ORTIZ & ASSOCIATES CONSULTING, LLC

Patent Trials and Appeals Board

Aug 20, 2020

IPR2019-00743 (P.T.A.B. Aug. 20, 2020)

Trials@uspto.gov Paper 36
571-272-7822 Entered: August 20, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS INC.,
Petitioner,

v.

ORTIZ & ASSOCIATES CONSULTING, LLC,
Patent Owner.
____________

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____________

Before STACEY G. WHITE, MONICA S. ULLAGADDI, and
IFTIKHAR AHMED, Administrative Patent Judges.

AHMED, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
Unified Patents Inc.1 (“Petitioner”) has shown, by a preponderance of the
evidence, that claims 1–6, 8, 9, 16, and 18 (“the challenged claims”) of
U.S. Patent No. 8,971,914 B2 (Ex. 1001, “the ’914 patent”) are
unpatentable.
A. Procedural History
Petitioner filed a Petition for inter partes review of claims 1–6, 8, 9,
16, and 18 of the ’914 patent. Paper 1 (“Pet.”). Petitioner submitted a
declaration from Dr. Henry H. Houh (Ex. 1008) to support its positions.
Ortiz & Associates Consulting, LLC (“Patent Owner”) filed a Preliminary
Response. Paper 6 (“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314(a), on
August 29, 2019, inter partes review was instituted on the following
grounds:

1 Petitioner has informed the Board that Unified Patents Inc. has changed its
name to Unified Patents, LLC. Paper 22, 1.
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Claims Challenged 35 U.S.C. §2 Reference(s)/Basis
1–4, 8, 9, 16, 18 103(a) Eldridge3, Thomason4
5, 6 103(a) Eldridge, Thomason, Kim5
See Paper 7 (“Inst. Dec.”).
Subsequent to institution, Patent Owner filed a Response (Paper 18,
“PO Resp.”) and Petitioner filed a Reply (Paper 28, “Pet. Reply”) to the
Patent Owner Response. An oral hearing was held on May 28, 2020.
A transcript of the hearing is included in the record. Paper 35 (“Tr.”).
B. Related Proceedings
The parties identify Ortiz & Assocs. Consulting, LLC v. Google LLC,
Case No. 2-13-cv-11512 (N.D. Ill.); Ortiz & Assocs. Consulting, LLC v.
Roku, Inc., Case No. 1-18-cv-01265 (D. Del.); and Google LLC v. Ortiz &
Assocs. Consulting, LLC, Case No. 5-18-cv-05983 (N.D. Cal.) as related
matters. Pet. 1–2; Paper 5, 2. Petitioner further identifies Ortiz & Assocs.
Consulting, LLC v. HP Inc., Case No. 3-18-cv-4032 (N.D. Cal.) and Ortiz &
Assocs. Consulting, LLC v. HP Inc., Case No. 1-18-cv-00837 (N.D. Ill.) as
matters where “additional patents related to the ’914 Patent have been
involved.” Pet. 2.

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’914 patent issued was filed
before that date, the pre-AIA version of § 103 applies.
3 U.S. Patent No. 6,430,601 B1, issued Aug. 6, 2002. Ex. 1005.
4 U.S. Patent No. 6,317,039 B1, issued Nov. 13, 2001. Ex. 1006.
5 U.S. Patent No. 6,681,120 B1, issued Jan. 20, 2004. Ex. 1007.
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C. The ’914 Patent
The ’914 patent, titled “Systems, Methods and Apparatuses for
Providing Video Data to Data Rendering Devices for Display on Multimedia
Video Devices at the Request of Wireless Hand Held Devices,” was filed on
September 29, 2009,6 and issued March 3, 2015. Ex. 1001, codes (22), (45),
(54).
Figure 1 of the ’914 patent is reproduced below.

Figure 1, above, illustrates wireless devices (“WD”) 6 connected to data
rendering devices (“DRD”) 7 via wireless network hardware (e.g., cellular
antennas) 16 and other networks 12. Id. at 6:56–63, 7:7–9. Network servers

6 The ’914 patent claims priority to application No. 09/887,492, filed on
June 22, 2001, which claims priority to provisional application No.
60/214,339, filed on June 27, 2000. Ex. 1001, codes (60), (63).
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15, Home Location Registers (“HLR”) 16,7 and Visiting Location Registers
(“VLR”) 19 manage and store subscriber information for wireless device
users. Id. at 6:66–7:4. Multimedia database resources 8 are accessible by
the wireless device users over networks 12. Id. at 7:18–20.
As described in the Background section of the ’914 patent, network
interconnection and interoperability, at the time of the invention, were
becoming “robust and standardized methodologies in the communications
industry.” Id. at 2:15–19. “The trend for the wireless industry [was]
towards an all-IP platform, which unites different standards for wireless
services worldwide, and introduces an open, Internet-based platform for
integrated data, voice and video services over cellular networks.” Id. at
2:40–44. Handheld wireless device users had access to a growing number of
services, applications, and multimedia via numerous data networks (wired
and wireless), but generally were restricted by limited graphical user
interface functionality as well as “unavailable or inconveniently located
rendering (e.g., printing/display/retrieval) resources to utilize data retrieved
through networks.” Id. at 4:13–25. The ’914 patent therefore seeks to
provide methods for data brokering between wireless devices, such as smart
phones, and data rendering multimedia devices, such as televisions, video
monitors, and projectors, such that those multimedia devices can be used for
displaying video data “at the request and/or under the direction of wireless
devices.” Id. at 4:38–44.

7 We note that Figure 1 specifies two distinct elements with the reference
number 16, the cellular antenna and the HLR. Although the specification
also refers to the HLR by reference number 13, that number is not shown in
Figure 1.
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In the embodiment depicted in Figure 1 of the ’914 patent, data
brokering occurs between wireless devices 6 and DRDs 7 via local wireless
communications, including infrared (“IR”) or radio frequency (“RF”)
technology, as well as supporting networks 12. In other words, data
brokering can be accomplished either directly between wireless devices and
DRDs or can be negotiated with and provided through the network using
available networking protocols. Id. at 7:23–27. A DRD may have a wired
or wireless connection to the network, and may include an authorization
module that is responsible for approving any rendering request received
from a wireless device. Id. at 7:33–37, 7:41–45. DRDs are locatable by the
wireless devices because information related to a DRD’s physical location
and rendering capabilities is registered with and managed by network
elements such as the HLRs, VLRs, and network servers. Id. at 6:63–7:1,
8:10–14. When a wireless device user is in need of a DRD, a network server
is able to identify multiple DRDs for selection by the wireless device user.
Id. at 8:25–27; 11:49–51. Some examples of DRDs that also can include
brokering and location functionality are Internet Kiosks, printers,
photocopiers, fax machines, ATMs, video monitors, projectors used in
conference rooms, and other multimedia-enabled networked devices. Id. at
8:27–33.
D. Illustrative Claim
Of the challenged claims, claims 1, 9, and 16 are independent. Claims
2–6 and 8 depend from claim 1, and claim 18 depends from claim 16.
Claim 1 of the ’914 patent is reproduced below, and is illustrative of the
challenged claims.
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1. A method of brokering video data between handheld
wireless devices and video-enabled data rendering devices,
comprising:
selecting video data from a handheld wireless device
(WD) for rendering by a video-enabled data rendering device
(DRD);
requesting assistance from a wireless data
communications network supporting wireless communications
of said WD to locate the video-enabled DRD for display of said
video data;
selecting at least one video-enabled DRD identified by
said wireless data communications network for rendering of said
video data from at least one of said WD or a remote server
associated with said WD; and
providing said video data to said video-enabled DRD, after
an authorization code provided by said WD is verified by said
DRD, from at least one of: said WD via RF or IR transmission
and said remote server via a data network supporting
communication with said video-enabled DRD.
Ex. 1001, 12:54–13:6.

