Uniloc 2017 LLC

Patent Trials and Appeals Board

Oct 15, 2020

IPR2019-00918 (P.T.A.B. Oct. 15, 2020)

Trials@uspto.gov Paper 21
571-272-7822 Date: October 15, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
Petitioner,
v.
UNILOC 2017 LLC,
Patent Owner.

IPR-2019-00918
Patent 8,369,298 B2

Before JEFFREY S. SMITH, BRYAN F. MOORE, and SHARON FENICK,
Administrative Patent Judges.
MOORE, Administrative Patent Judge.

JUDGMENT
Final Written Decision

Determining All Claims Unpatentable
35 U.S.C § 318(a)

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I. INTRODUCTION
Apple Inc. (“Petitioner”)1 filed a Petition (“Pet.,” Paper 1) pursuant to
35 U.S.C. § 311 to institute an inter partes review of claims 1, 3–6, and 8–
10 of U.S. Patent No. 8,369,298 B2 (“the ’298 patent,” Ex. 1001). The
Petition is supported by the Declaration of Henry H. Houh, Ph.D. (Ex.
1002). Uniloc 2017 LLC (“Patent Owner”)2 filed a Preliminary Response.
Paper 6 (“Prelim. Resp.”). In an October 16, 2019 Institution Decision, we
determined that Petitioner had a reasonable likelihood of prevailing as to at
least one of the challenged claims of the ’298 patent. Paper 7 (“Inst. Dec.”).
Accordingly, we instituted an inter partes review pursuant to 37 C.F.R.
§ 42.108. Inst. Dec. 35.
Patent Owner filed a Patent Owner Response (Paper 9, “PO Resp.”) to
which Petitioner filed a Reply (Paper 10, “Reply”). Patent Owner also filed
a Sur-Reply. (Paper 11, “Sur-Reply”).
Both parties requested a hearing for oral argument (Papers 12, 13), and a
hearing was held July 23, 2020. See Paper 19 (“Tr.”).
A. Related Matters
The parties advise that the ’298 patent has been asserted against Apple
in Uniloc USA, Inc. et al. v. Apple Inc., Case No. 1:18-cv-00166 (W.D. Tex.)
(terminated) and Uniloc USA, Inc. et al v. Apple Inc., Case No. 4:19-cv-
01696 (N.D. Cal.). Pet. 2; Paper 4, 2.

