DOCKET NO.: 337722-000255
`Filed on behalf of Apple Inc.
`By: Larissa S. Bifano, Reg. No. 59,051
`Joseph W. Wolfe, Reg. No. 73,173
`Zachary Conrad, Reg. No. 77,682
`
`DLA Piper LLP (US)
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110-1447
`Email: Larissa.Bifano@dlapiper.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`IPR2022-00426
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Filed on behalf of Apple Inc.
`By: Larissa S. Bifano, Reg. No. 59,051
`Joseph W. Wolfe, Reg. No. 73,173
`Zachary Conrad, Reg. No. 77,682
`
`DLA Piper LLP (US)
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110-1447
`Email: Larissa.Bifano@dlapiper.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`IPR2022-00426
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2022-00426– Petitioner’s Reply
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`V.
`
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 2
`A.
`No construction is necessary ................................................................. 2
`1.
`“Beaconed By The Sending Data Processing System” .............. 2
`2.
`“Transmitting . . . The Broadcast Unidirectional Wireless
`Data Record for Receipt By A Plurality Of Receiving
`Mobile Data Processing System In A Wireless Vicinity Of
`The Sending Data Processing System” ....................................... 5
`III. HIMMELSTEIN IN COMBINATION WITH MYR RENDERS
`OBVIOUS THE CHALLENGED CLAIMS OF THE ’804 PATENT ........... 6
`A.
`The Combination of Himmelstein and Myr Discloses “Beaconed
`By The Sending Data Processing System” ........................................... 7
`The Combination of Himmelstein and Myr Discloses
`“Transmitting … The Broadcast Unidirectional Wireless Data
`Record For Receipt By A Plurality Of Receiving Mobile Data
`Processing System In A Wireless Vicinity Of The Sending Data
`Processing System …” .......................................................................... 9
`C. Motivation to Combine Myr with Himmelstein.................................. 12
`IV. NO NEXUS BETWEEN THE CHALLENGED CLAIMS AND
`OBJECTIVE INDICIA OF NON-OBVIOUSNESS ..................................... 15
`A.
`Copying ............................................................................................... 16
`B.
`Commercial Success............................................................................ 19
`C.
`Licenses ............................................................................................... 20
`CONCLUSION .............................................................................................. 21
`
`B.
`
`ii
`
`
`
`IPR2022-00426– Petitioner’s Reply
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Cable Elec. Prods., Inc. v. Genmark, Inc.,
`
`770 F.2d 1015, 1028 (Fed. Cir. 1985) ................................................................ 18
`
`Chemours Company FC, LLC v. Daikin Industries, Ltd.,
`4 F.4th 1370 1378 (Fed. Cir. 2021) .................................................................... 19
`Cirrus Design Corporation v. Fleming,
`
`2021 WL 54778 (PTAB, Jan. 6, 2021) ............................................................... 16
`
`EWP Corp. v. Reliance Universal Inc.,
`755 F.2d 898 (Fed.Cir.1985) .............................................................................. 20
`Fleming v. Cirrus Design Corp.,
`
`28 F.4th 1214, 1224 (Fed. Cir. 2022) ................................................................. 16
`
`Graham v. John Deere Co.,
`383 U.S. 1, 148 USPQ 459 (1966) ..................................................................... 12
`In re Huang,
`100 F.3d 135, 40 USPQ2d 1685 (Fed. Cir. 1996) .............................................. 19
`Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
`392 F.3d 1317 (Fed. Cir. 2004) .................................................................... 16, 20
`In re Keller,
