UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`U.S. Patent No. 7,969,925
`Filing Date: July 8, 2010
`Issue Date: June 28, 2011
`Title: Peer-to-Peer Mobile Data Transfer Method and Device
`
`Inter Partes Review No.: IPR2019-00702
`
`PETITIONER’S REPLY TO PATENT
`OWNER’S RESPONSE TO PETITION
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`WEST/288385215
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`U.S. Patent No. 7,969,925
`Filing Date: July 8, 2010
`Issue Date: June 28, 2011
`Title: Peer-to-Peer Mobile Data Transfer Method and Device
`
`Inter Partes Review No.: IPR2019-00702
`
`PETITIONER’S REPLY TO PATENT
`OWNER’S RESPONSE TO PETITION
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`WEST/288385215
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`
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`IPR2019-00702 – Petitioner’s Reply
`Table of Contents
`
`2.
`3.
`
`I.
`II.
`
`Page
`Introduction ...................................................................................................... 1
`Claim Construction .......................................................................................... 1
`A.
`The “opening a listening software port” Limitation ............................. 1
`1.
`The Limitation Does Not Require That the “listening
`software port” Be Opened Only for a Specific Device ............... 2
`The “listening software port” Only Need Be Opened Once ....... 8
`PO’s Conclusory Attacks on Petitioner’s “Associating”
`Construction Are Both Wrong and Irrelevant ............................ 9
`B. No Order Is Required Between the Steps of Claims 1-2; 8-9;
`and 15-16 ............................................................................................. 12
`III. PO’s Attacks on the Six Grounds of the Petition are All Flawed ................. 14
`A.
`PO’s First Attack Relies on a Flawed Construction ........................... 14
`B.
`PO’s Second Attack Based on Well-Known Ports Is Contrary to
`the Evidence On Which PO Relies ..................................................... 14
`PO’s Additional Attacks Are Also Flawed ......................................... 17
`C.
`IV. PO’s Attack on Dr. Houh’s Declaration is Flawed ....................................... 18
`V.
`The Petition Establishes the Obviousness of Every Dependent Claim ......... 19
`VI. Conclusion ..................................................................................................... 19
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`IPR2019-00702 – Petitioner’s Reply
`Table of Authorities
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`Page(s)
`
`CASES
`3M Innovative Props. Co. v. Avery Dennison Corp.
`350 F.3d 1365 (Fed. Cir. 2003) .......................................................................... 13
`Altiris Inc. v. Symantec Corp.
`318 F.3d 1363 (Fed. Cir. 2003) .......................................................................... 13
`Elekta, Inc. v. Varian Med. Sys. Int’l. AG
`IPR2016-00845, Paper 11 (PTAB Sept. 28, 2016)............................................. 19
`Gillette Co. v Energizer Hldgs., Inc.
`405 F.3d 1367 (Fed. Cir. 2005) .......................................................................... 13
`Intervet Am., Inc. v. Kee-Vet Labs., Inc.
`887 F.2d 1050 (Fed. Cir. 1989) .................................................................... 4, 5, 9
`Shopkick, Inc. v. Novitaz, Inc.
`IPR2015-00279, Paper 11 (PTAB Sept. 3, 2015) ............................................... 18
`
`Thorner v. Sony Computer Entertainment America LLC
`669 F.3d 1362 (Fed. Cir. 2012) ............................................................................ 3
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.
