Uniloc 2017 LLC

Patent Trials and Appeals Board

Jul 29, 2021

IPR2020-00396 (P.T.A.B. Jul. 29, 2021)

Trials@uspto.gov Paper 32
571-272-7822 Entered: July 29, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE LLC,
Petitioner,

v.

UNILOC 2017 LLC,
Patent Owner.

IPR2020-00396
Patent 6,980,522 B2

Before KRISTEN L. DROESCH, DAVID C. McKONE, and
SHEILA F. McSHANE, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Terminating Proceeding as to Claim 6
Determining All Remaining Challenged Claims Unpatentable
35 U.S.C. § 318(a)
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I. INTRODUCTION
A. Background
We have authority to hear this inter partes review under
35 U.S.C. § 6, and this Final Written Decision is issued pursuant to
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we
determine that Petitioner establishes by the preponderance of the evidence
that claims 7 and 8 (“remaining challenged claims”) of U.S. Patent No.
6,980,522 B2 (Ex. 1001, “’522 Patent”) are unpatentable.
B. Related Matters
The parties indicate that claims 1–9 of the ’522 Patent were the
subject of two petitions filed by Samsung Electronics America, Inc.,
(“Samsung”) in IPR2020-00045 and IPR2020-00046. See Pet. 48; PO
Resp. 9. Inter partes review was instituted in IPR2020-00045 challenging
claims 6–8, but the proceeding was terminated following settlement. See
IPR2020-00045, Papers 6, 10. Institution of review was denied in IPR2020-
00046 challenging claims 1–5 and 9. See IPR2020-00046, Paper 6.
Claims 1–5 and 9 of the ’522 Patent were also the subject of a petition filed
by Petitioner in IPR2020-00397 (see Pet. 3, 49; PO Resp. 9–10), however,
institution of review was denied (see IPR2020-00397, Paper 11).
The parties indicate the ’522 Patent has been the subject of litigation
in multiple cases. See Pet. 47; PO Resp. 9–10; Paper 3, 2. The parties
indicate that the district court in Cisco Sys. Inc. v. Uniloc USA Inc., Civil
Action No. 3:18-cv-04991 (N.D. Cal.) ruled that claim 6 is invalid under
35 U.S.C. § 101. See Pet. 48 (citing Ex. 1013); PO Resp. 10. The judgment
was affirmed by the Federal Circuit on appeal in Cisco Sys., Inc. v. Uniloc
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2017 LLC, 813 F. App’x 495 (Fed Cir. 2020), and all appeals are exhausted.
PO Resp. 10; Paper 30, 1; Paper 31, 1; Ex. 3001.
C. Procedural History
Google LLC (“Petitioner”) filed a Petition requesting an inter partes
review of claims 6–8 of the ’522 Patent. Paper 1 (“Pet.”). Petitioner relies
on a Declaration of Stuart Lippoff (Ex. 1004) to support its Petition.
Pursuant to 35 U.S.C. § 314, we instituted trial on August 3, 2020, as to all
of the challenged claims of the ’522 Patent (Paper 11, “Institution Decision”
or “Dec.”). After institution of trial, Patent Owner filed a Response
(Paper 16, “PO Resp.”), to which Petitioner filed a Reply (Paper 19,
“Reply”), to which Patent Owner filed a Sur-reply (Paper 20, “Sur-reply”).
Oral argument was held on May 3, 2021. A transcript of the oral
argument is included in the record. Paper 29 (“Tr.”).
Following oral argument, we issued an Order (Paper 28) requesting
the parties brief whether the Board may or must terminate or dismiss in-part
trial with respect to claim 6 without rendering a final written decision
regarding the patentability of that claim because claim 6 was ruled invalid
under 35 U.S.C. § 101, with all remaining appeals exhausted. In response to
the Order, Patent Owner “requests that the Board terminate this IPR as to
claim 6 without rendering a final written decision” as to that claim.
Paper 31, 3. Petitioner does not oppose the termination and dismissal as to
claim 6, so long as a final written decision is issued with respect to claims 7
and 8. Paper 30, 1, 5.
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Accordingly, the Petition as to claim 6 is dismissed as moot1 and trial
as to claim 6 is terminated.
D. The ’522 Patent (Ex. 1001)
The ’522 Patent relates to a plurality of stations capable of forming an
ad-hoc radio communications network, for example, a network using
Bluetooth. See Ex. 1001, 1:4–6. A station includes an antenna for
transmitting and receiving radio signals on a communication channel, a
digital controller unit comprising a link baseband controller, a
microprocessor, and an interface unit. See id. at 2:42–48, Fig. 2. The
interface unit comprises hardware and software for interfacing the station to
a host device. See id. at 2:57–59.
To overcome a problem encountered in an ad-hoc network when a
station having an inefficient antenna operates as a master, the ’522 Patent
discloses ranking each station in terms of its antenna performance, with the
station having the best antenna ranking becoming the master. See Ex. 1001,
2:63–3:14. “The antenna ranking can be determined under static conditions,
or it may be adjusted dynamically depending on the local environment of a
station [], for example based on measured VSWR [voltage standing wave
ratio] or some other signal quality measure.” Id. at 3:15–18. Other factors
may be taken into account in the ranking instead of, or in addition to,
antenna performance. Id. at 4:34–37. For example, a station having access

1 Although we dismiss the Petition as to claim 6, we still consider the
substance of the Petition addressing the limitations of claim 6 because the
remaining challenged claims 7 and 8 depend from claim 6 and therefore
incorporate the limitations of that claim.
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to electricity instead of a battery might be more suitable as a master due to
the extra power requirements for the master role. See id. at 4:38–42.
The stations in an ad-hoc network may determine their antenna
rankings relative to one another to choose the optimum master station. See
Ex. 1001, 3:20–23. To compare rankings, the master station requests each
of the other stations to provide their rankings using standard Bluetooth
communication protocols. See id. at 3:25–28. If the master station
determines that its ranking is lower than one of the slave stations, the master
station hands over its master role to that station using Bluetooth standard
methods. See id. at 3:28–32, 3:67–4:3. Because of the nature of an ad-hoc
network, handover of the master function from one station to another needs
to be possible as new stations join the network. See id. at 3:33–35, 3:57–4:3,
Fig. 3. It is also desirable to enable handoff of the master function to
mitigate effects of position dependent fading. See id. at 3:35–37.
E. Illustrative Claims
Dependent claims 7 and 8 are the only claims remaining in the trial.
Claims 7 and 8, along with independent claim 6 from which each claim
depends, are reproduced below:
6. A method of operating an ad-hoc radio communication
system having a plurality of stations formed into at least one
network, the method comprising the step of:
determining a master/slave rank of each station in the
network representative of the station’s suitability for
acting as master in the network using antenna
performance characteristics of each station in view of the
antenna’s local environment; and enabling a station with
the highest rank to be master.