`642 F.2d 413, 208 USPQ 871 (CCPA 1981) ........................................................ 7
`KSR Intern. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 12
`Liqwd, Inc. v. L'Oreal USA, Inc.,
`941 F.3d 1133 (Fed. Cir. 2019) .................................................................... 16, 17
`
`L’Oreal USA, Inc. v. Olaplex, Inc.,
`(Fed. Circ. 2021) ................................................................................................ 17, 18
`
`iii
`
`
`
`IPR2022-00426– Petitioner’s Reply
`
`In re Merck & Co., Inc.,
`800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) .................................................. 7
`SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp.,
`225 F.3d 1349 (Fed.Cir.2000) ............................................................................ 20
`
`iv
`
`
`
`IPR2022-00426– Petitioner’s Reply
`
`Exhibits
`
`Exhibit Description
`1001 U.S. Patent No. 8,761,804 (“the ’804 Patent”)
`
`1002
`
`1003
`
`Prosecution History of U.S. Patent No. 8,761,804
`
`Curriculum Vitae of Darrell D.E. Long
`
`1004 Declaration of Darrell D.E. Long, dated January 14, 2022
`
`1005 U.S. Patent No. 7,123,926 (“Himmelstein”)
`
`1006 U.S. Patent Application Publication No. 2003/0014181 (“Myr”)
`
`1007 U.S. Patent No. 6,327,535 (“Evans”)
`
`1008 U.S. Patent No. 8,600,341
`
`1009
`
`Prosecution History of U.S. Patent No. 8,600,341
`
`1010 U.S. Patent Application Publication No. 2007/0030824 (“Ribaudo”)
`
`1011
`
`1012
`
`1013
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Apple, Inc.’s
`Opening Claim Construction Brief, Dkt. No. 32 (W.D. Tex. Dec. 2,
`2021)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Agreed Scheduling
`Order, Dkt. No. 27 (W.D. Tex. Sept. 11, 2021)
`
`BillJCo, LLC v. Cisco Sys., Inc., Case No. 2:21-cv-181, BillJCo, LLC
`v. Hewlett-Packard Enterprise Co. and Aruba Networks, Case No.
`2:21-cv-183, Docket Control Order, Dkt. No. 44 (E.D. Tex. Oct. 25,
`2021)
`
`1014 Dufresne, A., et al., How Reliable are Trial Dates Relied on by the
`PTAB in the Fintiv Analysis? (Oct. 29, 2021)
`
`1015
`
`Fintiv, Inc. v. Apple Inc., Case No. 6:21-cv-926-ADA, Order (Oct. 4,
`2021)
`
`1016
`
`BillJCo, LLC v. Cisco Sys., Inc., Case No. 2:21-cv-181, Cisco
`
`v
`
`
`
`IPR2022-00426– Petitioner’s Reply
`
`Systems Inc.’s Motion to Transfer Venue, Dkt. No. 36 (E.D. Tex.
`Oct. 11, 2021)
`
`BillJCo, LLC v. Hewlett-Packard Enterprise Co. and Aruba
`Networks, Case No. 2:21-cv-183, Hewlett-Packard Enterprise
`Company’s and Aruba Networks, LLC’s Opposed Motion to Transfer
`Venue to the Northern District of California Under 28 U.S.C. § 1404,
`Dkt. No. 34 (E.D. Tex. Oct. 4, 2021)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Defendant’s
`Motion to Dismiss Plaintiff’s Claims of Willful Infringement as to
`Each Patents-in-Suit and Plaintiff’s Claims of Indirect Infringement
`as to Each Patents-in-Suit, Dkt. No. 16 (W.D. Tex. Aug. 2, 2021)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Apple Inc.’s
`Opposed Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404,
`Dkt. No. 26 (W.D. Tex. Sept. 10, 2021)
`
`Curriculum Vitae listing Prior Litigation Engagements for Darrell
`D.E. Long
`
`Jackson, C., Radar and LORAN, Popular Electronics (July 1959)
`
`Letter from Krishnan Padmanabhan, dated January 14, 2022
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023 Declaration of Rose Cordero Prey In Support of Motion to Appear
`Pro Hac Vice
`
`1024
`
`Claim Construction Memorandum Opinion and Order, BillJCo, LLC v.
`Hewlett Packard Enter. Co., No. 2:21-cv-00183 (E.D. Tex. Mar. 14,
`2021)
`
`1025 Defendants Cisco Sys., Inc.’s Hewlett Packard Enter. Co.’s and
`Aruba Networks LLC’s Mot. for Leave to Amend Invalidity
`Contentions, No. 2:21-cv-00181-JRG, Dkt. 94 (filed Feb. 25, 2022)
`
`1026 Defendants Hewlett Packard Enter. Co’s and Aruba Networks, LLC’s
`Mot. to Leave to Amend Invalidity Contentions, No. 2:21-cv-00181,
`Dkt. 104 (filed Mar. 21, 2022).