`200 F.3d 795 (Fed. Cir. 1999) ............................................................................ 12
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`ii
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`
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`
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`
`1006
`1007
`1008
`1009
`
`1010
`
`1011
`1012
`1013
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`1014
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`IPR2019-00702 – Petitioner’s Reply
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`Exhibits
`
`Description
`U.S. Patent No. 7,969,925 to Lin (“925 patent”)
`Declaration of Dr. Henry Houh
`File History of U.S. Pat. No. 7,969,925 to Lin
`File History of U.S. Pat. No. 7,961,663 to Lin
`Certified Translation and Original of European Pat. App. Pub. EP
`1 009 153 A1 (“Alos”)
`U.S. Pat. No. 6,847,632 (“Lee”)
`European Pat. App. Pub. EP 1 385 323 A1 (“Cordenier”)
`Complaint for Patent Infringement (“Uniloc Complaint”)
`Declaration of Sandy Ginoza for IETF RFC 1122: Requirements
`for Internet Hosts - Communication Layers with the exhibit
`RFC 1122, “Requirements for Internet Hosts - Communication
`Layers” (“RFC1122”)
`Declaration of Sandy Ginoza for IETF RFC 793: Transmission
`Control Protocol with the exhibit, RFC 793, “Transmission
`Control Protocol” (“RFC793”)
`U.S. Pat. App. Pub. No. 2003/0217174 (“Dorenbosch”)
`U.S. Patent No. 5,163,131 (“Row”)
`W. Richard Stevens, “Unix Network Programming,” Chapters 1,
`“Introduction”; 4, “A Network Primer”; 5, “Communication
`Protocols”; and, 6, “Berkeley Sockets”
`Information Disclose Statement Under 37 C.F.R. §§ 1.97 and 1.98
`that includes “Universal Mobile Telecommunications System
`(UMTS); Technical realization of the Short Message Service
`(SMS) (3G TS 23.040 version 3.5.0 Release 1999)” and was
`submitted August 15, 2002, concurrently with U.S. Pat. App.
`10/218,580, which application was published on February 27,
`2003, as U.S. Pat. App. Pub. 2003/0040300 A1 (“SMS
`Specification”)
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`IPR2019-00702 – Petitioner’s Reply
`EXHIBITS continued
`
`Description
`W. Richard Stevens, TCP/IP ILLUSTRATED, VOLUME 2: THE
`PROTOCOLS (1994)
`U.S. Pat. No. 8,018,877 to Lin
`U.S. Pat. Pub. No. 2005/0278448 to Mazor (“Mazor”)
`Declaration of Harold Ogle Regarding JSR-000120, “Wireless
`Messaging API (WMA) for JavaTM 2 Micro Edition Version
`1.0” with the exhibit JSR 120, “Wireless Messaging API
`(WMA) for Java™ 2 Micro Edition Version 1.0” (“WMA”)
`IBM Dictionary of Computing, 10th Ed. (1993)
`Newton’s Telecom Dictionary, 11th Ed. (1996)
`Declaration of Sandy Ginoza for IETF RFC 2543: SIP: Session
`Initiation Protocol with the exhibit RFC 2543, “SIP: Session
`Initiation Protocol” (“RFC2543”)
`Declaration of Sandy Ginoza for IETF RFC 791: Internet
`Protocol with the exhibit RFC 791, “Internet Protocol”
`U.S. Pat. Pub. No. 2003/0040300
`Declaration of Sandy Ginoza for IETF RFC 2026: The Internet
`Standards Process – Revision 3 with the exhibit, RFC 2026:
`“The Internet Standards Process – Revision 3” (“Internet
`Standards Process”)
`U.S. Pat. No. 7,181,231
`Declaration of Mr. Craig Bishop regarding ETSI TS 123 040
`V3.5.0, “Universal Mobile Telecommunications System
`(UMTS); Technical Realization of the Short Message Service
`(SMS) (3GPP TS 23.040 version 3.50 Release 1999) with
`appendices A-D
`Declaration of Sandy Ginoza for IETF RFC 768: User Datagram
`Protocol with the exhibit, RFC768: User Datagram Protocol
`Declaration of Dr. Henry Houh (for Petitioner’s Reply)
`
`Exhibit No.
`1015
`
`1016
`1017
`1018
`
`1019
`1020
`1021
`
`1022
`
`1023
`1024
`
`1025
`1026
`
`1027
`
`1028
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`IPR2019-00702 – Petitioner’s Reply
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`I.
