UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`UNILOC 2017 LLC,
`Patent Owner.
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`Case IPR2019-00251
`Patent 6,993,049 B2
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`

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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`I.
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`II. Claim construction ............................................................................................ 1
`
`A.
`
`B.
`
`C.
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`“additional data field” ................................................................................. 2
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`“broadcasting” ............................................................................................ 6
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`“Inquiry message” ...................................................................................... 9
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`III. Ground 1 and 2 Arguments ............................................................................ 12
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`A.
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`B.
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`C.
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`Larsson's broadcast message for route discovery is an inquiry message . 12
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`Larsson discloses adding an additional data field to its inquiry message 14
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`The combination of Larsson and BT Core render claims 11 and 12
`obvious ...................................................................................................... 17
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`IV. Ground 3 Arguments .................................................................................... 20
`
`A.
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`IrOBEX discloses "the method comprising the primary station
`broadcasting a series of inquiry messages" .............................................. 20
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`V. BT Core (Ex. 1014) and IrOBEX (Ex. 1006) are valid prior art references .. 23
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`A. Uniloc untimely argues BT Core and IrOBEX are inadmissible ............. 23
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`B.
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`Evidence on record and included in this reply corroborates the
`availability of BT Core and IrOBEX as prior art to the ’049 Patent........ 23
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` 1. BT Core .................................................................................................... 24
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` 2. IrOBEX ..................................................................................................... 25
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` 3. Additional documents corroborate the public availability of BT Core and
`IrOBEX .............................................................................................................. 26
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`VI. Conclusion ...................................................................................................... 27
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` 
`
`i
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`

`

`
`
`APPLE-1001
`
`APPLE-1002
`
`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`
`UPDATED EXHIBIT LIST
`U.S. Patent No. 6,993,049 to Davies (“’049 Patent”)
`
`Prosecution History of the ’049 Patent (“the Prosecution
`History”)
`
`APPLE-1003
`
`Declaration of Dr. Charles Knutson
`
`APPLE-1004
`
`Curriculum Vitae of Dr. Charles Knutson
`
`APPLE-1005 U.S. Patent No. 6,704,293 (“Larsson”)
`
`APPLE-1006 IrDA Object Exchange Protocol (“IrOBEX”)
`
`APPLE-1007 Prosecution History of the 7,587,207 Patent (“207 Prosecution
`History”)
`
`APPLE-1008 Second Declaration of Dr. Charles Knutson
`
`APPLE-1009 U.S. Patent No. 7,587,207 (“Davies” or the “’207 Patent”)
`
`APPLE-1010 U.S. Patent No. 6,570,857 (“Haartsen”)
`
`APPLE-1011 U.S. Patent No. 6,480,505 (“Johansson”)
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`APPLE-1012
`
`APPLE-1013
`
`APPLE-1014
`
`APPLE-1015
`
` 
`
`Specification of the Bluetooth System: Wireless connections
`made easy, Profiles, Vol. 2, Bluetooth, Dec. 1, 1999 (“BT
`Profiles”)
`The New Shorter Oxford English Dictionary on Historical
`Principles, Vol. 1, Clarendon Press, 1993 (“Oxford
`Dictionary”)
`Specification of the Bluetooth System: Wireless connections
`made easy, Core, Vol. 1, Bluetooth, Dec. 1, 1999 (“BT Core”)
`U.S. Patent No. 6,683,886 (“Tuijn”)
`ii
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`

