,059,969 and 9,774,703. Paper 7, 2
(Patent Owner’s Revised Mandatory Notices); Paper 8, 2 (Petitioner’s
Updated Mandatory Notices).
Petitioner also identifies U.S. Application Nos. 15/712,714 and
15/712,780, which Petitioner states are pending patent applications that
claim the benefit of the ’047 patent. Pet. 3.
D. The ’047 Patent
The ’047 patent issued September 17, 2013, from an application filed
November 19, 2010, and asserts the benefit of an application, which was
filed March 23, 2004. Ex. 1001, codes (22), (45), (63).
The ’047 patent is titled “Apparatus, Method and System For a
Tunneling Client Access Point” and discloses “a tunneling client access
point (TCAP) that is a highly secure, portable, power efficient storage and
data processing device.” Ex. 1001, codes (54), (57). According to the ’047
patent, “the TCAP connects to an AT [(access terminal)] and a user employs
the AT’s user input peripherals for input, and views the TCAP’s activities on
the AT’s display.” Id. at code (57); see also id. at 2:52–3:6 (summarizing
the disclosure).
An objective of the ’047 patent is to provide a portable computing and
storage device “in an extremely compact form.” Ex. 1001, 1:19–21,
2:25–28. Another objective is to allow users “to employ traditional large
IPR2019-00416
Patent 8,539,047 B2
4
user interfaces they are already comfortable with” and to provide greater
portability, greater memory footprints, draw less power, and provide better
security for data on the device, as compared with personal digital assistants
(PDAs), such as the Palm Pilot. Id. at 1:21–24, 2:28–39.
To achieve these objectives, the ’047 patent discloses a TCAP that can
be plugged into a desktop or laptop computer and has “a highly portable
‘thumb’ footprint.” Ex. 1001, 2:39–42, 2:46–48; see also id. at 21:55–56
(“The TCAP may be packaged in plugin sticks, often, smaller than the size
of a human thumb.”). The TCAP uses the computer’s user interface and
input/output (I/O) peripherals, while providing its own storage, execution,
and/or processing resources. Id. at 2:43–46. According to the ’047 patent,
the TCAP provides “the equivalent of a plug-n-play virtual private network
(VPN)” and “accessing of remote data in an easy and secure manner.” Id. at
2:48–51.
Figure 1 of the ’047 patent is reproduced below:

IPR2019-00416
Patent 8,539,047 B2
5
Figure 1 illustrates a topology between a TCAP and a TCAP server.
Ex. 1001, 3:42–44. As shown in Figure 1, the topology includes remote
storage 105; servers 110, 115, and 120; communication networks 113a,
113b, and 113c; access terminals 127; TCAP 130; and user 133a. Id. at
3:44–53, 3:65–4:21, Fig. 1. According to the ’047 patent, TCAP 130 may
be connected to an AT 127, e.g., a server, workstation, desktop computer,
laptop, or PDA, by a universal serial bus (“USB”) connection or a wireless
protocol, such as Bluetooth or WiFi. Id. at 3:57–58. The ’047 patent
discloses that “[o]nce the TCAP has engaged with an AT, it can provide the
user with access to its storage and processing facilities.” Id. at 3:63–64.
According to the ’047 patent, “[i]f the AT is connected to a
communication network 113, the TCAP may then communicate beyond the
AT.” Ex. 1001, 3:65–66. In this manner, “the TCAP can provide extended
storage and/or processing resources by engaging servers 110, 115, 120,
which have access to and can provide extended storage 105 to the TCAP
through the AT.” Id. at 3:67–4:3. Such communications may occur over
various communications networks 113, such as the Internet, a local area
network (LAN), a wide area network (WAN), a high speed LAN, or a fiber-
channel. Id. at 4:3–10, 4:15–21.
The ’047 patent describes the user experience as follows:
Thus, to the user 133a, the contents of the TCAP 130
appear on the AT as being contained on the TCAP 125 even
though much of the contents may actually reside on the servers
115, 120 and/or the servers’ storage facilities 105. In these ways,
the TCAP “tunnels” data through an AT. The data may be
provided through the AT’s I/O for the user to observe without it
actually residing on the AT. Also, the TCAP may tunnel data
through an AT across a communications network to access
IPR2019-00416
Patent 8,539,047 B2
6
remote servers without requiring its own more complicated set
of peripherals and I/O.
Ex. 1001, 4:22–31.
Figure 10 of the ’047 patent is reproduced below:

IPR2019-00416
Patent 8,539,047 B2
7
Figure 10 is a block diagram illustrating a TCAP controller 1001, which
“may serve to process, store, search, identify, instruct, generate, match,
and/or update data within itself, at a TCAPS, and/or through an AT.”
Ex. 1001, 3:30–31, 21:45–52. Figure 10 shows that TCAP controller 1001
includes a central processing unit (“CPU”) 1003, system bus 1004, random
access memory (“RAM”) 1005, read only memory (“ROM”) 1006, interface
bus 1007, input output (“I/O”) interface 1008, storage interface 1009,
network interface 1010, storage device 1014, and power source 1086, among
other structures. Id. at 22:50–58, 23:21–25, 23:37–43, Fig. 10. The ’047
patent discloses that TCAP controller 1001 may be connected to access
terminal 1011b, which may be connected to user input devices, e.g.,
keyboard 1012a and mouse 1012b, and to communications network 1013.
Id. at 21:61–67.
E. Illustrative Claims
Petitioner challenges claims 1–21, 23–25, 27, and 28 of the ’047
patent. Pet. 1. Claims 1, 24, and 27 are independent claims. Claim 1 is
illustrative of the subject matter of the challenged claims, and reads as
follows:
1. A portable device, comprising:
(a) an external communications interface configured to
enable the transmission of a plurality of communications
between the portable device and a terminal comprising a terminal
processor, a first input component, a first output component, and
a network interface;
(b) a processor; and
(c) a memory having executable program code stored
thereon, including:
(1) first program code which, when executed,
causes an interactive user interface to be presented on the
IPR2019-00416
Patent 8,539,047 B2
8
first output component, wherein the interactive user
interface is configured to enable the user to cause the
portable device processor to execute program code stored
on the portable device memory;
(2) second program code which, when executed,
enables the portable device to (i) receive a communication
resulting from user interaction with the interactive user
interface and (ii) cause a communication to be sent
through the terminal network interface to a
communications network node; and
(3) third program code which, when executed by the
portable device processor in response to a communication
resulting from user interaction with the interactive user
interface, causes a communication to be transmitted to a
communications network node;
wherein the portable device is configured to effect the
display on the first output component of processing activity of
program code stored on the portable device memory; and
wherein the portable device is configured to communicate
with the terminal and to communicate through the terminal
network interface with the communications network node.
Ex. 1001, 30:61–31:27.
F. Prior Art and Asserted Grounds
Petitioner asserts that claims 1–21, 23–25, 27, and 28 would have
been unpatentable on the following grounds:
Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
1 1, 3, 4, 6–21, 23–25, 27, 28 102(b) Iida2

1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because
the ’047 patent issued from an application filed before March 16, 2013, we
apply the pre-AIA versions of the statutory bases for unpatentability.
2 US 2003/0020813 A1, published Jan. 30, 2003 (Ex. 1003).
IPR2019-00416
Patent 8,539,047 B2
9
Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
23 2 103(a) Iida, Genske4
3 5 103(a) Iida, Imbrie5
4 10, 17 103(a) Iida, Aganovic6
5 1–4, 6–21, 23–25, 27, 28 103(a) Iida, Genske
6 5 103(a) Iida, Genske, Imbrie
7
10, 17 103(a)
Iida, Genske,
Aganovic

ANALYSIS
A. Legal Standards
1. Anticipation
A patent claim is unpatentable under 35 U.S.C. § 102 if “the four
corners of a single, prior art document describe every element of the claimed
invention, either expressly or inherently, such that a person of ordinary skill
in the art could practice the invention without undue experimentation.”
Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.
Cir. 2000). “A single prior art reference may anticipate without disclosing a
feature of the claimed invention if such feature is necessarily present, or
inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958
(Fed. Cir. 2014). Moreover, the reference must also “disclose[] within the

3 Petitioner presented two alternative grounds for asserting that claim 2 is
unpatentable in light of Iida and Genske. In Ground 2, reflected in this row,
Petitioner argued Iida teaches all of the limitations recited in claim 1 and
relied on Genske solely for the additional limitation recited in claim 2. The
subsequent reference refers to Ground 5, in which Petitioner relied on the
combination of Iida and Genske to teach the limitations recited in claim 1.
4 US 2002/0065872 A1, published May 30, 2002 (Ex. 1004).
5 US 2002/0169002 A1, published Nov. 14, 2002 (Ex. 1005).
6 US 6,105,042, issued Aug. 15, 2000 (Ex. 1006).
IPR2019-00416
Patent 8,539,047 B2
10
four corners of the document not only all of the limitations claimed but also
all of the limitations arranged or combined in the same way as recited in the
claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
2008). However, “the reference need not satisfy an ipsissimis verbis test.”
In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
2. Obviousness
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
Supreme Court set out a framework for assessing obviousness under
35 U.S.C. § 103 that requires consideration of four factors: (1) the “level of
ordinary skill in the pertinent art,” (2) the “scope and content of the prior
art,” (3) the “differences between the prior art and the claims at issue,” and
(4) “secondary considerations” of non-obviousness such as “commercial
success, long felt but unsolved needs, failure of others, etc.” Id. at 17–18.
“While the sequence of these questions might be reordered in any particular
case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007), the U.S.
Court of Appeals for Federal Circuit has “repeatedly emphasized that an
obviousness inquiry requires examination of all four Graham factors and
that an obviousness determination can be made only after consideration of
each factor,” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016),
overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290
(Fed. Cir. 2017) (en banc).
B. Level of Ordinary Skill in the Art
Factors pertinent to a determination of the level of ordinary skill in the
art include “(1) the educational level of the inventor; (2) type of problems
encountered in the art; (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the technology; and
(6) educational level of active workers in the field.” Envtl. Designs, Ltd. v.
IPR2019-00416
Patent 8,539,047 B2
11
Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983)). Not all
such factors may be present in every case, and one or more of these or other
factors may predominate in a particular case. Id.
Petitioner argues that a person having ordinary skill in the art
would have had a Bachelor of Science degree in Electrical
Engineering, Computer Science, Computer Engineering or
related discipline, and experience in programming software and
firmware for computer peripheral devices and databases/servers
and would have had a working understanding of computer
hardware, operating systems, encryption, data storage, user
interfaces, and peripheral and portable device communication
protocols (e.g., parallel ports, serial ports, RS-232, USB,
Bluetooth, WiFi and the like).
Pet. 11–12 (citing Ex. 1002 ¶ 13).
In the Institution Decision, we adopted Petitioner’s description of a
person having ordinary skill in the art. Inst. Dec. 17–19.
Patent Owner does not challenge that determination. PO Resp. 3.
Accordingly, for the reasons given in the Institution Decision, we adopt
Petitioner’s proposed level of ordinary skill.
C. Claim Construction
We construe claims “using the same claim construction standard that
would be used to construe the claim in a civil action under 35 U.S.C.
282(b).” 37 C.F.R. § 42.100(b) (2020). Specifically, we apply the
principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
Cir. 2005) (en banc). Under that standard, the words of a claim are generally
given their “ordinary and customary meaning,” which is the meaning the
term would have to a person of ordinary skill at the time of the invention, in
the context of the entire patent including the specification. Phillips, 415
F.3d at 1312–13.
IPR2019-00416
Patent 8,539,047 B2
12
“[W]e need only construe terms ‘that are in controversy, and only to
the extent necessary to resolve the controversy . . . .’” Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999)).
Petitioner proposes claim constructions for six claim limitations:
“interactive user interface,” “communications network,” “WiFi,”
“intermediary node,” “router,” and “redundant array of independent disks.”
Pet. 12–16. In addition to addressing the construction of “interactive user
interface,” Patent Owner proposes a construction for the term “communicate
through the terminal network interface with the communications network
node” / “cause a communication to be sent through the terminal network
interface to a communications network node.” PO Resp. 10–29.
Having considered the arguments of the parties, both those directed to
claim construction and the prior art, we determine that the only terms in
need of explicit construction are “interactive user interface” and
“communicate through the terminal network interface with the
communications network node” / “cause a communication to be sent through
the terminal network interface to a communications network node.”
1. “Interactive User Interface”
a) The Parties’ Arguments
Petitioner argues that “interactive user interface” as recited in the ’047
patent is “a display with which a user may interact to result in the computer
taking action responsively.” Pet. 13; see also id. at 12–13 (discussing
reasons for the proposed construction). Specifically, Petitioner argues that
the term is not used in the Specification of the ’047 patent and that the
IPR2019-00416
Patent 8,539,047 B2
13
ordinary meaning of “a user interface is an interface that enables a user to
interact with a computer.” Id. at 12 (citing Ex. 1002 ¶ 28).
Petitioner further argues that “the interactive user interface is a display
presented on the output component of the terminal.” Pet. 13. According to
Petitioner, a number of displays are shown in the drawings of the ’047 patent
and some of “the displays respond to text inputs from an input component to
elicit a responsive action from the terminal.” Id. Petitioner further argues
that “[i]nteractive has been defined as ‘mutually or reciprocally active.’” Id.
(quoting Ex. 1020, 3).
Patent Owner argues that the phrase “interactive user interface” means
“a display containing interface elements with which a user may interact to
result in the terminal taking action responsively by responding to the user.”
PO Resp. 10.
With regard to interface elements, Patent Owner argues the concept of
interface elements “is introduced by direct reference to ‘interaction
interface elements.’” PO Resp. 10–11 (citing Ex. 1001, 1:52–62; Ex. 2099
¶ 43). Patent Owner further argues that “[t]he specification repeatedly
makes clear that interaction interface elements of the [interactive user
interface] are what allow the user to interact with, or ‘engage’ the
[interactive user interface].” Id. at 11; see also id. at 11–14. According to
Patent Owner, although the Specification contains qualifying language, the
“qualifying language simply indicates that the lists provide examples of the
necessary interaction interface elements—not that the interaction interface
elements are themselves optional.” Id. at 15 (emphasis omitted).
Patent Owner further argues that “[w]ithout interaction interface
elements the interface would lack ‘interactivity,’ i.e., it would present
information to a user but without any ability for the user to interact or
IPR2019-00416
Patent 8,539,047 B2
14
engage with it.” PO Resp. 16. Patent Owner also argues that Petitioner’s
expert agreed, in both his declaration and testimony, that an interactive user
interface has interaction interface elements and that users interact with the
interactive user interface through those elements. Id. at 16–17 (citing
Ex. 1002 ¶ 28; Ex. 2110, 15:10–16; Inst. Dec. 21); PO Sur-Reply 3 (citing
Ex. 1002 ¶ 28; Ex. 2110, 15:10–16; Ex. 1001, 26:9–14, Ex. 2099 ¶¶ 43–50).
Patent Owner also argues that its construction is consistent with the
description in a pioneering paper and the Board’s discussion of Iida in the
Institution Decision. PO Resp. 17–18 (citing Paper 20, 79).
With regard to taking action responsively, Patent Owner argues that
Petitioner agrees “that it is the terminal that must take action in response to
the user interaction.” PO Resp. 18–19 (emphasis omitted); see also PO Sur-
Reply 2. Patent Owner further argues that requiring the portable device to
take action renders other claim limitations superfluous and is inconsistent
with the use of an interactive user interface with products that do not have a
portable device. Id. at 19–21, 22–24. Patent Owner further argues that the
prosecution history “makes clear that it is the terminal that takes responsive
action to the user’s interaction with the [interactive user interface].” PO
Resp. 21.
In its Reply, Petitioner argues that it is the portable device that must
respond to the user interaction. See Pet. Reply 1–3. Specifically, Petitioner
argues this is supported by an example in the Specification and the claim
language, such as the third computer code limitation. Id.
Petitioner also argues that “[t]he claims do not require a ‘[graphical
user interface (GUI)]’ with ‘interface elements,’ as a GUI is only one type of
user interface the specification says ‘may’ be used.” Pet. Reply 3.
IPR2019-00416
Patent 8,539,047 B2
15
Additionally, Petitioner argues that “the user interacts with the [interactive
user interface] through manipulation of an input device.” Id. at 4.7
b) Our Analysis
In the Institution Decision, we concluded that, for purposes of
Institution, “interactive user interface” means “a display with which a user
may interact to result in the portable device taking action responsively.”
Inst. Dec. 25. Based on the arguments of the parties during the trial, we
determine that the original construction was erroneous. For the reasons set
forth below, we conclude that the term “interactive user interface”
encompasses “a display containing interface elements with which a user
may interact to result in a computer taking action responsively.” No further
construction is necessary.8 See Nidec, 868 F.3d at 1017.
In construing the claims, our analysis begins with, and remains
centered on, the language of the claims themselves. Interactive Gift
Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001).
“[A]lthough the specification often describes very specific embodiments of
the invention, [the Federal Circuit has] repeatedly warned against confining
the claims to those embodiments.” Phillips, 415 F.3d at 1323.

