Samsung Electronics Co., Ltd.v.IXI IP, LLC

Patent Trial and Appeal Board

Dec 30, 2015

09932180 (P.T.A.B. Dec. 30, 2015)

Trials@uspto.gov Paper 8
571-272-7822 Entered: December 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC., AND APPLE INC.,
Petitioner,

v.
IXI IP, LLC,
Patent Owner.
____________

IPR2015-01442
Patent 7,295,532 B2
____________

Before TRENTON A. WARD, KRISTINA M. KALAN, and
JOHN A. HUDALLA, Administrative Patent Judges.
KALAN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
IPR2015-01442
Patent 7,295,532 B2

2
I. INTRODUCTION
Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
and Apple Inc. (collectively “Petitioner”) filed a Petition (Paper 2, “Pet.”) to
institute an inter partes review of claims 1, 4, 5, 7–10, 12, 14–16, and 23–24
of U.S. Patent No. 7,295,532 B2 (Ex. 1001, “the ’532 patent”) pursuant to
35 U.S.C. §§ 311–319. IXI IP, LLC (“Patent Owner”) filed a Preliminary
Response (Paper 6, “Prelim. Resp.”). Applying the standard set forth in
35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood
that Petitioner would prevail with respect to at least one challenged claim, we
decline to institute an inter partes review as to claims 1, 4, 5, 7–10, 12, 14–
16, and 23–24 as discussed below.

II. BACKGROUND
A. Related Matters
The parties indicate that the ’532 patent is the subject of the following
district court proceedings: IXI Mobile (R&D) Ltd. v. Samsung Electronics
Co., Case No. 3:15-cv-03752-HSG (N.D. Cal.); IXI Mobile (R&D) Ltd. v.
Apple, Inc., Case No. 4:15-cv-03755-PJH (N.D. Cal.); and IXI Mobile (R&D)
Ltd. v. Blackberry Ltd., Case No. 3:15-cv-03754-RS (N.D. Cal.). Pet. 1–2;
Paper 5, 1–2, Paper 7, 1–2. Petitioner also indicates that the ’532 patent is
the subject of a petition for inter partes review in IPR2015-01443. Pet. 2.

B. The ’532 Patent
The ’532 patent describes a system, device and computer readable
medium that monitors and reconfigures a local area network (“LAN”) by a
wide area network (“WAN”) operator. Ex. 1001, Abstract. The ’532 patent
IPR2015-01442
Patent 7,295,532 B2

3
is directed to “a hand held device for providing communication between a
wide area network and a wireless local area network.” Id. at 1:61–63.
Figure 1, reproduced below, illustrates an exemplary system of the ’532
patent. Id. at 4:55–56.

Figure 1 shows wireless device 106 and one or more terminals 107
communicating via short-range radio signals 110 to form LAN 116. Id. at
5:30–35. Figure 1 also shows WAN 105 coupled to device 106; WAN 105
includes a cellular network transmitting and receiving cellular signals 111.
Id. at 5:52–55. WAN 105, carrier backbone 104, and manager server 102
are, singly or in combination, a telecommunication network managed and
monitored by operator 115. Id. at 5:62–65. WAN 105 is shown as being
coupled to wireless carrier internal network or carrier backbone 104, or
Internet 103. Id. at 6:20–25. In one embodiment, servers 101 and 102
IPR2015-01442
Patent 7,295,532 B2

4
provide information to terminals 107 by way of device 106. Id. at 6:26–29.
Microrouter 404 of device 106 “enables an IP based network between the
device 106 and terminals 107.” Id. at 8:29–30. Software components, or
plug-ins 406, may be added to microrouter 404, using software components
called hooks 590, to provide various LAN network services. Id. at 6:29–31,
8:33–36, 45–49. A remote operator on WAN 105 is able to load software on
device 106 to provide LAN network services to devices on LAN 116. Id. at
5:10–13, 10:11–17.

