Trials@uspto.gov
`571-272-7822
`
`Paper 29
`Date: August 9, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________________
`
`IPR2020-00463
`Patent 8,194,632 B2
`____________
`
`
`Before DAVID C. MCKONE, JESSICA C. KAISER, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 29
`Date: August 9, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________________
`
`IPR2020-00463
`Patent 8,194,632 B2
`____________
`
`
`Before DAVID C. MCKONE, JESSICA C. KAISER, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2020-00463
`Patent 8,194,632 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Google LLC (“Petitioner”), filed a Petition for inter partes review of
`claims 1, 8, and 15 (“the challenged claims”) of U.S. Patent No. 8,194,632
`B2 (Ex. 1001, “the ’632 patent”). Paper 1 (“Pet.”). Uniloc 2017 LLC
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314, we instituted this proceeding. Paper 13 (“Inst.
`Dec.”).
`Patent Owner filed a Patent Owner’s Response (Paper 17, “PO
`Resp.”), Petitioner filed a Reply to the Patent Owner’s Response (Paper 19,
`“Reply”), and Patent Owner filed a Sur-Reply to the Reply (Paper 21, “Sur-
`reply”). An oral argument was held on May 13, 2021 (Paper 28, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(b)(4). This Decision is a
`final written decision under 35 U.S.C. § 318(a) as to the patentability of
`claims 1, 8, and 15. Based on the record before us, Petitioner has proved, by
`a preponderance of the evidence, that claims 1, 8, and 15 are unpatentable.
`B. Real Parties in Interest and Related Matters
`Petitioner identifies only itself as the real party in interest. Pet. 60.
`Patent Owner identifies only itself as the real party in interest. Paper 3, 1.
`Petitioner and Patent Owner identify Uniloc 2017 LLC v. Google
`LLC, No. 2:18-cv-00499 (E.D. Tex.) (“related district court action”) as a
`related matter. Pet. 60; Paper 3, 2. Petitioner and Patent Owner each note
`that this case has been transferred to the Northern District of California.
`Paper 7, 1–2; Paper 12, 1; Ex. 1023. Petitioner in an updated mandatory
`notice states that the Northern District of California dismissed the litigation
`for lack of subject matter jurisdiction, and that a notice of appeal has been
`filed. Paper 18.
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`C. The ’632 Patent
`The ’632 patent is directed to establishing network connections
`between a stationary terminal (such as a laptop, desktop, or workstation) and
`a remote device (a remote stationary terminal or a mobile device, such as a
`smart phone or PDA) through intermediary mobile devices. Ex. 1001, code
`(54), 1:25–31, 2:51–56. Figure 1 of the ’632 patent is reproduced below:
`
`
`
`Figure 1 is a diagram of an environment in which the invention may be
`deployed. Id. at 2:29–30, 2:40–41.
`In Figure 1, mobile devices 110 and 115 are connected via cellular
`wireless network system 100, and mobile device 110 is connected via a
`short-range wireless technology, such as Bluetooth, with stationary terminal
`125. Id. at 1:40–50, 1:61–67, 3:20–40, 5:1–20. Stationary terminal 125 also
`can access the Internet 120. Id. at 3:9–16.
`The ’632 patent describes one embodiment of the invention in which a
`network connection is established between an initiating stationary terminal
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`Patent 8,194,632 B2
`(such as stationary terminal 125 in Fig. 1) and a remote device (such as
`mobile device 115 in Fig. 1), and describes this embodiment with reference
`to Figure 3, reproduced below. Id. at 2:34–36, 4:29–67.
`
`
`Figure 3 is a flow chart that depicts steps performed by a stationary terminal,
`a mobile device proximate to the stationary terminal, and a remote device.
`Id. at 4:29–67. The stationary terminal and proximate mobile device
`establish a Bluetooth (or other short-range wireless technology)
`communication link with each other. Id. at 4:36–44, Fig. 3 (elements 305,
`310). The stationary terminal transmits an invitation message to the
`proximate mobile device. Id. at 4:47–51, Fig. 3 (element 320). This
`message includes information necessary for the remote device to establish a
`connection with the stationary terminal (such as an IP address and TCP port
`information) and the remote device’s cellular telephone number. Id. at 4:47–
`51. The proximate mobile device transmits an SMS message to the remote
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`device, using the provided cellular telephone number and including the
`provided connection information, and the remote device extracts and utilizes
`the included information to establish a connection to the stationary terminal.