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7. The method as claimed in claim 6, characterised by
determining the performance of the antenna means
dynamically.

8. The method as claimed in claim 6, characterised by
determining the rank of a station depending on its access to
mains power.

Ex. 1001, 6:4–20.
F. Asserted Ground of Unpatentability and Asserted Prior Art
Petitioner challenges the patentability of claims 7 and 8 on the
following ground:
Claims Challenged 35 U.S.C. § Reference(s)
7, 8 103(a) Morris2, Hulyalkar3, and Sugaya4.
II. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner asserts that a person of ordinary skill in the art at the time of
the invention “would have held a Bachelor’s degree in Computer
Engineering, Electrical Engineering, Computer Science, or equivalent
training, and would have roughly five years of experience working with ad-
hoc communication networks.” Pet. 13 (citing Ex. 1004 ¶ 48). Patent
Owner does not dispute Petitioner’s definition of a person of ordinary skill
in the art. See generally PO Resp. We adopt Petitioner’s definition of a

2 Ex. 1008, US Patent Publication No. 2003/0149794 A1, published
Aug. 7, 2003 (“Morris”).
3 Ex. 1006, WO 99/11081, published Mar. 4, 1999 (“Hulyalkar”).
4 Ex. 1007, US Patent No. 6,804,209 B1, issued Oct. 12, 2004 (“Sugaya”).
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person of ordinary skill in the art because it is consistent with the level of
skill reflected by the ’522 Patent Specification and the asserted prior art.
B. Claim Construction
The Board applies the same claim construction standard as the
standard applied in federal courts. See 37 C.F.R. § 42.100(b) (2020). The
claim construction standard used in a civil action under 35 U.S.C. § 282(b)
is generally referred to as the Phillips standard. See Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard,
generally words of a claim are given their ordinary and customary meaning.
Phillips, 415 F.3d at 1312.
“antenna performance characteristics of each station
in view of the antenna’s local environment”
Independent claim 6 recites “using antenna performance
characteristics of each station in view of the antenna’s local environment.”
See Ex. 1001, 6:9–11. The terms “antenna performance characteristics” and
“antenna performance characteristics of each station in view of the antenna’s
local environment” do not appear in the ’522 Patent Specification and the
claims originally filed in the patent application that issued as the ’522 Patent.
See Ex. 1002, 17–18; see generally Ex. 1001. The Applicant added “an
antenna performance characteristic of each station” in a first amendment to
the application’s claims. See Ex. 1002, 107. Subsequently, the Applicant
amended the claims to recite “antenna performance characteristics of each
station in view of the antenna’s local environment.” See id. at 125.
Petitioner contends that “antenna performance characteristics of each
station in view of the antenna’s local environment” should be construed as
“a measure of signal quality or signal strength of the antenna,” based on
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Patent Owner’s proposed constructions in District Court litigation involving
the ’522 Patent. Pet. 14–15 (citing Ex. 1013, 7; Ex. 1015, 9–10). Patent
Owner did not contest the substance of Petitioner’s proposed construction in
its Preliminary Response. See Paper 7 (“Prelim. Resp.”) 22–23. For the
purpose of the Institution Decision, we adopted Petitioner’s proposed
construction, finding it consistent with the ’522 Patent Specification. See
Dec. 20–21. In the Response, Patent Owner asserts that, based on the claim
language, specification, and prosecution history, “antenna performance
characteristics of each station in view of the antenna’s local environment”
should be construed as “features of the antenna of each station that are in the
vicinity of the antenna and affect its performance.” PO Resp. 14; see id.
at 10, 12.
Turning first to the ’522 Patent claims, Patent Owner asserts that
claim 6 recites “‘performance characteristics of the antenna,’ not
‘performance of the antenna.’” See PO Resp. 12; Sur-reply 1–2. According
to Patent Owner, “[t]he performance of the antenna would comprise only
measurements of the antenna’s performance, such as measurements of signal
quality. Instead, the claim language includes the term ‘characteristics,’
which relates to the features or qualities of the antenna that affect its
performance.” PO Resp. 12; see also Sur-reply 2 (“Based on the language
of the claim, it must be a feature of the antenna that affects its
performance.”).
In its Reply, Petitioner argues that Patent Owner cites no evidence to
support its arguments that the inclusion of the term “characteristics” in the
phrase “antenna performance characteristics” relates to the features or
qualities of the antenna that affect its performance. See Reply 4 (quoting PO
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Resp. 12). Petitioner argues that Patent Owner “seeks to rearrange the claim
language and require ‘antenna characteristics’ rather than the recited
‘performance characteristics’ of the antenna.” Id. at 4–5.
Petitioner also points out that claim 7, which depends from claim 6,
does not distinguish between antenna performance and antenna performance
characteristics because claim 7 “explains that ‘determining a master/slave
rank . . . using [the] antenna performance characteristics’ is ‘characteri[z]ed
by determining the performance of the antenna means dynamically.”
Reply 7 (quoting Ex. 1001, 6:14–16) (alterations in original). According to
Petitioner, in the context of the ’522 patent, this suggests that “antenna
performance characteristics” is at least commensurate in scope with the
performance of the antenna, based on claim differentiation. See id. (citing
Phillips, 415 F.3d at 1315).
Patent Owner disputes Petitioner’s argument that “antenna
performance characteristics” is at least commensurate in scope with the
performance of the antenna, based on claim 7. See Sur-reply 3. According
to Patent Owner, Petitioner “does not explain why it is that claim 7 cannot
be read to further limit claim 6 even though claim 6 requires using features
of the antenna that affect its performance.” Id.
The words of a claim are given their ordinary and customary meaning,
which is the meaning the term would have to person of ordinary skill in the
art in the context of the claims, the patent, and prosecution history. See
Phillips, 415 F.3d at 1312–1313. The claims themselves and the context in
which a term is used in the claim can be instructive as to the particular
meaning of claim terms. See id. at 1314. Other claims of the patent can also
be valuable sources of enlightenment as to the meaning of the claim term.
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See id. The presence of a dependent claim that adds a particular limitation
gives rise to a presumption that the limitation in question is not present in
the independent claim. See id. at 1315.
We agree that Patent Owner’s proposed construction is flawed
because it rearranges the language of claim 6 to require antenna
characteristics instead of performance characteristics. Claim 6 recites
“antenna performance characteristics” not “antenna characteristics.” The
term “characteristics” is modified by the term “antenna performance,” not
just by “antenna.” Moreover, Patent Owner does not provide evidence to
support its argument that due to the inclusion of the term “characteristics,”
“antenna performance characteristics” relates to the features or qualities of
the antenna that affect its performance. Argument of counsel cannot take the
place of objective evidence. See Gemtron Corp. v. Saint-Gobain Corp., 572
F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not
evidence).
Even assuming Patent Owner’s unsupported attorney argument is
correct, in other words “characteristics” is synonymous with “features or
qualities,” “antenna performance characteristics” therefore refers to
“features or qualities of antenna performance.” We also agree that “antenna
