UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-01116
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`PATENT 7,016,676
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`PATENT OWNER SUR-REPLY TO PETITION
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`IPR2019-01116
`U.S. Patent 7,016,676
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`Table of Contents
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`I.
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`II.
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`INTRODUCTION .................................................................................... 1
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`PETITIONER FAILS TO PROVE UNPATENTABILITY OF
`ANY CHALLENGED CLAIM ................................................................ 1
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`A.
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`The Petition is impermissibly keyed to erroneous claim
`constructions ................................................................................... 1
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`B.
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`C.
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`1.
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`2.
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`“stations which operate in accordance with a first
`radio interface standard and/or a second radio
`interface standard” ................................................................ 2
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`Petitioner at least fails to defend the erroneous
`interpretation that the “if” statement in the
`“wherein” clause of claim 1 is not entitled to
`patentable weight .................................................................. 6
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`Petitioner at least fails to prove any of the cited
`HomeRF references discloses “stations which operate in
`accordance with a first radio interface standard and/or a
`second radio interface standard” (Claim 1) (Grounds 1-
`3) ..................................................................................................... 9
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`Petitioner at least fails to prove any of the cited
`HomeRF references discloses “a control station which
`controls the alternate use of the frequency band” /
`“wherein the control station controls the access to the
`common frequency band for stations working in
`accordance with the first radio interface standard if
`stations working in accordance with the first radio
`interface standard do not request a control station which
`controls the alternate use of the frequency band” (Claim
`1) (Grounds 1-3) ........................................................................... 13
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`D.
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`Petitioner at last fails to prove the HomeRF Tutorial and
`HomeRF Liaison Report Constitute Prior Art (Grounds
`2 and 3). ........................................................................................ 14
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`E.
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`Petitioner at least fails to prove Lansford discloses “a
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`ii
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`U.S. Patent 7,016,676
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`control station which controls the alternate use of the
`frequency band” or “wherein the control station
`…renders the frequency band available for access by the
`stations working in accordance with the second radio
`interface standard if stations working in accordance with
`the first radio interface standard do not request a control
`station which controls the alternate use of the frequency
`band” (Claim 1) (Ground 4) ......................................................... 15
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`III.
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`CONCLUSION ....................................................................................... 16
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`iii
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`IPR2019-01116
`U.S. Patent 7,016,676
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`EXHIBITS
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`
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`Exhibit 2001
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`U.S. Patent No. 8,929,259
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`Exhibit 2002
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`U.S. Patent No. 7,023,833
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`Exhibit 2003
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`U.S. Patent No. 7,796,573
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`Exhibit 2004
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`U.S. Patent No. 7,197,326
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`
`
`iv
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`IPR2019-01116
`U.S. Patent 7,016,676
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC ( “Patent Owner”) submits this Sur-Reply to the Petition for
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`Inter Partes Review (“Pet.” or “Petition”) of United States Patent No. 7,016,676
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`(“the ’676 Patent” or “EX1001”) filed by Microsoft Corporation (“Petitioner”) in
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`IPR2019-01116. For the reasons given in Uniloc’s Response (Paper 11, “POR”) and
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`herein, Petitioner fails to carry its burden of proving unpatentability of the
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`challenged claims of the ’676 patent based on the grounds presented in the Petition.
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`II.
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`PETITIONER FAILS TO PROVE UNPATENTABILITY OF ANY
`CHALLENGED CLAIM
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`While Petitioner has the burden of proof with respect to each element of every
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`challenged claim, and this burden never shifts to Patent Owner, Patent Owner had
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`nevertheless explained in its Response why the Petition is substantially deficient at
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`least with respect to certain example claim language. Petitioner’s Reply either
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`mischaracterizes or ignores the deficiencies Patent Owner had identified.
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`A. The Petition is impermissibly keyed to erroneous claim
`constructions
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`As explained in Patent Owner’s Response, the Petition should be denied as
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`being impermissibly keyed to incorrect claim constructions for multiple terms. As
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`shown by way of example below, Petitioner fails in its Reply to address, or in certain
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`instances even mention, the multiple points of error Patent Owner had identified in
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`the Petition and in a claim construction advanced, sua ponte, by the Board.1
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`1 While Patent Owner’s Sur-Reply provides a high-level summary of certain points
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`1
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`IPR2019-01116
`U.S. Patent 7,016,676
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`“stations which operate in accordance with a first radio
`interface standard and/or a second radio interface standard”
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`1.
