United States Court of Appeals
for the Federal Circuit
______________________
IXI IP, LLC,
Appellant
v.
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC., APPLE INC.,
Appellees
______________________
2017-1665
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2015-
01444.
______________________
Decided: September 10, 2018
______________________
GOUTAM PATNAIK, Pepper Hamilton LLP, Washing-
ton, DC, argued for appellant. Also represented by
BRADLEY THOMAS LENNIE; WILLIAM D. BELANGER, Boston,
MA.
MICHAEL J. MCKEON, Fish & Richardson, PC, Wash-
ington, DC, argued for appellees. Also represented by
CRAIG E. COUNTRYMAN, OLIVER RICHARDS, San Diego, CA.
______________________
Before O’MALLEY, MAYER, and REYNA, Circuit Judges.
2 IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD.
REYNA, Circuit Judge.
Samsung Electronics Co., Ltd., Samsung Electronics
America, Inc., and Apple Inc. filed a petition to institute
an inter partes review of certain claims of U.S. Patent
No. 7,039,033. The Patent Trial and Appeal Board insti-
tuted review that resulted in a final written decision that
the reviewed claims are invalid. Patent owner IXI IP,
LLC appeals the final written decision. We find that the
Patent Trial and Appeal Board’s decision is supported by
substantial evidence. We affirm.
I. THE ’033 PATENT
Appellant IXI IP, LLC (“IXI”) owns U.S. Patent No.
7,039,033 (“the ’033 patent”), titled “System, Device And
Computer Readable Medium For Providing A Managed
Wireless Network Using Short-Range Radio Signals.”
The ’033 patent is directed to “a system that accesses
information from a wide area network (‘WAN’), such as
the Internet, and local wireless devices in response to
short-range radio signals.” ’033 patent col. 4 ll. 8–11. The
system includes a wireless gateway device (i.e., a cell-
phone), which is coupled to a cellular network, which in
turn connects to the Internet through a carrier backbone.
Id. col. 4 ll. 36–39, 49–54, Fig. 1. The cellphone also forms
part of a personal area network (“PAN”), which is a local
network made up of the cellphone and one or more termi-
nal devices, such as a laptop computer, a personal digital
assistant (PDA), or a printer. Id. col. 4 ll. 17–25. The
system disclosed in the ’033 patent allows the terminal
devices of the PAN to access the cellular network through
the cellphone. Id. Abstract. Thus, the ’033 patent dis-
closes a system that contains both a PAN and a WAN,
connected via the cellphone. Id. col. 4 ll. 8–19.
Software architecture for the cellphone may include
network management software including, inter alia, a
PAN application server. Id. col. 5 l. 61–col. 6 l. 5, col. 6
ll. 36–42, col. 6 ll. 58–63, Figs. 4, 5a. In turn, the PAN
IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD. 3
application server includes a service repository software
component, which allows applications that run on the
cellphone or the terminal devices to discover what ser-
vices are offered by the PAN, and to determine the char-
acteristics of the available services. Id. col. 10 ll. 1–9,
col. 12 ll. 9–14, Fig. 7; see also id. col. 12, ll. 33–67 (enu-
merating the many functions of the service repository
software component).
Appellant and Appellees agree that independent
claim 1 is representative of all challenged claims. Claim 1
recites:
1. A system for providing access to the Inter-
net, comprising:
a first wireless device, in a short distance
wireless network, having a software com-
ponent to access information from the In-
ternet by communicating with a cellular
network in response to a first short-range
radio signal, wherein the first wireless de-
vice communicates with the cellular net-
work and receives the first short-range
radio signal; and,
a second wireless device, in the short dis-
tance wireless network, to provide the
first short-range radio signal,
wherein the software component includes
a network address translator software
component to translate between a first In-
ternet Protocol (“IP”) address provided to
the first wireless device from the cellular
network and a second address for the sec-
ond wireless device provided by the first
wireless device,
wherein the software component includes
a service repository software component to
4 IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD.
identify a service provided by the second
wireless device.
Id. col. 15 ll. 40–59.
