Trials@uspto.gov
`571-272-7882
`
`Paper 9
`Date: July 20, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-002511
`Patent 6,993,049 B2
`____________
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`JUDGEMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`DECISION
`Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`1 LG Electronics, Inc., who filed a petition in IPR2019-01530, has been
`joined as a petitioner in this proceeding.
`
`
`571-272-7882
`
`Paper 9
`Date: July 20, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-002511
`Patent 6,993,049 B2
`____________
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`JUDGEMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`DECISION
`Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`1 LG Electronics, Inc., who filed a petition in IPR2019-01530, has been
`joined as a petitioner in this proceeding.
`
`
`
`IPR2019-00251
`Patent 6,993,049 B2
`
`INTRODUCTION
`I.
`Apple, Inc., (“Petitioner”) filed a Petition (Paper 2, “Pet.”), requesting
`an inter partes review of claims 11 and 12 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.”). Upon
`consideration of the Petition and Preliminary Response, we instituted inter
`partes review of all challenged claims on all grounds raised. Paper 7 (“Dec.
`Inst.”).
`On September 3, 2019, Petitioner filed a Motion to Submit
`Supplemental Information (Paper 9, “Mot.”), and Patent Owner filed an
`Opposition to Petitioner’s Motion (Paper 10, “Opp.”). Patent Owner filed a
`Response to the Petition (Paper 11, “PO Resp.”) and Petitioner filed a Reply
`(Paper 12, “Pet. Reply”). Patent Owner filed a Sur-Reply (Paper 13, “PO
`Sur-Reply”). An oral hearing was held on April 23, 2020, and the hearing
`transcript is included in the record. See Paper 21 (“Tr.”).
`In our Scheduling Order, we notified the parties that “any arguments
`not raised in the [Patent Owner] response may be deemed waived.” See
`Paper 8, 7; see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,766 (Aug. 14, 2012) (“The patent owner response . . . should identify all
`the involved claims that are believed to be patentable and state the basis for
`that belief.”). Patent Owner argues that it “does not concede, and
`specifically denies, that there is any legitimacy to any arguments in the
`instant Petition that are not specifically addressed” in its Patent Owner
`Response. PO Resp. 28 n.3. We decline to speculate as to what Patent
`Owner considers to be not legitimate in the Petition. Any arguments for
`patentability not raised in the Patent Owner Response are deemed waived.
`
`2
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`IPR2019-00251
`Patent 6,993,049 B2
`We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
`Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
`set forth below, we grant Petitioner’s motion to submit supplemental
`information. Further, we find Petitioner has shown by a preponderance of
`evidence that claims 11 and 12 of the ’049 patent are unpatentable.
`A. RELATED PROCEEDINGS
`The parties identify the following related matters:
`Uniloc USA, Inc. et al v. Apple Inc., Case No. 1:18-cv-00164 (W.D.
`Tex.); Uniloc USA, Inc. et al v. Samsung Electronics America, Inc. et al,
`Case No. 2:18-cv-00040 (E.D. Tex.); Uniloc USA, Inc. et al v. Logitech Inc.
`et al., Case No. 5:18-cv-01304 (N.D. Cal.); Uniloc USA, Inc. et al. v. LG
`Electronics USA, Inc. et al, Case No. 3:18-cv-00559 (N.D. Tex.); Uniloc
`USA, Inc. et al v. Huawei Device USA, Inc., Case No. 2:18-cv-00074 (E.D.
`Tex.); Uniloc USA, Inc. et al v. ZTE (USA), Inc. et al, Case No. 2:18-cv-
`00307 (E.D. Tex.); Uniloc USA, Inc. et al v. Blackberry Corp., Case No.
