UNITED STATES PATENT AND TRADEMARK OFFICE
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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
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`Patent Owner
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`IPR2020-00756
`PATENT 9,564,952
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.107(a)
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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 ............................................................................................................... iii
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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. RELATED PROCEEDINGS ............................................................................. 6
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`IV. THE BOARD SHOULD EXERCISE DISCRETION UNDER 35
`U.S.C. § 314(A) TO DENY INSTITUTION ..................................................... 6
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`A. The litigation is not stayed and there is no evidence it will be. ................. 7
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`B. Fully overlapping substantive issues warrant discretionary denial. ........... 9
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`C. The investment in the parallel litigation, prior to transfer, weighs in
`favor of discretionary denial. .................................................................... 13
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`D. Additional factors further weighing in favor of discretionary denial. ..... 14
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`V. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 15
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`VI. CLAIM CONSTRUCTION ............................................................................. 15
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`A. Overview of claim construction positions advanced by the parties in
`parallel litigation ....................................................................................... 17
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`VII. GOOGLE DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM ................................................................................. 18
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`A. Example substantive deficiencies arising from limitations directed to
`what the transmitted “content” must include ........................................... 20
`1. Petitioner’s reliance on Suprenant is predicated on
`fallacy ................................................................................................ 20
`2. Petitioner incorrectly asserts the combination of
`“content” limitations recite nothing more than
`admitted prior art .............................................................................. 22
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`B. Example substantive deficiencies arising from “scanning a plurality
`of predetermined frequencies for a free frequency” ................................. 25
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`C. No Prima Facie Obviousness for any challenged dependent claim ......... 27
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`VIII.
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`CONCLUSION ........................................................................................ 28
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`CERTIFICATE OF COMPLIANCE .......................................................................... i
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`CERTIFICATE OF SERVICE ................................................................................. ii
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`EXHIBIT LIST
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`Exhibit Description
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`2001
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`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
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
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`Response to the Petition for Inter Partes Review (“Pet.” or “Petition”) of United
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`States Patent No. 9,564,952 (“the ’952 patent” or “Ex. 1001”) filed by Google LLC
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`(“Google” or “Petitioner”) in IPR2020-00756. The Petition purports to challenge
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`independent claim 9 and claims 10‒12 depending directly or indirectly therefrom.
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`As threshold matter, the Board should exercise its discretion to deny institution
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`under 35 U.S.C. § 314(a) and precedential authority interpreting the same, including
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`NHK Spring Co., Ltd. v. Intri-plex Technologies, IPR2018-00752, Paper 8 (P.T.A.B.
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`Sept. 12, 2018) (precedential) (“NHK”) and Apple Inc. v. Fintiv, Inc., IPR2020-
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`00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (discussing NHK).
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`Because, as a threshold issue, denial is independently warranted under 35
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`U.S.C. § 314(a), the Board need not reach the substantive merits of the Petition. A
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`substantive analysis is nevertheless presented herein because the Board has held that
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`“weakness on the merits” also weighs in favor of discretionary denial under 35 U.S.C.
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`§ 314(a) and NHK, particularly when (like here) this factor is coupled with an earlier
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`district court trial date. Apple v. Fintiv, IPR2020-00019, Slip Op. 15 (citing E-One,
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`Inc. v. Oshkosh Corp., IPR2019-00162, Paper 16 at 8, 13, 20 (PTAB June 5, 2019)).
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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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`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.
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`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. Sound waves generated through the acoustic speaker of a mobile phone are
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`very low power signals, therefore 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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`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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`Ex. 1001, Fig. 6. As shown in Figure 6 (above), in a preferred embodiment,
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`authentication occurs between an audio receiving computing device and an audio
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`transceiver computing device. Id., 11:4-59. In step 602, the audio transceiver
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`computing device scans a plurality of predetermined frequencies for a free frequency.
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`In step 604, the audio transceiver computing device selects the free frequency from
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`the plurality of predetermined frequencies. In step 606, the audio transceiver
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`computing device generates a content message. In step 608, the audio transceiver
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`computing device generates a modulated carrier wave representing the content
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`message. In step 610, the audio transceiver computing device 102 transmits the
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`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 using
`an audio transceiver computing device, the method comprising:
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`scanning a plurality of predetermined frequencies for a free frequency;
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`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
`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 includes
`a begin indication, a content, and an end indication;
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`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; and wherein the
`modulated carrier wave comprises a sound wave.
