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`571-272-7822
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`Paper No. 28
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE, LLC
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`vs.
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`UNILOC 2017 LLC
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`IPR2020-00463
`Patent 8,194,632 B2
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`Record of Oral Hearing
`Held Virtually: Thursday, May 13, 2021
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`Before DAVID C. MCKONE, JESSICA C. KAISER, and
`SHARON FENICK Administrative Patent Judges.
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`571-272-7822
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`Paper No. 28
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`GOOGLE, LLC
`
`vs.
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`UNILOC 2017 LLC
`____________
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`IPR2020-00463
`Patent 8,194,632 B2
`____________
`
`Record of Oral Hearing
`Held Virtually: Thursday, May 13, 2021
`____________
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`
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`Before DAVID C. MCKONE, JESSICA C. KAISER, and
`SHARON FENICK Administrative Patent Judges.
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`IPR2020-00463
`Patent 8,194,632 B2
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`CORY BELL, ESQ.
`ERIC GARNER, ESQ.
`SIDNEY KESSEL, ESQ.
`FINNEGAN
`Two Seaport Lane
`Boston, MA 02210-2001
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`ON BEHALF OF THE PATENT OWNER:
`
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`JEFFREY HUANG, ESQ.
`McKOOL SMITH
`865 South Figueroa St.
`Suite 2900
`Los Angeles, CA 90017
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`The above-entitled matter came on for hearing on Thursday, May 13,
`2021, commencing at 1:02 p.m. EST, by video/by telephone.
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`IPR2020-00463
`Patent 8,194,632 B2
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`P R O C E E D I N G S
` JUDGE FENICK: Good morning. This is an inter partes
`review, IPR 2020-00463, captioned Google, LLC, versus Uniloc 2017,
`LLC, regarding Patent 8,194,632 B2.
` I'm Judge Fenick and with me are Judges McKone and
`Kaiser. I'd like to start by getting the parties' appearances.
`Can we -- can I find out who is appearing this afternoon on behalf
`of the Petitioner, please?
` MR. BELL: Yes, Your Honor. This is Cory Bell on behalf
`of Petitioner Google. With me on video is Eric Garner, who is
`lead counsel for Google. Also on the telephone, we have backup
`counsel Sidney Kessel and in-house counsel for Google, Joe Scher.
` THE COURT: Thank you. And can I hear who is here on
`behalf of the Patent Owner, please?
` MR. HUANG: Good afternoon, Your Honor. My name is
`Jeffrey Huang for Patent Owner Uniloc, and with me is in-house
`counsel for Uniloc, Steve Peterson.
` JUDGE FENICK: Thank you.
` We set forth the procedure for today's hearing in our
`oral hearing order, which is Paper 25. As a reminder, each party
`has 45 minutes of total time to present its arguments. Petitioner
`has the burden of proof and will go first. Patent Owner will
`present opposition arguments. Then, to the extent Petitioner has
`reserved time, the Petitioner will have time to present arguments
`in rebuttal and after that, to the extent that Patent Owner has
`reserved surrebuttal time, the Patent Owner may present its
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`surrebuttal.
` We have access to papers, exhibits, and demonstratives
`in this case, and so, for clarity in the transcript and also so we
`can view what you are referring to, when you refer to a portion of
`the record or to a demonstrative, if you let us know the document
`and page number you're referring to.
` Counsel should unmute only when speaking. This remote
`nature of the hearing may result in an audio lag. So if you can
`observe a pause prior to speaking so we avoid speaking over each
`other.
` If at any time during the hearing you have technical or
`other difficulties, please let us know immediately so we can make
`adjustments. We have technical support listening in, and we will
`try and keep our eyes out and ears out for technical problems as
`well.
` As noted in the hearing order, although we are all
`appearing remotely and there's no physical courtroom, members of
`the public have the option to attend and may be listening to the
`audio of the hearing, as a request for the public line as been
`made. In the oral hearing order, we requested that if there was
`any concern about the disclosure of confidential information at
`this hearing, you were to contact the board. We did not receive
`any such notice.
` But will the Petitioner please confirm that you do not
`intend to discuss any confidential information today?
` MR. BELL: Confirmed for Petitioner.
` THE COURT: Thank you.
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` And, Patent Owner, could you also confirm that?
