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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-00251 Patent 6,993,049 B2
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`PATENT OWNER SUR-REPLY
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`IPR2019-00251
`U.S. Patent 6,993,049
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`Table of Contents
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`EXHIBIT LIST ................................................................................................. IV
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`I.
`
`II.
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`INTRODUCTION.................................................................................. 1
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`PETITIONER’S REPLY AND ITS ACCOMPANYING
`BELATED ARGUMENT AND EVIDENCE UNDERSCORES
`DEFICIENCIES OF THE PETITION .................................................... 1
`
`A.
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`B.
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`Petitioner improperly raises a new argument to justify its
`failure to establish the dates of BT Core and IrOBEX. ................. 3
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`Petitioner improperly relies on additional evidence that
`could have been earlier filed to establish the dates of BT
`Core and IrOBEX. ........................................................................ 4
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`III.
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`CLAIM CONSTRUCTION ................................................................... 5
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`A.
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`“additional data field” .................................................................. 6
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`B.
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`C.
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`“broadcasting” ............................................................................ 10
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`“inquiry message[s]” .................................................................. 13
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`IV.
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`GROUND 1 ARGUMENTS (PURPORTED OBVIOUSNESS
`OF CLAIMS 11 AND 12 BASED UPON LARSSON) ........................ 17
`
`A.
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`B.
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`Larsson’s broadcast message for route discovery does not
`teach an inquiry message under a proper claim
`construction. ............................................................................... 17
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`Petitioner fails to prove Larsson renders obvious
`limitations directed to “adding . . . an additional data
`field.” ......................................................................................... 18
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`GROUND 2 ARGUMENTS (PURPORTED OBVIOUSNESS
`OF CLAIMS 11 AND 12 BASED UPON LARSSON AND BT
`CORE) ................................................................................................. 21
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`ii
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`V.
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`IPR2019-00251
`U.S. Patent 6,993,049
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`A.
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`Petitioner at least fails to prove modifying Larsson to
`incorporate BT Core’s polling packet render obvious
`claim limitations directed to the “additional data field.” ............. 21
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`VI.
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`GROUND 3 ARGUMENTS (PURPORTED OBVIOUSNESS
`OF CLAIMS 11 AND 12 BASED UPON IROBEX) ........................... 24
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`A. Obviousness based upon IrOBEX is based upon an absurd
`construction under which point-to-point communications
`are considered “broadcasting.” ................................................... 24
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`VII.
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`RELATED PROCEEDINGS ............................................................... 25
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`VIII. CONCLUSION .................................................................................... 27
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`CERTIFICATE OF COMPLIANCE ............................................................ 28
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`CERTIFICATE OF SERVICE ...................................................................... 29
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`iii
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`EXHIBIT LIST
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`IPR2019-00251
`U.S. Patent 6,993,049
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`2002
`2003
`2004
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`Exhibit No. Description
`2001
`Excerpts from Microsoft Computer Dictionary, Fourth Edition,
`1999
`Declaration of Jeffrey Huang
`Declaration of Brett Mangrum
`Claim Construction Memorandum Opinion and Order, Uniloc
`USA, Inc. et al v. Samsung Electronics America, Inc. et al, 2-18-
`cv-00040, Dkt. 81 (E.D. Tex. Apr. 5, 2019)
`Amended Order Granting Motion to Dismiss, Uniloc USA Inc et
`al v. LG Electronics USA Inc et al, 5-18-cv-06738, Dkt. 109
`(N.D. Cal. Apr. 9, 2019)
`
`2005
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`iv
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`IPR2019-00251
`U.S. Patent 6,993,049
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Sur-Reply to the
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`Petition IPR2019-00251 for Inter Partes Review (“Pet.” or “Petition”) of United
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`States Patent No. 6,993,049 (“the ’049 patent” or “Ex. 1001”) filed by Apple Inc.
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`(“Petitioner”).
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`For the reasons given in Patent Owner’s Response (Paper 11, “POR”) and
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`herein, Petitioner fails to carry its burden of proving the challenged claims of the ’049
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`patent unpatentable on the challenged grounds.
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`II.