performance characteristics” recited in claim 6 is at least commensurate in
scope with “determining the performance of the antenna means
dynamically,” recited in claim 7. Stated in other terms, the scope of claim 7
is narrower than the scope of claim 6 and, therefore, “determining the
performance of the antenna means dynamically” and generally “performance
of the antenna means,” cannot be excluded from the scope of claim 6. For
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these reasons, the ’522 Patent claims do not support Patent Owner’s
proposed claim construction.
Turning to the ’522 Patent Specification and Patent Owner’s proffered
extrinsic evidence, Patent Owner also asserts that the Specification supports
the proposed claim construction. See PO Resp. 10–13. Patent Owner
reproduces a portion of the ’522 Patent Specification addressing “VSWR or
some other signal quality measure,” and cites to extrinsic evidence
disclosing VSWR as the voltage standing wave ratio. See id. at 12 (quoting
Ex. 1001, 2:16–18; citing Ex. 2002). According to Patent Owner “VSWR is
the voltage standing wave ratio, which corresponds to the impedance
matching between the antenna and the radio/transmission line, which is a
feature or quality (i.e., characteristic) of an antenna and radio/transmission
line, not a performance measurement.” Id. (citing Ex. 2002). Patent Owner
contends that “[t]he ’522 Patent Specification’s reference to other signal
quality measures is intended to encompass measures like VSWR, which are
also based upon the features of the antenna.” Id.
Patent Owner further asserts that the proposed construction is
supported by the ’522 Patent Specification disclosure that each station
determines its own rank. See PO Resp. 13; see also id. at 17 (“[T]he station
itself must perform the quality assessment in order to determine its rank
using ‘features of the antenna of each station that are in the vicinity of the
antenna and affect its performance.’”). More specifically, Patent Owner
contends that VSWR is measured at the station because the ’522 Patent
Specification discloses that each station includes ranking means for
determining a rank, the ranking is based on measured VSWR or some other
signal quality measure, and the master may request the stations to send their
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rankings. See id. at 13 (quoting Ex. 1001, 1:34–37; 3:15–17, 3:24–27).
According to Patent Owner, “[l]ooking only at the receiving end to evaluate
some quality measure of a path between two stations does not allow one to
assess “antenna performance characteristics in view of the antenna’s local
environment.” Id.; see also id. at 17 (“assessing only paths at the receiving
end does not provide information about the features of the antenna that
affect its performance.”).
In Reply, Petitioner asserts that the ’522 Patent does not distinguish
between antenna performance and antenna performance characteristics. See
Reply 7 (citing Ex. 1001, 3:11–13, 4:35–43). According to Petitioner, “the
specification repeatedly describes determining antenna ranking(s) ‘in terms
of its antenna performance,’ without mentioning performance characteristics
or otherwise suggesting that ‘performance characteristics’ would be of
different scope.” Id. (citing Ex. 1001, 3:11–13, 4:35–43). Petitioner further
contends that Patent Owner’s arguments ignore express teachings of the
’522 Patent because “[t]he ’522 patent’s specification . . . makes clear that
its ranking determination can be based not only on measured VSWR . . . ,
but also on ‘some other signal quality measure.’” Id. at 4 (quoting Ex. 1001,
3:18); see id. at 3–4 (quoting Ex. 1001, 3:11–23).
Petitioner contends that it is unclear how Patent Owner’s position is
supported by the ’522 Patent Specification’s disclosure that the rankings are
determined at the stations, not the master. See Reply 8 (citing PO Resp. 13).
Petitioner contends that Patent Owner’s argument that “[l]ooking only at the
receiving end to evaluate some quality measure of a path between two
stations does not allow one to assess “antenna performance characteristics in
view of the antenna’s local environment” “appears to be internally
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inconsistent because it simultaneously argu[es] that one must focus on the
receiving stations themselves while also stating that one cannot focus on
those stations.” Id. (quoting PO Resp. 13) (first alteration in original).
Patent Owner asserts that Petitioner “ignores that VSWR can be both
a measure of signal quality and also a feature of the antenna relating to its
performance.” Sur-reply 2; see id. at 4 (similar argument). According to
Patent Owner, “[t]he specification does not suggest that any measure of
signal quality meets the ‘performance characteristics of the antenna’
limitation, and not every example in the specification will meet the claim
limitation.” Id. at 2; see id. at 4 (similar argument).
In determining the ordinary and customary meaning, “the
specification ‘is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the meaning of a
disputed term.’” Phillips, 415 F.3d at 1315 (quoting Vitrionics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (1996)). Extrinsic evidence may be
useful, but it is unlikely to result in a reliable interpretation of patent claim
scope unless considered in the context of the intrinsic evidence. Phillips,
415 F.3d at 1319.
We agree with Petitioner that the ’522 Patent Specification does not
distinguish between antenna performance and antenna performance
characteristics. Patent Owner’s extrinsic evidence indicates that VSWR is
the “voltage standing wave ratio,” which corresponds to the impedance
matching between the antenna and the radio/transmission line. See
Ex. 2002, 1. We, however, do not agree with Patent Owner’s unsupported
attorney arguments that: (1) VSWR is only a feature or quality of an
antenna; (2) VSWR “is not a performance measurement” and (3) the ’522
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Patent disclosure of “other signal quality measures” is intended to
encompass measures like VSWR, which are also based upon the features of
the antenna. These arguments are not supported by evidence and argument
of counsel cannot take the place of objective evidence. See Gemtron, 572
F.3d at 1380.
We also agree with Petitioner that the ’522 Patent discloses that each
station determines its own ranking, and that the antenna ranking can be
based on measured VSWR or some other signal quality measure. We,
however, do not agree with Patent Owner’s unsupported attorney argument
drawing a distinction between a quality measure at a receiving end of a path
between two stations and “antenna performance characteristics in view of
the antenna’s local environment.” Again, argument of counsel cannot take
the place of objective evidence. See Gemtron, 572 F.3d at 1380. In sum,
the ’522 Patent Specification and the cited extrinsic evidence (Ex. 2001)
does not support Patent Owner’s proposed construction and related
assertions that it excludes a measure of signal quality, a performance
measurement, and measurements at the receiving end of a path between two
stations, yet requires measurement only at the station.
Next, turning to the ’522 Patent prosecution history, Patent Owner
contends that its proposed construction is supported by the prosecution
history which distinguished Hall’s method based on the determined end-to-
end path loss of a signal. See PO Resp. 13. According to Patent Owner,
Applicant argued that Hall [(Ex. 2012), a prior art reference
applied during prosecution,] teaches a method for determining a
geographic location of a mobile unit based on the determined
end-to-end path loss of a signal, which is not a teaching of
determining performance characteristics of an antenna means in
its local environment.”
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PO Resp. 8 (quoting Ex. 1002, 147–148); see also id. at 17 (“considering
only the signal received in a communication path was specifically
distinguished during prosecution.”). Patent Owner notes that a Notice of
