throbber
Petitioner Oral Hearing Demonstratives
`
`Apple Inc. and LG Electronics Inc. (Petitioners)
`v.
`Uniloc 2017 LLC (Patent Owner)
`
`Case No. IPR2019-00251
`U.S. Patent No. 6,993,049
`
`Before Hon. Sally C. Medley, Jeffrey S. Smith, and Garth D. Baer
`Administrative Patent Judges
`
`1
`
`1
`
`APPLE 1042
`Apple et al. v. Uniloc
`IPR2019-00251
`
`

`

`3478
`
`Table of Contents
`
`I. Background __________________________________________________
`A. Overview Of The ’049 Patent __________________________________
`B. Independent Claim __________________________________________
`Instituted Grounds ____________________________________________
`II.
`III. Claim Construction ___________________________________________
`A. “additional data field” ________________________________________
`B. “broadcasting”______________________________________________
`C. “inquiry message”___________________________________________
`IV. Invalidity Grounds: Claims 11 and 12 are obvious___________________
`A. Uniloc’s Ground 1 argument: Larsson fails to disclose adding an additional data field to an
`inquiry message ________________________________________________________________
`A. Uniloc’s Ground 2 argument: BT Core fails to disclose a POLL packet __________________
`B. Uniloc’s Ground 3 argument: IrOBEX does not disclose broadcasting ___________________
`V. IrOBEX and BT Core were publicly available, valid prior art references__
`
`10
`12
`19
`23
`30
`
`33
`44
`48
`55
`
`2
`
`2
`
`

`

`Background
`
`Background
`
`FISH.
`
`3
`
`3
`
`

`

`Overview of the ’049 Patent
`
`• U.S. Patent No. 6,993,049 (the “’049
`Patent” or “Ex. 1001”) has an
`earliest priority claim to GB patent
`application 0015454 filed June 26,
`2000.
`
`• Challenged Claims
`•
`Independent method claim 11
`• Dependent claim 12
`
`Ex. 1001, Face, 7:29-8:50;
`Pet. (Paper 2), 2
`
`Ex. 1001 (’049 Patent): Face
`
`4
`
`4
`
`

`

`Background/Problem
`
`’049 Patent
`
`Knutson Dec.
`
`Ex. 1001, 1:3-7; Pet. 3-4
`
`Ex. 1001, 1:27-49
`
`Ex. 1003, ¶ [32]; Pet. 3-4
`
`5
`
`5
`
`

`

`Purported Improvement
`
`’049 Patent
`
`Ex. 1001: 2:18-35; Pet., 4
`
`Ex. 1001, 2:18-35; Pet. 4
`
`
`
`Ex. 1001, 4:11-20; Pet. 4E 1001 4 11 20 P t 4
`
`Ex.1001, FIG. 5; Pet. 5
`
`6
`
`6
`
`

`

`Independent Claim 11
`
`’049 Patent
`
`Ex. 1001, 8:35-47
`
`7
`
`7
`
`

`

`Instituted Grounds
`
`Instituted Grounds
`
`FISH.
`
`8
`
`8
`
`

`

`Three Instituted Obviousness Grounds
`
`Institution Decision (Inst. Dec. or Paper 7), 4
`
`9
`
`9
`
`

`

`Claim Construction
`
`Claim Construction
`
`FISH.
`
`10
`
`10
`
`

`

`Claim Construction
`
`• Three Disputed Terms
`
`•
`
`•
`
`•
`
`“additional data field”
`
`“broadcasting”
`
`“inquiry message”
`
`• Claims in this proceeding are to be construed under the
`Broadest Reasonable Interpretation standard
`
`11
`
`11
`
`

`

`Claim Construction
`
`• Three Disputed Terms
`
`•
`
`•
`
`•
`
`“additional data field”
`
`“broadcasting”
`
`“inquiry message”
`
`12
`
`12
`
`

`

`“additional data field”
`
`Construction
`
`Pre-Institution
`
`Post-Institution
`
`“an extra data field appended to an
`inquiry message”*
`
`“an extra data field appended to the
`end of an inquiry message”**
`
`Party
`
`Patent
`Owner
`
`Petitioner
`
`N/A
`
`Ordinary meaning***
`
`PTAB
`
`Declined to adopt construction****
`
`*Patent Owner Preliminary Response (POPR or Paper 6), 8;
`**Patent Owner Response (POR or Paper 11), 15;
`***Petitioner Reply (Pet. Reply or Paper 12), 5;
`****Institution Decision (Inst. Dec. or Paper 7), 5
`
`13
`
`13
`
`

`

`“additional data field”
`
`PO
`Argues:
`
`“The ’049 patent repeatedly and consistently characterizes the term ‘additional data field’ to
`be ‘an extra data field appended to the end of an inquiry message.” (POR, 13, POSR, 6)
`Petition
`Larsson
`
`POR
`
`’049 Patent
`
`POR, 13
`
`POR, 14
`
`Ex. 1001, 4:59-62
`E 1001 4 59 62
`
`
`
`Ex. 1001, 5:6-9E 1001 5 6 9
`
`14
`
`14
`
`

