Paper 19
`Trials@uspto.gov
`Date: March 5, 2021
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION, APPLE INC.,
`and MOTOROLA MOBILITY LLC,
`Petitioners,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and JOHN D. HAMANN,
`Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`

`

`IPR2019-01471
`Patent 6,836,654 B2
`INTRODUCTION
`I.
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Microsoft Corporation (“Microsoft”), Apple Inc. (“Apple”), and Motorola
`Mobility LLC (“Motorola”) (“Petitioners”) challenge the patentability of
`claims 10–20 (“the challenged claims”) of U.S. Patent No. 6,836,654 B2
`(Ex. 1001, “the ’654 patent”), owned by Uniloc 2017 LLC (“Patent
`Owner”). We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed herein, we determine that Petitioners have
`shown by a preponderance of the evidence that claims 10–20 are
`unpatentable.
`BACKGROUND
`II.
`A. Procedural History
`Microsoft filed a Petition requesting inter partes review of the
`challenged claims of the ’654 patent. Paper 2 (“Pet.”). The Petition is
`supported by the Declaration of Henry Houh (Ex. 1010). Patent Owner filed
`a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We instituted inter partes review of all of the challenged claims of the
`’654 patent on all of the grounds raised in the Petition with Microsoft as the
`sole petitioner. Paper 7 (“Dec. on Inst.”), 8, 24. Thereafter, we instituted
`inter partes review in IPR2020-00701 (whose petition challenged the same
`claims of the ’654 patent on the same grounds as Microsoft’s Petition), and
`
`2
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`IPR2019-01471
`Patent 6,836,654 B2
`granted Apple’s and Motorola’s Motion1 for Joinder, joining them as
`petitioners in this proceeding. Paper 11, 10. Patent Owner filed a Response
`to the Petition. Paper 9 (“PO Resp.”). Petitioners filed a Reply to Patent
`Owner’s Response. Paper 10 (“Pet. Reply”). The Reply is supported by the
`Second Declaration of Henry Houh (Ex. 1020). Patent Owner filed a
`Sur-Reply to Petitioners’ Reply. Paper 12 (“PO Sur-Reply”).
`An oral hearing was held on November 10, 2020. A transcript of the
`oral hearing is included in the record. Paper 19 (“Tr.”).
`B. Related Matters
`Petitioners identify the following as related matters that involve the
`’654 patent.
`1. Uniloc 2017 LLC v. Microsoft Corp., 8-19-cv-00781 (C.D. Cal.)
`2. Uniloc USA, Inc. v. Apple Inc., 3-19-cv-01697 (C.D. Cal.)
`3. Uniloc 2017 LLC v. HTC Am., Inc., 2:18-cv-01732 (W.D. Wash.)
`4. Uniloc 2017 LLC v. Motorola Mobility, LLC, 1:18-cv-01844 (D. Del.)
`5. Uniloc 2017 LLC v. Google LLC, 2:18-cv-00493 (E.D. Tex.)
`6. Uniloc 2017 LLC v. Samsung Elecs. Am., Inc., 2:18-cv-00508 (E.D. Tex.)
`7. Uniloc 2017 LLC v. Huawei Device USA, Inc., 2:18-cv-00509 (E.D. Tex.)
`8. Uniloc 2017 LLC v. Google LLC, 2:18-cv-00422 (E.D. Tex.)
`9. Uniloc USA, Inc. v. Huawei Device USA, Inc., 2-18-cv-00357 (E.D. Tex.)
`10. Uniloc USA, Inc. v. Motorola Mobility, LLC, 1:18-cv-01230 (D. Del.)
`11. Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., 2:18-cv-00309 (E.D. Tex.)
`12. Uniloc USA, Inc. v. Huawei Device USA, Inc., 2:18-cv-00310 (E.D. Tex.)
`13. Uniloc USA, Inc. v. Apple Inc., 1:18-cv-00293 (W.D. Tex.)
`14. Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2019-01218 (PTAB)
`15. Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2019-01219 (PTAB)
`16. Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-01470 (PTAB)
`
`1 Samsung Electronics America, Inc. (“Samsung”) also was a petitioner
`seeking joinder at the time the petition in IPR2020-00701 was filed.
