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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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`GOOGLE LLC
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`Petitioner
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`v.
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`UNILOC 2017 LLC
`Patent Owner
`
`
`
`IPR2020-00756
`
`PATENT 9,564,952
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`
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`PATENT OWNER RESPONSE TO PETITION
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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
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`I.
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`INTRODUCTION .............................................................................................. 1
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`II. OVERVIEW OF THE ’952 PATENT ............................................................... 1
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`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................... 6
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`IV. CLAIM CONSTRUCTION ............................................................................... 6
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`A. Overview of respective claim construction positions advanced
`by the parties in parallel litigation .............................................................. 7
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`V. PETITIONER DOES NOT PROVE UNPATENTABILITY FOR
`ANY CHALLENGED CLAIM ......................................................................... 9
`
`A. Example substantive deficiencies arising from “scanning a
`plurality of predetermined frequencies for a free frequency” .................. 10
`
`B. Example substantive deficiencies arising from limitations
`directed to what the transmitted “content” must include ......................... 13
`1. Petitioner’s reliance on Surprenant is predicated on
`fallacy ................................................................................................ 14
`2. Petitioner incorrectly asserts the combination of
`“content” limitations recite nothing more than
`admitted prior art .............................................................................. 15
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`C. No Prima Facie Obviousness for any challenged dependent
`claim ......................................................................................................... 19
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`VI. RELATED MATTERS .................................................................................... 19
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`VII. CONCLUSION ................................................................................................ 20
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`CERTIFICATE OF COMPLIANCE .......................................................................... i
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`CERTIFICATE OF SERVICE ................................................................................... i
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`i
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`IPR2020-00756
`U.S. Patent No. 9,564,952
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`Exhibit Description
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`EXHIBIT LIST
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`2001
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`Google’s Invalidity Contentions in Uniloc 2017 LLC v. Google LLC,
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`No. 2:18-cv-552 (E.D. Tex.), dated August 26, 2019.
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`ii
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`IPR2020-00756
`U.S. Patent No. 9,564,952
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Response to the
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`Petition for Inter Partes Review (“Pet.” or “Petition”) of United States Patent No.
`
`9,564,952 (“the ’952 patent” or “Ex. 1001”) filed by Google LLC (“Google” or
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`“Petitioner”) in IPR2020-00756. The Petition fails to prove obviousness of the claims
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`challenged therein—i.e., independent claim 9 and claims 10‒12 depending
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`therefrom.
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`II. OVERVIEW OF THE ’952 PATENT
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`The ’952 patent, titled “Near Field Authentication Through Communication of
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`Enclosed Content Sound Waves,” issued on Feb. 7, 2017 and claims priority to a
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`provisional application filed on Feb. 6, 2012.
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`In general, the ’952 patent teaches a method for near field authentication of a
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`computing device, such as a cell phone, using sound waves. The teachings can be
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`used, for example, to authenticate a transaction in a store between (i) a point-of-sale
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`computer (i.e., a computerized cash register) operated by a merchant and (ii) a mobile
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`phone operated by a customer who is doing business inside the store. The invention
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`is particularly useful for virtual credit card transactions in which credit card
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`information is exchanged between the point-of-sale computer and the mobile phone.
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`See Ex. 1002 (Prosecution History), p. 5−6 (providing a patentee’s overview of the
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`claimed invention).
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`In lieu of or in addition to a WAN or Internet-based authentication procedure
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`in which the merchant’s computer verifies a credit card number provided by the
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`1
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`IPR2020-00756
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`mobile phone, the invention provides a way to verify that the transaction is in fact
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`being authorized by a customer who is physically present inside the store and who is
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`a registered owner of the mobile phone. It does this by using near-field signals
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`transmitted between the mobile phone and the merchant’s computer. Near-field
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`signals are low power signals limited to transmission over very short distances (e.g.,
`
`as measured in centimeters or feet). Id.