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`III. RELATED PROCEEDINGS
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`The ’952 patent has been asserted in Uniloc USA, Inc. et al. v. Amazon.com,
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`Inc., et al, Case No. 2-18-cv-00341 (E.D. Tex.), which has been dismissed. In
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`addition, the ’952 patent has been asserted in Uniloc 2017 LLC et al v. Google LLC,
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`Case No. 2-18-cv-00552 (E.D. Tex.), which has been transferred to the Northern
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`District of California per court order dated June 19, 2020 (Dkt. No. 163). Before the
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`court ordered transfer of the litigation, the parties had completed all claim
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`construction briefing (Dkt. Nos. 117, 123, and 131). While Google opted to not file
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`the district court claim construction briefing as exhibits to its instant Petition, Google
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`did attach, as Exhibit 1016 to the Petition, the parties Joint Claim Construction Chart
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`(Dkt. 134) submitted to the court after the completion of claim construction briefing.
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`IV. THE BOARD SHOULD EXERCISE DISCRETION UNDER 35 U.S.C.
`§ 314(A) TO DENY INSTITUTION
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`As threshold and dispositive issue, the Board should deny institution under 35
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`U.S.C. § 314(a). Petitioner purports to provide an analysis under NHK to defend
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`against discretionary denial, yet in doing so Petitioner grossly misrepresents the facts
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`and the proper factors to consider. Pet. 66−68. Under the factors set forth in NHK,
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`and the discussion of NHK and its progeny opinions set forth in Apple v. Fintiv,
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`instituting trial under the present facts would be an inefficient use of Board resources.
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`A. The litigation is not stayed and there is no evidence it will be.
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`Citing NHK, the only reason Google offers against discretionary denial here is
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`that “the related litigation between the parties is currently stayed.” Pet. 66. While
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`the litigation was stayed when Google filed its Petition, that is no longer the case.
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`The litigation has since been transferred to the Northern District of California (along
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`with several other cases involving the same parties) and is no longer stayed. Because
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`the case has since been transferred and is no longer stayed, Google’s only argument
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`against discretionary denial is rendered moot.
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`It is expected Google will seek leave to file a supplemental pre-institution reply
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`brief to address the simple fact that the parallel litigation is no longer stayed and has
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`been transferred. Google has done so in virtually all other sister IPR proceedings
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`involving the same parties. Nothing Google has argued to date, concerning the fact
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`of transfer, would weigh against exercising discretionary denial.
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`The Board’s decision in Apple v. Fintiv explains that, “[i]n some cases, there
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`is no stay, but the district court has denied a motion for stay without prejudice and
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`indicated to the parties that it will consider a renewed motion or reconsider a motion
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`to stay if a PTAB trial is instituted.” Slip op. at 6–7. Apple v. Fintiv thus considers
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`fact-specific and case-specific guidance from the district court, which is entirely
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`lacking here.
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`In other matters involving the same parties, Google has repeatedly asserted that
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`the Northern District of California “frequently” (and hence admittedly not always)
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`stays cases in view of IPRs; and Google cites cases without regard to facts and
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`analyses set forth therein. See, e.g., Google v. Uniloc, IPR2020-00441, Paper 7 at
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`1‒2; Google v. Uniloc, IPR2020-00463, Paper 10 at 2‒3; Google v. Uniloc, IPR2020-
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`00479, Paper 8 at 2. One of the cases Google has repeatedly cited as granting a stay
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`after a Board decision on institution was based on an unopposed motion. See Uniloc
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`2017 LLC v. Apple Inc., No. 3:19-cv-01904, Dkt. 89 (N.D. Cal. Jan. 30, 2020). The
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`two Northern District of California cases Google has cited as granting stays before a
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`Board decision on institution both acknowledge that motions to stay are highly
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`individualized matters the court must decide on a case-by-case basis using its
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`discretion. Cellwitch Inc. v. Tile, Inc., No. 4:19-cv-01315, Dkt. 68 (N.D. Cal. Jan.
