Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Date: October 15, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00756
`Patent 9,564,952 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, MICHAEL R. ZECHER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`ZECHER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 15
`Date: October 15, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00756
`Patent 9,564,952 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, MICHAEL R. ZECHER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`ZECHER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2020-00756
`Patent 9,564,952 B2
`
`INTRODUCTION
`I.
`Google LLC (“Google”), filed a Petition requesting an inter partes
`review of claims 9–12 of U.S. Patent No. 9,564,952 B2 (Ex. 1001, “the ’952
`patent”). Paper 1 (“Pet.”). Patent Owner, Uniloc 2017 LLC (“Uniloc”),
`filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). With our
`authorization, Google filed a Reply (Paper 10), and Uniloc filed a Sur-reply
`(Paper 12), each of which were tailored narrowly to address the non-
`exclusive list of six factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-
`00019, Paper 11 (PTAB Mar. 20, 2020) (order authorizing supplemental
`briefing) (precedential) (“Fintiv”) that we consider in determining whether
`to exercise our discretion to institute an inter partes review when there is a
`related district court case involving the same patent.
`Based on the authority delegated to us by the Director under 37 C.F.R.
`§ 42.4(a), we may not institute an inter partes review unless the information
`presented in the Petition and any response thereto shows “there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018).
`Taking into account Uniloc’s Preliminary Response, we conclude that the
`information presented in the Petition establishes that there is a reasonable
`likelihood that Google would prevail in challenging at least one of claims 9–
`12 of the ’952 patent as unpatentable under 35 U.S.C. § 103(a). Pursuant to
`§ 314, we hereby institute an inter partes review as to these claims of the
`’952 patent.
`
`A. Related Matters
`The parties indicate that the ’952 patent is involved in a district court
`case captioned Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-552 (E.D. Tex.
`
`2
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`IPR2020-00756
`Patent 9,564,952 B2
`filed Dec. 31, 2018). Pet. 68–69; Paper 6, 2. On June 19, 2020, the U.S.
`District Court for the Eastern District of Texas granted Google’s Motion to
`Transfer Venue to the U.S. District Court for the Northern District of
`California. Ex. 1021.
`
`B. The ’952 Patent
`The ’952 patent generally relates to near field authentication of users
`and their computing devices, specifically by means of encoded sound waves.
`Ex. 1001, 1:12–16. Figure 1 of the ’952 patent is reproduced below.
`
`
`Figure 1, reproduced above, is a block diagram showing an audio
`transceiving computing device transmitting data to an audio receiving
`computing device. Id. at 3:23–25. In Figure 1, system 100 includes audio
`transceiving computing device 102 and audio receiving computing device
`104. Id. at 3:64–67. Audio transceiving computing device 102 can transmit
`data to audio receiving computing device 104 in the form of modulated
`carrier wave 106, which can be a sound wave. Id. at 3:64–4:4. The ’952
`patent explains that “[s]ound waves can transmit information accurately over
`a very short distance (near field communications) using inexpensive
`equipment.” Id. at 4:4–6.
`
`3
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`IPR2020-00756
`Patent 9,564,952 B2
`The ’952 patent describes an illustrative example of a user seeking to
`purchase a product at a register using a mobile phone. Ex. 1001, 11:9–11.
`In this example, the mobile phone through its microphone first scans a
`plurality of predetermined frequencies for a free frequency. Id. at 11:15–17.
`Next, the mobile phone selects a free frequency that meets a pre-established
`criteria. Id. at 11:18–24. Then, the mobile phone generates a periodic
`enclosed content message representing device identification data and the
`user’s credit card information. Id. at 11:26–30. The mobile phone also
`generates a carrier wave and modulates the carrier wave using the periodic
`enclosed content message. Id. at 11:33–35. The mobile phone transmits the
`modulated carrier wave at the free frequency through its output speaker. Id.
`at 11:39–41. In this example, the mobile phone does not have its physical
`components modified with expensive equipment, but can use the speaker
`already included in the phone. Id. at 11:44–47.
