Iron Dome LLCv.CRFD Research, Inc.

Patent Trial and Appeal Board

Apr 22, 2016

09953408 (P.T.A.B. Apr. 22, 2016)

Trials@uspto.gov Paper 30
571-272-7822 Entered: April 22, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

IRON DOME LLC,
Petitioner,

v.

CRFD RESEARCH, INC.,
Patent Owner.
____________

Case IPR2015-00055
Patent 7,191,233 B2
____________

Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

ARBES, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. BACKGROUND
Petitioner Iron Dome LLC filed a Petition (Paper 1, “Pet.”) seeking
inter partes review of claims 1–6, 8–11, 13–15, 17, 18, 20, and 34 of
U.S. Patent No. 7,191,233 B2 (Ex. 1001, “the ’233 patent”) pursuant to
35 U.S.C. §§ 311–19. On April 27, 2015, we instituted an inter partes
review of claims 1, 4–6, and 8–11 on two grounds of unpatentability
(Paper 10, “Dec. on Inst.”). Patent Owner CRFD Research, Inc. filed a
Patent Owner Response (Paper 16, “PO Resp.”), and Petitioner filed a Reply
(Paper 17, “Reply”). An oral hearing was held on January 19, 2016, and a
transcript of the hearing is included in the record (Paper 29, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1, 4–6, and 8–11 are
unpatentable.

A. The ’233 Patent1
The ’233 patent describes a system and method for “user-directed
transfer of an on-going software-based session from one device to another
device.” Ex. 1001, col. 1, ll. 8–11. A user may have a number of
communication-enabled devices (e.g., cellular telephone, wireless personal
digital assistant (PDA), laptop computer, desktop computer) through which
the user conducts software application sessions. Id. at col. 1, ll. 15–52. The

1 The ’233 patent also is the subject of Cases IPR2015-00259 and
IPR2015-00627, in which inter partes reviews were instituted, and was the
subject of Case IPR2015-00157, in which the request for inter partes review
was denied.
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user may conduct a session on one device and then decide to switch to
another device. Id. at col. 1, ll. 53–59. For example, the user may want to
switch from a stationary device to a mobile device, or to switch to a device
with a different graphical user interface. Id. According to the ’233 patent,
conventional systems that required the user to “discontinue the current
session on the first device and reinitiate a new session on the second device”
could entail inconveniences such as the history of the original session being
lost or time delays involved in logging off and reinitiating. Id. at col. 1,
ll. 59–66.
Figure 1 of the ’233 patent is reproduced below.

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Figure 1 depicts wireless clients 120 (e.g., a cellular telephone or PDA) and
wired clients 125 (e.g., a desktop or laptop computer) of a user that connect
over various networks to application services network 105. Id. at col. 4,
ll. 4–11, 30–33, col. 5, ll. 3–6. Wireless clients 120 and wired clients 125
execute client programs that support session services for the respective
devices, and are “configured to have a preferred mode of interaction,
i.e., modality,” such as a graphical user interface for transferring sessions
between devices. Id. at col. 4, ll. 33–50. Application services network 105
provides session-based services (e.g., instant messaging, database querying),
and application server 140 provides applications for those services
(e.g., instant messaging application, database querying application), to
wireless clients 120 and wired clients 125. Id. at col. 5, ll. 21–30.
The ’233 patent describes the method of session transfer as follows:
(1) a “redirect or transfer command” is sent from a first device (wireless
client 120 or wired client 125); (2) session server 145 begins intercepting
messages destined for the first device; (3) the first device transmits a
“transaction or session history” to session server 145; (4) session server 145
retrieves the previously stored “device profile” of the second device to
which the session is to be redirected, “convert[s] the stored messages [of the
session history] into a data format” and/or modality compatible with the
second device, and converts the “state” of the session to a state compatible
with the second device; and (5) when the user activates the second device,
session server 145 “pushes the converted session to the redirected device
over the network 100 as a normal session with the converted transaction
log.” Id. at col. 7, l. 46–col. 8, l. 58, Figs. 3A–3B.