`3:18-cv-01885 (N.D. Tex.); Uniloc 2017 LLC et al v. Microsoft Corp., Case
`No. 8:18-cv-01279 (C.D. Cal.); Uniloc USA Inc. et al v. ZTE (USA), Inc. et
`al, Case No. 3:18-cv-02839 (N.D. Tex.); Uniloc USA, Inc. et al v. LG
`Electronics USA Inc. et al, Case No. 5:18-cv-06738 (N.D. Cal.); Uniloc
`2017 LLC v. ZTE, Inc. et al., Case No. 3:18-cv-03063 (N.D. Tex.); Uniloc
`2017 LLC v. Blackberry Corp., Case No. 3:18-cv-03068 (N.D. Tex.); Uniloc
`2017 LLC v. Motorola Mobility, LLC, Case No. 1:18-cv-01840 (D. Del.);
`Uniloc 2017 LLC v. HTC America, Inc., Case No. 2:18-cv-01727 (W.D.
`Wash.). Pet. 56; Paper 3, 2.
`B. THE ’049 PATENT
`The ’049 patent is directed to a communication system comprising a
`primary station and one or more secondary stations. Ex. 1001, code (57).
`
`3
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`IPR2019-00251
`Patent 6,993,049 B2
`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.
`C. 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
`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.
`D. PRIOR ART AND ASSERTED GROUNDS
`Petitioner asserts the following grounds of unpatentability. Pet. 1–2.
`35 U.S.C. §2
`Claim(s) Challenged
`Reference(s)/Basis
`Larsson3
`11, 12
`§ 103
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103.
`See Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). As the application
`that issued as the ’049 patent was filed before the effective date of the
`relevant amendments, the pre-AIA version of § 103 applies.
`3 U.S. Patent No. 6,704,293 B1 (iss. March 9, 2004) (Ex. 1005, “Larsson”).
`
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`IPR2019-00251
`Patent 6,993,049 B2
`Claim(s) Challenged
`11, 12
`11, 12
`
`35 U.S.C. §2
`§ 103
`§ 103
`
`Reference(s)/Basis
`Larsson, BT Core4
`IrOBEX5
`
`II. PETITIONER’S MOTION TO SUBMIT ADDITIONAL
`INFORMATION
`In its motion to submit additional information, Petitioner seeks to
`submit Exhibit 1020 as evidence to confirm the public accessibility of the
`BT Core reference, which serves as part of Petitioner’s second ground of
`unpatentability in this proceeding. Mot. 1. Patent Owner opposes the
`motion. As the moving party, Petitioner bears the burden of proving that it
`is entitled to the requested relief. 37 C.F.R. § 42.20(c) (2018). Under 37
`C.F.R. § 42.123(a), a party may file a motion to submit supplemental
`information if (1) a request for authorization to file such motion is made
`within one month of the date the trial was instituted; and (2) the
`supplemental information must be relevant to a claim for which trial has
`been instituted. With respect to the first requirement of § 42.123(a), trial
`was instituted in this proceeding on July 22, 2019. Paper 7. Because
`Petitioner requested authorization to file a motion to submit supplemental
`information on August 21, 2019, Mot. 1, Petitioner’s request was made
`within one month of the date the trial was instituted. With respect to the
`second requirement of § 42.123(a), the supplemental information Petitioner
`seeks to submit relates to claims for which trial has been instituted because it
`is directed to the public accessibility of the BT Core reference, which is one
`
`
`4 Bluetooth™ Core Specification Vol. 1, ver. 1.0 B (pub. Dec. 1, 1999)
`(Ex. 1014, “BT Core”).
`5 Infrared Data Association, “IrDA Object Exchange Protocol IrOBEX,” ver.
`1.2, 1–85 (1999) (Ex. 1006, “IrOBEX”).
`
`5
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`IPR2019-00251
`Patent 6,993,049 B2
`of the references at issue in the instituted grounds of unpatentability in this
`proceeding.
`Patent Owner argues we should deny Petitioner’s motion to present
`supplemental information because Petitioner did not explain why the
`supplemental information reasonably could not have been obtained earlier,
`or why granting Petitioner’s motion would be in the interests of justice.
`Opp. 1–3. We disagree. Although, as Patent Owner notes, we invited
`Petitioner to address those issues, see id. at 1, Petitioner’s failure to do so
`does not warrant denying Petitioner’s motion because Patent Owner has
`failed to show that § 42.123(a) requires Petitioner to address those issues.
