2BCom, LLC

Patent Trials and Appeals Board

Nov 30, 2021

IPR2020-00996 (P.T.A.B. Nov. 30, 2021)

Trials@uspto.gov Paper 58
571-272-7822 Entered: November 30, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS, LLC,
Petitioner,
v.
2BCOM, LLC,
Patent Owner.

IPR2020-00996
Patent 7,127,210 B2

Before MICHELLE N. WORMMEESTER, JOHN A. HUDALLA, and
SHARON FENICK, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining No Claims Unpatentable
Dismissing Petitioner’s Motion to Strike
Dismissing Patent Owner’s Motion to Exclude
35 U.S.C. § 318(a)
I. INTRODUCTION
A. Background and Summary
Unified Patents, LLC (“Petitioner”) filed a Petition for inter partes
review of claims 12–17 and 19–21 of U.S. Patent No. 7,127,210 B2
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(Ex. 1001, “the ’210 patent”). Paper 2 (“Pet.”). 2BCom, LLC (“Patent
Owner”) filed a Preliminary Response. Paper 6. After further briefing
regarding discretionary denial of institution under 35 U.S.C. § 314(a)
(Papers 8, 9, 11, 14), we determined that the information presented in the
Petition established that there was a reasonable likelihood that Petitioner
would prevail with respect to at least one of the challenged claims and we
instituted this proceeding on December 3, 2020, as to all challenged claims
and all grounds of unpatentability. Paper 161 (“Dec. on Inst.”).
During the course of trial, Patent Owner filed a Patent Owner
Response (Paper 24, “PO Resp.”), Petitioner filed a Reply to the Patent
Owner Response (Paper 32, “Pet. Reply”), and Patent Owner filed a
Sur-reply (Paper 35, “PO Sur-reply”). An oral hearing was held on
September 9, 2021, and a transcript was entered (Paper 56, “Tr.”).
Petitioner filed Declarations of Dr. Vijay Madisetti (Ex. 1003) and
Dr. Sylvia Hall-Ellis (Ex. 1010) with its Petition. Petitioner filed
Declarations from Gordon MacPherson (Ex. 1036), Dr. Hall-Ellis
(Ex. 1037), and Angela M. Oliver (Ex. 1050) with its Reply.
With our authorization (Paper 37), Petitioner filed a Motion to Strike
Portions of Patent Owner’s Sur-Reply and Improper Sur-Reply Evidence
(Paper 38, “Pet. Mot. Strike”) and Patent Owner filed an Opposition to this
Motion (Paper 41, “PO Opp. Mot. Strike”). In addition, Patent Owner filed
a Motion to Exclude (Paper 43, “PO Mot. Exclude”), Petitioner filed an
Opposition (Paper 48, “Pet. Opp. Mot. Exclude”), and Patent Owner filed a
Reply (Paper 51, “PO Reply Mot. Exclude”).

1 The Decision on Institution was entered as board and parties only; after the
parties agreed no redactions were necessary, a public version was entered as
Paper 47.
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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 12–17 and 19–21 of the ’210 patent. For the reasons discussed
below, Petitioner has not demonstrated by a preponderance of the evidence
that claims 12–17 and 19–21 of the ’210 patent are unpatentable. We also
dismiss as moot Petitioner’s Motion to Strike and Patent Owner’s Motion to
Exclude.
B. Related Matters
The parties identify the following five district court cases as related:
2BCom, LLC v. FCA US LLC Chrysler Corp., No. 2:20-cv-10023 (E.D.
Mich.); 2BCom, LLC v. Kia Motors America, No. 8:20-cv-676 (C.D. Cal.);
2BCom, LLC v. TP-Link USA Corporation d/b/a TP-Link North America
Inc., No. 8:20-cv-708 (C.D. Cal.); 2BCom, LLC v. Bayerische Motoren
Werke AG et al., No.2:20-cv-3537 (C.D. Cal.); and Amazon.com, Inc. et al.
v. 2BCom, LLC, No. 8:20-cv-00822 (C.D. Cal.). Pet. 1–2; Paper 4 (Patent
Owner’s Mandatory Notices), 1. In addition, Patent Owner identifies
2BCom, LLC v. D-Link Systems, Inc., No. 8:20-cv-00686 (C.D. Cal.) as
related. Paper 4, 1.
C. The ’210 Patent
The ’210 patent describes communications among wireless
communications apparatuses. Ex. 1001, code (57), 1:14–20, 2:20–24.
Generally, according to the embodiments described, a wireless
communication apparatus, upon establishing connection with another
apparatus, automatically changes how it responds to requests from any
additional apparatuses so that no additional connections are established. Id.
at code (57), 1:14–20, 2:20–50, 9:27–38. Figure 2, reproduced below, is a
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functional block diagram of one wireless communication apparatus, a
notebook computer. Id. at 3:4–6, 3:36–4:13.

Figure 2 shows notebook computer 1 that includes user interface 11
and antenna 17 that transmits and receives radio waves from and to other
wireless communication apparatuses. Id. at 3:42–45, 3:62–4:4. Notebook
computer 1 also includes mode setup unit 13 that receives control data from
control unit 12. Id. at 3:58–61. Mode setup unit 13 shifts the notebook
computer to different connection modes that control certain responses of
notebook computer 1 to communication requests from external devices. Id.
at 3:58–61, 6:3–49.
