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., SAMSUNG ELECTRONICS CO.,
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`LTD., AND SAMSUNG ELECTRONICS AMERICA, INC.
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`Petitioners
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-00510
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`PATENT 6,868,079
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`PATENT OWNER RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC., LG ELECTRONICS INC., SAMSUNG ELECTRONICS CO.,
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`LTD., AND SAMSUNG ELECTRONICS AMERICA, INC.
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`Petitioners
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-00510
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`PATENT 6,868,079
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`PATENT OWNER RESPONSE
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`IPR2019-00510
`U.S. Patent 6,868,079
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`Table of Contents
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`
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`I.
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`II.
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`INTRODUCTION .................................................................................... 1
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`THE ’079 PATENT .................................................................................. 1
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`III.
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`RELATED PROCEEDINGS .................................................................... 3
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`IV.
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`PETITIONERS FAIL TO ESTABLISH
`UNPATENTABILITY FOR ANY CHALLENGED CLAIM ................. 4
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`A.
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`CLAIM CONSTRUCTION ........................................................... 4
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`1.
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`Claim 18 “means” limitations .............................................. 4
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`B.
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`Petitioners fail to meet their burden to show the cited
`references teach “wherein the at least one of the
`plurality of respective secondary stations retransmits the
`same respective request in consecutive allocated time
`slots without waiting for an acknowledgement until said
`acknowledgement is received from the primary station”
`(Claim 17) (Grounds 1 and 2)......................................................... 7
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`1.
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`2.
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`3.
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`4.
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`Petitioners improperly speculate through their
`declarant regarding Wolfe, and, regardless,
`Petitioners fail to even allege Wolfe discloses the
`required claim language ....................................................... 7
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`Bousquet does not disclose the required claim
`language, and instead Bousquet limits the
`retransmission to a “predefined time period” and
`“spaced in time, preferably at random” ................................ 8
`
`Everett does not disclose the required claim
`language, and instead Everett retransmits “after a
`randomly selected time interval” ......................................... 9
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`No combination of Wolfe, Bousquet, or Everett
`discloses “wherein the at least one of the plurality
`of respective secondary stations retransmits the
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`ii
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`IPR2019-00510
`U.S. Patent 6,868,079
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`same respective request in consecutive allocated
`time slots without waiting for an
`acknowledgement until said acknowledgement is
`received from the primary station” .................................... 11
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`C.
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`The Petition fails to render obvious “wherein the
`primary station determines whether a request for
`services has been transmitted by the at least one of the
`plurality of respective secondary stations by determining
`whether a signal strength of the respective transmitted
`request of the at least one of the plurality of respective
`secondary stations exceeds a threshold value” (Claim
`17) (Grounds 1 and 2) ................................................................... 13
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`1.
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`A POSITA Would Not Combine Patsiokas with
`Wolfe and Bousquet, or with Wolfe, Bousquet,
`and Everett .......................................................................... 13
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`D.
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`Claim 18 ........................................................................................ 19
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`V.
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`CONCLUSION ....................................................................................... 19
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`iii
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`IPR2019-00510
`U.S. Patent 6,868,079
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`EXHIBIT LIST
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`EX2001
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`Claim Construction Memorandum and Order entered in Uniloc
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`USA, Inc. v. Samsung Electronics America Inc., Case No. 2:18-
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`cv-0042-JRG-RSP, D.I. 93 (E.D. Tex. Apr. 18, 2019) and
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`Uniloc USA, Inc. v. Huawei Device USA, Inc., Case No. 2:18-
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`cv-0075-JRG-RSP, D.I. 57 (E.D. Tex. Apr. 18, 2019)
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`iv
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`IPR2019-00510
`U.S. Patent 6,868,079
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (the “Uniloc” or “Patent Owner”) submits this Response to
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`Petition for Inter Partes Review (“Pet.” or “Petition”) of United States Patent No.
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`6,868,079 (“the ’079 patent” or “EX1001”) filed by Apple Inc., LG Electronics Inc.,
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`Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
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`(“Petitioners”). The Petition is defective for at least the reasons set forth herein.
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`II. THE ’079 PATENT
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`The ’079 patent is titled “Radio communication system with request re-
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`transmission until acknowledged.” The ʼ079 patent issued March 15, 2005, from
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`U.S. Patent Application No. 09/455,124 filed December 6, 1999, which claims
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`priority to United Kingdom Patent Application No. GB9827182, filed December 10,
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`1998.
