Trials@uspto.gov
`571.272.7822
`
` Paper 7
`
`
`
`
` Entered: February 11, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-01471
`Patent 6,836,654 B2
`____________
`
`
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and JOHN D. HAMANN,
`Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314; 37 C.F.R. § 42.4
`
`
`
`
`
`
`

`

`IPR2019-01471
`Patent 6,836,654 B2
`INTRODUCTION
`I.
`Microsoft Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 10–20 of U.S. Patent No.
`6,836,654 B2 (Ex. 1001, “the ’654 patent”) pursuant to 35 U.S.C. § 311.
`Uniloc 2017 LLC (“Patent Owner”) filed a Patent Owner Preliminary
`Response (Paper 6, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes
`review may be instituted if “the information presented in the petition filed
`under section 311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). On
`April 24, 2018, the Supreme Court held that a decision to institute under
`35 U.S.C. § 314 may not institute on fewer than all claims challenged in the
`Petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also
`Trial Practice Guide Update (July 2019) (“TPGU”), 31 (“The Board will not
`institute on fewer than all claims or all challenges in a petition.”), available
`at https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-
`update3.pdf.
`Upon consideration of the Petition and the Preliminary Response, we
`determine that the information presented shows there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`at least one challenged claim of the ’654 patent. Accordingly, we institute
`inter partes review on all of the challenged claims based on all of the
`grounds identified in the Petition.
`
`
`2
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`

`

`IPR2019-01471
`Patent 6,836,654 B2
`A. Related Matters
`Petitioner identifies the following as related matters that involve the
`’654 patent.
`1. Uniloc 2017 LLC v. Microsoft Corp., 8-19-cv-00781 (C.D. Cal.)
`2. Uniloc USA, Inc. v. Apple Inc., 3-19-cv-01697 (C.D. Cal.)
`3. Uniloc 2017 LLC v. HTC Am., Inc., 2:18-cv-01732 (W.D. Wash.)
`4. Uniloc 2017 LLC v. Motorola Mobility, LLC, 1:18-cv-01844 (D. Del.)
`5. Uniloc 2017 LLC v. Google LLC, 2:18-cv-00493 (E.D. Tex.)
`6. Uniloc 2017 LLC v. Samsung Elecs. Am., Inc., 2:18-cv-00508 (E.D.
`Tex.)
`7. Uniloc 2017 LLC v. Huawei Device USA, Inc., 2:18-cv-00509 (E.D.
`Tex.)
`8. Uniloc 2017 LLC v. Google LLC, 2:18-cv-00422 (E.D. Tex.)
`9. Uniloc USA, Inc. v. Huawei Device USA, Inc., 2-18-cv-00357 (E.D.
`Tex.)
`10. Uniloc USA, Inc. v. Motorola Mobility, LLC, 1:18-cv-01230 (D. Del.)
`11. Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., 2:18-cv-00309 (E.D.
`Tex.)
`12. Uniloc USA, Inc. v. Huawei Device USA, Inc., 2:18-cv-00310 (E.D.
`Tex.)
`13. Uniloc USA, Inc. v. Apple Inc., 1:18-cv-00293 (W.D. Tex.)
`14. Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2019-01218
`(PTAB)
`15. Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2019-01219
`(PTAB)
`16. Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-01470 (PTAB)
`
`
`
`Pet. vii–viii. Patent Owner identifies nine of these matters as being
`“active proceedings.” Paper 3, 2.
`B. The Challenged Patent (Ex. 1001)
`The ’654 patent relates to deterring the theft of a mobile
`radiotelephony device. Ex. 1001, code (57), 1:60–65. In particular, the ’654
`patent discloses that it deters theft by making the device “totally unusable,”
`if it is stolen. Id. at 1:60–65. The ’654 patent states that it does so by
`
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`IPR2019-01471
`Patent 6,836,654 B2
`resolving what it identifies as a problem in a prior art protection method. Id.
`at 1:31–41.