II. ANALYSIS
A. Principles of Law
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). That burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
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Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
inter partes review).
As set forth in 35 U.S.C. § 103(a),
[a] patent may not be obtained . . . if the differences between the
subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.
The question of obviousness is resolved on the basis of 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 ordinary skill in the art; and (4) objective evidence of nonobviousness.8
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); accord In re
Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner,
however, cannot satisfy its burden of proving obviousness by employing
“mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason
why a person of ordinary skill in the art would have combined or modified
the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. 2016).

8 The parties have not asserted or otherwise directed our attention to any
objective evidence of non-obviousness in the record.
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To prevail in its challenges to Patent Owner’s claims, Petitioner must
demonstrate by a preponderance of the evidence9 that the claims are
unpatentable. 35 U.S.C. § 316(e) (2012); 37 C.F.R. § 42.1(d) (2018).
B. Level of Ordinary Skill in the Art
We review the grounds of unpatentability in view of the
understanding of a person of ordinary skill in the art at the time of the
invention. Graham, 383 U.S. at 17. Petitioner contends that a person of
ordinary skill in the art “would have had at least a bachelor’s degree in
Electrical Engineering, Computer Engineering, or Computer Science, or
equivalent training, as well as at least one to two years of technical
experience in the field of computer networking.” Pet. 9 (citing Ex. 1008
¶¶ 31, 32). Patent Owner has not disputed that contention. See generally
PO Resp. (not addressing the level of ordinary skill in the art). We adopt
Petitioner’s proposed description of the person of ordinary skill in the art,
while maintaining our prior determination (Inst. Dec. 9) that the prior art of
record and the problems identified in the specification reflect the level of
skill in the art at the time of the claimed invention. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
C. Claim Construction
We apply the same claim construction standard that would be used in
a civil action under 35 U.S.C. § 282(b), following the standard articulated in

9 The burden of showing something by a preponderance of the evidence
requires the trier of fact to believe that the existence of a fact is more
probable than its nonexistence before the trier of fact may find in favor of
the party who carries the burden. Concrete Pipe & Prods. of Cal., Inc. v.
Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993).
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Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See
Changes to the Claim Construction Standard for Interpreting Claims in Trial
Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). In
applying that standard, we generally give claim terms their ordinary and
customary meaning, as would be understood by a person of ordinary skill in
the art, at the time of the invention and in the context of the entire patent
disclosure. Phillips, 415 F.3d at 1312–13.
Petitioner proposes a construction for “brokering video data,” recited
in the preamble of challenged claims 1–6, 8, 16, and 18. Pet. 10–11. Patent
Owner does not propose construction for any claim term. See generally PO
Resp. Patent Owner’s arguments on the alleged distinctions between the
claims and prior art, however, require us to construe the terms “wireless data
communications network” and “wireless network.”10
1. “wireless data communications network”/“wireless network”
In the Decision on Institution, we provided a single preliminary
construction of “wireless data communications network” recited in claim 1
and “wireless network” recited in claims 9, 16, and 18. Inst. Dec. 11–14. In
particular, we agreed with the construction proposed by Petitioner’s expert,

10 Independent claim 1 recites the term “wireless data communications
network,” and independent claims 9 and 16, as well as dependent claim 18,
recite “wireless network.” For example, claim 1 recites “requesting
assistance from a wireless data communications network supporting wireless
communications of said WD to locate the video-enabled DRD for display of
said video data.” Ex. 1001, 12:60–63. The parties do not differentiate
between the two terms (see, e.g., Tr. 15:23–16:2), and we construe the two
terms identically.
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Dr. Houh, in his declaration, and construed both terms to mean a “data
communications network that includes communications that take place
without the use of interconnecting wires o[r]11 cables, such as by radio,
microwave, or infrared.” Id. at 12–14 (citing Ex. 1008 ¶ 80).
In its Patent Owner Response, Patent Owner alleges error in our
preliminary construction. See PO Resp. 10–15. Patent Owner argues that
the terms “should be given their ordinary meaning as written in the claims
and specification of the ‘914 patent.” Id. at 15. According to Patent Owner,
a “‘wireless network’ connects computers and devices without wires.” Id.
(emphasis added). Patent Owner argues that because our preliminary
construction “allows some network devices to be networked by a wired
connection,” any network that includes a wireless communication meets the
claim terms, and that the “construction makes every ‘data network’ that
provisions the video data to the DRD a ‘wireless network.’” Id. at 10–11
(citing Ex. 1001, 7:45–48).
Patent Owner further asserts that the challenged claims distinguish
between the narrower “wireless network” term and the broader “data
network” term, where a data network allows “for the provision of the video
data to the DRD over either wireless or wired networks, as contemplated in
the specification.” Id. at 12. According to Patent Owner, our preliminary
construction “renders this distinction meaningless, as each independent
claim includes wireless communications of the WD that would transform
every network into a “wireless network.’” Id. (citing SIPCO, LLC v.
Emerson Elec. Co., 939 F.3d 1301, 1308 (Fed. Cir. 2019); In re Power

11 We correct a typographical error in Dr. Houh’s proposed construction.
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Integrations, Inc., 884 F.3d 1370, 1376 (Fed. Cir. 2018); Merck & Co., Inc.
v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)).
Petitioner responds that our preliminary construction is correct and the
construction of “wireless network” must necessarily allow some network
devices to be networked by a wired connection. Pet. Reply 1, 2. Petitioner
argues that the “specification, including Figure 1, details wireless networks
with wire-based connections for most network devices.” Id. at 3.
Petitioner provides an annotated version of Figure 1 from the ’914
patent (id. at 4), reproduced below.

