Trials@uspto.gov
`571.272.7822
`
`Paper 17
`Date: August 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2019-00702
`Patent 7,969,925 B2
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
`Administrative Patent Judges.
`
`MEDLEY,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`I. INTRODUCTION
`
`Apple Inc. (‘Petitioner’) filed a Petition for inter partes review of
`
`claims 1-20 of U.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.”). Upon consideration of the Petition
`
`and Preliminary Response, weinstituted inter partes review, pursuant to 35
`
`U.S.C. § 314, as to claims 1-20 based onall challenges set forth in the
`
`Petition. Paper 7 (“Decision to Institute” or “Dec.”).
`
`Subsequentto institution, Patent Ownerfiled a Patent Owner
`
`Response (Paper9, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`
`Response (Paper10, “Pet. Reply’), and Patent Ownerfiled a Sur-reply
`
`(Paper 11, “Sur-reply”). On May 21, 2020, we held an oral hearing. A
`
`transcript of the hearing is of record. Paper 16 (“Tr.”).
`
`In our Scheduling Order, we notified the parties that “any arguments
`
`not raised in the [Patent Owner] response may be deemed waived.” See
`
`Paper 8, 7; see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,766 (Aug. 14, 2012) (“The patent ownerresponse. .
`
`. should identify all
`
`the involved claims that are believed to be patentable and state the basis for
`
`that belief.”’). Patent Owner arguesthatit “does not concede, and
`
`specifically denies, that there is any legitimacy to any arguments in the
`
`instant Petition that are not specifically addressed”in its Patent Owner
`
`Response. PO Resp. 21 n.11. We decline to speculate as to what arguments
`
`Patent Ownerconsidersillegitimate in the Petition. Any arguments for
`
`patentability not raised in the Patent Owner Response are deemed waived.
`
`For the reasonsthat follow, we concludethat Petitioner has proven by
`
`a preponderanceofthe evidence that claims 1—20 of the ’925 patentare
`
`unpatentable.
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`A. Related Matters
`
`Patent Ownerindicates that the ’925 patent is the subject of the
`
`following currently pending court proceeding: Uniloc USA,Inc. et al. v.
`
`Apple Inc., Case No. 4-19-cv-01696 (N.D. Cal.). PO Resp. 3.
`
`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 knownlocation from which
`
`a recipient retrieves data. Jd. at 1:64-67. Rather, “a mobile device initiating
`
`a data transfer opensa listening port defined by an underlying data packet
`
`based networkprotocol.” Jd. at 1:67—2:2. 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. Jd. at
`
`2:2-7. Initiating mobile device further utilizes and incorporates a unique
`
`identification numberassociated with the target mobile device into the
`
`invitation message to locate and contact the target mobile device within the
`
`wireless mobile network.
`
`/d. at 2:7-11. “Oncethe 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 orderto transfer data
`
`directly between the two mobile devices.” Jd. at 2:12-17.
`
`An example digital mobile network system is illustrated in Figure 1
`
`reproduced below.
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`155
`
`145A
`
`160
`
`1504
`
`Figure 1 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.
`
`/d. at 2:21-27. As disclosed in the
`
`’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. Jd. at 2:40-44. 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 mechanismsto resolve routing information to locate
`
`destination mobile devices. /d. at 3:14-18. Through use of a page-mode
`
`messaging service, such as SMS, aninitiating mobile device transmits its IP
`
`address (anda listening port) in an invitation message to a target mobile
`
`device through the target device’s telephone number.
`
`/d. 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. Jd. at 4:31-35.
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`An example flow chart for establishing a data transfer session is
`
`illustrated in Figure 2 reproduced below.
