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
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`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 SUR-REPLY TO PETITION
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`IPR2019-01026
`Patent 6,993,049
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`I.
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`II.
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`Table of Contents
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`INTRODUCTION .......................................................................................... 1
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`PETITIONER IGNORED RELEVANT DEVELOPMENTS IN
`RELATED MATTERS ................................................................................... 1
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`III. PETITIONER’S REPLY AND ITS ACCOMPANYING
`BELATED ARGUMENT AND EVIDENCE UNDERSCORES
`DEFICIENCIES OF THE PETITION ............................................................ 2
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`IV. CLAIM CONSTRUCTION ........................................................................... 3
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`A.
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`“additional data field” ......................................................................... 4
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`1.
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`2.
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`Petitioner leaves unrebutted deficiencies
`arising from what must be added to the inquiry
`message ...................................................................................... 4
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`Petitioner acknowledges the theory set forth in
`the Petition fails to prove obviousness if the
`claim language is limiting as to where within
`the inquiry message the “additional data field”
`must be added ........................................................................... 6
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`B.
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`“inquiry message[s]” ......................................................................... 10
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`V.
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`PETITIONER FAILS TO PROVE OBVIOSNESS OF
`EITHER CHALLENGED CLAIM (11 AND 12) ..................................... 13
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`A.
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`B.
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`Petitioner fails to prove that Larsson discloses “adding to
`an inquiry message prior to transmission an additional
`data field for polling at least one secondary station” .......................... 13
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`1.
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`2.
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`“. . . to an inquiry message . . .” ................................................ 13
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`“adding . . . an additional data field for polling at
`least one secondary station” ...................................................... 15
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`Petitioner at least fails to prove 802.11 discloses “adding
`to an inquiry message prior to transmission an additional
`data field for polling at least one secondary station” .......................... 20
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`VI. CONCLUSION ............................................................................................. 22
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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 Sur-Reply to the
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`Petition filed by Microsoft Corp. (“Petitioner”) for inter partes review of United
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`States Patent No. Patent 6,993,049 (“the ’049 patent” or “EX1001”) in IPR2019-
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`01026. For the reasons given in Uniloc’s Response (Paper No. 9, “POR”) and herein,
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`Petitioner fails to carry its burden of proving unpatentability of the challenged claims
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`of the ’049 patent based on the grounds presented in the Petition.
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`II.
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`PETITIONER IGNORED RELEVANT DEVELOPMENTS IN
`RELATED MATTERS
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`Petitioner neglects to bring to the Board’s attention that, approximately one
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`month before Petitioner filed its Reply, the Federal Circuit issued an opinion which
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`reversed and remanded a district court’s decision finding that the claims of the ’049
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`patent are directed to patent-ineligible subject matter under § 101. Uniloc USA, Inc.
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`v. LG Elecs. USA, Inc., 957 F.3d 1303, 1305 (Fed. Cir. 2020).
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`The Federal Circuit opinion provides a helpful discussion of certain claim
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`language also at issue here (e.g., “adding to an inquiry message prior to transmission
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`an additional data field for polling at least one secondary station.”). A portion of
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`that discussion is reproduced below:
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`Claim 2 of the ’049 patent recites a primary station for use in a
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`communication system “wherein means are provided for ...
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`adding to each inquiry message prior to transmission an
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`additional data field for polling at least one secondary station.”
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`’049 patent at Claim 2. The additional data field enables a
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`primary station to simultaneously send inquiry messages and poll
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`IPR2019-01026
`Patent 6,993,049
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`parked secondary stations. Id. at Abstract. The claimed invention
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`therefore eliminates or reduces the delay present in conventional
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`systems where the primary station alternates between polling and
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`sending inquiry messages. See, e.g., id. at 2:8–15, 6:55–60.
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`Therefore, like the claims in DDR, the claimed invention changes
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`the normal operation of the communication system itself to
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`“overcome a problem specifically arising in the realm of
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`computer networks.” See 773 F.3d at 1257–58. In doing so, the
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`claimed invention, like the improvement in computer memory
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`we held patent eligible in Visual Memory, enables the
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`communication system to accommodate additional devices, such
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`as battery-operated secondary stations, without compromising
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`performance. See 867 F.3d at 1258–60.