1 Petitioner identifies only itself as the real party-in-interest pursuant to 37
C.F.R. § 42.8. Pet. 1.
2 Patent Owner identifies only itself as the real party-in-interest pursuant to
37 C.F.R. § 42.8. Paper 4, 1.
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B. The ’298 Patent
The face of the ’298 patent indicates the patent was filed on May 3,
2012, and is a continuation of Application No. 12/896,686 filed on
October 1, 2010, which a continuation of Application No. 11/288,505 filed
on November 28, 2005, which is a continuation-in-part of various
applications. Ex. 1001, codes (22), (63). We apply a priority date of
November 28, 2005 because Patent Owner has not asserted, or shown, the
challenged claims are supported by earlier applications. “[A] patent’s claims
are not entitled to an earlier priority date merely because the patentee claims
priority.” In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011). “[T]o gain
the benefit of the filing date of an earlier application under 35 U.S.C. § 120,
each application in the chain leading back to the earlier application must
comply with the written description requirement of 35 U.S.C. § 112.”
Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007)
(quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir.
1997)); see also Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
1327 (Fed. Cir. 2008) (explaining Patent Owner bears the burden to show
not only the existence of the earlier applications through which Patent
Owner seeks to claim priority, but also how the written description in the
earlier applications supports the challenged claims); see also PowerOasis,
Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305–06 (Fed. Cir. 2008);
Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 871 (Fed. Cir.
2010) (explaining that the burden of production shifts to the patent owner
once a petitioner provides invalidating art that predates the filing date of the
challenged patent, where the patent-at-issue claims priority through
continuations-in-part and the Examiner did not expressly address the priority
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issue).
The ’298 patent is titled, “Method for Establishing Network
Connections Between Stationary Terminals and Remote Devices through
Mobile Devices,” and generally relates to a technique for seamless and
transparent handoff of a network address of a remote mobile device from a
user’s mobile device to the user’s stationary terminal for the purpose of
establishing a direct communication channel between the remote device and
the stationary terminal. Id. at codes (54), (57). The ’298 patent explains that
sometimes two mobile devices, such as smart phones, may wish to establish
a virtual connection there between, such as a TCP connection, so that the
devices may exchange data for various purposes, such as instant messaging
(“IM”). Id. at 1:36–44. However, when a user of a mobile devices is
actively engaged or focused on a more stationary terminal, such as a laptop,
desktop, or workstation, diverting attention away from the stationary
terminal in order to use the mobile device would be inconvenient. Id. at
1:45–50. The ’298 patent therefore discloses a technique so that when a
remote mobile device attempts to establish communication with a user’s
mobile device, the user’s stationary remote terminal, rather than the user’s
mobile device, establishes a virtual connection thereby allowing the user to
communicate using the stationary remote terminal. Id. at code (57), 1:57–
62. In this manner, the user’s attention is not diverted away from the
stationary terminal to the user’s mobile device. Id. at 1:45–50. Figure 1 of
the ’298 patent, reproduced below, is illustrative.
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Figure 1 “depicts one environment to deploy an embodiment of the
present invention.” Id. at Fig. 1, 2:41–42. Figure 1 shows
stationary terminal 125, depicted as a laptop, and two mobile devices,
remote mobile device 115 and proximate mobile device 110. Id. at 2:41–61.
Stationary terminal 125 and proximate mobile device 110 are in
communication with each other via communications link 130, which may
be, e.g., a Bluetooth communications link. Id. at 2:62–3:9. Stationary
terminal 125 also supports access to Internet 120. Id. In Figure 1, stationary
terminal 125 accesses Internet 120 through use of an IEEE 802.11 or Wi-Fi
router, router 135. Id. at 3:10–17. Also, remote mobile device 115 and
proximate mobile device 110 communicate with each other via digital
cellular wireless network system 100, which may be, e.g., the General
Packet Radio Service (“GPRS”), 2.5G, or 3G. Id. at 2:42–51. Due to the
packet switching capability of network system 100, the network system is
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able to implement an IP-based network that supports TCP/IP transmission
protocol based communications, depicted by IP Network 105. Id. at 2:48–
51.
Figure 2 depicts a flow chart for establishing a network connection
between a stationary terminal and an initiating remote device. Id. at 3:18–
21, Fig. 2. When the user of mobile device 110 is within short range of
stationary terminal 125, device 110 and terminal 125 discover each other
and automatically establish a Bluetooth (or other short range wireless
technology) connection. Id. at 3:21–29. A remote device, such as remote
mobile device 115, initiates a request to establish an IM session with mobile
device 110 by transmitting to device 110, via SMS through cellular wireless
network system 100, an invitation message containing device 115’s IP
address and TCP port, and an invitation text message. Id. at 3:42–56.
Mobile device 110 receives the invitation text message, and extracts the IP
address and TCP port. Id. at 3:56–60.
The Specification discloses that upon receiving the invitation text
message, the user’s attention is focused on stationary terminal 125, rather
than the user’s mobile device 110, and it would be undesirable to divert the
user’s attention to device 110 for the purpose of engaging in an IM session.
Id. at 3:61–64. It would be preferable for the user to be able to engage in an
IM session using stationary terminal 125. Id. at 3:65–4:8. As such, mobile
device 110 transmits the IP address and TCP port of initiating remote mobile
device 115 to stationary terminal 125 through communications link 130. Id.
at 4:8–14. Stationary terminal 125 then uses the IP address and TCP port to
establish a TCP connection between itself and mobile device 115, through
Internet 120, so that terminal 125 and device 115 can engage in an IM or
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other data transfer session over the established virtual connection directly
between them without the continued participation of mobile device 110. Id.
at 4:15–30.
C. Illustrative Claim
Of the challenged claims, claims 1 and 6 are independent. Claims 3–5
depend directly from claim 1. Claims 8–10 depend directly from claim 6.
Claims 1 and 6 include similar recitations. However, claim 1 recites a
method, whereas claim 6 recites a non-transitory computer-readable
medium. Claim 1, reproduced below, is illustrative.
1. A method for establishing a data communications session
between a stationary terminal and an initiating terminal remote
device, the method comprising:
establishing a communication link through a short-range wireless
technology between the stationary terminal and a proximate
mobile device wherein the proximate mobile device operates
within a cellular wireless network system;
opening a listening port on the proximate mobile device to
receive communications through a page-mode messaging
service;
receiving, at the listening port and through the page-mode
messaging service, an invitation message from the initiating
remote device, wherein such invitation message comprises a
network address and listening port related to the initiating remote
device; and
transmitting the network address and listening port received by
the proximate mobile device to the stationary terminal though the
short-range wireless technology, whereupon the stationary
terminal receives the network address and listening port,
transmits a response to the network address and listening port
related to the initiating remote device, and establishes a virtual
reliable connection with the initiating remote device for data
communications.
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Ex. 1001, 6:30–54.

