Filed: April 15, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC,
`Petitioner,
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`v.
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`UNILOC 2017 LLC,
`Patent Owner.
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`_________________
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`Case No. IPR2020-00756
`U.S. Patent No. 9,564,952
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`GOOGLE LLC,
`Petitioner,
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`v.
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`UNILOC 2017 LLC,
`Patent Owner.
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`_________________
`
`Case No. IPR2020-00756
`U.S. Patent No. 9,564,952
`_________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`B.
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`3.
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`I.
`Introduction ...................................................................................................... 1
`II. Argument ......................................................................................................... 2
`A.
`The Paulson and Surprenant Combination Discloses “Scanning
`a Plurality of Predetermined Frequencies for a Free Frequency” ......... 2
`The Paulson, Surprenant, and/or Beenau Combinations
`Disclose “Device Identification Data Including a Bit Array
`Derived from User-Configurable and Non-User-Configurable
`Data Specific to the Audio Transceiver Computing Device” ............. 12
`1.
`Surprenant Discloses “Non-User-Configurable Data” ............. 14
`2.
`Alternatively, the Background Knowledge of One of
`Ordinary Skill, as Supported by the ’216 Patent,
`Demonstrates that Surprenant Discloses “Non-User-
`Configurable Data” ................................................................... 16
`Uniloc Fails to Challenge Whether the Paulson,
`Surprenant, and Beenau Combination Renders Obvious
`Claim 9 ...................................................................................... 20
`III. Conclusion ..................................................................................................... 22
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`IPR2020-00756: Petitioner’s Reply
`U.S. Patent No. 9,564,952
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`TABLE OF CONTENTS
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`IPR2020-00756: Petitioner’s Reply
`U.S. Patent No. 9,564,952
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) .......................................................................... 16
`Randall Mfg. v. Rea,
`733 F.3d 1355 (Fed. Cir. 2013) .......................................................................... 17
`Werner Co. v. Louisville Ladder, Inc.,
`IPR2019-00336, Paper 34 (P.T.A.B. Aug. 24, 2020) ................................... 13, 20
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`ii
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`I.
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`IPR2020-00756: Petitioner’s Reply
`U.S. Patent No. 9,564,952
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`Introduction
`Patent Owner Uniloc does not challenge most of the points Google made in
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`the Petition. Instead, Uniloc raises only two limited disputes. First, Uniloc argues
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`that Paulson fails to disclose the claimed “scanning a plurality of predetermined
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`frequencies for a free frequency.” But Uniloc’s argument is based on reading
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`portions of Paulson in ways that are inconsistent with Paulson’s express teachings,
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`such as by contending that Step 402 in Paulson’s Figure 4 is divorced from Step 404
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`despite the figure and Paulson’s text both using the results from Step 402 in that
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`figure’s following steps. Uniloc largely repeats the same arguments the Board
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`preliminarily rejected in the Institution Decision, and Uniloc provides no expert
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`testimony or other evidence that could overcome the Board’s reasoning, which is
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`supported by the testimony of Google’s expert.
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`Second, Uniloc argues that Surprenant does not disclose the claimed “bit
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`array” feature in Grounds 1 and 3, but its arguments are contradicted by Surprenant’s
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`disclosure and the knowledge of a person of ordinary skill, as demonstrated by prior
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`art discussed in the ’952 patent. Uniloc’s arguments are also incomplete, as Uniloc
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`fails to address all of the prior art cited by the ’952 patent and discussed in the
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`Petition. On this issue as well, Uniloc largely repeats arguments from its Preliminary
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`Response, which the Board preliminarily rejected in the Institution Decision. Uniloc
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`again has not provided any expert testimony or other evidence that should alter the
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`IPR2020-00756: Petitioner’s Reply
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`Board’s initial conclusions.
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`Moreover, Uniloc never attempts to rebut Google’s reliance on Beenau in
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`Grounds 2 and 4 as disclosing the claimed “bit array derived from user-configurable
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`and non-user-configurable data specific to the audio transceiver computing device.”