`
`INTRODUCTION
`Patent Owner’s (“PO”) Response (the “POR”) is, like its Preliminary
`
`Response, unsupported by any expert declaration. The reason for this is readily
`
`apparent: the POR relies on constructions that are contrary to the plain meaning of
`
`the claims and to established case law, what is actually taught in the specification,
`
`and even what is technically possible. The arguments in the POR should be
`
`rejected for the reasons discussed in detail below.
`
`II.
`
`CLAIM CONSTRUCTION
`The POR raises two claim construction issues: (1) the proper construction of
`
`the “opening a listening software port” limitation in independent claims 1, 8 and
`
`15; and (2) whether the “opening a second listening software port” limitation in
`
`claims 2, 9 and 16 requires that this second port be opened only after the port in the
`
`independent claims. Both of PO’s constructions are wrong. Ex. 1028, ¶7.
`
`The “opening a listening software port” Limitation
`A.
`The first step in independent claims 1, 8 and 9 recites in its entirety “opening
`
`a software listening port on an initiating mobile device to receive communications
`
`through the data packet-based communications service.” The POR raises three
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`separate issues with respect to this limitation. Ex. 1028, ¶8.
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`1
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`IPR2019-00702 – Petitioner’s Reply
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`1.
`
`The Limitation Does Not Require That the “listening
`software port” Be Opened Only for a Specific Device
`The linchpin of the POR is PO’s argument that the “opening a listening
`
`software port” limitation must be construed as requiring that the port be opened for
`
`a specific target mobile device. POR, 7-8. This is an attempt to add the italicized
`
`limitations to what the claims actually recite: “opening a software listening port on
`
`an initiating mobile device to receive communications from only a specific target
`
`mobile device through the data packet-based communications service.” PO’s
`
`construction is improper for at least four reasons. Ex. 1028, ¶9.
`
`a.
`
`The Plain Meaning Does Not Support PO’s Erroneous
`Construction
`PO’s construction is contrary to the plain language of the claims. There is
`
`nothing in this limitation requiring that the software listening port be opened in
`
`such a way that it can receive communications from only a specific target mobile
`
`device, and PO offers no declaration from an expert or any other evidence to the
`
`contrary. Ex. 1028, ¶10.
`
`b.
`
`The Specification Does Not Support PO’s Erroneous
`Construction
`To support its erroneous construction, PO cites to only two disclosures in the
`
`specification that identically recite:
`
`Initially, the initiating mobile device opens a TCP port to
`listen for communications from the target mobile device
`[210/310].
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`2
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`IPR2019-00702 – Petitioner’s Reply
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`Response, 8 (citing Ex. 1001, 4:38‒40 and 4:58‒62). PO appears to argue that
`
`those two passages lexicographically define “opening a listening software port” to
`
`require opening the port only for the target device. Id., 8-9. That argument is
`
`nonsense. An equally plausible understanding of the passages relied on by PO is
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`that they explain why the listening software port is opened, not the manner in
`
`which it is opened. For example, if one turns on one’s mobile phone to receive an
`
`expected call from a child, that does not mean that the mobile phone is or must be
`
`configured to receive a call from only that child. Indeed, this latter understanding
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`is compelled when one realizes as explained in further detail below that
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`configuring the listening software port for only the target mobile device is not
`
`possible under the circumstances and using the TCP/IP connection discussed in
`
`those passages. Thus, the specification passages cited by PO do not “clearly set
`
`forth a definition of the disputed claim term other than its plain and ordinary
`
`meaning” that would be necessary for a construction of the “opening a listening
`
`software port” limitation as being limited to opening the port for only a specific
`
`target mobile device. Thorner v. Sony Computer Entertainment America LLC, 669
`
`F.3d 1362, 1365 (Fed. Cir. 2012) (quotations omitted). Ex. 1028, ¶11.
`
`c.
`
`The File History Does Not Support PO’s Erroneous
`Construction
`To support its construction, PO also cites to assertions the applicant made
`
`during the prosecution of the 994 Application that the same “opening a listening
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`3
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`IPR2019-00702 – Petitioner’s Reply
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`software port” limitation requires opening the port for only the specific target
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`device. See, e.g., Response, 8-9, 12-15. Ex. 1028, ¶12.
