Paper: 7
`Trials@uspto.gov
`571-272-7822 Entered: September 16, 2019
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC
`Patent Owner.
`____________
`
`Case IPR2019-00753
`Patent 7,587,207 B2
`____________
`
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`Opinion of the Board filed by Administrative Patent Judge SMITH.
`Opinion Dissenting filed by Administrative Patent Judge HORVATH.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: September 16, 2019
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC
`Patent Owner.
`____________
`
`Case IPR2019-00753
`Patent 7,587,207 B2
`____________
`
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`Opinion of the Board filed by Administrative Patent Judge SMITH.
`Opinion Dissenting filed by Administrative Patent Judge HORVATH.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2019-00753
`Patent 7,587,207 B2
`
`
`I. INTRODUCTION
`Petitioner filed a Petition requesting inter partes review of claims 1–3,
`5, 6, and 9–11 of U.S. Patent No. 7,587,207 B2 (“the ’207 patent”). Paper 2.
`Patent Owner filed a Preliminary Response. Paper 6.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted unless the information presented in the Petition shows “there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” After considering the
`Petition, Preliminary Response, and associated evidence, we do not institute
`an inter partes review.
`
`A. Related Matters
`The parties state that the ’207 patent is the subject of Uniloc USA, Inc.
`et al. v. Apple Inc., No. 1:18-cv-00159 (W.D. Tex. 2018). Pet. 2; Paper 4, 2.
`B. Real Parties in Interest
`Petitioner identifies itself as the real party in interest. Pet. 46. Patent
`Owner identifies itself as the real party in interest. Paper 3.
`C. The ’207 Patent
`The ’207 patent relates to a communications system that includes a
`beacon device that transmits wireless messages and a portable device that
`receives the messages. Ex. 1001 [57]. The beacon broadcasts a series of
`inquiry messages, each in the form of predetermined data fields arranged
`according to a Bluetooth protocol. Id. For the delivery of additional data
`via broadcast, and in particular, data including location information, the
`beacon adds to each inquiry message prior to transmission an additional data
`field carrying broadcast data. Id. The portable device receives the
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`transmitted inquiry messages including the location data and reads the
`broadcast data from the additional data field. Id.
`D. Illustrative Claim
`Of the challenged claims, 1 and 9 are independent. Claim 1 is
`reproduced below.
`1. A communications system comprising
`at least one beacon device capable of wireless message
`transmission and
`at least one portable device capable of receiving such a
`message transmission,
`wherein the beacon is arranged to broadcast a series of
`inquiry messages each in the form of a plurality of predetermined
`data fields arranged according to a first communications
`protocol,
`wherein the beacon is further arranged to add to each
`inquiry message prior to transmission an additional data field,
`and
`
`wherein the beacon is further arranged to include an
`indication in one of said predetermined data fields, said
`indication denoting the presence of said additional data field, and
`wherein the at least one portable device is arranged to
`receive the transmitted inquiry messages and read data from said
`additional data field, the additional data field including location
`information.
`
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`
`E. Asserted Ground of Unpatentability
`Petitioner asserts the following ground of unpatentability:
`References
`Basis Claims
`McCall1, BT Core2, Hancock3, and
`§ 103 1–3, 5, 6, and 9–11
`Larsson4
`
`II. ANALYSIS
`A. Claim Construction
`In this inter partes review, claims are 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). 37 C.F.R. § 42.100(b) (2019). The claim
`construction standard includes construing 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 id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005).
`For purposes of this Decision, we need not expressly construe any
`claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the
`context of an inter partes review).
`
`1 U.S. Patent No. 6,738,628 B1, issued May 18, 2004 and filed Feb. 16, 2000
`(Ex. 1005, “McCall”).
`2 Bluetooth™ Core Specification Vol. 1, ver. 1.0 B, published Dec. 1, 1999
`(Ex. 1007, “BT Core”).
`3 U.S. Patent No. 5,806,017, issued Sept. 8, 1998 (Ex. 1006, “Hancock”).
`4 U.S. Patent No. 6,704,293 B1, issued Mar. 9, 2004 and filed Dec. 6, 1999
`(Ex. 1014, “Larsson”).