`
`vi
`
`
`
`IPR2022-00426– Petitioner’s Reply
`
`1027 May 26, 2022 Order Granting Apple Inc.’s Petition for Writ of
`Mandamus
`
`1028
`
`1029
`
`1030
`
`Judge Gilstrap’s Order Granting Motion to Stay
`
`BillJCo – HPE Settlement Agreement
`
`Patent Owner Response re 011 Patent (redacted)
`
`vii
`
`
`
`IPR2022-00426 – Petitioner’s Reply
`
`I.
`
`INTRODUCTION
`As explained by the petition and preliminarily agreed to by the Board,
`
`claims 1 and 10-12 are obvious over the combination of Himmelstein and Myr.
`
`See Institution Decision, 12. Nothing in the Patent Owner Response (“POR")
`
`changes this determination.
`
`Patent Owner (PO) fails to address the substantive analysis of the petition or
`
`the institution decision in the Patent Owner Response (POR). Instead, PO’s
`
`rebuttal relies on narrow constructions for “beaconed by the sending data
`
`processing system” and “transmitting . . . the broadcast unidirectional wireless data
`
`record for receipt by a plurality of receiving mobile data processing system in a
`
`wireless vicinity of the sending data processing system,” which PO uses to justify
`
`their position of non-obviousness, and an argument that a POSITA would not
`
`combine the teachings of Myr with Himmelstein. As laid out below, these
`
`constructions are both unnecessary and incorrect. Nevertheless, even construing
`
`these terms in the manner proposed by the PO, the Petitioner’s grounds still render
`
`the Challenged Claims obvious as discussed below. Further, PO’s arguments
`
`regarding the motivation to combine Himmelstein and Myr are without merit.
`
`Finally, by failing to address the substantive analysis of the petition, PO
`
`concedes that the Petitioner’s arguments of obviousness are correct should the
`
`Board reject PO’s constructions. Accordingly, Petitioner maintains that the
`
`1
`
`
`
`IPR2022-00426 – Petitioner’s Reply
`
`Challenged Claims are obvious in light of the combination of Himmelstein and
`
`Myr. See Petition, 7-63.
`
`II.
`
`CLAIM CONSTRUCTION
`A.
`No construction is necessary
`Rather than address the substantive analysis of the Petition or Institution
`
`Decision, PO proposes constructions of “beaconed by the sending data processing
`
`system” and “transmitting . . . the broadcast unidirectional wireless data record for
`
`receipt by a plurality of receiving mobile data processing system in a wireless
`
`vicinity of the sending data processing system” that go beyond their plain and
`
`ordinary meaning. As explained in the Petition, the challenged claims should take
`
`their ordinary and customary meaning under Phillips. Petition, 8-9. None of PO’s
`
`proposed constructions should be adopted in this proceeding for at least the reasons
`
`set forth below.
`
`“Beaconed By The Sending Data Processing System”
`1.
`PO argues that the plain and ordinary meaning of “beacon” requires more
`
`than simply transmitting data. See POR, 17. Instead, PO alleges that “a beacon is
`
`a particular type of transmission,” notably “a beacon is a transmission sent with the
`
`intent that it can be used to locate the transmitter.” See id. Accordingly, it is PO’s
`
`position that the plain and ordinary meaning of beacon is “a transmission made to
`
`indicate a location of the transmitter.” See id. This construction is incorrect and
`
`should not be adopted.
`
`2
`
`
`
`IPR2022-00426 – Petitioner’s Reply
`
`Despite PO’s statements to the contrary, at no point does the intrinsic
`
`evidence of the ’804 patent support PO’s position that a beacon is “a transmission
`
`made to indicate a location of the transmitter.” Instead, it is clear that the PO is
`
`attempting to narrowly define the term beacon by reading into the term the intent
`
`of how the information that is beaconed may be used by the receiving devices.