Figure 1, above, includes Petitioner’s annotations showing the various
elements of the network that Petitioner contends are connected to
network 12 via wired connections, e.g., those between the BSC 17, MSC
18, VLR 19, network server 15, and HLR 16. Id. at 3. With reference to
Figure 1, Petitioner argues that “the wireless device (WD) is connected to
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these other devices via a wireless connection through cellular antenna 16.”
Id. Petitioner, therefore, contends that neither the specification nor the claim
language precludes the claimed “wireless network” from including wired
connections. Id. at 3–4.
Petitioner agrees with Patent Owner that there is a distinction between
the narrower “wireless network” term and the broader “data network” term,
but asserts that that distinction merely requires that “data network” allow for
networks that are made entirely of wired connections, whereas “wireless
networks” must include wireless connections. Id. at 4–5. Thus, Petitioner
contends, the preliminary construction does not render the distinction
between a “wireless network” and a “data network” meaningless. Id. at 5.
We agree with Petitioner, and for the reasons below, we maintain our
preliminary construction in this Decision. As Petitioner points out, the
specification discloses wire-based devices, such as servers connected to a
network by wire, as being part of the claimed “wireless network.” As
discussed infra, we are persuaded that an ordinarily skilled artisan would
have understood those devices to be wire-based because of how they are
depicted in Figure 1 as contrasted with how “wireless” devices/links are
depicted in that figure, and because of their description in the specification.
For example, the specification explains that “[i]ntelligent wireless networks
generally include the use of mobile switching centers (MSCs) having access
to network servers and databases such as Home Location Registers (HLRs)
and Visiting Location Registers (VLRs), for providing applications and data
to networks, service providers and service subscribers (wireless device
users).” Ex. 1001, 2:48–54 (emphasis added). An HLR, for instance, “is a
database that contains semi-permanent mobile subscriber (wireless device
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user) information for wireless carriers’ entire subscriber base.” Id. at 2:58–
60. “Information related to WDs 6, DRDs 7 and/or WD users (e.g.,
subscriber identification, location, accounting, profiles) can be managed by a
combination of network servers 15, Home Location Registers (HLRs) 16
and Visiting Location Registers 19.” Id. at 6:63–7:1. Those network
resources and servers therefore support wireless communications of the WD
and assist in locating and identifying DRDs to wireless device users. The
parties do not dispute that those elements are part of the claimed “wireless
network.” See Tr. 12:9–13:4, 52:17–24 (referring to elements of Ex. 1001,
Fig. 1); PO Resp. 14–15 (“These are examples of the hardware that could
make up the wireless network.”).
Patent Owner, however, argues that those components are connected
wirelessly and that “the ’914 patent nowhere teaches that Figure 1 includes
wire-based connections.” PO Resp. 14–15 (emphasis added), 13 (“Figure 1
of the ’914 patent shows no wire-based network to which a wireless device
is bridged.”). Figure 1, however, depicts network servers 15, HLR 16,
VLR 19, and antenna 16 connected by a line to network 12 while wireless
device 6 is depicted with no lines connecting it to network 12. Ex. 1001,
Fig. 1. Patent Owner’s argument also is refuted by the specification’s
unambiguous description of the network. The specification discloses that
the equipment shown in Figure 1 (as connected by a line to network 12) may
be connected via conventional wire-based networks such as “the public
service telephone network (PSTN), digital subscriber line (DSL), Integrated
Services for Digital Networks (ISDN) and/or Local Area Network (LAN).”
Id. at 7:51–56. An ordinarily skilled artisan would interpret the use of such
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networks to necessarily mean that network 12 cannot be connected entirely
wirelessly.12
Next, Patent Owner argues that even if the specification supports
including wire-based connections in the disclosed wireless network, the
claim term “should be given their ordinary meaning as written in the claims
and specification of the ’914 patent.” PO Resp. 15; see also Tr. 42:9–13. At
the hearing, Patent Owner argued that the only construction that is required
for a “wireless network” is that it be the network that supports wireless
communications of the WD and that it be the network in which the claimed
method is practiced. See Tr. 38:11–16, 39:25–40:8. Patent Owner’s
proposal, however, merely reiterates the claim language and fails to resolve
the dispute between the parties on the meaning of the claims sufficient to
address whether the prior art teaches the claimed “wireless network.”
We also are unpersuaded by Patent Owner’s argument that our
construction renders the distinction between the terms “wireless network”
and “data network” meaningless. PO Resp. 11, 12. The term “data
network” in the claims refers broadly to networks in general, regardless of
the type of interconnections between the elements of the network. See, e.g.,
Ex. 1001, 4:15–16 (referring to “data networks” as “wired and wireless”),
2:4–7 (“data networks” include wireless networks), 7:41–44 (the DRD
connects to data networks “with wired and/or wireless communications”),

12 At the hearing, Patent Owner’s counsel, although continuing to assert that
the connections in Figure 1 do not depict wired connections, acknowledged
that “as a matter of practice in how figures are drawn and especially this one
because [it is a] cloud-based connection,” the line could represent a wire-
based connection and “[m]aybe it is just there are some wire-based
connections.” Tr. 41:21–42:8.
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Fig. 2. Therefore, our construction does not render the distinction between
the claim terms “wireless network” and “data network” meaningless, and the
authority cited by Patent Owner on that point is inapposite.13 When read in
context of the claim language and the specification of the ’914 patent, it is
clear that a “wireless network” is a network that connects the wireless
device, while a “data network” is one that connects the data rendering device
or video monitor.14 See Ex. 1001, 7:41–44.
Accordingly, for purposes of this Final Written Decision, we maintain
our prior construction of both terms “wireless data communications
network” and “wireless network” as a “data communications network that
includes communications that take place without the use of interconnecting
wires or cables, such as by radio, microwave, or infrared.” Cf. AC Techs.
S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1367 (Fed. Cir. 2019) (rejecting an
argument that the claim term “connected over a wireless network” requires a
direct wireless connection).
2. Remaining Claim Terms
Petitioner proposes that we construe “brokering video data” to at least
include “the negotiation, management, coordination and/or facilitation of

13 For example, in SIPCO, the Federal Circuit reversed the Board’s
construction of “low-power transceiver” because the specification
“repeatedly tie[d] the low-power transmitter to having a limited transmission
range.” 939 F.3d at 1308-09. In contrast, nothing in the ’914 patent
specification compels us to narrowly construe wireless network to exclude
all wire-based connections.
14 Moreover, the claim language makes clear that the WD is “wireless” and
connects to the network wirelessly. Patent Owner also does not dispute that
the prior art teaches wireless devices connected wirelessly to a network. We
therefore do not find it necessary to include additional detail regarding the
WD’s connection to the wireless network in our construction.
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video data movement and use between and throughout devices and at least
one network.” Pet. 11 (citing Ex. 1008 ¶¶ 51–55). Our analysis below does
not depend on a particular interpretation for “brokering video data,” and we
determine that it is not necessary to explicitly construe any other term or
phrase. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[W]e need only construe
terms ‘that are in controversy, and only to the extent necessary to resolve the
controversy.’”)).
D. The Asserted Prior Art
1. Eldridge (Ex. 1005)
Eldridge is a U.S. patent titled “Mobile Document Paging Service.”
Ex. 1005, code (54). Eldridge relates to a method and system “for
transmitting document references or tokens to users of integrated wireless
and wire-based communication services,” including users of “[m]obile
computing devices [that] are coupled to the wire-based network through
either IR (infrared) or RF (radio) transceiver gateways.” Id. at code (57). A
token may identify a changed document on a repository of shared
documents, and when received by a user of a mobile computing device, “the
document referenced by the document token [can be] readily printed,
displayed, or forwarded using available document services.” Id.
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Figure 1 of Eldridge is reproduced below.

Figure 1, above, shows “mobile computing devices 118 are bridged to the
wire-based networks 116 and 122 through either IR gateways 114 or RF
gateway 120.” Id. at 3:39–41. The token-enabled servers 126, along with
other network elements, “operate together in the distributed operating
environment to provide users of the mobile computing device 118 with
streamlined access to document services available on wire-based networks
116 and 122.” Id. at 3:51–59. Users on mobile computing devices are able
to browse through directories of document tokens representing the user’s
documents stored on the network and “apply document services available on
networks 116 or 122 to selected document tokens.” Id. at 3:59–65.
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Figure 7 of Eldridge is reproduced below.