`We grant Petitioner’s motion to submit supplemental information under 37
`C.F.R. § 42.123(a) with respect to Exhibit 1020.
`
`III. ANALYSIS
`A. LEVEL OF SKILL IN THE ART
`Petitioner asserts that a skilled artisan
`
`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. In addition, according to Petitioner, “[a]dditional education in a
`relevant field, or industry experience may compensate for a deficit in one of
`the other aspects of the requirements stated above.” Id. at 6. Patent Owner
`does not contest or offer its own formulation for a skilled artisan. PO
`Resp. 12. We agree with and adopt Petitioner’s proposal because it is
`
`6
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`IPR2019-00251
`Patent 6,993,049 B2
`consistent with the ’049 patent, as well as the problems and solutions in the
`prior art of record. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d
`1254, 1256 (Fed. Cir. 2007).
`B. CLAIM CONSTRUCTION
`In inter partes review proceedings based on petitions filed before
`November 13, 2018, such as this one, the Board interprets claim terms of an
`unexpired patent using the “broadest reasonable construction in light of the
`specification of the patent.” 37 C.F.R. § 42.100(b) (2018).6 We presume a
`claim term carries its plain meaning, which is the meaning customarily used
`by those of skill in the relevant art at the time of the invention. Trivascular,
`Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). “[W]e need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`1. “inquiry message”
`Petitioner proposes a construction for “inquiry message” as
`encompassing “a message seeking information or knowledge.” Pet. 7–11.
`Patent Owner asserts that Petitioner’s construction is too broad, and
`proposes instead that we construe an “inquiry message” as “a specific type of
`message used, at least in part, to discover other devices in the vicinity which
`may request to join a piconet.” PO Resp. 18; see id. at 13.
`
`
`6 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
`
`7
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`IPR2019-00251
`Patent 6,993,049 B2
`We agree with Petitioner that under the broadest reasonable
`construction, an “inquiry message” encompasses “a message seeking
`information or knowledge.” Petitioner’s construction is consistent with the
`term’s plain meaning. See Ex. 1013, 1376 (Oxford English Dictionary
`defining “inquire” as “seek knowledge of (a thing) by asking a question” and
`an “inquiry” as “the putting of a question, asking, interrogation”). Patent
`Owner’s narrower construction improperly imports a limitation from a
`preferred embodiment in the Specification—i.e., from the Specification’s
`description of inquiry messages applied to Bluetooth technology. See PO
`Resp. 18; see Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875
`(Fed. Cir. 2004) (“it is important not to import into a claim limitations that
`are not a part of the claim. For example, a particular embodiment appearing
`in the written description may not be read into a claim when the claim
`language is broader than the embodiment.”). Nothing in the Specification
`suggests that inquiry messages are limited to those applied to Bluetooth
`technology. To the contrary, as Petitioner notes, the Specification
`recognizes “the inquiry procedure is not restricted to Bluetooth devices and
`is applicable to other communications arrangements.” Ex. 1001, 3:26–29;
`see Pet. Reply 10. Because Petitioner’s construction is more consistent with
`the term’s plain meaning and the Specification, we agree with Petitioner that
`“inquiry message” encompasses “a message seeking information or
`knowledge.”
`2. “additional data field”
`Patent Owner proposes we construe “additional data field” as “an
`extra data field appended to the end of an inquiry message.” PO Resp. 13.
`Petitioner argues Patent Owner’s construction is incorrect in so far as it
`requires an additional data field appended at the end of an inquiry message.
`
`8
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`IPR2019-00251
`Patent 6,993,049 B2
`Pet. Reply 2–3. Petitioner asserts we do not need to further construe the
`term. See id. at 5.
`We agree with Petitioner. Nothing in the term’s plain meaning
`suggests an additional data field must be added at a specific location, i.e., at
`the end of an inquiry message. See Ex. 1021, 4 (defining “additional” as
`“Added, supplementary”). Patent Owner’s proposed construction
`improperly imports a limitation from an embodiment in the Specification.
`See PO Resp. 13–14 (citing Ex. 1001, Fig. 5 and accompanying text).