D. Instituted Grounds of Unpatentability
Petitioner asserts that claims 1, 3–6, and 8–10 are unpatentable on the
following grounds (Pet. 7):
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 3, 5, 6, 8, 10 103(a) Charbonnier,
3 RFC793,4 SMS
Specification5 (ground 1)
1, 3, 5, 6, 8, 10 103(a)
Charbonnier, RFC793, SMS
Specification, TURN6 (ground
2)
1, 3, 5, 6, 8, 10 103(a)
Charbonnier, RFC793, SMS
Specification, DECT
Speakerphone7 (ground 3)
1, 3, 5, 6, 8, 10 103(a)
Charbonnier, RFC793, SMS
Specification, DECT
Speakerphone, TURN (ground

3 Charbonnier, EP 1 077 567 A1, published Feb. 21, 2001 (as translated).
Ex. 1028.
4 “Transmission Control Protocol, DARPA Internet Program Protocol
Specification,” RFC 793, Sept. 1981. Ex. 1010.
5 Universal Mobile Telecommunications System (UMTS); Technical
realization of the Short Message Service (SMS) (3G TS 23.040 version 3.5.0
Release 1999), European Telecommunication Standards Institute (ETSI),
1991. Ex. 1014.
6 Rosenberg, et. al., “Traversal Using Relay NAT (TURN),” Internet
Engineering Task Force (IETF), Nov. 14, 2001. Ex. 1035.
7 Digital Cordless Phone—Panasonic KXT-CD - £99.99 at Telephones
Online (accessed Mar. 28, 2019),
https://web.archive.org/web/20030403010142fw–
/http:/www.telephonesonline.co.uk/details.asp?prodID=220. Ex. 1029.
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Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
4)
4 and 9 103(a)
Charbonnier, RFC793, SMS
Specification, and Lee8 (ground
5)
4 and 9 103(a)
Charbonnier, RFC793, SMS
Specification, TURN, and Lee
(ground 6)
4 and 9 103(a)
Charbonnier, RFC793, SMS
Specification, DECT
Speakerphone, and Lee (ground
7)
4 and 9 103(a)
Charbonnier, RFC793, SMS
Specification, DECT
Speakerphone, TURN, and Lee
(ground 8)
II. DISCUSSION
A. Relevant Law
1. Evidentiary Burden
Petitioner bears the burden of proving unpatentability of the
challenged claims, and the burden of persuasion never shifts to Patent
Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
1378 (Fed. Cir. 2015). To prevail in its challenges, Petitioner must
demonstrate by a preponderance of the evidence that the challenged claims
are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).