`
`The intrinsic evidence of the’804 patent describes a beacon much broader
`
`than the PO’s proposed construction. In particular, the ’804 patent equates the act
`
`of beaconing as “a periodic broadcast.” For example, the ’804 patent provides
`
`“[s]ervice(s) associated with antennas periodically broadcast (beacon) their
`
`reference whereabouts (e.g., WDR information) for being received by MSs in the
`
`vicinity.” EX1001, 113:35-56. In other locations, the ’804 patent describes
`
`beacon similar to broadcast. For example, the ’804 patent provides “[a] A MS
`
`signal can be received for processing . . . as the result of a continuous, or pulsed,
`
`broadcast or beaconing by the MS (FIG. 13A), perhaps as part of usual
`
`communication protocol in progress for the MS . . . or an MS response to
`
`continuous, or pulsed, broadcast or beaconing via the service connected
`
`antenna.” EX1001, 19-26.
`
`Further, PO’s narrow construction is inconsistent with its position in co-
`
`pending IPR2022-00427 (“427 IPR”)(EX1030) for U.S. Patent No. 10,292,011. In
`
`the 427 IPR, PO argued that “‘periodic beaconing’ consists of broadcasting in
`
`3
`
`
`
`IPR2022-00426 – Petitioner’s Reply
`
`regularly reoccurring intervals.” EX1030, 14-15. PO further argues that the ’011
`
`specification “uses ‘periodic beaconing’ consistent with meaning broadcasting in
`
`regularly reoccurring intervals.” EX1030, 15 (citing ’011 Patent, 118:19-27).
`
`Because the ’011 Patent is related to the ’804 Patent, the ’011 Patent and the ’804
`
`Patent share overlapping specifications. The portion of the ’011 Patent relied on
`
`by PO for their construction of “periodic beaconing” in the ’011 Patent is also
`
`present in the ’804 Patent’s specification. Thus, PO’s position that the plain and
`
`ordinary meaning of “beacon” is a transmission made to indicate a location of the
`
`transmitter is inconsistent with the ’804 Patent’s specification and PO’s position in
`
`the co-pending 427 IPR.
`
`Thus, the intrinsic evidence does not support PO’s narrow interpretation.
`
`Further, PO’s alleged extrinsic evidence fails to support this position. First,
`
`PO alleges that Petitioner’s expert opined that “a beacon is a transmission sent with
`
`the intent that it can be used to locate the transmitter.” POR, 17 (citing EX2026, p.
`
`22:13-25; 25:3-16). This is incorrect. A review of the deposition transcript reveals
`
`that Petitioner’s expert never offered this opinion.
`
`Second, PO’s expert, Dr. Sharony, failed to provide any evidence or
`
`reasoning for his position that “[a] beacon is a transmission that is designed to
`
`attract attention to a specific location.” EX2025, ⁋54. Instead, PO’s expert’s sole
`
`support for this position is based on his “review of the ’804 patent.” Despite this
`
`4
`
`
`
`IPR2022-00426 – Petitioner’s Reply
`
`review, PO’s expert was unable to cite to any portion of the ’804 patent to support
`
`this interpretation.
`
`Further, in the co-pending 427 IPR, PO alleges that expert testimony
`
`“further establishes that a ‘periodic beaconing’ would have been understood by a
`
`POSITA to means[sic] beaconing occurring or reoccurring at regular intervals.”
`
`EX1030, 15. According to PO’s expert, Dr. Sharony, “A POSITA would have
`
`understood the ‘periodic beaconing’ required by the ’011 patent in accord with the
`
`plain and ordinary meaning of the term: beaconing occurring or reoccurring at
`
`regular intervals.” Id. Yet, the same expert in the present matter opined that “[a]
`
`beacon is a transmission that is designed to attract attention to a specific location,”
`
`which is inconsistent with PO’s proposed construction of “beacon” in the ’011
`
`Patent. See supra, 4 (citing EX2025, ⁋54). Accordingly, PO’s extrinsic evidence
`
`contradicts their own narrow construction of “beacon.”
`
`Thus, PO’s narrow construction of “beacon” cannot be adopted, and the
`
`Board should interpret the term according to its plain and ordinary meaning, as
`
`argued in the Petition.
