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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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`IPR2020-00756
`PATENT 9,564,952
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`PATENT OWNER SUR-REPLY
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`IPR2020-00756
`U.S. Patent No. 9,564,952
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`TABLE OF CONTENTS
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`Exhibit List ................................................................................................................ ii
`I.
`INTRODUCTION .............................................................................................. 1
`II. GOOGLE DOES NOT PROVE UNPATENTABILITY FOR
`ANY CHALLENGED CLAIM ......................................................................... 1
`A. Googe fails to defend the Petition against example substantive
`deficiencies arising from “scanning a plurality of predetermined
`frequencies for a free frequency” ............................................................... 1
`1. Paulson has not been shown to scan predetermined
`frequencies .......................................................................................... 1
`2. Paulson has not been shown to scan for a free
`frequency among predetermined frequencies ..................................... 5
`B. Google fails to prove any combination which satisfies what the
`transmitted “content” must include ............................................................ 8
`1. Google fails to persuasively defend its reliance on
`Surprenant against the logical fallacy previously
`identified ............................................................................................. 8
`2. Google incorrectly asserts the combination of
`“content” limitations recite nothing more than
`admitted prior art .............................................................................. 10
`C. Google fails to prove that Beenau cures any of the identified
`example deficiencies ................................................................................ 12
`III. CONCLUSION ................................................................................................ 13
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`EXHIBIT LIST
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`Exhibit Description
`2001
`Google’s Invalidity Contentions in Uniloc 2017 LLC v. Google LLC,
`No. 2:18-cv-552 (E.D. Tex.), dated August 26, 2019.
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`I.
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`INTRODUCTION
`For the reasons given in Uniloc’s Response (“POR”) and herein, Google fails
`to prove any challenged claim to be unpatentable.
`
`II. GOOGLE DOES NOT PROVE UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM
`Google’s Reply fails to persuasively rebut, and rather only underscores, the
`example deficiencies identified in Uniloc’s Response.
`
`A. Googe fails to defend the Petition against example substantive
`deficiencies arising from “scanning a plurality of predetermined
`frequencies for a free frequency”
`
`For the reasons outlined below, and in Uniloc’s Response, Google’s exclusive
`reliance on Paulson fails to prove obviousness of the “scanning” limitations of claim
`9. Among other example deficiencies addressed in Uniloc’s Response, Google’s
`Reply fails to persuasively defend the Petition against the following deficiencies:
`(1) obviousness of “scanning a plurality of predetermined frequencies for a
`free frequency” has not been shown by “Paulson’s sampling of
`frequencies that are not predetermined” (POR at 10-13); and
`(2) obviousness of “scanning … for a free frequency” has not been shown by
`Paulson’s sampling for the “most prevalent sounds” (id.).
`These example fatal deficiencies shall be addressed in turn.
`1. Paulson has not been shown to scan predetermined frequencies
`
`The record fails to establish that Paulson renders obvious the “predetermined”
`qualifier merely by the description of Step 402 itself. POR 10-13. According to
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`Google, Paulson discloses “the frequencies [are] initially determined in Step 402.”
`Reply at 5 (emphasis added); see also id. at 3, 4 (twice referring to “the frequencies
`initially set in Step 402”). The record simply provides no rational or evidentiary basis
`to conclude that “scanning a plurality of predetermined frequencies” is rendered
`obvious by the disclosure in Paulson allegedly directed, instead, to “frequencies
`initially determined in Step 402.” Id. (emphasis added).
`In its Reply, Google retreats to a different position that Step 404 of Paulson
`renders obvious “scanning a plurality of predetermined frequencies for a free
`frequency” ostensibly because the frequency range sampled in Step 404 is preset by
`whatever is “determined to be viable in Step 402.” Reply at 10; see also id. at 3-5.
`Paulson speaks for itself in refuting Google’s characterization. POR 10-13.
` Paulson describes its Step 404 as indiscriminately sampling frequencies
`which are “too high for the receive device to sample and demodulate.” Id. (quoting
`Paulson, 13:29-32). An example of sampled frequencies which are “too high” for the
`system to decode are represented in Figure 5 (reproduced below) as those which
`exceed the vertical axis indicated by reference 502 (i.e., the portion of the graph
`emphasized below with red highlighting).
