PTAB

IPR2013-00107

Kyocera Corp v. ADC Technology Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Portable Communicator
  • Brief Description: The ’313 patent is directed to a portable, clamshell-style wireless telephone apparatus that integrates standard telephone, facsimile, and data communication functions within a laptop-like device featuring a display and user inputs. The core inventive concept purports to be the capability of monitoring data transmission and reception at predetermined time settings or intervals and showing the results on the device’s display.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 3, 5, 10, 12, and 16 are obvious over Paajanen in view of Agulnick, May, Matsuo, and Takahashi II.

  • Prior Art Relied Upon: Paajanen (Patent 5,189,632), Agulnick (Patent 5,347,295), May (Patent 5,043,721), Matsuo (Japanese Patent Publication No. 64-055951), and Takahashi II (Japanese Publication JPS62-213348).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the primary reference, Paajanen, taught the fundamental hardware of a "portable personal workstation" combining a personal computer with an integrated mobile phone, thereby disclosing the basic physical elements of independent claims 1 and 10. This included a housing, wireless communication device, CPU, display, microphone, and speaker. Petitioner contended that the key limitation—monitoring data transmission and reception at predetermined intervals and displaying the results—was obvious from the combination of secondary references. Matsuo was cited for disclosing the monitoring of data transmission/reception and displaying the status. To meet the "predetermined intervals" element, Petitioner relied on May, which taught a paging device that periodically wakes up to check for messages, and Takahashi II, which taught an electronic device that monitors data and control signals at a "fixed time interval" (e.g., every 0.1 seconds).
    • Motivation to Combine: A POSITA would combine these references to increase the convenience of the portable communicator by providing the user with a real-time status display of communication activity, which was a known and desirable feature.
    • Expectation of Success: Combining known periodic monitoring techniques with a known portable computer/phone platform would have been a straightforward implementation using conventional programming, yielding predictable results.

Ground 2: Claims 1, 4, 10, 11, 12, and 16 are obvious over PCradio, O'Sullivan, and TABLET in view of Breeden, Marui, Brigida, Cocks, and Sugita.

  • Prior Art Relied Upon: PCradio (IBM 9075 PCradio publications), O'Sullivan (Patent 4,972,457), TABLET (a publication entitled “Personal Computer in the Year 2000”), Breeden (Patent 5,327,578), Marui (Patent 4,996,715), Brigida (Patent 5,535,242), Cocks (European Patent Publication No. EP 0529788), and Sugita (Japanese Publication JPH2-145030).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative hardware foundation for the obviousness rejection. Petitioner argued that the combination of PCradio, O'Sullivan, and TABLET collectively taught a portable, battery-powered computer with an integrated cellular transceiver, display, speaker, microphone, and data processing capabilities, thus satisfying the basic hardware limitations. The secondary references were then combined to teach the data monitoring element. Brigida taught that a user of a portable device (like PCradio) could be "continually apprised of the status of the communication channel, in real time." Breeden was cited for teaching a device that measures signal strength by sampling a channel at a "predetermined time interval." Cocks taught a device for cellular networks that could monitor a line at predetermined intervals, and Sugita disclosed a system performing "intermittent reception in a predetermined period."
    • Motivation to Combine: The motivation was again to enhance user convenience by incorporating well-understood status monitoring and display functions into a portable communication device, a clear market-driven improvement.
    • Expectation of Success: A POSITA would have reasonably expected success in integrating these known timing and monitoring functions from the secondary references into the portable computing platforms described by the primary references, as it involved applying known software techniques to known hardware.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on variations of the above combinations. These included arguments for dependent claims by adding references like Cannon (for battery/memory status), Lund and Boothroyd (for clamshell/display configurations), and Herron (for a power switch operable in a folded state). Further grounds argued for substituting the PCradio/O'Sullivan/TABLET combination into the grounds that relied primarily on Paajanen.

4. Relief Requested

  • Petitioner requests the institution of an inter partes review (IPR) and the cancellation of claims 1-18 of Patent 8,103,313 as unpatentable under 35 U.S.C. §103.