8 Lee, US 6,847,632 B1, issued Jan. 25, 2005. Ex. 1006.
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2. Obviousness
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 said subject matter
pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
question of obviousness is resolved on the basis of underlying factual
determinations including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and, (4) where in evidence, objective indicia of non-
obviousness (i.e., “secondary considerations”), including commercial
success, long-felt but unsolved needs, failure of others, and unexpected
results.9 Graham v. John Deere Co., 383 U.S. 1, 17−18 (1966).
3. Level of Skill
With regard to the level of ordinary skill in the art, Petitioner asserts a
person having such skill “would have had a Bachelor’s degree in computer
science or a comparable field of study, plus approximately two to three years
of professional experience with cellular phone and IP networks, or other
relevant industry experience. Additional graduate education could substitute
for professional experience and significant experience in the field could
substitute for formal education.” Pet. 11 (citing Ex. 1002 ¶ 41). Patent
Owner “does not offer a competing definition at this stage of the
proceeding.” PO Resp. 4. We determine that Petitioner’s description of the

9 Patent Owner does not put forth evidence it alleges tends to show
secondary considerations of non-obviousness in its Patent Owner Response.
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level of ordinary skill in the art is supported by the record. Therefore, we
adopt Petitioner’s proposal.
With regard to the specific knowledge of a person of ordinary skill in
the art about particular areas of prior art, Petitioner asserts that such person
would have had knowledge of the following subject matter: (1) networking
and the Internet, (2) TCP/IP ports, (3) SMS ports, and (4) MS Invitations
and TCP/IP-based responses. Pet. 11–20. Petitioner provides a nine-page
discussion concerning specific knowledge it asserts a skilled artisan would
have had about the above four topics. Id. at 11–20. Although we consider
Petitioner’s assertions regarding the specific knowledge of a person of
ordinary skill in the art as background in reviewing the question of
obviousness, because such assertions are directed to knowledge (scope and
content of the prior art) rather than to level of skill within the subject matter,
we do not incorporate wholesale Petitioner’s assertions into our
determination of the level of ordinary skill in the art.
B. Claim Construction
We interpret a claim “using the same claim construction standard that
would be used to construe the claim in a civil action under 35 U.S.C.
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282(b).” 37 C.F.R. § 42.100(b).10 Under that standard, we construe the
claim “in accordance with the ordinary and customary meaning of such
claim as understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent.” Id.
Petitioner proposes constructions for a number of claim terms.
Pet. 21–26. Patent Owner addresses the meaning of “stationary terminal”
and “mobile device” as recited in claims 1 and 6. PO Resp. 6–12. We
determine the only proposed constructions we need to address are “terminal”
and “mobile device.” See, e.g., Nidec Motor Corp. v. Zhongshan Broad
Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))
(providing that only those terms that are in controversy need be construed,
and only to the extent necessary to resolve the controversy).
Terminal
Claim 1 recites “[a] method for establishing a data communications
session between a stationary terminal and an initiating remote device,”
“establishing a communication link through a short-range wireless
technology between the stationary terminal and a proximate mobile device,”

10 The Office has changed the claim construction standard in AIA
proceedings, replacing the broadest reasonable interpretation standard with
the same claim construction standard used in a civil action in federal district
court. See Changes to the Claim Construction Standard for Interpreting
Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
Fed. Reg. 51,340, 51,358 (Oct. 11, 2018). This change applies to petitions
filed on or after November 13, 2018. Id. Because the present Petition was
filed on January 18, 2019, we construe the claims in accordance with the
standard used in federal district court, now codified at 37 C.F.R.
§ 42.100(b).
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and “transmitting the network address and listening port received by the
proximate mobile device to the stationary terminal . . . whereupon the
stationary terminal receives the network address and listening port” and
“establishes a virtual reliable connection with the initiating remote device.”
Ex. 1001, 6:30–54 (emphasis added).
Petitioner states that “terminal” should be given its plain and ordinary
meaning consistent with the Specification of the ’298 patent. Pet. 21. Patent
owner construed this term implicitly with a focus on the term “short-range
wireless technology” found elsewhere in the claim. PO Resp. 13–17. The
parties’ proposed constructions for “terminal” in the phrase “stationary
terminal” are as follows:
Petitioner Patent Owner
“a point in a system or
communication network at
which data can either enter
or leave” (Pet. 21)
a device “capable of short-range
wireless communications, such
as Bluetooth communications,
that may be employed by
computers” (PO Resp. 10–14)

