`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG Electronics, Inc.
`
`Petitioner
`
`v.
`
`UNILOC 2017 LLC
`
`Patent Owner
`
`IPR2019-01530
`
`PATENT 6,993,049
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
` PURSUANT TO 37 C.F.R. §42.107(a) AND
`
`OPPOSITION TO MOTION FOR JOINDER
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`

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`Table of Contents
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`
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION ....................................................................................... 1
`
`PETITIONER IS TIME-BARRED UNDER 35 U.S.C. § 315(B) .............. 1
`
`PETITIONER DOES NOT ARGUE FOR INSTITUTION
`INDEPENDENT OF ITS JOINDER MOTION ......................................... 2
`
`IV.
`
`PETITIONER FAILS TO PROVE UP REFERENCES AS PRIOR ART . 3
`
`A. Procedural deficiencies of the BT Core document
`
`B. Procedural deficiencies of IrOBEX
`
`4
`
`11
`
`THE ’049 PATENT ................................................................................... 13
`
`RELATED PROCEEDINGS .................................................................... 15
`
`V.
`
`VI.
`
`VII.
`
`THE LEVEL OF ORDINARY SKILL IN THE ART .............................. 16
`
`VIII.
`
`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM ........... 16
`
`A. Claim Construction
`
`17
`
`1. “additional data field” ................................................................................ 19
`2. “broadcasting” ........................................................................................... 21
`3. “inquiry message[s]” ................................................................................. 23
`B. Claim 11: “adding to an inquiry message prior to transmission an
`additional data field for polling at least one secondary station”
`
`25
`
`1. All mappings applied in the Petition fail to properly interpret the
`limitations directed to “adding an additional data field” ................................. 25
`2. Petitioner’s mapping of Larsson’s “broadcast message for route
`discovery” onto the claimed “inquiry message” is tainted by an incorrect
`claim construction ............................................................................................ 25
`3. Petitioner fails to prove Larsson renders obvious limitations directed to
`“adding . . . an additional data field” ............................................................... 26
`4. Petitioner at least fails to prove modifying Larsson to incorporate BT
`Core’s polling packet render obvious claim limitations directed to the
`“additional data field” ...................................................................................... 30
`C. IrOBEX is not shown to disclose “the method comprising the primary
`station broadcasting a series of inquiry messages”
`33
`
`D. The Petition Fails As To The Challenged Dependent Claim 12
`
`35
`
`IX.
`
`PETITIONER’S MOTION FOR JOINDER SHOULD BE DENIED ..... 35
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`ii
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`

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`CONCLUSION ......................................................................................... 37
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`X.
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`iii
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`EXHIBITS
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`
`
`Exhibit
`No.
`2001 Complaint in Uniloc USA, Inc. et al v. LG Electronics USA, Inc. et
`
`Description
`
`al, 3-18-cv-00559 (N.D. Tex.), Dkt. 1
`
`2002 Summons Returned Executed in Uniloc USA, Inc. et al v. LG
`
`Electronics USA, Inc. et al, 3-18-cv-00559 (N.D. Tex.), Dkt. 10
`
`2003 Declaration of Brett Mangrum, submitted as Ex. 2003 in IPR2019-
`
`00251 Edition, 1999
`
`2004 Excerpts from Microsoft Computer Dictionary, Fourth Edition
`
`2005 Summons Returned Executed in Uniloc USA, Inc. et al v. LG
`
`Electronics USA, Inc. et al, 3-18-cv-00559 (N.D. Tex.), Dkt. 11
`
`2006 LG DEFENDANTS’ UNOPPOSED MOTION FOR AN
`
`EXTENSION OF TIME TO RESPOND TO PLAINTFFS’
`
`COMPLAINT FOR PATENT INFRINGEMENT, Uniloc USA, Inc.
`
`et al v. LG Electronics USA, Inc. et al, 3-18-cv-00559 (N.D. Tex.),
`
`Dkt. 12
`
`
`
`
`
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`I.