Figure 7, above, shows the user interface presented to the user of a mobile
computing device when a document token message 601 (shown in Figure 6,
not reproduced here) is opened. Id. at 10:9–15. The opened message
includes a document token name 705, among other attributes. Id. at 10:13–
19. Services button 702 allows the user to request a listing of services
available to the user. Id. at 10:19–27. Referring to Figure 1 above,
transaction server 144 manages requests received from the mobile
computing devices for various document services available on the network.
Id. at 4:27–43. In addition, transaction server 144 fulfills those requests,
working in coordination with directory server 142, which maintains a
database of token-enabled devices (e.g., printer 102 and scanner 110), and
document delivery server 138, which retrieves requested documents from
document servers 134 and 128. Id. For example, if a mobile computing
device user wishes to print a document (e.g., Figure 7), the transaction server
provides the user with a list of available print services. Id. at 10:19–43.
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Figure 8 of Eldridge is reproduced below.

Figure 8, above, shows the user interface presented to the user when services
button 702 is pressed. Id. at 10:54–56. The user interface lists available
print services, including the user’s selection of print service 801 to print the
selected document. Id. at 10:56–59. Once the user decides to print the
document, the request is transmitted through the IR network or RF gateway
to the transaction server. Id. at 11:3–7. The transaction server transmits the
request to a token-aware document delivery server, which requests a
document server to fetch the document. Id. at 11:7–14. The document
server authenticates the document token by acquiring the public key of the
original user issuing the document token. Id. at 11:20–24. If the
authentication is successful, the document then is fetched from the document
server by the document delivery server, formatted for printing, and sent to
the specified printer for printing. Id. at 11:32–46.
2. Thomason (Ex. 1006)
Thomason is a U.S. patent titled “Wireless Video Audio Data Remote
System,” and relates to a method and system for remote assistance of a
technician at a remote location, by an advisor at a central location who is
able to view the remote location through wirelessly networked apparatus.
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Ex. 1006, codes (54), (57). That allows an advisor to assist a technician in
the field, as required, without physically being at the job site. Id. at 1:41–45,
3:33–38.
Figure 3 of Thomason is reproduced below.

Figure 3, above, shows local master technician 109 communicating with
mobile field technician 102 via an audio-visual connection, whereby master
technician 109 is able to view the visuals from the field technician’s camera
105 on the video monitor of local processor 110 and provide directions for
repair to the field technician. Id. at 5:49–57. As described in Thomason,
local station 108 is coupled wirelessly to mobile field technician 102 via
wireless network 106 and/or Internet 107. Id. at 5:45–48.
3. Kim (Ex. 1007)
Kim is a U.S. patent titled “Mobile Entertainment and
Communication Device,” and relates to a cellular telephone capable of
wireless communication with the internet (e.g., Samsung 3500) that includes
a camera and microphone for recording video, and a memory card for
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storing the recorded video data, which also can be transmitted wirelessly.
Ex. 1007, codes (54), (57), 2:3–9.
Figure 5 of Kim is reproduced below.

Figure 5, above, shows components of a cellular phone, including video
camera 102, which is connected through image signal processing section 107
to microprocessor 112, whereby captured images may be displayed on panel
104, recorded to memory 116, “or transmitted by the cellphone to a remote
telephone which may be located at a police station, security office, one’s
own personal computer or the like.” Id. at 4:3–10.
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E. Asserted Obviousness of Claims 1–4, 8, 9, 16, and 18 in view of
Eldridge and Thomason
Petitioner asserts that claims 1–4, 8, 9, 16, and 18 are unpatentable
under 35 U.S.C. § 103 as obvious in view of Eldridge and Thomason.
Pet. 11–80. To support its contentions, Petitioner provides, among other
things, explanations as to how the prior art teaches each claim limitation. Id.
Petitioner also relies upon Dr. Houh’s testimony (Ex. 1008) to support its
positions. Id.
Patent Owner argues that Eldridge fails to teach the “wireless
network” and “wireless data communications network” limitations of the
claims. PO Resp. 16–21. On the complete record, we are persuaded by
Petitioner’s explanations and evidence in support of the obviousness ground
for claims 1–4, 8, 9, 16, and 18 over Eldridge and Thomason. We address
below the evidence, analysis, and arguments presented by the parties.
1. Independent Claim 1
Petitioner contends that the subject matter of claim 1 would have been
obvious in view of Eldridge and Thomason. Pet. 19–32.
a. Preamble
Claim 1 recites a “method of brokering video data between handheld
wireless devices and video-enabled data rendering devices.” Ex. 1001,
12:54–13:6. Petitioner contends that, to the extent that the preamble is
limiting, the combination of Eldridge and Thomason teaches all of its
elements. Pet. 20. Petitioner asserts that Eldridge teaches a “mobile
computing device (a WD) 118 and the devices to print, display, and forward
the data, including video data 102,” and also teaches a “process that includes
printing, displaying, and forwarding documents (video data) to devices over
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networks 116 and 122.” Id. (citing Ex. 1005, Fig. 1, Abstract, 7:31–35,
13:12–14; Ex. 1008 ¶¶ 67–70).
Petitioner further asserts that “Thomason discloses a video-enabled
DRD that renders (displays) video data.” Id. at 20–21 (citing Ex. 1006,
Fig. 3, 5:51–54; Ex. 1008 ¶ 71). Petitioner argues that a person of ordinary
skill in the art “would have been motivated to modify Eldridge to include a
video-enabled DRD (e.g., a video monitor), as taught by Thomason,”
thereby allowing forwarding of Eldridge’s “documents (video data) to the
video-enabled rendering device.” Id. at 21–22 (reproducing Ex. 1005,
Fig. 1, annotated to show the proposed modification). According to
Petitioner, such a modification “is the combination of prior art elements (a
technique for displaying video data on an audio-visual view station as in
Eldridge and a video monitor as taught by Thomason) according to known
methods (providing video signals to the video monitor) to yield the
predictable result of displaying video data.” Id. at 16–17 (citing KSR, 550
U.S. at 416).
Petitioner further contends that an ordinarily skilled artisan “would
have had a reasonable expectation of success in modifying Eldridge to
include a video monitor, as in Thomason, for rendering video data at least
because of the explicit suggestion by Eldridge itself and because Thomason
indicates that its local station 108 may be implemented using off-the-shelf
parts.” Id. at 17 (citing Ex. 1005, 5:13–25, 7:31–35; Ex. 1006, 6:23–50); see
also Tr. 57:22–58:12 (arguing that Eldridge’s printer is “capable of printing
videos or viewing videos”). Petitioner’s contentions regarding the
motivation to combine Eldridge and Thomason in the proposed manner are
supported by Dr. Houh’s testimony. Ex. 1008 ¶¶ 62–65.
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Patent Owner does not present arguments specifically directed to the
preamble or the motivation to combine Eldridge and Thomason, but makes
an argument about Eldridge’s teaching of a “wireless network,” which we
address below. See PO Resp. 16–21.
On the complete record, we find that Petitioner provides sufficient
evidence that the combination of Eldridge and Thomason teaches the
preamble of claim 1.15 We also find Dr. Houh’s testimony to be credible
and supports Petitioner’s contentions, and we perceive no persuasive
evidence that contradicts that testimony. Further, Petitioner’s rationale for
combining the teachings of Eldridge and Thomason is logical, consistent
with, and supported by the cited evidence. Accordingly, we are persuaded
that a person of ordinary skill in the art would have been motivated to
combine Eldridge and Thomason as proposed by Petitioner.
b. “selecting video data from a handheld wireless device (WD)
for rendering by a video-enabled data rendering device
(DRD)”
Petitioner contends that Eldridge teaches selecting a document token
from a handheld WD for rendering by a DRD, and teaches that each token is
associated with a document. Pet. 22–23 (citing Ex. 1006, Figs. 5–8, 9:31–
43, 1:60–61; Ex. 1008 ¶ 74). Because document data in Eldridge may
include video data, Petitioner contends that the selection of a document
token would include the selection of video data. Id. at 23 (citing Ex. 1006,
7:31–35; Ex. 1008 ¶ 74). Petitioner further contends that the selection of
data is for rendering by a video-enabled DRD because Eldridge teaches