`More specifically, and as described by the ’654 patent, the prior art
`method provides protection by “establishing a link between [a] device and a
`specific user identification module and blocking the normal operation of the
`device when the user identification module that is placed inside the device is
`not the one that is linked to the device.” Id. at 1:21–29. The ’654 patent,
`however, identifies as a problem with this method that “[w]hen the device is
`lost or stolen with the identification module to which it is linked,” the device
`can be freely used until the device’s network operator is notified to block the
`device, which “may take a certain period of time.” Id. at 1:31–37.
`
`In resolving this problem, the ’654 patent notes that “when the device
`falls into the hands of a third party together with the identification module to
`which it is linked, it has most probably been inactive for a period of time.”
`Id. at 1:52–54. The ’654 patent discloses that this inactive period is
`“sufficiently long” so that it can be used as a way to block the device’s
`normal operation, and to require a deblocking code to use the device, in
`accordance with the ’654 patent’s invention. Id. at 1:55–59.
`
`Figure 3, shown below, “represents a flow chart explaining the
`operation of the device,” in accordance with the invention of the ’654 patent.
`Id. at 2:26–27, 2:30–31.
`
`4
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`IPR2019-01471
`Patent 6,836,654 B2
`
`
`Figure 3 illustrates “a function flow chart of a device in accordance
`
`with the invention” of the ’654 patent. Id. at 2:61–62. Starting at box K1,
`“the device is in a state of availability, that is to say that the user has access
`to all the functions of the device.” Id. at 2:62–65. As illustrated by box K2,
`the user has the choice whether to lock the device. Id. at 2:65–66. If the
`user locks the device (box K2), “the identification module that is inside the
`device is automatically linked to the device. For this purpose, the device
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`IPR2019-01471
`Patent 6,836,654 B2
`starts reading a data D1 in the identification module (for example, the
`international identification number IMSI) and he stores it in the random-
`access memory 24,” the ’654 patent states. Id. at 2:67–3:6. As illustrated,
`“[o]nce locked, the device remains in the state of availability indicated in
`box Kl.” Id. at 3:6–7.
`
`In accordance with the ’654 patent, “[w]hen the device is in the state
`of availability, one looks whether it is locked (box K3). If it is not locked
`(arrow N3), the device remains in the state of availability indicated in box
`Kl.” Id. at 3:7–10. However, “[i]f it is locked (arrow Y3), one looks
`whether the identification module which is placed inside the device is the
`one that is linked to the device (box K4).” Id. at 3:10–13. If the
`identification module inside the device “is not the one that is linked to the
`device (arrow N4), the device goes to a first blocking state indicated in box
`K5,” and “is disconnected from the network.” Id. at 3:14–18.
`
`Alternatively, “[i]f the identification module that is placed inside the
`device is linked to the device (arrow Y4), one looks whether the device has
`remained in the state of availability for a certain period of time T . . . (box
`K10),” as illustrated. Id. at 3:32–36. If not T “(arrow N10), the device
`remains in the state of availability indicated in box K1.” Id. at 3:36–37.
`However, if the device has remained available for time period T, the device
`“passes on to a second blocking state indicated in box K11,” and
`“initialize[s] a variable A which represents the number of attempts made at
`supplying a deblocking code.” Id. at 3:37–42. “In this second blocking state
`the device only processes incoming calls (box K13) and, possibly, the
`outgoing calls that correspond to emergency numbers (box K14).” Id. at
`3:44–46.
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`IPR2019-01471
`Patent 6,836,654 B2
`
`The ’654 patent discloses that at this stage the user is prompted to
`supply a deblocking code, and “[i]f the code . . . is recognized (arrow Y11),
`the device goes back to the state of availability indicated in box Kl.” Id. at
`3:49–53. On the other hand, if the code is not recognized (arrow N11),
`variable A is tested (box K15), and if A is lower than a certain figure, A is
`incremented (box K16); otherwise “the test of box K15 causes the total
`blocking of the device indicated in box K30” (i.e., a third blocking state).
`Id. at 3:53–61. The ’654 patent discloses that “[t]o leave this third blocking
`state[,] it is necessary to contact the organization that provides the
`identification module.” Id. at 3:61–63.