`Id. at 4:51–67, Fig. 3 (elements 330, 340, 345, 350, 355, 360).
`D. Illustrative Claim
`Claim 1 of the ’632 patent is illustrative and is reproduced below.
`1. A method for establishing a data communications
`session between a stationary terminal and a remote
`device, the method comprising:
`establishing a communication link through a
`short-range wireless
`technology between
`the
`stationary terminal and a proximate mobile device
`wherein the proximate mobile device operates
`within a cellular wireless network system;
`transmitting, by the stationary terminal, an
`invitation message comprising a network address
`relating to the stationary terminal and a remote
`device identifier to the proximate mobile device
`through
`the established communication
`link,
`whereupon the proximate mobile device establishes
`communication with the remote device using the
`remote device identifier and provides the network
`address of the stationary terminal to the remote
`device; and
`the
`establishing a connection between
`stationary terminal and the remote device for data
`communications
`based
`upon
`an
`initial
`communication by the remote device through use of
`the network address of the stationary terminal
`provided to the remote device by the proximate
`mobile device.
`Ex. 1001, 6:26–48.
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`The remaining two challenged claims refer explicitly to the steps of
`claim 1. Claim 8 recites “[a] non-transitory computer-readable medium
`including instructions that, when executed by a processor of a stationary
`terminal, causes the processor to establish a data communications session
`between the stationary terminal and a remote mobile device, by performing
`all the steps of claim 1,” and claim 15 recites “[a] computer system
`configured to initiate a data communications session with a remote device,
`the computer system comprising a processor configured to perform all the
`steps of claim 1.” Id. at 6:63–67, 8:1–4.
`E. Evidence Relied Upon
`Date
`Oct. 28, 2004
`
`Reference
`Conley et al.
`US 2004/0215974 A1
`(“Conley”)
`J. Rosenberg et al., SIP: SESSION
`INITIATION PROTOCOL, NETWORK
`WORKING GROUP REQUEST FOR COMMENTS
`3261 (“RFC 3261”)
`Petitioner also relies upon the Declaration of Brian Von Herzen, Ph.D.
`(Ex. 1012). Patent Owner does not rely on expert testimony.
`F. The Instituted Grounds of Unpatentability
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1, 8, 15
`103
`Conley
`1, 8, 15
`103
`Conley, RFC 3261
`II. ANALYSIS
`A. Claim Construction
`We apply the same claim construction standard that is applied in civil
`actions under 35 U.S.C. § 282(b), which is articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R § 42.100(b)
`(2019). Under Phillips, claim terms are afforded “their ordinary and
`
`Exhibit
`1002
`
`2002
`
`1003
`
`6
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`Patent 8,194,632 B2
`customary meaning.” Phillips, 415 F.3d at 1312 (quoting Vitronics Corp. v.
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he ordinary
`and customary meaning of a claim term is the meaning that the term would
`have to a person of ordinary skill in the art in question at the time of the
`invention . . . .” Id. at 1313. Only claim terms that are in controversy need
`to be construed and only to the extent necessary to resolve the controversy.
`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017).
`In our Decision on Institution, we found that, while a claim
`construction order was issued in the related district court action construing
`certain terms in the challenged claims, with the exception of the term “short-
`range wireless technology,” no term required construction to resolve the
`controversy. Inst. Dec. 19–20. With respect to the term “short-range
`wireless technology,” we determined that the correct construction of the
`term encompasses Bluetooth technology, and that no further construction
`was necessary. Id. at 20.
`Patent Owner argues that the term “short-range wireless technology”
`should not be interpreted as not encompassing “Wi-Fi technology” or as
`directed exclusively to such technology. PO Resp. 10–13. Patent Owner
`argues that a claim construction would allow us to evaluate an alternative
`argument made in the Petition. Id. at 13 (citing Pet. 22). Patent Owner
`agrees that the Specification discloses Bluetooth as an exemplary short-
`range wireless technology. Id. at 12 (citing Ex. 1001, 3:25–26, 4:42, 6:49–
`50); see Reply 18. Patent Owner argues, however, that claim construction is
`appropriate because, if we did adopt a construction that exclusively requires
`Wi-Fi, Petitioner’s “alternative obviousness theory” would need to be
`considered. PO Resp. 28 (citing Pet. 22). However, this theory relies again
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`on the prior art disclosure of Bluetooth, which the parties each agree is
`properly included in “short-range wireless technology” according to the
`language of the claims. Id. at 11–12; Reply 18.