`
`INTRODUCTION
`
`IPR2019-01530
`U.S. Patent 6,993,049
`
`UNILOC 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
`
`Response to Petition IPR2019-01530 for Inter Partes Review (“Pet.” or “Petition”)
`
`of United States Patent No. 6,993,049 (“the ’049 Patent” or “EX1001”) filed by LG
`
`Electronics Inc. (“Petitioner”), and opposition to Petitioner’s Motion for Joinder
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`(Paper 3). The instant Petition is procedurally and substantively defective for at least
`
`the reasons set forth herein, and joinder should be denied.
`
`II.
`
`PETITIONER IS TIME-BARRED UNDER 35 U.S.C. § 315(B)
`
`Contrary to Petitioner’s statement alleging standing, Pet. 1, at least real-party-
`
`in-interest LG Electronics U.S.A., Inc. was served a complaint alleging
`
`infringement of the ’049 patent more than one year prior to the filing of this
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`petition. Thus, pursuant to 35 U.S.C. § 315(b), inter partes review may not be
`
`instituted.
`
`On March 9, 2018, a complaint alleging infringement of the ’049 patent was
`
`filed against LG Electronics U.S.A., Inc., LG Electronics, Inc., and LG Electronics
`
`Mobilecomm U.S.A. Inc. EX2001, Complaint in Uniloc USA, Inc. et al v. LG
`
`Electronics USA, Inc. et al, 3-18-cv-00559 (N.D. Tex.), Dkt. 1. On March 28, 2018,
`
`a Summons Returned Executed as to LG Electronics U.S.A. Inc. was filed,
`
`indicating service of the complaint on March 19, 2018. EX2002, Summons
`
`Returned Executed in Uniloc USA, Inc. et al v. LG Electronics USA, Inc. et al, 3-18-
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`1
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`
`
`IPR2019-01530
`U.S. Patent 6,993,049
`
`cv-00559 (N.D. Tex.), Dkt. 10. The Petition in this case was filed on August 22,
`
`2019, more than one year after service. In addition, the complaint was served on
`
`LG Electronics Mobilecomm U.S.A., Inc. on March 19, 2018, and counsel for LG
`
`Electronics, Inc. acknowledged waiver of service in a filing with the court on April
`
`9, 2018. Ex. 2005, Summons Returned Executed in Uniloc USA, Inc. et al v. LG
`
`Electronics USA, Inc. et al, 3-18-cv-00559 (N.D. Tex.), Dkt. 11; Ex. 2006, LG
`
`DEFENDANTS’ UNOPPOSED MOTION FOR AN EXTENSION OF TIME TO
`
`RESPOND TO PLAINTFFS’ COMPLAINT FOR PATENT INFRINGEMENT,
`
`Uniloc USA, Inc. et al v. LG Electronics USA, Inc. et al, 3-18-cv-00559 (N.D. Tex.),
`
`Dkt. 12.
`
`Accordingly, the Petition’s assertion that “Petitioner is not barred or estopped
`
`from requesting IPR of the Challenged Claims on the grounds identified in this
`
`petition” because “Petitioner was first served with a complaint of infringement of
`
`the ’049 patent less than one year prior to the filing of this Petition,” Pet. 1, is false.
`
`Not only must trial not be instituted, but the Board should also deny Petitioner’s
`
`Motion for Joinder because of Petitioner’s false statement, as argued below in
`
`Section IX, infra.
`
`III. PETITIONER DOES NOT ARGUE FOR INSTITUTION
`INDEPENDENT OF ITS JOINDER MOTION
`
`In addition to the undisclosed § 315(b) time bar, the petition should also be
`
`denied based on the Board’s discretion under § 325(d). Petitioner affirmatively
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`2
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`IPR2019-01530
`U.S. Patent 6,993,049
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`states that the Petition presents the same grounds as in IPR2019-00251 (“Apple
`
`IPR”), and makes no attempt to distinguish the art and arguments presented in the
`
`Petition from that presented in IPR2019-01026. Thus, Patent Owner understands
`
`Petitioner to be seeking institution solely based on its motion to join the Apple IPR.
`
`Patent Owner nonetheless presents additional, non-exhaustive reasons for
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`denying the Petition for failing to demonstrate a reasonable likelihood of prevailing.
