UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC., LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC.,
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`AND LG ELECTRONICS MOBILECOMM U.S.A., 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
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`PATENT 6,993,049
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC., LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC.,
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`AND LG ELECTRONICS MOBILECOMM U.S.A., 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
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`PATENT 6,993,049
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`IPR2019-00251
`U.S. Patent 6,993,049
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`Table of Contents
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`INTRODUCTION .................................................................................... 1
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`THE ’049 PATENT .................................................................................. 1
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`THE PETITION IMPROPERLY REDUDANTLY
`CHALLENGES THE CLAIMS AT ISSUE ............................................. 3
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`I.
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`II.
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`III.
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`IV.
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`RELATED PROCEEDINGS .................................................................... 5
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`V.
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`THE LEVEL OF ORDINARY SKILL IN THE ART ............................. 6
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`VI.
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`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 7
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`A.
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`Claim Construction ......................................................................... 7
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`1.
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`2.
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`3.
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`“additional data field” .......................................................... 8
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`“broadcast” ......................................................................... 11
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`“inquiry “message[s]” ........................................................ 11
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`B.
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`Larsson Does Not Disclose “adding to an inquiry
`message prior to transmission an additional data field
`for polling at least one secondary station,” (Redundant
`Grounds 1 and 2) .......................................................................... 12
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`1.
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`2.
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`Larsson’s “piggybacked broadcast message” does
`not disclose the required “additional data field”
`(Ground 1) .......................................................................... 12
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`Larsson and BT Core’s “Bluetooth polling
`packet” does not disclose the required “additional
`data field” (Ground 2) ........................................................ 13
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`C.
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`IrOBEX Does Not Disclose “the method comprising the
`primary station broadcasting a series of inquiry
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`ii
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`U.S. Patent 6,993,049
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`messages” (Redundant Ground 3) ................................................ 15
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`D.
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`The Petition Fails As To The Challenged Dependent
`Claim 12 ........................................................................................ 17
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`VII.
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`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL ..................................... 18
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`VIII. CONCLUSION ....................................................................................... 18
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`Exhibit No.
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`Description
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`2001
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`Excerpts from Microsoft Computer Dictionary, Fourth Edition,
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`1999
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`iii
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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 (the “Uniloc” or “Patent Owner”) submits this
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`Preliminary Response to Petition IPR2019-00054 for Inter Partes Review (“Pet.” or
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`“Petition”) of United States Patent No. 6,304,612 (“the ’612 Patent” or “EX1001”)
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`filed by Apple, Inc., LG Electronics Inc., LG Electronics U.S.A. Inc. and LG
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`Electronics Mobilecomm U.S.A. Inc. (“Petitioners”). The instant Petition is
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`procedurally and substantively defective for at least the reasons set forth herein.
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`II. THE ’049 PATENT
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`The ’049 patent is titled “Communication system.” The ʼ049 patent issued
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`January 31, 2006, from U.S. Patent Application No. 09/876,514 filed June 7, 2001.
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`The inventors of the ’049 patent observed that at the time of the invention,
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`there was an increasing interest in enabling devices to interact via wireless
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`communication links, thereby avoiding the need for extensive cabling. An example
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`of a communication system which may be used for such wireless links is a Bluetooth
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`network, operating according to the specification defined by the Bluetooth Special
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`Interest Group. EX1001, 1:9-15.
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`One application for which use of Bluetooth was proposed was the connection
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`of controller devices to host systems. A controller device, also known as a
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`Human/machine Interface Device (HID), is an input device such as a keyboard,
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`mouse, games controller, graphics pad or the like. Such HIDs did not typically
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`require a link having high data throughput, but did require a very responsive link.