`IPR2020-00701, Paper 1. The -701 proceeding was terminated as to
`Samsung, however, before we instituted inter partes review in the -701
`proceeding and joined it with this proceeding.
`
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`IPR2019-01471
`Patent 6,836,654 B2
`Pet. vii–viii. Patent Owner identifies nine of these matters as being “active
`proceedings.” Paper 3, 2.
`C. The Challenged Patent (Ex. 1001)
`The ’654 patent relates to deterring the theft of a mobile
`radiotelephony device. Ex. 1001, code (57), 1:60–65. In particular, the ’654
`patent discloses that it deters theft by making the device “totally unusable,”
`if it is stolen. Id. at 1:60–65. The ’654 patent states that it does so by
`resolving what it identifies as a problem in a prior art protection method. Id.
`at 1:31–41.
`More specifically, and as described by the ’654 patent, the prior art
`method provides protection by “establishing a link between [a] device and a
`specific user identification module and blocking the normal operation of the
`device when the user identification module that is placed inside the device is
`not the one that is linked to the device.” Id. at 1:21–29. The ’654 patent,
`however, identifies as a problem with this method that “[w]hen the device is
`lost or stolen with the identification module to which it is linked,” the device
`can be freely used until the device’s network operator is notified to block the
`device, which “may take a certain period of time.” Id. at 1:31–37.
`
`In resolving this problem, the ’654 patent notes that “when the device
`falls into the hands of a third party together with the identification module to
`which it is linked, it has most probably been inactive for a period of time.”
`Id. at 1:52–54. The ’654 patent discloses that this inactive period is
`“sufficiently long” so that it can be used as a way to block the device’s
`normal operation, and to require a deblocking code to use the device, in
`accordance with the ’654 patent’s invention. Id. at 1:55–59.
`
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`IPR2019-01471
`Patent 6,836,654 B2
`
`Figure 3, shown below, “represents a flow chart explaining the
`operation of the device,” in accordance with the invention of the ’654 patent.
`Id. at 2:26–27, 2:30–31.
`
`
`Figure 3 illustrates “a function flow chart of a device in accordance
`
`with the invention” of the ’654 patent. Id. at 2:61–62. Starting at box K1,
`“the device is in a state of availability, that is to say that the user has access
`to all the functions of the device.” Id. at 2:62–65. As illustrated by box K2,
`
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`IPR2019-01471
`Patent 6,836,654 B2
`the user has the choice whether to lock the device. Id. at 2:65–66. If the
`user locks the device (box K2), “the identification module that is inside the
`device is automatically linked to the device. For this purpose, the device
`starts reading a data D1 in the identification module (for example, the
`international identification number IMSI) and he stores it in the random-
`access memory 24,” the ’654 patent states. Id. at 2:67–3:6. As illustrated,
`“[o]nce locked, the device remains in the state of availability indicated in
`box K1.” Id. at 3:6–7.
`
`In accordance with the ’654 patent, “[w]hen the device is in the state
`of availability, one looks whether it is locked (box K3). If it is not locked
`(arrow N3), the device remains in the state of availability indicated in box
`K1.” Id. at 3:7–10. However, “[i]f it is locked (arrow Y3), one looks
`whether the identification module which is placed inside the device is the
`one that is linked to the device (box K4).” Id. at 3:10–13. If the
`identification module inside the device “is not the one that is linked to the
`device (arrow N4), the device goes to a first blocking state indicated in box
`K5,” and “is disconnected from the network.” Id. at 3:14–18.
`
`Alternatively, “[i]f the identification module that is placed inside the
`device is linked to the device (arrow Y4), one looks whether the device has
`remained in the state of availability for a certain period of time T . . . (box
`K10),” as illustrated. Id. at 3:32–36. If not T “(arrow N10), the device
`remains in the state of availability indicated in box K1.” Id. at 3:36–37.
`However, if the device has remained available for time period T, the device
`“passes on to a second blocking state indicated in box K11,” and
`“initialize[s] a variable A which represents the number of attempts made at
`supplying a deblocking code.” Id. at 3:37–42. “In this second blocking state
`
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`IPR2019-01471
`Patent 6,836,654 B2
`the device only processes incoming calls (box K13) and, possibly, the
`outgoing calls that correspond to emergency numbers (box K14).” Id. at
`3:44–46.