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`17, 2020); Elekta Ltd. v. ZAP Surgical Sys., Inc., No. 4:19-cv-02269, Dkt. 42 (N.D.
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`Cal. Nov. 8, 2019). For example, in Cellwitch, the court found it significant that the
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`parallel IPR “sought review of every claim in the [challenged patent].” Slip op. at 3.
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`Here, the petition seeks review of only claims 6‒12, which is a far cry from every
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`claim of the ’908 patent.
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`Cellwitch also considered the fact that “[c]laims [sic] construction briefing has
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`not yet been field” weighed in favor of a stay. Slip. op. at 4.1 Here, the claim
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`construction briefing is completed and is made of record (by Google) as Exhibits
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`1004, 1005, and 1006 to the Petition.
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`Cellwitch also found that the defendant seeking stay had “instigated the IPR
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`1 In at least two other opinions Google has previously cited, the court similarly noted,
`as part of its analysis on a motion to stay, that no court had yet issued an order on
`claim construction. Rep. 2 (citing Uniloc, No. 3:19-cv-01904, Dkt. 89; and Elekta
`Ltd. v. ZAP Surgical Sys., Inc. No. 4:19-cv-02269, Dkt. 42 (N.D. Cal. Nov. 8, 2019).
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`proceedings in a timely fashion.” Slip op. at 5. Here, Google inexplicably delayed
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`filing the instant IPR until quite literally the last possible moment, and long after the
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`court and the parties and already expended considered resources in litigation.
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`The other opinions from the Northern District of California Google has
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`previously cited (in addressing similar circumstances involving the same parties)
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`each similarly consider highly individualized factors applied to the particular facts of
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`the case. Google’s speculative and unsupported assertion in sister matters that the
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`Northern District of California will likely stay the litigation once transferred simply
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`cannot be squared with the analyses applied in the court opinions Google has cited.
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`Given the parties have already repeatedly filed supplemental briefing in this
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`issue in other matters, and Uniloc summaries above the points the parties have
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`previously raised, it would serve no purpose here to grant leave for Google to (yet
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`again) attempt to raise the same points in a futile attempt to avoid discretionary denial
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`here. Moreover, Google should not be allowed to use Uniloc’s prior supplemental
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`briefing as a roadmap to cure deficiencies in Google’s supplemental briefing
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`previously filed on this issue in other matters.
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`B.
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`Fully overlapping substantive issues warrant discretionary denial.
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`Google is tellingly silent on another significant factor considered prominently
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`in NHK and its progeny opinions—namely, “if the petition includes the same or
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`substantially the same claims, grounds, arguments, and evidence as presented in the
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`parallel proceeding, this fact has favored denial.” Apple v. Fintiv, Slip. Op. 10
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`(discussing NHK and collecting its progeny opinions on point); see also NHK, Slip
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`9
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`Op. at 20; Next Caller, Inc. v. TRISTID, Inc., IPR2019-00963, Paper 8 at 11–12
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`(PTAB Oct. 28, 2019). This condition applies here in favor of denial.
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`Google’s Petition purports
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`to raise
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`the following four grounds of
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`unpatentability:
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`(1) Paulson (Ex. 1005) and Surprenant (Ex. 1006) render obvious
`claims 9‒12 under 35 U.S.C. § 103;
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`(2) Paulson, Surprenant, and Beenau (Ex. 1007) render obvious
`claims 9‒12 under 35 U.S.C. § 103;
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`(3) Paulson and Surprenant in view of McConnell (Ex. 1008) render
`obvious claim 11 under 35 U.S.C. § 103;
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`(4) Paulson, Surprenant, and Beenau in view of McConnell render
`obvious claim 11 under 35 U.S.C. § 103.
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`Pet. 8.
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`In its invalidity contentions served in litigation, Google purports to preserve
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`the right to rely on invalidity challenges that wholly encompass those raised in its
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`instant Petition. A copy of Google’s litigation invalidity contentions is filed herewith
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`as Exhibit 2001. Each one of the four references asserted in the instant Petition (Exs.
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`1005, 1006, 1007, and 1008) are identified in Google’s invalidity contentions served
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`in litigation (Ex. 2001), as shown by the screenshots reproduced below (positioned
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`to the left of blue-arrow annotations identifying corresponding exhibits in the instant
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`Petition).