`No specific construction for “short-range wireless technology” is
`argued by either party, and none is necessary to resolve the controversy
`before us. We agree with the parties that the ’632 patent describes Bluetooth
`as one possible short-range wireless technology, and that the correct
`construction of “short-range wireless technology” encompasses Bluetooth
`technology. See Pet. 11; Reply 12; Ex. 1001, 2:61–62 (“Mobile device 110
`also supports a short-range wireless technology such as Bluetooth.”), 2:1–6,
`3:20–28, 4:36–44, 5:1–3, 6:6–9, claim 2. We do not find it necessary to
`provide express claim constructions for any other terms. See Nidec, 868 F.3d
`at 1017.
`
`B. Legal Standards
`It is a petitioner’s burden to demonstrate unpatentability. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`1316, 1326–27 (Fed. Cir. 2008)).
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed subject matter and the prior art are “such that the
`claimed invention as a whole would have been obvious before the effective
`filing date of the claimed invention to a person having ordinary skill in the
`art to which the claimed invention pertains.” We resolve the question of
`obviousness on the basis of underlying factual determinations, including
`(1) the scope and content of the prior art; (2) any differences between the
`claimed subject matter and the prior art; (3) the level of skill in the art; and
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`(4) objective evidence of nonobviousness, i.e., secondary considerations.1
`See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`C. Level of Ordinary Skill in the Art
`Petitioner, relying on the testimony of Dr. Von Herzen, identifies a
`person of ordinary skill in the art as someone who “would have held at least
`a bachelor’s degree in electrical engineering, computer science, or an
`equivalent field, and approximately two years of industrial or academic
`experiences working in the fields of mobile and/or computer networking.”
`Pet. 7; Ex. 1012 ¶ 28. Patent Owner does not offer an opinion on
`Petitioner’s definition, either agreeing or disagreeing, and does not offer a
`counter definition of a person of ordinary skill in the art. PO Resp. 6.
`We find Petitioner’s definition to be consistent with the problems and
`solutions disclosed in the patent and prior art of record, and adopt it as our
`own. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
`D. Obviousness of Claims 1, 8, and 15 over Conley
`Petitioner argues that claims 1, 8, and 15 are unpatentable as obvious
`over Conley. See Pet. 18–36. Patent Owner raises several specific
`substantive arguments regarding the step of “transmitting, by the stationary
`terminal, an invitation message . . .” as discussed in detail below. PO Resp.
`14–26. For the reasons given below, Petitioner has shown obviousness by a
`preponderance of the evidence for the challenged claims.
`1. Overview of Conley
`Conley discloses a method for establishing a secondary
`communication channel between at least two computing devices through use
`
`
`1 The record does not include allegations or evidence of objective indicia of
`nonobviousness.
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`of a primary channel. Ex. 1002 ¶ 10. Figure 1 of Conley, reproduced
`below, “illustrates one exemplary situation” in which this may occur. Id.
`¶¶ 14, 21.
`
`
`Figure 1 depicts two telephones, 110 and 112, each connected to the other
`via telephone network 120. Id. ¶ 21. Telephone network 120 provides
`communication channel 160 between the telephones, which could be an
`audio channel or, alternatively, a data channel such as Short Messaging
`Service (SMS), among other data channel possibilities. Id. ¶¶ 21, 22.
`Telephone 110 is connected to device 140 via secure link 130 (labelled
`“Phone-Computer Channel”), and similarly telephone 112 is connected to
`device 142 via secure link 132 (labelled “Phone-Computer Channel”). Id.
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`Conley describes that the secure link may be a Bluetooth link, or that,
`alternatively, a telephone and a device could be “a single, integrated unit”
`where “the secure link may be accomplished by a direct connection.” Id.
`¶¶ 21, 24, 26, 27. If the secure link between a device and a telephone is a
`Bluetooth link, Conley discloses that “the device could use the Bluetooth
`Serial Port Profile to send an SMS message containing the data [to be
`transmitted to another telephone].” Id. ¶ 26.
