Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Date: August 13, 2020
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`INTRODUCTION
`I.
`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.”).
`With our authorization (Paper 8), Petitioner filed a Reply relating to our
`
`
`
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`571-272-7822
`
`Paper 13
`Date: August 13, 2020
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`INTRODUCTION
`I.
`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.”).
`With our authorization (Paper 8), Petitioner filed a Reply relating to our
`
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`discretion under 35 U.S.C. § 314(a), Paper 7 (“Reply”), and Patent Owner
`filed a Sur-Reply, Paper 12 (“Sur-Reply”). We have authority under 35
`U.S.C. § 6(b)(4) and 35 U.S.C. § 314.
`Upon consideration of the Petition, Preliminary Response, and
`additional briefing we decline to exercise discretion to deny institution under
`35 U.S.C. § 314(a), and we are persuaded that Petitioner has demonstrated a
`reasonable likelihood that it would prevail in showing the unpatentability of
`at least one challenged claim of the ’632 patent. Accordingly, we institute
`inter partes review of all challenged claims on all grounds raised.
`II. BACKGROUND
`A. 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, Action 2:18-cv-00499 (E.D. Tex.) 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. Reply, 1–2; Sur-Reply, 1; Ex. 1023.
`Additionally, Petitioner identifies six patent applications to which the
`’632 patent claims priority, and two patent applications that claim priority to
`the application that issued as the ’632 patent.
`B. 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
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`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
`(such as stationary terminal 125 in Fig. 1) and a remote device (such as
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`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
`device, using the provided cellular telephone number and including the
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`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).
`C. Illustrative Claims
`Claim 1 of the ’632 patent is a representative claim 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 is directed towards “[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 is directed towards “[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.
`D. Evidence Relied Upon
`Date
`Oct. 28, 2004
`
`Exhibit
`1002
`
`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).
`
`2002
`
`1003
`
`E. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1, 8, and 15 would have been
`unpatentable on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`1, 8, 15
`103
`1, 8, 15
`103
`
`Reference(s)/Basis
`Conley
`Conley, RFC 3261
`III. ANALYSIS
`A. 35 U.S.C. § 314(a) Discretion
`Institution of an inter partes review under 35 U.S.C. § 314(a) is
`discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
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`(Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute
`an IPR proceeding.”); 35 U.S.C. § 314(a).
`Patent Owner argues in the Preliminary Response and Sur-Reply that
`we should exercise this discretion, in view of the overlapping issues,
`progress, and expected completion date of parallel litigation involving the
`same parties. Prelim. Resp. 1, 5–19; Sur-Reply. Petitioner argues that our
`exercise of discretion to deny institution is not warranted here, especially in
`light of the transfer of the related litigation to the Northern District of
`California. Reply.
`The Board has held that the advanced state of a parallel district court
`action is a factor that may weigh in favor of denying a petition under
`§ 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal
`Board, Consolidated Trial Practice Guide, 58 & n.2 (Nov. 2019). We
`consider the following factors to assess “whether efficiency, fairness, and
`the merits support the exercise of authority to deny institution in view of an
`earlier trial date in the parallel proceeding”:
`1. whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted;
`proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`investment in the parallel proceeding by the court and the
`parties;
`overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`4.
`
`2.
`
`3.
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`6.
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`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
`2020) (precedential). In evaluating these factors, we “take[] a holistic view
`of whether efficiency and integrity of the system are best served by denying
`or instituting review.” Id. at 6. Upon consideration of these factors, we
`decline to exercise our discretion to deny the Petition.
`1. “whether the court granted a stay or evidence exists that one may be
`granted if a proceeding is instituted”
`The Fintiv panel indicated that, in previous Board decisions, the
`existence of a district court stay pending Board resolution of an inter partes
`review has weighed strongly against discretionary denial, while a denial of
`such a stay request sometimes weighs in favor of discretionary denial.
`Fintiv, at 6–8.
`Patent Owner argued, before the transfer, that there was no evidence
`that the Eastern District of Texas would grant a stay. Prelim. Resp. 8.
`Patent Owner additionally argued, more generally, that district courts have
`routinely denied motions to stay in cases where “a claim construction order
`had issued, a trial was approaching, and discovery was in an advanced
`stage.” Id. at 9 (citing Fintiv, 7–8 nn.11–12).