` MR. HUANG: Yes, confirmed.
` THE COURT: Thank you. Unless there are any questions,
`we're going to start. Patent Owner, are there any questions at
`this time?
` MR. HUANG: No, Your Honor.
` THE COURT: Thank you.
` Any questions on behalf of Petitioner at this time?
` MR. BELL: No, Your Honor.
` THE COURT: Okay. Thank you.
` Petitioner, would you like to reserve any amount of time
`for rebuttal?
` MR. BELL: Yes. 15 minutes, please.
` THE COURT: 15 minutes. Okay. I'll endeavor to tell
`you when 30 minutes have elapsed then.
` MR. BELL: Thank you.
` THE COURT: And you can proceed when you're ready.
` ARGUMENT ON BEHALF OF PETITIONERS
` MR. BELL: Thank Your Honors. I think it's important to
`start with the relevant technology in this case. So if we start
`with line 2 of our demonstratives, we have laid out the background
`in the '632 patent and its process of establishing network
`connections. It works in this particular system where you have
`three devices: A stationary terminal, which we circled in blue,
`125. That can be something such as a laptop, a desktop, or a
`workstation. There's proximate mobile device. That's the
`cellphone, 110, which we circled in red. And then there's a
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`IPR2020-00463
`Patent 8,194,632 B2
`remote device, 115, which we circled in green, such as a smart
`phone or a PDA.
` And in the system, the stationary terminal and the
`remote device want to establish network connection over the
`internet, 120. And the way that the particular embodiment that
`relates to the claims here works is that the connection is
`initiated through a different channel. In particular, the
`stationary terminal has a Bluetooth connection with the proximate
`mobile device, which then has the ability to communicate with the
`remote mobile device over a cellular network, such as through SMS.
` And the way that it works is the stationary terminal
`provides to the proximate mobile device a -- its IP address and
`the telephone number of the remote mobile device over that
`Bluetooth connection, and then the proximate mobile device can
`take that received information and send an SMS message that
`includes that IP address to the remote mobile device.
` And if they go to slide 3, we can see how this lines up
`with the claims. In step 1-A, we have that concept of
`establishing the communication link. That's that orange box
`between the stationary terminal in blue and the proximate mobile
`device in red. Then we have that transmitting of that IP address
`and the telephone number. That's that blue arrow between the blue
`box and the proximate mobile device in red. Then the proximate
`mobile device establishes communication with the remote device.
`That's at 1-C. That's akin to sending the SMS message to the
`telephone number of the remote device that includes the IP address
`of the stationary terminal.
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`IPR2020-00463
`Patent 8,194,632 B2
` And then, finally, in step 1-D, that network address is
`used to establish a connection to the stationary terminal.
` Turning now to slide 4, there are three claims at issue:
`Claim 1, Claim 8, and Claim 15. Of these claims, there's just two
`parts that are in dispute. I have highlighted them on the slide.
`In Element 1-B, it relates to the content of that invitation
`message. So that's the message that's sent between the stationary
`terminal, that laptop or computer, to the proximate mobile device.
`And in particular, whether or not that would include a remote
`device identifier.
` And then in Step 1-C, there's a related element that
`requires the establishing of the communication between the
`proximate mobile device and remote device, B, using that remote
`identifier.
` Turning now to Slide 5, there's two separate grounds
`that we have for these claims. One is based on Conley alone, and
`the other is based on Conley and Bu. The RFC3261 for the session
`initial protocol, or SIP.
` Starting with Conley, if we go to Slide 7, I think it's
`important that we start with the preamble so we can say the ground
`work of kind of what's being mapped to what here. And Conley
`discloses a system very similar to the '632 patent where it wants
`to set up a network connection between two devices over a network
`such as the internet. And it does so by sending in a
`communication over the primary channel. In Conley, the particular
`devices we mapped to the stationary terminal was the first device,
`that laptop or tabletop computer, 140, in Conley.
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`IPR2020-00463
`Patent 8,194,632 B2
` And the remote device is this collection of 112 and 142,
`shown in the green box on the right. The reason that box includes
`both elements is shown on Slide 8. And in particular, Conley
`discloses that those devices, that telephone device and the
`computer, can be integrated into a single device, such as a
`cellphone with a built-in PDA or a PDA that has both cellphone and
`internet connectivity.
