Patent Owner’s Demonstratives
`
`Microsoft Corp.,
`V.
`Uniloc 2017 LLC,
`
`Case IPR2019-01026
`U.S. Patent No. 6,993,049
`
`Oral Hearing
`Aug. 26, 2020
`
`
`
`Microsoft Corp.,
`V.
`Uniloc 2017 LLC,
`
`Case IPR2019-01026
`U.S. Patent No. 6,993,049
`
`Oral Hearing
`Aug. 26, 2020
`
`
`
`Petitioner challenges one independentclaim
`
`11. A method of operating a communication system comprising a
`primarystation andatleast one secondary station, the method
`comprising
`
`the primary station
`
`broadcasting a series of inquiry messages, each in the form
`ofa plurality of predetermined data fields arranged
`accordingto a first communicationsprotocol, and
`
`adding to an inquiry messageprior to transmission an
`additional data field for polling at least one secondary
`station, and
`
`further comprising theat least one polled secondarystation
`
`determining when an additional data field has been added
`to the plurality of data fields,
`
`determining whetherit has been polled from the additional
`data field and
`
`respondingto a poll whenit has data for transmission to
`
`
`
`Petitioner challenges one dependentclaim
`
`Y TheinstantPetition challenges only independent
`claim 11 and claim 12 depending therefrom.
`Dependent claim 12 is reproduced below:
`
`12. The methodof claim 11, whereinnotall
`inquiry messageshave an additional datafield
`
`for polling a secondary station added to them.
`
`Y Dependentclaim 12 confirmsthat the
`“additional data field” introduced in claim 1 is
`not an inherentpart of every “inquiry message.”
`
`
`
`Relevant Federal Circuit Findings
`
`
`
`The ’049 patent is directed to a communication system comprising a
`primary station (e.g., a base station) and at least one secondary
`station (eg., a computer mouse or keyboard).
`‘049 patent at
`Abstract; id. at 1:28-31, 3:31-34. In conventional systems, such as
`Bluetooth
`networks,
`two
`devices
`that
`share
`a
`common
`communication channel form ad hoc networks knownas “piconets.”
`Id. at 1:19-21. Joining a piconet requires the completion oftwo sets
`of
`namely an “inquiry” procedure and a “page”
`procedure.
`/d. at 1:54-55. The inquiry procedure allows a primary
`identify secondary stations and it allows secondary
`issue a request to join the piconet.
`/d. at 1:56-57. The
`page procedurein turn allowsa primary station to invite secondary
`stations to join the piconet.
`/d. at 1:57-58. Together, it can take
`several
`tens of seconds
`to complete the inquiry and page
`procedures so that a device joins a piconet andis able to transfer
`user input to the primary station. Jd. at 1:58-61. Once a piconetis
`formed, the primary station “polls” secondary stations to determine
`whetherthey have data to share over the communication channel.
`
`
`
`Relevant Federal Circuit Findings
`
`Because many secondary stations are_battery-
`
`operated, secondary stations may enter a “park” mode
`and cease active communications with the primary
`station to conserve power.Id. at 1:43-45, 1:62-66. A
`secondary
`station
`in
`parked mode_
`remains
`synchronized with the primary station, but it must be
`polled before it can leave park mode and actively
`
`communicate with the primarystation. /d. at 1:43-51.
`
`
`
`Relevant Federal Circuit Findings
`
`Abstract.
`
`The specification [of the ’049 patent] explains
`that
`the invention improves
`communication systems by including a data
`field for polling as part of the inquiry message,
`thereby allowing primary stations to send
`
`
`inquiry messages and_conduct polling
`simultaneously.
`Jd. at Abstract. The claimed
`invention therefore enables “a rapid response
`time without the need for a permanently active
`communication
`link”
`between
`a_
`parked
`secondarystation and the primary station. /d. at
`
`Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303, 1305 (Fed. Cir. 2020).