`

`“additional data field”
`
`Rebuttal
`“The ’049 patent repeatedly and consistently characterizes the term ‘additional data field’ to
`be ‘an extra data field appended to the end of an inquiry message.” (POR, 13, POSR, 6)
`Petition
`Larsson
`to:
`Inclusion of “to the end of an inquiry message” in the construction is not mandated by ’049 Patent and is a
`blatant attempt to import limitations from the specification into the claims. (Pet. Reply, 2-3)
`’049 Patent
`
`
`
`Ex. 1001, Abstract; POR, 22 E 1001 Ab t t POR 22
`
`
`
`Not a single recitation mandates the
`additional data field to be at the end of
`the inquiry message. UNILOC’s
`construction imports limitations into the
`claims. Placement at the end of an
`inquiry message is merely an example.
`(Pet. Reply, 3)
`
`Ex. 1001, 3:5-7
`
`
`
`Ex. 1001, 4:59-62E 1001 4 59 62
`
`E 1001 5 6 9
`Ex. 1001, 5:6-9
`
`15
`
`15
`
`

`

`“additional data field”
`
`Rebuttal
`“The ’049 patent repeatedly and consistently characterizes the term ‘additional data field’ to
`be ‘an extra data field appended to the end of an inquiry message.” (POR, 13, POSR, 6)
`Petition
`Larsson
`to:
`UNILOC’s construction is inconsistent with the ordinary meaning of “additional” and with its own construction
`in related litigation proceedings. (Pet. Reply, 4-5)
`
`Concise Oxford Dictionary
`
`Ex. 1021, 16; Pet. Reply, 4
`
`UNILOC ’049 Infringement Contentions
`
`The ordinary meaning of
`additional does not specify
`location (i.e., at the end). (Pet.
`Reply, 4)
`
`With its modified POR
`construction, Patent Owner
`contradicts its own interpretation
`of “additional” in related litigation
`by contending that the PDU
`payload is the additional data
`field in FIG. 3.5. (Pet. Reply, 5)
`
`
`
`Ex. 1022, 10; Pet. Reply, 5 E 1022 10 P t R l
`
`16
`
`16
`
`

`

`“additional data field”
`
`Rebuttal
`“The ’049 patent repeatedly and consistently characterizes the term ‘additional data field’ to
`be ‘an extra data field appended to the end of an inquiry message.” (POR, 13, POSR, 6)
`Petition
`Larsson
`to:
`The Doctrine of Claim Differentiation indicates that an “additional data field” does not require adding a data
`field “to the end of an inquiry message.” (Pet. Reply, 3-4)
`’049 Patent
`
`E 1001 7 29 41
`Ex. 1001, 7:29-41
`
`Ex. 1001, 7:50-52
`
`17
`
`17
`
`

`

`“additional data field”
`
`Rebuttal
`As in Inpro II, a construction that would ignore necessary functionality because of application
`of the doctrine of claim differentiation is improper. (POSR, 9)
`Petition
`Larsson
`to:
`Patent Owner misunderstands and incorrectly applies Inpro II (which has been distinguished in subsequent
`case law). Patent Owner also incorrectly characterizes the intrinsic evidence. See POSR, 7-9.
`Patent Owner Sur-Reply (POSR)
`
`Pet. Reply
`
`POSR (Paper 13), 8
`
`Dependent Claim in Inpro II
`
`Pet. Reply, 1
`
`See also GE LIGHTING SOLUTIONS LLC v. AGILIGHT INC., No.
`2013–1267, (Fed. Cir., May 2014).
`18
`
`18
`
`

`

`Claim Construction
`
`• Three Disputed Terms
`
`•
`
`•
`
`•
`
`“additional data field”
`
`“broadcasting”
`
`“inquiry message”
`
`19
`
`19
`
`

`

`“broadcasting”
`
`Construction
`
`Pre-Institution
`
`“one message that is distributed to all
`stations”*
`
`Post-Institution
`“a transmission that is receivable by
`multiple recipients”**
`
`Party
`
`Patent
`Owner
`
`Petitioner
`
`N/A
`
`Ordinary meaning
`or
`Board’s construction (if construction is
`needed)***
`
`PTAB
`
`“one message that is distributed to all
`stations” (adopting PO’s proposed
`construction in its POPR)****
`
`*POPR, 11; **POR, 17; ***Pet. Reply, 6, 9; ****Inst. Dec., 5
`
`20
`
`20
`
`

`

`“broadcasting”
`
`Rebuttal
`The Board’s “overbroad interpretation cannot be squared with the intrinsic evidence and the
`plain and ordinary meaning of broadcasting.” (POR, 16)
`Petition
`Larsson
`to:
`The Board’s construction is based on the plain and ordinary meaning of broadcasting, which is the same as
`Uniloc’s initial construction. (Pet. Reply, 9, Inst. Dec., 5)
`Microsoft Computer Dictionary
`
`Ex. 2001, 5; POPR, 11; POR, 15
`Ordinary meaning of broadcast
`
`Pet. Reply
`
`POPR
`
`Pet. Reply, 9
`
`POPR, 11
`
`21
`
`21
`
`