`Nothing in the Specification, however, suggests that the Figure 5
`embodiment is definitional. Moreover, as Petitioner notes, dependent
`claim 3 (not at issue in this proceeding), explicitly requires “adding the
`additional data field at the end of a respective inquiry message.” Ex. 1001,
`7:50–52 (emphasis added). Thus, the doctrine of claim differentiation
`suggests challenged claims 11 and 12—which have no explicit location
`language—do not require an additional data field must be at the end of the
`inquiry message.
`3. “broadcasting”
`Patent Owner proposes a construction for “broadcasting” as “a
`transmission that is receivable by multiple recipients.” PO Resp. 17.
`Petitioner disagrees with Patent Owner’s construction, and argues we do not
`need to explicitly construe the term. See Pet. Reply 6–9. The parties’
`arguments related to “broadcasting,” impact only Petitioner’s third
`unpatentability ground involving IrOBEX. See PO Resp. 25–27; Pet. Reply
`20–23. Because we do not address that ground for the reasons discussed
`below, see infra section III.D.3, we do not need to address the parties’
`arguments related to “broadcasting.”
`
`9
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`IPR2019-00251
`Patent 6,993,049 B2
`
`C. ASSERTED PRIOR ART
`
`1. Larsson (Ex. 1005)
`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.
`Ex. 1005, code (57).
`2. BT Core (Ex. 1014)
`BT Core defines the requirement 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 payload within a packet, including a data field, id. at 62.
`D. OBVIOUSNESS ANALYSIS
`1. First Ground: Obviousness over Larsson
`Petitioner asserts that claims 11 and 12 would have been obvious over
`Larsson. Pet. 12. Based on Petitioner’s analysis and for the reasons
`explained below, we find Petitioner has shown by a preponderance of
`evidence that claims 11 and 12 would have been obvious over Larsson.
`a. “inquiry message”
`Claim 1 requires “the primary station broadcasting a series of inquiry
`messages.” Petitioner asserts Larsson’s “broadcast message” is the claimed
`“inquiry message.” Pet. 23–26. Patent Owner argues Larsson fails to teach
`an inquiry message because Larsson’s broadcast message is for “route
`
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`IPR2019-00251
`Patent 6,993,049 B2
`discovery,” rather than for “device discovery,” as the claim requires under
`Patent Owner’s construction for inquiry message. PO Resp. 19.
`We agree with Petitioner that Larsson discloses the disputed inquiry
`message limitation under our construction of that term, i.e., “a message
`seeking information or knowledge.” Patent Owner’s argument relies on its
`“inquiry message” construction (i.e., a message used to discover other
`devices), which we decline to adopt for the reasons explained above. As
`even Patent Owner recognizes, Larsson’s broadcast message seeks
`information because “its purpose is to discover an optimal route to a known
`destination node which is already joined to a piconet.” PO Resp. 19
`(emphasis omitted); see, e.g., Ex. 1005, 6:6 (describing a “request for route
`broadcast message”). That is sufficient under our construction. Thus, we
`find Larsson’s broadcast message teaches the disputed inquiry message
`limitation.
`b. “adding . . . an additional data field”
`Claim 1 requires “adding to an inquiry message prior to transmission
`an additional data field for polling at least one secondary station.” Petitioner
`asserts Larsson teaches this limitation because Larsson teaches “the source
`node piggybacks the broadcast message in a request for route broadcast
`message.” Ex. 1005, 6:5–6; see Pet. 23. Petitioner explains, with support
`from its expert, Dr. Knutson, that “the piggybacked broadcast message is the
`additional data field added to the request for route message (inquiry
`message) prior to transmission.” Id. (citing Ex. 1003 ¶ 72). Petitioner goes
`on to explain that “the piggybacked data (i.e., broadcast message for which
`the source node expects a reply) is a data field for polling.” Id. at 25 (citing
`Ex. 1003 ¶ 78). Patent Owner argues that Larsson does not disclose “adding
`. . . an additional data field” because Petitioner uses “data field” and “data”
`
`11
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`IPR2019-00251
`Patent 6,993,049 B2
`interchangeably. PO Resp. 21–22. According to Patent Owner, Petitioner
`does not show sufficiently that Larsson discloses adding a data field, as
`opposed to merely adding data to an existing data field. Id. at 20–23.
