Exhibit A

Case 6:20-cv-00490-ADA Document 68-1 Filed 04/23/21 Page 1 of 99
UNITED STATES PATENT AND TRADEMARK OFFICE 

____________________ 

BEFORE THE PATENT TRIAL AND APPEAL BOARD 

____________________ 

ZTE Corporation, ZTE (USA), Inc., and ZTE (TX), Inc., 

Petitioner, 

v. 

WSOU Investments LLC D/B/A Brazos Licensing and Development, 

 Patent Owner. 

U.S. Patent No. 7,203,505 

Filing Date: Aug. 30, 2001 

Issue Date: Apr. 10, 2007 

____________________ 

Case No. IPR2021-00698 

PETITION FOR INTER PARTES REVIEW 

OF U.S. PATENT NO. 7,203,505

 

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TABLE OF CONTENTS 

I. PRELIMINARY STATEMENT ..................................................................... 1

II. THE ’505 PATENT ......................................................................................... 2

A. Summary of ’505 Patent ........................................................................ 2

B. The ’505 Patent Prosecution History .................................................... 4

III. OVERVIEW OF PRIOR ART ........................................................................ 5

A. Haller ..................................................................................................... 5

B. Yu ........................................................................................................... 8

C. Singhal ................................................................................................. 11

D. Oueslati ............................................................................................... 12

IV. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 13

V. CLAIM CONSTRUCTION .......................................................................... 13

VI. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH 

CLAIM CHALLENGED .............................................................................. 14

A. Claims for Which Review Is Requested ............................................. 14

B. Statutory Grounds................................................................................ 15

VII. GROUND 1: HALLER ANTICIPATES CLAIMS 1, 3, 10, 11, 12, 14, 

20, 21, 23, 25, 32, 33, 34, 38, 39, 43, AND 44 ............................................. 16

A. Independent Claims 1, 14, and 23 ....................................................... 16

1. Independent Claim 1 ................................................................. 16

a. [1p] “A method for data synchronization between 

a first terminal device and a second, remotely 

located, terminal device via an intermediate 

terminal device, the method comprising:” ...................... 16

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b. [1a] “obtaining, at the first terminal device, data to 

be synchronized with the second remotely located 

terminal device;” ............................................................. 18

c. [1b] “transmitting the data from the first terminal 

device to the intermediate terminal device through 

a short-range connection;” .............................................. 20

d. [1c] “formatting the data to be synchronized into at 

least one SMS (Short Message Service) message in 

the intermediate terminal device; and” ........................... 21

e. [1d] “transmitting the at least one SMS message 

from the intermediate terminal device to the 

second remote located terminal device through 

cellular network connection.” ......................................... 23

2. Independent Claim 14 ............................................................... 25

a. [14p] “A mobile terminal device comprising:” .............. 25

b. [14a] “a data message receiver to receive data from 

a first terminal device, which data is to be 

synchronized with a second, remotely located, 

terminal device via a short range communication 

link;” ............................................................................... 26

c. [14b] “a formatter to format the received data into 

at least one SMS (Short Message Service) 

message;” ........................................................................ 28

d. [14c] “a transmitter to transmit the at least one 

SMS message to the second, remotely located, 

terminal device through a cellular network 

connection.” .................................................................... 31

3. Independent Claim 23 ............................................................... 33

a. [23p] “A program storage device, readable by 

machine, tangibly embodying a program of 

instructions executable by machine to perform a 

method of synchronization between a first terminal 

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device and a second, remotely located, terminal 

device via an intermediate terminal device, the 

method comprising:” ...................................................... 33

b. [23a] “obtaining, at the first terminal device, data 

to be synchronized with the second remotely 

located terminal device;” ................................................ 36

c. [23b] “transmitting the data from the first terminal 

device to the intermediate terminal device through 

a short-range connection;” .............................................. 36

d. [23c] “formatting the data to be synchronized into 

at least one SMS (Short Message Service) message 

in the intermediate terminal device; and” ....................... 36

e. [23d] “transmitting the at least one SMS message 

from the intermediate terminal device to the 

second remote located terminal device through 

cellular network connection.” ......................................... 36

B. Dependent Claims 3, 10, 11, 12, 20, 21, 25, 32, 33, 34, 38, 39, 

43, and 44 ............................................................................................ 37

1. [Claim 3] “The method of claim 1, wherein the 

intermediate terminal device comprises a mobile terminal 

device.” ..................................................................................... 37

2. [Claim 10] “The method of claim 1, wherein the data 

message comprises one of a calendar, a to-do list, 

personal information, and contact information.” ...................... 38

3. [Claim 11] “The method of claim 1, wherein the data 

message is transferred from the first terminal device to 

the intermediate terminal device via a short range 

communication link.” ................................................................ 39

4. [Claim 12] “The method of claim 11, wherein the short 

range communication link comprises one of an IR 

(Infrared) or Bluetooth communication link.” .......................... 40

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5. [Claim 20] “The device of claim 14, wherein the data 

comprises one of a calendar, a to-do list, a personal 

information, and contact information.” ..................................... 41

6. [Claim 21] “The device of claim 14, wherein the data 

receiver receives data messages via one of an IR 

(Infrared) or Bluetooth communication link.” .......................... 41

7. [Claim 25] “The device of claim 23, wherein the 

intermediate terminal device comprises a mobile terminal 

device.” ..................................................................................... 41

8. [Claim 32] “The device of claim 23, wherein the data 

message comprises one of a calendar, a to-do list, 

personal information, and contact information.” ...................... 42

9. [Claim 33] “wherein the data message is transferred from 

the first terminal device to the intermediate terminal 

device via a short range communication link.” ........................ 42

10. [Claim 34] “The device of claim 33, wherein the short 

range communication link comprises one of an IR 

(Infrared) or Bluetooth communication link.” .......................... 42

11. [Claim 38] “The method of claim 36, wherein the data is 

transmitted from the first terminal device to the 

intermediate terminal device via a short range 

communication link.” ................................................................ 42

12. [Claim 39] “The method of claim 38, wherein the short 

range communication link comprises one of either an IR 

(Infrared) or Bluetooth communication link.” .......................... 43

13. [Claim 43] “The device of claim 41, wherein the data is 

transmitted from the first terminal device to the 

intermediate terminal device via a short range 

communication link.” ................................................................ 43

14. [Claim 44] “The device of claim 43, wherein the short 

range communication link comprises one of either an IR 

(Infrared) or Bluetooth communication link.” .......................... 43

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VIII. GROUND 2: HALLER AND YU RENDER OBVIOUS CLAIMS 4, 

5, 13, 22, 26, 27, 35, 36, 37, 40, 41, 42, AND 45 ......................................... 43

A. A POSITA Would Have Combined Haller and Yu ............................ 43

B. Independent Claims 36 and 41 ............................................................ 44

1. Independent Claim 36 ............................................................... 44

a. [36p] “A method of data synchronization between 

a first terminal device and a, remote located, 

second terminal device via an intermediate 

terminal device, the method comprising:” ...................... 44

b. [36a] “obtaining, at the first terminal device, data 

to be synchronized with the second remotely 

located terminal device;” ................................................ 45

c. [36b] “transmitting the data from the first terminal 

device to the intermediate terminal device through 

a short-range connection;” .............................................. 45

d. [36c] “formatting the data into at least one SMS 

(Short Message Service) message in the 

intermediate terminal device;”........................................ 46

e. [36d] “transmitting the least one SMS message 

from the intermediate terminal device to a message 

center; and” ..................................................................... 46

f. [36e] “transmitting the at least one message from 

the message center to the second remote located 

terminal device through a cellular network 

connection.” .................................................................... 50

2. Independent Claim 41 ............................................................... 52

a. [41p] “A program storage device, readable by 

machine, tangibly embodying a program of 

instructions executable by machine to perform a 

method of data synchronization between first and 

second remote locate terminal devices via an 

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intermediate terminal device, the method 

comprising:” ................................................................... 52

b. [41a] “obtaining, at the first terminal device, data 

to be synchronized with the second remotely 

located terminal device;” ................................................ 52

c. [41b] “transmitting the data from the first terminal 

device to the intermediate terminal device through 

short-range connection;” ................................................. 52

d. [41c] “formatting the data into at least one SMS 

(Short Message Service) message in the 

intermediate terminal device;”........................................ 53

e. [41d] “transmitting the least one message from the 

intermediate terminal device to a message center; 

and” ................................................................................. 53

f. [41e] “transmitting the at least one message from 

the message center to the second remotely located 

terminal device through a cellular or network 

connection.” .................................................................... 53

C. Dependent Claims 4, 5, 13, 22, 26, 27, 35, 37, 40, 42, and 45 ........... 54

1. [Claim 4] “The method of claim 3, wherein the at least 

one SMS message is transmitted via a mobile network 

including an SMS message center.” ......................................... 54

2. [Claim 5] “The method of claim 4, wherein the at least 

one SMS message is transmitted from the intermediate 

terminal device to the second, remotely located, terminal 

device via the mobile network and a gateway and the 

Internet.” ................................................................................... 54

3. [Claim 13] “The method of claim 1, further comprising 

transmitting at least one other SMS message from the 

second terminal device to the first terminal device via the 

intermediate terminal device.” .................................................. 58

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4. [Claim 22] “The method of claim 14, further comprising 

a receiver to receive at least one other SMS message 

from the another terminal device and a data message 

transmitter to transmit the at least one other SMS 

message to the first terminal device.” ....................................... 62

5. [Claim 26] “The device of claim 25, wherein the at least 

one SMS message is transmitted via a mobile network 

including an SMS message center.” ......................................... 62

6. [Claim 27] “The device of claim 26, wherein the at least 

one SMS message is transmitted from the intermediate 

terminal device to the second remotely located terminal 

device via the mobile network and a gateway and the 

Internet.” ................................................................................... 63

7. [Claim 35] “The device of claim 23, further comprising 

transmitting at least one other SMS message from the 

second terminal device to the first terminal device via the 

intermediate terminal device.” .................................................. 63

8. [Claim 37] “The method of claim 36, wherein the 

message center comprises an SMS message center.” ............... 63

9. [Claim 40] “The method of claim 31, further comprising 

transmitting other data from the second terminal device 

to the first terminal device via the intermediate terminal 

device.” ..................................................................................... 64

10. [Claim 42] “The device of claim 41, wherein the message 

center comprises an SMS message center.” .............................. 64

11. [Claim 45] “The device of claim 41, further comprising 

transmitting other data from the second terminal device 

to the first terminal device via the intermediate terminal 

device.” ..................................................................................... 64

IX. GROUND 3: HALLER AND SINGHAL RENDER OBVIOUS 

CLAIMS 2, 6, 7, 8, 15, 16, 17, 18, 24, 28, 29, AND 30 ............................... 64

1. A POSITA Would Have Combined Haller and Singhal .......... 64

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2. [Claim 2] “The method of claim 1, wherein formatting 

the data message comprises formatting the data in a 

SyncML format.” ...................................................................... 65

3. [Claim 6] “The method of claim 1, wherein the at least 

one SMS message comprises a compressed SMS 

message.” .................................................................................. 66

4. [Claim 7] “The method of claim 6, wherein the 

compressed SMS message comprises a WBXML 

(Wireless Application Protocol Binary Extensible 

Markup Language) encoded message.” .................................... 67

5. [Claim 8] “The method of claim 2, wherein the data 

formatted in a SyncML format comprises one of two 

MIME (Multipurpose Internet Mail Extensions) 

formats.” .................................................................................... 69

6. [Claim 15] “The device of claim 14, wherein the 

formatter formats the data in a SyncML format.” .................... 70

7. [Claim 16] “The device of claim 14, wherein the at least 

one SMS message formatted by the formatter comprises 

a compressed SMS message.” ................................................... 70

8. [Claim 17] “The device of claim 16, wherein the 

compressed SMS message formatted by the formatter 

comprises a WBXML (Wireless Application Protocol 

Binary Extensible Markup Language) encoded message.” ...... 70

9. [Claim 18] “The device of claim 14, wherein the data 

formatted by the formatter in a SyncML format 

comprises one of two MIME (Multipurpose Internet Mail 

Extensions) formats.” ................................................................ 70

10. [Claim 24] “The device of claim 23, wherein formatting 

the data message comprises formatting the data in a 

SyncML format.” ...................................................................... 71

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11. [Claim 28] “The device of claim 23, wherein the at least 

one SMS message comprises a compressed SMS 

message.” .................................................................................. 71

12. [Claim 29] “The device of claim 28, wherein the 

compressed SMS message comprises a WBXML 

(Wireless Application Protocol Binary Extensible 

Markup Language) encoded message.” .................................... 71

13. [Claim 30] “The device of claim 24, wherein the data 

formatted in a SyncML format comprises one of two 

MIME (Multipurpose Internet Mail Extensions) format.” ....... 72

X. GROUND 4: HALLER, SINGHAL, AND OUESLATI RENDER 

OBVIOUS CLAIMS 9, 19, and 31 ............................................................... 72

1. A POSITA Would Have Combined Haller, Singhal, and 

Oueslati ..................................................................................... 72