7 During the Oral Hearing, Petitioner also argued that requiring interface
elements was inconsistent with original claim 95, which recited an audio
user interface. Tr. 8:2–18. However, because that argument was not
presented in the Petition or Reply (see Tr. 26:10–20), it is not timely and we
do not consider it. See Patent Trial and Appeal Board Consolidated Trial
Practice Guide November 2019 (“CTPG”), 85–86, available at
https://www.uspto.gov/TrialPracticeGuideConsolidated.
8 For example, because none of the prior art involves an audio user
interface, we do not determine whether the limitation is broad enough to
encompass an audio user interface that does not use a display.
IPR2019-00416
Patent 8,539,047 B2
16
We agree with Patent Owner’s proposed construction to the extent it
requires “interface elements.” Both Petitioner and Patent Owner agree that
the “interactive user interface” must be interactive. See Pet. 13; PO Resp.
10. Moreover, Petitioner and its expert agree that the interaction is with
elements of the user interface—that is, interface elements. See Ex. 1002
¶ 28 (Geier Declaration) (“[A] user interface includes a combination of
elements . . . which create the way a user interacts with a computer.”);
Ex. 2110, 15:10–16 (“Q. . . . The point is that the interactive user interface
has to have elements with which the user interacts. Correct? A. . . .
[T]here’s going to be some sort of element that the user is going to interact
with.”); Pet. 12–13 (“This is consistent with a dictionary definition for ‘user
interface’ as being the ‘combination of menus, screen design, keyboard
commands, command language and help screen, which create the way a user
interacts with a computer.’” (citing Ex. 1019, 3)). Thus, an “interactive user
interface” requires a “display containing interface elements with which a
user may interact.”9
Additionally, we disagree with both Petitioner and Patent Owner that
the construction of “interactive user interface” should include an
identification of what responds to the interaction. See Pet. 12–13 (arguing
that interacting with an “interactive user interface” “result[s] in the computer
taking action responsively”); PO Resp. 18–24 (arguing that it is a specific

9 In view of the open ended term “such as” in the Specification, interface
elements are not limited to “computer interaction interface elements such as
check boxes, cursors, menus, scrollers, and window.” See Ex. 1001, 1:52–
56; PO Resp. 15 (acknowledging that this qualifying language “such as”
“indicates that the lists provide examples of the necessary interaction
interface elements”).
IPR2019-00416
Patent 8,539,047 B2
17
computer—the terminal—that must take responsive action). In light of that
agreement, the only issue for us to determine is which computer must take
the responsive action. And because claim 1 recites two different
computers—the terminal and the portable device—and does not specify
which computer takes responsive action to the user interaction with the
interactive user interface, Petitioner’s proposed construction conforms with
the claim language.
This construction is consistent with how a person having ordinary
skill in the art would understand the term user interface. Specifically, The
Computer Glossary defines a user interface as “[t]he combination of menus,
screen design, keyboard commands, command language and help screens,
which create the way a user interacts with a computer.” Ex. 1019, 3
(emphasis added). Consistent with our construction, it describes an interface
in terms of how a user interacts with a computer.
As Patent Owner correctly points out, not all interactive user
interfaces that exist generally in the art are associated with a portable device.
PO Resp. 20–21. Therefore, in contrast to the preliminary construction in
the Institution Decision, we do not define an interactive user interface as
requiring that the portable device respond to a user interacting with the
interface; instead, we simply refer to a generic computer.
Merely referring to a generic computer as opposed to identifying
either to terminal or portable device is consistent with the Specification of
the ’047 patent. For example, the Specification describes how, in response
to a user interacting with the interface, the AT (terminal) may treat the
TCAP (portable device) as memory and retrieve information from the
TCAP. Ex. 1001, 4:46–54. In that circumstance, the terminal is taking
responsive action. However, the Specification continues and describes how
IPR2019-00416
Patent 8,539,047 B2
18
in other cases, the TCAP processor handles the requirements to process and
spool files while the AT is used only as a mechanism for user input and
output. Id. at 4:54–65. Thus, the Specification of the ’047 patent supports
either computer taking responsive action.
Accordingly, for the reasons discussed above, we conclude that
“interactive user interface” means “a display containing interface elements
with which a user may interact to result in a computer taking action
responsively.”10
2. The Communication Limitation
a) The Parties’ Arguments
Claim 1 recites that second program code enables the portable device
to “cause a communication to be sent through the terminal network interface
to a communications network node,” that the third program code “causes a
communication to be transmitted to a communications network node,” and
that “the portable device is configured to communicate with the terminal and
to communicate through the terminal network interface with the
communications network node.” Ex. 1001, 31:11–19, 31:24–27. As a
shorthand, we refer to these limitations as the “communication limitation.”
Patent Owner argues that the “communication limitation” means to
“communicate/cause a communication to be sent through the terminal’s
network interface with the/to a communications network node, without the
terminal having access to information being communicated.” PO Resp. 24

10 We note that including “interface elements” in the construction is in
accordance with the position taken by Patent Owner related to this claim
term. See PO Resp. 10–24. We further note that the revised language—“to
result in a computer taking action responsively”—is taken from Petitioner’s
proposed construction. See Pet. 12–13.
IPR2019-00416
Patent 8,539,047 B2
19
(citing Ex. 2099 ¶¶ 57–64). Specifically, “[t]he concept of ‘tunneling’
through a terminal is of central importance to the ’047 Patent, appearing in
the title, abstract, summary of invention and throughout the specification.”
Id.; see also id. at 24–25 (discussing Specification); PO Sur-Reply 6. Patent
Owner further argues that:
The repeated and consistent emphasis on tunneling in
every embodiment in the patent, and in the patent’s title and
abstract, illustrates what the invention is overall: allowing two
trusted devices, a portable device and a network device, to
communicate with each other by tunneling information through
a third, untrusted “conduit” device, while preserving the security
of sensitive information by blocking the untrusted conduit device
from accessing it.
PO Resp. 26; see also id. at 26–27 (discussing the VirnetX11 line of cases);
PO Sur-Reply 6. According to Patent Owner, “requiring an explicit
definition, disavowal, or disclaimer of scope [is] an overly restrictive
approach rejected by the Federal Circuit in Phillips and its progeny.” PO
Sur-Reply 7.
Additionally, Patent Owner argues that Petitioner’s expert admitted
during his deposition that “a [person having ordinary skill in the art] would
have understood that, in the context of communications from one device
‘through’ an intermediary, to another, the content is not accessible to
intermediary devices.” PO Resp. 27; see also id. at 28 (quoting Mr. Geier’s
testimony); PO Sur-reply 7–8.

11 VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308 (Fed. Cir. 2014); Eon-Net
LP v. Flagstar Bancorp, 653 F.3d 1314 (Fed. Cir. 2011); GPNE Corp. v.
Apple Inc., 830 F.3d 1365 (Fed. Cir. 2016); In re Abbott Diabetes Care Inc.,
696 F.3d 1142 (Fed. Cir. 2012).
IPR2019-00416
Patent 8,539,047 B2
20
Petitioner argues Patent Owner improperly reads “without the
terminal having access to information being communicated” into the
“communication[] limitation.” See Pet. Claim Construction Reply 1–4
(emphasis omitted). According to Petitioner, in a district court proceeding
involving the ’047 patent, Patent Owner did not seek a construction of the
“communication[] limitation.” Id. at 1 (citing Ex. 1024). Petitioner further
argues that Patent Owner’s expert opined in that district court proceeding
that the claims of the ’047 patent do not require tunneling. Id. at 1–4 (citing
Ex. 1022 ¶ 48).
Petitioner also argues that Patent Owner’s proposed construction is
inconsistent with the use of “cause” in the “communication limitation.” Pet.
Claim Construction Reply 4–5. According to Petitioner, Patent Owner’s
expert opined that “[t]he claimed invention does not require that the portable
device or program code communicate with a network; it only requires they
cause a communication to be sent to a network.” Id. at 4 (quoting Ex. 1022,
20) (emphasis omitted). Petitioner argues that because the terminal
originates the communication with the communication network, it must have
access to the information being communicated: “If the terminal originates
the network communication, then the terminal certainly has access to the
information being communicated. Thus, [Patent Owner’s] current argument
for the ‘047 patent claims requiring ‘without the terminal having access to
information being communicated’ is clearly inconsistent with its prior
position.” Id. at 5 (emphasis omitted).
Petitioner also argues that Patent Owner’s proposed claim
construction “commits ‘one of the cardinal sins of patent law’ - importing a
limitation from the specification into the claims.” Pet. Reply 5. According
to Petitioner, “[w]here the patentee has not acted as its own lexicographer
IPR2019-00416
Patent 8,539,047 B2
21
and there is no clear and unmistakable disclaimer, such attempts to limit the
claims to an embodiment in the specification are improper.” Id. (citing
Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016)).
Petitioner further argues that, in this case, “[t]he Virnetx line of cases is
inapplicable because ‘through’ is a lay term having an ordinary meaning in
the context of communicating – ‘by way of.’” Id. (footnote omitted).
Petitioner also argues Mr. Geier’s testimony regarding “through” was
directed to Iida, not the ’047 patent or a general usage. Pet. Reply 5–6. For
example, Petitioner argues “Mr. Geier never said that the specification
requires that access is prevented; he only said that in Iida access would be
unnecessary to pass the communication through to a server.” Id. at 6.
b) Our Analysis
We are not persuaded by Patent Owner’s argument that the
“communication limitation” is limited to communication in which the
terminal does not have access to the transmitted information.
We start with the words of the claims. The claims do not expressly
recite “tunneling” or otherwise state that the terminal does not have access to
the information being communicated. See, e.g., Ex. 1001, 31:11–19, 31:24–
27 (“communication limitation” of claim 1). Thus, based on the ordinary
meaning of the words of the claims, the “communication limitation” does
not require tunneling—that is that the communication must take place
“without the terminal having access to information being communicated.”
IPR2019-00416
Patent 8,539,047 B2
22
This stands in contrast to the claims of the related ’006 patent.12
Unlike the claims of the ’047 patent, certain claims of the ’006 patent, such
as claim 1, specifically recite a “portable tunneling storage and processing
apparatus.” Ex. 1013, 30:60–31:43 (emphasis added). In addition to
reciting “tunneling” in the claim, claim 1 of the ’006 patent also explicitly
requires encrypting the data by the portable device, thus preventing the
terminal from accessing the data. Id. Encrypting data is a type of tunneling.
See Tr. 48:18–25. In fact, each and every claim of the ’006 patent explicitly
recites either tunneling or a type of tunneling (encryption). Id. at 49:1–6.
Thus, the claims of the ’006 patent demonstrate that the patent applicant
knew how to claim tunneling and the lack of similar language in the claims
of the ’047 patent shows that the patent applicant did not intend to so limit
the claims in the ’047 patent.
Although Patent Owner directs us to various portions of the ’047
patent that discusses tunneling or encrypting data, we do not read those
requirements from the Specification into the claims. The Federal Circuit has
held that that a patent applicant can act as his own lexicographer and limit
the scope of the claim based on statements in the Specification:
Our case law has recognized that “the specification may reveal a
special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess.” [Phillips,
415 F.3d] at 1316. When the patentee acts as its own
lexicographer, that definition governs. See id. “To act as its own
lexicographer, a patentee must ‘clearly set forth a definition of
the disputed claim term’ other than its plain and ordinary
meaning.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d