`
`2.
`
`“Transmitting . . . The Broadcast Unidirectional Wireless
`Data Record for Receipt By A Plurality Of Receiving
`Mobile Data Processing System In A Wireless Vicinity Of
`The Sending Data Processing System”
`PO alleges that the foregoing limitation precludes a defined network of
`
`devices. In particular, PO alleges “rather than have a defined network of devices,
`
`5
`
`
`
`IPR2022-00426 – Petitioner’s Reply
`
`the wireless data record, which includes specific information, is transmitted by the
`
`sending data processing system via a unidirectional beacon directly to the wireless
`
`devices in the vicinity of the sending data processing system.” POR 19. This is
`
`incorrect.
`
`PO’s support for this position directly contradicts their interpretation of the
`
`claim language. In particular, for support, PO provides the following cite to the
`
`’804 patent: “[i]t is an advantage herein for locating as many MSs as possible in a
`
`wireless network, and without additional deployment costs on the MSs or the
`
`network.” EX1001, 4:42-44. Clearly, a defined network of devices can be a
`
`wireless network, particularly when communication among the devices is wireless.
`
`Therefore, PO’s narrow construction cannot be adopted and the Board
`
`should interpret the phrase according to its plain and ordinary meaning, as argued
`
`in the Petition.
`
`III. HIMMELSTEIN IN COMBINATION WITH MYR RENDERS
`OBVIOUS THE CHALLENGED CLAIMS OF THE ’804 PATENT
`PO’s rebuttal primarily relies on the Board adopting their constructions of
`
`“beacon” and “unidirectional.” Accordingly, if the Board does not adopt PO’s
`
`constructions, the instituted claims are invalid as obvious as articulated and
`
`unrebutted from the Petition. Petition, 19-63. While Petitioner submits that these
`
`constructions are both unnecessary and incorrect, even under PO’s proposed
`
`6
`
`
`
`IPR2022-00426 – Petitioner’s Reply
`
`constructions, the combination of Himmelstein and Myr still renders the
`
`Challenged Claims obvious.
`
`A.
`
`The Combination of Himmelstein and Myr Discloses “Beaconed
`By The Sending Data Processing System”
`PO alleges that the combination of Himmelstein and Myr fails to teach
`
`“beaconed by the sending data processing system” because Myr’s beaconing is not
`
`“a signal that is designed to attract attention to a specific location or that is
`
`intended to indicate the position of something.” POR, 22. Even under PO’s
`
`narrow construction of “beacon,” the combination of Himmelstein and Myr
`
`satisfies this limitation.
`
` In arguing against non-obviousness, one cannot show non-obviousness by
`
`attacking references individually where the rejections are based on combinations of
`
`references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck
`
`& Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
`
`In the present case, PO has failed to show non-obviousness because PO has
`
`attacked Myr individually instead of addressing the combination of Himmelstein
`
`and Myr. As established in the Petition, and preliminary agreed to by the Board,
`
`Himmelstein teaches “the location information associated with the sending data
`
`processing system to be used by the each receiving mobile data processing system
`
`for determining their own location relative to the location information.” Petition,
`
`45-47; Institution Decision, 12. PO has not challenged this analysis and has thus
`
`7
`
`
`
`IPR2022-00426 – Petitioner’s Reply
`
`conceded that the location information sent in Himmelstein is used by each
`
`receiving mobile data processing system for determining their own location
`
`relative to the location information. Thus, the intent of the transmission in
`
`Himmelstein is for the receiving mobile data processing system to determine their
`
`own location from the information in the transmission.