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B. Illustrative Claim
Claim 1 of the ’233 patent recites:
1. A method for redirecting an on-going, software based
session comprising:
conducting a session with a first device;
specifying a second device;
discontinuing said session on said first device; and
transmitting a session history of said first device from
said first device to a session transfer module after said session
is discontinued on said first device; and
resuming said session on said second device with said
session history.

C. Prior Art
The pending grounds of unpatentability in the instant inter partes
review are based on the following prior art:
Thomas Phan et al., A New TWIST on Mobile
Computing: Two-Way Interactive Session Transfer,
PROCEEDINGS OF THE SECOND IEEE WORKSHOP ON INTERNET
APPLICATIONS (WIAPP 2001) (Ex. 1002, “Phan San Jose”); and
Thomas Phan et al., Handoff of Application Sessions
Across Time and Space, IEEE INTERNATIONAL CONFERENCE ON
COMMUNICATIONS (ICC 2001) (Ex. 1003, “Phan Helsinki”).2

2 The copies of Phan San Jose and Phan Helsinki submitted by Petitioner
include Library of Congress date stamps of August 28, 2001, and July 31,
2001, respectively. Petitioner further argues that Phan San Jose was printed
in a book of articles presented at a symposium in San Jose, California, on
July 23–24, 2001, and that Phan Helsinki was printed in a book of articles
presented at a symposium in Helsinki, Finland, on June 11–14, 2001, both of
which are consistent with what is listed on the cover pages of the references.
See Pet. 3–4; Ex. 1002, 1; Ex. 1003, 1–6. Patent Owner does not dispute
Petitioner’s contentions. Based on the record presented, we are persuaded
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D. Pending Grounds of Unpatentability
The instant inter partes review involves the following grounds of
unpatentability:
Reference(s) Basis Claim(s)
Phan San Jose 35 U.S.C. § 102(a) 1
Phan San Jose and Phan
Helsinki
35 U.S.C. § 103(a) 4–6 and 8–11

II. ANALYSIS
A. Claim Interpretation
The Board interprets claims using the “broadest reasonable
construction in light of the specification of the patent in which [they]
appear[].” 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo
Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under this
standard, we interpret claim terms using “the broadest reasonable meaning
of the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description

that Phan San Jose and Phan Helsinki are prior art printed publications under
35 U.S.C. § 102(a). See Kyocera Wireless Corp. v. ITC, 545 F.3d 1340,
1350–51 (Fed. Cir. 2008) (holding that a “reference is publicly accessible
‘upon a satisfactory showing that such document has been disseminated or
otherwise made available to the extent that persons interested and ordinarily
skilled in the subject matter or art exercising reasonable diligence, can locate
it’” (citation omitted)). Also, when citing the references, we refer to the
page numbers added by Petitioner in the bottom-right corner of each page.
See 37 C.F.R. § 42.63(d)(2).
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contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). We presume that claim terms have their ordinary and
customary meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
(Fed. Cir. 2016) (“Under a broadest reasonable interpretation, words of the
claim must be given their plain meaning, unless such meaning is inconsistent
with the specification and prosecution history.”); In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary
meaning is the meaning that the term would have to a person of ordinary
skill in the art in question.” (internal quotation marks omitted)). A patentee,
however, may rebut this presumption by acting as his or her own
lexicographer, providing a definition of the term in the specification with
“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).