`Figure 4 of Conley is reproduced below:
`
`
`Figure 4 is a flow chart depicting a method for establishing a secondary
`channel through use of a primary channel. Id. ¶¶ 17, 29.
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`The method depicted in Figure 4 begins with step 410, in which “a
`network link, for example via the Internet, is initiated . . . by a [first]
`device.” Id. ¶ 29. Next, in step 420, the first device connects to a telephonic
`unit. Id. Then, “[i]f the users of at least two telephonic units desire to
`transmit data or files between their devices, for example their computers,”
`they establish communication over a telephone network. Id. The first
`device determines whether this communication has been established in
`decision diamond 430, and if it has not, waits for such communication to be
`in process. Id. Next, in steps 440 and 450, the first device connects to the
`telephonic unit and sends a small amount of information, such as the
`location information of the first device, to the second device via the
`telephone network. Id. ¶¶ 23, 30. Upon receipt, the second device uses the
`information to establish a second channel connection with the first device,
`step 460, and when the process is finished, “both primary and secondary
`channels are operable simultaneously.” Id.
`2. Claim 1 – Obviousness over Conley
`Petitioner argues that Conley’s telephonic device 112 and second
`device 142 together teach the claimed remote device, and that Conley’s
`device 140 teaches the claimed stationary terminal. Petitioner’s expert Dr.
`Von Herzen annotated Conley’s Figure 1, as reproduced below, to illustrate
`this argument.
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`Patent 8,194,632 B2
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`
`Pet. 19; Ex. 1012 ¶ 47. In this annotated version of Conley’s Figure 1, a
`portion including Conley’s telephonic device 112 and second device 142 is
`shaded green to indicate Petitioner’s contention that together they teach the
`claimed remote device, as Conley teaches that a telephone and a device may
`be “a single, integrated unit.” Id. at 15, 18–21 (citing Ex. 1002 ¶¶ 21, 26,
`27; Ex. 1012 ¶ 47). Petitioner argues that Conley describes that device 140
`(shaded in blue) may be a laptop computer or table-top computer, and thus
`Conley teaches or suggests a device that is a “laptop, desktop, [or]
`workstation” and therefore a stationary terminal. Id. at 20 (quoting Ex.
`1001, 1:28–29; citing Ex. 1002 ¶ 24; Ex. 1012 ¶ 49).
`a) Preamble and first limitation (“establishing a communication
`link . . .”)
`Petitioner argues that Conley teaches the preamble: “[a] method for
`
`establishing a data communications session between a stationary terminal
`and a remote device.” Ex. 1001, 6:26–27. As described above, Petitioner
`
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`Patent 8,194,632 B2
`argues that Conley teaches the stationary terminal and the proximate mobile
`device. Petitioner additionally argues that first device 140 establishes a
`secondary communications channel, as seen on the annotated version of
`Figure 1 above in purple. Pet. 14, 18–20 (citing Ex. 1002, code (57), ¶¶ 21,
`24, 26, 27; Ex. 1012 ¶¶ 47–49).
`
`The first limitation of the method of claim 1 is “establishing a
`communication link through a short-range wireless technology between the
`stationary terminal and a proximate mobile device wherein the proximate
`mobile device operates within a cellular wireless network system.”
`Ex. 1001, 6:29–33. Petitioner argues that the proximate mobile device is
`taught by Conley’s telephonic device 110, operating within a cellular
`network, and connected via a Bluetooth communication link to first device
`140. Pet. 21–23 (citing Ex. 1002 ¶¶ 21, 22, 26, 27, 30; Ex. 1012 ¶¶ 51–53).
`As discussed above, Section II.A, we construe “short-range wireless
`technology” to encompass Bluetooth technology.
`
`Patent Owner argues that “the Petitioner fails to explain why a person
`of ordinary skill would implement the system of Conley in a fashion where
`the first device is not an integrated unit while the second device is, except by
`using the ’632 patent as a roadmap.” Sur-reply 6 n.1.