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`IV. PETITIONER FAILS TO PROVE UP REFERENCES AS PRIOR ART
`
`The Petition is procedurally defective at least because it fails to meet
`
`Petitioner’s burden to prove that the documents relied upon were indeed publicly
`
`available prior art. See, e.g., ServiceNow, Inc., v. Hewlett-Packard Co., IPR2015-
`
`00716, Paper No. 13 at 8, 15‒17 (P.T.A.B. Aug. 26, 2015). All evidence, including
`
`evidence tending to show public availability, must satisfy the U.S. Federal Rules of
`
`Evidence. See 37 C.F.R. § 42.62.
`
`In IPR2015-00716, the Board found that the petitioner had not met its burden
`
`to prove that references asserted in its petition were prior art. The Board explained
`
`its finding, in part, in that the declarants did not testify to having personal
`
`knowledge of the references being publicly accessible before the critical date. Id. at
`
`18‒20. As a result, the petitioner’s only evidence of the alleged publication dates
`
`was the respective date appearing on the face of each exhibit. Id. at 8. The Board
`
`concluded the dates themselves were inadmissible hearsay and, consequently,
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`3
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`IPR2019-01530
`U.S. Patent 6,993,049
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`petitioner had not proven the references qualify as prior art printed publications. Id.
`
`at 18‒20. The same reasoning and conclusion apply here.
`
`A.
`
`Procedural deficiencies of the BT Core document
`
`Petitioner asserts that the reference it identified as BT (Bluetooth) Core (Ex.
`
`1014) qualifies as prior art under at least 35 U.S.C § 102(a). Pet 3. Petitioner then
`
`provides a few unexplained citations as alleged support for the conclusory statement
`
`that “the Bluetooth Core specification was released and available for download or
`
`order from Bluetooth’s website in December 1999 (at least by March 1, 2000).” Id.
`
`Nothing in the Petition itself, its attached declarations, or in the unexplained
`
`citations, establishes that BT Core was publicly accessible before the alleged
`
`“Critical Date” of June 26, 2000. See Pet. 2. All Petitioner is left with is asserting
`
`the date appearing on the face of the BT Core document for the truth of the matter
`
`asserted—i.e., inadmissible hearsay. This hearsay of BT Core cannot be cured by
`
`relying on more hearsay set forth in the additional references Petitioner cites.
`
`The present facts invoke a pair of final written decisions issued March 6,
`
`2017 and upholding the patentability of the patents challenged in IPR2015-01835
`
`and IPR2015-01836.1 In each matter the PTAB instituted trial on the same two
`
`
`1 See Coalition for Affordable Drugs VIII, LLC v. The Trustees of the University of
`
`Pennsylvania, IPR2015-01835, Paper 56 (P.T.A.B. March 6, 2017) and Coalition
`
`for Affordable Drugs VIII, LLC v. The Trustees of the University of Pennsylvania,
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`IPR2019-01530
`U.S. Patent 6,993,049
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`grounds. One obviousness ground relied on a webcast containing a slide
`
`presentation, as well as a purported record of the slide presentation evidenced by a
`
`link from an internet archive, Wayback Machine. The petitioner argued that the
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`slide presentation was accessible on a website of the webcast’s host and was a
`
`printed publication. It offered as evidence a press release (which stated the webcast
`
`would be archived for “on-demand replay”), screenshots from Wayback Machine’s
`
`archive of the webcast host’s website showing a link to a pdf of the presentation,
`
`and the slides themselves.
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`The PTAB did not reach the merits of the obviousness argument, instead
`
`concluding that the petitioner had not met its initial burden of establishing that the
`
`webcast qualified as a printed publication.2 In concluding the petitioner failed to
`
`establish that the slide presentation itself was publicly accessible before the critical
`
`date, the PTAB found it significant that Wayback Machine displays an error when
`
`attempting to access the pdf allegedly containing the slide presentation, and that the
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`petitioner had provided no evidence that the slides were obtained through that
`
`hyperlink and had not provided the actual source for the slides.
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`The present facts are strikingly similar. First, Petitioner here also “relies on
`
`‘Wayback Machine’ screenshots to show what may have been posted in [March of
`
`
`
`IPR2015-01836, Paper 58 (P.T.A.B. March 6, 2017).