2. [Claim 9] “The method of claim 8, wherein the two 

MIME formats comprise vcal and vcard formats.” .................. 73

3. [Claim 19] “The device of claim 18, wherein the two 

MIME formats formatted by the formatter comprise vcal 

and vcard.” ................................................................................ 74

4. [Claim 31] “The device of claim 30, wherein the two 

MIME formats comprise vcal and vcard formats.” .................. 74

XI. NON-INSTITUTION UNDER 35 U.S.C. §§ 314 OR 325 WOULD 

BE IMPROPER ............................................................................................. 74

A. Non-Institution Under 35 U.S.C. § 314(a) Is Improper ...................... 75

B. Non-Institution Under 35 U.S.C. § 325 Is Improper .......................... 78

XII. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................. 79

A. Real Party-in-Interest .......................................................................... 79

B. Related Matters .................................................................................... 79

C. Lead and Back-Up Counsel and Service Information ........................ 80

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XIII. GROUNDS FOR STANDING ...................................................................... 81

XIV. CONCLUSION .............................................................................................. 81

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TABLE OF AUTHORITIES 

 Page(s) 

Federal Cases 

Apple Inc. v. Fintiv, Inc., 

IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) ................................. 75, 76, 77 

Becton, Dickinson & Co. v. B. Braun Melsungen AG, 

IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) ......................................... 78, 79 

Int’l Bus. Machines Corp. v. Trusted Knight Corp., 

IPR2020-00323, Paper 15 (PTAB Jul. 10, 2020) ............................................... 75 

NHK Spring Co. v. Intri-Plex Techs., Inc., 

IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ............................................... 74 

Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 

868 F.3d 1013 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 1695 

(2018) .................................................................................................................. 13 

Okajima v. Bourdeau, 

261 F.3d 1350 (Fed. Cir. 2001) .......................................................................... 13 

Sand Revolution II, LLC v. Cont’l Intermodal Group-Trucking LLC, 

IPR2019-01393, Paper 24 (PTAB June 16, 2020) ....................................... 75, 77 

Thryv, Inc v. Click-To-Call Techs., LP, 

140 S. Ct. 1367 (2020) ........................................................................................ 77 

VLSI Tech. LLC v. Intel Corp., 

No. 1:19-cv-00254 (W.D. Tex.) ......................................................................... 76 

WSOU Investments LLC v. ZTE Corporation et al., 

6:20-cv-00497-ADA (W.D. Tex.) ...............................................................passim

Federal Statutes 

35 U.S.C. § 102 ........................................................................................................ 16 

35 U.S.C. § 102(a) ................................................................................................... 15 

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35 U.S.C. § 102(b) ................................................................................................... 15 

35 U.S.C. § 102(e) ................................................................................................... 15 

35 U.S.C. § 103 ........................................................................................................ 16 

35 U.S.C. § 112(a) ................................................................................................... 14 

35 U.S.C. § 112(b) ................................................................................................... 14 

35 U.S.C. § 112(f) .................................................................................................... 14 

35 U.S.C. § 311 ........................................................................................................ 14 

35 U.S.C. § 314 ........................................................................................................ 74 

35 U.S.C. § 314(a) ............................................................................................. 74, 75 

35 U.S.C. § 325 .................................................................................................. 74, 78 

Regulations 

37 C.F.R. § 42.8 ....................................................................................................... 79 

37 C.F.R. § 42.10(b) ................................................................................................ 80 

 

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LIST OF EXHIBITS

Exhibit Description 

Ex-1001 U.S. Patent No. 7,203,505 (the ’505 patent) 

Ex-1002 Prosecution File History of U.S. Patent No. 7,203,505 

Ex-1003 Declaration of Stephen Gray

Ex-1004 Curriculum Vitae of Stephen Gray 

Ex-1005 U.S. Patent No. 7,295,532 (“Haller”) 

Ex-1006 U.S. Patent No. 7,058,036 (“Yu”) 

Ex-1007 U.S. Patent No. 6,925,481 (“Singhal”) 

Ex-1008 U.S. Patent No. 7,191,250 (“Oueslati”) 

Ex-1009 U.S. Patent No. 6,633,759 (“Kobayashi”)

Ex-1010 U.S. Patent No. 5,353,328 (“Jokimies”)

Ex-1011 U.S. Patent App. Pub. No. 2002/0161769 (“Sutinen”) 

Ex-1012 U.S. Patent No. 6,560,456 (“Lohtia”) 

Ex-1013 U.S. Patent No. 6,097,961 (“Alanara”) 

Ex-1014 U.S. Patent App. Pub. No. 2004/0048603 (“Corneliussen”) 

Ex-1015 U.S. Patent App. Pub. No. 2003/0078890 (“Schmidt”) 

Ex-1016 U.S. Patent App. Pub. No. 2002/0123307 (“Winarski”) 

Ex-1017 U.S. Patent App. Pub. No. 2002/0087596 (“Lewontin”) 

 

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I. PRELIMINARY STATEMENT 

ZTE Corporation, ZTE (USA), Inc., and ZTE (TX), Inc., (collectively 

“ZTE”) requests inter partes review of claims 1-45 of U.S. Patent No. 7,203,505 

(Ex-1001), assigned to WSOU Investments LLC (“WSOU”)1

. 

The ’505 patent describes methods for transferring a data message between a 

first terminal device and a second terminal device via an intermediate terminal 

device, but the disclosed methods were known in the prior art. 

’505 patent, FIG. 1 (Annotated) 

1

 WSOU asserts the ’505 patent against ZTE in WSOU Investments LLC v. ZTE 

Corporation et al., 6:20-cv-00497-ADA (W.D. Tex.) (“Litigation”). 

Second terminal devices First terminal devices Intermediate terminal device 

Short range communication Cellular network Internet

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Haller (Ex-1005) and Yu (Ex-1006) disclose methods for transferring a data 

message like those claimed in ’505 patent. Alone or when combined in routine, 

predictable ways, Haller, Yu, Singhal (Ex-1007), and Oueslati (Ex-1008) anticipate 

or render obvious all features of the challenged claims. 

Haller, FIG. 1 (Annotated) 

II. THE ’505 PATENT 

A. Summary of ’505 Patent 

The ’505 patent describes a method “for transferring a data message between 

a first terminal device and a second terminal device via an intermediate terminal 

device.” Ex-1001, Abstract. 

Second terminal devices Intermediate terminal device First terminal devices 

Cellular network Short range communication Internet

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’505 Patent, FIG. 1 (annotated) 

The method includes “entering a data message into the first terminal device; 

transmitting the data message from the first terminal device to the intermediate 

terminal device; formatting the data message into at least one SMS (Short Message 

Service) message in the intermediate terminal device; and transmitting the at least 

one SMS message from the intermediate terminal device to the second terminal 

device.” Ex-1001, Abstract. 

The ’505 patent also describes that the “intermediate terminal device may 

include a mobile terminal and the data message may be transferred from the first 

Second terminal devices First terminal devices Intermediate terminal device 

Short range communication Cellular network Internet 

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terminal device to the intermediate terminal device via a short range 

communication link which may include an IR or Bluetooth communication link.” 

Id. 

The method aims to synchronize data between the first terminal device and 

the second terminal device. See id., 4:11-16. For example, “a salesman who is 

away from his office may wish to update his calendar and business contacts 

address book on his mobile terminal device and to then update, that is, 

synchronize, his calendar and business contacts address book on his office 

computer.” Id., 3:16-21. 

B. The ’505 Patent Prosecution History 

During prosecution of ’505 patent, the Examiner indicated that “the prior art 

of record fails to disclose or specifically suggested formatting a data to be 

synchronized into at least one SMS message in an intermediate terminal device and 

transmitting the at least one SMS message from the intermediate terminal device to 

a second remote located terminal device through cellular network connection.” Ex1002, p. 178. 

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III. OVERVIEW OF PRIOR ART 

A. Haller 

Like ’505 patent, Haller is concerned about a scenario in which “a user is a 

traveling professional who has a PDA and needs to synchronize it against a 

corporate exchange server while on the road.” Ex-1005, 14:26-28. 

Haller, FIG. 1 (annotated) 

Haller discloses a system and method that address the scenario. For 

example, as shown above in annotated FIG. 1, Haller discloses a system 100 in 

which “terminals 107 are coupled to device 106 by short-range radio signals 110 to 

form LAN 116.” Id., 5:33-35. In Haller’s system, “terminals 107 are a desktop 

computer, a laptop computer, a personal digital assistant, a headset, a pager, a 

Second terminal devices Intermediate terminal device First terminal devices 

Cellular network Short range communication Internet 

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printer, a watch, a thin terminal, a digital camera or an equivalent,” and “terminals 

107 include a BluetoothTM 2.4 GHz transceiver/receiver. Likewise, device 106

includes a BluetoothTM 2.4 GHZ transceiver/receiver.” Id., 5:29-47. 

Haller discloses that “WAN 105 is coupled to device 106,” and “WAN 105 

includes a cellular network transmitting and receiving cellular signals 111.” Id., 

5:52-55. 

Haller discloses that “WAN 105 is coupled to a wireless carrier internal 

network or carrier backbone 104,” and “manager server 102 is coupled to carrier 

backbone 104,” and alternatively, “carrier backbone 104 is coupled to Internet 103. 

Server 101 is coupled to Internet 103.” Id., 6:20-35. 

Haller discloses examples of data synchronization using system 100. For 

instance, “[a]s the user turns on the PDA, which is a BluetoothTM equipped PDA 

with a LAN Access profile implementation, the PDA connects to the cellular 

telephone via the BAP 551 utilizing BluetoothTM. The PDA receives a private IP 

address. The user loads the PDA synchronization software, which is configured to 

synchronize against the corporate exchange server. When hitting the 

“Synchronize” button, the PDA opens a TCP connection to the IP address of the 

corporate network. The IP packets travel across the BluetoothTM air interface to 

the cellular telephone using a PPP protocol and PPP 552. When reaching the 

cellular telephone, the packets go through NAT 553 and the private IP address is 

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translated to a public IP address. The public IP address goes to VPN 406 f, which 

identifies the destination as the corporate LAN. VPN 406 f packages the packet 

over an Internet tunnel, encrypts and signs it. The packet is then sent through the 

cellular air interface and the Internet, reaching the corporate VPN and exchange 

servers.” Id., 14:40-60. 

Haller discloses formatting the data packet to be synchronized into an SMS 

message in device 106. Haller discloses “a software architecture 500 for 

device 106,” (Id., 7:35-36), including “service plug-ins 406.” Id., 6:31. As shown 

below in annotated FIG. 5, Haller discloses that the service plug-ins 406 include an 

“SMS software component plug-in 406h.” Id., 13:17. 

Haller, FIG. 5 (annotated) 

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Haller discloses that the SMS software component plug-in 406h “enables 

standard legacy SMS or Instant Messaging over SMS.” Id., 13:21-23. Haller also 

discloses that SMS software component plug-in 406h is “an SMS server for 

terminals 107 and an SMS termination for device 106. In this way, a protocol will 

be defined that enables each terminal to send a packet to SMS 406h with a 

destination device phone number + message text. SMS 406h then send the SMS 

message to a cellular network.” Id., 13:16-35. 

B. Yu 

Yu discloses a “wireless instant messaging system.” Ex-1006, Abstract. For 

example, as shown below in annotated FIG. 2, Yu discloses a system in which “a 

computer 28 is connected with a cellular modem 30. In accordance with 

conventional cellular radio telecommunications practice, the cellular modem 30 

communicates over an air interface 32 with a cellular base station controller (BSC) 

34, which is in turn coupled with a mobile switching center (MSC) 36,” (Id., 3:7-

12), and “MSC 36 is in turn coupled with an “interworking function” (IWF) 38, 

which commonly serves as a wireless/IP gateway to transparently pass wireless 

protocol signals (e.g., CDMA, TDMA, etc.) from MSC 36 onto an IP network and 

vice versa. Thus, IWF 38 is coupled to an IP network 40, to which IM server 26 is 

also coupled.” Id., 3:15-24. In the system, computer 28 “can interact with IM 

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server 26 so as to facilitate instant messaging communications with a user at 

computer 28.” Id., 3:28-30. 

Yu, FIG. 2 (annotated) 

Yu shows the details of the network for the instant messaging between 

cellular modem 30 and IM server 26 in FIG. 6. As shown below in annotated FIG. 