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`A Bluetooth system was more than capable of supporting the throughput
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`requirements of HIDs. However, the degree of responsiveness required could be
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`U.S. Patent 6,993,049
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`more difficult to achieve. An active Bluetooth link could offer a reasonably
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`responsive service, but this required both the setting up of a link and its maintenance,
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`even during periods of inactivity. EX1001, 1:27-39. Setting up a link required a HID
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`to join, as a slave, the piconet including the host system (which would typically act
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`as piconet master, i.e. a base station). Joining the piconet required two sets of
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`procedures, namely ‘inquiry’ and ‘page’. Inquiry allowed a would-be slave to find a
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`base station and issued a request to join the piconet. Page allowed a base station to
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`invite slaves of its choice to join the net. Analysis of those procedures indicated that
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`the time taken to join a piconet and then to be in a position to transfer user input to
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`the master could be several tens of seconds. EX1001, 1:52-61.
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`According to the invention of the ’049 Patent, there is provided a
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`communications system comprising a primary station and at least one secondary
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`station, wherein the primary station has means for broadcasting a series of inquiry
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`messages, each in the form of a plurality of predetermined data fields arranged
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`according to a first communications protocol, and means for adding to an inquiry
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`message prior to transmission an additional data field for polling at least one
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`secondary station, and wherein the or each polled secondary station has means for
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`determining when an additional data field has been added to the plurality of data
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`fields, for determining whether it has been polled from the additional data field and
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`for responding to a poll when it has data for transmission to the primary station.
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`EX1001, 2:22-35.
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`2
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`U.S. Patent 6,993,049
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`III. THE PETITION IMPROPERLY REDUDANTLY CHALLENGES
`THE CLAIMS AT ISSUE
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`The Petition redundantly challenges claims 11 and 12 of the ’049 patent no
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`less than three times, without providing any alleged justification for such inefficient
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`redundancies. As the Board has previously explained, “multiple grounds, which are
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`presented in a redundant manner by a petitioner who makes no meaningful
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`distinction between them, are contrary to the regulatory and statutory mandates, and
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`therefore are not all entitled to consideration.” See Liberty Mut. Ins. Co. v.
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`Progressive Cas. Ins. Co., No. CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012).
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`Such redundancies place a significant burden on both the Board and the patent
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`owner, causing unnecessary delay, compounding costs to all parties involved, and
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`compromising the ability to complete review within the statutory deadline. Id.; 37
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`C.F.R. § 42.1(b); see also 37 C.F.R. § 42.108. As such, analyzing the petition and
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`eliminating redundant grounds streamlines the proceeding. Idle Free Sys., Inc. v.
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`Bergstrom, Inc., IPR2012-00027, Paper 26 at 4-5 (P.T.A.B. June 11, 2013); Liberty
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`Mut., CBM2012-00003, Paper 7 at 2.
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`The Petition presents grounds that are vertically redundant with respect to
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`each other. Vertical redundancy “involves a plurality of prior art applied both in
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`partial combination and in full combination. In the former case, fewer references
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`than the entire combination are sufficient to render a claim obvious, and in the latter
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`case the entire combination is relied on to render the same claim obvious.” Liberty
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`Mut., CBM2012-00003, Paper 7 at 3. In such instances where reliance on a
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`combination and separate reliance on a portion thereof are both alleged to
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`sufficiently present a prima facie case of invalidity, “[t]here must be an explanation
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`of why the reliance in part may be the stronger assertion as applied in certain
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`instances and why the reliance in whole may also be the stronger assertion in other
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`instances.” Id. (emphasis in original).
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`If one of the alternative grounds is better from all perspectives, then the Board
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`should only consider the stronger ground and not burden the Patent Owner and the
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`Board with the weaker ground. Further, if there is no difference in the grounds, the
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`Petitioner should only assert one of the grounds. Id. at 12. “Only if the Petitioner
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`reasonably articulates why each ground has strength and weakness relative to the
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`other should both grounds be asserted for consideration.” Id. (emphasis added).