`
`The ’654 patent discloses that at this stage the user is prompted to
`supply a deblocking code, and “[i]f the code . . . is recognized (arrow Y11),
`the device goes back to the state of availability indicated in box Kl.” Id. at
`3:49–53. On the other hand, if the code is not recognized (arrow N11),
`variable A is tested (box K15), and if A is lower than a certain figure, A is
`incremented (box K16); otherwise “the test of box K15 causes the total
`blocking of the device indicated in box K30” (i.e., a third blocking state).
`Id. at 3:53–61. The ’654 patent discloses that “[t]o leave this third blocking
`state[,] it is necessary to contact the organization that provides the
`identification module.” Id. at 3:61–63.
`D. The Challenged Claims
`Petitioners challenge claims 10–20 of the ’654 patent. Claims 10 and
`17 are independent claims. Claim 10 is illustrative of the challenged claims
`and is reproduced below:
`10. A method of protecting a mobile radiotelephony device, the
`method comprising:
`
`ver[i]fying a user identification module mounted inside
`the mobile radiotelephony device is linked to the mobile
`radiotelephony device;
`the mobile
`inactivity of
`
`detecting a period of
`radiotelephony device during a normal operation of the mobile
`radiotelephony device, wherein the normal operation includes a
`processing of all outgoing calls;
`the mobile
`
`preventing
`the normal operation of
`radiotelephony device in response to the verification of the
`linked user identification module and in response to the detection
`of the period of inactivity of the mobile radiotelephony device.
`
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`IPR2019-01471
`Patent 6,836,654 B2
`Ex. 1001, 5:27–40.
`E. Instituted Grounds of Unpatentability
`We instituted trial based on the following grounds of unpatentability,
`
`which are all the grounds of unpatentability raised in the Petition:
`Claims Challenged 35 U.S.C.
`References/Basis
`§2
`103(a)
`
`Nokia,3 Barvesten4
`
`10–20
`
`10–20
`
`103(a)
`
`Barvesten, Schultz5
`
`
`Pet. 12–64; Dec. on Inst. 8, 24.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`To determine whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1,
`17 (1966). In assessing the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’654
`patent issued from an application filed before March 16, 2013, we apply the
`pre-AIA version of the statutory basis for unpatentability.
`3 Owner’s Manual for the Nokia 9000i Communicator, Issue 1.1 (Ex. 1003).
`4 Barvesten, US 5,940,773 (issued Aug. 17, 1999) (Ex. 1006).
`5 Charles P. Schultz, Communication Device Inactivity Password Lock, 29
`MOTOROLA TECH. DEVS. 14–15 (Nov. 1996) (Ex. 1008).
`
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`Patent 6,836,654 B2
`962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.
`In our Decision on Institution, we adopted Petitioners’ proposed
`definition for one having ordinary skill in the art at the time of the invention
`of the ’654 patent as one who “would have a bachelor’s degree in electrical
`engineering or computer science, and one year of general programming
`experience,” and that “[a]dditional experience may substitute for education,
`and additional education may substitute for experience.” Dec. on Inst. 14–
`15 (quoting Pet. 10–11 (citing Ex. 1010 ¶ 43)).
`Patent Owner does not dispute our adoption of Petitioners’ definition,
`and does not provide its own definition for the level of ordinary skill at the
`time of the invention of the ’654 patent. See PO Resp. 4.
`Because Petitioners’ definition of the level of skill in the art is
`consistent with the ’654 patent and the asserted prior art, we maintain
`Petitioners’ definition for purposes of this Final Written Decision. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d
`at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioners’
`definition in our analysis below.
`
`IV. CLAIM CONSTRUCTION
`Because the Petition was filed after November 13, 2018, we construe
`the challenged claims by applying the standard used in federal courts, in
`other words, the claim construction standard that would be used to construe
`the claim in a civil action 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, the words of a claim are
`generally given their “ordinary and customary meaning,” which is the
`meaning they would have to a person of ordinary skill in the art at the time
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`Patent 6,836,654 B2
`of the invention, in light of the specification and prosecution history. See
`Phillips, 415 F.3d at 1312–13, 1315–16.