`

`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`
`APPLE-1016 Internet Archive Capture of
`http://www.bluetooth.com:80/developer/specification/specificat
`ion.asp from March 1, 2000
`APPLE-1017 Internet Archive Capture of
`http://www.bluetooth.com:80/developer/specification/core.asp
`from March 1, 2000
`APPLE-1018 Internet Archive Capture of
`http://www.bluetooth.com:80/developer/specification/order.asp
`from March 1, 2000
`APPLE-1019 Internet Archive Capture of
`http://www.bluetooth.com:80/news/archive/archive.asp from
`March 4, 2000
`Declaration of Michael Foley
`
`APPLE-1020
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`APPLE-1021
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`APPLE-1022
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`APPLE-1023
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`APPLE-1024  
`
`The Concise Oxford English Dictionary, 5th Ed., Oxford
`University Press, 1964 (“Concise Oxford English Dictionary”)
`Amended Complaint dated May 30, 2018, Uniloc USA v Apple
`Inc., Civil Action No. 1:18-cv-00164-LY, Western District of
`Texas, Austin Division (“Complaint”)
`McGraw-Hill Dictionary of Electrical and Computer
`Engineering, ISBN 0-07-144210-3, 2004
`Internet Archive Capture of
`https://web.archive.org/web/20000618190007/http://www.bluet
`ooth.com/text/news/archive/archive.asp?news=2 from June 18,
`2000
`APPLE-1025 U.S. Patent No. 6,622,018 (“Erekson”)
`
`APPLE-1026 PCT Patent Application Publication No. WO 00/76238
`(“Buttery”)
`U.S. Patent No. 6,922,548 (“Moore”)
`U.S. Patent No. 6,799,318 (“Davison”)
`
`APPLE-1027
`APPLE-1028
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` 
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`iii
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`APPLE-1029
`APPLE-1030
`APPLE-1031
`APPLE-1032
`APPLE-1033
`APPLE-1034
`APPLE-1035
`APPLE-1036
`
`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`U.S. Patent No. 6,779,185 (“Roukbi”)
`U.S. Patent No. 6,982,962 (“Lunsford”)
`U.S. Patent No. 6,255,800 (“Bork”)
`U.S. Patent No. 6,975,205 (“French”)
`Declaration of Mr. Peter Rysavy
`Declaration of Mr. Lawrence Faulkner
`Declaration of Dr. Charles Knutson (“Knutson_Dec.”)
`“Wireless Wonders Coming Your Way” by Peter Rysavy,
`https://rysavyresearch.files.wordpress.com/2017/08/2000_05_w
`ireless_wonders.pdf, last accessed on January 8, 2020.
`APPLE-1037 Internet Archive Capture of
`https://web.archive.org/web/20000517192715/http://www.bluet
`ooth.com/text/news/archive/archive.asp?news=2, last accessed
`on January 8, 2020.
`Internet Archive Capture of
`https://web.archive.org/web/20000518114920/http://www.bluet
`ooth.com/text/news/archive/archive.asp?news=list, last
`accessed on January 8, 2020.
`Oregon State University Open Source Lab Webpage,
`http://netwinder.osuosl.org/pub/netwinder/docs/nw/irda/, last
`visited January 8, 2020.
`
`APPLE-1038
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`APPLE-1039
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`APPLE-1040
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`APPLE-1041
`
`Stuart Williams, IrDA: Past, Present and Future, IEEE
`Personal Communications, Vol. 7, Issue 1, 11-19, Feb. 2000
`The IrDA Standards for High-Speed Infrared Communications,
`The Hewlett-Packard Journal, February, 1998.
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` 
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`iv
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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`
`I.
`INTRODUCTION
`Apple, Inc. (“Petitioner”) submits this Reply to Uniloc/Patent Owner’s
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`Response (“POR”/Paper 11) with respect to the inter partes review of U.S. Patent
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`No. 6,993,049 (“the ’049 Patent”). For the reasons discussed below and in the
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`Petition (Paper 2/“Pet.”), Uniloc’s POR arguments are unavailing.
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`II. CLAIM CONSTRUCTION
`“The words of a claim are generally given their ordinary and customary
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`meaning as understood by a person of ordinary skill in the art when read in the
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`context of the specification and prosecution history.” Thorner v. Sony Comput.
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`Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “There are only two
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`exceptions to this general rule: 1) when a patentee sets out a definition and acts as
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`his own lexicographer, or 2) when the patentee disavows the full scope of a claim
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`term either in the specification or during prosecution.” Id. “A disclaimer or
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`disavowal of claim scope must be clear and unmistakable, requiring ‘words or
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`expressions of manifest exclusion or restriction’ in the intrinsic record.” Unwired
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`Planet, LLC, v. Apple Inc., 829 F. 3d 1353, 1358 (Fed. Cir. 2016). “To act as its
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`own lexicographer, a patentee must ‘clearly set forth a definition of the disputed
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`claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Computer
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`Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). “It is not enough for a
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`patentee to simply disclose a single embodiment or use a word in the same manner
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`1
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`