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`B. Asserted Obviousness over McCall, BT Core, Hancock, and Larsson
`Petitioner contends claims 1–3, 5, 6, and 9–11 are unpatentable over
`the combination of McCall, BT Core, Hancock, and Larsson. Pet. 8–45. To
`support this contention, Petitioner relies on the declaration testimony of Dr.
`Charles Knutson. Id.; Ex. 1003.
`1. McCall (Ex. 1005)
`McCall describes tracking objects within a building using a radio
`device associated with each object and an array of transmitting beacons. Ex.
`1005, [57]. The beacons can be part of an existing wireless communication
`system using Bluetooth technology. Id. at 2:47–52, 5:6–27. Each beacon
`transmits identifying data. Id. An object receives identifying data from a
`beacon and sends the identifying data to a server. Id. The server computes
`the physical location of the object from the identifying data. Id. at 4:40–41.
`The object may also compute its position locally, without reference to an
`external system. Id. at 4:64–66.
`2. BT Core (Ex. 1007)
`BT Core “defines the requirements for a Bluetooth transceiver.” Ex.
`1007, 18. “In the Bluetooth system, an inquiry procedure . . . is used in
`applications where the destination’s device address is unknown to the
`source.” Id. at 108. In the inquiry procedure, the inquiry message is the
`access code, which has a fixed length of 68 bits, and has neither a header nor
`a payload. Id. (“[T]he inquiry message . . . is the ID packet.”); see id. at 55
`(The “ID packet consists of the . . . inquiry access code (IAC) [and] has a
`fixed length of 68 bits.”); id. at 48 (In the case of inquiry procedures, “the
`access code itself is used as the signaling message, and neither a header nor
`
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`a payload is present.”). The inquiry message does not contain any
`information about the source. Id. at 108.
`3. Hancock (Ex. 1006)
`Hancock describes location beacons that each transmit an infrared
`(IR) signal that includes the location of the beacon. Ex. 1006, 2:16–22. For
`example, the signal can include the room number of the beacon. Id. at 7:14–
`25, Fig. 4.
`
`4. Larsson (Ex. 1014)
`Larsson describes a method for combining a broadcast message and a
`route discovery message. Ex. 1014, [57].
`5. Analysis
`Claim 1 recites “a least one beacon device capable of wireless
`message transmission.” Claim 1 further recites, “wherein the beacon is
`arranged to broadcast a series of inquiry messages.” Petitioner contends that
`McCall discloses beacons 102–112 that wirelessly communicate over a
`Bluetooth network with assets 120, 122 to provide location information.
`Pet. 28–29. Petitioner further contends that the “location information is
`transmitted (continuously or intermittently) using a Bluetooth inquiry
`message.” Pet. 28–29 (citing Ex. 1005, 4:10–32). Dr. Knutson makes a
`similar statement. Ex. 1003 ¶¶ 77, 79 (citing Ex. 1005, 4:10–32).
`The cited section of McCall discloses that the beacon may transmit
`“this signal . . . in response to a request from an asset 120, 122 or the beacon
`may transmit the signal continuously or intermittently without a request
`being received from the asset.” Ex. 1005, 4:29–32 (emphasis added). The
`cited section of McCall does not disclose that “the signal” transmitted by the
`beacon is an inquiry message.
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`
`While McCall discloses using existing Bluetooth technology (Ex.
`1005, 2:47–52, 5:6–27), Petitioner has not shown that the signal transmitted
`by the beacons 102–112 containing a unique ID is an inquiry message. BT
`Core describes that in existing Bluetooth inquiry messages, “the access code
`itself is used as a signalling message and neither a header nor a payload is
`present.” Ex. 1007, 48. BT Core also describes that “[t]he inquiry message
`broadcasted by the source does not contain any information about the
`source.” Ex. 1007, 108. Petitioner has not explained how McCall’s beacons
`that use existing Bluetooth technology transmit location information using a
`Bluetooth inquiry message, given that the Bluetooth inquiry message only
`uses the access code, does not have a payload, and does not contain any
`information about the source.
`The Petition does not persuasively show that McCall discloses
`transmitting location information continuously or intermittently using a
`Bluetooth inquiry message.
`Claim 1 recites, “wherein the beacon is further arranged to add to each
`inquiry message prior to transmission an additional data field.” Claim 9
`recites a similar limitation. Petitioner contends that a person of ordinary
`skill in the art would have modified the structure of a Bluetooth inquiry
`message by adding a payload field to a Bluetooth inquiry packet to
`accommodate Hancock’s beacon location information. Pet. 31–32 (citing
`Ex. 1003 ¶¶ 82, 84). Dr. Knutson testifies, “it would have been obvious . . .
`that McCall implicates modifying the structure of the standard inquiry
`message to accommodate Hancock’s beacon location information by adding
`an additional payload field to . . . a standard inquiry message.” Ex. 1003
`¶ 84; see id. ¶ 82.
`
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`
`However, we do not give much weight to this testimony because it is
`conclusory. 37 C.F.R. § 42.65(a). Dr. Knutson does not explain how
`McCall “implicates modifying the structure of the standard inquiry
`message,” given that McCall describes using existing Bluetooth technology,
`not modifying existing Bluetooth technology. Ex. 1005, 2:47–52, 5:5–57.
`In an existing Bluetooth inquiry procedure, “the access code itself is used as
`a signalling message and neither a header nor a payload is present.” Ex.
`1007, 48. Also, the inquiry message has a fixed length of 68 bits, and does
`not contain any information about the source. Ex. 1007, 48, 55, 108. Dr.
`Knutson does not explain how the beacon of McCall, using existing
`Bluetooth technology in which an inquiry message has neither a header nor a
`payload, has a fixed length of 68 bits, and does not contain any information
`about the beacon, implicates modifying the structure of the standard inquiry
`message to accommodate location information of the beacon.
`Petitioner also contends that McCall discloses a transmitter-only
`embodiment of a beacon, in which the beacon can only send information in
`Bluetooth by transmitting an inquiry message. Pet. 31 (citing Ex. 1005,
`4:10–16, 5:5–27, 2:47–52, Abstract; Ex. 1007, 108–10; Ex. 1003 ¶ 83).
`However, the cited sections of McCall and BT Core do not disclose that the
`beacon in the transmitter-only embodiment of McCall can only send
`information in Bluetooth by transmitting an inquiry message. Also, the cited
`paragraph of Dr. Knutson’s testimony does not state that the beacon in the
`transmitter-only embodiment of McCall can only send information using an
`inquiry message.
`In an earlier paragraph, Dr. Knutson testifies, “in McCall’s
`transmitter-only embodiment, . . . [t]he only way the beacon can provide
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`information to another device is through a pre-connection inquiry message.
`It appears obvious to me that McCall’s transmitter-only embodiment would
`therefore involve transmitting location tracking information . . . using a
`Bluetooth inquiry message.” Ex. 1003 ¶ 52. However, Dr. Knutson does
`not cite to any underlying facts that support his conclusion that the only way
`the beacon in McCall’s transmitter-only embodiment can provide
`information to another device is through a pre-connection inquiry message.
`We do not give much weight to Dr. Knutson’s conclusory testimony. 37
`C.F.R. § 42.65(a). We are not persuaded that the beacon of McCall’s
`transmitter-only embodiment can only send information in Bluetooth by
`transmitting an inquiry message.
`Petitioner contends that McCall, BT Core, and Hancock disclose
`sending location information to an asset.5 Pet. 31–32 (citing Ex. 1007, 48;
`Ex. 1005, 3:63–4:67, Fig. 3; Ex. 1006, 7:5–8:3, 3:57–4:34). McCall
`discloses transmitting a beacon identifier using existing Bluetooth
`technology. Ex. 1005, 2:47–52, 4:10–11, 5:6–27. Hancock discloses that
`the beacon identifier includes the room number of the beacon. Ex. 1006,
`7:14–19. BT Core discloses that a Bluetooth inquiry message transmitted
`from a source does not contain any information about the source. Ex. 1007,
`108; Pet. 31 (“A standard inquiry message only includes predetermined
`access code fields”). The combination teaches, at best, transmitting a
`beacon identifier using a Bluetooth transmitter as taught by McCall, where
`
`
`5 Petitioner also mentions Larsson in this section of the Petition, but does not
`cite to a specific section of Larsson, nor explain how Larsson would cure the
`deficiencies of the teachings of McCall, BT Core, and Hancock. See Pet.
`31–32.
`
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`the beacon identifier includes the room number of the beacon as taught by
`Hancock, in a message other than an inquiry message. Petitioner has not
`sufficiently shown that McCall’s beacon signal is an inquiry message that
`contains information about the source. We are not persuaded that the
`combination of McCall, BT Core, and Hancock teaches transmitting the
`beacon identifier in a Bluetooth inquiry message.
`Patent Owner contends that the Petition argues that (1) McCall
`discloses a beacon without a receiver, (2) BT Core discloses the Bluetooth
`specification, which includes a standard inquiry message that does not
`include a header or payload field, and (3) Hancock discloses providing
`information regarding the location of its beacons. Prelim. Resp. 11. Patent
`Owner contends that the Petition merely concludes that it would have been
`obvious for a person of ordinary skill in the art to make unstated
`intermediate steps and modifications to arrive at a system that allegedly
`reads on “add to each inquiry message . . . an additional data field” as recited
`in claim 1. Id. Patent Owner contends that Petitioner relies on improper
`hindsight reconstruction, and does not show that the combination of McCall,
`BT Core, and Hancock discloses the claimed “add to each inquiry message
`. . . an additional data field.” In particular, Patent Owner contends that the
`Petition does not explain why a transmitter that cannot receive an inquiry
`response message would (a) send inquiry messages and (b) add an additional
`data field to the inquiry message, rather than choose an alternative that does
`not require modifying the standard Bluetooth inquiry message. Prelim.
`Resp. 13–14.
`We agree with Patent Owner that the combination of McCall, BT
`Core, and Hancock does not teach the claimed “add to each inquiry message
`
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`. . . an additional data field.” Specifically, Petitioner has not shown that
`using a beacon’s room number as a beacon identifier as taught by Hancock,
`then transmitting the beacon identifier using existing Bluetooth technology
`as taught by McCall and BT Core, yields “add to each inquiry message . . .
`an additional data field” as claimed. Also, Dr. Knutson’s testimony that
`McCall “implicates modifying the structure of the standard inquiry message”
`(Ex. 1003 ¶ 84) is inconsistent with McCall’s disclosure of using existing
`Bluetooth technology, and BT Core’s disclosure that the standard Bluetooth
`inquiry message is the access code, which has a fixed length of 68 bits, and
`has neither a header nor a payload. We also agree with Patent Owner that
`the Petition does not explain why a transmitter that uses existing Bluetooth
`technology and cannot receive an inquiry response message (a) would send
`inquiry messages, and (b) would add an additional data field to the inquiry
`message, rather than use an existing alternative that does not require
`modifying the standard Bluetooth inquiry message.
`The Supreme Court has warned against a “temptation to read into the
`prior art the teachings of the invention in issue,” and instructed “courts to
`guard against slipping into the use of hindsight.” KSR Int’l Co. v. Teleflex,
`Inc., 550 U.S. 398, 421 (2007). Here, Petitioner has not shown that the prior
`art teaches to “add to each inquiry message . . . an additional data field” as
`claimed. Petitioner and Dr. Knutson “read into the prior art the teachings of
`the invention in issue” to yield “add to each inquiry message . . . an
`additional data field” as claimed.
`Petitioner does not sufficiently show that the combination of McCall,
`BT Core, Hancock, and Larsson teaches to “add to each inquiry message . . .
`an additional data field” as recited in independent claims 1 and 9. On the
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`record before us, we determine the Petition and supporting evidence to
`which we are directed do not adequately establish a reasonable likelihood
`that Petitioner would prevail on its assertion that the combination of McCall,
`BT Core, Hancock, and Larsson renders claims 1–3, 5, 6, and 9–11 obvious.
`
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition does not establish that there is a reasonable
`likelihood that Petitioner would prevail with respect to claims 1–3, 5, 6, and
`9–11 of the ’207 patent.
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`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied.
`
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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.
`____________
`
`Case IPR2019-00753
`Patent 7,587,207 B2
`____________
`
`
`HORVATH, Administrative Patent Judge, dissenting
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`I. INTRODUCTION
`The majority denies the petition because it finds “McCall does not
`disclose that ‘the signal’ transmitted by the beacon is an inquiry message,”
`and gives little weight to Dr. Knutson’s opinion that “McCall ‘implicates
`modifying the structure of the standard inquiry message,’ given that McCall
`describes using existing Bluetooth technology, not modifying existing
`Bluetooth technology.” Dec. 7–8. I respectively disagree, and dissent from
`the majority’s decision denying institution of inter partes review. For the
`reasons discussed below, I find Petitioner has sufficiently demonstrated a
`reasonable likelihood of showing that at least claim 1 of the ’207 patent is
`unpatentable over the combination of McCall, BT Core, Hancock, and
`Larsson, and would therefore institute inter partes review of all claims and
`grounds raised in the Petition. See 35 U.S.C. § 314(a).
`
`II. ANALYSIS
`A. Law of Obviousness
`A claimed invention is obvious when “the differences between the
`claimed invention and the prior art are such that the claimed invention as a
`whole would have been obvious . . . to a person having ordinary skill in the
`art to which the claimed invention pertains.” 35 U.S.C. § 103(a). The test
`for obviousness is “whether the teachings of the prior art, taken as a whole,
`would have made obvious the claimed invention.” In re Gorman, 933 F.2d
`982, 986 (Fed. Cir. 1991) (emphasis added). The test “is not whether . . . the
`claimed invention [is] expressly suggested in any one or all of the
`references,” but rather “what the combined teachings of the references would
`
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`have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d
`413, 425 (Fed. Cir. 1981) (emphasis added). Thus, “the Board must weigh
`each reference for its power to suggest solutions to an artisan of ordinary
`skill.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
`
`B. The McCall, BT Core, Larsson, and Hancock Combination
`Petitioner argues claim 1 is obvious over the combination of McCall,
`BT Core, Larsson, and Hancock. See Pet. 26–37. Petitioner’s analysis
`begins by explaining the teachings of McCall. Id. at 9–11. McCall teaches
`tracking moveable objects “within a building using a radio device associated
`with each object . . . and an array of transmitting beacons.” Ex. 1005 [53],
`Fig. 1. “The beacons can be part of an existing wireless communication
`system using, for example, the Bluetooth protocol.” Id. at 2:47–49. A
`beacon uses Bluetooth signaling to send its beacon identifier (“beacon ID”)
`to the object. Id. at 4:26–44, 5:6–8, Fig. 3 (steps 304–306). The object uses
`the beacon ID to obtain the beacon’s location from a server. Id. at 4:35–43,
`4:48–54, Fig. 3 (steps 310, 312). In one embodiment, McCall teaches the
`beacon ID is transmitted to the object in response to a request from the
`object. Id. at 4:1–3. In another embodiment, McCall teaches the “beacon
`does not have a receiver,” and, therefore, “transmits its identifying signal
`[i.e., beacon ID] continuously, or at intervals” to the object. Id. at 4:10–16,
`4:26–32.
`Petitioner argues it would have been obvious to modify McCall based
`on the teachings of Hancock. See Pet. 24–28. Hancock teaches a
`“navigation system for directing one or more visually impaired persons to a
`physical location.” Ex. 1006, 2:1–3. The system includes “location beacons
`
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`that send out location and direction information without being polled by a
`portable unit.” Id. at 2:3–15, 3:57–4:1. The portable unit “receive[s] these
`transmissions[] to determine a routing path from [a] user’s current location
`to [a] target location.” Id. at 4:1–5. Petitioner argues it would have been
`obvious to modify McCall’s receiverless beacon to transmit its location
`rather than its beacon ID because “Hancock directly transmits a beacon’s
`location to a receiving device so the receiving device can directly determine
`the location without sending data to a server.” Pet. 26. Petitioner argues this
`modification involves no more than “the simple substitution of one known
`element for another.” Id. at 27 (citing Ex. 1003 ¶ 73). Petitioner further
`argues the modification would have been obvious because it would eliminate
`the need for McCall’s moving object (receiver) to obtain beacon location
`information from a server, thereby increasing networking efficiency. Id.
`Petitioner acknowledges that McCall fails to teach the implementation
`details of its invention, particular the Bluetooth signaling implementation
`details. See Pet. 13 (“McCall does not explicitly disclose all details of how
`Bluetooth communications would be implemented.”). For this reason,
`Petitioner argues a person skilled in the art “would have combined the
`teachings of McCall and BT Core to fully realize the implementation of
`Bluetooth in McCall’s device tracking method.” Id. at 13–14 (citing Ex.
`1003 ¶ 49). This is neither speculation nor hindsight reasoning on the part
`of Petitioner or Dr. Knutson. McCall expressly teaches a moving object
`determines its location from information transmitted by a beacon that is
`“part of an existing wireless communication system using, for example, the
`Bluetooth protocol.” Ex. 1005, 2:47–49. Thus, I agree with Petitioner that a
`skilled artisan would have considered the teachings of BT Core to
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`understand how McCall’s invention, as modified by Hancock, could be
`implemented in a Bluetooth environment.
`Petitioner next provides an overview of BT Core, a Bluetooth
`document “that describes standard features of the Bluetooth communications
`protocol.” Pet. 11–13. BT Core discloses that information is transmitted
`over Bluetooth networks using a packet format that generally consists of an
`access code, header, and payload. Ex. 1007, 47. Moreover, BT Core
`discloses different specialized packet formats, including packets consisting
`of (i) an access code only, (ii) an access code and header only, or (iii) an
`access code, header, and payload. Id. BT Core further discloses that when a
`transmitter (source) wants to communicate with an unknown receiver
`(destination) it must first broadcast an inquiry message. Id. at 108 (“[A]n
`inquiry procedure is defined which is used in applications where the
`destination’s device address is unknown to the source.”). An inquiry
`message packet consists of a preamble, sync word, and optional trailer, and
`includes an inquiry access code (IAC) (i.e., either a general (GIAC) or
`dedicated (DIAC) access code) that identifies the devices to which an
`inquiry packet broadcast is directed. Id. at 48, 108. A transmitter can only
`establish a network connection with a receiver when the receiver responds to
`an inquiry message with an inquiry response message containing the
`receiver’s address. Id. at 111.
`After explaining these basic Bluetooth signaling principles, Petitioner
`argues that because “the inquiry message is the initial message used in the
`Bluetooth protocol” and McCall’s receiverless beacon “cannot receive any
`message” (e.g., an inquiry response message needed to establish a network
`connection), “the only way [McCall’s receiverless] beacon can provide
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`information to another device using Bluetooth is through the pre-connection
`inquiry message.” Pet. 14–15 (citing Ex. 1003 ¶¶ 51–52; Ex. 1007, 108–
`110). Therefore, Petitioner argues, a person skilled in the art “would readily
`appreciate the need to modify the structure of the standard inquiry message
`such that [McCall’s] beacon ID is included in the inquiry message in
`addition to the preamble, sync word, and (optional) trailer fields of the
`access code of the inquiry message.” Id. at 15 (citing Ex. 1003 ¶¶ 53–56).
`This too is more than mere speculation on the part of Petitioner and
`Dr. Knutson. As discussed above, McCall teaches a receiverless beacon
`using Bluetooth signaling to send its beacon ID to an unknown object
`(receiver). BT Core teaches a Bluetooth transmitter (beacon) initially
`communicates with an unknown receiver (object) by broadcasting an inquiry
`message. BT Core further teaches the transmitter can only establish a
`network connection with the receiver upon receiving an inquiry response
`message containing the receiver’s address. Thus, because McCall’s
`receiverless beacon cannot receive an inquiry response message, the only
`way McCall’s receiverless beacon can transmit its beacon ID to the receiver
`is via the inquiry message. Moreover, because BT Core teaches the standard
`inquiry message consists of a preamble and sync word without a header or
`payload, the only way McCall’s receiverless beacon can transmit its beacon
`ID to the unknown receiver is to modify the standard Bluetooth inquiry
`message.
`Having thus explained why a person skilled in the art would have
`modified a Bluetooth inquiry message to implement McCall’s teaching that
`a receiverless beacon transmits information (e.g., its beacon ID or location)
`to an unknown receiver, Petitioner proceeds to demonstrate how the
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`Bluetooth inquiry message could have been modified to achieve this result.
`See Pet. 18–24. First, Petitioner acknowledges, “the standard fields of a
`Bluetooth inquiry message do not include a payload field needed to convey
`data.” Id. at 15–16 (citing Ex. 1003 ¶¶ 53–56). Therefore, Petitioner argues,
`a person skilled in the art would have “add[ed] an additional field to the
`standard inquiry message,” and in particular, would have “add[ed] the
`standard Bluetooth payload field to the inquiry message.” Id. at 16.
`Petitioner relies on the teachings of Larsson to explain how this could be
`done, and why a person skilled in the art would have considered it. Id. at
`18–20.
`Larsson teaches a Bluetooth source (transmitter) that “piggybacks [a]
`broadcast message in a request for route broadcast message” when the
`source “does not expect a reply to the broadcast message.” Ex. 1014, 6:3–6,
`Fig. 6A. For example, Larsson “piggybacks [an] ARP,6 name resolution or
`DHCP7 message in a network adaptation layer route request broadcast
`message.” Id. at 7:50–53. Larsson does this to “minimize the number of
`broadcast messages required for setting up a route,” and to “lower the delay
`at the source node by speeding up the signaling required to set up [the]
`route.” Id. at 4:5–8, 4:32–36. To indicate that a piggybacked ARP or
`DHCP message has been appended to the route request message, Larsson
`teaches inserting “a piggyback indicator . . . in the network adaptation layer
`route request broadcast message.” Id. at 7:53–58.
`Petitioner argues a person skilled in the art would have found it
`obvious “to combine the teachings of Larsson with the combination of
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`6 Address Resolution Protocol.
`7 Dynamic Host Configuration Protocol.
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`McCall and BT Core to include Larsson’s piggyback indicator in a modified
`inquiry message,” and in particular to modify the access code of an inquiry
`message “to include the piggyback indicator.” Pet. 21 (citing Ex. 1003
`¶¶ 64–65). Petitioner argues this is so because “the access code field is the
`only field that carries data in the inquiry message.” Id. at 22 (citing Ex.
`1003 ¶ 65; Ex. 1015, 14–15). The piggyback indicator would alert the
`receiver “to the presence of an additional data field” when added to the
`access code of the modified inquiry message, thereby preventing the receiver
`from sending “unnecessary inquiry response messages.” Id. at 23 (citing Ex.
`1003 ¶ 67). Petitioner further argues that adding the piggyback indicator to
`the modified inquiry message would have allowed McCall’s object
`(receiver) to determine whether the inquiry message was sent from (i) a
`receiverless beacon providing it with “location information,” or (ii) another
`Bluetooth transmitter “attempting to establish a connection.” Id. at 23.
`Petitioner’s reasoning, as explained above, sufficiently demonstrates
`that the combination of McCall, BT Core, Larsson, and Hancock teaches or
`suggests a receiverless beacon (as taught by McCall) that periodically
`broadcasts its location (as taught by Hancock) to an unknown object using a
`Bluetooth inquiry message (as taught by BT Core) that has been modified to
`contain an additional data field to carry the location information and a
`piggyback indicator in the access code to indicate the presence of the
`additional data field (as taught by Larsson). Petitioner’s reasoning, as well
`as Dr. Knutson’s, for combining the teachings of McCall, BT Core, Larson,
`and Hancock is based on “what the combined teachings of the references
`would have suggested to those of ordinary skill in the art,” rather than on
`speculation or hindsight. Keller, 642 F.2d at 425. Petitioner’s reliance on
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`the teachings of four references does not detract from the soundness of
`Petitioner’s reasoning, and does not evidence
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