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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`IPR2019-00702
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`PATENT 7,969,925
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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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`IPR2019-00702
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`PATENT 7,969,925
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`PATENT OWNER RESPONSE TO PETITION
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`IPR2019-00702
`U.S. Patent 7,969,925
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`Table of Contents
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`I.
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`II.
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`INTRODUCTION .................................................................................... 1
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`THE ’925 PATENT .................................................................................. 1
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`III.
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`RELATED PROCEEDINGS .................................................................... 3
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`IV.
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`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 3
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`V.
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`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 3
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`A.
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`Claim Construction ......................................................................... 4
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`1.
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`2.
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`“opening a listening software port . . .” (claims 1,
`8, and 15) and “opening a second listening
`software port . . .” (claims 2, 9, and 16) ............................... 5
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`Petitioner fails to explain why the Board should
`find there is no claimed relationship between the
`timing of any of the steps in these independent
`claims vis-à-vis any step recited in a respective
`dependent claim .................................................................... 9
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`B.
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`Petitioner’s assertion of RFC793 relies upon an
`incorrect claim construction and fails to cure conceded
`deficiencies of the primary references for the limitations
`directed to “opening a listening software port . . .”
`(Grounds 1‒6, all challenged claims) ........................................... 11
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`1.
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`2.
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`Petitioner expressly relies solely an alleged
`“opening” that is not specific to a “target mobile
`device” ................................................................................ 12
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`Petitioner undermines its challenges by
`acknowledging a POSITA would likely use
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`ii
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`“well-known” sockets if combining RFC793 with
`any of the cited primary references .................................... 13
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`3.
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`Petitioner fails to prove the use of TCP in
`RFC793 cures the conceded deficiencies of the
`primary references (Alos, Cordenier, and Lee) .................. 15
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`C.
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`Petitioner overlooks additional demonstrable facts
`further refuting the alleged motivation to combine Alos
`and RFC793 .................................................................................. 18
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`D. Additional deficiencies arise from the proposed
`combination of RFC739 with Cordenier (Grounds 3‒4,
`all challenged claims) ................................................................... 19
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`E.
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`F.
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`Petitioner’s declarant adds nothing of substance ......................... 20
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`The Petition fails to Prove Obviousness of Any
`Dependent Claim .......................................................................... 21
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`VI.
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`CONCLUSION ....................................................................................... 21
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`iii
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`IPR2019-00702
`U.S. Patent 7,969,925
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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
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`Petition IPR2019-00702 for Inter Partes Review (“Pet.” or “Petition”) of United
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`States Patent No. 7,969,925 (“the ’925 patent” or “EX1001”) filed by Apple, Inc.
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`(“Petitioner”). The instant Petition is procedurally and substantively defective.
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`II. THE ’925 PATENT
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`The ’925 patent is titled “Peer-to-peer mobile data transfer method and
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`device.” The ʼ925 patent issued June 28, 2011, from U.S. Patent Application No.
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`12/832,576 filed January July 8, 2010.
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`The inventors of the ’925 patent observed that, at the time, multimedia
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`technologies for mobile devices depended upon a server that receives and prepares
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`multimedia content to be retrieved by the recipient of the multimedia content. For
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`example, at the time, the Multimedia Messaging Service (“MMS”) protocol utilized
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`a server known as a Multi-Media Service Center (“MMSC”) to store multimedia
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`content in preparation for a retrieval process initiated by the recipient. Specifically,
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`under MMS, the initiating device initiated a data connection over TCP/IP and
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`performed an HTTP POST of an MMS Encapsulation Format encoded multimedia
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`message to the MMSC. The MMSC stored the multimedia message and made it
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`available as a dynamically generated URL link. The MMSC then generated a
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`notification message containing the dynamically generated URL and sent the
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`notification message to the recipient through WAP Push over the Short Message
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`Service (“SMS”) protocol. When the recipient received the MMS notification
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`1
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`message, it initiated a data connection over TCP/IP and performed an HTTP request
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`to retrieve the MMS message containing multimedia content from the MMSC
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`through the dynamically generated URL. ’925 patent (Ex. 1001), 1:23‒42.