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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`in all embodiments, the patentee must ‘clearly express an intent’ to redefine the
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`term.” Id. For instance, citations to statements of example embodiments and a
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`description of features that “may be” implemented in the invention do not rise to
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`the level of a clear and unmistakable intent to limit the scope of a claim term. See
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`Aventis Pharma S.A. v Hospira, Inc., 675 F.3d 1324, 1330 (Fed Cir. 2012).
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`When a Patent Owner seeks to narrow the scope of the claims, the relevant
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`inquiry under the Broadest Reasonable Interpretation (BRI) standard is whether the
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`specification “reflects ‘lexicography or disavowal’ that warrants a departure from
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`the plain and ordinary meaning of the disputed claim phrase. GE Lighting, 750
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`F.2d, 1308–09. As discussed below, Uniloc improperly uses claim construction to
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`import limitations into the claims and advance unduly narrow claim constructions
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`that depart from plain meaning. Further, Uniloc’s constructions lack clarity, create
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`confusion, and do not reflect the BRI.
`
`A.
`“additional data field”
`In its preliminary response, Uniloc asserted that “‘additional data field’
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`should be construed as ‘an extra data field appended to an inquiry message.’”
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`Patent Owner’s Preliminary Response (POPR), 8. The Board disagreed with
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`Uniloc “because the challenged claims already recite ‘adding to an inquiry
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`message . . . an additional data field.’ Ex. 1001, 8:39–40” and declined to adopt a
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`construction for this term. Institution Decision (Inst. Dec.), 5.
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`2
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`

`

`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`After failing to gain traction with its initial construction and realizing that its
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`initial construction (which Uniloc conceded “[t]he ’049 patent [was] clear” about)
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`was insufficient to overcome the art cited in the Petition, Uniloc’s POR presented a
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`modified construction of an “additional data field” as “an extra data field appended
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`to the end of an inquiry message.” POR, 13, 8; Knutson_Dec., [4]-[5]. In its
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`modified construction, Uniloc imports a location element—“to the end”—into its
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`previous construction. However, as explained below, the importation of “to the
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`end of an inquiry message” is inconsistent with the use of “additional data field” in
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`the ’049 Patent and the BRI of the term.
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`The ’049 Patent specification recites adding an additional data field to a
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`plurality of data fields in several instances. Ex. 1001, 2:28-33, 2:42-45, 2:50-55,
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`2:64-3:2, 4:59-5:15; 6:16-24. Only the instance at 4:59-5:15 describing FIG. 5
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`specifies the additional data field as being at the end of a Bluetooth inquiry packet.
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`FIG. 5, however, depicts examples of “embodiments of the present invention.” Id.,
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`3:5-17. Not a single recitation of the “additional data field” in the ’049 Patent
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`mandates that the “additional data field” be located at the end of an inquiry
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`message. Knutson_Dec., [6].
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`In addition, by virtue of claim differentiation, the ’049 Patent makes clear
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`that an additional data field does not encompass a data field at the end of an
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`inquiry message. Claim 1 recites “means for adding to an inquiry message prior to
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`3
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`

