Trials@uspto.gov
`571.272.7822
`
`Paper 7
`Entered: August 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner,
`
`V.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`Case IPR2019-00702
`
`Patent 7,969,925 B2
`
`Before SALLY C. IVIEDLEY, IEFFREY S. SMITH, and GARTH D. BAER,
`
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`
`Granting Institution of Inter Partes Review
`35 US. C. § 314
`
`
`571.272.7822
`
`Paper 7
`Entered: August 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner,
`
`V.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`Case IPR2019-00702
`
`Patent 7,969,925 B2
`
`Before SALLY C. IVIEDLEY, IEFFREY S. SMITH, and GARTH D. BAER,
`
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`
`Granting Institution of Inter Partes Review
`35 US. C. § 314
`
`
`
`IPR2019-00702
`
`Patent 7,969,925 B2
`
`1. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`
`claims 1—20 ofU.S. Patent No. 7,969,925 B2 (Ex. 1001, “the ’925 patent”).
`
`Paper 1 (“Pet”). Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary
`
`Response. Paper 6 (“Prelim Resp”). Institution of an inter partes review is
`
`authorized by statute when “the information presented in the petition .
`
`.
`
`. and
`
`any response .
`
`.
`
`. shows that 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). Upon consideration of the Petition and
`
`Preliminary Response, we conclude the information presented shows that
`
`there is a reasonable likelihood that Petitioner would prevail in establishing
`
`the unpatentability of at least one of claims 1—20 of the ’925 patent.
`
`A. Related Matters
`
`Petitioner and Patent Owner indicate that the ’925 patent is the subject
`
`of the following currently pending court proceedings: Uniloc USA, Inc, let
`
`al. v. Apple Inc, Case No. 1:18-cv-00166-LY (W.D. Tex); and Uniloc USA,
`
`Inc. et al. v. Apple Inc, Case No. 4-19-cv-01696 (N.D. Cal.). Pet. 1—2;
`
`Prelim. Resp. 6.
`
`B. The ’925 Patent
`
`The specification of the ’925 patent describes “a method for
`
`establishing a direct data transfer session between mobile devices over a
`
`digital mobile network system that supports data packet-based
`
`communications.” Ex. 1001, 1:61—64. According to the ’925 patent, a
`
`separate data server is not required to provide a known location from which
`
`a recipient retrieves data. Id. at 1:64—67. Rather, “a mobile device initiating
`
`a data transfer opens a listening port defined by an underlying data packet
`
`
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`IPR2019-00702
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`Patent 7,969,925 B2
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`based network protocol.” Id. at 1:67—22. Initiating mobile device sends an
`
`invitation message containing the network address, including the listening
`
`port of the initiating device, to a target mobile device through a page-mode
`
`messaging service supported by the digital mobile network system. Id. at
`
`22—7. Initiating mobile device further utilizes and incorporates a unique
`
`identification number associated with the target mobile device into the
`
`invitation message to locate and contact the target mobile device within the
`
`wireless mobile network. Id. at 2:7—1 1. “Once the initiating mobile device
`
`receives a response from the target mobile device at the listening port, the
`
`two mobile devices are able to establish a reliable virtual connection through
`
`the underlying data packet-based network protocol in order to transfer data
`
`directly between the two mobile devices.” Id. at 2:12—17.
`
`An example digital mobile network system is illustrated in Figure 1
`
`reproduced below.
`
`
`
`Figure l is a diagram of a Global System for Mobile communications
`
`(GSM) mobile networking system 100 including a first mobile device 105
`
`and a second mobile device 110. Id. at 2:21—27. As disclosed in the
`
`
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`IPR2019-00702
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`Patent 7,969,925 B2
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`’925 patent, each of the mobile devices 105 and 110 includes a Subscriber
`
`Information Module (SIM) card that contains unique identification
`
`information that enables the GSM system 100 to locate the mobile devices
`
`within the network and route data to them. Id. at 2240—44. The ’925 patent
`
`further discloses that the GSM system 100 supports a page-mode messaging
`
`service, such as Short Message Service (SMS), that relies upon the
`
`underlying GSM mechanisms to resolve routing information to locate
`
`destination mobile devices. Id. at 3:14—18. Through use of a page-mode
`
`messaging service, such as SMS, an initiating mobile device transmits its lP
`
`address (and a listening port) in an invitation message to a target mobile
`
`device through the target device’s telephone number. Id. at 4:26—31. When
`
`the target device receives the invitation message, it is able to contact the
`
`initiating mobile device through the received IP address and the two devices
`
`can establish a connection for a data transfer session. Id. at 4:31—35.
`
`An example flow chart for establishing a data transfer session is
`
`illustrated in Figure 2 reproduced below.
`
`
`
`IPR2019-00702
`
`Patent 7,969,925 B2
`
`START
`INITIATING MOBILE
`DEVICE
`
`DEVICE
`
`START
`TARGET MOBILE
`
`210
`
`OPEN TCP PORT
`
`OPEN SMS PORT
`
`220
`
`230
`
`TRANSMIT INVITATION
`MESSAGE CONTAINING
`IP ADDRESS VIA SMS
`
`\
`
`\
`
`\
`
`RECEIVE SMS
`INVITATION
`MESSAGE AT
`SMS PORT
`
`240
`
`EXTRACT IP
`ADDRESS FROM
`SMS MESSAGE
`
`270
`
`
`
`RECEIVE REQUEST TO
`ESTABLISH TCP
`
`
`CONNECTION AT TOP
`PORT
`
`
`- - —
`
`TRANSMIT
`REQUEST TO
`ESTABLISH TCP
`CONNECTION TO
`
`IP ADDRESS
`
`250
`
`260
`
`280
`
`ESTABLISH RELIABLE DATA
`TRANSFER SESSION
`
`@
`
`FIG. 2
`
`Figure 2 is a flow chart depicting the steps taken by an initiating and target
`
`mobile device to establish a direct data transfer session. Id. at 4:35—38. At
`
`210, the initiating mobile device opens a TCP port to listen for
`
`communications from the target mobile device. Id. at 4:38—40. At 220, the
`
`target mobile device similarly opens an SMS listening port to receive
`
`invitation SMS text messages at the specified SMS port. Id. at 4:40—42. At
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`
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`IPR2019—00702
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`Patent 7,969,925 B2
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`230, the initiating mobile device transmits its IP address and TCP port in an
`
`invitation SMS text message to the telephone number and a specified SMS
`
`port of the target mobile device. Id. at 4:43—46. At 240, the target mobile
`
`device receives the SMS text message containing the initiating mobile
`
`device’s IP address and TCP port at the specified SMS port. Id. at 4:46—48.
`
`At 250, the target mobile device extracts the IP address and TCP port from
`
`the SMS text messages and opens its own TCP port. Id. at 4:48—50. At 260,
`
`the target mobile device transmits a request to establish a TCP connection to
`
`the initiating mobile device’s IP address and TCP port. Id. at 4:50—53. At
`
`270, the initiating mobile device receives the request and a TCP connection
`
`is established between the IP addresses and TCP ports of the initiating and
`
`listening mobile devices. Id. at 4:53—56. At 280, the initiating and listening
`
`mobile devices engage in a data transfer session over a reliable virtual
`
`connection. Id. at 4:56—57.
`
`C. Illustrative Claim
`
`Petitioner challenges claims 1—20 of the ’925 patent. Claims 1, 8, and
`
`15 are independent. Claims 2—7 depend directly from claim 1; claims 9—14
`
`depend directly from claim 8; and claims 16—20 depend directly from claim
`
`15. Claim 1 is reproduced below.
`
`A method of establishing a direct data transfer
`1.
`session between mobile devices that support a data packet-based
`communications service over a digital mobile network system,
`the method comprising:
`
`opening a listening software port on an initiating mobile
`device to receive communications through the data packet-based
`communications service;
`
`transmitting an invitation message to a target mobile
`device through a page-mode messaging service, wherein the
`invitation message comprises a network address associated with
`
`
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`IPR2019-00702
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`Patent 7,969,925 B2
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`the initiating mobile device, and wherein the target mobile device
`is located by providing a unique identifier to the page-mode
`messaging service;
`
`receiving a response from the target mobile device at the
`.
`.
`.
`.
`.
`.
`.
`.
`1’
`llstenmg software port on the 1n1t1at1ng mob11e dev1ce;
`
`establishing a data transfer session through the data
`, packet-based communications service .between the initiating
`mobile device and the target mobile device, wherein the data
`transfer session is established in a peer-to-peer fashion without a
`server intermediating communications through the established
`data transfer session between the initiating mobile device and the
`target mobile device.
`
`EX. 1001, 5:45—67.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts that claims 1—20 are unpatentable based on the
`
`following grounds. Pet. 6:
`
`
`References
`Alos2 and RFC7933
`
`
`§ 103
`
`
`
`Challenged Claims
`1’ 3‘8= 10—15: and
`
`
`1 7—20
`
`1 The Leahy—Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’925
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`2 Translation of EP Application Publication No. 1009153 A1, published'June
`14, 2000 (Ex. 1005, “Alos”).
`3 RFC 793, “Transmission Control Protocol,” DARPA Internet Program
`Protocol Specification, September 1981, and Declaration of Sandy Ginoza
`(Ex. 1010, “RFC793”).
`
`
`
`IPR2019-00702
`
`Patent 7,969,925 B2
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`
`
`_m Challenged Claims
`Alos, RFC793, SMS Specification“,
`
`§ 103
`
`2.1m
`
`
`
`
`
`
`1:73:39 10-15, and
`§ 103
`Cordenier6 and RFC793
`2, 9, and 16
`§ 103
`Cordenier, RFC793, and Dorenbosch7
`1335:? 10‘15’ and
`§ 103
`Lees, RFC793, and SMS Specification
`Lee, RFC793, SMS Specification, and_l°3 2.2m
`
`
`II. DISCUSSION
`
`A. Claim Construction
`
`
`
`
`
`
`In this inter partes review, claims are construed using the same claim
`
`construction standard that would be used to construe the claims in a civil
`
`action under 35 U.S.C. § 282(b). 37 CPR. § 42.100(b) (2019). The claim
`
`construction standard includes construing claims in accordance with the
`
`ordinary and customary meaning of such claims as understood by one of
`
`ordinary skill in the art and the prosecution history pertaining to the patent;
`
`See id.; Phillips v. AWH Corp, 415 F.3d 1303, 1312—14 (Fed. Cir. 2005).
`
`For purposes of this decision, we need not expressly construe any
`
`claim term at this time. See Vivid Techs, Inc. v. Am. Sci. & Eng ’g, Inc, 200
`
`4 3GPP TS 23.040 version 3.5.0, “Universal Mobile Telecommunication
`System '(UMTS), Technical Realization of the Short Message Service
`(SMS),” and Information Disclosure Statement citing aforementioned
`specification, submitted August 15, 2002 (Ex. 1014, “SMS Specification”).
`5 Wireless Messaging API (WMA) for JavaTM 2 Micro Edition Version 1.0,
`August 21,2002, and Declaration of Harold Ogle (Ex. 1018, “WMA”).
`6 EP Application Publication No. 1385323 A1, published January 28, 2004
`(Ex. 1007, “Cordenier”).
`7 US. Patent Application Publication No. 2003/0217174 A1, published
`November 20, 2003 (Ex. 1011, “Dorenbosch”).
`8 US. Patent No. 6,847,632 B1, issued January 25, 2005 (Ex. 1006, “Lee”).
`
`8
`
`
`
`1PR2019-00702
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`Patent 7,969,925 B2
`
`F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be
`
`construed that are in controversy, and only to the extent necessary to resolve
`
`the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`
`in the context of an inter partes review).
`
`B. Principles ofLaw
`
`A patent claim is unpatentable under 35 U.S.C. § 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 US. 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 ordinary skill in the art;9 and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 US. 1, 17—18
`
`(1966).
`
`9 Relying on the testimony of Dr. Henry H. Houh, Petitioner offers an
`assessment as to the level of skill in the art at the time of the ’925 patent.
`Pet. 9 (citing Ex. 1002 1] 35). At this time, Patent Owner does not propose
`an alternative assessment. Prelim. Resp. 6. To the extent necessary, and for
`purposes of this Decision, we accept the assessment offered by Petitioner as
`it is consistent with the ’925 patent and the asserted prior art.
`
`
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`IPR2019-00702
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`Patent 7,969,925 B2
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`C. Asserted Obviousness of Claims 1, 3—8, 10—15, and 17—20 over A105 and
`RFC 793
`
`Petitioner contends claims 1, 3—8, 10—15, and 17—20 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Alos and RFC793. Pet. 23—35. In
`
`support of its showing, Petitioner relies upon the declaration of Dr. Houh.
`
`Id. (citing Ex. 1002).
`
`I. Alas
`
`Alos describes a method for establishing communication through an
`
`Internet-type computer network with two Internet information transmission
`
`elements. Ex. 1005 1] 6. An example network including two information
`
`transmission elements is illustrated in Figure 1 reproduced below.
`
`
`
`FIGURE 1
`
`Figure 1 shows two information transmission elements in a GSM cellular
`
`radio telephone network connected to the Internet. Id. 1] 13. A105 describes
`
`that the information transmission elements are two mobile telephone stations
`
`1 and 2 connected to a direct communication network (1'. e. , GSM cellular
`
`radio telephone network) 4 via radio links 14 and 24. Id. 1] 14. Stations 1
`
`and 2 are further connected to a computer network (i.e., the Internet) 3. Id.
`
`10
`
`
`
`IPR2019-00702
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`Patent 7,969,925 B2
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`fl 15. More specifically, station 1 is connected by a connector to a line 13 of
`
`a switched telephone network (STN) with which it can reach an access
`
`server provider 31. Id. Station 2 is similarly connected by line 23 to an
`
`access provider 32. 1d. 11 16.
`
`An example flow diagram is illustrated in Figures 2A and 2B
`
`reproduced below.
`
`11
`
`
`
`IPR2019-00702
`
`Patent 7,969,925 B2
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`
`
`miy‘ 9 I91
`
`52 Intemet 3 and
`
`receiving 'P2
`
`Choose
`Yes
`
`
`GSM 4?
`
`
`Connect to
`
`
`Mamet 3 and
`
`
` FIGURE 2A
`
`12
`
`
`
`IPR2019-OO702
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`Patent 7,969,925 BZ
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`Receive IP2
`
`81
`
`85
`
`Open SMS 4
`channel
`
`7
`
`NO
`
`Choose
`GSM 4?
`
`Time delay
`
`
`
`Send IP2
`on Internet 3
`W“
`
`.
`
`83
`
`Communication
`established
`
`84
`
`(44) -
`
`Send "’1
`
`Receive |P1
`Send lPt on
`Internet 3
`
`Communimtion
`
`establishedI
`
`86
`
`87
`
`8 8
`
`91
`
`92
`
`FIGURE 28
`
`Figures 2A and 2B collectively show a flow chart illustrating various
`
`possible cases for establishing communication through the Internet 3. Id.
`
`11 23. In step 41, two call numbers N1 and N2 are obtained for respective
`
`l3
`
`
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`IPR2019-00702
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`Patent 7,969,925 B2
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`stations 1 and 2 in GSM network 4. Id. fl 24. In step 42, it is determined
`
`whether the calling station 1 has a permanent IP address. Id. 1] 25. If the
`
`calling station 1 does not have a permanent IP address, then in step 43, the
`
`provider 31 is called over the line 13, and, in step 44, the station 1 is
`
`connected to the Internet 3 and provided with a required temporary IP
`
`address. Id. 11 25. Further: in step 52, an SMS signaling channel is opened
`
`from the calling station 1; in step 53, a called number N2 is sent over the
`
`GSM network 4; and, in step 54, a message is sent over the channel to the
`
`called station 2 with a message specifying that the station 2 must connect to
`
`the Internet 3, and providing an identifier for station 1. Id. fl 26. After
`
`subsequent steps, the communication between the stations 1 and 2 is
`
`established. Id. 111] 27—34.
`
`2. RFC793
`
`RFC793 is a technical specification that describes the functions
`
`performed by the Transmission Control Protocol (TCP). Ex. 1010, 10.10
`
`RFC793 describes that TCP segments are sent as Internet Protocol (IP)
`
`datagrams, where an IP datagram includes a header and a field, where an IP
`
`header carries several information fields (including source and destination
`
`host addresses), and a TCP header follows the IP header format and
`
`additionally supplies information specific to the TCP protocol. Id. at 24. A
`
`TCP header format is illustrated in Figure 3 reproduced below.
`
`1° Petitioner cites to page numbers added by Petitioner in the lowest right
`corner. We cite to the same.
`
`14
`
`
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`IPR2019-00702
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`Patent 7,969,925 B2
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`IrCP Header Format
`
`3
`2
`1
`0
`01234567890123456789012345678901
`+-+-+—+—+—+—+-+—+-+-+-+-+-+-+-+-+-+-+-+-+-+-+—+—+—+-+-+—+-+-+—+-+
`
`|
`Destination Port
`|
`Source Port
`|
`+-+-+-+-+—+—+-+-+-+-+-+-+—+-+-+-+-+-+-+-+—+—+—+-+-+-+-+—+-+-+-+-+
`
`|
`Sequence Number
`|
`+—+-+-+—+-+—+-+—+-+-+-+-+-+—+-+—+-+-+-+-+-+-+-+-+-+—+-+—+-+—+-+-+
`
`I
`Acknowledgment Number
`|
`+-+—+-+-+-+-+-+—+—+-+-+-+-+-+-+-+-+-+-+-+-+-+—+-+—+—+—+—+-+-+-+-+
`
`I
`IUIAIPIRISIFI
`| Data |
`|
`|R|C|S|S|Y|I|
`| Offsetl Reserved
`l
`IGIKIHITININI
`|
`|
`+-+-+—+-+-+-+-+-+-+—+-+-+-+—+-+-+-+-+-+-+—+-+—+-+-+-+-+—+—+-+-+-+
`
`Window
`
`|
`Urgent Pointer
`|
`Checksum
`|
`+-+—+-+-+-+—+-+-+-+-+-+-+-+-+-+—+-+—+-+-+-+-+-+-+-+—+—+—+—+—+—+-+
`
`|
`Padding
`|
`Options
`1
`+-+-+-+—+—+—+-+-+-+-+-+-+—+—+-+-+-+—+-+-+-+—+—+-+-+-+-+-+—+—+-+-+
`
`I
`data
`1
`+—+-+-+-+-+—+-+-+-+—+-+-+-+-+—+—+-+-+-+-+-+—+-+-+-+-+-+-+-+-+—+—+
`
`TCP Header Format
`
`Note that one tick mark represents one bit position.
`
`Figure 3.
`
`Figure 3 shows a TCP header format. Id. RFC793 describes that the TCP
`
`header format includes a source port number and a destination port number.
`
`Id. RFC793 further describes that the operation of the TCP involves a
`
`connection progressing through a series of states during its lifetime, where
`
`one of the states is “LISTEN,” and where the “LISTEN” state represents
`
`waiting for a connection request from any remote TCP and port. Id. at 30,
`
`32 (Figure 6).
`
`3. Discussion
`
`Claim 1 recites “establishing a direct data transfer session between
`
`mobile devices that support a data packet-based communications service
`
`over a digital mobile network system.” Ex. 1001, 5:45—48. Petitioner
`
`contends that Alos describes a method of establishing a direct data transfer
`
`session between mobile devices (mobile phones 1 and 2) that support a data
`
`packet-based communications service (IP) over a digital mobile network
`
`15
`
`
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`IPR2019-00702
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`Patent 7,969,925 B2
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`system (Internet 3 accessed over wireless network 4). Pet. 29—31 (Ex. 1005
`
`111] 1, 15, 35—36, Figs. 2A, 2B).
`
`Claim 1 further recites “opening a listening software port on an
`
`initiating mobile device to receive communications through the data packet-
`
`based communications service.” Ex. 1001, 5:49—51. Petitioner contends
`
`that Alos in combination with RFC793 renders the limitation obvious.
`
`Pet. 31. Petitioner contends that Alos describes that a response from phone
`
`2 is sent to phone 1 as an IP-based response message over Internet 3, but
`
`does not specify a transport layer protocol for that message. Id. (citing
`
`Ex. 1005 11 28, Fig. 2A). Petitioner further contends that it would have been
`
`obvious to use TCP as the transport layer because TCP/1P was well-known
`
`at the time of the invention. Petitioner argues, directing attention to the
`
`teachings of RFC793, that it would have been obvious to a person having
`
`ordinary skill in the art “to configure phone 1 to passively open a TCP port
`
`in a listening state with an unspecified foreign host so that the TCP/IP
`
`response message from the as-yet unknown socket address at phone 2 could
`
`be received at phone 1.” Pet. 28, 31 (citing Ex. 1010, 45; Ex. 1002 111165,
`
`69).
`
`Patent Owner argues that RFC793 discloses using “well—known
`
`sockets” that are “permanently assigned to a particular socket” and made
`
`available “a priori,” and that one of the “well-known sockets” is “reserved
`
`for File Transfer.” Prelim. Resp. 14 (quoting Ex. 1010, 20). Patent Owner
`
`further argues that because of such disclosure from RFC793, “there is no
`
`reason for .
`
`.
`
`.
`
`the hypothetical combination[] of Alos .
`
`.
`
`. with RFC793 to
`
`not simply use one of the ‘well-known sockets’ which are ‘permanently
`
`assigned’ and made available ‘a priori’, and specifically include a socket that
`
`is specifically ‘reserved’ for ‘file transfer’.” Id. at 14—15. Patent Owner
`
`16
`
`
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`IPR2019-00702
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`Patent 7,969,925 B2
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`contends that using the pre-existing “permanently assigned” socket reserved
`
`for file transfer would be the simplest and most common sense solution,
`
`which would not require “opening a listening software port” because “there
`
`is nothing to Open.” Id. at 15—16. Patent Owner faults Petitioner for not
`
`addressing RFC793’s description of such well-known sockets, such as for
`
`file transfer, and argues that Petitioner “provides no evidence or analysis that
`
`a POSITA would ignore this ‘well-known socket.’” Id.
`
`Patent Owner’s attorney arguments are unpersuasive. In contrast,
`
`Petitioner provides reasons for modifying Alos with RFC793. Pet. 26—29.
`
`Those reasons are supported by testimony that is in turn supported by record
`
`evidence. For example, Petitioner argues that it would have been obvious to
`
`a person having ordinary skill in the art “to configure phone 1 to passively
`
`open a TCP port in a listening state with an unspecified foreign host so that
`
`the TCP/IP response message from the as-yet unknown socket address at
`
`phone 2 could be received at phone 1.” Id. at 28, 31 (citing Ex. 1010, 45;
`
`Ex. 1002 W 65, 69). Dr. Hough opines that a person having ordinary skill in
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`the art would have understood that a passively opened listening port would
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`be required to receive any messages, otherwise any incoming message
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`would be rejected. Ex. 1002 W 44—45 (citing Ex. 1010, 18—21, 32, 45—46,
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`54, 79; Ex. 1015, 84—85). He further explains that a person having ordinary
`
`skill in the art would have been motivated to configure phone 1 to make a
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`passive OPEN call to open a TCP port in a listen mode; otherwise a message
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`from phone 2 could not be received and processed. Id. 1[ 65 (citing
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`Ex. 1010, 20, 45).11
`
`” Patent Owner argues that paragraph 65 of Dr. Hough’s testimony is
`conclusory, but it is not because it is supported by RFC793 itself. See, e. g,
`Ex.1010, 20, 45.
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`17
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`Patent 7,969,925 B2
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`Patent Owner, however, has failed to explain why a person having
`
`ordinary skill in the art (1) would have understood that a well-known socket
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`would not require “opening a listening port,” or (2) would have only used
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`well-known sockets. Patent Owner relies only on attorney argument, which
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`cannot take the place of record evidence. Patent Owner fails to direct us to a
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`description in RFC793 that supports its assertions that a well-known socket
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`would not require opening a listening software port or that a person having
`
`ordinary skill in the art would have only used well—known sockets in
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`combining Alos with RFC793. Accordingly, at this juncture of the
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`proceeding, we are not persuaded by Patent Owner’s arguments.
`
`Claim 1 further recites “transmitting an invitation message to a target
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`mobile device through a page-mode messaging service, wherein the
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`invitation message comprises a network address associated with the
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`initiating mobile device, and wherein the target mobile device is located by
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`providing a unique identifier to the, page—mode messaging service.”
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`Ex. 1001, 5:52—57. Petitioner contends that Alos describes initiating mobile
`
`device (phone 1) transmitting an invitation message (an SMS message) to a
`
`target mobile device (phone 2) through a page-mode messaging service (the
`
`SMS service on the GSM network 4). Pet. 32 (citing Ex. 1005 111 20, 26,
`
`Figs. 2A, 2B; Ex. 1002 11 70). Petitioner further contends that Alos describes
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`that SMS message includes 1P1, the network address of phone 1 on Internet
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`3. Id. (citing Ex. 1005 111[ 20, 26, Figs. 2A, 2B; Ex. 1002 1] 71). Petitioner
`
`argues that Alos discloses that phone 2 is located by providing a unique
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`identifier (telephone number N2) to the page-mode messaging service
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`(SMS). Id. (citing Ex. 1005 111] 18, 26; Ex. 1014, 42—43, 48—51; Ex. 1002
`
`11 72). Petitioner contends that it would have been obvious to a person
`
`having ordinary skill in the art to include a TCP port number in the SMS
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`18
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`Patent 7,969,925 B2
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`invitation message along with the network address 1P1 to ensure that the
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`TCP/IP response message from phone 2 was directed to the correct TCP port
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`on phone 1. Id. at 32—33 (citing Ex. 1002 11 73).
`
`Claim 1 recites “receiving a response from the target mobile device at
`
`the listening software port on the initiating mobile device.” Ex. 1001, 5:58—
`
`60. Petitioner contends that Alos in combination with RFC793 renders this
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`limitation obvious. Pet. 33. In particular, Petitioner argues that Alos
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`describes phone 1 receiving, at 1P1, a response to the SMS invitation
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`message from phone 2 Via the Internet 3. Id. (citing Ex. 1005 1111 20—21, 28—
`
`29, Figs. 2A, 2B). Petitioner contends that it would have been obvious to
`implement the response using TCP/1P and to receive the response at the
`
`previously opened TCP listening port. Id. (citing Ex. 1002 11 74).
`
`Claim 1 recites “establishing a data transfer session through the data
`
`packet-based communications service between the initiating mobile device
`
`and the target mobile device, wherein the data transfer session is established
`
`in a peer-to-peer fashion without a server intermediating communications
`
`through the established data transfer session between the initiating mobile
`
`device and the target mobile device.” Ex. 1001, 5:61—67. Petitioner
`
`contends that Alos in combination with RFC793 renders this limitation
`
`obvious. Pet. 33. Petitioner contends that Alos describes establishing voice
`
`and data transfer sessions through Internet 3 using the respective IP
`
`addresses of the mobile phones. Id. at 33—34 (citing Ex. 1005 1111 1, 6-8, 21,
`
`28, 30—35). Petitioner argues that in the combination of Alos and RFC793,
`
`the data transfer session uses TCP/1P as explained earlier in the Petition and
`
`that because the devices address the TCP/IP packets to each other using their
`
`actual IP addresses, this is a peer-to-peer communication without an
`
`intermediating server. Id. (citing Ex. 1005 11 8; Ex. 1002 11 75).
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`19
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`Independent claims 8 and 15 are similar to claim 1. Petitioner’s
`
`showings for claims 8 and 15 are nearly the same as that for claim 1, while
`
`sufficiently accounting for differences between claims 8 and 15 and claim 1.
`
`See Pet. 23—34. Patent Owner’s arguments for claims 8 and 15 are the same
`
`as its arguments for claim 1, which we have addressed above. We also have
`
`reviewed Petitioner’s showing for dependent claims 3—7, 10—14, and 17—20.
`
`Id. at 34—35. Patent Owner does not contest those claims separately.
`
`Prelim. Resp. 16.
`
`Based on the current record before us, we are persuaded by
`
`Petitioner’s showing that the asserted prior art references teach or suggest
`
`each limitation of claims 1, 3—8, 10—15, and 17—20, and that a person of
`
`ordinary skill in the art would have had reason, with rational underpinning,
`
`to combine the references in the manner Petitioner proposes. See Pet. 23—
`
`35. Accordingly, we determine the information presented shows a
`
`reasonable likelihood that Petitioner would prevail in establishing that
`
`claims 1, 3—8, 10—15, and 17—20 are unpatentable under § 103 as obvious
`
`over A103 and RFC793.
`
`D. Asserted Obviousness of Claims 2, 9, and 16 over Alas, RFC 793, SMS
`Specification, and WIMA
`
`Petitioner contends claims 2, 9, and 16 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Alos, RFC793, SMS Specification, and
`
`WMA. Pet. 35—41. In support of its showing, Petitioner relies upon the
`
`declaration of Dr. Houh. Id. (citing Ex. 1002).
`
`'1. SMS Specification
`
`SMS Specification is a technical specification that describes the Short
`
`Message Service (SMS), where the SMS provides a means of sending
`
`20
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`messages to and from GMS/UTMS mobiles. Ex. 1014, 12.12 SMS
`
`Specification describes that SMS comprises two basic services: Short
`
`Message Mobile Terminated (SM MT) and Short Message Mobile
`
`Originated (SM MO). Id. at 17. SM MT denotes the capability of the
`
`GSM/UMTS system to transfer a short message from a service center (SC)
`
`to a mobile station (MS), and to provide information about the delivery of
`
`the short message either by a delivery report or a failure report with a
`
`specific mechanism for later delivery. Id. SM MO denotes the capability of
`
`the GSM/UMTS system to transfer a short message submitted by the MS to
`
`a short message entity (SME) via an SC, and to provide information about
`
`the delivery of the short message either by a delivery report or a failure
`
`report. Id. The SM MT and SM MO services are illustrated in Figures 1
`
`and 2 reproduced below.
`
`Shon mesage delivery
`
`
`
`)——-_~_- E
`
`Report
`
`Figure 1: The Short Message Service mobile terminated
`
`Short message submission
`
`I
`
`——-—-<——-—-——
`
`a
`
`E
`
`Raped
`
`Figure 2: The Short Message Service mobiie originated
`
`‘2 Petitioner cites to page numbers added by Petitioner in the lowest right
`corner. We cite to the same.
`
`21
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`Figure 1 illustrates the SM MT service, where a short message can be
`
`transmitted from an SC to an MS, and Figure 2 illustrates the SM MO
`
`service, where a short message can be transmitted from an MS to an SME
`
`Via an SC. Id. at 17—18.
`
`2. WMA
`
`WMA is a technical specification that describes a messaging
`
`application programming interface (API) that is part of an overall
`
`specification for the Java programming language. Ex. 1018, 11.'3 WMA
`
`describes that the API provides the functionality of opening a connection
`
`based on a string address, and further provides message sending and
`
`receiving functionality. Id.
`
`3. Discussion
`
`Claim 2 depends from claim 1. Claim 9, which depends from claim 8,
`
`and claim 16, which depends from claim 15, are similar in scope to claim 2.
`
`Petitioner accounts for the limitations of these claims. Pet. 35-41. For
`
`example, claim 2 recites “opening a second listening software port on the
`
`initiating mobile device to receive invitation messages through the page-
`
`mode messaging service.” Ex. 1001, 62—4. Claim 2 further recites
`
`“receiving, at the second listening software port and through the page-mode
`
`messaging service, a message from another mobile device inviting the
`
`initiating mobile device to establish a data transfer session, wherein such
`
`message comprises a network address associated with the other mobile
`
`device.” Ex. 1001, 625—10.
`
`‘3 Petitioner cites to page numbers added by Petitioner in the lowest right
`corner. We cite to the same.
`
`22
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`Petitioner contends that Alos describes that phone 1 (initiating mobile
`
`device) can receive invitation messages (SMS invitations) through the page—
`
`mode messaging service and that the invitation can order the recipient to
`
`reSpond, but does not disclose how the functionality would have been
`
`implemented between SMS application and other software. Id. at 39 (citing
`
`Ex. 1005 111] 20, 22; Ex. 1002 1111 86—87, 89). Petitioner further contends that
`
`Alos describes wherein the SMS invitation comprises a network address (IP
`
`address 1P2) associated with phone 2. Id. at 40 (citing Ex. 1005 11 22;
`
`Ex. 1002 11 90). Petitioner contends that it would have been obvious to
`
`configure Alos’ phones to open a passive listener on an SMS port (e.g.,
`
`WDP Port) as taught in the SMS Specification and WMA to ensure that an
`
`incoming SMS invitation message is received by the standard SMS
`
`application and routed to the A103 application configured to respond to such
`
`invitation messages. Id. at 39—40 (citing Ex. 1014, 66—69, 72—73; Ex. 1018,
`
`21, 27, 30—34, 37—45; Ex. 1002 111] 88—89).
`
`Petitioner also accounts for the claim 2 limitation of “transmitting a
`
`response to the network address associated with the other mobile device,
`
`wherein the response acknowledges the ability to establish a data transfer
`
`session.” Id. at 40—41 (citing Ex. 1005 1111 20—22, 28-—29, Figs. 2A, 2B;
`
`Ex. 1010, Fig. 7; Ex. 1002 11 92). Patent Owner does not contest claims 2, 9,
`
`and 16 separately. Prelim. Resp. 16.
`
`Based on the current record before us, we are persuaded by
`
`Petitioner’s showing that the asserted prior art references teach or suggest
`
`each limitation of claims 2, 9, and 16, and that a person of ordinary skill in
`
`the art would have had reason, with rational underpinning, to combine the
`
`references in the manner Petitioner proposes. Pet. 35—41. Accordingly, we
`
`determine the information presented shows a reasonable likelihood that
`
`23
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`IPR2019—00702
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`Patent 7,969,925 B2
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`Petitioner would prevail in establishing that claims 2, 9, and 16 are
`
`unpatentable under § 103 as obvious over Alos, RFC793, WMA, and the
`
`SMS Specification.
`
`E. Asserted Obviousness of Claims 1, 3—8, 10—15, and 17—20 over
`Cordenier and RFC 793
`
`Petitioner contends claims 1, 3—8, 10—15, and 17—20 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvi
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