`The periodic enclosed content message includes a plurality of
`enclosed content messages. Ex. 1001, 5:55–57, Fig. 3 (item 302a–n). Each
`of the enclosed messages includes a begin indication, a content, and an end
`indication. Id. at 5:58–60, Fig. 3 (items 304, 306, 308).
`Furthermore, the device identification data includes a device
`fingerprint. Ex. 1001, 6:11–19. A device fingerprint is derived from user-
`configurable and non-user-configurable data specific to the audio transceiver
`computing device. Id. at 6:34–37. Non-user-configurable data includes data
`such as serial numbers. Id. at 6:37–39. User-configurable data includes data
`such as registry entries, application usage data, file list information, and
`Media Access Control addresses. Id. at 6:41–43.
`
`4
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`IPR2020-00756
`Patent 9,564,952 B2
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`C. Challenged Claims
`Of the challenged claims, claim 9 is the only independent claim.
`Independent claim 9 is directed to “[a] method for near field authentication
`of a source.” Ex. 1001, 14:53. Claims 10–12 directly depend from
`independent claim 9. Id. at 15:6–14. Independent claim 9 is illustrative of
`the challenged claims and is reproduced below.
`9.
`A method for near field authentication of a source,
`the source using an audio transceiver computing device, the
`method comprising:
`scanning a plurality of predetermined frequencies for a
`free frequency;
`selecting the free frequency from the plurality of
`predetermined frequencies;
`generating a periodic enclosed content message;
`generating a modulated carrier wave representing the
`periodic enclosed content message; and
`transmitting the modulated carrier wave at the free
`frequency;
`wherein each period of the periodic enclosed content
`message includes a begin indication, a content, and an end
`indication;
`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.
`Id. at 14:53–15:5.
`
`D. Prior Art and Asserted Grounds
`Google relies on the following prior art references set forth in the
`table below. Pet. 7–8.
`
`5
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`Patent 9,564,952 B2
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`Name1
`
`Reference
`
`Paulson
`
`US 8,514,662 B2
`
`Dates
`issued Aug. 20, 2013;
`filed Aug. 27, 2010
`issued Sept. 16, 2014;
`Surprenant US 8,837,257 B2
`filed June 2, 2011
`US 2009/0171851 A1 published July 2, 2009;
`filed Feb. 18, 2009
`published Aug. 28, 1997
`filed Feb. 19, 1997
`
`Beenau
`
`McConnell WO 97/31437
`
`Exhibit
`No.
`1005
`
`1006
`
`1007
`
`1008
`
`Google asserts that claims 9–12 would have been unpatentable based
`on the following grounds set forth in the table below. Pet. 8.
`Claim(s) Challenged 35 U.S.C. §
`References
`9–12
`103(a)
`Paulson, Surprenant
`9–12
`103(a)
`Paulson, Surprenant, Beenau
`11
`103(a)
`Paulson, Surprenant, McConnell
`Paulson, Surprenant, Beenau,
`11
`103(a)
`McConnell
`
`
`
`II. ANALYSIS
`A. Discretionary Denial
`Google argues that the record does not support discretionary denial
`under § 314(a). Pet. 66–68; Reply 1. In response, Uniloc argues that we
`should exercise our discretion under § 314(a) to deny institution. Prelim.
`Resp. 6–14.
`Where, as here, a parallel district court case is pending involving the
`same patent, we follow the factors set forth in Fintiv in deciding whether to
`exercise our discretion to deny institution. Specifically, we weigh the
`following factors:
`
`
`1 For clarity and ease of reference, we only list the first named inventor.
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`1. whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and
`the parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv at 6. Recognizing that “there is some overlap among these factors”
`and that “[s]ome facts may be relevant to more than one factor,” we “take[ ]
`a holistic view of whether efficiency and integrity of the [patent] system are
`best served by denying or instituting review.” Id.
`1. Stay of Related Litigation Proceedings and District Court Trial Date
`Under the particular circumstances before us, the first two Fintiv
`factors are interrelated. Most significant is that no trial date has been set in
`the district court case now pending in the Northern District of California.