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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`transmission an additional data field for polling …” and “means for determining
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`when an additional data field has been added to the plurality of data fields.” Ex.
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`1001, 7:34-41. Claim 3, which depends from claim 1, recites “wherein means are
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`provided for adding the additional data field at the end of a respective inquiry
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`message.” Id., 7:50-52. Accordingly, by virtue of claim differentiation, recitation
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`of “additional data field” in claim 1 does not refer to “an extra data field appended
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`to the end of an inquiry message” because claim 3 adds this limitation. Phillips v.
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`AWH Corp., 415 F.3d 1303, 1324-27 (Fed. Cir. 2005) (“the presence of a
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`dependent claim that adds a particular limitation gives rise to a presumption that
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`the limitation in question is not present in the independent claim.”) If “additional
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`data field” requires a data field added at the end of an inquiry message, claim 3
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`would be rendered redundant. 37 C.F.R. § 1.75. Thus, recitation of “additional
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`data field” in the ’049 Patent does not invoke addition of a data field at the end of
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`the inquiry message.
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`In addition, extrinsic evidence also fails to support Uniloc’s construction.
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`For instance, the Concise Oxford Dictionary defines “additional” as “added” or
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`“supplementary.” Ex. 1021, 16. The dictionary definition of “additional” does not
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`specify any location requirement that would indicate to a POSITA that an
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`“additional data field” is added at the end of a message. Knutson_Dec., [7].
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`4
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`

`

`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`Finally, Uniloc’s construction contradicts its own interpretation of the term
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`in co-pending litigation. For instance, in Uniloc’s complaint dated May 30, 2018,
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`Uniloc alleged that Petitioner infringed the “additional data field” element by
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`mapping the variable PDU Payload field to the additional data field. Ex. 1022, 8-
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`9. Yet, on page 10 of the Complaint, the PDU payload field (shown below in red)
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`is clearly not added to the end of the message. Id., 10. Thus, in its infringement
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`contentions, Uniloc does not limit the location of the additional data field to the
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`end of the inquiry message. But, here, Uniloc inconsistently presents a narrower
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`construction under a broader standard.
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`Ex. 1022, 10
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`
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`For at least these reasons, the PTAB should reject Uniloc’s construction and
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`should construe an “additional data field” according to its ordinary meaning.
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`Knutson_Dec., [8].
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`
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`5
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`

`

`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`
`B.
`“broadcasting”
`The Board adopted Uniloc’s POPR construction of “broadcasting” to mean
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`“one message that is distributed to all.” Inst. Dec., 5. In its POR, Uniloc modified
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`its construction to “a transmission that is receivable by multiple recipients.”
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`POPR, 11; POR, 17.
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`Uniloc’s modified construction appears to shift the scope of broadcasting
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`from message transmission to message receivability. As Dr. Knutson explains in
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`his declaration, such a construction is inconsistent with the ordinary meaning of
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`broadcasting and is so broad that it would cover almost any type of message.
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`Knutson_Dec., [13]-[14]. For example, even a message that is addressed to or
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`intended for a single recipient can be intercepted and may therefore be “receivable
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`by multiple recipients.” As such, under Uniloc’s construction, broadcasting is
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`invoked in almost every transmitted message. Id.
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`Uniloc’s new construction is also inconsistent with the ’049 Patent and the
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`BRI of the term. Id, [9].
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`For instance, claim 11 recites:
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`A method of operating a communication system comprising a
`primary station and at least one secondary station, the method
`comprising the primary station broadcasting a series of inquiry
`messages, … .
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`6
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`

`

`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`By claiming “at least one” secondary station, the plain language of claim 11
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`does not mandate receivability by multiple recipients as Uniloc’s new construction
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`requires. Indeed, a single secondary station is sufficient to satisfy the claim.
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`Accordingly, Uniloc’s construction improperly imports limitations (i.e.,
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`“receivable by multiple recipients”) that are inconsistent with the claim language.
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`Id., [10].
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`The ’049 Patent specification also does not limit broadcasting to “multiple
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`recipients.” For instance, the ’049 Patent’s FIG. 1 (reproduced below) shows two
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`master stations 100. Master Station 100(A) is a master of a first piconet 102a,
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`which is a point-to-multipoint network, and Master Station 100(B) is a master of a
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`second piconet 102b, which is a point-to-point network. Ex.1001, 3:30-56.
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`7
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`

