`Microsoft Corporation
`
`IPR2019-01026 – U.S. Patent No. 6,993,049
`(Claims 11–12)
`
`Hearing before Administrative Patent Judges
`Sally C. Medley, Jeffrey S. Smith, & Garth D. Baer
`
`Sarah E. Jelsema
`September 10, 2020
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
`
`Grounds
`
`Petition (Paper 1), 2
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`2
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`
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`Disputed Issues – Claim Construction
`
` “Inquiry message”
` Petitioner: does not require construction but could be
`construed as “a query for information” or “a message
`seeking information.” Petition 11; Pet. Reply, 4
` PO: should be construed as “a specific type of message
`used, at least in part, to discover other devices in the
`vicinity which may request to join a piconet” (POR, 8–9) or “a
`type of message used to discover other devices in the
`vicinity.” PO Sur-Reply, 12
`
`3
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`Disputed Issues – Claim Construction
`
` “Additional data field”
` Petitioner: does not require construction. Petition, 11–12; Pet.
`Reply (Paper 10), 1–6
` PO: should be construed to mean both:
`•
`“an extra data field appended to the end of an inquiry
`message” (POR (Paper 9), 8) and
`“a data field that is not in the first communications
`protocol.” PO Sur-Reply (Paper 12), 5–6 (construction first argued by PO on
`Sur-reply)
`
`•
`
`4
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`Disputed Issues – Larsson Ground
`
` Does Larsson disclose “inquiry messages”?
` Petitioner: Even under PO’s proposed construction, yes. See,
`e.g., Pet. Reply, 13–16
` PO: It appears that PO’s argument is that, if the Board
`adopts its construction, no, but otherwise, yes. See, e.g., PO
`Sur-Reply, 13–15
`
` Does Larsson disclose “additional data field”?
` Petitioner: Even under PO’s proposed constructions, yes.
`See, e.g., Pet. Reply, 7–13
` PO: No. It appears that PO’s position is not reliant on the
`Board adopting its proposed constructions. See, e.g., PO Sur-Reply,
`13–15
`
`5
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`Disputed Issues – 802.11 Ground
`
` Does the 802.11 ground disclose “additional data field”?
` Petitioner: If Board adopts PO’s proposed constructions,
`then no. See, e.g., Pet. Reply, 16–23
` PO: No. It appears that PO’s position is not reliant on the
`Board adopting its constructions. See, e.g., PO Sur-Reply, 20–22
`
`6
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`Claim Construction
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`Prior FWD Construing Terms Under BRI
`
`Apple, Inc. v. Uniloc 2017 LLC, No. IPR2019-00251, 2020 WL 4196575, at *3
`(P.T.A.B. July 20, 2020)
`
`Apple, Inc. v. Uniloc 2017 LLC, No. IPR2019-00251, 2020 WL 4196575, at *4
`(P.T.A.B. July 20, 2020)
`
`8
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`Claim Construction
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`“additional data field”
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`Claim Construction: “Additional Data Field”
`
`1. Must the “additional data field” be added “to the end” of an
`inquiry message? POR, 6–8; Pet. Reply, 1–2
`
`2. Argument PO raises for the first time on sur-reply: Must the
`“additional data field” be “a data field that is not in the first
`communications protocol”? PO Sur-Reply, 4–6
`
`10
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`Claim Construction: “Additional Data Field”
`Added “To The End”
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`POR, 8; see also POR, 6–8
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`11
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`Claim Construction: “Additional Data Field”
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`12
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`’049 Patent (Ex. 1001), 8:35–47 (highlighting added)
`
`
`
`Claim Construction: “Additional Data Field”
`Added “To The End”
` PO seeks to import limitation from disclosed embodiment:
`
`POR, 6–7 (citing ’049 Patent (Ex. 1001) Fig. 5 and 4:59–5:11 (highlighting added by Patent Owner))
`
`13
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`
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`Claim Construction: “Additional Data Field”
`Added “To The End”
` Claim differentiation creates strong presumption that
`“additional data field” need not be added “to the end” of an
`inquiry message. Pet. Reply, 2
`
`14
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`’049 Patent (Ex. 1001) 7:42–52 (highlighting added)
`
`
`
`Claim Construction: “Additional Data Field”
`Added “To The End”
`
`’049 Patent (Ex. 1001) 5:12–14 (cited by PO Sur-Reply, 8–9)
`
`15
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`
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`Claim Construction: “Additional Data Field” “not
`in the first communications protocol”
`
`PO Sur-Reply, 5
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`16
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`PO Sur-Reply, 6 (highlighting added)
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`
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`Claim Construction: “Additional Data Field” “not
`in the first communications protocol”
` May 6, 2019 – Petition filed in this IPR
`
` November 8, 2019 – Board in Cisco Sys. Inc. v. Uniloc 2017 LLC, IPR2019-