Specifically, the connection modes affect notebook computer 1’s
responses to two kinds of request messages received from other wireless
devices: inquiries and paging signals. Id. at 4:5–5:9, 4:14–41. An inquiry is
a signal sent from a wireless communication apparatus (“apparatus A”) to
check for the presence of other wireless communication apparatuses in the
area. Id. at 4:49–58, Figs. 4–6 (element SA1). Upon receiving an inquiry
sent from an apparatus A, a second wireless communication apparatus
(“apparatus B”) can reply by sending inquiry response data, including its
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unique address, to apparatus A. Id. at 5:59–6:19, Figs. 4–6 (elements SB1,
SB2). That unique address of apparatus B can then be used by apparatus A
to connect with the apparatus B; this process involves apparatus A sending a
paging signal to apparatus B. Id. at 5:20–29, Figs. 4–6 (element SA3).
Apparatus B can then send a page response, and after authentication (if
necessary) a connection is established. Id. at 5:30–5:66, Figs. 4–6 (elements
SB4, SA4, SA5, SB5, SA6, SB6, SA7, SB7).
According to the invention, upon establishing such a connection the
mode of an apparatus may be changed: “[w]hen the mode setup unit 13
receives control data representing the completion of connection with another
wireless communication apparatus, the mode setup unit 13 automatically
changes setups for an inquiry or paging from still another wireless
communication apparatus.” Id. at 4:5–9. Mode setup unit 13 does this by
consulting mode setup table 18, which describes the mode to be selected
upon connection establishment with specific addresses associated with
external wireless devices. Id. at 4:10–19, Fig. 3. For example, mode setup
table 18 may specify that, for notebook computer 1, “when connection with
a device corresponding to unique address A is established, this means that
the mode changes to non-connectable mode 1. When connection with a
device corresponding to unique address B is established, this means that the
mode changes to a non-discoverable mode.” Id. “The non-connectable
mode and non-discoverable mode are defined by the Bluetooth standard.”
Id. at 4:20–21.
In the first non-connectable mode, the device does not respond to a
page signal received from another wireless device. Id. at 4:31–34; 8:5–9:9.
In the second non-connectable mode, the device responds to a page signal by
sending a page denial. Id. at 4:31–34; 6:62–8:3. In non-discoverable mode,
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the device does not respond to an inquiry signal received from another
wireless device. Id. at 4:26–30; 6:24–60. A device may be in both a non-
connectable and a non-discoverable mode at the same time. Id. at 9:12–14.
D. Illustrative Claims
The Petition challenges independent claims 12, 20, and 21, and
dependent claims 13–17 and 19, which depend directly or indirectly from
claim 12. Claim 12 illustrates the challenged claims at issue:
12. A communication method in a wireless communication
apparatus, comprising:
setting up a first mode where the wireless communication
apparatus is connectable with at least a first wireless
communication device and a second wireless
communication device and accepts a connection request
from the first wireless communication device;
establishing a connection with the first wireless
communication device;
discovering a completion of the connection with the wireless
communication apparatus;
setting up a second mode where, in a state where the
connection with the first wireless communication device
is established, the wireless communication apparatus is
inhibited from establishing a connection with the second
wireless communication device with respect to a
connection request from the second wireless
communication device; and
shifting from the first mode to the second mode after the
completion of the connection.
Ex. 1001, 10:53–11:6.
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E. Prior Art and Instituted Grounds
We instituted inter partes review of claims 12–17 and 19–21 of the
’210 patent on the following grounds:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
12, 13, 15, 17, 20, 21 1032 Bluetooth Profiles3, Nüsser4
12, 14, 16, 19–21 103 Bluetooth Profiles, Cooper,
5
Nüsser
F. Level of Ordinary Skill in the Art
Relying on the testimony of Dr. Vijay K. Madisetti, Petitioner
contends that a person of ordinary skill in the art (“POSITA”) “at the priority
date of the ’210 Patent would have had a bachelor’s degree in electrical
engineering, computer engineering, computer science, or a related subject,
and one to two years of work experience in wireless communications.”
Pet. 14 (citing Ex. 1003 ¶¶ 48–52). “Less experience is necessary with
additional education (e.g., a Master’s degree), and likewise, less education is
necessary with additional work experience (e.g., 5–6 years).” Id. Patent
Owner does not propose a level of ordinary skill or comment on Petitioner’s
proposal.

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. The ’210 patent was
filed before March 16, 2013 (the effective date of the relevant amendment),
so the pre-AIA version of § 103 applies.
3 Specification of the Bluetooth System, Profiles v1.0B (Dec. 1, 1999)
(Ex. 1007) (“Bluetooth Profiles”).
4 R. Nüsser and R. M. Pelz, “Bluetooth-based wireless connectivity in an
automotive environment,” Vehicular Technology Conference Fall 2000.
IEEE VTS Fall VTC2000. 52nd Vehicular Technology Conference, vol. 4,
pp. 1935–42 (Ex. 1006) (“Nüsser”).
5 Cooper, U.S. 2002/0123325 A1, pub. Sept. 5, 2002 (Ex. 1008) (“Cooper”).
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We adopt Petitioner’s proposed level of ordinary skill in the art, which
comports with the teachings of the ’210 patent and the asserted prior art.
II. ANALYSIS
In the Petition, Petitioner presented arguments regarding the
unpatentability of the challenged claims, including claim construction
arguments (Pet. 15–31), a discussion of the propriety of the proposed
combinations of the references (Pet. 38–42, 74–76) and the unpatentability
of the claims in light of those proposed combinations (Pet. 43–73, 77–87).