`
`
`
`Relevant Federal Circuit Findings
`
`
`
`Claim 2 of the ’049 patent recites a primary station for use in a
`communication system “wherein meansare providedfor... adding
`to each inquiry message prior to transmission an additional data
`field for polling atleast one secondary station.” 049 patent at Claim
`2. The additional data field enables
`a primary station to
`simultaneously send inquiry messages and poll parked secondary
`stations. Jd. at Abstract. The claimed invention therefore eliminates
`or reduces the delay present in conventional systems where the
`primary station alternates between polling and sending inquiry
`messages. See, e.g., id. at 2:8-15, 6:55-60. Therefore, like the claims
`in DDR, the claimed invention changes the normal operation of the
`communication system itself to “overcome a problem specifically
`arising in the realm of computer networks.” See 773 F.3d at 1257-
`98.
`In doing so, the claimed invention, like the improvement in
`computer memory we held patent eligible in Visual Memory,
`enables the communication system to accommodate additional
`devices, such as battery-operated secondary stations, without
`compromising performance. See 867 F.3d at 1258-60.
`
`
`
`Relevant District Court Findings
`
`v
`
`v
`
`District court expressly rejected the “suggestionthat the ‘inquiry
`message’is any type of inquiry’—i.e., the court rejected the argument
`Petitioner has attempted to newly advance herein its Reply.
`Ex. 1027, District Court Claim Construction Order,p. 15.
`“Rather, as used in the ’049 Patent, the ‘inquiry message’ is a message
`seeking to discoverstations with which to communicate.” /d.
`
`The “inquiry message” of the invention, however, is amessage designed
`to identify stations that are available for communication. As the °049
`Patent states, the “general invention concept” 1s polling devices as “part
`of the inquiry procedure.” ’049 Patent col.3 11.24-26. This “inquiry
`procedure” is the process by which a station uses inquiry messages to
`identify other devices available for communication. For example, in the
`context of the described Bluetooth embodiment, the master station sends
`an inquiry message and listens for a response in order to discover other
`Bluetooth devices available for communication. See, e.g., "049 Patent
`col.1 1152-61, col.4 1121-38. While the Court declines to import the
`specifics of the Bluetooth inquiry, it understands an “inquiry message” in
`
`the context of the disclosed embodiment and the claims as a message
`
`Ex. 1026,
`p- 17
`
`
`
`Petitioner relies on erroneous constructions
`
`“inquiry message”|“a type of message used to Belatedly advanced in
`
`discover other devices in the
`Petitioner’s Reply:
`vicinity”
`
`“any query or message
`(or alternatively, as construed|seeking any information”
`by the district court)
`
`term
`
`Petitioner declinedto offer
`“an extra data field appended
`competing construction or
`to the end of an inquiry
`to define the plain and
`message andthatis not in the
`first communications protocol”|ordinary meaningfor this
`
`“message seeking a responseto
`identify devices available for
`communication”
`
`“additional data
`field”
`
`
`
`“Inquiry message"
`
`Y Petitioner provides nocitation to the Petition or any exhibits
`submitted therewith in introducing its new (and hence waived) claim
`construction in its Reply that reply that “inquiry message”essentially
`means any query or message seeking anything. Petitioner’s new,
`untethered construction has been repeatedly refuted by the courts.
`
`Y The district court clearly recognized “inquiry message,” when
`understoodin light of the intrinsic evidence, is meaningfully limiting at
`least in termsofthe function of the message—i.e., “amessage seekinga
`response to identifydevicesavailablefor statement.” Ex. 1027, 16-17.
`
`V Thedistrict court also expressly rejected the notion “thatthe‘inquiry
`message’ is anytype ofinquiry” (i.e., essentially what Petition arguesin
`its Reply). Ex. 1027, 16-17. According to the court, such an
`interpretationfails at least to recognizethat “the ‘inquirymessage’ is a
`messageseekingto discoverstationswithwhichto communicate.” Id.
`
`VY The FederalCircuit similarly recognized that“[t]heinquiryprocedure
`allowsaprimarystationto identifysecondarystations anditallows
`secondarystationsto issuearequesttojointhe piconet.’ Uniloc USA,
`
`
`
` “additional data field”
`
`vY Patent Owneridentified deficiencies in the Petition if the term
`“additional data field” is construed to require “an extra data field
`appendedto the end of an inquiry message”and “that is not in
`the first communications protocol” (POR 6-8).