C. Illustrative Claim
Claim 1 of the ’532 patent is reproduced below:
1. A hand-held device for enabling communication between one
or more devices connected to one or more cellular networks and
one or more devices connected to a wireless local area network,
comprising:
a) a first transceiver to communicate with the one or
more devices connected to said one or more cellular networks
by sending and receiving cellular signals, the first transceiver
having a cellular network address;
b) a second transceiver to communicate with the one or
more devices connected to the wireless local area network by
sending and receiving short-range radio signals;
c) a storage device to store:
c.1. a router software component to transfer a
plurality of data packets between the one or more devices
connected to the one or more cellular networks and the
one or more devices connected to the wireless local area
network by the cellular signals and the short-range radio
signals; and
c.2. an interface software component to add a first
network service software component that provides one or
more network services to the wireless local area network,
the first network service software component loaded into
the storage device from the one or more devices
IPR2015-01442
Patent 7,295,532 B2

5
connected to the one or more cellular networks: and one
or more processors connected to the storage device to
process the cellular signals and the short-range radio
signals, wherein the cellular network includes a plurality
of public IP addresses and the wireless local area network
includes a plurality of private IP addresses, and wherein
the router software component translates a first IP
address in the plurality of public IP addresses to a second
IP address in the plurality of private IP addresses.
Ex. 1001, 16:40–17:7.

D. The Prior Art
Petitioner relies on the following prior art:
1. PCT Pub. No. WO 00/41529 to Snelling et al., published July 20,
2000 (“Snelling”) (Ex. 1005);
2. Dan Decasper et al., Router Plugins A Software Architecture for
Next Generation Routers, Proceedings of ACM SigComm ’98 Conference, 28
COMP. COMM. REV. 4 (October 1998) (“Router Plugins”) (Ex. 1006);
3. IEEE Std. 802.11b-1999, Part 11: Wireless LAN Medium Access
Control (MAC) and Physical Layer (PHY) specifications: Higher-Speed
Physical Layer Extension in the 2.4 GHz Band (published January 20, 2000)
(“802.11b”) (Ex. 1007);
4. P. Srisuresh & M. Holdredge, RFC 2663: IP Network Address
Translator (NAT) Terminology and Considerations (August 1999) (“RFC
2663”) (Ex. 1008); and
5. U.S. Patent No. 6,963,912 B1 to Schweitzer et al., issued
November 8, 2005 (“Schweitzer”) (Ex. 1009).

E. The Asserted Grounds
Petitioner challenges claims 1, 4, 5, 7–10, 12, 14–16, and 23–24 of the
’532 patent on the following grounds (Pet. 4):
References Basis Claim(s) Challenged
Snelling and Router Plugins § 103 1, 4, 5, 8, 10, 12, 14, and 23
IPR2015-01442
Patent 7,295,532 B2

6
Snelling, Router Plugins, and
802.11b
§ 103 7
Snelling, Router Plugins, and RFC
2663
§ 103 9
Snelling, Router Plugins, and
Schweitzer
§ 103 15, 16, and 24
In support of its challenges, Petitioner relies on the Declaration of
Dr. Sayfe Kiaei (Ex. 1003).

III. ANALYSIS
We turn now to Petitioner’s asserted grounds of unpatentability, Patent
Owner’s arguments in the Preliminary Response, and the supporting evidence
to determine whether Petitioner has met the threshold standard of 35 U.S.C.
§ 314(a).

A. Claim Interpretation
The Board interprets claims in an unexpired patent using the “broadest
reasonable construction in light of the specification of the patent in which
[they] appear[].” 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs.,
LLC, 793 F.3d 1268, 1275–78 (Fed. Cir. 2015). Under the broadest
reasonable interpretation standard, claim terms are given their ordinary and
customary meaning in view of the specification, as would be understood by
one of ordinary skill in the art at the time of the invention. In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Although the parties
discuss constructions for several claim limitations (Pet. 9–15, Prelim. Resp.
10–17), on this record and for purposes of this decision, we determine that
only one claim terms requires express construction.
IPR2015-01442
Patent 7,295,532 B2