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`Any attempt to do so for the first time in Uniloc’s Sur-Reply should be deemed
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`waived. Accordingly, even if the Board were to agree with Uniloc that Surprenant
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`does not disclose or suggest this claimed feature, Uniloc has not presented and
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`cannot later present any challenge to Google’s grounds that rely on Beenau instead
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`of Surprenant for this feature.
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`For the reasons below, and as explained in the Petition, Google respectfully
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`requests that the Board cancel claims 9-12 of the ’952 patent as unpatentable.
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`II. Argument
`A. The Paulson and Surprenant Combination Discloses “Scanning a
`Plurality of Predetermined Frequencies for a Free Frequency”
`In the Petition, Google established that Paulson discloses “scanning a
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`plurality of predetermined frequencies for a free frequency.” (Petition at 23-29;
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`Ex. 1003 ¶¶ 65-75.) Paulson’s Figure 4 illustrates how Paulson’s system
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`(1) identifies the claimed “plurality of predetermined frequencies” at Step 402, and
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`then (2) under Steps 404-414, scans and selects “one or more frequencies” for
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`transmission from the frequencies identified in Step 402. (Petition at 23-29;
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`IPR2020-00756: Petitioner’s Reply
`U.S. Patent No. 9,564,952
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`Ex. 1003 ¶¶ 65-75; Paulson at Fig. 4, 14:10-15; Ex. 1027 ¶ 8.)
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`Despite Paulson’s disclosure, Uniloc relies on attorney argument to contend
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`that the set of frequencies identified in Step 402 is not scanned in subsequent
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`Step 404. (Paper 18, Patent Owner Response (“POR”) at 10-11.) Paulson discloses
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`that, “[i]n one instance, the sonic transmission frequencies available according to the
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`noise characteristic may be too high for the receive device to sample and
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`demodulate.” (Paulson at 13:29-32.) Uniloc argues that this disclosure is
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`inconsistent with Step 402 because, if “frequencies are initially determined by the
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`highest frequencies the transmit device can send and the receive device can detect
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`and decode,” there should be no instance where a selected frequency is “too high”
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`for the receive device to sample and demodulate. (POR at 11 (quoting Paulson at
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`12:53-56, 13:29-32).) According to Uniloc, this demonstrates that the initial
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`frequency sampling in Step 402 “must have been outside ‘the highest frequencies
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`. . . the receive device can detect and decode,’” so Step 402 is unrelated to Paulson’s
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`later steps, including Step 404. (Id. (quoting Paulson at 12:53-56).)
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`But Uniloc misunderstands Paulson’s disclosure in several key ways. Most
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`fundamentally, Uniloc’s view that the frequencies initially set in Step 402 are not
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`scanned in Step 404 thwarts Paulson’s central goal and breaks the remainder of
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`Paulson’s Figure 4. In particular, starting at its title and throughout its disclosure,
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`Paulson’s goal is to “use[] modulation frequencies that reduce the probability of
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`IPR2020-00756: Petitioner’s Reply
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`conflict with ambient noise in the environment.” (Paulson at Cover, Item (54)
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`(Title).) Figure 4 discloses techniques for doing so, and Paulson describes Figure 4
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`as “a flowchart representation of the operations for implementing sonic transmission
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`strategies that reduce the probability of interference from noise.” (Id. at 3:1-4;
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`Ex. 1027 ¶ 10.)
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`To achieve this goal of reducing the probability of interference from noise, it
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`is essential for the noise characteristic created in Step 404 to cover at least the
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`frequencies initially set in Step 402. (Ex. 1027 ¶ 11.) If it did not, then there would
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`be no way to determine whether noise may interfere with demodulating data
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`transmitted on the set of sonic transmission frequencies that Paulson discloses are
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`“initially determined” at Step 402. (Paulson at 12:53-56; Ex. 1027 ¶ 11.) Paulson’s
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`Step 406—called “Could Noise Interfere With Demodulating Data From Set of
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`Sonic Transmission Frequencies?”—is directed to making this determination.