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`Petitioner’s Reply fails to correctly frame the claim construction dispute
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`injected by the Petition over “stations which operate in accordance with a first radio
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`interface standard and/or a second radio interface standard.” The dispute injected
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`by the Petition is essentially whether the explicit differentiation of standards, as
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`expressed in claim limitations directed to “a first radio interface standard” and “a
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`second radio interface standard,” is satisfied merely by pointing to allegedly distinct
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`access methods identified by the acronyms TDMA and CSMA. The answer is no;
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`and Petitioner fails to refute, or even acknowledge, Patent Owner’s reasoning as to
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`why this claim construction issue is dispositive and fatal to the Petition. POR 9‒15.
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`First, as explained in Patent Owner’s Response, the ’676 patent speaks for
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`itself in confirming the word “standard” in the context of the claim language is not
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`interchangeable with a singular and potentially varying characteristic thereof, such
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`as a given channel-access method, as Petitioner’s mapping erroneously presumes.
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`POR 9‒13. The ’676 patent itself underscores the error in the Petition by referring
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`to “Medium Access control” or “MAC” as but one a several characteristics of
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`overarching example standards (e.g., US radio system IEEE802.11a and the
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`European ETSI BRAN HiperLAN/2). Id., 1:7‒35; see also POR 2, 9‒13 (discussing
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`
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`raised in Patent Owner’s Response, this summary is not intended to be all-inclusive.
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`Given word count restraints, Patent Owner summarizes herein example salient
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`points that are each completely overlooked in Petitioner’s Reply and the
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`supplemental declaration attached thereto.
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`2
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`the same disclosure). Further underscoring the distinction between a standard and
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`any access method(s) it may use is the contested fact that the ’676 patent compares
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`and contrasts certain example standards on bases other than access methods. Id.
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`Petitioner’s Reply makes no attempt to defend the construction applied in the
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`Petition against these identified points of error.
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`Second, the record evidence also speaks for itself in confirming that a given
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`radio interface standard may provide for variations within the standard itself. See,
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`e.g., POR 13-14. To borrow a phrase from the ’676 patent, clearly “a variant of the
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`standard” does not constitute a departure from the standard, much less a departure
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`sufficient to disclose two distinct radio interface standards. See, e.g., Ex. 1001,
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`1:55‒56 (emphasis added). Petitioner appears to concede at least this point by
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`arguing that the claimed first and second radio interface standards each encompass
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`“variations thereof.” Rep. 5 (quoting Pet. 20‒22) (emphasis by Petitioner).
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`The uncontested observation that a given radio interface standard may have
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`varying iterations thereof, without departing from the standard, is further
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`substantiated by extrinsic evidence that Petitioner ignores in its Reply. Specifically,
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`Patent Owner had provided extrinsic evidence for the proposition, which Petitioner
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`nor its declarant dispute or even acknowledge, that “a single radio interface standard,
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`the Bluetooth standard, provides for both asynchronous and
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`isochronous
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`communication.” POR 13-14 (citing, inter alia, Ex. 2002 at 1:53‒55, 3:14‒16, and
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`3:28‒31). Another contemporary reference confirmed a single standard may use
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`multiple access methodologies, such as, for example, “a combination of CSMA/CA,
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`3
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`U.S. Patent 7,016,676
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`TDMA (time division multiple access), FDMA (frequency division multiple access),
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`and CDMA (code division multiple access).” POR 19 (quoting Ex. 2003, 3:50‒54).
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`This previously cited evidence, which Petitioner does not contest or even
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`acknowledge, further confirms that the mere disclosure of two varying access
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`methods does not expressly or even inherently render obvious the claim limitations
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`directed to and expressly distinguishing “a first radio interface standard” and “a
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`second radio interface standard.”