`00965 (“Cisco IPR”), involving related patent 6,664,891, adopts “not in the
`first communications protocol” construction Institution Decision (Paper 7), 11
`
` December 9, 2019 – Board in Microsoft Inc. v. Uniloc 2017 LLC, IPR2019-
`01188, involving related patent 6,664,891, adopts Board construction from
`Cisco IPR Institution Decision (Paper 9), 14–15 (cited by Pet. Reply, 2–3, n.1)
`
` January 31, 2020 – In Cisco IPR, Uniloc files POR arguing that the Board’s
`Cisco IPR construction was incorrect Cisco Systems, Inc. v. Uniloc 2017 LLC, IPR2019-00965,
`Paper 9 at 11–12 (filed Jan. 31, 2020) (cited by Pet. Reply, 2–3, n.1)
`
` March 2, 2020 – In Microsoft 891 IPR, Uniloc files POR arguing that the
`Board’s Cisco IPR construction was correct Microsoft Inc. v. Uniloc 2017 LLC, IPR2019-
`01188, Paper 13 at 18 (filed March 2, 2020)
`
`17
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`Claim Construction: “Additional Data Field” “not
`in the first communications protocol”
`
`Uniloc’s position on January 31, 2020:
`“[T]he record is clear, particularly when reviewing the embodiments,
`that the ‘additional data field’ is appended to an inquiry message, but
`need not be a field not in the first communications protocol.
`
`There is nothing in the Detailed Description section of the specification
`of the ‘891 Patent that precludes the additional data field from taking
`the place of a data field provided for by a communications protocol.”
`
`Cisco Systems, Inc. v. Uniloc 2017 LLC, IPR2019-00965, Paper 9 at 11–12 (filed Jan. 31, 2020)
`(emphasis added) (cited by Pet. Reply, 2–3, n.1)
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`18
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`Claim Construction
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`“inquiry message”
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`Claim Construction: “Inquiry Message”
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`1. Should “inquiry message” be limited to “a specific type of
`message used, at least in part, to discover other devices in the
`vicinity which may request to join a piconet” (POR, 8–9) or “a type
`of message used to discover other devices in the vicinity”? PO Sur-
`Reply, 12
`2. Should “inquiry message” be given its plain and ordinary
`meaning or construed, consistent with that meaning, as “a
`query for information” or “a message seeking information”?
`Petition 11; Pet. Reply, 4
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`20
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`Claim Construction: “Inquiry Message”
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`Rysavy Second Decl. (Ex. 1028), ¶ 9 (cited by Pet. Reply, 4, 7)
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`21
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`Claim Construction: “Inquiry Message”
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`Webster’s New World College Dictionary (4th ed. 1999) (Ex. 1037); see also
`Rysavy Second Decl. (Ex. 1028), ¶¶ 9–10 (cited by Pet. Reply, 4–7)
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`22
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`Claim Construction: “Inquiry Message”
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` PO proposes to limit the claimed “inquiry message” based on a
`feature from a Bluetooth embodiment disclosed in the
`Specification:
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`23
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`POR, 8–9
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`
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`Claim Construction: “Inquiry Message”
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`’049 Patent (Ex. 1001), 1:6–8 (cited by Petition, 1)
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`’049 Patent (Ex. 1001), 3:22–29 (highlighting added) (cited by Pet. Reply, 1–2)
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`24
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`
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`Ground 1: Larsson + Bluetooth Spec. +
`RFC826
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`
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`Larsson Discloses “inquiry messages”
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`
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`Prior FWD on Larsson Disclosing Inquiry
`Messages
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`Apple, Inc. v. Uniloc 2017 LLC, No. IPR2019-00251, 2020 WL 4196575, at *5 (P.T.A.B. July 20, 2020)
`
`27
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`Larsson Discloses “Inquiry Messages”
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`Larsson (Ex. 1004), 2:66–3:2 (cited by Petition, 26–27, 28, 39; Pet. Reply. 14, 15)
`
`Larsson (Ex. 1004), 3:25–28 (cited by Petition, 28; Pet. Reply, 14)
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`28
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`Larsson Discloses “Inquiry Messages”
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`Larsson (Ex. 1004), 6:3–7 (cited by Petition, 32; Pet. Reply, 13)
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`29
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`
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`Larsson Discloses “Inquiry Messages”