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`In certain embodiments, to authenticate the transaction, the merchant computer
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`may send a text message to the mobile phone asking the customer to transmit a device
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`identifier or biometric identifier (or both) to the merchant’s computer using a sound
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`wave. Because sound waves generated through the acoustic speaker of a mobile
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`phone are very low power signals, when such a wave is picked up by the microphone
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`of the merchant computer, it provides a very high level of confidence that the
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`customer is physically present inside the store, and probably within a few feet of the
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`merchant computer. The invention allows the customer’s mobile phone to modulate
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`the sound wave with an encoded message (i.e., a “periodic enclosed content
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`message”) that contains the device identifier data and/or the biometric identifier. The
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`merchant computer can then decode the message, extract the identifier, and compare
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`it against a list of pre-authorized identifiers to complete the authentication. Id.
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`To discern the identifier, the merchant computer is constantly “listening” on a
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`plurality of frequencies, whether acoustic or electromagnetic. There may be multiple
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`mobile devices simultaneously attempting local transactions with the merchant
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`computer. Therefore, according to the invention, each mobile device must scan the
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`2
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`frequencies to identify a free frequency, then transmit a signal on that frequency in
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`the form of a periodic enclosed content message encoded with the device and/or
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`biometric identifier. To extract the encoded identifier, the merchant computer hears
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`the periodic signal, and must then detect beginning and end points within the signal
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`that enclose the encoded bit pattern that comprises the identifier. The invention
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`therefore provides a periodic enclosed content message that includes a “begin
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`indication,” a “content,” and an “end indication.” Id.
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`In this manner, the identifier(s) may be extracted from the content portion of
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`the signal to authenticate the transacting mobile device. This will help to prevent
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`fraudulent transactions that involve stolen account numbers. For example, a thief
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`who has copied a stolen credit card number to his own mobile device is prevented
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`from completing a virtual credit card transaction from a remote location when
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`prompted for near-field authentication. And locally, the thief is prevented from
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`completing the transaction through inability to generate the correct device or
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`biometric identifier using near-field waves. Id.
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`The process flow of a preferred embodiment is described, at least in part, with
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`reference to Figure 6 (reproduced below).
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`3
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`U.S. Patent No. 9,564,952
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`Ex. 1001, Fig. 6. As shown in Figure 6 (reproduced above), in a preferred
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`embodiment, authentication occurs between an audio receiving computing device and
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`an audio transceiver computing device. Id., 11:4−59. In step 602, the audio
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`transceiver computing device scans a plurality of predetermined frequencies for a free
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`frequency. In step 604, the audio transceiver computing device selects the free
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`4
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`IPR2020-00756
`U.S. Patent No. 9,564,952
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`frequency from the plurality of predetermined frequencies. In step 606, the audio
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`transceiver computing device generates a content message. In step 608, the audio
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`transceiver computing device generates a modulated carrier wave representing the
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`content message. In step 610, the audio transceiver computing device 102 transmits
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`the modulated carrier wave at the free frequency.
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`Claim 9 is the only independent claim challenged in the Petition. For ease of
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`reference, the text of challenged independent claim 9 is reproduced here:
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`9. A method for near field authentication of a source, the source
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`using an audio transceiver computing device, the method comprising:
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`scanning a plurality of predetermined frequencies for a free
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`frequency;
`
`selecting the free frequency from the plurality of predetermined
`
`frequencies;
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`generating a periodic enclosed content message;
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`generating a modulated carrier wave representing the periodic
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`enclosed content message; and
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`transmitting the modulated carrier wave at the free frequency;
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`wherein each period of the periodic enclosed content message
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`includes a begin indication, a content, and an end indication;
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`wherein the content includes device identification data including
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`a bit array derived from user-configurable and non-user-configurable
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`data specific to the audio transceiver computing device; and wherein
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`the modulated carrier wave comprises a sound wave.