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`However, erroneous statements made during prosecution cannot overcome
`
`the plain language of the claims. Ex. 1028, ¶12. In Intervet Am., Inc. v. Kee-Vet
`
`Labs., Inc., 887 F.2d 1050 (Fed. Cir. 1989), the remarks section of an amendment
`
`submitted by the applicant there included an erroneous statement that “the claims
`
`are restricted to a single vaccination scheme” when not all claims included this
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`limitation. The district court relied on this statement to hold that all claims of the
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`patent at issue in that case were limited to a single vaccination scheme. The
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`Federal Circuit reversed, holding:
`
`When it comes to the question of which should control,
`an erroneous remark by an attorney in the course of
`prosecution of an application or the claims of the patent
`as finally worded and issued by the Patent and
`Trademark Office as an official grant, we think the law
`allows for no choice. The claims themselves control.
`
`Id., 1054. The Federal Circuit further noted that the “Examiner was not misled or
`
`deceived” by this erroneous mark and that the erroneous remark “was not the end
`
`of prosecution.” Id.
`
`The situation here is similar. The prosecution history statements relied on
`
`by PO are clearly erroneous as nothing in the “opening a listening software port”
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`4
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`IPR2019-00702 – Petitioner’s Reply
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`limitation requires that the listening software port be opened for only a specific
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`target mobile device. Ex. 1028, ¶12. Moreover, as in Intervet, the examiner here
`
`was not misled or deceived. Indeed, the examiner rejected that argument in a
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`January 2, 2009, Interview Summary. Ex. 1004, 324 (“The Examiner and
`
`Applicant, Mr. Daniel Lin discussed the current claim language ‘opening a
`
`listening port’ in view of the teachings of Caloud. No agreement was reached and
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`the Examiner advised Applicant that he will formally consider the response
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`filed …”). Later during prosecution of the 994 Application, in a Supplemental
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`Amendment dated April 10, 2010, the applicant amended the pending claim
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`language to recite “opening a listening software port for the target mobile device”
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`and relied on the “for the target mobile device” language (which is not a part of the
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`limitation at issue here) to argue that the listening software port must be opened
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`only for a specific target mobile device:
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`5
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`IPR2019-00702 – Petitioner’s Reply
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`Ex. 1004, 350; see also Petition, 221 (identifying additional instance in the
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`prosecution history in which application relied on this same additional language
`
`not present in the claims at issue here to support an argument that those claims
`
`required opening a port for a particular target mobile device). When the applicant
`
`filed the application that issued as the 925 patent (four months later on July 8,
`
`2010), the applicant omitted the narrowing claim language. Ex. 1003, 16-19. The
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`Board should therefore reject PO’s argument that the prosecution history compels
`
`its erroneous construction.
`
`d.
`
`PO’s Erroneous Construction Is Wrong Because It
`Cannot Be Implemented Using TCP/IP
`Another fundamental problem with PO’s construction is that it is impossible
`
`to implement that construction under the conditions discussed in the 925 patent
`
`using a TCP connection, which is the only type of connection disclosed in the 925
`
`patent used for implementing ports on the claimed data packet-based
`
`communications service and which is specifically required by dependent claims 7,
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`14 and 20. See, e.g., Ex. 1001, Fig. 2-3; 1:23-42, 2:21-27, 3:53-4:11, 4:31-5:20;
`
`and, Ex. 1028, ¶13.
`
`1 This discussion of the prosecution history in the Petition disproves the assertion
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`in the POR at 6 that the Petition relied “exclusively on extrinsic evidence in
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`addressing the construction of the ‘opening’ limitations” (emphasis in original).
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`6
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`IPR2019-00702 – Petitioner’s Reply
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`The Petition explains that an OPEN call can be either active or passive.