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`PETITIONER’S REPLY AND ITS ACCOMPANYING BELATED
`ARGUMENT AND EVIDENCE UNDERSCORES DEFICIENCIES OF
`THE PETITION
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`The Board has reinforced, in both the Consolidated Trial Practice Guide issued
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`in November 2019, and in a precedential opinion issued in December 2019, by a panel
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`consisting of the Director, the Commissioner of Patents, and the Chief Administrative
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`Patent Judge, that petitioners have limited opportunities to introduce evidence after
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`the Petition, Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper
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`20, p. 15-16 (Dec. 20, 2019) (Precedential), and may not use their Reply (Paper 12,
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`“Reply”) to submit new evidence or arguments that could have been submitted earlier.
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`As stated in Consolidated Trial Practice Guide, “Petitioner may not submit new
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`evidence or argument in reply that it could have presented earlier.” (Patent Trial and
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`1
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`IPR2019-00251
`U.S. Patent 6,993,049
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`Appeal Board Consolidated Trial Practice Guide November 2019, pp. 73-74)
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`(emphasis added).
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`In Hulu, LLC v. Sound View Innovations, LLC, the Board made clear that the
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`opportunities to submit additional evidence are limited, as stated in a heading:
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`2. After filing a petition, a petitioner has limited opportunities
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`to submit additional evidence
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`Hulu v. Sound View Innovations, at 14. The Board further explained that petitioner
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`may not use these limited opportunities to introduce new theories:
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`The opportunity to submit additional evidence does not allow
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`a petitioner to completely reopen the record, by, for example,
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`changing theories after filing a petition. See Intelligent Bio-Sys., Inc.
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`v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir.
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`2016) (affirming Board discretion to deny entry of petitioner’s reply
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`brief that contained an improper new unpatentability theory and
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`evidence, citing, among other things, § 312(a)(3)); see also CTPG
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`at 74 (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not
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`mean proceed in a new direction with a new approach as compared
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`to the positions taken in a prior filing.”).
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`Hulu v. Sound View Innovations, at 15-16.
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`Here, the Petitioner flagrantly disregards the Consolidated Trial Practice Guide
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`and Hulu by raising new argument and presenting new evidence in the present
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`proceeding.
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`2
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`IPR2019-00251
`U.S. Patent 6,993,049
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`A.
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`Petitioner improperly raises a new argument to justify its failure to
`establish the dates of BT Core and IrOBEX.
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`In complete disregard for the Consolidated Trial Practice Guide and recent
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`PTAB Decisions, the Petitioner raises a new argument in the Reply, contending that
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`the Patent Owner has “untimely” argued that BT Core and IrOBEX are inadmissible.
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`Reply, p. 23. Petitioner’s contention is not only hypocritical in view of its untimely
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`attempt to raise a new argument and enter new documents at this late stage, it
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`misrepresents Patent Owner’s position.
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`In fact, nowhere in the 28 pages of the POR does Patent Owner argue that BT
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`Core and IrOBEX are inadmissible. Rather, the Patent Owner correctly contends that
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`Petitioner has not established the references are prior art, because the Petitioner has
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`not established the dates on which the references were published. As noted in the
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`POR, “nothing in the Petition itself, its attached declarations, or in the unexplained
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`citations, establishes that BT Core was publicly accessible before the alleged ‘Critical
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`Date’ of June 26, 2006.” POR, p. 2. Likewise, “nothing in the Petition itself, or in
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`the cited paragraphs from the declaration of Dr. Charles Knutson (Ex. 1008),
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`establishes that IrOBEX was publicly accessible before the alleged “Critical Date” of
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`June 26, 2000.” POR, pp. 8-9.
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`3
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`IPR2019-00251
`U.S. Patent 6,993,049
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`Still further, because the Patent Owner is contesting the dates of the alleged
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`prior art and is not seeking, at this time, to exclude the references at issue, the
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`Petitioner is wrong to assert that the time restrictions of 37 C.F.R. 42.64 apply.
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`B.
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`Petitioner improperly relies on additional evidence that could have
`been earlier filed to establish the dates of BT Core and IrOBEX.
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`The Petitioner here has also flagrantly disregarded the principles of the
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`Consolidated Trial Practice Guide and Hulu, LLC v. Sound View Innovations in
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`seeking to justify their reliance on BT Core and IrOBEX by submitting an additional
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`over 200 pages of new Declaration and documents (Exs. 1027-1029, Ex. 1034, Ex.
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`1008, and Ex. 1033) in an effort to belatedly correct the deficient evidence in the
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`Petition that BT Core and IrOBEX allegedly qualify as prior art.
