UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
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`Petitioner v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-01026
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`Patent 6,993,049
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`PATENT OWNER RESPONSE TO PETITION
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
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`Petitioner v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-01026
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`Patent 6,993,049
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`PATENT OWNER RESPONSE TO PETITION
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`IPR2019-01026
`Patent 6,993,049
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`Table of Contents
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`INTRODUCTION ............................................................................................. 1
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`I.
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`II. THE ’049 PATENT ........................................................................................... 1
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`III. RELATED PROCEEDINGS ........................................................................... 2
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`IV. THE LEVEL OF ORDINARY SKILL IN THE ART ................................... 4
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`V. PETITIONER DOES NOT PROVE THAT ANY CHALLENGED
`CLAIM IS UNPATENTABLE ........................................................................ 4
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`A. Claim Construction ................................................................................ 6
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`1.
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`2.
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`“additional data field” ................................................................. 6
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`“inquiry message[s]” .................................................................... 8
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`Larsson Does Not Disclose “adding to an inquiry message prior to
`transmission an additional data field for polling at least one secondary
`station,” (Ground 1) .................................................................................. 9
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`802.11 Does Not Disclose “adding to an inquiry message prior to
`transmission an additional data field for polling at least one secondary
`station,” (Ground 2) ................................................................................ 17
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`B.
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`C.
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`D. Dependent claim 12 .............................................................................. 23
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`VI. APJS ARE UNCONSTITUTIONALLY APPOINTED PRINCIPAL
`OFFICERS ........................................................................................................ 23
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`VII. CONCLUSION ................................................................................................ 27
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`ii
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`IPR2019-01026
`Patent 6,993,049
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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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`the Petition filed by Apple, Inc. (“Petitioner”) for inter partes review of United
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`States Patent No. Patent 6,993,049 (“the ’049 patent” or “EX1001”).
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`II. THE ’049 PATENT
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`The ’049 patent is titled “Communication system.” The ʼ049 patent
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`issued January 31, 2006, from U.S. Patent Application No. 09/876,514 filed
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`June 7, 2001. The inventors of the ’049 patent observed that at the time of the
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`invention, there was an increasing interest in enabling devices to interact via
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`wireless communication links, thereby avoiding the need for extensive cabling.
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`An example of a communication system which may be used for such wireless
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`links is a Bluetooth network. Ex. 1001, 1:9‒15.
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`One application for which use of Bluetooth was proposed was the
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`connection of controller devices to host systems. A controller device, also
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`known as a Human/machine Interface Device (HID), is an input device such as
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`a keyboard, mouse, games controller, graphics pad or the like. Certain HIDs did
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`not typically require a link having high data throughput, though they might
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`require a very responsive link.
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`A Bluetooth system may be capable of supporting the throughput
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`requirements of certain HIDs. However, the degree of responsiveness required
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`could be more difficult to achieve. An active Bluetooth link could offer a
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`reasonably responsive service, but this required both the setting up of a link and
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`its maintenance, even during periods of inactivity. Id., 1:27‒39. Setting up a link
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`required a HID to join, as a slave, the piconet including the host system (which
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`would typically act as piconet master, i.e. a base station). Joining the piconet
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`required two sets of procedures, namely ‘inquiry’ and ‘page’. Inquiry allowed a
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`would-be slave to find a base station and issued a request to join the piconet.
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`Page allowed a base station to invite slaves of its choice to join the net. Analysis
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`of those procedures indicated that the time taken to join a piconet and then to be
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`in a position to transfer user input to the master could be several tens of
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`seconds. Id., 1:52‒61.
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`According to the invention of the ’049 Patent, there is provided a
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`communications system comprising a primary station and at least one secondary
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`station, wherein the primary station has means for broadcasting a series of
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`inquiry messages, each in the form of a plurality of predetermined data fields
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`arranged according to a first communications protocol, and means for adding to
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`an inquiry message prior to transmission an additional data field for polling at
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`least one secondary station, and wherein the or each polled secondary station
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`has means for determining when an additional data field has been added to the
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`plurality of data fields, for determining whether it has been polled from the
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`additional data field and for responding to a poll when it has data for
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`transmission to the primary station. Id., 2:22‒35.