` And you have to remember that this is pre-iPhone era;
`right? So the PDA with cellphone is akin to the modern or more
`common smart phone. And this is the same thing that the '632
`patent discloses. Its remote can be something like a smart phone
`or a PDA.
` Going to be to Element 1-A, this element is not in
`dispute. This is, again, discussion of establishing a
`communication link in the '632 patent. It was Bluetooth, and
`Conley discloses the same thing. Between its first device and its
`local telephone device, which can be a cellphone, it establishes a
`Bluetooth connection.
` Now we get on to the dispute between the parties in
`Element 1-B. And in Element 1-B, the part of this thing that is
`in dispute again is this content of the invitation message. So
`first looking back at the embodiment in the '632 patent, what
`happens again is that there's in Bluetooth connection between the
`stationary terminal in blue and the proximate mobile device in
`red. And over that Bluetooth connection, the stationary terminal
`sends its IP address, which is the claims network address, and the
`cellphone number of the remote device, which is the claims remote
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`IPR2020-00463
`Patent 8,194,632 B2
`device identifier. This allows that proximal mobile device to
`send an SMS message containing that IP address to the cellphone
`number of the remote device.
` And in the petition, our argument is that Conley teaches
`or suggests the exact same thing. A computer that has the
`Bluetooth connection over which it sends its IP address, which is
`the claimed network address and the cellphone number of the remote
`device, to the proximate cellphone, which then is enabled to send
`an SMS message containing that IP address to the cellphone number
`of the remote device.
` JUDGE FENICK: Mr. Bell --
` MR. BELL: It's not in dispute -- yep. Yes, Your Honor.
` JUDGE FENICK: I understand from the arguments and from
`what you have shown on your Slide 8 that you're saying the remote
`device is both telephone 112 from Conley and device 142.
` Does Conley indicate that those are -- form a unified
`device or is Conley indicating that they -- they're housed in the
`same unit? In other words, is it a telephone with a cellphone
`number and a device with a remote device identifier? Because for
`your read here, you're using -- for the remote device identifier,
`you're using the phone number of the telephone 112 and not
`anything that relates to the remote device 142, if we look at them
`separately.
` So I guess my question is, what in Conley leads you to
`think that they're in some way one device as opposed to two
`devices that have just been contained in one enclosure, for
`example?
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` MR. BELL: So, I mean, Conley paragraph 21 expressly
`discloses that they can be in a single integrated unit. That
`means that they're in a single device. It's a cellphone with a
`built-in PDA. So -- and if you look in particular at Claim 11, it
`also discloses that the -- one of the devices comprises both the
`personal digital assistant having a cellphone and internet
`connectivity. So the device has the capabilities of both acting
`like a PDA and acting like a cellphone. So the telephone number
`that identifies that device, that collective integrated unit
`identified as a whole. And that's actually the exact same thing
`that the patent discloses as the only example of a remote device
`identifiers. It's a telephone number that relates to a PDA or a
`smart phone.
` JUDGE FENICK: Paragraph 21 of Conley, the part that you
`have excerpted says that the telephone and device are a single
`integrated unit. The rest of that sentence says that there is a
`secure link, which may be accomplished by a direct connection. So
`is that a direct connection between two parts one of device or
`between two elements that are integrated into one container?
` MR. BELL: Well, I think it's a single device. It says
`that the computer and phone are a single, integrated device in
`paragraph 26, for example. And all it's saying is that you have a
`direct connection. If you have a PDA and a cellphone, you're
`going to have your standard processer that does its processing,
`but you're also going to have to have your radio that has the
`cellphone capability. The fact that they're all on the same unit
`means that, if you're identifying one part of that unit, you're
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`IPR2020-00463
`Patent 8,194,632 B2
`identifying that whole unit. They're not separate things that
`need to be separately identified.
` JUDGE FENICK: Okay. Thank you.
` MR. BELL: So if we turn to Slide 13 and talking about
`what's in dispute here, which is the concept of a remote device
`identifier, we have a lot of unrebutted expert testimony that
`Conley system would teach or suggest that you would provide the
`remote device identifier in that initial communication between the
`computer in blue and the local cellphone in red.
