Trials@uspto.gov
`571-272-7882
`
`
`
`
`Paper No. 7
`Entered: December 4, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-01026
`Patent 6,993,049 B2
`____________
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7882
`
`
`
`
`Paper No. 7
`Entered: December 4, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-01026
`Patent 6,993,049 B2
`____________
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`
`
`I.
`INTRODUCTION
`Microsoft Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”),
`requesting an inter partes review of claims 11 and 12 (the “challenged
`claims”) of U.S. Patent No. 6,993,049 B2 (Ex. 1001, “the ’049 Patent”).
`Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary Response to the
`Petition (Paper 6, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. For the reasons discussed below, we grant the Petition and institute
`an inter partes review.
`
`A. THE ’049 PATENT
`The ’049 patent is directed to a communication system comprising a
`primary station and one or more secondary stations. Ex. 1001, Abstract.
`The primary station broadcasts a series of inquiry messages and adds to the
`inquiry messages an additional data field for polling secondary stations. Id.
`This system is useful for communications between the stations without
`requiring a permanently active link, such as is common with the Bluetooth
`communications protocol. Id.
`
`B. ILLUSTRATIVE CLAIM
`Petitioner challenges claims 11 and 12 of the ’049 Patent. Claim 11 is
`the only independent challenged claim and is reproduced below:
`
`11. A method of operating a communication system comprising
`a primary station and at least one secondary station, the method
`comprising the primary station broadcasting a series of inquiry
`messages, each in the form of a plurality of predetermined data
`fields arranged according to a first communications protocol,
`and adding to an inquiry message prior to transmission an
`additional data field for polling at least one secondary station,
`and further comprising the at least one polled secondary station
`
`2
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`determining when an additional data field has been added to the
`plurality of data fields, determining whether it has been polled
`from the additional data field and responding to a poll when it
`has data for transmission to the primary station.
`Ex. 1001, 8:35–47.
`
`C. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 2.
`
`References/Basis
`Claims Challenged 35 U.S.C. §
`Larsson1, Bluetooth Specification2,
`11, 12
`103
`RFC8263
`802.114
`11, 12
`103
`II. DISCUSSION
`A. CLAIM CONSTRUCTION
`In inter partes reviews, we interpret claims “using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this
`standard, we construe claims “in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id. Only claim
`terms that are in controversy need to be construed and only to the extent
`
`
`1 U.S. Patent No. 6,704,293 B1 (iss. Dec. 6, 1999) (Ex. 1004, “Larsson”).
`2 Bluetooth™ Core Specification Vol. 1, ver. 1.0 B (pub. Dec. 1, 1999)
`(Ex. 1005, “Bluetooth Specification”).
`3 David C. Plummer, An Ethernet Address Resolution Protocol,
`IETF Request for Comments No. 826 (Pub. Nov. 1982) (Ex. 1006,
`“RFC826”).
`4 ANSI/IEEE Std 802.11, Part 11: Wireless LAN Medium Access
`Control (MAC) and Physical Layer (PHY) Specifications
`(pub. Aug. 20, 1999) (Ex. 1007, “802.11”).
`
`3
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`Petitioner does not propose any terms for claim construction. See
`Pet. 11–12. Patent Owner proposes we construe “additional data field” as
`“an extra data field appended to an inquiry message.” Prelim. Resp. 5–7.
`We disagree with Patent Owner’s construction. Independent claim 11
`already has language that accounts for the language Patent Owner seeks to
`add through claim construction. Specifically, we do not need to construe an
`“additional data field” as “an extra data field appended to an inquiry
`message” because the challenged claims already recite “adding to an inquiry
`message . . . an additional data field.” Ex. 1001, 8:39–40. To the extent
`Patent Owner seeks to distinguish “appending” from “adding,” on this
`record and for purposes of this Decision, we do not view those two terms as
`meaningfully distinct. To the extent Patent Owner wishes to develop its
`argument in subsequent briefing, we will revisit the issue. However, based
`on the current record and for purposes of this decision, we decline to adopt
`Patent Owner’s proposed construction of “additional data field.”
`B. ASSERTED PRIOR ART
`
`1. Larsson (Ex. 1004)
`Larsson discloses a:
`
`method and/or an apparatus which places a broadcast message
`which the source expects a reply message in a broadcast message
`for route discovery. The combined message is broadcast
`throughout the ad-hoc network. When the combined broadcast
`message is received at the destination node, the destination node
`generates a response message including a reply message to the
`broadcast message including a reply message that the source
`node expects a reply. The response message is sent back to the
`source node over the route which the combined broadcast
`message traveled to the destination node.
`
`4
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`Ex. 1004, Abstract.