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`III. RELATED PROCEEDINGS
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`Patent Owner identifies the following proceedings and district court
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`IPR2019-01026
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`Patent 6,993,049
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`determinations involving the ’049 patent:
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`Case
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`Case Name
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`Filing
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`Date
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`2/23/2018
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`Uniloc USA, Inc. et al v.
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`Samsung Electronics America,
`Inc. et ol
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`01530
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` LG Electronics Inc. et al v.
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`2/28/2018
`Uniloc USA, Inc. et al v.
`Logitech Inc. et al
`11/6/2018
`Uniloc USA Inc et al v. LG
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`Electronics USA Inc et ol
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`11/12/2018
`IPR2019-
`Apple Inc. et al v. Unt'loc 2017
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`LLC 00251
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`4/3/2019
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`Uniloc USA, Inc. et al v.
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`A 3 :le, Inc.
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`5-19-cv-
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`01695
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`IPR2019-
`5/6/2019
`Microsofl Corporation v.
`01026
`Uniloc 201 7 LLC
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`8/22/2019
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`IPR2019-
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`Uniloc 2017 LLC
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`5/1/2019
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`Uni/0c USA, Inc. 12. LG
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`Electronics USA, Inc.
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`Claim Construction Memorandum Opinion and Order, Uniloc USA, Inc.
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`et al 12. Samsung Electronics America, Inc. et al, 2-18-cv-00040, Dkt. 82 (ED.
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`Tex. Apr. 5, 2019) (construing Claims and determining claims 1 and 8 are
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`indefinite) (submitted as EX. 1027).
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`Amended Order Granting Motion to Dismiss, Uni/0c USA Inc et al v. LG
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`Electronics USA Inc er al, 5-18-cv-06738, Dkt. 109 (ND. Cal. Apr. 9, 2019)
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`(determining ’049 patent is invalid under 35 U.S.C. § 101) (submitted as Ex.
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`1008).
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`IPR2019-01026
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`IV. THE LEVEL OF ORDINARY SKILL IN THE ART
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`The Petition alleges that “[a] person of ordinary skill in the art in 2000
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`(“POSITA”) would have had at least a Master’s Degree in electrical or
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`computer engineering with a focus in communication systems or, alternatively,
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`a Bachelor’s Degree in electrical or computer engineering and at least two years
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`of experience in wireless communication systems.” Pet. 10. The use of “at
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`least,” with no upper limit, is improper, as Petitioner’s proposed definition
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`could encompass an expert with any level of education and experience. Given
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`that Petitioner fails to meet its burden of proof in establishing anticipation or
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`obviousness when applying its own definition, as best understood by Patent
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`Owner as indicating no more than a Master’s Degree or two years of
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`experience, of a person of ordinary skill in the art (“POSITA”), Patent Owner
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`does not offer a competing definition for POSITA.
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`V.
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`PETITIONER DOES NOT PROVE THAT ANY CHALLENGED
`CLAIM IS UNPATENTABLE
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`“In an [inter partes review], the petitioner has the burden from the
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`onset to show with particularity why the patent it challenges is unpatentable.”
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`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016).
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`While the Board has instituted Inter Partes Review here, as the Court of
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`Appeals has stated:
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`[T]here is a significant difference between a petitioner's burden to
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`establish a “reasonable likelihood of success” at institution, and actually
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`proving invalidity by a preponderance of the evidence at trial. Compare 35
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`U.S.C. § 314(a) (standard for institution of inter partes review), with 35
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`U.S.C. § 316(e) (burden of proving invalidity during inter partes review).
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`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). As
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`demonstrated herein, Petitioner has failed to meet its burden of proving any
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`proposition of invalidity, as to any claim, by a preponderance of the evidence.
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`35 U.S.C. §316(e).
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`Petitioner raises the following obviousness challenges under 35 U.S.C. §
`103:
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`Groun
`d
`1
`2
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`Claims
`11 and 12
`11 and 12
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`Reference(s)
`Larsson1 and BT Core2 and RFC8263
`802.114 (obviousness)
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`1 EX1004, U.S. Patent No. 6,704,293.
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`2 EX1005, Specification of the Bluetooth System: Wireless connections made easy,
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`Core, Vol. 1.
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`3 EX1006, An Ethernet Address Resolution Protocol, IETF Request For Comments
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`No. 826.
