Paper No. 7
`
`Trials@uspto.gov
`Entered: July 22, 2019
`
`571-272-7882
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00251
`Patent 6,993,049 B2
`____________
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: July 22, 2019
`
`571-272-7882
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00251
`Patent 6,993,049 B2
`____________
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2019-00251
`Patent 6,993,049 B2
`
`
`I.
`INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”), requesting
`an inter partes review of claims 11 and 12 (the “challenged claims”) of U.S.
`Patent No. 6,993,049 B2 (Ex. 1001, “the ’049 Patent”). Uniloc 2017 LLC
`(“Patent Owner”) filed a Preliminary Response to the Petition (Paper 6,
`“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. For the reasons discussed below, we grant the Petition and institute
`an inter partes review.
`
`A. RELATED PROCEEDINGS
`The parties identify the following related matters:
`Uniloc USA, Inc. et al v. Apple Inc., Case No. 1:18-cv-00164 (W.D. Tex.);
`Uniloc USA, Inc. et al v. Samsung Electronics America, Inc. et al, Case No.
`2:18-cv-00040 (E.D. Tex.); Uniloc USA, Inc. et al v. Logitech Inc. et al.,
`Case No. 5:18-cv-01304 (N.D. Cal.); Uniloc USA, Inc. et al. v. LG
`Electronics USA, Inc. et al, Case No. 3:18-cv-00559 (N.D. Tex.); Uniloc
`USA, Inc. et al v. Huawei Device USA, Inc., Case No. 2:18-cv-00074 (E.D.
`Tex.); Uniloc USA, Inc. et al v. ZTE (USA), Inc. et al, Case No. 2:18-cv-
`00307 (E.D. Tex.); Uniloc USA, Inc. et al v. Blackberry Corp., Case No.
`3:18-cv-01885 (N.D. Tex.); Uniloc 2017 LLC et al v. Microsoft Corp., Case
`No. 8:18-cv-01279 (C.D. Cal.); Uniloc USA Inc. et al v. ZTE (USA), Inc. et
`al, Case No. 3:18-cv-02839 (N.D. Tex.); Uniloc USA, Inc. et al v. LG
`Electronics USA Inc. et al, Case No. 5:18-cv-06738 (N.D. Cal.); Uniloc
`2017 LLC v. ZTE, Inc. et al., Case No. 3:18-cv-03063 (N.D. Tex.); Uniloc
`2017 LLC v. Blackberry Corp., Case No. 3:18-cv-03068 (N.D. Tex.); Uniloc
`2017 LLC v. Motorola Mobility, LLC, Case No. 1:18-cv-01840 (D. Del.);
`
`2
`
`
`
`IPR2019-00251
`Patent 6,993,049 B2
`Uniloc 2017 LLC v. HTC America, Inc., Case No. 2:18-cv-01727 (W.D.
`Wash.). Pet. 56; Paper 3, 2.
`
`B. THE ’049 PATENT
`The ’049 Patent is directed to a communication system comprising a
`primary station and one or more secondary stations. Ex. 1001, Abstract.
`The primary station broadcasts a series of inquiry messages, and adds to the
`inquiry messages an additional data field for polling secondary stations. Id.
`This system is useful for communications between the stations without
`requiring a permanently active link, such as is common with the Bluetooth
`communications protocol. Id.
`
`C. ILLUSTRATIVE CLAIM
`Petitioner challenges claims 11 and 12 of the ’049 Patent. Claim 11 is
`the only independent challenged claim and is reproduced below:
`
`11. A method of operating a communication system comprising
`a primary station and at least one secondary station, the method
`comprising the primary station broadcasting a series of inquiry
`messages, each in the form of a plurality of predetermined data
`fields arranged according to a first communications protocol,
`and adding to an inquiry message prior to transmission an
`additional data field for polling at least one secondary station,
`and further comprising the at least one polled secondary station
`determining when an additional data field has been added to the
`plurality of data fields, determining whether it has been polled
`from the additional data field and responding to a poll when it
`has data for transmission to the primary station.