Allowance was issued shortly thereafter. See id. at 9.
In its Reply, Petitioner asserts that the Applicant’s arguments during
prosecution regarding Hall are ambiguous at best and do not carry the
weight Patent Owner seeks to place upon them. See Reply 11 (quoting
Phillips, 415 F.3d at 1317). Petitioner contends that the Applicant’s
response to the office action first argued a lack of motivation to combine.
See id. at 11–12 (quoting Ex. 1002, 148; citing Ex. 1002, 144–150). More
specifically, Petitioner contends that the Applicant argued that the other
applied prior art reference “failed to disclose considering antenna metrics
when determining which station should be master, and thus in its view, an
ordinary artisan would not have looked to references like Hall and its
specific type of antenna performance measure for the combination.” Id.
at 12 (citing Ex. 1002, 148). According to Petitioner, “[t]he Applicant then
argued, in the alternative, that Hall does not disclose ‘determining the
antenna characteristics.’” Id. Petitioner points out that the Examiner
allowed the claims without providing a reason for allowance. See id. (citing
Ex. 1002, 151–54).
Petitioner further contends that it is unclear whether the Examiner
relied on or considered Applicant’s alternative argument. See Reply 12.
Petitioner asserts that the record suggests that the Examiner disagreed with
the Applicant on whether Hall taught “antenna performance characteristics”
because the Examiner relied on Hall’s disclosure of monitoring antenna
performance by measuring the VSWR. See id. (citing Ex. 1002, 141).
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Petitioner points out that the Applicant did not respond to the Examiner’s
finding regarding Hall’s teaching of monitoring antenna performance by
measuring VSWR. Petitioner further points out that Patent Owner’s position
is that VSWR falls within the scope of the challenged claims. See id. (citing
PO Resp. 10–14). Petitioner further contends that the most likely reason the
claims were allowed was based on the Applicant’s motivation to combine
argument. According to Petitioner, “the prosecution history is not
sufficiently clear to override the express statements in the ’522 patent’s
specification that the ‘other measures of signal quality,’ . . . , satisfy the
claimed ‘antenna performance characteristics of each station in view of the
antenna’s local environment.’” Id. at 13 (quoting Kumar v Ovonic Battery
Co., 351 F.3d 1364, 1371 (Fed. Cir. 2003)).
In the Sur-reply, Patent Owner argues that Petitioner does not cite to
where the ’522 Patent Specification is alleged to contain such an express
statement. See Sur-reply 4; see id. at 3–4 (quoting Reply 13).
In addition to the claims themselves and the patent specification, the
patent prosecution history should be considered. See Phillips, 415 F.3d
at 1317. The prosecution history can often inform the meaning of the claim
language by demonstrating how the inventor understood the invention and
whether the inventor limited the invention in the course of prosecution,
making the claim scope narrower than it would otherwise be. See id.
However, the prosecution often lacks the clarity of the specification and thus
is less useful for claim construction purposes. See id. “[A] ‘clear and
unmistakable’ disavowal during prosecution overcomes the ‘heavy
presumption’ that claim terms carry their full ordinary and customary
meaning.” Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095
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(Fed. Cir. 2013) (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d
1314, 1323, 1326 (Fed. Cir. 2003)). “Where the alleged disavowal is
ambiguous, or even ‘amenable to multiple reasonable interpretations,’” our
reviewing court has “declined to find prosecution disclaimer.” Avid Tech.,
Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016) (quoting
Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1359 (Fed. Cir. 2003)).
We find that the Applicant’s arguments addressing certain teachings
of Hall do not rise to the level of a clear and unmistakable disavowal of
claim scope. As pointed out by Petitioner, the Examiner’s rejection relied
upon Hall’s teachings of cellular telephone self-testing capabilities including
monitoring antenna performance by measuring VSWR. See Ex. 1002, 141
(citing Ex. 1012, 1:19–40). The Applicant’s remarks, relied upon by Patent
Owner to support its argument, were non-responsive to the Examiner’s
factual findings regarding Hall because the Applicant did not address Hall’s
teachings of monitoring antenna performance by measuring VSWR. See Ex.
1002, 147–48. Instead, the Applicant presented arguments, inapplicable to
the Examiner’s findings, drawing a distinction between non-applied
teachings of Hall (i.e., testing end-to-end signal path) and the claimed
invention. See id. Indeed, counsel for Patent Owner acknowledges that the
Applicant does not attempt to distinguish Hall’s teachings of monitoring
antenna performance by measuring VSWR. See Tr. 19:1–9. Because the
prosecution history does not demonstrate a clear and unmistakable
disavowal of the scope of “antenna performance characteristics of each
station in view of the antenna’s local environment,” the prosecution history
does not support Patent Owner’s proposed construction and related
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assertions that it excludes determining end-to-end path loss of a signal and
assessing signal paths only at the receiving end.
In summary, the claims, the ’522 Patent Specification, the prosecution
history, and the extrinsic evidence (i.e., Ex. 2002) do not support Patent
Owner’s proposed construction, and Patent Owner’s argued exclusions and
requirements based on the proposed construction. Accordingly, we decline
to adopt Patent Owner’s proposed construction. The term “antenna
performance characteristics of each station in view of the antenna’s local
environment” is given its ordinary and customary meaning, which,
consistent with the ’522 Patent claims and Specification, where the
“performance characteristics” include at least “measured VSWR or some
other signal quality measure.”
Other Claim Terms and Phrases
As demonstrated in the analysis below, no additional claim terms and
phrases require an explicit construction. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
2017) (“[W]e need only construe terms ‘that are in controversy, and only to
the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc.
v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
C. 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
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 the subject matter
pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
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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) if in evidence, so-called secondary considerations.5
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
D. Unpatentability of Claims 7 and 8
1. Overview of Morris (Ex. 1008)
Morris discloses methods for inter-networking between wireless
networks. See Ex. 1008, code (57), ¶¶ 1, 6. Morris discloses implementing
the invention with the Bluetooth wireless communications protocol. See id.
¶ 15. Morris discloses a first piconet comprising a master node and slave
nodes, and a second piconet also comprising a master node and slave nodes.
See id. ¶ 16, Fig. 1. In a preferred implementation, each slave node
transmits an advertisement identifying its address, the services it offers, and
incorporating the address of all other slave nodes from which advertisements
are received by the slave node transmitting a given advertisement. See id.
¶ 19. Based on the advertisements received from each slave node, the
master node issues an internet management broadcast identifying the
participating nodes, the services offered by each node, and the services
offered by each external network accessible to one or more slave nodes. See
id.
When a wireless node desires to participate in the internet
management protocol, it ascertains whether any other wireless node is