` First, he has the testimony just generally that a person
`of skill would have understood that the stationary terminal would
`have provided the information necessary to forward the IP address
`to the remote device. This is because anyone with a basic
`understanding of networking, which a person of skill would have,
`would understand that you have to tell things where they're going.
`You can't just mail a letter without putting an address on it.
` But it goes even further, talking about the specific
`embodiment in Conley we're talking about, which is SMS. So if you
`go to slide 14, he testified that a person of skill would
`understand and have understood that SMS messages would require a
`destination address. This is because SMS has a minimum set of
`information that you have to provide to send an SMS message, and
`one of those things is the destination address. And the expert
`didn't just make this statement and pull it out of the ether; he
`backed himself up with a contemporaneous textbook.
` If you go to slide 15, we can see the excerpt of the
`textbook that he has that says the same thing that he says, is
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`IPR2020-00463
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`that the minimum SMS header consists of the 13 bytes, including
`the 8 byte destination address.
` Then the expert goes even further to talk about what a
`person of ordinary skill in the art would have understood to be
`happening in the exact circumstances in Conley, which is where you
`have a computer using a cellphone as a radio.
` So if we go to Slide 16, he testified that a person of
`skill would have understood that, when the computer sends an SMS
`message via a connect telephone, the computer provides the SMS
`message with the complete SMS_SUBMIT Transfer Protocol Data Unit,
`along with the command to send the message. And once again, the
`expert backed himself up with a textbook that was contemporaneous,
`and we can see on Slide 17 -- I have excerpted it for you -- we
`can see first that SMS_SUBMIT Transfer -- Transport Data Unit --
`that's a tongue-twister -- or TPDU; I'll just use that from now
`on -- includes -- still includes the destination telephone number.
` And if we go to Slide 18, and looking at what the
`textbook says, you transmit between the PC and the air modem,
`which is the cellphone, we have that complete TPDU being sent,
`along with the command to send the message, just like the expert
`testified. Accordingly --
` JUDGE McKONE: Could I ask a question? I'm sorry to
`interrupt you. Is this an argument that the phone number or
`destination address is inherent in SMS communications? I
`understand Patent Owner has characterized this as an inherency
`argument. Do you disagree with that characterization?
` MR. BELL: We did not argue inherency in the petition.
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`If it was inherent, that would be an anticipation case. We argued
`that it is par -- or suggested by the inclusion -- par or
`suggested by the use of SMS. It is very close to being inherent,
`if it's not inherent.
` But what Patent Owner has done here is something that's
`pretty common where the Patent Owner comes in and tries to argue
`that, if something is not expressly taught, it must be inherent in
`order to be, you know, rendered obvious. But that's not the case.
`Instead, the board has to consider what's taught or suggested the
`a person of skill in the art. And, here, we only have evidence
`from one expert talking about what would have been taught and
`suggested or understood by a person of skill in the art.
` So they're just trying to sidestep the considerations
`that the board has to make, which is beyond inherency, which is --
`requires you to consider what the teachings and suggestions are of
`a particular reference. And the expert provided specific
`testimony on what you would get from a disclosure of SMS and this
`particular architecture that was being used in Conley, since that
`was the kind of things that was already being taught in the
`textbook, how to implement.
` JUDGE FENICK: Do your arguments --
` MR. BELL: However --
` JUDGE FENICK: Do your arguments relate only to the SMS
`embodiment and not to the voice connection embodiment?
` MR. BELL: Correct, Your Honor. We are relying on the
`SMS embodiment. As Your Honors noted in the institution decision,
`there are a number of different ways Conley discloses working.
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`One is by having a voice channel, and the other is by using a data
`channel. And this is actually an important point that Uniloc
`tries to confuse, but, in Conley, when it's talking about having
`established communications, you have to think about what Conley
`actually discloses. And, in Conley, what's happening is you have
`two devices that want to talk, but they don't know each other's IP
`addresses. That's at paragraph 21.
` And then what happens is that it has to use an
`established means of communication to talk, which is in paragraph
`22. And in SMS, established means of communication just means
`that they know how to talk to each other, because you don't need a
`permanent circuit to be able to send the information. You can
`just address it as the expert opined.