II. PRIOR ART
Samsung Electronics Co., Ltd., Samsung Electronics
America, Inc., and Apple Inc. (collectively, “Samsung”)
filed a petition to institute an inter partes review (“IPR”)
of certain claims of the ’033 patent on the basis of the
following prior art references: PCT Publication No. WO
01/76154 to Marchand (“Marchand”); K. Arnold et al., The
Jini™ Specification, Addison-Wesley (“JINI Spec.”); U.S.
Patent No. 6,560,642 to Nurmann (“Nurmann”); U.S.
Patent No. 6,771,635 to Vilander, filed Mar. 27, 2000,
issued Aug. 3, 2004 (“Vilander”); Handley et al., Request
For Comments 2543 SIP: Session Initiation Protocol, The
Internet Society (“RFC 2543”); and U.S. Patent
No. 6,836,474 to Larsson (“Larsson”).
Relevant to this appeal, Marchand, titled “Ad-hoc
Network and Gateway,” discloses “an ad-hoc network and
a gateway that provides an interface between external
wireless IP networks and devices in the ad-hoc network.”
Marchand, p. 1 ll. 5–7. The ad-hoc network, also called
“Bluetooth Piconet,” is a PAN that includes a gateway
device (i.e., a cellphone) and other terminal devices such
as a laptop computer or a printer. See id. p. 3, ll. 22–30.
The devices on the ad-hoc network can communicate via
Bluetooth radio link. Id. Abstract, p. 7 ll. 9–11. The
cellphone acts “as a gateway between the ad-hoc network
and a 3G wireless IP network [] such as the General
Packet Radio Service (GPRS) network.” Id. p. 7 ll. 12–14.
IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD. 5
The ad-hoc network utilizes Bluetooth, IP, and JINI 1
technologies to enable its terminal devices to access the
cellular network through the cellphone. Id. p. 7 ll. 7–9.
For IP address translation, IP packets from the GPRS are
received at the cellphone through its public IP address,
and are then forwarded to the private IP address of the
terminal device on the ad-hoc network. Id. p. 7 ll. 14–16.
Address translation in the opposite direction is handled
similarly. Id. p. 7 ll. 16–17. “JINI (Java) technology is
utilized to publish and share services between the devic-
es” in the ad-hoc network, and this technology “provid[es]
the capability for an application [] to discover, join, and
download services [] from a JINI LUS [“Lookup Service”].”
Id. p. 6 ll. 3–4, 21–22. “The LUS contains a list of availa-
ble services provided by other devices on the network.”
Id. p. 3 ll. 11–12. Devices in the ad-hoc network “an-
nounce not only value-added services, but also their
attributes and capabilities to the network,” whereupon
these services are published through the LUS. Id. p. 3
ll. 12–15, p. 10 ll. 17–18. The LUS also provides interfac-
es for services that are available to the devices in the ad-
hoc network. Id. p. 3 ll. 13–14, p. 8 ll. 12–15.
For example, Figure 4 of Marchand depicts “a simpli-
fied functional block diagram of a connection between two
devices such as the laptop computer [] and the [cell]phone
[] utilizing the ad-hoc network.” Id. p. 7 ll. 26–28. The
cellphone publishes in the Bluetooth Piconet the call
control services that it offers “[u]tilizing the JINI Lookup
Service (LUS).” Id. p. 8 ll. 11–12.
1 JINI is a specific architecture “designed for de-
ploying and using services in a network.” J.A. 523.
6 IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD.
III. PTAB PROCEEDING
Samsung filed a petition to institute an IPR of claims
1, 4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46 of
the ’033 patent. Samsung Elecs. Co. v. IXI IP, LLC,
IPR2015–1444, Paper No. 27, at 1 (P.T.A.B. Dec. 21, 2016)
(“Final Written Decision”). The Patent Trial and Appeal
Board (“the Board”) instituted review on all challenged
claims. Id. at 2.
The Board determined that Samsung established by a
preponderance of the evidence that Marchand, Vilander,
and Nurmann teach every limitation of claim 1. Id. at 16.
The Board found that Marchand teaches a “first wireless
device, in a short distance wireless network, having a
software component to access information from the Inter-
net by communicating with a cellular network in response
to a first short-range radio signal,” as recited in claim 1.