12 US 7,861,006 B2, issued Dec. 28, 2010 (Ex. 1013). The ’006 patent
issued from the parent application of the ’047 patent. See Ex. 1001, code
(63).
IPR2019-00416
Patent 8,539,047 B2
23
1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). We
have also found instances where “the specification may reveal an
intentional disclaimer, or disavowal, of claim scope.” Phillips,
415 F.3d at 1316. In those situations, it is again the inventor’s
disavowal that is dispositive of the claim construction. See id.
“To disavow claim scope, the specification must contain
‘expressions of manifest exclusion or restriction, representing a
clear disavowal of claim scope.’” Retractable Techs., Inc. v.
Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011)
(quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321,
1335 (Fed. Cir. 2009)).
Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 796–97 (Fed. Cir. 2019).
At most, the sections discuss various embodiments that, for example,
encrypt data. See, e.g., Ex. 1001, 13:2–4, 27:28–28:15. But it is not proper
to read limitations from embodiments into the claims:
Though understanding the claim language may be aided by the
explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004)). “[A]lthough the specification often describes very specific
embodiments of the invention, [the Federal Circuit has] repeatedly warned
against confining the claims to those embodiments.” Phillips, 415 F.3d
at 1323.
Not limiting the “communication limitation” to communications in
which the terminal does not have access to information being communicated
is also consistent with the ordinary meaning of the word “through.”
“Through” means “used as a function word to indicate movement into at one
side or point and out at another and especially the opposite side of,” “by way
IPR2019-00416
Patent 8,539,047 B2
24
of,” or “used as a function word to indicate passage from one end or
boundary to another.” Ex. 3002 (Merriam-Webster Dictionary). Based on
the ordinary meaning of the word “through,” the communication must travel
from the portable device to the communications node “by way of” the
terminal network interface of the terminal. But the ordinary meaning of the
word “through” does not prohibit the terminal from having access to the
information. Nor has Patent Owner directed us to anything in the ’047
patent that persuades us that the inventor intended to give “through” a
special meaning.
Nor are we persuaded by Patent Owner’s citations of VirnetX and its
progeny.
In VirnetX, the Federal Circuit’s construction was premised on the
undisputed assertion that the term “secure” did not have a plain and ordinary
meaning and had to be defined by reference to the specification. VirnetX,
767 F.3d at 1317 (“As an initial matter, we note that there is no dispute that
the word ‘secure’ does not have a plain and ordinary meaning in this
context, and so must be defined by reference to the specification.”). In this
case, as discussed above, “through” has an ordinary meaning. Accordingly,
it is inappropriate to rely on VirnetX to import limitations from the
specification into the claims. See Sanofi-Aventix U.S. LLC v. Mylan GmbH,
No. 17-9105 (SRC), 2019 WL 2067373 (D.N.J. May 9, 2019) (not applying
VirnetX because the claim limitation has an ordinary meaning).
Similarly inapplicable is GPNE. Although the Federal Circuit held
that the district court did not err by construing the term “node” to mean a
pager, it did so because (1) “GPNE concedes that the specification
consistently refers to ‘nodes’ as ‘pagers’” and (2) “the inventor’s Rule 131
declaration consistently and exclusively describes the invention as a system
IPR2019-00416
Patent 8,539,047 B2
25
of pagers.” GPNE, 830 F.3d at 1370–71. In contrast, Patent Owner has not
pointed to any language—let alone repeated and consistent language—in
which the ’047 patent states that “through” means a communication without
the terminal having access to information being communicated. See PO
Resp. 24–27. Although the cited sections of the ’047 patent discuss
tunneling and encrypting the data, there is nothing tying tunneling and
encrypting to the word “through” or the “communication limitation.”
Similarly inapplicable is Eon-Net. In Eon-Net, the Federal Circuit
held that the terms “file” and “document” are limited to information derived
from a hard copy document because the specification defined the invention
in those terms. Eon-Net, 653 F.3d at 1321–22. For example, in that case,
the specification stated that “[t]he invention is directed to a system for
efficiently processing information originating from hard copy documents,”
more specifically to “a hard copy document application program interface
which minimizes the need to manually process hard copy documents.” Id. at
1321 (emphasis added). Similarly, the court held that the summary of the
invention “defines the ‘invention’ as providing ‘an application program
interface which inputs a diversity of hard copy documents using an
automated digitizing unit and which stores information from the hard copy
documents in a memory as stored document information.’” Id. (emphasis
added). In contrast, in this case, Patent Owner does not point us to repeated
language tying tunneling to the invention. To the contrary, although the
abstract of the ’047 patent states that the TCAP “enables the user to observe
data stored on the TCAP without it being resident on the AT,” the abstract
uses the word “may” to indicate that tunneling the data through the AT to a
communication network is possible, but not required. Ex. 1001, code (57).
IPR2019-00416
Patent 8,539,047 B2
26
Additionally, the ’047 patent further describes how the AT (terminal)
may retrieve information from the TCAP. Id. at 4:50–54; see also id. at 6:9–
10 (describing how the TCAP “may be accessed and manipulated as a
standard storage device through the AT’s operating system”). The ability of
the terminal to retrieve data from the portable device implies that the
terminal can have access to the data. Thus, unlike in Eon-Net, the disclosure
is not consistent in describing the necessity of preventing the terminal from
having access to the data on the TCAP.
Also inapplicable is Abbott. In Abbott, the Federal Circuit held the
board’s claim construction was incorrect because (1) it was inconsistent with
disparaging remarks in the patent about external cables and wires and
(2) every embodiment showed a sensor without external cables in wires.
Abbott, 696 F.3d at 1149. In contrast, in this case, (1) not every embodiment
of the ’047 patent prevents the AT/terminal from retrieving data from the
TCAP (e.g., Ex. 1001, 4:50–54) and (2) Patent Owner has not identified any
disparaging remarks. Thus, Abbott is inapplicable to the facts of this case.
See Astek Holdings, Inc. v. CoolIT Sys. Inc., No. C-12-4498 EMC, 2013 WL
6327691, *6 (N.D. Cal. Dec. 3, 2013) (distinguishing Abbott where “[n]o
such disparagement of indirect coupling is contained in the specification at
issue in the case at bar”).
We are also not persuaded that Mr. Geier—Petitioner’s expert—
testified that “‘through’ an intermediary, to another, [means that] the content
is not accessible to intermediary devices.” See PO Resp. 27 (emphasis
omitted). Placing Mr. Geier’s testimony in context of the questions he was
asked—which focused on the disclosure of Iida—shows that he was simply
discussing how he believed the devices in Iida operated and not providing a
construction of the ’047 patent. See Ex. 2110, 117:15–120:1 (Geier Dep.).
IPR2019-00416
Patent 8,539,047 B2
27
Specifically, beginning on page 111 of the deposition, the questions focused
on Iida. Id. at 111:7–18. Then, in the middle of the testimony Patent Owner
relies upon, Mr. Geier explicitly refers to Iida:
Q. So you’re saying that information being transferred
through the terminal means that the terminal can’t access the
data?
A. I’m just giving you what I think a person of ordinary
skill in the art would understand. If you move content such as
image data from something like a camera to a server and it goes
through the terminal, that you wouldn’t -- that doesn’t mean
you’re going to be accessing it at the terminal. I imagine, and I
implement this, maybe you could, I don’t know why you’d want
to access it at the terminal if the intent is to move it from the
portable device to the server. And based on the way that Iida
explains the establishment of this communications network
through dialing through the access points and all this, that it’s
establishing an end-to-end communications network from the
camera to the server.
Id. at 117:15–118:10 (emphasis added). Nothing in the remainder of the
cited testimony would indicate that either the questions or answers related to
anything but Iida.
Moreover, Mr. Geier never testified that that terminal could not access
the data; instead, he simply stated that the terminal “wouldn’t be accessing
the content.” Ex. 2110, 118:15–119:4. The terminal not accessing the
content—because there is no need for it to do so—is not the same as the
terminal not having the ability to access the content.
Accordingly, we conclude that the “communication limitation” is not
limited to communications sent through the terminal without the terminal
having access to information being communicated. No further construction
of the term is required for the purposes of this Decision. See Nidec, 868
F.3d at 1017.
IPR2019-00416
Patent 8,539,047 B2
28
D. Ground 5: Obvious over Iida and Genske
Petitioner argues that claims 1–4, 6–21, 23–25, 27, and 28 would have
been obvious over Iida and Genske. Pet. 57–62; see also Pet. 17–53.
1. Iida (Ex. 1003)
Iida is titled “Image Photographing System” and discloses a digital
still camera and “an image saving area dedicated to the user [that] is opened
on an image server connected to the Internet.” Ex. 1003, codes (54), (57).
Iida discloses an image photographing and ordering system and method for
allowing a user to photograph images and to order prints. Id. at code (57),
¶ 2. The system includes a photographing device, such as a digital still
camera or a digital video camera, which is lent to a user in exchange for a
rental fee. Id. ¶ 12. The photographing device comprises “a communication
component which can communicate with a communication apparatus having
a function of communicating with an image server connected to a computer
network,” for example, the Internet. Id. ¶¶ 13, 14. According to Iida, the
communication apparatus is equipment that is possessed by the user and can
be carried by the user, such as a portable telephone, personal digital assistant
(PDA), wearable computer, or mobile computer. Id. ¶ 14.
Iida discloses an embodiment of an image photographing and ordering
system that includes digital still camera 12, portable terminal 14, and image
server 18 connected to the Internet. Ex. 1003 ¶¶ 57, 70, Figs. 1A, 1B, 1C,
2A, 2B. According to Iida, portable terminal 14 may be the user’s portable
telephone or a PDA, wearable computer, or mobile computer. Id. ¶¶ 57,
144.
IPR2019-00416
Patent 8,539,047 B2
29
Figure 2A of Iida is reproduced below.

Iida’s Figure 2A is a perspective view showing the external appearance of
digital still camera 12. Ex. 1003 ¶¶ 52, 58. As shown in Iida’s Figure 2A,
digital still camera 12 includes terminal 27 for transmitting/receiving
information between digital still camera 12 and an information processor
such as a personal computer (PC). Id. ¶ 58.
Figure 1A of Iida is reproduced below:

Iida’s Figure 1A is a block diagram showing the schematic construction of
digital still camera 12. Ex. 1003 ¶¶ 51, 57. As shown in Iida’s Figure 1A,
IPR2019-00416
Patent 8,539,047 B2
30
digital still camera 12 includes external I/F unit 55, wireless communication
unit 56, and antenna 58, among other structures. Id. ¶ 66. Iida discloses that
external I/F unit 55 is “for transmitting/receiving information to/from the PC
via the terminal 27.” Id. According to Iida, “[a]n antenna 58 is connected to
the wireless communication unit 56 for performing wireless communication
via the antenna 58 with the portable terminal 14 possessed by the user.” Id.
Figure 1B of Iida is reproduced below:

Iida Figure 1B is a block diagram showing the schematic construction of
portable terminal 14. Ex. 1003 ¶¶ 51, 57, 68. According to Iida, portable
terminal 14 may be the user’s portable telephone or a PDA, wearable
computer, or mobile computer. Id. ¶¶ 57, 144.
As shown in Iida Figure 1B, terminal 14 includes control unit 60,
display unit 62, operating unit 64, wireless communication units 66 and 68,
and antennas 78 and 80, among other structures. Id. ¶ 68. According to
IPR2019-00416
Patent 8,539,047 B2
31
Iida, control unit 60 comprises a CPU, a ROM and a RAM. Id. Display unit
62 comprises an LCD. Id. Operating unit 64 comprises “a ten-keys, touch
pad or the like.” Id. Iida discloses that wireless communication unit 66 and
antenna 78 communicate with a telephone network, and wireless
communication unit 68 and antenna 80 communicate with camera 12. Id.
¶ 69. According to Iida, the telephone network is connected via the Internet
to image server 18, which comprises storage medium 88 having image data
saving areas where users of rented digital still cameras 12 can store image
data. Id. ¶ 70, Fig. 1B.
Figure 6A of Iida is reproduced below.

Iida Figure 6A shows an example menu screen that is displayed on the
display unit 62 of portable terminal 14. Ex. 1003 ¶¶ 56, 83. Under the
control of control unit 52 of camera 12, information for expressing the menu
screen is read from the camera’s ROM and transmitted to portable terminal
14 via wireless communication units 56 (of camera 12) and 68 (of terminal
14). Id. ¶ 83. Control unit 60 of portable terminal 14 analyzes the received
information and uses it to display the menu screen on display unit 62. Id.
IPR2019-00416
Patent 8,539,047 B2
32
The user can select a menu item by inputting a number assigned to that item
using operating unit 64 of portable terminal 14. Id. ¶¶ 84, 85, Fig. 4A (steps
206, 208). Control unit 60 transmits the user’s selection to digital still
camera 12, where it is processed by control unit 52. Id. ¶¶ 84, 85 (Figs. 4B–
4D).
Figures 6E, 6F, and 6H of Iida are reproduced below.

Iida Figures 6E, 6F, and 6H show menu screens for allowing a user to select,
save, and order prints of photographed images. Ex. 1003 ¶¶ 93–107, 126–
138. From the menu screen in Figure 6A, the user can select the menu item
“Check a photographed image” or the menu item “Browse My Scene
Folder.” Id. ¶¶ 83, 93, 126. When either of these menu items is selected, a
plurality of numbered photographed images is displayed on display unit 62
of portable terminal 14 to create an image selection screen, as shown in
Figure 6E. Id. ¶¶ 93–96, 126–128, Fig. 4C (step 232), Fig. 4D (steps 254–
262). Using operating unit 64, the user may input an instruction for scrolling
(changing-over) the image selection screen to display additional images. Id.
¶¶ 97, 98, 130, 131. From the image selection screen, the user may select
one of the images by inputting its number using operating unit 64, and the
IPR2019-00416
Patent 8,539,047 B2
33
selected image is then enlarged and displayed on an image check screen
(Figure 6F) or a browse screen (Figure 6H). Id. ¶¶ 94, 96, 97, 99, 100, 130–
133, Fig. 4C (step 236), Fig. 4D (step 266). From the image check screen
(Figure 6F), the user may select whether to save the displayed image. Id.
¶¶ 99, 101–107, Fig. 4C (steps 238–250). From the browse screen (Figure
6H), the user may select whether to order prints of the displayed image. Id.
¶¶ 132, 135–138, Fig. 4D (steps 268–276).
Iida discloses that a user may elect to have a photographed image
saved either to a PC possessed by the user or to a folder in an image data
saving area dedicated to the user on a storage medium associated with image
server 18, which Iida refers to as “My Scene Folder.” Ex. 1003 ¶¶ 76, 99,
101, 105, 106, Figs. 1C, 4C (step 241), 6F. If the user’s PC has been
designated as the save destination for the image, the user connects digital
still camera 12 to the user’s PC with a communication cable and the
photographed image data is transferred and saved to a built-in hard disk
drive (HDD) or storage medium of the user’s PC. Id. ¶ 106, Fig. 4C (step
249). If, on the other hand, the “My Scene Folder” has been designated as
the save destination for the image, then the photographed image data to be
saved in the image data saving area is transferred to image server 18 via
portable terminal 14, a specified access point, and the Internet. Id. ¶¶ 107,
113, 114, Fig. 4C (steps 242, 244, and 246).
2. Genske (Ex. 1004)
Genske is titled “System and Method for Dynamic Uploading and
Execution of Applications and Drivers Between Devices” and is directed to
“a digital camera device . . . which may be occasionally connected to a
multitude of different ‘host’ devices, such as a PalmTM handheld computer or
a cellular phone.” Ex. 1004 ¶ 21, code (54). Genske describes the “basic
IPR2019-00416
Patent 8,539,047 B2
34
system,” including digital camera hardware (id. ¶¶ 22–43), “host” computer
hardware (id. ¶¶ 44–52) and basic system software (id. ¶¶ 53–55). Genske
discloses that computer software stored on the host computer for directing
the operation of the host computer includes “a graphical user interface
(GUI),” which receives “user commands and data in a graphical (e.g., ‘point-
and-click’) fashion.” Id. ¶¶ 54, 55. According to Genske, these inputs may
be acted upon by the host computer in accordance with instructions from the
host computer’s operating system or the client applications modules stored
in the host computer’s fixed storage. Id.
3. Analysis of Claims 1, 24, and 2713
a) Undisputed Claim Limitations
Claim 1 recites, inter alia,
[a] portable device comprising: (a) an external
communications interface configured to enable the transmission
of a plurality of communications between the portable device and
a terminal comprising a terminal processor, a first input
component, a first output component, and a network interface;
(b) a processor; and (c) a memory having executable program
code stored thereon . . . .”
Ex. 1001, 30:61–31:2.
Petitioner argues Iida teaches each of those limitations. See Pet. 17–
19 (citing Ex. 1002 ¶¶ 45–47; Ex. 1003). Specifically, Petitioner argues
“Iida’s portable digital camera 12 has all the hardware components required
of the portable device by claim 1, including the ‘external communications