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`This is not the first time that Petitioner has attempted to improperly inject
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`additional evidence into the proceeding well after the filing of the Petition. Petitioner
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`filed, more than nine months after the filing of the Petition, a Motion to File
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`Supplemental Information (Paper 9) to enter into the record the Declaration of Dr.
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`Michael Foley (Ex. 1020). Patent Owner timely filed a response opposing the filing
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`of the Supplemental Information (Paper 10). Because the Board has not yet ruled on
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`Petitioner’s motion, the supplemental information Petitioner seeks to introduce is not
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`of record and hence not addressed in this Sur-Reply. Further, because Petitioner has
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`untimely and improperly submitted 200+ pages of declaration and documents with
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`4
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`IPR2019-00251
`U.S. Patent 6,993,049
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`Petitioner’s Reply, without even the pretense of filing a Motion to File Supplemental
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`Information, Patent Owner will not address the declarations and documents filed in
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`this improper manner.
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`The deficiency of Petitioner’s proof is evident in view of Petitioner’s belated
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`attempt to introduce new argument and new evidence at this late date. As the
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`Petitioner seeks to disregard the limits on introduction of new evidence and legal
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`theories after filing of the Petition, the Board should deny consideration of
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`Petitioner’s new arguments and evidence relating to the alleged prior art status of BT
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`Core and IrOBEX, and the Board should rule that Petitioner has failed to establish
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`that BT Core and IrOBEX are prior art. As clearly detailed on pages 1-8 of the POR
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`(Paper 11), the Petitioner has failed to establish the date of the BT Core reference. As
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`detailed on pages of 8-10 of the POR (Paper 11), the Petitioner has failed to establish
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`the date of the IrOBEX reference. Indeed, Petitioner can hardly argue that that the
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`patent references listed on page 26 of the Petitioner’s Reply were not readily available
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`at the time of filing of the Petition, or that the additional Declarants were unavailable
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`at the time of filing of the Petition.
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`III. CLAIM CONSTRUCTION
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`The Petition is tainted by a reliance on erroneous claim constructions. This
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`gives rise to a number of an independent and fully dispositive bases to deny the
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`Petition in its entirety. See Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-
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`5
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`IPR2019-00251
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`U. S. Patent 6,993,049
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`00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff‘d sub
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`nom., Synopsys, Inc. v. Mentor Graphics Corp, 669 Fed. Appx. 569 (Fed. Cir. 2016)
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`(denying petition as tainted by reliance on unreasonable claim constructions).
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`A.
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`“additional data field”
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`“When a patent “repeatedly and consistently’ characterizes a claim term in a
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`particular way,
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`it is proper to construe the claim term in accordance with that
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`characterization.” Profoot, Inc. v. Merck &. C0,, 663 F. App”): 928, 932 (Fed. Cir.
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`2016) (quoting GPNE Corp. v. Apple Inc, 830 F.3d 1365, 1370 (Fed. Cir. 2016))”
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`FOR, p. 13.
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`The ’049 patent repeatedly and consistently characterizes the term
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`“additional data field” to be “an extra data field appended to the end of an inquiry
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`message.”
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`Figure 5 depicts the additional data field as element 504:
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` 06
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`502
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`50
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`H88
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`FIG. 5
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`IPR2019-00251
`U.S. Patent 6,993,049
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`Ex. 1001, Fig. 5 (highlighting added). The Specification discloses that the
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`additional data field is appended to the end of the inquiry message: “By adding the
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`field to the end of the inquiry message, it will be appreciated that non-HID receivers
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`can ignore it without modification.” Ex. 1001, 5:6-9.
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`Thus, the ’049 patent clearly defines, including in the example disclosure
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`emphasized above, that the term “additional data field” refers to “an extra data field
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`appended to the end of an inquiry message”. Indeed, the specification explains why
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`appending an extra data field (i.e., in addition to the “predetermined data fields
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`arranged according to a first communications protocol”) to the end of the inquiry
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`message is an essential and defining aspect of the claimed invention: appending an
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`extra field to the end of the inquiry message is essential at least because “non-HID
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`receivers can ignore it without modification.” Id. (emphasis added).
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`Despite this clear intrinsic evidence, the Petitioner attempts to assert a faulty
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`construction based on extrinsic evidence and the doctrine of claim differentiation.
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`Petitioner’s position is without merit.
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`In Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir.