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`(Ex. 1027 ¶ 12.) The Figure 4 excerpt below shows that the answers to Step 406 are
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`“Yes” or “No,” meaning the system determines that noise could interfere or it could
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`not.
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`IPR2020-00756: Petitioner’s Reply
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`(Paulson at Fig. 4 (excerpted, annotated); see also id. at 13:27-29, 13:50-52;
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`Ex. 1027 ¶ 12.)
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`But under Uniloc’s view—where the frequencies scanned in Step 404 do not
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`correspond to the frequencies initially determined in Step 402—Step 406 would
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`have no relevant information about whether noise could interfere, so it could not
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`provide either a “Yes” or a “No.” (Ex. 1027 ¶ 13.) The answer would be undefined,
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`and the central aim of Paulson’s technology would be frustrated. (Id.) This is not
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`how one of ordinary skill in the art would have interpreted Paulson. (Id.)
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`Uniloc’s argument also does not account for the fact that environmental noise,
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`as determined by and reflected in the noise characteristic, influences what
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`frequencies a receiving device is able to sample and demodulate. In the absence of
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`IPR2020-00756: Petitioner’s Reply
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`noise, a receiving device may be able to sample and demodulate an incoming
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`transmission on a wide range of frequencies. (Id. ¶ 14.) But once noise (and the
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`resulting change to the signal-to-noise ratio) is taken into account, that same device
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`may be incapable of doing so at each of those same frequencies. (Id.)
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`Paulson elaborates on this concept with reference to Step 406. Its text
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`discloses at least two examples when noise may interfere, including Uniloc’s cited
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`example in italics:
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`Using the noise characteristic, the present invention determines
`whether a receive device could potentially demodulate data from
`sonic carrier signals and sonic transmission frequencies (406). . . .
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`It may be determined that the receive device is incapable of
`demodulating data transmitted over the set of sonic transmission
`frequencies (406—Yes). In one instance, the sonic transmission
`frequencies available according to the noise characteristic may
`be too high for the receive device to sample and demodulate.
`Alternatively, it is also possible that noise in the area covers a wide
`sonic spectrum leaving no sonic transmission frequencies
`available even at the highest frequencies of the communication
`system.
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`(Id. at 13:11-35 (bold and italics added).)
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`In the italicized example, if lower frequencies are not available (e.g., if there
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`is a continuous low-frequency rumble in the area), the noise characteristic may show
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`that higher frequencies are the frequencies most likely to result in a successful
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`transmission. (Ex. 1027 ¶ 16.) The level of noise at these frequencies, however,
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`may still be high enough to render the receive device incapable of receiving a
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`transmission because the resulting signal-to-noise ratio may not meet the receive
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`device’s requirements for reliable reception. (See Paulson at 13:52-59; see also id.
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`at 11:5-12; Ex. 1027 ¶ 16.) Thus, at Paulson’s Step 406, the system determines
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`whether the receive device is able to sample and demodulate the data in the presence
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`of the known noise. (Ex. 1027 ¶ 16.)
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`In other words, at Step 406 using the noise characteristic, the system verifies
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`whether the receive device may reliably receive the data at the identified frequency
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`given the now-known signal-to-noise ratio. (Paulson at 13:50-59; Ex. 1027 ¶ 17;
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`see also Petition at 26-27; Ex. 1003 ¶ 72.) As Paulson explains, “[i]f the signal-to-
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`noise (SNR) ratio at these frequencies is higher than a predetermined threshold, it is
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`probable that the receive device could demodulate data when the sonic carrier signals
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`are transmitted.” (Paulson at 13:56-59; Ex. 1027 ¶ 17; see also Petition at 26-27;
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`Ex. 1003 ¶ 72.) If the signal-to-noise ratio is too low, then the system may need to
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`wait for the noise to abate, such as in Paulson’s example where the system delays
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`transmitting until after a coffee grinder stops generating noise. (Paulson at 11:27-
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`IPR2020-00756: Petitioner’s Reply
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`35; Ex. 1027 ¶ 17; see also Petition at 28 (discussing this same example).)