`2. Bluetooth Specification (Ex. 1005)
`Bluetooth Specification defines requirements for a transceiver
`operating the Bluetooth wireless communication protocol. Ex. 1014, 18.
`Section 4.4 discusses different data packet types, id. at 55, and Section 4.5
`provides detail of the payload within a packet, including a data field, id. at
`62.
`3. RFC826 (Ex. 1006)
`Relevant to this case, RFC826 describes the structure and content of
`Ethernet Address Resolution Protocol (ARP) messages. Ex. 1006, 1.
`4. 802.11 (Ex. 1007)
`802.11 is an IEEE standard that specifies “[t]he medium access
`control (MAC) and physical characteristics for wireless local area networks
`(LANs).” Ex. 1007, iii. The network includes a basic service set (BSS),
`which is “[a] set of stations controlled by a single coordination function.”
`Id. at 3. To communicate with other stations, a station uses a scan function
`to “determin[e] the characteristics of the available BSSs.” Id. at 101.
`“Active scanning involves the generation of Probe frames and the
`subsequent processing of received Probe Response frames.” Id. at 126. A
`typical broadcast probe request message seeks a response from any BSS and
`does not include the address of a specific SSID. Ex. 1003 ¶ 43 (citing
`Ex. 1007, 126, Fig.66). If a device wishes to probe a specific BSS, however,
`then it includes the SSID of the specifically-targeted BSS during the active
`scanning process. Id. (citing Ex. 1007, 126).
`
`5
`
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`IPR2019-01026
`Patent 6,993,049 B2
`
`C. UNPATENTABILITY
`1. First Ground: Obviousness over Larsson, Bluetooth Specification, and
`RFC826
`Petitioner asserts that claims 11 and 12 would have been obvious in
`view of Larsson, Bluetooth Specification, and RFC826. Pet. 2. Based on
`the current record and as explained below, we find Petitioner has made an
`adequate showing that claims 11 and 12 would have been obvious over
`Larsson, Bluetooth Specification, and RFC826. See id. at 12–39.
`Petitioner relies primarily on Larsson for disclosing the claimed
`method of adding additional data fields to broadcast messages. See id. at
`24–39. As Petitioner notes, “Larsson implements a route discovery
`technique that piggybacks certain types of broadcast messages onto a route
`discovery broadcast messages.” Id. at 13 (internal quotation marks omitted).
`Petitioner identifies “using ‘ARP [Address Resolution Protocol] broadcast
`messages’ in a Bluetooth scatternet” as “an ‘exemplary method’ for
`‘triggering route discovery.’” Id. at 22 (citing Ex. 1004, 7:37–46, 7:15–38,
`Fig. 7); see also id. at 5, 13. Petitioner emphasizes that Larsson uses the
`same “piggyback” language as the ’049 patent to describe adding an
`additional field onto a broadcast message prior to transmission. Id. at 1; see,
`e.g., id. at 13, 14, 15, 22, 24, 32.
`Petitioner explains that although “Larsson discloses broadcasting
`messages using the Bluetooth protocol,” it “does not explicitly disclose the
`structure of these messages.” Id. at 18 (citing Ex. 1005, 5:35–50). Thus,
`Petitioner relies on Bluetooth Specification for teaching that the Bluetooth
`packet general format includes three fields. Id. at 16 (citing Ex. 1005,
`Fig. 4.1). Petitioner explains, with support from its declarant Mr. Rysavy,
`that “a POSITA implementing Larsson would have naturally turned to the
`
`6
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`
`IPR2019-01026
`Patent 6,993,049 B2
`then-current Bluetooth Specification (Ex. 1005), to insure proper
`implementation and use of the underlying Bluetooth protocol.” Id. at 18
`(citing Ex. 1003 ¶ 45). Petitioner further notes that although Larsson teaches
`“generating ARP broadcast messages and then piggybacking them onto
`route request messages,” “Larsson does not, however, provide details on the
`formatting or contents of ARP messages.” Id. at 22. Thus, Petitioner relies
`on RFC826 to fill in those details, including “that ADDRESS
`RESOLUTION packets (ARP messages) contain the Internet address of the
`destination node.” Id. at 34 (citing Ex. 1006, 3–4); see id. at 22. Petitioner
`explains, again with support from its declarant, that a skilled artisan would
`have combined RFC826 with Larsson because “RFC826 was well-known as
`the standard for ARP messaging” and “[a] POSITA . . . would have
`recognized the importance of implementing a system that fully complied
`with ARP messaging formats and contents.” Id. at 22–23 (citing Ex. 1003
`¶¶ 53–55).