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`4 EX1007, ANSI/IEEE Std 802.11, Part 11: Wireless LAN Medium Access
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`Control (MAC) and Physical Layer (PHY) Specifications.
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`IPR2019-01026
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`Patent 6,993,049
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`A.
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`Claim Construction
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`The claims, when properly construed, give rise to a number of
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`independent and fully-dispositive bases to deny the relief requested in the
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`Petition in its entirety.
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`1.
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`“additional datafield”
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`“‘When a patent ‘repeatedly and consistently“ characterizes a claim term
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`in a particular way, it is proper to construe the claim term in accordance with
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`that characterization.” Profoot, Inc.
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`12. Merck & C0,, 663 F. App’x 928, 932
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`(Fed. Cir. 2016) (quoting GPNE Corp. v. Apple Inc, 830 F.3d 1365, 1370 (Fed.
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`Cir. 2016)). The ”049 patent repeatedly and consistently characterizes the term
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`“additional data field” to be “an extra data field appended to the end of an
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`inquiry message.”
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`Figure 5 depicts the additional data field as element 504:
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`06
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`502
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`50
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`HSB
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`FIG. 5
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`EX. 1001, Fig. 5 (highlighting added).
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`As
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`shown in the screenshot
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`reproduced below,
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`the corresponding
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`description makes clear that the additional data field is an extra field that is
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`appended to the end afar: inquiry message:
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`Patent 6,993,049
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`As mentioned above and shown in FIG. 5,I —.— may
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`carry a header that signifies 3 ”ID poll to distinguish it from
`other applications of extended field information, such as
`context-aware services or broadcast audio (as disclosed in
`our
`co-pcnding United Kingdom patent
`applications
`00154542.
`(applicant‘s
`reference PllGB 000084)
`and
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`00154534 (applicant’s reference PHGB 000085) respec-
`tively). It will also carry the address of the HI!) being polled,
`and may also earr).r a small amount ofintonnalion to the HID
`which might be used to provide supplementary information
`to a user (such as text on an LCD screen) or feedback (for
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`example, motional feedback in games Controllers).
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`In addition, by using a special DIAC to signify
`a Hll) poll, Hll) devices can be alerted to the presence of the
`forthcoming polL
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`Ex. 1001, 4:59—5:11 (highlighting added).
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`The “049 patent clearly defines,
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`including in the example disclosure
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`emphasized above, that the term “additional data field” refers to “an extra data
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`fieid appended to the end of an inquiry message”. Indeed, the specification
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`explains why appending an extra data field (i.e.,
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`in addition to the
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`“predetermined data fields arranged according to a first communications
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`protocol”) to the end of the inquiry message is an essential and defining aspect
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`of the claimed invention. Specifically, appending an extra field to the end of the
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`inquiry message is essential at least because “non-HID receivers can ignore it
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`without modification.” Id. (emphasis added).
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`None of the mappings applied in the Petition address this aspect of the
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`claimed invention reflected in the recitation, “adding to an inquiry message
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`prior to transmission an additional data field for polling at least one secondary
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`station,” as recited in claim 11.
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`In its Institution Decision, the Board preliminary held that “[i]ndependent
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`claim 11 already has language that accounts for the language Patent Owner
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`seeks to add through claim construction.” Paper 7 at 4. The Board clarified that
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`“on this record and for purposes of this Decision, we do not view these two
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`terms [appending and adding] as meaningfully distinct.” Id. Patent Owner has
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`modified its proposed construction to clarify that “appended” in this context
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`refers to “appended to the end” of the “inquiry message” referenced in the
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`“additional data field” clause. This accurately reflects the thematic disclosure in
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`the ’049 patent referenced above, which confirms there is meaningful and
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`purposeful distinction between adding in the abstract and, instead, adding by
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`appending the additional data field to the end of an inquiry message.
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`Accordingly, the term “additional data field” should be construed to mean
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`“an extra data field appended to the end of an inquiry message.” Under an
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`appropriate claim construction, Petitioner fails to carry its burden of showing
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`obviousness.
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`2.