`
`2 See note 1, infra.
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`IPR2019-01530
`U.S. Patent 6,993,049
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`2004], but the screenshots do not show the [BT Core document], but only a
`
`hyperlink.” IPR2015-01835, Paper 56 at 20; see also Exs. 1016‒1019. Second, “[i]f
`
`a user attempts to access the hyperlink” allegedly linking to BT Core itself, “the
`
`Wayback Machine displays an error message” only. Id. This “makes it impossible to
`
`test the veracity of [Petitioner’s] assertion that the [BT Core document] marked as
`
`Ex. 1014 actually appeared at this link.” Id. Third, the Petition fails to establish that
`
`BT Core was obtained through any hyperlink of Exhibits 1016-1019. Finally, the
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`Petition also fails to provide the actual source for BT Core (Ex. 1014).
`
`Petitioner’s Exhibits 1016-1019 are each examined in turn to underscore their
`
`respective deficiencies. Without any supportive affidavit by a person purporting to
`
`have personal knowledge, Petitioner first points to Exhibit 1016 as allegedly
`
`containing an archived capture of “Bluetooth’s website” as of March 1, 2000. Pet. 3
`
`(citing Ex. 1016). Petitioner fails to inform the Board, but almost certainly was
`
`aware, that clicking the link Petitioner identified from Exhibit 1016 does not
`
`provide access to BT Core. Rather, clinking the link results in an error because the
`
`linked-to file (whatever it may be) is “corrupted” and “damaged” beyond repair, as
`
`shown by the example screenshots that follow, and as the Board can confirm for
`
`itself.
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`IPR2019-01530
`U.S. Patent 6,993,049
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`
`See https://web.archive.org/web/20000301081902/http://www.bluetooth.com/devel
`
`oper/specification/specification.asp (hand icon added); see also Ex. 2003.
`
`
`
`
`
`Id.
`
`Thus, as was the case in IPR2015-01836 and IPR2015-01835, the link
`
`allegedly providing public access to the cited art (in this case the BT Core reference,
`
`Ex. 1014) in fact displays an error when selected. This makes it impossible to test
`
`the veracity of Petitioner’s assertion that the BT Core reference (Ex. 1014) was
`
`actually available to the public via this link as of the alleged date. Indeed, it is
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`IPR2019-01530
`U.S. Patent 6,993,049
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`telling that the Petition identifies no archived webpage from the Wayback Machine
`
`allegedly containing the cited BT Core reference itself.
`
`In addition, Petitioner neglects to mention, though presumably was aware,
`
`that the link from Exhibit 1016 does not even attempt to access a file purportedly
`
`archived by Wayback Machine before the alleged “Critical Date” of June 26, 2000.
`
`See Pet. 2. Rather, it links to a webpage dated by Wayback Machine as purportedly
`
`archived no sooner than Aug. 18, 2000 (another inadmissible hearsay date), albeit
`
`the link results in the aforementioned error—i.e., the linked-to file (whatever it may
`
`be) is “corrupted” and “damaged” beyond repair. See https://web.archive.org/web/
`
`20000818173005/http://www.bluetooth.com/developer/specification/core_10_b.pdf;
`
`see also Ex. 2003.
`
`Petitioner also overlooks that the webpage marked as Exhibit 1016 provides a
`
`“Member Login” link at the top of the page, which suggests certain information was
`
`made available only to members—i.e., not generally available to the public.
`
`Ex. 1016 at 1.
`
`
`
`Petitioner’s alternative reliance on Exhibit 1017 fares no better. Clicking on
`
`the links identified on that page also consistently results in error, as shown by way
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`IPR2019-01530
`U.S. Patent 6,993,049
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`of example in the two screen captures reproduced below:
`
`
`See https://web.archive.org/web/20000301011704/http://www.bluetooth.com/devel
`
`oper/specification/core.asp (hand icon added); see also Ex. 2003.