5 The record before us does not include evidence of secondary
considerations.
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making internet management broadcasts. See Ex. 1008 ¶ 20. If an existing
internet management broadcast is not detected, the wireless node begins
periodic transmission of an initial advertisement identifying its address, the
services it offers, a name for the piconet being formed, and specifies the
operating mode of the initially participating node. See id. Another wireless
node receiving the initial advertisement and desiring to participate in the
piconet will transmit an acknowledgement message notifying the initial
wireless node of its identity and the services it offers. See id.
Once the initially participating node has received an acknowledgment
message from a newly participating node, the two nodes will negotiate to
determine which node should assume the role of periodically issuing the
internet management broadcast––that is, which node will become the master
node. See Ex. 1008 ¶¶ 21, 28. “In one approach, each node is classified into
one of a set of predefined operating modes by considering the node’s
mobility, power resources, and other parameters bearing upon its suitability
to periodically transmit the internet management broadcast.” Id. ¶ 21. The
node currently functioning as the master node will compare its operating
mode to the operating mode of the node from which it receives an
advertisement. See id. Should the operating mode of that node be deemed
preferable, the current master node relinquishes its status by sending a last
internet management broadcast that identifies the address of the new master
node and instructs the new master node to assume the role of periodically
issuing internet management broadcasts. See id.
2. Overview of Hulyalkar (Ex. 1006)
Hulyalkar discloses monitoring peer-to-peer links in a wireless
network having a centralized control station to determine an optimal
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network structure dependent upon the quality of the links. See Ex. 1006,
1:3–5, 2:21–23. Hulyalkar discloses an ad-hoc wireless asynchronous
transfer mode (ATM) network that may be formed by people around a
meeting table with communicating devices for exchanging information. See
id. at 3:23–25, Fig. 1. As each person enters the meeting or activates their
communicating device, the network expands to include the new
communications station. See id. at 3:25–26. The network also may contract
as people leave the meeting or sign off the network. See id. at 3:26–27. To
form the ad-hoc network, one of the stations must perform the function of a
centralized controller. See id. at 3:29–30.
Quality assessments by each station can be made by a number of
techniques well known to those skilled in the art. See Ex. 1006, 5:27–28.
For example, as the signal is received, the signal to noise ratio (SNR) can be
measured and used as the quality assessment. See id. at 5:28–29.
Depending on the network environment, quality assessments can occur
regularly or on demand. See id. at 6:21–22. For example, if it is known that
the network is relatively stable, quality assessments may be made only upon
the entry or removal of a station from the network, and if the network is
dynamic, quality assessments may be made continuously with each
transmission. See id. at 6:22–26. Depending upon the dynamic nature of the
network, alternative methods can be employed to process a number of
quality assessments for each path, such as maintaining a running average
and updating the running average with each transmission assessment, or
replacing a prior assessment with the latest assessment. See id. at 6:26–29.
In Hulyalkar, each station will maintain in its local database a quality
assessment for each path to each other station. See Ex. 1006, 7:7–8. The
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centralized controller will periodically poll stations within the network for
quality assessments. See id. at 7:14–18. Upon receipt of the quality
assessments from the stations, the centralized controller stores quality
factors from each station and from its local database into a global database,
thereby containing a quality assessment for each path within the network.
See id. at 7:18–22. From these assessments, the centralized controller can
assess how well its transmissions are being received by each of the other
stations, and can assess whether any station’s transmission is being received
by each of the other stations with a higher quality measure. See id.
at 7:22–25.
Any number of techniques may be used to evaluate the network
quality assessment measurements to select a preferred station to be utilized
as a centralized controller. See Ex. 1006, 7:26–28. Organizing quality
measurements as a matrix is one technique that may be utilized to select a
centralized controller. See id. at 7:28–8:13, Fig. 5. Other techniques and
algorithms may be used to select a preferable central controller; for example,
selecting the station having the highest minimum value, greatest average
received quality, greatest mean squared received value, or other
characteristic statistic value, or combinations thereof. See id. at 8:23–34. In
addition to considering the quality of a station’s transmission to each of the
other stations, the station’s reception quality from each of the other stations
may be considered. See id. at 9:3–9. Selection of a new centralized
controller also can be made to be dependent upon the quality assessment of
the existing centralized controller, for example, a new controller may not be
selected unless and until the existing centralized controller falls below some
specified quality criteria. See id. at 9:12–15.
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3. Overview of Sugaya (Ex. 1007)
Sugaya discloses a method for controlling wireless communication
access among a plurality of communications stations via wireless
transmission of a control signal from a central control station to a terminal
station. See Ex. 1007 code (57), 2:14–17. Each of the communication
stations includes an antenna for transmitting and receiving. See id.
at 4:22–27, Fig. 1. A communication station is selected as the central
control station if a terminal station communicates with many more stations
than the current control station, and a control station change request is
transmitted. See id. at code (57), 11:11–22, Fig. 9. Sugaya discloses that, in
the case where a wireless transmission apparatus configuring its own station
as the control station can be driven by a commercially available AC power
supply and by a battery, it is not judged a suitable control station when it is
driven by the battery. See id. at 12:24–30. When the battery service life
expires for a battery driven central control station, there is a possibility that a
communication network is not constructed. See id. at 12:30–33. Sugaya
discloses that it is preferable to select a station using an available
commercial AC power supply as the central control station. See id.
at 12:34–35.
4. Analysis
Even though we have terminated this proceeding and dismissed the
Petition as to claim 6, claims 7 and 8 contain all the limitations of claim 6 by