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`Paulson, Fig. 5; see also id. at 14:34-36 (“[T]he sampling rate of the communication
`system may limit the highest frequency to a sonic frequency limit 502 as illustrated.”).
`It remains undisputed that Paulson describes Step 402 as being limited to only
`those frequencies which do not exceed “the highest frequencies … the transmit device
`can send and the receive device can detect and decode.” POR 10-11 (quoting
`Paulson, 12:53-56).
` Because Paulson makes explicit that the frequencies
`indiscriminately sampled in Step 404 include those which are too high to be viable,
`the sampled frequencies clearly are not preset by “those determined to be viable in
`Step 402,” as Google argues. Reply at 10. Thus, Paulson expressly refutes the
`interpretation that Step 402 presets the range of frequencies sampled in Step 404.
`Google cites the declaration of Mr. Lippoff as allegedly supporting the
`opposite interpretation of Paulson. Id. Google states it “disagrees that one of ordinary
`skill would have understood Paulson’s Step 404 to scan frequencies that were not
`determined to be viable in Step 402.” Id. As shown above, however, Mr. Lipoff’s
`testimony (and by extension Google’s interpretation of Paulson) “must” be discarded
`as “plainly inconsistent” with what Paulson expressly discloses. POR 13 (citing
`Ericsson Inc. v. Intellectual Ventures I LLC, 890 F.3d 1336, 1346 (Fed. Cir. 2018)
`(declarant’s opinion “must” be disregarded where it “is plainly inconsistent with the
`record.”) (quoting Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372,
`1378 (Fed. Cir. 2017).
`Google has not cured this deficiency of Paulson by raising a new (and hence
`waived) inherency theory in its Reply. Specifically, Google newly argues that Step
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`404 of Paulson must necessarily “cover at least the frequencies initially set in Step
`402.” Reply at 4. That Google’s new argument is predicated on inherency is
`confirmed by Google failing to identify any express disclosure in Paulson requiring
`that the frequency sampling of Step 404 necessarily encompasses the full range of
`frequencies allegedly initialized in Step 402.
` Proving obviousness by inherency requires meeting an exacting standard:
`“Inherency … may not be established by probabilities or
`possibilities.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d
`1186, 1195 (Fed. Cir. 2014). “The mere fact that a certain thing
`may result from a given set of circumstances is not sufficient.” Id.
`(emphasis added). Rather, a party must “show that the natural
`result flowing from the operation as taught would result in the
`performance of the questioned function.” Id. (emphasis in
`original).
`Personal Web Technologies, LLC v. Apple, Inc., 917 F.3d 1376, 1382 (Fed. Cir. 2019)
`(emphasis original). Google fails to meet this exacting standard.
`As noted above, Google’s inherency argument is that Step 404 of Paulson must
`necessarily “cover at least the frequencies initially set in Step 402,” even without
`expressly stating that this is so. Reply at 4. It is telling Google uses the equivocating
`phrase “cover at least . . . .” Id. Google’s equivocation is a tacit admission that
`Paulson’s Steps 402 and 404 address different respective frequencies. As explained
`above, the difference between steps 402 and 404 arises, at least in part, from
`Paulson’s description of Step 404 as involving frequencies which are “too high” for
`the limiting parameters of Step 402. POR 10-11 (discussing Paulson at 12:53-56 and
`13:29-32). This explicit disconnect in Paulson between Steps 402 and 404 only
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`undermines Google’s inherency theory that Step 402 necessarily sets a predetermined
`frequency range for Step 404.
`Also fatal to a theory of inherency is that Paulson does not expressly preclude
`the possibility that Step 404 ignores certain frequencies even if, as Google argues, the
`ignored frequencies are determined to be available in Step 402. Far from precluding
`such a possibility, Paulson suggests this possibility may exist. For example, Paulson
`recognizes that certain frequencies may be avoided or emphasized as having intrinsic
`advantages or disadvantages, regardless of whether they are useable by the system.
`Paulson, 14:4-9. The record simply lacks sufficient evidence to establish that Paulson
`inherently discloses the sampling of Step 404 must completely cover all frequencies
`allegedly set in Step 402, as Google newly argues in its Reply. Reply at 4.