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`2006), the Federal Circuit made clear that the primary consideration in construction
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`of the claims is intrinsic evidence in the Specification concerning important features.
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`In Inpro II, the patent at issue involved a personal digital assistant (PDA) that
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`included improvements such as a thumbwheel controller with a host interface. Id. at
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`7
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`1352. The District Court construed the claim term “host interface” as a “direct
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`parallel bus interface.” Id. at 1353. The District Court rejected T-Mobile’s claim
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`differentiation based argument that the construction was improper because a parallel
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`bus interface and a direct parallel bus were recited in other claims. Id.
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`The Federal Circuit affirmed the District Court’s construction of “host
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`interface” and rejected T-Mobile’s claim differentiation argument. Id. The Federal
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`Circuit recognized that the claims must be construed in view of the disclosure in the
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`specification of the patent at issue that stressed the importance of the direct parallel
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`interface in solving problems with serial interfaces. Id. at 1354-55.
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`Similarly, here, the Specification discusses the importance of the additional
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`data field being appended to the end of the inquiry message. The inventors of the
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`’049 patent observed that, at the time of the invention, that there was an increasing
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`interest in wireless communications links, but that existing wireless networks did not
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`provide sufficient responsiveness for certain Human/machine Interface Devices
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`(HIDs), such as a keyboard. Ex. 1001, 1:9-18. Here, the appending of the additional
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`data field to the end of the inquiry message addresses the responsiveness issues
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`because it permits non-HID receivers to ignore the inquiry message. Ex. 1001, 5:6-
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`9. Further, the Specification notes that “The presence of the extra data field 504
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`means that the guard space conventionally allowed at the end of a Bluetooth inquiry
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`packet is reduced. However, this space is provided to give a frequency synthesiser
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`8
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`IPR2019-00251
`U.S. Patent 6,993,049
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`[sic] time to change to a new hop frequency and will be generally unused otherwise.”
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`Ex. 1001, 5:11-17 (emphasis added).
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`As in Inpro II, a construction that would ignore necessary functionality because
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`of application of the doctrine of claim differentiation is improper. Rather, as in Inpro
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`II, the claims must be construed in a manner which follows the intrinsic evidence of
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`the Specification and includes in the construction essential features. Thus, because
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`here the intrinsic evidence of the ‘049 Patent Specification makes clear that appending
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`of the additional data field to the end of the inquiry message is an important feature,
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`the claims must be construed so that the additional data field is appended to the end
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`of the inquiry message.
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`Patent Owner further notes that in Inpro II, the Federal Circuit held that it was
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`within the District Court’s discretion to refuse to consider expert testimony and
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`extrinsic evidence in its claim construction. Inpro, 450 F.3d at 1357. Here, the
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`irrelevant extrinsic evidence of a claim construction in an unrelated and unidentified
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`litigation, and the extrinsic evidence of a definition of the term “additional” in a non-
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`technical dictionary completely removed from the context in which the term is used,
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`Reply, pp. 4-5, are irrelevant and do not provide a basis for disregarding the clear
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`teaching of the intrinsic evidence.
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`Accordingly, the term “additional data field” should be construed to mean “an
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`extra data field appended to the end of an inquiry message.”
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`9
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`IPR2019-00251
`U.S. Patent 6,993,049
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`B.
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`“broadcasting”
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`In the POR, the Patent Owner noted that the Board preliminary adopted the
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`construction “one message that is distributed to all stations” for the term
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`“broadcasting” in its Institution Decision. POR, p. 16 (citing Paper 7 at 5). The Patent
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`Owner also noted that elsewhere in its Institution Decision, the Board suggested
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`that it understood, based on the limited record developed at the time, that the
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`“broadcasting” limitations of claim 11 broadly encompass what the Board referred to
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`as “point-to-point” communications. POR, p. 16 (citing Paper 7 at 9).
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`Patent Owner recognized the inconsistency in the Board’s construction,
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`because
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`the
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`interpretation of “broadcasting”
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`to mean a “point-to-point”
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`communication cannot be squared with the intrinsic evidence and the plain and
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`ordinary meaning of broadcasting, as that term was understood by persons of ordinary
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`skill in the art. To address this inconsistency, Patent Owner proposed construing
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`“broadcasting” to mean “a transmission that is receivable by multiple recipients.”