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`This is why, after the initial determination in Step 402, Paulson performs a
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`secondary check for whether the receiving device is capable of sampling and
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`demodulating the incoming transmission. (Ex. 1027 ¶ 18.) It also explains why
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`Paulson links this secondary check directly to the noise characteristic, stating in
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`Uniloc’s quoted passage that, “[i]n one instance, the sonic transmission frequencies
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`available according to the noise characteristic may be too high for the receive device
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`to sample and demodulate.” (Paulson at 13:29-32 (emphasis added); Ex. 1027 ¶ 18.)
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`The remaining Paulson disclosures are consistent with Google’s view of
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`Paulson and do not support Uniloc. For instance, Paulson states that in Step 402 the
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`“frequencies are initially determined by the highest frequencies the transmit device
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`can send and the receive device can detect and decode.” (Paulson at 12:53-56
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`(emphasis added).) The phrase “initially determined,” in conjunction with Paulson’s
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`disclosures about further refining the available frequencies in light of the noise
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`characteristic of the surrounding environment (see Petition at 24-29), conveys that
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`the range of frequencies identified at Step 402 is related to the later steps in
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`Paulson’s process. (Ex. 1027 ¶ 19.)
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`Uniloc’s argument is premised on breaking the link between these steps,
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`contending that the frequencies scanned in step 404 are an “indiscriminate range of
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`sonic frequencies.” (POR at 11 (internal quotations omitted).) But Paulson belies
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`IPR2020-00756: Petitioner’s Reply
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`this notion for the reasons discussed above, and it depicts a direct link between the
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`output of Step 402 and the input of Step 404, as shown in the Figure 4 excerpt below.
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`(Paulson at Fig. 4 (excerpted, annotated); Ex. 1027 ¶ 20.)
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`Moreover, under Uniloc’s argument, Paulson discloses an inefficient system
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`that generates a noise characteristic for a wide array of frequencies that its
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`transmitting and receiving devices have no hope of using and that could have been
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`ruled out at Step 402. (Ex. 1027 ¶ 21.) For instance, if the transmitting and receiving
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`devices are capable of communicating only below 15 KHz, it would be wasteful to
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`spend resources generating a noise characteristic above 15 KHz. (Id.) Nonetheless,
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`this is the reading Uniloc advocates of Paulson, contending that Paulson “uses a
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`scheme that samples sonic frequencies regardless of whether they ultimately may be
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`IPR2020-00756: Petitioner’s Reply
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`used to effect a successful transmission.” (POR at 12.) Nothing in Paulson suggests
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`such an inefficient system, and Uniloc has provided no evidence to support this
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`unreasonable interpretation. (Ex. 1027 ¶ 21.)
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`In light of Paulson’s teachings, as Google’s expert Mr. Lipoff explained, one
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`of ordinary skill would have understood that the frequencies identified in Step 402
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`are scanned during subsequent steps to determine which are free for transmission.
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`(Ex. 1003 ¶¶ 67-70.) Uniloc offers no expert testimony to the contrary, and Uniloc
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`did not cross-examine Google’s expert on this issue (or any other).1
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`Although Google disagrees that one of ordinary skill would have understood
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`Paulson’s Step 404 to scan frequencies that were not determined to be viable in Step
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`402, even if Uniloc were correct that Step 404 may scan frequencies beyond those
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`set in Step 402, this would not alter the unpatentability analysis. Indeed, Uniloc’s
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`argument appears to impose requirements beyond what is claimed. The disputed
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`1 Uniloc attempts to discredit Google’s expert by contending that his
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`testimony is “plainly inconsistent with the express disclosure in Paulson discussed
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`above.” (POR at 13.) But as demonstrated in the Petition and this Reply, Google’s
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`expert’s testimony, which is consistent with the explanations above, is not only
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`consistent with Paulson, it is the only reasonable reading of Paulson.