`Ex. 1001, 8:35–47.
`
`3
`
`
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`IPR2019-00251
`Patent 6,993,049 B2
`D. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 1–2.
`
`References
`
`Larsson1
`Larsson and BT Core2
`IrOBEX3
`
`Basis
`
`§ 103
`§ 103
`§ 103
`
`Challenged Claims
`
`11 and 12
`11 and 12
`11 and 12
`
`II. DISCUSSION
`A. CLAIM CONSTRUCTION
`The Board interprets claim terms of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent.”
`37 C.F.R. § 42.100(b).4 We presume a claim term carries its plain meaning,
`which is the meaning customarily used by those of skill in the relevant art at
`the time of the invention. Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016).
`Petitioner proposes a construction for “inquiry message” as
`encompassing “a message seeking information or knowledge.” Pet. 7–11.
`Patent Owner does not dispute this construction, but asserts that we need not
`adopt any explicit construction for this claim term. Prelim. Resp. 11–12.
`
`
`1 U.S. Patent No. 6,704,293 B1 (iss. Dec. 6, 1999) (Ex. 1005, “Larsson”).
`2 Bluetooth™ Core Specification Vol. 1, ver. 1.0 B (pub. Dec. 1, 1999)
`(Ex. 1014, “BT Core”).
`3 Infrared Data Association, “IrDA Object Exchange Protocol IrOBEX,” ver.
`1.2, 1–85 (1999) (Ex. 1006, “IrOBEX”).
`4 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
`
`4
`
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`IPR2019-00251
`Patent 6,993,049 B2
`Because there is no actual dispute over Petitioner’s construction of this term
`and it does not affect our analysis, we decline to construe “inquiry message.”
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.”).
`Patent Owner proposes we construe the term “additional data field” as
`“an extra data field appended to an inquiry message.” Prelim. Resp. 8–11.
`We disagree with Patent Owner’s construction. Independent claim 11
`already has language that accounts for the language Patent Owner seeks to
`add through claim construction. Specifically, we do not need to construe an
`“additional data field” as “an extra data field appended to an inquiry
`message” because the challenged claims already recite “adding to an inquiry
`message . . . an additional data field.” Ex. 1001, 8:39–40. To the extent
`Patent Owner seeks to distinguish “appending” from “adding,” on this
`record and for purposes of this Decision, we do not view those two terms as
`meaningfully distinct. To the extent Patent Owner wishes to develop its
`argument in subsequent briefing, we will revisit the issue. However, based
`on the current record and for purposes of this decision, we decline to adopt
`Patent Owner’s proposed construction of “additional data field.”
`Last, Patent Owner’s proposes that we construe a “broadcast” to mean
`“one message that is distributed to all stations.” Prelim. Resp. 11. As
`support for its construction, Patent Owner notes its construction is consistent
`with both the Microsoft Computer Dictionary’s definition and the ’049
`patent’s Specification. See id. Petitioner does not propose an alternative
`claim construction for “broadcast.” See Pet. 6–11. Based on the current
`record and for purposes of this decision, we agree with Patent Owner that a
`broadcast is one message that is distributed to all stations.
`
`5
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`IPR2019-00251
`Patent 6,993,049 B2
`
`B. ASSERTED PRIOR ART
`
`1. Larsson (Ex. 1005)
`Larsson discloses a:
`
`method and/or an apparatus which places a broadcast message
`which the source expects a reply message in a broadcast message
`for route discovery. The combined message is broadcast
`throughout the ad-hoc network. When the combined broadcast
`message is received at the destination node, the destination node
`generates a response message including a reply message to the
`broadcast message including a reply message that the source
`node expects a reply. The response message is sent back to the
`source node over the route which the combined broadcast
`message traveled to the destination node.
`Ex. 1005, Abstract.