`The fact that no trial date has been set weighs significantly against
`exercising our discretion to deny institution. See Oticon Med. AB v.
`Cochlear Ltd., IPR2019-00975, Paper 15 at 23–24 (PTAB Oct. 16, 2019)
`(institution decision) (designated precedential) (lack of trial date weighs
`against exercising discretion to deny institution, even when discovery is
`“well underway”). Also, although no court-ordered stay is in effect, the
`record indicates that if we institute this inter partes review, then the parties
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`will stipulate to stay the district court case pending the outcome of this inter
`partes review. Ex. 1026, 26–27.2
`2. Investment in the Related Litigation Proceedings
`The third factor considers the investment in the district court case by
`the court and parties. Fintiv at 6, 9–12. Here, Uniloc relies on the fact that
`claim construction briefing has been completed. Prelim. Resp. 13; Sur-reply
`5. Google, however, indicates that the claim construction hearing has not
`occurred. Reply 5.
`Although Uniloc relies on the fact that claim construction briefing has
`been completed, Uniloc does not identify what significant discovery has
`been completed. See Fintiv at 10 n.17 (explaining that the weight to give
`claim construction orders varies because some district courts may postpone
`significant discovery until after the issuance of a claim construction order).
`Rather, Google explains that discovery is not complete, depositions remain
`to be taken, and expert reports have not been served. Reply 3.
`Fintiv also states that, “[i]f, at the time of the institution decision, the
`district court has not issued orders related to the patent at issue in the
`petition, this fact weighs against exercising discretion to deny institution.”
`Fintiv at 10. Here, the record indicates that the district court has not
`substantially invested in the case, apart from scheduling a case management
`conference to be held in November. Also, no claim construction orders have
`issued. See id. (“[C]laim construction orders may indicate that the court and
`parties have invested sufficient time in the parallel proceeding to favor
`
`
`2 All references to the page numbers in the “Joint Case Management
`Statement & [Proposed] Order” refer to the original page numbers in the
`bottom, middle portion of each page in Exhibit 1026.
`
`8
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`Patent 9,564,952 B2
`denial.”). We further agree with Google that “the new court ‘does not have
`the benefit of familiarity with the issues that the transferring court gained
`through considering the parties’ claim construction positions.’” Reply 5
`(quoting Google LLC v. Uniloc 2017 LLC, IPR2020-00441, Paper 13 at 36
`(PTAB July 17, 2020) (institution decision)). Accordingly, even though
`claim construction briefing has been completed by the parties, this factor
`does not weigh significantly in favor of a discretionary denial.
`3. Remaining Factors
`The remaining factors including overlap of issues and parties, as well
`as an initial evaluation of the strength of the petition’s merits, may impact
`the overall assessment. Fintiv at 12–16. In this instance, such factors do not
`significantly impact our analysis. For example, Uniloc points to one
`invalidity contention that challenges claims 9–12 by relying on a
`combination of three of the references relied upon in the Petition (Paulson,
`Surprenant, and McConnell), in addition to U.S. Patent No. 5,490,216 (“the
`’216 patent”) and two other references. Prelim. Resp. 12 (citing Ex. 2001,
`25). However, given the parties’ agreement to stay the district court
`litigation if we institute this inter partes review, the district court will not
`reach any overlapping issues first. Also, to the extent that the merits present
`a close call for the reasons given in the Preliminary Response, this fact
`generally would favor denying institution, but only when other factors
`favoring denial are present. Fintiv at 15. As discussed above, there are no
`other factors that weigh in favor of a discretionary denial.
`4. Balanced Assessment and Other Considerations
`Based on a holistic review of the Fintiv factors, we conclude that we
`should not exercise our discretion to deny institution. The various impacts
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`of transferring the related litigation between district courts, including the
`facts that no trial date has been set, the need for a new district court to
`become familiar with the case, and the parties’ agreement to stay the district
`court case if we institute an inter partes review, all weigh against a
`discretionary denial. The relevance and weight of other factors on this
`record are small in comparison. Accordingly, we decline to exercise our
`discretion under § 314(a) to deny the Petition in light of the underlying
`litigation that has occurred to date in the involved district courts.