13 Petitioner and Patent Owner rely on substantially the same arguments for
claims 1, 24, and 27. See Pet. 40 (stating that “the detailed explanation of
anticipation [for claims 24 and 27] can be found above with regard to claim
1”); PO Resp. 50–62 (arguing claims 1, 24, and 27 as a group). Although
we refer to claim 1, our analysis applies equally to claims 24 and 27.
IPR2019-00416
Patent 8,539,047 B2
35
interface’ configured to communicate with a ‘terminal.’” Id. at 17 (citing
Ex. 1002 ¶¶ 45–46); see also id. at 18–19 (citing Ex. 1003 ¶¶ 65, 66, 68, 69,
111, Figs. 1A, 1B; Ex. 1002 ¶ 45). Petitioner further argues “[t]he terminal
referred to in claim 1 corresponds to Iida’s ‘portable terminal 14,’ which
also has all the hardware components that claim 1 sets forth for the
terminal.” Id. at 17 (citing Ex. 1002 ¶¶ 45–46); see also id. at 18–19 (citing
Ex. 1003 ¶¶ 68, 69, Fig. 1B; Ex. 1002 ¶ 45). Petitioner also argues Iida’s
camera 12 includes “an external communications interface (‘wireless
communication unit 56’) for communicating with terminal 14, which has all
the elements set forth in claim 1 for the terminal, including its own network
interface (‘first wireless communication unit 66’)” for communicating with
the internet. Id. at 18 (citing Ex. 1002 ¶ 45; Ex. 1003 Fig. 1C). In addition,
Petitioner argues Iida’s camera 12 includes its own processor and memory
that reside within the camera. Id. at 18–19 (citing Ex. 1002 ¶ 45; Ex. 1003
¶ 65).
Claim 1 further recites “wherein the portable device is configured to
effect the display on the first output component of processing activity of
program code stored on the portable device memory.” Ex. 1001, 31:20–23.
Petitioner argues Iida teaches that limitation. See Pet. 26. Specifically,
Petitioner argues Iida teaches that “[c]amera 12 causes the display of
processing activity of program code. For example, it causes displays of the
updating of the number of shots left (see [0089]), the saving of image data
(see step 252 in Fig. 4C), and printing (see step 276 of Fig. 4D and [0136]).”
Id. (citing Ex. 1002 ¶ 51); see also id. (citing Ex. 1003 ¶ 89).
Based on the undisputed evidence before us and the reasons set forth
in the Petition, including the Geier Declaration, which are not addressed by
Patent Owner (see generally PO Resp.), we find that Iida teaches “a portable
IPR2019-00416
Patent 8,539,047 B2
36
device” including a “portable device comprising: (a) an external
communications interface configured to enable the transmission of a
plurality of communications between the portable device and a terminal
comprising a terminal processor, a first input component, a first output
component, and a network interface; (b) a processor; and (c) a memory
having executable program code stored thereon” and “wherein the portable
device is configured to effect the display on the first output component of
processing activity of program code stored on the portable device memory”
as recited in claim 1.
a) “First Program Code . . .”
Claim 1 further recites that the executable program code stored in the
portable device’s memory includes “first program code which, when
executed, causes an interactive user interface to be presented on the first
output component, wherein the interactive user interface is configured to
enable the user to cause the portable device processor to execute program
code stored on the portable device memory.” Ex. 1001, 31:3–8. As a
shorthand, we refer to this limitation as “the first program code.”
(1) Petitioner’s Arguments
Petitioner argues Iida teaches “the first program code.” Pet. 19–21.
Specifically, Petitioner argues Iida’s “Camera 12 is not provided with a
display and instead uses the terminal’s display unit 62 to show images.” Id.
at 21 (citing Ex. 1003 ¶¶ 59, 82, 95, 99). Petitioner further argues that “the
user acts upon items presented on the display screen to effect a responsive
action by the computer process running according to the flow charts of Figs.
4A-4D.” Id. (citing Ex. 1002 ¶ 48). According to Petitioner, by selecting a
choice on the screen—such as by a key or touch pad—the “selection
determines what computer process happens next.” Id. (citing Ex. 1003
IPR2019-00416
Patent 8,539,047 B2
37
¶ 68). Petitioner further argues that the software for executing the functions
is stored in the memory of camera 12, which “has control unit 52 that
executes the code.” Id. (citing Ex. 1003 ¶ 65).
Petitioner further argues that a person of ordinary skill in the art
would have substituted a graphical user interface (“GUI”), such as the type
discussed in Genske, in place of Iida’s menu screens. See Pet. 57–62.
Specifically, Petitioner argues Genske teaches that a terminal, such as a
Palm handheld computer, can include a GUI. Id. at 57 (citing Ex. 1004
¶¶ 21, 55, Fig. 2). Petitioner further argues that a person of ordinary skill in
the art would have understood how to develop software for presenting
graphical user interfaces on a variety of devices including “clickable inputs
such as buttons, checkboxes, graphical icons or clickable text for users to
directly interact with by use of a cursor or touch screen.” Id. at 58–59
(citing Ex. 1002 ¶¶ 91–92; Ex. 1004 ¶ 123; Ex. 1018). Petitioner also argues
that a person having ordinary skill in the art would have used code for a
graphical user interface in order for the camera to communicate with devices
that use a graphical user interface. Id. at 59–60 (citing Ex. 1002 ¶¶ 95–97).
According to Petitioner, the GUI of Genske is an “interactive user interface”
as recited in claim 1. Id. at 58–60.
Petitioner also argues that a person having ordinary skill in the art
would have combined the teachings of Iida with Genske’s GUI in order “to
accommodate communication with terminals having a GUI, such as GUI
215 and the GUI in a Palm™ handheld computer disclosed by Genske.” Pet.
59 (citing Ex. 1002 ¶ 95); see also Pet. Reply 19 (“To satisfy customers who
own Palm PDAs, a [Person of Ordinary Skill in the Art (“POSITA”)] would
have written suitable code for a camera to implement Iida’s photographing
system.”). Petitioner further argues that “[t]o deprive owners of the GUI on
IPR2019-00416
Patent 8,539,047 B2
38
their phones or PDAs, would be contrary to the purpose of Iida of making a
camera that can communicate through the devices possessed by the user.”
Pet. 59 (citing Ex. 1002 ¶ 96).
(2) Patent Owner’s Arguments
Patent Owner argues that Petitioner has not shown “that the GUI is
configured to enable the user to cause the portable device processor to
execute code.” PO Resp. 53. According to Patent Owner, although Genske
mentions a GUI, “[t]here is no disclosure or discussion of using that GUI to
interact with the camera of Genske.” Id. Patent Owner further argues that
Genske’s “communications with the server are not based on user interaction
with an interface on the phone at all,” instead, Patent Owner argues that
“Genske discloses that the camera has its own interface to receive input from
users.” Id. at 54.
Patent Owner also argues that “the GUI is only described in the
computer embodiment, never in the phone embodiment.” PO Resp. 55; see
also id. at 58 (arguing that “[t]he computer embodiment should be given no
weight because is not relevant for the proposed combination with Iida’s
camera-based system”). Moreover, according to Patent Owner, even the
phone-camera embodiment “has no communication channel that both
responds to communications resulting from user interaction, and causes a
communication to be sent to the server.” Id. at 55.
Patent Owner also presents four arguments relating to the reason to
combine Iida and Genske. See PO Resp. 50–52, 57–63; PO Sur-reply 16–
18. Patent Owner’s arguments will be discussed in more detail in our
analysis section.
IPR2019-00416
Patent 8,539,047 B2
39
(3) Our Analysis
Petitioner has shown that the combination of Iida and Genske teaches
the “first program code” limitation recited in claim 1. Specifically, Iida
teaches that camera 12—which Petitioner maps to the portable device—
includes “[a] control unit 52, which includes a CPU [and] a ROM (which
stores therein a program for executing digital camera control processing to
be explained later).” Ex. 1003 ¶ 65. Iida further teaches that “the control
unit 52 reads, from the ROM or the like, information which expresses the
menu screen . . . and instructs this unit 56 to transmit the information to the
portable terminal 14.” Id. ¶ 83. Therefore, Iida teaches a camera (the
portable device) that stores computer code for generating menus (first
program code) in its memory.
The menu screens are displayed on the display unit of the portable
terminal. Ex. 1003 ¶¶ 82, 83. A user may input a response to the
information displayed on the various menu screens via the operating unit of
the portable terminal. Id. ¶ 84. After the user inputs a response, the
information is transmitted from the portable terminal to digital camera. Id.
The portable camera then determines “which of the choices displayed on the
menu screen has been selected” and implements that choice. Id. For
example, this can result in a new menu screen being displayed on the
portable device. Id.
Additionally, Genske teaches that a camera can be connected to a
number of different computers—including a mobile computer such as a
Palm handheld computer—and that some of those computers—including the
Palm handheld computer—have a graphical user interface “for receiving
user commands and data in a graphical (e.g., ‘point-and-click’) fashion.”
Ex. 1004 ¶¶ 21, 55; see also Ex. 1002 ¶ 90. Because a user directly interacts
IPR2019-00416
Patent 8,539,047 B2
40
with interface elements of Genske’s graphical user interface to enter
commands, Genske teaches using an “interactive user interface” as recited in
claim 1. See Ex. 1002 ¶¶ 90, 92, 97; Ex. 2099 ¶¶ 43, 48.
Petitioner has also shown why a person of ordinary skill in the art
would have upgraded the menu screens disclosed in Iida to a graphical user
interface of the type disclosed in Genske. See Ex. 1002 ¶¶ 85–97.
Specifically, a person having ordinary skill in the art would have designed a
product that would take advantage of the graphical user interface of devices,
such as the Palm handheld computer, that used a graphical user interface.
See Ex. 1002 ¶¶ 95, 97. That is, a person having ordinary skill in the art
would have implemented the various menu screens taught by Iida so that
they would be presented as a graphical user of the type used in Genske. See
Ex. 1002 ¶ 95. Accordingly, a person having ordinary skill in the art would
have combined Iida’s camera with Genske’s GUI and that combination
teaches the “first program code” limitation recited in claim 1.
We do not agree with Patent Owner’s arguments. With regard to the
teachings of the references, Patent Owner focuses narrowly on the elements
of Genske and how incorporating those elements into Iida would not result
in the “first program code” limitation. See PO Resp. 53–56. However,
“[t]he question in an obviousness inquiry is whether it would have been
obvious to a person of ordinary skill in the art to combine the relevant
disclosures of the two references, not whether each individual reference
discloses all of the necessary elements.” Game & Tech Co. v. Wargaming
Grp. Ltd., 942 F.3d 1343, 1352 (Fed. Cir. 2019). Additionally, “[t]he test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the relevant issue is “what
IPR2019-00416
Patent 8,539,047 B2
41
the combined teachings of the references would have suggested to those of
ordinary skill in the art.” Id. “Combining the teachings of references does
not involve an ability to combine their specific structures.” In re Nievelt,
482 F.2d 965, 968 (CCPA 1973); see also In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (“It is well-established that a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.” (citing In re Etter, 756 F.2d 852,
859 (Fed. Cir. 1985) (en banc))).
The issue presented by Petitioner’s obviousness ground is not whether
it would have been obvious to incorporate various elements from Genske
into Iida. The relevant issue is whether it would have been obvious to
modify Iida’s menu screens to be an interactive graphical user interface, like
the one disclosed in Genske. Pet. 59. As discussed above, the answer to that
question is yes.
We also do not agree with any of Patent Owner’s four arguments
relating to the reason to combine Iida and Genske.
First, Patent Owner argues that a person having ordinary skill in the
art would have no reason to combine Iida and Genske. See PO Resp. 50–52;
PO Sur-reply 16–17. Specifically, Patent Owner argues that the evidence
shows what a person having ordinary skill in the art “could” have done, not
what they would have done and that Iida and Genske “have conflicting
purposes and radically different approaches.” PO Resp. 51–52; PO Sur-
reply 16–17. Patent Owner further argues that because a GUI can still have
a prompt-based text interface in a window, “Petitioner’s purported
motivation to combine is thus inapposite.” PO Resp. 52.
We do not agree. Although Mr. Geier occasionally uses the word
“could” in his testimony, taken as a whole, his testimony discusses what a
IPR2019-00416
Patent 8,539,047 B2
42
person having ordinary skill in the art would have done. Compare Ex. 1002
¶ 90 (describing what a user could do), with ¶ 95 (describing how a person
having ordinary skill in the art would have combined the references). Thus,
Mr. Geier’s testimony focuses primarily on what a person having ordinary
skill in the art would have been motivated to do and provides a sufficient
reason to combine Iida and Genske. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”), cited with approval in KSR, 550 U.S. at 418.
We also do not agree with Patent Owner that Iida and Genske are so
different that a person of ordinary skill in the art would not have combined
them. Prior art is analogous and may be used in combination to prove that a
claimed invention would have been obvious when the different references
are: (1) from the same field of endeavor as the claimed invention; or
(2) reasonably pertinent to the particular problem faced by the inventor, if
the art is not from the same field of endeavor. In re Bigio, 381 F.3d 1320,
1325–26 (Fed. Cir. 2004). “The Supreme Court’s decision in KSR . . .
directs us to construe the scope of analogous art broadly.” Wyers v. Master
Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). “The field of endeavor of a
patent is not limited to the specific point of novelty, the narrowest possible
conception of the field, or the particular focus within a given field.”
Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016).
Although Patent Owner’s argument focuses on the specific point of
novelty of each of the references, that is not the proper analysis. Instead, we
must broadly consider the field of endeavor. See Unwired, 841 F.3d at 1001.
That is, although the point of novelty of Iida may be the use of an
IPR2019-00416
Patent 8,539,047 B2
43
inexpensive camera and the point of novelty of Genske may be injecting
software from the camera to a terminal, in a broader sense they both—like
the ’047 patent—relate to connecting portable devices such as cameras to
computer terminals. See, e.g., Ex. 1003, code (57) (“After the user
photographs images with the digital still camera, image data for images,
which the user selects, is saved in the image data saving area via a portable
apparatus . . . .”); Ex. 1004 ¶ 21 (“In particular, the following description
focuses on an embodiment of the present invention in a digital camera
device, the currently-preferred embodiment, which may be occasionally
connected to a multitude of different ‘host’ devices, such as a Palm™
handheld computer or a cellular phone.”); see also Ex. 1002 ¶ 79 (“[B]oth
Genske and Iida are directed to digital cameras that can communicate with
devices like cellular phones or PDAs or mobile computers. . . .”). More
importantly, Petitioner has shown that a person having ordinary skill in the
art would have been motivated to modify Iida’s menu screens to be an
interactive graphical user interface, like the one disclosed in Genske, in
order to take advantage of touch screens and graphical user interfaces
available on devices, such as the Palm handheld computer. See Ex. 1002
¶¶ 95, 97. Therefore, Petitioner has shown that a person having ordinary
skill in the art would have had a reason to combine the specific teachings of
Iida and Genske.
We are not persuaded by Patent Owner’s argument that, having made
the decision to use a GUI such as used in Genske, the person having
ordinary skill in the art would have used text elements instead of taking
advantage of the interface elements of a GUI. It makes no sense to upgrade
Iida’s menu screens to a GUI without taking advantage of the GUI’s
interactive “point-and-click” capabilities. See Ex. 1002 ¶ 96.
IPR2019-00416
Patent 8,539,047 B2
44
Second, Patent Owner argues that “modifying Iida with Genske would
be ineffective because the basic functionality and purpose of Iida is
incompatible with that of Genske.” PO Resp. 57 (citing Ex. 2099 ¶ 127);
see also id. at 57–58. Specifically, Patent Owner argues “the Petition fails to
provide any explanation of how—or if—injection of software would work in
the Iida system, or with users’ mobile phones of varying makes and models
and employing varying operating systems and versions.” Id. at 57. Patent
Owner further argues that “replacing the mobile phone with a robust
computer” of Genske’s GUI embodiment would “defeat Iida’s purposes of
providing a rental camera that works on-the-go with a mobile phone that the
user carries with them.” Id. at 58; see also PO Sur-reply 18–19 (discussing
Genske’s different embodiments).
We do not agree. As discussed above, the issue is not whether a
person having ordinary skill in the art would have combined all of Genske
with all of Iida, but whether a person having ordinary skill in the art would
have combined Genske’s teaching of a GUI to upgrade the menu screens in
Iida. See Keller, 642 F.2d at 425; Nievelt, 482 F.2d at 968; Mouttet, 686
F.3d at 1332. Although Patent Owner argues that combining the entirety of
Iida and Genske would be ineffective, Patent Owner has not argued that that
the specific modifications Petitioner relies on would be ineffective. As such,
Patent Owner’s argument misses the mark.
Moreover, contrary to Patent Owner’s argument, Genske teaches a
mobile device with a GUI, not just a computer. See PO Resp. 58 (arguing
“that the standard computer GUI is only used in Genske’s computer
embodiment, never in the phone embodiment”). Specifically, Genske
teaches using a Palm handheld, which uses a GUI. See Ex. 1004 ¶ 21
(discussing the Palm handheld computer); Ex. 1002 ¶ 90 (“The Palm™
IPR2019-00416
Patent 8,539,047 B2
45
handheld computer . . . was known to include a touch screen for use in
interacting with a GUI.”).
Third, Patent Owner argues combining Iida and Genske will reduce
terminal compatibility. PO Resp. 58–60; PO Sur-reply 17–18. Specifically,
Patent Owner argues that “replacing Iida’s text interface with a GUI on the
portable apparatus would make it compatible with fewer, not more, devices
circa 2004.” PO Resp. 58; see also PO Sur-reply 17. According to Patent
Owner, because “many push-button phones that existed in 2004 could not
have supported a GUI, modifying Iida’s camera to us a GUI would have
defeated Iida’s purpose of providing users with a rental camera compatible
with the widest possible range of user devices.” PO Resp. 59; see also PO
Sur-reply 17. Instead, according to Patent Owner, a person having ordinary
skill in the art would have used Iida’s static image which “would make the
camera compatible with the vast majority of portable phones at the time.”
PO Sur-reply 18 (citing Ex. 2099 ¶¶ 131–138); PO Resp. 59–60.
We do not agree with Patent Owner that a reduction in terminal
compatibility teaches away from combining Iida and Genske. Patent
Owner’s economics argument is inapposite. “That a given combination
would not be made by businessmen for economic reasons does not mean that
persons skilled in the art would not make the combination because of some
technological incompatibility.” In re Farrenkopf, 713 F.2d 714, 718 (Fed.
Cir. 1983); Velander v. Garner, 348 F.3d 1359, 1368 (Fed. Cir. 2003)
(“expense, time, and effort involved” are distinct from likelihood of
success). Thus, although Patent Owner may have provided reasons why a
business person might not have wanted an interface with limited use, Patent
Owner’s reasons do not rebut the evidence that shows what a person having
ordinary skill in the art would have been motivated to do.
IPR2019-00416
Patent 8,539,047 B2
46
Moreover, Mr. Geier testified, based on actual past business practice,
that a businessperson at the relevant time would have made multiple
products for different customer bases:
Q. Wouldn’t the designer have to consider the situation in
which the -- some users would want to have a GUI but other users
might have flip phones with no GUI?
A. I imagine there’s a range of customers that they have.
Again, it’s just like at Monarch Marking Systems, we had a
portable device that had a DOS-based operating system that you
would write software that would have more character-oriented
menus versus we also had a PDA, a Palm III that was integrated
within that barcode scanner that we could develop GUI
applications in. We would sell the GUI ones to the ones that
wanted GUIs and we’d write the applications with a graphical
user interface using Windows-type development tools. And the
other we developed with DOS programming languages. So we
had a product -- two different products, one for one customer
base and one for another customer base.
Ex. 2110, 255:11–256:7 (emphasis added). We find Mr. Geier’s testimony,
which is based on his real world experience, credible and persuasive.
On the other hand, Dr. Butler’s opinion is not supported by any
testimony regarding how businesses actually responded to that issue. See
Ex. 2099 ¶¶ 131–132. Accordingly, we find Mr. Geier’s testimony more
credible and find that a businessperson would have sought a product that
would give certain customers a GUI while providing a non-GUI user
interface for those who did not have a compatible phone.
Fourth, Patent Owner argues that “[t]he substantial technical
challenge in giving Iida’s camera the ability to switch between a GUI and
non-GUI interface . . . would have dissuaded a” person having ordinary skill
in the art from making the combination. PO Resp. 61–62. Specifically,
Patent Owner argues the version of Java at the relevant time would not
IPR2019-00416
Patent 8,539,047 B2
47
support Java’s Remote Method Invocation (RMI) feature. Id. at 61 (citing
Ex. 2099 ¶¶ 140–144). According to Patent Owner, “[w]ithout Java RMI, a
[person having ordinary skill in the art] would have to develop a suitable
protocol from scratch,” which would have involved substantial effort. Id.
(citing Ex. 2099 ¶¶ 140–144). Patent Owner argues Petitioner’s motivation
to combine argument is deficient because it does not “address such tradeoffs
and alternative designs.” Id. at 62.
We do not agree. Petitioner did not rely on the RMI feature to enable
the combination; instead, Mr. Geier’s testimony submitted with the Petition
focused on using a different Java tool:
[A person having ordinary skill in the art] would have known to
use Java’s AWT (Abstract Window Toolkit) and Swing to
implement the GUI’s user interface screens, comprising buttons,
checkboxes and menus for users to interact with. Moreover,
Genske includes a full description of the Java environment,
incorporated by reference from a Java white paper.
Ex. 1002 ¶ 92 (citing Ex. 1004 ¶ 123; Ex. 1018). Mr. Geier further testified
as to how the person having ordinary skill in the art would have used those
features to create a GUI. Id. Mr. Geier also testified that “to program a
camera of Iida so that it produces displays and interactions on a graphical
user interface of a terminal disclosed by Genske would have involved well-
known methods predictably yielding a system that can perform the
communication functions taught by Iida.” Id. Finally, Mr. Geier testified
how a person having ordinary skill in the art could have implemented that
program code on the camera to “send[] instructions to a terminal to display
menus and graphics on the terminal’s GUI display” without RMI. See id.
¶ 94. Because Petitioner and Mr. Geier were not relying on RMI to create
the GUI for Iida’s camera, it is not relevant that RMI was not available.
IPR2019-00416
Patent 8,539,047 B2
48
This is consistent with the disclosure of the ’047 patent. During the
oral hearing, Patent Owner was asked how the ’047 patent enabled the
protocols that Dr. Butler indicated would have involved substantial effort to
be developed by scratch. Tr. 32:22–34:3. In response, Patent Owner
identified columns 28 through 29 of the’047 patent. Id. at 44:17–45:7.
However, the cited section of the Specification simply states that an “access
terminal module enabling access of information between the TCAP and
access terminal may be developed by employing standard development tools
such as . . . Java.” Ex. 1001, 28:59–67. Notably, there is no disclosure of
the protocols that Dr. Butler testified would require “substantial effort.” See
Ex. 1001, 28:46–29:14; Ex. 2099 ¶ 144. Instead, the ’047 patent simply
identifies the same tools—standard Java development tools—that Mr. Geier
testifies the person having ordinary skill in the art would have used.
Compare Ex. 1001, 28:46–29:14, with Ex. 1002 ¶¶ 92–95. Because Dr.
Butler’s testimony is inconsistent with the enabling disclosure of the ’047
patent, we find his testimony regarding the substantial effort needed to
develop the necessary programing not credible.
Accordingly, for the reasons discussed above, it would have been
obvious to a person having ordinary skill in the art to upgrade Iida’s menu
screens to a GUI such as the type used in Genske.
b) “Second Program Code Which . . . Cause[s] a
Communication to Be Sent . . .”
Claim 1 further recites that the executable program code stored in the
portable device’s memory includes “second program code which, when
executed, enables the portable device to (i) receive a communication
resulting from user interaction with the interactive user interface and
(ii) cause a communication to be sent through the terminal network interface
IPR2019-00416
Patent 8,539,047 B2
49
to a communications network node.” Ex. 1001, 31:9–14. As a shorthand,
we refer to this limitation as the “second program code.”
(1) The Parties’ Arguments
Petitioner argues Iida teaches “the second program code.” Pet. 21–24.
Specifically, Petitioner argues the steps disclosed in Iida’s Figure 4C “are
performed by control unit 52 of camera 12, based on program code stored on
the camera’s ROM.” Id. at 24 (citing Ex. 1003 ¶¶ 54, 65). Petitioner further
argues “these steps generate a user interface on the terminal’s screen (step
236), receive instructions from the user (steps 238-241), and transfer image
data over network 16 to a server (steps 242-246).” Id. (citing Ex. 1002
¶ 49). Petitioner also argues “[t]he image data transferred from camera 12 to
image server 18 passes to and through various communication network
nodes including, access point 86, nodes on the Internet and image server
18.” Id. (citing Ex. 1002 ¶ 49).
Petitioner further argues that it does not matter that the terminal
“include[s] code establishing itself as a node on a network.” Pet. Reply 11.
According to Petitioner, “[t]he fact that the terminal must take[] such action
is not relevant to whether the camera (portable device) includes code that
enables it to cause a communication to a communications network node as
claimed.” Id. Petitioner also argues that Iida functions in the same manner
as the terminal and device in the ’047 patent. Id. (citing Ex. 1001, 3:65–66).
Patent Owner argues Iida does not teach the “second program code.”
PO Resp. 40–43; PO Sur-reply 11–13, 20–21. Specifically, Patent Owner
argues that certain of Iida’s steps—such as step 242—that Petitioner is
relying on “cannot meet the element because the necessary code is not
stored on the camera of Iida.” PO Resp. 40; see also id. at 41 (“Step 242,
includes execution of code stored on (and executed by) the phone (terminal)
IPR2019-00416
Patent 8,539,047 B2
50
of Iida to provide necessary location information.” (emphasis omitted)
(citing Ex. 1003 ¶¶ 20–22, 107–109, 112, 127, Figs. 4C–D, 5; Ex. 2110,
143:13–155:2)). According to Patent Owner, Iida does not meet the “second
program code” element because, in Iida, a communication cannot be sent
through the terminal network interface to a communications network node
“without executing program code stored on the phone.” Id. at 42 (citing Ex.
2099 ¶¶ 93–95).
Patent Owner further argues that Iida does not disclose the
“communication limitation” that is part of the “second program code.” PO
Resp. 37–39; PO Sur-reply 11. Specifically, Patent Owner argues “there is
no disclosure in Iida of any ability to secure communications between the
camera and server, or to prevent the portable apparatus of Iida from having
access to images being sent or saved.” PO Resp. 38 (citing Ex. 2099 ¶ 51).
(2) Our Analysis
Petitioner has shown that the combination of Iida and Genske teaches
the “second program code” limitation recited in claim 1. Specifically, Iida
teaches using code stored on the camera to “determine[] whether or not any
instruction has been inputted by the user, and when the determination is
affirmative, the routine proceeds to one of several branches of processing in
accordance with a content of the inputted instruction.” Ex. 1003 ¶ 96; see
also id. ¶ 101. Iida further teaches that as a result of that communication
from the user, the camera sends data—such as image information—through
portable terminal 14 to an access point over the internet. Id. ¶ 114; Ex. 1002
¶ 49. Accordingly, Iida teaches the “second program code” limitation.
Although Patent Owner argues that communication-related program
code and functionality are stored on Iida’s terminal (PO Resp. 40–42),
Patent Owner’s argument is not sufficient to defeat Petitioner’s showing that
IPR2019-00416
Patent 8,539,047 B2
51
program code stored on Iida’s camera (portable device) performs the
functions recited in claim 1 for “second program code.” Pet. 21–24; Ex.
1002 ¶ 49; Ex. 1003 ¶¶ 54, 65. The “second program code” is required to
perform two actions: (1) receive a communication and (2) cause a
communication to be sent. Ex. 1001, 31:9–14. Nothing in the claim
language requires that all communication-related program code resides on
the portable device, as opposed to the terminal. Nor does the claim require
that the second program code determines where the information will be sent,
how the communication link is created, or what specific path will be used.
Although Iida’s step 242 is performed by the terminal to establish a
communication link, it is the camera that receives a communication and
causes a communication to be sent over the communication link established
by the terminal. See Ex. 1003, Fig. 4C.
Moreover, Iida’s description of using the terminal to establish a link
with a communications network is consistent with the description of how the
’047 patent operates. Specifically, the ’047 patent refers to the TCAP as
being able to use a communications network that the terminal is connected
to. Ex. 1001, 3:65–66.
Patent Owner’s remaining argument regarding the “communication
limitation” is premised on a claim construction that would prevent Iida’s
portable terminal 14 from having access to the information passing through
it. However, because we rejected that claim construction, Patent Owner’s
arguments are not commensurate with the scope of the claims. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).
c) “Third Program Code . . .”
Claim 1 further recites that the executable program code stored in the
portable device’s memory includes “third program code which, when
IPR2019-00416
Patent 8,539,047 B2
52
executed by the portable device processor in response to a communication
resulting from user interaction with the interactive user interface, causes a
communication to be transmitted to a communications network node.”
Ex. 1001, 31:15–18. As a shorthand, we refer to this limitation as the “third
program code.”
Petitioner argues that the combination of Iida and Genske teaches “the
third program code.” Pet. 24–26, 57–62. Specifically, Petitioner argues
Iida’s “Fig[ure] 4D shows step 278 (which generates the user interface of
Fig. 6I), step 280 (which receive[s] and process[es] the instructions from the
user), and step [282] (which cause[s] a communication from control unit 52
to be transmitted to a communications network node, e.g., image server
18).” Id. at 26; see also id. at 24–25 (citing Ex. 1003 ¶¶ 54, 139, 140).
Petitioner further relies on Genske for teaching a graphical user interface and
user interaction with that interface. Id. at 57–62. According to Petitioner,
the combination of Iida and Genske’s graphical user interface teaches the
“third program code.” Id. at 60–61.
As discussed above in Section II.D.3(b)(3), Genske teaches a
graphical user interface that a user interacts with and a person of ordinary
skill in the art would have had sufficient rationale to upgrade Iida’s menu
screens to present a graphical user interface. Furthermore, Iida’s camera 12
will perform specific steps, including causing a communication to be sent,
based on what the user inputs. See Sections II.D.3(b)(3), II.D.3(c)(2); see
also Ex. 1003, Fig. 4D. Accordingly, the combination of Iida and Genske
teaches “the third program code” limitation.
Patent Owner relies on the same arguments discussed above regarding
the “first program code.” PO Resp. 53–56. For the reasons discussed above
IPR2019-00416
Patent 8,539,047 B2
53
in Section II.D.3(b)(3), we do not agree with Patent Owner’s arguments
directed to the interactive user interface.
Additionally, Patent Owner argues that if Petitioner’s arguments are
premised on simply replacing Iida’s menu screens with Genske’s GUI, there
is no “third program code.” PO Sur-Reply 20. We disagree. We find that,
with the exception of the user interface being an interactive user interface,
Iida teaches all of the limitations recited in the “third program code”
limitation. Upgrading Iida’s menu screens to a graphical user interface like
Genske’s would not eliminate that functionality. See Ex. 1002 ¶¶ 93–95.
d) “Wherein the Portable Device Is Configured to Communicate
with the Terminal and to Communicate through the Terminal
Network Interface with the Communications Network Node”
Claim 1 further recites “wherein the portable device is configured to
communicate with the terminal and to communicate through the terminal
network interface with the communications network node.” Ex. 1001,
31:24–27.
Petitioner argues Iida teaches this limitation. See Pet. 26–27.
Specifically, Petitioner argues that Iida discloses that “camera 12
communicates with terminal 14 and communicates through its network
interface (first wireless communication unit 66) with the communication
network node, including any of access point 86, nodes on the Internet 16 and
the image server 18.” Pet. 27 (citing Ex. 1003 ¶¶ 66, 69, 113, Fig. 1C); see
also Pet. 26 (citing Ex. 1003 ¶¶ 66, 69, 113, Fig. 4D).
Patent Owner argues, for the same reasons discussed above relating to
the “communication limitation” that Iida does not disclose this limitation.
See PO Resp. 37–39; PO Sur-reply 11 (summarized in Section II.D.3(c)(1),
above).
IPR2019-00416
Patent 8,539,047 B2
54
For the reasons discussed above in Section II.D.3(c)(2), Petitioner has
shown that Iida teaches this limitation.
e) Objective Indicia of Nonobviousness14
Patent Owner also presents arguments and evidence of objective
indicia of nonobviousness that we consider below. PO Resp. 63–64; PO
Sur-reply 22–23.
Objective indicia of nonobviousness may include long-felt but
unsolved need, failure of others, unexpected results, commercial success,
copying, licensing, industry praise, and expert skepticism. Mintz v. Dietz &
Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012). “[O]bjective indicia
may often be the most probative and cogent evidence of nonobviousness in
the record,” and “help turn back the clock and place the claims in the context
that led to their invention.” Id. at 1378. Evidence of objective indicia of
nonobviousness “must always when present be considered en route to a
determination of obviousness.” Transocean Offshore Deepwater Drilling,
Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012); see
also Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016)
(en banc).
Objective indicia of nonobviousness are “only relevant to the
obviousness inquiry ‘if there is a nexus between the claimed invention and
the [objective indicia of nonobviousness].’” In re Affinity Labs of Tex., LLC,
856 F.3d 883, 901 (Fed. Cir. 2017) (quoting Ormco Corp. v. Align Tech.,
Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)). For objective indicia of