`The parties argue that all claim terms6 should be given their plain and
`ordinary meaning. Pet. 11; PO Resp. 6. The parties dispute, however, what
`the plain and ordinary meaning is for “ver[i]fying a user identification
`module mounted inside the mobile radiotelephony device is linked to the
`mobile radiotelephony device” (the “verifying step”), as recited in claim 10.
`See, e.g., Pet. Reply 1–5; PO Sur-Reply 1–7. In particular, as we discuss
`below, the parties point to separate and contradictory district court
`construction orders to support what they argue is the plain and ordinary
`meaning of this limitation.
`As background, terms of the ’654 patent were construed in four
`district court litigations; we identify these claim construction orders in the
`table below.
`1. Mem. Opin. on Claim Construction, Uniloc 2017 LLC v. Motorola
`Mobility, LLC, 1-18-cv-01841 (consolidated with 1-18-cv-01844)
`(D. Del. Jan. 17, 2020) (Ex. 2001).
`2. Claim Construction Mem. Opin. and Order, Uniloc 2017 LLC v.
`Samsung Electronics America, Inc., 2-18-cv- 00508, (Mag. J. Payne)
`(E.D. Tex. Jan. 20, 2020) (Ex. 2003), (adopted by J. Gilstrap
`(Ex. 2004)).
`3. Claim Construction Mem. Opin. and Order, Uniloc 2017 LLC v.
`Google LLC, 2-18-cv-00493, (Mag. J. Payne) (E.D. Tex. Jan. 20,
`2020) (Ex. 2005), (adopted by J. Gilstrap (Ex. 2006)).
`
`6 Petitioners additionally argue that “deblocking code” (recited in dependent
`claims 11, 18, and 19) and “debugging code” (recited in dependent claim 15)
`would “benefit from construction to clarify their ordinary meaning.”
`Pet. 11. Patent Owner, however, does not dispute the plain and ordinary
`meaning of these terms, nor that the cited references teach them. See
`generally PO Resp.; PO Sur-Reply. Thus, there is no controversy for us to
`resolve as to the plain and ordinary meaning of these terms.
`
`10
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`Patent 6,836,654 B2
`
`
`
`4. Uniloc 2017 LLC v. HTC Am., Inc., C18-1732 RSM Order Re Claim
`Construction (W.D. Wash. Oct. 26, 2020) (Ex. 2007).
`
`In particular, the parties express their dispute over the plain and
`ordinary meaning of the verifying step in the context of the related phrase
`“linked user identification module.” See, e.g., Pet. Reply 1–5; PO Sur-Reply
`1–7. We set forth the district courts’ constructions for this phrase below.
`First, the Motorola court construed “linked user identification
`module” to mean “an authorized user identification module that permits the
`normal operation of the device.” Ex. 2001, 3. In so doing, the Motorola
`court reasoned that “[t]here is nothing in the patent that requires that only
`one linked user identification module will permit the normal operation of the
`device for all embodiments.” Id.
`Second, the Samsung court instead construed “linked user
`identification module” to mean “a user identification module that is the only
`one that permits normal operation of the device.” Ex. 2003, 17. Third, the
`Google court construed “linked user identification module” to have the same
`meaning as found by the Samsung court — both Samsung and Google were
`before Magistrate Judge Payne and Judge Gilstrap. Ex. 2005, 13.
`Fourth, the HTC court recognized the different constructions of the
`Motorola court and the Google/Samsung courts, and found that “both
`constructions have support.” Ex. 2007, 5; see also id. at 5–7 (the HTC court
`recounting reasoning from the Motorola and Google/Samsung courts). The
`HTC court, however, adopted the Google/Samsung courts’ construction for
`“linked user identification module.” Id. at 7.
`In our proceeding, Petitioners argue that the Motorola court’s
`construction for “linked user identification module” is aligned with the plain
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`IPR2019-01471
`Patent 6,836,654 B2
`and ordinary meaning of the verifying limitation. Tr. 9:14–12:7. On the
`other hand, Patent Owner argues that the Samsung, Google, and HTC courts’
`construction for “linked user identification module” is aligned with the plain
`and ordinary meaning of the verifying limitation. Tr. 30:22–31:20, 32:7–
`33:20. In other words, the parties dispute whether there is only one linked
`user identification module that will permit normal operation of the device.