`Other factors unrelated to the parallel district court case “that bear on
`discretion to deny institution include the filing of serial petitions, parallel
`petitions challenging the same patent, and considerations implicated by 35
`U.S.C. § 325(d).” Fintiv at 16 (footnotes omitted). Google points out that
`the prior art presented in the Petition has not been considered previously by
`the Office, and Google’s Petition is the only challenge to the ’952 patent that
`has ever been or is currently before the Board. Reply 7. We agree with
`Google that these factors further weigh against a discretionary denial.
`B. Claim Construction
`In an inter partes review based on a petition filed on or after
`November 13, 2018, such as here, claim terms are construed using the same
`claim construction standard as in a civil action under 35 U.S.C. § 282(b).
`See 37 C.F.R. § 42.100(b) (2019). That is, claim terms generally are
`construed in accordance with their ordinary and customary meaning, as
`would have been understood by a person of ordinary skill in the art, and the
`prosecution history pertaining to the patent at issue. Id.
`Google argues that no claim terms require express construction
`because the cited prior art renders the claims obvious under either of the
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`parties’ proposed constructions in district court. Pet. 9. In response, Uniloc
`provides a table listing the parties’ proposed constructions in district court,
`but does not argue that any claim term requires express construction for
`purposes of this inter partes review. See Prelim. Resp. 15–18. Accordingly,
`there is no dispute as to the construction of any claim term for purposes of
`this inter partes review, and we need not construe any claim term at this
`stage. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that
`are in controversy, and only to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`C. Principles of Law
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness
`(i.e., secondary considerations).3 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`
`
`3 In its Preliminary Response, Uniloc does not present arguments or
`evidence of secondary considerations. See generally Prelim. Resp.
`
`11
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`D. Level of Skill in the Art
`Google defines the level of skill in the art as follows:
`A person of ordinary skill at the time of the alleged
`invention of the ’952 patent would have held at least a bachelor’s
`degree in electrical engineering or computer science and had one
`year of
`relevant experience
`in
`the
`field of wireless
`communications. Less work experience may be compensated by
`a higher level of education, such as a master’s degree, and vice
`versa.
`Pet. 8–9 (citation omitted) (citing Ex. 1003 ¶¶ 33–35). Uniloc argues that
`Google’s definition is improper because it does not define thresholds for
`“[l]ess work experience” or “higher level of education.” Prelim. Resp. 15.
`Uniloc, however, neither proposes its own definition nor indicates that the
`resolution of any issue depends on the definition of the level of skill in the
`art. See id. We, therefore, adopt Google’s definition for purposes of
`institution because it is consistent with the ’952 patent and the asserted prior
`art.
`E. Ground Based on the Combined Teachings of Paulson and Surprenant
`Google argues that claims 9–12 are unpatentable under § 103(a) as
`obvious over Paulson in view of Surprenant. Pet. 10–54. Google also relies
`on the Declaration of Stuart J. Lipoff to support its positions. Ex. 1003.
`1. Overview of Paulson
`Paulson discloses a method of wirelessly transmitting and receiving
`data through sonic communication. Ex. 1005, code (57). Sonic transmission
`frequencies are initially determined by the highest frequencies the transmit
`device can send and the receive device can detect and decode. Id. at 12:51–
`56. Samples of the ambient sound in the area are used to create a noise
`characteristic. Id. at 11:17–19. This noise characteristic is analyzed to
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`determine which sonic frequencies are available. Id. at 13:14–16. For
`example, a noise characteristic may show an absence of sonic noise in the
`frequency range of 15 Khz to 22 Khz. Id. at 13:17–19.
`If the noise characteristic indicates that the desired sonic transmission
`frequencies are unavailable, transmission of the sonic signal can be delayed.