In the Decision on Institution, we determined that Petitioner had established
a reasonable likelihood that it would prevail in showing the unpatentability
of the challenged claims over the asserted prior art. Dec. on Inst. 9–39. This
included a determination that, for purposes of institution and in accordance
with the Board’s precedential decision in Hulu, LLC v. Sound View
Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019)
(precedential) (“Hulu”), Petitioner had established a reasonable likelihood
that Bluetooth Profiles and Nüsser each qualify as prior art printed
publications. Dec. on Inst. 19–23.
In its Response and Sur-reply, Patent Owner argues that Petitioner has
not shown by a preponderance of the evidence that either Nüsser or
Bluetooth Profiles is prior art to the ’210 patent, and that, therefore,
Petitioner has not shown the unpatentability of the challenged claims. PO
Resp.; PO Sur-reply. Upon examination, we agree with Patent Owner that
Petitioner has not proven by a preponderance of the evidence that Nüsser
qualifies as prior art to the ’210 patent. Given that Nüsser is asserted in both
instituted grounds, we determine that Petitioner has not shown by a
preponderance of the evidence that the challenged claims are unpatentable
on the instituted grounds.
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1. Legal Standards
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (noting that 35 U.S.C. § 312(a)(3) requires inter partes review
petitions to identify “with particularity ... the evidence that supports the
grounds for the challenge to each claim”). This burden never shifts to Patent
Owner. 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)) (discussing the burdens of proof
in inter partes review).
The standard of proof for a final decision is whether the petitioner has
met “the burden of proving a proposition of unpatentability by a
preponderance of the evidence.” 35 U.S.C. § 316(e).
In an inter partes review, a petitioner “may request to cancel as
unpatentable 1 or more claims of a patent only on a ground that could be
raised under section 102 or 103 and only on the basis of prior art consisting
of patents or printed publications.” 35 U.S.C. § 311(b). As discussed supra
at footnote 2, we apply the pre-AIA version of the relevant statutes.
Pre-AIA section 102(a) provides that a person is entitled to a patent
unless the invention was known or used by others before the invention by
the applicant for a patent. 35 U.S.C. § 102(a) (2006) (pre-AIA
amendments). Pre-AIA section 102(b) provides that a person shall be
entitled to a patent unless the invention was described in a printed
publication more than one year prior to the date of application for patent in
the United States. 35 U.S.C. § 102(b) (2006); GoPro, Inc. v. Contour IP
Holding LLC, 908 F.3d 690, 693 (Fed. Cir. 2018); In re Corcoran, 640 F.2d
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1331, 1333 (CCPA 1981); MPEP 2133. The “statutory bar” date, or critical
date, of one year prior to the date of the United States application set forth in
pre-AIA 102(b) is not overcome or extended by a foreign priority claim. In
re Foster, 343 F.2d 980, 986 (CCPA 1965); MPEP 2133.02 II.
The determination of whether a document is a “printed publication”
under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and
circumstances surrounding the reference’s disclosure to members of the
public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
“Because there are many ways in which a reference may be disseminated to
the interested public, ‘public accessibility’ has been called the touchstone in
determining whether a reference constitutes a ‘printed publication.’” Jazz
Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355 (Fed. Cir. 2018)
(quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is
considered publicly accessible if it was “disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the
subject matter or art, exercising reasonable diligence, can locate it.’” Id. at
1355–56 (quoting In re Wyer, 655 F.2d 221, 226 (CCPA 1981)); see also
Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018).
2. The Parties’ Evidence and Positions
a) The Petition and Evidence Submitted with the Petition
In the Petition, Petitioner argued that “library records show that
Nüsser was available digitally through the Auraria Library at the University
of Colorado - Denver by June 23, 2000.” Id. at 6 (citing Ex. 1010 ¶¶ 45–
50). Dr. Hall-Ellis, in her declaration, attaches as an exhibit and references
Exhibit B1, a Machine-Readable Cataloging (“MARC”) record for an
alleged digital version of the proceedings of the 2000 IEEE (Institute of
Electrical and Electronics Engineers) 52nd Vehicular Technology
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Conference, from which the Nüsser reference was retrieved by Dr. Hall-
Ellis. Ex. 1010 ¶¶ 45–46, Attachments 1006, B1. Dr. Hall-Ellis asserts that
this MARC record shows that the digital version was catalogued in the
library on June 23, 2000, and “[t]herefore, this volume would have been
available to users in the Auraria Library” on that date. Id. ¶ 47. In support
of this, Dr. Hall-Ellis cites field 008 of the Attachment B1 MARC record,
which contains the date code for June 23, 2000. Id. ¶ 47, Attachment B1.
Elsewhere in her declaration, Dr. Hall-Ellis explains that this field contains
the date of creation of a MARC record, which “reflects the date on which, or
shortly after which, a work was first acquired and cataloged by the library
that created the original MARC record.” Id. ¶ 37.
Petitioner additionally argues that Nüsser was indexed by subject
matter. Pet. 6 (citing Ex. 1010 ¶¶ 49–50). To show this, Dr. Hall-Ellis relies
solely on a different MARC record, attached as Attachment B2 to her initial
declaration. Ex. 1010 ¶¶ 48–50, Attachment B2. Dr. Hall-Ellis obtained
this MARC record from a different source (the OCLC (Online Computer
Library Center)) and describes it as “the MARC record for the monographic
serial of the proceedings volumes for the annual Fall and Spring
conferences.” Ex. 1010 ¶ 48, Attachment B2. Dr. Hall-Ellis describes serial
publications as “those publications that have the same collective title but are
intended to be continued indefinitely with enumeration such as a volume or
issue number.” Id. ¶ 42. Dr. Hall-Ellis declares, based on certain fields in
the Attachment B2 MARC record, that this MARC record was created on
August 15, 1996, and continues to be updated, with the last update prior to
her retrieval of the MARC record occurring on November 26, 2018. Id.