`After the transfer was ordered, Petitioner asserted, with respect to this
`factor, that “[t]he Northern District of California frequently stays cases in
`view of IPRs, both before and after institution.” Reply 2 (citing Uniloc 2017
`LLC v. Apple Inc., No. 3:19-cv-01904, Dkt. 89 (N.D. Cal. Jan. 30, 2020);
`J&K IP Assets, LLC v. Armaspec, Inc., No. 3:17-cv-07308, Dkt. 61 (N.D.
`Cal. Sept. 12, 2019); Cellwitch Inc. v. Tile, Inc., No. 4:19-cv-01315, Dkt. 68
`(N.D. Cal. Jan. 17, 2020) (before institution); Elekta Ltd. v. ZAP Surgical
`Sys., Inc., No. 4:19-cv-02269, Dkt. 42 (N.D. Cal. Nov. 8, 2019)). Petitioner
`additionally argues that in this case, “a stay is likely because discovery in the
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`district court litigation is not yet complete (most party depositions remain
`pending and expert reports have not been served and will only be delayed by
`the transfer) and no date for trial in the Northern District of California is
`set.” Id. at 2–3. Petitioner asserts that particularly because the case has been
`transferred, the simplification of issues that an IPR may engender would be
`“particularly compelling” to the transferee court. Id. at 3.
`Patent Owner responds that the cases cited by Petitioner include one
`in which an unopposed motion for a stay was granted, and only two were
`stays granted before institution, each acknowledging the case-by-case
`determination that must be made in each situation. Sur-Reply 1–2
`(describing Uniloc 2017 as an unopposed motion, and Cellwitch and Elekta
`Ltd. as granted before institution). Patent Owner additionally asserts that the
`issuance of the claim construction order by the Eastern District of Texas
`distinguishes the present situation from Cellwitch, in which no claim
`construction briefing had occurred. Id. at 2–3 (citing Cellwitch, 4). With
`respect to discovery, Patent Owner argues that written fact discovery closed
`in the Eastern District of Texas. Id. at 3.
`The district court litigation between the parties is in the process of
`being transferred from the Texas court to the California court. The parties
`have not updated us as to whether the transfer is complete, and we are
`unaware that the transferee court has held a status conference or set a
`schedule. Because the record does not reflect whether or when the
`California court assumed control over the parties’ litigation and, to our
`knowledge, the parties have not yet had an opportunity to request a stay of
`the California case, we decline to speculate as to what that court might do if
`and when Petitioner requests a stay of that case. Accordingly, this factor is,
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`at best, neutral to the exercise of our discretion. Cf. Sand Revolution II, LLC
`v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24
`at 7 (PTAB June 16, 2020) (informative) (“In the absence of specific
`evidence, we will not attempt to predict how the district court in the related
`district court litigation will proceed because the court may determine
`whether or not to stay any individual case, including the related one, based
`on a variety of circumstances and facts beyond our control and to which the
`Board is not privy.”); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at
`12 (PTAB May 13, 2020) (informative) (“Fintiv II”) (“We decline to infer,
`based on actions taken in different cases with different facts, how the
`District Court would rule should a stay be requested by the parties in the
`parallel case here. This factor does not weigh for or against discretionary
`denial in this case.”).
`2. “proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision”
`A trial date earlier than our projected statutory deadline would weigh
`in favor of a discretionary denial. See Fintiv, at 9. Assessing whether a
`district court trial date set around the same time as or after our projected
`deadline weighs for or against denial requires us to look at other factors
`discussed in Fintiv. Id. For example, the “investment factor is related to the
`trial date factor, in that more work completed by the parties and court in the
`parallel proceeding tends to support the arguments that the parallel
`proceeding is more advanced, a stay may be less likely, and instituting
`would lead to duplicative costs.” Id. at 10.
`Because our record does not reflect that the California court has yet
`set a schedule, we are not aware of a trial date set in the district court case
`between the parties. Patent Owner argues that a trial in the California court
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`likely will be expedited because Petitioner has taken the position that written
`discovery is closed and the Texas court already has issued a claim
`construction order. Sur-Reply 4. Petitioner argues that, depending on the
`congestion of the California court’s docket, the trial date could be delayed
`beyond our projected statutory deadline. Reply 4. Both parties invite
`speculation regarding the trial date the California court ultimately will set.