`
`The record further indicates that Petitioner is relying on Myr for its
`
`teachings that information can be sent between devices using periodic
`
`transmissions. For example, Myr teaches that information can be beaconed from a
`
`given device (e.g., period transmissions every 1 to 3 minutes). EX1006, ⁋⁋[0092],
`
`[0096]; Petition, 42. Himmelstein teaches that a mobile unit sends a
`
`communication packet 50 to another mobile unit 16. Petition, 41; EX1005, 2:65-
`
`3:1. When the beaconing functionality of Myr is applied to Himmelstein, the
`
`record clearly indicates that the combination results in Himmelstein’s mobile unit
`
`beaconing the communication packet 50 to other mobile units 16 (e.g., sending
`
`periodic transmissions to other mobile units 16). Petition, 42; Institution Decision,
`
`12. Thus, the combination of Himmelstein and Myr teaches a periodic
`
`transmission of location information associated with the sending data processing
`
`system to be used by the each receiving mobile data processing system for
`
`determining their own location relative to the location information. In other
`
`words, the periodic transmission taught by the combination of Himmelstein and
`
`8
`
`
`
`IPR2022-00426 – Petitioner’s Reply
`
`Myr is intended to indicate the position of the sending data processing system.
`
`Thus, the combination of Himmelstein and Myr discloses “a signal . . . that is
`
`intended to indicate the position of something.”
`
`Therefore, even under PO’s narrow interpretation of beacon, the
`
`combination of Himmelstein and Myr still teaches this limitation.
`
`B.
`
`The Combination of Himmelstein and Myr Discloses
`“Transmitting … The Broadcast Unidirectional Wireless Data
`Record For Receipt By A Plurality Of Receiving Mobile Data
`Processing System In A Wireless Vicinity Of The Sending Data
`Processing System …”
`In the POR, PO alleges that the combination of Himmelstein and Myr fails
`
`to disclose the foregoing limitations because all communications are processed
`
`through and controlled by a base station or a master node in a piconet architecture.
`
`POR, 26-27. This is incorrect.
`
`Himmelstein expressly discloses that a mobile unit 16 can communicate
`
`with another mobile unit 16. For example, Himmelstein teaches “[e]ach mobile
`
`unit 16 can communicate with another mobile unit 16, the closest base station 14,
`
`or the base station 14 which provides the strongest communication signal.”
`
`Petition, 12 (citing EX1005, 2:65-3:1). Himmelstein further directly contradicts
`
`PO’s position by disclosing “mobile units 16 can talk directly to other mobile units
`
`16 without the intervention of the base stations 14 and the base station controller
`
`9
`
`
`
`IPR2022-00426 – Petitioner’s Reply
`
`20.” Petition, 42; EX1005, 7:49-52. Himmelstein even goes as far as claiming
`
`such functionality:
`
`28. A system for selectively distributing information from a
`transmitting mobile unit to a plurality of receiving mobile units
`installed in vehicles, comprising:
`means for receiving a geographic location for each receiving
`mobile unit;
`means for obtaining an identity of each vehicle based on a
`unique identification associated with each mobile unit;
`means for determining a subset of the plurality of mobile units
`based on the geographic location of each mobile unit;
`means for determining a priority level associated with the
`information;
`means for assembling a header of a communication associated
`with each mobile unit of the subset, each header including the unique
`identification associated with the respective mobile unit and the
`priority level, each header capable of being processed upon receipt by
`the respective mobile unit to alert a remote user of the respective
`mobile unit to the communication; and
`means for transmitting the communication directly from the
`transmitting mobile unit to the plurality of receiving mobile units.
`
`PO alleges that, despite these numerous teachings, Himmelstein is limited to
`
`relying on utilizing an intermediary device (e.g., base station 20 or a master node)
`
`to relay communication between mobile units 16. Specifically, PO alleges that
`
`Himmelstein does not disclose the foregoing functionality because “there is no
`
`communication from one mobile unit to another mobile unit” and that “all
`
`communications are processed through and controlled by a base station.” POR, 26.
`
`This is incorrect.
`
`10
`
`
`
`IPR2022-00426 – Petitioner’s Reply
`
`As explained in the Petition, Himmelstein discloses that “[t]he mobile
`
`devices can form a secure piconet and communicate among the connected devices.
`
`Accordingly, using this technology, mobile units 16 can talk directly to other
`
`mobile units 16 without the intervention of the base stations 14 and the base station
`
`controller 20.” Petition, 42; EX1005, 7:48-52. PO alleges that it is impossible to
`
`transmit a unidirectional beacon in a piconet architecture because “[t]here is no
`
`communication from any slave directly to another slave.” See POR, 26-27. In
`
`order to come to this conclusion, PO needs to very narrowly interpret Himmelstein
`
`and a piconet architecture.