`We also note that the Google court separately construed the verifying step
`(independent of the “linked user identification module”) to mean
`“confirming that a user identification module mounted inside the mobile
`radiotelephony device permits normal operation of the mobile
`radiotelephony device.” Ex. 2005, 14 (emphasis omitted). The parties do
`not dispute this construction, separate from their dispute over the meaning of
`“linked user identification module.”
`In addition, Patent Owner separately argues in its Response that the
`plain and ordinary meaning of the verifying limitation also requires
`“ensuring that the user identification module cannot be used with any other
`device.” PO Resp. 7–8 (citing Ex. 1001, Fig. 3, 2:61–3:43); see also id.
`(citing Ex. 1001, 4:23–30) (arguing that the ’654 patent teaches limiting use
`of the user identification module). We disagree with Patent Owner that the
`Specification supports such a requirement. See Ex. 1001, Fig. 3, 2:61–3:43,
`4:23–30. Rather, the portions of the Specification that Patent Owner cites
`relate to limiting the normal operation of a device, and do not relate to
`limiting the operation of the identification module in the manner Patent
`Owner argues. See id. In addition, even if the cited portions of the
`Specification disclose what Patent Owner alleges, which they do not, Patent
`Owner does not provide sufficient justification for importing “such that [the
`
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`user identification module] can only function with that device” into this
`limitation. See PO Resp. 7–8; see also Bradium Techs. LLC v. Iancu, 923
`F.3d 1032, 1049 (Fed. Cir. 2019) (quoting Wenger Mfg., Inc. v. Coating
`Mach. Sys., Inc., 239 F.3d 1225, 1237 (Fed. Cir. 2001) (“[I]t is long-settled
`that even though ‘claims must be read in light of the specification of which
`they are a part, it is improper to read limitations from the written description
`into a claim.’”)).
`Having reviewed the parties’ arguments and the district court claim
`construction orders, we determine that we do not need to reach this dispute
`between the parties. Rather, we agree with Petitioners, as we discuss below,
`that the combination of Nokia and Barvesten teaches the verifying limitation
`under either parties’ interpretation of its plain and ordinary meaning. See
`infra Section VI(C)(2). In other words, the combination of Nokia and
`Barvesten teaches the verifying limitation under both the Motorola court’s
`construction and the Samsung/Google/HTC courts’ construction. Id. Thus,
`we conclude that no express claim construction as to the plain and ordinary
`meaning of “linked user identification module” is necessary to determine
`whether Petitioners have shown by a preponderance of evidence that the
`challenged claims are unpatentable. See, e.g., Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy.’”).
`
`V.
`
`PRINCIPLES OF LAW
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
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`IPR2019-01471
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`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). 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 ordinary skill in the art; and (4) objective evidence
`of non-obviousness, if present.7 See Graham, 383 U.S. at 17–18. When
`evaluating a claim for obviousness, we also must “determine whether there
`was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)).
`
`VI. ALLEGED OBVIOUSNESS OVER NOKIA AND BARVESTEN
`Petitioners argue that the combination of Nokia and Barvesten renders
`claims 10–20 of the ’654 patent obvious under 35 U.S.C. § 103(a). Pet. 12–
`44. We have reviewed the parties’ arguments and the evidence of record.
`For the reasons that follow, we determine that Petitioners show by a
`preponderance of the evidence that one of ordinary skill in the art would
`have found claims 10–20 obvious over the combination of Nokia and
`Barvesten.
`
`
`7 Patent Owner does not present arguments or evidence of such objective
`evidence of non-obviousness in its Response. See generally PO Resp.
`
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`A. Summary of Nokia
`Nokia is the “Owner’s Manual” for Nokia’s 9000i Communicator,
`
`which is “a mobile phone, messaging device, Internet access terminal and
`palmtop organizer all in one compact unit.” Ex. 1003, 1, 7. Nokia explains
`that the 9000i Communicator has two interfaces, including a phone
`interface, and a communicator interface. Id. at 7–8.
`
`For the first start-up, Nokia instructs the user to “[i]nstall the SIM
`card and switch on the phone interface before opening the communicator
`interface. In most locations, this will configure the settings for your voice
`mail and the” Short Message Service Center. Id. at 10. Nokia instructs the
`reader to then perform certain other steps for configuring the device’s
`settings and completing the start-up procedure. Id. at 11.