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`The inventors of the ’079 patent observed that in radio communication
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`systems at the time, it was generally required to be able to exchange signaling
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`messages between a Mobile Station (MS) and a Base Station (BS). Downlink
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`signaling (from BS to MS) was usually realized by using a physical broadcast
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`channel of the BS to address any MS in its coverage area. Since only one transmitter
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`(the BS) uses this broadcast channel there is no access problem. EX1001, 1:17-23.
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`However, uplink signaling (from MS to BS) required more detailed
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`considerations. If the MS already had an uplink channel assigned to it, for voice or
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`data services, this signaling could be achieved by piggybacking, in which the
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`signaling messages are attached to data packets being sent from the MS to the BS.
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`But if there was no uplink channel assigned to the MS, piggybacking is not possible.
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`1
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`U.S. Patent 6,868,079
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`In this case it would be desirable to have a fast uplink signaling mechanism be
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`available for the establishment, or re-establishment, of a new uplink channel.
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`EX1001, 1:24-33.
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`In conventional systems at the time, for example those operating to the Global
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`System for Mobile communication (GSM) standard, fast uplink signaling was
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`enabled by the provision of a random-access channel using a slotted ALOHA or
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`similar protocol. However, such a scheme works satisfactorily only with a low traffic
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`load and was not believed to be capable of handling the requirements imposed by
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`third-generation telecommunications standards such as UMTS. EX1001, 1:34-41.
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`According to the invention of the ’079 Patent, a system and method is
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`provided to improve the efficiency of the method by which a MS requests resources
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`from a BS. According to one aspect of the invention there is provided a method of
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`operating a radio communication system, comprising a secondary station
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`transmitting a request for resources to a primary station in a time slot allocated to
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`the secondary station, characterized by the secondary station re-transmitting the
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`request in at least a majority of its allocated time slots until an acknowledgement is
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`received from the primary station. This scheme improves the typical time for a
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`response by the primary station to a request by a secondary station. Because there is
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`no possibility of requests from different secondary stations colliding, a secondary
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`station can retransmit requests in each allocated time slot. In contrast, in prior art
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`systems a secondary station has to wait at least long enough for the primary station
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`to have received, processed and acknowledged a request before it is able to
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`retransmit. Further, the primary station can improve the accuracy with which it
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`2
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`U.S. Patent 6,868,079
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`determines whether a request was sent by a particular secondary station if the
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`received signal strength is close to the detection threshold by examining the received
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`signals in multiple time slots allocated to the secondary station in question. EX1001,
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`1:56-2:14.
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`III. RELATED PROCEEDINGS
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`The following proceedings concerning U.S. Pat. No. 6,868,079 (EX1001) are
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`currently pending.
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`Case Caption
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`Uniloc USA, Inc. et al v.
`Samsung Electronics
`America, Inc. et al
`Uniloc USA Inc et al v.
`Blackberry Corporation
`Uniloc USA Inc et al v. LG
`Electronics USA Inc et al
`Uniloc 2017 LLC v. ZTE
`Inc et al
`Uniloc 2017 LLC v.
`Motorola Mobility, LLC
`Uniloc 2017 LLC v. HTC
`America, Inc.
`Uniloc 2017 LLC v. AT&T
`Services, Inc. et al
`Uniloc USA, Inc. et al v.
`Apple Inc.
`
`Case
`Number
`19-2072
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`District
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` Case Filed
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`CAFC
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`July 1, 2019
`(appeal docketed)
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`3-18-cv-01883
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`TXND
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`Jul. 23, 2018
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`3-18-cv-06737
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`CAND
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`Nov. 06, 2018
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`3-18-cv-03064
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`TXND
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`Nov. 17, 2018
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`1-18-cv-01841
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`DED
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`Nov. 20, 2018
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`2-18-cv-01728 WAWD
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`Nov. 30, 2018
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`2-19-cv-00102
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`TXED
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`Mar. 26, 2019
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`3-19-cv-01691
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`CAND
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`Apr. 02, 2019
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`A Claim Construction Memorandum and Order entered in Uniloc USA, Inc.