`We view it as unlikely that the California court will begin a trial
`before our projected statutory deadline, given that the California court has
`not held a status conference or set a schedule, and assuming that the impact
`of the current global pandemic on court congestion and trial dates is likely to
`add delay. In any case, any determination of when the California court
`might schedule a trial in the parties’ district court litigation is highly
`speculative at this stage. For the reasons given below, the parties’ and Texas
`court’s investment in the case looks to have been directed primarily to issues
`that do not overlap with those that we are likely to consider. Thus, before a
`trial would take place, the parties and the California court still must proceed
`with the majority of validity-related discovery. On balance, this factor
`weighs against discretionary denial. Cf. Sand Revolution, at 8–10
`(circumstances weighed “marginally in favor of not exercising discretion to
`deny institution” in light of the district court’s own recognition of a
`“continuing degree of . . . uncertainty of the court’s schedule” and the
`Board’s general adherence to a one-year statutory deadline under 35 U.S.C.
`§ 316(a)(11)).
`3. “investment in the parallel proceeding by the court and the parties”
`If, at the time of the institution decision, the district court has issued
`substantive orders related to the challenged patent, such as a claim
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`construction order, this fact weighs in favor of denial. See Fintiv, at 9–10.
`On the other hand, if the district court has not issued such orders, this fact
`weighs against discretionary denial. Id. at 10.
`Patent Owner argues that the Eastern District of Texas has invested
`substantially in the related litigation, citing the claim construction order and
`additional discovery hearings and orders. Sur-Reply 4–5.
`On the facts of this case, the existence of a claim construction order
`alone does not weigh heavily against institution. Petitioner and Patent
`Owner have both set forth the claim constructions provided in the claim
`construction order and for each of the five terms construed. Pet. 8–12,
`Prelim. Resp. 22–24. For two of these terms, the issue was indefiniteness,
`which is not before us here. For the other three, Petitioner argues that no
`construction is necessary. Pet. 8–12. Patent Owner does not set forth an
`affirmative position on whether claim construction is necessary or whether
`we should adopt the claim construction order’s claim constructions, with the
`exception of asserting that “short-range wireless technology” should not
`exclude Wi-Fi, an issue that we do not find relevant to the challenge set forth
`in the Petition. See infra § III.B.3. Thus, while it is speculative to say
`whether we will duplicate work that the California court might do, it is
`unlikely that we will duplicate work already done by the Texas court or issue
`conflicting results.
`Additionally, while Patent Owner may be correct that the transferor
`district court invested resources on many discovery related orders and
`hearings, without more on how these relate to the Petition before us, it is
`unclear whether this indicates that institution “would lead to duplicative
`costs.” Fintiv, at 10. Patent Owner does not assert that these orders were
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`related to issues which we would consider, and we decline to assume that
`they are related to issues of relevance to a proceeding here if instituted.
`We find that this factor is neutral. This is similar to the Sand
`Revolution case, in which the district court issued a Markman order and
`issued several other orders that “relate[d] to ancillary matters untethered to
`the validity issue itself,” while “much work remain[ed] in the district court
`case as it relates to invalidity: fact discovery [was] still ongoing, expert
`reports [were] not yet due, and substantive motion practice [was] yet to
`come.” Sand Revolution II, LLC v. Continental Intermodal Grp. —
`Trucking LLC, IPR2019-01393, Paper 24 (June 16, 2020) (informative) at
`10–11. In those circumstances, “this factor weighs only marginally, if at all,
`in favor of exercising discretion to deny institution under 35 U.S.C.
`§ 314(a).” Id. at 11.
`4. “overlap between issues raised in the petition and in the parallel
`proceeding”
`If the prior art and arguments in the parallel proceeding are
`substantially identical to those presented here, “concerns of inefficiency and
`the possibility of conflicting decisions [would be] particular strong.” Fintiv,
`at 12. “Conversely, if the petition includes materially different grounds,
`arguments, and/or evidence than those presented in the district court, this
`fact has tended to weigh against exercising discretion to deny institution
`under NHK.” Id. at 12–13.