`
`
`Id. Contrary to what Petitioner suggests, the link Petitioner identified from Exhibit
`
`1018 (“Specification Intro”) is not a link to the source of cited BT Core reference
`
`itself (Ex. 1014), but rather it is a link to the unavailing webpage discussed above,
`
`which Petitioner filed as Exhibit 1016. Id. Finally, Petitioner does not even allege
`
`that Exhibit 1019 provides a link to the alleged source of BT Core.
`
`Yet another fatal procedural defect is that Petitioner makes no attempt to
`
`authenticate the webpages purportedly obtained from the Wayback Machine and
`
`filed as Exhibits 1016-1019. “When offering a printout of a webpage into evidence
`
`to prove the website’s contents, the proponent of the evidence must authenticate the
`
`information from the website itself, not merely the printout.” See, e.g., Standard
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`IPR2019-01530
`U.S. Patent 6,993,049
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`Innovation Corp. v. LeLo, Inc., Case IPR2014-00148, Paper 42 at 10 (P.T.A.B. Apr.
`
`23, 2015), rehearing denied, IPR2014-00148, Paper 44 (P.T.A.B. Aug. 13, 2015);
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`Victaulic Co. v. Tieman, 499 F.3d 227, 236 (3d Cir. 2007), as amended (Nov. 20,
`
`2007) (citing United States v. Jackson, 208 F.3d 633, 638 (7th Cir. 2000)). The
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`Board has required that “[t]o authenticate printouts from a website, the party
`
`proffering the evidence must produce some statement or affidavit from someone
`
`with knowledge of the website . . . for example a web master or someone else with
`
`personal knowledge would be sufficient.” EMC Corp. v. Personalweb Techs., LLC,
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`Case IPR2013-00084, Paper 64 at 45-46 (P.T.A.B. May 15, 2014) (quoting St.
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`Luke’s Cataract & Laser Inst., P.A. v. Sanderson, 2006 WL 1320242, at *2 (M.D.
`
`Fla. May 12, 2006)), a’ffd, 612 Fed. Appx. 611 (Fed. Cir. 2015).
`
`The PTAB considered similar facts in Neste Oil Oyj v. REG Synthetic Fuels,
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`LLC, IPR2013-00578, Paper 53 (P.T.A.B., March 12, 2015). There, the declarant
`
`purportedly used the Wayback Machine to obtain printouts of websites evidencing
`
`that the relied upon reference qualifies as prior art. The patent owner subsequently
`
`filed a motion to exclude the Wayback Machine printouts on the basis that they
`
`were not properly authenticated.
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`In granting the motion to exclude, the Board noted that authentication of an
`
`item of evidence requires that “the proponent must produce evidence sufficient to
`
`support a finding that the item is what the proponent claims it is.” Id. (citing Federal
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`10
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`IPR2019-01530
`U.S. Patent 6,993,049
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`Rules of Evidence 901(a)). The Board stated that “[w]hen offering a printout of a
`
`webpage into evidence to prove the website’s contents, the proponent of the
`
`evidence must authenticate the information from the website itself, not merely the
`
`printout.” IPR2013-00578, Paper 53. The Board found that the declarant did not
`
`have the personal knowledge of the websites depicted in the Wayback Machine
`
`printouts. Thus, the Board concluded that the Wayback Machine printouts lacked
`
`authentication and granted a motion to exclude them.
`
`While Patent Owner has not yet filed a motion to exclude Exhibits 1016-1019
`
`as not properly authenticated, the same reasoning applies here should Patent Owner
`
`seek to do so. And even if those exhibits ultimately are not excluded, the fact that
`
`Petitioner failed to properly authenticate provides an additional and independent
`
`basis to give the evidence little if any weight.
`
`For at least the foregoing reasons, the Petition fails to establish that BT Core
`
`(Ex. 1014) qualifies as a prior art printed publication under the statute cited.
`
`B.
`
`Procedural deficiencies of IrOBEX
`
`Petitioner’s alternative reliance on IrOBEX v. 1.2. specification (“IrOBEX,
`
`marked as Ex. 1006) suffers from analogous procedural deficiencies. At a
`
`minimum, nothing in the Petition itself, or in the cited paragraphs from the
`
`declaration of Dr. Charles Knutson (Ex. 1008), establishes that IrOBEX was
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`publicly accessible before the alleged “Critical Date” of June 26, 2000. See Pet. 2.