1. Previously Interpreted Terms
In the Decisions on Institution in Cases IPR2015-00055,
IPR2015-00157, IPR2015-00259, and IPR2015-00627, we interpreted
various claim terms of the ’233 patent as follows:
Claim Term Interpretation
“modality” a preferred mode of interaction
“device profile” information pertaining to the operation of a
device, such as the data format or modality of
the device
“in response to . . .
activation of said
second device”
in response to the second device being made
active, such as by a user logging on to the
second device
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Claim Term Interpretation
“session” a series of information transactions between
communicating devices during a particular
time period
“discontinuing” terminating or otherwise stopping, with the
ability to be resumed
“discontinued” terminated or otherwise stopped, with the
ability to be resumed
“session transfer
module”
computer hardware and/or software that
participates in the transfer of a session
See Dec. on Inst. 6–10; DISH Network Corp. v. CRFD Research, Inc.,
Case IPR2015-00627, slip op. at 6–9 (PTAB June 3, 2015) (Paper 9);
Hulu, LLC v. CRFD Research, Inc., Case IPR2015-00259, slip op. at 6–9
(PTAB June 3, 2015) (Paper 8); Unified Patents Inc. v. CRFD Research,
Inc., Case IPR2015-00157, slip op. at 6–9 (PTAB Apr. 30, 2015) (Paper 8).
The parties do not dispute these interpretations in their Patent Owner
Response and Reply. We do not perceive any reason or evidence that
compels any deviation from these interpretations. Accordingly, we adopt
our previous analysis for purposes of this Decision. We also interpret one
other limitation in claim 1.

2. Ordering of the “Specifying” Step
Although the parties do not address specifically how “specifying a
second device” in claim 1 should be interpreted, the parties disagree as to
whether the step must occur in a specific order with respect to the step of
“discontinuing said session on said first device.” Patent Owner argues in its
Response that Phan San Jose’s “pull” mode fails to disclose the “specifying”
step because the user merely clicks “Suspend” to discontinue the session and
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then chooses a particular device on which to resume the session at a later
time. PO Resp. 14–18. At the hearing, Patent Owner argued that the
“specifying” step must occur before the “discontinuing” step, citing as
support an embodiment described in the Specification of the ’233 patent.
Tr. 33:5–19, 35:17–21. Petitioner disagreed, arguing that nothing in the
claim language itself requires the “specifying” step to occur before the
“discontinuing” step. Reply 2–4; Tr. 7:9–23. We agree with Petitioner.
To determine whether the steps of a method claim that do not
otherwise recite an order must nonetheless be performed in a particular
order, we first “look to the claim language to determine if, as a matter of
logic or grammar, they must be performed in the order written.” Altiris, Inc.
v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). “If not, we next
look to the rest of the specification to determine whether it ‘directly or
implicitly requires such a narrow construction.’” Id. at 1370 (citation and
emphasis omitted); see also Mformation Techs., Inc. v. Research In Motion
Ltd., 764 F.3d 1392, 1398–99 (Fed. Cir. 2014) (“a claim ‘requires an
ordering of steps when the claim language, as a matter of logic or grammar,
requires that the steps be performed in the order written, or the specification
directly or implicitly requires’ an order of steps” (citation omitted)).
Claim 1 requires certain steps to be performed before others. For
example, the “transmitting” step must take place “after said session is
discontinued on said first device” (emphasis added). Likewise, “conducting
a session with a first device” logically must take place before “discontinuing
said session on said first device.” There is nothing in the language of the
claim, however, expressly requiring “specifying a second device” to take
place before “discontinuing said session on said first device” or requiring
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such an order as a matter of logic or grammar. The “discontinuing” step, as
well as the subsequent “transmitting” step, do not even refer to the second
device.
Thus, we look to the Specification to determine whether it expressly
or implicitly requires a particular order. The Specification discloses that
“[t]he client software of the wireless/wired client devices, 120 and 125 may
be . . . configured to provide a selection of devices that a transferring session
may be redirected thereto,” and “[t]he selection of the redirected device may
. . . be forwarded from the user of a wireless/wired client device, 120 and
125 to the session server [145].” Ex. 1001, col. 4, ll. 53–61. Also, as shown
in Figures 3A and 3B, session server 145 receives a “redirect or transfer
command” from the first client device (step 305) before it begins
intercepting messages destined for the first client device (step 310) and
“access[es] the device profile of the selected second client (or redirected)
device” (step 320). Id. at col. 7, l. 49–col. 8, l. 13. These portions of the
Specification, however, describe only “exemplary” embodiments of the
invention. Id. at col. 4, ll. 4–6, col. 7, ll. 46–49. They do not show,
expressly or implicitly, that the “specifying” step of claim 1 must occur
before the “discontinuing” step. Moreover, the Specification indicates the
opposite, stating that “although the method of the present invention has been
described by examples, the steps of the method may be performed in a
different order than illustrated or simultaneously.” Id. at col. 9, ll. 22–25.
Applying the broadest reasonable interpretation of the claims in light
of the Specification, we do not interpret claim 1 to require that the
“specifying” step take place before the “discontinuing” step.