14 Although we only discuss the objective evidence of nonobviousness in
this section, the same analysis applies to determining whether each
challenged claim was obvious over the asserted prior art.
IPR2019-00416
Patent 8,539,047 B2
55
nonobviousness to be accorded substantial weight, their proponent must
establish a nexus between the evidence and the merits of the claimed
invention. ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir.
2016).
As the Federal Circuit recently explained, “a patentee is entitled to a
rebuttable presumption of nexus between the asserted evidence of secondary
considerations and a patent claim if the patentee shows that the asserted
evidence is tied to a specific product and that the product ‘is the invention
disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366,
1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). That is, presuming
nexus is appropriate “when the patentee shows that the asserted objective
evidence is tied to a specific product and that product ‘embodies the claimed
features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v.
Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). On the other hand,
the patentee is not entitled to a presumption of nexus if the patented
invention is only a component of a commercially successful machine or
process. Id. Once “the patentee has presented a prima facie case of nexus,
the burden of coming forward with evidence in rebuttal shifts to the
challenger . . . to adduce evidence to show that the commercial success was
due to extraneous factors other than the patented invention.” Demaco, 851
F.2d at 1392–93.
However, “[a] finding that a presumption of nexus is inappropriate
does not end the inquiry into secondary considerations.” Fox Factory, 944
F.3d at 1373. “To the contrary, the patent owner is still afforded an
opportunity to prove nexus by showing that the evidence of secondary
considerations is the ‘direct result of the unique characteristics of the
IPR2019-00416
Patent 8,539,047 B2
56
claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135,
140 (Fed. Cir. 1996)). “Ultimately, the fact finder must weigh the secondary
considerations evidence presented in the context of whether the claimed
invention as a whole would have been obvious to a skilled artisan.”
Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 33 (PTAB
Jan. 24, 2020) (precedential) (citing WBIP, LLC v. Kohler Co., 829 F.3d
1317, 1331 (Fed. Cir. 2016)).
(1) Commercial Success
Patent Owner argues that “[t]he invention of the ’047 Patent has been
a commercial success.” PO Resp. 63. Patent Owner directs us to two jury
verdicts in which the juries “found infringement by dozens of different
products and collectively awarded over $12 million in damages for the sale
of tens of thousands of infringing units.” Id. (citing Ex. 2021; Ex. 2022).
According to Patent Owner, “[t]he objective commercial success of products
embodying the claimed invention is independent of any particular prior art
reference.” PO Sur-reply 22.
Petitioner argues that “[t]he two litigations referenced by Patent
Owner were completed before the Iida patent was revealed in this inter
partes review and thus they have no bearing on this proceeding.” Pet.
Reply 24.
Patent Owner does not provide an analysis demonstrating that the
infringing products were coextensive (or nearly coextensive) with the
challenged claims. See PO Resp. 63. We, therefore, find that a presumption
of nexus is inappropriate. See Lectrosonics, Paper 33 at 33; Fox Factory,
944 F.3d at 1374.
Nor has Patent Owner shown a nexus between the argued commercial
success and the merits of the claimed invention. Patent Owner’s evidence
IPR2019-00416
Patent 8,539,047 B2
57
establishes that products that infringed the claims of the ’047 patent were
sold. See Ex. 2011 (jury verdict finding infringement); Ex. 2012 (jury
verdict finding infringement). However, because there is no evidence that
the alleged commercial success is due to claimed elements—either
individually or as a whole—Patent Owner has not established the required
nexus. Simply establishing that a product infringes the patent is not enough
to show a nexus. See Fox Factory, 944 F.3d at 1377 (holding that a prima
facie case of nexus cannot be made by simply showing that “the patent
claims broadly cover the product that is the subject of the evidence of
secondary considerations”).
Moreover, even if a nexus had been shown, there is insufficient
evidence to show that the infringing products were a commercial success.
The jury verdict forms simply identify the products found to infringe the
’047 patent and the amount of damages. See Ex. 2021; Ex. 2022. There is
no evidence—such as a high market share—establishing that those products
were a commercial success. See, e.g., In re Applied Materials, Inc., 692
F.3d 1289, 1300 (Fed. Cir. 2012) (“An important component of the
commercial success inquiry in the present case is determining whether
Applied had a significant market share.”); Huang, 100 F.3d at 140 (“This
court has noted in the past that evidence related solely to the number of units
sold provides a very weak showing of commercial success, if any.”); In re
Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991) (“[I]nformation
solely on numbers of units sold is insufficient to establish commercial
success.”). Without more information, there is insufficient evidence to
establish that the tens of thousands of infringing units were a commercial
success.
IPR2019-00416
Patent 8,539,047 B2
58
(2) Licensing
Patent Owner argues that it has “licensed the ’047 Patent to
Interactive Media Corp. (d/b/a ‘Kanguru Solutions’).” PO Resp. 63 (citing
Ex. 2113). Petitioner does not address licensing. See Pet. Reply 24.
First, Patent Owner has not argued that the licensed products are
coextensive with the claims of the ’047 patent, accordingly, there is no
presumption of a nexus. See Lectrosonics, Paper 33 at 33.
Second, Patent Owner does not identify or explain any nexus between
the challenged claims and the licensing activity. Based on the evidence cited
by Patent Owner, the ’047 patent is one of several patents that were licensed.
See Ex. 2113 (stating that Kanguru “maintains a licensing agreement for the
IOENGINE portfolio” including, amongst several others, the ’047 patent).
However, there is no evidence linking the demand for the license to the ’047
patent as opposed to the other patents in the IOENGINE portfolio.
Third, Patent Owner simply submits a copy of a website indicating
that products are licensed, not a copy of the license agreement or any other
underlying evidence regarding the circumstances of, or driving forces
behind, the license agreements. The mere existence of a license, without
more specific information about the circumstances surrounding the license,
is not a good indicator of nonobviousness. See EWP Corp. v Reliance
Universal Inc., 755 F.2d 898, 907–08 (Fed. Cir. 1985). The current record
therefore does not indicate whether these licenses arose out of recognition
and acceptance of the claimed subject matter or for some other reason.
(3) Industry Recognition/Skepticism
Patent Owner also argues “the invention of the ’047 Patent was met
with skepticism in the industry” and praise. PO Resp. 64. As evidence,
Patent Owner directs us to Exhibit 2114.
IPR2019-00416
Patent 8,539,047 B2
59
As discussed below with regard to the evidentiary motions (Section
H.1), we grant Petitioner’s motion to exclude exhibit 2114 and, therefore,
there is no evidence supporting Patent Owner’s contention the claimed
invention was met with skepticism and received industry recognition.
Accordingly, we give those factors no weight.
However, even if Exhibit 2114 was admissible, Patent Owner has not
sufficiently shown a nexus between the objective evidence of
nonobviousness and the claimed invention.15
According to Petitioner, Exhibit 2114 does not establish a nexus
because it does not “describe the claimed invention in sufficient detail” and
“speaks generally about many ideas and fails to establish that the subject of
the letter is the invention claimed in the ’047 patent.” Paper 47, 3 (citing Ex.
2114, 1–3); see also Paper 53, 3–4 (“Patent Owner does no more than draw
vague inferences to the claimed invention. This is not enough.”).
Patent Owner argues that a sufficient nexus is shown because Exhibit
2114 discusses the ’047 patent and its embodiments. Paper 51, 6.
Specifically, Patent Owner argues Mr. Harkabi refers to features relating to
Figures 5, 6, 7, and 8 of the ’047 patent. Id. at 6–7.
In this case, because Patent Owner does not offer any evidence
establishing that the claimed invention is coextensive with the product
discussed in the letter, there is no presumption of nexus. See Lectrosonics,
Paper 33 at 33.