`
`Y Patent Owner's construction reflects two key concepts of
`the “additional data field” term:
`
`
`
`1) what it meansto be “additional” in the context of anew
`data field that must be addedto the inquiry message; and
`
`2) where within the message the “additional” data field must
`be added, in view of the intrinsic evidence.
`
`Y Each of these two key concepts givesrise to respective,
`independentdeficiencies in the theory set forth in the Petition.
`
`
`
`What “additional” qualifier requires in “additional data field’
`
`Y Patent Ownerhadidentified fatal deficiencies of the Petition
`arising, at least in part, from the “additional” qualifier modifying
`the new “data field” and from the natureof a “data field”itself
`(i.e., what is required by the “additional” qualifier).
`
`
`
`Vv Petitioner’s Reply acknowledges that the Board has repeatedly
`construed “an additional data field” to mean “an additional data
`
`field is a data field that is notin the first communications
`protocol.” Rep. 2-3, n.1 (citing Microsoft Corp. v. Uniloc 2017 LLC,
`IPR2019-01188, Paper 9 at 13 (P.T.A.B. Dec. 9, 2019), which
`cites Cisco Sys. Inc. v. Uniloc 2017 LLC, IPR2019-00965,Paper 7
`at 8-11 (P.T.A.B. Nov. 8, 2019)).
`
`Y In IPR2019-01188, the Board recognized, consistent with Patent
`Owner’s constructionhere, that the claim languageis
`distinguishable from merely reusing an already existing data
`field, particularly when consideredin lightof the intrinsic
`evidence. IPR2019-01188, Paper 9 at 13.
`
`
`
`“additional data field”is limiting as to where
`
`Y Petitioner does not dispute that additional and independentfatal
`deficiencies of the Petition arise at least to the extent the Board
`interprets the claim language to limit where within the inquiry
`messagethe “additional data field” must be added—i.e., “appended
`to the end of an inquiry message.” POR 6-8.
`
`Y Theintrinsic evidence contains limiting statements applicable to
`the invention as a whole:
`
`> “As mentioned above and shown in FIG. 5,theapplicants60proposethat
`
`theinquirymessagesissuedbythebasestationhaveanextrafield504
`appendedtothem, capableof carrying a HID poll message.”
`049 patent, 4:59-62.
`
`> “Byaddingthefieldtotheendoftheinquirymessage, it will be
`
`appreciated that non-HID receivers can ignoreit without modification. The
`presenceof the extra data field 504 meansthat the guard space conventionally
`allowed at the end of a Bluetooth inquiry packetis reduced.” Id., 5:6-14.
`
`> The ’049 patent expressly refers to as the “presentinvention’as containing
`the “extra field 504” appendedto the end of the inquiry message, as described
`
`
`
`“additional data field”is limiting as to where
`
`Thereis no merit to Petitioner’s new argumentin its Reply thatit
`would violate the doctrine of claim differentiation to construe
`“additional data field” in light of the specification to require “an
`extra data field appendedto the endof an inquiry message.”
`
`The Court of Appeals for the Federal Circuit has repeatedly made
`clear that limiting statements in the specification, such as those
`directed to the “present invention,” take precedencein claim
`construction overclaim differentiation.
`
`InproII Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed.Cir.
`2006); see also Intellectual Ventures I LLC v. Motorola Mobility LLC, 870 F.3d
`1320, 1326 (Fed. Cir. 2017) (the “doctrine [of claim differentiation]... does
`not serve to broaden claims beyondtheir meaninginlight of the
`specification.”) (citing Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295,
`1302 (Fed. Cir. 1999)); Retractable Techs., Inc. v. Becton, Dickinson & Co., 653
`F.3d 1296, 1305 (Fed. Cir. 2011) (“any presumption created by the doctrine
`of claim differentiation ‘will be overcomeby a contrary construction dictated
`
`
`
`Insufficient proof Larsson teaches “adding ... to. an inquiry message
`
`© In erroneouslyasserting the “inquiry message” term should be extended to
`encompassvirtually any query or message seeking any information,
`Petitioner points to disclosure in Larsson allegedly directed to
`piggybacking Address Resolution Protocol or “ARP” messages onto
`Request for Route or “RfR” messages. Rep. 7-8.