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B. Anticipation Ground Based on Phan San Jose
Petitioner argues that claim 1 is anticipated by Phan San Jose under
35 U.S.C. § 102(a). Pet. 7–11. We have reviewed the Petition, Patent
Owner Response, and Reply, as well as the evidence discussed in each of
those papers, and are persuaded, by a preponderance of the evidence, that
claim 1 is anticipated by Phan San Jose.

1. Phan San Jose
Phan San Jose describes a research project called the “Interactive
Mobile Application Support for Heterogeneous Clients (iMASH),” which
allows physicians and staff at a hospital to use different types of devices
(e.g., desktop and laptop computers, display tablets) and “seamlessly move
an application’s session from one machine to another machine” using the
hospital’s “network as a conduit.” Ex. 1002, 5. The system provides for
“Two-Way Interactive Session Transfer (TWIST)” by placing a set of
middleware servers between the client devices and the application server,
storing state data on the middleware servers for the user’s session on a first
device (e.g., textual annotations, user preferences, URL history), and
transferring the data to the second device upon session handoff. Id. at 5–7.
Phan San Jose describes how the system could be used with a
“Teaching File” Java applet that displays medical images and associated
information, and allows users to create and modify instructional “teaching
files.” Id. at 10. In the Teaching File implementation, when a user requests
a teaching file, the application server (AS) sends the image file (stored in the
system’s proprietary picture archiving and communication system (PACS)
image format) to the middleware server (MWS). Id. at 10–11. The MWS
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then “performs the image assembly on behalf of the client, including the
conversion of the proprietary PACS image to [a] Java Image and the
manipulation of that image according to the teaching file state description.”
Id. at 11. Phan San Jose describes two ways of performing the session
handoff. Id. In the “pull” mode, “the user selects a ‘Suspend’ operation, his
session shall be saved back to the MWS, allowing the application to
terminate, and at a later time the session can be reinstantiated by the
Teaching File application running on the target machine.” Id. In the “push”
mode, “the user can select the hostname of the target from a list. When the
handoff occurs, the MWS will contact a daemon running on the target
machine to immediately launch the Teaching File applet and automatically
retrieve the session state . . . [and the] applet on the first client terminates
when the state is fully reinstantiated on the second client.” Id. Figure 5 of
Phan San Jose is reproduced below.

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Figure 5 depicts the user interface of the Teaching File applet. Id. at 10. In
the dropdown menu labeled “Target,” the user is able to choose “Suspend”
(corresponding to the “pull” mode) or one of three hostnames to which the
session may be transferred (corresponding to the “push” mode). Id. at
10–11.