7
Petitioner proposes that the term “a hand-held device,” which “only
appears in the preamble,” does not limit the claimed invention and that no
construction is necessary. Pet. 10–12. Petitioner also argues the term should
be construed broadly enough to encompass a mobile device for enabling
communication between one or more devices connected to one or more
cellular networks and one or more devices connected to a wireless local area
network. Id. at 12.
Patent Owner argues a person of ordinary skill in the art would
understand the meaning of “a hand-held device” to be “its plain and ordinary
meaning, without any additional construction.” Prelim. Resp. 11. Patent
Owner further argues Petitioner provides no support for its proffered
interpretation of the term, and that “[m]obile is not synonymous with hand-
held.” Id. at 13.
Before construing the term “hand-held device,” we address whether its
appearance in the preamble renders it limiting. “A claim’s preamble may
limit the claim when the claim drafter uses the preamble to define the subject
matter of the claim.” August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278,
1284 (Fed. Cir. 2011). “In general, a preamble limits the invention if it
recites essential structure or steps, or if it is ‘necessary to give life, meaning,
and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Whether to treat a
preamble as a limitation is a determination ‘resolved only on review of the
entire[ ] . . . patent to gain an understanding of what the inventors actually
invented and intended to encompass by the claim.’” Id. at 808 (quoting
IPR2015-01442
Patent 7,295,532 B2

8
Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1257
(Fed. Cir. 1989)).
“Where a patentee uses the claim preamble to recite structural
limitations of his claimed invention, the PTO and courts give effect to that
usage.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Eaton Corp. v.
Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (when limitations
in the body of the claim rely upon or derive essential structure from the
preamble, then the preamble may act as a necessary component of the
claimed invention).
Our consideration of the evidence leads us to the conclusion that the
preamble is limiting. The term “hand-held device” appears prominently in
the specification. In the “Summary of the Invention” section, the
specification states: “A hand-held device for providing communication
between a wide area network and a wireless local area network is
provided . . . .” Ex. 1001, 1:61–64 (emphasis added). This section also
states: “According to an embodiment of the present invention, the hand-held
wireless device is a cellular telephone . . . .” Ex. 1001, 4:1–2 (emphasis
added). The specification uses the term “hand-held device” as the heading
for Detailed Description Section II, which describes device 106 and terminals
107: “II. Hand-held Device/Terminal Hardware” in which “FIG. 2
illustrates embodiments of terminals 107 and device 106.” Id. at 6:36–38.
Rather than glossing over the role of the hand-held device in the overall
invention, other portions of the specification provide additional details about
the hand-held nature of the claimed device. See, e.g., id. at Abstract
(identifying a cellular telephone), 6:16–19 (identifying different
embodiments of the present invention), 6:37–59 (discussing the hand-held
IPR2015-01442
Patent 7,295,532 B2

9
device with reference to Fig. 2), 14:23–15:38 (discussing usage scenarios
including a cellular telephone as the hand-held device).
The term “hand-held device” appears prominently in the claims as
well. The challenged claims all are directed to a device, rather than a method
or a system; in each case, the device is a hand-held device. The term “hand-
held device” recites a structural limitation of the claim, in that the “hand-
held” aspect of the device is a dimensional, physical restriction on the size of
the device. The limitations in all of the claims rely upon or derive essential
structure from the preamble, in that they are housed within a hand-held
device, which limits the size and adaptations required of the remaining
limitations in the claims. Every claim depending from claim 1 recites “[t]he
hand-held device of claim 1.” Ex. 1001, 17:8–18:47. Thus, we determine the
use of “hand-held device” in the preamble of the challenged claims is
limiting, in that it denotes a structural limitation of the claimed device.
Having determined that the term “hand-held device” is limiting, we
turn to the construction of the term. Petitioner urges that the term be
construed “broadly enough to encompass a mobile device for enabling
communication between one or more devices connected to one or more
cellular networks and one or more devices connected to a wireless local area
network.” Pet. 12. Patent Owner, although urging that no additional
construction is needed, states the plain meaning of the term “hand-held
device” is “a device that is hand-held, i.e., a device that that is designed to be
held and operated in a person’s hand.” Prelim. Resp. 11–12. We adopt
Patent Owner’s construction, namely, “a device that is designed to be held
and operated in a person’s hand.”
IPR2015-01442
Patent 7,295,532 B2