`2. Paulson has not been shown to scan for a free frequency among
`predetermined frequencies
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`Google also fails to defend the Petition against the additional deficiency
`arising from the requirement that the claimed “scanning” is itself expressly qualified
`in terms of being “for a free frequency”—i.e., “scanning a plurality of predetermined
`frequencies for a free frequency.” Uniloc explained that “[b]ecause the claimed
`‘scanning’ pertains to ‘predetermined frequencies,’ a ‘free frequency’ selected from
`within the ‘predetermined frequencies’ is necessarily one that is transmittable” (i.e.,
`usable for implementing the method as claimed). POR at 12. Google provides no
`basis in its Reply to dispute this plain reading of the “free frequency” qualifier in its
`recited context.
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`As explained in Uniloc’s Response, Paulson’s sampling in Step 404 for the
`“most prevalent sounds” as not been shown to render obvious “scanning … for a free
`frequency” (much less for a singular free frequency).1 POR 10-13. To further
`emphasize the distinction, Uniloc again reproduces below an example description in
`the ’952 patent relevant to scanning for a free frequency:
`
`In step 604, the audio transceiver computing device 102 selects
`the free frequency from
`the plurality of predetermined
`frequencies. For example, the mobile phone can identify the first
`free frequency it scans that has no discernible signal, or that has
`no signal strength that satisfies a minimum amplitude threshold,
`or that otherwise meets a pre-established criteria for being a free
`frequency.
`
`POR at 12 (quoting Ex. 1001, 11:18‒24). In the above description of an example
`embodiment, the scanning itself identifies the “first” free frequency. Id. Google does
`not dispute this straightforward understanding of the ’952 patent.
`Contrasting the above example disclosure with Paulson, Uniloc observed that
`Paulson “uses a scheme that samples sonic frequencies regardless of whether they
`ultimately may be used to effect a successful transmission.” Id. Google replies that
`“Uniloc has provided no evidence to support this unreasonable interpretation” of
`Paulson. Reply at 10. The evidence emphasized above, and in Uniloc’s Response,
`clearly reveals otherwise. Supportive evidence includes, for example, the explicit
`
`1 In parallel litigation, Google seeks to construe “free frequency” to mean “a single
`frequency which has a noise, interference, or signal level below a predetermined
`threshold.” Ex. 1016 at Ex. A, p. 1. Google fails to alert the Board of its inconsistent
`positions or explain why such a construction is not equally applicable here.
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`disclosure in Paulson that Step 404 indiscriminately involves sampling frequencies
`that are “too high” to be usable by the system—e.g., because the sampled frequencies
`exceed the “sonic frequency limit 502” (as shown in Figure 5). Paulson, Fig. 5,
`13:29-32, 14:34-36. Google’s interpretation of Paulson (copied verbatim in the
`declaration of Mr. Lipoff) “must” be disregarded as plainly inconsistent with Paulson
`expressly discloses. Ericsson, 890 F.3d at 1346.
`Google only underscores the distinction by characterizing Step 404 of Paulson
`as determining that certain frequencies are unusable at least because they “conflict
`with ambient noise in the environment.” Reply at 4. Determining that certain
`frequencies conflict with local ambient noise, and hence are unusable, is
`distinguishable on its face from “scanning . . . for free frequency,” as recited in
`claim 9.
`Google’s citation to Step 406 of Paulson is likewise unavailing. Reply at 5.
`Paulson’s Step 406 is a binary decision as to “whether a receive device could
`potentially demodulate data from sonic carrier signals and sonic transmission
`frequencies (406).” Paulson, 13:12-14. It is helpful only to Uniloc that Paulson
`requires a separate and subsequent decision (in Step 406) to determine whether the
`frequencies that were indiscriminately sampled in Step 404 may be useable. This
`only confirms that Paulson lacks any scanning that itself renders obvious “scanning
`a plurality of predetermined frequencies for a free frequency,” as recited in claim 9
`(and hence all challenged claims).
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`B. Google fails to prove any combination which satisfies what the
`transmitted “content” must include
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`
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`Google fails to persuasively defend the Petition against the additional example
`deficiencies arising from “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,” as recited in claim 9 (and hence all
`challenged claims).