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`According to one example embodiment, a method and system is provided for
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`establishing a direct data transfer session between mobile devices over a digital
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`mobile network system that supports data packet-based communications. No
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`separate data server need be used to provide a known location from which a recipient
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`retrieves data such as multimedia content. A mobile device initiating a data transfer
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`opens a listening software port, which is configured for use with an underlying data
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`packet-based network protocol and for enabling a direct data transfer with a specific
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`target mobile device. The initiating mobile device sends an invitation message
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`containing the network address, including the listening port, of the initiating device
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`to the target mobile device through a page-mode messaging service (e.g., text-based
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`service) supported by the digital mobile network system. The initiating mobile
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`device may further utilize and incorporates a unique identification number (e.g.,
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`telephone number, PIN number, etc.) associated with the target mobile device into
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`the invitation message to locate and contact the target mobile device within the
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`wireless mobile network. Once the initiating mobile device receives a response from
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`the target mobile device at the listening software port, the two mobile devices may
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`establish a reliable virtual connection through the underlying data packet-based
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`network protocol in order to transfer data directly between the two mobile devices.
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`Id. at 1:61‒2:17.
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`2
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`III. RELATED PROCEEDINGS
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`The following pending cases concerns U.S. Pat. No. 7,969,925: Uniloc USA,
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`Inc. et al v. Apple Inc., Civ. No. 4-19-cv-01696, filed April 3, 2019 in the Northern
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`District of California.
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
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` The Petition alleges that “[a] person of ordinary skill in the art at the time of
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`the alleged invention of the 925 patent (a “POSITA”) would have had a Bachelor’s
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`degree in computer science or a comparable field of study, plus approximately two
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`to three years of professional experience with cellular phone and IP networks, or
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`other relevant industry experience.” Pet. 9. Given that Petitioner fails to meet its
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`burden of proof when purportedly applying its own definition of a person of ordinary
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`skill in the art, Patent Owner does not offer a competing definition for purposes of
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`this proceeding.
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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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`The Petition raises the following obvious challenges under Section 103:
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`Ground
`1
`2
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`Claims
`1, 3-8, 10-15, 17-20
`2, 9, and 16
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`Reference(s)
`Alos1, and RFC7932
`Alos, RFC793, and SMS Specification, 3 and
`WMA4
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`1 Ex. 1005, EP 1 099 153 A1.
`2 Ex. 1010, Request for Comment 793.
`3 Ex. 1014, SMS Specification.
`4 Ex. 1018, WMA.
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`3
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`3
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`5
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`1, 3-8, 10-15, 17-20
`2, 9, and 16
`1, 3-8, 10-15, 17-20
`2, 9, and 16
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`Cordenier5 and RFC793
`Cordenier, RFC793, and Dorenbosch6
`Lee,7 RFC793, and SMS Specification
`Lee, RFC793, SMS Specification, and WMA
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`A. Claim Construction
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`In IPR proceedings, claim terms are to be given a construction utilizing the
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`standard applied by Article III courts. 37 C.F.R. §42.100(b); Phillips v. AWH Corp.,
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`415 F.3d 1303 (Fed. Cir. 2005). Under Phillips, a claim term must be given “the
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`meaning that the term would have to a person of ordinary skill in the art in question
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`at the time of the invention.” Phillips, 415 F.3d at 1313. The Phillips standard
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`primarily focuses on intrinsic evidence, such as the patent specification and
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`prosecution history, to interpret the claim terms. Id. at 1317; see also 37 C.F.R.
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`§ 42.100(b).
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`Patent Owner submits that the Board need not expressly construe any claim
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`term in a particular manner in order to arrive at the conclusion that the Petition is
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`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
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`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
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`controversy”).
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`Patent Owner does not address herein all the claim terms Petitioner identified
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`in its section purporting to address claim construction. Pet. 20‒23. This should not
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`be taken as a concession that Petitioner’s proposed constructions are correct.
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`5 Ex. 1007, EP 1 385 323 A1.