`We credit Dr. Von Herzen’s uncontroverted testimony that Conley
`discloses telephonic device 112 and that second device 142 “can be
`implemented as multiple devices or as a single device.” Ex. 1012 ¶ 47
`(citing Ex. 1002 ¶¶ 21, 26, 27). The language of Conley describes that
`devices 140 and 142 are securely linked to respective telephones 110 and
`112. Ex. 1002 ¶ 21. It describes that these secure links may be
`accomplished by one of five different exemplary means. Id. It then
`additionally discloses that, “[a]lternately, if the telephone and device are a
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`single, integrated unit . . . the secure link may be accomplished by a direct
`connection.” Id. Conley does not describe or imply that only one of these
`possibilities must apply to all telephone/device pairs.
`Petitioner is not required to show that one of ordinary skill would
`have been motivated to select a configuration having different connections
`between each telephonic device and computing device pair over one having
`identical connections for each pair. See Novartis Pharm. Corp. v. West-
`Ward Pharm. Int’l Ltd., 923 F.3d 1051, 1059 (Fed. Cir. 2019) (“Our case
`law does not require that a particular combination must be the preferred, or
`the most desirable, combination described in the prior art in order to provide
`motivation for the current invention.”) (quoting In re Fulton, 391 F.3d 1195,
`1200 (Fed. Cir. 2004); Infineum USA L.P. v. Chevron Oronite Co. LLC, 844
`Fed. Appx. 297, 305 (Fed. Circ. 2021) (unpublished). Petitioner has shown
`that the configuration it relies on is encompassed in Conley’s disclosure and
`supported this showing with citations to Conley and expert testimony, and,
`thus, we do not agree that this showing is deficient.
`Beyond this argument, Patent Owner does not dispute Petitioner’s
`arguments with respect to the preamble or the first limitation. See PO Resp.
`14–26. Petitioner directs us to sufficient evidence to support the balance of
`its contentions. Therefore, we find Petitioner has met its burden of proof on
`this limitation.
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`b) Second limitation (“transmitting . . . an invitation message
`comprising a network address . . . and a remote device
`identifier to the proximate mobile device through the
`established communication link, whereupon the proximate
`mobile device establishes communication with the remote
`device using the remote device identifier and provides the
`network address of the stationary terminal to the remote
`device”)
`The method of claim 1 further includes the step of “transmitting, by
`the stationary terminal, an invitation message comprising a network address
`relating to the stationary terminal and a remote device identifier to the
`proximate mobile device through the established communication link,
`whereupon the proximate mobile device establishes communication with the
`remote device using the remote device identifier and provides the network
`address of the stationary terminal to the remote device.” Ex. 1001, 6:34–42.
`Petitioner argues that the transmission of an invitation message as in
`this limitation is taught in Conley, where a “small amount of information” is
`transmitted by first device 140 to the second device, via the Bluetooth
`connection to telephonic device 110 and then via primary channel 160.
`Pet. 23–26 (citing Ex. 1002 ¶¶ 21–23, 26, 30, 34, 36, 40; Ex. 1012 ¶¶ 54–
`55). Petitioner argues that inclusion of “a network address relating to the
`stationary terminal” in the invitation message sent to the proximate mobile
`device and then the provision of that network address to the remote device is
`taught by the inclusion of the IP address of the sender (the first device) in the
`“small amount of information” sent by first device 140 through primary
`channel 160 to the second device, as described in Conley. Pet. 26, 28–29
`(citing Ex. 1002 ¶¶ 22, 23, 30, 36; Ex. 1012 ¶¶ 56, 58).
`Petitioner additionally contends that Conley teaches or suggests the
`inclusion of a remote identifier in the invitation message transmitted by
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`Conley’s first device 140 to the proximate mobile device (telephonic device
`110), because Conley describes that primary channel 160 might be a data
`channel (e.g. SMS), and one of ordinary skill in the art would have
`understood that in order to send an SMS message, the address of the
`recipient must be included, and this would teach or suggest the “remote
`device identifier” of claim 1. Pet. 26–27, 29 (citing Ex. 1002 ¶¶ 21, 22, 23,
`30, 34; Ex. 1012 ¶¶ 57, 58). Petitioner argues that one of ordinary skill
`“would have understood that when a computer sends an SMS message via a
`connected telephone, the computer provides the telephone with the
`SMS_Submit Transfer Protocol Data Unit along with a command to send the
`message.” Id. at 27, 29 (citing Ex. 1012 ¶ 57; Ex. 10192 at 21–23, 25–29).