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`IPR2019-01530
`U.S. Patent 6,993,049
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`The Petition offers the conclusory statement that “the IrOBEX protocol was
`
`published on a website, www.irda.org, maintained by the Infrared Data Association
`
`and available to the general public through the website.” Pet. 2. As alleged support,
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`Petitioner cites, without explanation, to Dr. Knutson’s declaration. Id. (citing Ex.
`
`1008 at ¶¶ 2‒11, 14‒20). It is well established, however, that even if a petitioner
`
`includes an expert declaration, the petition, itself, must contain the analysis and
`
`arguments of the expert’s declaration in the Petition itself. See 37 C.F.R.
`
`§ 42.6(a)(3); see also, e.g., InTempur Sealy International Inc. v. Select Comfort
`
`Corporation, IPR2014-01419, Paper 7 (P.T.A.B. Feb, 17, 2015). In any event, Dr.
`
`Knutson’s testimony and the citations included only in his declaration (and not
`
`included in the Petition itself) do not lend evidentiary support.
`
`Dr. Knutson does not purport to have personal knowledge of whether the
`
`specific document Petitioner identified as IrOBEX (Ex. 1006) was itself publicly
`
`accessible via the www.irda.org website as of March 18, 1999 (the date appearing
`
`on the face of the document). At most, Dr. Knutson alleges that he personally
`
`accessed IrOBEX “through the www.irda.org website after March 18, 1999.” Ex.
`
`1008, ¶3 (emphasis added). Dr. Knutson’s tellingly opaque use of the phrase “after
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`March 18, 1999” simply does not establish that he personally accessed IrOBEX
`
`through the www.irda.org website sometime before the alleged “Critical Date” of
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`June 26, 2000. Pet 2.
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`IPR2019-01530
`U.S. Patent 6,993,049
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`While Dr. Knutson cites to alleged archived pages from the Wayback
`
`Machine (id., ¶8), Dr. Knutson also does not purport to have personal knowledge as
`
`to how the WayBack Machine (also referred to as “Internet Archive”) purportedly
`
`obtained and archived those pages. At best, Dr. Knutson cites those pages for the
`
`truth of the matter asserted concerning the dates the WayBack Machine added to the
`
`top of those pages. This is inadmissible hearsay offered from a document that is not
`
`properly authenticated. See § II.A, supra. Tellingly, Dr. Knutson also fails to
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`identify any alleged archival of the IrOBEX document itself by the Wayback
`
`Machine.
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`For at least the foregoing reasons, the Petition fails to establish that IrOBEX
`
`(Ex. 1006) qualifies as a prior art printed publication under the statute cited.
`
`V. THE ’049 PATENT
`
`The ’049 patent is titled “Communication system.” The ʼ049 patent issued
`
`January 31, 2006, from U.S. Patent Application No. 09/876,514 filed June 7, 2001,
`
`which claims priority from British Application No. 0015454, filed June 26, 2000,
`
`and British Application No. 0020076, filed August 15, 2000. The Petition does not
`
`dispute that the effective filing date of the ’049 Patent is June 26, 2000.
`
`The inventors of the ’049 patent observed that at the time of the invention,
`
`there was an increasing interest in enabling devices to interact via wireless
`
`communication links, thereby avoiding the need for extensive cabling. An example
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`IPR2019-01530
`U.S. Patent 6,993,049
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`of a communication system which may be used for such wireless links is a
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`Bluetooth network. Ex. 1001, 1:9‒15.
`
`One application for which use of Bluetooth was proposed was the connection
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`of controller devices to host systems. A controller device, also known as a
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`Human/machine Interface Device (HID), is an input device such as a keyboard,
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`mouse, games controller, graphics pad or the like. Certain HIDs did not typically
`
`require a link having high data throughput, though they might require a very
`
`responsive link.