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`Larsson (Ex. 1004), Fig. 6a (excerpted in part) (excerpted and cited in Petition, 13–14, 26–27, 32;
`cited in Pet. Reply, 12)
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`30
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`Larsson Discloses “Inquiry Messages”
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`’049 Patent (Ex. 1001), 8:35–47 (highlighting added)
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`31
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`
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`Larsson Discloses “Inquiry Messages”
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`Larsson (Ex. 1004), Fig. 7a (excerpted in part) (cited by Petition, 15, 22, 27, 32; Pet. Reply, 12)
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`32
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`Larsson Discloses “Inquiry Messages”
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`33
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`Rysavy Decl. (Ex. 1003), ¶ 63 (cited by Petition, 27, 31)
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`
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`Larsson Discloses “Inquiry Messages”
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`Rysavy Second Decl. (Ex. 1028), ¶ 37 (cited by Pet. Reply, 16)
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`34
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`
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`Larsson Discloses “Inquiry Messages”
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`35
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`Rysavy Second Decl. (Ex. 1028), ¶ 37 (cited by Pet. Reply, 16)
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`Larsson Discloses “Inquiry Messages”
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`Rysavy Second Decl. (Ex. 1028), ¶ 38 (cited by Pet. Reply, 16)
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`36
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`
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`Larsson Discloses “Inquiry Messages”
`
` PO does not dispute that Larsson discloses “inquiry messages”
`under a plain and ordinary meaning of that term or if it is
`construed as “a query for information” or “a message seeking
`information.” POR, 11–12; PO Sur-Reply, 13–15
`
` PO acknowledges that Larsson’s request for route messages
`seek information, noting that their “purpose is to discover an
`optimal route to a known destination node which is already
`joined to a piconet.” POR, 11 (emphasis removed)
`
`37
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`
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`Larsson Discloses “Inquiry Messages”
`
` PO argues that Larsson does not show “inquiry messages”
`under PO’s proposed constructions for that term:
`“a specific type of message used, at least in part, to
`
`discover other devices in the vicinity which may request to
`join a piconet” (POR, 8–9) or
`“a type of message used to discover other devices in the
`vicinity.” PO Sur-Reply, 12
`
`
`
` PO argues that Larsson is “directed to a route discovery
`technique” and that the recited “inquiry messages” require “a
`device discovery technique.” POR, 11
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`38
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`Larsson Discloses Adding
`“additional data fields”
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`
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`Prior FWD Finds Larsson Teaches “Additional
`“Data Field”
`
`Apple, Inc. v. Uniloc 2017 LLC, No. IPR2019-00251, 2020 WL 4196575, at *5 (P.T.A.B. July 20, 2020)
`
`40
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`Larsson Discloses “Additional Data Field”
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`Rysavy Decl. (Ex. 1003), ¶ 75 (cited by Petition, 33)
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`41
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`
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`Larsson Discloses “Additional Data Field”
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`Larsson (Ex. 1004), 7:58–61 (cited by Petition, 15, 22, 33, 38; Pet. Reply, 19)
`
`42
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
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`Larsson Discloses “Additional Data Field”
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`’049 Patent (Ex. 1001), 4:15–17 (highlighting added) (cited by Petition, 1, 8, 32; Pet. Reply, 12)
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`43
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`
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`Larsson Discloses “Additional Data Field”
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`Rysavy Second Decl. (Ex. 1028), ¶¶ 17–18 (cited by Pet. Reply, 8, 11–12)
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`44
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`
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`Larsson Discloses “Additional Data Field”
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`Stevens (Ex. 1036), 56–57 (excerpted in and cited by Pet. Reply,
`10–11); see also RFC826, 3 (Ex. 1006), Larsson (Ex. 1004), 7:58–
`61; Rysavy Second Decl. (Ex. 1028), ¶¶ 32–32, 41–42.