Id. at 13, 16, 19–20. The Board mapped the terminal
devices in Marchand’s ad-hoc network, such as the laptop
computer and printer, to the “second wireless device”
recited in claim 1. Id. at 14, 16–20. The Board found that
the IP packets sent among devices in Marchand’s ad-hoc
network over a short-range radio link (e.g., Bluetooth
IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD. 7
Piconet) correspond to the “first short-range radio signal”
as recited in claim 1. Id.
The Board further determined that Marchand disclos-
es a network address translator to translate between a
first IP address and a second IP address based on
Marchand’s description of translating and forwarding
between public and private IP addresses. Id. Citing
Vilander’s implementation of a device on the cellular
network to allocate the public IP address to the cellphone,
the Board found that a person of ordinary skill in the art
(“POSITA”) would have modified Marchand in view of
Vilander such that the public IP address of the cellphone
was provided by the cellular network. Id. The Board also
found that a POSITA would have modified Marchand in
view of Nurmann such that the cellphone provides the
private IP addresses to the terminal devices on the local
area network. Id. at 14, 16, 19–20.
The Board also found that Marchand’s disclosure of
the JINI LUS met the limitation of the recited “service
repository software component [that] identif[ies] a service
provided by the second wireless device” of claim 1. Id. at
15–20. The Board considered and rejected IXI’s argument
that Marchand does not teach a JINI LUS located on the
cellphone after weighing expert testimony from both
parties. Id. at 16–20. The Board determined that
“Marchand would have informed an ordinarily skilled
artisan that the ‘service repository software component’
may be disposed in the ‘first wireless device [i.e., the
cellphone].’” Id. at 20.
Thus, the Board concluded that claim 1 would have
been obvious over the combination of Marchand, Vilander,
and Nurmann under 35 U.S.C. § 103(a). Id. at 23–24.
The Board also found the remaining challenged claims
invalid as obvious. Id. at 42.
8 IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD.
IV. DISCUSSION
A.
A claim is unpatentable under 35 U.S.C. § 103(a) if
the differences between the claimed subject matter and
the prior art are such that the subject matter, as a whole,
would have been obvious at the time the invention was
made to a POSITA to which said subject matter pertains. 2
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
Obviousness is a question of law with underlying factual
determinations, including: (1) the scope and content of the
prior art; (2) any differences between the claimed subject
matter and the prior art; (3) the level of skill in the art;
and (4) objective evidence of nonobviousness. Graham v.
John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). We
review the Board’s legal conclusions without deference
and its factual findings for substantial evidence. Ken-
nametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
1381 (Fed. Cir. 2015). Additionally, issues relating to a
motivation to combine prior art references and a reasona-
ble expectation of success are both questions of fact.
Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821
F.3d 1359, 1366 (Fed. Cir. 2016).
Substantial evidence is “such relevant evidence as a
reasonable mind might accept as adequate to support a
conclusion.” Universal Camera Corp. v. NLRB, 340 U.S.
474, 477 (1951) (quoting Consol. Edison Co. v. NLRB, 305
U.S. 197, 229 (1938)); see also In re Gartside, 203 F.3d
1305, 1312 (Fed. Cir. 2000). “Where two different conclu-
2 The Leahy-Smith America Invents Act, Pub. L.
No. 112-29, § 3(c), 125 Stat. 284, 287 (2011) (“AIA”),
amended 35 U.S.C. § 103. Because the ’033 patent has an
effective filing date before the effective date of the appli-
cable AIA amendments, we refer to the pre-AIA version of
§ 103 throughout this opinion.
IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD. 9
sions may be warranted based on the evidence of record,
the Board’s decision to favor one conclusion over the other
is the type of decision that must be sustained by this court
as supported by substantial evidence.” In re Bayer Ak-
tiengesellschaft, 488 F.3d 960, 970 (Fed. Cir. 2007) (citing
In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir. 2002)).
B.
IXI asserts that claim 1 is representative and that its
arguments “with respect to claim 1 are applicable to all
claims subject to this appeal.” Appellant Br. 8. The
parties also stipulate that the single issue on appeal is
whether a POSITA would read Marchand as implicitly
describing an implementation in which the JINI LUS,
which identifies services provided on the network, is
located on the gateway device, i.e., the cellphone. Appel-
lant Reply Br. 1; Appellee Br. 1.