`
`A Bluetooth system may be capable of supporting
`
`the
`
`throughput
`
`requirements of certain HIDs. However, the degree of responsiveness required
`
`could be more difficult to achieve. An active Bluetooth link could offer a reasonably
`
`responsive service, but this required both the setting up of a link and its
`
`maintenance, even during periods of inactivity. Id., 1:27‒39. Setting up a link
`
`required a HID to join, as a slave, the piconet including the host system (which
`
`would typically act as piconet master, i.e. a base station). Joining the piconet
`
`required two sets of procedures, namely ‘inquiry’ and ‘page’. Inquiry allowed a
`
`would-be slave to find a base station and issued a request to join the piconet. Page
`
`allowed a base station to invite slaves of its choice to join the net. Analysis of those
`
`procedures indicated that the time taken to join a piconet and then to be in a position
`
`to transfer user input to the master could be several tens of seconds. Id., 1:52‒61.
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`14
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`IPR2019-01530
`U.S. Patent 6,993,049
`
`According to the invention of the ’049 Patent, there is provided a
`
`communications system comprising a primary station and at least one secondary
`
`station, wherein the primary station has means for 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 means for adding to an inquiry
`
`message prior to transmission an additional data field for polling at least one
`
`secondary station, and wherein the or each polled secondary station has means for
`
`determining when an additional data field has been added to the plurality of data
`
`fields, for determining whether it has been polled from the additional data field and
`
`for responding to a poll when it has data for transmission to the primary station. Id.,
`
`2:22‒35.
`
`VI. RELATED PROCEEDINGS
`
`The following proceedings are currently pending cases concerning U.S. Pat.
`
`No. 6,993,049 (EX1001).
`
`Case Name
`
`Case Number
`
`Court
`
`Filing Date
`
`Microsoft Corp. v. Uniloc
`
`IPR2019-01026
`
`PTAB May 6, 2019
`
`2017 LLC
`
`Apple Inc. et al v. Uniloc 2017 LLC
`
`IPR2019-00251
`
`PTAB Nov. 12, 2018
`
`Uniloc USA, Inc. et al v. Samsung
`
`2-18-cv-00040
`
`EDTX
`
`Feb. 23, 2018
`
`Electronics America, Inc. et al
`
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`15
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`IPR2019-01530
`U.S. Patent 6,993,049
`
`VII. THE LEVEL OF ORDINARY SKILL IN THE ART
`
`The Petition alleges that “[a] person of ordinary skill in the art as of the
`
`Critical Date of the ’049 Patent (‘POSITA’) would have had a Master’s of Science
`
`Degree (or a similar technical Master’s Degree, or higher degree) in an academic
`
`area emphasizing electrical engineering or computer engineering with a
`
`concentration in wireless communication systems or, alternatively, a Bachelors
`
`Degree (or higher degree) in an academic area emphasizing electrical or computer
`
`engineering and having two or more years of experience in wireless communication
`
`systems.” Pet. 5-6. Given that Petitioner fails to meet its burden of proof in
`
`establishing prima facie anticipation or obviousness when applying its own
`
`definition of a person of ordinary skill in the art (“POSITA”), Patent Owner does
`
`not offer a competing definition for POSITA at this preliminary stage, though it
`
`reserves the right to do so in the event that trial is instituted.
`
`VIII. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`
`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless .
`
`. . there is a reasonable likelihood that at least one of the claims challenged . . . is
`
`unpatentable”). The Petition should be denied as failing to meet this burden.
`
`The Petition raises the following obviousness challenges under 35 U.S.C.
`
`§ 103:
`
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`16
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`
`
`Ground
`1
`
`Claims
`11 and 12
`
`11 and 12
`
`11 and 12
`
`2
`
`3
`
`
`
`A. Claim Construction
`
`IPR2019-01530
`U.S. Patent 6,993,049
`
`Reference(s)
`
`Larsson3
`Larsson and BT Core4
`
`IrOBEX5
`
`As of the filing date of the Petition, of August 22, 2019,6 the standard for
`
`claim construction in Inter Partes Review is the standard of “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.” 37 C.F.R. §42.100(b)
`
`(effective November 13, 2018). For all claim terms, Uniloc requests that the Board
`
`adopt the ordinary and customary meaning of the claim term as understood by one
`
`of ordinary skill in the art.