`
`v¥ Itremains undisputed that Larsson’s “broadcast messagefor route
`discovery” is aptly named becauseits purposeis to discover an optimal
`route toaknowndestinationnodewhich isalreadyjoinedto apiconet.
`See POSR 14-15 (citing POR 11 and Larssonat Abstract, Fig. 3, 1:67-2:1,
`4:23-47, and 5:36-45).
`
`v Petitioner newly arguesthat Larssondiscloses its RfR messages “are used
`to both ‘newly establish|]’ network routes between different devices and
`also re-establish ‘broken’ routes so that the devices can ‘begin[] sending
`data over the new route.” Merely reestablishing a broken route for a
`device that had already joined a piconetis plainly distinguishable onits
`face from, instead, a message seeking a responseto identify which
`
`
`
`Insufficient proof Larsson teaches “adding ... an additional data field”
`
`© Petitioner’s Reply fails to defend the theoryof the Petition that the
`technical term “piggybacking”(includingall its various
`implementations thereof) is somehow synonymouswith “adding...
`an additional datafield for polling at least one secondarystation.”
`
`vY Petitioner’s assertions concerningalleged piggybacked data is
`distinguishable onits face from “adding... an additional data field.”
`
`
`
`Y Therecordfails to establish Larsson uses its ARP messages“for
`polling at least one secondary station”in particular(i.e., “adding an
`additional data field for polling at least one secondary station”).
`
`Y Petitioner points to no argumentwithin the Petition itself allegedly
`establishing that Larsson’s distinct implementation of whatit refers
`to as “piggybacking” necessarily requires modifying an inquiry
`message in the manner claimed—.e., by adding an additional data
`field for polling the at least one secondary station (where the added
`field is not in the first communication protocol).
`
`
`
`Insufficient proof Larsson teaches “adding ... an additional data field’
`
`Mr. Rysav’ys supplemental declaration is too little too late
`and should be afforded no weight:
`
`v Mr. Rysavy asserts “Larsson’s length indicator confirmsthat
`there is an additional data field being added” ostensibly because
`Larrsonstates “in a protocol where the requestfor route
`messageis of a fixed length, a length indicator which indicates a
`length longer than the normalfixed length will implicitly
`indicate that the request contains piggybackgata.” Mr. Rysavy
`offers no explanation for how a quotation from Larsson
`expressly directed to “piggyback@laita” expressly or inherently
`discloses that an additional “datafield” has been added.
`
`Y In addition, Mr. Rysavy’s new conclusory assertion lacks any
`explanation for how adding “piggyback data,” as disclosed in
`Larsson would not, in andofitself, increase length vis-a-vis
`before the data is added.
`
`Y There simply is no expressdisclosure in Larsson concerning
`adding an additional datafield as claimed; and Petitioner has
`
`
`
`Insufficient proof 802.11 teaches “adding ... an additional datafield”
`
`It remains undisputedthat the alternative mapping of 802.11
`applied in the Petition fails at least to satisfy “an additional
`data field that is not in the first communication protocol’—i.e.,
`the construction applied by the Boardfor virtually identical
`claim languageat issue in IPR2019-01188 and IPR2019-00965.
`
`vY Itis undisputed that the “SSID field” emphasizedin the Petitionis
`part of the 802.11 protocol.
`
`Y Petitioner also does notdispute that 802.11’s so-called
`“Targeted” probe requests and its “Broadcast” probe requests
`are both arranged according to the 802.11 protocol.
`
`Y It also remains undisputed that 802.11 distinguishesits
`“proadcast” type messagefrom its “targeted” type message in
`that the latter is not broadcasted. Petitionerfails to prove that
`the admittedly non-broadcasted,“targeted” type messagein
`802.11 meetsthe claim language.
`
`
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