Samsung acknowledges that “Marchand does not ex-
pressly state that [the] JINI LUS is located on [a] mobile
phone.” Final Written Decision, at 15. Nonetheless,
Samsung contends, and the Board agreed, that a POSITA
would read Marchand to understand that JINI LUS may
be located on the cellphone. Id. at 18–20. We conclude
that substantial evidence supports the Board’s finding.
First, Marchand discloses that the cellphone provides
other devices on the network with the necessary software
to enable those devices to use the phone’s call control
service. Marchand explains that the cellphone can act as
a call-control server for client devices in the ad-hoc net-
work to allow these devices to, for example, place tele-
phone calls. See Marchand, p. 6 l. 27―p. 7 l. 2. “Utilizing
the JINI Look-Up Service (LUS),” the cellphone “‘pub-
lish[es]’ . . . the call control services that it offers.” Id. p. 8
ll. 11―12. The cellphone also “includes an inter-
face/Application Programming Interface (API),” which is
software that “enables” other network devices to use the
phone’s services, and “this API is downloaded to the
10 IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD.
Bluetooth device involved in an external wireless call in
order to have the device behave as a slave device toward
the mobile phone[,] which is the master.” Id. p. 6
ll. 27―31 (emphasis added). According to the JINI Spec.,
Marchand’s JINI call control API qualifies as a JINI
proxy object. See J.A. 532 (explaining that, in one exam-
ple, “the proxy object is a driver for the printer that is
downloaded on demand”). Based on these disclosures, the
Board’s determination that a POSITA “would have con-
sidered Marchand’s call control API to be a JINI proxy
object” is reasonable and supported by substantial evi-
dence. Final Written Decision, at 19; see also J.A. 240–41.
Second, the Board correctly determined that JINI
proxy objects, such as the cellphone’s JINI call control
API, “are stored in a LUS for use when a client wants
access to a service.” Final Written Decision, at 19. Sam-
sung’s expert stated that a POSITA would read Marchand
as “describing an implementation in which the JINI LUS
is located on the mobile phone gateway.” Id. (quoting
J.A. 240 ¶ 38). In particular, Samsung’s expert explained
that a POSITA would understand that the API software
downloaded from the cellphone “corresponds to a service
object stored in a JINI LUS.” J.A. 240 ¶ 38. Samsung’s
expert further explained that “[a]s described in the JINI
Spec., for a given service, the LUS stores a proxy object
for the service,” and “[w]hen a client wants to access that
service, the client downloads the proxy object from the
LUS.” Id.
The JINI Spec. corroborates the testimony from Sam-
sung’s expert, showing that a client who wants to use a
service (e.g., a printing service) downloads the software to
use the service (the proxy object) from the LUS. Thus, it
is reasonable for a POSITA to interpret Marchand to
disclose an implementation where the LUS is included on
the cellphone because Marchand discloses that the
API―which corresponds to a JINI proxy object―is down-
loaded from the cellphone, and, according to the JINI
IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD. 11
Spec., JINI proxy objects are downloaded from a LUS.
Final Written Decision, at 16. Substantial evidence
therefore supports the Board’s finding that a POSITA
would read Marchand to understand that the JINI API is
stored in the LUS in the cellphone. Id. at 19.
The Board also determined that Marchand implicitly
discloses that its cellphone has a LUS because, in
Marchand’s system, all of the network devices publish
their services when the cellphone connects to the local ad-
hoc network and the cellular network. Id. at 16.
Marchand explicitly states that this is how its system
works: when the devices are close enough for the
“[cell]phone [to] connect[] to the Bluetooth Piconet as well
as to the wireless network,” then “all of the devices on the
Piconet publish the services they can provide to the other
devices through the JINI LUS.” Marchand, p. 10
ll. 13―18. If the cellphone does not contain a LUS, there
would be no need for other network devices to publish (or
republish) their services to the LUS when the cellphone
connects. Final Written Decision, at 16. Thus, as Sam-
sung’s expert explained and the Board agreed, “this
disclosure would also lead a POSITA to conclude that
Marchand teaches that the JINI LUS is located on the
[cell]phone.” J.A. 240–41 ¶ 39.