`C. The Challenged Claims
`Petitioner challenges claims 10–20 of the ’654 patent. Claims 10 and
`17 are independent claims. Claim 10 is illustrative of the challenged claims
`and is reproduced below:
`10. A method of protecting a mobile radiotelephony device, the
`method comprising:
`
`ver[i]fying a user identification module mounted inside
`the mobile radiotelephony device is linked to the mobile
`radiotelephony device;
`the mobile
`inactivity of
`
`detecting a period of
`radiotelephony device during a normal operation of the mobile
`radiotelephony device, wherein the normal operation includes a
`processing of all outgoing calls;
`the mobile
`
`preventing
`the normal operation of
`radiotelephony device in response to the verification of the
`linked user identification module and in response to the detection
`of the period of inactivity of the mobile radiotelephony device.
`Ex. 1001, 5:27–40.
`
`7
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`

`IPR2019-01471
`Patent 6,836,654 B2
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`
`
`
`Claims Challenged 35 U.S.C.
`§1
`103(a)
`103(a)
`
`10–20
`10–20
`
`References/Basis
`
`Nokia,2 Barvesten3
`Barvesten, Schultz4
`
`
`Pet. 12–64. Petitioner submits the Declaration of Steven Harris (Ex. 1007),
`the Declaration of Henry Hough (Ex. 1010), and the Declaration of Timo
`Henttonen (Ex. 1014) in support of its arguments.
`§ 314(a)
`II.
`Patent Owner argues that “Petitioner’s filing of two petitions [(i.e.,
`
`this Petition and the Petition in IPR2019-01470)] on the ’654 patent at the
`same time, . . . places a substantial and unnecessary burden on the Board and
`. . . Patent Owner, and raises fairness, timing, and efficiency concerns.”
`Prelim. Resp. 9–10 (citing TPGU, 25–26). Patent Owner argues that thus
`“[a]t least one of the petitions should be denied on at least this basis.” Id. at
`11.
`Petitioner ranks this Petition over the parallel petition in IPR2019-
`
`01470. Pet. 7. For the reasons we elaborated on in our Decision on
`Institution, we exercised our discretion under § 314(a) to deny institution of
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’654
`patent issued from an application filed before March 16, 2013, we apply the
`pre-AIA version of the statutory basis for unpatentability.
`2 Owner’s Manual for the Nokia 9000i Communicator, Issue 1.1 (Ex. 1003).
`3 U.S. Patent No. 5,940,773 (issued Aug. 17, 1999) (Ex. 1006).
`4 Charles P. Schultz, Communication Device Inactivity Password Lock, 29
`MOTOROLA TECH. DEVS. 14–15 (Nov. 1996) (Ex. 1008).
`
`8
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`IPR2019-01471
`Patent 6,836,654 B2
`the parallel petition in IPR2019-01470. See Microsoft Corp. v. Uniloc 2017
`LLC, IPR2019-01470, Paper 7 (PTAB Feb. 11, 2020) (Decision on
`Institution). Hence, we did deny institution of at least one of the two
`petitions, as Patent Owners argues we should. Patent Owner’s other
`arguments that we should deny this Petition on this basis are moot.
`§ 325(d)
`III.
`
`Patent Owner argues that the Petition in this case should be denied as
`cumulative under 35 U.S.C. § 325(d). Prelim. Resp. 3–9. In particular,
`Patent Owner argues that this Petition is cumulative of the petition filed by
`Samsung Electronics America, Inc. (“Samsung”) on June 19, 2019 in
`IPR2019-01219 (“Samsung IPR”), which challenged the same claims of the
`’654 patent as here. Id. at 3.
`A. Legal Framework of 35 U.S.C. § 325(d)
`The Director has discretion to institute an inter partes review, and has
`
`delegated that discretion to the Board. See 35 U.S.C. § 314(a); see also 37
`C.F.R. § 42.4(a). Under § 325(d), in determining whether to institute an
`inter partes review, we “may take into account whether, and reject the
`petition . . . because, the same or substantially the same prior art or
`arguments previously were presented to the Office.” 35 U.S.C. § 325(d).
`Moreover, we are not limited to considering § 325(d) “in the context of a
`trial petition that raises art that is the same or substantially the same as art
`presented previously during examination,” but rather we also may consider
`§ 325(d) “in the context of a trial petition involving art that is the same or
`substantially the same as art presented previously during . . . an earlier-filed
`petition requesting an IPR.” TPGU, 30.