`1. Google fails to persuasively defend its reliance on Surprenant
`against the logical fallacy previously identified
`Google fails to rebut the reasoning in Uniloc’s response as to why the Petition
`relies on a logical fallacy for “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,” as recited in claim 9. POR at
`14-15. Google acknowledges that the theory of the Petition is that Surprenant’s
`“AMP ID is derived in part from ‘non-user-configurable data,’ as claimed, because
`‘the AMP ID is a unique identification string’ that is disclosed as being specific to
`‘the transmit device 101.’” Reply at 14 (emphasis added, citations omitted); see also
`POR at 14-15 (observing the same). Keeping in mind that the burden rests with
`Google, Uniloc explained that Google failed to defend its theory by proving the
`underlying premise—i.e., if an identification string is deemed unique and specific to
`a device, then it must be considered “non-user-configurable data.” POR at 14-15.
`In its Reply, Google argues it “does not contend that all data that is ‘unique
`and specific to a device’ is necessarily ‘non-user-configurable’ data.” Reply at 14.
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`Taking Google at its own word, Google admittedly cannot prove Surprenant’s AMP
`ID is derived in part from “non-user-configurable data” merely because the AMP ID
`allegedly is “a unique identification string … specific to the transmit device 101.” Id.
`(citations and internal quotations omitted). Accordingly, Google’s primary theory
`based on Surprenant fails.
`The Board need look no further than the claim language itself to deduce that
`“non-user-configurable” cannot be shown merely be alleging a unique string specific
`to a device. As Uniloc explained, the “claim language acknowledges—and indeed it
`requires—the capability for a user to configure certain ‘data’ that is nevertheless
`specific to the audio transceiver computing device.” POR at 15. Rather than dispute
`this straightforward reading of the claim language, Google again retreats to the
`position that it “has not argued that all data that is specific to the audio transceiver
`computing device is ‘non-user-configurable.’” Reply at 15-16. But Google then
`inconsistently argues, in the very next sentence, that Surprenant renders obvious the
`“non-user-configurable data” because its allegedly discloses a unique identification
`string specific to the audio transceiver computing device. Id. at 15-16. Google cannot
`have it both ways.
`The burden does not shift to Uniloc to prove what “non-user-configurable
`data” requires apart from a unique identification string specific to a device. This is
`particularly true where the claim language itself requires certain data to be both “user
`configurable” and “specific to the audio transceiver device.” The burden rests and
`remains with Google to prove obviousness by advancing a theory under a
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`construction that comports with all limitations, when properly understood in the
`surrounding context. Google simply has not met its burden.
`While Uniloc has no burden to defend patentability by advancing and
`defending a construction for “non-user-configurable data,” at a minimum, the term
`means what it says. It must be data that is not configurable by the user. Google fails
`to identify any express or inherent disclosure in Surprenant qualifying its “AMP ID”
`as data that is not configurable by the user, let alone the specific combination of
`limitations in which the “non-user-configurable data” qualifier appears. At most,
`Surprenant states “the AMP ID is a unique identification string that serves as a
`reference pointer to a larger data set stored in the receive device 103 or remote
`therefrom, and is associated with the transmit device 101 and/or the user of the
`transmit device 101.” Suprenant, 7:45-49. Nothing in that defining statement
`precludes the possibility that Suprenant’s AMP ID is user configurable. As explained
`above, and in Uniloc’s Response, the surrounding claim language itself refutes the
`notion that a unique data string associated with a device must be considered non-user-
`configurable. POR at 14-15.
`2. Google incorrectly asserts the combination of “content”
`limitations recite nothing more than admitted prior art
`Google failed to point to any statement in the ’952 patent that clearly and
`unambiguously disclaimed as admitted prior art
`the requirement, “device
`identification data including a bit array derived from user-configurable and non-user-
`configurable data specific to the audio transceiver computing device,” as recited in
`claim 9. No such disclaimer arises merely by the reference to “device fingerprints”
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`in general when incorporating certain discloses by reference, including U.S. Pat. No.
`5,490,216). Ex. 1001, 6:27-29.