¶ 48.
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Regarding MARC records generally, Dr. Hall-Ellis testifies that a 050
field contains a Library of Congress call number, which may be used to
show information regarding a subject matter classification. Id. ¶ 32.
Dr. Hall-Ellis also explains that a 082 field may be the subject matter
classification consistent with the Dewey Decimal classification system. Id.
Dr. Hall-Ellis further testifies that fields numbered “6XX” are “Subject
Access Fields” and that the 650 field is the “Subject Added Entry – Topical
Term” field. Id. ¶ 31. Dr. Hall-Ellis declares that these fields in the MARC
record of Attachment B2 show that the record included subject matter
classifications consistent with the Library of Congress and Dewey Decimal
classification systems. Id. ¶ 49 & nn.13, 14, Attachment B2. Dr. Hall-Ellis
testifies that the Library of Congress field indicates the classification as
“Electrical engineering. Electronics. Nuclear engineering—Radio—Special
applications of radio, A-Z—Mobile communication systems” and that the
Dewey Decimal classification indicates a classification as “Technology –
Engineering – Applied physics – Electrical, magnetic, optical,
communications, computer engineering, electronics, lighting – Electronics,
communications engineering – Specific communications systems – Radio
and radar – Radio – Radiotelephony – Periodicals.” Id. Additionally,
Dr. Hall-Ellis describes the 650 fields as including five entries describing the
subject matter of the proceedings volumes that are referenced by the
Attachment B2 MARC record: “Mobile communication systems $v
Congresses,” “Motor vehicles $x Electronic equipment $v Congresses,”
“Motor vehicles $x Electric equipment $v Congresses,” “Electronics in
transportation $v Congresses,” and “Artificial satellites in
telecommunication $v Congresses.” Id. ¶ 49.
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Dr. Hall-Ellis concludes that “[i]n view of the above, the IEEE
Vehicular Technology Conference Proceedings was publicly available on
June 23, 2000, and in any event, before the alleged September 20, 2001,
priority date, because by that date it had been received, cataloged, and
indexed in the Auraria Library at the University of Colorado – Denver and
made part of the OCLC bibliographic database.” Id. ¶ 50 (emphasis
omitted).
In addition to arguments based on Dr. Hall-Ellis’s declaration,
Petitioner argues that “the date printed on Nüsser itself (September 2000)
provides additional evidence of its public accessibility.” Pet. 6. Petitioner
also cites Dr. Madisetti’s declaration that “a person of ordinary skill in the
art (‘POSITA’) in the relevant time frame would have frequently reviewed
IEEE publications and attended IEEE conferences for information on
relevant technologies.” Id. (citing Ex. 1003 ¶ 53).
b) Patent Owner’s Response
Patent Owner disputes Petitioner’s contentions about Nüsser’s public
accessibility. PO Resp. 2–17. Patent Owner argues in the Response that
Dr. Hall-Ellis did not provide credible testimony regarding attachment B1,
the MARC record for the digital version of Nüsser, which is Exhibit 1006.
Id. at 2–7. In particular, Patent Owner highlights certain facts that allegedly
undermine Petitioner’s showing regarding public accessibility of a digital
version. For example, Patent Owner notes that the final papers for the
conference where Nüsser was allegedly published were not due until
July 10, 2000, which is after the June 23, 2000, date (cited by Dr. Hall-Ellis)
by which the digital conference proceedings were allegedly cataloged and
available in the Auraria Library. Id. at 3–4 (citing Ex. 2019). Patent Owner
also argues that the Auraria Library did not create the MARC record for the
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alleged digital version of the conference proceedings, which undermines
Dr. Hall-Ellis’s testimony that the record creation date indicates public
availability. Id. at 4–5. Patent Owner additionally argues that the various
scholarly papers that cite Nüsser all post-date the critical date. Id. at 6
(citing Ex. 2014).
Patent Owner additionally argues that Dr. Hall-Ellis’s testimony
regarding Attachment B2 is flawed, including because the Attachment B2
MARC record was created much earlier than any possible date for Nüsser
and continued to be updated afterwards, and because the record has not been
shown to be for a reference which includes the Nüsser reference supplied as
Exhibit 1006. Id. at 7–9. Patent Owner also criticizes Dr. Hall-Ellis’
testimony because she did not confirm when or whether Nüsser was made
publicly available in any of the 83 libraries that allegedly hold the serial
publication of Attachment B2. Id. Patent Owner additionally contends that
the subject matter classifications relied on by Petitioner would not have
allowed one of ordinary skill to locate Nüsser. Id. at 9–13.
c) The Reply and Evidence Submitted with the Reply
In its Reply, Petitioner submits additional evidence and makes
additional arguments regarding the public availability of Nüsser. Pet. Reply
1–16. Specifically, Petitioner argues that while Patent Owner “attempts to
create uncertainty regarding the precise date” of Nüsser’s public availability,
the uncertainty is “of no moment” if all “date[s] discussed” would qualify
Nüsser as prior art. Pet. Reply 1–2. Petitioner also modifies its position
regarding the date of Nüsser’s public availability from “by at least June 23,
2000” to “on or shortly after June 23, 2000.” Compare Pet. 4, with Pet.