`
`For guidance in exercising our discretion, the Director has designated
`as precedential a portion of the Board’s decision in Becton, Dickinson & Co.
`
`9
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`

`IPR2019-01471
`Patent 6,836,654 B2
`v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17−18 (PTAB Dec.
`15, 2017) (precedential as to § III.C.5, first para.), which provides six non-
`exclusive factors for us to consider when deciding whether to exercise
`discretion to deny review under 35 U.S.C. § 325(d).
`
`The six non-exclusive Becton Dickinson factors are:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination; (b) the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art
`was the basis for rejection; (d) the extent of the overlap between
`the arguments made during examination and the manner in which
`Petitioner relies on the prior art or Patent Owner distinguishes
`the prior art; (e) whether Petitioner has pointed out sufficiently
`how the Examiner erred in its evaluation of the asserted prior art;
`and (f) the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of the prior art
`or arguments.
`Becton Dickinson, Paper 8 at 17–18.
`B. Application of Becton Dickinson Factors
`The Becton Dickinson factors are predicated on comparing a petition
`
`to another evaluation of the claims and prior art. Id. For example, factors
`(b), (c), and (e) explicitly refer to an evaluation of the prior art: factor (b)
`refers to “the prior art evaluated during examination,” factor (c) concerns
`“the extent to which the asserted art was evaluated during examination,” and
`factor (e) concerns whether “the Examiner erred in its evaluation of the
`asserted prior art.” Id. (emphases added). Moreover, factors (a), (d), and (f)
`evidence another evaluation of the claims and prior art for comparison to the
`petition: factor (a) focuses on comparing the disclosures of “the asserted art
`and the prior art involved during examination,” factor (d) relates to overlap
`between the “arguments made during examination” and those made by a
`
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`IPR2019-01471
`Patent 6,836,654 B2
`party in a post grant proceeding, and factor (f) concerns whether the petition
`shows that there should be a “reconsideration of the prior art or arguments.”
`Id. (emphases added).
`
`Here, in arguing that we should exercise our discretion under
`§ 325(d), Patent Owner does not rely on any examination by the Examiner
`during the prosecution of the ’654 patent. See generally Prelim Resp.
`Rather, Patent Owner relies on Samsung’s earlier filed petition in IPR2019-
`01219, challenging the ’654 patent. Id. at 3–4. In so doing, Patent Owner
`argues that “[w]hether or not the Board institutes review in IPR2019-01219
`. . ., the Petition in this case should be denied as cumulative of the Samsung
`IPR under 35 U.S.C. § 325(d).” Id.
`
`We disagree. In IPR2019-01219, we exercised our discretion under
`35 U.S.C. § 314(a) to deny institution. See Samsung Elecs. Am., Inc. v.
`Uniloc 2017 LLC, IPR2019-01219, Paper 7 at 14–17 (PTAB Jan. 9, 2020)
`(Decision on Institution). In so doing, we relied on the timing of the district
`court proceeding, and the undisputed argument that the same grounds
`proposed in the IPR2019-01219 petition were included in Samsung’s
`invalidity contentions in the district court proceeding. Id. at 17. We found
`that the circumstances present in IPR2019-01219 were not significantly
`different than the circumstances in NHK. Id. at 16–17 (citing NHK Spring
`Co., Ltd. v. Intri-plex Technologies, IPR2018-00752, Paper 8 at 20 (PTAB
`Sept. 12, 2018) (precedential)). On that basis, we exercised our discretion
`under § 314(a) to deny institution. Id. at 17. We did not evaluate the
`claims and the prior art. Id. At most, we recounted what arguments
`Petitioner presented. See id. at 8.
`
`Accordingly, we find Patent Owner’s arguments for purposes of a
`§ 325(d) analysis that the art asserted here is cumulative of the art
`
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`IPR2019-01471
`Patent 6,836,654 B2
`Samsung asserted in IPR2019-01219 inapposite. E.g., Prelim. Resp. 7–8.