6, Yu discloses that a mobile station MS 80, such as cellular modem 30 in FIG. 2, 

“subscribes to SMS service and is therefore capable of sending and receiving

SMS messages.” Id., 11:45-48. That is, the MS 80 may send an SMS message to 

the IM server 68 (such as IM server 26 in FIG. 2) or receive an SMS message from 

the IM server 68. 

Second terminal devices First terminal devices Intermediate terminal device 

Short range communication Cellular network Internet 

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Yu, FIG. 6 (annotated) 

Yu further elaborates the receiving process. For instance, Yu discloses that 

IM client in IM server 68 “sends an IM message to the user at MS 80, the message 

will go to SN 70.” Id., 13:55-58. Upon receipt of the message, “SN 70 will then 

convert the message into an SMS message and forward the SMS message to MS 

80.” Id., 14:19-21. If MS 80 is not available to engage in instant messaging, 

“SMSC [short message service center] 86 can serve a store and forward function 

Second terminal devices 

Intermediate terminal device 

Cellular network 

Internet 

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for SMS messaging as defined by IS-41. When MS 80 registers in a given serving 

system, the serving system sends a REGNOT message to the MS's HLR 82, 

including an SMS_Address parameter indicative of the location of MSC 74. SMSC 

86 may then receive an SMS message addressed to a MS served by MS 74. In 

response, SMSC 86 may query HLR 82 to find out where MS 80 is located, and 

HLR 82 would respond with the SMS_Address parameter. SMSC 86 may then 

route the SMS message to MSC 74, and MSC 74 could then deliver the SMS 

message to MS 80 for display to a user.” Id., 12:25-36. 

C. Singhal 

Singhal is directed to a method for “enabling wireless information devices to 

access and manipulate data. The data being accessed may reside on a Web server, a 

file server, a personal desktop PC, or elsewhere. The data may represent virtually 

any type of information, including Web content, e-mail messages, or files in 

various formats.” Ex-1007, 3:28-33. In particular, Singhal discloses “a 

synchronization protocol proxy [] which may be used to synchronize data stored 

locally on a user's WID [wireless information device] with data stored elsewhere 

(such as on the user's desktop PC). An example synchronization protocol is 

“SyncML” which is being developed by The SyncML Initiative to seamlessly

synchronize wireless and wireline data and devices. (See http://www.syncml.org 

for more information on SyncML.).” Id., 6:9-16. Singhal also discloses that “files 

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of type “XML” may be converted to WBXML (“Wireless Application Protocol 

Binary XML”) decks,” (Id., 7:56-58) and that “multi-part MIME (Multi-purpose 

Internet Mail Extensions) message may be generated which contains the original 

content (in one part) and the service description (in another part).” Id., 15:3-6. 

D. Oueslati 

Oueslati discloses a protocol “for wireless data exchange via a packet 

transport based system. The protocol may be used in conjunction with two or more 

portable computer systems. One of the portable computer systems may be a 

personal digital assistant (PDA) having an internal wireless communication unit, 

e.g., a GSM radio using the Short Message Service (SMS).” Ex-1008, 2:44-50. The 

protocol uses a data type identifier “to determine the proper destination 

application. The data type identifier can identify by extension, MIME type or by 

application creator, for instance.” Id., 2:60-64. The data type identifier “identifies 

more specifically the actual data type within the identified category. For instance, 

if the previous number was “1,” it is the Extension category of the data type (for 

example “vcf” means a vCard extension).” Id., 9:45-49. Oueslati provides an 

example of sending “vCards wirelessly (e.g., using the SMS standard as a 

transport) to another computer system.” Id., 10:3-5. 

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IV. LEVEL OF ORDINARY SKILL IN THE ART 

The level of ordinary skill in the art may be reflected by the prior art of 

record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). A person 

of ordinary skill in the art (“POSITA”) for the ’505 patent would at least have a 

bachelor’s degree in electrical engineering, computer engineering, or a related 

engineering discipline and two or more years of industry experience in the field of 

telecommunications, or equivalent experience, education, or both. Ex-1004. The 

person would also have knowledge or familiarity with telecommunication. Id., Ex1003, ¶41. 

V. CLAIM CONSTRUCTION 

Only claim terms “in controversy” need be construed in IPR “and only to the 

extent necessary to resolve the controversy.” Nidec Motor Corp. v. Zhongshan 

Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citation omitted), 

cert. denied, 138 S. Ct. 1695 (2018). No claim terms need to be construed by the 

Board at this time. 

In the District Court, Petitioner and Patent Owner have offered the following 

terms for construction, see Litigation, Dkt. 59, p. 3, after the number of terms have 

been narrowed: 

Claim Term Petitioner’s Proposed 

Construction 

Patent Owner’s 

Proposed 

Construction 

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1, 14, 23 “a formatter to format 

the received data into at 

least one SMS (Short 

Message Service) 

message” 

Governed by 35 

U.S.C. § 112(f) 

Function: formatting 

the received data into 

at least one SMS 

(Short Message 

Service) message 

Indefinite under 35 

U.S.C. § 112(b); 

specification fails to 

describe it 

Structure: none 

disclosed

Plain and 

Ordinary Meaning 

14 “data message receiver” Indefinite under 35 

U.S.C. § 112(b) 

Lack of Written 

description under 35 

U.S.C. § 112(a) 

Plain and 

Ordinary Meaning 

1, 14, 23 “SMS (Short Message 

Service)” 

Cellular based 

messages of limited 

size consisting of 

text and numbers. 

Plain and 

Ordinary Meaning 

For the purpose of this Inter Partes Review, Petitioner adopts Patent 

Owner’s constructions for the above terms. Regardless of the indefiniteness of the 

terms, claims 1, 14, and 23 are still anticipated by Haller. 

VI. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH 

CLAIM CHALLENGED 

A. Claims for Which Review Is Requested 

Petitioners respectfully request review under 35 U.S.C. § 311 of claims 1-45 

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of ’505 patent and cancellation of those claims as unpatentable. 

B. Statutory Grounds 

Each asserted reference identified in the table below issued, published, 

and/or was filed before August 30, 2001, the earliest purported priority date of 

’505 patent. Thus, each asserted reference is prior art under at least one of pre-AIA 

35 U.S.C. §§ 102(a), (b), and/or (e).

Prior Art References Exhibit 

Haller, U.S. Patent No. 7,295,532 B2, filed on Aug. 17, 2001, 

issued Nov. 13, 2007. 

Ex-1005 

Yu, U.S. Patent No. 7,058,036 B1, filed on Feb. 25, 2000, issued 

on Jun. 6, 2006. 

Ex-1006 

Singhal, U.S. Patent No. 6,925,481 B2, filed on May 3, 2001, 

issued on Aug. 2, 2005. 

Ex-1007 

Oueslati, U.S. Patent No. 7,191,250 B1, filed on Mar. 19, 2001, 

issued on Mar. 13, 2007. 

Ex-1008 

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Claims 1-45 of ’505 patent are unpatentable under the following grounds 

based on pre-AIA 35 U.S.C. §§ 102 and 103: 

Grounds Grounds of Unpatentability

1 Haller anticipates claims 1, 3, 10, 11, 12, 14, 20, 21, 23, 25, 32, 33, 

34, 38, 39, 43, and 44. 

2 Haller and Yu render obvious claims 4, 5, 13, 22, 26, 27, 35, 36, 37, 

40, 41, 42, and 45. 

3 Haller and Singhal render obvious claims 2, 6, 7, 8, 15, 16, 17, 18, 24, 

28, 29, and 30. 

4 Haller, Singhal, and Oueslati render obvious claims 9, 19, and 31. 

VII. GROUND 1: HALLER ANTICIPATES CLAIMS 1, 3, 10, 11, 12, 14, 20, 

21, 23, 25, 32, 33, 34, 38, 39, 43, AND 44 

A. Independent Claims 1, 14, and 23 

1. Independent Claim 1 

a. [1p] “A method for data synchronization between a 

first terminal device and a second, remotely located, 

terminal device via an intermediate terminal device, 

the method comprising:” 

As shown below in annotated FIG. 1, Haller discloses a method for data 

synchronization between terminals 7 (the claimed first terminal device) and a 

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server 101 or 102 (the claimed second terminal device) via a device 106 (the 

claimed intermediate terminal device). Ex-1003, ¶¶63-65.

Haller, FIG. 1 (annotated)

Haller discloses a system 100 in which “terminals 107 are coupled to device 

106 by short-range radio signals 110 to form LAN 116.” Ex-1005, 5:33-35. Haller

discloses that “terminals 107 are a desktop computer, a laptop computer, a personal 

digital assistant, a headset, a pager, a printer, a watch, a thin terminal, a digital 

camera or an equivalent.” Id., 5:29-47. Haller discloses that “WAN [wide area 

networks]105 is coupled to device 106,” and “WAN 105 includes a cellular 

network transmitting and receiving cellular signals 111.” Id., 5:52-55. Haller

discloses that “WAN 105 is coupled to a wireless carrier internal network or carrier 

Second terminal devices Intermediate terminal device First terminal devices 

Cellular network Short range communication Internet 

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backbone 104,” and “manager server 102 is coupled to carrier backbone 104,” and 

alternatively, “carrier backbone 104 is coupled to Internet 103. Server 101 is 

coupled to Internet 103.” Id., 6:20-35. 

With system 100, Haller addresses the problem that “a user is a traveling 

professional who has a PDA [personal digital assistant] and needs to synchronize it 

against a corporate exchange server while on the road.” Id., 14:26-31. 

b. [1a] “obtaining, at the first terminal device, data to be 

synchronized with the second remotely located 

terminal device;” 

The ’505 patent fails to define the “obtaining” and “data to be 

synchronized.” Nevertheless, for the purposes of this petition, Petitioner 

understands that any data in the first terminal device is obtained data and any data 

sent to the second remotely located terminal device is the “data to be 

synchronized.” 

Haller discloses obtaining, at the PDA (the claimed first terminal device) 

data packets (the claimed data to be synchronized) to be synchronized with the 

server 101 or 102 (the claimed second remotely located terminal device). Ex-1003, 

¶¶66-70. Haller’s server 101 or 102 is the claimed second remotely located 

terminal device because, as shown above in annotated FIG. 1, server 101 or 102 

communicates with terminals 107 via WAN 105 (e.g., cellular network). Id., ¶67. 

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Haller discloses obtaining at PDA data packet to be synchronized with 

server 101 or 102. For instance, Haller discloses that “a user is a traveling 

professional who has a PDA and needs to synchronize it against a corporate 

exchange server while on the road.” Ex-1005, 14:26-31. “As the user turns on the 

PDA, which is a BluetoothTM equipped PDA with a LAN Access profile 

implementation, the PDA connects to the cellular telephone via the BAP 551 

utilizing BluetoothTM. The PDA receives a private IP address. The user loads the 

PDA synchronization software, which is configured to synchronize against the 

corporate exchange server. When hitting the “Synchronize” button, the PDA opens 

a TCP connection to the IP address of the corporate network. The IP packets

travel across the BluetoothTM air interface to the cellular telephone using a PPP 

protocol and PPP 552.” Id., 14:40-60. 

Haller also recites “a router software component to transfer a plurality of

data packets between the one or more devices connected to the one or more 

cellular networks and the one or more devices connected to the wireless local area 

network by the cellular signals and the short-range radio signals,” (Id., Claim 1), 

and “the plurality of data packets includes an Internet Protocol (“IP”) packet.” 

Id., Claim 2. 

Therefore, Haller discloses obtaining, at the first terminal device, data to be 

synchronized with the second remotely located terminal device. 

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c. [1b] “transmitting the data from the first terminal 

device to the intermediate terminal device through a 

short-range connection;” 

As shown below in annotated FIG. 1, Haller discloses transmitting the data 

packets from terminals 107 including the PDA (the claimed first terminal device) 

to device 106 (the claimed intermediate terminal device) through short range radio 

signals 110 (the claimed short-range connection). Ex-1003, ¶¶71-73. 

Haller, FIG. 1 (annotated) 

Haller discloses that “[w]hen hitting the “Synchronize” button, the PDA 

opens a TCP connection to the IP address of the corporate network. The IP 

packets travel across the BluetoothTM air interface to the cellular telephone using a 

PPP protocol and PPP 552.” Ex-1005, 14:47-51. 

Second terminal devices Intermediate terminal device First terminal devices 

Cellular network Short range communication Internet 

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Therefore, Haller discloses transmitting the data from the first terminal 

device to the intermediate terminal device through a short-range connection. 

d. [1c] “formatting the data to be synchronized into at 

least one SMS (Short Message Service) message in the 

intermediate terminal device; and” 

Haller discloses formatting the data packet to be synchronized into an SMS 

message in the device 106 (the claimed intermediate terminal device). Ex-1003, 

¶¶74-78.

As shown below in annotated FIG. 4, Haller discloses “a software 

architecture 500 for device 106,” (Ex-1005, 7:35-36), that includes “service plugins 406.” Id., 6:31.