`

`“broadcasting”
`
`Rebuttal
`The Board’s “overbroad interpretation cannot be squared with the intrinsic evidence and the
`plain and ordinary meaning of broadcasting.” (POR, 16)
`Petition
`Larsson
`to:
`Uniloc’s modified construction is inconsistent with the ’049 Patent. (Pet. Reply, 6-7)
`’049 Patent
`
`Ex. 1001, 8:34-47; Pet. Reply, 6-7
`The claims and patent specification clearly
`disclose implementations with a single
`recipient of a broadcast message in a
`point-to-point network. (Pet. Reply, 6-7)
`
`Pet. Reply, 8; Ex. 1001, FIG. 1
`
`Ex. 1001, 3:48-52; Pet. Reply, 7-8
`
`22
`
`22
`
`

`

`Claim Construction
`
`• Three Disputed Terms
`
`•
`
`•
`
`•
`
`“additional data field”
`
`“broadcasting”
`
`“inquiry message”
`
`23
`
`23
`
`

`

`“inquiry message”
`
`Party
`
`Patent
`Owner
`
`Construction
`
`Pre-Institution
`
`Post-Institution
`
`No construction necessary*
`
`“a specific type of message used, at
`least in part, to discover other devices
`in the vicinity which may request to join
`a piconet” (not explicitly offered as a
`construction)**
`
`Petitioner
`
`“a message seeking information or
`knowledge”***
`
`“a message seeking information or
`knowledge”****
`
`PTAB
`
`Declined to adopt construction*****
`
`*POPR, 11, 12; **POR, 18;
`***Pet., 7; ****Pet. Reply, 9-12;
`*****Inst. Dec., 4-5
`
`24
`
`24
`
`

`

`“inquiry message”
`
`Rebuttal
`“Petitioner mischaracterizes the record, by claiming that Patent Owner suggested a specific
`claim construction for ‘inquiry message.’” (POSR, 15)
`Petition
`Larsson
`to:
`UNILOC’s statements and arguments rely on a specific construction of “inquiry message,” which UNILOC
`uses to distinguish Larsson’s message from an inquiry message. In doing so, UNILOC relied on an implied
`construction of “inquiry message.” (Pet. Reply, 9, 13)
`
`POR
`
`POR, 18
`
`POR, 20
`
`25
`
`25
`
`

`

`“inquiry message”
`
`Rebuttal
`Patent Owner contends that Petitioner’s construction is unreasonably broad and untethered
`to intrinsic evidence. (POR, 17-18)
`Petition
`Larsson
`to:
`On the contrary, Petitioner’s construction is firmly rooted in the intrinsic evidence. The 049 itself suggests that
`an inquiry message is not limited to Bluetooth piconets (which is required in Patent Owner’s construction).
`(Pet. Reply, 10-11)
`
`’049 Pat.
`
`Ex. 1001, 4:11-16, Pet. 8
`
`Ex.1001, 3:24-29; Pet. 10
`
`Ex.1001, 8:5-6
`
`26
`
`26
`
`

`

`“inquiry message”
`
`Rebuttal
`Patent Owner contends that Petitioner’s construction is unreasonably broad and untethered
`to intrinsic evidence. (POR, 17-18)
`Petition
`Larsson
`to:
`The Board previously construed inquiry message in a related patent (USPN 7,587,207) as a message
`seeking information or knowledge. (Pet., 9-11; Pet. Reply, 10)
`
`Related Prosecution History from ’207 Patent
`
`Ex. 1007 (207 Patent, Board Appeal Decision), 41;
`Pet. 9-11; Pet. Reply, 10
`
`Ex. 1007 (207 Patent, Board Appeal Decision), 44;
`Pet. 9-11; Pet. Reply, 10
`
`27
`
`27
`
`

`

`“inquiry message”
`
`Rebuttal
`Patent Owner contends that Petitioner’s construction is unreasonably broad and untethered
`to intrinsic evidence. (POR, 17-18)
`Petition
`Larsson
`to:
`Additional secondary evidence also supports Petitioner’s construction. (Pet., 8-11, 18-20; Pet. Reply, 9-14)
`
`BT Core
`
`McGraw Hill Dictionary
`of Elec. & Comp. Eng.
`
`Ex. 1014, 108
`
`BT Core discloses that inquiry procedures may seek to
`discover devices or may seek device addresses. (Pet. Reply,
`12-14)
`
`Ex. 1023, 300, 365; Pet. Reply, 10
`
`28
`
`28
`
`

`

`“inquiry message”
`
`Patent Owner’s construction fails because it improperly imports limitations into the claims. (Pet. Reply, 11-12)
`Knutson Dec.
`
`Ex. 1035, ¶ [21]
`
`Ex. 1035, ¶ [23]
`
`29
`
`29
`
`