Reply 10–11.
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(1) Nüsser – Digital Format via Libraries
Petitioner in Reply argues that “Nüsser was available in digital format
in the Auraria Library on or shortly after June 23, 2000” and that Dr. Hall-
Ellis’ testimony on this point is credible. Pet. Reply 10–13 (emphasis
added). Petitioner characterizes Dr. Hall-Ellis’ testimony as asserting not
that Nüsser was generally available online in 2000, but rather that a “digital
book version” of the work was available through a specific library in 2000.
Id. at 12–13 (citing Ex. 1010 ¶ 45). Petitioner argues that Dr. Hall-Ellis’
testimony that Nüsser was available in a digital version of proceedings on or
“shortly after” June 23, 2000 is consistent with an announced due date of
July 10, 2000 for the submission of papers for the conference. Id. at 13
(citing Ex. 1010 ¶¶ 37–40, 47, 49; PO Resp. 4; Ex. 2019, 2). Petitioner
additionally asserts that the date on the face Nüsser should be considered as
part of the totality of the evidence. Id. at 2–3; Pet. 6.
(2) Nüsser –Dissemination at Conference
Petitioner additionally argues actual dissemination: “Nüsser was
presented at IEEE conference in September 2000,” which is the date on the
face of the reference. Pet. Reply 2–3 (citing Ex. 1006, 1, 2, 10, 15).
Petitioner argues that this is confirmed by the copyright registration. Id. at
2, 4–5 (citing Ex. 1010 ¶ 50, Attachment B8).
Petitioner submits with the Reply a declaration from Gordon
MacPherson, Director Board Governance & IP operations of the IEEE.
Ex. 1036. Petitioner argues that the declaration confirms the date on the face
of Exhibit 1006. Pet. Reply 2, 4 (citing Ex. 1036 ¶¶ 10–11).
Mr. MacPherson declares that copies of the conference proceedings would
have been made available no later than the last day of the conference, which
Mr. MacPherson identifies as September 28, 2000. Ex. 1036 ¶ 11.
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Petitioner argues that such actual dissemination establishes public
accessibility. Pet. Reply 4, 14.
(3) Nüsser – Print Format via Library
With respect to questions raised by Patent Owner about
Attachment B2 to Dr. Hall-Ellis’s first declaration, Petitioner argues that that
MARC record relates to an entire serial publication over many years, and
that “when an individual issue of a serial subscription was received by a
library, it would be ‘verified as part of a subscription, checked in, and
stamped or labeled with the institution’s name and the date’” and “it is
highly unusual for a library to stop collecting and shelving a serial
publication prior to the end of its publication run,” in which event the library
would fill an end date into the MARC record. Pet. Reply at 6–7 (quoting
Ex. 1010 ¶¶ 42, 43; citing id. ¶¶ 42–44, 48–50). Petitioner argues that
“given the semi-annual nature of the publication,” Nüsser “would have been
received and made available in the regular course of conduct” soon after it
was published. Id. at 7–8 (citing Ex. 1010 ¶¶ 28, 48, Attachment B2 (field
310)). Petitioner asserts that “either semi-annual publication in 2000 would
have pre-dated the priority date, as would the first semi-annual publication
in 2001.” Id.
In response to Patent Owner criticism that Dr. Hall-Ellis did not
confirm whether the serial publication of Attachment B2 was available in
any of the 83 libraries mentioned in Attachment B2, Dr. Hall-Ellis, in a
second declaration, provides a new MARC record from one of these
libraries, the University of California – Berkeley, for a print version of the
relevant volume of the proceedings. Id. at 8 (citing Ex. 1010 ¶ 48,
Attachment B2; Ex. 2024 47:19–50:24; Ex. 1037 ¶ 22, Attachment E). As
such, Petitioner contends that “the library at the University of California –
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Berkeley would have received a print copy of Nüsser in regular course.” Id.
(citing Ex. 1010 ¶¶ 42–44).
In addition to Dr. Hall-Ellis’s testimony regarding a print version in
the University of California – Berkeley library, Petitioner cites Dr. Hall-
Ellis’s description of an additional MARC record from the Linda Hall
Library as showing that a print version of the proceedings for the conference
was cataloged on December 18, 2000 in that library. Id. at 5 (citing
Ex. 1037 ¶ 21, Attachment D).
(4) Nüsser- Generally
Petitioner additionally filed exhibits that Petitioner asserts are articles
“published prior to or shortly after the priority date of the ’210 patent” that
cite Nüsser. Id. at 5–6 & n.6 (citing Ex. 1038, 2 n.3; Ex. 1039, 19 n.7;
Ex. 1040, 5 n.1; Ex. 1037 ¶¶ 23–25). Petitioner describes these as “all dated
2001” and specifically describes Exhibit 1040 as dated November 2001. Id.
(citing Ex. 1045, 1). Dr. Hall-Ellis describes Exhibit 1039 as a paper
presented at a conference held on October 22–25, 2001. Ex. 1037 ¶ 24.
3. Analysis
As detailed below, in the Petition, Petitioner at first asserted a date of
June 23, 2000 for the availability of Exhibit 1006. After Patent Owner
presented evidence and highlighted inconsistencies regarding this date, in
the Reply Petitioner modified its asserted date of availability to “on or
shortly after” June 23, 2000, presented additional evidence and testimony
regarding a print version without any evidence regarding any identity of the
print version with the digital version, and provided additional evidence that
does not confirm the availability of the digital version.