15 Although we need not decide whether the preamble of claim 1 is limiting,
Petitioner has shown that the recitation in the preamble is satisfied by the
prior art.
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delivering the selected document to a “viewing driver” or an “audio-visual
view station.” Id. at 23 (citing Ex. 1005, 5:13–21, 13:12–14; Ex. 1008 ¶ 75).
As discussed above, Petitioner asserts a person of ordinary skill in the art
would have been motivated to modify Eldridge to render the video data on a
video-enabled DRD in view of Thomason. Id. at 23–24 (citing Ex. 1008
¶ 76); see also id. at 15–17.
Patent Owner makes no arguments disputing the prior art teaching of
this limitation, see generally PO Resp., and based on the entirety of the
record, we determine that Petitioner has provided persuasive evidence that
the combination of the asserted prior art references teaches this claim
limitation.
c. “requesting assistance from a wireless data communications
network supporting wireless communications of said WD to
locate the video-enabled DRD for display of said video
data”
Petitioner contends that Eldridge teaches a “wireless data
communications network supporting wireless communications of the WD”
because the mobile computing devices 118 in Eldridge “are bridged to the
wire-based networks 116 and 122 through either IR gateways 114 or RF
gateway 120.” Pet. 24 (quoting Ex. 1005, 3:39–41 (emphasis omitted);
citing Ex. 1005, 3:38–50; Ex. 1008 ¶¶ 79, 80). Petitioner provides a side-by-
side comparison of annotated Figure 1 of Eldridge and annotated Figure 1 of
the ’914 patent (id. at 25), reproduced below.
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The two figures above illustrate the networks of Eldridge on the top
(Ex. 1005, Fig. 1) and that of the ’914 patent at the bottom (Ex. 1001,
Fig. 1), respectively, annotated by Petitioner in support of its argument that
“Eldridge teaches a similar wireless network as in the ’914 Patent.” Id. at 24
(citing Ex. 1008 ¶ 81). Petitioner contends that Eldridge teaches this claim
limitation because it discloses mobile computing device 118 transmitting a
request for a list of available transaction services “over the IR gateway 114
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to a transaction server 144 to locate a DRD (e.g., printer, scanner, audio-
visual view station) that can render a document (e.g., video data) for display
of the document.” Id. at 26 (citing Ex. 1005, 10:23–53, 4:25–37; Ex. 1008
¶¶ 82, 83). Petitioner once again relies on Thomason as teaching a video-
enabled DRD. Id. at 26–27 (citing Ex. 1008 ¶¶ 78-84).
Patent Owner responds that, rather than teaching a wireless network,
“Eldridge uses a wire-based network to locate and identify a DRD” because
when a user wishes to print a document, “mobile computer device 118
transmits a request for a list of available transaction services . . . to
wire-based networks 116 and 122.” PO Resp. 17 (quoting Ex. 1005, 10:35–
55). Patent Owner argues that that request “is submitted to the wire-based
network—the transaction server and the directory server—which generates
‘a list of available services.’” Id. Patent Owner further argues that it is the
wire-based network in Eldridge that identifies the DRD because all of the
token-aware servers, i.e., transaction server 144, document delivery server
138, shared document server 134, network file server 104, document
delivery server 138, and printer 102 are all “coupled” to the wire-based
network. Id. (citing Ex. 1005, Fig. 1, 11:1–46, 3:28–29, 4:13–18).
Patent Owner’s argument is unavailing because it ignores that the
request from the mobile computer device “is transmitted to wire-based
networks 116 and 122 through either gateway 114 or 120,” both of which
are wireless gateways. Ex. 1005, 10:27–28 (emphasis added); see also id. at
4:16–17 (referring to elements 114 and 120 as “the RF and IR gateways”),
6:18–20 (the RF gateway is connected to a wireless network). Eldridge
further discloses that the “mobile computing devices communicate with each
other or other wire-based or wireless devices using either an IR (Infrared) or
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a radio (RF) transceiver.” Id. at 3:41–44. Thus, the mobile computing
devices in Eldridge are connected to other devices and to the transceiver
wirelessly, forming a network that is connected wirelessly, and therefore, the
request from a mobile device for a list of available transaction services is, at
least initially, submitted to a network that is connected wirelessly.16
As discussed above (supra Section II.C.1), we do not construe
“wireless data communications network” so narrowly as to exclude all
communications with wire-based devices. Also, as discussed above (id.),
the specification of the ’914 patent supports that the network servers that
assist in locating and identifying a DRD may be connected to a wire-based
network. See Ex. 1001, 11:43–51 (disclosing that a network server receives
the request from the WD and “locates and identifies a DRD to the WD
matching the profile 92.”). Nothing in the ’914 patent specification suggests
that the network server has to be connected wirelessly to the WD. See, e.g.,
id. at 7:51–56 (listing wire-based networks to which DRD and other servers
may be connected). In the same manner, Eldridge discloses that servers that
generate the list of available services have a wire-based connection to
network 116, but they are connected through a wireless network to the
mobile computing devices 118. Ex. 1005, Fig. 1, 10:35–37. Petitioner’s
comparison of the two figures (reproduced above) as teaching similar
wireless networks, supported by Dr. Houh’s testimony that we credit, is
therefore persuasive.