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`aspect of claim 9 recites “scanning a plurality of predetermined frequencies for a
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`free frequency.” Thus, if the scanning that occurs when generating the noise
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`characteristic in Step 404 encompasses two or more (i.e., a plurality) of the
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`frequencies that were predetermined in Step 402, the scanning meets the
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`requirements of the claim. It is irrelevant to the claims whether the scanning in Step
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`404 also covers additional frequencies beyond those that were predetermined in Step
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`402. Because one of ordinary skill would have understood Paulson to disclose or
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`suggest that the noise characteristic generated in Step 404 encompasses scanning at
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`least the frequencies predetermined in Step 402, thereby allowing Paulson to achieve
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`its goal of using frequencies that reduce the probability of a conflict with ambient
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`noise, Paulson discloses or suggests the claimed “scanning a plurality of
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`predetermined frequencies for a free frequency.” (Ex. 1027 ¶ 22.)
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`Finally, Uniloc notes that Paulson’s scanning can result in “frequencies that
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`are ‘available according to the noise characteristic’ yet are not usable for
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`transmission.” (POR at 12-13 (quoting Paulson at 13:29-32).) But the claims do
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`not exclude systems that may occasionally fail to find a free frequency, and as
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`explained in the Petition, Paulson’s system iterates until it finds a free frequency.
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`(Petition at 23-29.) In particular, Paulson discloses that if its system does not find a
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`free frequency initially (e.g., Step 406 returns a “Yes,” indicating that noise could
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`interfere), its system may then wait and try again (e.g., Step 408) until the system
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`eventually determines that noise would not interfere (e.g., Step 406 returns a “No,”
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`IPR2020-00756: Petitioner’s Reply
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`indicating that noise could not interfere, and the system then proceeds to Step 410).
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`(Paulson at Fig. 4.) Once the system determines that noise would not interfere, it
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`selects a free frequency. This meets the express language of the challenged claims,
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`and Uniloc’s contrary argument should be rejected.
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`For these reasons, the Board should confirm its preliminary finding in the
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`Institution Decision that “Paulson’s sonic transmission method teaches ‘scanning a
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`plurality of predetermined frequencies for a free frequency.’” (Institution Decision,
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`Paper 15 at 15-18.)
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`B.
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`The Paulson, Surprenant, and/or Beenau Combinations Disclose
`“Device Identification Data Including a Bit Array Derived from
`User-Configurable and Non-User-Configurable Data Specific to
`the Audio Transceiver Computing Device”
`Uniloc’s arguments that the Paulson and Surprenant combination fails to
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`disclose claim 9’s “device identification data including a bit array derived from user-
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`configurable and non-user-configurable data specific to the audio transceiver
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`computing device” are nearly identical to those raised in the Preliminary Response.
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`(Compare Preliminary Response, Paper 9 at 22-25, with POR at 15-19.) The Board
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`correctly rejected these arguments in the Institution Decision, and Uniloc does not
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`raise any new arguments (or new evidence) in its Response. As explained below,
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`both Surprenant and the background knowledge of one of ordinary skill in the art,
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`as evidenced by prior art discussed in the ’952 patent, demonstrates that the claimed
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`“non-user-configurable data specific to the audio transceiver computing device” is
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`obvious.
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`Moreover, and ultimately fatal to Uniloc’s arguments here, Uniloc does not
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`address all of the Petition’s grounds. As the Petition demonstrated, even if Uniloc
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`were to convince the Board that the combination of Paulson and Surprenant does
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`not render obvious claim 9’s “bit array derived from user-configurable and non-user-
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`configurable data specific to the audio transceiver computing device,” Beenau
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`renders this feature obvious. (Petition at 58-62.)