`

`GROUNDS
`
`Claims 11 and 12 are Obvious
`
`30
`
`30
`
`

`

`Instituted 35 U.S.C. § 103 Grounds
`
`Pet., 2
`
`31
`
`31
`
`

`

`UNILOC Arguments
`
`Ground 1: 35 USC 103 in view of Larsson
`Larsson does not add to an inquiry message an additional data
`field because:
`1 – Larsson’s request for route message is not an inquiry message.
`2 – Larsson’s piggybacked broadcast message is not an
`additional data field added to the request for route message.
`
`Ground 2: 35 USC 103 in view of Larsson and BT Core
`1 – Petitioner mischaracterizes BT Core in describing a POLL packet
`as being broadcast from the master to slave devices in a piconet.
`2 – Petitioner does not explain how BT Core’s poll packet without a
`payload can be incorporated into Larsson.
`
`Ground 3: 35 USC 103 in view of IrOBEX
`1 – IrOBEX does not disclose broadcasting.
`
`32
`
`32
`
`

`

`UNILOC Arguments
`
`Ground 1: 35 USC 103 in view of Larsson
`Larsson does not add to an inquiry message an additional data
`field because:
`1 – Larsson’s request for route message is not an inquiry message.
`2 – Larsson’s piggybacked broadcast message is not an
`additional data field added to the request for route message.
`
`Ground 2: 35 USC 103 in view of Larsson and BT Core
`1 – Petitioner mischaracterizes BT Core in describing a POLL packet
`as being broadcast from the master to slave devices in a piconet.
`2 – Petitioner does not explain how BT Core’s poll packet without a
`payload can be incorporated into Larsson.
`
`Ground 3: 35 USC 103 in view of IrOBEX
`1 – IrOBEX does not disclose broadcasting.
`
`33
`
`33
`
`

`

`Claim 11 – Disputed Limitation
`
`’049 Patent
`
`Ex. 1001: 8:35-47
`
`34
`
`34
`
`

`

`Overview of Larsson
`
`Larsson
`
`Ex. 1005 (Larsson), 5:35-50; Pet., 16
`
`Ex. 1005 (Larsson), portion of FIG. 6A;
`Pet., 13; Ex.1003, ¶¶ [49]-[50]
`
`Ex. 1005 (Larsson), 6:3-11; Pet., 13
`
`35
`
`35
`
`

`

`UNILOC Arguments
`
`Ground 1: 35 USC 103 in view of Larsson
`Larsson does not add to an inquiry message an additional data
`field because:
`1 – Larsson’s request for route message is not an inquiry message.
`2 – Larsson’s piggybacked broadcast message is not an
`additional data field added to the request for route message.
`
`Ground 2: 35 USC 103 in view of Larsson and BT Core
`1 – Petitioner mischaracterizes BT Core in describing a POLL packet
`as being broadcast from the master to slave devices in a piconet.
`2 – Petitioner does not explain how BT Core’s poll packet without a
`payload can be incorporated into Larsson.
`
`Ground 3: 35 USC 103 in view of IrOBEX
`1 – IrOBEX does not disclose broadcasting.
`
`36
`
`36
`
`

`

`Larsson’s broadcast message for route discovery is an
`inquiry message
`Rebuttal
`Larsson’s request for route discovery message is not an inquiry message
`Petition
`Larsson
`to:
`because it is not directed to device discovery. (POR, 19-20)
`Patent Owner’s argument relies on the assumption that its proposed construction of “inquiry message” is
`correct, which it is not. The ’049 Patent recognizes the use of this invention beyond the Bluetooth protocol,
`so inquiry messages cannot be limited by the Bluetooth protocol. (Pet. Reply, 13)
`
`Patent Owner’s argument relies on its overly narrow construction that limits an
`inquiry message to device discovery and a Bluetooth piconet.
`
`’049 Patent
`
`Ex.1001, 1:6-8
`
`Ex.1001, 3:24-29
`
`37
`
`37
`
`

`

`Larsson’s broadcast message for route discovery is an
`inquiry message
`Rebuttal
`Larsson’s request for route discovery message is not an inquiry message
`Petition
`Larsson
`to:
`because it is not directed to device discovery. (POR, 19-20)
`Patent Owner’s arguments rely on erroneous claim construction positions and an incorrect understanding that
`the Bluetooth inquiry protocol is limited to device discovery. (Pet. Reply, 12-14)
`
`Knutson Dec.
`
`BT Core
`
`Ex. 1014, 108
`
`Ex.1035, ¶ 35
`
`As explained in earlier slides, inquiry messages are not
`limited to Bluetooth networks or device discovery according to
`Bluetooth protocols. And even if they were limited to
`Bluetooth, BT Core discloses that inquiry procedures may
`seek to discover devices or may seek device addresses.
`(Pet. Reply, 12-14)
`
`38
`
`38
`
`

`

`UNILOC Arguments
`
`Ground 1: 35 USC 103 in view of Larsson
`Larsson does not add to an inquiry message an additional data
`field because:
`1 – Larsson’s request for route message is not an inquiry message.
`2 – Larsson’s piggybacked broadcast message is not an
`additional data field added to the request for route message.
`
`Ground 2: 35 USC 103 in view of Larsson and BT Core
`1 – Petitioner mischaracterizes BT Core in describing a POLL packet
`as being broadcast from the master to slave devices in a piconet.
`2 – Petitioner does not explain how BT Core’s poll packet without a
`payload can be incorporated into Larsson.
`
`Ground 3: 35 USC 103 in view of IrOBEX
`1 – IrOBEX does not disclose broadcasting.
`
`39
`
`39
`
`

