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
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`Patent 6,993,049 B2
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`PATENT OWNER RESPONSE TO PETITION
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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
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`Patent 6,993,049 B2
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`PATENT OWNER RESPONSE TO PETITION
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`IPR2019-00251
`PO Response (Paper 11)
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`Table of Contents
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`I.
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`II.
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`III.
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`IV.
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`V.
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`INTRODUCTION .................................................................................... 1
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`PETITIONER FAILS TO PROVE UP REFERENCES AS
`PRIOR ART .............................................................................................. 1
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`A.
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`B.
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`Procedural deficiencies of the BT Core document ......................... 1
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`Procedural deficiencies of IrOBEX ................................................ 8
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`THE ’049 PATENT ................................................................................ 10
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`THE LEVEL OF ORDINARY SKILL IN THE ART ........................... 12
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`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM ........................................................................ 12
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`A.
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`Claim Construction ....................................................................... 12
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`1.
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`2.
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`3.
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`“additional data field” ........................................................ 13
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`“broadcasting” .................................................................... 15
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`“inquiry message[s]” .......................................................... 17
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`B.
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`Claim 11: “adding to an inquiry message prior to
`transmission an additional data field for polling at least
`one secondary station” .................................................................. 18
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`1.
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`2.
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`All mappings applied in the Petition fail to
`properly interpret the limitations directed to
`“adding an additional data field” ........................................ 18
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`Petitioner’s mapping of Larsson’s “broadcast
`message for route discovery” onto the claimed
`“inquiry message” is tainted by an incorrect claim
`construction ........................................................................ 19
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`ii
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`3.
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`4.
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`IPR2019-00251
`PO Response (Paper 11)
`Petitioner fails to prove Larsson renders obvious
`limitations directed to “adding . . . an additional
`data field” ........................................................................... 20
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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” ........................................................ 23
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`C.
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`IrOBEX is not shown to disclose “the method
`comprising the primary station broadcasting a series of
`inquiry messages” ......................................................................... 25
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`D. Dependent claim 12 ...................................................................... 27
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`VI.
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`RELATED PROCEEDINGS .................................................................. 27
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`VII.
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`CONCLUSION ....................................................................................... 28
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`IPR2019-00251
`PO Response (Paper 11)
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Response to the
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`Petition filed by Apple, Inc. (“Petitioner”) for inter partes review of United States
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`Patent No. Patent 6,993,049 (“the ’049 patent” or “EX1001”).
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`II.
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`PETITIONER FAILS TO PROVE UP REFERENCES AS PRIOR ART
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`The Petition is procedurally defective at least because it fails to meet
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`Petitioner’s burden to prove that the documents relied upon were indeed publicly
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`available prior art. See, e.g., ServiceNow, Inc., v. Hewlett-Packard Co., IPR2015-
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`00716, Paper No. 13 at 8, 15‒17 (P.T.A.B. Aug. 26, 2015). All evidence, including
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`evidence tending to show public availability, must satisfy the U.S. Federal Rules of
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`Evidence. See 37 C.F.R. § 42.62.
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`In IPR2015-00716, the Board found that the petitioner had not met its burden
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`to prove that references asserted in its petition were prior art. The Board explained
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`its finding, in part, in that the declarants did not testify to having personal knowledge
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`of the references being publicly accessible before the critical date. Id. at 18‒20. As
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`a result, the petitioner’s only evidence of the alleged publication dates was the
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`respective date appearing on the face of each exhibit. Id. at 8. The Board concluded
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`the dates themselves were inadmissible hearsay and, consequently, petitioner had
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`not proven the references qualify as prior art printed publications. Id. at 18‒20. The
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`same reasoning and conclusion apply here.
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`A.
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`Procedural deficiencies of the BT Core document
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`Petitioner asserts that the reference it identified as BT (Bluetooth) Core (Ex.
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`1014) qualifies as prior art under at least 35 U.S.C § 102(a). Pet 3. Petitioner then
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`1
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`PO Response (Paper 11)
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`provides a few unexplained citations as alleged support for the conclusory statement
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`that “the Bluetooth Core specification was released and available for download or
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`order from Bluetooth’s website in December 1999 (at least by March 1, 2000).” Id.