`Put differently, we are not persuaded by Patent Owner’s arguments that the
`Becton Dickinson factors favor denying institution. Id. at 5–8. Such
`arguments are predicated on another evaluation of the claims and asserted
`art, which did not occur in IPR2019-01219. Thus, we are not persuaded that
`any of the Becton Dickinson factors favor denying institution. Simply put,
`§ 325(d)’s concerns regarding the “efficient administration of the Office”
`and the balance of “[P]etitioner’s desire to be heard against the interest of
`. . . [P]atent [O]wner in avoiding duplicative challenges to its patent,” are not
`sufficiently implicated here under our circumstances where no other
`comparable examination of the claims and prior art occurred. TPGU, 29.
`
`We also note that the Petition alleges a second ground of
`unpatentability, asserting prior art (the combination of Barvesten and
`Schultz) that was not asserted in the IPR2019-01219 proceeding.5 Compare
`Pet. 2, with Samsung, Paper 1 at 3–4 (Petition). Under the circumstances
`here, this second ground also would favor not denying institution under
`§ 325(d).
`
`We are not persuaded by Patent Owner’s argument that “any potential
`distinction between Alos and Barvesten, or between Matsukida and Schulz,
`had no apparent effect, and certainly no material effect, on the arguments
`
`
`5 Petitioner notes that Barvesten and Schultz were listed on an Information
`Disclosure Statement (“IDS”). Pet. 3. Petitioner argues that “nothing
`suggests the U.S. Examiner was aware of, much less considered, their
`disclosures during prosecution.” Id. at 3–4. Patent Owner does not address
`this argument. See generally Prelim. Resp. We find that this would not
`favor denying institution. E.g., Intex Recr. Corp. v. Team Worldwide Corp.,
`IPR2018-00871, Paper 14 at 13 (PTAB Sept. 14, 2018) (finding references
`initialed on an IDS, but not “substantively discussed during prosecution, . . .
`weighs against exercising discretion to deny under § 325(d)”).
`
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`IPR2019-01471
`Patent 6,836,654 B2
`presented in Microsoft’s Petition as compared to Samsung’s.” Id. at 9.
`Patent Owner argues, in effect, that the references (and/or combinations
`thereof) are cumulative because Petitioner argues that they render the same
`claims unpatentable. Id. Such is not a persuasive basis for finding that
`references are cumulative; otherwise, all asserted references against a claim
`would be cumulative of each other (without further analysis), which is
`untenable.
`
`We also are not persuaded by Patent Owner’s faulting of Petitioner for
`“fail[ing] to explain any material distinction between its Barvesten/Schulz
`ground and (1) the Nokia/Alos ground in the Samsung IPR, (2) the
`Matsukida/Alos ground in the Samsung IPR, or even (3) the
`Nokia/Barvesten ground in this Petition.” Id. at 8–9 (citing Medtronic, Inc.
`v. NuVasive, Inc., IPR2014-00487, Paper 8 at 6 (PTAB Sept. 11, 2014)
`(informative); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324, Paper 19 at 6 (PTAB Nov. 21, 2013) (informative)).
`
`First, Samsung’s petition did not include Barvesten or Schultz.
`Samsung, IPR2019-01219, Paper 1 at 3–4. We do not find it reasonable to
`require (without more) a different Petitioner to distinguish its asserted prior
`art from all previous assertions of unpatentability for grounds or rejections
`having no overlapping references. Moreover, Medtronic and Intelligent Bio-
`Sys. present much different circumstances than here. See Medtronic, Paper 8
`at 6 (explaining that the petition also presented “the same prior art” and
`nearly “identical challenges” to an earlier petition filed by petitioner that was
`denied institution); Intelligent Bio-Sys., Paper 19 at 5–6 (explaining that
`petitioner filed a previous petition for which trial was instituted, and that
`petitioner did not justify filing the later petition against a subset of the
`previously instituted claims).
`
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`IPR2019-01471
`Patent 6,836,654 B2
`
`Second, we are not persuaded by Patent Owner faulting Petitioner for
`not distinguishing the combination of Bravesten and Schultz over “the
`Nokia/Barvesten ground in this Petition.” Prelim. Resp. 8. We cannot
`institute on fewer than all claims or all challenges in a petition. TPGU, 31.
`Thus, even if there is some overlap, we cannot choose to implement on only
`one of the two grounds in this Petition. Id. Regardless, we are not
`persuaded that also analyzing Schultz (and as combined with Barvesten) has
`substantial impact on efficiency for the Board or the parties.