`

`Larsson discloses adding an additional data field to an
`inquiry message
`Rebuttal
`Larsson’s “piggybacked broadcast message is [not] the additional data field
`Petition
`Larsson
`to:
`added to the request for route message (inquiry message).” (POR, 20-23, POSR, 18-21)
`Patent Owner’s argument relies on the assumption that its proposed construction of “additional data field” is
`correct, which it is not. The ’049 Patent does not limit the additional data field to being added to the end of an
`inquiry message. (Pet. Reply, 14-17)
`
`Patent Owner’s argument relies on its overly narrow construction that limits the
`addition of the additional data field to the end of an inquiry message.
`
`’049 Patent
`
`Ex. 1001, 3:5-7
`
`Ex. 1001, 4:59-62
`
`40
`
`40
`
`

`

`Larsson discloses adding an additional data field to an
`inquiry message
`Rebuttal
`Larsson’s “piggybacked broadcast message is [not] the additional data field
`Petition
`Larsson
`to:
`added to the request for route message (inquiry message).” (POR, 20-23, POSR, 18-21)
`Larsson’s disclosure of piggybacking a broadcast message in a request for route message involves adding
`new data fields to the request for route message, like the ’049 Patent. (Pet. Reply, 14-17)
`BT Core
`
`Larsson
`
`Ex. 1005, 5:45-47, 60-65 ; Pet. Reply 15
`
`Ex. 1005, 6:3-8; Pet. Reply 15
`
`Ex. 1014, 47; Pet. Reply, 15
`
`A Bluetooth packet (shown above) includes predetermined
`data fields. Larsson discloses piggybacking one message
`onto another just like the ’049 Patent does. The piggybacking
`adds an additional data field to predetermined data fields.
`(Pet. Reply, 14-17)
`’049 Pat.
`
`Ex. 1001, 4:15-20;
`FIG. 5; Pet. Reply, 17
`
`41
`
`41
`
`

`

`Larsson discloses adding an additional data field to an
`inquiry message
`Rebuttal
`Larsson’s “piggybacked broadcast message is [not] the additional data field
`Petition
`Larsson
`to:
`added to the request for route message (inquiry message).” (POR, 20-23, POSR, 18-21)
`Larsson’s disclosure of piggybacking a broadcast message in a request for route message involves adding a
`new data field to the request for route message, like the ’049 Patent. (Pet. Reply, 14-17)
`
`Larsson
`
`Knutson Dec.
`
`Ex. 1005, 7:48-61
`
`Ex. 1035, ¶ [34]; Pet. Reply, 16-17
`
`42
`
`42
`
`

`

`Larsson discloses adding an additional data field to an
`inquiry message
`Rebuttal
`Larsson’s “piggybacked broadcast message is [not] the additional data field
`Petition
`Larsson
`to:
`added to the request for route message (inquiry message).” (POR, 20-23), POSR, 18-21)
`Petitioners moved to strike the improper inclusion of evidence in the sur-reply on page 19-20 related to the
`inclusion of a new argument that piggybacking involves addition of a message to an already existing data
`field. Paper 16, 2 (referencing Petitioner’s counsel’s email dated March 3, 2020, with request to submit a
`motion to strike).
`
`POSR
`
`IMPROPER INCLUSION OF EVIDENCE
`
`POSR, 19-20
`
`43
`
`43
`
`

`

`UNILOC Arguments
`
`Ground 1: 35 USC 103 in view of Larsson
`Larsson does not add to an inquiry message an additional data
`field because:
`1 – Larsson’s request for route message is not an inquiry message.
`2 – Larsson’s piggybacked broadcast message is not an
`additional data field added to the request for route message.
`
`Ground 2: 35 USC 103 in view of Larsson and BT Core
`1 – Petitioner mischaracterizes BT Core in describing a POLL packet
`as being broadcast from the master to slave devices in a piconet.
`2 – Petitioner does not explain how BT Core’s poll packet without a
`payload can be incorporated into Larsson.
`
`Ground 3: 35 USC 103 in view of IrOBEX
`1 – IrOBEX does not disclose broadcasting.
`
`44
`
`44
`
`

`

`Larsson and BT Core render claim 11 obvious
`Rebuttal
`Petitioner mischaracterizes BT Core in describing a POLL packet as being
`Petition
`Larsson
`to:
`broadcast from the master to slave devices in a piconet. (POR, 24)
`Petitioner correctly described the poll packet as being broadcast from the master to the slave. (Pet. Reply, 17-20)
`
`BT Core
`
`Ex. 1014, 55; Pet., 34
`
`BT Core clearly teaches that a slave responds to the
`POLL packet received from the master device. (Pet.
`Reply, 18-19)
`
`45
`
`45
`
`