We do not adopt Petitioner’s construction. First, for reasons discussed
below, Petitioner’s construction does not find sufficient support. Second,
Petitioner’s construction does not resolve the controversy between the
parties. We also do not adopt Patent Owner’s construction, that the
“terminal” must be capable of short-range wireless communications, such as
Bluetooth communications, that may be employed by computers, for the
reasons discussed below.
1. Petitioner’s Proposed Construction
Petitioner’s proposed construction is taken from a technical
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dictionary, namely The IEEE Standard Dictionary of Electrical and
Electronics Terms. Pet. 21 (citing Ex. 1040). Petitioner also cites to an
unrelated patent that uses the phrase “personal computer or dumb terminal.”
Id. (citing Ex. 1030, 9:34–37). Petitioner neither discusses the intrinsic
record, explains the reasons for relying primarily on extrinsic evidence, nor
discusses why the extrinsic definition taken from the IEEE dictionary is
consistent with the ’298 patent Specification. See id.; see also PO.
Resp. 10–12. The dictionary provides at least two potentially applicable
definitions of “terminal.” The first definition, relied on by Petitioner,
appears to relate to network communications: “[a] point in a system or
communication network at which data can either enter or leave.” Ex. 1040,
1095.
However, the second definition, which relates to computers, appears
consistent with requiring a user interface, defining “terminal” as “[a]n
input/output device capable of transmitting entries to and obtaining output
from the system of which it is a part, for example cathode-ray tube (crt)
terminal.” Id. Petitioner neither explains nor provides evidence showing
why the networking sense of “terminal” should be applied rather than the
computer sense of the word. The ’298 patent Specification discloses that
mobile phones are terminals, stating that the present invention relates to
messaging techniques for mobile devices, and more specifically, for
transferring network addresses from mobile devices to more stationary
terminals in order to establish communication. Ex. 1001, 1:26–32. This
reference to mobile phones as terminals, as well as reference to transferring
network addresses, may potentially indicate the networking sense of
“terminal.”
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However, the Specification also refers to stationary terminals “such as
laptops, desktops and workstations,” which might suggest a computer sense
of the word “terminal.” The Petition lacks any discussion regarding which
of these two senses is intended, or whether yet another meaning is intended.
As to the patent Petitioner cites (Exhibit 1030), Petitioner makes no effort to
show it is in the same field of endeavor as the ’298 patent or to otherwise
explain the relevance of this unrelated patent’s use of the word “terminal” to
the ’298 patent. Pet. 21. Petitioner has not provided sufficient evidence and
argument to support its proposed claim construction. For the foregoing
reasons, we do not adopt Petitioner’s proposed construction of “terminal.”
2. Patent Owner’s Proposed Construction
Patent Owner asserts that terminal should be construed to be “capable
of short-range wireless communications, such as Bluetooth communications,
that may be employed by computers.” PO Resp. 10–14; Sur-Reply 6–7.11
Claim 1, however, recites that a communications link is established through
a short-range wireless technology between the stationary terminal and a
proximate mobile device, and so this capability does not need to be added to

11 For the first time in its Sur-Reply, Patent Owner notes that the term
“stationary terminal” in claims of related patent 8,194,632 (“the ’632
patent”) have been interpreted by the district court in litigation asserting the
’632 patent as construes “stationary terminal” to mean “computing device
that is not handheld in its ordinary use.” Sur-Reply 3 (citing Ex. 2001, 45,
Claim Construction Memorandum and Order, Uniloc 2017 LLC v. Google
LLC, Case No. 2:18-CV-00499-JRG-RSP, Dkt. 152 (E.D. Tex. Jan. 20,
2020)). The entire record of that case is not before us and Patent Owner
does not argue in this IPR that the DECT base station is handheld in its
ordinary use or is not a computing device. Thus, it has not been shown that
this construction would change the result in this IPR.
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the construction of “terminal.” Additionally, besides asserting that short-
range wireless technology is a technology “such as” Bluetooth “that may be
employed by computers” (PO Resp. 13 (citing Ex. 1001, Fig. 2, steps 205,
210)), Patent Owner does not provide a construction for “short-range
wireless connection.” To the extent that Patent Owner is suggesting that the
short-range wireless connection must be Bluetooth specifically, we decline
to adopt such a limitation. Bluetooth is explicitly recited in dependent
claims 2, 7, and 12 suggesting that the independent claim is broader that
Bluetooth. Under the principles of claim differentiation, “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.” Phillips v. AWH Corp., 415 F.3d at 1315 (Fed. Cir. 2005) (en
banc). Thus we decline to construe “terminal” as Patent Owner suggests.
For the foregoing reasons, we determine that neither party’s proposed
construction of “terminal” is persuasive. 12