16 Contrary to Patent Owner’s assertion (PO Resp. 16), this claim limitation
does not require that the wireless network actually locate a DRD, but
requires only that the WD “request[] assistance from” the wireless network
to locate the DRD. Ex. 1001, 12:60–64.
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Patent Owner also appears to distinguish the network disclosed in
Eldridge by arguing that it is merely a “bridge,” and not an actual wireless
network. See, e.g., Tr. 46:8–25, 48:2–7 (“It’s a bridge. It’s not a network.”);
47:6–22 (arguing that a wireless network “is not part of Figure 1” of
Eldridge). We understand Patent Owner’s argument to be that Eldridge does
not disclose a “wireless network” because there is no express disclosure in
Eldridge’s Figure 1 of certain wireless network elements, such as the MSC,
HLR, and VLR, disclosed in the ’914 patent specification. Tr. 48:25–49:14.
Patent Owner’s argument is inconsistent with Eldridge’s disclosure of
various cellular networks. For example, Eldridge discloses the use of “any
suitable wireless network such as PCS, GSM, or pager messaging,” and
discloses, as an example of its mobile computing device, a Nokia 9000
Communicator. Ex. 1005, 3:41–49, Fig. 1 (depicting a cellular antenna as
element 120, the RF gateway). We find that a person of ordinary skill in the
art would have understood that disclosure as teaching a “wireless data
communications network.”
We, therefore, find Patent Owner’s arguments unavailing, and based
on our review and consideration of the entire record, we determine that
Petitioner has shown by a preponderance of the evidence that the
combination of the asserted prior art references teaches this claim limitation.
d. “selecting at least one video-enabled DRD identified by said
wireless data communications network for rendering of said
video data from at least one of said WD or a remote server
associated with said WD”
Petitioner argues that Eldridge teaches presenting a “Services
Directory” screen, listing available print services to the user, the user
selecting a specified print service from among the print services available in
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the building, and that Eldridge’s document includes video data. Pet. 27–28
(citing Ex. 1005, Fig. 8, 10:54–67; Ex. 1008 ¶¶ 86–88). Petitioner once
again contends that a person of ordinary skill in the art would have been
motivated to modify the DRD of Eldridge to be a video-enabled DRD in
view of Thomason. Id. at 28 (citing Ex. 1008 ¶¶ 85–89).
Patent Owner responds that Eldridge’s “wire-based network identifies
the DRD that is selected.” PO Resp. 17. Patent Owner’s arguments are
once again limited to the nature of the network that identifies the DRD. Id.
17, 20 (citing Ex. 1005, 11:1–46, 10:41–55).
For the reasons discussed above, we do not agree with Patent Owner’s
arguments that Eldridge fails to teach a DRD identified by a “wireless data
communications network.” Eldridge explains that the list of available
services is transmitted from transaction server 144 to network gateway
114/120, and from there, wirelessly, to the mobile computing device. Ex.
1005, 10:47–53. Patent Owner fails to persuasively explain how Eldridge’s
teaching is different from the ’914 patent, which discloses that a network
server (depicted as element 15 in Figure 1, on the other side of network 12
from the WD 6) identifies a DRD to the WD (Ex. 1001, 11:43–51), and fails
to persuasively explain why Eldridge fails to teach or suggest this limitation.
Based on the entirety of the record, we find that Petitioner has shown
by a preponderance of the evidence that the asserted prior art teaches this
limitation.
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e. “providing said video data to said video-enabled DRD, after
an authorization code provided by said WD is verified by
said DRD, from at least one of: said WD via RF or IR
transmission and said remote server via a data network
supporting communication with said video-enabled DRD”
Petitioner contends that Eldridge teaches fetching a document selected
by the user for printing from a shared document server 134 and providing it
in print-ready format to the specified printer 102. Pet. 29 (citing Ex. 1005,
Abstract, 11:32–53, 7:31–35; Ex. 1008 ¶ 91). Petitioner further contends
that Eldridge teaches security elements included within document tokens,
and teaches using a user’s public key in authenticating the document token
before fetching the document from its location, e.g., the network file server.
Id. at 29–30 (citing Ex. 1005, 5:26–49, 4:61–62, 4:59–5:4, 11:21–53, 8:25–
37; Ex. 1008 ¶ 93). According to Petitioner, Eldridge teaches the
authentication code being verified by the DRD because it discloses that
“authentication of the document token can be performed at network
gateways 114 and 120,” and that “the IR gateway [114] can either be
embedded in or be intimately associated with a device that offers document
services.” Id. at 30 (citing Ex. 1005, 6:8–10, 11:28–29; Ex. 1008 ¶ 94).
According to Petitioner, a person of ordinary skill in the art “would
have been motivated to modify the video-enabled DRD to perform the
authentication at the video-enabled DRD because Eldridge discloses that the
IR gateway, which can perform the authentication, can be embedded in the
DRD.” Id.; see also id. at 17–18 (citing Ex. 1005, 6:7–12). Petitioner
contends that “the proposed modification of Eldridge is merely a
combination of prior art elements (authenticating a document token and
performing the authentication at a specific device) according to known
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methods (embedding the IR gateway in the DRD) to yield the predictable
result of providing video data after authentication, as disclosed by Eldridge.”
Id. at 18 (citing Ex. 1005, 11:32–46; Ex. 1008 ¶ 65).
Petitioner further argues that Eldridge teaches providing the document
to a DRD from servers 134, 138 via network 116. Id. at 31 (citing Ex. 1005,
Abstract, 11:33–46, 11:32–53, 7:31–35; Ex. 1008 ¶ 92). Petitioner also
asserts that a person of ordinary skill in the art would have been motivated to
modify the DRD of Eldridge to be a video-enabled DRD in view of
Thomason. Id. at 31–32 (citing Ex. 1008 ¶¶ 90–95).
Patent Owner does not present arguments as to this limitation. See
generally PO Resp. Based on the entirety of the record, we determine that
Petitioner has shown by a preponderance of the evidence that the
combination of the asserted prior art references teaches this claim limitation.
f. Conclusion as to Claim 1
Based on our review and consideration of the current record, we are
persuaded Petitioner has shown by a preponderance of the evidence that
claim 1 of the ’914 patent is unpatentable as obvious over the combination
of Eldridge and Thomason.
2. Independent Claims 9 and 16
Independent claims 9 and 16 claim subject matter substantially similar
to claim 1. See Ex. 1001, 13:63–14:20, 14:51–63. Petitioner contends that
independent claims 9 and 16 would have also been obvious over Eldridge
and Thomason, and provides similar evidentiary support for its assertions as
those presented for claim 1. Pet. 48–77 (citing Ex. 1008 ¶¶ 130–202). For
the purposes of this Decision, the differences in the limitations of claim 1
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and the corresponding limitations of claims 9 and 16 do not materially affect
our analysis.
Patent Owner raises the same arguments regarding Eldridge’s
disclosure of a wireless network for claims 9 and 16 that it raises for claim 1.
See PO Resp. 18–19. Specifically, with respect to claim 9, Patent Owner
argues:
Claim 9 of the ’914 patent includes the steps, “entering a video
monitor locator request at said WD to a wireless network
supporting wireless communication by said WD; wirelessly
receiving a list of at least one video monitor identification and
location information from said wireless network . . . [and]
selecting a video monitor from the list of said at least one of video
monitor identification and location information received from
said wireless network . . .”
Id. at 18 (citing Ex. 1001, 14:1–9). Patent Owner argues that “[i]nstead of
submitting the request for service to the wireless network, as in [c]laim 9,
Eldridge submits the request to the wire-based network.” Id. (citing
Ex. 1005, 10:35–37, 3:52–4:18). Patent Owner further argues that “Eldridge
[does not] receive the DRD location and identification from the wireless
network, as [c]laim 9 of the ’914 patent covers,” but rather “from the wire-
based network.” Id. at 18–19 (citing Ex. 1005, 10:41–55).
Likewise, for claim 16, Patent Owner argues, Eldridge does not teach
or suggest “using a wireless network supporting a handheld wireless device
(WD) . . . to locate said video monitor . . . providing said video data to said
video monitor selected by said WD.” Id. at 19 (citing Ex. 1001, 14:54–62,
10:27–28).
Based on the entirety of the record, we are persuaded that, for the
reasons discussed above in connection with claim 1 (supra Section II.E.1),
Petitioner has shown by a preponderance of the evidence that Eldridge
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teaches the “wireless network” limitation recited in claims 9 and 16, and
teaches the related limitations that Patent Owner disputes based on its
argument that Eldridge discloses only a wire-based network. PO Resp. 18–
19. Petitioner has therefore shown by a preponderance of the evidence that
claims 9 and 16 of the ’914 patent are unpatentable as obvious over the
combination of Eldridge and Thomason.
3. Dependent Claim 2
Claim 2 depends from independent claim 1 and recites (a) “wherein
said video data is provided to said video-enabled DRD via a network
supporting said video-enabled DRD after a WD user identifies the video-
enabled DRD to a network supporting said WD,” (b) “a render command is
provided by said WD through said network in support of said WD to at least
one of a server associated with said wireless device and a network
supporting said video-enabled DRD,” and (c) “said network in support of
said WD facilitates transfer of said video data to said video-enabled DRD
from said server through said data network supporting communication with
said video-enabled DRD.” Ex. 1001, 13:7–20 (emphases added).
Petitioner contends that Eldridge teaches limitation (a) because it
discloses “providing data, which may include video data, to the DRD after
the user employs the interface of Figure 8 to select the DRD coupled to the
IR port and networks 116 and 126 by identifying the DRD to the networks
including server 144.” Pet. 33–35 (citing Ex. 1005, 10:54–67; 3:23–37,
7:31–35, 11:1–14, 11:32–53, Figs. 1, 8; Ex. 1008 ¶¶ 96–101).
Petitioner contends that Eldridge teaches limitation (b) because it
discloses “the print command (render command) transmitted to servers 138
and 144 (servers associated with the WD).” Id. at 35–36 (citing Ex. 1005,
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10:56–59, 10:54–67, 11:1–14, Figs. 1, 8). Petitioner further contends that
Eldridge provides the document to the DRD after the device 118 transmits
the print command via networks 116 and 126 to the transaction server 144
and document delivery server 138. Id. at 36–37 (citing Ex. 1008 ¶¶ 102–
105).
Petitioner contends that Eldridge teaches limitation (c) because it
discloses “the delivery server 138 transferring the document, which may
include video data, from the server 134 to the rendering device over
networks 116 and 126.” Id. at 37–39 (citing Ex. 1005, 11:32–53). Petitioner
