Samsung Electronics Co Ltd v. Rosetta Wireless Corp

1. Case Identification

• Case #: IPR2016-00622
• Patent #: 7,149,511
• Filed: February 12, 2016
• Petitioner(s): Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Apple Inc.
• Patent Owner(s): Rosetta-Wireless Corporation
• Challenged Claims: 1-10, 19-22, 58-65, 68-71

2. Patent Overview

• Title: Wireless Intelligent Personal Server
• Brief Description: The ’511 patent describes a hand-portable "wireless intelligent personal network server" (WIPS) that can wirelessly receive and store electronic files. The core inventive concept, added during reexamination, involves an interface that allows an application on an external display device (e.g., a PC) to "pick and open" a file while that file remains resident on the portable server.

3. Grounds for Unpatentability

Ground 1: Obviousness over Goggin and Proxim - 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 "Windows CE Developer's Handbook") and Proxim (a 1999 press release for a wireless LAN PC card).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Goggin, a comprehensive guide to developing for Windows CE devices, taught all elements of the independent claims. Goggin described hand-portable devices (e.g., HP Jornada) running Windows CE with a CPU, memory, and software instructions. Crucially, Goggin detailed the Remote Application Programming Interface (RAPI), which allowed a desktop PC (an external display device) to execute functions on a connected CE device, including creating, reading, and writing files (e.g., using CeCreateFile() and CeWriteFile()) while the files remained resident on the CE device. This, Petitioner asserted, met the key "pick and open... while resident" limitation. Proxim was cited to explicitly teach a commercially available radio frequency (RF) wireless LAN PC card (the RangeLAN2 7410 CE) designed for these Windows CE devices, satisfying the "RF receiver/transceiver" limitation.
  • Motivation to Combine: A POSITA would combine these references because Goggin itself expressly identified and recommended using Proxim's wireless LAN cards to provide wireless connectivity to the Windows CE devices it described. The combination would have predictably enabled the advantageous client-server network functionality discussed in Goggin, but in a wireless context.
  • Expectation of Success: Success was expected because Goggin taught that Windows CE devices had PCMCIA slots to accept networking cards, and Proxim provided a card specifically designed for those devices and that operating system, making the integration routine and its outcome predictable.

Ground 2: Obviousness over Goggin, Proxim, and Bodnar - Claims 2 and 59 are obvious over Goggin in view of Proxim and Bodnar.

• Prior Art Relied Upon: Goggin, Proxim, and Bodnar (Patent 6,012,063).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Goggin/Proxim combination to address dependent claims 2 and 59, which required that the downstream data reflect "changes made to at least one source electronic file" (i.e., a delta update). Petitioner argued that Bodnar taught a file system specifically designed for portable devices to solve communication speed limitations by transferring only the "delta" (i.e., any new, removed, or modified blocks) between an original and modified file to update a remote copy.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Bodnar's teachings into the Goggin/Proxim system to improve efficiency. Goggin taught the benefits of synchronizing data across multiple devices. Bodnar's method of sending only changes would make this synchronization faster, reduce network usage, and conserve battery life on the portable device—all well-known goals in the art.
  • Expectation of Success: A POSITA would have expected success in applying Bodnar's file update logic to the RAPI file operations described in Goggin, as it was a known software-based technique for optimizing data transfer between coupled computing devices.

Ground 3: Obviousness over Goggin, Proxim, and DeLorme - Claims 20 and 69 are obvious over Goggin in view of Proxim and DeLorme.

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

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims 20 and 69, which added a "GPS input for connecting a global positioning system... receiver." Petitioner asserted that DeLorme disclosed a commercial GPS receiver that was explicitly designed to be connected to and used with handheld PCs running Windows CE via a standard serial port. Goggin taught that Windows CE devices included such standard serial ports for connecting peripherals.
  • Motivation to Combine: The motivation was straightforward: DeLorme explicitly taught connecting its GPS device to the very type of Windows CE devices described in Goggin. A POSITA would have seen the clear advantage of adding location-tracking capabilities to a portable device, a common and desirable feature enhancement.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination merely involved connecting a peripheral (DeLorme's GPS) to a standard, compatible port (the serial port) on the host device (Goggin's CE device) as instructed by both references.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Jornada (a user guide for an HP handheld PC), Ogasawara (an article on an external keyboard), and CapShare (a publication on a portable e-copier) to address dependent claims reciting connections to different types of display devices and peripherals like keyboards and card readers.

4. Key Claim Construction Positions

• "a first interface for allowing an application ... to pick and open said at least one electronic file while said at least one electronic file remains resident on said personal network server": Petitioner argued this limitation, which was added during reexamination to overcome prior art, means that "the file is opened on the [personal network] server, rather than being transferred to the computer first." Petitioner adopted the Examiner’s interpretation from the reexamination and argued that Goggin’s disclosure of RAPI functions met this construction.
• "network server": Petitioner proposed construing this preamble term as "a computer that shares data and/or files with at least one other connected computer," arguing this encompassed the client-server relationship between the portable CE device and a desktop PC as described in Goggin.

5. Key Technical Contentions (Beyond Claim Construction)

• The central technical contention was that the feature used by the Patent Owner to secure allowance during reexamination—remotely opening a file that remains resident on a server—was not novel or non-obvious in 2000. Petitioner argued this functionality was a widely known and fundamental capability of Microsoft's Remote API (RAPI) for the Windows CE operating system. The Goggin reference was presented as dispositive proof that a POSITA would have been intimately familiar with using RAPI to allow a desktop application to call functions that manipulated files directly on a connected handheld device without first transferring the entire file.

6. Relief Requested

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