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`957 F.3d at 1307–08; see also id. at 1205 (further expounding on what the court
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`considered to be example patent-eligible improvements).
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`Notably, the Federal Circuit also expressly rejected LG’s argument on appeal
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`that “the claims [of the ’049 patent] merely recite the observation that conventional
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`inquiry messages can accommodate conventional polling ‘using result-based
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`functional language’ and generic Bluetooth components.” Id. (emphasis added).
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`III. PETITIONER’S REPLY AND ITS ACCOMPANYING BELATED
`ARGUMENT AND EVIDENCE UNDERSCORES DEFICIENCIES
`OF THE PETITION
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`Petitioner’s Reply flagrantly disregards the Consolidated Trial Practice Guide
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`and Hulu1 at least by seeking to introduce entirely new Exhibits 1028‒1046, which
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`1Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 20, p. 15-
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`16 (Dec. 20, 2019) (Precedential
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` 2
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`IPR2019-01026
`Patent 6,993,049
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`constitute nearly 20 distinct documents consisting of literally hundreds of pages. To
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`make matters worse, Petitioner’s Reply then makes no citation to the vast majority
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`of these untimely-submitted documents, nor does it attempt to explain their
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`respective significance. It is impermissible to incorporate arguments from one
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`document into another, including by unexplained citations to exhibits. 37 CFR §
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`42.6(3) (“Arguments must not be incorporated by reference from one document into
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`another document.”); PCT Int’l. Inc. v. Amphenol Corp., IPR2013-00229, Paper No.
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`17 at 2 (PTAB Dec. 24, 2013) (“Arguments must not be incorporated by reference
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`from one document into another document. . . Among other things, this rule prevents
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`parties from avoiding page limitations.”). The Board should find this new evidence
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`is entitled to no weight at least because it is untimely and it is not adequately
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`addressed within the Reply itself, if at all.
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`IV. CLAIM CONSTRUCTION
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`As explained in Patent Owner’s Response, the Petition is tainted by a reliance
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`on erroneous claim constructions. Each erroneous construction presents an
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`independent and fully dispositive basis to deny the Petition in its entirety. See
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`Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569,
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`(Paper 31) at *11 (P.T.A.B. June 11, 2015), affd sub nom., Synopsys, Inc. v. Mentor
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`Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016). Because the Petition was
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`filed after November 13, 2018, the Board interprets the claim terms here using “the
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`same claim construction standard that would be used to construe the claim in a civil
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`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019).
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`IPR2019-01026
`Patent 6,993,049
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`A.
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`“additional data field”
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`Claim 11 recites the disputed term “additional data field” in the following
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`context: “adding to an inquiry message prior to transmission an additional data field
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`for polling at least one secondary station.” Patent Owner had explained in its
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`Response why the term “additional data field” should be construed to mean “an extra
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`data field appended to the end of an inquiry message.” POR 6‒8. Patent Owner’s
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`construction reflects two key concepts of the “additional data field” term: (1) what
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`it means to be “additional” in the context of a new data field that must be added to
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`the inquiry message; and (2) where within the message the “additional” data field
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`must be added, in view of the intrinsic evidence.
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`Petitioner has offered no competing construction for the “additional data
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`field” term. In its Reply, Petitioner improperly attempts to distill the dispute over
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`this term down to whether an “additional data field” as claimed must be “appended
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`to the end of an inquiry message.” In doing so, Petition does not dispute, and indeed
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`leaves unaddressed, the deficiencies Patent Owner identified concerning what must
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`be added to the inquiry message, regardless of where within that message it is added.
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`1.
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`Petitioner leaves unrebutted deficiencies arising from
`what must be added to the inquiry message
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`Petitioner evidently overlooked deficiencies in the Petition arising from the
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`proper understanding that “adding to an inquiry message prior to transmission an
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`additional data field” means, at a minimum, that an extra field must be newly added
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`to the inquiry message, such that the total number of fields must increase as a result
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`of the adding. POR 9‒16. Only Patent Owner has offered and applied a construction
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`Patent 6,993,049
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`that reflects what the claim language itself makes explicit, including at least by
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`reciting the “adding” gerund in this context and by using the word “additional” to
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`modify the “data field” term.