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`Ex. 1005, “Paulson”
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`Ex. 1006, “Surprenant”
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`Ex. 1007, “Beenau”
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`Ex. 1008, “McConnell”
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`Ex. 2001, 9‒10 (yellow highlighting added to emphasize overlapping references).
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`Google’s invalidity contentions served in litigation (Ex. 2001) include the
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`following bald statements purporting to reserve the right to rely upon quite literally
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`“any and all” possible combination of the references identified therein:
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`Google provides the following list of prior art combinations for
`exemplary purposes only. It is not intended to be exhaustive, and
`Google reserves the right to assert other combinations of the
`primary and secondary references included in the table below and
`the charts attached hereto as Exhibits. Moreoever, [sic] each of
`the references identified in Section II.A may be combined in
`several ways to invalidate the claims of the Asserted Patent as
`obvious, and Google reserves the right to rely on any and all
`combinations of the identified prior art.
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`Ex. 2001, 24‒25 (emphasis added). Taking Google at its word, and setting aside the
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`deficient nature of the disclosure within its invalidity contentions, those contentions
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`wholly subsume the subset of invalidity theories Google raises in its instant Petition.
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`Moreover, Google’s invalidation contentions propose the following “exemplary”
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`combination:
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`Ex. 2001, p. 25 (highlighting added to emphasize overlapping references). Because
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`“[t]he obviousness arguments in the Petition are a subset of those in the Parallel
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`District Court Proceeding,” this factor weighs in favor of discretionary denial. Next
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`Caller, IPR2019-00963, Paper 8 at 11–12, accord, Apple v. Fintiv, IPR2020-00019,
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`Paper 11 at 12 (precedential). Google’s failure to address this factor, which is
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`considered in the very same NHK opinion Google cites, is a tacit admission that it
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`favors discretionary denial here. See NHK, IPR2018-00752, Paper 8 at 20.
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`C. The investment in the parallel litigation, prior to transfer, weighs in
`favor of discretionary denial.
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`The investment in the parallel litigation, prior to transfer, also weighs in favor
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`of discretionary denial. Here, the advanced stage of the litigation is evidenced by the
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`fact that, prior to transfer, claim construction briefing had already been completed.
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`Google argues “there is still much to do in the related litigation” (Pet. 67), but
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`this fails to address the retrospective nature of the relevant factor. It weighs the
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`amount of investment the parties and court have put into parallel litigation. In
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`discussing NHK and its progeny opinions, the Apple v. Fintiv opinion explains the
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`retrospective nature of this factor as follows:
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`If, at the time of the institution decision, the district court has issued
`substantive orders related to the patent at issue in the petition, this
`fact favors denial. Likewise, district court claim construction
`orders may indicate that the court and parties have invested
`sufficient time in the parallel proceeding to favor denial. … This
`investment factor is related to the trial date factor, in that more work
`completed by the parties and court in the parallel proceeding tends
`to support the arguments that the parallel proceeding is more
`advanced, a stay may be less likely, and instituting would lead to
`duplicative costs.
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`Slip op. at 9‒10 (emphasis added).
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`Google has also recently suggested in other matters involving the same parties
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`that the court’s transfer order renders moot the consideration of the proximity of the
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`court’s trial date to the Board’s projected statutory deadline for a final written
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`decision. See, e.g., Google v. Uniloc, IPR2020-00479, Paper 8 at 4. For this
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`additional factor to weigh against discretionary denial, however, trial would have to
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`be rescheduled in the transferee district well over an entire year from now (i.e.,
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`sometime after August 21, 2021). There is no record evidence to support such
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`speculation. On the other hand, that trial will likely be expedited in the transferee
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`district is evidenced at least by the demonstrable fact that claim construction briefing
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`in the parallel litigation was completed long ago.
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`D. Additional factors further weighing in favor of discretionary denial.
