Rosetta-Wireless Corporation v. Samsung Electronic Co., Ltd ( 2019 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ROSETTA-WIRELESS CORPORATION,
Appellant
v.
SAMSUNG ELECTRONIC CO., LTD, SAMSUNG
ELECTRONICS AMERICA, INC., APPLE INC,
Appellees
______________________
2018-1322, 2018-1324
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2016-
00616, IPR2016-00622.
______________________
Decided: April 19, 2019
______________________
BENJAMIN JEFFREY AARON SAUTER, Kobre & Kim LLP,
New York, NY, argued for appellant. Also represented by
DANIEL AMON ZAHEER, MICHAEL NG, San Francisco, CA.
MEGAN FREELAND RAYMOND, Paul, Weiss, Rifkind,
Wharton & Garrison LLP, Washington, DC, argued for ap-
pellees Samsung Electronic Co., Ltd, Samsung Electronics
America, Inc. Also represented by JON STEVEN BAUGHMAN.
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BRIAN E. FERGUSON, Weil, Gotshal & Manges LLP,
Washington, DC, argued for appellee Apple Inc.
______________________
Before O’MALLEY, REYNA, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
Rosetta-Wireless Corporation (Rosetta) appeals the fi-
nal written decision of the Patent Trial and Appeal Board
(Board) in an inter partes review (IPR) proceeding conclud-
ing that Samsung Electronic Co., Ltd, Samsung Electronics
America, Inc., Apple Inc. (collectively, Appellees) demon-
strated by a preponderance of the evidence that certain
claims of U.S. Patent No. 7,149,511 (the ’511 patent) are
unpatentable as obvious in view of U.S. Patent No.
5,864,853 (Kimura), and on separate grounds, in view of a
textbook called “Windows CE Developer’s Handbook,” writ-
ten in 1999 by Terence A. Goggin (Goggin). Because we
agree with the Board’s claim constructions and conclude
that the Board’s findings are supported by substantial evi-
dence, we affirm.
BACKGROUND
A. The ’511 Patent
The ’511 patent, titled “Wireless Intelligent Personal
Server,” was filed in 2000 and issued in 2006. ’511 patent.
The patent explains that typically, in an office environ-
ment, electronic files are stored on an office-wide server or
on individual computers located in the office space. Id. at
col. 1, ll. 17–20. When users need to access the files, the
personal computers run applications to retrieve them and
display them to the users. Id. at col. 1, ll. 22–25. But when
users work outside the office, it is more difficult to gain ac-
cess to the most up-to-date versions of the files because
they are outside the office network. See id. at col. 1, ll. 29–
33. At the time the patent was filed, users resolved this
concern by dialing into the wireline network or accessing
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the file over the wireless network, but there were multiple
disadvantages to these solutions. Id. at col. 1, l. 43 – col. 2,
l. 48. For example, most wireless approaches used a “pull”
methodology where the user requests the information and
the device then responds. These approaches had high la-
tency, were high cost, and were too device-specific. Id.
The ’511 patent aims to resolve the above-described
problems with a “wireless intelligent personal server”
(WIPS) that receives data over a wireless communications
channel and automatically processes it so as to maintain a
copy of at least one electronic file stored on a source com-
puter for a user working remotely to access the file in the
future. Id. at col. 1, ll. 8–12. Claim 1 is representative:
1. A wireless intelligent personal network server,
comprising:
a radio frequency (RF) receiver for receiving down-
stream data transmitted over a first wireless com-
munications channel;
a memory;
a central processing unit (CPU);
a set of embedded machine language instructions
within said personal network server, said set of em-
bedded machine language instructions being exe-
cutable by said CPU for processing said
downstream data to provide at least one electronic
file in said memory; and
a first interface for allowing an external display de-
vice to selectively access said at least one electronic
file.
Id. at col. 13, ll. 31–44.