`
`Nokia provides a “Security” section that discusses the option of
`locking the communicator, which would, inter alia, prevent outgoing calls.
`Id. at 81. Nokia also explains that “[i]f autolock is on, the communicator
`will lock automatically after [a] defined inactivity period.” Id.
`B. Summary of Barvesten
`Barvesten relates to improving security (e.g., making safe against
`
`theft) of terminals (e.g., mobile telephones) having an access unit (e.g., a
`card) that can be inserted into the device. Ex. 1006, 1:10–28, 2:8–11.
`Barvesten teaches one way to improve security is “to protect the terminal
`unit as well as the access unit [by] . . . implement[ing] a ‘lock’ in the
`terminal unit as well as in the access unit wherethrough a user has to enter a
`code to ‘unlock’ the terminal unit and a further code to” get access to the
`card. Id. at 1:24–29. Barvesten teaches that “[t]his however is tedious since
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`IPR2019-01471
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`two different codes have to be entered each time upon use which is very
`inconvenient.” Id. at 1:29–31.
`
`Barvesten provides a solution such that a user does not have to enter
`two different codes upon every activation of a mobile telephone. Ex. 1006,
`1:42–50. To that end, Barvesten teaches storing the code (e.g., IMSI-code)
`for an access unit (e.g., a SIM-card) “in an EEPROM-storage” in the
`telephone. Id. at 3:18–25, 4:26–28. Upon subsequent activation of the
`telephone, the telephone and the card inserted therein communicate with
`each other. Id. at 4:24–26. In particular, the card’s IMSI-code is compared
`to the IMSI-code stored in the telephone. Id. at 4:47–50. If the card’s
`IMSI-code corresponds to the IMSI-code stored in the telephone, the
`telephone starts up without asking for any further code. Id. at 4:50–53.
`C. Challenged Claim 10
`1. Protecting a Mobile Radiotelephony Device
`Petitioners argue that Nokia teaches “[a] method of protecting a
`mobile radiotelephony device,” as recited in claim 10’s preamble. Pet. 16–
`18; id. at 16 (citing Ex. 1010 ¶¶ 121–123). More specifically, Petitioners
`argue that Nokia teaches “protecting the mobile device by describing the
`use of SIM cards as a security measure.” Id. at 17–18 (citing Ex. 1003, 11).
`Petitioners argue that Nokia also “describe[s] a locking system as an
`additional security measure.” Id. at 18 (citing Ex. 1003, 81, 111).
`After reviewing Petitioners’ arguments and evidence, including
`
`Dr. Houh’s Declaration, which are not addressed by Patent Owner (see
`generally PO Resp.), we are persuaded that Petitioners demonstrate by a
`preponderance of the evidence that the combination of Nokia and Barvesten
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`teaches claim 10’s preamble. In light of this finding, we need not, and thus
`do not, reach whether claim 10’s preamble is limiting.
`2. Verifying a User Identification Module
`Claim 10 further recites “ver[i]fying a user identification module
`mounted inside the mobile radiotelephony device is linked to the mobile
`radiotelephony device.” Ex. 1001, 5:29–31. For the reasons we discuss
`below, we agree with Petitioners and we find that Nokia, Barvesten, and the
`combination thereof each teach this limitation under the plain and ordinary
`meaning of this term, and as construed by the Motorola and
`Samsung/Google/HTC courts. Pet. 19–25; Pet. Reply 6–16.
`a. Nokia
`We agree with Petitioners and find that Nokia teaches mounting a
`SIM card (a user identification module) inside Nokia’s communicator
`(mobile radiotelephony device). Ex. 1003, 7–8, 11–12, Figs. 2-1–2-4; Pet.
`19–20. Nokia also teaches a “SIM change security” feature that “checks
`whether the SIM card in the communicator has been changed . . . every time
`the phone interface is switched on.” Ex. 1003, 82; Pet. 20. In accordance
`with this security feature, “[i]f the SIM card has been changed and the new
`SIM card has not previously been used with [the] communicator, the
`communicator locks itself until the lock code . . . is correctly entered.” Ex.
`1003, 82; Pet. 20. Nokia teaches that “the communicator recognizes five
`different SIM cards as the owner’s cards.” Ex. 1003, 82; Pet. 20.