`2. BT Core (Ex. 1014)
`BT Core defines the requirement for a transceiver operating the
`Bluetooth wireless communication protocol. Ex. 1014, 18. Section 4.4
`discusses different data packet types, id. at 55, and Section 4.5 provides
`detail of payload within a packet, including a data field, id. at 62.
`3. IrOBEX (Ex. 1006)
`IrOBEX defines an object exchange protocol for infrared data
`communication. Ex. 1006, 9. Section 3.3 discloses details of operations,
`including a connect operation between two sides of a communication link,
`using request and response packets. Id. at 23.
`C. ANALYSIS
`1. First Ground: Obviousness over Larsson
`Petitioner asserts that claims 11 and 12 would have been obvious in
`view of Larsson. Pet. 12. Based on the current record and for purposes of
`this Decision, we agree with Petitioner’s analysis. Specifically, Petitioner
`has shown sufficiently that Larsson renders obvious claims 11 and 12. See
`
`6
`
`
`
`IPR2019-00251
`Patent 6,993,049 B2
`id. at 12–32. Patent Owner asserts Petitioner’s obviousness challenge fails
`because “Larsson’s ‘piggybacked broadcast message’ does not disclose the
`required ‘additional data field.’” Prelim. Resp. 12–13. We disagree. The
`’049 patent’s Specification undermines Patent Owner’s argument. It
`explains that “[t]he applicants have recognised that it is possible to piggy-
`back a broadcast channel on the inquiry messages issued by the master.”
`Ex. 1001, 4:15–21. Thus, the Specification explicitly characterizes the
`additional data field as “piggy-back[ed].” Id.
`2. Second Ground: Obviousness over Larsson and BT Core
`Petitioner asserts that claims 11 and 12 are obvious in view of Larsson
`and BT Core. Pet. 32. BT Core discloses a master device transmitting a
`broadcast POLL packet to a slave device to solicit an acknowledgement
`response packet from the slave device. Ex. 1014, 55, 117–118. Petitioner’s
`challenge mirrors its earlier challenge based on Larsson alone, except that
`for this ground, Petitioner relies on BT Core’s broadcast POLL transmission
`feature to teach 3 claim limitations: (1) “a plurality of predetermined data
`fields arranged according to a first communications protocol,” (2) “adding to
`an inquiry message prior to transmission an additional data field for polling
`at least one secondary station,” and (3) “the at least one polled secondary
`station determining when an additional data field has been added to the
`plurality of data fields, determining whether it has been polled from the
`additional data field and responding to a poll when it has data for
`transmission to the primary station.” Pet. 32–33, 37–52 (emphasis omitted).
`As Petitioner explains, “Larsson discloses broadcasting messages using the
`Bluetooth protocol, but does not explicitly disclose the structure of these
`messages.” Id. at 35. Thus, Petitioner reasons, “a POSITA would have
`combined the teachings of Larsson and BT Core to fully realize the
`
`7
`
`
`
`IPR2019-00251
`Patent 6,993,049 B2
`implementation of Bluetooth in Larsson’s route discovery method.” Id.
`Petitioner goes on to explain that “[d]oing so would have amounted to
`nothing more than the use of a known technique to improve similar devices
`in the same way or the combination of prior art elements according to known
`methods to yield predictable results. Id. (citing KSR Int’l Co. v. Teleflex,
`Inc., 550 U.S. 398, 417 (2007)). Based on the current record, we determine
`Petitioner has made an adequate showing that claims 11 and 12 would have
`been obvious over its proffered combination of Larsson and BT Core.
`Patent Owner asserts that the BT Core’s polling packet is distinct
`from the claimed “additional data field.” Prelim. Resp. 13–15. This is so,
`Patent Owner argues, because “BT Core’s ‘Bluetooth polling packet’ and
`Larsson’s ‘request for route message’ are in fact, two separate messages or
`packets,” and thus “BT Core’s ‘Bluetooth polling packet’ cannot be an extra
`data field appended to an inquiry message.” Prelim. Resp. 13–15. We
`disagree with Patent Owner’s argument because it relies on an overly narrow
`construction for “an additional data field.” The claim term at issue requires
`only “adding . . . an additional data field.” We agree with Petitioner that,
`under a broadest reasonable construction, adding an additional data field
`includes adding a distinct packet, as disclosed in BT Core.