B. Kimura
Kimura discloses a portable personal data device
(PPDD). Kimura explains that typical file systems cannot
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provide the flexibility users would like to access files in
multiple environments, such as work and home. Kimura,
col. 1, l. 13 – col. 2, l. 8. Kimura addresses this concern by
providing each user with his or her own portable file sys-
tem, or PPDD, that the user carries. Id. at col. 6, l. 65 –
col. 7, l. 6. The user places the PPDD next to a computer,
and the devices communicate with each other via radio to
transfer the files. Id. at col. 7, ll. 2–13.
C. Goggin
Goggin is a textbook for software developers about
Windows CE, which is a “stripped down” version of the
Windows 98/NT operating system specifically engineered
for portable devices including handheld personal comput-
ers. Goggin at 30. The portable devices can be connected
wirelessly using LAN and Ethernet cards. Id. at 63. Gog-
gin describes “a special set of functions that allows devel-
opers . . . to access any files, databases, or system
information on a [Windows] CE device” — called a Remote
Application Programming Interface (RAPI) — which in-
cludes functions to read or write files onto a Windows CE
device. Id. at 308. Goggin explains that “RAPI[, imple-
mented on the wireless-connected portable device,] helps
extend the CE application into the Desktop by giving the
other machines in your system access to the data and files
on the CE device.” Id. at 328. “This is especially important
given that the data on these devices wouldn’t be worth very
much if you couldn’t get that data circulated to other ma-
chines and other pieces of software.” Id.
D. IPR Proceedings
In February 2016, Appellees filed two IPR petitions,
one alleging that claims 1–10 and 58–65 of the ’511 patent
are rendered obvious by Kimura in view of the knowledge
of a skilled artisan, and another alleging multiple grounds,
including that claims 1–10, 19–22, 58–65, and 68–71 are
rendered obvious by Goggin in view of the knowledge of a
skilled artisan and/or other references. After Rosetta filed
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its preliminary responses, in August 2016 the Board issued
decisions instituting IPR on each petition and consolidated
the two proceedings. The Board declined to institute re-
view of claims 7 and 64 of the ’511 patent in the Kimura
IPR, but instituted with regard to the remainder of the
challenged claims. The Board instituted on all of the chal-
lenged claims in the Goggin IPR. Rosetta filed a consoli-
dated response, Appellees filed a reply, and an oral hearing
was held.
In August 2017, the Board issued a combined final
written decision finding that claims 1–6, 8–10, 58–63 and
65 were unpatentable as obvious based on Kimura, and
that claims 1–10, 19–22, 58–65 and 68-71 unpatentable as
obvious based on Goggin in view of, for certain claims,
other references. Administrative Patent Judge (APJ)
Arbes dissented, agreeing with Rosetta’s construction of
“downstream data” and, as a result, disagreeing with the
Board’s obviousness determinations predicated on its con-
struction of that term.
Rosetta appeals the Board’s obviousness findings based
on Kimura and Goggin, as well as two claim constructions
made by the Board during those appeals. We have juris-
diction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
A. Claim Constructions
We review the Board’s underlying factual determina-
tions concerning extrinsic evidence for substantial evi-
dence and its ultimate constructions de novo. In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1279–80 (Fed. Cir.
2015). The parties dispute the Board’s constructions of the
terms “downstream data” and “network server.” We affirm
with respect to both terms.
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1. “Downstream Data”
The Board construed “downstream data” to mean “data
moving from a downstream channel to the wireless intelli-
gent personal network server.” J.A. 19. The Board sup-
ported its construction with citations from the specification
tying the term “downstream data” to the channel from
which it is received. The channel is illustrated in the spec-
ification and drawings as downstream channel 34. J.A. 17;
’511 patent at col. 5, ll. 35–36, FIG. 1. The Board con-
trasted “downstream data” with “upstream data,” which
travels along upstream channel 26. J.A. 17; ’511 patent at
col. 7, ll. 26–30, FIG. 1. The Board concluded that the spec-
ification associates the words “downstream” and “up-
stream” with particular channels and/or networks, rather
than the ultimate source or destination of any data. J.A.
17.
Rosetta argues that “downstream data” should be con-
strued to mean “data transmitted from a source server to
the personal network server.” Appellant’s Op. Br. at 15.