`We find that these disclosures from Nokia teach having a user
`identification module (a SIM card) mounted (installed) inside Nokia’s
`mobile phone, and verifying that the SIM card is linked to the Nokia phone
`(checking whether or not the SIM card in the communicator is new and not
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`previously used with the communicator)). Ex. 1003, 12, 82; Pet. 20. In
`other words, Nokia teaches confirming that a user identification module
`(SIM card) mounted inside the mobile radiotelephony device
`(communicator) permits normal operation of the mobile radiotelephony
`device. Id.; Pet. 20; Pet. Reply 6–8. Nokia also teaches that its
`communicator can recognize the owner’s SIM cards, but requires a lock
`code if a SIM card is new and unused previously. Ex. 1003, 82. In other
`words, each of the recognized owner’s SIM cards are “an authorized user
`identification module that permits the normal operation of the device,” in
`accordance with the Motorola court’s construction. Ex. 1003, 12, 82; Ex.
`2001, 3; Pet. 20; Pet. Reply 6–8. Moreover, we credit Dr. Houh’s
`testimony that these disclosures from Nokia teach “verifying the user
`identification module is linked to the mobile phone in the context of
`describing the 9000i Communicator’s ‘SIM change security’ feature.” Ex.
`1010 ¶ 127 (citing Ex. 1003, 82); Pet. 19–20; Pet. Reply 7. This testimony
`is consistent with Nokia’s teachings discussed above. Compare Ex. 1010
`¶ 127, with Ex. 1003, 11–12, 82.
`In summary, we find that Nokia teaches this limitation under its plain
`and ordinary meaning, and as construed, in relevant part, by the Motorola
`court.
`Additionally, we agree with Petitioners and find that Nokia also
`teaches to one of ordinary skill in the art having a SIM card “that is the only
`one that permits normal operation of the device,” in accordance with the
`Samsung/Google/HTC courts’ construction. Pet. Reply 13–15. Nokia
`teaches that its SIM change security feature allows for an owner to have
`five different SIM cards. Ex. 1003, 82. Nokia also teaches, however, that
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`the owner needs to enter a lock code when changing to a SIM card that was
`not previously used. Id. Thus, without the owner entering the lock code, a
`new, unused SIM card is not linked to the communicator and does not
`permit normal operation of the device — “the communicator locks itself”
`until the owner enters the lock code. Id. And Dr. Houh testifies that one of
`ordinary skill in the art would have understood “that notwithstanding
`[Nokia’s] statement about five SIM cards, in many cases the owner of the
`device will use only a single SIM card with the device,” and “that at least
`one linked SIM card would enable the Nokia device to be able to be used to
`make . . . calls.” Ex. 1020 ¶ 6; Pet. Reply 14–15. Thus, there is only one
`SIM card that permits normal operation of the device for the many
`instances where the owner of the device only uses a single SIM card with
`the device. Ex. 1003, 82; Ex. 1020 ¶ 6.
`In summary, we find that Nokia teaches the verifying step under its
`plain and ordinary meaning, and as construed, in relevant part, by the
`Samsung/Google/HTC courts.
`In addition, we find unavailing Patent Owner’s argument that Nokia is
`not enabled. PO. Resp. 8–9. This argument “is misplaced, since even ‘[a]
`non-enabling reference may qualify as prior art for the purpose of
`determining obviousness,’ . . . and even ‘an inoperative device . . . is prior
`art for all that it teaches.’” ABT Sys., LLC v. Emerson Elec. Co., 797 F.3d
`1350, 1360 n.2 (Fed. Cir. 2015) (quoting Beckman Instruments, Inc. v. LKB
`Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) and Symbol Tech., Inc.
`v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991)).
`We also find unavailing Patent Owner’s argument that Nokia’s
`“security option could be performed anywhere in the network of the
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`network operator,” and that “[t]here exists no teaching or suggestion within
`the entirety of Nokia that the phone checks whether the SIM card in the
`communicator has changed.” PO Resp. 10. According to Patent Owner,
`Nokia “only teaches ‘[w]hen active, this security option checks whether the
`SIM card in the communicator has been changed.’” Id. (quoting Ex. 1003,
`82) (emphasis omitted). We disagree. First, we find that Nokia’s teaching
`that the “security option checks whether the SIM card in the communicator
`has