PTAB

IPR2016-00622

Samsung Electronics Co., Ltd. v. Rosetta-Wireless Corp

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1. Case Identification

2. Patent Overview

  • Title: Wireless Intelligent Personal Server
  • Brief Description: The ’511 patent describes a hand-portable, wireless personal network server (WIPS) capable of receiving electronic files over a wireless channel. The core inventive concept, added during reexamination, is an interface that allows an application on an external display device (e.g., a PC) to selectively "pick and open" a file stored on the server while that file remains resident on the server, rather than being first transferred to the external device.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-7, 10, 19, 58, 60-65, and 68 are obvious over Goggin in view of Proxim.

  • Prior Art Relied Upon: Goggin (a 1999 developer's handbook for Windows CE) and Proxim (a 1999 press release for a wireless LAN card).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Goggin disclosed all elements of the independent claims except, potentially, for explicit wireless communication. Goggin taught hand-portable Windows CE devices (personal servers) with a CPU, memory, and embedded instructions. Critically, Goggin described the Remote Application Programming Interface (RAPI), which enabled a client application (e.g., on a desktop PC) to execute functions on the server (the CE device), including creating, opening (CeCreateFile), reading (CeReadFile), and writing (CeWriteFile) files that remained resident on the CE device. Petitioner contended this directly maps to the key limitation of picking and opening a file while it remains resident on the server. Proxim, a press release for a PCMCIA wireless LAN card, was disclosed as being designed for and compatible with the exact Windows CE devices described in Goggin.
    • Motivation to Combine: A POSITA would combine Goggin and Proxim because Goggin itself explicitly directed developers to use Proxim’s wireless LAN cards to add wireless networking capabilities to Windows CE devices. The motivation was to achieve the known and desirable goal of a "truly mobile" device with continuous access to networked information, a key advantage highlighted in both references.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved integrating a standard-compliant wireless card (Proxim) into a device expressly designed to accept such cards (the CE devices in Goggin) to achieve the predictable result of wireless network access.

Ground 2: Claims 2 and 59 are obvious over Goggin and Bodnar (with or without Proxim).

  • Prior Art Relied Upon: Goggin, Proxim, and Bodnar (Patent 6,012,063).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims 2 and 59, which required that the downstream data reflect only the changes made to a source file, resulting in an updated version. Petitioner argued that the base combination of Goggin and Proxim provided the networked portable server, while Bodnar taught a "Block File System for Minimal Incremental Data Transfer." Bodnar specifically addressed the problem of efficiently synchronizing files between portable and host devices by transferring only the "delta" (i.e., the new, removed, or modified blocks) instead of the entire file.
    • Motivation to Combine: A POSITA implementing the system of Goggin would have been motivated to incorporate Bodnar's teachings to solve the well-known problems of limited communication speed and battery life inherent in portable devices. Transferring only file deltas, as taught by Bodnar, was a known technique to make file synchronization faster and more efficient, a clear advantage for the mobile environment described by Goggin.
    • Expectation of Success: The combination involved applying a known data transfer optimization technique (Bodnar) to a standard file system (Goggin), which would have been a straightforward and predictable implementation for a POSITA.

Ground 3: Claims 20 and 69 are obvious over Goggin and DeLorme (with or without Proxim).

  • Prior Art Relied Upon: Goggin, Proxim, and DeLorme (a 1999 website publication for a GPS receiver).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground challenged claims 20 and 69, which added a GPS input for connecting a GPS receiver. Petitioner asserted that Goggin taught a Windows CE device with standard I/O ports (like a serial port) for connecting various peripherals. DeLorme taught an "Earthmate GPS Receiver" that was explicitly designed to connect to handheld PCs running Windows CE via a standard adapter cable.
    • Motivation to Combine: A POSITA would combine these references for the simple and advantageous purpose of adding location-tracking functionality to the portable device. DeLorme explicitly suggested this combination. Given that Goggin's device was designed to be portable and connect to peripherals, adding a common peripheral like a GPS receiver to provide location data was a simple and obvious improvement.
    • Expectation of Success: There was a high expectation of success, as it involved connecting a commercially available peripheral (DeLorme) to a standard port on a device (Goggin) that was designed for such connections.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Goggin (and Proxim) with other references to show that further claimed features were well-known and obvious to add. These included:

    • Jornada (a 1998 user guide): To show the obviousness of connecting the server to different types of external display devices, like a desktop and a notebook PC (claims 8-9).
    • Ogasawara (a 1999 article): To show the obviousness of adding a keyboard input for connecting an external keyboard (claims 21, 70).
    • CapShare (a 1999 publication): To show the obviousness of adding a card reader input for connecting a business card scanner (claims 22, 71).

4. Key Claim Construction Positions

Petitioner argued that the claim terms should be given their plain and ordinary meaning under the broadest reasonable interpretation standard. Key positions included:

  • "network server" (claims 1, 58): Proposed as "a computer that shares data and/or files with at least one other connected computer." This construction was argued to be consistent with the ’511 patent's depiction of the WIPS as a conventional computer and its disclosure of broad network functionality.
  • "a first interface for allowing an application … to pick and open … while said at least one electronic file remains resident on said personal network server" (claims 1, 58): Petitioner noted this limitation was added during reexamination to mean that the file is opened on the server rather than being transferred first. Petitioner argued that its prior art, particularly Goggin’s disclosure of RAPI, met this limitation without needing a specific construction.
  • "wireless communications channel" (claims 1, 10, 58, 65): Proposed as "a wireless path or link through which information passes between at least two devices." This broad construction was supported by the patent's varied examples (FM, TV, paging, cellular) and the common understanding of the term.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-10, 19-22, 58-65, and 68-71 of the ’511 patent as unpatentable under 35 U.S.C. §103.