`

`Larsson and BT Core render claim 11 obvious
`Rebuttal
`to:
`Petitioner described how a poll packet would be disclosed in Larsson-BT Core. (Pet. Reply, 17-20)
`Pet. Reply
`
`Petitioner does not explain how BT Core’s poll packet without a payload can be
`Petition
`Larsson
`incorporated into Larsson. (POR, 24)
`
`Knutson Dec.
`
`Payload and
`Access Code are
`different fields
`
`BT Core
`
`Pet. Reply, 20
`
`Ex. 1035, ¶ [31]; Pet. Reply, 16-20
`
`Ex. 1014, 47; Pet. 38; Pet. Reply, 15
`
`Ex. 1035, ¶ [32]; Pet. Reply, 16-20
`46
`
`46
`
`

`

`Larsson and BT Core render claim 11 obvious
`Rebuttal
`to:
`Petitioner described how a poll packet would be incorporated in Larsson-BT Core. (Pet. Reply, 17-20)
`
`Petitioner does not explain how BT Core’s poll packet without a payload can be
`Petition
`Larsson
`incorporated into Larsson. (POR, 24)
`
`Larsson
`
`Knutson Dec.
`
`Ex. 1005, 7:48-61
`
`Ex. 1035, ¶ [34]; Pet. Reply, 16-17
`
`47
`
`47
`
`

`

`UNILOC Arguments
`
`Ground 1: 35 USC 103 in view of Larsson
`Larsson does not add to an inquiry message an additional data
`field because:
`1 – Larsson’s request for route message is not an inquiry message.
`2 – Larsson’s piggybacked broadcast message is not an
`additional data field added to the request for route message.
`
`Ground 2: 35 USC 103 in view of Larsson and BT Core
`1 – Petitioner mischaracterizes BT Core in describing a POLL packet
`as being broadcast from the master to slave devices in a piconet.
`2 – Petitioner does not explain how BT Core’s poll packet without a
`payload can be incorporated into Larsson.
`
`Ground 3: 35 USC 103 in view of IrOBEX
`1 – IrOBEX does not disclose broadcasting.
`
`48
`
`48
`
`

`

`’049 Independent Claim 11
`
`’049 Patent
`
`Ex. 1001: 8:35-47
`
`49
`
`49
`
`

`

`Overview of IrOBEX
`
`IrOBEX
`
`Ex. 1006 (IrOBEX), 9; Pet., 42
`
`Ex. 1006, 11; Pet., 44-45
`
`Ex. 1006, 23; Pet., 44
`
`Optional bytes
`
`50
`
`50
`
`

`

`UNILOC Arguments
`
`Ground 1: 35 USC 103 in view of Larsson
`Larsson does not add to an inquiry message an additional data
`field because:
`1 – Larsson’s request for route message is not an inquiry message.
`2 – Larsson’s piggybacked broadcast message is not an
`additional data field added to the request for route message.
`
`Ground 2: 35 USC 103 in view of Larsson and BT Core
`1 – Petitioner mischaracterizes BT Core in describing a POLL packet
`as being broadcast from the master to slave devices in a piconet.
`2 – Petitioner does not explain how BT Core’s poll packet without a
`payload can be incorporated into Larsson.
`
`Ground 3: 35 USC 103 in view of IrOBEX
`1 – IrOBEX does not disclose broadcasting.
`
`51
`
`51
`
`

`

`IrOBEX renders claim 11 obvious
`
`Rebuttal
`IrOBEX is directed to point-to-point communications between two entities and
`Petition
`Larsson
`to:
`does not disclose a primary station broadcasting inquiry messages. (POR, 25-27)
`Patent Owner relies on an incorrect construction of “broadcasting” to argue that IrOBEX does not disclose
`broadcasting inquiry messages. (Pet. Reply, 20)
`
`Patent Owner’s argument relies on its changed (and incorrect) construction that limits broadcasting to a
`transmission that is receivable by multiple recipients. (Pet. Reply, 6-9, 20-23; Ex. 1035, ¶¶ [9]-[10])
`
`POR
`
`Pet. Reply
`
`POR, 27
`
`Pet. Reply, 20
`
`52
`
`52
`
`

`

`IrOBEX renders claim 11 obvious
`
`Rebuttal
`IrOBEX is directed to point-to-point communications between two entities and
`Petition
`Larsson
`to:
`does not disclose a primary station broadcasting inquiry messages. (POR, 25-27)
`Even under Patent Owner’s construction, IrOBEX teaches transmitting inquiry messages receivable by
`multiple recipients. (Pet. Reply, 21-23)
`
`IrOBEX
`
`Ex. 1006, 12 ; Pet. Reply, 21
`
`Ex. 1006, 18 ; Pet. Reply, 21
`
`Ex. 1006, 24 ; Pet. Reply, 21
`
`53
`
`53
`
`

`

`IrOBEX renders claim 11 obvious
`
`Rebuttal
`IrOBEX is directed to point-to-point communications between two entities and
`Petition
`Larsson
`to:
`does not disclose a primary station broadcasting inquiry messages. (POR, 25-27)
`Even under Patent Owner’s construction, IrOBEX teaches transmitting inquiry messages receivable by
`multiple recipients. (Pet. Reply, 21-23)
`
`Ex. 1041
`
`Ex. 1041, 14; Pet. Reply, 21
`
`54
`
`54
`
`