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`POR, p. 17. As explained in the POR, this definition is consistent with both the plain
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`and ordinary meaning of “broadcasting,” as the term is understood by persons of
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`ordinary skill in the art, and the meaning of the term in view of the intrinsic evidence,
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`particularly with regard to the intrinsic evidence of how the terms “broadcasting” and
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`“paging” are used in the ‘049 Specification. POR, p. 17.
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`10
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`IPR2019-00251
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`U. S. Patent 6,993,049
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`In contrast, Petitioner attempts to construe “broadcasting” as a point-to-point
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`communication, which is at complete odds with the plain and ordinary meaning of
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`the term and the intrinsic evidence. First, the Petitioner cites its Declarant in support
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`of the contention that
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`the construction of broadcast as “a transmission that
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`is
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`receivable by multiple recipients” is “inconsistent with the ordinary meaning of
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`broadcasting.” Reply p. 6. However,
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`the Declarant’s conclusory statement
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`is
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`contradicted by extrinsic evidence such as the Microsoft Computer Dictionary, which
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`is a technical dictionary that defines a broadcast in terms of recipients:
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`broadcast' adj. Sent to more than one recipient. In
`Communications and on networks. a broadcast mes-
`sage is one distributed to all stations. See aim c-mail'
`(definition 1).
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`Ex. 2001, Microsoft Computer Dictionary, Fourth Edition, at 5; see also Ex. 2002
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`(declaration of Jeff Huang). By way of further example, as noted in the POR, the
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`Patent Owner’s construction is consistent with how that term is generally understood,
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`for example, in the context of radio broadcasting. Clearly, a radio tower does not
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`broadcast a given FM radio station to only one FM receiver at a time. Rather, the
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`broadcasted signal is potentially receivable by multiple FM receivers at once.
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`The Petitioner raises the contention that the Patent Owner’s construction is
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`inconsistent with claim I 1 because claim 1 1 recites “at least one secondary station.”
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`Reply, p. 6. However,
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`the construction of broadcast as “a transmission that is
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`11
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`IPR2019-00251
`U.S. Patent 6,993,049
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`receivable by multiple recipients” is entirely consistent with the plain and ordinary
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`meaning of such term and the recitation of claim 11 itself. The limitation of at least
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`one secondary station merely establishes that the network includes both a master and
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`a slave. Even assuming arguendo that a particular network has only a single slave,
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`that does not prevent the transmission from being receivable by multiple recipients.
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`For example, it would be inaccurate to describe a transmitter that broadcasts a radio
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`signal as a “point-to-point” transmitter if only a single radio is tuned to receive the
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`signal. The signal would still be considered a broadcast, because it is receivable by
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`multiple recipients, even if, in one particular instance, only a single radio was tuned
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`to the station broadcasting the signal. The modified construction of “broadcast” as
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`“a transmission that is receivable by multiple recipients” more accurately captures
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`this situation, which is more likely to occur with Bluetooth networks that frequently
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`have new devices joining and leaving the network.
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`Thus, Petitioner’s arguments in the Reply are an unsupportable conclusion by
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`its Declarant that contradicts the proven plain and ordinary meaning of the term
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`broadcast and contends that the construction is inconsistent with other claim
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`elements, when it is not. See In re Smith Int’l, Inc., 871 F.3d 1375, 1382 (Fed. Cir.
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`2017) (“[T]he protocol of giving claims their broadest reasonable interpretation . . .
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`does not include giving claims a legally incorrect interpretation” “divorced from the
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`12
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`specification and the record evidence.”) (citing Microsoft Corp. v. Proxyconn, Inc.,
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`IPR2019-00251
`U.S. Patent 6,993,049
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`789 F.3d 1292, 1298 (Fed. Cir. 2015)).
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`C.
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`“inquiry message[s]”
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`In the Reply, the Petitioner continues its campaign to interpret “inquiry
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`message” in a manner completely untethered from the Specification of the ‘049
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`Patent.
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`As noted above, the inventors of the ’049 patent observed that existing
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`wireless networks did not provide sufficient
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`responsiveness
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`for certain
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`Human/machine Interface Devices (HIDs). Ex. 1001, 1:9-18. The ‘049 patent
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`specification discloses a particular inquiry system to address the responsiveness
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`issues:
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`The Bluetooth inquiry procedure allows a would-be slave 101 to find a
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`base station and issue a request to join its piconet. It has been proposed
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`specifically to overcome problems caused by the frequency-hopping
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`nature of Bluetooth and similar systems. The applicants have recognised
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`that it is possible to piggy-back a broadcast channel on the inquiry
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`messages issued by the master 100. The broadcast channel can be used
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`to poll HIDs at regular intervals.