`6 Ex. 1011, US Patent Application No. 2003/0217174.
`7 Ex. 1006, US Patent No. 6,847,632.
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`Rather, certain constructions Petitioner offers are simply not dispositive. This is at
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`least because fatal deficiencies would arise if those constructions are applied, even
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`if only for the sake of argument. Further, in at least once instance, Petitioner
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`identifies a term (“page-mode messaging service”) as purportedly not requiring
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`construction. Because the error in certain constructions Petitioner offers gives rise
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`to additional and substantive deficiencies, however, such error is addressed below.
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`1.
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`“opening a listening software port . . .” (claims 1, 8, and 15)
`and “opening a second listening software port . . .” (claims 2,
`9, and 16)
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`Independent claims 1, 8, and 15 (and hence all challenged claims) each recite
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`“opening a listening software port on an initiating mobile device to receive
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`communications
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`through
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`the data packet-based communications service.”
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`Dependent claims 2, 9, and 16 (which depend from claims 1, 8, and 15, respectfully)
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`each recite “opening a second listening software port on the initiating mobile device
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`to receive invitation messages through the page-mode messaging service.”
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`Petitioner impermissibly seeks to rewrite these “opening” limitations to recite,
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`instead, merely “associating a port identifier with a process.” Pet. 21‒22. Petitioner
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`acknowledged its construction is purposefully crafted to make certain that the port
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`need not “be opened exclusively for receiving a response from only the target
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`device.” Pet. 22.
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`The Board declined to adopt Petitioner’s construction in its Institution
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`Decision. Decision (Paper 7) at 8‒9. For purposes of trial, Petitioner’s untethered
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`construction should be outright rejected as violating fundamental canons of claim
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`construction and as directly refuted by the intrinsic evidence. Presumably, this is
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`why Petitioner cites no authority and ignores the intrinsic evidence altogether when
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`presenting its claim construction for the “opening” limitations. See Pet. 21‒22
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`(relying exclusively on extrinsic evidence in addressing construction of the
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`“opening” limitations).
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`Resolution of the dispute is warranted here because Petitioner’s reliance on
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`an incorrect claim construction for the “opening” limitations taints the entirety of
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`the Petition and provides an independent and fully dispositive basis for denial. See
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`Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569,
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`(Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor
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`Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (denying Petition as tainted
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`by reliance on an incorrect claim construction).
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`First, Petitioner’s attempt to replace the word “opening” with “associating”
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`fails to give effect to the meaningful and limiting term chosen by the patentee. See
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`K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) (“Courts do not
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`rewrite claims; instead, [Courts] give effect to the terms chosen by the patentee.”).
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`Indeed, Petitioner offers no explanation as to why “associating” is more appropriate
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`here. It would appear Petitioner’s proposed rewrite is merely intended to shore up
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`weaknesses in Petitioner’s strained obviousness challenges.
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`Second, Petitioner’s attempt to reduce the “opening” limitations as merely
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`purposed for “associating a port identifier with a process” (i.e., any process in
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`general) is inconsistent with the remainder of the limitation and the surrounding
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`6
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`context. As recited in claim 1, for example, the “opening” of the listening software
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`port is at least expressly tied to “receiv[ing] communications through the data
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`packet-based communications service” (i.e., the data packet-based communications
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`service introduced in the preamble of the claim). This is distinguishable on its face
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`from merely associating a port identifier with an unspecified “process.”
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`Finally, Petitioner’s fatal error is further underscored by its interpretation that
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`the claimed “initiating mobile device” need not listen at its newly-opened and
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`special-purpose “listening software port” for a “response from the target mobile
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`device” in particular, notwithstanding the explicit claim language to the contrary.
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`See Pet. 22. Petitioner appears to advance such a construction to gap-fill additional
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`fatal deficiencies in the Petition, as explained further below. See, e.g., Pet. 31
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`(alleging “[i]t would have been obvious to a POSITA to configure phone 1 to
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`passively open a TCP port in a listening state with an unspecified foreign host.”).