`Petitioner additionally argues that the provision of the network address of
`the terminal to the remote device is also taught by the inclusion in the SMS
`message in Conley, which is transmitted to telephonic device 112, of the IP
`address of the first device 140. Id. at 28–29 (citing Ex. 1002 ¶¶ 23, 30, 36;
`Ex. 1012 ¶¶ 58, 59).
`Patent Owner contends that Conley does not disclose this claim
`limitation because Conley does not disclose the inclusion of a remote device
`identifier for Conley’s second device 142. Patent Owner argues that “the
`Petition and the Reply both point to Conley’s second device 142 as being
`the required ‘remote device.’” Sur-reply 4, 5 (“As seen in Conley’s Figure
`1, Petitioner points to Conley’s second device 142 (desktop computer on the
`right-hand side) as being the required ‘remote device’.”), 6 (arguing that the
`remote device identifier would be the identifier of Conley’s second device
`
`
`2 We refer for this exhibit to the internal page numbers rather than the page
`numbers added by Petitioner.
`
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`142); Reply 16, 21. Patent Owner argues that an SMS message would have
`had the address of telephone 112, and not second device 142. This argument
`rests in part on Patent Owner’s rejection of Petitioner’s mapping of the
`remote device as telephone 112 and device 142 as a single, integrated unit,
`which we have addressed above, Section I.D.2.a. With that mapping in
`mind (which we find supported in Conley’s teachings), we find persuasive
`Petitioner’s argument, backed with uncontroverted expert testimony and
`citations to supporting documentation, that the SMS messages sent over
`Conley’s primary channel 160 (if that channel was an SMS data channel
`(Ex. 1012 ¶¶ 21, 22)) would include the address of the recipient, that is, a
`single integrated unit incorporating telephone 112. Pet. 26–27 (citing
`Ex. 1002 ¶¶ 23, 30, 34; Ex. 1012 ¶ 57; Ex. 1019, 21–23, 25–29); Reply 2–4;
`Ex. 1012 ¶ 50.
`Patent Owner additionally argues that “[n]othing in Conley discloses
`or even suggests that any communication of data over the already
`established primary channel would somehow require the inclusion of a
`‘remote device identifier,’ much less that inclusion of a ‘remote device
`identifier’ is somehow necessary to even allow each and every
`communication of data over the established primary channel.” PO Resp.
`18–19. Because the transmission to the remote device including the “small
`amount of information” in Conley occurs only after this channel is
`established, Patent Owner argues, there would be no need to use a remote
`device identifier:
`Petitioner’s speculative and illogical rewrite of Conley is
`tantamount to arguing that once you and a friend have
`successfully started a telephone conversation over a traditional
`Public Switched Telephone Network or PSTN, every time you
`want to say something you have to hang up and redial, as
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`opposed
`to simply continue speaking and allowing
`established connection to convey your voice.
`Id. at 19. But we agree with Petitioner that Conley discloses the existing
`channel may be “a data channel such as Short Messaging Service (SMS).”
`Ex. 1002 ¶ 21; Pet. 23, 27, 29–30. It is uncontroverted that “an SMS
`message includes the address of the recipient, which in this case would be
`the remote device.” Pet. 27; Ex. 1012 ¶ 57. Thus, we determine that a
`person of ordinary skill in the art would have understood that even where
`prior SMS messages had been sent or a specific SMS channel established,
`the Conley invitation message, if sent via SMS, would have included a
`remote device identifier.
`For these reasons, we determine that Petitioner has met its burden of
`proof on this limitation.
`c) Third limitation (“establishing a connection between the
`stationary terminal and the remote device . . . .”)
`The method of claim 1 further includes the limitation “establishing a
`connection between the stationary terminal and the remote device for data
`communications based upon an initial communication by the remote device
`through use of the network address of the stationary terminal provided to the
`remote device by the proximate mobile device.” Ex. 1001, 6:43–48.
`Petitioner argues that, in Conley, the second device 142 uses the
`information received from telephone 110 to establish a secondary channel,
`and that one of ordinary skill would have understood this to teach or suggest
`the use of an initial communication by the remote device. Pet. 30–31 (citing
`Ex. 1002 ¶¶ 21, 23, 27, 30, Fig. 4; Ex. 1012 ¶¶ 60, 61). Petitioner contends
`that one of ordinary skill would have known how devices would connect to
`
`19
`
`
`
`IPR2020-00463
`Patent 8,194,632 B2
`each other over a secondary channel such as the Internet. Id. at 31–32
`(citing Ex. 1012 ¶ 61; Ex. 1006, 524, 539–540).