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`“inquiry message[s]”
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`The ’049 patent repeatedly and consistently describes its “inquiry
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`messages” as a specific type of message used, at least in part, to discover other
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`Patent 6,993,049
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`devices in the vicinity which may request to join a piconet. See, e.g., Ex. 1001
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`at 4:23‒26 (“When a Bluetooth unit wants to discover other Bluetooth devices,
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`it . . . issues an inquiry message . . . .”); 1:56‒57 (“Inquiry allows a would-be
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`slave to find a base station and issue a request to join the piconet.”); 4:11‒13
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`(“The Bluetooth inquiry procedure allows a would-be slave to find a base station
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`and issue a request to join its piconet.”). Under an appropriate claim
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`construction, Petitioner fails to carry its burden of showing obviousness.
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`B.
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`Larsson Does Not Disclose “adding to an inquiry message prior
`to transmission an additional data field for polling at least one
`secondary station,” (Ground 1)
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`The Petition has failed to carry the Petitioner’s burden of proving that
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`Larsson discloses the recitation of Claim 11 “adding to an inquiry message prior
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`to transmission an additional data field for polling at least one secondary station”
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`(emphasis added). In the first instance, the Petition’s contention that Larsson’s
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`disclosure of “piggybacking” meets the required limitation of “adding to an
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`inquiry message prior to transmission an additional data field” (Pet. 32) is
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`insufficient as a matter of law. Larsson discloses that a “source node piggybacks
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`a broadcast message in a request for route broadcast message.” [Ex. 1004, Fig.
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`6a, 6:3-7, 7a, 7:50-53]. However, the term “piggybacking” is simply not
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`synonymous with the claim limitations of adding to an inquiry message “an
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`additional data field” and Petitioner provides no evidence to support this
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`contention (emphasis added). Instead, Petitioner merely asserts that the term
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`“piggybacking” identified in Larsson in connection with broadcast messaging
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`used for route discovery equates to the claim limitation as supported in the ‘049
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`Patent, but fails to provide any evidence showing how the inquiry message is
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`altered – namely, with an additional data field (EX1001, 4:59-62). Such attempt
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`to ascribe a detailed limitation to a completely different term points up the
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`Petition’s effort at a false equivalence between a term used in a reference and a
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`term that does not even appear in the claim language. Further still, the ‘049
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`Patent’s solitary use of the term “piggy-back” (EX1001, 4:16) is not
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`interchangeable with the claim limitation “additional data field”, but provided
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`separate support and details for the claim term (EX1001, 4:59-62). Tellingly,
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`Petitioner fails to point to any portion of Larsson as disclosing “an additional
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`data field”, and Declarant’s statement that “a POSITA would have viewed the
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`piggybacked broadcast message as an additional data field added to the request
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`for route message (inquiry message) prior to transmission” because “[t]he ’049
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`Patent describes the same method for adding an additional data field to an
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`inquiry message” (EX1003, 80) is devoid of any analysis and conclusory.
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`Indeed, the Declarant, without providing a line of reasoning, or consideration of
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`possible arrangements that could be provided to fill in the technical details of
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`Larsson’s broad and vague use of the term “piggybacking,” immediately leaps to
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`the unsupported conclusion that a POSITA would have viewed Larsson’s vague
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`mention of piggybacking as teaching specifically an additional data field added
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`to the inquiry message. Id. The absence of any reasoning shown by the Declarant
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`in leaping to this conclusion renders Declarant’s conclusion to be of little weight.
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`While the above is sufficient, additional reasons exist for determining that
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`Petitioner has failed to carry its burden of proving that Larsson teaches the
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`recitation at issue. Unlike the ‘049 Patent, Larsson is directed to a route
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`discovery technique (i.e., not a device discovery technique required by the recited
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`“inquiry message”). Larsson’s “broadcast message for route discovery” is aptly
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`named because its purpose is to discover an optimal route to a known
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`destination node which is already joined to a piconet. See, e.g., Ex. 1005 at
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`Abstract; 4:23‒25; 4:37‒ 47; 5:36‒37; 5:44‒45. Referring to Figure 3, Larsson
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`states that “if node 303 were the source node then the broadcast message [for
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`route discovery] would be sent to nodes 301, 302 and 304.” Figure 3 and its
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`corresponding description disclose that the recipient nodes 301, 302, and 304
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`were previously joined to the same piconet 1 to which the source node 303 is
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`joined. See, e.g., id. at Figure 3, 1:67‒2:1. Thus, Larsson is directed to
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`discovering a route to a known recipient device already joined to a piconet, as
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`opposed to discovering recipient devices that may seek to join.