`Petitioner argues that its invalidity contentions identify “some” of the
`IPR prior art, but alongside 140 other prior art references, and there is no
`guarantee these will be considered in the related litigation. Reply 10 (citing
`Ex. 2002, 10–18). Patent Owner argues that “the overlap is total and
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`complete” with the same claims challenged by the same prior art. Prelim.
`Resp. 12–13 (citing Ex. 2002,1 1, 11, 20).
`As the same art has been identified and the same claims are
`challenged, this factor weighs in favor of a discretionary denial. See
`Fintiv II, at 15 (“[B]ecause the identical claims are challenged based on the
`same prior art in both the Petition and in the District Court, this factor
`weighs in favor of discretionary denial in this case.”).
`5. “whether the petitioner and the defendant in the parallel proceeding are
`the same party”
`If the petitioner here was unrelated to the defendant in the parallel
`proceeding, that might weigh against discretionary denial. See Fintiv, at 13–
`14. Here, however, Petitioner is the defendant in the parallel proceeding.
`Reply 7. This fact could weigh either in favor of, or against, exercising
`discretion to deny institution, depending on which tribunal was likely to
`address the challenged patent first. However, with no trial date set yet by
`the California court in this case, this factor is neutral.
`6. “other circumstances that impact the Board’s exercise of discretion,
`including the merits”
`Additional factors we can consider include the merits.
`For example, if the merits of a ground raised in the petition seem
`particularly strong on the preliminary record, this fact has
`favored institution. In such cases, the institution of a trial may
`serve the interest of overall system efficiency and integrity
`because it allows the proceeding to continue in the event that the
`parallel proceeding settles or fails to resolve the patentability
`question presented in the PTAB proceeding.
`Fintiv, at 14–15. As explained below, on preliminary record, the merits of
`Petitioner’s case are reasonably strong, and Patent Owner has not yet raised
`
`1 We understand the reference to Ex. 2004 to be a typographical error.
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`a persuasive defense to Petitioner’s allegations. This factor weighs against
`discretionary denial. Compare Sand Revolution, at 13 (“We determine, on
`this preliminary record, that Petitioner has set forth a reasonably strong case
`for the obviousness of most challenged claims. Thus, this factor weighs in
`favor of not exercising discretion to deny institution under 35 U.S.C.
`§ 314(a).”), with Fintiv II, at 17 (“It is sufficient that Patent Owner has
`pointed out that Petitioner’s case, at least as to two of three independent
`claims, is a close call. . . . The merits, taken as a whole, do not tip the
`balance in favor of Petitioner and instead also weigh in favor [of]
`discretionary denial in a balanced assessment of all the circumstances.”).
`7. Other Considerations
`We also consider factors unrelated to parallel proceedings, such as
`“the filing of serial petitions, parallel petitions challenging the same patent,
`and considerations implicated by 35 U.S.C. § 325(d).” Fintiv, at 16
`(footnotes omitted). As Petitioner argues, this is the only challenge to the
`’632 patent before the Board. Reply 7. This, too, weighs against
`discretionary denial.
`
`8. Conclusion
`We consider the above factors and take “a holistic view of whether
`efficiency and integrity of the system are best served by denying or
`instituting review.” Fintiv, at 6. Doing so, we decline to exercise our
`discretion to deny the petition.
`As explained above, to our knowledge, the California court has not
`conducted significant work on the case and has not yet set a trial date, or
`even a schedule. Although the Texas court conducted some work on the
`case, including a claim construction order and resolving some discovery
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`disputes, the claim construction order does not materially impact this
`proceeding and the discovery disputes have not been shown to be related to
`it. Moreover, while the same claims and prior art have been identified in the
`invalidity contentions, it is not clear that the ground relating to Conley or to
`the combination of Conley and RFC 3261 will be evaluated in district court
`in light of the preliminary nature of that proceeding and the number of
`references and combinations asserted. We are not persuaded that it would be
`inefficient for us to proceed with a trial or that there is a strong likelihood of
`us issuing results inconsistent with those of the California court. Finally, the
`merits presented in the Petition are reasonably strong, at least at this stage of
`the proceeding. After considering the factors outlined in the precedential
`order in Fintiv, we decline to deny institution under § 314(a).