12 Patent Owner suggests “Petitioner’s obviousness theory should likewise
be rejected as tainted by reliance on an incorrect claim construction.” PO
Resp. 12. (citing United Microelectronics Corp. v. Lone Star Silicon
Innovations LLC, IPR2017-01513, Paper 10 at 4–5, 6 (PTAB May 22,
2018)). We have reviewed the decision cited by Patent Owner and disagree
that it would be prudent to terminate this IPR merely because Petitioner has
proposed a construction that we find to be incorrect. “The Board is not
constrained by the parties’ proposed constructions and is free to adopt
its own construction. See SAS, 825 F.3d at 1351. In this instance, Petitioner
argues, for its incorrect construction, that “PO does not dispute that the
DECT base station is a ‘stationary terminal’ based on any particular claim
construction” (Reply 4) and we determine Petitioner’s analysis in the
Petition is relevant to the construction adopted by the Board. See Sec.
II.C.5.a., infra; Inst. Dec. 27–30; Pet. 66–67.

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We need not, and do not, expressly construe this term further.
Mobile Device
Patent Owner asserts the term “mobile device” should be construed to
mean “a smartphone or smartphone-like device, which uses wireless cellular
radio technology and includes short range communications functionality and
the capability to support instant messaging functionality.”
PO Resp. 6, 14.13, 14 Additionally, Patent Owner asserts that a mobile

13 For the first time in its Sur-Reply, Patent Owner notes that “mobile
device” in claims of related patent 8,194,632 (“the ’632 patent”) have been
interpreted by the district court in litigation asserting the ’632 patent as
construes “stationary terminal” to mean “computing device that is not
handheld in its ordinary use.” Sur-Reply 3 (citing Ex. 2001, 39, Claim
Construction Memorandum and Order, Uniloc 2017 LLC v. Google LLC,
Case No. 2:18-CV-00499-JRG-RSP, Dkt. 152 (E.D. Tex. Jan. 20, 2020)).
The entire record of that case is not before us and Patent Owner does not
argue in this IPR that the mobile phones 6 and 8 are not handheld in their
ordinary use or are not computing devices. Thus, it has not been shown that
this construction would change the result in this IPR.
14 For the first time in its Sur-Reply, Patent Owner argues “In addition to
requiring access to the Internet or other wide area network, the mobile phone
would need to provide a user interface to display incoming invitation
messages from an initiating remote device, a keyboard for responding to
those invitation messages, short range communications functionality
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device is “smartphone or smartphone-like device such as a tablet computing
device that can establish a short range connection such as Bluetooth between
the mobile device and the terminal device.” Id. at 7–8. Patent Owner relies
on the following statement in the Specification:
A current commercial example of a mobile device (e.g.,
smartphone, PDA, handheld, etc.) that might be used in FIG. 1
could be Research In Motion’s (RIM) BlackBerry handheld
devices which supports cellular communication technologies and
includes a QWERTY keyboard to facilitate the typing of text.

Ex. 1001, 2:52–57. Additionally, Patent Owner asserts a mobile device
would include “a hard or soft keyboard to facilitate the typing of text, and
the capability for installation and execution of communication applications.”