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`Thus, regardless where within the inquiry message the “additional data field”
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`is added, and setting aside for now the undisputed fact that the intrinsic evidence
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`purposefully identifies only the end of an inquiry message, there can be no
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`question—and indeed Petitioner does not dispute—that “adding to an inquiry
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`message prior to transmission an additional data field” requires, in the very least,
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`that an extra data field must be added. Patent Owner had identified fatal deficiencies
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`of the Petition arising, at least in part, from the “additional” qualifier modifying the
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`new “data field” and from the nature of a “data field” itself. Petitioner has not and
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`cannot defend against those deficiencies merely by attacking, instead, whether claim
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`11 should be interpreted to require that the added or extra data field must be
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`appended to the end of the inquiry message.
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`Petitioner’s Reply acknowledges that the Board has repeatedly construed “an
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`additional data field” to mean “an additional data field is a data field that is not in
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`the first communications protocol.” Rep. 2‒3, n.1 (citing Microsoft Corp. v. Uniloc
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`2017 LLC, IPR2019-01188, Paper 9 at 13 (P.T.A.B. Dec. 9, 2019), which cites Cisco
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`Sys. Inc. v. Uniloc 2017 LLC, IPR2019-00965, Paper 7 at 8‒11 (P.T.A.B. Nov. 8,
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`2019)). Petitioner then offers the conclusory statement, without any further
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`discussion, that “nothing in the claims, patent, or file history would make that a
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`proper construction for the ’049 patent.” Id. Petitioner also erroneously asserts in
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`Patent 6,993,049
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`the same footnote, again without further discussion, that “Uniloc’s arguments for
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`patentability do not rely on such a construction and, thus, such a construction is not
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`at issue here.” Id.
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`Petitioner’s retreat from the Board’s construction adopted in multiple related
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`matters concerning “an additional data field,” and Petitioner’s mischaracterization
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`of Patent Owner’s Response here, both serve as a tacit acknowledgement of
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`deficiencies arising, at least in part, from what “adding to an inquiry message prior
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`to transmission an additional data field” requires, regardless of where within the
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`inquiry message the “additional data field” is added. In IPR2019-01188, the Board
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`recognized, consistent with Patent Owner’s construction here, that the claim
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`language is distinguishable from merely reusing an already existing data field,
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`particularly when considered in light of the intrinsic evidence. IPR2019-01188,
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`Paper 9 at 13. The claim language at issue there (e.g., “a plurality of predetermined
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`data fields arranged according to a first communications protocol, . . . adds to each
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`inquiry message prior to transmission an additional data field”) is virtually
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`identically identical the claim language at issue here (e.g., “a plurality of
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`predetermined data fields arranged according to a first communications protocol,
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`and adding to an inquiry message prior to transmission an additional data field.”).
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`Accordingly, the Board prior repeated construction is clearly applicable here.
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`2.
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`Petitioner acknowledges the theory set forth in the
`Petition fails to prove obviousness if the claim language
`is limiting as to where within the inquiry message the
`“additional data field” must be added
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`Petitioner does not dispute that additional fatal deficiencies of the Petition
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` 6
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`IPR2019-01026
`Patent 6,993,049
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`arise at least to the extent the Board interprets the claim language to limit where
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`within the inquiry message the “additional data field” must be added—i.e.,
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`“appended to the end of an inquiry message.” POR 6‒8. Petitioner only disputes
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`whether the intrinsic evidence contains limiting statements applicable to the
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`invention as a whole. While this dispute is secondary to other dispositive issues
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`addressed herein, for the sake of completeness, Patent Owner addresses the new
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`argument raised in Petitioner’s Reply.
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`Petitioner’s Reply presents two arguments in asserting claim 11 is not limiting
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`as to where within the inquiry message the “additional data field” must be added.
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`First Petitioner argues, incorrectly, that “no evidence of record suggests that placing
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`the data field at the end was an ‘essential’ or ‘defining’ aspect of the ’049 patent.”