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`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
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`“Critical Date” of June 26, 2000. See Pet. 2. All Petitioner is left with is asserting
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`the date appearing on the face of the BT Core document for the truth of the matter
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`asserted—i.e., inadmissible hearsay. This hearsay of BT Core cannot be cured by
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`relying on more hearsay set forth in the additional references Petitioner cites.
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`The present facts invoke a pair of final written decisions issued March 6, 2017
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`and upholding the patentability of the patents challenged in IPR2015-01835 and
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`IPR2015-01836.1 In each matter the PTAB instituted trial on the same two grounds.
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`One obviousness ground relied on a webcast containing a slide presentation, as well
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`as a purported record of the slide presentation evidenced by a link from an internet
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`archive, Wayback Machine. The petitioner argued that the slide presentation was
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`accessible on a website of the webcast’s host and was a printed publication. It offered
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`as evidence a press release (which stated the webcast would be archived for “on-
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`demand replay”), screenshots from Wayback Machine’s archive of the webcast
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`host’s website showing a link to a pdf of the presentation, and the slides themselves.
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`1 See Coalition for Affordable Drugs VIII, LLC v. The Trustees of the University of
`Pennsylvania, IPR2015-01835, Paper 56 (P.T.A.B. March 6, 2017) and Coalition
`for Affordable Drugs VIII, LLC v. The Trustees of the University of Pennsylvania,
`IPR2015-01836, Paper 58 (P.T.A.B. March 6, 2017).
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`2
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`The PTAB did not reach the merits of the obviousness argument, instead
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`concluding that the petitioner had not met its initial burden of establishing that the
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`webcast qualified as a printed publication.2 In concluding the petitioner failed to
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`establish that the slide presentation itself was publicly accessible before the critical
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`date, the PTAB found it significant that Wayback Machine displays an error when
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`attempting to access the pdf allegedly containing the slide presentation, and that the
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`petitioner had provided no evidence that the slides were obtained through that
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`hyperlink and had not provided the actual source for the slides.
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`The present facts are strikingly similar. First, Petitioner here also “relies on
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`‘Wayback Machine’ screenshots to show what may have been posted in [March of
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`2000], but the screenshots do not show the [BT Core document], but only a
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`hyperlink.” IPR2015-01835, Paper 56 at 20; see also Exs. 1016‒1019. Second, “[i]f
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`a user attempts to access the hyperlink” allegedly linking to BT Core itself, “the
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`Wayback Machine displays an error message” only. Id. This “makes it impossible
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`to test the veracity of [Petitioner’s] assertion that the [BT Core document] marked
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`as Ex. 1014 actually appeared at this link.” Id. Third, the Petition fails to establish
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`that BT Core was obtained through any hyperlink of Exhibits 1016-1019. Finally,
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`the Petition also fails to provide the actual source for BT Core (Ex. 1014).
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`Petitioner’s Exhibits 1016-1019 are each examined in turn to underscore their
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`respective deficiencies. Without any supportive affidavit by a person purporting to
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`have personal knowledge, Petitioner first points to Exhibit 1016 as allegedly
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`2 See note 1, infra.
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`3
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`containing an archived capture of “Bluetooth’s website” as of March 1, 2000. Pet. 3
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`(citing Ex. 1016). Petitioner fails to inform the Board, but almost certainly was
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`aware, that clicking the link Petitioner identified from Exhibit 1016 does not provide
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`access to BT Core. Rather, clinking the link results in an error because the linked-to
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`file (whatever it may be) is “corrupted” and “damaged” beyond repair, as shown by
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`the example screenshots that follow, and as the Board can confirm for itself.
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`See https://web.archive.org/web/20000301081902/http://www.bluetooth.com/devel
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`oper/specification/specification.asp (hand icon added); see also Ex. 1016; Ex. 2003.
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`Id.
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`4
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`Thus, as was the case in IPR2015-01836 and IPR2015-01835, the link
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`allegedly providing public access to the cited art (in this case the BT Core reference,
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`Ex. 1014) in fact displays an error when selected. This makes it impossible to test
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`the veracity of Petitioner’s assertion that the BT Core reference (Ex. 1014) was
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`actually available to the public via this link as of the alleged date. Indeed, it is telling
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`that the Petition identifies no archived webpage from the Wayback Machine
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`allegedly containing the cited BT Core reference itself.
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`In addition, Petitioner neglects to mention, though presumably was aware, that
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`the link from Exhibit 1016 does not even attempt to access a file purportedly
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`archived by Wayback Machine before the alleged “Critical Date” of June 26, 2000.