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`v. Samsung Electronics America Inc., Case No. 2:18-cv-0042-JRG-RSP, D.I. 93
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`(E.D. Tex. Apr. 18, 2019) and Uniloc USA, Inc. v. Huawei Device USA, Inc., Case
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`No. 2:18-cv-0075-JRG-RSP, D.I. 57 (E.D. Tex. Apr. 18, 2019), is filed as Exhibit
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`3
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`U.S. Patent 6,868,079
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`2001. The district court in those cases construed certain terms of claims 17 and 18,
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`and determined that claim 18 was invalid as indefinite under 35 U.S.C. § 112. The
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`district court’s determination is on appeal.
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`IV. PETITIONERS FAIL TO ESTABLISH UNPATENTABILITY FOR
`ANY CHALLENGED CLAIM
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`“In an inter partes review . . ., the petitioner shall have the burden of proving
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`a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C.
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`§ 316(e). The Petitioners have not met this burden.
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`The Petition raises the following obviousness challenges:
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`Ground
`1
`2
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`Claims
`17, 18
`17, 18
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`Reference(s)
`Wolfe,1 Bousquet,2 and Patsiokas3
`Wolfe, Bosquet, Everett, 4 and Pastiokas
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`A. CLAIM CONSTRUCTION
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`1.
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`Claim 18 “means” limitations
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`The Petition argues that the structure of the “means for allocating” limitation
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`of claim 18 “is limited to algorithms disclosed by the ’079 Patent for performing the
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`‘allocating’ function.” Pet. 11. Petitioners cite Uniloc’s identification of algorithms
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`in district court litigation, and argue that “[b]ased on this identification of
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`algorithms, for the purposes of this proceeding, and without taking a position on
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`the sufficiency of it, the claimed ‘means for allocating’ should be interpreted to
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`1 EX1005, U.S. Patent 4,763,325.
`2 EX1006, U.S. Patent 6,298,052.
`3 EX1007, PCT Publication WO 1992/021214.
`4 EX1008, John L. Everett, Very Small Aperture Terminal (VSATs), Institution of
`Electrical Engineers (IEE), Telecommunication Series 28.
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`cover microcontroller 102 performing the algorithms contained in 3:25-32, 36-41,
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`or an equivalent.” Pet. 12 (footnote omitted, emphasis added).
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`The Board determined that “Petitioner fails to direct us to any description,
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`whether in prose, flow chart, or any other manner, that provides sufficient structure
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`for allocating as claimed.” Paper 7, 10. The Board determined as to claim 18:
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`Petitioner does not sufficiently “identify the specific portions of the
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`specification
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`that describe
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`the structure, material, or acts
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`corresponding to each claimed function,” as required by our Rules
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`(37 C.F.R. § 42.104(b)), to enable us to determine if the asserted
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`prior art
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`teaches such structure. Accordingly, Petitioner’s
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`contentions are inadequate for the alleged obviousness of claim 18
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`over Wolfe, Bousquet, and Patsiokas and over Wolfe, Bousquet,
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`Everett, and Patsiokas.
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`Id. at 24. The Board explains that “[d]espite this deficiency, we include these
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`challenges to claim 18 in the instituted trial” in light of cases interpreting the
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`requirements of SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018). Paper 7, 24.
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`Although Patent Owner contends that the ’079 patent discloses sufficient
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`structure, Patent Owner agrees that the Petition is deficient as to claim 18. Where a
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`petitioner does not take a position as to the sufficiency of the disclosure of
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`corresponding structure for means-plus-function claims, the petitioner fails to meet
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`its burden to set forth “[h]ow the challenged claim is to be construed,” including
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`identification of “the specific portions of the specification that describe the
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`structure, material, or acts corresponding to each claimed function.” 37 C.F.R.
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`5
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`U.S. Patent 6,868,079
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`§ 42.104(b)(3) (emphasis added). In this proceeding, there is no meaningful
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`difference between Petitioners’ failure to take a position on how the claim is to be
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`construed and a contention that the claim is indefinite. Where a petitioner takes
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`such a position, the Board “need not . . . assess whether Petitioner’s position is
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`correct.” Intex Recreation Corp. v. Team Worldwide Corp., Case IPR2019-00243,
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`Paper 7, at 18 (PTAB May 8, 2019). Instead, where a petitioner takes the position
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`that the specification does not disclose corresponding structure to the claimed
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`functions, the Board can “merely determine that Petitioner has not adequately
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`identified the structure(s), if any, disclosed” in the patent that correspond to the
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`functions. Id.
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`Patent Owner understands that the Board has made its determination as to
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`claim 18, and that the Board included the claim in this trial only in light of SAS.