`
`In summary, the particular circumstances of this case do not indicate
`that we should exercise our discretion under 35 U.S.C. § 325(d) to deny
`institution. Accordingly, we are not persuaded that we should deny
`institution under 35 U.S.C. § 325(d).
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`To determine whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1,
`17 (1966). In assessing the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d
`955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.
`Petitioner argues that one of ordinary skill in the art at the time of the
`invention of the ’654 patent “would have a bachelor’s degree in electrical
`engineering or computer science, and one year of general programming
`experience.” Pet. 10 (citing Ex. 1010 ¶ 43). Petitioner adds that
`
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`IPR2019-01471
`Patent 6,836,654 B2
`“[a]dditional experience may substitute for education, and additional
`education may substitute for experience.” Id. at 11 (citing Ex. 1010 ¶ 43).
` Patent Owner, at this stage of the proceeding, does not identify a
`level of skill one would have had at the time of the invention of the ’654
`patent. See generally Prelim. Resp. For purposes of this Decision on
`Institution, and based on the current record, we adopt Petitioner’s
`assessment of the level of skill in the art because it is consistent with the
`’654 patent and the asserted prior art, and we apply it in our obviousness
`evaluations below.
`
`V. CLAIM CONSTRUCTION
`Because the Petition was filed after November 13, 2018, we construe
`the challenged claims by applying “the standard used in federal courts, in
`other words, the claim construction standard that would be used to construe
`the claim in a civil action under 35 U.S.C. [§] 282(b), which is articulated in
`Phillips [v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)].”6 Under
`Phillips, the words of a claim are generally given their “ordinary and
`customary meaning,” which is the meaning they would have to a person of
`ordinary skill in the art at the time of the invention, in light of the
`specification and prosecution history. See Phillips, 415 F.3d at 1312–13.
`Petitioner argues that all claim terms should have their plain and
`ordinary meaning, but also argues that certain terms would “benefit from
`construction to clarify their ordinary meaning.” Pet. 11. In particular,
`Petitioner argues that “deblocking code” and “debugging code” are
`interchangeable, and “should be interpreted to encompass a string of
`
`6 Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340, 51,343–44 (Oct. 11, 2018) (codified at 37 C.F.R. pt. 42).
`
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`IPR2019-01471
`Patent 6,836,654 B2
`characters, such as a PIN code, that can be entered to return a device to
`normal operation.” Id. at 11–12 (citing Ex. 1001, 2:11–14, 3:40–42, code
`(57); Ex. 1002, 87–117, 175).
`At this stage of the proceeding, Patent Owner does not identify any
`
`claim terms requiring construction. See generally Prelim. Resp. Nor does
`Patent Owner argue that Petitioner applies the art to the challenged claims
`inconsistently with the plain and ordinary meaning of the claim terms. Id.
`
`Accordingly, no claims terms are in controversy, at this stage of the
`proceeding, and we determine that no express constructions are needed at
`this time. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy.’”). This is a preliminary determination. A final
`determination as to claim construction will be made at the close of the
`proceeding, after any hearing, based on all the evidence of record.
`
`VI. PRINCIPLES OF LAW
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`
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`of non-obviousness, if present.7 See Graham, 383 U.S. at 17–18. When
`evaluating a claim for obviousness, we also must “determine whether there
`was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)).
`
`VII. ALLEGED OBVIOUSNESS OVER NOKIA AND BARVESTEN
`Petitioner argues that the combination of Nokia and Barvesten renders
`claims 10–20 of the ’654 patent obvious under 35 U.S.C. § 103(a). Pet. 12–
`44. At this stage of the proceeding, Patent Owner does not address
`Petitioner’s arguments and evidence that the combination of Nokia and
`Barvesten renders the claims obvious. See generally Prelim. Resp. Thus,
`we choose claim 10 as a representative claim for the focus of our analysis
`below. For the reasons that follow, we determine that Petitioner establishes
`a reasonable likelihood that it would prevail in showing that claim 10 would
`have been obvious to one of ordinary skill in the art in view of the
`combination of Nokia and Barvesten.
