`
`Inter Partes Review of
`
`U.S. Patent No. 8,949,954
`
`IPR2020-00441
`
`Oral Hearing: April 21, 2021
`
`1
`
`GOOGLE EXHIBIT 1036
`Google LLC v. Uniloc 2017 LLC
`IPR2020-00441
`
`
`
`Instituted Grounds
`
`• Ground 1: Claims 1–4, 6, 12, and 14 are obvious in view of Steinberg and
`Oberheide
`
`• Ground 2: Claim 9 is obvious in view of Steinberg, Oberheide and
`McDowell
`
`• Ground 3: Claim 13 is obvious in view of Steinberg, Oberheide and Yasushi
`
`• Ground 4: Claims 1–4, 6, 9, 12, and 14 are obvious in view of Steinberg,
`Oberheide and McDowell
`
`• Ground 5: Claim 13 is obvious in view of Steinberg, Oberheide, McDowell
`and Yasushi
`
`Pet. at 3; Inst. Dec. at 9-10, 44
`
`2
`
`
`
`Claim 1 of the ’954 Patent
`
`Ex. 1001, 12:2–34 (Claim 1)
`
`3
`
`
`
`Claim 1 of the ’954 Patent
`
`Ex. 1001, 12:2–34 (Claim 1)
`
`4
`
`
`
`Claim Construction
`
`Patent Owner’s Response
`
`Resp. at 7
`
`5
`
`
`
`Claim Construction
`
`Petition
`
`Pet. at 10-11
`
`6
`
`
`
`Claim Construction
`
`Institution Decision
`
`Inst. Dec. at 18
`
`7
`
`
`
`A Notification of the Request to an
`Address of a Separate Device Specified by the Customer
`
`Steinberg
`
`Pet. at 46; Reply at 9-10
`
`8
`
`Ex. 1005 at FIG. 8
`
`
`
`A Notification of the Request to an
`Address of a Separate Device Specified by the Customer
`
`Steinberg
`
`Pet. at 44-45
`
`Ex. 1005 at ¶[0053]
`
`9
`
`
`
`A Notification of the Request to an
`Address of a Separate Device Specified by the Customer
`
`Steinberg
`
`Ex. 1005 at ¶[0014]
`
`Pet. at 44-45
`
`10
`
`
`
`A Notification of the Request to an
`Address of a Separate Device Specified by the Customer
`
`Steinberg
`
`Ex. 1005 at ¶[0045]
`
`Pet. at 15, 19, 45; Reply at 6
`
`11
`
`
`
`A Notification of the Request to an
`Address of a Separate Device Specified by the Customer
`
`Steinberg
`
`Ex. 1005 at ¶[0048]
`
`Pet. at 46; Reply at 6
`
`12
`
`
`
`A Notification of the Request to an
`Address of a Separate Device Specified by the Customer
`
`Steinberg
`
`Ex. 1005 at ¶[0049]
`
`Reply at 6, 10
`
`13
`
`
`
`A Notification of the Request to an
`Address of a Separate Device Specified by the Customer
`
`Steinberg
`
`Ex. 1005 at ¶[0045]
`
`Reply at 7
`
`Ex. 1005 at ¶[0045]
`
`14
`
`
`
`Petitioner’s Position Is Supported by Expert Testimony
`
`Dr. Monrose
`
`Ex. 1002 at ¶[0145]
`
`Pet. at 46-47; Reply at 7-8
`
`15
`
`
`
`Patent Owner’s Response Concedes the
`Cell Phone in Steinberg Is Identified
`
`Patent Owner’s Response
`
`Resp. at 29
`
`16
`
`
`
`The ’954 Patent Only Discloses Using a Phone Number or
`Email Address to Specify the Separate Device
`
`’954 Patent
`
`Ex. 1001, 8:30-32
`
`Ex. 1001, 4:61-62
`
`Inst. Dec. at 27-28; Reply at 9, 14
`
`Ex. 1001, 9:35-39
`
`17
`
`
`
`Patent Owner Incorrectly Characterizes
`Petitioner’s Reply Regarding the ’954 Patent
`
`Patent Owner’s Sur-Reply
`
`Sur-Reply at 10-11
`
`18
`
`
`
`Patent Owner Incorrectly Characterizes
`Petitioner’s Reply Regarding the ’954 Patent
`
`Petitioner’s Reply
`
`Reply at 14-15
`
`19
`
`
`
`Patent Owner Incorrectly Characterizes
`Petitioner’s Statements in District Court
`
`Patent Owner’s Response
`
`Resp. at 21-22
`
`20
`
`
`
`Patent Owner Incorrectly Characterizes
`Petitioner’s Statements in District Court
`
`Markman Hearing Transcript
`
`Ex. 2003, 43:9-21
`
`Reply at 13 n.3
`
`21
`
`
`
`Patent Owner Incorrectly Accuses Petitioner of “Eviscerating the Distinction”
`Between Specifying a Separate Device and an Address of a Separate Device
`
`Patent Owner’s Response
`
`Resp. at 19
`
`22
`
`
`
`Patent Owner Incorrectly Accuses Petitioner of “Eviscerating the Distinction”
`Between Specifying a Separate Device and an Address of a Separate Device
`
`Petitioner’s Reply
`
`Reply at 11-12
`
`23
`
`
`
`The ’954 Patent’s Fingerprint-Related Disclosures
`Are Not Relevant to the Claimed “Separate Device”
`
`Patent Owner’s Response
`
`Resp. at 29 n.4
`
`24
`
`
`
`The ’954 Patent’s Fingerprint-Related Disclosures
`Are Not Relevant to the Claimed “Separate Device”
`
`’954 Patent
`
`Ex. 1001, 2:19-22
`
`Ex. 1001, 4:57-61
`
`Reply at 10-11
`
`25
`
`
`
`The ’954 Patent’s Fingerprint-Related Disclosures
`Are Not Relevant to the Claimed “Separate Device”
`
`’954 Patent
`
`Reply at 10-11; see also Sur-Reply at 12-13
`
`Ex. 1001, 11:41-55
`
`26
`
`
`
`Patent Owner Incorrectly Characterizes
`Petitioner’s Reply Regarding Exhibits 2007 & 2008
`
`Patent Owner’s Sur-Reply
`
`Sur-Reply at 19
`
`27
`
`
`
`Patent Owner Incorrectly Characterizes
`Petitioner’s Reply Regarding Exhibits 2007 & 2008
`
`Exhibit 2007
`
`Reply at 17
`
`28
`
`
`
`Patent Owner Incorrectly Characterizes
`Petitioner’s Reply Regarding Exhibits 2007 & 2008
`
`Petitioner’s Reply
`
`Reply at 17
`
`29
`
`
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