Haller, FIG. 4 (annotated) 

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As shown below in FIG. 5, Haller discloses that the service plug-ins 

406 includes an “SMS software component plug-in 406h.” Id., 13:17. 

Haller, FIG. 5 (annotated) 

Haller discloses that SMS software component plug-in 406h “enables 

standard legacy SMS or Instant Messaging over SMS.” Id., 13:21-23. Haller also 

discloses that SMS software component plug-in 406h is “an SMS server for 

terminals 107 and an SMS termination for device 106. In this way, a protocol will 

be defined that enables each terminal to send a packet to SMS 406h with a 

destination device phone number + message text. SMS 406h then send the SMS 

message to a cellular network.” Id., 13:16-35. 

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Because the data packet transmitted from terminals 107 such as the PDA 

(the claimed first terminal device) is formatted into an SMS message by SMS 

software component plug-in 406h of device 106 (the claimed intermediate terminal 

device), Haller discloses formatting the data to be synchronized into at least one 

SMS (Short Message Service) message in the intermediate terminal device. 

e. [1d] “transmitting the at least one SMS message from 

the intermediate terminal device to the second remote 

located terminal device through cellular network 

connection.” 

As shown below in annotated FIG. 1, Haller discloses transmitting the SMS 

message from device 106 (the claimed intermediate terminal device) to server 101 

or 102 (the claimed second remote located terminal device) through cellular signals 

111 (the claimed cellular network connection). Ex-1003, ¶¶79-82. 

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Haller, FIG. 1 (annotated) 

Haller discloses that “SMS 406h is an SMS server for terminals 107 and an 

SMS termination for device 106. In this way, a protocol will be defined that 

enables each terminal to send a packet to SMS 406h with a destination device 

phone number + message text. SMS 406h then send the SMS message to a cellular 

network.” Ex-1005, 13:16-35. 

Haller also discloses that the cellular network is “coupled to a wireless 

carrier internal network or carrier backbone 104,” and “manager server 102 is 

coupled to carrier backbone 104,” and alternatively, “carrier backbone 104 is 

coupled to Internet 103. Server 101 is coupled to Internet 103.” Id., 6:20-35. 

Second terminal devices Intermediate terminal device First terminal devices 

Cellular network Short range communication Internet 

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Therefore, the SMS message sent by SMS 406 of device 106 is transmitted to the 

server 101 or 102. 

Therefore, Haller discloses transmitting the at least one SMS message from 

the intermediate terminal device to the second remote located terminal device 

through cellular network connection. 

2. Independent Claim 14 

a. [14p] “A mobile terminal device comprising:” 

As shown below in annotated FIG. 1, Haller discloses a device 106 (the 

claimed mobile terminal device). Ex-1003, ¶¶83-86.

Haller, FIG. 1 (annotated) 

Second terminal devices Intermediate terminal device First terminal devices 

Cellular network Short range communication Internet 

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Haller discloses a system 100 including “terminals 107 coupled to wireless 

device 106.” Ex-1005, 5:29-31. Haller also discloses that “device 106 is a cellular

handset or telephone.” Id., 6:16-17. 

As shown above in annotated FIG. 1, Haller also discloses that “WAN 105 

is coupled to device 106,” and that “WAN 105 includes a cellular network

transmitting and receiving cellular signals 111.” Id., 5:52-55. 

Therefore, Haller discloses the mobile terminal device. 

b. [14a] “a data message receiver to receive data from a 

first terminal device, which data is to be synchronized 

with a second, remotely located, terminal device via a 

short range communication link;” 

Petitioner raised indefiniteness issues for the term “data message receiver” 

during the Litigation matters, however, as discussed above (Section V), Petitioner 

adopts Patent Owner’s construction for this phrase. 

Nevertheless, a POSITA would understand that the combination of a 

processor 307, an RF circuit 309, and an antenna 313 of device 106, disclosed by 

Haller, would be equivalent to any defined “data message receiver.” Ex-1003, ¶88. 

Haller discloses a combination of a processor 307, an RF circuit 309, and an 

antenna 313 of device 106 that receives data from terminals 107 (the claimed first 

terminal device), which data is to be synchronized with server 101 or 102 (the 

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claimed second, remotely located, terminal device) via a short range 

communication link. Ex-1003, ¶¶87-90. 

As shown below in annotated FIG. 3a, Haller discloses that device 106

includes “[p]rocessor 307, RF circuit 309 and antenna 313 [that] transceive and 

receive short-range radio signals to and from terminals 107.” Ex-1005, 7:6-10. 

Haller, FIG. 3a (annotated) 

The data received from terminals 107 are further transmitted to server 101 or 

102 for synchronization. For instance, Haller discloses that “the PDA connects to 

the cellular telephone via the BAP 551 utilizing BluetoothTM. The PDA receives a 

private IP address. The user loads the PDA synchronization software, which is 

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configured to synchronize against the corporate exchange server. When hitting the 

“Synchronize” button, the PDA opens a TCP connection to the IP address of the 

corporate network. The IP packets travel across the BluetoothTM air interface to 

the cellular telephone using a PPP protocol and PPP 552. When reaching the 

cellular telephone, the packets go through NAT 553 and the private IP address is 

translated to a public IP address. The public IP address goes to VPN 406 f, which 

identifies the destination as the corporate LAN. VPN 406 f packages the packet 

over an Internet tunnel, encrypts and signs it. The packet is then sent through the 

cellular air interface and the Internet, reaching the corporate VPN and exchange 

servers.” Id., 14:40-60. 

c. [14b] “a formatter to format the received data into at 

least one SMS (Short Message Service) message;” 

In the event that the “formatter” is a means-plus-function term, then as 

discussed above (Section V), Petitioner adopts the Patent Owner’s construction. As 

such, Petitioner understands for the purpose of this Petition that the corresponding 

structure is “a mobile terminal device” and the function is formatting the received 

data into at least one SMS (Short Message Service) message. See Litigation, Dkt. 

59, p. 5 (Patent Owner arguing that ’505 patent discloses “Modern-day mobile 

terminals, such as mobile telephones, have been provided with the SMS (Short 

Message Service) capability,” 1:66-2:1 and 3:49-50). 

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Nevertheless, a POSITA would understand that the plug-in 406h disclosed 

by Haller would be equivalent to any defined structure for “formatter.” Ex-1003, 

¶92. Haller discloses an SMS software component plug-in 406h (which Petitioner 

understands discloses the formatter) to format the received data into at least one 

SMS message. Ex-1003, ¶¶91-94. 

As shown below in annotated FIG. 4, Haller discloses “a software 

architecture 500 for device 106,” (Ex-1005, 7:35-36), that includes a “network 

service plug-in 406” that enables “enhanced IP based network.” Id., 8:25-27. The 

plug-ins 406 can “process IP packets going either internally in a LAN 116 or 

externally to and from a WAN.” Id., 10:45-48. 

Haller, FIG. 4 (annotated) 

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As shown below in annotated FIG. 5, Haller also discloses that the plug-in 

406 includes an SMS software component plug-in 406h which “enables standard 

legacy SMS or Instant Messaging over SMS,” and that “SMS 406h is an SMS 

server for terminals 107 and an SMS termination for device 106. In this way, a 

protocol will be defined that enables each terminal to send a packet to SMS 406h 

with a destination device phone number+message text. SMS 406h then send the 

SMS message to a cellular network.” Id., 13:16-35. 

Haller, FIG. 5 (annotated) 

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d. [14c] “a transmitter to transmit the at least one SMS 

message to the second, remotely located, terminal 

device through a cellular network connection.” 

A POSITA would understand that the combination of a digital circuit 306, 

analog circuit 308, transceiver 310, receiver 311, and antenna 312, disclosed by 

Haller, would be equivalent to any defined “transmitter,” as claimed. Ex-1003, 

¶95. Haller discloses the combination of a digital circuit 306, analog circuit 308, 

transceiver 310, receiver 311, and antenna 312 that transmits the at least one SMS 

message to server 101 or 12 (the claimed second, remotely located, terminal 

device) through a cellular network connection. Ex-1003, ¶¶95-98. 

Haller discloses that in device 106 “[c]ellular, such as GSM, signals are 

transmitted and received using digital circuit 306, analog circuit 308, 

transceiver 310, receiver 311 and antenna 312. Digital circuit 306 is coupled to 

bus 305.” Ex-1005, 7:12-15. 

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Haller, FIG. 3a (annotated) 

Haller also discloses that device 106 includes SMS software component 

plug-in 406h that can format data from terminal 107 into an SMS data message and 

“then send the SMS message to a cellular network.” Id., 13:16-35. Haller further 

discloses that the data “sent through the cellular air interface and the Internet, 

reaching the corporate VPN and exchange servers.” Id., 14:57-59. 

Therefore, Haller discloses the transmitter to transmit the at least one SMS 

message to the second, remotely located, terminal device through a cellular 

network connection. 

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3. Independent Claim 23 

a. [23p] “A program storage device, readable by 

machine, tangibly embodying a program of 

instructions executable by machine to perform a 

method of synchronization between a first terminal 

device and a second, remotely located, terminal device 

via an intermediate terminal device, the method 

comprising:” 

Haller discloses memories 302, 303, and 304 (the claimed program storage 

device), readable by machine, tangibly embodying a program of instructions 

executable by machine to perform a method of synchronization between terminals 

107 (the claimed first terminal device) and server 101 or 102 (the claimed second, 

remotely located, terminal device) via device 106 (the claimed intermediate 

terminal device), as shown below. 

Second terminal devices Intermediate terminal device First terminal devices 

Cellular network Short range communication Internet 

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Haller, FIG. 1 (annotated) 

As shown below in annotated FIG. 3a, Haller discloses that device 106 

includes “both internal and removable memory. In particular, device 106 includes 

internal FLASH (or Electrically Erasable Programmable Read-Only Memory 

(“EEPROM”) and static Random Access Memory (“SRAM”)) 302 and 303, 

respectively. Removable FLASH memory 304 is also used . . . Memories 302, 303, 

and 304 are coupled to bus 305.” Ex-1005, 6:61-7:1. 

Haller, FIG. 3a (annotated) 

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As shown below in FIG. 4, Haller also discloses “a software 

architecture 500 for device 106.” Id., 7:35-36. “Software 500 is stored in FLASH 

memory 302.” Id., 7:37-38. 

Haller, FIG. 5 

Therefore, Haller discloses a program storage device, readable by machine, 

tangibly embodying a program of instructions executable by machine to perform a 

method of synchronization between a first terminal device and a second, remotely 

located, terminal device via an intermediate terminal device. Ex-1003, ¶¶99-102. 

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b. [23a] “obtaining, at the first terminal device, data to 

be synchronized with the second remotely located 

terminal device;” 

As discussed above in Claim 1, Haller discloses obtaining, at the first 

terminal device, data to be synchronized with the second remotely located terminal 

device. See Section VII.A.1.b. 

c. [23b] “transmitting the data from the first terminal 

device to the intermediate terminal device through a 

short-range connection;” 

As discussed above in Claim 1, Haller discloses transmitting the data from 

the first terminal device to the intermediate terminal device through a short-range 

connection. See Section VII.A.1.c. 

d. [23c] “formatting the data to be synchronized into at 

least one SMS (Short Message Service) message in the 

intermediate terminal device; and” 

As discussed above in Claim 1, Haller discloses formatting the data to be 

synchronized into at least one SMS (Short Message Service) message in the 

intermediate terminal device. See Section VII.A.1.d.

e. [23d] “transmitting the at least one SMS message 

from the intermediate terminal device to the second 

remote located terminal device through cellular 

network connection.” 

As discussed above in Claim 1, Haller discloses transmitting the at least one 

SMS message from the intermediate terminal device to the second remote located 

terminal device through cellular network connection. See Section VII.A.1.e. 

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B. Dependent Claims 3, 10, 11, 12, 20, 21, 25, 32, 33, 34, 38, 39, 43, 

and 44 

1. [Claim 3] “The method of claim 1, wherein the intermediate 

terminal device comprises a mobile terminal device.” 

As shown below in annotated FIG. 1, Haller discloses that device 106 (the 

claimed intermediate terminal device) comprises a mobile terminal device. 

Haller, FIG. 1 (annotated) 

Haller discloses that “device 106 is a cellular handset or telephone.” Ex1005, 6:16-19. Haller also discloses that “WAN 105 is coupled to device 106,” and 

“WAN 105 includes a cellular network transmitting and receiving cellular signals 

111.” Id., 5:52-55. 

Second terminal devices Intermediate terminal device First terminal devices 

Cellular network Short range communication Internet 

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Therefore, Haller discloses that the intermediate terminal device comprises a 

mobile terminal device. 

2. [Claim 10] “The method of claim 1, wherein the data 

message comprises one of a calendar, a to-do list, personal 

information, and contact information.” 