`
`PO’s position assumes that, in a piconet architecture, the only devices that
`
`can be construed as the “sending data processing system” are the secondary or
`
`slave devices. PO has failed to contemplate the scenario in which the primary or
`
`master device is the “sending data processing system.” As explained in
`
`Himmelstein, the piconet embodiment does not require a base station 14 or base
`
`station controller 20. In such environments, there would only be a plurality of
`
`mobile units 16 which can “talk directly to other mobile units.” Thus, any mobile
`
`unit 16 of a plurality of mobile units 16 can act as the primary device in the
`
`piconet. As established above, this position is adequately supported throughout
`
`Himmelstein. Accordingly, PO’s interpretation of Himmelstein’s piconet is
`
`incorrect.
`
`11
`
`
`
`Thus, the combination of Himmelstein and Myr discloses the foregoing
`
`IPR2022-00426 – Petitioner’s Reply
`
`functionality.
`
`C. Motivation to Combine Myr with Himmelstein
`PO alleges that the challenged claims are patentable over the combination of
`
`Himmelstein and Myr because a POSITA would not be motivated to combine the
`
`teachings of Myr with Himmelstein. The PO is incorrect.
`
`KSR provides the framework for determining obviousness as originally set
`
`forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). In
`
`particular, KSR provides various rationales for arriving at a conclusion of
`
`obviousness, including, but not limited to: combining prior art elements according
`
`to known methods to yield predictable results, simple substitution of one known
`
`element for another to obtain predictable results, and applying a known technique
`
`to a known device ready for improvement to yield predictable results. KSR Intern.
`
`Co. v. Teleflex Inc., 550 U.S. 398, 416-422 (2007).
`
`As the record indicates, Himmelstein discloses a mobile communication
`
`system in which mobile units communicate with other neighboring mobile units.
`
`Petition, 20; EX1005, 2:65-3:1; 7:40-52. Similarly, Myr discloses the periodic
`
`transmission of information between two devices. Petition, 21 (citing EX1006, ⁋⁋
`
`[0069], [0092]). Modifying Himmelstein to periodically transmit or beacon the
`
`information to neighboring mobile units as taught by Myr “would naturally
`
`12
`
`
`
`IPR2022-00426 – Petitioner’s Reply
`
`complement the techniques of Himmelstein for providing information to users of a
`
`mobile device based on the user’s location.” Petition, 19-20. Such modification
`
`would certainly amount to (1) combining prior art elements according to known
`
`methods to yield predictable results; (2) a simple substitution of one known
`
`element (e.g., periodic transmittal of Myr) for another (e.g., a transmittal in
`
`Himmelstein) to yield predictable results (i.e., a periodic transmittal in
`
`Himmelstein); and (3) applying a known technique (transmitting information
`
`periodically as in Myr) to a known device (a mobile unit in Himmelstein) to yield
`
`predictable results (a mobile unit that periodically transmits information).
`
`Accordingly, the record establishes that there is adequate motivation to
`
`combine Myr with Himmelstein.
`
`PO further alleges that Himmelstein teaches away from the proposed
`
`combination because “Himmelstein expressly states that systems based on cell
`
`phones are not appropriate in its system.” POR, 30. This too is incorrect.
`
`PO’s justification for this position is entirely based on one sentence in
`
`Himmelstein’s background section that describes conventional technology and the
`
`inefficiencies of cell phones in conventional communication environments. See
`
`id. PO is improperly extending this discussion to Himmelstein’s improved
`
`communication environment. At no point does Himmelstein state that cell phones
`
`are not appropriate in its improved communication environment. Further,
`
`13
`
`
`
`IPR2022-00426 – Petitioner’s Reply
`
`Himmelstein’s description of the minimum components that define its mobile units
`
`certainly are satisfied by a cell phone. For example, Himmelstein provides that
`
`“[a] preferred embodiment of the mobile unit 16 is shown in FIG. 2. Each mobile
`
`unit includes an RF transceiver 32 with an antenna 33 capable of transmitting and
`
`receiving a plurality of RF signals, a global positioning system (GPS) receiver 35,
`
`a microprocessor 40 with associated memory 41, an interface to the vehicle's
`
`electromechanical systems 44, and an audio-visual interface 46.” Petition, 12-13;
`
`EX1005, 3:34-40. Additionally, Figure 2 provides:
`
`EX1005, FIG. 2.