`Based on the current record and for purposes of this Decision, we
`agree with Petitioner’s analysis. Specifically, Petitioner has explained
`sufficiently where the asserted combination of Larsson, Bluetooth
`Specification, and RFC826 teaches each limitation recited in claims 11 and
`12. See id. at 24–39. In addition, with the analysis outlined above,
`Petitioner has articulated sufficient reasoning with rational underpinning to
`support the legal conclusion that its proffered combination of Larsson,
`Bluetooth Specification, and RFC826 would have been obvious to one
`skilled in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
`(2007). Patent Owner’s contests Petitioner’s showing related to a single
`limitation. We address Patent Owner’s argument below.
`
`7
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`a. “adding to an inquiry message prior to transmission an additional
`data field for polling at least one secondary station,”
`Independent claim 11 requires “adding to an inquiry message prior to
`transmission an additional data field for polling at least one secondary
`station.” Petitioner asserts that Larsson teaches this limitation because
`“Larsson discloses ‘piggybacking’ other broadcast messages (adding
`additional data fields for polling) onto an [request for route] message.”
`Pet. 32 (citing Ex. 1004, Fig. 6a, 6:3–7, 7a, 7:50–53; Ex. 1003 ¶ 74). As
`Petitioner notes, “‘piggybacking’ is the same term used by the ’049 Patent to
`describe the process of adding an additional data field to an inquiry
`message.” Id. (quoting Ex. 1001, 4:15–18). Based on the current record and
`for purposes of this Decision, we agree with Petitioner that Larsson teaches
`the “adding . . . an additional data field” limitation.
`Patent Owner argues that Larsson does not adequately account for the
`“adding . . . an additional data field.” Prelim. Resp. 8–11. According to
`Patent Owner, Larsson “at most merely indicates that there is additional data
`within the message, not that there is an additional data field, as required by
`the claim language.” Id. at 9. We disagree. Larsson discloses more than
`just additional data. Larsson teaches that “the source node piggybacks the
`broadcast message.” Ex. 1004, 6:5 (emphasis added). Larsson’s
`“piggybacks the broadcast message” disclosure parallels closely the ’049
`patent’s description of adding a data field—i.e. “piggy-back[ing] a
`broadcast channel.” Ex. 1001, 4:16.
`Patent Owner further contends that Petitioner is wrong to equate
`Larsson’s piggy backing with adding an additional data field. See Prelim.
`Resp. 8. According to Patent Owner, the ’049 patent’s “piggy-back”
`passage does not characterize the adding-an-additional-data-field step.
`
`8
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`See id. Instead, Patent Owner argues, the ’049 patent describes adding an
`additional data field later in the Specification, in a passage that uses the term
`“append[ing]” instead of piggy-backing. Id. (citing Ex. 1001, 4:59–62); see
`Ex. 1001, 4:60–62. We disagree with Patent Owner’s argument because the
`’049 patent’s “piggy-back” passage and the subsequent “append[ing]”
`passage clearly address the same adding-a-data-field step. See Ex. 1001,
`4:15–17 (explaining that “it is possible to piggy-back a broadcast channel on
`the inquiry messages” and “[t]he broadcast channel can be used to poll
`HIDs”) (emphasis added), id. at 4:59–62 (“As mentioned above and shown
`in FIG. 5, the applicants propose that the inquiry messages issued by the
`base station have an extra field 504 appended to them, capable of carrying a
`HID poll message.”) (emphasis added). In short, we agree with Petitioner
`that the Specification explicitly characterizes the additional data field as
`“piggy-back[ed].” See Pet. 32.
`2. Second Ground: Obviousness over 802.11
`Petitioner asserts that claims 11 and 12 would have been obvious in
`view of 802.11. Pet. 40. Based on the current record and for the reasons
`explained below, we find that Petitioner has shown sufficiently that Larsson
`renders obvious claims 11 and 12. See id. at 40–53.
`Petitioner Explains that 802.11 describes a local wireless network
`with different stations (STAs) communicating with one another according to
`a protocol. Id. at 40. “802.11 specifies that, as part of the active scanning
`process used to join a network, an STA broadcasts ‘Probe Requests,’” that
`include “predetermined data fields arranged according to the 802.11 wireless
`LAN protocol.” Id. at 46 (quoting Ex. 1007, 126); id. at 46–47 (citing
`Ex. 1007, 45, Fig. 23). Petitioner explains that 802.11 teaches the key
`“adding . . . an additional data field” limitation because it teaches
`
`9
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`[a] Probe Request message is one of two types. A “broadcast”
`type seeks responses from all available access point stations, and
`is indicated by a “0 length” or null SSID. Another type of Probe
`Request, used when the station polls a specific access point, adds
`an additional data field, namely the SSID of that AP. In the latter
`type of probe request, which might be called a “targeted” probe
`request, the added SSID of the targeted station is “an additional
`data field for polling” that station.