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`Petitioner makes no effort to justify its vertically redundant theories by
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`explaining why “the reliance in part [e.g., on the primary reference alone] may be
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`the stronger assertion as applied in certain instances and why the reliance in whole
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`[e.g., the full combination of identified references] may also be the stronger assertion
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`in other instances.” Id. Indeed, the Petition does not even acknowledge the
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`gamesmanship of hedging its bets through the redundancy of Grounds 1 and 3, and
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`for Ground 2, Petitioner only posits that:
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`“Rather, the analysis provided in Ground 2 is only
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`needed should Patent Owner argue and the Board
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`find a deficiency in Ground 1 for one of these claim
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`features. In such a case, only the analysis of the deficient
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`claim feature or features is needed from Ground 2.”
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`Pet. 33, n. 5 (emphasis added).
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`4
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`U.S. Patent 6,993,049
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`However, The Board in Eizo Corp. v. Barco N.V.1 flatly rejected a similar
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`attempt to hedge bets and unnecessarily multiply the work of both the Board and the
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`Patent Owner. The Board there found insufficient the petitioner’s “conclusory
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`assertion” that “[t]o the extent [the first prior art reference] may not explicitly teach”
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`the limitation, the second prior art reference “explicitly teaches this limitation.” The
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`Board explained that “such an assertion fails to resolve the exact differences sought
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`to be derived from” the second prior art reference. Id.
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`The Board’s precedential authority on these procedural issues is clear. Here,
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`Petitioner impermissibly seeks the benefit of different bites at the apple, without
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`providing a bi-directional explanation of the relative strengths and weaknesses of
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`each redundantly offered ground. If Petitioner believes the obviousness challenges
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`are necessary to addresses certain weaknesses of the anticipation challenges based
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`on Larssson, Petitioner is obligated to articulate those weaknesses in the Petition
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`itself. Because Petitioner chose to not offer such concessions, presumably for
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`strategic reasons, the Board need not and should not consider the merits of the
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`redundant challenges based on obviousness.
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`IV. RELATED PROCEEDINGS
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`The following proceedings are currently pending cases concerning U.S. Pat.
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`No. 6,993,049 (EX1001).
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` 1
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` IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
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`Case Name
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`Case Number
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`Court
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`Filing Date
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`Uniloc USA, Inc. et al v. LG
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`8:18-cv-02054
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`CAFC Apr. 26, 2019
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`Electronics USA, Inc. et al
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`Apple Inc. et al v. Uniloc 2017 LLC
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`IPR2019-00251
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`PTAB Nov. 12, 2018
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`Uniloc USA, Inc. et al v. Huawei
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`2-18-cv-00074
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`EDTX Mar. 13, 2018
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`Device USA, Inc. et al
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`Uniloc USA, Inc. et al v. Samsung
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`2-18-cv-00040
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`EDTX Feb. 23, 2018
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`Electronics America, Inc. et al
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`Uniloc USA, Inc. et al v. Apple, Inc.
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`5-19-cv-01695 NDCA Feb. 22, 2018
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`V. THE LEVEL OF ORDINARY SKILL IN THE ART
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`The Petition alleges that “[a] person of ordinary skill in the art as of the
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`Critical Date of the ’049 Patent (“POSITA”) would have had a Master’s of Science
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`Degree (or a similar technical Master’s Degree, or higher degree) in an academic
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`area emphasizing electrical engineering or computer engineering with a
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`concentration in wireless communication systems or, alternatively, a Bachelors
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`Degree (or higher degree) in an academic area emphasizing electrical or computer
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`engineering and having two or more years of experience in wireless communication
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`systems.” Pet. 5-6. Given that Petitioner fails to meet its burden of proof in
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`establishing prima facie anticipation or obviousness when applying its own
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`definition of a person of ordinary skill in the art (“POSITA”), Patent Owner does
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`not offer a competing definition for POSITA at this preliminary stage, though it
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`reserves the right to do so in the event that trial is instituted.
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`U.S. Patent 6,993,049
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`VI. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
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`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
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`unpatentable”). The Petition should be denied as failing to meet this burden.