virtue of dependency. Accordingly, because claims 7 and 8 contain the
limitations of claim 6, we assess Petitioner’s contentions regarding claim 6.
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a. Claim 6: A method of operating an ad-hoc radio communication system
having a plurality of stations formed into at least one network
Petitioner contends that Morris teaches “[a] method of operating an
ad-hoc radio communication system having a plurality of stations formed
into at least one network,” as recited in the preamble of claim 6. See
Pet. 27–31 (citing Ex. 1004 ¶¶ 211–221). In particular, Petitioner asserts
that Morris discloses a wireless network comprising mobile devices that
communicate via Bluetooth connections. See id. at 27 (citing Ex. 1008
¶¶ 1, 6, 15, 16, 26); see also id. at 30–31 (addressing “a plurality of stations
formed into at least one network;” reproducing Ex. 1008, Fig. 1 with
annotations; citing Ex. 1008 ¶ 16). According to Petitioner, “[a]lthough
every device may act as a master or slave, only one device acts as a master
in a network at a time.” Id. at 27 (citing Ex. 1008 ¶¶ 16, 19, 26); see id.
at 28 (reproducing Ex. 1008, Fig. 1 with annotations). Petitioner explains
that Morris’s network is ad hoc because devices may enter and leave the
network, and the network’s structure will adjust to ensure the device best
suited to be the master becomes the master. See id. at 28 (citing Ex. 1008
¶¶ 20, 21, 23, 24, 29; Ex. 1004 ¶ 213). Petitioner also asserts that Morris
discloses a method of operating its ad-hoc communication system. See id.
at 29–30 (citing Ex. 1008 ¶¶ 21, 28, 29; Ex. 1004 ¶¶ 216–217). Patent
Owner does not dispute Petitioner’s contentions addressing the preamble of
claim 6. See Prelim. Resp. 10–17.
Based on the entire trial record before us, we find that Morris teaches
“[a] method of operating an ad-hoc radio communication system having a
plurality of stations formed into at least one network,” as recited in the
preamble of claim 6.
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b. Claim 6: determining a master/slave rank of each station in the network
representative of the station’s suitability for acting as master in the
network using antenna performance characteristics of each station
in view of the antenna’s local environment
Petitioner asserts that the combination of Morris, Sugaya, and
Hulyalkar teach “determining a master/slave rank of each station in the
network representative of the station’s suitability for acting as master in the
network,” as recited in claim 6. See Pet. 32–41. Petitioner contends that
Morris discloses that each wireless node or station includes an RF receiver
disposed for communication with other nodes in the network. See id.
at 32–33 (reproducing Ex. 1008, Fig. 2 with annotations; citing Ex. 1008
¶ 26; Ex. 1004 ¶¶ 224–225). Petitioner asserts the RF transceiver in at least
one station is coupled to an antenna. See id. at 33–34 (reproducing
Ex. 1008, Fig. 2 with annotations; citing Ex. 1004 ¶ 226). Petitioner
acknowledges that Morris does not use the term “antenna,” but asserts that
Morris uses the industry standard symbol to depict an antenna in Fig. 2. See
id. at 34 (citing Ex. 1004 ¶ 227); see also id. at 34–35 (reproducing
Ex. 1001, Fig. 2; Ex. 1008, Fig. 2). According to Petitioner, one with
ordinary skill in the art “would have understood Morris to disclose an
antenna attached to an RF transceiver to aid in communication with other
nodes in the network.” Id. at 35–36 (citing Ex. 1004 ¶ 227). Petitioner also
asserts, “if there is a question whether Morris discloses an antenna, it would
have been obvious to incorporate Sugaya’s antenna into Morris’s system.”
Id. at 36 (citing Ex. 1004 ¶ 228); see id. at 32–37 (reproducing Ex. 1001,
Fig. 2 with annotations; Ex. 1007, Fig. 3 with annotations; Ex. 1008, Fig. 2
with annotations; citing Ex. 1008 ¶¶ 20, 21, 23, 24, 26, 29; Ex. 1007,
4:22–27, 5:10–19; Ex. 1004 ¶¶ 224–232).
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Petitioner further asserts that Morris discloses a first station that
assesses its suitability to act as the master in a network by analyzing its
operating mode and comparing it to the respective operating modes of other
devices, where the operating modes reflect its mobility, power resources,
and other parameters bearing upon a station’s suitability to periodically
transmit broadcast messages. See Pet. 38 (citing Ex. 1008 ¶¶ 21, 28, 29;
Ex. 1004 ¶ 234). Petitioner contends that Morris discloses that the device
with the operating mode deemed to be preferable becomes the master. See
id. (citing Ex. 1008 ¶ 21). Petitioner acknowledges that the operating modes
of Morris do not expressly identify antenna performance. See id. Petitioner
contends that a skilled artisan would have understood Hulyalkar’s teachings
of assessing antenna performance to fit within Morris’s category of other
parameters bearing upon a station’s suitability to transmit. See id. (citing
Ex. 1004 ¶ 234).
According to Petitioner, “Hulyalkar discloses determining a rank
representative of the station’s suitability for acting as master in the network
using performance characteristics of the antenna means in view of its local
environment.” Pet. 38 (citing Ex. 1004 ¶¶ 108–114, 235). Petitioner
contends that Hulyalkar teaches an ad-hoc radio network of mobile
terminals, one of which is designated the master or central controller, where
each terminal has a MAC controller to assess signal quality. See id.
at 38–39 (citing Ex. 1006, 3:17–4:16, 6:32–34, 7:11–25, 9:3–5, Fig. 1;
Ex. 1004 ¶ 235). Petitioner argues that Hulyalkar further discloses that a
quality of service (QoS) manager in the central controller compiles
measured signal quality information that it and other stations created and
analyzes the information to assess the central controller’s rank and the rank
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of the other stations based on antenna performance. See id. at 39 (citing
Ex. 1006, 2:21–33, 5:3–19, 5:27–32, 7:7–25; Ex. 1004 ¶¶ 114, 236, 237).
According to Petitioner, “[b]ecause Hulyalkar’s quality assessments are
based on real-world, received signal measurements, they account for antenna
performance characteristics in view of an antenna’s local environment.” Id.
(citing Ex. 1006, 2:21–33, 5:3–19, 7:11–8:22, 8:32–9:11; Ex. 1004 ¶ 238).
Petitioner contends that, as an example, if an antenna becomes shadowed by
a user’s body so its received signal strength is diminished, these quality
assessments would account for the environmental change and register a
lower received signal strength. Id. at 39–40 (citing Ex. 1006, 2:21–33,
5:3–19, 7:11–8:22, 8:32–9:11; Ex. 1004 ¶ 236). Petitioner further asserts,
“[b]ecause these ‘quality assessment[s]’ are compared to identify which
station should be the master, they constitute ‘a rank representative of the
station’s suitability for acting as master.’” Id. at 40 (citing Ex. 1006,
7:11–8:22, Fig. 5; Ex. 1004 ¶ 238) (second alteration in original).
Patent Owner contends that Hulyalkar does not teach “antenna
performance characteristics” because Hulyalkar teaches assessing the quality