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`That Google is the Petitioner and the defendant in the parallel district court
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`litigation weighs in favor of discretionary denial. Apple v. Fintiv, Slip Op. 13. In
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`addition, as explained further below, the “weakness [of the Petition] on the merits”
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`further supports denying institution. Id., 15 (favorably citing E-One, IPR2019-
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`00162, Paper 16 at 8, 13, 20). Even if the example substantive deficiencies addressed
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`herein were “a closer call,” and here the deficiencies are quite glaring, “if the merits
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`of the grounds raised in the petition are a closer call, then that fact has favored
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`denying institution when other factors favoring denial are present.” Id.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
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`The Petition proposes that a person of ordinary skill “would have held at least
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`a 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. Google’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.
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`Patent Owner does not offer a competing definition for a person of ordinary
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`skill in the art at this preliminary stage, as, even if the Board adopted Google’s
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`proposed and improper definition, the Petitioner fails to demonstrate a reasonable
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`likelihood that the challenged claims are unpatentable. Patent Owner reserves the
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`right to propose its own definition if trial is instituted.
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`VI. 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
`proposed in a motion to amend under § 42.121, shall be construed
`using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. 282(b),
`including construing the claim in accordance with the ordinary
`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
`the patent. Any prior claim construction determination concerning a
`term of the claim in a civil action, or a proceeding before the
`International Trade Commission, that is timely made of record in the
`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); Int’l Bus. Machines Corp. (IBM)
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`v. Iancu, 759 F. App’x 1002, 1005–06 (Fed. Cir. 2019) (finding that the Board’s
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`interpretation of key claim limitations was incorrect resulting in the Board’s decisions
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`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. This
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`is true even where the Petition purports to offer alternative claim constructions, as
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`each one of the alternative constructions set forth in the Petition is tainted by legal
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`error, as explained further below.
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`A. Overview of claim construction positions advanced by the parties
`in parallel litigation
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`The following table lists the constructions set forth in the parties’ respective
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`briefings for disputed terms recited in independent claim 9 and for a “transmitting”
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`limitation further recited in dependent claim 11.
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`Claim Term
`
`“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”
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`Google’s Claim
`Construction
`“a computing device having
`both an audio transmitter
`and an audio receiver”
`
`Uniloc’s Claim
`Construction
`Plain and ordinary
`meaning
`
`“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”
`
`“frequency determined by
`criteria”
`
`Plain and ordinary
`meaning
`
`Plain and ordinary
`meaning
`
`Plain and ordinary
`meaning
`
`“non-user-configurable
`data”
`
`“data that cannot be
`configured by a human
`user”
`
`Plain and ordinary
`meaning
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`“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
`
`See generally Ex. 1016, pp. 1‒2.
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`Google alleges in its instant Petition that its assertion of the cited references
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`“renders the claims obvious under both parties’ proposed constructions” offered in
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`litigation. Pet. 9 (citing Ex. 1016). As will be shown, however, Google glosses over
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`requirements set forth in its own constructions when attempting to map the asserted
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`references onto distinguishable claim language.
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`VII. GOOGLE DOES NOT PROVE A REASONABLE LIKELIHOOD OF
`UNPATENTABILITY FOR ANY CHALLENGED CLAIM
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`Because, as a threshold issue, denial is independently warranted under 35
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`U.S.C. § 314(a) and NHK, as explained above, and further because the Petition is
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`tainted by legal error in begin keyed to erroneous claim constructions, the Board need
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`not reach the technical substantive merits of the Petition. A substantive analysis is
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`nevertheless presented below because the Board has held that a “weakness on the
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`merits” also weighs in favor of discretionary denial under 35 U.S.C. § 314(a),
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`particularly when (like here) this factor is coupled with an earlier district court trial
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`date. E-One, IPR2019-00162, Paper 16 at 8, 13, 20; see also Apple, IPR2020-00019,
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`Slip Op. at 15 (citing E-One favorably for this same proposition).
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`Google has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`§ 42.108(c) (“review shall not be instituted for a ground of unpatentability unless
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`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
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`unpatentable”). The Petition should be denied as failing to meet this burden.
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`The Petition purports to challenge independent claim 9 and claims 10‒12
`
`depending directly or indirectly therefrom. The Petition purports to present two
`
`redundant grounds in challenging independent claim 9: obviousness over Paulson in
`
`view of Suprenant (Ground 1); and obviousness over Paulson in view of Surprenant
`
`and Beenau (Ground 2). Pet. 33. The Petition fails to meet its burden of showing a
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`reasonable likelihood to prevail under either theory;