`We agree with Petitioner that Larsson teaches the disputed “adding
`. . . an additional data field” limitation. Larsson teaches that “[i]f the source
`node does not expect a reply message . . . the source node will broadcast the
`message to all neighbor nodes.” Ex. 1005, 5:65–7:1. Larsson also teaches
`that “[i]f the source node does expect a reply to the broadcast message, . . .
`the source node piggybacks the broadcast message in a request for route
`broadcast message.” Id. at 6:3–6. In light of those disclosures, a person of
`ordinary skill would have understood that Larsson’s piggybacked broadcast
`message is an entirely separate message from the request for route broadcast
`message. Dr. Knutson testifies that a person of ordinary skill in the art
`would have viewed the piggybacked broadcast message as an additional data
`field for polling. Ex. 1003 ¶¶ 72, 74, 75, 78, 79.
`Patent Owner contends that merely adding piggybacked data to an
`already existing data field of a message is clearly distinguishable from
`adding an additional data field to that message. PO Resp. 21. Patent Owner
`contends that Petitioner’s statement that “the piggybacked broadcast
`message is added to the route request message as an additional data field for
`polling” is conclusory, because the Petition only cites to a single paragraph
`of Dr. Knutson’s declaration as support. Id. at 22 (citing Pet. 25). Patent
`Owner also contends that Dr. Knutson’s testimony is conclusory, because
`Dr. Knutson merely repeats the same statement from the Petition, without
`explaining why he believes the underlying premise is correct. PO Resp. 22–
`23.
`
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`We disagree with Patent Owner that Petitioner’s contention is
`conclusory and only cites to a single paragraph of Dr. Knutson’s testimony,
`because the Petition cites to paragraphs 72–79 of Dr. Knutson’s testimony,
`the disclosures of the Bluetooth specification, Haartsen, and Johansson, and
`describes the similarities between the structure of Larsson’s piggybacked
`data and the structure of the ’049 patent’s poll message. Pet. 23–25 (citing
`Ex. 1003 ¶¶ 72–79; Ex. 1005, 6:22–24, 6:45–62, 7:53–61; Ex. 1010, 1:65–
`67; Ex. 1011, 1:30–32, 1:43–50, 2:49–63; Ex. 1014, 55). We also disagree
`with Patent Owner that Dr. Knutson’s testimony is conclusory. Dr. Knutson
`testifies that Larsson’s piggybacked data has a similar structure to the
`additional data field of the ’049 patent, because both Larsson and the HID
`poll message of the ’049 patent include an address of the destination node.
`Ex. 1003 ¶ 75. Dr. Knutson testifies that, given this similarity, “it would
`have been obvious to POSITA that Larsson’s piggybacked data field is a
`field for polling.” Id. We find Dr. Knutson’s interpretation of Larsson and
`its described ‘piggybacked data’ persuasive. That the ’049 patent itself
`describes the additional data field/poll message as having a similar structure
`is, on balance, consistent with Dr. Knutson’s interpretation of Larsson. As
`such, we find that it would have been obvious to a POSITA that Larsson’s
`piggybacked data field is a field for polling.
`Patent Owner does not address Petitioner’s contentions, supported by
`underlying facts including Dr. Knudson’s testimony, to which we give
`substantial weight. For example, Patent Owner does not address Dr.
`Knudson’s testimony that a person of ordinary skill in the art would have
`viewed the piggybacked message of Larsson as an additional data field
`because of the similarity between the structure of the piggybacked data and
`the structure of the ’049 patent’s poll message. Dr. Knutson explains, with
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`supporting evidence, why a person of ordinary skill in the art would have
`considered the piggybacked broadcast message of Larsson as an additional
`data field for polling. Dr. Knudson’s testimony stands unrebutted.
`Accordingly, we agree with Petitioner that a person of ordinary skill in the
`art would have understood that the piggybacked broadcast message of
`Larsson teaches “adding to an inquiry message prior to transmission an
`additional data field for polling at least one secondary station,” as the
`challenged claims require. See Pet. 23–26; Pet. Reply 14–17.