Haller’s data packets include one of a calendar, a to-do list, personal 

information, and contact information. Ex-1003, ¶¶110-113. 

Haller discloses synchronization of the data in PDA with the corporate 

exchange server. For instance, Haller disclose that “a user is a traveling 

professional who has a PDA and needs to synchronize it against a corporate 

exchange server while on the road. This synchronization needs to be done securely 

as the only way to enter the corporate network is via a certified and Information 

Technology (‘IT’) manager approved VPN.” Ex-1005, 14:26-31. 

Because the data of the PDA are synchronized with the corporate server, a 

POSITA would have understood a corporate exchange server to refer to an MS 

exchange server, which includes one of a calendar, a to-do list, personal 

information, and contact information. Ex-1003, ¶112. 

Therefore, Haller discloses that the data message comprises one of a 

calendar, a to-do list, personal information, and contact information. 

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3. [Claim 11] “The method of claim 1, wherein the data 

message is transferred from the first terminal device to the 

intermediate terminal device via a short range 

communication link.” 

As shown below in annotated FIG. 1, Haller discloses that the data packets 

are transferred from terminals 107 such as the PDA (the claimed first terminal 

device) to device 106 (the claimed intermediate terminal device) via a short-range 

radio signals 110 (the claimed short range communication link). 

Haller, FIG. 1 (annotated) 

Haller discloses that “terminals 107 are coupled to device 106 by shortrange radio signals 110 to form LAN 116,” and that “terminals 107 include a 

Second terminal devices Intermediate terminal device First terminal devices 

Cellular network Short range communication Internet 

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BluetoothTM 2.4 GHz transceiver/receiver. Likewise, device 106 includes a 

BluetoothTM 2.4 GHZ transceiver/receiver.” Ex-1005, 5:29-47. 

Haller also discloses that “the PDA connects to the cellular telephone via the 

BAP 551 utilizing BluetoothTM,” and that “[t]he IP packets travel across the

BluetoothTM air interface to the cellular telephone using a PPP protocol and PPP 

552.” Id., 14:40-60. 

Therefore, Haller discloses that the data message is transferred from the first 

terminal device to the intermediate terminal device via a short range 

communication link. 

4. [Claim 12] “The method of claim 11, wherein the short 

range communication link comprises one of an IR 

(Infrared) or Bluetooth communication link.” 

Haller discloses that the short-range radio communication link comprises 

Bluetooth. 

Haller discloses that “terminals 107 are coupled to device 106 by shortrange radio signals 110 to form LAN 116,” and that “terminals 107 include a 

BluetoothTM 2.4 GHz transceiver/receiver. Likewise, device 106 includes a 

BluetoothTM 2.4 GHZ transceiver/receiver.” Id., 5:29-47. 

Haller also discloses that “the PDA connects to the cellular telephone via the 

BAP 551 utilizing BluetoothTM,” and that “[t]he IP packets travel across the

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BluetoothTM air interface to the cellular telephone using a PPP protocol and PPP 

552.” Id., 14:40-60. 

5. [Claim 20] “The device of claim 14, wherein the data 

comprises one of a calendar, a to-do list, a personal 

information, and contact information.” 

As discussed above in Claim 10, Haller discloses that the data comprises 

one of a calendar, a to-do list, a personal information, and contact information. See

Section VII.B.2. 

6. [Claim 21] “The device of claim 14, wherein the data 

receiver receives data messages via one of an IR (Infrared) 

or Bluetooth communication link.” 

As discussed above in Claim 12, Haller discloses that the data receiver 

receives data messages via one of an IR (Infrared) or Bluetooth communication 

link. See Section VII.B.4. 

7. [Claim 25] “The device of claim 23, wherein the 

intermediate terminal device comprises a mobile terminal 

device.” 

As discussed above in Claim 3, Haller discloses that the intermediate 

terminal device comprises a mobile terminal device. See Section VII.B.1. 

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8. [Claim 32] “The device of claim 23, wherein the data 

message comprises one of a calendar, a to-do list, personal 

information, and contact information.” 

As discussed above in Claim 10, Haller discloses that the data message 

comprises one of a calendar, a to-do list, a personal information, and contact 

information. See Section VII.B.2. 

9. [Claim 33] “wherein the data message is transferred from 

the first terminal device to the intermediate terminal device 

via a short range communication link.” 

As discussed above in Claim 11, Haller discloses that the data message is 

transferred from the first terminal device to the intermediate terminal device via a 

short range communication link. See Section VII.B.3. 

10. [Claim 34] “The device of claim 33, wherein the short range 

communication link comprises one of an IR (Infrared) or 

Bluetooth communication link.” 

As discussed above in Claim 12, Haller discloses that the short range 

communication link comprises one of an IR (Infrared) or Bluetooth 

communication link. See Section VII.B.4. 

11. [Claim 38] “The method of claim 36, wherein the data is 

transmitted from the first terminal device to the 

intermediate terminal device via a short range 

communication link.” 

As discussed above in Claim 11, Haller discloses that the data is transmitted 

from the first terminal device to the intermediate terminal device via a short range 

communication link. See Section VII.B.3. 

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12. [Claim 39] “The method of claim 38, wherein the short 

range communication link comprises one of either an IR 

(Infrared) or Bluetooth communication link.” 

As discussed above in Claim 12, Haller discloses that the short range 

communication link comprises one of either an IR (Infrared) or Bluetooth 

communication link. See Section VII.B.4. 

13. [Claim 43] “The device of claim 41, wherein the data is 

transmitted from the first terminal device to the 

intermediate terminal device via a short range 

communication link.” 

As discussed above in Claim 11, Haller discloses that the data is transmitted 

from the first terminal device to the intermediate terminal device via a short range 

communication link. See Section VII.B.3. 

14. [Claim 44] “The device of claim 43, wherein the short range 

communication link comprises one of either an IR 

(Infrared) or Bluetooth communication link.” 

As discussed above in Claim 12, Haller discloses that the short range 

communication link comprises one of either an IR (Infrared) or Bluetooth 

communication link. See Section VII.B.4. 

VIII. GROUND 2: HALLER AND YU RENDER OBVIOUS CLAIMS 4, 5, 

13, 22, 26, 27, 35, 36, 37, 40, 41, 42, AND 45

A. A POSITA Would Have Combined Haller and Yu

Both Haller and Yu are directed to data transmission between devices. Ex1005, Ex-1006. Ex-1003, ¶¶131-175. Each reference includes similar components 

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with similar functions, for instance, both Haller and Singhal disclose a computer 

(or PDA) connected to a wireless cellular phone with a short range connection, and 

a remotely located server connected to the wireless cellular phone via cellular 

network and Internet connection. Ex-1005, Ex-1006. Ex-1003, ¶131. Each 

reference discloses transmitting data using an SMS message. Ex-1005, Ex-1006. 

Ex-1003, ¶131. Thus, a POSITA would have sought to combine Haller with Yu

due to the compatible components and similar functions, as discussed below. Id. 

B. Independent Claims 36 and 41 

1. Independent Claim 36 

a. [36p] “A method of data synchronization between a 

first terminal device and a, remote located, second 

terminal device via an intermediate terminal device, 

the method comprising:” 

As shown below in annotated FIG. 1, and discussed above in Claim 1, 

Haller discloses a method for data synchronization between terminals 7 (the 

claimed first terminal device) and server 101 or 102 (the claimed second terminal 

device) via device 106 (the claimed intermediate terminal). See VII.A.1.a. 

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Haller, FIG. 1 (annotated) 

b. [36a] “obtaining, at the first terminal device, data to 

be synchronized with the second remotely located 

terminal device;” 

As discussed above in Claim 1, Haller discloses obtaining, at the first 

terminal device, data to be synchronized with the second remotely located terminal 

device. See VII.A.1.b. Ex-1003, ¶133. 

c. [36b] “transmitting the data from the first terminal 

device to the intermediate terminal device through a 

short-range connection;” 

As discussed above in Claim 1, Haller discloses transmitting the data from 

the first terminal device to the intermediate terminal device through a short-range 

connection. See VII.A.1.c. Ex-1003, ¶134. 

Second terminal devices Intermediate terminal device First terminal devices 

Cellular network Short range communication Internet 

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d. [36c] “formatting the data into at least one SMS 

(Short Message Service) message in the intermediate 

terminal device;” 

As discussed above in Claim 1, Haller discloses formatting the data into at 

least one SMS (Short Message Service) message in the intermediate terminal 

device. See VII.A.1.d. Ex-1003, ¶135. 

e. [36d] “transmitting the least one SMS message from 

the intermediate terminal device to a message center; 

and” 

As discussed above, Haller discloses transmitting the SMS message from 

device 106 (the claimed intermediate terminal device) to server 101 or 102. See

VII.A.1.e. Ex-1003, ¶136. 

In the event that Patent Owner argues that Haller does not explicitly disclose 

transmitting the SMS message via an SMS message center, Yu expressly discloses 

it. As shown below in annotated FIG. 2, Yu discloses a system in which “a 

computer 28 is connected with a cellular modem 30 [that] communicates over an 

air interface 32 with a cellular base station controller (BSC) 34, which is in turn 

coupled with a mobile switching center (MSC) 36,” (Ex-1006, 3:7-12), and “MSC 

36 is in turn coupled with an “interworking function” (IWF) 38,” and “IWF 38 is 

coupled to an IP network 40, to which IM server 26 is also coupled.” Id., 3:15-24. 

In the system, computer 28 “can interact with IM server 26 so as to facilitate 

instant messaging communications with a user at computer 28.” Id., 3:28-30. 

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Yu, FIG. 2 (annotated) 

Yu shows the details of the instant messaging between cellular modem 30 

and IM server 26 in FIG. 6. As shown below in annotated FIG. 6, Yu discloses that 

a mobile station MS 80, such as cellular modem 30 in FIG. 2, “subscribes to SMS 

service and is therefore capable of sending and receiving SMS messages.” Id., 

11:45-48. Ex-1003, ¶138. 

Second terminal devices First terminal devices Intermediate terminal device 

Short range communication Cellular network Internet 

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Yu, FIG. 6 (annotated) 

Yu further elaborates the receiving process. For instance, Yu discloses that 

IM client in IM server 68 “sends an IM message to the user at MS 80, the message 

will go to SN 70.” Ex-1006, 13:55-58. Upon receipt of the message, “SN 70 will 

then convert the message into an SMS message and forward the SMS message to 

MS 80.” Id., 14:19-21. If MS 80 is not available to engage in instant messaging, 

“SMSC [short message service center] 86 can serve a store and forward function 

Second terminal devices 

Intermediate terminal device 

Cellular network 

Internet 

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for SMS messaging as defined by IS-41,” and “then route the SMS message to 

MSC 74, and MSC 74 could then deliver the SMS message to MS 80 for display to 

a user.” Id., 12:25-36. Ex-1003, ¶139. 

Although Yu elaborates the receiving process (MS 80 receives the SMS 

message from IM server 68), the operation of transmitting the SMS message via 

SMSC [short message service center] 86 similarly applies to the sending process 

(MS 80 sends the SMS message to IM server 68), because Yu states that the system 

is “capable of sending and receiving SMS messages.” Ex-1006, 11:45-48. In the 

sending process, the SMS message is transmitted from MS 80 to SMSC [short 

message service center] 86. Ex-1003, ¶140. 

Yu also discloses that “[t]o provide SMS service, a wireless network may 

include a short message service center (“SMSC”) (sometimes also referred to 

simply as a message center (“MC”)), which is a functional entity that stores and 

forwards SMS messages. The store and forward function provides a method of 

sending short messages to their destination recipient or storing those messages if 

the recipient is unavailable to receive them. This store and forward function can 

generally be distinguished from the real-time delivery requirements of voice calls, 

although SMS messages may be delivered in real time.” Id., 4:26-36. Ex-1003, 

¶141. 

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As discussed above, see VII.A.1.e, Haller discloses sending an SMS 

message to a remote server through a cellular network, and Yu just fills a gap in the 

details of how a POSITA would have understood the SMS solution in Haller to 

work. Ex-1003, ¶142. For instance, Yu discloses sending an SMS message via a 

short message service center which can store and forward the SMS message to a 

recipient if the recipient is unavailable to receive them. A POSITA would have 

recognized that such routing by the short message service center would provide 

flexibility in message transmission and also prevent data packet loss. Ex-1003, 

¶142. The advantages provided by the short message service center of Yu would 

have motivated a POSITA to modify Haller so that the SMS message of Haller is 

sent to the short message service center first, as taught by Yu, so that the short 

message service center can store and then forward the message if the remote server 

is unavailable to receive the message, as described by Yu. Ex-1003, ¶142; Ex-1006, 

4:26-36. 

f. [36e] “transmitting the at least one message from the 

message center to the second remote located terminal 

device through a cellular network connection.” 