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`Third, Petitioner does not dispute that “absurd results” would arise if the mere
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`reference to “TDMA” and “CSMA” each fully satisfies limitations directed to the
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`first and second radio interface standards, respectfully. POR 14. To illustrate, Patent
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`Owner observed, and Petitioner and its declarant do not dispute, that Petitioner’s
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`declarant “characterizes the DECT radio interface standard as using TDMA, EX
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`1004 ¶78, and the Bluetooth standard also uses TDMA. EX2002, 3:12-14.” Id. If a
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`given standard is itself represented merely based on use of TDMA, as the Petition
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`erroneously presumes, then this “would give rise to the absurd conclusion that DECT
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`and Bluetooth are the same radio interface standard, as they both employ TDMA.”
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`Id. Patent Owner had also observed, and neither Petitioner nor its declarant dispute,
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`that “HomeRF . . . describes TDMA and CSMA as ‘access mechanisms,’ HomeRF,
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`23: 2:14-16, and not as specifications.” POR 9. In reply to these additional flaws of
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`the mapping applied in the Petition, Petitioner and its declarant offer—nothing.
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`Fourth, Petitioner does not address, or even mention, certain extrinsic
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`evidence that further “supports the conclusion that CSMA and TDMA are
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`4
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`U.S. Patent 7,016,676
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`algorithms or access schemes that may be employed within radio interface standards,
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`but are not themselves radio interface standards.” POR 14-15 (citing U.S. Patent
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`No. 7,796,573 (“’573 Patent”), filed as Exhibit 2003).
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`Fifth, it remains undisputed that the Petition provides no basis to conclude that
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`either access scheme identified by the acronyms TDMA and CSMA constitutes a
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`“radio interface standard” as claimed. POR 15. On the contrary, Petitioner
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`essentially concedes the point by attempting to recharacterize the Petition as, instead,
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`no longer relying on such access schemes, “in and of themselves,” to satisfy the
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`expressly distinguished first and second radio interface standards. Id. For the
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`reasons set forth in Patent Owner, Response, however, obviousness cannot be shown
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`if the cited references to TDMA and CSMA do not fully satisfy, respectively, the
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`claimed and expressly distinguished first and second radio interface standards.
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`Rather than address the fundamental claim construction dispute injected by
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`the mapping applied in the Petition, and the example fallacies Patent Owner had
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`identified that would arise under such a construction, Petitioner chides Patent Owner
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`for allegedly not proposing and defending an alternative and comprehensive claim
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`construction for the entire phrase “stations which operate in accordance with a first
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`radio interface standard and/or a second radio interface standard.” Rep. 3‒5.
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`Petitioner’s strawman attack misses the point.
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`In addressing the proper claim construction standard applicable here, the
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`Board has instructed it “may not be necessary to determine the exact outer boundary
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`of claim scope because only those terms that are in controversy need be construed,
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`5
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`U.S. Patent 7,016,676
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`and only to the extent necessary to resolve the controversy (e.g., whether the claim
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`reads on a prior art reference).” Changes to the Claim Construction Standard for
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`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board,
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`83 Fed. Reg. 51,340, 51,353 (Oct. 11, 2018) (“Claim Construction Final Rule”)
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`citing (“Moreover, it also may not be necessary to determine the exact outer
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`boundary of claim scope because only those terms that are in controversy need be
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`construed, and only to the extent necessary to resolve the controversy (e.g., whether
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`the claim reads on a prior art reference).” (citing Nidec Motor Corp. v. Zhongshan
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`Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting “we
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`need only construe terms ‘that are in controversy, and only to the extent necessary
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`to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200
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`F.3d 795, 803 (Fed. Cir. 1999)).
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`Petitioner cannot shift the burden to Patent Owner to prove patentability based
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`on an alternative claim construction to the one erroneous applied in the Petition.
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`Rather, the burden remains with Petitioner to defend the mapping applied in the
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`Petition and the implicit claim construction upon which it is predicated. Failure to
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`do so compels denial of the Petition, regardless whether the Board ultimately adopts
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`an affirmative construction defining the exact outer boundary of claim scope.
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`2.