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`* * *
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`To illustrate how this is implemented, we first consider how the Inquiry
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`procedures themselves operate, with reference to FIGS. 3 and 4. When
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`a Bluetooth unit wants to discover other Bluetooth devices, it enters a
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`IPR2019-00251
`U.S. Patent 6,993,049
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`so-called inquiry substate. In this mode, it issues an inquiry message
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`containing a General Inquiry Access Code (GIAC) or a number of
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`optional Dedicated Inquiry Access Codes (DIAC).
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`* * *
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`In order to achieve the desired responsiveness, and because the HID has
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`been specifically addressed, the HID is allowed to respond, if desired, in
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`the next-but-one half-slot with a packet of similar format, containing
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`information corresponding to the user's input. As described above, the
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`inquiry procedure involves the transmission of two sets of sixteen
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`frequencies in trains of inquiry transmissions.
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`Ex. 1001, 4:11-5:43.
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`Despite this clear description of the implementation and role of inquiry
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`messages in the ‘049 Specification, Petitioner seeks to construe the “inquiry
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`message[s]” term to mean virtually any “message seeking [literally any] information
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`or knowledge.” Reply, p. 12. Petitioner’s construction is divorced from the ‘049
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`Specification, and instead relies on a dictionary definition that conflicts with the
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`meaning of “inquiry message” in the ‘049 Specification. Reply, pp. 9-10. Such an
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`unreasonably broad interpretation is untethered to the intrinsic evidence and
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`improper. Smith Int’l, 871 F.3d at 1382 (“[T]he protocol of giving claims their
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`broadest reasonable interpretation . . . does not include giving claims a legally
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`14
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`incorrect interpretation” “divorced from the specification and the record evidence.”)
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`(citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)).
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`Petitioner continues to press this overbroad construction in the Reply by relying
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`on baseless accusations of mischaracterization and purposefully obtuse readings of
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`the ‘049 Specification. Reply, p. 9-12. In response to Petitioner’s absurd
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`construction, the POR explains why the Petitioner’s construction is overbroad and
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`divorced from the intrinsic evidence. However, at no point in the Patent Owner
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`Response does the Patent Owner expressly state a particular construction to be used
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`by the Board.
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`In fact, it is the Petitioner who mischaracterizes the record, by claiming that
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`Patent Owner suggested a specific claim construction for “inquiry message,” when
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`the record clearly shows that it did not. In the Preliminary Response, the Patent
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`Owner retains the right to provide a claim construction (Paper 6, pp. 11-12), and in
`
`the POR the Patent Owner explains why Petitioner’s construction is improper,
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`without expressly adopting a particular construction. (POR, pp. 17-18). Patent
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`Owner contends that Petitioner’s construction is overbroad and identifies specific
`
`passages in the Specification demonstrating overbreadth of the Petitioner’s
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`construction. For example, the POR states:
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`The ’049 patent repeatedly and consistently describes its “inquiry
`
`messages” as a specific type of message used, at least in part, to discover
`
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`15
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`U.S. Patent 6,993,049
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`other devices in the vicinity which may request to join a piconet. . . . This
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`refutes Petitioner’s overbroad interpretation that the claimed “inquiry
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`message[s]” encompass virtually any message seeking literally any
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`information or knowledge.
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`POR, p. 18 (emphasis added). The Petitioner mischaracterizes this explanation as a
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`proposed construction. The Petitioner states that “Uniloc construes an ‘inquiry
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`message’ as ‘a specific type of message used, at least in part, to discover other devices
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`in the vicinity which may request to join a piconet.” Reply, p. 9. However, the
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`Petitioner takes this quotation out of context, when in truth this quotation was
`
`provided in relation to a refutation of Petitioner’s construction. The Reply then
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`presents additional arguments that rely on a claim construction that the Patent Owner
`
`did not expressly adopt.
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`Accordingly, Patent Owner submits that the Petitioner’s construction of
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`“inquiry message” is overbroad and completely divorced from the intrinsic evidence
`
`of the ‘049 patent.