`

`
`
`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`
`Ex.1001, FIG. 1
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`
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`The ’049 Patent refers to “master 100” when describing broadcasting
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`operations performed by either Master Station 100(A) or Master Station 100(B).
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`Id., 3:57-4:58. Accordingly, a POSITA would have understood that Master Station
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`100(B) broadcasts an inquiry message to a single recipient, e.g., slave device 101
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`(B1), in a point-to-point communication. Knutson_Dec., [11]-[12]. The ’049
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`Patent does not disclose that the inquiry message must be broadcast to or
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`receivable by multiple recipients. In fact, nothing in the ’049 Patent suggests that
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`broadcasting is limited to multipoint communication. Thus, Uniloc’s attempt to
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`8
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`

`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`limit broadcasting to “a transmission that is receivable by multiple recipients”
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`lacks support in the ’049 Patent.
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`Although a construction of “broadcasting” is not required and the ordinary
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`meaning of “broadcasting” is sufficient to understand the claims in a manner
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`consistent with the ’049 Patent and to evaluate the clear broadcasting disclosed by
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`the applied prior art (Knutson_Dec., [15]), if a construction is to be adopted, the
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`Board should sustain its adopted construction. Under BRI, “all stations” (as
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`recited in the Board’s construction) may include one or more stations. The Board
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`appreciated this interpretation by correctly noting that “point-to-point
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`communications between two entities, [ ] does not distinguish over claim 11.”
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`Inst. Dec., 9.
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`C.
`“Inquiry message”
`Uniloc construes an “inquiry message” as “a specific type of message used,
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`at least in part, to discover other devices in the vicinity which may request to join a
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`piconet.” POR, 18. As explained below, because Uniloc mischaracterizes the
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`record and ignores other relevant parts of the record, the Board should reject
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`Uniloc’s construction and sustain its prior construction of an inquiry message.
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`As noted in the Petition (Pet., 9), the Board, backed by a dictionary
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`definition, previously construed the term “inquiry message” as “a message seeking
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`information or knowledge” in related U.S. Patent No. 7,587,207 (“’207 Patent”).
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`9
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`

`

`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`Ex. 1007, 41, 44. The Board’s construction is supported by other secondary
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`references, e.g., the McGraw Hill Dictionary of Electrical and Computer
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`Engineering, which defines “inquiry” as a request for the retrieval of a particular
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`item or set of items, and “message” as a series of words or symbols transmitted
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`with the intention of conveying information. Ex. 1023, 300, 365; see also Ex.
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`1013, 1376; Ex. 1003, [45]. Petitioner noted the Board’s claim interpretation and
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`the relevance of the ’207 Patent in the Petition, but Uniloc failed to acknowledge
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`the ’207 Patent’s prosecution history in its POR. The applicant also failed to rebut
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`this claim interpretation during the ’207 Patent prosecution. Knutson_Dec., [16]-
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`[17].
`
` In limiting its construction to “request[s] to join a piconet,” a network
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`specific to Bluetooth technology (see, e.g., Ex. 1025, 5:5-15, FIG. 1; Ex. 1026, 2:5-
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`16), Uniloc relies on select portions of the ’049 Patent related to the use of
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`Bluetooth inquiry messages. POR, 18. Yet, the ’049 Patent clearly recognizes the
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`use of inquiry messages outside of the Bluetooth context. In particular, the ’049
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`Patent describes that “the general invention concept of polling HIDs via a
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`broadcast channel used as part of the inquiry procedure is not restricted to
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`Bluetooth devices and is applicable to other communications arrangements.”
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`Ex. 1001, 3:24-29, 1:6-8; see also Pet., 7-8. Thus, Uniloc’s attempt to limit the
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`10
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`