`Ex. 1005, 11:19–22. Paulson provides an example in which the noise of a
`coffee grinder in a coffee shop may fill a wide range of the available sonic
`frequency spectrum for a very short time period. Id. at 11:27–29. In this
`example, the delay may be for an interval of time until a subsequent sample
`of the sound indicates that the grinder has stopped and the sonic
`transmission frequencies are available. Id. at 11:30–33.
`2. Overview of Surprenant
`Surprenant is related to Paulson because Surprenant shares an
`inventor and assignee with Paulson, and incorporates Paulson by reference.
`See Ex. 1005, codes (21), (75); Ex. 1006, code (75), 1:7–10. Surprenant
`discloses an acoustics modulation protocol (AMP) to enable two or more
`devices to communicate acoustically with one another, without the need for
`specialized hardware. Ex. 1006, 4:6–9. Surprenant describes converting a
`message to binary data; modulating one or more selected frequencies for one
`or more acoustic carrier signals based on the binary data to generate one or
`more modulated acoustic carrier signals; and storing the modulated acoustic
`carrier signal in a buffer for subsequent output and transmission by a
`speaker. Id. code (57).
`Surprenant explains that the message may include an AMP ID.
`Ex. 1006, 7:44. Surprenant discloses that, in one embodiment, the AMP ID
`is a unique identification string that is associated with the transmit device.
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`Id. at 7:45–49. Surprenant also discloses that, in another embodiment, the
`AMP ID may comprise credentials that enable the receive device to access
`an account and perform services such as financial transactions, file sharing,
`or information exchange. Id. at 7:53–57.
`3. Claim 9
`Google contends that the teachings of Paulson and Surprenant account
`for the subject matter of independent claim 9, and provides reasoning as to
`why one of ordinary skill in the art would have combined the teachings of
`these references. Pet. 15–48. Uniloc argues that the combination of Paulson
`and Surprenant does not teach the following two limitations (1) “scanning a
`plurality of predetermined frequencies for a free frequency”; and (2) “user-
`configurable and non-user-configurable data specific to the audio transceiver
`computing device.” Prelim. Resp. 20–27. We address the parties’
`arguments below in the context of addressing the limitations of independent
`claim 9.
`a) A method for near field authentication of a source, the source using an
`audio transceiver computing device
`The preamble of independent claim 9 recites “[a] method for near
`field authentication of a source, the source using an audio transceiver
`computing device.” Ex. 1001, 14:53–55. Google argues that, to the extent
`the preamble is limiting, Paulson discloses a “method, apparatus and
`computer program product . . . for wirelessly transmitting and receiving data
`through sonic communication.” Pet. 20 (citing Ex. 1005, code (57)).
`Google explains that, because sound waves have a limited range, one of
`ordinary skill in the art would have understood that a sonic communication
`system satisfies the “near field” requirement. Id. at 22 (citing Ex. 1003
`¶ 63). Additionally, Google cites to Surprenant’s teaching that data
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`transmission is received within a 10 cm range. Id. at 23 (citing Ex. 1006,
`8:38–41).
`Google also cites to Paulson’s discussion of sonic codes and public-
`private key management in the context of sonic security processing. Pet.
`21–22 (citing Ex. 1005, 10:48–56). Google explains that one of ordinary
`skill in the art would have recognized that public-private key systems
`comprise authenticating a source. Id. at 22 (citing Ex. 1003 ¶ 61).
`Additionally, Google asserts that Surprenant also teaches authenticating a
`source because Surprenant uses an AMP ID that comprises credentials, and
`one of ordinary skill in the art would have understood that credentials are
`used during authentication. Id. (first citing Ex. 1006, 7:54–57; and then
`citing Ex. 1003 ¶ 62).
`As Paulson discloses sonic communications, Google explains that one
`of ordinary skill in the art would have understood that Paulson’s method of
`communication uses an audio transceiver because sonic communications use
`an audio/sonic transmitter and receiver in the form of a speaker and
`microphone. Pet. 21 (first citing Ex. 1005, Fig. 7; and then citing Ex. 1003
`¶ 59). Google asserts that Paulson also discloses computing devices in the
`form of mobile devices and computers. Id. (first citing Ex. 1005, 4:11–16;
`and then citing Ex. 1003 ¶ 60).