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`Rep. 1‒2. Second, Petitioner points to claim language recited in a distinct claim set
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`of the ’049 patent. Both arguments are premised on a misunderstanding of claim
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`fundamental construction canons. Id., 2.
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`Petitioner provides three citations to the Petition as allegedly being directed
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`to “‘adding’ an additional data field or checking whether such a field has been
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`‘added,’ without any mention of where it is added.” Rep. 2 (citing Ex. 1001, 2:28‒
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`32, 2:42‒44, 2:51‒54, and 2:64‒3:3) (emphasis by Petitioner). The citations all
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`appear in the section of the ’049 patent which summarizes the claimed invention by
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`repeating certain claim language in prose form. Petitioner appears to take the legally
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`erroneous position that statements in the written description can never limit patent
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`claims if the section setting forth the summary of the invention repeats the claim
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`IPR2019-01026
`Patent 6,993,049
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`language in prose form. This clearly is not the law. Indeed, if Petitioner’s radical
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`and wholly undefended view had been correct, then patentees could always and
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`easily escape disclaimer expressed within the specification simply by pointing to a
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`summary section of the invention that repeats claim language verbatim.
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`Given Petitioner’s new argument radically departs from fundamental canons
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`of claim construction. For the sake of brevity, and because those canons are well
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`known to the Board, Patent Owner only emphasizes here that it is well established
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`that a statement in a specification that describes the invention as a whole can support
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`a limiting construction of a claim term. See, e.g., Am. Piledriving Equip., Inc. v.
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`Geoquip, Inc., 637 F.3d 1324, 1334 (Fed. Cir. 2011); Verizon ServicesCorp. v.
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`Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007).
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`It remains undisputed that the ’049 patent describes adding an “additional data
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`field” only in terms of an extra field appended to the end of an inquiry message. The
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`’049 patent itself offers the following unequivocal and universal statement on point:
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`“[a]s mentioned above and shown in FIG. 5, the applicants 60 propose that the
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`inquiry messages issued by the base station have an extra field 504 appended to
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`them, capable of carrying a HID poll message.” Ex. 1001 (’049 patent), 4:59‒62
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`(emphasis added). The ’049 patent further underscores this particular aspect of the
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`claimed invention in the following statement: “[b]y adding the field to the end of
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`the inquiry message, it will be appreciated that non-HID receivers can ignore it
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`without modification. The presence of the extra data field 504 means that the guard
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`space conventionally allowed at the end of a Bluetooth inquiry packet is reduced.”
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`IPR2019-01026
`Patent 6,993,049
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`Id., 5:6‒14 (emphasis added). The same “extra field 504” appended to the end of
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`the inquiry message, as described with reference to Figure 5, is then expressly
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`referenced to describe Figure 6, when summarizing what the ’049 patent expressly
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`refers to as the “present invention.” Id., 6:16‒21 (emphasis added).
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`As explained further in Patent Owner’s Response, at least these example
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`statements, among others also on point, clearly and unambiguously reveal it is
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`appropriate here to consider limiting what the “applicants” expressly identify as their
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`“propos[ition]” for the “present invention”—i.e., an extra data field [504] appended
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`to the end of the inquiry message. POR 6‒8.
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`There is no merit to Petitioner’s new argument in its Reply that it would
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`violate the doctrine of claim differentiation to construe “additional data field” in light
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`of the specification to require “an extra data field appended to the end of an inquiry
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`message.” The Court of Appeals for the Federal Circuit has made clear that limiting
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`statements in the specification, such as those directed to the “present invention,” take
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`precedence in claim construction over claim differentiation. Inpro II Licensing,
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`S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006). Petitioner would
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`have the Board turn this authority in its head by suggesting, without citation to any
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`alleged supportive authority, that claim differentiation somehow operates to
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`supersede limiting statements in the specification. This clearly is not the law.
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`While Patent Owner has explained in its briefing, including herein, why the
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`claim language in question should be construed in light of corresponding description
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`of the present invention, as set forth in the written description, this is not the primary
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`point of differentiation. Rather, Patent Owner has primarily relied upon independent
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`distinctions arising from the very nature of what must be added, regardless of where
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`IPR2019-01026
`Patent 6,993,049
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`within the inquiry message it is added.