After considering the arguments and weighing the evidence presented
by the parties, we determine that Petitioner has not proven by a
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preponderance of the evidence that Nüsser (Exhibit 1006) was disseminated
or otherwise made available to the extent that persons of ordinary skill in the
art, exercising reasonable diligence, could locate it before the critical date of
the invention. See Medtronic, 891 F.3d at 1380.
a) Critical Date
The U.S. application that issued as the ’210 patent was filed on March
14, 2002. Ex. 1001, code (22). Petitioner argues that one of ordinary skill in
the art could have located Nüsser and, therefore, that Nüsser was publicly
accessible at least one year before March 14, 2002. Pet. 5–6, 8. In other
portions of the Petition, however, Petitioner makes arguments relating to
public accessibility of references prior to September 20, 2001, which is the
foreign priority date for the ’210 patent. Ex. 1001, code (30); Pet. 3, 7, 24–
27. Dr. Hall-Ellis, in her first declaration, discusses availability one year
before September 20, 2001, in other words, as of September 20, 2000.
Ex. 1010 ¶¶ 24, 49, 51.
Because Patent Owner did not submit any evidence to establish an
earlier invention date, we use the foreign priority date of the ’210 patent,
September 20, 2001, as the relevant date for our analysis of pre-AIA
§ 102(a). For our pre-AIA § 102(b) analysis, we consider the public
accessibility of the references one year before the March 14, 2002, filing
date of the U.S. application that issued as the ’210 patent, that is, as of
March 14, 2001. See GoPro, Inc., 908 F.3d at 693; see also Foster,
343 F.2d at 986; MPEP 2133.02 II.
Whether the relevant date is March 14, 2001, or September 20, 2001,
does not change our determination that Petitioner has not met its burden to
show that Nüsser was publicly accessible before the critical date of the
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invention. Because March 14, 2001, is the earlier of these two dates, we
examine the availability of the asserted references as of March 14, 2001.
b) Nüsser - Digital Version of Nüsser (Exhibit 1006)
Petitioner has presented inconsistent statements and evidence with
respect to its Exhibit 1006. Petitioner first asserts that Exhibit 1006 was
available to users in the Auraria Library as of June 23, 2000, based on
Dr. Hall-Ellis’s testimony that the digital volume containing Exhibit 1006
“was cataloged in the Auraria Library . . . on June 23, 2000 [and] [t]herefore,
this volume would have been available to users in the Auraria Library . . . on
that date.” Ex. 1010 ¶¶ 47, 50, Attachment B1; Pet. 4, 6, 8 (citing Ex. 1010
¶¶ 45–50). Dr. Hall-Ellis bases her testimony on the presence of this date in
field 008 of the MAC record that is Attachment B1 to her declaration.
Ex. 1010 ¶ 47.
In the Reply, Petitioner changes its allegation regarding the timing of
Nüsser’s availability, now asserting it was available “on or shortly after
June 23, 2000” without discussing or explaining the change. Pet. Reply 10–
11; Tr. 14:14–20 (emphasis added). This appears to be based on Dr. Hall-
Ellis’s explanation that field 008 “reflects the date on which, or shortly after
which, a work was first acquired and cataloged by the library that created the
original MARC record.” Ex. 1010 ¶ 37 (emphasis added). Dr. Hall-Ellis
does not explain what period of time may be considered “shortly after,” and
Petitioner only presents attorney argument that, with final papers for the
conference only due on July 10, 2000, a digital version of the proceedings
still might have been available shortly after June 23, 2000. Pet. Reply 13
(discussing Ex. 2019).
However, as Patent Owner points out, Dr. Hall-Ellis’s testimony also
indicates that libraries occasionally use a previously-created MARC record
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when they subsequently acquire a copy of a work that is the subject of such a
previously-created MARC record, and that these MARC records may be
initially created by vendors rather than libraries. PO Resp. 3–4 (citing
Ex. 1010 ¶ 38; Ex. 1037 ¶¶ 14–15; Ex. 2024, 18:6–20:17, 45:5–20, 62:20–
63:10). Moreover, Dr. Hall-Ellis testifies that the Auraria Library did not
create the MARC record she relies on and that a library that subsequently
acquires a copy of a work might not change the date in a previously-created
MARC record 008 field (in this case June 23, 2000). Ex. 2024, 24:15–24;
Ex. 1010 ¶ 38. As Patent Owner argues, this discrepancy between her
testimony regarding the availability of the reference in the Auraria Library
based on the 008 field, on the one hand, and regarding details in the MARC
record and their possible meanings, on the other, significantly undermines
her testimony regarding Nüsser’s availability on (or “on or shortly after”)
June 23, 2000. PO Resp. 3–6.
Additionally, Petitioner argues that Nüsser was indexed by subject
matter and that an interested person of ordinary skill in the art, exercising
reasonable diligence, could have located the reference. Pet. 6 (citing
Ex. 1010 ¶¶ 45–50); Pet. Reply 14–16. Petitioner relies on Dr. Hall-Ellis’s
declaration testimony regarding the MARC record that is Attachment B2.
Pet. 6 (citing Ex. 1010 ¶¶ 45–50). But, as Patent Owner argues, Petitioner
presents no evidence regarding the relationship of Attachment B2, relating to
the entire run of the serial publication in which Nüsser was published, to
Exhibit 1006, which Petitioner presents as having been part of the digital
version available in June 2000 or shortly thereafter. PO Resp. 8. Moreover,
the Attachment B2 MARC record was created several years before the
purported date of Nüsser, and the record was updated as recently as 2018.