`

`PRIOR ART STATUS
`
`IrOBEX and BT Core are valid prior art
`references that were publicly available
`
`55
`
`55
`
`

`

`Petitioners’ evidence is sufficient to establish IrOBEX as
`prior art
`Rebuttal
`Petitioner fails to provide evidence that IrOBEX is prior art. (POR, 1-10, POSR, 1-5)
`Petition
`Larsson
`to:
`Throughout the course of the proceedings, Petitioner has submitted numerous declarations and references
`that establish IrOBEX as valid prior art. (Pet., ii, 2; Pet. Reply, ii-iv, 25-27)
`Declarations supporting public availability of IrOBEX
`
`Exs. 1008 and 1034 also
`include additional appendices
`with evidence.
`
`P t R l
`ii
`i 25 27 P t 2
`Pet. Reply, ii, iv, 25, 27; Pet., 2
`Additional Evidence that corroborates and demonstrates public availability of IrOBEX
`
`Pet. Reply, iii-iv, 21, 26; Ex. 1035, ¶ [44]; Ex. 1034, ¶¶ [2], [6]
`
`56
`
`56
`
`

`

`Petitioners’ evidence is sufficient to establish IrOBEX as
`prior art
`Rebuttal
`Petitioner fails to provide evidence that IrOBEX is prior art. (POR, 1-10, POSR, 1-5)
`Petition
`Larsson
`to:
`The declarations include evidence of those personally involved in the publication of IrOBEX. (Pet., 2-3; Pet.
`Reply, 24, 27)
`
`Knutson Dec.
`
`Faulkner Dec.
`
`Ex. 1008, ¶¶ [2]-[3]
`
`Ex. 1034, ¶¶ [2], [5], [10]; Pet. Reply, 27
`
`57
`
`57
`
`

`

`Petitioners’ evidence is sufficient to establish IrOBEX as
`prior art
`Rebuttal
`Petitioner fails to provide evidence that IrOBEX is prior art. (POR, 1-10, POSR, 1-5)
`Petition
`Larsson
`to:
`The Knutson declaration includes evidence of IrOBEX’s public availability. (Pet., 2-3)
`
`Knutson Dec.
`
`Ex. 1008, App. 10FF; Ex. 1008, ¶ [10]
`
`Ex. 1008, ¶ [11]
`
`
`
`Ex. 1008, ¶ [13]E 1008 ¶ [13]
`
`
`
`5858
`
`58
`
`

`

`Petitioners’ evidence is sufficient to establish IrOBEX as
`prior art
`Rebuttal
`Petitioner fails to provide evidence that IrOBEX is prior art. (POR, 1-10, POSR, 1-5)
`Petition
`Larsson
`to:
`The Knutson declaration includes evidence of IrOBEX’s public availability. (Pet., 2-3)
`
`Knutson Dec. (Ex. 1008, ¶¶ [8], [9])
`
`Ex. 1008, App. 10AA
`
`Ex. 1008, App. 10CC
`
`Ex. 1008, App. 10EE
`
`59
`
`59
`
`

`

`Petitioners’ evidence is sufficient to establish IrOBEX as
`prior art
`Rebuttal
`Petitioner fails to provide evidence that IrOBEX is prior art. (POR, 1-10, POSR, 1-5)
`Petition
`Larsson
`to:
`The Knutson declaration includes evidence of IrOBEX’s public availability. (Pet., 2-3)
`
`Knutson Dec.
`
`USPN 6,600,902
`(Filed Oct 22, 1999)
`
`USPN 6,882,659
`(Filed May 10, 2000)
`
`Ex. 1008, APP. 10KK
`
`Ex. 1008, APP. 10JJ
`
`60
`
`60
`
`

`

`Petitioners’ evidence is sufficient to establish IrOBEX as
`prior art
`Rebuttal
`Petitioner fails to provide evidence that IrOBEX is prior art. (POR, 1-10, POSR, 1-5)
`Petition
`Larsson
`to:
`Petitioner has submitted numerous references that establish IROBEX as valid prior art. (Pet. Reply, 26)
`
`USPN 6,922,548
`(Filed April 24, 2000)
`
`USPN 6,779,185
`(Filed June 5, 2000)
`
`Ex. 1027, 1:50-55; Pet. Reply, 26
`
`Ex. 1029, 1:34-37; Pet. Reply, 26
`
`USPN 6,799,318
`
`(Filed April 24, 2000)(Filed April 24, 2000)
`
`…
`
`Ex. 1028, Face; Pet. Reply, 26
`
`61
`
`61
`
`

`

`Petitioners’ evidence is sufficient to establish IrOBEX as
`prior art
`Rebuttal
`Petitioner fails to provide evidence that IrOBEX is prior art. (POR, 1-10, POSR, 1-5)
`Petition
`Larsson
`to:
`Petitioner has submitted numerous references that establish IrOBEX as valid prior art. (Pet. Reply, 27)
`Williams (Ex. 1040) (Feb., 2000)
`
`Ex. 1040, 3; Ex. 1034, ¶ [2]; Pet. Reply, 27
`
`62
`
`62
`
`