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`That the port must opened for a specific “target mobile device” identified in
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`an “invitation message” by a “unique identifier” known to the “initiating mobile
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`device” is made explicit in the claim language of each independent claim 1, 8, and
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`15. Furthermore, that the response must be received from that “target mobile
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`device” at the “listening software port” opened for that very purpose is also made
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`explicit. A construction that is inconsistent with this definitive context cannot be
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`correct, nor can any obviousness theory which applies such a clearly erroneous
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`construction.
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`7
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`The intrinsic evidence, which Petitioner ignores in advancing its claim
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`construction, is also conclusive on this point and provides additional reasons to
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`reject Petitioner’s untethered construction. In an embodiment described with
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`reference to Figure 2, for example, the ’925 patent offers the following description
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`of a special purpose for which the listening port is configured: “the initiating mobile
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`device opens a TCP port to listen for communications from the target mobile device
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`210.” Ex. 1001 4:38‒40; see also id. at 4:58‒62 (describing an alternative
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`embodiment with reference to Figure 3); Profoot, Inc. v. Merck & Co., 663 F. App’x
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`928, 932 (Fed. Cir. 2016) (“‘When a patent ‘repeatedly and consistently’
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`characterizes a claim term in a particular way, it is proper to construe the claim term
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`in accordance with that characterization.’”) (quoting GPNE Corp. v. Apple Inc., 830
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`F.3d 1365, 1370 (Fed. Cir. 2016)).
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`That the “opening” requirement must be directed to a specific “target mobile
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`device” is also unambiguously confirmed by the patentee’s remarks offered during
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`prosecution of a parent application of the ’925 patent. See generally Ex. 1004.8 For
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`example, when addressing the exact same claim language verbatim (i.e., “opening a
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`listening software port on an initiating mobile device to receive communications
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`through the data packet-based communications service”), the patentee explained that
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`this claim language “requires opening a listening software port on an initiating
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`mobile device every time the initiating mobile device desires to establish
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`8 Exhibit 1004 of the Petition is the file history of the parent application which issued
`as U.S. Pat. No. 7,961,663.
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`8
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`communications with a particular target mobile device.” Id. p. 316 (emphasis
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`added).
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`The patentee further unambiguously distinguished the same claim language at
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`issue here from, for example, (1) opening a port that indiscriminately “serves any
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`and all mobile terminals that desire setting up a connection” and (2) “leav[ing] open
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`one known connection to allow any number of devices to communicate with it.” Id.
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`pp. 316‒317. Petitioner’s untethered construction would erroneously recapture
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`subject matter applicant had unambiguously identified as being outside the claim
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`scope of this very same claim language.
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` Accordingly, for a myriad of reasons, Petitioner has failed to meet its burden
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`to prove that the “opening” limitations should be construed as proposed in the
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`Petition. The Petition should be rejected as tainted by its application of an incorrect
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`claim construction. See Mentor Graphics Corp., 669 Fed. Appx. 569. Even if the
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`Board were to adopt Petitioner’s construction, however, the Petition is nevertheless
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`deficient in its application of such a construction, as explained further below.
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`2.
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`Petitioner fails to explain why the Board should find there is
`no claimed relationship between the timing of any of the
`steps in these independent claims vis-à-vis any step recited in
`a respective dependent claim
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`Evidently recognizing weaknesses in its challenges of certain dependent
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`claims, Petitioner offers the conclusory statement, without explanation, that “[t]here
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`is no claimed relationship between the timing of any of the steps in these
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`independent claims vis-à-vis the steps in these dependent claims, such that the steps
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`9
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`of the dependent claims can be performed at any time before or after the steps of the
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`independent claims.” 9
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`Neither the Board nor Patent Owner should not be expected to parse the
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`limitations of the dependent claims and speculate as to why Petitioner concluded no
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`claimed relationship between claims is recited in terms of ordered steps.
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`Nevertheless, a counter example serves to illustrate the error in Petitioner’s
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`unexplained and unsupported interpretation. Absent from the Petition is any
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`explanation of how opening a “opening a second listening software port” should be
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`understood in the abstract, without reference to the same initiating mobile device
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`having first opened the listening software port recited in claim 1. Clearly, the word
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`“second” in this context is an explicit reference to a first port (of claim 1) having
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`been opened previously.
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`The Petition makes no attempt to prove obviousness under a construction that
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`recognizes at least an implicit (if not explicit) order between the antecedent timing
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`of the “opening” step of claim 1 vis-à-vis the opening step of claim 2. For this
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`additional and independent reason, claim 2 has not be shown to be obvious.
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`Analogous reasoning also applies to claims 9 and 16, which depend from claims 8
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`and 15, respectively. This counterexample is not intended to be exhaustive of all
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`9 In the absence of such an explanation by Petitioner for its claim construction
`position, Patent Owner is prejudiced in its ability to respond. By opting to not present
`the basis for its claim construction position in the Petition itself, Petition has waived
`such argumentative and evidentiary support. Patent Owner objects to any attempt
`Petition may make to lie behind the log and introduce new argument and evidence
`for the first time in its Reply brief.
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`10
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`ordered steps. Rather, it serves to illustrate that Petitioner has failed to meet its
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`burden to prove obviousness under its theory that there is no claimed relationship
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`between the timing of certain steps.
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`B.
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`Petitioner’s assertion of RFC793 relies upon an incorrect claim
`construction and fails to cure conceded deficiencies of the primary
`references for the limitations directed to “opening a listening
`software port . . .” (Grounds 1‒6, all challenged claims)
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`While the Petition advances six different grounds, every challenge is tainted
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`by Petitioner’s erroneous construction for “opening a listening software port on an
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`initiating mobile device to receive communications through the data packet-based
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`communications service,” as recited in independent claims 1, 8, and 15 (and hence
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`all challenged claims). See §V.A.1, supra (addressing claim construction of the
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`“opening” limitations). The term “the packet-based communications service”
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`derives its antecedent basis from the recitation in the preamble, “[a] method of
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`establishing a direct data transfer session between mobile devices that support a data
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`packet-based communications service over a digital mobile network system.”
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`The Petition concedes that none of the respective primary references cited in
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`Grounds 1‒6 (i.e., Alos for Grounds 1‒2, Cordenier for Grounds 3‒4, and Lee for
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`Grounds 5‒6) disclose the limitations directed to “opening a listening software
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`port . . . .” See Pet. 25, 47, 60. According to Petitioner, “[a] POSITA would have
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`been motivated to incorporate the use of TCP and TCP ports as disclosed in RFC793
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`in connection with” each one of the primary references. Id. at 26 (for Alos), at 43
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`(for Cordenier), and at 57 (for Lee). Petitioner’s redundant combinations expressly
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`rely on the same reasoning and hence are all tainted by analogous deficiencies.
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`1.
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`Petitioner expressly relies solely an alleged “opening” that is
`not specific to a “target mobile device”
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`Petitioner’s erroneous claim construction for 1.a, 8.a, and 15.a. (i.e., the
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`“opening” limitations) is laid bare in its repeated assertion that “[i]t would have been
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`obvious to a POSITA to configure phone 1 to passively open a TCP port in a
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`listening state with an unspecified foreign host so that the TCP/IP response message
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`from the as-yet unknown socket address at phone 2 could be received at phone 1.”
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`See Pet. 31 (Grounds 1‒2) (emphasis added); see also id. at 47 (Grounds 3‒4) and
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`60 (Grounds 5‒6).
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`As explained above, certain intrinsic evidence (which the Petition ignores)
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`unambiguously states that the claimed “opening” must be directed to a specified
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`“target mobile device” for the specific purpose set forth in the claim language itself.
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`See §V.A.1, supra (addressing claim construction of the “opening” limitations).
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`Moreover, the patentee explicitly distinguished this claim language at least from
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`(1) opening a port that indiscriminately “serves any and all mobile terminals that
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`desire setting up a connection” and from (2) “leav[ing] open one known connection
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`to allow any number of devices to communicate with it.” Id. (citing Ex. 1004 p.
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`316‒317).
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`Accordingly, the redundant obviousness theories advanced in the Petition (in
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`addressing limitations 1.a, 8.a, and 15.a) are each tainted by an incorrect claim
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`construction that would impermissibly recapture subject matter unambiguously
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`disclaimed by relevant intrinsic evidence. See §V.A.1, supra.
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`2.
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`Petitioner undermines its challenges by acknowledging a
`POSITA would likely use “well-known” sockets if combining
`RFC793 with any of the cited primary references
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`Petitioner further undermines its argument by asserting that a POSITA would
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`likely use an “assumed” port applicable to all devices in general, as opposed to
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`opening a new one specified for a target mobile device in particular, if combining
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`RFC793 with any of the primary references. See, e.g., Pet. 28 (“A POSITA would
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`understand that this port likely would . . . be assumed (e.g., a well-known port).”);
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`id. at 44 (same). Petitioner gives the example of “well-known ports such as FTP,
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`telnet, http etc.” Id. Contrary to what is suggested in the Petition, the qualifier “well-
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`known” in this context does not refer to the knowledge of those skilled in the art at
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`the time. Rather, it is itself a term of art used to describe the nature of the port itself.
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`A referenced submitted by Petitioner (Ex. 1010) described “well-known
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`sockets” as follows:
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`Ex. 1010 at 20 (highlighting and underlining added). The above passage discloses
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`that “well-known sockets” are “permanently assigned to a particular socket” and are
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`indiscriminately made available “a priori” to all devices in general. Id.
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`13
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`A port that is permanently assigned and made available a priori to all devices
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`in general is not one that even available for “opening” as claimed. This axiomatic
`
`distinction is further confirmed at least by patentee’s relevant remarks addressed
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`above. See §V.A.1, supra. For example, the patentee stated that this claim language
`
`should be understood to require “opening a listening software port on an initiating
`
`mobile device every time the initiating mobile device desires to establish
`
`communications with a particular target mobile device.” Ex. 1004 p. 316 (emphasis
`
`added).
`
`
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`Moreover, the patentee explained (in addressing analogous claim language of
`
`the parent application) that even in the context of TCP, a “well-known” port is
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`distinguishable. The patentee offered the following explanation in a footnote to an
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`appeal brief before the PTAB:
`
`Please refer to Annex D for examples of well-known TCP ports for
`well-known Internet services such as FTP servers (port 20), telnet
`server (port 23), and HTTP servers (port 80) Such well-known TCP
`ports are not opened by default on mobile devices because mobile
`devices do not run servers for data packet based communications
`services by default. Furthermore, because such well-known ports are
`“well-known”,
`they available
`to any computer desiring
`to
`communicate the computer having the opened port and are therefore
`not opened for a specific target mobile device, as required by claim 1.
`
`Ex. 1004 p. 416.
`
`In view of at least the intrinsic, and certain extrinsic evidence filed by
`
`Petitioner, there can be no question that the “opening” limitations are plainly
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`distinguishable from permanently-assigned ports which are technically classified as
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`“well-known” because they are generally known by, and hence available to, any
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`IPR2019-00702
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`foreign computer. Thus, Petitioner’s assertion that a POSITA would most likely be
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`motivated to use such “well-known” ports, if combining RFC793 with any given one
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`of the cited primary references, only undermines the contrary conclusion that there
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`would be sufficient motivation to modify in a manner that would, instead, satisfy the
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`plainly distinguishable claim language.
`
`3.
`
`Petitioner fails to prove the use of TCP in RFC793 cures the
`conceded deficiencies of the primary references (Alos,
`Cordenier, and Lee)
`
`As an additional and independent basis for denying the Petition in its entirety,
`
`Petitioner’s reliance on the cited description of TCP in RFC793 essentially rehashes
`
`the same argument that the patentee persuasively addressed in a parent application.
`
`See Ex. 1004 pp. 414‒416. Petitioner mischaracterizes the ’925 patent, the
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`prosecution history of a parent application (filed as Ex. 1004), and the claim
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`language itself in falsely asserting that the specification “simply states that ports may
`
`be opened and used without any further explanation.” Pet. 10‒11 (citing Exhibit
`
`1004). According to Petitioner, the claim language directed to “opening a listening
`
`software port” is obviousness simply because any mobile device necessarily must
`
`open a listening software port to operate and communicate with other devices. Id.
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`The patentee successfully traversed this same argument during prosecution of
`
`the parent application. For example, in an appeal brief before the PTAB addressing
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`a parent application,
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`the patentee summarized an examiner rejection as
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`“maintain[ing] that opening a listening software port is implicit [in the cited art] and
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`that any mobile device necessarily has to open a listening software port just to
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`operate and communicate with other devices.” Ex. 1004 pp. 414‒416. The patentee
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`traversed this understanding by explaining why the claimed invention was
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`distinguishable from merely opening a conventional TCP port. Id.
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`One example point of distinction was that conventional TCP ports of the time
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`were opened on servers, and “[were] not opened by default on mobile devices
`
`because mobile devices do not run servers for data packet[-]based communication
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`services by default.” Id. p. 415 n.4 (emphasis added). The applicant further
`
`submitted that “no mobile device” at that time by default opens the specific type of
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`listening software port disclosed and claimed—i.e., a special-purpose port opened to
`
`establish a direct data transfer session between the initiating mobile device and the
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`target mobile device through the data packet-based communications service. Id. p.
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`416.
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`Another point of distinction over opening conventional ports in general
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`focused on the specific type of port opening required by the claim language. The
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`Patentee raised the axiomatic point that a port “opened to receive communications
`
`through the data packet-based communications service” is plainly distinguishable
`
`from a port opened, instead, for something other than receiving communications
`
`through a data packet-based communications service. To clarify, the patentee
`
`explained that “[a]s described herein, ‘packet switching’ contrasts ‘circuit
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`switching.’” Ex. 1004 p. 420.10 The applicant provided that statement in boldface
`
`
`10 Exhibit 1004 of the Petition is the file history of the parent application which
`issued as U.S. Pat. No. 7,961,663.
`
`16
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`
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`annotations to an exhibit filed in an appeal brief before the PTAB, as shown by the
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`screenshot below.
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`IPR2019-00702
`U.S. Patent 7,969,925
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`Id.; see also id. p. 314 (“Please refer to both Annex A and Annex B for a description
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`of the difference between circuit switched data transmission and packet[-]based data
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`transmission.”). The Applicant further unambiguously stated that “a ‘data packet
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`based communications service’ as used in claim 1 is a different data transmission
`
`service than . . . circuit based communications service, as distinguished herein.” Id.
`
`p. 419 (underlining and emphasis original).
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`Accordingly, the intrinsic evidence speaks for itself in refuting Petitioner’s
`
`assertion that the “opening” limitations recite nothing more than what was
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`conventional and inherently required in establishing any communication over TCP.
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`C.
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`Petitioner overlooks additional demonstrable facts further
`refuting the alleged motivation to combine Alos and RFC793
`
`The Petition overlooks additional record evidence further refuting the alleged
`
`motivation to combine Alos and RFC793. It is well established that a proposed
`
`combination that would change the basic principles under which a cited reference
`
`was designed to operate undermines a conclusion of obviousness. See Plas-Pak
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`Indus., Inc. v. Sulzer Mixpac AG, 600 Fed. Appx. 755, 759 (Fed. Cir. 2015).
`
`Petitioner argues it would have been obvious to modify Alos (purportedly
`
`based on RFC793) to open a port to receive communication. However, Petitioner
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`overlooks the fact that Alos’ station 1 receives communications on line 13 of the
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`Switched Telephone Network or “STN”—i.e., not a packet-based communication
`
`service. This is illustrated in Figure 1 of Alos, reproduced and annotated below.
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`line 13 of the Switched
`Telephone Network “STN”
`
`
`Alos (Ex. 1005), Fig. 1.
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`18
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`IPR2019-00702
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`As expl
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