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`5
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`U.S. Patent No. 9,564,952
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`III. LEVEL OF ORDINARY SKILL IN THE ART
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`Petitioner asserts that a person of ordinary skill “would have held at least a
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`bachelor’s degree in electrical engineering or computer science and had one year of
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`relevant experience in the field of wireless communications.” Pet. 8‒9. The Petition
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`further asserts that “[l]ess work experience may be compensated by a higher level of
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`education, such as a master’s degree, and vice versa.” Id. Petitioner’s proposed
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`definition of person of ordinary skill is improper at least because it fails to define
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`relational thresholds for either “[l]ess work experience” and “higher level of
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`education” which would allegedly constitute sufficient offset. For purposes of this
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`proceeding, Patent Owner does not offer a competing definition because Petitioner
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`fails to prove obviousness even if the Board were to apply Petitioner’s improper
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`definition for a person of ordinary skill in the art.
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`IV. CLAIM CONSTRUCTION
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`Consistent with Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and its
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`progeny, as of the filing date of the Petition, the standard for claim construction in
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`inter partes review before the Board is as follows:
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`In an inter partes review proceeding, a claim of a patent, or a claim
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`proposed in a motion to amend under § 42.121, shall be construed
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`using the same claim construction standard that would be used to
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`construe the claim in a civil action under 35 U.S.C. 282(b),
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`including construing the claim in accordance with the ordinary
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`and customary meaning of such claim as understood by one of
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`ordinary skill in the art and the prosecution history pertaining to
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`the patent. Any prior claim construction determination concerning a
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`6
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`term of the claim in a civil action, or a proceeding before the
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`International Trade Commission, that is timely made of record in the
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`inter partes review proceeding will be considered.
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`37 C.F.R. § 42.100(b) (effective November 13, 2018) (emphasis added).
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`It is well established that inter partes review petitioners cannot prove
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`obviousness through application of an erroneous construction. See, e.g., Mentor
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`Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at
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`*11 (P.T.A.B. June 11, 2015), aff’d sub nom. Synopsys, Inc. v. Mentor Graphics
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`Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (denying petition as tainted by reliance
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`on an incorrect claim construction); Vivint, Inc. v. Alarm.com Inc., 754 F. App’x 999,
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`1005 (Fed. Cir. 2018) (vacating and remanding, in part, because Board had adopted
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`and applied certain incorrect claim constructions); IBM v. Iancu, 759 F. App’x 1002,
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`1005–06 (Fed. Cir. 2019) (finding that the Board’s interpretation of key claim
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`limitations was incorrect resulting in the Board’s decisions having errors).
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`Accordingly, as a dispositive an independent basis for denial of the Petition in
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`its entirety, the Petition is impermissibly keyed to incorrect claim constructions, as
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`explained further below in addressing specific claim language.
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`A. Overview of respective claim construction positions advanced by
`the parties in parallel litigation
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`The following table lists the parties’ respective positions on certain claim terms
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`recited in independent claim 9 and for a “transmitting” limitation recited in claim 11
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`depending therefrom.
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`7
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`IPR2020-00756
`U.S. Patent No. 9,564,952
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`Claim Term
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`Google’s Claim Construction
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`“audio transceiver
`computing device”
`
`“free frequency”
`
`
`“scanning a plurality of
`predetermined frequencies
`for a free frequency”
`
`“selecting the free
`frequency from the
`plurality of predetermined
`frequencies”
`“transmitting the
`modulated carrier wave at
`the free frequency”
`
`“a computing device having
`both an audio transmitter and an
`audio receiver”
`
`“a single frequency which has a
`noise, interference, or signal
`level below a predetermined
`threshold”
`“scanning a plurality of
`predetermined frequencies to
`identify a single free frequency”
`
`“selecting the single free
`frequency from the plurality of
`predetermined frequencies”
`
`
`
`“transmitting the modulated
`carrier wave at the single free
`frequency selected from the
`plurality of predetermined
`frequencies”
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`
`
`Uniloc’s Claim
`Construction
`Plain and ordinary
`meaning
`
`“frequency
`determined by
`criteria”
`
`Plain and ordinary
`meaning
`
`Plain and ordinary
`meaning
`
`Plain and ordinary
`meaning
`
`“non-user-configurable
`data”
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`“data that cannot be configured
`by a human user”
`
`Plain and ordinary
`meaning
`
`“derived from user-
`configurable and non-user-
`configurable data specific
`to the audio transceiver
`computing device”
`
`“transmitting the
`modulated carrier wave
`until a stop indication is
`received from a user”
`(claim 11)
`
`“derived from user-configurable
`data specific to the audio
`transceiver computing device
`and non-user-configurable data
`specific to the audio transceiver
`computing device”
`“transmitting the modulated
`carrier wave until the human
`user takes an action on the
`audio transceiver computing
`device that stops the
`transmission”
`
`Plain and ordinary
`meaning
`
`Plain and ordinary
`meaning
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`See generally Ex. 1016, pp. 1‒2.