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`Because Uniloc ignored this ground, Uniloc’s arguments regarding the
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`Paulson and Surprenant combination are alone insufficient. In addition, any attempt
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`to address Beenau on this issue in the Sur-Reply—after Google has filed its last
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`substantive brief in the case and is unable to respond—is too late. (See Scheduling
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`Order, Paper 16 at 8 (“Patent Owner is cautioned that any arguments not raised in
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`the response may be deemed waived.”).) See, e.g., Werner Co. v. Louisville Ladder,
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`Inc., IPR2019-00336, Paper 34 at 39 (P.T.A.B. Aug. 24, 2020) (“Patent Owner’s
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`arguments made for the first time in its Sur-reply are waived because they were not
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`made in the Patent Owner Response, and Petitioner relied on their absence to its
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`detriment and was deprived of the chance to present arguments and evidence in its
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`Reply to rebut Patent Owner’s assertions.”).
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`IPR2020-00756: Petitioner’s Reply
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`1.
`Surprenant Discloses “Non-User-Configurable Data”
`In the Petition, Google explained how Surprenant’s AMP ID is derived in part
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`from “non-user-configurable data,” as claimed, because “‘the AMP ID is a unique
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`identification string’ that is disclosed as being specific to ‘the transmit device 101.’”
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`(Petition at 45 (quoting Surprenant at 7:45-49; Ex. 1003 ¶ 107).) Uniloc argues that
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`“one cannot reasonably conclude an identification string is non-user-configurable
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`simply ‘because’ it is purportedly unique and specific to a device.” (POR at 14.)
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`This misstates Google’s arguments in the Petition; Google does not contend that all
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`data that is “unique and specific to a device” is necessarily “non-user-configurable”
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`data. Further, Uniloc’s attorney argument is contrary to the record evidence.
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`Google’s expert, Mr. Lipoff, explained that, “[b]ecause the AMP ID is
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`disclosed as a ‘unique identification string’ specific to a transmit device, one of
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`ordinary skill would have understood it to be derived from a unique property of the
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`device itself that is not user-configurable.” (Ex. 1003 ¶ 107 (quoting Surprenant at
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`7:45-49).) Mr. Lipoff further explained that a device’s serial number is one example
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`of a unique identifier that would help uniquely identify the transmit device. (Id.
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`¶ 109.) This expert testimony, which is based on Surprenant’s disclosure, remains
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`unrebutted by any contrary expert testimony.2
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`Moreover, as the Board explained, “Uniloc . . . does not elaborate as to what
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`teachings would be required in addition to ‘a unique identification string . . .
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`associated with the transmit device,’ that would be necessary to account for the
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`claimed ‘non-user-configurable data.’” (Institution Decision, Paper 15 at 25
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`(quoting Surprenant at 7:45-49).) Uniloc declined to elaborate in its Patent Owner
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`Response and, in repeating its arguments from the Preliminary Response, has not
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`provided the Board with any reason to alter its preliminary conclusion that
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`Surprenant discloses or suggests this feature.
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`Uniloc also contends its argument is supported by the claim language because
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`“claim 9 itself reveals that users can and do configure data that is unique and specific
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`to a device.” (POR at 15.) But again Google has not argued that all data that is
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`specific to the audio transceiver computing device is “non-user-configurable.”
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`Instead, Google explained how both the non-user-configurable data (e.g., a unique
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`2 Mr. Lipoff further explained that “Paulson also provides the consistent
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`teaching of transmitting ‘identifiers’ specific to ‘their respective registered devices.’
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`(Paulson at 5:16-27.)” (Ex. 1003 ¶ 107 n.8; see also Petition at 46 n.11.) Uniloc
`
`did not address this testimony or disclosure in Paulson.