`3. Third Ground: Obviousness over IrOBEX
`Petitioner asserts that claims 11 and 12 would have been obvious over
`IrOBEX. Pet. 42. Based on the current record and for purposes of this
`Decision, we agree with Petitioner’s analysis. Specifically, Petitioner has
`shown sufficiently that IrOBEX renders obvious claims 11 and 12. See id. at
`42–56. Patent Owner asserts that “IrOBEX . . . does not disclose the
`required ‘broadcasting’” because “IrOBEX only discloses point-to-point
`communications between two entities, a client and a server.” Prelim. Resp.
`
`8
`
`
`
`IPR2019-00251
`Patent 6,993,049 B2
`16. We disagree with Patent Owner’s argument. While a communication
`link within an IrOBEX protocol session may be a communication between
`two devices, a device may simultaneously send and receive communication
`data from and to multiple devices in different sessions. Ex. 1006, 20, 37–40.
`Additionally, claim 11 recites “adding to an inquiry message prior to
`transmission an additional data field for polling at least one secondary
`station.” Ex. 1001, 8:37–42 (emphasis added). The claim language is clear
`that the additional data field is added to the broadcast message before it is
`transmitted for polling at least one secondary station. This means that claim
`11 includes a communication method in which part of a communication
`message—an inquiry message—is broadcast to all secondary stations, but
`the full transmission—the inquiry message and the added data field—is
`transmitted to just one station. Thus, even if Patent Owner is correct that
`IrOBEX discloses only point-to-point communications between two entities,
`that does not distinguish over claim 11.
`D. REDUNDANT CHALLENGES
`Patent Owner contends Petitioner redundantly challenges claims 11 and
`12 of the ’049 patent without providing any alleged justification for such
`inefficient redundancies. Prelim. Resp. 3–5. Patent Owner argues, for
`example, that if one of the two grounds is better than the other, then we
`should only consider the stronger ground and not burden the Patent Owner
`and the Board with the weaker ground. Id. at 4. We are unpersuaded by
`such arguments, because Patent Owner fails to address SAS Inst., Inc. v.
`Iancu, 138 S. Ct. 1348 (2018), the subsequent “Guidance on the Impact of
`SAS on AIA Trial Proceedings,” issued by the Office, April 26, 2018
`(“Office Guidance”), or any of the United States for the Federal Circuit
`cases remanding back to the Board to institute review on all grounds. See,
`
`9
`
`
`
`IPR2019-00251
`Patent 6,993,049 B2
`e.g., Biodelivery Scis. Int’l v. Aquestive Therapeutics, Inc., 898 F.3d 1205
`(Fed. Cir. 2018).
`E. CONSTITUTIONAL CHALLENGE TO INTER PARTES REVIEW
`Patent Owner asserts that “the Board’s appointments of administrative
`patent judges violate the Appointments Clause of Article II, and 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.” Prelim. Resp. 18. We decline to consider Patent Owner’s
`constitutional challenge.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes a reasonable likelihood that Petitioner
`would prevail in showing claims 11 and 12 are unpatentable. We therefore
`institute an inter partes review of claims 11 and 12.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 11 and 12 of the ’049 patent is hereby instituted on the
`grounds presented in the Petition;
`FURTHER ORDERED that no other grounds are authorized for inter
`partes review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, notice is hereby given of the institution of a trial.
`
`
`10
`
`
`
`IPR2019-00251
`Patent 6,993,049 B2
`PETITIONER:
`W. Karl Renner
`Roberto J. Devoto
`Jeremy J. Monaldo
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`devoto@fr.com
`monaldo@fr.com
`PTABInbound@fr.com
`
`PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`11
`
`
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