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`The raises the following obviousness challenges under 35 U.S.C. § 103:
`Ground
`Claims
`Reference(s)
`1
`11 and 12
`2
`11 and 12
`3
`11 and 12
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`Larsson2
`Larsson and BT Core3
`IrOBEX4
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`A. Claim Construction
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`As explained below, Petitioner bases its patentability challenges on
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`erroneous constructions, which provide an independent and fully-dispositive basis
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`to deny the Petition in its entirety. See Mentor Graphics Corp., v. Synopsys, Inc.,
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`IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015),
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`aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed.
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`Cir. 2016) (finding Petitioner’s claim construction unreasonable in light of the
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`specification, and therefore, denying Petition as tainted by reliance on an incorrect
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`claim construction)
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` 2
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` EX1005, U.S. Patent No. 6,704,293
`3 EX1014, Specification of the Bluetooth System: Wireless connections made easy,
`Core, Vol. 1
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`4 EX1006, IrDA Object Exchange Protocol
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`U.S. Patent 6,993,049
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`1.
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`“additional data field”
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`When construing claims, the patent specification must always be consulted,
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`so that the claims are “construed so as to be consistent with the specification, of
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`which they are a part.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
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`2005). “The construction that stays true to the claim language and most naturally
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`aligns with the patent’s description of the invention will be, in the end, the correct
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`construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250
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`(Fed. Cir. 1998).
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`The ’049 patent makes clear that the term “additional data field” should be
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`construed as “an extra data field appended to an inquiry message”.
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`First, Figure 5 depicts the additional data field as element 504:
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`EX1001, Fig. 5 (highlighting added).
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`Next, the specification further makes clear the additional data field is an
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`extra field that is appended to an inquiry message:
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`U.S. Patent 6,993,049
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`EX1001, 4:59-5:11 (highlighting added).
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`As shown in Fig. 5 and the passage above, the ’049 patent clearly defines the
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`term “additional data field” to mean “an extra data field appended to an inquiry
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`message”. Phillips, 415 F.3d at 1316. Furthermore, as also elaborated in the above,
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`appending an extra data field to the inquiry message is essential to the invention.
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`As shown in the second highlighted passage above, appending an extra field to the
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`end of the inquiry message is essential because “non-HID receivers can ignore it
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`without modification.” Id. (emphasis added).
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`While the Petition does not address this term under its claim construction
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`section, the Petition nonetheless appears to propose to construe this term in spots
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`throughout the Petition.
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`As on example, the Petition merely concludes that “[u]nder BRI, the
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`U.S. Patent 6,993,049
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`piggybacked broadcast message is the additional data field added to the request for
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`route message (inquiry message) prior to transmission.” Pet. 23 (emphasis added).
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`For this proposition, the Petition cites only to the identical, conclusory statement of
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`its declarant. Compare Pet. 23 with EX1003, ¶ 72. There are numerous problems
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`with the Petition’s proposed construction – (1) the Petition’s proposed construction
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`is not consistent with the intrinsic evidence. Phillips, 415 F.3d at 1316; (2) “Expert
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`testimony that does not disclose the underlying facts or data on which the opinion
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`is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); and (3) even under
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`BRI, the Petition’s proposed construction is unreasonable. In re Smith Int'l, Inc.,
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`871 F.3d 1375, 1382 (Fed. Cir. 2017) (“[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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`incorrect interpretation” “divorced from the specification and the record
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`evidence.”) citing Microsoft Corp. v. Proxyconn, Inc. , 789 F.3d 1292, 1298 (Fed.
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`Cir. 2015).
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`Next, in another instance, the Petition points to a “polling packet” argues
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`that a POSITA would have replaced Larsson’s “piggybacked broadcast message”
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`with BT Core’s “Bluetooth polling packet”. Pet. 40-41. While Patent Owner does
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`not concede such an allegation (for example, there are no identified shortcomings
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`of the “piggybacked broadcast message” by Larsson), regardless, the cited “polling
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`packet” also cannot be within the proper scope of the term “additional data field”
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`for the same reasons discussed above. See e.g., Phillips, 415 F.3d at 1316; In re
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`Smith Int'l, Inc., 871 F.3d at 1382.
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`Therefore, the term “additional data field” should be construed as “an extra
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`data field appended to an inquiry message”.
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`2.
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`“broadcast”
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`The term “broadcast” was a well-known term of art at the time of the
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`invention. For example, the Microsoft Computer Dictionary, Fourth Edition
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`defines broadcast as the following:
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`EX2001, Microsoft Computer Dictionary, Fourth Edition, at 5.
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`As shown above, the term “broadcast”, was understood by one of ordinary
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`skill in the art at the time of the invention, which means “one message that is
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`distributed to all stations.” This is in direct contrast to the equally well-known
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`term of art, “polling”, which the intrinsic evidence of the ’049 patent demonstrates
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`by using the term “broadcast” to describe sending an inquiry message without
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`specifying any particular stations (see e.g., EX1001, 2:22-28), and then by using
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`the term “polling” to describe requesting data from a secondary station (see e.g.
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`EX1001, 2:28-35).
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`Therefore, the term “broadcast” is properly construed to mean “one message
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`that is distributed to all stations.”
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`3.
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`“inquiry “message[s]”
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`At this preliminary stage, Patent Owner submits that the Board need not
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`construe the claim term “inquiry messages” in order to arrive at the conclusion that
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`the Petition is substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642
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`F.3d 1355, 1361 (Fed. Cir. 2011) (“need only be construed to the extent necessary
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`to resolve the controversy”). In the event that trial is instituted, however, Patent
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`Owner reserves the right to object to Petitioner’s proposed construction and
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`provide Patent Owner’s proposed construction.
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`B.
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`Larsson Does Not Disclose “adding to an inquiry message prior to
`transmission an additional data field for polling at least one
`secondary station,” (Redundant Grounds 1 and 2)
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`1.
`
`Larsson’s “piggybacked broadcast message” does not disclose
`the required “additional data field” (Ground 1)
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`In redundant Ground 1, the Petition merely concludes that Larsson’s
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`“piggybacked broadcast message is the additional data field added to the request
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`for route message (inquiry message) prior to transmission”. Pet. 23. For this
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`proposition, the Petition cites only to the identical conclusory statement of its
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`declarant for support. Compare Pet. 23 with EX1003, ¶ 72. As an initial matter, the
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`identical and conclusory testimony of Petitioner’s declarant should be given little
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`to no weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
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`underlying facts or data on which the opinion is based is entitled to little or no
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`weight.”)
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`Next, as more fully discussed in Section IV.A.1, above, the intrinsic
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`evidence shows that the ’049 patent defines the term “additional data field” to
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`mean “an extra data field appended to an inquiry message”. Phillips, 415 F.3d
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`at 1316. The required additional data field is illustrated by Figure 5, element 504 of
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`the ’049 patent:
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`U.S. Patent 6,993,049
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`EX1001, Fig. 5 (highlighting added).
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`As such, the required additional data field must be appended to the inquiry
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`message. Furthermore, appending an extra data field to the inquiry message is
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`essential to the invention because “[b]y adding the field to the end of the inquiry
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`message, it will be appreciated that non-HID receivers can ignore it without
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`modification.” EX1001, 5:6-9. (emphasis added).
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`Redundant Ground 1 of the Petition fails because the Petition fails to show
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`that Larsson’s “piggybacked broadcast message” is a data field that is appended to
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`the “route message” prior to transmission. See Pet. 23-26. In fact, as made clear by
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`the name itself, Larsson’s “piggybacked broadcast message” and Larsson’s “route
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`message” are in fact, two separate messages, and Larsson’s “piggybacked
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`broadcast message” cannot be an extra data field appended to an inquiry message,
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`as required by the claim language.