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`B.
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`“inquiry message[s]”
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`In a futile attempt to save its Petition, Petitioner new argues in its reply that
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`“inquiry message” means “a query for information” or “a message seeking
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`information.” Pet. 4. Tellingly, Petitioner provides no citation to the Petition or any
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`exhibits submitted therewith in offering its new claim construction. Petitioner could
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`have, but failed to, at least attempt to defend within the Petition itself the tacit claim
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`construction applied therein. Petitioner’s attempt to introduce new argument and
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`evidence in its Reply, allegedly in support of a new claim construction, should be
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`considered waived as untimely; and it should also be deemed a tacit admission that
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`the Petition itself is deficient. Even if the Board were to consider Petitioner’s newly
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`proposed claim construction, it only serves to undermine the Petition by confirming
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`the obviousness theories set forth therein are impermissibly keyed to an incorrect
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`claim construction.
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`Petitioner’s attempt to unreasonably expand “inquiry message” to encompass
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`any query or message seeking anything is wholly untethered to the claim language,
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`when properly understood in light of the intrinsic evidence. While Petitioner
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`references the Markman proceedings in district court (Rep. 4), Petitioner provides
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`no explanation as to why the Board should adopt a construction that would
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`significantly and unreasonably expand claim scope beyond the claim construction
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`IPR2019-01026
`Patent 6,993,049
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`adopted in a district court under the same standard applicable here. Indeed,
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`Petitioner is completely silent concerning the district court analysis of the “inquiry
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`message” term.
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`The district court construed “inquiry message” to mean a “message seeking a
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`response to identify devices available for communication.” Ex. 1027, 16‒17; see also
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`Rep. 4 (citing the same). The court clearly recognized “inquiry message,” when
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`understood in light of the intrinsic evidence, is meaningfully limiting at least in terms
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`of the function of the message—i.e., “a message seeking a response to identify
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`devices available for statement.” Petitioner would have the Board impermissibly
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`and indefensibly vitiate this meaningful limitation by reducing the claim language
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`down to virtually any query or message seeking anything. By acknowledging the
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`Petition is keyed to such an erroneous construction, Petitioner has also
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`acknowledged the Petition must fail.
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`The court also expressly rejected the notion “that the ‘inquiry message’ is any
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`type of inquiry” (i.e., essentially what Petition argues in its Reply). Ex. 1027,
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`16‒17. According to the court, such an interpretation fails at least to recognize that
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`“the ‘inquiry message’ is a message seeking to discover stations with which to
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`communicate.” Id. Petitioner offers no rebuttal to this reasoning set forth in the
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`claim construction order Petitioner attached as Exhibit 1027 to its Petition.
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`Petitioner also does not dispute that its newly proposed construction is wholly
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`inconsistent with, and directly refuted by, that order. Id.
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`11
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`IPR2019-01026
`Patent 6,993,049
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`The court’s construction closely matches Patent Owner’s interpretation here,
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`expressed in its Response, that the ’049 patent consistently and repeatedly describes
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`its “inquiry message” as a type of message used to discover other devices in the
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`vicinity. POR 8‒9. While Patent Owner had further observed that ’049 patent
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`discloses other discoverable devices in the vicinity “may request or join a piconet”
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`(id.), Patent Owner had never stated that a “piconet” itself, or a request to join the
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`same, must be considered an affirmative requirement. Petitioner’s argument in its
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`Reply that Patent Owner should be estopped from asserting a “piconet” is an
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`affirmative requirement is simply a red herring. Rep. 3 (citing Organic Seed
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`Growers & Trade Ass’n v. Monsanto Co., 718 F.3d 1350, 1358 (Fed. Cir. 2013)).
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`Thus, contrary to what Petitioner suggests, the Board need not decide here
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`whether a piconet is required by the “inquiry message” term, or whether estoppel
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`applies to such a construction. Regardless of that non-issue, and for the reasons
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`expressed in Patent Owner’s Response, fatal deficiencies arise at least to the extent
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`the Board finds the Petition is impermissibly keyed to an overbroad construction for
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`“inquiry message” (i.e., essentially any query or message seeking anything). To be
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`clear, the deficiencies on point that Patent Owner had identified in its Response
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`would remain unrebutted, and unchanged, if the Board were to adopt, verbatim, the
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`district court construction of “inquiry message” to mean a “message seeking a
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`response to identify devices available for communication.” Ex. 1027, 16‒17; see also
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`Rep. 4 (citing the same). This is because the Petition admittedly fails to comprehend
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`the claim language is directed to a specific type of message.