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`Larsson’s “broadcast message for route discovery” has not been proven by
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`the Petitioner to teach an “inquiry message” as that term is used in the ’049 patent.
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`As explained above, the ’049 patent repeatedly and consistently describes its
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`“inquiry messages” as a specific type of message used, at least in part, to discover
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`other devices in the vicinity which may request to join a piconet. See §VI.A.3,
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`supra. The Petition thus relies on an incorrect construction of the term “inquiry
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`message” as allegedly covering Larsson’s entirely distinct route discovery
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`messages. The Petition has not and cannot prove obviousness through reliance in
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`an incorrect claim construction. See Synopsys, 669 Fed. Appx. at 569.
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`Next, the Petition argues that Larsson “confirms” that its “piggybacked”
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`messages require an additional data field purportedly because Larsson “teaches
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`RfR messages ‘of a fixed length’ and when the message is ‘longer than the
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`normal fixed length’ it indicates the presence of additional ‘piggybacked data.’”
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`Pet. 33 citing EX1004, 7:58-61. The Petition’s reliance on this brief four-line
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`passage of Larsson, described by Larsson as an alternative protocol in which a
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`request for route message is of a fixed length, is also misplaced. Nothing in that
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`brief passage of Larsson discloses or even indicates an additional data field
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`added to the “RfR message”. All that is disclosed is that the “RfR message” is
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`longer than the “fixed length,” and that a “length indicator” will indicate a length
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`longer than the normal fixed length. The presence of the length indicator merely
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`teaches that there is additional data in the message, but is utterly silent as to the
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`presence of an additional data field as required by the claim language.
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`Moreover, the Declarant provides no evidence of any weight to support
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`Petitioner’s reliance on this four-line alternative embodiment. The Declarant
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`merely makes the conclusory statement, repeating the language of the claim, that
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`Larsson’s piggybacked RfR messages require an additional data field, followed
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`by a slight rearrangement of the four-line passage of Larsson, with no line of
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`reasoning to provide any evidence of how a POSITA, reading this passage of
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`Larsson, would arrive the conclusion that Larsson had somehow disclosed the
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`precise language of the claim. EX1003, ¶75.
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`Indeed, contrary to the Petition’s conclusory assertions, the passage of
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`Larsson cited by the Petition itself indicates that it is merely additional data
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`included in the “RfR message”: “in a protocol where the request for route
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`message is of a fixed length, a length indicator which indicates a length longer
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`than the normal fixed length will implicitly indicate that the request contains
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`piggyback data.” EX1004, 7:58-61 (emphasis added). As expressly disclosed by
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`Larsson itself, it is just data that accounts for the longer than “fixed length”
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`message. There is no indication that Larsson’s “piggyback data” is anything
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`other than merely more data, as opposed to the additional data field required by
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`the claim language, and the Petition does not show otherwise.
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`Finally, the Petition purports to rely on Petitioner’s declarant for support
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`(Pet. 33), however, the Petitioner’s declarant merely parrots the exact conclusory
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`(and unsupported) statements of the Petition. Compare Pet. 33 with EX1003, ¶
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`75. That is insufficient. 37 C.F.R. § 42.65(a) (“Expert testimony that does not
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`disclose the underlying facts or data on which the opinion is based is entitled to
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`little or no weight.”); Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed.
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`Cir. 2006) (“legal determinations of obviousness, as with such determinations
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`generally, should be based on evidence rather than on mere speculation or
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`conjecture.”); In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
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`2016) (“[A] petitioner cannot employ mere conclusory statements” and “must
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`instead articulate specific reasoning, based on evidence of record . . . .”). As
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`noted above, the Declarant does nothing more than announce the alleged
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`equivalence of the claim language and the brief passage of Larsson, with no line
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`of reasoning or technical basis to demonstrate why a POSITA would arrive at
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`that conclusion of equivalence.
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`In sum, the Petition should be denied because there is nothing in Larsson
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`or the Petition that provides evidence that Larsson discloses “adding to an
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`inquiry message prior to transmission an additional data field for polling at least
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`one secondary station”, as the claim language requires.