`

`Petitioners’ evidence is sufficient to establish IrOBEX as
`prior art
`Rebuttal
`Petitioner fails to provide evidence that IrOBEX is prior art. (POR, 1-10, POSR, 1-5)
`Petition
`Larsson
`to:
`Petitioner has submitted numerous references that establish IrOBEX as valid prior art. (Pet. Reply, 27)
`
`BT Core.
`
`OSU Lab Webpage
`
`Ex. 1039; Ex. 1035, ¶¶ [44]-[45];
`Pet. Reply, 27
`
`Ex. 1014, 411, 427; Ex. 1035, ¶ [43];
`Pet. Reply, 27
`
`63
`
`63
`
`

`

`Petitioners’ evidence is sufficient to establish BT Core
`as prior art
`Rebuttal
`Petitioner fails to provide evidence that BT Core is prior art. (POR, 1-10, POSR, 1-5)
`Petition
`Larsson
`to:
`Throughout the course of the proceedings, Petitioner has submitted numerous declarations and references
`that establish BT Core as valid prior art. (Pet., iii, 3; Pet. Reply, iii, iv, 23-27)
`Declarations supporting public availability of BT Core
`
`Ex. 1033 also includes additional appendices with evidence.
`
`Pet. Reply, iii-iv, 24, 27
`Additional Evidence that corroborates and demonstrates public availability of BT Core
`
`Pet., iii, 3, 24, 26
`
`Pet. Reply, iv, 26, 27
`
`64
`
`64
`
`

`

`Petitioners’ evidence is sufficient to establish BT Core
`as prior art
`Rebuttal
`Petitioner fails to provide evidence that BT Core is prior art. (POR, 1-10, POSR, 1-5)
`Petition
`Larsson
`to:
`The declarations include evidence of those personally involved in the publication of BT Core. (Pet. Reply, 24,
`27)
`
`Foley Dec.
`
`Rysavy Dec.
`
`Ex. 1020, ¶¶ 5-7; Pet. Reply, 24, 27
`
`Ex. 1033, ¶¶ 8-9; Pet. Reply, 27
`
`Patent Owner had a chance to address the supporting evidence, but chose not to. (See POR, 8; POSR, 4)
`
`65
`
`65
`
`

`

`Petitioners’ evidence is sufficient to establish BT Core
`as prior art
`Rebuttal
`Petitioner fails to provide evidence that BT Core is prior art. (POR, 1-10, POSR, 1-5)
`Petition
`Larsson
`to:
`Numerous patent documents filed before the ’049 Critical Date cite to BT Core. (Pet. Reply, 26, 27)
`
`USPN 6,922,548
`(Filed April 24, 2000)
`
`USPN 6,779,185
`(Filed June 5, 2000)
`
`Ex. 1027, 5:45-67; Pet. Reply, 26
`
`USPN 6,799,318
`
`(Filed June 5, 2000)( , )
`
`
`
`Ex. 1028, Face; Pet. Reply, 26
`
`Ex. 1029, 4:33-35; Pet. Reply, 26
`
`USPN 6,255,800
`(Filed Jan. 3, 2000)
`
`Ex. 1031, 5:35-40;
`Ex. 1033, ¶ [9], Pet. Reply, 27
`
`66
`
`66
`
`

`

`Petitioners’ evidence is sufficient to establish BT Core
`as prior art
`Rebuttal
`Petitioner fails to provide evidence that BT Core is prior art. (POR, 1-10, POSR, 1-5)
`Petition
`Larsson
`to:
`Petitioner has submitted numerous references that establish BT Core as valid prior art. (Pet., 2-3)
`
`Archived Bluetooth Websites
`
`Ex. 1016, 1; Pet. 2-3
`
`67
`
`67
`
`

`

`Petitioners’ evidence is sufficient to establish BT Core
`as prior art
`Rebuttal
`Petitioner fails to provide evidence that BT Core is prior art. (POR, 1-10, POSR, 1-5)
`Petition
`Larsson
`to:
`Petitioner has submitted numerous references that establish BT Core as valid prior art. (Pet., 2-3)
`
`Archived Bluetooth Websites
`
`Ex. 1019, 1; Pet. 2-3
`
`68
`
`68
`
`

`

`Patent Owner mischaracterizes the holding in Hulu v
`Soundview
`Rebuttal
`Petitioner may not use their Reply to submit new evidence or argument that
`Petition
`Larsson
`to:
`could have been submitted earlier. (POSR, 1)
`Patent Owner misquotes Hulu and failed to acknowledge the exception to the Hulu rule, which permits
`Petitioner to submit additional evidence. (POSR, 1-2)
`
`Hulu v Soundview
`
`IPR2018-01039, Paper 29 (Dec. 20, 2019), 7-8
`
`IPR2018-01039, Paper 29 (Dec. 20, 2019), 14
`
`69
`
`69
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket