Paper No. 9
` Entered: November 14, 2019
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`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 Petitioner’s Request on Rehearing of
`Decision Denying Institution
`37 C.F.R. § 42.71(d)
`
`
`
`
`
` Entered: November 14, 2019
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`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 Petitioner’s Request on Rehearing of
`Decision Denying Institution
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`Appeal 2009-015244
`Reexamination Control 90/006,844
`Patent 5,314,630
`
`
`I. INTRODUCTION
`On October 16, 2019, Petitioner Apple Inc. filed a Request for
`Rehearing (Paper 7, “Req.”) of our Institution Decision (“Dec.”) dated
`September 16, 2019, denying institution of inter partes review of U.S.
`Patent No. 7,587,207 B2. Petitioner contends that the Decision
`misapprehended Petitioner’s contention that McCall, BT Core, and
`Dr. Knutson’s testimony teach modifying a Bluetooth inquiry packet to
`include a payload field containing information about the source of the
`inquiry packet. See Req. 2. For the reasons set forth below, Petitioner’s
`Request for Rehearing is denied.
`
`
`II. STANDARD OF REVIEW
`When rehearing a decision on petition, the Board will review the
`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). Section 37
`C.F.R. § 42.71(d) states the following:
`A party dissatisfied with a decision may file a single request for
`rehearing without prior authorization from the Board. The burden
`of showing a decision should be modified lies with the party
`challenging the decision. The request must specifically identify
`all matters the party believes the Board misapprehended or
`overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`
`
`III. DISCUSSION
`Petitioner contends that we misapprehended Bluetooth technology
`that requires McCall’s receiverless beacon to transmit its identifying signal
`in a Bluetooth inquiry message. Req. 3. In particular, Petitioner contends
`we misapprehended McCall’s reference to the identifying signal in
`
`
`
`2
`
`
`
`Appeal 2009-015244
`Reexamination Control 90/006,844
`Patent 5,314,630
`
`determining that McCall does not teach a receiverless beacon that transmits
`the unique identifier in a Bluetooth inquiry message. Id. at 8. According to
`Petitioner, a person of ordinary skill in the art would not have interpreted
`McCall’s reference to “the signal” transmitted by the beacon to mean that
`the identical message is used regardless of whether a beacon responds with a
`signal or continuously initiates transmission of a signal, because Bluetooth
`defines different message formats for reply messages and initiated messages.
`Id. (citing Ex. 1007, 110–112).
`In our Decision, we addressed McCall’s disclosure of the identifying
`signal in writing that
`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.
`Dec. 6. We determined that
`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.
`Dec. 7.
`
`
`
`3
`
`
`
`Appeal 2009-015244
`Reexamination Control 90/006,844
`Patent 5,314,630
`
`
`With respect to Petitioner’s contention that one of ordinary skill
`would have understood McCall’s receiverless beacon transmits an
`identifying signal that is different than the identifying signal transmitted
`from the beacon with a receiver (Req. 8 (citing Ex. 1007, 110–112)), McCall
`does not disclose that different beacons transmit different identifying
`signals. Ex. 1005, 4:29–32. Rather, the cited section of McCall discloses
`that “the beacon” transmits “the signal” in response to a request or
`continuously. Id. This is consistent with BT Core’s disclosure that an
`inquiry response message, not an inquiry message, contains the address of
`the source of the inquiry response message. Ex. 1007, 108–112.
`Petitioner has not shown that we misapprehended McCall’s disclosure
`that “the beacon” transmits “the signal” in response to a request or
`continuously. Petitioner also has not shown that we misapprehended
`McCall’s disclosure of using existing Bluetooth technology, nor that we
`misapprehended BT Core’s disclosure that an existing Bluetooth inquiry
`message does not contain any information about the source. Dec. 7.
`Therefore, Petitioner did not show that we abused our discretion in
`determining that the Petition did not show that McCall and BT Core teach
`transmitting location information continuously or intermittently using a
`Bluetooth inquiry message.
`
`Petitioner also contends that we misapprehended Dr. Knutson’s
`testimony. Req. 10–11 (citing Ex. 1003 ¶¶ 55–57, 79–81). In particular,
`Petitioner quotes Paragraph 57 of Dr. Knutson’s testimony, where Dr.
`Knutson testifies that he “could readily appreciate the placement of the
`payload at the end of a Bluetooth inquiry message as an obvious . . . design
`
`
`
`4
`
`
`
`Appeal 2009-015244
`Reexamination Control 90/006,844
`Patent 5,314,630
`
`choice since such a structure is similar to the standard Bluetooth protocol
`packet.” Id. at 11 (citing Ex. 1003 ¶ 57).
`Although Dr. Knutson, in Paragraph 57, cites to pages 56, 110, and
`112 of BT Core, the cited sections of BT Core do not disclose or suggest
`modifying the structure of the standard inquiry message to include a payload
`field for information about the source. Ex. 1007, 56, 110, 112. In our
`Decision, we determined that “McCall discloses using existing Bluetooth
`technology,” where an existing Bluetooth “inquiry message broadcasted by
`the source does not contain any information about the source,” and wrote
`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.
`Dec. 7–8. As we wrote in our Decision, we “do not give much weight to Dr.
`Knutson’s conclusory testimony. 37 C.F.R. § 42.65(a).” Id. at 9.
`
`Petitioner also summarizes the dissenting opinion, and contends that
`we should evaluate the dissenting opinion during trial. Req. 12–14.
`According to Petitioner, the dissenting opinion “correctly explains that,
`‘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’ disclosed by BT Core.” Id. at
`13; see id. at 2, 9; Pet. 31.
`In addressing this contention, we wrote that “the cited sections of
`McCall and BT Core do not disclose that the beacon in the transmitter-only
`embodiment can only send information in Bluetooth by transmitting an
`
`
`
`5
`
`
`
`Appeal 2009-015244
`Reexamination Control 90/006,844
`Patent 5,314,630
`
`inquiry message.” Dec. 8. We also wrote that “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,” and declined
`to give much weight to Dr. Knutson’s conclusory testimony. Id. at 9.
`
`Petitioner’s Request does not point to any specific thing we
`misapprehended or overlooked. Instead, Petitioner’s arguments merely set
`out how it believes we could have ruled in its favor, which amounts to mere
`disagreement with our Institution Decision. Because Petitioner has not
`demonstrated that the Board abused its discretion in denying institution, the
`Request is denied.
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Request for Rehearing is denied.
`
`
`
`6
`
`
`
`
`
`
`
`
`
`
`Appeal 2009-015244
`Reexamination Control 90/006,844
`Patent 5,314,630
`
`
`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
`
`
`
`
`
`7
`
`
`
`IPR2019-00753
`Patent 7,587,207 B2
`
`
`I respectfully dissent from the majority’s decision denying Petitioner’s
`
`Request for Rehearing for the reasons stated in my dissent in the Decision
`Denying Institution. In particular, I find Petitioner has shown a reasonable
`likelihood of demonstrating that the challenged claims of the ’207 patent are
`unpatentable, and would therefore grant Petitioner’s request and institute
`inter partes review of those claims. See Paper 7, 14–27.
`
`
`
`
`
`8
`
`
`
`IPR2019-00753
`Patent 7,587,207 B2
`
`
`For PETITIONER:
`
`Walter Renner
`Jeremy Monaldo
`Roberto Devoto
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`devoto@fr.com
`
`For PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