`
`
`
`
`START
`START
`INITIATING MOBILE
`TARGET MOBILE
`
`
`
`DEVICE
`DEVICE
`
`
`
`
`
`OPEN TCP PORT
`
`OPEN SMS PORT
`
`
` EXTRACT IP
`ADDRESS FROM
`
`SMS MESSAGE
`
`
`TRANSMIT
`
`RECEIVE REQUEST TO
`REQUEST TO
`
`ESTABLISH TCP
`ESTABLISH TCP
`
`
`CONNECTION AT TCP
`CONNECTION TO
`
`PORT
`IP ADDRESS
`
`
`
`|
`
`210
`
`230
`
`270
`
`220
`
`240
`
`250
`
`260
`
`
`
`TRANSMIT INVITATION
`MESSAGE CONTAINING
`
`IP ADDRESS VIA SMS
`
`
`RECEIVE SMS
`INVITATION
`
`MESSAGE AT
`
`SMS PORT
`
`
`
`
`ESTABLISH RELIABLE DATA
`TRANSFER SESSION
`
`FIG. 2
`
`Figure 2 is a flow chart depicting the steps taken by aninitiating and target
`
`mobile device to establish a direct data transfer session. Jd. at 4:35—38. At
`
`210, the initiating mobile device opens a TCP portto listen for
`
`communications from the target mobile device. Jd. at 4:38-40. At 220, the
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`target mobile device similarly opens an SMSlistening port to receive
`
`invitation SMStext messagesat the specified SMSport. Jd. at 4:40-42. At
`
`230, the initiating mobile device transmits its IP address and TCPport in an
`
`invitation SMStext message to the telephone numberand a specified SMS
`
`port of the target mobile device. Jd. at 4:43-46. At 240, the target mobile
`
`device receives the SMStext message containing the initiating mobile
`
`device’s IP address and TCP port at the specified SMSport. Jd. at 4:46-48.
`
`At 250, the target mobile device extracts the IP address and TCP port from
`
`the SMStext messages and opensits own TCP port. Jd. 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. Jd. 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 portsof the initiating and
`
`listening mobile devices. Jd. at 4:53-56. At 280,the initiating and listening
`mobile devices engage in a data transfer session overa reliable virtual
`
`connection. Jd. 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 dependdirectly from claim 1; claims 9-14
`
`depend directly from claim 8; and claims 16-20 dependdirectly 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 aninitiating mobile
`device to receive communications through the data packet-based
`communications service;
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`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
`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
`listening software port on the initiating mobile device; and
`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 betweentheinitiating mobile device and the
`target mobile device.
`
`Ex. 1001, 5:45-67.
`
`D. Instituted Grounds of Unpatentability
`
`Weinstitutedtrial based on all asserted grounds of unpatentability
`under 35 U.S.C.! as follows (Dec. 7-8, 34):
`
`Claims Challenged
`1, 3-8, 10-15, 17-20
`
`~
`
`
`
`[35 U.S.C. §
`103(a)
`
`
`
`Alos?, RFC793?
`
`
`
`
`
`‘
`
`' 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 effectivefiling date before the effective date of the applicable
`AIA amendments, werefer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`* Translation of EP Application Publication No. 1009153 A1, published June
`14, 2000 (Ex. 1005, “Alos”’).
`3 RFC 793, “Transmission Control Protocol,” DARPAInternet Program
`Protocol Specification,September 1981, and Declaration of Sandy Ginoza
`(Ex. 1010, “RFC793”).
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`Claims Challenged
`
`2,9, 16
`
`1, 3-8, 10-15, 17-20
`
`29.16
`
`
`
`
`2,9, 16
`
`35 U.S.C. §
`
`103(a)
`
`103(a)
`
`10340
`
`Alos, RFC793,
`SMSSpecification4,
`WMA?
`Cordenier®, RFC793
`Cordenier, RFC793,
`
`8
`
`103(a)
`
`Lee, RFC793, SMS
`Specification,
`WMA
`
`
`
`
`1, 3-8, 10-15, 17-20
`103(a)
`Scchoston SMS
`
`
`
`Il. ANALYSIS
`
`A. Principles ofLaw
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderanceofthe evidence’that the claimsare
`
`unpatentable. 35 U.S.C. § 316(e) (2012); 37 C.F.R. § 42.1(d) (2018). A
`
`patent claim is unpatentable under 35 U.S.C. § 103(a)if the differences
`
`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, “SMSSpecification”).
`> Wireless Messaging API (WMA)for Java™ 2 Micro Edition Version 1.0,
`August 21, 2002, and Declaration of Harold Ogle (Ex. 1018, “WMA”).
`° EP Application Publication No. 1385323 Al, published January 28, 2004
`(Ex. 1007, “Cordenier’’).
`7U.S. Patent Application Publication No. 2003/0217174 A1, published
`November 20, 2003 (Ex. 1011, “Dorenbosch’”).
`8 U.S. Patent No. 6,847,632 Bl, issued January 25, 2005 (Ex. 1006, “Lee’”).
`° The burden of showing something by a preponderanceofthe evidence
`requires thetrier of fact to believe that the existence of a fact is more
`probable than its nonexistence before thetrier of fact may find in favor of
`the party who carries the burden. Concrete Pipe & Prods. of Cal., Inc. v.
`Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993).
`
`8
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter, as a whole, would have been obviousat 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 obviousnessis resolved on the basis of underlying factual
`
`determinations including (1) the scope and contentofthe prior art; (2) any
`
`differences between the claimed subject matter and the priorart; (3) the level
`
`of ordinary skill in the art; and (4) when in evidence, objective evidence of
`
`nonobviousness.'° Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`B. Level of Ordinary Skill
`
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encounteredin the art;
`
`prior art solutions to those problems; rapidity with which innovationsare
`
`made; sophistication of the technology; and educational level of active
`
`workersin the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(citation omitted). Petitioner relies on the testimony of Dr. Henry Houh,
`
`whotestifies that a person with ordinary skill in the art would have had “a
`
`Bachelor’s degree in computer science or a comparable field of study, plus
`
`approximately two to three years of professional experience with cellular
`
`phoneand IP networks, or other relevant industry experience” and that
`
`“laldditional graduate education could substitute for professional experience
`
`and significant experience in the field could substitute for formal education.”
`
`Pet. 9 (citing Ex. 1002 9 35). Patent Owner does not proposean alternative
`
`assessment. PO Resp. 3.
`
`10 Patent Owner doesnot present any objective evidence of nonobviousness
`as to the challenged claims.
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`Weadopt Dr. Houh’s assessmentof a person with ordinary skill in the
`
`art as it is consistent with the ’925 patent and the asserted prior art. We
`
`further note that the prior art of record in the instant proceeding reflects the
`
`appropriate level of ordinary skill in the art. Cf Okajima v. Bourdeau, 261
`
`F.3d 1350, 1354-55 (Fed. Cir. 2001) (holding the Board may omit specific
`
`findings as to the level of ordinary skill in the art “where thepriorart itself
`
`reflects an appropriate level and a need for testimony is not shown”).
`
`C. Claim Construction
`
`In an inter partes review forapetition filed on or after November13,
`
`2018, “[claims] of a patent... shall be 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), including construing the [claims] in
`
`accordance with the ordinary and customary meaning of such [claims] as
`
`understood by oneofordinary skill in the art and the prosecution history
`
`pertaining to the patent.” See Changes to the Claim Construction Standard
`for Interpreting Claims in Trial Proceedings Before the Patent Trial and
`
`Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37
`
`C.F.R. § 42.100(b) effective November 13, 2018) (now codified at
`
`37 C.F.R. § 42.100(b) (2019)); see also Phillips v. AWH Corp., 415 F.3d
`
`1303, 1312— 14 (Fed. Cir. 2005).
`
`Order ofSteps
`
`Petitioner argues that independentclaims1, 8, and 15 “are each
`
`directed to an initiating device that sends an invitation to a target mobile
`device and then establishes a connection with that device” and that
`respective dependentclaims 2, 9, and 16 each add limitations “related to an
`
`invitation received bythe initiating mobile device from ‘another’ mobile
`
`10
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`device.” Pet. 20. Petitioner argues that there is “no claimed relationship
`
`between the timing of any of the steps in these independentclaimsvis-a-vis
`
`the steps in these dependentclaims, such that the steps of the dependent
`
`claims can be performedat any time before or after the steps of the
`
`independentclaims” and that the ’925 patent does not require any temporal
`
`relationship. Jd. at 20-21 (citing Ex. 1002 4 50; Altiris Inc. v. Symantec
`
`Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003)). Patent Ownerargues that
`
`Petitioner has failed to explain whythere is no claimedrelationship between
`
`the claims in terms of ordered steps, such as an explanation of how opening
`
`a secondlistening software port (e.g., recited in claim 2) should be
`
`understood, without reference to the sameinitiating mobile device having
`
`first opened the listening software port recited in claim 1. PO Resp. 9-10.
`
`It is necessary for us to resolve this issue, because Patent Owner
`
`argues that claims 2, 9, and 16 require an orderor timing to the steps, such
`
`that “opening a second software port” must be subsequent to “opening a
`
`listening software port” recited in independent claims 1, 8, and 15. Jd. at 9-
`
`11,21. As such, Patent Ownerarguesthat Petitioner’s showing for claims2,
`
`9, and 16 fails to recognize “at least implicit (if not explicit) order between
`
`the antecedent timing of the ‘opening’ step of claim 1 vis-a-vis the opening
`
`step of claim 2.” Jd. at 10, 21.
`
`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.
`Forpurposes of discussion, we focus our analysis on claim 2. Claim 2
`
`recites “opening a second listening software port on the initiating mobile
`
`device to receive invitation messages through the page-mode messaging
`
`service,” and “receiving, at the second listening software port” “a message
`
`from another mobile device.” Ex. 1001, 6:2—7. There is nothing in claim 2,
`
`11
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`that requires that the “opening”of the “second listening software port” be
`
`subsequent to “openinga listening software port” recited in claim 1. The
`
`limitation “second”is descriptive of the “listening software port” of claim 2
`
`that is being opened, for the purpose of distinguishing the “secondlistening
`
`software port” from the “listening software port” recited in claim 1. Thatis,
`
`the “second listening software port”is different from the claim 1 “listening
`software port.” Claim 2 does not require, however, that opening the second
`
`listening software port must be performed after opening the claim 1 listening
`
`software port, as Patent Ownerasserts. We agree with Petitioner that the
`
`steps of claim 2 do not necessarily require any temporal relationship with
`
`respect to the steps of claim 1. We further agree with Petitioner that thereis
`
`nothing in the ’925 patent that describes a temporal relationship with respect
`
`to the steps of claims 1 and 2 and Patent Ownerdirects us to no such
`
`description. Indeed, the only description wefind of “opening a second
`
`listening software port”is in the claim language. For these reasons, we are
`
`not persuaded by Patent Owner’s arguments that claim 2 requires an orderor
`
`timing to the steps, such that “opening a second software port” must be
`
`subsequentto “opening a listening software port” recited in claim 1.
`
`“opening a listening software port”
`
`Independent claims 1, 8, and 15 recite “opening a listening software
`
`port on an initiating mobile device to receive communications through the
`
`data packet-based communicationsservice.” Dependent claims 2, 9, and 16
`
`recite “opening a secondlistening software port.” Petitioner proposesthat
`
`“(ejach of these limitations means ‘associating a port identifier with a
`
`process.’” Pet. 21. Petitioner argues that we “should reject any proposed
`
`construction that attempts to narrow this phrase to require that the port be
`
`opened exclusively for receiving a response from only the target device.”
`
`12
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`Id. at 22. Petitioner directs attention to the prosecution history ofa related
`
`application, where applicant argued that additional claim language whichis
`not presentin the claims of the ’925 patent excluded the use of well-known
`
`ports. Jd. (citing Ex. 1004, 414-416).
`Patent Ownerarguesthat “the port must [be] opened fora specific |
`
`‘target mobile device,” and “the claimed ‘opening’ must be directed to a
`specified ‘target mobile device.” PO Resp. 7, 8, 12. We understand that
`Patent Owneris proposing a construction that would require that the port be
`
`openedexclusively for receiving a response from only thetarget device. /d.;
`
`Sur-reply 10 (“the listening software port is opened only forthe target
`
`device”). It is necessary for us to resolve this issue, because there is a
`
`dispute about whether the prior art (RFC793) describes “openinga listening
`software port.” In particular, Patent Owner apparently agrees that RFC793
`describes passively opening a listening software port with an unspecified
`
`foreign host as Petitioner asserts, but disagrees that Petitioner has shownthat
`
`RFC793 describes opening a listening software port directed only to a
`
`specified “target mobile device.” See, e.g., PO Resp. 12. For the following
`reasons, we determinethat “openinga listening software port” does not
`
`require openingalistening software port for receiving a response from only
`
`the target mobile device.
`
`Theparties focus on the “opening”limitation recited in the
`
`independentclaims, as do we. Claims1, 8, and 15 eachrecite “opening a
`
`listening software port on an initiating mobile device to receive
`
`communications through the data packet-based communicationsservice.”
`
`Nowheredothe claimsrecite that the opening is directed to a specific target
`
`mobile device (to receive communications from only the target mobile
`
`device). Patent Ownerarguesthat the “‘opening’ ofthe listening software
`
`13
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`port is at least expressly tied to ‘receiv[ing] communications through the
`
`data packet-based communications service’”that is “introduced in the
`
`preamble.” Jd. at 7; Sur-reply 5, 9-10. Patent Owner, however, fails to
`
`explain how the language of “receiv[ing] communications through the data
`
`packet-based communications service” or anything in the preamble supports
`
`its narrow construction. Merely underlining certain words of the preamble
`
`or repeating words of the preambleis insufficient to show how those words
`
`support Patent Owner’s proposed construction. See, e.g., Sur-reply 5
`(underlining “establishing a direct data transfer session’! between mobile
`
`devices” without explaining how such language supports Patent Owner’s
`
`proposed narrow construction of “opening a listening software port”). We
`will not speculate as to what Patent Owner meanstothe detriment of
`
`Petitioner. It is incumbent upon a party proposing a narrow construction to
`
`articulate reasons whyits proposed construction is warranted. Here, Patent
`
`Ownerhas failed to show that any of the words in claim 1, for example,
`
`support construing the disputed phrase to mean “openinga listening
`
`software port on an initiating mobile device to receive communicationsfrom
`
`only a specific target mobile device through the data packet-based
`
`communications service.”
`
`Next, Patent Ownerpoints to two descriptions in the ’925 patentin
`
`support of its proposed construction. PO Resp. 8. The two descriptions are
`
`similar and describe that “the initiating mobile device opens a TCP port to
`
`'l The 925 patent describes the “direct data transfer session” between
`mobile devices in the context of not needing a separate server. Ex. 1001,
`(code 57), 1:51-57, 1:61-67. The ’925 patent does not describe “direct data
`transfer session” between mobile devices in the context of being a data
`transfer session whereby only the two mobile devices can communicate on
`the openedlistening software port as Patent Owner may be implying. Jd.
`
`14
`
`

`

`IPR2019-00702
`Patent 7,969,925 B2
`
`listen for communications from the target mobile device.” Ex. 1001, 4:38-
`
`40, 4:58-62. Patent Owner does not explain how suchdescription
`
`necessitates us construing the disputed limitation as proposed. We do not
`
`find that the description to which Patent Ownerdirects attention is a
`
`definition of “opening a listening software port,” and Patent Ownerhas
`
`failed to make the case that it is. The description is different from the
`
`proposed construction. The description is to open a TCP port to listen for
`
`communications from the target mobile device; not to listen for
`
`communications from only the target mobile device. Wefind that the
`
`description does not necessarily meanthat the initiating mobile device opens
`
`a TCP port to listen for communications only from the target mobile device
`
`and no other device. Thus, we are not persuaded that such description
`
`supports Patent Owner’s proposed construction.
`
`Still, there are other descriptions in the °925 patent that Patent Owner
`
`does not discuss that would seemingly contradict Patent Owner’s proposed
`
`construction. For example, the ’925 patent describes the following:
`
`[A] mobile device initiating a data transfer opens a listening
`port defined by an underlying data packet based network
`protocol. The 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 (e.g.,
`text based
`service) supported by the digital mobile network system. The
`initiating mobile device further utilizes and incorporates a
`unique identification number (e.g.,
`telephone number, PIN
`number, etc.) associated with the target mobile device into the
`invitation message to locate and contact
`the target mobile
`device within the wireless mobile network. Oncetheinitiating
`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
`
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`IPR2019-00702
`Patent 7,969,925 B2
`
`packet-based network protocol in order to transfer data directly
`between the two mobile devices.
`
`Id. at 1:67-2:17. The above describes opening a listening port defined by an
`
`underlying data packet based network protocol. The port that is openedis
`defined by a network based network protocol, but is not otherwise specified.
`The mobile device sends an invitation message “including the listening port”
`
`to the target mobile device using the target device’s phone number, for
`example, so that the target mobile device can receive such information (e.g.,
`the listening port) to then later communicate with the initiating device.
`
`Patent Ownerfails to discuss such description. If the listening port were
`
`opened such as to receive communications only from the target mobile
`
`device, as Patent Ownerargues, it would appear necessary for the initiating
`
`device to know someidentifier associated with the target mobile device to
`
`specify the port to only listen for communications from the target mobile
`
`device. The ’925 patent, however, never describes such an identifier, but
`
`only describes identifiers such as the target mobile device’s phone number
`
`that is used for sending an SMS messagefrom the initiating mobile device.
`
`Patent Owner, however, never addressesthis, or any other portion of the
`
`’925 patent that seems to contradict Patent Owner’s narrow construction.
`
`See, e.g., id. at 4:12-31.
`
`Petitioner points this out too (that Patent Owner’s proposed
`
`construction contradicts whatis described in the ’°925 patent). Pet. Reply 6—
`
`8. Petitioner arguesthat “it is impossible to implement” Patent Owner’s
`
`proposed“construction under the conditions discussed in the 925 patent
`
`using a TCP connection, whichis the only type of connection disclosed in
`
`the 925 patent used for implementing ports on the claimed data packet-based
`
`communications service and whichis specifically required by dependent
`
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`IPR2019-00702
`Patent 7,969,925 B2
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`claims 7, 14 and 20.” Jd. at 6 (citing Ex. 1001, Figs. 2-3, 1:23-42, 2:21-27,
`
`3:53-4:11, 4:31-5:20; Ex. 1028 § 13). Dr. Houhtestifies that “if a port is to
`
`be restricted to a particular foreign process, the OPEN call must specify the
`
`foreign socket address (both the IP address of the foreign host and the port
`numberfor the process onthat host).” Ex. 1028 4 14 (citing Ex. 1010, 11!7).
`
`Hefurthertestifies that
`
`(I]f Patent Ownerwerecorrectthat “opening a listening software
`port” requires opening the port only for the target device, the
`initiating device would need to know the target device’s socket
`address (IP address and port number) in order to specify those
`arguments in the TCP OPENcall. However,thisis iriconsistent
`with the problem the 925 patent purports to solve, whichis that
`initiating device does not know the target device’s network(e.g.,
`IP) address or port number .
`.
`. Therefore, in the embodiments
`described in the specification and specifically required in
`dependent claims 7, 14 and 20, Patent Owner’s construction is
`simply not possible.
`
`Id. § 15. We give substantial weight to Dr. Houh’s testimony and find that a
`
`person having ordinary skill in the art at the time of the invention would
`have considered Patent Owner’s proposedconstruction to be inconsistent
`with the 925 patent.'? Dr. Houh’s testimony stands unrebutted. He was not
`
`cross-examined and Patent Ownerdid notfile testimony of its own to show
`
`!2 Tn the Petition, Petitioner cites to page numbers addedbyPetitioner in the
`lowest right corner. However, in the Reply and in Dr. Houh’s Reply
`Declaration, citations are to the internal page numbers. Internal page
`number 11, for example is the same as “Page 20”located in the lowerright
`corner.
`'3 We disagree with Patent Ownerthat Dr. Houh’s testimonyis conclusory
`and entitled to no weight. PO Resp. 20-21; Sur-reply 11. Dr. Houh’s first
`and second declarations provide well-reasoned analysis, are not based on
`hindsight reconstruction, and provide a basis for us to conclude that the
`particular facts to which heattests are more likely than not.
`
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`IPR2019-00702
`Patent 7,969,925 B2
`
`that Dr. Houhis incorrect that a person having ordinaryskill in the art at the
`
`time of the invention would have considered Patent Owner’s proposed
`
`construction to be inconsistent with the °925 patent.
`
`Wehave considered Patent Owner’s argumentsthat its proposed
`
`construction is consistent with the ’925 patent because openinga listening
`
`port for a target device can be implemented using TCP/IP, but are not
`
`persuaded by such arguments. Sur-reply 2-4. First, Patent Owner argues
`
`that Petitioner’s Reply ignores “that a passive OPEN call is not required to
`
`use all zeroes for the port numberin order to open a passive TCP port” and
`
`that a “TCP port can be opened with a passive OPEN call in which an
`
`ephemeral port numberis used.” Jd. at 2-3. Patent Owner goes on to argue
`
`that
`
`Thus, any TCP port of a first device that is opened with the
`passive OPEN call and an ephemeral port number can be
`dedicated to (e.g., tightly coupled to) another target device to
`which an invitation message may be sent. Owing to the
`temporary nature of an ephemeral port-based session, such as
`data transfer session as recited in the independentclaims,it is
`highly unlikely that an arbitrary third party device could
`accidentally or even purposefully (i.e., maliciously) identify
`what the ephemeral port number is, much less identify an IP
`addressthat is associated with the ephemeral port numberduring
`the relatively short time that the opened port maybeactive.
`
`Sur-reply 3. First, nothing in the ’925 patent describes openinga listening
`
`software port with an ephemeral port numberandtransmitting the ephemeral
`
`port numberto the target mobile device. Second, Patent Owner has failed to
`
`demonstrate that opening a listening software port with an ephemeralport
`
`numberwould result in receiving communications from only a specific
`
`target mobile device. To that end, all we have before us is unsworn attorney
`
`argument informingusthat ‘an ephemeral port number can be dedicated to
`
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`IPR2019-00702
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`(e.g., tightly coupled to) anothertarget device,”and that “it is highly
`
`unlikely that an arbitrary third party device” could identify the ephemeral
`
`port number.
`
`/d. Patent Ownerdirects us to no evidence in support ofits
`
`assertions as to what a person having ordinary skill in the art would have
`
`knownat the time of the invention. See Estee Lauder Inc. v. L'Oreal, S.A.,
`
`129 F.3d 588, 595 (Fed. Cir. 1997) (argument of counsel cannot take the
`
`place of evidence lacking in the record). Here, for example, we do not have
`
`before us a declarant on behalf of Patent Owner to inform us what a person
`
`having ordinary skill in the art would have known about ephemeralport
`
`numbers and whetheranarbitrary third party device could identify the
`
`ephemeral port numberas asserted. We cannot take the unsworn word of an
`
`attorney, who, on this record has not been shownto be a person having
`
`ordinary skill in the art. Accordingly, we credit the unrebutted testimony of
`
`Dr. Houh over Patent Owner’s attorney arguments, and, therefore, find that
`
`the °925 patent does not support, and seemingly contradicts, Patent Owner’s
`
`proposed construction.
`
`We next address Patent Owner’s argumentthatit’s proposed
`
`construction “is also unambiguously confirmed by the patentee’s remarks
`
`offered during pro