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`2.
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`Larsson and BT Core’s “Bluetooth polling packet” does not
`disclose the required “additional data field” (Ground 2)
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`In redundant Ground 2, Petitioner seeks to hedge its bets as shown by
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`Petitioner’s statement: “To the extent Patent Owner argues that Larsson alone is
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`deficient, a POSITA would have found it obvious to combine Larsson with BT
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`Core and would have found it obvious to implement Larsson’s piggybacked data
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`field as a Bluetooth polling field, as defined by the BT Core.” Pet. 39.
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`However, as immediately admitted by the Petition in the following
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`paragraph, BT Core describes a “polling packet”. Pet. 40; see also e.g., EX1014 p.
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`121 (“broadcast POLL packet”). And similarly, as with the Petition’s redundant
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`Ground 1, the Petition again merely concludes that “[i]t would have been obvious
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`to a POSITA that a Bluetooth polling packet is the type of additional data field
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`contemplated for Larsson’s piggybacked data, i.e., a message for which the source
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`node expects a reply.” Pet. 40. For this proposition, the Petition cites only to the
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`identical conclusory statement of its declarant for support. Compare Pet. 40 with
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`EX1003, ¶ 81. As an initial matter, the identical and conclusory testimony of
`
`Petitioner’s declarant should be given little to no weight. 37 C.F.R. § 42.65(a)
`
`(“Expert testimony that does not disclose the underlying facts or data on which the
`
`opinion is based is entitled to little or no weight.”).
`
`Next, as more fully discussed in Section IV.A.1, above, the intrinsic
`
`evidence shows that the ’049 patent defines the term “additional data field” to
`
`mean “an extra data field appended to an inquiry message”. Phillips, 415 F.3d
`
`at 1316. The required additional data field is illustrated by Figure 5, element 504 of
`
`the ’049 patent:
`
`
`
`14
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`IPR2019-00251
`U.S. Patent 6,993,049
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`
`
`EX1001, Fig. 5 (highlighting added).
`
`As such, the required additional data field must be appended to the inquiry
`
`message. Furthermore, appending an extra data field to the inquiry message is
`
`essential to the invention because “[b]y adding the field to the end of the inquiry
`
`message, it will be appreciated that non-HID receivers can ignore it without
`
`modification.” EX1001, 5:6-9. (emphasis added).
`
`Redundant Ground 2 of the Petition fails because the Petition fails to show
`
`that BT Core’s “Bluetooth polling packet” is a data field that is appended to the
`
`“request for route message” prior to transmission. See Pet. 39-42. In fact, as made
`
`clear by the name itself, BT Core’s “Bluetooth polling packet” and Larsson’s
`
`“request for route message” are in fact, two separate messages or packets, and BT
`
`Core’s “Bluetooth polling packet” cannot be an extra data field appended to an
`
`inquiry message, as required by the claim language. Further, just like Larsson’s
`
`“piggybacked broadcast message” cannot be an extra data field appended to an
`
`inquiry message, as discussed above, even if a POSITA would have substituted
`
`one for the other (which Patent Owner does not concede), redundant Ground 2 still
`
`fails.
`
`C.
`
`IrOBEX Does Not Disclose “the method comprising the primary
`station broadcasting a series of inquiry messages” (Redundant
`
`15
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`IPR2019-00251
`U.S. Patent 6,993,049
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`Ground 3)
`
`As more fully discussed in Section IV.A.2, above, the term “broadcast” was
`
`understood by one of ordinary skill in the art at the time of the invention, which
`
`means “one message that is distributed to all stations.” See EX2001, Microsoft
`
`Computer Dictionary, Fourth Edition, at 5. This understanding is further supported
`
`by the intrinsic evidence of the ’049 patent, which uses the term “broadcast” to
`
`describe sending an inquiry message without specifying any particular stations (see
`
`e.g., EX1001, 2:22-28), and then by using the term “polling” to describe requesting
`
`data from a secondary station (see e.g. EX1001, 2:28-35).