Ex. 1010 ¶ 48. Dr. Hall-Ellis admits that there is no indication as to when
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the cited subject matter classifications were added to MARC records.
Ex. 2024, 40:6–13, 52:18–56:16; see PO Resp. 13. Thus, Petitioner has not
established that the subject matter classifications would have been available
to one of ordinary skill in the art as of the critical date. Furthermore, we
agree with Patent Owner (PO Resp. 11–13; PO Sur-reply 11) that the subject
matter classifications for Attachment B2 are too broad and would have
resulted in too many search results to meaningfully index a single paper—
Nüsser—within an entire serial run of conference proceedings such that an
ordinarily skilled artisan could have located it with reasonable diligence.
See Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773
(Fed. Cir. 2018) (affirming a finding that an indexed reference was not
publicly accessible where an ordinarily skilled artisan would have had to
skim through hundreds of titles to find it). For these reasons, we do not
credit Petitioner’s evidence regarding the subject matter classifications for
Attachment B2.
With respect to the indexing by subject matter of the digital version as
shown in Attachment B1, Petitioner argues that Patent Owner does not
“address the 692 subject-matter headers in Attachment B1.” Pet. Reply 16.
However, Petitioner did not initially cite subject matter headers from
Attachment B1 in support of its public accessibility arguments. Pet. 6;
Ex. 1010 ¶¶ 49–50. And, even if we were to consider Petitioner’s new reply
arguments about the subject matter headers of Attachment B1 (Pet. Reply
14–15), we agree with Patent Owner that these alone result in too many
search results to meaningfully index Nüsser, a single paper within a
conference proceedings volume, such that an ordinarily skilled artisan could
have located it with reasonable diligence. PO Resp. 11–13; PO Sur-reply
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11. Thus, we do not credit Petitioner’s belated arguments and evidence
regarding the subject matter classifications for Attachment B1.
Petitioner argues that the date on the first page of Nüsser and certain
information on other pages provide additional evidence of public
accessibility. Pet. 6 (citing Ex. 1006, 1 (“September 24–28, 2000”)); Pet.
Reply 2–3 (citing Ex. 1006, 1, 2, 10, 15). Petitioner argues that, under the
precedential Hulu decision, “indicia on the face of a reference, such as
printed dates and stamps, are considered as part of the totality of the
evidence,” and that the Board in Hulu accepted this type of evidence in its
considerations. Id. (citing Hulu at 17–18). Pet. Reply 3. We considered
these indicia from Nüsser at the time of institution, and we have considered
them again now. Based on the entire trial record, we find that the indicia
alone do not and cannot substantiate publication by the dates listed in
Nüsser. Nor do they overcome significant gaps and inconsistencies in
Petitioner’s proofs regarding the date by which Nüsser was made publicly
accessible such that an ordinarily skilled artisan could have located it with
reasonable diligence.
With respect to Exhibits 1038–1040, articles citing Nüsser as
described supra at Section II.2.c.4, Petitioner argues that these articles
establish that Nüsser was publicly available as of the critical date, because
“even if these articles were published shortly after the priority date” they
indicate accessibility as of that date, as “it is unlikely that Nüsser would
have been published and then immediately cited in a final publication
published a few weeks or months later.” Pet. Reply 5–6 & n.3 (emphasis
omitted). However, Petitioner has not shown that Exhibit 1038 was
published before March 14, 2001, and Exhibit 1039 and Exhibit 1040 were
published after that date. See Ex. 1038, 1 & n.1 (describing an event in
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February 2001 in the past tense); Ex. 1037 ¶ 24 (describing Ex. 1039 as
presented in late October 2001); Pet. Reply 6 n.3 (citing Ex. 1045;
describing Ex. 1040 as dated November 2001). With the exception of
Exhibit 1038, for which only a year is shown, each exhibit was published
more than “a few weeks or months” later than March 14, 2001, and thus we
do not find them significant in establishing public accessibility as of that
102(b) date.
Petitioner argues that, as in Hulu, it has made arguments relating to
several dates, each of which pre-date the critical date, and thus “uncertainty
regarding the precise date” of public accessibility is of no moment. Pet.
Reply 1–2 (citing Hulu at 19). However, unlike in Hulu, there are
significant issues with the dates propounded, as described above.
On consideration of the evidence and record on these dates, especially
with respect to the initially-asserted June 23, 2000, date, the evidence
contains numerous flaws or gaps as discussed above. We are not persuaded
by a preponderance of the evidence that a digital version of Nüsser was
available prior to the critical date.
c) Nüsser – Additional Arguments
As discussed above, Exhibit 1006 was presented in the Petition as a
publicly accessible reference on the basis of its availability in digital form
through the Auraria Library, and on the basis of the date on its cover. Pet. 6
(citing Ex. 1010 ¶¶ 45–50; Ex. 1006, 1); Ex. 2024, 30:6–16 (describing
Attachment B1 to Exhibit 1010 as relating to “an electronic resource”). As
detailed above in Section II.2, Petitioner, initially and then in response to the
Patent Owner’s assertions regarding issues with the Petitioner’s evidence of
the public accessibility of Exhibit 1006, makes arguments regarding the
MARC record that is Attachment B2 to Exhibit 1010. This attachment
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relates to a print version of the serial proceedings issued over many years.