Rosetta explained at oral argument that, as to FIG. 1, it
believes the “source server” is a server within Enterprise
IT system 12. Oral Argument at 3:15–57. In its patent
owner response, Rosetta argued that all data flowing from
top to bottom of FIG. 1 is “downstream” and all data flow-
ing from bottom to top of FIG. 1 is “upstream.” See J.A. 14.
FIG. 1 is provided below for context:
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’511 patent at FIG. 1.
Although we acknowledge that APJ Arbes’s reasoning
for supporting Rosetta’s proposed construction has some
merit, we ultimately decline to read the added limitation
Rosetta proposes into the claims. “Source server” does not
appear in the claims, nor does it appear in the specification.
Rosetta’s construction fails to account for the specification’s
disclosure of a file traveling from a non-server (e.g.,
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computer 14) to the WIPS without traveling through a
“source server.” See ’511 patent at col. 6, l. 51 – col. 7, l. 13;
FIG. 1. FIG. 1 also contradicts the notion that all data
must travel in only one direction between different devices
in the disclosed system. Rather, FIG. 1 depicts an arrow in
both directions between the WIPS and display device 32,
and the specification states that “WIPS 30 is able to trans-
fer the data stored in its memory to and from different
types of display devices 32,” id. at col. 4, ll. 48–50 (emphasis
added).
We also disagree that the Board’s construction gives no
effect to the word “downstream.” See J.A. 75 (APJ Arbes’s
dissent). To the contrary, we agree with the Board that the
term “downstream” signals the channel or direction in
which the data is traveling, i.e., toward or away from the
WIPS. J.A. 17–18. We therefore agree with the Board’s
construction of “downstream data.”
2. “Network Server”
The Board determined that no construction of “net-
work server” was necessary but explicitly found that the
network server disclosed in the ’511 patent could communi-
cate with a computer over a point-to-point connection. J.A.
13. The Board referred to the specification’s statement
that “display device 32 accesses the memory in WIPS 30 as
it would an external device, such as an external hard drive”
as support for its finding that the network server can com-
municate with a computer over a point-to-point connection.
J.A. 12 (citing ’511 patent, col. 6, ll. 25–27). The Board also
cited a dictionary definition of “computer network” as “a
complex consisting of two or more interconnected comput-
ers” as supporting its conclusion. Id.
Rosetta argues that a network server must be able to
communicate with more than one other computer. Rosetta
believes the term should be construed as meaning “a com-
puter in a network configured to receive and share data re-
sources with other devices in that network.” Appellant’s
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Op. Br. at 34, 37–38. Rosetta argues that the quoted state-
ment from the specification described the ease with which
a display device could access the WIPS memory, not a spe-
cific type of connection. Id. at 38–39. But the Board’s read-
ing of this passage is reasonable and its ultimate
construction of what connection is required was expressly
and reasonably supported by extrinsic evidence. We agree
with the Board’s construction of “network server.”
B. Obviousness Findings
“We review the Board’s ultimate determination of obvi-
ousness de novo and its underlying factual determinations
for substantial evidence.” Pers. Web Techs., LLC v. Apple,
Inc., 848 F.3d 987, 991 (Fed. Cir. 2017). “On the factual
components of the inquiry, we ask whether a reasonable
fact finder could have arrived at the agency’s decision,
which requires examination of the record as a whole, tak-
ing into account evidence that both justifies and detracts
from an agency’s decision.” Id. (internal brackets and quo-
tation marks omitted).
1. Kimura
We agree with the Board’s finding that Kimura renders
the applicable claims obvious. Rosetta’s argument to the
contrary is primarily premised on its proposed claim con-
struction, which we have already explained is incorrect.
See Appellant’s Op. Br. at 41–43. Rosetta’s remaining ar-
guments lack merit, as they distinguish Kimura on the ba-
sis of unclaimed features of WIPS, including being “a
centralized network-based file system” or providing “a so-
lution for having remote access to one’s most recent
emails.” Id. at 40–41.