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`Petitioner at least fails to defend the erroneous interpretation
`that the “if” statement in the “wherein” clause of claim 1 is
`not entitled to patentable weight
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`The Board, sua sponte, has interpreted “the wherein clause of claim 1 as
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`setting forth two steps, both carried out by the control station: (1) ‘controls access
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`6
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`U.S. Patent 7,016,676
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`to the common frequency band for stations working in accordance with the first radio
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`interface standard,’ and (2) ‘renders the frequency band available for access by the
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`stations working in accordance with the second radio interface standard if stations
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`working in accordance with the first radio interface standard do not request access
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`to the frequency band.’” Paper 8, 16 (acknowledging “Petitioner has not expressly
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`articulated these specific steps” in the Petition itself). Based on the pre-institution
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`record available at that time, the Board also found that the second “step” of the
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`wherein clause is “conditional” and “the associated action need not be performed.”
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`Id., 51 (citing Ex parte Schulhauser, Appeal No. 2013–007847 (PTAB April 28,
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`2016) (precedential)). Petitioner fails to sufficiently defend the preliminary
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`construction applied in the Institution Decision. Petitioner’s Reply only underscores
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`that, under the proper claim construction standard applicable here, the Board should
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`reconsider its preliminary finding that the associated action need not be performed.
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`The proper construction is readily ascertained by considering the claim
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`language as whole. There can be no question that claim 1 affirmatively recites “a
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`control station which controls the alternate use of the frequency band.” The
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`“wherein” clause simply defines how this affirmatively recited control is to be
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`effected—i.e., “wherein the control station controls the access to the common
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`frequency band for stations working in accordance with the first radio interface
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`standard and renders the frequency band available for access by the stations working
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`in accordance with the second radio interface standard if stations working in
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`accordance with the first radio interface standard do not request access to the
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`7
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`IPR2019-01116
`U.S. Patent 7,016,676
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`frequency band.” Under this informative context, it would be erroneous to not give
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`patentable weight to a wherein clause that meaningfully limits and further defines
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`an expressly recited “controls” limitation in terms of how it must be effected.
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`The record also contains no controlling authority that compels as decision to
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`ignore the limitations expressed in the “wherein” clause. Petitioner acknowledges
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`that Ex parte Schulhauser was decided under a different claim construction standard,
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`the broadest reasonable interpretation (“BRI”), which is not applicable here. Rep.
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`25; POR 50-55. Petitioner’s Reply cites no authority allegedly finding, under the
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`Phillips standard applicable here, that claim limitations can be ignored in an
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`obviousness analysis if a corresponding step is deemed conditional.
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`The courts have repeatedly declined to adopt a firm rule that an “if” statement
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`in a method claim should be afforded no patentable weight. For example, the patent-
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`savvy Eastern District of Texas, in applying the Phillips standard, declined to adopt
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`the interpretation that allegedly conditional language in a method step can be ignored
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`as nonlimiting. See Charles E. Hill & Assocs., Inc. v. Hanover Direct, Inc., No.
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`CIV.A. 2:07-CV-234DF, 2008 WL 5771130, at *21 (E.D. Tex. Nov. 21, 2008). In
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`addition, the Federal Circuit recently affirmed a finding of obviousness where the
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`Board interpreted a conditional “if” statement recited in a method claim to be
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`limiting. See Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1333 (Fed.
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`Cir. 2020).
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`Even when applying the former BRI standard, the Board recognized that
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`Schulhauser is not always applicable. For example, the Board has interpreted
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`8
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`IPR2019-01116
`U.S. Patent 7,016,676
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`conditional language recited in a method claim “to be limited to the method
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`described in which the recited conditions occur.” Ex Parte Prem K. Gopalan &
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`Bryan Thomas Elverson, IPR2017-007009, 2018 WL 2386111, at *3‒4 (P.T.A.B.
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`May 21, 2018). There, the Board also found that “Schulhauser is not controlling
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`because it is factually distinguishable.” Id. “Unlike the method claim in
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`Schulhauser, the steps of method claim 1 are not mutually exclusive and the claim,
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`as written, covers only one method.” Id.