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`IPR2019-01026
`Patent 6,993,049
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`V.
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`PETITIONER FAILS TO PROVE OBVIOSNESS OF EITHER
`CHALLENGED CLAIM (11 AND 12)
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`A.
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`Petitioner fails to prove that Larsson discloses “adding to an
`inquiry message prior to transmission an additional data field for
`polling at least one secondary station”
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`Petitioner fails to carry its burden of proving that Larsson discloses the
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`recitation of Claim 11 “adding to an inquiry message prior to transmission an
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`additional data field for polling at least one secondary station.”
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`1.
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`“. . . to an inquiry message . . .”
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`For the “inquiry message” term, Petitioner’s Reply points to disclosure in
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`Larsson allegedly directed to piggybacking Address Resolution Protocol or “ARP”
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`messages onto Request for Route or “RfR” messages. Rep. 7‒8. According to
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`Petitioner, the scope of “inquiry message” should be extended to encompass any
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`“query for information or message seeking information, Larsson satisfies the claim.”
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`Rep. 14 (citing Pet. 26‒28; Rysavy_Reply, ¶ 25). Petitioner chides Patent Owner
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`for not defending the ‘049 patent against such an overbroad construction. Id. But
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`the burden of proof lies with Petitioner; and obviousness cannot be proven by a
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`theory that is keyed to plainly incorrect claim construction. See § IV.B, supra.
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`Petitioner’s Reply also argues, in the alternative, that Larssons’s RFR
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`messages satisfy the limitations directed to an “inquiry message” even if this term is
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`interpreted to require a specific type of message—i.e., as construed in district court,
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`a “message seeking a response to identify devices available for communication.”
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`Ex. 1027, 16‒17; Rep. 14‒15. First, Petitioner acknowledges the theory set forth in
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`the Petition relies on an (overbroad) interpretation which expands claim scope to
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`encompass virtually any query or message encompassing anything. Rep. 15.
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`Petitioner’s obviousness theory set forth in the Petition fails for at least the reasons
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`expressed above and in Patent Owner’s Response. See § IV.B, supra; see also POR
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`8‒9.
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`Second, Petitioner purports to apply what it refers to as “PO’s more narrow
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`construction” by arguing that “Larsson’s RfR messages are in fact used to join two
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`unconnected devices together for communication.” Rep. 14‒15. Petitioner attacks
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`a strawman. Contrary to what Petitioner suggests, Patent Owner did not interpret
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`“inquiry message”
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`to encompass messages configured for rejoining
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`two
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`unconnected devices. Rather, to borrow from the similar phrasing of the district
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`court, Patent Owner had identified deficiencies arising from the type of message
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`required—i.e., “message seeking a response to identify devices available for
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`communication.” Ex. 1027, 16‒17 (emphasis added); see also POR 8 (“The ’049
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`patent repeatedly and consistently describes its ‘inquiry messages’ as a specific type
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`of message used, at least in part, to discover other devices in the vicinity ….”)
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`(emphasis added); § IV.B, supra.
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`Patent Owner’s Response explained why the Petition appeared to be keyed to
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`an incorrect claim construction, which the Reply only confirms by acknowledging
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`the theory of the Petition is that “inquiry message” means any query or message
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`seeking anything. Patent Owner had observed, for example, that “Larsson’s
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`‘broadcast message for route discovery’ is aptly named because its purpose is to
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`discover an optimal route to a known destination node which is already joined to a
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`piconet. See, e.g., Ex. 1005 at Abstract; 4:23‒25; 4:37‒ 47; 5:36‒37; 5:44‒45.” Id.,
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`11. Patent Owner also discussed other portions of Larsson which similarly
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`underscore this same understanding of the disclosure. Id. (discussing Figure 3 and
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`its accompanying description, including at 1:67‒2:1).