2. Analysis
Petitioner has presented sufficient evidence showing that Phan San
Jose discloses every limitation of claim 1. For example, Petitioner explains
how a physician conducts a session with a “first device” (e.g., a PDA), then
discontinues the session on the “first device” by suspending the session,
causing the physician’s session history (e.g., user preferences, URL history)
to be transmitted from the PDA to a “session transfer module” (i.e., the
MWS), and chooses to reinstantiate the session on a “second device” (e.g.,
a desktop computer) using the previously saved session history. Pet. 9–11
(citing Ex. 1002, 5–7, 10).
Patent Owner makes two arguments. First, Patent Owner argues that
Phan San Jose’s description of the “push” mode does not disclose
“transmitting a session history of said first device from said first device to a
session transfer module after said session is discontinued on said first
device.” PO Resp. 11–14 (emphasis added). Patent Owner cites as support
testimony from Prasant Mohapatra, Ph.D., which largely repeats Patent
Owner’s arguments in its Response. See id. (citing Ex. 2001 ¶¶ 22, 26, 29).
As explained in the Decision on Institution, we agree with Patent Owner as
to the “push” mode in Phan San Jose, but find Petitioner’s contentions
directed to the “pull” mode more persuasive. Dec. on Inst. 13–14.
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Specifically, in the “pull” mode, “the user selects a ‘Suspend’ operation, his
session shall be saved back to the MWS, allowing the application to
terminate, and at a later time the session can be reinstantiated by the
Teaching File application running on the target machine.” Ex. 1002, 11; see
also id. at 7 (“When the user decides to move his session he activates the
handoff mechanism from his client software on C1 to . . . suspend his session
(to be later reinstantiated explicitly from another machine) . . . .”). Patent
Owner agreed at the hearing that “[t]he pull mode teaches transfer after the
session is discontinued.” Tr. 21:3–9. Based on the record presented during
trial, we are persuaded that Phan San Jose discloses the “transmitting” step
recited in claim 1.
Second, Patent Owner argues that Phan San Jose’s description of the
“pull” mode does not disclose “specifying a second device.” PO Resp. 8–9,
14–18 (citing Ex. 2001 ¶¶ 22, 25, 27–29). Patent Owner contends that in the
“pull” mode, the user selects a “Suspend” operation without specifying a
device on which to resume the session. Id. at 15–17. Selecting “Suspend”
causes the session history to be sent to the MWS, then, later, if the “user
wishes to resume a session [on a different device], the session state is
‘pulled’ from the MWS.” Id. According to Patent Owner, there is no
disclosure in Phan San Jose of the second device on which the session will
be resumed being “specified.” Id. We disagree.
To the extent Patent Owner’s argument is that Phan San Jose does not
specify a second device because the user does not identify a second device
before selecting the “Suspend” operation, we are not persuaded. As
explained above, we do not agree with Patent Owner that the claim requires
the “specifying” step to take place before the “discontinuing” step. See
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supra Section II.A.2. In other words, there is nothing preventing the
specification of the second device from occurring after the user selects the
“Suspend” operation, discontinuing the session and causing the session
history to be transmitted to the MWS. The specification of the second
device may take place at a later time, such as when the user chooses to
resume the session on a different device.
To the extent Patent Owner’s argument is that Phan San Jose does not
specify a second device at all, we also are not persuaded. Petitioner
contends that the second device is specified when the user takes action on
the second device to resume the session. See Pet. 10; Reply 2–4. As
Petitioner points out, Figure 2 of Phan San Jose shows that a physician may
move from his PDA (“first device”) to a desktop computer (“second
device”). Pet. 10. Figures 1–3 of Phan San Jose are reproduced below.