`
`Petition, 14 (citing Ex. 1010, RFC793). Both types of OPEN calls require
`
`arguments for an IP address of a remote/foreign host and for a port number of a
`
`process running on that remote/foreign host. Id. The combination of an IP address
`
`and port number is known as a socket address, or just a socket. A passive OPEN
`
`call with zeroes for each of the remote/foreign IP address and port arguments
`
`results in entry into the LISTEN state and allows for a connection with any
`
`foreign/remote process. Ex. 1010, 11. Alternatively, if a port is to be restricted to
`
`a particular foreign process, the OPEN call must specify the foreign socket address
`
`(both the IP address of the foreign host and the port number for the process on that
`
`host). Ex. 1010, 11; Ex. 1028, ¶14.
`
`Thus, if PO were correct that “opening a listening software port” requires
`
`opening the port only for the target device, the initiating device would need to
`
`know the target device’s socket address (IP address and port number) in order to
`
`specify those arguments in the TCP OPEN call. However, this is inconsistent with
`
`the problem the 925 patent purports to solve, which is that the initiating device
`
`does not know the target device’s network (e.g., IP) address or port number.
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`Ex. 1001, 1:42-51; 4:12-19 (“In order to provide direct data transfer capabilities
`
`between mobile devices, an initiating mobile device must have knowledge of the
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`IP address (and possibly, a port) of the target device in order to establish a direct
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`7
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`IPR2019-00702 – Petitioner’s Reply
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`data transfer. Current mobile multimedia message solutions, such as MMS do not
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`provide direct data transfer capabilities because the initiating mobile device is not
`
`able to obtain the receiving mobile device’s IP address.”) Thus, in the
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`embodiments described in the specification and specifically required in dependent
`
`claims 7, 14 and 20, PO’s construction is simply not possible. Indeed, if the
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`initiating device already knew the information necessary to perform a TCP active
`
`OPEN, then the initiating device could simply proceed to the “establishing a data
`
`transfer session” step using TCP/IP without having to first use a page-mode
`
`messaging service to perform the “transmitting” and “receiving” steps as recited in
`
`claims 1, 8 and 15 of the 925 patent. Notably, the POR offers no explanation (let
`
`alone evidence) as to how a listening software port for only a specific target mobile
`
`device could be opened without knowledge of the target mobile device’s IP
`
`address and port number. The reason for the lack of evidence is simple – this is
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`not possible using TCP. Ex. 1028, ¶15.
`
`The “listening software port” Only Need Be Opened Once
`2.
`In addition to arguing that claimed “listening software port” must be opened
`
`only for a specific target mobile device, PO also argues that “the claim language
`
`‘requires opening a listening software port every time that initiating mobile device
`
`desires to establish communications with a particular target mobile device.’”
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`POR, 8-9 (citing the same prosecution history at Ex. 1004, 316 discussed above).
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`8
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`IPR2019-00702 – Petitioner’s Reply
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`However, this assertion is clearly erroneous as the words “every time” do not
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`appear in the “opening a listening software port” limitation, and nothing in the
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`specification indicates that a listening software port must be opened “every time”
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`data is to be exchanged. Accordingly, this part of PO’s construction should also be
`
`rejected as contrary to the Federal Circuit’s holding in Intervet discussed above.
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`Finally, a requirement that a port be open “every time” would be inconsistent with
`
`the claims, which recite that a port is open to receive plural “communications”
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`(claim 1) and plural “invitation messages” (claim 2). Ex. 1001, 5:49-50, 6:2-3; see
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`also identical language for claims 8-9 and 15-16; Ex. 1028, ¶16.
`
`3.