once again argues that a person of ordinary skill in the art would have been
motivated to modify the DRD of Eldridge to be a video-enabled DRD in
view of Thomason, thereby teaching the transfer of video data to a video-
enabled DRD through a data network. Id. at 38–39 (citing Ex. 1008 ¶¶ 106–
108).
Patent Owner does not present separate arguments as to dependent
claim 2. See generally PO Resp. We adopt as our own Petitioner’s
argument and cited evidence showing that the combination of Eldridge and
Thomason teaches the additional limitations in claim 2. Based on the
entirety of the record, we are persuaded Petitioner has shown by a
preponderance of the evidence that claim 2 is unpatentable as obvious over
the combination of Eldridge and Thomason.
4. Dependent Claim 3
Claim 3 depends from claim 1 and recites “wherein said video-
enabled DRD displays said video data on at least one of a video monitor and
multimedia projector after a render command is provided to the video-
enabled DRD.” Ex. 1001, 13:21–25. Petitioner contends that Eldridge
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teaches that server 138 sends the document in a print-ready format, at the
request of the device 118 (a render command), from the server 134 to the
specified printer 102. Pet. 39, 40 (citing Ex. 1005, 11:33–53); Pet. Reply 9–
10. As discussed above, Petitioner contends that a person of ordinary skill in
the art would have been motivated to modify the DRD of Eldridge to be a
video-enabled DRD in view of Thomason, thereby teaching a video-enabled
DRD that displays video data on a video monitor. Pet. 39. Petitioner thus
argues that claim 3 would have been obvious in view of Eldridge and
Thomason. Pet. at 39, 40 (citing Ex. 1008 ¶¶ 109–114).
Patent Owner does not present separate arguments as to claim 3. See
generally PO Resp. We adopt as our own Petitioner’s argument and cited
evidence showing that the combination of Eldridge and Thomason teaches
the additional limitation in claim 3. Based on the entirety of the record, we
are persuaded Petitioner has shown by a preponderance of the evidence that
claim 3 is unpatentable as obvious over the combination of Eldridge and
Thomason.
5. Dependent Claim 4
Claim 4 depends from claim 3 and recites “wherein displaying said
video data by said video-enabled DRD on said at least one of a video
monitor and multimedia projector is controlled by the WD through said data
network supporting communication with said video-enabled DRD.”
Ex. 1001, 13:26–31. According to Petitioner, Eldridge teaches that the WD
interface shown in Figure 8 of Eldridge controls the displaying by Eldridge’s
DRD through the network that includes server 138. Pet. 40–42 (citing Ex.
1005, 10:54–56, 11:1–14, 11:54–67, Figs. 4B, 8). Petitioner further explains
that “Eldridge’s request from device 118 controls the displaying (which
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occurs after the render command) because the request controls the content of
what is going to be displayed.” Pet. Reply 10 (emphasis added); Tr. 27:9–
23, 28:7–15, 56:11–24. Petitioner relies on the disclosure of Thomason as
teaching a video-enabled DRD that displays video data on a video monitor.
Pet. 42. Petitioner therefore argues that claim 4 also would have been
obvious in view of Eldridge and Thomason. Id. (citing Ex. 1008 ¶¶ 115–
120).
Patent Owner does not present separate arguments as to claim 4. See
generally PO Resp. We adopt as our own Petitioner’s argument and cited
evidence showing that the combination of Eldridge and Thomason teaches
the additional limitation in claim 4. Based on the entirety of the record, we
are persuaded Petitioner has shown by a preponderance of the evidence that
claim 4 is unpatentable as obvious over the combination of Eldridge and
Thomason.
6. Dependent Claim 8
Claim 8 depends from claim 1 and additionally recites “wherein said
selecting at least one video-enabled DRD is further accomplished by” (a)
“requesting said data communications network supporting said WD to locate
and communicate with at least one video-enabled DRD, wherein location of
said video-enabled DRD is based upon location of said WD or a WD user
location,” and (b) “requesting said network to provide said WD with at least
one of identity and location information for at least one video-enabled
DRD.” Ex. 1001, 13:21–25. Petitioner contends that Eldridge teaches
“device 118 (via Fig. 8) requesting servers 134, 138, 144 to locate and
communicate with a DRD (e.g., printer 102),” and teaches the delivery
server 138 transmitting the document in a print-ready format to the DRD.
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Pet. 43–45 (citing Ex. 1005, 10:35–67, 11:1–14, 11:32–53; Ex. 1008
¶¶ 121–124). Petitioner further contends that “Eldridge teaches the location
of the DRD is based upon the location of the device 118 (WD) and its user
by disclosing that the IR gateway 114 receiving the request appends location
context information to the request.” Id. at 45, 46 (citing Ex. 1005, 10:24–32,
10:23–53, 4:25–37, Fig. 4B; Ex. 1008 ¶¶ 125–127). As discussed above,
Petitioner relies on Thomason as teaching a video-enabled DRD, and argues
that the combination of Eldridge and Thomason discloses limitation (a). Id.
at 44, 46.
With regard to limitation (b) of claim 8, Petitioner contends that
Eldridge teaches requesting networks 116, 126 to provide location
information of the DRD based on a WD location context appended by the IR
gateway 114. Id. at 47, 48 (citing Ex. 1005, 10:24–32, 10:23–53, 4:25–37,
Figs. 4B, 8; Ex. 1008 ¶¶ 128–129). Petitioner therefore argues that claim 8
also would have been obvious in view of Eldridge and Thomason. Id. at 48.
Patent Owner does not present separate arguments as to claim 8. See
generally PO Resp. We adopt as our own Petitioner’s argument and cited
evidence showing that the combination of Eldridge and Thomason teaches
the additional limitations in claim 8. Based on the entirety of the record, we
are persuaded Petitioner has shown by a preponderance of the evidence that
claim 8 is unpatentable as obvious over the combination of Eldridge and
Thomason.
7. Dependent Claim 18
Claim 18 depends from claim 16 and recites “wherein said rendering
of data at said video monitor follows a command by said WD provided to
said video monitor over a local wireless network.” Ex. 1001, 15:3–7.
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Petitioner contends that Eldridge teaches the added limitation of claim 18
because Eldridge discloses that “device 118 transmits a request that causes
server 138 to send a document to the rendering device, where the request
and document operate as command.” Pet. 78 (citing Ex. 1005, 11:1–14,
11:33–53, 11:42–46, Fig. 8).
Petitioner further contends Eldridge teaches that the command is
received over a local wireless network. Id. (citing Ex. 1005, 3:38–50, 3:32–
37). According to Petitioner, “Eldridge’s intranet 116 bridged to the mobile
communications devices 118 via the IR gateway 114 and RF gateway 120
teaches a local ‘wireless network’” over which the request from the wireless
device is transmitted. Id. As discussed above, Petitioner relies on
Thomason as teaching a video-enabled DRD. Id. at 78, 79. Petitioner
therefore argues that claim 18 also would have been obvious in view of
Eldridge and Thomason. Id. at 79, 80 (citing Ex. 1008 ¶¶ 203–210).
Patent Owner does not present separate arguments as to dependent
claim 18. See generally PO Resp. We adopt as our own Petitioner’s
argument and cited evidence showing that the combination of Eldridge and
Thomason teaches the additional limitation in claim 18. Based on the
entirety of the record, Petitioner has shown by a preponderance of the
evidence that claim 18 is unpatentable as obvious over the combination of
Eldridge and Thomason.
F. Asserted Obviousness of Claims 5 and 6 in view of Eldridge,
Thomason, and Kim
Petitioner asserts that dependent claims 5 and 6 are unpatentable
under 35 U.S.C. § 103 as obvious in view of Eldridge, Thomason, and Kim.
Pet. 80–84 (citing Ex. 1008 ¶¶ 211–229).
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Claim 5 depends from claim 1 and recites “wherein said video data is
provided to said video-enabled DRD for rendering and display on said at
least one of a video monitor and multimedia projector directly from said
WD.” Ex. 1001, 13:32–36. As discussed above, Petitioner has shown that
the combination of Eldridge and Thomason teaches rendering video data on
a video monitor. See Pet. 82. Further, Petitioner persuasively argues that
Kim teaches providing video data directly from a wireless device to a video-
enabled DRD. Id. at 83 (citing Ex. 1007, Abstract, 2:3–9, 3:66–4:26).
Accordingly, we are persuaded that the combination of Eldridge, Thomason
and Kim teaches the additional limitation recited in claim 5. See id. (citing
Ex. 1008 ¶¶ 211, 217–225).
Claim 6 depends from dependent claim 5 and recites “wherein said
video data is rendered by said video-enabled DRD on said at least one of a
video monitor and multimedia projector after said render command is
provided by said WD to said video-enabled DRD.” Ex. 1001, 13:37–42.
Petitioner argues that Eldridge teaches that “the document in a print ready
format, sent at the request of the device 118, teaches a render command,”
and “[b]ased on the modification in view of Thomason, the render command
sent to Eldridge’s printer would result in the render command being sent to a
video monitor.” Pet. 84 (citing Ex. 1005, 7:31–35, 11:33–53). Accordingly,
Petitioner persuasively argues that the additional limitation recited in claim 6
is obvious over Eldridge and Thomason. Id. (citing Ex. 1008 ¶¶ 226-229).
We also agree with Petitioner that a person of ordinary skill in the art
would have been motivated to combine Eldridge, Thomason, and Kim as
proposed. Pet. 80–82. In particular, Dr. Houh testifies that Kim teaches an
Internet-connected cellular phone that includes a video recording device and
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memory to store the recorded video, and that a person of ordinary skill in the
art would have been motivated to modify the Eldridge and Thomas
combination using the teachings of Kim such that Eldridge’s wireless
devices would include the ability to record video, store it to memory, and
then transmit that data directly to a personal computer for viewing. Ex. 1008
¶¶ 213–217 (citing Ex. 1005, 8:25–37; Ex. 1007, 2:3–9, 4:3–10, 1:19–29,
3:66–4:26). Dr. Houh further testifies that a person of ordinary skill in the
art would have had an expectation of success because those modifications to
the Eldridge and Thomas combination could have been made using
commercially-available devices connected over the Internet. Id. ¶ 217.
We find Dr. Houh’s testimony to be well-reasoned and credible, and
we perceive no persuasive evidence that contradicts that testimony. Further,
Petitioner’s rationale for combining the teachings of Kim with the teachings
of Eldridge and Thomason is consistent with and supported by the cited
evidence. Patent Owner does not present any contrary arguments. We adopt
as our own Petitioner’s argument and cited evidence as to the obviousness of
claims 5 and 6. Based on the entirety of the record, we are persuaded
Petitioner has shown by a preponderance of the evidence that claims 5 and 6
would have been obvious over Eldridge, Thomason, and Kim.
III. CONCLUSION
For the reasons set forth above, we determine that Petitioner has
established by a preponderance of the evidence that claims 1–6, 8, 9, 16, and
18 of the ’914 patent are unpatentable.17