`c. Undisputed Limitations in Claim 11
`Claim 11 recites “[a] method of operating a communication system
`comprising a primary station and at least one secondary station.” Petitioner
`asserts that Larsson teaches this limitation because “Larsson discloses a
`method of operating the communication system by performing route
`discovery between a source node and a destination node, and transmitting
`broadcast messages from the source node (primary station) to neighboring
`nodes (at least one secondary station).” Pet. 16 (citing Ex. 1005, code (57),
`Figs. 6A–7B, 5:35–67, 11:19–26). Patent Owner does not dispute
`Petitioner’s assertions in this regard. We have reviewed Petitioner’s
`arguments and the underlying evidence cited in support and are persuaded
`Petitioner sufficiently establishes that Larsson teaches “[a] method of
`operating a communication system comprising a primary station and at least
`one secondary station.”
`Claim 11 further recites “the method comprising the primary station
`broadcasting a series of inquiry messages.” Petitioner asserts that Larsson
`teaches this limitation because “Larsson’s source node (primary station)
`broadcasts messages for route discovery to neighboring nodes (at least one
`secondary station) in the communication system.” Pet. 16 (citing Ex. 1005,
`
`14
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`5:35–65). Other than its argument contesting Larsson’s route discovery
`messages as the claimed inquiry messages, which we address supra at
`Section III.D.1a, Patent Owner does not dispute Petitioner’s assertions in
`this regard. We have reviewed Petitioner’s arguments and the underlying
`evidence cited in support and are persuaded Petitioner sufficiently
`establishes Larsson teaches “the method comprising the primary station
`broadcasting a series of inquiry messages.”
`Claim 11 requires that each broadcast message must be “in the form
`of a plurality of predetermined data fields arranged according to a first
`communications protocol.” Petitioner asserts that Larsson teaches this
`limitation because “[i]n Larsson, every broadcast message contains ‘a
`broadcast identifier in [a] network adaptation layer’ and ‘a source address
`which uniquely identifies the source.’” Pet. 20 (quoting Ex. 1005, 5:50–60).
`Moreover, Petitioner explains, “[t]hrough a POSITA’s [Person of Skill in the
`Art] knowledge of Bluetooth, which is disclosed by Larsson, a POSITA
`would have understood that the BD_ADDR includes a set of predetermined
`data fields in a particular arrangement, as defined by Bluetooth.” Id. at 21
`(citing Ex. 1003 ¶¶ 60–61; Ex. 1014, 143); see also id. at 21–22 (explaining
`that “because Larsson uses Bluetooth as its underlying communication
`technology, a POSITA would have understood that Larsson’s request for
`route messages would include fields to comply with the standard Bluetooth
`packet format, which includes an access code field, header field, and
`payload field”). Patent Owner does not dispute Petitioner’s assertions in this
`regard. We have reviewed Petitioner’s arguments and the underlying
`evidence cited in support and are persuaded Petitioner sufficiently
`establishes Larsson teaches “each in the form of a plurality of predetermined
`data fields arranged according to a first communications protocol.”
`
`15
`
`
`
`IPR2019-00251
`Patent 6,993,049 B2
`Claim 11 recites “further comprising the at least one polled secondary
`station determining when an additional data field has been added to the
`plurality of data fields.” Petitioner asserts that Larsson teaches this
`limitation because in Larsson, “[t]he length indicator would indicate a longer
`length when piggyback data is transmitted and a shorter length (e.g., normal
`fixed length) when piggyback data is not transmitted.” Id. at 27 (citing
`Ex. 1003 ¶ 86). Patent Owner does not dispute Petitioner’s assertions in this
`regard. We have reviewed Petitioner’s arguments and the underlying
`evidence cited in support and are persuaded Petitioner sufficiently
`establishes Larsson teaches “the at least one polled secondary station
`determining when an additional data field has been added to the plurality of
`data fields.”