10
In support of its argument that the term should be construed broadly
enough to encompass a mobile device, Petitioner relies on this passage in the
specification: “In an embodiment of the present invention, device 106 is a
cellular handset or telephone. In an alternate embodiment of the present
invention, device 106 is a cellular enabled PDA, wireless modem and/or
wireless laptop computer.” Pet. 13 (quoting Ex. 1001, 6:16–19). Regarding
this passage, we agree with Patent Owner that Petitioner does not explain
how the referenced devices in the alternate embodiment relate to the term
“hand-held device,” or why they would be considered mobile devices.
Prelim. Resp. 13. Claim 1 is directed to a hand-held embodiment of the
invention. Claims often are directed to a narrower embodiment or disclosure
than those presented in the specification as a whole. See TIP Sys., LLC v.
Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed. Cir. 2008). The
fact that other devices are disclosed as alternate embodiments in the
specification does not detract from the express inclusion of a “hand-held
device” in the challenged claims.
Moreover, we are not persuaded the term “hand-held device” should be
construed broadly enough to be equivalent to the term “mobile device.”
Hand-held does not necessarily mean mobile, and mobile does not
necessarily mean hand-held. See Prelim. Resp. 13. Petitioner argues:
“These devices [cited in the passage at Ex. 1001, 6:16–19], in general, are
mobile devices.” Pet. 13. This reasoning, however, does not provide
adequate explanation of the meaning of the term “mobile device,” or whether
it has its own meaning as a term of art. Similarly, Petitioner does not provide
sufficient reasoning why the term “mobile device” would apply to the list of
alternate embodiments cited in the passage. Thus, we are not persuaded by
IPR2015-01442
Patent 7,295,532 B2

11
Petitioner’s argument that “hand-held device” should encompass a mobile
device.
Therefore, we find the preamble term “hand-held device” to be
limiting, and thus the claimed device is a “hand-held device” as we have
construed the term, i.e., “a device that is designed to be held and operated in
a person’s hand.”

B. Grounds Asserted
1. Ground Based on Snelling and Router Plugins
Petitioner challenges claims 1, 4, 5, 8, 10, 12, 14, and 23 as obvious
under 35 U.S.C. § 103(a) over Snelling and Router Plugins. Pet. 15–44.
Patent Owner disputes Petitioner’s contentions. Prelim. Resp. 17–39.
Snelling is directed to a network control unit (“NCU”) that provides
connectivity between devices on a local network and external
telecommunications networks. Ex. 1005, Abstract, 4:24–26. Devices on the
local network are coupled to wireless access units (“WAUs”) that
communicate via RF link with the NCU. Id. at Abstract. Snelling states that
its local area network “can be entirely mobile, connected to outside
telecommunications networks via air interfaces such as cellular.” Id. An
example of Snelling’s NCU is shown in Figure 3A:
IPR2015-01442
Patent 7,295,532 B2

12

Figure 3A above illustrates, in functional block diagram format, an
embodiment of an NCU according to Snelling. Id. at 12:16–18. Figure 1
below shows NCU 100 in operation in a residential unit.

IPR2015-01442
Patent 7,295,532 B2

13
Figure 1 above is a schematic view of a residence featuring one embodiment
of Snelling’s system. Id. at 12:12–13.
Router Plugins is directed to a software architecture that can
“dynamically upgrade router software in an incremental fashion” and is
designed to be compatible with operating systems of small and mid-sized
routers. Ex. 1006, Abstract, 230 col. 1 ¶ 5. The router software architecture
is based on implementation of specific algorithms in the form of modules
called plugins. Id. at Abstract, 229 col. 2 ¶ 2. A software component called a
Plugin Control Unit (“PCU”) manages plugins that are loaded into the kernel
of a router. Id. at 231 col. 1 ¶ 2.
Petitioner argues a person of ordinary skill in the art would have
modified Snelling’s “proxy server software” to utilize the routing software
described in Router Plugins. Pet. 22. Regarding the reasons to combine
Snelling and Router Plugins, Petitioner argues one of ordinary skill in the art
would have been motivated to use the router software architecture of Router
Plugins in Snelling’s NCU 100 “because doing so amounts to the use of a
known technique to improve similar devices in the same way.” Id. at 24.
Particularly, regarding NCU 100, Petitioner states it “can be ‘adapted for
mobility’ with a ‘mobile power supply’ to create a ‘transportable mobile
communications system.’” Id. at 16 (quoting Ex. 1005, 8:20–28, 54:30–31,
55:9–13). Thus, Petitioner argues, Snelling’s LAN “‘can be entirely mobile,
connected to outside telecommunications networks via air interfaces such as
cellular.’” Id. (quoting Ex. 1005, Abstract).
Patent Owner argues that neither Snelling nor Router Plugins discloses
a hand-held device. Prelim. Resp. 29–31. Patent Owner challenges
Petitioner’s reliance on the portions of Snelling describing how NCU 100 can
IPR2015-01442
Patent 7,295,532 B2