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`8
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`IPR2020-00756
`U.S. Patent No. 9,564,952
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`V.
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`PETITIONER DOES NOT PROVE UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM
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`Petitioner has the burden of proof of a proposition of unpatentability by a
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`preponderance of evidence. 35 U.S.C. § 316(e).
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`In an inter partes review, the burden of persuasion is on the
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`petitioner to prove “unpatentability by a preponderance of the
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`evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the
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`patentee. “Failure to prove the matters required by the applicable
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`standard means that the party with the burden of persuasion loses
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`on that point—thus, if the fact trier of the issue is left uncertain,
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`the party with the burden loses.” [Tech. Licensing Corp. v.
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`Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008).]
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`Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed.
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`Cir. 2015). Here, the burden of persuasion remains on Petitioner, and, as
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`demonstrated below, at least by virtue of the numerous omissions in the Petition’s
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`case for unpatentability, the Petition has failed to meet this burden.
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`Petitioner challenges independent claim 9 and claims 10‒12 depending directly
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`or indirectly therefrom. The Petition presents two redundant grounds in challenging
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`independent claim 9: obviousness over Paulson in view of Surprenant (Ground 1);
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`and obviousness over Paulson in view of Surprenant and Beenau (Ground 2). Pet.
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`33. Petitioner fails to prove obviousness of all limitations recited in claim 9 under
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`either theory; and the example deficiencies identified herein also taint Petitioner’s
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`challenge of the dependent claims. Accordingly, for a multitude of reasons, the Board
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`should deny the Petition as failing to meet Petitioner’s evidentiary burden.
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`9
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`IPR2020-00756
`U.S. Patent No. 9,564,952
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`A. Example substantive deficiencies arising from “scanning a
`plurality of predetermined frequencies for a free frequency”
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`Among other substantive deficiencies, Petitioner fails to prove obviousness of
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`“scanning a plurality of predetermined frequencies for a free frequency,” as recited
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`in claim 9. While the Petition states [t]he combined Paulson/Surprenant system
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`discloses these features,” the sole theory set forth in the Petition relies exclusively on
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`Paulson. According to Petitioner, Paulson “scans a plurality of predetermined
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`frequencies by taking ‘[s]amples of the ambient sound in the area’ and using them to
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`‘create a noise characteristic indicative of the most prevalent sounds.’” Pet. 23 (citing
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`Ex. 1005 (Paulson) 11:16−18). At a minimum, Petitioner fails to explain, much less
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`prove, (1) how Paulson’s sampling of frequencies that are not predetermined renders
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`obvious “scanning … of predetermined frequencies” and (2) how Paulson’s sampling
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`for the “most prevalent sounds” renders obvious “scanning … for a free frequency”
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`as claimed.
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`Patent Owner’s Preliminary Response identified example deficiencies arising
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`from Petitioner’s exclusive reliance on Paulson’s sampling of ambient sound for the
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`“scanning” limitations recited in claim 9. Prelim. Resp. 25‒27. In granting
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`Institution, the Board found that Patent Owner’s Preliminary Response “fails to
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`address Paulson’s description of step 402.” Inst. Dec. (Paper 15), 17. However,
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`scrutiny of Paulson’s step 402 only further underscores fatal deficiencies of the
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`Petition arising from the “scanning” limitations of claim 9.
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`Paulson states, in its description of its step 402, that it is the “sonic transmission
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`frequencies” that are “set … to the highest frequencies available in a communication
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`10
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`IPR2020-00756
`U.S. Patent No. 9,564,952
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`system. Ex. 1005, 12:51‒53 (emphasis added). Paulson clarifies “[t]hese [highest]
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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.” Id., 12:53‒56.