2. Goggin
We also agree with the Board’s findings based on Gog-
gin. Rosetta’s primary argument again is predicated on the
claim constructions we have rejected. See id. at 46–48. Ro-
setta’s remaining argument is essentially that a skilled
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artisan would have lacked a motivation to “combine[] . . .
an infinite number of combinations to carry out any num-
ber of different functions” present in “hundreds of pages” of
the Goggin reference. Id. at 48–49. We agree with the
Board, however, that “an ordinarily skilled artisan would
have pursued Goggin’s file access functions because they
constitute ‘a finite number of identified, predictable solu-
tions . . . within his or her technical grasp.’” J.A. 49 (citing
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007)).
Goggin has an entire chapter focused on RAPI and high-
lights the importance of allowing “other machines in your
system [to] access to the data and files on the CE device.”
See Goggin at 307–30. Goggin describes a “specific set” of
elements to be implemented in order to accomplish this
purpose (and render the claimed invention obvious)—read-
ing and writing files on a network-connected Windows CE
device. J.A. 46–49.
3. Objective Evidence of Nonobviousness
Rosetta argues that the Board “refus[ed] to consider”
Rosetta’s objective evidence. Appellant’s Op. Br. at 50. To
the contrary, the Board’s relevant discussion on pages 31
to 34 of its decision is well-reasoned and supported by sub-
stantial evidence. Rosetta argued to the Board that the
WIPS “satisfied a critical need for remote data access” and
“took a different approach . . . to remote data access prob-
lems.” See J.A. 32–33. The Board correctly found that
nexus is not met where “remote data access” is not recited
in the claims. See id. Rosetta further failed to establish a
nexus between its evidence of praise and its $2 million
grant and the features found in the claims, rather than
WIPS generally. See J.A. 34.
We therefore affirm the Board’s obviousness findings
with respect to Kimura and Goggin.
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D. Remaining Arguments
Although Rosetta takes issue with the Board’s denial
of its request for leave to file a motion to amend after the
Board’s final written decision had issued, which it submit-
ted after the release of Aqua Products, Inc. v. Matal, 872
F.3d 1290 (Fed. Cir. 2017), we see no error in the Board’s
decision denying the motion. See Appellant’s Op. Br. at 54–
57; J.A. 87–90. As the Board noted, 35 U.S.C. § 316(d)(1)
only permits motions to amend “[d]uring an inter partes
review.” J.A. 88. This means a motion to amend cannot be
entertained before an inter partes review proceeding begins
or after it ends. In the context of covered business method
review, we have explained that proceedings begin with an
institution decision and “conclude[]” with the final written
decision. Intellectual Ventures II LLC v. JPMorgan Chase
& Co., 781 F.3d 1372, 1377 (Fed. Cir. 2015) (explaining
that covered business method review proceedings
“begin[s]” when “the PTAB institutes the proceedings”);
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1314-1315 (Fed. Cir. 2015) (noting that covered business
method review “concludes with the PTAB’s final written
decision”). Inter partes review follows a similar structure,
beginning with an institution decision and “culminating”
in a final written decision. Harmonic Inc. v. Avid Tech.,
Inc., 815 F.3d 1356, 1364–65 (Fed. Cir. 2016). Rosetta’s
motion to amend, filed nearly two months after the final
written decision, was therefore not filed “during” the inter
partes review as required by § 316(d)(1). Instead, it was
filed after the proceeding concluded. Indeed, Rosetta could
have immediately appealed the Board’s decision. In re
Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1377 (Fed.
Cir. 2016). Rosetta also could not explain why, if it believed
that the meaning of the term “downstream data” was “the
central point” of the case, it could not have filed a motion
to amend before the due date provided by the Board. We
therefore affirm the Board’s denial.
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Last, we reject Rosetta’s argument under Section
318(a) that the Board did not institute or render a final
written decision as to two of the challenged claims during
the Kimura review as moot, in light of our affirmance of the
Board’s decision finding these claims unpatentable under
Goggin.
We have considered the parties’ remaining arguments
and find them unpersuasive. Accordingly, we affirm.
AFFIRMED