`
`15
`
`
`
`
`
`
`
`identification string, such as a serial number) and user-configurable data (e.g.,
`
`IPR2020-00756: Petitioner’s Reply
`U.S. Patent No. 9,564,952
`
`
`
`credentials) are specific to the audio transceiver computing device. (Petition at 46-
`
`47 (citing Surprenant at 7:53-57, 7:45-49; Ex. 1003 ¶ 109).) The Board made a
`
`similar preliminary finding in the Institution Decision, and Uniloc again did not
`
`respond beyond repeating the arguments from its Preliminary Response. (Institution
`
`Decision, Paper 15 at 24 (citing Petition at 46-47).)
`
`2.
`
`Alternatively, the Background Knowledge of One of
`Ordinary Skill, as Supported by the ’216 Patent,
`Demonstrates that Surprenant Discloses “Non-User-
`Configurable Data”
`To the extent any ambiguity exists in Surprenant’s disclosure, Google
`
`explained that “it would have been obvious to use any of the options that the ’952
`
`patent specification admits were well-known,” including those disclosed in the ’216
`
`patent. (Petition at 46 (citing Ex. 1003 ¶ 108).)
`
`Although Uniloc’s arguments in response continue to be unavailing for the
`
`reasons discussed below, Uniloc does not respond to the Board’s determination that
`
`the ’216 patent may still be relevant, irrespective of any incorporation by reference,
`
`as evidence of the background knowledge of one of ordinary skill. (Institution
`
`Decision, Paper 15 at 26-27 (citations omitted).) The Board’s preliminary findings
`
`on this issue are supported by case law, and Uniloc has provided no basis to
`
`reconsider those findings. See Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d
`
`16
`
`
`
`
`
`
`
`1359, 1365 (Fed. Cir. 2015); Randall Mfg. v. Rea, 733 F.3d 1355, 1362-63 (Fed. Cir.
`
`IPR2020-00756: Petitioner’s Reply
`U.S. Patent No. 9,564,952
`
`
`
`2013) (both cases cited in the Institution Decision, Paper 15 at 26-27).
`
`Instead, Uniloc contends that, given the context in which the ’216 patent was
`
`addressed in the ’952 patent, “the ’216 patent can hardly be considered a clear and
`
`unambiguous admission that it was known to derive a ‘bit array’ from ‘non-user-
`
`configurable data specific to the audio transceiver computing device.’” (POR at 16-
`
`17.) The ’952 patent, however, discloses that “[d]evice fingerprints and generation
`
`thereof are known and are described [in the ’216 patent and other patent application
`
`publications] . . . , the descriptions of which are fully incorporated herein by
`
`reference.” (’952 patent at 6:27-33 (emphasis added).) It then explains that, “[i]n
`
`general, the device fingerprint comprises a bit string or bit array that includes or is
`
`derived from user-configurable and non-user-configurable data specific to the audio
`
`transceiver computing device 102.” (Id. at 6:34-37 (emphasis added).) In its Patent
`
`Owner Response, Uniloc omits this portion of the quoted language, which directly
`
`ties the prior-art “device fingerprint” to the claimed features. (See POR at 16,
`
`stopping the block quote just before this language.)
`
`In addition to the ’952 patent expressly linking the known device fingerprints
`
`to the claimed features, Google explained in the Petition how the common features
`
`of device fingerprints, including non-user-configurable data, user-configurable data,
`
`and other forms of indicia, disclose or suggest the claimed features. (Petition at 43-
`
`17
`
`
`
`
`
`
`
`46.) The Board preliminarily agreed, and Uniloc has not presented any new evidence
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`IPR2020-00756: Petitioner’s Reply
`U.S. Patent No. 9,564,952
`
`
`
`or argument in response. (Institution Decision, Paper 15 at 26.) To the contrary,
`
`with the exception of correcting one typographical error, the section of Uniloc’s
`
`Patent Owner Response that addresses this issue is a verbatim copy of the same
`
`section in its Preliminary Response. (Compare POR at 15-19, with Preliminary
`
`Response, Paper 9 at 22-25.)