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`Paulson makes clear that its indiscriminate “range of sonic frequencies” (13:3)
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`sampled in step 404 is not set by the “highest frequencies” (12:51‒53) determined in
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`step 402. This disconnect is made explicit, for example, by the disclosure that the
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`“range of sonic frequencies” sampled in step 404 must be sufficiently broad to
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`determine that “the sonic transmission frequencies available according to the noise
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`characteristic may be too high for the receive device to sample and demodulate.” Id.,
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`13:3, 29‒32. In order of a sampled noise characteristic to be “too high” (13:29‒32)
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`for the receive device to sample and demodulate, the sampling must have been
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`outside “the highest frequencies … the receive device can detect and decode” (12:53‒
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`56). Paulson’s description of its step 402 is therefore unavailing to the theory that
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`Paulson’s sampling (in step 404) renders obvious “scanning a plurality of
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`predetermined frequencies for a free frequency,” as recited in claim 9.
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`Other relevant disclosure in Paulson emphasizes this deficiency. For example,
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`Paulson states, “[s]econd, aspects of the present invention evaluates the sample rate
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`and sensitivity of the receive device in light of the available sonic transmission
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`frequencies.” Id., 13:19−21. It would make no sense to only secondarily evaluate
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`“sample rate” capabilities of a receive device in light of the newly determined
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`“available sonic transmission frequencies” if, instead, the frequencies sampled had
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`been predetermined according to capabilities of the receive device.
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`11
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`It is also significant here that the claim language in question recites, “scanning
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`a plurality of predetermined frequencies for a free frequency.” The “free frequency”
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`term is further recited in claim 9 in the contexts of “selecting the free frequency from
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`the plurality of predetermined frequencies” and “transmitting the modulated carrier
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`wave at the free frequency.” Because the claimed “scanning” pertains to
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`“predetermined frequencies,” a “free frequency” selected from within the
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`“predetermined frequencies” is necessarily one that is transmittable. This plain
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`reading of the claim language is also confirmed by descriptions of example
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`embodiments. For example, the written description provides an example of selecting
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`a “free frequency” from among “predetermined frequencies” as follows:
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`In step 604, the audio transceiver computing device 102 selects the
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`free frequency from the plurality of predetermined frequencies.
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`For example, the mobile phone can identify the first free frequency
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`it scans that has no discernible signal, or that has no signal strength
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`that satisfies a minimum amplitude threshold, or that otherwise
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`meets a pre-established criteria for being a free frequency.
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`Id., 11:18‒24.
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`Paulson, by contrast, uses a scheme that samples sonic frequencies regardless
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`of whether they ultimately may be used to effect a successful transmission. Paulson’s
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`distinguishable and less efficient sampling scheme can and does result in finding
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`“sonic transmission frequencies available according to the noise characteristic” yet
`
`are “too high for the receive device to sample and demodulate.” Id., 13:29‒32. Thus,
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`Paulson’s sampling is not a “scanning … for a free frequency” as claimed at least
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`12
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`because the sampling inefficiently outputs frequencies that are “available according
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`to the noise characteristic” yet are not usable for transmission. Id.
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`Petitioner’s reliance on the conclusory declaration of Mr. Lipoff (Ex. 1003) is
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`unavailing here. It is well established that a declarant’s opinion “must” be
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`disregarded where it “is plainly inconsistent with the record, or based on an incorrect
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`understanding of the claim[s].” See Ericsson Inc. v. Intellectual Ventures I LLC, 890
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`F.3d 1336, 1346 (Fed. Cir. 2018) (quoting Homeland Housewares, LLC v. Whirlpool
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`Corp., 865 F.3d 1372, 1378 (Fed. Cir. 2017) (citations and internal quotation marks
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`omitted) (second alteration in original)). The declaration testimony merely repeats,
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`quite literally verbatim, the erroneous assertion that Paulson’s sampling maps onto
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`the claimed “scanning” limitations. This mapping plainly inconsistent with the
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`express disclosure in Paulson discussed above.