`Google emphasizes a statement separated from the incorporation by reference
`by a paragraph break. Reply at 16 (citing Ex. 1001, 6:34-37). There, the ’952 patent
`begins a new description of a device fingerprint according to an example embodiment
`of the disclosure, without expressly disclaiming anything in that description as being
`known in the art. Id., 6:34-37. That the description of the device fingerprint fills the
`remainder of that column and continues through the next page only underscores the
`teachings are not something the inventors considered to be admitted prior art.
`Moreover, Google does not dispute that the ’952 patent distinguishes certain
`examples of user-configurable data and non-user-configurable data from other
`indicia that the ’952 patent identifies as being used for device fingerprinting in the
`incorporated ’216 patent. POR at 17. Simply put, nothing in the specification
`disclaims the claim language in question as admitted prior art.
`Google also does not deny that the combination of elements at issue were the
`subject of scrutiny and amendment during prosecution. POR at 18. As Uniloc
`explained, the claim amendments offered during prosecution, “which limit the recited
`‘content’ in terms of a novel combination of biometric data and ‘device identification
`data’ explicitly defined within the claim language itself (e.g., in terms of including a
`‘bit array’ that must be derived from ‘user-configurable data and non-user-
`configurable data specific to the audio transceiver computing device’), would have
`been futile and nonsensical if either the examiner or the applicant had considered this
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`claim language to recite nothing more than admitted prior art.
`C. Google fails to prove that Beenau cures any of the identified
`example deficiencies
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`Google’s alternative theory, which additionally relies on Beenau, fails to cure
`any of the example deficiencies identified above for either the “scanning” limitations
`or the specific combination of limitations directed to what the transmitted “content”
`must include.2 Google summarizes the Petition as adding Beenau as a reference for
`allegedly disclosing transmitting “a transaction request comprising transaction
`biometric sample data, an encrypted device authentication code, and a unique device
`identification code.” Reply at 21. According to Google, Beenau discloses that the
`transmitted “unique identified” is “non-user-configurable data.” Id.
`Google overlooks the context in which “non-user-configurable data” is
`claimed. Claim 9 does not recite transmitting “non-user-configurable data” itself.
`Rather, as recited in claim 9, the “non-user-configurable data” is used in combination
`with “user-configurable … data” in deriving a “bit array,” and the derived “bit array”
`is itself included as a mere part of the “device identification data” as claimed.
`Google points to no assertion of Beenau that would cure any of the identified
`example deficiencies of the “scanning” limitations. Google also fails to prove that the
`addition of Beenau as a reference would cure example deficiencies arising from the
`
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`2 Google erroneously suggests that Uniloc has waived any rebuttal concerning
`Beenau. Google places Beenau at issue by addressing alleged teachings of Beenau
`in its Reply and by suggesting Uniloc’s prior arguments are inapplicable to Beenau.
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`specific combination of limitations expressly qualifying what must be transmitted as
`“content” by the modulated carrier wave.
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`III. CONCLUSION
`For the foregoing reasons, and for those additional reasons set forth in Uniloc’s
`Response, Google has failed to show any of the challenged claims to be unpatentable.
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`Date: May 27, 2021
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` Respectfully submitted,
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`By: /Brett A. Mangrum /
`Ryan Loveless; Reg. No. 51,970
`Brett A. Mangrum; Reg. No. 64,783
`Attorneys for Patent Owner
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`CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that this Sur-Reply
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`complies with the type-volume limitation of 37 C.F.R. § 42.24(c)(1) because it
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`contains fewer than the limit of 5,600 words, as determined by the word-processing
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`program used to prepare the brief, excluding the parts of the brief exempted by 37
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`C.F.R. § 42.24(a)(1).
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`Date: May 27, 2021
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` Respectfully submitted,
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`By: /Brett A. Mangrum /
`Ryan Loveless; Reg. No. 51,970
`Brett A. Mangrum; Reg. No. 64,783
`Attorneys for Patent Owner
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
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`copy of the foregoing Patent Owner Sur-Reply, along with any accompanying
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`exhibits that were filed with the paper, was served via the PTAB E2E system and/or
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`via e-mail to Petitioner’s counsel of record.
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`Date: May 27, 2021
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` Respectfully submitted,
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`By: /Brett A. Mangrum /
`Ryan Loveless; Reg. No. 51,970
`Brett A. Mangrum; Reg. No. 64,783
`Attorneys for Patent Owner
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