The combination of Haller and Yu discloses transmitting the at least one 

message from the message center to the second remote located terminal device 

through a cellular network connection. Ex-1003, ¶143. 

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As discussed above, a POSITA would have been motivated to modify Haller

so that Haller’s SMS message is sent from device 106 (the claimed intermediate 

device) to a short message service center, as taught by Yu. Ex-1003, ¶144. A 

POSITA would have been also motivated to modify Haller to send the SMS 

message from the short message service center to server 101 or 102, because 

Haller is intended to send the SMS message to server 101 or 102. In other words, 

in Haller, the server 101 and 102 is the destination of the SMS message. This is 

further supported by the fact that Yu discloses that SMSC 86 routes the SMS 

message to the destination. Ex-1003, ¶144. 

Also, as discussed above, a POSITA would have been motivated to modify 

Haller based on the teachings of Yu because of the advantages provided by 

utilizing the short message service center. Ex-1003, ¶145. 

Therefore, the combination of Haller and Yu discloses transmitting the at 

least one message from the message center to the second remote located terminal 

device through a cellular network connection. Ex-1003, ¶146. 

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2. Independent Claim 41 

a. [41p] “A program storage device, readable by 

machine, tangibly embodying a program of 

instructions executable by machine to perform a 

method of data synchronization between first and 

second remote locate terminal devices via an 

intermediate terminal device, the method 

comprising:” 

As discussed above in Claim 23, Haller discloses a program storage device, 

readable by machine, tangibly embodying a program of instructions executable by 

machine to perform a method of data synchronization between first and second 

remote locate terminal devices via an intermediate terminal device. See VII.A.3.a. 

Ex-1003, ¶147. 

b. [41a] “obtaining, at the first terminal device, data to 

be synchronized with the second remotely located 

terminal device;” 

As discussed above in Claim 1, Haller discloses obtaining, at the first 

terminal device, data to be synchronized with the second remotely located terminal 

device. See VII.A.1.b. Ex-1003, ¶148. 

c. [41b] “transmitting the data from the first terminal 

device to the intermediate terminal device through 

short-range connection;” 

As discussed above in Claim 1, Haller discloses transmitting the data from 

the first terminal device to the intermediate terminal device through short-range 

connection. See VII.A.1.c. Ex-1003, ¶149. 

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d. [41c] “formatting the data into at least one SMS 

(Short Message Service) message in the intermediate 

terminal device;” 

As discussed above in Claim 1, Haller discloses formatting the data into at 

least one SMS (Short Message Service) message in the intermediate terminal 

device. See VII.A.1.d. Ex-1003, ¶150. 

e. [41d] “transmitting the least one message from the 

intermediate terminal device to a message center; 

and” 

As discussed above in Claim 36, the combination of Haller and Yu discloses 

transmitting the least one message from the intermediate terminal device to a 

message center. See VIII.B.1.e. Ex-1003, ¶151. 

f. [41e] “transmitting the at least one message from the 

message center to the second remotely located 

terminal device through a cellular or network 

connection.” 

As discussed above in Claim 36, the combination of Haller and Yu discloses 

transmitting the at least one message from the message center to the second 

remotely located terminal device through a cellular or network connection. See

VIII.B.1.f. Ex-1003, ¶152. 

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C. Dependent Claims 4, 5, 13, 22, 26, 27, 35, 37, 40, 42, and 45 

1. [Claim 4] “The method of claim 3, wherein the at least one 

SMS message is transmitted via a mobile network including 

an SMS message center.” 

As discussed above in Claim 36, the combination of Haller and Yu discloses 

that the at least one SMS message is transmitted via a mobile network including an 

SMS message center. See VIII.B.1.e and VIII.B.1.f; see also Ex-1003, ¶153. 

2. [Claim 5] “The method of claim 4, wherein the at least one 

SMS message is transmitted from the intermediate terminal 

device to the second, remotely located, terminal device via 

the mobile network and a gateway and the Internet.” 

Each of Haller and Yu disclose this claim element. Ex-1003, ¶154. 

As shown below in annotated FIG. 1, Haller discloses that the at least one 

SMS message is transmitted from device 106 (the claimed intermediate terminal 

device) to server 101 (the claimed the second, remotely located, terminal device) 

via the WAN 105 including the cellar signals 111 (the claimed mobile network) 

and carrier backbone 104 (the claimed gateway) and Internet 103 (the claimed 

Internet). Ex-1003, ¶155. 

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Haller, FIG. 1 (annotated) 

Haller discloses that device 106 is coupled to a WAN 105 and the “WAN 

105 is coupled to a wireless carrier internal network or carrier backbone 104,” 

and the “carrier backbone 104 is coupled to Internet 103. Server 101 is coupled to 

Internet 103.” Ex-1005, 6:16-26. 

Because the carrier backbone 104 of Haller provides interoperability of 

different networks that require different protocols and allows data to flow from 

cellular network to Internet network, the carrier backbone 104 of Haller is the 

claimed gateway. Ex-1003, ¶157. 

In addition, Yu explicitly discloses the claimed “gateway.” For instance, Yu

discloses that “the cellular modem 30 communicates over an air interface 32 with a 

Second terminal devices Intermediate terminal device First terminal devices 

Cellular network Short range communication Internet 

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cellular base station controller (BSC) 34, which is in turn coupled with a mobile 

switching center (MSC) 36. MSC 36 is, in large part, the wireless equivalent of a 

landline telecommunications switch (often referred to as a signal switching point or 

SSP). MSC 36 is in turn coupled with an “interworking function” (IWF) 38, which 

commonly serves as a wireless/IP gateway to transparently pass wireless protocol 

signals (e.g., CDMA, TDMA, etc.) from MSC 36 onto an IP network and vice 

versa.” Ex-1006, 3:9-19. 

As shown below in annotated FIG. 6, Yu also discloses that “IWF 

[interworking function] 72 serves to communicatively couple IP network 62 with 

a wireless telecommunications network, to convert between circuit-switched voice 

and/or data communications on the wireless network side and packet sequences 

appropriate for transport over network 62 on the other side.” Id., 11:6-10. 

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Yu, FIG. 6 (annotated) 

 A POSITA would have been motivated to implement IWF 72 (the 

wireless/IP gateway) of Yu in Haller’s system because Haller requires 

interoperability between a cellular network and an Internet network for data flow, 

and Yu teaches that IWF 72 provides the interoperability required by Haller. Ex1003, ¶160. Therefore, Haller and Yu disclose that the at least one SMS message is 

Second terminal devices 

Intermediate terminal device 

Cellular network 

Internet 

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transmitted from the intermediate terminal device to the second, remotely located, 

terminal device via the mobile network and a gateway and the Internet. Id. 

3. [Claim 13] “The method of claim 1, further comprising 

transmitting at least one other SMS message from the 

second terminal device to the first terminal device via the 

intermediate terminal device.” 

The combination of Haller and Yu teaches this claim element. Id., ¶161. 

Haller discloses that device 106 (the claimed intermediate terminal device) 

receives an SMS message and transmits the received SMS message to terminals 

107 (the claimed first terminal device). For instance, Haller discloses that “SMS 

406h [of device 106] also serves as an SMS receiver in an embodiment of the 

present invention. A terminal can inquire SMS 406h for received SMS messages 

and fetch those messages.” Ex-1005, 13:30-32. 

In the event that Patent Owner argues that Haller does not expressly disclose 

that the SMS message received by device 106 is transmitted from server 101 or 

102, Yu explicitly discloses it. Ex-1003, ¶163. 

As shown below in annotated FIG. 2, Yu discloses a system in which “a 

computer 28 is connected with a cellular modem 30. In accordance with 

conventional cellular radio telecommunications practice, the cellular modem 30 

communicates over an air interface 32 with a cellular base station controller (BSC) 

34, which is in turn coupled with a mobile switching center (MSC) 36,” (Ex-1006, 

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3:7-12), and “MSC 36 is in turn coupled with an “interworking function” (IWF) 

38,” and “IWF 38 is coupled to an IP network 40, to which IM server 26 is also 

coupled,” (Id., 3:15-24), so that computer 28 “can interact with IM server 26 so as 

to facilitate instant messaging communications with a user at computer 28.” Id., 

3:28-30. 

Yu, FIG. 2 (annotated) 

Yu shows the details of the instant messaging between cellular modem 30 

and IM server 26 in FIG. 6. As shown below in annotated FIG. 6, Yu discloses that 

a mobile station MS 80, such as cellular modem 30 in FIG. 2, “subscribes to SMS 

service and is therefore capable of sending and receiving SMS messages.” Id., 

11:45-48. 

Second terminal devices First terminal devices Intermediate terminal device 

Short range communication Cellular network Internet 

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Yu, FIG. 6 (annotated) 

Yu further describes the receiving process in which MS 80 receives an SMS 

message from IM server 68 (such as the IM server 26 in FIG. 2). For instance, Yu

discloses that IM client in IM server 68 “sends an IM message to the user at MS 

80, the message will go to SN 70.” Id., 13:55-58. Upon receipt of the message, 

“SN 70 will then convert the message into an SMS message and forward the SMS 

message to MS 80.” Id., 14:19-21. If MS 80 is not available to engage in instant 

Second terminal devices 

Intermediate terminal device 

Cellular network 

Internet 

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messaging, “SMSC 86 can serve a store and forward function for SMS messaging 

as defined by IS-41,” and “then route the SMS message to MSC 74, and MSC 74 

could then deliver the SMS message to MS 80 for display to a user.” Id., 12:25-36. 

Because Haller discloses that the wireless device 106 receives SMS 

messages and transmits the received SMS messages to terminals 107, a POSITA 

would have understood that Haller’s device 106 receives the SMS messages from 

the remotely located server 101, as taught by Yu. Ex-1003, ¶167. Both Haller and 

Yu use the same protocol between the intermediate terminal device and the remote, 

second terminal device. Each of Haller and Yu uses the combination cellular 

network and Internet, and thus, the techniques of receiving SMS messages as 

taught by Yu can be intactly applied to Haller’s system. Id. The advantages of 

receiving data from the remote server are obvious to a POSITA. Id. For example, 

by doing so, the “traveling professional who has a PDA” as described in Haller can 

promptly receive work-related data from the “corporate exchange server while on 

the road,” thereby ensuring the work-related data in his PDA are consistent and upto-date. Id.; see also Ex-1005, 15:26-28. 

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4. [Claim 22] “The method of claim 14, further comprising a 

receiver to receive at least one other SMS message from the 

another terminal device and a data message transmitter to 

transmit the at least one other SMS message to the first 

terminal device.” 

Claim 14, from which claim 22 depends, does not recite the “another 

terminal device” and the “at least one other SMS message.” Nevertheless, for the 

purpose of this Petition and as discussed above in Claim 13, the combination of 

Haller and Yu teach this element—as well as the additional elements for claim 22. 

For instance, Haller discloses claim 14, from which claim 22 depends. See Section 

VII.A.2. And, the combination of Haller and Yu further teach the additional 

elements herein. For instance, Haller and Yu disclose receivers to receive at least 

one other SMS message from another terminal device and a data message 

transmitter to transmit the at least one other SMS message to the first terminal 

device. See VIII.C.3. Ex-1003, ¶168. 

5. [Claim 26] “The device of claim 25, wherein the at least one 

SMS message is transmitted via a mobile network including 

an SMS message center.” 

As discussed above in Claim 4, the combination of Haller and Yu discloses 

that the at least one SMS message is transmitted via a mobile network including an 

SMS message center. See Section VIII.C.1. Ex-1003, ¶169. 

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6. [Claim 27] “The device of claim 26, wherein the at least one 

SMS message is transmitted from the intermediate terminal 

device to the second remotely located terminal device via 

the mobile network and a gateway and the Internet.” 

As discussed above in Claim 5, the combination of Haller and Yu discloses 

that the at least one SMS message is transmitted from the intermediate terminal 

device to the second remotely located terminal device via the mobile network and a 

gateway and the Internet. See Section VIII.C.2. Ex-1003, ¶170. 

7. [Claim 35] “The device of claim 23, further comprising 

transmitting at least one other SMS message from the 

second terminal device to the first terminal device via the 

intermediate terminal device.” 

As discussed above in Claim 13, the combination of Haller and Yu discloses 

transmitting at least one other SMS message from the second terminal device to the 

first terminal device via the intermediate terminal device. See Section VIII.C.3. Ex1003, ¶171. 

8. [Claim 37] “The method of claim 36, wherein the message 

center comprises an SMS message center.” 

As discussed above in Claim 36, the combination of Haller and Yu discloses 

that the message center comprises an SMS message center. See Sections VIII.B.1.e 

and VIII.B.1.f. Ex-1003, ¶172. 