`
`PO’s Conclusory Attacks on Petitioner’s “Associating”
`Construction Are Both Wrong and Irrelevant
`PO attacks Petitioner’s construction of the “opening a listening software
`
`port” limitation by mischaracterizing Petitioner’s construction as “replac[ing] the
`
`word ‘opening’ with ‘associating.’” POR, 6. This is incorrect because Petitioner’s
`
`construction replaces the phrase “opening a listening software port” with the
`
`phrase “associating a port identifier with a process” rather than simply replace the
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`word “opening” with “associating” as PO asserts. Petition, 21-22 and 10-17. PO
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`further asserts that Petitioner’s construction “fails to give effect to the meaningful
`
`and limiting term chosen by the patentee,” but PO never identifies any effect that
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`Petitioner’s construction fails to give the “opening” term. Response, 6. PO’s
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`assertion fails and Petitioner’s construction is correct because the construction uses
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`IPR2019-00702 – Petitioner’s Reply
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`“associating” in the same way that the claims themselves use “associated” in the
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`“transmitting” limitations that immediately follow the “opening” limitations. See,
`
`e.g., Ex. 1001, 5:52-57, 6:34-39, 7:19-24 (each reciting, “a network address
`
`associated with the initiating mobile device”) (emphasis added). As explained in
`
`the Petition, the port number associated with a process uniquely identifies that
`
`process on a computer and the IP address associated with the computer uniquely
`
`identifies that computer in the network. Petition, 12-13. PO’s Response also
`
`demonstrates the flaw in this attack when it uses “associated” in the same way to
`
`describe the 925 patent:
`
`The initiating mobile device may further utilize and
`incorporates a unique identification number (e.g.,
`telephone number, PIN number, etc.) associated with the
`target mobile device into the invitation message to locate
`and contact the target mobile device within the wireless
`mobile network.
`
`POR, 2 (emphasis added). PO closes its first attack by complaining that
`
`“Petitioner offers no explanation as to why ‘associating’ is more appropriate here.”
`
`Response, 6. The Petition explains at length why Petitioner’s construction is
`
`correct under applicable law. Petition, 21-22 and 10-17. Ex. 1028, ¶17.
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`PO’s second attack is a variation of its first attack. PO again
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`mischaracterizes Petitioner’s construction as “reduce the ‘opening’ limitations as
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`10
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`IPR2019-00702 – Petitioner’s Reply
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`merely purposed for “associating a port identifier with a process …” POR, 6-7.
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`Substituting Petitioner’s construction in the limitation illustrates the
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`mischaracterization:
`
`opening a listening software port [associating a port
`identifier with a process] on an initiating mobile device
`to receive communications through the data packet-based
`communications service
`
`See, e.g., Petition, 21-22 and 10-17. PO continues its second attack by asserting
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`that it “is inconsistent with the remainder of the limitation and the surrounding
`
`context.” Response, 6-7. The Board should reject this second attack because PO
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`never identifies any “surrounding context” and never explains how Petitioner’s
`
`construction is inconsistent with the remainder of the limitation or any
`
`“surrounding context.” Response, 6-7. The Board should also reject this attack
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`because (i) as illustrated above, Petitioner’s construction retains all elements of the
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`remainder of the limitation, and (ii) as explained for the first attack, Petitioner’s
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`construction is consistent with the remainder of the claims and correct under
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`applicable law. Ex. 1028, ¶18.
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`PO’s third attack asserts without explanation or evidence that Petitioner’s
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`construction is incorrect because it does not require opening the port only for the
`
`target device “notwithstanding the explicit claim language to the contrary.”
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`POR, 7. The Board should reject this attack because there is no requirement in the
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`11
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`IPR2019-00702 – Petitioner’s Reply
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`claim for the listening software port to be opened for only a specific target mobile
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`device for the reasons discussed above. Ex. 1028, ¶19.
`
`In addition to being wrong, PO’s arguments concerning “associating” are
`
`irrelevant because the POR fails to identify any reason why adopting the
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`“associating” part of the construction in the Petition leads to an erroneous result.
`
`Ex. 1028, ¶20. Absent such an explanation, there is no reason for the Board to
`
`address this issue. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in
`
`controversy, and only to the extent necessary to resolve the controversy”).
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`The POR uses the adjective “untethered” at least three times to describe
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`Petitioner’s construction of the “opening a listening software port” limitation.