15 We note that neither of the parties addressed nexus in their substantive
briefs. The only discussion of nexus is in connection with Petitioner’s
Motion to Exclude.
IPR2019-00416
Patent 8,539,047 B2
60
Moreover, Patent Owner has not met its burden of establishing a
nexus between the industry praise and skepticism purportedly shown in
Exhibit 2114 and the claimed invention. Specifically, the sections quoted by
Patent Owner to show skepticism are related to an operating system. See PO
Resp. 64 (citing Ex. 2114, 1). Patent Owner has not argued or presented any
evidence that a new operating system is required by the challenged claims of
the ’047 patent. Id.; see also Ex. 2114, 1. Similarly, the language quoted for
industry praise is in a section relating to a business plan for working with
Pepsi. Compare PO Resp. 64 (quoting Ex. 2114), with Ex. 2114, 2–3
(section titled “Pepsi”). There is simply no evidence tying those plans to the
challenged claims or showing that the claims are coextensive with the
business plan. See Lectrosonics, Paper 33 at 34 (finding “Patent Owner has
not demonstrated a nexus exists between the evidence presented and the
merits of the claimed invention because the evidence is directed to features
that are not required by the claims”).
(4) Conclusions on Objective Indicia of Nonobviousness
For the reasons explained above, we conclude that Patent Owner’s
evidence purportedly showing commercial success, licensing, industry
praise, and skepticism is not sufficient to outweigh Petitioner’s evidence of
obviousness of the challenged claims.
f) Conclusion on Obviousness
We have considered the entirety of the evidence submitted by the
parties, including the objective evidence of nonobviousness, and determine
that Petitioner has shown by a preponderance of the evidence that claims 1,
24, and 27 of the ’047 patent would have been obvious over Iida and
Genske.
IPR2019-00416
Patent 8,539,047 B2
61
4. Whether Claims 7–20 Are Entitled to Patentable Weight
a) The Parties’ Arguments
Petitioner argues that claims 7–20 “merely recite intended uses for the
claimed portable device” and should not be given patentable weight.
Pet. 28. Specifically, Petitioner argues “[a] statement of intended use in an
apparatus claim cannot distinguish over . . . prior art . . . that satisfies all the
recited structural limitations and is capable of performing the recited
functions.” Id. at 29 (citing In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997)). Petitioner further argues that, “unlike the limitation on claimed
structure in Catalina Marketing, the recitations added by these dependent
claims state merely an intended use or purpose for the portable device.” Pet.
Reply 13 (footnote omitted) (referring to Catalina Marketing Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 806 (Fed. Cir. 2002)).
Patent Owner argues that claims 7–20 recite not just the environment
in which the device is used, but how the portable device is configured:
In particular, because each of Claims 7–20 further specify the
communications network and/or the communications network
node, and because the second “wherein” clause of Claim 1
requires that the portable device be configured to communicate
with the communications network node, Claims 7-20 further
specify how the portable device is configured.
PO Resp. 43 (citing Nazomi Commc’ns, Inc. v. Nokia Corp., 739 F.3d 1339,
1344 (Fed. Cir. 2014)); see also PO Sur-reply 13. Patent Owner further
argues that the cases cited by Petitioner are of limited applicability because
those case each involved preambles. PO Resp. 44. According to Patent
Owner, Catalina makes it clear that the location of the limitation matters.
Id. (citing Catalina, 289 F.3d at 810–11).
IPR2019-00416
Patent 8,539,047 B2
62
b) Our Analysis
“An intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); see also
Schreiber, 128 F.3d at 1477–78 (claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function).
Although “[s]uch statements often . . . appear in the claim’s preamble,” a
statement of intended use or purpose does not “necessarily” have to be
recited in the preamble and can appear elsewhere in a claim. In re Stencel,
828 F.2d 751, 754 (Fed. Cir. 1987). Accordingly, the patentability of an
apparatus claim “depends on the claimed structure, not on the use or purpose
of that structure.” Catalina, 289 F.3d at 809.
Claim 1 is directed to a portable device, not the system in which the
portable device is used. Claim 716 depends from claim 1 and recites that
“[t]he portable device of claim 1, wherein the communications network
comprises a local area network.” Ex. 1001, 31:43–44. The additional
limitation recited in claim 7 does not merely recite the environment in which
the device is placed; instead, claim 7 requires that the portable device is
configured to communicate using a specific “communications network.”
Thus, claim 7 requires a specific type of functionality. Accordingly, claims
7 through 20 must be given patentable weight.