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`For a multitude of reasons, therefore, Petitioner’s exclusive reliance on Paulson
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`fails to prove obviousness of the “scanning” limitations of claim 9 obviousness; and
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`the cited portion of Paulson, including Paulson’s description of its steps 402‒406,
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`only underscores the example patentable distinctions discussed herein.
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`B.
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`Example substantive deficiencies arising from limitations directed
`to what the transmitted “content” must include
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`The Petition also fails to establish obviousness, for example, of “the content
`
`includes 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,” as recited in claim 9. Keeping in mind the burden lies with
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`IPR2020-00756
`U.S. Patent No. 9,564,952
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`Petitioner, each one of the multiple example deficiencies discussed below provides
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`an independent basis to find the Petition fails to prove obviousness by a
`
`preponderance of evidence.
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`1.
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`Petitioner’s reliance on Surprenant is predicated on fallacy
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`Petitioner’s reliance on Surprenant for claim limitations directed to the “device
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`identification data” requirement of the “content” term is predicated on a logical
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`fallacy. According to Petitioner, Surprenant discloses its “AMP ID is also derived in
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`part 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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`Pet. 45 (emphasis added). Petitioner’s use of “because” in this context is tantamount
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`to arguing that if an identification string is disclosed as being unique and specific to
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`a device, then it must be non-user-configurable data. Petitioner’s underlying premise
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`is logically disproven if it is at least possible for an identification string to be user-
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`configurable and yet also unique and specific to a device. Because the claim language
`
`itself confirms such a possibility exists, one cannot reasonably conclude an
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`identification string is non-user-configurable simply “because” it is purportedly
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`unique and specific to a device. In other words, the claim language expressly refutes
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`the faulty premise of Petitioner’s “because” logic.
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`In its Institution Decision, the Board preliminarily held that Surprenant’s
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`disclosure that its “AMP ID is a ‘unique identification string,’ … is analogous to non-
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`user-configurable data[.]” Inst. Dec. (Paper 15), 24 (citing 1006, 7:44–49, 7:53–57).
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`The Board appears to have misunderstood, however, why the claim language itself
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`14
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`IPR2020-00756
`U.S. Patent No. 9,564,952
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`refutes the theory that a “device identification data including a bit array derived from
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`. . . non-user-configurable data” is rendered obvious by an alleged disclosure that an
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`“identification string” is unique and specific to a device.
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`Independent claim 9 expressly requires that the “bit array” of the “device
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`identification data” must be derived from both “user-configurable data . . . specific to
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`the audio transceiver computing device” and “non-user-configurable data specific to
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`the audio transceiver computing device.” This claim language acknowledges—and
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`indeed it requires—the capability for a user to configure certain “data” that is
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`nevertheless specific to the audio transceiver computing device. Thus, the claim
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`language itself proscribes interpreting a disclosure that an “identification string” is
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`unique and specific to a device as analogous to disclosing that such an “identification
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`string” is non-user-configurable data. In other words, claim 9 itself reveals that users
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`can and do configure data that is unique and specific to a device. This disproves the
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`fallacy that if an identification string is allegedly disclosed as being unique and
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`specific to a device, then it must be non-user-configurable data. It follows that the
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`requirement “non-user-configurable data specific to the audio transceiver computing
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`device” is not analogous to, and is not rendered obvious by, alleged disclosure that
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`an identification string is both unique and specific to a device.
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`2.
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`Petitioner incorrectly asserts the combination of “content”
`limitations recite nothing more than admitted prior art
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`Evidently recognizing the weakness of its reliance on Surprenant, the Petition
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`also argues in the alternative that the ’952 patent itself purportedly admits the
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`limitations concerning “non-user-configurable data” were known in the art. Pet. 45.
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`IPR2020-00756
`U.S. Patent No. 9,564,952
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`Petitioner is wrong. Even a cursory review of the intrinsic evidence, which Petitioner
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`fails to provide, reveals Petitioner’s alternative theory is demonstrably false.