`b) scanning a plurality of predetermined frequencies for a free frequency
`The first step of independent claim 9 recites “scanning a plurality of
`predetermined frequencies for a free frequency.” Ex. 1001, 14:56–57.
`Google relies on Paulson to account for this limitation. Pet. 23–29. Google
`points to Paulson’s Figure 4, which identifies a “Set of Sonic Transmission
`Frequencies For Transmitting a Sonic Carrier Signal” in step 402. Id. at 24
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`(quoting Ex. 1005, Fig. 4 (item 402)). According to Google, Paulson
`describes this step as setting the sonic transmission frequencies to the
`highest frequencies available, and Paulson states that “[t]hese frequencies
`are initially determined by the highest frequencies the transmit device can
`send and the receive device can detect and decode.” Id. at 24–25 (quoting
`Ex. 1005, 12:53–56). Then, at step 406, Google argues that Paulson
`“determine[s] what sonic frequencies, if any, are available.” Id. at 25–26
`(quoting Ex. 1005, 13:11–19).
`According to Google, Paulson explains that this determination is
`based on an analysis of the noise characteristic. Pet. 25–26 (citing Ex. 1005,
`13:11–16). Google argues that the noise characteristic is created by taking
`“[s]amples of the ambient sound in the area” and using them to “create [the]
`noise characteristic indicative of the most prevalent sounds.” Id. at 23, 25
`(first alteration in original) (quoting Ex. 1005, 11:16–18) (citing Ex. 1005,
`13:1–10, Fig. 4 (item 404)).
`Google further argues that Paulson checks whether “the noise
`characteristic is low enough to not interfere with the transmission of sonic
`carrier signals,” and this check includes verifying whether the “signal-to-
`noise (SNR) ratio at these frequencies is higher than a predetermined
`threshold.” Id. at 26 (quoting Ex. 1005, 13:50–59). Google explains that
`one of ordinary skill in the art would have recognized that, for a given signal
`level, the SNR increases when the noise level decreases. Id. at 26–27 (citing
`Ex. 1003 ¶ 72). Google concludes that Paulson’s frequency selection is
`based on a predetermined threshold, such as having a low enough noise
`characteristic as reflected in a higher SNR. Id. at 27. Google asserts that its
`conclusion in this regard is consistent with how the ’952 patent describes a
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`“free frequency” as being, “for example, a frequency which has a noise level
`below a predetermined noise level threshold or a frequency that has an
`interference level below a predetermined interference level threshold.” Id.
`(emphases omitted) (quoting Ex. 1001, 5:17–21).
`In the Preliminary Response, Uniloc argues that Paulson fails to
`disclose “scanning a plurality of predetermined frequencies for a free
`frequency.” Prelim. Resp. 25–27. Uniloc argues that Google fails to explain
`how taking samples to newly determine the most prevalent sounds in an area
`satisfies the “predetermined frequencies” requirement. Id. at 26. Uniloc
`contends that it is only after the sampling is complete that Paulson newly
`determines whether the receive device would have the capability to
`demodulate a given sonic transmission frequency. Id. at 27 (citing Ex. 1005,
`13:11–26).
`Based on the current record, we are persuaded by Google’s argument
`that Paulson’s sonic transmission method teaches “scanning a plurality of
`predetermined frequencies for a free frequency.” Paulson discloses
`identifying frequencies that are “initially determined,” and later determining
`what sonic transmission frequencies are available based on whether the SNR
`is higher than a predetermined threshold. Ex. 1005, 12:53–56, 13:14–17,
`13:50–59.
`At this stage of the proceeding, we are not persuaded by Uniloc’s
`argument that Paulson fails to satisfy the “predetermined frequencies”
`requirement. Uniloc fails to address Paulson’s teaching that the highest
`frequencies available in the communication system “are initially determined
`by the highest frequencies the transmit device can send and the receive
`device can detect and decode.” Ex. 1005, 12:51–56 (emphasis added).