`

`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`claimed “inquiry messages” to a Bluetooth network (piconet) and messages is
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`contradicted by the ’049 Patent. Knutson_Dec., [21]-[22].
`
`Although the ’049 Patent describes using inquiry messages in some
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`embodiments “when a Bluetooth unit wants to discover other Bluetooth devices”
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`(see, e.g., ’049 Patent, 4:20-25), the ’049 Patent does not limit inquiry messages to
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`be used only for device discovery. And, because 1) the ’049 Patent does not
`
`provide a definition for the term “inquiry message,” 2) the only construction on
`
`record (in related ’207 Patent’s prosecution history) is inconsistent with Uniloc’s
`
`construction, and 3) the ’049 Patent does not disavow the use of inquiry messages
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`beyond device discovery, Uniloc’s attempt to limit inquiry messages to device
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`discovery in Bluetooth is simply another attempt to improperly import limitations
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`into the claims. Knutson_Dec., [23].
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`Further, Uniloc’s construction is problematic and unclear for several
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`reasons. For example, Uniloc’s construction utilizes the phrase “to discover other
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`devices in the vicinity” but does not specify the vicinity of what device or entity, or
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`even what range the vicinity encompasses. Uniloc’s construction recites "a
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`specific type of message,” but does not provide any clarity as to what “type” of
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`message is covered.  Id., [18], [20].
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`Additionally, Uniloc’s construction recites “which may request to join a
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`piconet.” Such a construction implies that an inquiry message may or may not
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`11
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`

`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`request to join a piconet thereby rendering this entire phrase meaningless as it
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`effectively covers all messages. Id., [19].
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`In conclusion, Uniloc’s construction imports limitations that are unnecessary
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`and introduces a lack of clarity that would make it difficult for a POSITA to
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`determine the scope of an “inquiry message.” Uniloc’s construction fails to
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`consider all uses of the term “inquiry message” in the ’049 Patent and related
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`prosecution history. Accordingly, for the reasons previously noted in the Petition,
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`Petitioner submits that, under the BRI standard, the Board should maintain its
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`prior, reasonable construction and construe an “inquiry message” as encompassing
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`a “message seeking information or knowledge.” Id., [24]; Pet., 7-11.
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`III. GROUND 1 AND 2 ARGUMENTS
`A. Larsson's broadcast message for route discovery is an
`inquiry message
`Uniloc argues that Larsson’s request for route discovery message is not an
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`inquiry message. POR, 19. Uniloc’s argument fails at least because it relies on
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`Uniloc’s incorrect construction of “inquiry message.” See supra Section II.C.
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`Under a proper construction of inquiry message, Larsson’s broadcast request
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`for route discovery message is an inquiry message. For instance, Uniloc concedes
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`that “Larsson’s ‘broadcast message for route discovery’ is aptly named because its
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`purpose is to discover an optimal route to a known destination node which is
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`already joined to a piconet.” POR, 19. As noted above, an “inquiry message” is
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`12
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`