`
`A. Summary of Nokia
`Nokia is the “Owner’s Manual” for Nokia’s 9000i Communicator,
`
`which is “a mobile phone, messaging device, Internet access terminal and
`palmtop organizer all in one compact unit.” Ex. 1003, 1, 7. Nokia explains
`that the 9000i Communicator has two interfaces, including a phone
`interface, and a communicator interface. Id. at 7–8.
`
`For the first start-up, Nokia instructs the user to “[i]nstall the SIM
`card and switch on the phone interface before opening the communicator
`
`
`7 Patent Owner does not present arguments or evidence of such objective
`evidence of non-obviousness. See generally Prelim. Resp.
`
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`interface. In most locations, this will configure the settings for your voice
`mail and the” Short Message Service Center (“SMSC”). Id. at 10. Nokia
`instructs the reader to then perform certain other steps for configuring the
`device’s settings and completing the start-up procedure. Id. at 11.
`
`Nokia provides a “Security” section that discusses the option of
`locking the communicator, which would, inter alia, prevent outgoing calls.
`Id. at 81. Nokia also explains that “[i]f autolock is on, the communicator
`will lock automatically after [a] defined inactivity period.” Id.
`B. Summary of Barvesten
`Barvesten relates to improving security (e.g., making safe against
`
`theft) of mobile telephones having an access unit (e.g., a card) that can be
`inserted into the device. Ex. 1006, 1:10–28, 2:8–11. Barvesten teaches one
`way to improve security is “to protect the terminal unit as well as the access
`unit [by] . . . implement[ing] a ‘lock’ in the terminal unit as well as in the
`access unit wherethrough a user has to enter a code to ‘unlock’ the terminal
`unit and a further code to” get access to the card. Id. at 1:24–29. Barvesten
`teaches that “[t]his however is tedious since two different codes have to be
`entered each time upon use which is very inconvenient.” Id. at 1:29–31.
`
`Barvesten provides a solution such that a user does not have to enter
`two different codes upon every activation of a device (e.g., a mobile
`telephone). Ex. 1006, 1:42–50. To that end, Barvesten teaches storing the
`code (e.g., IMSI) for an access unit (e.g., a SIM-card) in the telephone (e.g.,
`“in an EEPROM-storage”). Id. at 3:18–25, 4:26–28. Upon subsequent
`activation of the telephone, the telephone and the card inserted therein
`communicate with each other. Id. at 4:24–26. In particular, the actual IMSI
`code of the card is compared to the IMSI-code stored in the telephone. Id. at
`4:47–50. If the card’s IMSI code corresponds to the IMSI code stored in the
`
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`telephone, the telephone starts up without asking for any further code. Id. at
`4:50–53.
`C. Challenged Claim 10
`1. Protecting a Mobile Radiotelephony Device
`Petitioner argues that Nokia teaches “[a] method of protecting a
`mobile radiotelephony device,” as recited in claim 10’s preamble. Pet. 16–
`18; id. at 16 (citing Ex. 1010 ¶¶ 121–123). More specifically, Petitioner
`argues that Nokia teaches “protecting the mobile device by describing the
`use of SIM cards as a security measure.” Id. at 17–18 (citing Ex. 1003, 11).
`Petitioner argues that Nokia also “describe[s] a locking system as an
`additional security measure.” Id. at 18 (citing Ex. 1003, 81, 111).
`2. Ver[i]fying a User Identification Module
`Petitioner argues that the combined teachings of Nokia and Barvesten
`teach “ver[i]fying a user identification module mounted inside the mobile
`radiotelephony device is linked to the mobile radiotelephony device,” as
`recited in claim 10. Id. at 19–25; id. at 19 (citing Ex. 1010 ¶¶ 124–129).
`First, Petitioner argues that Nokia teaches “mounting a user identification
`module inside a mobile phone, namely a SIM card.” Id. at 19–20 (citing
`Ex. 1003, 11–12, Figs. 2-1–2-4). Second, Petitioner argues that Nokia
`teaches “verifying the user identification module is linked to the mobile
`phone in the context of its ‘SIM change security’ feature.” Id. at 20 (citing
`Ex. 1003, 82).
`In addition, anticipating that Pat