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`POR, 5, 8, and 9. However, as demonstrated above, it is PO’s construction that is
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`untethered – untethered to the plain language of the claims, untethered to the
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`specification of the 925 patent, untethered to Federal Circuit case law, and
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`untethered to the reality of what is even possible using TCP. For those reasons,
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`PO’s construction must be rejected.
`
`B.
`
`No Order Is Required Between the Steps of Claims 1-2; 8-9;
`and 15-16
`As explained in the Petition, there is nothing in independent claims 1, 8
`
`and 15 or in dependent claims 2, 9 and 16 that requires that the steps in the
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`independent claims be performed in any particular order with respect to the steps in
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`IPR2019-00702 – Petitioner’s Reply
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`the dependent claims. Petition, 20-21. The Petition also explains that nothing in
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`the specification requires any such temporal relationship. Id., 22. Id.
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`Ex. 1028, ¶21. The Petition further cites Altiris Inc. v. Symantec Corp., 318 F.3d
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`1363, 1371 (Fed. Cir. 2003) for the proposition that no such temporal relationship
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`should be required under such circumstances.
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`In response, PO wrongly asserts that the Petition failed to explain its
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`construction. POR, 9-10. PO then asserts that the word “second” in the “opening
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`a second listening software port” limitations in the dependent claims is “clearly” an
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`explicit reference to the listening software port of claim 1 having been opened first.
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`POR, 9-10. True to form, this attorney argument is unsupported by any evidence.
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`Ex. 1028, ¶21-22. This argument is also contrary to well-established Federal
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`Circuit case law that terms such as “first” and “second” do not in and of
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`themselves impose an order. See, e.g., 3M Innovative Props. Co. v. Avery
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`Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003) (stating that the “use of the
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`terms ‘first’ and ‘second’ is a common patent-law convention to distinguish
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`between repeated instances of an element or limitation,” and rejecting assertion
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`that ‘first ... pattern’ and ‘second ... pattern’ claim limitations imposed a serial or
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`temporal limitation); see also Gillette Co. v Energizer Hldgs., Inc., 405 F.3d 1367,
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`1373 (Fed. Cir. 2005) (same).
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`IPR2019-00702 – Petitioner’s Reply
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`PO identifies nothing more than the use of “second” in the dependent claims
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`to support its construction. POR, 10. Therefore, its assertion that the “opening a
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`second listening software port” steps in the dependent claims must be performed
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`only after the port in claim 1 has been opened must be rejected. Ex. 1028, ¶22.
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`III. PO’S ATTACKS ON THE SIX GROUNDS OF THE PETITION ARE
`ALL FLAWED
`A.
`PO’s First Attack Relies on a Flawed Construction
`PO first argues that all six grounds of the Petition are flawed because they
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`rely on a construction of the “opening a listening software port” limitation of the
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`independent claims that is not limited to a specific target mobile device. POR, 11-
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`12. This argument fails because PO’s construction is wrong for the reasons
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`discussed above. Moreover, there is no dispute that the prior art renders obvious
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`that the intended purpose of opening the port is to receive responsive
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`communications or invitations. Petition, 29-35 (Ground 1), 38-41 (Ground 2), 45-
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`51 (Ground 3), 53-55 (Ground 4), 58-64 (Ground 5), and 65-68 (Ground 6).
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`Ex. 1028, ¶23.
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`B.
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`PO’s Second Attack Based on Well-Known Ports Is Contrary to
`the Evidence On Which PO Relies
`PO next makes an argument concerning well-known ports. POR, 13-15.
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`This argument is flawed for several reasons. First and foremost, each of the three
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`grounds of the Petition directed to an independent claim relies on a theory that uses
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`ports not known in advance in addition to a theory that uses well-known ports.
`14
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`IPR2019-00702 – Petitioner’s Reply
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`Petition, 29, 32 (Ground 1), 44, 48 (Ground 3), and 61 (Ground 5). Thus, even if
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`any of PO’s arguments concerning well-known ports had merit (they do not for the
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`reasons discussed below), they would not be sufficient to overcome any challenge
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`in the Petition. Ex. 1028, ¶24.