`
`Thus, any device that includes an RF receiver, GPS unit, microprocessor,
`
`memory, electro-mechanical interface, and an audio visual interface would amount
`
`to the disclosed mobile unit. Clearly, a person skilled in the art would understand
`
`that a mobile device or cell phone would certainly satisfy these requirements.
`
`Accordingly, PO’s position is without merit.
`
`14
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`
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`IPR2022-00426 – Petitioner’s Reply
`
`Finally, PO alleges that, with respect to the piconet embodiment of
`
`Himmelstein, “a POSITA would not have combined the teachings of Himmelstein
`
`with Myr because to do so would subvert the very purpose of Myr. POR, 31.
`
`Specifically, PO alleges that “[l]imiting the possible data sources to seven mobile
`
`units as would be the case with a piconet, or to only nearby mobile units as in the
`
`base station embodiment, would conflict with the objective of Myr.” See id. This
`
`is incorrect.
`
`PO’s position is predicated on an improper premise. Petitioner is not
`
`combining “the teachings of Himmelstein with Myr,” as alleged by PO. Petition,
`
`19-21. Instead, Petitioner has combined the teachings of Myr with Himmelstein.
`
`See id. In other words, the Petition establishes that the present grounds involve the
`
`modification of Himmelstein with the teachings of Myr – not the modification of
`
`Myr with the teachings of Himmelstein as alleged by the PO. Whether Myr would
`
`utilize a piconet is irrelevant. Accordingly, PO’s position is without merit.
`
`Therefore, Petitioner maintains that the combination of Himmelstein and
`
`Myr is proper.
`
`IV. NO NEXUS BETWEEN THE CHALLENGED CLAIMS AND
`OBJECTIVE INDICIA OF NON-OBVIOUSNESS
`PO has failed to carry their burden to provide evidence for at least the
`
`following objective indicia of non-obviousness: (1) copying of their claimed
`
`invention; and (2) commercial success of their claimed invention; and has failed to
`
`15
`
`
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`IPR2022-00426 – Petitioner’s Reply
`
`show a nexus between the challenged claims and the objective indicia of non-
`
`obviousness.
`
`Copying
`A.
`PO has failed to provide sufficient evidence of Petitioner copying PO’s
`
`patented technology. It is established that “copying requires duplication of
`
`features of the patentee’s work based on access to that work, lest all infringement
`
`be mistakenly treated as copying.” See Liqwd, Inc. v. L'Oreal USA, Inc., 941 F.3d
`
`1133, 1138 (Fed. Cir. 2019) (citing Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
`
`392 F.3d 1317, 1325 (Fed. Cir. 2004). Mere speculation that copying occurred is
`
`insufficient evidence to support a finding of copying. See Cirrus Design
`
`Corporation v. Fleming, 2021 WL 54778 (PTAB, Jan. 6, 2021) (affirmed by
`
`Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1224 (Fed. Cir. 2022)). Instead,
`
`in order to show copying, “more is needed than merely showing that similarity
`
`exists between the patent and the competitor’s accused product.” See Liqwd, 941
`
`F.3d at 1137.
`
`In the present case, PO’s position is that, because Petitioner was sued for
`
`patent infringement and PO sent Petitioner correspondence requesting that
`
`Petitioner license the ‘804 Patent, Petitioner must have copied PO’s patented
`
`inventions. POR, 33-35. This is incorrect and stands in direct opposition to
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`Liqwd and its family of caselaw. PO has failed to show additional facts, such as
`
`16
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`
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`IPR2022-00426 – Petitioner’s Reply
`
`those present in the Liqwd, that are evidence of copying. For example, PO has
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`failed to show any evidence that Petitioner had access to PO’s confidential
`
`information. Instead, PO’s only evidence of alleged copying includes several
`
`unso
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