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`Indeed, while the ’049 patent has a solitary use of the term “piggy-back,”
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`stating: “it is possible to piggy-back a broadcast channel on the inquiry
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`messages” EX1001, 4:15-18, all this passage discloses that it is possible to use
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`the broadcast channel for another purpose. What the passage doesn’t describe is
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`how the inquiry message is altered – with an additional data field. That
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`description happens later in the ’049 patent (see EX1001, 4:59-62); (3) As
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`further made clear by the passage cited by the Petition, the patentees knew the
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`difference between the term “piggy-back” and “additional data field”, and did
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`not use them interchangeably; and (4) The Petition’s alleged (false) equivalence
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`between a term used in a reference and a term that does not appear in the claim
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`language at all is flawed. At the very least it is an impermissible ipsissimis verbis
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`test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
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`However, Larsson does not disclose any such adding to an inquiry
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`message an additional data field, and the Petition merely offers conclusory
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`14
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`statements and conjecture in a failed attempt to support its position. Further still,
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`the Petition clearly fails to establish the recitation under a proper claim
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`construction of “an extra data field appended to the end of an inquiry message”.
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`What Petitioner identifies as “piggybacked data” (Pet. 25) is plainly
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`deficient to prove Larsson’s alleged teaching of “adding to an inquiry message
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`prior to transmission an additional data field for polling at least one secondary
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`station,” as recited in claim 11. This is at least because, as the intrinsic evidence
`
`itself confirms, the couplet “data field” and the word “data” (in isolation) are
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`distinct terms of art. In addition, merely adding data to an already existing data
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`field of a message clearly fails to demonstrate a disclosure of adding an
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`additional data field to that message.
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`The intrinsic evidence refutes Petitioner’s incorrect and undefended
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`premise that the couplet “data field” and the word “data” (in isolation) are
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`interchangeable terms of art. See In re Smith Int’l, Inc., 871 F.3d 1375, 1382 (Fed.
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`Cir. 2017) (“[T]he protocol of giving claims their broadest reasonable
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`interpretation
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`.
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`.
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`. does not include giving claims a legally incorrect
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`interpretation” “divorced from the specification and the record evidence.”)
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`(citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir.
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`2015)).
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`The teachings of the ’049 patent underscore the distinction. For example,
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`the ’049 patent expressly and repeatedly distinguishes the additional data field
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`(e.g., data field 504) from the data that it carries. See, e.g., Ex. 1001 at 4:60‒62
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`15
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`(“the inquiry messages issued by the base station have an extra field 504
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`appended to them, capable of carrying a HID poll message.”), 4:62‒63 (“The
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`extended field 504 may carry a header that signifies a HID pol”), 5:2‒6 (the
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`extended field 504 may also carry “the address of the HID being polled” and “a
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`small amount of information”), 6:19‒21 (“The HID receives, at step 604, data
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`from the extra field 504 then tests, at step 606, whether it has been polled by the
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`host system.”).
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`In addition, the ’049 patent emphasizes that certain embodiments achieve
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`a rapid response, in part, because secondary stations can efficiently determine the
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`appropriate response to an inquiry message by first accessing whether an
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`additional data field has been added (i.e., regardless of the specific data contained
`
`in that field). See, e.g., id. at Abstract, 2:31‒35; 2:53‒57; 2:67‒3:4. This inventive
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`concept is also reflected throughout the claims. See id. at 7:29‒8:50. The ’049
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`patent further emphasizes the significance of adding an additional data field (as
`
`opposed to just adding data) by teaching that “[b]y adding the field to the end of
`
`the inquiry message, it will be appreciated that non-HID receivers can ignore it
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`without modification.” Id. at 5:6‒9. Petitioner has not and cannot meet its burden
`
`of proof through its conclusory assertions that conflate together what the ’049
`
`patent expressly and repeatedly distinguishes. Pet. 25 (“the piggybacked data . .
`
`. is a data field for polling.”) (emphasis added). Indeed, the Petition does not
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`even assert that Larsson teaches adding the additional data field to the end of the
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`inquiry message. Petitioner’s Declarant similarly never alleges that Larsson
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`16
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`discloses adding an additional data field at the end of an inquiry message.
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`For at least the above reasons, the Petitioner has failed to meet its burden
`
`of demonstrating that Larsson teaches the recitations at issue.