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`45
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`Larsson Discloses “Additional Data Field”
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`46
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`Rysavy Decl. (Ex. 1003), ¶ 78 (cited by Petition, 34–35)
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`
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`Larsson Discloses “Additional Data Field” Added
`“To The End”
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`47
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`Rysavy Second Decl. (Ex. 1028), ¶ 20 (cited by Pet. Reply, 13)
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`
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`Larsson Discloses “Additional Data Field” Added
`“To The End”
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`Rysavy Second Decl. (Ex. 1028), ¶ 20 (cited by Pet. Reply, 13)
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`48
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`Larsson Discloses “Additional Data Field” Added
`“To The End”
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`Rysavy Second Decl. (Ex. 1028), ¶ 20 (cited by Pet. Reply, 13)
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`49
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`
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`Larsson Discloses “Additional Data Field” Added
`“To The End”
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`Rysavy Second Decl. (Ex. 1028), ¶ 20 (cited by Pet. Reply, 13)
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`50
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`
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`Larsson Discloses “Additional Data Field” Added
`“To The End”
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`Rysavy Second Decl. (Ex. 1028), ¶ 20 (explaining use of
`“piggyback” in background reference Ex. 1035)
`(cited by Pet. Reply, 13)
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`51
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`
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`Larsson Discloses “Additional Data Field” “Not In
`The First Communications Protocol”
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`52
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`Larsson (Ex. 1004), 3:50–63 (highlighting added) (cited by Pet. 22, 34, 37)
`
`
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`Larsson Discloses “Additional Data Field” “Not In
`The First Communications Protocol”
`
`53
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`Rysavy Second Decl. (Ex. 1028), ¶ 36 (cited by Pet. Reply, 11)
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`
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`Ground 2: 802.11
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`
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`802.11 Discloses “Additional Data Field”
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`Ex. 1007 (802.11), 55 (highlighting added); see also Rysavy Second Decl. (Ex. 1028), ¶¶
`40–44 (excerpted in and cited by Pet. Reply, 19–20)
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`55
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`802.11 Discloses “Additional Data Field”
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`56
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`Rysavy Second Decl. (Ex. 1028), ¶ 40 (cited by Pet. Reply, 19)
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`
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`802.11 Discloses “Additional Data Field”
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`Rysavy Second Decl. (Ex. 1028), ¶¶ 42–43 (cited by Pet. Reply, 20)
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`57
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`
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`802.11 Discloses “Additional Data Field”
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`Dubuisson (Ex. 1031), 35; see also Rysavy Second Decl. (Ex. 1028), ¶¶ 45–47 (excerpted in and cited by
`Pet. Reply, 20–21, 23)
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`Modbus Protocol (Ex. 1029), 11; see also Rysavy Second Decl. (Ex. 1028), ¶ 48 (cited by Pet. Reply, 21, 23)
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`
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`Appendix
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` Claims
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`59
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`
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`Claim 11
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`60
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`(’049 Patent (Ex. 1001), 8:35–47)
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`
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`Claim 12
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`61
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`(’049 Patent (Ex. 1001), 8:48–50)
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`
`
`IPR2019-01026
`Patent 6,993,049
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on September 4, 2020, a true and correct copy
`
`of PETITIONER’S DEMONSTRATIVE EXHIBIT was served on counsel for
`
`Uniloc 2017 LLC via electronic mail as follows:
`
`Ryan Loveless – Lead Counsel
`ryan@etheridgelaw.com
`Brett Mangrum – Back-up Counsel
`brett@etheridgelaw.com
`James Etheridge – Back-up Counsel
`jim@etheridgelaw.com
`Jeffrey Huang – Back-up Counsel
`jeff@etheridgelaw.com
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
`
`
`By: /Andrew M. Mason/
`Andrew M. Mason (Reg. No. 64,034)
`andrew.mason@klarquist.com
`Todd M. Siegel (Reg. No. 73,232)
`todd.siegel@klarquist.com
`Joseph T. Jakubek (Reg. No. 34,190)
`joseph.jakubek@klarquist.com
`John M. Lunsford (Reg. No. 67,185)
`john.lunsford@klarquist.com
`Sarah E. Jelsema (Reg. No. 70,804)
`sarah.jelsema@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`Counsel for Petitioner
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 1
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`