`

`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`properly construed as a “message seeking information or knowledge.” Because
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`Larsson’s broadcast message for route discovery is a message that is seeking
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`information on the optimal route, Larsson’s broadcast message is an inquiry
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`message. Knutson_Dec., [25]-[26].
`
`Uniloc argues that, because Larsson’s message is directed to route discovery
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`and not device discovery, Larsson’s message is not an inquiry message. POR, 20.
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`Implicit in this argument is Uniloc’s misunderstanding that an inquiry message is
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`limited to the Bluetooth environment and thus must perform device discovery.
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`However, as noted above in Section II.C, the ’049 Patent clearly recognizes the use
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`of inquiry messages outside of the Bluetooth environment and does not limit
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`inquiry messages to device discovery. Ex. 1001, 3:24-29, 1:6-8. The relevant
`
`question pertaining to an inquiry message is if any information is being sought by
`
`the inquiry message, not whether the message is directed specifically to device
`
`discovery. Knutson_Dec., [27].
`
`In Larsson, route information is being sought (in the inquiry message) from
`
`a destination node, which sends route information back to the source node in
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`response. Ex. 1005, FIG. 6B, 6:45-62. As Dr. Knutson explains in his
`
`supplemental declaration, seeking route information is similar to seeking a device’s
`
`address through the use of an inquiry message—a well-known use of inquiry
`
`messages in Bluetooth networks. Ex. 1014, 108; Knutson_Dec., [27]. A POSITA
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`13
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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`would therefore understand that, under BRI, Larsson's broadcast message for route
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`discovery is an inquiry message because it seeks information related to discovering
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`information needed to communicate with another device, which is similar to the
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`information sought by a Bluetooth inquiry message. Id. For at least these reasons,
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`Larsson discloses or renders obvious “the primary station broadcasting a series of
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`inquiry messages,” as recited in claim 11. See also Pet., 16-20.
`
`B.
`
`Larsson discloses adding an additional data field to its
`inquiry message
`As a preliminary matter, Uniloc’s arguments with respect to adding an
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`additional data field fail because Uniloc’s improper construction of “additional
`
`data field” fails, as explained above in Section II.A.
`
`Uniloc additionally argues that Larsson does not disclose “adding … an
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`additional data field” because Petitioner uses “data field” and “data”
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`interchangeably, and does not sufficiently show that Larsson discloses adding a
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`data field. POR, 20-23. Uniloc appears to have misunderstood or
`
`mischaracterized Petitioner’s argument. Knutson_Dec., [28]-[29].
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`Larsson discloses that:
`
`Every broadcast message should contain a broadcast identifier in
`the network adaptation layer header. In addition, the broadcast
`messages should contain a source address which uniquely
`identifies the source. For example, at the time of manufacture
`each Bluetooth unit is assigned a globally unique 48 bit IEEE
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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`802 address called the Blue tooth Device Address (BD_ADDR)
`which is never changed. Accordingly, the broadcast identifier
`together with the source address will uniquely identify the
`particular broadcast. Ex. 1005, 5:50-61.
`
`Examples of the standard Bluetooth packet and BD_ADDR fields were
`
`provided in the Petition and are reproduced below. Pet., 20-22. As explained in
`
`the Petition, each broadcast message in Larsson includes a plurality of
`
`predetermined data fields that includes the broadcast identifier and source address.
`
`Id.
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`Standard Bluetooth packet format (Ex. 1014, p 47; Pet. 22)
`
`
`
`Bluetooth Format of BD_ADDR (Ex. 1014, p 143; Pet., 21)
`
`
`
`
`
`In Larsson, when “the source node does not expect a reply message” in
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`response to the broadcast message, “the source node will broadcast the message to
`
`all neighbor nodes” without transmitting a piggyback message. Ex. 1005, 5:60-
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`6:17. A POSITA would therefore have understood that Larsson’s broadcast
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`message includes predetermined data fields for the broadcast identifier and source
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`15
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`Proceeding No.: IPR2019-00251
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`address, but not any data fields for the piggybacked data. Id., 5:58-60;