` Finally, Element 1c on Slide 19, I believe we already
`addressed Your Honor's questions on this about the combination of
`devices 112 and 142 but the argument about the remote device
`identifier in Element 1c relates to that same thing. Uniloc's
`arguments don't respond directly to this fact that Conley
`discloses that you could integrate those into a single device.
` And with that, unless Your Honors have questions on the
`common ground alone, I'll turn to the Conley RFC combination.
`Very good.
` So the RFC, as Your Honor was just talking about, the
`SMS embodiment we're relying upon in the Conley alone ground, the
`RFC ground talks about the different type of primary channel that
`Conley discloses, and that's specifically an IP telephony network.
`And the RFC 3261 relates to the session initiation protocol, which
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`is one of the well-known standards used to set up and communicate
`over IP telephony networks. And, in fact, it has a very similar
`type of handshake process to that disclosed by Conley.
` So if we go to Slide 21, I have copied a picture of the
`handshake process from the RFC on how it sets up a sub session.
`And in this session, they're trying to set up a direct media
`session between Alice's cellphone so that's, you know, a computer
`application, and Bob's phone, that's shown in purple. And how it
`does this is by using something called an invite that is forwarded
`through the IP telephony network. So it goes first to the
`Atlanta.com proxy and then the Biloxi.com proxy because, at that
`point in time, Alice and Bob don't know each other's direct
`addresses; they just know their SIP URIs, so they have to flow
`through the network.
` Going to Slide 22 where the modification comes in is
`this Element 1b where we were relying upon Conley's small amount
`of information that's being transmitted over this Bluetooth
`connection between Conley, which is connected to the primary
`channel through a cellphone. So it's starting its communication
`onto that channel through that Bluetooth connection.
` And going to Slide 23, when we start going to SIP,
`there's a very specific type of invitation message that's
`disclosed by that standard. And I have included it in the red --
`in the orange box on the left.
` And in our combination, which is shown on page 24, all
`we're saying is that you could use this known SIP invitation
`message as the small amount of information in Conley. And there's
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`a reason for that.
` If you go to Slide 25, if you are using IP telephony and
`you're using the SIP invitation messages, those SIP invitation
`messages already have the information that the claim requires and
`that Conley requires. It has a remote device identifier, so
`that's a piece of information that's telling the invite how to get
`through the IP telephony network, the primary channel in Conley,
`to the remote device. And then you have the network addresses of
`Alice, your stationary terminal, that's originating the content.
` As we explained in the petition, the SIP standard
`discloses that both of these could include the direct IP address
`of Alice. And, in fact, in the RFC, the ultimate -- the ultimate
`result is that Alice and Bob can directly connect using each
`other's IP addresses.
` And turning to Element --
` JUDGE McKONE: Is Conley -- it's the telephone channel,
`is it a cellphone channel; am I correct there?
` MR. BELL: In Conley, there is a couple of different
`channels. One of the channels that -- the channel in this case is
`the IP telephony network. So it's not requiring the cellular
`network to be used, although you could use IP telephony over a
`cellular network.
` JUDGE McKONE: So it's your position, then, that the
`RFC3261 is an example of an IP telephony network that would have
`been used with Conley?
` MR. BELL: So, yes. The RFC does not actually disclose
`an IP telephony network. It describes the format of messages that
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`are used in IP telephony networks to set up and tear down media
`sessions. And it's not just for IP telephony. SIP actually goes
`much broader. It can be used to set up video calling and all
`kinds of things beyond IP telephony. It's just the one that's
`commonly used for IP telephony.
` So we're saying that, since you're already using the
`primary channel, the example of the primary channel is this type
`of network, it would have been obvious to an expert -- in fact,
`Conley is directing pointing the expert to -- or a person of
`ordinary skill in the art to those types of messages, since
`they're already compliant and understood by that type of network.
` JUDGE McKONE: Okay.
` MR. BELL: On Slide 26, again, the SIP URI, that address
`for Bob is used in the SIP network because the way that it works
`is you flow through the network using that SIP URI by going
`through your various connections to the different points in the IP
`telephony network.
` Now we get to motivation to combine, and as Your Honors
`correctly noted, the expert provided a number of motivations that
`combined RFC with Conley here, and I think the most important,
`with which is the one that cuts through all of the arguments here,
`and that is that Conley expressly said that you could use IP
`telephony as the primary channel. So it gave a person of skill a
`direct path to protocols such as a SIP protocol in the RFC.
