PTAB

IPR2022-00807

Apple Inc v. Smart Mobile Technologies LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Wireless Device with Software Reconfigurable for Various Environments
  • Brief Description: The ’168 patent describes a wireless device that can be reconfigured using software downloaded from a remote server. This allows the device to operate across different network environments (e.g., public cellular, office, home) and to function as a remote controller for other network-connected appliances.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sainton, Baker, and Mueller - Claims 2-5, 23, and 28 are obvious over Sainton in view of Baker and Mueller.

  • Prior Art Relied Upon: Sainton (Patent 5,854,985), Baker (Patent 6,430,599), and Mueller (Patent 6,185,413).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination teaches the key limitations of the challenged claims. Sainton disclosed a "frequency and protocol agile" wireless communication device with a reconfigurable library of protocols for operating on various networks (e.g., TDMA, CDMA, wireless LAN). Baker taught a lightweight framework where a server ("lookup service") provides downloadable "service objects" (i.e., applications) to small-footprint devices like smart cellular phones, enabling them to control other networked devices (e.g., printers, TVs). Mueller provided the specific, well-known technical details (e.g., frequency bands, channel spacing) for the various cellular standards that Sainton generally referenced, such as GSM and D-AMPS. Together, these references were alleged to disclose a system where a multi-network wireless device downloads software from a server to add functionality and adapt its communication parameters.
    • Motivation to Combine: A POSITA would combine Sainton and Baker to implement the desirable third-party application functionality described by Sainton using Baker's established client-server framework for "service objects." Because Sainton identified various communication standards (like the "European standard" for GSM) but omitted technical specifics, a POSITA would have been motivated to consult a reference like Mueller, which detailed those exact known parameters, to implement Sainton's agile device.
    • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success because the combination involved applying a known software distribution model (Baker) to a known reconfigurable hardware platform (Sainton) using well-understood network parameters (Mueller).

Ground 2: Obviousness over Sainton, Baker, Mueller, and Humpleman - Claims 25 and 34 are obvious over Sainton in view of Baker, Mueller, and Humpleman.

  • Prior Art Relied Upon: Sainton (Patent 5,854,985), Baker (Patent 6,430,599), Mueller (Patent 6,185,413), and Humpleman (Patent 7,043,532).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the core combination of Sainton, Baker, and Mueller by adding Humpleman to teach specific features of home network control relevant to claims 25 and 34. Humpleman disclosed a system for performing services on a home IP network where a client device (e.g., a PDA) communicates with various home "server devices" (appliances). Specifically, Humpleman taught using the client to program one server device to control another at a desired later time, including commands for starting and stopping operations.
    • Motivation to Combine: Petitioner argued that while Baker taught controlling networked devices like printers and TVs, it did not detail the full scope of controllable devices. A POSITA seeking to expand the capabilities of the Sainton/Baker system to a home environment would have been motivated to look to Humpleman for its teachings on controlling diverse home appliances and implementing time-delayed, automated control, which provided benefits like reduced user engagement.
    • Expectation of Success: Success was predictable because applying Humpleman's home automation logic to the Sainton/Baker framework was an application of a known control scheme to a known type of network, a task well within the skill of a POSITA.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on the core combination of Sainton, Baker, and Mueller in further view of:

    • Grube (Patent 5,201,067) for claim 22, teaching a wireless device downloading information to operate as a remote control for devices like garage door openers.
    • Hsu (Patent 6,587,684) for claims 19-20 and 32, teaching a mobile device using URLs to request and download software updates from a server.
    • Camp (Patent 6,252,543) for claim 21, teaching a method for improving location accuracy by combining signals from GPS satellites and terrestrial base stations.
    • Petty (Patent 6,337,858) for claim 29, teaching a system where a web server downloads a VoIP client (as a JAVA applet) to a device to configure it as an IP telephone.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate.
  • Under §325(d): Denial was argued to be unwarranted because the prior art references and combinations asserted in the petition were never considered by the Examiner during the original prosecution of the ’168 patent.
  • Under Fintiv: Petitioner argued the factors weighed against denial, primarily because the co-pending district court litigation was in its very early stages, with minimal investment and discovery yet to occur. Further, Petitioner asserted that the scheduled trial date in the parallel proceeding (October 23, 2023) was after the projected date for the Board's Final Written Decision (October 5, 2023), mitigating concerns of inefficiency or conflicting decisions.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 2-5, 19-23, 25, 28, 29, and 34 of the ’168 patent as unpatentable under 35 U.S.C. §103.