`B. Unpatentability
`1. 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 as obvious if “the differences between the
`claimed invention and the prior art are such that the subject matter as a
`whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a) (2012). The question of obviousness is resolved 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 (4) objective
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`evidence of nonobviousness.2 Graham v. John Deere Co. of Kansas City,
`383 U.S. 1, 17–18 (1966).
`Even if prior art references disclose all claim limitations when
`combined, there must be evidence to explain why a person of ordinary skill
`in the art would have combined the references to arrive at the claimed
`invention. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
`1366–67 (Fed. Cir. 2012) (citing Innogenetics, N.V. v. Abbott Labs., 512
`F.3d 1363, 1374 (Fed. Cir. 2008) (holding that “some kind of motivation
`must be shown from some source, so that the [trier of fact] can understand
`why a person of ordinary skill would have thought of either combining two
`or more references or modifying one to achieve the patented [invention]”)).
`An invention “composed of several elements is not proved obvious merely
`by demonstrating that each of its elements was, independently, known in the
`prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather,
`“it can be important to identify a reason that would have prompted a person
`of ordinary skill in the relevant field to combine the elements in the way the
`claimed new invention does.” Id.
`An obviousness determination “cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006));
`see In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
`2016).
`
`
`2 No argument or evidence concerning secondary considerations has been
`adduced in the current record.
`
`17
`
`
`
`IPR2020-00463
`Patent 8,194,632 B2
`
`
`2. 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. Prelim. Resp. 20–
`21.
`
`At this stage of the proceeding, and for purposes of this Decision, 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).
`3. 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
`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. “Claim construction begins with the words of
`the claim, which ‘must be read in view of the specification, of which they
`are a part.’” Wi-Lan, Inc. v. Apple, Inc., 811 F.3d 455, 462 (Fed. Cir. 2016)
`
`18
`
`
`
`IPR2020-00463
`Patent 8,194,632 B2
`
`(quoting Phillips, 415 F.3d at 1312–15). 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).
`Petitioner presents Petitioner’s and Patent Owner’s claim construction
`proposals and the claim construction issued by the Eastern District of Texas
`for three terms, each found in claim 1: “stationary terminal,” “mobile
`device,” and “short-range wireless technology.” Pet. 9–12. For each of
`these, Petitioner argues that construction is not necessary to resolve the
`controversy here as unpatentability, according to Petitioner, has been shown
`under any construction; the only exception is that, for “short-range wireless
`technology,” Petitioner argues that the scope of Patent Owner’s proposed
`construction is unclear. Id. However, even in this case Petitioner argues
`that construction is not necessary because the ’632 Specification makes clear
`that “short-range wireless technology” must include Bluetooth, which is the
`technology described in the prior art. Id. at 11–12 (citing Ex. 1001 2:61–62,
`6:49–50); Ex. 1002 ¶ 21, claim 2. Petitioner additionally argues that if
`Patent Owner requested a construction for “short-range wireless technology”
`that requires the use of Wi-Fi technology, we would still not need to set forth
`a specific construction, as Bluetooth could be implemented using Wi-Fi. Id.
`at 12 (citing Ex. 1002 ¶ 21; Ex. 1012 ¶ 52).
`Patent Owner notes that, subsequent to the filing of the Petition, the
`district court modified its construction of “short-range wireless technology,”
`to specifically exclude Wi-Fi technology. Prelim. Resp. 23 n.2, 25–26; see
`Ex. 2001 (Uniloc 2017 LLC et al v. Google LLC, No. 2-18-cv-00499, Dkt.
`203 at 1 (E.D. Tex. March 20, 2020) (cited at Prelim. Resp. 25)). While not
`
`19
`
`
`
`IPR2020-00463
`Patent 8,194,632 B2
`
`explicitly setting forth a claim construction proposal, Patent Owner states
`explicitly that it does not propose a construction that limits “short-range
`wireless technology” to refer exclusively to Wi-Fi. Prelim. Resp. 25.
`Moreover, Patent Owner agrees that the Specification discloses Bluetooth as
`an exemplary short-range wireless technology. Id. at 25–27. Patent Owner
`argues, however, that claim construction is appropriate because, if we did
`adopt such construction that exclusively requires Wi-Fi, Petitioner’s
`“alternative obviousness theory” would need to be consi
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