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`As Petitioner notes, the ‘049 Specification notes that “the general invention
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`concept of polling HIDs via a broadcast channel used as part of the inquiry procedure
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`is not restricted to Bluetooth devices and is applicable to other communications
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`arrangements.” Ex. 1001, 3:24-29. However, this statement is entirely consistent
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`16
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`U.S. Patent 6,993,049
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`with use in device discovery using protocols other than Bluetooth, and in no way
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`justifies Petitioner’s excessively broad construction.
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`IV. GROUND 1 ARGUMENTS (PURPORTED OBVIOUSNESS OF
`CLAIMS 11 AND 12 BASED UPON LARSSON)
`
`A. Larsson’s broadcast message for route discovery does not teach an
`inquiry message under a proper claim construction.
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`Petitioner fails to prove its assertion that Larsson’s “broadcast message for
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`route discovery” maps onto the claimed “inquiry message” and Larsson’s
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`“piggybacked data” maps onto “an additional data field for polling at least one
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`secondary station.” POR, p. 19. As explained in detail in the POR, the purpose of
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`Larsson’s “broadcast message for route discovery” is to discover an optimal route to
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`a known destination node which is already joined to a network; thus, it does not
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`comprise “a specific type of message used to discover other devices in the vicinity of
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`a network.” POR, pp. 19-20.
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`In the Reply, the Petitioner repeats its argument that Larsson’s “broadcast
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`message for route discovery” teaches the claimed “inquiry message,” based upon a
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`clearly overbroad claim construction under which “inquiry message” essentially
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`comprises any message that seeks information. As discussed in detail in Section III.C,
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`supra, this construction is completely divorced from the intrinsic evidence of the ‘049
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`patent. In view of the intrinsic evidence of the ‘049 patent, an inquiry message should
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`be not be construed so broadly construed as a “a specific type of message used to
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`17
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`U.S. Patent 6,993,049
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`discover other devices in the vicinity of a network,” which is used to implement the
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`recited method for increasing the responsiveness of HID devices in a network.
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`Petitioner seeks to rely on a belated further Declaration, in which the Declarant
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`alleges a completely unsupported and strained interpretation of “inquiry message” in
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`which “seeking route information” is similar to seeking a device’s address. Reply at
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`pp. 12-13 (citing Ex. 1003, ¶¶39-46). In fact, seeking route information for a path
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`through various existing nodes of the network has no similarity to broadcasting a
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`series of inquiry messages for discovering devices in the vicinity of the network for
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`the purpose of increasing the responsiveness of the network.
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`The Petition has not and cannot prove obviousness through reliance in an
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`incorrect claim construction. See Synopsys, 669 Fed. Appx. at 569.
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`B.
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`Petitioner fails to prove Larsson renders obvious limitations
`directed to “adding . . . an additional data field.”
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`Petitioner fails to prove its assertion that Larsson’s “piggybacked broadcast
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`message is the additional data field added to the request for route message (inquiry
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`message) prior to transmission.” Pet. 23. As noted in Section III.A, supra, an
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`additional data field should be construed as “an extra data field appended to the end
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`of an inquiry message.” Larsson is completely devoid of any disclosure of such an
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`additional data field.
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`18
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`Petitioner devotes many paragraphs of the Reply to attempting to find support
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`in Larsson for an alleged teaching of an extra data field appended to the end of an
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`inquiry message, which extensive commentary merely points out that Larsson does
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`not provide a definition of “piggybacking” that meets Petitioner’s desired
`
`interpretation. While portions of Larsson refer to piggybacking data (e.g., Ex. 1005,
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`6:45-50; 8:8-9; 10:3-13), other portions of Larsson refer to piggybacking a message
`
`onto another message (e.g., Ex. 1005, 6:5-6; 6:60-61). Larsson provides no
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`explanation of the data structure of either, and certainly provides no express
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`disclosure that “an extra data field” is appended to the end of the message.
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`In fact, in networking, piggybacking involves the addition of a message (such
`
`as an acknowledgement message) to an already existing data field in an outgoing
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`message:
`
`Why Piggybacking?
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`Communications are mostly full – duplex in nature, i.e. data
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`transmission occurs in both directions. A method to achieve full –
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`duplex communication is to consider both the communication as a pair
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`of simplex communication. Each link comprises a forward channel for
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`sending data and a reverse channel for sending acknowledgments.
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`However, in the above arrangement, traffic load doubles for each data
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`unit that is transmitted. Half of all data transmission comprise of
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`transmission of acknowledgments.
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`19
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`IPR2019
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