As shown in the figures, the physician conducts an “application session” on
his PDA in Figure 1, then on his desktop computer “[a]fter handoff” of the
session to the new device in Figure 2, and then on his laptop computer
“[a]fter another handoff” of the session in Figure 3. Ex. 1002, 6. The
physician “recogni[zes] that his duties would be better served by migrating
to another machine, indicating to the iMASH system to make it so (with
something as simple as a push of a button), and then continu[es] his actions
on the second machine.” Id. “The iMASH runtime system provides the
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mechanism to perform these actions seamlessly and automatically.” Id.
In the “pull” mode, the user would select “Suspend” on the PDA, then
resume the session on the desktop computer by taking some action (e.g.,
clicking a button or buttons to log on) on the desktop computer. See id. at 6,
11; Ex. 2001, 13 (depicting a full-color version of Figure 5 of Phan San
Jose). The session is “reinstantiated by the Teaching File application
running on the target machine,” and the target machine “retrieves the session
state from the MWS.” Ex. 1002, 11.
Petitioner’s contention that the second device in Phan San Jose is
specified when the user takes action on the second device to resume the
session is persuasive. See Pet. 10; Reply 2–4. Claim 1 is broadly worded.
It does not specify who or what does the specifying, or to whom or what the
second device is specified. See Tr. 24:14–22 (acknowledging that the user
or another entity could do the specifying). The claim only requires that the
second device be specified. Phan San Jose discloses that the user chooses a
device on which he or she wants to resume the session and takes action on
that device to do so, which causes the Teaching File application on the
second device to communicate with the MWS to retrieve the session history.
We are persuaded that this constitutes “specifying” the second device.
Patent Owner argued at the hearing that at the time of resuming the
session on the second device, the MWS may “know[]” the identification of
the user (via the user logging on to the second device), but identifying a user
is not the same as specifying a device. Id. at 22:15–23:5. Patent Owner
further argued that the MWS would know an address (e.g., IP address) to
which to send the session history, but that address may not be the actual
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address of the second device because the device may be behind a firewall.
Id. at 22:15–28:2, 41:2–9.
Patent Owner’s arguments are not persuasive. First, as explained
above, we do not see anything in the claim that would prohibit the user from
specifying a second device by taking action on that particular device (as
opposed to a different device) to resume the session. Second, even if the
second device had to be specified to the MWS, the MWS in Phan San Jose
must receive enough information from the second device to be able to
distinguish the chosen second device from other potential devices, even if
only by virtue of the second device’s association with a user account;
otherwise, the MWS would not be able to transmit the session history to the
second device. See Reply 3; Ex. 1002, 6–9, 11 (describing how the MWS is
able to communicate with both the first client device C1 and the second
client device C2). Petitioner has provided sufficient evidence that Phan San
Jose discloses “specifying a second device,” as recited in claim 1.
Based on all of the evidence of record, we determine that Petitioner
has shown, by a preponderance of the evidence, that claim 1 is anticipated
by Phan San Jose under 35 U.S.C. § 102(a).

C. Obviousness Ground Based on Phan San Jose and Phan Helsinki
Petitioner argues that claims 4–6 and 8–11 are unpatentable over Phan
San Jose and Phan Helsinki under 35 U.S.C. § 103(a). Pet. 7–9, 14–21.
We have reviewed the Petition, Patent Owner Response, and Reply, as well
as the evidence discussed in each of those papers, and are persuaded, by a
preponderance of the evidence, that claims 4–6 and 8–11 are unpatentable
over Phan San Jose and Phan Helsinki.
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1. Phan Helsinki
Phan Helsinki pertains to the same iMASH research project as Phan
San Jose, and describes the architecture and operation of the system in
additional detail. Ex. 1003, 7. For example, Phan Helsinki explains that the
“[m]iddleware servers fetch data based on user requests (or pre-fetch data
based on prediction of [a] user’s near-future need) and perform conversion
as needed,” and “[w]hen a user moves an on-going application session from
one device to another, middleware servers act as a ‘home’ for the application
state (including active connections, cached data, etc.) to facilitate migration
between devices.” Id. at 9. Phan Helsinki also describes the
“Middleware-Aware Remote Code” (MARC) on the client device that
facilitates “session saving and restoration,” and the process by which a
session is transferred using MARC and a web browser. Id. at 9–10.