`
`17
`
`
`
`IPR2020-00756
`Patent 9,564,952 B2
`Specifically, Paulson sets forth this discussion as a description of step 402 of
`the flowchart in Figure 4. Id. at 12:49–56. Uniloc, however, skips over this
`step, and instead focuses its arguments on Paulson’s description of later
`steps. That is, Uniloc cites to Paulson’s creation of the noise characteristic
`(id. at 25–26 (citing Ex. 1005, 11:16–18)), which does not occur until step
`404 (Ex. 1005, 13:1–4). Then, Uniloc’s remaining arguments address the
`later step 406. See Prelim. Resp. 26–27 (citing Ex. 1005, 13:11–26).
`c) selecting the free frequency from the plurality of predetermined
`frequencies
`Independent claim 9 next recites the step of “selecting the free
`frequency from the plurality of predetermined frequencies.” Ex. 1001,
`14:58–59. Google relies on essentially the same arguments and evidence
`discussed above for the “scanning” limitation to explain how Paulson
`accounts for this limitation. Pet. 23–29. Google explains that one of
`ordinary skill in the art would have understood Paulson to disclose
`“selecting the free frequency from the plurality of predetermined
`frequencies” because Paulson uses the noise characteristic to choose one or
`more free frequencies as part of a “careful selection of the sonic
`transmission frequencies.” Id. at 29 (quoting Ex. 1005, 11:13–16).
`d) generating a periodic enclosed content message, and generating a
`modulated carrier wave representing the periodic enclosed content
`message
`The next two steps of independent claim 9 recite “generating a
`periodic enclosed content message” and “generating a modulated carrier
`wave representing the periodic enclosed content message.” Ex. 1001,
`14:60–62. For these two steps, Google turns to Surprenant’s teachings of
`“converting a message to binary data” and “modulating one or more selected
`
`18
`
`
`
`IPR2020-00756
`Patent 9,564,952 B2
`frequencies for one or more acoustic carrier signals based on the binary data
`to generate one or more modulated acoustic carrier signals.” Pet. 29–30
`(citing Ex. 1006, code (57)). Google argues that:
`A person of ordinary skill in the art would have understood
`that converting a message to binary data and using the binary
`data to modulate a carrier signal based on the data to be within
`the scope of the claimed “generating a modulated carrier wave
`representing the . . . enclosed content message,” because the
`modulated carrier signal includes the binary message data.
`Id. at 30–31 (citing Ex. 1003 ¶ 77).
`Google further argues that Paulson and Surprenant collectively teach
`that the message is “periodic.” Pet. 31. First, Google argues that Surprenant
`discloses “transmit[ting] an AMP ID multiple times.” Id. (alteration in
`original) (quoting Ex. 1006, 16:22–23). Then, Google explains that this
`strategy helps to overcome noise, as Paulson describes a system that
`“transmit[s] sonic carrier signals multiple times in an effort to overcome a
`temporary use of the desired sonic frequencies in the area.” Id. (alteration in
`original) (quoting Ex. 1005, 11:23–27). Google further relies on Paulson’s
`explanation that the delay between transmissions “can be a predetermined
`period of time.” Id. (emphasis omitted) (quoting Ex. 1005, 13:27–49).
`Google concludes that, “[w]hen a message is repeated with a predetermined
`delay, it repeats at a regular interval that one of ordinary skill would have
`understood to be ‘periodic’ as that term is used in the ’952 patent.” Id. at 32
`(first citing Ex. 1001, 5:52–54, 7:4–16; and then citing Ex. 1003 ¶ 80).
`e) transmitting the modulated carrier wave at the free frequency
`The last step of independent claim 9 recites “transmitting the
`modulated carrier wave at the free frequency.” Ex. 1001, 14:63–64. Google
`argues that Paulson teaches this limitation because it discloses transmitting
`
`19
`
`
`
`IPR2020-00756
`Patent 9,564,952 B2
`sonic carrier signals carrying the modulated data over the air at one or more
`sonic transmission frequencies. Pet. 32–33 (citing Ex. 1005, 2:26–28, 2:31–
`33, 12:34–36). Go
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