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`Thus, Patent Owner need not further address claim 18. Petitioners’ implicit
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`contention that the “means” limitations recited in claim 18 render the claim
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`indefinite is appropriately determined only in a proceeding that encompasses such
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`issues. Neither Patent Owner nor the Board need address arguments based on a
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`claim construction specifically not advocated by Petitioners. Cf. id. at 21 (denying
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`institution based on anticipation grounds because “[i]n an anticipation analysis, the
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`step of construing a claim limitation precedes the step of comparing the construed
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`limitation to the prior art,” and “[b]y purporting to perform the second step while
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`affirmatively taking the position that the first step needs to be performed, but cannot
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`be performed, Petitioner has not provided an adequate anticipation analysis to
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`support institution.”).
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`6
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`U.S. Patent 6,868,079
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`B. Petitioners fail to meet their burden to show the cited references teach
`“wherein the at least one of the plurality of respective secondary
`stations retransmits the same respective request in consecutive allocated
`time slots without waiting for an acknowledgement until said
`acknowledgement is received from the primary station” (Claim 17)
`(Grounds 1 and 2)
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`The Petition relies primarily on Bousquet (EX1006) and Everett (EX1008)5
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`for this limitation,6 but also makes a half-hearted and conclusory argument through
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`its declarant that a single, unrelated passage in Wolfe (EX1005) would have
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`rendered this limitation obvious to a POSITA. See Pet. 47-48 citing EX1003, ¶ 95.
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`As will be shown below, none of the references cited by Petitioners, namely
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`Wolfe, Bousquet, or Everett, alone or in combination, discloses the required
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`“retransmitting the same respective request in consecutive allocated time slots
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`without waiting for an acknowledgement until said acknowledgement is
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`received from the primary station.”
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`1.
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`Petitioners improperly speculate through their declarant
`regarding Wolfe, and, regardless, Petitioners fail to even
`allege Wolfe discloses the required claim language
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`Petitioners’ declarant’s testimony merely parrots the Petition’s conclusory
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`and unsupported speculation (compare Pet. 47–48 with EX1003, ¶ 95) and should
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`be given little to no weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not
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`5 The Petition appears to cite to Everett (EX1008, in two parts) by the internal page
`numbers of the photocopied pages rather than the page numbers printed by
`Petitioners at the bottom of each page. For the purposes of this brief, Patent Owner
`follows Petitioners’ convention and cites to the internal page numbers on the
`photocopied pages.
`6 See Pet. 46-53 (Claim 17) and Pet. 67-73 (Claim 18, and relying on “Element
`[17.3]”
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`7
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`U.S. Patent 6,868,079
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`disclose the underlying facts or data on which the opinion is based is entitled to little
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`or no weight.”). Further, Petitioners’ declarant admits that the Petition’s sole cited
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`passage to Wolfe (EX1005, 6:23-26) merely discloses that “Wolfe’s primary station
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`transmits an acknowledgement that the request has been received.” EX1003, ¶ 95.
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`Nothing more is shown or even alleged. Instead, the Petition and Petitioners’
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`declarant then merely concludes that “a POSITA would have found it obvious that
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`Wolfe’s secondary station re-transmits the request until an acknowledgement is
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`received.” See Pet. 47; EX1003, ¶ 95. Not only does the Petition lack any evidence
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`or analysis for its conclusory assertion, the conclusory assertion itself doesn’t even
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`read upon the claim language, which requires retransmitting the same respective
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`request “in consecutive allocated time slots without waiting for an
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`acknowledgement until said acknowledgement is received from the primary
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`station.” Petitioners’ declarant’s conclusory and speculative testimony should be
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`given little to no weight, but, regardless, the testimony is silent as to at least one
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`major claim limitation and is, therefore, unavailing.
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`2.
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`Bousquet does not disclose the required claim language, and
`instead Bousquet limits the retransmission to a “predefined
`time period” and “spaced in time, preferably at random”
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`Bousquet (EX1006) also does not disclose the required retransmitting the
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`same respective request “in consecutive allocated time slots without waiting for
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`an acknowledgement until said acknowledgement is received from the primary
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`station.”
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`Instead, as the Petition itself admits, Bousquet discloses “[t]he systematic
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`repetition of the access packets in the predefined time period.” Pet. 49 (citing
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`8
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`EX1006, 3:53-56 (emphasis altered)). This operation of Bousquet is further
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`confirmed in an earlier passage:
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`IPR2019-00510
`U.S. Patent 6,868,079
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`EX1006, 3:7-13 (highlighting and underlining added).
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`Additionally, not only does Bousquet teach away from the required
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`retransmitting “until said acknowledgement is received”, Bousquet also teaches
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`away from the required retransmitting “in consecutive allocated time slots”:
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`EX1006, 3:57-58 (highlighting and underlining added).
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`Thus, by Petitioners’ own admission, at least because Bousquet limits its
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`“repetition” to “in the predefined time period”, Bousquet cannot and does not
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`disclose the required retransmitting the same respective request “in consecutive
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`allocated time slots without waiting for an acknowledgement until said
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`acknowledgement is received from the primary station.” In other words,
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`Bousquet teaches “n packets transmitted . . . spaced in time, preferably at random”
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`and only “during a predetermined time period”, and therefore, by definition,
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`Bousquet cannot and does not teach the required claim language.
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`3.
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`Everett does not disclose the required claim language, and
`instead Everett retransmits “after a randomly selected time
`interval”
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`9
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`
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`Finally, Petitioners’ reliance on Everett (EX1008) is equally unavailing.
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`Petitioners merely argue that Everett provides the following:
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`IPR2019-00510
`U.S. Patent 6,868,079
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`Furthermore, under such a circumstance, the secondary station does not
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`receive an acknowledgement from the primary station and the
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`secondary station re-transmits the data. Id. Everett teaches to cease re-
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`transmission once
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`the
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`secondary
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`station has
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`received an
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`acknowledgement from the primary station. Id., 317-318, FIG. 17.7. As
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`Everett demonstrates, a POSITA would have found use of
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`acknowledgements and re-transmission, as discussed above, to have
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`been obvious in light of Wolfe’s disclosure and a POSITA’s knowledge
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`of satellite communication systems as of the Critical Date. EX-1003,
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`[96].
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`Pet. 48; see also Pet. 75-76 (similar).
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`All that the Petition argues, at best, is that Everett discloses only to “cease re-
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`transmission once the secondary station has received an acknowledgement from the
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`primary station.”
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`There is, however, no evidence that Everett discloses the required
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`retransmitting the same respective request “in consecutive allocated time slots
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`without waiting for an acknowledgement until said acknowledgement is
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`received from the primary station.”
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`In fact, Everett expressly discloses the opposite – in the system of Everett, its
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`retransmissions are done at randomly selected time intervals:
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`10
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`U.S. Patent 6,868,079
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`EX1008 (part 2), at 317 (highlighting and underlining added).
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`The above paragraph appears in the middle of page 317 of Everett, and the
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`use of randomly selected time intervals is repeated again in the last paragraph of
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`page 317 through the first paragraph of page 318 of Everett.
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`As shown expressly by Everett itself, neither does Everett disclose the
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`required retransmitting the same respective request “in consecutive allocated time
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`slots without waiting for an acknowledgement until said acknowledgement is
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`received from the primary station”, because instead of consecutive allocated time
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`slots, Everett retransmits “after a randomly selected time interval”.
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`4.
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`No combination of Wolfe, Bousquet, or Everett discloses
`“wherein the at least one of the plurality of respective
`secondary stations retransmits the same respective request
`in consecutive allocated time slots without waiting for an
`acknowledgement until said acknowledgement is received
`from the primary station”
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`As shown above, none of the cited references of Wolfe, Bousquet, or Everett
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`discloses the required retransmitting the same respective request “in consecutive
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`allocated time slots without waiting for an acknowledgement until said
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`acknowledgement is received from the primary station.”
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`Specifically, as discussed above in Section IV.B.1, Wolfe does not disclose
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`any retransmission operation, and instead Petitioners merely speculate through their
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`declarant conclusory statements regarding a POSITA’s understanding. Further, even
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`U.S. Patent 6,868,079
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`Petitioners’ own conclusory statements is missing at least one claim limitation, and
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`therefore fails to read upon the claim language.
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`Next, as discussed above in Section IV.B.2, Bousquet does not disclose either
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`the required retransmitting in consecutive allocated time slots, neither does
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`Bousquet disclose the required retransmitting until said acknowledgment is received
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`from the primary station. Instead, Bousquet expressly teaches retransmitting only
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`for a predetermined time period (as opposed to until said acknowledgement is
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`received) and retransmitting the data “spaced in time” (as opposed to in consecutive
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`allocated time slots).
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`Finally, as discussed above in Section IV.B.3, Everett does not disclose the
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`required retransmitting in consecutive allocated time slots. Instead, Everett
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`expressly teaches retransmitting only after a “randomly selected time interval” (as
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`opposed to in consecutive allocated time slots).
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`Therefore, at least because none of Petitioners’ cited references teach
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`retransmitting in consecutive allocated time slots, as required by the claim language,
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`no combination of Wolfe, Bousquet, and Everett could disclose “wherein the at least
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`one of the plurality of respective secondary stations retransmits the same respective
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`request
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`in consecutive allocated
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`time slots without waiting
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`for an
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`acknowledgement until said acknowledgement is received from the primary
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`station.”
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`The Board’s Decision on Institution (Paper 7, 20) dismisses Patent Owner’s
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`arguments as attacking the references individually. Respectfully, however, none of
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`the reasoning provided by the Petition for combining teachings of any of the
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`U.S. Patent 6,868,079
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`references addresses why they would have been combined specifically in a manner
`
`to re-transmit in even two “consecutive allocated time slots.” Without such
`
`reasoning, and without at least a teaching of re-transmitting in “consecutive
`
`allocated time slots” in at least one reference, it is unclear how the Petition could
`
`show that combining teachings from these references would meet the limitation.
`
`The Petition
`
`focuses on
`
`re-transmitting, multiple
`
`requests, and until
`
`acknowledgment is received, but then tosses in “consecutive allocated time slots”
`
`in the combination without evidence or reasoning as to that limitation. See, e.g.,
`
`Pet. 46–49. The Board’s Decision on Institution similarly equates multiple requests
`
`with “consecutive allocated time slots.” See Paper 7, 20. Neither the evidence nor
`
`the reasoning (which also must be supported by evidence) fills at least that gap.
`
`Accordingly, Petitioners fail to carry the burden as to at least this limitation.
`
`C. The Petition fails to render obvious “wherein the primary station
`determines whether a request for services has been transmitted by the
`at least one of the plurality of respective secondary stations by
`determining whether a signal strength of the respective transmitted
`request of the at least one of the plurality of respective secondary
`stations exceeds a threshold value” (Claim 17) (Grounds 1 and 2)
`
`1.
`
`A POSITA Would Not Combine Patsiokas with Wolfe and
`Bousquet, or with Wolfe, Bousquet, and Everett
`
`A POSITA would not have made any of the hypothetical combinations
`
`proposed by the Petition involving Patsiokas because, unlike Wolfe, Bousquet, and
`
`Everett, which are satellite systems, Patsiokas relates to “second generation cordless
`
`13
`
`
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`IPR2019-00510
`U.S. Patent 6,868,079
`
`telephone (CT2)” radio telephones. See EX1007, 1:15-2:8.7 More specifically,
`
`Patsiokas addresses a shortcoming in cordless radio telephone systems that is not
`
`identified or present in the satellite systems of Wolfe, Bousquet, and Everett, and
`
`therefore, a POSITA would not have been motivated to make the proposed
`
`combinations with Patsiokas.
`
`To establish obviousness under 35 U.S.C. § 103(a), it is petitioner’s “burden
`
`to demonstrate . . . that a skilled artisan would have been motivated to combine the
`
`teachings of the prior art references to achieve the claimed invention.” In re
`
`Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotations
`
`omitted). “‘[R]ejections on obviousness cannot be sustained by mere conclusory
`
`statements; instead, there must be some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness.’” KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 418 (2007) (citation omitted). An obviousness
`
`determination cannot be reached where the record lacks “explanation as to how or
`
`why the references would be combined to produce the claimed invention.”
`
`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016).
`
`Patsiokas describes the problem it solves in cordless radio telephones as such:
`
`
`7 The Petition appears to cite to Patsiokas (EX1007) by the internal page numbers
`on top of the pages rather than the page numbers printed by Petitioners at the bottom
`of each page. For the purposes of this brief, Patent Owner follows Petitioners’
`convention and cites to the page numbers on the top of the pages.
`
`14
`
`
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`IPR2019-00510
`U.S. Patent 6,868,079
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`
`EX1007, 3:12-25 (highlighting and underlining added).8 And the above scenario of
`
`concern relating to conventional cordless radio telephones is illustrated by
`
`Patsiokas’ Figure 1:
`
`
`8 According to Patsiokas “CT2” means “second generation cordless telephone”.
`EX1007, 3:23-24 (“Taking second generation cordless telephone (CT2) as an
`example…”).
`
`
`
`15
`
`
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`IPR2019-00510
`U.S. Patent 6,868,079
`
`EX1007, Fig. 1.
`
`As shown above, the shortcoming identified by Patsiokas is in the scenario
`
`where two different base stations (12, 14) could establish the communications link,
`
`but in the case where the base station that is farther from the user (10) is the one that
`
`gets the request first and establishes the communications link, there is a higher
`
`likelihood that the user will move out of the range of that farther base station and
`
`then the communications link will be dropped. See EX1007, 3:12-25. The disclosure
`
`of Patsiokas discusses solving this identified shortcoming of cordless radio
`
`telephones.
`
`However, the shortcoming identified by Patsiokas is not a shortcoming that
`
`is identified or even present in any of Wolfe, Bousquet, and Everett. This is directly
`
`evidenced by the Petition and the references themselves.
`
`First, the Petition differentiates terrestrial wireless systems and satellite
`
`systems, and admits that satellite systems do not suffer from range issues:
`
`
`
`16
`
`
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`IPR2019-00510
`U.S. Patent 6,868,079
`
`Pet. 16-17 (highlighting added).
`
`As shown above, Petitioners expressly admit that what differentiates
`
`terrestrial wireless systems and satellite systems is that satellite systems do not
`
`suffer from the same range problems as terrestrial systems (such as the system of
`
`
`
`Patsiokas).
`
`And as shown in the Petition’s reproduction of Fig. 1.6(c) of Everett, above,
`
`there all of the VSATs communicate with a single hub (base station) because there
`
`are no range issues. The same concept is illustrated in the Petition’s Annotated
`
`Figure 1 of Wolfe:
`
`17
`
`
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`IPR2019-00510
`U.S. Patent 6,868,079
`
`Pet. 20 (annotations in original).
`
`
`
`Similar to Everett, Fig. 1 of Wolfe shows a single reference station (base
`
`station) because of the lack of range issues in satellite systems.
`
`Therefore, as shown above, and as admitted by the Petition itself, the system
`
`of Patsiokas identifies and addresses a shortcoming specific to cordless radio
`
`telephone systems that is not present in satellite systems. Thus, a POSITA would
`
`not have been motivated to make the hypothetical combinations involving
`
`Patsiokas, at least because there is no concern of a user walking out of range of the
`
`base station in satellite systems described in Wolfe, Bousquet, and Everett. In re
`
`Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008) (affirming a finding
`
`18
`
`
`
`of non-obviousness because the alleged flaws in the prior art that ostensibly
`
`prompted the modification had not been recognized in the art, thus undermining the
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`IPR2019-00510
`U.S. Patent 6,868,079
`
`alleged reason to modify)
`
`D. Claim 18
`
`As noted above, Patent Owner understands that the Board has made its
`
`determination that Petitioners’ contentions are inadequate for the alleged
`
`obviousness of claim 18, and that the Board included the claim in this trial only in
`
`light of SAS. See Paper 7, 24. The Petition’s contentions as to claim 18 are also
`
`deficient for at least the same reasons argued above as to claim 17.
`
`V. CONCLUSION
`
`For at least the reasons set forth above, Uniloc respectfully requests that the
`
`Board determine that Petitioners have failed to meet their burden to show
`
`unpatentability on any challenge presented in the Petition.9
`
`Date: October 17, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Brett A. Mangrum/
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`
`9 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.
`
`19
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`
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`IPR2019-00510
`U.S. Patent 6,868,079
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`CERTIFICATE OF COMPLIANCE
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies 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: October 17, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`By: /Brett A. Mangrum/
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`i
`
`
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`IPR2019-00510
`U.S. Patent 6,868,079
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
`
`copy of the foregoing PATENT OWNER’S RESPONSE was served along with any
`
`accompanying exhibits, via the PTAB E2E system and/or via email to Petitioners’
`
`counsel at the following addresses identified in the Petition’s consent to electronic
`
`service:
`
`
`
`
`Lead Counsel
`
`W. Karl Renner
`
`IPR39521-0060IP1@fr.com
`
`First Back Up
`Counsel
`
`Jeremy Monaldo
`
`monaldo@fr.com
`
`Back Up Counsel
`
`Roberto DeVoto
`
`devoto@fr.com
`
`Back Up Counsel
`
`Grace
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