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`Petitioner and its declarant do not dispute these points in reply. At most,
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`Petitioner newly argues that Larsson discloses its RfR messages “are used to both
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`‘newly establish[]’ network routes between different devices and also re-establish
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`‘broken’ routes so that the devices can ‘begin[] sending data over the new route.’”
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`Regardless whether Petitioner’s characterization of Larsson is correct, and Patent
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`Owner does not concede that it is, merely reestablishing a broken route is plainly
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`distinguishable on its face from, instead, a message seeking a response to identify
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`which device(s) is available for communication. POR 11; see also Ex. 1027, 16‒17;
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`POR 8 (“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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`devices in the vicinity ….”) (emphasis added); § IV.B, supra. In short, Petitioner
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`fails to defend the theory set forth in the Petition against a construction that is
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`consistent with both what Patent Owner had argued in its Response and the district
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`court ultimately adopted in the parallel litigation. If the Board adopts the court’s
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`construction, therefore, the Petition must fail.
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`2.
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`“adding . . . an additional data field for polling at least one
`secondary station”
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`Patent Owner’s Response had identified a number of example deficiencies in
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`the Petition arising at least from a plain reading of the claim language that an extra
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`data field must be newly added to the “inquiry message” and that the “data field”
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`must be “for polling at least one secondary station.” POR 9‒16.
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`Petitioner’s Reply fails to defend the theory of the Petition that the technical
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`term “piggybacking” (including all its various implementations thereof) is somehow
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`synonymous with “adding . . . an additional data field for polling at least one
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`secondary station.” Petitioner attempts to reduce the multiple example deficiencies
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`identified in Patent Owner had identified down to the singular argument that
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`“Larsson only discloses piggybacking data as opposed to the claimed ‘data field.’”
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`Rep. 7 (citing POR 13). Patent Owner’s Response speaks for itself in refuting such
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`an oversimplification.
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`Even on this singular issue Petitioner chose to address in its Reply, Petitioner
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`has failed to meet its burden to prove obvious. According to Petitioner, Patent
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`Owner overlooked Petitioner’s argument allegedly directed to “how Larsson
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`piggybacks additional messages (such as ARP messages) onto the RfR messages.”
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`Rep. 7‒8. It is Petitioner who has overlooked, and therefore failed to contest, a
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`significant portion of Patent Owner’s response, which includes a discussion of this
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`very issue. POR 9‒16.
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`Petitioner’s alleged focus on how Larsson implements its particular, and
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`distinguishable, form of piggybacking does nothing to address deficiencies arising
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`from what the “additional data field” must be, according to the definition set forth
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`in the claim language itself. Like the Petition itself, Petitioner’s Reply lacks any
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`discussion for the mapping of Larsson set forth in the Petition establishes the alleged
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`“additional data field” is “for polling at least one secondary station” in particular.
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`This too is independently fatal to the Petition.
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`Certain example deficiencies Patent Owner identified manifest themselves in
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`how Petitioner presents its new argument and evidence in its Reply, without any
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`citation to any corresponding argument or evidence included with the Petition as
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`filed. For example, Petition argues, without citation to the Petition, “that ARP
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`messages occupy a field beyond the standard RfR fields, and contain numerous data
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`fields used as part of the ARP protocol.” Rep. 8. As alleged support, Petitioner
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`newly cites only to two unrelated paragraphs of the supplemental testimony of Mr.
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`Rysavy, again without identifying any argument or evidence submitted with the
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`Petition itself. Id. (citing Ex. 1028 ¶¶ 16‒17); see also id., 11 (citing the same).
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`Even if the Board were to consider this untimely argument and evidence on
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`this point, it is utterly unavailing for the proposition it is supported cited. The cited
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`paragraphs of Mr. Rysavy’s supplemental declaration merely offer two conclusory
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`statements follow by quotations from Larrson. 1028 ¶¶ 16‒17.
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`First, Mr. Rysavy asserts “Larsson’s length indicator confirms that there is an
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`additional data field being added” ostensibly because Larrson states “in a protocol
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`where the request for route message is of a fixed length, a