of communication paths among stations in a wireless network. See PO
Resp. 16 (citing Ex. 1006, code (57), 5:27–29, 7:2–10, Fig. 5); Sur-reply 5
(citing Ex. 1006, code (57), Fig. 5). Based on similar arguments to those
addressing the claim construction of “antenna performance characteristics of
each station in view of the antenna’s local environment,” (compare PO
Resp. 16–17 and Sur-reply 4–6, with PO Resp. 12–14), Patent Owner asserts
that “antenna performance characteristics,” is not met by the quality of
communication paths between pairs of stations in a network. See PO Resp.
16; Sur-reply 5. In reference to Hulyalkar’s teachings of measuring the
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signal to noise ratio (SNR) to measure the quality of communication paths
between stations, Patent Owner contends that the strength, at one station in
the network, of the desired signal from another station in the network, and
the amount of noise in the signal detected by the receiving station, are based
on many factors other than features of the antenna. See PO Resp. 16–17;
Sur-reply 6. According to Patent Owner, “[b]ecause numerous factors affect
the signal to noise ratio, a [person of ordinary skill in the art] would not
consider a ranking based upon SNR to be a ranking based upon features of
the antenna.” PO Resp. 17; see Sur-reply 6.
Petitioner responds that Patent Owner provides no evidence to support
its contention regarding what a person of ordinary skill in the art would
consider a ranking based upon features of the antenna. See Reply 14.
Petitioner further contends that because Hulyalkar’s “quality assessments are
based on real-world, received signal measurements, they assess ‘antenna
performance characteristics’ even under [Patent Owner]’s proposed
construction.” Id. at 15 (citing Pet. 38–40) (internal quotations omitted).
Patent Owner disputes Petitioner’s response, arguing that it contradicts
Patent Owner’s arguments regarding the proposed claim construction. See
Sur-reply 4. According to Patent Owner, “[i]t is not sufficient to check for
the strength of the received signal, [] rather features of the antenna in its
local environment constitute its performance characteristics that must be
used.” Id.
We do not agree with Patent Owner’s arguments, because, as
explained above in Section II.B., we do not adopt Patent Owner’s proposed
construction for “antenna performance characteristics of each station in view
of the antenna’s local environment.” Moreover, Patent Owner’s arguments
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that a person of ordinary skill in the art would not consider ranking based
upon SNR to be a ranking based upon features of the antenna is mere
attorney argument unsupported by evidence of record. Argument of counsel
cannot take the place of objective evidence. See Gemtron, 572 F.3d at 1380.
Patent Owner further argues that Hulyalkar does not teach “antenna
performance characteristics of each station in view of the antenna’s local
environment,” because Hulyalkar teaches the quality assessment is
performed by the receiving station based upon transmissions received from
other stations. According to Patent Owner, “assessing only the paths at the
receiving end does not provide information about the features of the antenna
that affect its performance.” We do not agree with Patent Owner’s
arguments, because, as explained above in Section II.B., the ’522 Patent
claims, Specification, and prosecution history do not support Patent Owner’s
proposed construction and related assertion that it excludes measurements at
the receiving end of a path between two stations.
Based on the entire trial record before us, we find Hulyalkar teaches
“using antenna performance characteristics of each station in view of the
antenna’s local environment,” when given its ordinary and customary
meaning which includes “measures of VSWR or other signal quality
measures.” We also find that, based on the entire trial record before us, the
combined teachings of Morris, Hulyalkar, and Sugaya teach “determining a
master/slave rank of each station in the network representative of the
station’s suitability for acting as master in the network using performance
characteristics of the antenna means in view of its local environment,” as
recited in claim 6.
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Based on Petitioner’s identified disclosures of Morris, Hulyalkar, and
Sugaya, and supporting testimony (Ex. 1004), we are persuaded Petitioner
sets forth sufficient articulated reasoning with rational underpinning to
support the conclusion that it would have been obvious to a person of
ordinary skill in the art to modify Morris’s teachings of ranking of stations
during its negotiation process (either alone or as modified to include
Sugaya’s antenna) to include ranking based on antenna performance
characteristics, as taught by Hulyalkar, in order to enhance Morris’s system
functionality. See Pet. 37–38 (citing Ex. 1004 ¶¶ 233–241), 40–41 (citing
Ex. 1004 ¶ 239); KSR, 550 U.S. at 418 (Fed. Cir. 2006). Petitioner asserts
that it would have been obvious to one with ordinary skill in the art to
consider the signal strength or antenna performance disclosed in Hulyalkar
as relevant to determining a station’s suitability to periodically transmit
broadcast messages and relevant to the determination of the master as
disclosed in Morris. See Pet. 40 (citing Ex. 1004 ¶ 239). Petitioner points
out that Hulyalkar explains that selecting a master station based on
communication quality or antenna strength is important to providing high-
quality transmissions and optimizing network efficiency. See id. (citing
Ex. 1006, 1:3–7, 2:11–17, 2:26–33, Abstract; Ex. 1004 ¶ 239). Petitioner
asserts that one with ordinary skill in the art “would have reasonably
expected implementing this metric in Morris to work without any dramatic
alteration to station design.” Id. (citing Ex. 1004 ¶ 239); see id. at 40–41
(citing Ex. 1006, 3:17–31, 4:15–16, 6:32–7:6, 7:11–25, 9:3–5; Ex. 1008
¶¶ 15, 26–28; Ex. 1004 ¶ 240).
Based on the entire trial record before us, we find that the combined
teachings of Morris, Hulyalkar, and Sugaya render obvious “determining a
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master/slave rank of each station in the network representative of the
station’s suitability for acting as master in the network using performance
characteristics of the antenna means in view of its local environment,” as
recited in claim 6.
c. Claim 6: enabling a station with the highest rank to be master
Petitioner contends that Morris teaches “enabling a station with the
highest rank to be master,” as recited in claim 6, based on Morris’s
description of a negotiation process. See Pet. 41–42 (citing Ex. 1004
¶¶ 242–245). Petitioner asserts that Morris’s negotiation process includes a
first station that determines its ability to be master relative to other stations,
where each station is assigned an operating mode that reflects parameters
bearing upon its suitability to periodically transmit. See id. (citing Ex. 1008
¶¶ 21, 28, 29). Petitioner further contends that Morris discloses that during