`
`
`
`C.
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`802.11 Does Not Disclose “adding to an inquiry message prior to
`transmission an additional data field for polling at least one
`secondary station,” (Ground 2)
`
`Here, the Petition points to 802.11’s so-called “targeted” probe request.
`
`Pet. 48. Initially, it is important to note that the Petition admits that 802.11’s
`
`probe request message comes in two varieties, a “broadcast” type, which seeks
`
`responses from all available access points, and a so-called “targeted” type, which
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`only “polls a specific access point”. Pet. 48 (emphasis added). As such, by
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`relying on the so-called “targeted” probe request type here, the Petition cannot
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`coherently rely on the “broadcast” type to challenge the previous claim
`
`limitation “the method comprising the primary station broadcasting a series of
`
`inquiry messages” (the Petition’s [11.2]).
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`Regardless, the Petition fails to show that 802.11 discloses this claim
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`limitation, which requires “adding to an inquiry message prior to transmission an
`
`additional data field for polling at least one secondary station”. As noted above,
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`the Petition here relies on 802.11’s “targeted” probe request type. And the
`
`Petition argues 802.11 discloses this limitation because in 802.11’s “broadcast”
`
`probe request type the “SSID information field” has a “zero length”, compared
`
`to the “targeted” probe request type where the “SSID information field” contains
`
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`17
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`data. See Pet. 48-49.
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`However, Petitioner’s argument fails for at least two reasons, (1) the
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`“SSID information field”, even when its length is zero, is nonetheless an existing
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`field in 802.11’s probe request, therefore merely pointing to the times when the
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`“SSID information field” is of non-zero length does not disclose adding “an
`
`additional data field” as required by the claim language; and (2) the Petition
`
`ignores the previous claim limitation which recites the inquiry messages having
`
`a plurality of predetermined data fields, upon which this claim limitation adds to.
`
`First, as noted by the Petition itself, the “SSID information field” is an
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`existing field in 802.11’s probe request, regardless of type. That under the
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`“broadcast” type the “SSID information field” has a “zero length” does not
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`change the fact that it is still in fact an existing and predetermined field of the
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`probe request. This is confirmed by the Petition’s own duplication of 802.11’s
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`Figure 35:
`
`
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`Pet. 45 citing EX1007, Fig. 35 (red box added).
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`As shown by the Petition’s own reliance on 802.11’s Figure 35, the “SSID
`
`information field” can be length zero to thirty-two octets. In other words, a “zero
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`length” is a valid length for the “SSID information field”, that the field can
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`18
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`sometimes be of zero length and other times be of non-zero length does not
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`change the fact that the “SSID information field” is an existing and
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`predetermined part of the probe request. Therefore, merely pointing to the times
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`when the “SSID information field” is of non-zero length does not disclose
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`“adding to an inquiry message prior to transmission an additional data field”, as
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`the claim language requires.
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`Second, and furthermore, 802.11’s “SSID information field” cannot be the
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`“additional data field” required by this claim limitation because the Petition
`
`ignores the previous claim limitation which recites: “broadcasting a series of
`
`inquiry messages, each in the form of a plurality of predetermined data fields
`
`arranged according to a first communications protocol”.
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`As the Petition itself confirms, the “SSID information field” is an existing
`
`and predetermined part of 802.11’s probe request because sometimes it has non-
`
`zero length (see e.g., Pet. 48), meaning the “SSID information field” is one of a
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`“predetermined data fields”. And therefore, the “SSID information field” cannot
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`be an “additional data field” to be added to the inquiry message, as this claim
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`limitation requires.
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`The Board, in the Institution Decision, determined that:
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`We find that the parties’ competing positions creates a genuine issue of
`
`material fact—i.e., whether a zero-length SSID information field is an
`
`existing field. According to Petitioner’s declarant, “[a] POSITA would
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`understand that ‘0 length’ means that nothing is included for this SSID
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`field, i.e., there is no SSID field.” Ex. 1003 ¶ 102. At this stage of the
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`proceeding, we view evidence in the light most favorable to Petitioner. See
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`37 C.F.R. § 42.108(c). Although we encourage the parties to develop this
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`issue further during trial, on this record, Petitioner provides adequate
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`evidence that 802.11’s targeted request teaches the claim
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