Trials@uspto.gov
`571.272.7822
`
`
` Paper 17
` Date: August 10, 2020
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`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-00702
`Patent 7,969,925 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`

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`IPR2019-00702
`Patent 7,969,925 B2
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`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1–20 of U.S. Patent No. 7,969,925 B2 (Ex. 1001, “the ’925 patent”).
`Paper 1 (“Pet.”). Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). Upon consideration of the Petition
`and Preliminary Response, we instituted inter partes review, pursuant to 35
`U.S.C. § 314, as to claims 1–20 based on all challenges set forth in the
`Petition. Paper 7 (“Decision to Institute” or “Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 9, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`Response (Paper 10, “Pet. Reply”), and Patent Owner filed a Sur-reply
`(Paper 11, “Sur-reply”). On May 21, 2020, we held an oral hearing. A
`transcript of the hearing is of record. Paper 16 (“Tr.”).
`In our Scheduling Order, we notified the parties that “any arguments
`not raised in the [Patent Owner] response may be deemed waived.” See
`Paper 8, 7; see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,766 (Aug. 14, 2012) (“The patent owner response . . . should identify all
`the involved claims that are believed to be patentable and state the basis for
`that belief.”). Patent Owner argues that it “does not concede, and
`specifically denies, that there is any legitimacy to any arguments in the
`instant Petition that are not specifically addressed” in its Patent Owner
`Response. PO Resp. 21 n.11. We decline to speculate as to what arguments
`Patent Owner considers illegitimate in the Petition. Any arguments for
`patentability not raised in the Patent Owner Response are deemed waived.
`For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that claims 1–20 of the ’925 patent are
`unpatentable.
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`IPR2019-00702
`Patent 7,969,925 B2
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`A. Related Matters
`Patent Owner indicates that the ’925 patent is the subject of the
`following currently pending court proceeding: Uniloc USA, Inc. et al. v.
`Apple Inc., Case No. 4-19-cv-01696 (N.D. Cal.). PO Resp. 3.
`
`B. The ’925 Patent
`The specification of the ’925 patent describes “a method for
`establishing a direct data transfer session between mobile devices over a
`digital mobile network system that supports data packet-based
`communications.” Ex. 1001, 1:61–64. According to the ’925 patent, a
`separate data server is not required to provide a known location from which
`a recipient retrieves data. Id. at 1:64–67. Rather, “a mobile device initiating
`a data transfer opens a listening port defined by an underlying data packet
`based network protocol.” Id. at 1:67–2:2. Initiating mobile device sends an
`invitation message containing the network address, including the listening
`port of the initiating device, to a target mobile device through a page-mode
`messaging service supported by the digital mobile network system. Id. at
`2:2–7. Initiating mobile device further utilizes and incorporates a unique
`identification number associated with the target mobile device into the
`invitation message to locate and contact the target mobile device within the
`wireless mobile network. Id. at 2:7–11. “Once the initiating mobile device
`receives a response from the target mobile device at the listening port, the
`two mobile devices are able to establish a reliable virtual connection through
`the underlying data packet-based network protocol in order to transfer data
`directly between the two mobile devices.” Id. at 2:12–17.
`An example digital mobile network system is illustrated in Figure 1
`reproduced below.
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`Figure 1 is a diagram of a Global System for Mobile communications
`(GSM) mobile networking system 100 including a first mobile device 105
`and a second mobile device 110. Id. at 2:21–27. As disclosed in the
`’925 patent, each of the mobile devices 105 and 110 includes a Subscriber
`Information Module (SIM) card that contains unique identification
`information that enables the GSM system 100 to locate the mobile devices
`within the network and route data to them. Id. at 2:40–44. The ’925 patent
`further discloses that the GSM system 100 supports a page-mode messaging
`service, such as Short Message Service (SMS), that relies upon the
`underlying GSM mechanisms to resolve routing information to locate
`destination mobile devices. Id. at 3:14–18. Through use of a page-mode
`messaging service, such as SMS, an initiating mobile device transmits its IP
`address (and a listening port) in an invitation message to a target mobile
`device through the target device’s telephone number. Id. at 4:26–31. When
`the target device receives the invitation message, it is able to contact the
`initiating mobile device through the received IP address and the two devices
`can establish a connection for a data transfer session. Id. at 4:31–35.