Ex. 1010 ¶ 49; Ex. 2024, 45:23–45:15. Petitioner’s arguments relating to
this MARC record therefore relate to the public accessibility of a print
article as collected in serial proceedings. Additionally, Petitioner presents
arguments relating to the actual dissemination of a print version of the
proceedings at a conference and to a library. Pet. Reply 3–5 (citing Ex. 1036
¶¶ 10–11; Ex. 1037 ¶ 21, Attachment D).
Because these arguments relate to a print version of the conference
proceedings, they amount to new arguments that Petitioner chose not to
make in the Petition and are not responsive to Patent Owner’s arguments
asserting flaws in Petitioner’s contentions and evidence, which related to
whether the digital version of Nüsser, presented here as Exhibit 1006, was
available on the critical date. Rather, they raise new issues regarding actual
dissemination of or the availability of a print version of the proceedings for
the conference. See Acceleration Bay, LLC., 908 F.3d at 775; Intelligent
Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed.
Cir. 2016). New evidence may be submitted to respond to arguments raised
in a prior brief or as rebuttal evidence, however, in this case, we do not agree
that the new evidence and arguments here are responsive to Patent Owner’s
arguments, but rather they appear to take a “new direction with a new
approach.” Patent Trial and Appeal Board Consolidated Trial Practice
Guide, November 2019 (“CTPG”),6 73–75.
Petitioner does not show or assert that the print proceedings contain
the same version of Nüsser as that presented as Exhibit 1006. Nor has
Petitioner filed a copy of Nüsser from a print version of the proceedings

6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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(either those asserted to have been distributed at the conference or present in
the University of California – Berkeley or Linda Hall libraries).
Additionally, the MARC records presented for these proceedings and
Dr. Hall-Ellis’s declarations regarding them are subject to some of the same
issues we discuss above with respect to the digital form of Nüsser, in that
field 008 may not indicate availability.
For these reasons, Petitioner’s arguments with respect to the print
version of proceedings containing the Nüsser references do not establish that
Exhibit 1006 qualifies as a publicly accessible printed publication.
d) Conclusion
For the reasons given above, Petitioner has not met its burden to show
that Nüsser was disseminated or otherwise made available to the extent that
persons of ordinary skill in the art, exercising reasonable diligence, could
have located it before the critical date of the invention.
Both instituted grounds of unpatentability rely on Nüsser for certain
teachings and for the motivation to combine and modify references to limit
interference and distraction to a driver. Pet. 5, 40–42, 58, 61, 71, 74–76; see
Dec. on Inst. 27–29, 36. Therefore, Petitioner fails to demonstrate by a
preponderance of the evidence that any of the challenged claims are
unpatentable based on the instituted grounds.
III. PENDING MOTIONS
A. Petitioner’s Motion to Strike
Petitioner moves to strike Patent Owner’s Sur-reply Exhibits 2034–
2037 and portions of the Sur-reply that discuss those exhibits based on the
CTPG. Pet. Mot. Strike 1.
Petitioner contends that the CTPG places a blanket bar on any new
evidence other than deposition transcripts of the cross-examination of reply
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witnesses. Id. at 2 (citing CTPG, 73). Petitioner argues that portions of the
Sur-reply should be stricken as discussing improperly submitted exhibits,
and that it is “beyond dispute” that they are “belatedly presented.” Id. at 3–4
(quoting CTPG, 80–81).
We do not rely on these exhibits or the related portions of Patent
Owner’s Sur-reply. Accordingly, we dismiss as moot the Motion to Strike.
B. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude all or part of Exhibits 1006, 1007,
1010, 1012, 1015–1018, 1023–1028, 1036–1040, 1045, and 1046. PO Mot.
Exclude 1. Because we ultimately find for Patent Owner without excluding
the documents listed in Patent Owner’s Motion, we dismiss as moot Patent
Owner’s Motion to Exclude.
IV. CONCLUSION
After considering all the evidence and arguments in the complete
record, we conclude that Petitioner fails to demonstrate, by a preponderance
of the evidence, that any of the Challenged Claims are unpatentable. We
dismiss as moot Petitioner’s Motion to Strike and Patent Owner’s Motion to
Exclude.
In summary:
Claims

35
U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
12, 13,
15, 17,
20, 21
103 Bluetooth Profiles,
Nüsser
12, 13, 15, 17,
20, 21
12, 14,
16, 19–
21
103 Bluetooth Profiles, Cooper, Nüsser
12, 14, 16,
19–21
Overall
Outcome
12–17, 19–21
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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 12–17 and 19–21 are not unpatentable based
on the instituted grounds of unpatentability;
FURTHER ORDERED that that Petitioner’s Motion to Strike is
dismissed as moot;
FURTHER ORDERED that that Patent Owner’s Motion to Exclude is
dismissed as moot; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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PETITIONER:
Raghav Bajaj
David L. McCombs
Jonathan R. Bowser
Angela Oliver
HAYNES AND BOONE, LLP
raghav.bajaj.ipr@haynesboone.com
david.mccombs.ipr@haynesboone.com
jon.bowser.ipr@haynesboone.com
angela.oliver.ipr@haynesboone.com

Roshan S. Mansinghani
Alyssa J. Holtslander
UNIFIED PATENTS, LLC
roshan@unifiedpatents.com
alyssa@unifiedpatents.com

PATENT OWNER:

Zachary D. Silbersher
Sergey Kolmykov
KROUB, SILBERSHER & KOLMYKOV PLLC
zsilbersher@kskiplaw.com
skolmykov@kskiplaw.com