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`While Petitioner points to alleged disclosure within U.S. Pat. No. 5,490,216
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`(“the ’216 patent”), Petitioner overlooks the context in which the ’952 patent cites to,
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`and expressly incorporates, the ’216 patent. The relevant paragraph from the ’952
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`paragraph is reproduced below in its entirety:
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`A device fingerprint comprises binary data that identifies the audio
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`transceiver computing device 102 by deriving a unique data string
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`from multiple portions of indicia stored in memory locations
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`within the device, where such indicia can include, for example,
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`data representing a manufacture name, a model name, or a device
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`type. Device fingerprints and generation thereof are known and are
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`described, e.g., in U.S. Pat. No. 5,490,216 (sometimes referred to
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`herein as the ’216 Patent), and in related U.S. Patent Application
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`Publications 2007/0143073, 2007/0126550, 2011/0093920, and
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`2011/0093701 (the “related applications”), the descriptions of
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`which are fully incorporated herein by reference.
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`Ex. 1001 (’952 patent), 6:22−33 (emphasis added).
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`As shown by the block quotation above, the ’216 patent is referenced and
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`incorporated for its discussion of “deriving a unique data string from multiple
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`portions of indicia stored in memory locations within the device, where such indicia
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`can include, for example, data representing a manufacture name, a model name, or a
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`device type.” Id. As the example forms of indicia listed here apply to entire classes
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`of devices, this reference to, and incorporation of, the ’216 patent can hardly be
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`considered a clear and unambiguous admission that it was known to derive a “bit
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`IPR2020-00756
`U.S. Patent No. 9,564,952
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`array” from “non-user-configurable data specific to the audio transceiver computing
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`device,” much less according to the specific manner, context, and combination
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`claimed.
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`Moreover, as shown in the block quotation below, the ’952 patent distinguishes
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`examples pertaining to either the claimed “user-configurable data . . . specific to the
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`audio transceiver computing device” or “non-user-configurable data specific to the
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`audio transceiver computing device” from a list of other forms of indicia including
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`“manufacture name, model name, and/or device type”—i.e., the very sources of other
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`indicia identified when citing to and incorporating the ’214 patent:
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`Non-user-configurable data includes data such as hardware
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`component model numbers, serial numbers, and version numbers,
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`and hardware component parameters such as processor speed,
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`voltage, current, signaling, and clock specifications. User-
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`configurable data
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`includes data such as registry entries,
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`application usage data, file list information, and MAC address. In
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`an embodiment, the audio transceiver computing device 102 can
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`also include, for example, manufacture name, model name,
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`and/or device type of the audio transceiver computing device
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`102.
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`Ex. 1001 (’952 patent), 6:37−56 (emphasis added). The above distinction of other
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`indicia from examples of the claimed “non-user-configurable data” and “user-
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`configurable data” further confirms that the citation to, and incorporation of, the ’214
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`patent clearly cannot be deemed a clear and unambiguous admission that these claim
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`limitations were known in the art.
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`IPR2020-00756
`U.S. Patent No. 9,564,952
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`The prosecution history supplies additional evidence (which Petitioner and its
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`declarant likewise ignore) further underscoring the error in deeming the claim
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`language in question as admitted prior art. During prosecution, the examiner
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`reopened prosecution and issued a new non-final office action after finding
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`persuasive an appeal brief filed by the applicant. Ex. 1002, p. 667 (“Applicant’s
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`arguments, see remark, filed 08/25/2014, with respect to the rejection(s) of claim(s)
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`1-9 under 103(a) have been fully considered and are persuasive.”). In response to
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`that office action, the applicant amended the only independent claim pending at that
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`time to expressly define the “device identification data” as necessarily including “a
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`bit string or bit array derived from user-configurable and non-user-configurable data
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`specific to the audio transceiver computing device.” Id., p. 675.
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`The applicant subsequently added a new independent claim that included
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`nearly identical limitations but, instead of reciting that the “content” includes
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`biometric data or device identification data (in the alternative), it recites that the
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`“content” transmitted as a sound wave must include “device identification