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`An example flow chart for establishing a data transfer session is
`illustrated in Figure 2 reproduced below.
`
`
`Figure 2 is a flow chart depicting the steps taken by an initiating and target
`mobile device to establish a direct data transfer session. Id. at 4:35–38. At
`210, the initiating mobile device opens a TCP port to listen for
`communications from the target mobile device. Id. at 4:38–40. At 220, the
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`target mobile device similarly opens an SMS listening port to receive
`invitation SMS text messages at the specified SMS port. Id. at 4:40–42. At
`230, the initiating mobile device transmits its IP address and TCP port in an
`invitation SMS text message to the telephone number and a specified SMS
`port of the target mobile device. Id. at 4:43–46. At 240, the target mobile
`device receives the SMS text message containing the initiating mobile
`device’s IP address and TCP port at the specified SMS port. Id. at 4:46–48.
`At 250, the target mobile device extracts the IP address and TCP port from
`the SMS text messages and opens its own TCP port. Id. at 4:48–50. At 260,
`the target mobile device transmits a request to establish a TCP connection to
`the initiating mobile device’s IP address and TCP port. Id. at 4:50–53. At
`270, the initiating mobile device receives the request and a TCP connection
`is established between the IP addresses and TCP ports of the initiating and
`listening mobile devices. Id. at 4:53–56. At 280, the initiating and listening
`mobile devices engage in a data transfer session over a reliable virtual
`connection. Id. at 4:56–57.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–20 of the ’925 patent. Claims 1, 8, and
`15 are independent. Claims 2–7 depend directly from claim 1; claims 9–14
`depend directly from claim 8; and claims 16–20 depend directly from claim
`15. Claim 1 is reproduced below.
`1. A method of establishing a direct data transfer
`session between mobile devices that support a data packet-based
`communications service over a digital mobile network system,
`the method comprising:
`opening a listening software port on an initiating mobile
`device to receive communications through the data packet-based
`communications service;
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`transmitting an invitation message to a target mobile
`device through a page-mode messaging service, wherein the
`invitation message comprises a network address associated with
`the initiating mobile device, and wherein the target mobile device
`is located by providing a unique identifier to the page-mode
`messaging service;
`receiving a response from the target mobile device at the
`listening software port on the initiating mobile device; and
`establishing a data transfer session through the data
`packet-based communications service between the initiating
`mobile device and the target mobile device, wherein the data
`transfer session is established in a peer-to-peer fashion without a
`server intermediating communications through the established
`data transfer session between the initiating mobile device and the
`target mobile device.
`Ex. 1001, 5:45–67.
`
`D. Instituted Grounds of Unpatentability
`We instituted trial based on all asserted grounds of unpatentability
`under 35 U.S.C.1 as follows (Dec. 7–8, 34):
`Claims Challenged
`35 U.S.C. § References
`1, 3–8, 10–15, 17–20
` 103(a)
`Alos2, RFC7933
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’925
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`2 Translation of EP Application Publication No. 1009153 A1, published June
`14, 2000 (Ex. 1005, “Alos”).
`3 RFC 793, “Transmission Control Protocol,” DARPA Internet Program
`Protocol Specification, September 1981, and Declaration of Sandy Ginoza
`(Ex. 1010, “RFC793”).
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`Patent 7,969,925 B2
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`Claims Challenged
`
`2, 9, 16
`
`1, 3–8, 10–15, 17–20
`2, 9, 16
`
`1, 3–8, 10–15, 17–20
`
`2, 9, 16
`
` 103(a)
`
` 103(a)
` 103(a)
`
` 103(a)
`
`
`35 U.S.C. § References
`Alos, RFC793,
`SMS Specification4,
`WMA5
`Cordenier6, RFC793
`Cordenier, RFC793,
`Dorenbosch7
`Lee8, RFC793, SMS
`Specification
`Lee, RFC793, SMS
`Specification,
`WMA
`
` 103(a)
`
`II. ANALYSIS
`
`A. Principles of Law
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence9 that the claims are
`unpatentable. 35 U.S.C. § 316(e) (2012); 37 C.F.R. § 42.1(d) (2018). A
`patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`
`4 3GPP TS 23.040 version 3.5.0, “Universal Mobile Telecommunication
`System (UMTS), Technical Realization of the Short Message Service
`(SMS),” and Information Disclosure Statement citing aforementioned
`specification, submitted August 15, 2002 (Ex. 1014, “SMS Specification”).