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`Here, Petitioner does not expressly argue, in either the Petition itself or the
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`Reply, that the “wherein” clause at issue recites additional steps, much less that any
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`such “step” is dependent on the happening of a condition precedent that would result
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`in the claim operating in two separate methods, as in Schulhauser. See POR 54‒55
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`(“In contrast to Shulhauser, in present claim 1, there is clearly no coverage of two
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`different methods in which prerequisite conditions for two mutually exclusive steps
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`are met.”). Petitioner could not reasonably do so at least because the “if” statement
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`of the wherein clause is “integrated into one method or path and do[es] not cause the
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`claim to diverge into two methods or paths.” IPR2017-007009, at *3‒4.
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`B.
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`Petitioner at least fails to prove any of the cited HomeRF
`references discloses “stations which operate in accordance with a
`first radio interface standard and/or a second radio interface
`standard” (Claim 1) (Grounds 1-3)
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`Petitioner wrongly accuses Uniloc for highlighting deficiencies in the Petition
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`in a manner that allegedly fails to consider the “in accordance with” phrase recited
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`in “stations which operate in accordance with a first radio interface standard and/or
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`9
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`a second radio interface standard.” Rep. 8‒9. Petitioner’s misplaced accusation is a
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`self-indictment. It is Petitioner who is attempting to read out the explicit requirement
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`for two distinct radio interface standards affirmatively recited as “a first radio
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`interface standard” and “a second radio interface standard.” When read in its proper
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`context, the phrase “operate in accordance with” simply further defines how the
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`stations must operate—i.e., in terms of additional limitations affirmatively recited as
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`two distinct radio interface standards. Try as it might, Petitioner has not and cannot
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`prove obvious in the absence of pointing to two distinct radio interface standards
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`interoperating in the specific manner claimed. The theory of the Petition is deficient
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`at least because it purports to identify operation only according to a single radio
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`interface standard. POR 18‒27.
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`Petitioner’s Reply does not even mention, much less refute, several key
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`factual observations Patent Owner had raised concerning HomeRF. For example, it
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`remains uncontested that rather than disclosing stations that interpret in accordance
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`with two distinct and separate standards, HomeRF stations merely operate according
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`to a single standard identified in the reference itself as the “HomeRF Shared Wireless
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`Access Protocol (‘SWAP’).” POR 18 (citing Pet. 28‒29). It also remains
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`uncontested that HomeRF’s “single standard that achieved acceptance ‘by reusing
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`major sections of proven RF protocols and then simplifying them where
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`appropriate for home usage.’” Id. (quoting HomeRF, 20, 2:4‒7) (original emphasis
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`by Patent Owner). It also remains undisputed that “HomeRF . . . employs multiple
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`techniques for allocating channel space, and does not constitute more than one radio
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`10
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`U.S. Patent 7,016,676
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`interface standard.” POR 19 (citing HomeRF, 20, 1:34‒38). In referencing its
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`discussion on claim construction, Patent Owner had also observed, and neither
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`Petitioner nor its declarant dispute, that “neither TDMA nor CSMA is a radio
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`interface standard.” POR 19. As shown at least these non-exhaustive examples, the
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`record is replete with uncontested observations concerning the distinguishable,
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`single-standard system in HomeRF. POR 18‒27.
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`While Petition knit picks, out of context, certain statements in Patent Owner’s
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`Response, Petitioner does not contest the fundamental premise which those
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`statements address—namely, that HomeRF’s SWAP protocol is itself a singular
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`protocol that merely uses and modifies features of existing protocols. Petitioner
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`concedes the point by referring to the HomeRF standard in the singular: “HomeRF
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`describes improvements that allow combining aspects of two different access
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`mechanisms . . . into a hybrid protocol” (in the singular). Rep. 9.
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`In view of these contested facts, Petitioner retreats to a fundamentally flawed
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`claim construction position that claim 1 recites no affirmative requirement for two
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`distinct radio interface standards. Rep. 8‒9. In so doing, however, Petitioner admits
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`the theory set forth in the Petition fails to comprehend and address affirmatively
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`recited and expressly distinguished limitations directed to “a first radio interface
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`standard” and “a second radio interface standard.” Id.