` There's also a number of other points that were made by
`the expert, including the benefits of standardization, including
`the commonalities between SIP and Conley, about they both use
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`hand-safe protocols, that they both talked about having being able
`to set up these higher bandwidth types of communication sessions,
`and that they relate to different parts of the system. As we just
`talked about, the RFC tells you the format or the language in
`which you talk about -- in which the computers talk over an IP
`telephony network, and Conley specifies that you want to use an IP
`telephony network.
` Getting to, I think, Uniloc's main argument is that an
`invite message is too big to be used as a small amount of
`information in Conley, that's just not consistent with Conley.
`And, in fact, Uniloc doesn't really flesh out what they think a
`small amount of information could or could not be. Conley gives a
`number of examples of things of all different sizes that could be
`included in that information, such as additional information like
`security information, tokens, signatures, even a whole public key
`certificates. That's in paragraph 32, 34, 38, and 40.
` So it's not just an IP address that is the limit of a
`small amount of information in Conley. And, in fact, when you
`look at Conley, what it's really talking about is the distinction
`between something like a small amount of information like an
`initiation message and a large document or a video conference.
`That's the distinction it's drawing. And that's bared out by the
`fact that you have a low bandwidth channel and a high bandwidth
`channel, and the fact that one of the examples of the low
`bandwidth channel is IP telephony just suggests that messages that
`are compliant with that technology would not be something that
`would be too large to be used with that technology.
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` JUDGE FENICK: With respect to the combination, it seems
`like the SIP invite message includes the data that Conley is
`working to provide to the remote device. Conley's local device is
`trying to provide to -- in other words, if you already have all
`the information about the remote device, including phone number
`and the IP address, I guess the question is why are you using --
`why are you using the established telephonic channel to send this
`invite rather than sending it the way a SIP invite might otherwise
`be sent, you know, through an IP connection from the two computer
`devices?
` MR. BELL: That's a very good question, Your Honor. And
`I think the key comes back to Conley. So, in Conley, it's talking
`about a situation where you don't know each other's IP addresses.
`And when you're at the stage of sending an invite message, Bob's
`SIP URI -- the stationary terminal does not have knowledge of
`Bob's IP address. It only knows Bob's SIP URI. It's not until it
`gets this OK response message -- if you go back to Slide 21, for
`example -- that it receives Bob's reply that includes the IP
`address of Bob. So it actually does not know how to communicate
`with Bob directly over the internet until it does this initial
`exchange.
` And that was our reason for our combination is that
`Conley could have just used those invite messages, and a person of
`ordinary skill would have understood that, that, when you provided
`that, it give Bob Alice's IP address. And, at that point, that
`triggers Conley's system, because Conley discloses at that point,
`in paragraph 23, that you can do a service discovery protocol
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`request on that IP address and then you can set up the connection
`over the secondary channel.
` JUDGE FENICK: Thank you.
` MR. BELL: And if Your Honors don't have any further
`questions, I don't have anything further.
` JUDGE FENICK: Yeah, I do. I'm sorry. In the
`Conley-only ground, I'd like to ask about the part of the -- of 1c
`that talking about establishing communication. So 1c, for
`example, on your Slide 19, says that the proximate mobile device
`establishes communication with a remote device using the remote
`device identifier.
` Conley's method -- so the flowchart, for example, given
`Figure 4 of Conley -- describes the process as waiting until user
`is in conversation. As a matter of fact, it explicitly, I think,
`says that if the user isn't, then it just kind of endlessly loops
`around.
` So how do you square that with the requirement in this
`claim limitation that the proximate mobile device establishes
`communication with the remote device using the remote device
`identifier.
` MR. BELL: So, Figure 4 in the flowcharts are of course
`in Conley indicated that it's just exemplar embodiments. And
`they're all tied to this voice channel embodiment where you need
`to have this established circuit connection set up where this is
`the whole thing of the conversation, right, is you need to be in
`conversation over a voice channel so that you can encode the
`information to go over it. You don't need to do that in the SMS
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`embodiment.
` And when you look at what it talks about for having
`established communication in Conley -- I'm sorry, I'm just going
`to get to the
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