16 Neither Petitioner not Patent Owner makes separate arguments for the
different claims. See Pet. 29–29; PO Resp. 43–44. Claim 7 is representative
and our analysis and conclusions are equally applicable to claims 8–20.
IPR2019-00416
Patent 8,539,047 B2
63
5. Analysis of Claims 7 and 12
Claim 7 depends from claim 1 and recites that “the communications
network comprises a local area network.” Ex. 1001, 31:43–44. Claim 12
depends from claim 7 and further requires that “the communications
network comprises a wireless local area network.” Id. at 31:53–54.
Petitioner argues that “Iida teaches operating the portable device on a
network that includes HomeRF, wireless cellphone network, a telephone
network and the Internet.” Pet. 30 (citing Ex. 1002 ¶ 56). According to
Petitioner, “HomeRF is a wireless protocol that may be used between
wireless communication unit 56 and terminal 14” and that the terminal uses
a telephone network to connect to the internet. Id. (citing Ex. 1003 ¶¶ 66,
69, 70). Petitioner further argues that HomeRF network is a wireless “LAN
and it is a component of the communications network between the wireless
communication unit 56 and the image server 18.” Id. at 31 (citing Ex. 1002
¶ 57).
Petitioner also argues that because “[t]he ’047 patent contemplates a
communications network comprising multiple networks such as a wide area
network 113b followed by a high speed LAN (local area network) 113c for
communicating with remote storage 105,” there is “no basis for excluding
one network along the way but not other networks along the way.” Pet.
Reply 14 (citing Ex. 1001, 4:15–21, Fig. 1). Petitioner also argues that “Mr.
Geier has explained that ‘[n]o modification to the camera is required because
a communication may pass through a LAN (local area network) or a wireless
LAN.’” Id. at 15 (alteration in original) (citing Ex. 1002 ¶ 55).
Patent Owner argues that “the ‘local area network’ of claims 7 and 12
must be between the terminal and the network node.” PO Resp. 44–45.
According to Patent Owner, because “Iida’s reference to HomeRF refers to
IPR2019-00416
Patent 8,539,047 B2
64
the connection between the camera and the portable phone,” it is in the
wrong location. Id. at 45 (citing Ex. 1003 ¶ 66).
Patent Owner further argues that because “[c]ommunication through a
LAN requires that the device have a network address so that it can be
identified by other network devices,” Iida’s camera would need to be
modified to communicate via a LAN. PO Sur-reply 14 (citing Ex. 2013,
514). According to Patent Owner, if a LAN was used then “there would be
no access point to dial up, hence no need for access point determination and
dialing.” Id. (citing Ex. 1003 ¶¶ 107–110).
We find that Iida teaches that its camera can communicate wirelessly
with the terminal. Ex. 1003 ¶ 66. Specifically, Iida teaches using HomeRF,
which is a wireless local area network. Id.; Ex. 1002 ¶¶ 56–57.
Accordingly, Iida teaches that the camera is configured to communicate over
a (wireless) local area network as set forth in dependent claims 7 and 12.
We are also not persuaded by Patent Owner’s arguments on whether
the use of HomeRF in Iida “relates to the wrong connection.” See PO Resp.
45 (emphasis omitted). Contrary to Patent Owner’s arguments, nothing in
independent claim 1 or dependent claims 7 and 12 requires that the
communications network be a network containing nodes. See PO Resp. 44–
45. To the contrary, although claim 1—from which claims 7 and 12
depend—recites a communications network node, claim 1 does not recite a
communications network or define where the communications network
begins or ends. Thus, the HomeRF system described in Iida is a
communications network because it is allows the camera to communicate
with the terminal. See Ex. 1002 ¶¶ 56–57.
Furthermore, as discussed above, claims 7 and 12 recite a portable
device that is configured to work with specific elements. Thus, even if
IPR2019-00416
Patent 8,539,047 B2
65
Patent Owner is correct that the communications network must include a
communications network node, the issue is not whether Iida teaches a local
area network or a wireless local area network, but whether the camera
described in Iida is configured to work with a local area network or a
wireless local area network. Petitioner has shown that the answer to that
question is yes:
The structure and configuration of the digital camera 12 of
Iida is agnostic as to what networks may be encountered when
communications are sent from its wireless communication unit
56 to the image server 18. No modification to the camera is
required because a communication may pass through a LAN
(local area network) or a wireless LAN.
Ex. 1002 ¶ 55 (emphasis added). Thus, no matter where the (wireless) local
area network is located between the camera on one end and the image server
on the other, the camera is configured to send the image over that (wireless)
local area network. See id.
We have considered the entirety of the evidence submitted by the
parties, including the objective evidence of nonobviousness, and determine
that Petitioner has shown by a preponderance of the evidence that claims 7
and 12 of the ’047 patent would have been obvious over Iida and Genske.
6. Analysis of Claims 9 and 11
Claim 9 depends from claim 7 and recites that “the communications
network node comprises a data storage system.” Ex. 1001, 31:47–48. Claim
11 depends from claim 7 and recites that “the communications network node
comprises a printer.” Ex. 1001, 31:51–52.
With regard to claim 9, Petitioner argues that “Iida discloses large-
capacity storage medium 88 connected to image server 18” and that
individual users could store image data on that data storage system. Pet. 31–
IPR2019-00416
Patent 8,539,047 B2
66
32 (citing Ex. 1003 ¶¶ 70, 110; Ex. 1002 ¶ 59). Petitioner further argues that
“the image server 18 and the storage medium together constitute the node on
the communications network used as the data storage system.” Id. at 32
(citing Ex. 1002 ¶ 59).
With regard to claim 11, Petitioner argues that “[t]he network taught
by Iida may further include MI network 90” or the internet. Pet. 33–34
(citing Ex. 1003 ¶ 71; Ex. 1002 ¶ 61). Petitioner further argues that “the MI
network or Internet as taught by Iida is computer 94 connected to a printer
92.” Id. at 34.
Patent Owner argues as follows: “With respect to the additional
limitations in the dependent claims, second program code would need to be
configured differently if the network node were a data storage system (Claim
9) than it would if the network node were a printer (Claim 11).” PO
Resp. 44 (citing Ex. 2099 ¶¶ 98–99).
We determine that Iida teaches the additional limitations recited in
claims 9 and 11. With regard to claim 9, Iida teaches that the terminal can
connect, via the internet, with an image server comprising a workstation are
a large capacity storage medium, such as a hard disk. Ex. 1003 ¶¶ 68–70.
Accordingly, Iida teaches that the camera is configured to communicate, via
the terminal, with a data storage system. Ex. 1002 ¶ 59.
With regard to claim 11, Iida teaches that the image server discussed
above is connected via an MI network 90 or the internet to computers
possessed by print finishing dealers which may include printers. Ex. 1003
¶ 71; Ex. 1002 ¶ 61.
Patent Owner’s Response directs us to Dr. Butler’s testimony. PO
Resp. 44 (citing Ex. 2099 ¶¶ 98–99). However, we do not find Dr. Butler’s
testimony credible. Specifically, Iida expressly teaches using a camera that
IPR2019-00416
Patent 8,539,047 B2
67
can communicate with a data storage system and printer through the
terminal. See Ex. 1003 ¶¶ 68–71. Dr. Butler’s conclusory testimony does
not sufficiently explain why Iida would need to be modified in order to
accomplish a function expressly disclosed in the reference. See Ex. 2099
¶¶ 98–99. Because his testimony is inconsistent with the express disclosure
of Iida, we find Dr. Butler’s testimony regarding the need to modify Iida not
credible.
We have considered the entirety of the evidence submitted by the
parties, including the objective evidence of nonobviousness, and determine
that Petitioner has shown by a preponderance of the evidence that claims 9
and 11 of the ’047 patent would have been obvious over Iida and Genske.
7. Analysis of Claim 25
Claim 25 depends from claim 24 and recites that “executing the first
program code stored on the portable device memory causes the terminal
processor to present an interactive user interface on the first output
component.” Ex. 1001, 32:41–44.
Petitioner argues Iida teaches the limitation recited in claim 25.
Pet. 45–46 (citing Ex. 1003 ¶ 83). Specifically, Petitioner argues that
“control unit 60 corresponds to the terminal processor and the control unit
60 is caused to present the interactive user interface, i.e., the menu screen,
on the display unit 62.” Id. at 46; see also Pet. Reply 16 (“There is no
dispute that when properly interpreted, Iida explicitly discloses ‘the control
unit 60[of the portable terminal] . . . displays the menu screen on the display
unit 62.’” (alteration in original) (quoting Ex. 1003 ¶ 83)). Petitioner further
argues that “‘presented’ means ‘shown’ or ‘displayed’” and that the
“[d]etermination of the content or arrangement and responding to
IPR2019-00416
Patent 8,539,047 B2
68
interactions are not implicated by the action of merely presenting on the first
output component.” Pet. Reply 16.
Patent Owner argues that Iida’s camera dictates the detail of each of
the static menu images presented on the terminal’s display and the terminal
“is not involved in determining either the content or the arrangement of what
is displayed.” PO Resp. 45; see also PO Sur-reply 14. Patent Owner further
argues that the claim requires that the terminal take action in response to a
user interacting with the interactive user interface. PO Resp. 46.
We determine Iida teaches the additional limitation recited in claim
25. Iida states that “the control unit 60 [of the portable terminal] judges the
received information to be information for displaying a screen on the display
unit 62, and it displays the menu screen on the display unit 62.” Ex. 1003
¶ 83 (emphasis added). The “it” in the italicized language is the terminal’s
processor. See id. Accordingly, Iida, upgraded to display a graphical user
interface like Genske’s, teaches that program code stored and executed on
the camera generates an interactive user interface, transmits the interactive
user interface to the portable terminal, and a processor of the portable
terminal causes the interface to be displayed on the terminal’s screen. See
Ex. 1003 ¶ 83.
We do not agree with Patent Owner’s arguments. Patent Owner’s
arguments are premised on an implicit claim construction that the terminal’s
processor must control the contents of the interactive user interface and
respond to a user’s interaction with the interactive user interface. However,
neither requirement is supported by the plain and ordinary meaning of the
words of the claim. Claim 25 simply requires the terminal to “present an
interactive user interface” (Ex. 1001, 32:43–45) and “present” is broad
enough to encompass showing. Nothing in the word “present” requires
IPR2019-00416
Patent 8,539,047 B2
69
either that the terminal generates the content of the interactive user interface
or responds to a user interacting with it. Instead, these functions are
performed by software executing on the portable device. Claims 24 and 25
recite “executing first program code stored on the portable device memory”
to cause the presentation of an interactive user interface, and claim 24 recites
“executing third processing code stored on the portable device memory” in
response to a communication resulting from user interaction with the
interactive user interface. Ex. 1001, 32:20–25, 32:32–35, 32:41–44.
That “present” simply refers to showing or displaying is consistent
with the ’047 patent’s other uses of the word “present.” For example, the
’047 patent states that “the user is presented with a login prompt 205 on the
AT’s display mechanism, e.g., on a video monitor.” Ex. 1001, 4:40–41.
Presented is used in that sentence to refer to showing or displaying. Nothing
in that sentence requires that the prompt be generated by a certain device,
just where it was shown. See id. at 4:33–45. Other uses also simply
describe where the information is shown, not where an image is generated or
where the response takes place. See, e.g., id. at 7:33–35, 8:38–42, 8:48–51.
We have considered the entirety of the evidence submitted by the
parties, including the objective evidence of nonobviousness, and determine
that Petitioner has shown by a preponderance of the evidence that claim 25
of the ’047 patent would have been obvious over Iida and Genske.
8. Analysis of Claims 2–4, 6, 8, 10, 13–21, 23, and 28
Petitioner argues that the combination of Iida and Genske teaches the
additional limitations recited in claims 2–4, 6, 8, 10, 13–21, 23, and 28. See
Pet. 27–28, 31–39, 51–53, 61.
IPR2019-00416
Patent 8,539,047 B2
70
Patent Owner did not separately address Petitioner’s arguments
directed to claims 2–4, 6, 8, 10, 13–21, 23, and 28. See generally PO Resp.;
PO Sur-Reply.
Based on the evidence and arguments presented in the Petition, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that claims 2–4, 6, 8, 10, 13–21, 23, and 28 would have been
obvious over the combined teachings of Iida and Genske.
E. Ground 6: Obvious over Iida, Genske, and Imbrie
Petitioner argues that claim 5 would have been obvious over Iida,
Genske, and Imbrie. Pet. 62; see also Pet. 54–55.
1. Imbrie
Imbrie is titled “Secure and Accountable Wireless Printing System”
and is directed to “[a] secure wireless printing system and method for
printing data from a wireless device at a selected printing assembly while
providing accountability and generating revenues from such usage.”
Ex. 1005, codes (54), (57). Imbrie teaches how a user can print a data file
from various devices, including a digital camera, by sending the file
wirelessly to a computer with an attached printer. Id. ¶¶ 8, 34–36, Fig. 1.
Imbrie also discloses various ways of wirelessly transmitting the
information, including using WiFi. Id. ¶ 36.
2. Analysis of Claim 5
Claim 5 depends from claim 3, which depends from claim 1.
Ex. 1001, 31:30–32, 31:36–38. Claim 5 recites that the external
communication interface is “the wireless communication interface [that]
employs WiFi connectivity protocol.” Id.
IPR2019-00416
Patent 8,539,047 B2
71
a) The Parties’ Arguments
Petitioner argues Imbrie teaches the additional limitation recited in
claim 5 and that a person having ordinary skill in the art would have
combined the teachings of Iida, Genske, and Imbrie. Pet. 54–55, 62.
Specifically, Petitioner argues Imbrie teaches several different methods of
wireless communication, including IEEE-802.11b, otherwise known as Wi-
Fi. Id. at 54 (citing Ex. 1005 ¶ 36).
Petitioner also argues that a person having ordinary skill in the art
would have known that HomeRF, a wireless protocol recited in Iida, “went
obsolete in 2003 when it was beaten out in the marketplace by wireless
protocols, including [WiFi] and Bluetooth.” Pet. 54 (citing Ex. 1002 ¶ 81).
Petitioner further argues “Wi-Fi was a recognized option for digital camera
wireless communication protocol in the prior art for digital cameras” and
“[i]n the absence of HomeRF from the market at the time of the ’047 patent
application in 2004,” WiFi was an obvious choice to a person having
ordinary skill in the art. Id. (citing Ex. 1002 ¶ 82); see also Pet. Reply 18.
According to Petitioner, “[i]n view of Imbrie and the popularity of [WiFi], it
would have been a simple substitution to make use of Wi-Fi for wireless
communication in a digital camera instead of either of Bluetooth or
HomeRF” and that such a substitution “merely combines prior art elements
according to well-known methods predictably yielding a system that can
perform the actions described in Iida.” Pet. 55 (citing Ex. 1002 ¶ 84).
Petitioner further argues that “[t]he benefits of Bluetooth are irrelevant when
obviousness has already been established based on motivation to substitute
WiFi for HomeRF.” Pet. Reply 18–19.
Patent Owner argues that a person having ordinary skill in the art
would not have combined Imbrie with Iida because “the systems described
IPR2019-00416
Patent 8,539,047 B2
72
in the two references are for entirely different purposes.” PO Resp. 47.
According to Patent Owner, “Imbrie is for nothing more than printing
documents from a wireless device, Ex. 1005, Abstract, [0002], [0008], and
the Petition identifies no reason that someone would want to combine Imbrie
with Iida’s inexpensive rental digital camera.” Id.
Patent Owner further argues that because “WiFi’s primary purpose is
to allow networking, not point-to-point communication as would be required
to communicate between Iida’s camera and portable apparatus,” the person
having ordinary skill in the art would not have replaced Bluetooth and
HomeRF with WiFi. Id. at 48 (citing Ex. 2099 ¶¶ 112–115). Patent Owner
further argues that using Iida’s portable apparatus to connect to the camera
would prevent it from using WiFi to connect to the local area network. Id.
b) Our Analysis
Imbrie teaches using WiFi to connect a camera with another device.
Ex. 1005 ¶ 36.
We further find that a person of ordinary skill in the art would have
used WiFi to connect Iida’s camera and portable terminal. Specifically, Iida
teaches using HomeRF to connect the camera to the portable terminal.
Ex. 1003 ¶ 66. However, the unrebutted testimony of Mr. Geier’s shows
that, by 2003, HomeRF was an obsolete system which had been “beaten out
in the marketplace by other wireless protocols, including [WiFi] and
Bluetooth.” Ex. 1002 ¶ 81. We credit Mr. Geier’s well-reasoned testimony
that, because HomeRF had become obsolete, a person having ordinary skill
in the art would have been motivated to replace it with one of the systems
that had replaced it in the marketplace, such as WiFi. Id. ¶¶ 82–84. Based
on Mr. Geier’s testimony, we further find that a person of ordinary skill in
IPR2019-00416
Patent 8,539,047 B2
73
the art would have been able to implement using WiFi with Iida’s system.
See id. ¶¶ 83–84.
We do not agree with Patent Owner’s arguments.
First, we do not agree with Patent Owner that Iida and Imbrie are so
different that a person of ordinary skill in the art would not have combined
them. Patent Owner’s argument improperly focuses on the specific point of
novelty of each of the references and does not broadly consider the field of
endeavor. See Unwired Planet, 841 F.3d at 1001. Instead, we determine
that the references are analogous art to the claimed invention and would be
combined because they both address issues surrounding connecting portable
devices to computers, just like the ’047 patent. See Ex. 1002 ¶¶ 82–83 (both
Iida and Imbrie teach wireless protocols that can connect devices).
Second, we do not agree with Patent Owner that there was no need to
substitute WiFi for HomeRF because Bluetooth was specifically mentioned
in Iida and was still available in 2004 and today. As the Supreme Court held
in KSR, “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one.” 550 U.S. at 417. The Supreme Court further
held that “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.
Petitioner has shown both (1) why market forces would suggest using
WiFi—“the ‘most common wireless local area network’ at the time”—over
HomeRF—which was no longer on the market—and (2) that “the use of
WiFi in the wireless communication interface of Iida merely combines prior
art elements according to well-known methods predictably yielding a system
IPR2019-00416
Patent 8,539,047 B2
74
that can perform the actions described in Iida.” Ex. 1002 ¶¶ 82–83.
Accordingly, although a person having ordinary skill in the art could have
used Bluetooth, Petitioner has shown why a person having ordinary skill in
the art would have been motivated to replace HomeRF with its market
successor, WiFi.
Third, we do not find adequate record support for Patent Owner’s
argument that “a WiFi chip cannot operate simultaneously in both ‘ad-hoc’
mode (in which individual devices communicate directly with each other)
and ‘infrastructure’ mode (used for networks).” PO Resp. 48 (emphasis
omitted) (citing Ex. 2099 ¶¶ 112–115). We have reviewed Dr. Butler’s
testimony and do not find support for Patent Owner’s proposition. See
Ex. 2099 ¶¶ 112–115. Moreover, although Dr. Butler testifies about the
challenges associated with using a WiFi in an ad hoc mode, he also testifies
that “802.11 (Wi-Fi) can be set up to form an ad hoc network” necessary for
point to point communications. Ex. 2099 ¶ 114.
We have considered the entirety of the evidence submitted by the
parties, including the objective evidence of nonobviousness, and determine
that Petitioner has shown by a preponderance of the evidence that claim 5 of
the ’047 patent would have been obvious over Iida, Genske, and Imbrie.
F. Ground 7: Obvious over Iida, Genske, and Aganovic
Petitioner argues that claims 10 and 17 would have been obvious over
Iida, Genske, and Aganovic. Pet. 63; see also Pet. 55–57.
1. Summary of Aganovic
Aganovic is titled “Multi-User Information Management System
Adapted for Efficient, Remote, On-Demand Document Management,
Storage and Retrieval” and “relates to document management systems
capable of multi-user, remote, document management, storage and retrieval
IPR2019-00416
Patent 8,539,047 B2
75
operation.” Ex. 1006, code (54), 1:10–12. Aganovic teaches using “a
Redundant Array of Inexpensive Disks (RAID), which allows for high
capacity and data transfer speed, while providing the safety of backup
storage. The RAID is ideally of the network-attached variety.” Id. at
5:58–63.
2. Claims 10 and 17
Claims 10 and 17 both indirectly depend from claim 1 and recite that
the communications network node is a “redundant array of independent
disks.” Ex. 1001, 31:47–50, 31:61–65.
a) The Parties’ Arguments
Petitioner argues Aganovic teaches the additional limitation recited in
claims 10 and 17 and that a person having ordinary skill in the art would
have combined the teachings of Iida, Genske, and Aganovic. Pet. 55–57, 63.
Specifically, Petitioner argues Iida teaches “a portable device, camera 12,
which interacts with image server 18 and its connected ‘large-capacity
storage medium 88 comprising a hard disk or the like.’” Pet. 56 (quoting
Ex. 1003 ¶ 70). Petitioner further argues Aganovic teaches using “a
Redundant Array of Inexpensive Disks (RAID)[17] for an information
management system calling for a large capacity memory” that is accessible
through the internet. Id. at 56 (citing Ex. 1006, 5:55–61). According to
Petitioner, a person having ordinary skill in the art would have combined
Aganovic’s RAID with Iida’s data storage system because it is a simple