2. Level of Ordinary Skill in the Art
“Section 103(a) forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (quoting 35 U.S.C. § 103(a)). In their papers, the parties do not state
specifically what they believe to be the level of ordinary skill in the art for
the ’233 patent. Dr. Mohapatra, though, testifies that a person of ordinary
skill in the art would have had “a Bachelor of Science degree in computer
science or computer engineering with approximately 2 years of practical
work experience or post-graduate research in a field such as computer
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networking and/or distributed systems.” Ex. 2001 ¶ 11. We agree with this
assessment in part. Based on our review of the ’233 patent, the types of
problems and solutions described in the ’233 patent and cited prior art, and
the testimony of Patent Owner’s declarant, we conclude that a person of
ordinary skill in the art would have had a bachelor’s degree in computer
science or computer engineering (or its equivalent), and at least two years of
experience with computer networking, distributed systems, or similar fields.
See, e.g., Ex. 1001, col. 1, ll. 5–67 (disclosing that “[t]he invention generally
relates to session management in a distributed computer network,” and
describing issues in the prior art when a user has “several communication-
enabled devices” and wants to switch between them). We apply this level of
ordinary skill in the art for purposes of this Decision.

3. Analysis
Petitioner has presented sufficient evidence that the combination of
Phan San Jose and Phan Helsinki teaches all of the limitations of claims 4–6
and 8–11, and that a person of ordinary skill in the art would have
considered their teachings regarding the same research project together. See
Pet. 7–9, 14–21. For example, with respect to claim 4, which recites
“accessing a device profile of said second device” and “restructuring said
session data3 to conform with said device profile of said second device,”

3 Claim 1 refers to a “session history” rather than “session data.” Based on
how the terms are used in the claims, and how “session history” is used in
the Specification, we conclude that a person of ordinary skill in the art
would understand the terms to refer to the same thing. See, e.g., claims 1
(“resuming said session on said second device with said session history”),
4 (“restructuring said session data to conform with said device profile of said
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20
Petitioner cites Phan San Jose’s disclosure of client device characteristics
stored in a device profile in the MWS and Phan Helsinki’s disclosure of the
same MWS performing data conversions as necessary for a second client
device. Id. at 14–16 (citing Ex. 1002, 7, Ex. 1003, 9). Petitioner contends
that Phan San Jose and Phan Helsinki “together describe the operation,
architecture, and capabilities of the [iMASH] platform developed by the
Thomas Phan group at UCLA,” and Phan Helsinki “provides additional
information about how the [iMASH] platform works.” Id. at 8, 15.
Patent Owner acknowledges that Phan Helsinki describes the “pull”
mode disclosed in Phan San Jose, and argues that Phan Helsinki likewise
fails to teach or render obvious the step of “specifying a second device” in
claim 1. PO Resp. 22–24. As explained above, we are persuaded that Phan
San Jose alone discloses “specifying a second device.” See supra Section
II.B.2. Patent Owner’s argument as to the challenged claims depending
from claim 1, therefore, is not persuasive.
Based on all of the evidence of record, we determine that Petitioner
has shown, by a preponderance of the evidence, that claims 4–6 and 8–11
are unpatentable over Phan San Jose and Phan Helsinki under 35 U.S.C.
§ 103(a).

second device”), 8 (“reformatting said session history of said session to
conform with said device profile of said second device”).
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III. ORDER
Petitioner has demonstrated, by a preponderance of the evidence, that
claim 1 is anticipated by Phan San Jose under 35 U.S.C. § 102(a) and that
claims 4–6 and 8–11 are unpatentable over Phan San Jose and Phan Helsinki
under 35 U.S.C. § 103(a).
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 4–6, and 8–11 of the ’233 patent have been
shown to be unpatentable.
This is a final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.
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22
PETITIONER:

Holly Y. Li
IP ADVANTAGES
hyingli@ipadvantages.com

Zhi Yang Xue
NOVICK, KIM & LEE, PLLC

PATENT OWNER:

Tarek N. Fahmi
Holly J. Atkinson
ASCENDA LAW GROUP, PC
tarek.fahmi@ascendalaw.com