IXI argues that Marchand expressly discloses that the
LUS is on the laptop. IXI’s arguments rely heavily on
Marchand’s Figure 4, reproduced above, which appears to
disclose a LUS within the laptop computer. IXI contends
that “Marchand’s only express disclosure of the LUS’s
location squarely shows the LUS in the laptop computer.”
Appellant Br. 36.
The Board considered and explicitly rejected this ar-
gument after examining Marchand and considering
expert testimony from both IXI and Samsung. Final
Written Decision, at 18 (“We do not agree Marchand’s
disclosure should be read so narrowly . . . .”). The Board
12 IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD.
noted that “Marchand’s Figure 4 is merely exemplary and
[] nothing in Marchand limits or precludes the inclusion of
a LUS in the gateway mobile phone.” Id. at 20. We
agree.
Marchand describes Figure 4 as “a simplified func-
tional block diagram of a connection between a laptop
computer and a mobile phone utilizing the ad-hoc network
of FIG. 3.” Marchand, p. 5 ll. 29–30, p. 7 ll. 26–28.
Marchand does not provide that Figure 4 is the only way
that the two devices—the cellphone and the laptop—can
be connected, nor does Marchand exclude other imple-
mentations. See Final Written Decision, at 20. For
example, Figure 4’s implementation does not preclude the
cellphone from having a LUS. As the Board found, a
POSITA “would have known, at least, that it was possible
to have multiple LUSs in a network.” Id. The Board
relies on the JINI Spec., which states that:
Each Jini system is built around one or more
lookup services. The lookup service is where ser-
vices advertise their availability so that you can
find them. There may be one or more lookup ser-
vices running in a network.
J.A. 530 (emphases altered). As a result, the Board’s
conclusions that (1) Marchand discloses other implemen-
tations that were separate from what is shown in Fig-
ure 4, and (2) Marchand does not prohibit a configuration
where a LUS is located on both the laptop and the cell-
phone are reasonable and supported by substantial evi-
dence.
IXI also argues that locating the LUS on the cellphone
would have rendered the system inoperable. According to
IXI, Marchand’s ad-hoc network is a Bluetooth network,
which only allows the LUS to be on the master device;
“Marchand discloses that the LUS is located on the lap-
top, the laptop is the master” of the ad-hoc network.
Appellant Br. 46. IXI argues that because the cellphone
IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD. 13
is the master device of a subnetwork consisting of the
cellphone and devices requesting the cellphone’s call
control services, it “cannot be the master device in the
broader Bluetooth” ad-hoc network because a Bluetooth
device can only act as a master in a single network. Id.
47–48. The Board correctly rejected this argument. The
Board found that Marchand discloses that the cellphone is
the master device of the broader ad-hoc network:
If multiple LUSs are possible, and if a LUS must
be disposed on a master device, as IXI contends,
then Marchand’s teaching that a gateway mobile
phone is a master supports Petitioner’s contention
that Marchand suggests disposing a LUS in the
gateway mobile phone.
Final Written Decision, at 20 (citations omitted). We
agree. Marchand expressly discloses that:
The present invention establishes three new inter-
faces or Application Programming Interfaces
(APIs) between the slave device placing the call
and the master mobile phone . . . . This interface
enables any of the Bluetooth devices on the
Piconet to behave as a slave device toward the
mobile phone which is the master.
Marchand, p. 7 l. 28–p. 8 l. 3 (emphases added).
Marchand does not disclose any subnetwork of the ad-hoc
network that contains the cellphone and terminal devices
(e.g., laptop, printer). Thus, the Board’s determination
that a POSITA reading Marchand would understand that
the cellphone is the master of the ad-hoc network and
contains the LUS is reasonable and supported by sub-
stantial evidence.
V. CONCLUSION
We have considered IXI’s other arguments, but find
them unpersuasive. We affirm the Board’s decision that
14 IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD.
the challenged claims of the ’033 patent are invalid as
obvious under 35 U.S.C. § 103(a).
AFFIRMED
COSTS
No costs.