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9. [Claim 40] “The method of claim 31, further comprising 

transmitting other data from the second terminal device to 

the first terminal device via the intermediate terminal 

device.” 

As discussed above in Claim 13, the combination of Haller and Yu discloses 

transmitting other data from the second terminal device to the first terminal device 

via the intermediate terminal device. See Section VIII.C.3. Ex-1003, ¶173. 

10. [Claim 42] “The device of claim 41, wherein the message 

center comprises an SMS message center.” 

As discussed above in Claim 36, the combination of Haller and Yu discloses 

that the message center comprises an SMS message center. See Sections VIII.B.1.e 

and VIII.B.1.f. Ex-1003, ¶174. 

11. [Claim 45] “The device of claim 41, further comprising 

transmitting other data from the second terminal device to 

the first terminal device via the intermediate terminal 

device.” 

As discussed above in Claim 13, the combination of Haller and Yu discloses 

transmitting other data from the second terminal device to the first terminal device 

via the intermediate terminal device. See Section VIII.C.3. Ex-1003, ¶175. 

IX. GROUND 3: HALLER AND SINGHAL RENDER OBVIOUS CLAIMS 

2, 6, 7, 8, 15, 16, 17, 18, 24, 28, 29, AND 30

1. A POSITA Would Have Combined Haller and Singhal

First, both Haller and Singhal are directed to data synchronization. Ex-1005, 

Ex-1007, Ex-1003, ¶¶176-200. Each reference includes similar components with 

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similar functions, for instance, both Haller and Singhal disclose synchronizing data 

between a wireless device and a remote device. Ex-1003, ¶176. 

In addition, Singhal discloses specific synchronization protocols such as 

SyncML. Ex-1003, ¶177. Thus, a POSITA would have sought to combine Haller

with Singhal by utilizing the specific synchronization protocols disclosed by 

Singhal in Haller’s system. Id. 

2. [Claim 2] “The method of claim 1, wherein formatting the 

data message comprises formatting the data in a SyncML 

format.” 

As discussed above, Haller discloses formatting the data message for data 

synchronization. See Section VII.A.1.d. And SyncML is a well-known format for 

data synchronization, as evidenced by Singhal. Id., ¶178. 

In the event that Patent Owner argues that Haller does not explicitly disclose 

SyncML format, Singhal discloses it. Ex-1003, ¶179. For instance, Singhal

discloses that “a synchronization protocol proxy may be included, which may be 

used to synchronize data stored locally on a user's WID with data stored elsewhere 

(such as on the user's desktop PC). An example synchronization protocol is 

“SyncML” which is being developed by The SyncML Initiative to seamlessly 

synchronize wireless and wireline data and devices. (See http://www.syncml.org 

for more information on SyncML.).” Ex-1007, 6:9-16. 

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Haller is directed to data synchronization between different devices, and 

Singhal teaches that SyncML format and the advantage of the SyncML (e.g., 

“seamlessly synchronize”). Also, it is well-known in the art that SyncML is one of 

the standard formats used in data synchronization. Therefore, a POSITA would 

have been motivated to format Haller’s data to be synchronized using SyncML, as 

taught by Singhal. Ex-1003, ¶180. By doing so, Haller’s data can be seamlessly 

synchronized between different devices, as described by Singhal. Ex-1007, 6:9-16. 

3. [Claim 6] “The method of claim 1, wherein the at least one 

SMS message comprises a compressed SMS message.” 

As discussed above, Haller discloses formatting the data to be synchronized 

into an SMS message. See Section VII.A.1.d. And compressing data is a wellknown technique in the art. Ex-1003, ¶181. 

In the event that Patent Owner argues that Haller does not explicitly disclose 

a compressed SMS message, Singhal discloses it. Ex-1003, ¶182. For instance, 

Singhal discloses that “auxiliary software may be provided to provide enhanced 

authentication, encryption, compression, or similar functions that augment the 

transmission of data described herein.” Ex-1007, 5:29-32. 

As discussed above, Haller discloses formatting data to be synchronized into 

the SMS format and transmitting the SMS message from device 6 to a remote 

server through a cellular network. See Section VII.A.1.d. Ex-1003, ¶183. And 

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Singhal discloses compressing data in order to augment the transmission of the 

data. Therefore, a POSITA would have been motivated to apply the teachings of 

Singhal to Haller to compress Haller’s SMS message to generate a compressed 

SMS message. Ex-1003, ¶183. By doing so, the transmission of the SMS message 

from through the cellular network in Haller would be augmented, as described by 

Singhal, (Ex-1007, 5:29-32), so that the data can be transmitted in less messages. 

Also, compressing data before transmitting the data with radio signal is a standard 

way of operation because data compression provides enhanced transmission 

capacity and confidentiality. Ex-1003, ¶183. 

4. [Claim 7] “The method of claim 6, wherein the compressed 

SMS message comprises a WBXML (Wireless Application 

Protocol Binary Extensible Markup Language) encoded 

message.” 

As discussed above, Section IX.3, Singhal discloses compressing data for 

transmission. Singhal also disclose a WBXML (Wireless Application Protocol 

Binary Extensible Markup Language) encoded message. Ex-1003, ¶184. 

Singhal discloses that “files of type “XML” may be converted to WBXML 

(“Wireless Application Protocol Binary XML”) decks (see 205) or faxed to 

recipients (see 210), whereas files of type “ASCII” may be sent as e-mail (see 

215).” Ex-1007, 7:56-60. Singhal also discloses that “the protocol proxy may 

determine that a data conversion operation is desirable, for example by converting 

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an XML document to a WBXML deck,” (Id., 15:14-16), and then “delivers the 

resulting data to the WID [wireless information device].” Id., 15:22. 

Singhal also discloses that converting a document to WBXML deck “serves 

to simplify the user's task,” (Id., 15:36-37) and is appropriate when “the data in the 

accessed format cannot be presented on the WID without first performing a 

conversion.” Id., 15:37-39. For example, Singhal discloses converting incoming 

Microsoft Word files to WML (wireless markup language such as WBXML), 

“because Microsoft Word files cannot be rendered natively on most WIDs.” Id., 

15:44-46. 

Because Singhal describes the advantages of using WBXML format (e.g., 

simplify the user’s task), a POSITA would have been motivated to apply the 

teachings of Singhal to Haller to compress Haller’s SMS message to generate a 

WBXML encoded message. Ex-1003, ¶187. Also, as discussed above, the purpose 

of Haller is concerned about data synchronization between a PDA and a corporate 

server. A POSITA would have understood that the work-related data may include 

some types of files such as Microsoft Word files. Id. And Singhal discloses that 

WBXML format is necessary for Microsoft Word files, a POSITA would have 

been motivated to apply the teachings of Singhal to Haller to compress Haller’s 

SMS message to generate a WBXML encoded message. Id. 

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Therefore, the combination of Haller and Singhal discloses that the 

compressed SMS message comprises a WBXML (Wireless Application Protocol 

Binary Extensible Markup Language) encoded message. Id., ¶188. 

5. [Claim 8] “The method of claim 2, wherein the data 

formatted in a SyncML format comprises one of two MIME 

(Multipurpose Internet Mail Extensions) formats.” 

As discussed above, Section IX.4, Singhal discloses formatting data to be 

synchronized in a SyncML format. Singhal also disclose MIME (Multipurpose 

Internet Mail Extensions) formats. Id., ¶189. 

For instance, Singhal discloses that “a multi-part MIME (Multi-purpose 

Internet Mail Extensions) message may be generated which contains the original 

content (in one part) and the service description (in another part),” because this 

may “provide different ways for conveying the list of available services.” Ex-1007, 

15:3-8. 

Also, other types of advantages provided by MIME are well-known in the 

art. Because of these advantages, a POSITA would have been motivated to apply 

the teachings of Singhal to Haller to generate a MIME message with the data to be 

synchronized and then transmit the MIME message. Ex-1003, ¶191. 

Therefore, the combination of Haller and Singhal discloses that the data 

formatted in a SyncML format comprises one of two MIME (Multipurpose Internet 

Mail Extensions) formats. 

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6. [Claim 15] “The device of claim 14, wherein the formatter 

formats the data in a SyncML format.” 

As discussed above in Claim 2, the combination of Haller and Singhal

discloses that the formatter formats the data in a SyncML format. See Section IX.2. 

Ex-1003, ¶193. 

7. [Claim 16] “The device of claim 14, wherein the at least one 

SMS message formatted by the formatter comprises a 

compressed SMS message.” 

As discussed above in Claim 6, the combination of Haller and Singhal

discloses that the at least one SMS message formatted by the formatter comprises a 

compressed SMS message. See Section IX.3. Ex-1003, ¶194. 

8. [Claim 17] “The device of claim 16, wherein the compressed 

SMS message formatted by the formatter comprises a 

WBXML (Wireless Application Protocol Binary Extensible 

Markup Language) encoded message.” 

As discussed above in Claim 7, the combination of Haller and Singhal

discloses that the at least one SMS message formatted by the formatter comprises a 

compressed SMS message. See Section IX.4. Ex-1003, ¶195. 

9. [Claim 18] “The device of claim 14, wherein the data 

formatted by the formatter in a SyncML format comprises 

one of two MIME (Multipurpose Internet Mail Extensions) 

formats.” 

As discussed above in Claim 8, the combination of Haller and Singhal

discloses that the data formatted by the formatter in a SyncML format comprises 

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one of two MIME (Multipurpose Internet Mail Extensions) formats. See Section 

IX.5. Ex-1003, ¶196. 

10. [Claim 24] “The device of claim 23, wherein formatting the 

data message comprises formatting the data in a SyncML 

format.” 

As discussed above in Claim 2, the combination of Haller and Singhal

discloses formatting the data message comprises formatting the data in a SyncML 

format. See Section IX.2. Ex-1003, ¶197. 

11. [Claim 28] “The device of claim 23, wherein the at least one 

SMS message comprises a compressed SMS message.” 

As discussed above in Claim 6, the combination of Haller and Singhal

discloses that the at least one SMS message comprises a compressed SMS 

message. See Section IX.3. Ex-1003, ¶198. 

12. [Claim 29] “The device of claim 28, wherein the compressed 

SMS message comprises a WBXML (Wireless Application 

Protocol Binary Extensible Markup Language) encoded 

message.” 

As discussed above in Claim 7, the combination of Haller and Singhal

discloses that the compressed SMS message comprises a WBXML (Wireless 

Application Protocol Binary Extensible Markup Language) encoded message. See

Section IX.4. Ex-1003, ¶199. 

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13. [Claim 30] “The device of claim 24, wherein the data 

formatted in a SyncML format comprises one of two MIME 

(Multipurpose Internet Mail Extensions) format.” 

As discussed above in Claim 8, the combination of Haller and Singhal

discloses that the data formatted in a SyncML format comprises one of two MIME 

(Multipurpose Internet Mail Extensions) format. See Section IX.5. Ex-1003, ¶200. 

X. GROUND 4: HALLER, SINGHAL, AND OUESLATI RENDER 

OBVIOUS CLAIMS 9, 19, and 31

1. A POSITA Would Have Combined Haller, Singhal, and 

Oueslati

First, Haller, Singhal, and Oueslati are directed to data transmission between 

devices using cellular network. Ex-1005, Ex-1007, Ex-1008. Each reference 

includes similar components with similar functions, for instance, all references 

disclose synchronizing data between a wireless device and a remote device using 

the SMS format. Ex-1003, ¶¶201-207. 

In addition, Singhal discloses specific synchronization protocols such as 

SyncML. Ex-1005, Ex-1003, ¶202. Further, Oueslati discloses a specific data 

format such as vcard. Thus, a POSITA would have sought to combine Haller with 

Singhal and Oueslati by utilizing the specific synchronization protocols and format 

disclosed by Singhal and Oueslati in Haller’s system. Ex-1003, ¶202. 

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2. [Claim 9] “The method of claim 8, wherein the two MIME 

formats comprise vcal and vcard formats.” 

As discussed above, Singhal discloses MIME formats. See Section IX.5. Ex1003, ¶203. Singhal also discloses transmitting calendar data between WID and a 

PC. For example, Singhal discloses “a WID issues a request to receive a current 

view of the user's calendar from his desktop PC.” Ex-1007, 16:21-23. Therefore, 

Singhal must uses v-calendar, i.e., vcal format. 

In addition, Oueslati discloses a protocol vcard format. For instance, 

Oueslati discloses that a protocol uses a data type identifier “to determine the 

proper destination application. The data type identifier can identify by extension, 

MIME type or by application creator, for instance.” Id., 2:60-64. The data type 

identifier “identifies more specifically the actual data type within the identified 

category. For instance, if the previous number was “1,” it is the Extension category 

of the data type (for example “vcf” means a vCard extension).” Id., 9:45-49. 