14
be adapted for mobility as identifying “a system that can be transported and
installed in a fixed new location,” rather than a hand-held device. Id. at 31.
In a related argument, Patent Owner argues that Snelling does not disclose
the “first transceiver” of claim 1 because Snelling’s NCU requires a separate
adapter and separate cellular-capable device to connect to a cellular network.
Id. at 31–34.
Snelling’s NCU may be made mobile. Ex. 1005, 54–56. NCU 100
may be attached to a mobile power source and “rapidly installed in any
location and provide full functionality in these locations.” Id. at 54:32–55:1.
When the system is adapted for mobility, NCU 100 may be connected to one
or more cellular telephones, via an adapter. Id. at 55:24–56:2. Snelling
states the “systems of the present invention may be coupled to digital cellular
telephone devices (‘PCS devices’)” (id. at 41:23–24) and illustrates such an
arrangement in Figure 18, reproduced below:

IPR2015-01442
Patent 7,295,532 B2

15
Figure 18 illustrates use of the PCS device within the communications web of
Snelling. Id. at 41:29–30. The PCS device “may be coupled to NCU 100 via
an adapter 1905 that interfaces with the cellular phone 1800.” Id. at 41:30–
32. NCU 100 itself, however, is not described as being “hand-held.” Patent
Owner highlights a number of factors supporting the allegation that one of
ordinary skill in the art would not view NCU 100 as a device that is hand-
held or even mobile in operation: its ability to be “rapidly installed in any
location” (citing Ex. 1001, 54:30–32 (emphasis added)); the examples of
situations in which NCU 100 could be used—trade show, construction site,
emergency aid organization providing assistance after a disaster (id. at 55:4–
8); and power sources including “a dedicated battery, an electric power
generator, automobile cigarette adapter, solar cells, any electro-mechanical
converter” (id. at 55:13–16). Prelim. Resp. 31. Although the NCU can
harness the functionality of a hand-held device to access a wireless network,
we are persuaded by Patent Owner’s evidence that Snelling does not identify
NCU 100 as a hand-held device. Petitioner relies on certain sections of
Snelling discussing the ability of NCU 100 to be made mobile, in that NCU
100 may be moved from location to location, but does not point to any
evidence persuading us that NCU 100 is a hand-held device. Accordingly,
Petitioner has not established that NCU 100 itself is a hand-held device
including the components and functionality of the hand-held device set forth
in the challenged claims.
Taking into account our construction of “hand-held device,” we are
unpersuaded that a “hand-held device” is disclosed by the combination of
Snelling and Router Plugins. Thus, we are not persuaded that Petitioner
would prevail on its contention that claims 1, 4, 5, 8, 10, 12, 14, and 23
IPR2015-01442
Patent 7,295,532 B2

16
would have been obvious over the combination of Snelling and Router
Plugins.
2. Remaining Grounds
Petitioner’s remaining grounds challenge claims that depend from
claim 1. All of the remaining grounds are based on a combination of
Snelling and Router Plugins, with additional references alleged to disclose
additional limitations. We have considered each of these grounds, and
determine that none of the additional cited references cure the “hand-held
device” limitation missing from the Snelling/Router Plugins combination.
Accordingly, we decline to institute inter partes review on any of the
remaining grounds asserted in the Petition.
3. Conclusion
Based on the totality of circumstances before us in this case, we
conclude that Petitioner has not presented considerations that sufficiently
support its request for inter partes review of claims 1, 4, 5, 7–10, 12, 14–16,
and 23–24 of the ’532 patent.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that inter partes review is denied as to all challenged
claims of the ’532 patent.

IPR2015-01442
Patent 7,295,532 B2

17
FOR PETITIONER:

W. Karl Renner
Kevin Greene
FISH & RICHARDSON P.C.
IPR00035-0003IP1@fr.com

FOR PATENT OWNER:

Andy H. Chan
George S. Haight
Andrew Schultz
Tuhin Ganguly
PEPPER HAMILTON LLP
chana@pepperlaw.com
haightg@pepperlaw.com
schultza@pepperlaw.com
gangulyt@pepperlaw.com