`5 Wireless Messaging API (WMA) for Java™ 2 Micro Edition Version 1.0,
`August 21, 2002, and Declaration of Harold Ogle (Ex. 1018, “WMA”).
`6 EP Application Publication No. 1385323 A1, published January 28, 2004
`(Ex. 1007, “Cordenier”).
`7 U.S. Patent Application Publication No. 2003/0217174 A1, published
`November 20, 2003 (Ex. 1011, “Dorenbosch”).
`8 U.S. Patent No. 6,847,632 B1, issued January 25, 2005 (Ex. 1006, “Lee”).
`9 The burden of showing something by a preponderance of the evidence
`requires the trier of fact to believe that the existence of a fact is more
`probable than its nonexistence before the trier of fact may find in favor of
`the party who carries the burden. Concrete Pipe & Prods. of Cal., Inc. v.
`Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993).
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`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) when in evidence, objective evidence of
`nonobviousness.10 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner relies on the testimony of Dr. Henry Houh,
`who testifies that a person with ordinary skill in the art would have had “a
`Bachelor’s degree in computer science or a comparable field of study, plus
`approximately two to three years of professional experience with cellular
`phone and IP networks, or other relevant industry experience” and that
`“[a]dditional graduate education could substitute for professional experience
`and significant experience in the field could substitute for formal education.”
`Pet. 9 (citing Ex. 1002 ¶ 35). Patent Owner does not propose an alternative
`assessment. PO Resp. 3.
`
`10 Patent Owner does not present any objective evidence of nonobviousness
`as to the challenged claims.
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`We adopt Dr. Houh’s assessment of a person with ordinary skill in the
`art as it is consistent with the ’925 patent and the asserted prior art. We
`further note that the prior art of record in the instant proceeding reflects the
`appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261
`F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific
`findings as to the level of ordinary skill in the art “where the prior art itself
`reflects an appropriate level and a need for testimony is not shown”).
`
`C. Claim Construction
`In an inter partes review for a petition filed on or after November 13,
`2018, “[claims] of a patent . . . shall be construed using the same claim
`construction standard that would be used to construe the [claims] in a civil
`action under 35 U.S.C. § 282(b), including construing the [claims] in
`accordance with the ordinary and customary meaning of such [claims] as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” See Changes to the Claim Construction Standard
`for Interpreting Claims in Trial Proceedings Before the Patent Trial and
`Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37
`C.F.R. § 42.100(b) effective November 13, 2018) (now codified at
`37 C.F.R. § 42.100(b) (2019)); see also Phillips v. AWH Corp., 415 F.3d
`1303, 1312– 14 (Fed. Cir. 2005).
`Order of Steps
`Petitioner argues that independent claims 1, 8, and 15 “are each
`
`directed to an initiating device that sends an invitation to a target mobile
`device and then establishes a connection with that device” and that
`respective dependent claims 2, 9, and 16 each add limitations “related to an
`invitation received by the initiating mobile device from ‘another’ mobile
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`device.” Pet. 20. Petitioner argues that there is “no claimed relationship
`between the timing of any of the steps in these independent claims vis-à-vis
`the steps in these dependent claims, such that the steps of the dependent
`claims can be performed at any time before or after the steps of the
`independent claims” and that the ’925 patent does not require any temporal
`relationship. Id. at 20–21 (citing Ex. 1002 ¶ 50; Altiris Inc. v. Symantec
`Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003)). Patent Owner argues that
`Petitioner has failed to explain why there is no claimed relationship between
`the claims in terms of ordered steps, such as an explanation of how opening
`a second listening software port (e.g., recited in claim 2) should be
`understood, without reference to the same initiating mobile device having
`first opened the listening software port recited in claim 1. PO Resp. 9–10.
`It is necessary for us to resolve this issue, because Patent Owner
`argues that claims 2, 9, and 16 require an order or timing to the steps, such
`that “opening a second software port” must be subsequent to “opening a
`listening software port” recited in independent claims 1, 8, and 15. Id. at 9–
`11, 21. As such, Patent Owner argues that Petitioner’s showing for claims 2,
`9, and 16 fails to recognize “at least implicit (if not explicit) order between
`the antecedent timing of the ‘opening’ step of claim 1 vis-à-vis the opening
`step of claim 2.” Id. at 10, 21.
`Claim 2 depends from claim 1. Claim 9, which depends from claim 8,
`and claim 16, which depends from claim 15, are similar in scope to claim 2.
`For purposes of discussion, we focus our analysis on claim 2. Claim 2
`recites “opening a second listening software port on the initiating mobile
`device to receive invitation messages through the page-mode messaging
`service,” and “receiving, at the second listening software port” “a message
`from another mobile device.” Ex. 1001, 6:2–7. There is nothing in claim 2
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`that requires that the “opening” of the “second listening software port” be
`subsequent to “opening a listening software port” recited in claim 1. The
`limitation “second” is descriptive of the “listening software port” of claim 2
`that is being opened, for the purpose of distinguishing the “second listening
`software port” from the “listening software port” recited in claim 1. That is,
`the “second listening software port” is different from the claim 1 “listening
`software port.” Claim 2 does not require, however, that opening the second
`listening software port must be performed after opening the claim 1 listening
`software port, as Patent Owner asserts. We agree with Petitioner that the
`steps of claim 2 do not necessarily require any temporal relationship with
`respect to the steps of claim 1. We further agree with Petitioner that there is
`nothing in the ’925 patent that describes a temporal relationship with respect
`to the steps of claims 1 and 2 and Patent Owner directs us to no such
`description. Indeed, the only description we find of “opening a second
`listening software port” is in the claim language. For these reasons, we are
`not persuaded by Patent Owner’s arguments that claim 2 requires an order or
`timing to the steps, such that “opening a second software port” must be
`subsequent to “opening a listening software port” recited in claim 1.
`“opening a listening software port”
`Independent claims 1, 8, and 15 recite “opening a listening software
`port on an initiating mobile device to receive communications through the
`data packet-based communications service.” Dependent claims 2, 9, and 16
`recite “opening a second listening software port.” Petitioner proposes that
`“[e]ach of these limitations means ‘associating a port identifier with a
`process.’” Pet. 21. Petitioner argues that we “should reject any proposed
`construction that attempts to narrow this phrase to require that the port be
`opened exclusively for receiving a response from only the target device.”
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`Id. at 22. Petitioner directs attention to the prosecution history of a related
`application, where applicant argued that additional claim language which is
`not present in the claims of the ’925 patent excluded the use of well-known
`ports. Id. (citing Ex. 1004, 414–416).
`Patent Owner argues that “the port must [be] opened for a specific
`‘target mobile device,’” and “the claimed ‘opening’ must be directed to a
`specified ‘target mobile device.’” PO Resp. 7, 8, 12. We understand that
`Patent Owner is proposing a construction that would require that the port be
`opened exclusively for receiving a response from only the target device. Id.;
`Sur-reply 10 (“the listening software port is opened only for the target
`device”). It is necessary for us to resolve this issue, because there is a
`dispute about whether the prior art (RFC793) describes “opening a listening
`software port.” In particular, Patent Owner apparently agrees that RFC793
`describes passively opening a listening software port with an unspecified
`foreign host as Petitioner asserts, but disagrees that Petitioner has shown that
`RFC793 describes opening a listening software port directed only to a
`specified “target mobile device.” See, e.g., PO Resp. 12. For the following
`reasons, we determine that “opening a listening software port” does not
`require opening a listening software port for receiving a response from only
`the target mobile device.
`The parties focus on the “opening” limitation recited in the
`independent claims, as do we. Claims 1, 8, and 15 each recite “opening a
`listening software port on an initiating mobile device to receive
`communications through the data packet-based communications service.”
`Nowhere do the claims recite that the opening is directed to a specific target
`mobile device (to receive communications from only the target mobile
`device). Patent Owner argues that the “‘opening’ of the listening software
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`port is at least expressly tied to ‘receiv[ing] communications through the
`data packet-based communications service’” that is “introduced in the
`preamble.” Id. at 7; Sur-reply 5, 9–10. Patent Owner, however, fails to
`explain how the language of “receiv[ing] communications through the data
`packet-based communications service” or anything in the preamble supports
`its narrow construction. Merely underlining certain words of the preamble
`or repeating words of the preamble is insufficient to show how those words
`support Patent Owner’s proposed construction. See, e.g., Sur-reply 5
`(underlining “establishing a direct data transfer session11 between mobile
`devices” without explaining how such language supports Patent Owner’s
`proposed narrow construction of “opening a listening software port”). We
`will not speculate as to what Patent Owner means to the detriment of
`Petitioner. It is incumbent upon a party proposing a narrow construction to
`articulate reasons why its proposed construction is warranted. Here, Patent
`Owner has failed to show that any of the words in claim 1, for example,
`support construing the disputed phrase to mean “opening a listening
`software port on an initiating mobile device to receive communications from
`only a specific target mobile device through the data packet-based
`communications service.”
`Next, Patent Owner points to two descriptions in the ’925 patent in
`support of its proposed construction. PO Resp. 8. The two descriptions are
`similar and describe that “the initiating mobile device opens a TCP port to
`
`11 The ’925 patent describes the “direct data transfer session” between
`mobile devices in the context of not needing a separate server. Ex. 1001,
`(code 57), 1:51–57, 1:61–67. The ’925 patent does not describe “direct data
`transfer session” between mobile devices in the context of being a data
`transfer session whereby only the two mobile devices can communicate on
`the opened listening software port as Patent Owner may be implying. Id.
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`listen for communications from the target mobile device.” Ex. 1001, 4:38–
`40, 4:58–62. Patent Owner does not explain how such description
`necessitates us construing the disputed limitation as proposed. We do not
`find that the description to which Patent Owner directs attention is a
`definition of “opening a listening software port,” and Patent Owner has
`failed to make the case that it is. The description is different from the
`proposed construction. The description is to open a TCP port to listen for
`communications from the target mobile device; not to listen for
`communications from only the target mobile device. We find that the
`description does not necessarily mean that the initiating mobile device opens
`a TCP port to listen for communications only from the target mobile device
`and no other device. Thus, we are not persuaded that such description
`supports Patent Owner’s proposed construction.
`Still, there are other descriptions in the ’925 patent that Patent Owner
`does not discuss that would seemingly contradict Patent Owner’s proposed
`construction. For example, the ’925 patent describes the following:
`[A] mobile device initiating a data transfer opens a listening
`port defined by an underlying data packet based network
`protocol. The initiating mobile device sends an invitation
`message containing the network address, including the
`listening port, of the initiating device to a target mobile device
`through a page-mode messaging service (e.g., text based
`service) supported by the digital mobile network system. The
`initiating mobile device further utilizes and incorporates a
`unique identification number (e.g., telephone number, PIN
`number, etc.) associated with the target mobile device into the
`invitation message to locate and contact the target mobile
`device within the wireless mobile network. Once the initiating
`mobile device receives a response from the target mobile device
`at the listening port, the two mobile devices are able to establish
`a reliable virtual connection through the underlying data
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`packet-based network protocol in order to transfer data directly
`between the two mobile devices.
`Id. at 1:67–2:17. The above describes opening a listening port defined by an
`underlying data packet based network protocol. The port that is opened is
`defined by a network based network protocol, but is not otherwise specified.
`The mobile device sends an invitation message “including the listening port”
`to the target mobile device using the target device’s phone number, for
`example, so that the target mobile device can receive such information (e.g.,
`the listening port) to then later communicate with the initiating device.
`Patent Owner fails to discuss such description. If the listening port were
`opened such as to receive communications only from the target mobile
`device, as Patent Owner argues, it would appear necessary for the initiating
`device to know some identifier associated with the target mobile device to
`specify the port to only listen for communications from the target mobile
`device. The ’925 patent, however, never describes such an identifier, but
`only describes identifiers such as the target mobile device’s phone number
`that is used for sending an SMS message from the initiating mobile device.
`Patent Owner, however, never addresses this, or any other portion of the
`’925 patent that seems to contradict Patent Owner’s narrow construction.
`See, e.g., id. at 4:12–31.
`Petitioner points this out too (that Patent Owner’s proposed
`construction contradicts what is described in the ’925 patent). Pet. Reply 6–
`8. Petitioner argues that “it is impossible to implement” Patent Owner’s
`proposed “construction under the conditions discussed in the 925 patent
`using a TCP connection, which is the only type of connection disclosed in
`the 925 patent used for implementing ports on the claimed data packet-based
`communications service and which is specifically required by dependent
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`claims 7, 14 and 20.” Id. at 6 (citing Ex. 1001, Figs. 2–3, 1:23–42, 2:21–27,
`3:53–4:11, 4:31–5:20; Ex. 1028 ¶ 13). Dr. Houh testifies that “if a port is to
`be restricted to a particular foreign process, the OPEN call must specify the
`foreign socket address (both the IP address of the foreign host and the port
`number for the process on that host).” Ex. 1028 ¶ 14 (citing Ex. 1010, 1112).
`He further testifies that
`[I]f Patent Owner were correct that “opening a listening software
`port” requires opening the port only for the target device, the
`initiating device would need to know the target device’s socket
`address (IP address and port number) in order to specify those
`arguments in the TCP OPEN call. However, this is inconsistent
`with the problem the 925 patent purports to solve, which is that
`initiating device does not know the target device’s network (e.g.,
`IP) address or port number . . . Therefore, in the embodiments
`described in the specification and specifically required in
`dependent claims 7, 14 and 20, Patent Owner’s construction is
`simply not possible.
`Id. ¶ 15. We give substantial weight to Dr. Houh’s testimony and find that a
`person having ordinary skill in the art at the time of the invention would
`have considered Patent Owner’s proposed construction to be inconsistent
`with the ’925 patent.13 Dr. Houh’s testimony stands unrebutted. He was not
`cross-examined and Patent Owner did not file testimony of its own to show
`
`
`12 In the Petition, Petitioner cites to page numbers added by Petitioner in the
`lowest right corner. However, in the Reply and in Dr. Houh’s Reply
`Declaration, citations are to the internal page numbers. Internal page
`number 11, for example is the same as “Page 20” located in the lower right
`corner.
`13 We disagree with Patent Owner that Dr. Houh’s testimony is conclusory
`and entitled to no weight. PO Resp. 20–21; Sur-reply 11. Dr. Houh’s first
`and second declarations provide well-reasoned analysis, are not based on
`hindsight reconstruction, and provide a basis for us to conclude that the
`particular facts to which he attests are more likely than not.
`
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`IPR2019-00702
`Patent 7,969,925 B2
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`
`that Dr. Houh is incorrect that a person having ordinary skill in the art at the
`time of the invention would have considered Patent Owner’s proposed
`construction to be inconsistent with the ’925 patent.
`We have considered Patent Owner’s arguments that its proposed
`construction is consistent with the ’925 patent because opening a listening
`port for a target device can be implemented using TCP/IP, but are not
`persuaded by such arguments. Sur-reply 2–4. First, Patent Owner argues
`that Petitioner’s Reply ignores “that a passive OPEN call is not required to
`use all zeroes for the port number in order to open a passive TCP port” and
`that a “TCP port can be opened with a passive OPEN call in which an
`ephemeral port number is used.” Id. at 2–3. Patent Owner goes on to argue
`that
`
`Thus, any TCP port of a first device that is opened with the
`passive OPEN call and an ephemeral port number can be
`dedicated to (e.g., tightly coupled to) another target device to
`which an invitation message may be sent. Owing to the
`temporary nature of an ephemeral port-based session, such as
`data transfer session as recited in the independent claims, it is
`highly unlikely that an arbitrary third party device could
`accidentally or even purposefully (i.e., maliciously) identify
`what the ephemeral port number is, much less identify an IP
`address that is associated with the ephemeral port number during
`the relatively short time that the opened port may be active.
`Sur-reply 3. First, nothing in the ’925 patent describes opening a listening
`software port with an ephemeral port number and transmitting the ephemeral
`port number to the target mobile device. Second, Patent Owner has failed to
`demonstrate that opening a listening software port with an ephemeral port
`number would result in receiving communications from only a specific
`target mobile device. To that end, all we have before us is unsworn attorney
`argument informing us that “an ephemeral port number can be dedicated to
`
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`IPR2019-00702
`Patent 7,969,925 B2
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`(e.g., tightly coupled to) another target device,” and that “it is highly
`unlikely that an arbitrary third party device” could identify the ephemeral
`port number. Id. Patent Owner directs us to no evidence in support of its
`assertions as to what a person having ordinary skill in the art would have
`known at the time of the invention. See Estee Lauder Inc. v. L'Oreal, S.A.,
`129 F.3d 588, 595 (Fed. Cir. 1997) (argument of counsel cannot take the
`place of evidence lacking in the record). Here, for example, we do not have
`before us a declarant on behalf of Patent Owner to inform us what a person
`having ordinary skill in th