Oueslati provides an example of sending “vCards wirelessly (e.g., using the SMS

standard as a transport) to another computer system.” Id., 10:3-5.

The advantages provided by vcard and vcal formats are well-known in the 

art. Because of these advantages, a POSITA would have been motivated to apply 

the teachings of Singhal and Oueslati to format data to be synchronized in Haller

with vcard or vcal format. Ex-1003, ¶205. 

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3. [Claim 19] “The device of claim 18, wherein the two MIME 

formats formatted by the formatter comprise vcal and 

vcard.” 

As discussed above in Claim 9, the combination of Haller, Singhal, and 

Oueslati discloses that the two MIME formats formatted by the formatter comprise 

vcal and vcard. See Section X.2. Ex-1003, ¶206. 

4. [Claim 31] “The device of claim 30, wherein the two MIME 

formats comprise vcal and vcard formats.” 

As discussed above in Claim 9, the combination of Haller, Singhal, and 

Oueslati discloses that the two MIME formats formatted by the formatter comprise 

vcal and vcard. See Section X.2. Ex-1003, ¶207. 

XI. NON-INSTITUTION UNDER 35 U.S.C. §§ 314 OR 325 WOULD BE 

IMPROPER 

Non-institution under 35 U.S.C. §§ 314(a) or 325(d) would be improper. The 

existence of parallel district court proceedings should not prevent institution of this 

Petition. Cf. NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8, at 

19-20 (PTAB Sept. 12, 2018); see also Litigation. No factor favors denial of 

institution because, at this time, there is no investment beyond the initial 

discoveries at the district court and this IPR petition. Moreover, the strong merits 

of this case favor institution. 

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A. Non-Institution Under 35 U.S.C. § 314(a) Is Improper 

First, non-institution under 35 U.S.C. § 314(a) would be improper. Under 

the factors articulated in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 

(PTAB Mar. 20, 2020 (precedential), non-institution in light of the litigations 

would be improper because Factors 2-4 and 6 of the Fintiv factors favor institution, 

and Factors 1 and 5 are neutral. 

Factor 1 (district court stay) is neutral. While ZTE moved to stay on 

December 30, 2020, see Litigation, Dkt. 47, there remains no indication that the 

district court will grant or deny the motion to stay. Int’l Bus. Machines Corp. v. 

Trusted Knight Corp., IPR2020-00323, Paper 15 at 9 (PTAB Jul. 10, 2020). As 

discussed below, the motion to stay is based on ZTE’s pending Motion to Dismiss 

for Improper venue under § 1400, which unlike venue for convenience under 

§ 1404, is not discretionary. See Litigation, Dkt. 45. 

Factor 2 (proximity to district court trial) favors institution. The pending 

district court case is not scheduled for trial until June 20, 2022, and this date is 

subject to delays. Therefore, the Board will likely issue a final written decision 

before the pending district case. ZTE has moved to dismiss based on improper 

venue, and further moved to stay until venue is set. These motions are currently 

pending, making it “unclear that the court in the related district court litigation will 

adhere to any [future] scheduled jury trial date.” Sand Revolution II, LLC v. Cont’l 

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Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24, at 9 (PTAB June 16, 

2020) (informative). Should the district court grant either of the pending improper 

venue motion or the motion to stay, these cases will be assigned new, later trial 

dates likely in a new forum. Additionally, it is further noted that Judge Albright is 

unable to maintain trials based on their originally scheduled dates and is delaying 

the trials. As one example, the VLSI Tech. LLC v. Intel Corp., No. 1:19-cv-00254 

(W.D. Tex.) trial this month was delayed four months from its original date in 

October 2020. 

Factor 3 (investment in district court case) favors institution. The parties’ 

and the court’s investment in this case has been minimal. Fintiv, Paper 11, at 11. 

Although preliminary infringement and invalidity contentions have been served, 

claim construction has only just begun, and the claim construction hearing is not 

scheduled to occur for another two months in May 2021. In addition, the parties 

have not conducted any substantive fact discovery, as fact discovery does not open 

until after the claim construction hearing. Finally, the district court has not 

addressed the substance of the ’505 Patent—Patent Owner did not move for a 

preliminary injunction, and Defendants did not move to dismiss Patent Owner’s 

action based on the substance of the ’505 Patent, such as a motion to dismiss based 

on § 101. Where, as here, “the district court has not issued orders related to the 

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patent at issue in the petition, this fact weighs against exercising discretion to deny 

institution.” Fintiv, Paper 11, at 10. 

Factor 4 (overlapping issues) favors institution. WSOU is a prolific filer of 

patent infringement lawsuits. Based on WSOU’s litigation activity, it is likely that 

WSOU will bring more suits against other parties based on the ‘505 patent. 

Resolving the invalidity questions raised herein would mitigate any concern of 

duplicative efforts in the future. Additionally, ZTE will stipulate that, if this IPR is 

instituted, it will not pursue the specific grounds identified in this Petition 

(Sections VII-X) before the district court. This stipulation mitigates any concern of 

duplicative efforts. Sand Revolution, Paper 24, at 11-12. 

Factor 5 (whether petitioner is also the defendant in district court) is neutral. 

Factor 6 (other circumstances) favors institution. As explained above, the 

challenged claims are unpatentable over Haller, Yu, Singhal, and Oueslati—none 

of which were considered during prosecution. A determination of its validity by the 

Board here would still save resources in the associated district court, and any 

additional cases WSOU may bring. There is a significant public interest against 

“leaving bad patents enforceable,” Thryv, Inc v. Click-To-Call Techs., LP, 140 S. 

Ct. 1367, 1374 (2020). 

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B. Non-Institution Under 35 U.S.C. § 325 Is Improper 

Second, non-institution under § 325 would also be improper based on a 

weighing of the factors set forth in Becton, Dickinson & Co. v. B. Braun 

Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017). The asserted 

combinations are materially different and not cumulative of the prior art involved 

during the examination of the challenged claims. During prosecution, the following 

references were applied by the examiner, Kobayashi (Ex-1009), Jokimies (Ex1010), Sutinen (Ex-1011), Lohtia (Ex-1012), Alanara (Ex-1013), Corneliussen 

(Ex-1014), Schmidt (Ex-1015), Winarski (Ex-1016), and Lewontin (Ex-1017). 

Among these references, Kobayashi was the primary reference. Kobayashi disclose 

a “mobile communication device [that] includes a unit for establishing a wireless 

link for a wireless communication with an external device, a unit for, via the 

wireless link, sending a signal to the external device to start software installed 

therein, a unit for, via the wireless link, receiving display data generated by 

software from the external device, and a unit for displaying on a screen the display 

data received.” Ex-1009, Abstract. But Kobayashi, even combined with other cited 

references, does not disclose or suggest formatting a data to be synchronized into 

at least one SMS message in an intermediate terminal device and transmitting the 

at least one SMS message from the intermediate terminal device to a second 

remote located terminal device through cellular network connection.

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The prior art references presented in this Petition were never listed by the 

Patent Owner nor cited by the examiner. They were never discussed or applied by 

the examiner to reject any claims. The references, for example, Haller and Yu are 

materially different from and not cumulative of the references cited in the 

prosecution at least because they disclose formatting a data to be synchronized into 

at least one SMS message in an intermediate terminal device and transmitting the 

at least one SMS message from the intermediate terminal device to a second 

remote located terminal device through cellular network connection—elements 

that were missing from Kobayashi and other cited references. There is thus little to 

no overlap between the current and prior arguments. Becton, Paper 8, 23. But 

Haller, Yu, Singhal, and Oueslati teach the limitations, making denial under 

§ 325(d) improper. Sections VII-X. 

XII. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 

A. Real Party-in-Interest 

The real parties-in-interest are ZTE Corporation, ZTE (USA), Inc., and ZTE 

(TX), Inc. 

B. Related Matters 

Patent Owner has asserted the ’505 patent in litigation against Petitioners in 

the Litigation, filed on June 3, 2020. See also WSOU Investments, LLC v. ZTE 

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Corporation et al., 6:20-cv-00255 (WSOU initially asserted the ’505 patent against 

Petitioners on March 31, 2020 and dismissed the case on June 3, 2020). 

C. Lead and Back-Up Counsel and Service Information 

Petitioners provide the following counsel and service information. Pursuant 

to 37 C.F.R. § 42.10(b), Powers of Attorney accompany this Petition. Petitioners 

consent to e-mail service at the e-mail addresses identified in the table below, as 

well as at ZTE-WSOU-IPRs@finnegan.com. 

LEAD COUNSEL (ZTE) BACK-UP COUNSEL (ZTE) 

Lionel Lavenue (Reg. No. 46,859) 

lionel.lavenue@finnegan.com 

Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP 

1875 Explorer Street, Suite 800 

Reston, VA 20190-6023 

Tel: (571) 203-2750 

Fax: (551) 203-2777 

Cory Bell (Reg. No. 75,096) 

cory.bell@finnegan.com 

Finnegan, Henderson, Farabow, Garrett & 

Dunner, LLP 

Two Seaport Lane Boston, MA 02210-2001 

Tel: (617) 646-1641 

Fax: (617) 646-1666 

Bradford C. Schulz (Reg. No. 75,006) 

Bradford.schulz@finnegan.com 

Finnegan, Henderson, Farabow, 

Garrett, & Dunner LLP 

1875 Explorer Street, Suite 800 

Reston, VA 20190-6023 

Tel: 571-203-2739 

Fax: 202-408-440 

Mingji Jin (Reg. No. 69,674) 

mingji.jin@finnegan.com 

Finnegan, Henderson, Farabow, Garrett & 

Dunner, LLP 

901 New York Avenue NW, Washington, 

DC 20001-4413 

Tel: (202) 408-6020 

Case 6:20-cv-00490-ADA Document 68-1 Filed 04/23/21 Page 95 of 99
 IPR2021-00698 Petition 

U.S. Patent No. 7,203,505 

81 

Fax: (202) 408-4400 

R. Maxwell Mauldin (Reg. No. 78,626) 

r.maxwell.mauldin@finnegan.com 

Finnegan, Henderson, Farabow, Garrett & 

Dunner, LLP 

271 17th Street, NW, Suite 1400 

Atlanta, GA 30363-6209 

Tel: (404) 653-6400 

Fax: (404) 653-6444 

XIII. GROUNDS FOR STANDING 

Petitioner certifies the ’505 patent is available for IPR and Petitioner is not 

barred or estopped from requesting IPR challenging the patent claims on the 

grounds identified in this Petition. 

XIV. CONCLUSION 

Petitioner has established a reasonable likelihood of prevailing with respect 

to each of the challenged claims 1-45 of the ’505 patent. Petitioner therefore 

requests the Board institute inter partes review and cancel each of these claims as 

unpatentable. 

The Office may charge any required fees for this proceeding to Deposit 

Account No. 06-0916. 

Case 6:20-cv-00490-ADA Document 68-1 Filed 04/23/21 Page 96 of 99
 IPR2021-00698 Petition 

U.S. Patent No. 7,203,505 

82 

Date: March 31, 2021 Respectfully Submitted, 

/Lionel M. Lavenue/ 

Lionel M. Lavenue, Lead Counsel 

Reg. No. 46,859

Case 6:20-cv-00490-ADA Document 68-1 Filed 04/23/21 Page 97 of 99
 

 

CERTIFICATION UNDER 37 C.F.R. § 42.24(d) 

Pursuant to 37 C.F.R. § 42.24(a)(1)(i), the undersigned hereby certifies that 

the foregoing PETITION FOR INTER PARTES REVIEW contains 13,215 words, 

excluding the parts of this Petition that are exempted under 37 C.F.R. § 42.24(a), 

as measured by the word-processing system used to prepare this paper. 

/Lionel M. Lavenue/ 

Lionel M. Lavenue, Lead Counsel 

Reg. No. 46,859

Case 6:20-cv-00490-ADA Document 68-1 Filed 04/23/21 Page 98 of 99
 

CERTIFICATE OF SERVICE 

The undersigned certifies that the foregoing Petition for Inter Partes

Review, the associated Power of Attorney, and Exhibits 1001 through 1017 are 

being served on March 31, 2021, by Priority Mail Express or by means at least as 

fast as Priority Mail Express at the following address of record for the subject 

patent.

Sean Burdick 

WSOU Investments, LLC

11150 Santa Monica Blvd., Suite 1400 

Los Angeles CA 90025 

A courtesy copy has been served on litigation counsel at: 

Ryan S. Loveless 

Etheridge Law Group, PLLC 

2600 E. Southlake Blvd., Suite 120 / 324 

Southlake, TX 76092 

/Daniel E. Doku/ 

Daniel E. Doku 

Litigation Clerk 

FINNEGAN, HENDERSON, FARABOW, 

GARRETT & DUNNER, LLP 

Case 6:20-cv-00490-ADA Document 68-1 Filed 04/23/21 Page 99 of 99