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`In a futile attempt to save its new claim construction argument, Petitioner
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`incorrectly characterizes the ’676 patent, without any citation thereto, as purportedly
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`being directed to a singular hybrid protocol. Rep. 9 (citing Ex. 1013, ¶23). While
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`11
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`IPR2019-01116
`U.S. Patent 7,016,676
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`Petitioner newly cites to the supplemental declaration of Mr. Rysavy as alleged
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`support, the cited paragraph of that declaration simply repeats the same conclusory
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`statement verbatim, again without any citation to the ’676 patent itself. This new
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`argument and evidence, impermissibly raised for the first time in the Reply, only
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`undermines the theory of the Petition and the unsubstantiated testimony upon which
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`it relies.
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`Even a cursory review of the written description in the ’676 patent reveals the
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`disclosure
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`is directed
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`to distinct and complete radio
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`interface standards
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`interoperating alternatively on the same frequency band shared in common. See, e.g.,
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`2:14‒20 (“This object is achieved for the method in accordance with the invention
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`by an interface control protocol method for a radio system, which system comprises
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`at least a frequency band provided for the alternate use of a first and a second radio
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`interface standard, the radio system comprising stations which operate in accordance
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`with a first radio interface Standard and/or a Second radio interface Standard.”);
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`2:23‒28 (referring to the “invention” as making efficient use of “a radio channel via
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`a plurality of radio interface standards” that are expressly differentiated, in part, in
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`their use of “different radio transmission protocols.”); see also POR 1‒3, 9‒15
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`(discussing and citing to the ’676 patent). The claim language in question accurately
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`reflects this unambiguous disclosure. To suggest otherwise only undermines the
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`theory of the Petition and the flawed testimony upon which it relies.
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`Petitioner also attempts in its Reply to offer new (and hence waived) argument
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`and evidence allegedly directed to the theory that HomeRF discloses its I-nodes and
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`12
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`A-nodes operate in accordance with the DECT standard and IEEE802.11 standards,
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`respectively. Rep. 10-11. Tellingly, this portion of Petitioner’s Reply makes no
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`citation to either the Petition or the original declaration of Mr. Rysavy. Id.
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`Petitioner’s belated attempt to introduce new argument and evidence is misleading,
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`at best; and it is directly contradicted by the HomeRF reference itself and Petitioner’s
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`own party admission concerning the same. See POR 9‒15, 18‒27.
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`HomeRF never states that its system is designed such that its I-nodes and
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`A-nodes operate in accordance with the DECT standard and IEEE802.11 standards,
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`respectively. Rather,
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`as Petitioner
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`acknowledges,
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`“HomeRF describes
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`improvements that allow combining aspects of two different access mechanisms
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`. . . into a hybrid protocol” (in the singular). Rep. 9. It remains uncontested that
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`this so-called “hybrid” protocol is distinct from, and does not constitute, either the
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`DECT standard or the IEEE802.11 standard. Id.; POR 9‒15, 18‒27. Even if one
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`were to set aside Petitioner’s dispositive admissions on this point, the record simply
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`contains no evidence to conclude otherwise.
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`C.
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`Petitioner at least fails to prove any of the cited HomeRF
`references discloses “a control station which controls the alternate
`use of the frequency band” / “wherein the control station controls
`the access to the common frequency band for stations working in
`accordance with the first radio interface standard if stations
`working in accordance with the first radio interface standard do
`not request a control station which controls the alternate use of
`the frequency band” (Claim 1) (Grounds 1-3)
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`Petitioner and its declarant fail to defend the theory of the Petition that
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`HomeRF discloses “controls the alternate use of the frequency band” ostensibly
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`U.S. Patent 7,016,676
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`based on the control point allegedly controlling variable throughput obtained by the
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`A-nodes, depending on the number of slots used by I-nodes.
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`Petitioner characterizes its own “variable throughput” theory as allegedly not
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`relating to the recited control of the control station. Rep. 16. Setting aside whether
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`Petitioner has accurately characterized the theory set forth in the Petition, such a
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`characterization fails to address the example deficiencies Patent Owner had
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`identified concerning these additional limitations. POR 28‒44. For the sake of
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`brevity, Patent Owner stands on its prior briefing. Id.
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`D.
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`Petitioner at last fails to prove the HomeRF Tutorial and
`HomeRF Liaison Report Constitute Prior Art (Grounds 2 and 3).