`Claim 11 requires “determining whether [the at least one polled
`secondary station] has been polled from the additional data field.” Petitioner
`asserts Larsson teaches this limitation because it teaches determining “[i]f
`the piggybacked data indicates that the [receiving neighbor] node is the
`destination node,” Ex. 1005, 6:58–59, as well as “[i]f the piggybacked data
`does not indicate that the [receiving neighbor] node is the destination node,”
`id. at 6:46–48. See Pet. 29. Patent Owner does not dispute Petitioner’s
`assertions in this regard. We have reviewed Petitioner’s arguments and the
`underlying evidence cited in support and are persuaded Petitioner
`sufficiently establishes Larsson teaches “determining whether [the at least
`one polled secondary station] has been polled from the additional data field.”
`Claim 11 requires “responding to a poll when [the at least one polled
`secondary station] has data for transmission to the primary station.”
`Petitioner asserts Larsson teaches this limitation because in Larsson, “the
`receiving neighbor node only responds to the request for route message if
`
`16
`
`
`
`IPR2019-00251
`Patent 6,993,049 B2
`the receiving neighbor node has stored data indicative a route back to the
`source node and when the receiving neighbor node is the destination node of
`the request for route message.” Id. at 30 (citing Ex. 1005, 6:11–65; Ex. 1003
`¶¶ 90–91). Patent Owner does not dispute Petitioner’s assertions in this
`regard. We have reviewed Petitioner’s arguments and the underlying
`evidence cited in support and are persuaded Petitioner sufficiently
`establishes Larsson teaches “responding to a poll when [the at least one
`polled secondary station] has data for transmission to the primary station.”
`For the reasons explained above, Petitioner has proved by a
`preponderance of the evidence that claim 11 would have been obvious over
`Larsson.
`d. Claim 12
`Claim 12 depends from claim 11 and additionally requires “wherein
`not all inquiry messages have an additional data field for polling a secondary
`station added to them.” Petitioner asserts Larsson’s “inclusion of the
`piggyback indicator confirms that Larsson’s system sends request for route
`messages with or without piggybacked data.” Id. at 31 (citing Ex. 1003
`¶ 92). As Dr. Knutson explains, “addition of the piggyback indicator would
`be unnecessary, [unless Larsson discloses] the transmission of request for
`route messages with or without piggyback.” Ex. 1003 ¶ 93. Alternatively,
`Petitioner explains, “Larsson’s disclosure of a length indicator . . . also
`suggests that the request for route message may be sent with or without the
`piggyback data” because “the length indicator would indicate a longer length
`when piggyback data is transmitted and a shorter length (e.g., normal fixed
`length) when piggyback data is not transmitted.” Pet. 32 (citing Ex. 1005,
`7:57–61; Ex. 1003 ¶ 94). Patent Owner does not dispute Petitioner’s
`assertions in this regard. We have reviewed Petitioner’s arguments and the
`
`17
`
`
`
`IPR2019-00251
`Patent 6,993,049 B2
`underlying evidence cited in support and are persuaded Petitioner
`sufficiently establishes Larsson teaches “wherein not all inquiry messages
`have an additional data field for polling a secondary station added to them.”
`2. Second Ground: Obviousness over Larsson and BT Core
`a. Petitioner’s Proposed Combination
`Petitioner asserts that claims 11 and 12 would have been obvious in
`view of Larsson and BT Core. Pet. 32. Petitioner’s challenge mirrors its
`earlier challenge based on Larsson alone, except that for this ground,
`Petitioner relies on BT Core’s broadcast Poll transmission feature to more
`clearly teach a data field for the following claim limitations: (1) “a plurality
`of predetermined data fields arranged according to a first communications
`protocol,” (2) “adding to an inquiry message prior to transmission an
`additional data field for polling at least one secondary station,” and (3) “the
`at least one polled secondary station 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.” See id. at 32–33, 37–52.
`As Petitioner explains, “Larsson discloses broadcasting messages using the
`Bluetooth protocol, but does not explicitly disclose the structure of these
`messages.” Id. at 35. Thus, Petitioner reasons, “a POSITA would have
`combined the teachings of Larsson and BT Core to fully realize the
`implementation of Bluetooth in Larsson’s route discover
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