`
`IrOBEX however, does not disclose the required “broadcasting”, and for
`
`good reason, because IrOBEX only discloses point-to-point communications
`
`between two entities, a client and a server. This confirmed throughout IrOBEX
`
`itself. For example:
`
`
`
`EX1006, at 9 (highlighting added).
`
`
`
`
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`16
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`
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`IPR2019-00251
`U.S. Patent 6,993,049
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`
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`
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`EX1006, at 10 (highlighting and underlining added).
`
`
`
`EX1006, at 11 (highlighting and underlining added).
`
`As seen above, IrOBEX discloses only a communication “between two
`
`devices”, the OBEX Client and OBEX server. See e.g., EX1006, at 10.
`
`Thus, showing that IrOBEX does not disclose the required “broadcasting”,
`
`both because the IrOBEX session protocol is structured to direct communication
`
`between two known devices, the OBEX Client and OBEX server, and because of
`
`the way the IrOBEX session protocol is structured, there is no reason to utilize
`
`broadcasting.
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`D. The Petition Fails As To The Challenged Dependent Claim 12
`
`Because challenged dependent Claim 12 depends from the challenged
`
`independent claim 11, the Petition should be denied in its entirety.
`
`17
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`
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`IPR2019-00251
`U.S. Patent 6,993,049
`
`VII. THE CONSTITUTIONALITY OF INTER PARTES REVIEW IS THE
`SUBJECT OF A PENDING APPEAL
`
`In a pending appeal to the Federal Circuit, Polaris Innovations Ltd. v.
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`Kingston Technology, No. 18-01768, Dkt. No. 27, the patent owner Polaris argued
`
`that the Board’s appointments of administrative patent judges violate the
`
`Appointments Clause of Article II, and that their decisions must be set aside,
`
`because administrative patent judges are “appointed by the Secretary of Commerce,
`
`in consultation with the Director” of the USPTO, but without appointment by the
`
`President and confirmation by the Senate in violation of Article II, Section 2, Clause
`
`2 of the Constitution. Out of an abundance of caution, Patent Owner hereby adopts
`
`this constitutional challenge now to ensure the issue is preserved pending the appeal.
`
`VIII. CONCLUSION
`
`For at least the reasons set forth above, Uniloc respectfully requests that the
`
`Board deny all challenges in the instant Petition.5
`
`Date: May 8, 2019
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`
`
` 5
`
` Patent Owner does not concede, and specifically denies, that there is any legitimacy
`to any arguments in the instant Petition that are not specifically addressed herein.
`
`18
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`IPR2019-00251
`U.S. Patent 6,993,049
`
`CERTIFICATE OF COMPLIANCE
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), we certify that this Preliminary Response
`
`to Petition complies with the type-volume limitation of 37 C.F.R. § 42.24(b)(1)
`
`because it contains fewer than the limit of 14,000 words, as determined by the
`
`word-processing program used to prepare the brief, excluding the parts of the
`
`brief exempted by 37 C.F.R. § 42.24(a)(1).
`
`Date: May 8, 2019
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`i
`
`
`
`IPR2019-00251
`U.S. Patent 6,993,049
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that we served an electronic copy
`
`of the foregoing PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT
`
`TO 37 C.F.R. § 42.107(a) along with any accompanying exhibits via the Patent
`
`Review Processing System (PRPS) to Petitioner’s counsel at the following
`
`addresses identified in the Petition’s consent to electronic service:
`Lead Counsel: W. Karl Renner, Reg. No. 41,265
`IPR39521-0056IP1@fr.com
`
`Backup Counsel: Jeremy J. Monaldo, Reg. No. 58,680
`Roberto J. Devoto, Reg. No. 55,108
`PTABInbound@fr.com
`axfptab@fr.com
`renner@fr.com
`monaldo@fr.com
`
`
`
`
`Date: May 8, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`
`
`ii
`
`
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