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`Patent Owner had identified several deficiencies in the Petition to put at issue
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`whether Petitioner had satisfied its burden to establish that the HomeRF references
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`(relied upon in Grounds 2 and 3 of the Petition) qualify as prior art printed
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`publications. POR 44‒49. Among the many deficiencies identified, Patent Owner
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`had observed the following:
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`The supporting Declaration of Christina Boyce, dated March 11,
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`2019, merely states that the documents “are stored on the
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`publicly accessible IEEE 802 LAN/MAN Standards Committee
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`website (http://ieee802.org/).” The Declaration is silent as to
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`whether or not the IEEE 802 LAN/MAN Standards Committee
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`website was publicly accessible at any time prior to March 11,
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`2019. In particular, there is no record evidence that the IEEE 802
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`LAN/MAN Standards Committee website was publicly
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`accessible more than one year prior to the earliest effective filing
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`date of the ’676 Patent.
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`POR 45 (original emphasis by Patent Owner). In Reply, all Petitioner offers is the
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`hearsay “titles” of the documents themselves, which according to Petitioner, and for
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`unexplained reasons, allegedly “mak[e] clear that these have not been modified since
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`they were uploaded in 1998 and 1999, respectively.” While the burden lies with
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`Petitioner, the Petitioner offers no explanation for why such a hearsay statement
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`should be accepted for the truth of the matter asserted. This simply is not enough to
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`carry Petitioner’s burden, particularly in view of the other deficiencies Patent Owner
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`had identified. POR 44‒49.
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`
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`Accordingly, in addition to the deficiencies identified with respect to the
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`primary HomeRF reference, which apply equally to the secondary HomeRF
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`references asserted in Groudns 2 and 3, Petitioner has failed to demonstrate that
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`either HomeRF Tutorial or HomeRF Liaison Report qualify as prior art. For these
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`additional, unaddressed reasons, Grounds 2 and 3 fail.
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`E.
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`Petitioner at least fails to prove Lansford discloses “a control
`station which controls the alternate use of the frequency band” or
`“wherein the control station …renders the frequency band
`available for access by the stations working in accordance with
`the second radio interface standard if stations working in
`accordance with the first radio interface standard do not request
`a control station which controls the alternate use of the frequency
`band” (Claim 1) (Ground 4)
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`The Board in the Institution Decision correctly held that Petitioner has failed
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`to establish that Lansford discloses “wherein the control station . . . renders the
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`frequency band available for access by the stations working in accordance with the
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`second radio interface standard if stations working in accordance with the first radio
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`interface standard do not request a control station which controls the alternate use of
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`the frequency band” as recited in Claim 1 on the grounds that the Petitioner’s
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`assertions make no representation about a situation or circumstance in which Device
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`C makes no request for access. Paper No. 8, 51. However, the Board then improperly
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`ruled, sua sponte, that the recitation at issue is a conditional step, and that the
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`recitation could be disregarded. Paper No. 8, 52.
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`Petitioner’s reply only focuses on whether Lansford discloses what Petitioner
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`newly characterizes as the “non-conditional” step. Rep. 24‒27. Lansford is
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`admittedly deficient, therefore, at least to the extent the entire “wherein” clause is
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`afforded its appropriate patentable weight. For the sake of brevity, Patent Owner
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`stands on its claim construction position set forth in its Response and clarified herein,
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`and further on its previously-presented arguments addressing the deficiencies of
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`Lansford. See, e.g., POR 50‒55; § II.A.2, supra.
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`III. CONCLUSION
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`For at least the reasons set forth above, and explained in greater detail in
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`Patent Owner’s Response, Uniloc respectfully requests that the Board deny all
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`challenges in the instant Petition.2
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`Date: July 1, 2020
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`
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`
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`Respectfully submitted,
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`By: /Brett A. Mangrum/
`Ryan Loveless
`
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`2 Patent Owner does not concede, and specifically denies, that there is any legitimacy
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`to any arguments in the instant Petition that are not specifically addressed herein.
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`IPR2019-01116
`U.S. Patent 7,016,676
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`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`CERTIFICATE OF COMPLIANCE
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that this Sur-
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`Reply complies with the type-volume limitation of 37 C.F.R. § 42.24(c)(1) because
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`it contains fewer than the limit of 5,