`
`Here, the Petitioner and declarant7 improperly apply “the broadest reasonable
`
`
`3 EX1005, U.S. Patent No. 6,704,293.
`
`4 EX1014, Specification of the Bluetooth System: Wireless connections made easy,
`
`Core, Vol. 1.
`
`5 EX1006, IrDA Object Exchange Protocol.
`
`6 The claim construction standard was modified as to Petitions for Inter Partes
`
`Review filed on or after November 13, 2018.
`
`7 The declarant improperly applies the broadest reasonable construction in light of
`
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`17
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`IPR2019-01530
`U.S. Patent 6,993,049
`
`interpretation standard,” even though the present Petition was clearly filed after
`
`November 13, 2018. The Petitioner contends that this is proper because the
`
`Petitioner has requested to be joined as a party to IPR proceeding IPR2019-00251,
`
`which was filed before November 13, 2018. However, that Petitioner has requested
`
`to be joined to another IPR proceeding does not change the fact that the present
`
`petition for which the claims are being construed was filed after November 13, 2018
`
`and therefore is subject to interpretation under 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” standard. There is simply no basis for applying the
`
`“broadest reasonable interpretation” standard to claims being construed in a petition,
`
`like the present Petition, that was filed after November 13, 2018.
`
`In addition, as explained below, Petitioner bases its patentability challenges
`
`on erroneous constructions, which provide an independent and fully-dispositive
`
`basis to deny the Petition in its entirety. See Mentor Graphics Corp., v. Synopsys,
`
`Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11,
`
`2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569
`
`the specification standard in his declaration, EX1005, ¶ [0038], and expressly states
`
`
`
`that he is applying the “broadest reasonable interpretation” standard at various
`
`points of his declaration. See, e.g., EX1005, ¶¶ [0039], [0040], [0046], [0078], and
`
`[0116].
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`IPR2019-01530
`U.S. Patent 6,993,049
`
`(Fed. Cir. 2016) (finding Petitioner’s claim construction unreasonable in light of the
`
`specification, and therefore, denying Petition as tainted by reliance on an incorrect
`
`claim construction).
`
`1.
`
` “additional data field”
`
`“‘When a patent ‘repeatedly and consistently’ characterizes a claim term in a
`
`particular way, it is proper to construe the claim term in accordance with that
`
`characterization.’” Profoot, Inc. v. Merck & Co., 663 F. App’x 928, 932 (Fed. Cir.
`
`2016) (quoting GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1370 (Fed. Cir. 2016)).
`
`The ’049 patent repeatedly and consistently characterizes the term “additional data
`
`field” to be “an extra data field appended to the end of an inquiry message.”
`
`Figure 5 depicts the additional data field as element 504:
`
`Ex. 1001, Fig. 5 (highlighting added).
`
`As shown in the screenshot reproduced below, the corresponding description
`
`makes clear that the additional data field is an extra field that is appended to the end
`
`
`
`an inquiry message:
`
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`19
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`IPR2019-01530
`U.S. Patent 6,993,049
`
`
`
`
`
`Ex. 1001, 4:59‒5:11 (highlighting added).
`
`The ’049 patent clearly defines, including in the example disclosure
`
`emphasized above, that the term “additional data field” refers to “an extra data field
`
`appended to the end of an inquiry message”. Indeed, the specification explains why
`
`appending an extra data field (i.e., in addition to the “predetermined data fields
`
`arranged according to a first communications protocol”) to the end of the inquiry
`
`message is an essential and defining aspect of the claimed invention. Specifically,
`
`appending an extra field to the end of the inquiry message is essential at least
`
`because “non-HID receivers can ignore it without modification.” Id. (emphasis
`
`added).
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`20
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`IPR2019-01530
`U.S. Patent 6,993,049
`
`None of the mappings applied in the Petition address this aspect of the
`
`claimed invention reflected in the recitation, “adding to an inquiry message prior to
`
`transmission an additional data field for polling at least one secondary station,” as
`
`recited in claim 11.
`
`“Appended” in this context refers to “appended to the end” of the “inquiry
`
`message” referenced in the “additional data field” clause. This accurately