`Id. at 48 (citing Ex. 1003 ¶¶ 101–104).
`Patent Owner argues that 802.11 does not teach the adding-an-
`additional-data-field step because “even when [the SSID information field’s]
`length is zero, [it] is nonetheless an existing field in 802.11’s probe request.”
`Prelim. Resp. 11. “[T]herefore,” Patent Owner contends, “merely pointing
`to the times when the ‘SSID information field’ is of non-zero length does not
`disclose adding ‘an additional data field’ as required by the claim language.”
`Id. Patent Owner further notes that a previous claim limitation 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.” Id. at 13. The SSID information field is one the predetermined
`data fields, Patent Owner reasons, rather than an additional data field to be
`added to the inquiry message. Id. at 13.
`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
`understand that ‘0 length’ means that nothing is included for this SSID field,
`i.e., there is no SSID field.” Ex. 1003 ¶ 102. At this stage of the
`proceeding, we view evidence in the light most favorable to Petitioner. See
`37 C.F.R. § 42.108(c). Although we encourage the parties to develop this
`issue further during trial, on this record, Petitioner provides adequate
`
`10
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`
`
`IPR2019-01026
`Patent 6,993,049 B2
`evidence that 802.11’s targeted request teaches the claimed additional data
`field.
`
`D. DISCRETION TO DENY INSTITUTION UNDER § 325(d)
`35 U.S.C. § 325(d) provides that “[i]n determining whether to institute
`or order a proceeding . . . the Director may take into account whether, and
`reject the petition or request because, the same or substantially the same
`prior art or arguments previously were presented to the Office.”
`Patent Owner asserts that we should exercise our § 325(d) discretion
`to decline institution because the Petition relies on “the same art and
`substantially the same arguments” “already before the Board pending IPR
`proceeding IPR2019-00251.” Prelim. Resp. 13. Patent Owner notes that
`“just as in the previously-filed petition, the instant Petition presents Larsson
`and [Bluetooth Specification] as prior art” in its challenge to claims 11 and
`12. Id. at 14–15. Patent Owner further asserts that “Petitioner’s reliance and
`introduction of 802.11 is also immaterial” because 802.11 does not teach the
`additional data field limitation. Id. at 15.
`We decline to exercise discretion to deny the Petition under § 325(d).
`First, we disagree with Patent Owner’s substantive 802.11 argument for the
`reasons explained above. Petitioner’s meritorious challenge based solely on
`802.11, which was not cited in IPR2019-00251, weighs against denying the
`Petition under § 325(d). In addition, we agree with Petitioner that “while
`[Petitioner] relies on some of the same art applied in the other third-party
`petition, Larsson, it presents that art in a different light and relies on other art
`not cited in that petition.” Pet. 4–5. Specifically, the present Petition relies
`on Larsson’s ARP messages to satisfy the claims, including the additional-
`data-field limitations. See id. at 34. The Petition further relies on RFC826
`to show the format of those ARP messages. See id. at 34–35. The IPR2019-
`
`11
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`00251 petition, in contrast, focused on Larsson’s Bluetooth polling packets
`without addressing ARP messages or RFC826. See Apple Inc. v. Uniloc
`2017 LLC, IPR2019-00251, Paper 2 at 15–25 (PTAB Nov. 12, 2018).
`Petitioner’s challenge presents Larsson in a new and different light because
`it relies on different aspects of Larsson, a different overall combination of
`references, and a different supporting declaration to show obviousness. For
`these reasons, we decline to deny the Petition under 35 U.S.C. § 325(d).
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes a reasonable likelihood that Petitioner
`would prevail in showing claims 11 and 12 are unpatentable. We therefore
`institute an inter partes review of claims 11 and 12.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 11 and 12 of the ’049 patent is hereby instituted on the
`grounds presented in the Petition;
`FURTHER ORDERED that no other grounds are authorized for inter
`partes review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, notice is hereby given of the institution of a trial.
`
`
`
`
`
`
`12
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`
`PETITIONER:
`Andrew M. Mason
`Todd M. Siegel
`Joseph T. Jakubek
`John M. Lunsford
`KLARQUIST SPARKMAN, LLP
`andrew.mason@klarquist.com
`todd.siegel@klarquist.com
`joseph.jakubek@klarquist.com
`john.lunsford@klarquist.com
`
`PATENT OWNER:
`James Etheridge
`Jeffrey Huang
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`13
`
`
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