negotiation, the first station issues an advertisement message identifying its
operating mode, and a second station receives the advertisement message
and responds with an acknowledgement message identifying the second
station’s inherent capabilities or operating mode. See id. at 42 (citing
Ex. 1008 ¶¶ 20, 21, 29; Ex. 1004 ¶ 243). Petitioner asserts that Morris
teaches that a first station compares its operating mode to another station’s
operating mode, and, if it determines the other station has a better operating
mode, and is better suited to be master, it sends a message that instructs the
new master node to assume the role, and the other station will take over the
role of master. See id. (citing Ex. 1008 ¶¶ 21, 29, 30; Ex. 1004 ¶ 244).
Based on the entire trial record before us, we find that Morris teaches
“enabling a station with the highest rank to be master,” as recited in claim 6.
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d. Claim 7: determining the performance of the antenna means dynamically
Petitioner asserts that the combination of Morris, Hulyalkar, and
Sugaya further teaches “determining the performance of the antenna means
dynamically.” See Pet. 43–44. Petitioner acknowledges that Morris does
not teach this limitation. See id. at 43. Petitioner asserts that Hulyalkar
discloses this limitation based on quality assessments that take into account
dynamic factors such as received signal strength that are provided to a
centralized controller or master periodically or on demand. See id. at 43–44
(citing Ex. 1006, 2:26–33, 5:27–32, 7:11–25; Ex. 1004 ¶ 248). According to
Petitioner, “[b]y measuring antenna signal strength . . . and by doing so
repeatedly over time, under real-world environmental conditions, a skilled
artisan would have understood Hulyalkar to disclose ‘determining the
performance of the antenna means dynamically.’” Id. at 44 (citing Ex. 1004
¶¶ 246–248). Patent Owner presents arguments addressing only the
limitations of claim 6, which we do not agree with for the reasons discussed
in the above preceding sections. See PO Resp. 10–17.
Based on the entire trial record before us, we find that the combined
teachings of Morris, Hulyalkar, and Sugaya teaches “determining the
performance of the antenna means dynamically,” as recited in claim 7. For
the foregoing reasons, and after having analyzed the entirety of the record
and assigning appropriate weight to the cited supporting evidence, we
determine that Petitioner has established by a preponderance of the evidence
that claim 7 is unpatentable under 35 U.S.C. § 103(a) over Morris,
Hulyalkar, and Sugaya.
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e. Claim 8: determining the rank of a station depending on
its access to mains power
Petitioner asserts that the combination of Morris, Hulyalkar, and
Sugaya further teaches “determining the rank of a station depending on its
access to mains power.” See Pet. 44. Petitioner acknowledges that Morris
and Hulyalkar do not teach this limitation. See id. Petitioner asserts that
Sugaya teaches selecting a station with access to AC power as the master is
better than selecting a station running on battery power because a battery
may be depleted and the loss of a control station would disrupt the network.
See id. (citing Ex. 1007, 12:7–39).
We are persuaded that Petitioner sets forth sufficient articulated
reasoning with rational underpinning to support the conclusion that it would
have been obvious to one of ordinary skill in the art to incorporate Sugaya’s
teachings into Morris’s decision making scheme to enhance system
functionality and optimize network structure by reducing the risk that the
station may lose battery power and disrupt the network’s connections. See
Pet. 44–45 (citing Ex. 1008 ¶¶ 21, 28, 29; Ex. 1004 ¶ 251), 46–47 (citing
Ex. 1004 ¶¶ 249–255); KSR, 550 U.S. at 418. Petitioner contends that this
modification would have been obvious because a person a person of
ordinary skill in the art would have wanted to consider access to mains
power as an additional parameter bearing upon a station’s suitability to be
the master because Sugaya teaches that selecting a station with access to AC
power as the master is better than selecting a station running on battery
power because a battery may be depleted, causing the loss of a control
station that would disrupt the network. See id. at 44–45 (citing Ex. 1008
¶¶ 21, 28, 2; Ex. 1007, 12:7–39; Ex. 1004 ¶ 251). Petitioner asserts that one
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with ordinary skill in the art “would have expected the stations in Morris to
be able to rank successfully based on the ‘access to mains power’ without
significantly altering station design.” Id. at 45 (citing Ex. 1004 ¶ 252); see
id. at 45–46 (citing Ex. 1006, 6:26–27; Ex. 1007, 4:22–27, 5:13–19,
11:12–37; Ex. 1008 ¶¶ 26–28; Ex. 1014, 4:40–65, 12:62, 14:24, 16:23–34,
Fig. 1; Ex. 1004 ¶¶ 101–107, 115–118, 252–255). Patent Owner presents
arguments addressing only the limitations of claim 6, which we do not agree
with for the reasons discussed in the above preceding sections. See PO
Resp. 10–17.
Based on the entire trial record before us, we find that the combined
teachings of Morris, Hulyalkar, and Sugaya renders obvious “determining
the rank of a station depending on its access to mains power,” as recited in
claim 8. For the foregoing reasons, and after having analyzed the entirety of
the record and assigning appropriate weight to the cited supporting evidence,
we determine that Petitioner has established by a preponderance of the
evidence that claim 8 is unpatentable under 35 U.S.C. § 103(a) over Morris,
Hulyalkar, and Sugaya.
III. PATENT OWNER’S ADDITONAL ARGUMENT
Patent Owner argues that this inter partes review must be dismissed
on the basis that administrative patent judges are unconstitutionally
appointed principal officers. See PO Resp. 18–21. We do not reach Patent
Owner’s constitutional argument because the Supreme Court resolved the
issue in U.S. v Arthrex, 141 S. Ct. 1970 (June 21, 2021).
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IV. CONCLUSION6
Petitioner has shown by a preponderance of the evidence that claims 7
and 8 are unpatentable.
V. ORDER
Accordingly, it is
ORDERED that the Petition as to claim 6 is dismissed as moot;
ORDERED that inter partes review as to claim 6 is terminated;
ORDERED that Petitioner has shown by a preponderance of the
evidence that claims 7 and 8 are unpatentable; 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.
In summary:

6 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims 35 U.S.C. § Reference(s) / Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
7, 8 103(a)
Morris,
Hulyalkar,
Sugaya
7, 8
Overall
Outcome 7, 8
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For PETITIONER:

Erika Arner
Jason Stach
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
erika.arner@finnegan.com
jason.stach@finnegan.com

For PATENT OWNER:
Jeffrey Stephens
Ryan Loveless
Brett Mangrum
James Etheridge
Brian Koide
Jeffrey Huang
ETHERIDGE LAW GROUP, PLLC
jstephens@etheridgelaw.com
ryan@etheridgelaw.com
brett@etheridgelaw.com
jim@etheridgelaw.com
brian@etheridgelaw.com
jeff@etheridgelaw.com