17 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
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In summary:

IV. ORDER
Accordingly, it is
ORDERED that claims 1–6, 8, 9, 16, and 18 of U.S. Patent
No. 8,971,914 B2 have been shown to be unpatentable; and
FURTHER ORDERED, that because this is a final written decision of
the Board under 35 U.S.C. § 318(a), any party to this proceeding seeking
judicial review of our decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–4, 8, 9,
16, 18
103 Eldridge,
Thomason
1–4, 8, 9, 16,
18

5, 6 103 Eldridge,
Thomason, Kim
5, 6
Overall
Outcome
1–6, 8, 9, 16,
18

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FOR PETITIONER:
Alyssa J. Holtslander
Jonathan R. Stroud
UNIFIED PATENTS INC.
alyssa@unifedpatents.com
jonathan@unifiedpatents.com

David M. O’Dell
David L. McCombs
Thomas Kelton
HAYNES & BOONE, LLP
david.odell.ipr@haynesboone.com
david.mccombs.ipr@haynesboone.com
thomas.kelton.ipr@haynesboone.com

FOR PATENT OWNER:
Alistair Chan
ALISTAIR CHAN IP LLC
ac@achanip.legal

Matthew M. Wawrzyn
WAWRZYN LLC
matt@wawrzynlaw.com