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`See Pet. 2. Rather, it links to a webpage dated by Wayback Machine as purportedly
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`archived no sooner than Aug. 18, 2000 (another inadmissible hearsay date), albeit
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`the link results in the aforementioned error—i.e., the linked-to file (whatever it may
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`be) is “corrupted” and “damaged” beyond repair. See https://web.archive.org/web/
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`20000818173005/http://www.bluetooth.com/developer/specification/core_10_b.pd
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`f; see also Ex. 2003.
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`Petitioner also overlooks that the webpage marked as Exhibit 1016 provides
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`a “Member Login” link at the top of the page, which suggests certain information
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`was made available only to members—i.e., not generally available to the public.
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`Ex. 1016 at 1.
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`PO Response (Paper 11)
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`Petitioner’s alternative reliance on Exhibit 1017 fares no better. Clicking on
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`the links identified on that page also consistently results in error, as shown by way
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`of example in the two screen captures reproduced below:
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`See https://web.archive.org/web/20000301011704/http://www.bluetooth.com/devel
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`oper/specification/core.asp (hand icon added); see also Ex. 2003.
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`Id. Contrary to what Petitioner suggests, the link Petitioner identified from Exhibit
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`1018 (“Specification Intro”) is not a link to the source of cited BT Core reference
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`itself (Ex. 1014), but rather it is a link to the unavailing webpage discussed above,
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`which Petitioner filed as Exhibit 1016. Id. Finally, Petitioner does not even allege
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`that Exhibit 1019 provides a link to the alleged source of BT Core.
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`Yet another fatal procedural defect is that Petitioner makes no attempt to
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`authenticate the webpages purportedly obtained from the Wayback Machine and
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`filed as Exhibits 1016-1019. “When offering a printout of a webpage into evidence
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`to prove the website’s contents, the proponent of the evidence must authenticate the
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`information from the website itself, not merely the printout.” See, e.g., Standard
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`Innovation Corp. v. LeLo, Inc., Case IPR2014-00148, Paper 42 at 10 (P.T.A.B. Apr.
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`23, 2015), rehearing denied, IPR2014-00148, Paper 44 (P.T.A.B. Aug. 13, 2015);
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`Victaulic Co. v. Tieman, 499 F.3d 227, 236 (3d Cir. 2007), as amended (Nov. 20,
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`2007) (citing United States v. Jackson, 208 F.3d 633, 638 (7th Cir. 2000)). The
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`Board has required that “[t]o authenticate printouts from a website, the party
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`proffering the evidence must produce some statement or affidavit from someone
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`with knowledge of the website . . . for example a web master or someone else with
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`personal knowledge would be sufficient.” EMC Corp. v. Personalweb Techs., LLC,
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`Case IPR2013-00084, Paper 64 at 45-46 (P.T.A.B. May 15, 2014) (quoting St.
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`Luke’s Cataract & Laser Inst., P.A. v. Sanderson, 2006 WL 1320242, at *2 (M.D.
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`Fla. May 12, 2006)), a’ffd, 612 Fed. Appx. 611 (Fed. Cir. 2015).
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`The PTAB considered similar facts in Neste Oil Oyj v. REG Synthetic Fuels,
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`LLC, IPR2013-00578, Paper 53 (P.T.A.B., March 12, 2015). There, the declarant
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`purportedly used the Wayback Machine to obtain printouts of websites evidencing
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`that the relied upon reference qualifies as prior art. The patent owner subsequently
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`filed a motion to exclude the Wayback Machine printouts on the basis that they were
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`not properly authenticated.
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`In granting the motion to exclude, the Board noted that authentication of an
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`item of evidence requires that “the proponent must produce evidence sufficient to
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`support a finding that the item is what the proponent claims it is.” Id. (citing Federal
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`Rules of Evidence 901(a)). The Board stated that “[w]hen offering a printout of a
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`webpage into evidence to prove the website’s contents, the proponent of the
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`evidence must authenticate the information from the website itself, not merely the
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`printout.” IPR2013-00578, Paper 53. The Board found that the declarant did not
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`have the personal knowledge of the websites depicted in the Wayback Machine
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`printouts. Thus, the Board concluded that the Wayback Machine printouts lacked
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`authentication and granted a motion to exclude them.
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`While Patent Owner has not yet filed a motion to exclude Exhibits 1016-1019
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`as not properly authenticated, the same reasoning applies here should Patent Owner
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`seek to do so. And even if those exhibits ultimately are not excluded, the fact that
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`Petitioner failed to properly authenticate provides an additional and independent
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`basis to give the evidence little if any weight.
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`Long after filing its Petition, Petitioner at least tacitly acknowledged the
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`Petition is procedurally deficient by moving the court to grant leave to file
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`supplemental information. Paper 9. Uniloc timely opposed Petitioner’s motion and
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`objected to admission of the evidence. Paper 10. Because the Board has not yet ruled
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`on Petitioner’s motion, the supplemental information Petitioner seeks to introduce is
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`not of record and hence not addressed in this Response.
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`For at least the foregoing reasons, the Petition fails to establish that BT Core
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`(Ex. 1014) qualifies as a prior art printed publication under the statute cited.
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`B.
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`Procedural deficiencies of IrOBEX
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`Petitioner’s alternative reliance on IrOBEX v. 1.2. specification (“IrOBEX,
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`marked as Ex. 1006) suffers from analogous procedural deficiencies. At a minimum,
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`nothing in the Petition itself, or in the cited paragraphs from the declaration of Dr.
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`Charles Knutson (Ex. 1008), establishes that IrOBEX was publicly accessible before
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`the alleged “Critical Date” of June 26, 2000. See Pet. 2.
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`The Petition offers the conclusory statement that “the IrOBEX protocol was
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`published on a website, www.irda.org, maintained by the Infrared Data Association
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`and available to the general public through the website.” Pet. 2. As alleged support,
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`Petitioner cites, without explanation, to Dr. Knutson’s declaration. Id. (citing Ex.
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`1008 at ¶¶ 2‒11, 14‒20). It is well established, however, that even if a petitioner
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`includes an expert declaration, the petition, itself, must contain the analysis and
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`arguments of the expert’s declaration in the Petition itself. See 37 C.F.R. §
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`42.6(a)(3); see also, e.g., InTempur Sealy International Inc. v. Select Comfort
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`Corporation, IPR2014-01419, Paper 7 (P.T.A.B. Feb, 17, 2015). In any event, Dr.
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`Knutson’s testimony and the citations included only in his declaration (and not
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`included in the Petition itself) do not lend evidentiary support.
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`Dr. Knutson does not purport to have personal knowledge of whether the
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`specific document Petitioner identified as IrOBEX (Ex. 1006) was itself publicly
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`accessible via the www.irda.org website as of March 18, 1999 (the date appearing
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`on the face of the document). At most, Dr. Knutson alleges that he personally
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`accessed IrOBEX “through the www.irda.org website after March 18, 1999.” Ex.
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`1008, ¶3 (emphasis added). Dr. Knutson’s tellingly opaque use of the phrase “after
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`March 18, 1999” simply does not establish that he personally accessed IrOBEX
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`through the www.irda.org website sometime before the alleged “Critical Date” of
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`June 26, 2000. Pet 2.
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`While Dr. Knutson cites to alleged archived pages from the Wayback Machine
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`(id., ¶8), Dr. Knutson also does not purport to have personal knowledge as to how
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`the WayBack Machine (also referred to as “Internet Archive”) purportedly obtained
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`and archived those pages. At best, Dr. Knutson cites those pages for the truth of the
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`matter asserted concerning the dates the WayBack Machine added to the top of those
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`pages. This is inadmissible hearsay offered from a document that is not properly
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`authenticated. See § II.A, supra. Tellingly, Dr. Knutson also fails to identify any
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`alleged archival of the IrOBEX document itself by the Wayback Machine.
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`For at least the foregoing reasons, the Petition fails to establish that IrOBEX
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`(Ex. 1006) qualifies as a prior art printed publication under the statute cited.
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`III. 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. Ex. 1001, 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. Certain HIDs did not typically
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`require a link having high data throughput, though they might require a very
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`responsive link.
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`A Bluetooth system may be capable of supporting the throughput
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`requirements of certain HIDs. However, the degree of responsiveness required could
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`be 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. Id., 1:27‒39. Setting up a link required a HID to
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`join, as a slave, the piconet including the host system (which would typically act as
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`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. Id., 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. Id.,
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`2:22‒35.
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`IV. 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 of
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`unpatentability when applying its own definition of a person of ordinary skill in the
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`art (“POSITA”), Patent Owner does not offer a competing definition for POSITA.
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`V.
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`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
`Larsson (U.S. Patent No. 6,705,293)
`2
`11 and 12
`Larsson and BT Core
`3
`11 and 12
`IrOBEX
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`A. 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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`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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`1.
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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, it is proper to construe the claim term in accordance with that
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`characterization.’” Profoot, Inc. v. Merck & Co., 663 F. App’x 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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`The ’049 patent repeatedly and consistently characterizes the term “additional data
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`field” to be “an extra data field appended to the end of an inquiry message.”
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`Figure 5 depicts the additional data field as element 504:
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`Ex. 1001, Fig. 5 (highlighting added).
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`As shown in the screenshot reproduced below, the corresponding description
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`makes clear that the additional data field is an extra field that is appended to the end
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`an inquiry message:
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`Ex. 1001, 4:59‒5:11 (highlighting added).
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`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
`
`message is an essential and defining aspect of the claimed invention. Specifically,
`
`appending an extra field to the end of the inquiry message is essential at least because
`
`“non-HID receivers can ignore it without modification.” Id. (emphasis added).
`
`None of the mappings applied in the Petition address this aspect of the claimed
`
`invention reflected in the recitation, “adding to an inquiry message prior to
`
`14
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`IPR2019-00251
`PO Response (Paper 11)
`
`transmission an additional data field for polling at least one secondary station,” as
`
`recited in claim 11.
`
`In its Institution Decision, the Board preliminary held that “[i]ndependent
`
`claim 11 already has language that accounts for the language Patent Owner seeks to
`
`add through claim construction.” Paper 7 at 5. The Board clarified that “on this
`
`record and for purposes of this Decision, we do not view [appending and adding] as
`
`meaningfully distinct.” Id. Patent Owner has modified its proposed construction to
`
`clarify that “appended” in this context refers to “appended to the end” of the “inquiry
`
`message” referenced in the “additional data field” clause. This accurately reflects
`
`the thematic disclosure in the ’049 patent referenced above, which confirms there is
`
`meaningful and purposeful distinction between adding in the abstract and, instead,
`
`adding by appending the additional data field to the end of an inquiry message.
`
`Accordingly, the term “additional data field” should be construed to mean “an
`
`extra data field appended to the end of an inquiry message.”
`
`2.
`
`“broadcasting”
`
`The term “broadcasting” was a well-known term of art at the time of the
`
`invention. For example, a technical dictionary offered the following definition:
`
`Ex. 2001, Microsoft Computer Dictionary, Fourth Edition, at 5; see also Ex. 2002
`
`(declaration of Jeff Huang). The Microsoft definition for “broadcasting” also reflects
`
`
`
`15
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`
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`IPR2019-00251
`PO Response (Paper 11)
`
`how that term is generally understood, for example, in the context of radio
`
`broadcasting. Clearly, a radio tower does not broadcast a given FM radio station to
`
`only one FM receiver at a time. Rather, the broadcasted signal is potentially
`
`receivable by multiple FM receivers at once.
`
`In
`
`its Preliminary Response, Patent Owner proposed construing
`
`“broadcasting” to mean “one message that is distributed to all stations.” Prelim.
`
`Resp. (Paper 6) 11. The Board preliminary adopted this construction for the
`
`“broadcasting” term in its Institution Decision. See Paper 7 at 5.
`
`Elsewhere in its Institution Decision, however, the Board suggested that it
`
`understood, based on the limited record developed at the time, that the
`
`“broadcasting” limitations of claim 11 broadly encompass what the Board referred
`
`to as “point-to-point” communications. Id. at 9. Such an overbroad interpretation
`
`cannot be squared with the intrinsic evidence and the plain and ordinary meaning of
`
`broadcasting, as that term was understood by persons of ordinary skill in the art.
`
`The ’049 patent recognizes a difference between the phrases “point-to-point”
`
`and “point-to-multipoint.” See, e.g., Ex. 1001 at 3:44‒56. The ’049 patent also
`
`consistently distinguishes broadcasting from, instead, sending a point-to-point
`
`message that is intended for only one designated recipient. For example, the ’049
`
`patent demonstrates the point-to-multipoint nature of broadcasting in teaching that
`
`even if a broadcasted inquiry message has an additional polling field appended
`
`thereto, which is intended for a particular HID recipient, the transmission of that
`
`message may nevertheless be received by “non-HID receivers.” Id. 5:6‒9; see also
`
`Pet. 5 (emphasizing the same teaching). The ’049 patent also discloses broadcasting
`
`16
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`IPR2019-00251
`PO Response (Paper 11)
`
`in the blind on several frequencies and that a singular “broadcast channel can be used
`
`to poll HIDs [(in the plural)] at regular intervals.” Id. at 4:21‒48.
`
`The ’049 patent further teaches that any portable device within the vicinity
`
`“that wants to be discovered” (i.e., it has not yet been discovered by the broadcasting
`
`or “primary” device) listens for a broadcasting inquiry message. Id. Indeed, a
`
`fundamental purpose of broadcasting the inquiry message is to discover devices.
`
`Once a discovered device responds, “[t]he master 100 will then page the portable
`
`device, inviting it to join the piconet.” Id. This follow-up, point-to-point paging
`
`communication, which is sent from the master 100 and addressed specifically to the
`
`portable device, is expressly distinguished from the broadcasted inquiry message
`
`receivable by multiple devices at once. Id.
`
`Given at least the express distinction in the ’049 patent between broadcasting
`
`and paging, for example, it would be improper to adopt a construction of
`
`“broadcasting” that would conflate this term with distinguishable, point-to-point
`
`communications (e.g., paging). To make certain the previously proposed
`
`construction (“one message that is distributed to all stations”) is not confused as
`
`broadly encompassing point-to-point communications, a more precise construction
`
`is warranted. Accordingly, consistent with the intrinsic evidence identified above,
`
`and to properly frame the dispute, Patent Owner proposes construing “broadcasting”
`
`to mean “a transmission that is receivable by multiple recipients.”
`
`3.
`
`“inquiry message[s]”
`
`Petitioner seeks to construe the “inquiry message[s]” term to mean virtually
`
`any “message seeking [literally any] information or knowledge.” Such an
`
`17
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`IPR2019-00251
`PO Response (Paper 11)
`
`unreasonably broad interpretation is untethered to the intrinsic evidence. See In re
`
`Smith Int’l, Inc., 871 F.3d 1375, 1382 (Fed. Cir. 2017) (“[T]he protocol of giving
`
`claims their broadest reasonable interpretation . . . does not include giving claims a
`
`legally incorrect interpretation” “divorced from the specification and the record
`
`evidence.”) (citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
`
`Cir. 2015)).
`
`The ’049 patent repeatedly and consistently describes its “inquiry messages”
`
`as a specific type of message used, at least in part, to discover other devices in the
`
`vicinity which may request to join a piconet. See, e.g., Ex. 1001 at 4:23‒26 (“When
`
`a Bluetooth unit wants to discover other Bluetooth devices, it . . . issues an inquiry
`
`message . . . .”); 1:56‒57 (“Inquiry allows a would-be slave to find a base station
`
`and issue a request to join the piconet.”); 4:11‒13 (“The Bluetooth inquiry procedure
`
`allows a would-be slave to find a base station and issue a request to join its
`
`piconet.”). This refutes Petitioner’s overbroad interpretation that the claimed
`
`“inquiry message[s]” encompass virtually any message seeking literally any
`
`information or knowledge. Petitioner’s challenges are tainted by reliance on an
`
`unreasonably broad claim construction that is untethered to the intrinsic evidence.
`
`B. Claim 11: “adding to an inquiry message prior to transmission an
`additional data field for polling at least one secondary station”
`
`1.
`
`All mappings applied in the Petition fail to properly interpret
`the limitations directed to “adding an additional data field”
`
`As an independently dispositive deficiency applicable to all challenges in the
`
`Petition, Petitioner offers no obviousness theory that would satisfy the limitations
`
`18
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`IPR2019-00251
`PO Response (Paper 11)
`
`directed to “additional data field” should this term be construed to mean “an extra
`
`data field appended to the end of an inquiry message.” See §VI.A.1, supra.
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`Regardless whether the Board adopts a particular construction for this claim
`
`language, the Petition fails to address even a plain reading, as explained below.
`
`2.
`
`Petitioner’s mapping of Larsson’s “broadcast message for
`route discovery” onto the claimed “inquiry message” is
`tainted by an incorrect claim construction
`
`Petitioner
`
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