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`PO also seems to argue—yet again without any expert support—that well-
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`known ports would not be well-known to a POSITA. POR, 13. This is wrong as
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`well-known ports were well-known to a POSITA as the applicant admitted in its
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`appeal brief in the 994 Application. See, e.g., Petition, 10-11 (e.g., quoting
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`Ex. 1004, 415: “It is well-known in the art that any general computer system may
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`open different types of default or well-known listening software ports for specific
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`purposes.”); and Ex. 1028, ¶25.
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`PO next cites Ex. 1010 for the proposition that well-known sockets are
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`permanently assigned to a particular sockets, and then argues that “[a] port that is
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`permanently assigned and made available a priori to all devices in general is not
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`one that [sic, is] even available for ‘opening’ as claimed.” POR, 13-14. To the
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`extent that this argument relies on PO’s erroneous construction that requires that
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`the listening software port be opened for a specific target mobile device, it must be
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`rejected as being based on a flawed construction. However, to the extent that this
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`argument is a reprisal of the argument in PO’s Preliminary Response that a well-
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`IPR2019-00702 – Petitioner’s Reply
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`known port cannot be opened because it is available “a priori,” this argument fails
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`for two reasons. Ex. 1028, ¶26.
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`First, as discussed in the Institution Decision (Paper 7, “Decision”), this
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`assertion is nothing more than attorney argument, and PO has again failed to
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`produce any evidence to support it. Decision, 18 (“PO, however, has failed to
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`explain why a person having ordinary skill in the art (1) would have understood
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`that a well-known socket would not require ‘opening a listening port’ ... PO relies
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`only on attorney argument, which cannot take the place of record evidence.”)
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`Ex. 1028, ¶26.
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`Second, the passage of applicant’s Appeal Brief discussed in the POR at 14
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`flatly contradicts this argument because it states: “Such well-known TCP ports are
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`not opened by default on mobile devices because mobile devices do not run
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`servers for data packet based communications services by default.” POR, 14
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`(citing Ex. 1004, 416) (emphasis added). The challenged claims all require that the
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`“opening a listening software port” step be performed “on an initiating mobile
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`device.” Ex. 1001, claims 1, 8, and 15. Contrary to PO’s attorney’s assertion that
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`these well-known ports are available “a priori,” a POSITA would have understood
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`that they must be opened if they are to be used, just like any other port.
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`Ex. 1028, ¶26.
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`IPR2019-00702 – Petitioner’s Reply
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`PO’s Additional Attacks Are Also Flawed
`C.
`PO argues on 15-16 that the claims require that the port be opened for a
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`specific target mobile device. This argument is flawed because it is based on a
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`flawed construction as discussed above. Ex. 1028, ¶27.
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`PO then distinguishes between packet-switched networks and circuit-
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`switched networks, (POR, 16-17), and argues that this distinction defeats grounds
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`based on the combination of Alos and RFC793 (i.e., Grounds 1 and 2), (POR, 18-
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`19), and grounds based on the combination of Cordenier and RFC793 (i.e.,
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`Grounds 3 and 4), (POR, 19-20). PO does not contend that this distinction
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`between packet-switched networks and circuit-switched networks has any effect on
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`Grounds 5 or 6 based on the combination of Lee and RFC793. Thus, even if this
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`argument were sound (it is not), it does not overcome the Petition’s showing of
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`unpatentability for any claim. Ex. 1028, ¶28.
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`Moreover, this argument is clearly flawed. As discussed in the Petition,
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`Alos discloses that the wireless connections 13, 23 connect the phones 1, 2 to
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`Internet service providers. Petition, 23. Thus, communications over wireless
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`connections 13, 23 conform to the Internet Protocol, which is indisputably a
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`packet-switched protocol. The implementation of Internet Protocol (ISO level 3)
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`over lower level (i.e., ISO level 2) switched telephone network links does not mean
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`IPR2019-00702 – Petitioner’s Reply
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`that the IP network is not packet-switched. Thus,
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