17 Petitioner asserts that a “Redundant Array of Inexpensive Disks as used
in Aganovic . . . was also known as a Redundant Array of Independent Disks
as claimed in the ’047 patent.” Pet. 55 (citing Ex. 1002 ¶ 85; Ex. 1007, 2
n.1).
IPR2019-00416
Patent 8,539,047 B2
76
substitution that would achieve predictable results. Id. at 56–57 (citing
Ex. 1002 ¶ 86).
Patent Owner argues that a person having ordinary skill in the art
would not have “combine[d] Iida and Aganovic because their systems are
for entirely different purposes.” PO Resp. 49. Specifically, Patent Owner
argues that “Iida’s system is for providing a lower-cost, rental alternative to
more-expensive digital cameras” while “Aganovic’s system is a general-
purpose computer that can be used for remote data storage and retrieval.”
Id. at 49–50.
Patent Owner further argues that Petitioner fails to show a reason to
combine the references: “But Petitioner cannot show a claim obvious
merely by alleging that ‘each of its elements was, independently, known in
the prior art.’” PO Resp. 50 (citing KSR, 550 U.S. at 418).
b) Our Analysis
Iida teaches using an image server connected to “a large-capacity
storage medium 88 comprising a hard disk or the like.” Ex. 1003 ¶ 70. Iida
describes the large-capacity storage medium as including “a large number of
image data saving areas for separately saving image data for individual
users, with the image data having been obtained by the users, who have
rented the digital still cameras 12 of this embodiment.” Id.
Aganovic teaches using a RAID as a data storage system that “allows
for high capacity and data transfer speed, while providing the safety of
backup storage.” Ex. 1006, 5:55–61.
We credit Mr. Geier’s well-reasoned testimony that a person having
ordinary skill in the art would have been motivated to use a known RAID
system as taught by Aganovic as the high-capacity storage medium required
by Iida. See Ex. 1002 ¶¶ 86–87. Mr. Geier’s testimony is supported by the
IPR2019-00416
Patent 8,539,047 B2
77
cited disclosures of Iida and Aganovic, as discussed above. Ex. 1003 ¶ 70;
Ex. 1006, 5:55–61. Such a modification would have provided Iida’s large
capacity data system with the advantages of Aganovic’s RAID system. Id.;
see also Ex. 1006, 5:55–61.
For the reasons set forth below, we have considered Patent Owner’s
arguments, but are nevertheless persuaded that Petitioner has shown a reason
to combine the relevant teachings of Iida and Aganovic.
First, we do not agree with Patent Owner that Iida and Aganovic are
so different that a person of ordinary skill in the art would not have
combined them. Patent Owner’s argument focuses on the specific point of
novelty of each of the references and does not broadly consider the field of
endeavor. See Unwired Planet, 841 F.3d at 1001. Instead, the references
are analogous and would be combined because they both address issues
surrounding storing data at a remote location, which is also an issue
addressed by the ’047 patent. See Ex. 1002 ¶¶ 85–86 (both Iida and
Aganovic teach storing data at a remote location).
Second, we do not agree with Patent Owner that Petitioner has not
sufficiently shown a reason to combine the references. Petitioner is not
simply arguing that the invention is obvious because the elements are
known. Instead Petitioner and Mr. Geier provide “articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d at 988). Specifically,
Mr. Geier testified as to an advantage of a RAID system—resiliency—and
that a person having ordinary skill in the art would have used a RAID with
Iida’ invention to achieve that advantage. Ex. 1002 ¶ 87.
We have considered the entirety of the evidence submitted by the
parties, including the objective evidence of nonobviousness, and determine
IPR2019-00416
Patent 8,539,047 B2
78
that Petitioner has shown by a preponderance of the evidence that claims 10
and 17 of the ’047 patent would have been obvious over Iida, Genske, and
Aganovic.
G. Other Grounds
Having found that all of the challenged claims unpatentable, we
decline to address Petitioner’s other challenges. Specifically, we decline to
address the parties’ arguments directed to whether certain claims of the ’047
patent are anticipated by Iida (Petitioner’s Ground 1) or any obviousness
claims premised on the anticipation of the independent claims (Petitioner’s
Grounds 2 through 4). See Boston Sci. Scimed, Inc. v. Cook Grp. Inc., Nos.
2019-1594, 2019-1604, 2019-1605, 2020 WL 2071962, *4 (Fed. Cir. Apr.
30, 2020); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed.
Cir. 1984) (holding that once a dispositive issue is decided, there is no need
to decide other issues).18
H. Evidentiary Motions
Patent Owner and Petitioner each filed motions to exclude certain
evidence. We first address Petitioner’s motion, and then turn to Patent
Owner’s motion.
1. Petitioner’s Motion to Exclude
Petitioner filed a motion to exclude Exhibit 2114 as not authenticated
under Federal Rule of Evidence 901, hearsay under Rules 801–803, and not

18 No inference should be drawn from the Panel’s decision not to address
arguments directed to whether certain claims of the ’047 patent are
anticipated by Iida (Petitioner’s Ground 1) or any obviousness arguments
premised on the anticipation of the independent claims (Petitioner’s Grounds
2 through 4). Specifically, we make no finding on whether Iida discloses an
“interactive user interface” as recited in claim 1.
IPR2019-00416
Patent 8,539,047 B2
79
relevant under Rules 401 and 402. For the reasons set forth below, we grant
Petitioner’s motion and exclude Exhibit 2114.
a) Authentication
Petitioner, relying on Linear,19 argues Exhibit 2114 has not been
authenticated because it “contains no identification of an author, a recipient,
or the genuineness of its contents, and further is not accompanied by
testimony attesting to its authenticity.” Paper 47, 2. Petitioner further
argues that any “distinctive characteristics” of Exhibit 2114 are insufficient
for authentication and the exhibit is not self-authenticating. Id.; Paper 53, 1–
2 (citing Wright & Miller, 31 Fed. Prac. & Proc. Evid. § 7109 (1st ed.)).
Patent Owner argues that “[t]here are no magic words required to
authenticate a document; in fact, ‘[a]uthentication is a “relatively low[ ]
hurdle,” and may be proved through a variety of methods, including
circumstantial evidence.’” Paper 51, 4 (second and third alterations in
original) (quoting Zen Design Grp., Ltd. v. Scholastic, Inc., No. 16-12936,
2019 WL 2996190, at *2 (E.D. Mich. July 9, 2019)). Patent Owner further
argues that “Ex. 2114 contains several characteristics evincing its reliability
to be what Patent Owner claims it is: an August 2003 letter from Dan
Harkabi to Scott McNulty,” namely that the letter clearly identifies the
author and recipient and references Dan Harkabi’s company, MDRM. Id. at
4–5. Patent Owner also argues Linear is inapposite because, in that case,
“the letters were ‘not signed, [were] not on company letterhead, and [bore]
no outward indicia of having ever been mailed to a customer.’” Id. at 5
(alterations in original) (quoting Linear, 275 F.3d at 1055).

19 Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 1055–56 (Fed. Cir.
2001).
IPR2019-00416
Patent 8,539,047 B2
80
Federal Rule of Evidence 901(a) states: “To satisfy the requirement
of authenticating or identifying an item of evidence, the proponent must
produce evidence sufficient to support a finding that the item is what the
proponent claims it is.”
We find Petitioner’s reliance on Linear persuasive. In that case, the
Federal Circuit affirmed an order excluding certain letters found in the files
of a former sales representative which were “not signed, [were] not on
company letterhead, and bear no outward indicia of having ever been mailed
to a customer.” Linear, 275 F.3d at 1055. As in Linear, Exhibit 2114 is not
signed and there is no evidence or indicia indicating it was ever mailed. See
Ex. 2114. Although it has the logo MDRM on it, there is no evidence in the
record that the logo is a letterhead or is even a logo of the company that Dan
Harkabi worked for. See generally Paper 51. Moreover, “[w]hile earlier
cases often assumed that the use of letterhead paper is sufficient to establish
authenticity, that conclusion is now undermined by the current widespread
availability of photocopy machines, scanners, and computer software
capable of forging any letterhead.” Wright & Miller, 31 Fed. Prac. & Proc.
Evid. § 7109 (1st ed.) (citing Total Containment, Inc. v. Environ Prod., Inc.,
921 F. Supp. 1355, 1370 (E.D. Pa. 1995), aff’d in part, vacated in part, 106
F.3d 427 (Fed. Cir. 1997)).
In the absence of any supporting testimony, Patent Owner has not met
its burden of showing that Exhibit 2114 is what the Patent Owner claims it
is.
b) Hearsay
Petitioner also argues Exhibit 2114 is inadmissible hearsay because it
is a statement made outside of this inter partes review proceeding and being
offered for the truth of the matter asserted. Paper 47, 1–2. Petitioner further
IPR2019-00416
Patent 8,539,047 B2
81
argues that although courts allow industry praise into the record over a
hearsay objection, that does not apply to an individual’s favorable review.
Paper 53, 4–5 (citing Sonos, Inc. v. D&M Holdings Inc., No. 14-1330-WCB,
D.I. 504, slip op. 6 (D. Del. Dec. 8, 2017) (Bryson, J.)).
Patent Owner argues that “[i]t is well established that, when offered as
objective indicia of non-obviousness, neither skepticism nor praise is
hearsay because it is not being offered for the truth of the matter asserted.”
Paper 51, 2 (citing Sonos, slip op. 10–12; Cisco Sys. Inc. v. Centripetal
Networks, Inc., IPR2018-01437, Paper 40 at 32 (PTAB Jan. 23, 2020) (Final
Written Decision)). According to Patent Owner, because Exhibit 2114 is
being offered to show the views of the industry and skepticism, it is not
being offered for the truth of the matter asserted. Id. at 3.
We find Judge Bryson’s well-reasoned decision in Sonos instructive.
Sonos draws a distinction between two types of industry praise. On one
hand, “to the extent that the evidence is relevant to show that persons in the
industry praised Sonos’s claimed inventions, such evidence is admissible
over a hearsay objection.” Sonos, slip op. at 6. Thus, for example, “articles
describing awards or the equivalent conferred on the patented invention . . .
present the clearest examples of evidence of industry praise, at least when it
is clear the praise is directed to the merits of the claimed invention.” Id. at
6–7.
On the other hand, “that principle does not justify the admission of the
full text of every document that contains a favorable comment about Sonos
or its products from any source. In order to be admissible, the evidence must
reflect praise in the industry, not just an individual’s favorable view of the
product.” Id. at 5 (emphasis added). As a result, “[d]ocuments that reflect
simply favorable comments about a company and its products are more
IPR2019-00416
Patent 8,539,047 B2
82
problematical” as they are “simply hearsay comments about . . . products.”
Id. at 5, 7.
In this case, Exhibit 2114 reflects personal opinions of the author. See
PO Resp. 64. Even if the author was an industry leader, nothing in Exhibit
2114 indicates that he is speaking on behalf of an industry group or
presenting an industry award. See Ex. 2114. Rather, the author is merely
giving his own personal opinions. See id. Thus, Exhibits 2114 is being
offered for the truth of the matter asserted and is inadmissible hearsay. See
Sonos, slip op. 5–7.
c) Relevancy
The gravamen of Petitioner’s argument regarding the lack of
relevancy is that Patent owner has not shown a sufficient nexus between
Exhibit 2114 and the claimed invention. Paper 47, 3 (arguing that Exhibit
2114 does not establish a nexus because it does not “describe the claimed
invention in sufficient detail” and “speaks generally about many ideas and
fails to establish that the subject of the letter is the invention claimed in the
’047 patent” (citing Ex. 2114, 1–3)); see also Paper 53, 3–4 (“Patent Owner
does no more than draw vague inferences to the claimed invention. This is
not enough.”). However, nexus is a substantive requirement, not an
evidentiary threshold. Accordingly, we do not address Petitioner’s
arguments in the context of the Motion to Exclude.
d) Conclusion
For the reasons set forth above, we grant Petitioner’s motion to
exclude Exhibit 2114 on two separate grounds.
2. Patent Owner’s Motion
Patent Owner seeks to exclude (1) a portion of Exhibit 1011 as
hearsay, (2) Exhibits 1016 and 1017 as hearsay, and (3) Exhibits 1031–1035
IPR2019-00416
Patent 8,539,047 B2
83
as irrelevant. Paper 48. To the extent Mr. Geier testified about or relied on
Exhibits 1011, 1016, and 1017, Patent Owner does not seek to exclude that
testimony. See Paper 55, 2 (“Patent Owner’s evidentiary argument
regarding Exhibit 1011 relates to the attorney argument in Petitioner’s
Reply. This attorney argument does not mention [Mr.] Geier.”), 4 (“Here,
Mr. Geier’s opinion may be admissible, but Ex. 1016 is not.”).
We do not rely on Exhibits 1011, 1016, 1017, or 1031–1035 in
making our ultimate determination on the patentability of the challenged
claims. Accordingly, we need not decide Patent Owners’ motion and we
dismiss that Patent Owners’ motion as moot.
I. Constitutional Challenge
In its Sur-reply, Patent Owner raises two constitutional challenges:
The Board cannot Constitutionally decide this case and
should dismiss it, because (1) APJs are principal officers, but are
not appointed and confirmed by the President and Senate,
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir.
2019); and (2) retroactive application of IPRs to pre-AIA patents
such as the ’047 Patent violates the Takings and Due Process
Clauses of the Fifth Amendment.
PO Sur-reply 23.
With regard to the Appointment Clause challenge, that has been
addressed by the Federal Circuit’s decision in Arthrex, 941 F.3d at 1337
(“This as-applied severance . . . cures the constitutional violation.”); see also
Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020)
(Moore, J., concurring in denial of rehearing) (“Because the APJs were
constitutionally appointed as of the implementation of the severance, inter
partes review decisions going forward were no longer rendered by
unconstitutional panels.”). Accordingly, we do not consider this issue any
further.
IPR2019-00416
Patent 8,539,047 B2
84
With regard to the Takings and Due Process Clause challenge, we
note that challenges to retroactive application of IPRs to pre-AIA patents
have been addressed by the Federal Circuit in Celgene Corp. v. Peter, 931
F.3d 1342, 1357–1363 (Fed. Cir. 2019), cert. denied 2020 WL 3405867
(June 22, 2020) (Takings Clause) and Sound View Innovations, LLC v. Hulu,
LLC, Nos. 2019-1865, 2019-1867, slip op. at 9–9 (Fed. Cir. July 2, 2020)
(non-precedential) (Due Process Clause). Accordingly, we do not consider
this issue any further.
CONCLUSION20
For the foregoing reasons, we conclude that Petitioner has
demonstrated by a preponderance of the evidence the unpatentability of
claims 1–21, 23–25, 27, and 28 of the ’047 patent. Specifically, Petitioner
has demonstrated by a preponderance of the evidence that (1) claims 1–4,
6–21, 23–25, 27,and 28 would have been obvious under 35 U.S.C. § 103(a)
in light of Iida and Genske; (2) claim 5 would have been obvious under 35
U.S.C. § 103(a) in light of Iida, Genske, and Imbrie; and (3) claims 10 and
17 would have been obvious under 35 U.S.C. § 103(a) in light of Iida,
Genske, and Aganovic. We declined to address Petitioner’s remaining
arguments (Petitioner’s Grounds 1 through 4). We grant Petitioner’s Motion

20 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
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).
IPR2019-00416
Patent 8,539,047 B2
85
to Exclude Exhibit 2114 and dismiss as moot Patent Owner’s Motion to
Exclude.
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–21, 23–25, 27, and 28 of the ’047 patent are
held unpatentable;
FURTHER ORDERED that Petitioner’s motion to exclude Exhibit
2114 is granted;
FURTHER CONCLUDE that Patent Owner’s motion to exclude is
dismissed as moot; and
FURTHER ORDERED that because this Decision is final, a party to
the proceeding seeking judicial review of the Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.
IPR2019-00416
Patent 8,539,047 B2
86
In summary:

21 As explained above, because we determined the challenged claims
unpatentable in light of Iida and Genske, we declined to address this ground.
22 Petitioner presented two alternative grounds for asserting that claim 2 is
unpatentable in light of Iida and Genske. In Ground 2, reflected in this row,
Petitioner argued Iida taught all of the limitations recited in claim 1 and
relied on Genske solely for the additional limitation recited in claim 2. The
subsequent row refers to Ground 5, in which Petitioner relied on the
combination of Iida and Genske to teach the limitations recited in claim 1.
23 As explained above, because we determined the challenged claims
unpatentable in light of Petitioner’s alternate ground based on Iida and
Genske (Ground 5), we declined to address this ground.
24 As explained above, because we determined the challenged claims
unpatentable in light of Iida, Genske, and Imbrie, we declined to address this
ground.
25 As explained above, because we determined the challenged claims
unpatentable in light of Iida, Genske, and Aganovic, we declined to address
this ground.
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 3, 4, 6–
21, 23–25,
27, 28
102(b)21 Iida
222 103(a)23 Iida, Genske
5 103(a)24 Iida, Imbrie
10, 17 103(a)25 Iida, Aganovic
1–4, 6–21,
23–25, 27,
28
103(a) Iida, Genske 1–4, 6–21, 23–
25, 27, 28

5 103(a) Iida, Genske,
Imbrie
5
10, 17 103(a) Iida, Genske,
Aganovic
10, 17
Overall
Outcome
1–21, 23–25,
27, 28

IPR2019-00416
Patent 8,539,047 B2
87
FOR PETITIONER:
Robert Asher
Timothy Murphy
rasher@sunsteinlaw.com
tmurphy@sunsteinlaw.com

FOR PATENT OWNER:
Michael A. Fisher
Derek J. Brader
Robert W. Ashbrook
Gregory T. Chuebon
michael.fisher@dechert.com
derek.brader@dechert.com
robert.ashbrook@dechert.com
greg.chuebon@dechert.com