`Patent Owner does not dispute Petitioner’s arguments with respect to
`this third limitation. See PO Resp. 14–26. Petitioner directs us to sufficient
`evidence to support the balance of its contentions. Pet. 30–32. Therefore,
`we find Petitioner has met its burden of proof on this limitation.
`Conclusion
`d)
`In sum, on the complete record, we conclude that Petitioner has
`proved by a preponderance of the evidence that claim 1 would have been
`obvious over Conley.
`
`3. Analysis of Claims 8 and 15
`Petitioner argues that claim 8’s “non-transitory computer-readable
`medium including instructions that, when executed by a processor of a
`stationary terminal, causes the processor to establish a data communications
`session between the stationary terminal and a remote mobile device, by
`performing all the steps of claim 1,” is taught or suggested by the memory
`220 of first device 140. Pet. 34–35 (citing Ex. 1002 ¶ 24, Fig. 2). Petitioner
`further argues that the processor of first device 140 teaches the “processor of
`[the] stationary terminal.” Id. (citing Ex. 1002 ¶ 24, Fig. 2). Petitioner
`additionally contends that the telephonic device 142 is a “remote mobile
`device” thus teaching “a remote mobile device” as in claim 8, as well as the
`“remote device” of claim 1. Id. at 34 (citing Ex. 1012 ¶ 64). We find that
`Petitioner has shown that Conley teaches these additional aspects of claim 8
`based on those contentions.
`Petitioner additionally argues that claim 15’s “computer system
`configured to initiate a data communications session with a remote device”
`and “comprising a processor configured to perform all the steps of claim 1”
`
`20
`
`
`
`IPR2020-00463
`Patent 8,194,632 B2
`are similarly taught by first device 140 and its processor. Id. at 36 (citing
`Ex. 1012 ¶ 67). We find that Petitioner has shown that Conley teaches these
`additional aspects of claim 15 based on those contentions.
`Patent Owner does not present any arguments for claims 8 or 15 other
`than those presented for claim 1, addressed above.
`For the reasons discussed above, we conclude that Petitioner has
`proved by a preponderance of the evidence that claims 8 and 15 would have
`been obvious over Conley.
`
`E. Remaining Grounds
`Having determined that Petitioner establishes by a preponderance of
`the evidence that the challenged claims would have been obvious over
`Conley, we do not address Petitioner's additional grounds challenging these
`claims. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a
`petitioner “is entitled to a final written decision addressing all of the claims
`it has challenged”); Boston Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x
`984, 990 (Fed. Cir. 2020) (nonprecedential) (“We agree that the Board need
`not address [alternative grounds] that are not necessary to the resolution of
`the proceeding.”).
`III. PATENT OWNER’S ARGUMENT UNDER ARTHREX
`Patent Owner argues that the Federal Circuit determined in Arthrex,
`Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), that
`Administrative Patent Judges were appointed unconstitutionally, but that the
`Federal Circuit’s remedy was inappropriate and insufficient to cure the
`constitutional violation. PO Resp. 34–37.
`We need not consider Patent Owner’s constitutional argument because
`the U.S. Supreme Court addressed this issue in United States v. Arthrex,
`Inc., 141 S. Ct. 1970 (2021).
`
`21
`
`
`
`IPR2020-00463
`Patent 8,194,632 B2
`
`35 U.S.C. § Reference(s)/
`Basis
`
`103
`103
`
`
`1, 8, 15
`1, 8, 15
`Overall
`Outcome
`
`
`Conley
`Conley, RFC
`32614
`
`
`IV. CONCLUSION3
`Petitioner has shown by a preponderance of the evidence that claims
`1, 8, and 15 would have been obvious over Conley.
`
`Claims
`
`
`Claims
`Shown
`Unpatentable
`1, 8, 15
`
`
`Claims
`Not shown
`Unpatentable
`
`
`
`1, 8, 15
`
`
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED, based on a preponderance of the evidence, that claims 1,
`8, and 15 are unpatentable; and
`FURTHER ORDERED, because this is a final written decision, the
`parties to this proceeding seeking judicial review of our Decision must
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