Apple Inc v. Rosetta Wireless Corp

1. Case Identification

• Patent #: 7,149,511
• Filed: February 12, 2016
• Petitioner(s): Apple Inc., Samsung Electronics Co. Ltd., and Samsung Electronics America, Inc.
• Patent Owner(s): Rosetta-Wireless Corporation
• Challenged Claims: 1-10 and 58-65

2. Patent Overview

• Title: Wireless Intelligent Personal Server
• Brief Description: The ’511 patent discloses a hand-portable server computer, termed a "wireless intelligent personal network server" (WIPS), that wirelessly receives and stores electronic files. The WIPS provides an interface allowing an external display device to remotely access and open these files while they remain resident on the portable server, enabling a user to access their files from various locations and devices.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kimura - Claims 1-10 and 58-65 are obvious over Kimura in view of the general knowledge of a Person Having Ordinary Skill in the Art (POSITA).

• Prior Art Relied Upon: Kimura (Patent 5,864,853)

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Kimura discloses a "portable file system" that is materially the same as the system claimed in the ’511 patent. Kimura’s system consists of a "portable personal data device" (PPDD) that wirelessly communicates with a separate "stationary computer." Petitioner asserted that this PPDD is the equivalent of the claimed "wireless intelligent personal network server."

  Independent claims 1 and 58 require an interface allowing an external device to "pick and open" a file while the file "remains resident on said personal network server." This limitation was added during reexamination to overcome prior art. Petitioner contended that Kimura teaches this exact functionality through its file "mounting" feature. In Kimura, the PPDD’s file system is mounted onto the stationary computer’s system, allowing an application on the stationary computer to access and process files directly from the PPDD’s memory. An "open request" from the stationary computer causes file data to be read from the PPDD's memory and returned to the stationary computer for viewing, all while the master file remains resident on the PPDD.

  Petitioner further mapped other key limitations:

  • Kimura’s PPDD includes a "communication unit" for radio communication, meeting the RF receiver/transceiver limitation.
  • Kimura’s PPDD has a "file memory unit." Although a CPU is not explicitly shown, Petitioner argued its presence is inherent or at least obvious for executing the device's described software functions.
  • Kimura explicitly describes its PPDD as "portable" and "carried" by the user, meeting the hand-portable limitation.

  For dependent claims, Petitioner argued:

  • Claims 2 & 59 (File Synchronization): These claims require updating a file on the server with downstream data. While Kimura describes file syncing from the PPDD to the stationary computer, Petitioner argued that implementing this well-known functionality in the reverse direction (from stationary computer to PPDD) would have been an obvious modification for a POSITA to keep files synchronized.

  • Claims 4 & 61 (Read-Only/General Access): Kimura discloses protecting backed-up data with different access levels, such as "read-only." Petitioner contended it would be obvious to apply this known concept to limit access to files on the PPDD itself.

  • Claims 6, 7, 63 & 64 (External Device Type): Kimura discloses its stationary computer can be a "personal computer." Petitioner asserted it would have been obvious that this includes desktops and laptops. For PDAs, Petitioner argued that since PDAs were known as a type of personal computer at the time, it would have been an obvious and desirable implementation for portability.

  • Claims 8 & 9 (Multiple/Different Devices): Kimura explicitly teaches that its PPDD "can be connected with various different types of stationary computers," directly disclosing the ability to access files from different devices at different times.

  • Motivation to Combine (for §103 grounds): The primary motivation cited was not to combine distinct references, but to implement Kimura's teachings using conventional and well-known techniques. A POSITA would have been motivated to fill any implicit gaps in Kimura (such as adding a CPU to run software) and apply known concepts like bi-directional file syncing or read-only permissions to improve Kimura’s disclosed system in a predictable way, thereby achieving the claimed invention.

  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because the arguments rely on applying conventional computer technologies (e.g., file mounting, access permissions, CPUs) to Kimura's disclosed system to achieve predictable results.

4. Key Claim Construction Positions

• "a first interface for allowing an application on an external display device to pick and open said at least one electronic file while said at least one electronic file remains resident on said personal network server" (claims 1/58): Petitioner highlighted that this limitation was added during reexamination, with the examiner allowing the claims based on the interpretation that the file is "opened on the [personal network] server, rather than being transferred to the computer first." Petitioner argued that even under this narrow construction, Kimura renders the claims obvious because its file access process involves reading data from the PPDD's memory (i.e., opening the file on the server) before transmitting it.
• "network server" (claims 1/58): Petitioner proposed this term means "a computer that shares data and/or files with at least one other connected computer." This construction is supported by the ’511 patent's examples and contemporaneous technical dictionaries, and encompasses Kimura's PPDD sharing files with a stationary computer.
• "wireless communications channel" (claims 1/58, 10/65): Petitioner proposed this term means a "wireless path or link through which information passes between at least two devices." This broad construction is consistent with the specification and covers the radio communication link between Kimura’s PPDD and stationary computer.

5. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 1-10 and 58-65 of the ’511 patent as unpatentable.