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`Knutson_Dec., [30]-[32].
`
`
`
`Larsson further discloses that, “[i]f the source node does expect a reply to
`
`the broadcast message, … the source node piggybacks the broadcast message
`
`in a request for route broadcast message.” Ex. 1005, 6:3-10. A POSITA would
`
`have understood from this disclosure that the request for route broadcast message
`
`is an entirely separate message from the broadcast message (for which the source
`
`node does not expect a reply). Id. When Larsson uses the term “piggybacks” in
`
`this context, a POSITA would have understood that Larsson effectively means
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`“adding” the broadcast message (for which the source node expects a reply) to a
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`request for route broadcast message. Id.
`
`
`
`For example, when an ARP, name resolution or DHCP broadcast message is
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`piggybacked onto a network adaptation layer route request broadcast message,
`
`Larsson explicitly notes that “a piggyback indicator can be inserted in the network
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`adaptation layer route request broadcast message. Alternatively, in a protocol
`
`where the request for route message is of a fixed length, a length indicator which
`
`indicates a length longer than the normal fixed length will implicitly indicate that
`
`the request contains piggyback data.” Ex. 1005, 7:55-61. In the first alternative, a
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`POSITA would have understood that a data field is added to accommodate the
`
`piggyback indicator. Knutson_Dec., [33]-[34]. In the second alternative, a
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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`POSITA would have understood that the longer length indicates the presence of
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`extra data fields. Id.
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`
`
`The ’049 Patent similarly states that “applicants have recognized that it is
`
`possible to piggy-back a broadcast channel on the inquiry messages issued by the
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`master 100.” Ex. 1001, 4:15-20. FIGS. 3-5 illustrate how the piggyback is
`
`accomplished. In particular, the ’049 Patent’s FIG. 5 clearly shows that
`
`piggybacking the inquiry messages issued by the base station involves “hav[ing] an
`
`extra field 504 appended to them” (the inquiry message).
`
`Ex.1005, FIG. 5
`
`
`
`For these reasons, “piggybacking” in Larsson and the ’049 Patent would
`
`have been understood as adding additional data field(s) to a message.
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`Knutson_Dec., [35].
`
`In view of the foregoing and the reasons noted in the Petition, Petitioner
`
`submits that Larsson discloses or renders obvious “adding to an inquiry message
`
`prior to transmission an additional data field,” as recited in claim 11.
`
`C. The combination of Larsson and BT Core render claims 11
`and 12 obvious
`Uniloc attacks Larsson and BT Core for the following reasons:
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`17
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`Proceeding No.: IPR2019-00251
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`BT Core does not qualify as prior art. POR, 23.
`
`Larsson discloses adding data not a data field. POR, 23.
`
`i.
`
`ii.
`
`iii.
`
`In sections cited by the Petitioner, a Poll packet is sent from a slave to
`
`master, not master to slave. POR, 24.
`
`iv.
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`“The Petition overlooks that the cited passage of BT Core directed to
`
`a ‘POLL packet’ [which] defines the same as not having a payload.”
`
`POR, 24-25.
`
`v.
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`“[T]he Petition overlooks that the cited passage of BT Core directed
`
`to a ‘POLL packet’ defines the same as polling in general, without
`
`being directed to any slave in particular.” POR, 25.
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`Argument (i) is addressed in Section V infra, and argument (ii) has been
`
`addressed in Section III.B supra.
`
`With regard to arguments (iii)-(v), Uniloc mischaracterizes the Petition and
`
`disclosure in the cited references. For example, the Petition cites to BT Core and
`
`explains that:
`
`A poll packet does not have a payload and “requires a
`confirmation from the recipient.” Ex. 1014, p 55. In particular,
`“upon reception of a POLL packet [a] slave must respond with a
`packet. This return packet is an implicit acknowledgement of the
`POLL packet. This packet can be used by [a] master in a piconet
`to poll the slaves, which must then respond.” Pet., 34.
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`18
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`Proceeding No.: IPR2019-00251
`Attorney Docket: 39521-0056IP1
`From this disclosure, it is clear that (1) a POLL packet is transmitted from
`
`the master to the slave, and (2) the Petition did not overlook the poll packet not
`
`having a payload. As explained by the Petition, although a payload is not included
`
`in a POLL message, other fields of a POLL message are used. Pet., 41. In
`
`particular, “[t]he fields of a polling packet (e.g., access code and header fields)
`
`would have been added as additional data fields to the request for route message to
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`poll a destination node. Ex. 1014, pp 47, 55; Ex. 1003, [82];” Pet., 41.
`
`Accordingly, Uniloc’s arguments (iii) and (iv) are without merit.
`
`In argument (v), Uniloc arbitrarily distinguishes between gen