`
`Uniloc focuses exclusively on the ’216 patent and does not even mention,
`
`much less challenge, Google’s additional citation of the “unique manufacturer
`
`characteristics” (e.g., manufacturer ID or serial number) disclosed in other prior art
`
`cited by the ’952 patent as an additional example of the data that would have been
`
`obvious to use to derive an AMP ID. (Petition at 46 (quoting Ex. 1010 ¶ [0045]);
`
`’952 patent at 6:22-33.) This is presumably because, as Google explained in the
`
`Petition, a dependent claim in the ’952 patent expressly recites that the “non-user-
`
`configurable data comprises hardware component numbers, serial numbers, and
`
`version numbers.” (’952 patent at 14:50-52 (claim 8) (cited in Petition at 45 n.10).)
`
`There is no basis for excluding these prior-art features from the claims.
`
`The closest Uniloc comes to attempting to refute this fact is to argue that the
`
`’952 patent identifies “manufacture name, model name, and/or device type” as other
`
`indicia separate from user-configurable data and non-user-configurable data. (POR
`
`at 17 (quoting ’952 patent at 6:37-47).) Uniloc has not explained how these
`
`18
`
`
`
`
`
`
`
`additional indicia fail to qualify as non-user-configurable data. Regardless, Google
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`IPR2020-00756: Petitioner’s Reply
`U.S. Patent No. 9,564,952
`
`
`
`does not rely on these “other indicia” alone for the non-user-configurable data
`
`feature of the claims. Instead, Google relies on features like the unique “hardware
`
`identifier (e.g., ROM checksum)” and “unique manufacturer characteristics” (e.g.,
`
`serial number) disclosed in the prior art cited by the ’952 patent. (Petition at 46
`
`(quoting Ex. 1009 at 4:25-29; Ex. 1010 ¶ [0045]) (citing Ex. 1009 at 4:6-11;
`
`Ex. 1003 ¶ 108); ’952 patent at 6:22-33.) Thus, even if Uniloc had provided support
`
`for excluding the “manufacture name, model name, and/or device type” from the
`
`category of non-user-configurable data, this has no effect on Google’s argument.
`
`Uniloc also repeats the same pre-institution prosecution history arguments,
`
`alleging that claim amendments limiting the recited “content” to a combination of
`
`biometric data and device identification data “would have been futile and
`
`nonsensical if either the examiner or the applicant had considered this claim
`
`language to recite nothing more than admitted prior art.” (POR at 19.) But as the
`
`Board correctly explained, and to which Uniloc provided no response, there is no
`
`indication that the Examiner even considered the issue of whether the ’216 patent
`
`constituted admitted prior art or evidence of the general background knowledge
`
`possessed by one of ordinary skill. (Institution Decision, Paper 15 at 27.) There is
`
`also no evidence that the Examiner considered the teachings of the ’216 patent
`
`during prosecution. (See generally Ex. 1002; see also Institution Decision, Paper 15
`
`19
`
`
`
`
`
`
`
`at 27 (finding same).) Additionally, Uniloc’s prosecution history argument only
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`IPR2020-00756: Petitioner’s Reply
`U.S. Patent No. 9,564,952
`
`
`
`applies in the context of admitted prior art; it fails to consider that the patents and
`
`patent applications cited by the ’952 patent are also evidence of the background
`
`knowledge of one of ordinary skill.
`
`For these reasons, the Board should confirm its preliminary finding in the
`
`Institution Decision that the combination of Paulson and Surprenant discloses or
`
`suggests “wherein the content includes device identification data including a bit
`
`array derived from user-configurable and non-user-configurable data specific to the
`
`audio transceiver computing device.” (Institution Decision, Paper 15 at 22-27.)
`
`3.
`
`Uniloc Fails to Challenge Whether the Paulson, Surprenant,
`and Beenau Combination Renders Obvious Claim 9
`As the Petition demonstrated, even if Uniloc contends that the Paulson and
`
`Surprenant combination does not render obvious claim 9’s “device identification
`
`data including a bit array derived from user-configurable and non-user-configurable
`
`data specific to the audio transceiver
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