(e.g., Bluetooth), the capability to support instant messaging, and the
capability for installation and execution of communication applications, such
as responding to the invitation messages by transmitting a response to the
network address and listening port related to the initiating remote device,
and establishing a virtual reliable connection with the initiating remote
device for data communications.” Sur-Reply 5. As to the recitation of a
“user interface” and “capability to support instant messaging, and the
capability for installation and execution of communication applications, such
as responding to the invitation messages by transmitting a response to the
network address and listening port related to the initiating remote device,”
these functions were not mentioned in the Reply and thus we consider them
waived. Arguments not presented in the Patent Owner Response “will be
deemed waived.” Update to the Trial Practice Guide, 83 Fed. Reg. 38,989
(Aug. 13, 2018) (notifying the public of the updated “Trial Practice Guide”
and its accessibility through the USPTO website: https://go.usa.gov/xU7GP)
(“Practice Guide Update”) at 15 (A “sur-reply that raises a new issue or
belatedly presents evidence may not be considered”; a sur-reply may
“respond” to arguments “raised” in the reply but “respond . . . does not mean
embark in a new direction with a new approach as compared to positions
taken in a prior filing.”)).
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PO Resp. 7. Patent Owner asserts these limitations represent the ordinary
meaning of “mobile device.” Sur-Reply 5. Additionally, Patent Owner
argues “[t]he ’298 patent plainly does not contemplate “any device” that can
be carried, but a ‘mobile device’ such as a smartphone, PDA, handheld, etc.”
Sur-Reply 5 (citing Ex. 1001, 2:52–57).
The phrases “e.g.,” “etc.,” “might,” “and “could be” do not show “a
clear indication in the intrinsic record that the patentee intended the claims
to be so limited” to one of the devices listed between “e.g.” and “etc.,” or the
device or functions listed after “could be.” See Dealertrack, Inc. v. Huber,
674 F.3d 1315, 1327 (Fed. Cir. 2012). Rather, the terms “e.g.” and “etc.”
indicate that the patentee intended this list of examples of terminals to be
non-exclusive, rather than limiting. Thus, we do not adopt Patent Owner’s
suggested limitation of the claimed “mobile phone” to a smartphone or
smartphone-like device that has a QWERTY keyboard. Additionally, Patent
Owner’s suggested limitations to cellular communication and Bluetooth are
separately recited in the claims and do not need to be imported into the
construction of “mobile phone.”
Patent Owner asserts Petitioner has implicitly construed “mobile
device” by contending that Charbonnier’s bimode device15 is a mobile
device. PO Resp. 7. Patent Owner asserts several implicit constructions in
order to refute Petitioner’s contentions. Id. at 6–10. Patent Owner asserts
that the bimode device is a “special–purpose” device for use with and within
range of a DECT (Digital Enhanced Cordless Communications) base station.
Id. Based on this assertion, Patent Owner implies that the bimode device

15 Charbonnier is described in more detail infra at Section II.C.1.
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could not be a “typical mobile device” which would not be intended only for
local use within the range of a base station. Id. Additionally, Patent Owner
asserts that Charbonnier’s bimode device that uses a DECT phone and
mobile technology is “theoretical” and is not known in the art or “real-life”
but rather only described in Charbonnier. Id. at 10. Patent Owner further
argues that the bimode device is too large to be a mobile device and is not
intended to be and is not the proper form-factor to used outside the home.
Id. at 9–10. Patent Owner also asserts that the bimode device is not clearly
taught as using GSM functions as a back-up to the STN connection, and
therefore it cannot be considered a smartphone. Id. at 10. Finally, Patent
Owner suggests the mobile device, unlike the bimode device, must be used
in contexts other than the DECT base station. Id.
We note that none of these implicit constructions are supported by
further citation to the Specification (other than the citation above), extrinsic
evidence, or declaration testimony. See id. at 6–10.
As to whether the claimed “mobile device” must be a “typical” mobile
device, “the words of a claim ‘are generally given their ordinary and
customary meaning.”’ Phillips, 415 F.3d at 1312 (internal citations
omitted). “[T]he ordinary and customary meaning of a claim term is
the meaning that the term would have to a person of ordinary skill in the art
in question at the time of the invention.” Id. at 1313.
Patent Owner’s assertion that the DECT phone is not a typical device
or is a “special-purpose” device fails to establish what the ordinary meaning
of mobile device is and why a DECT phone is outside this ordinary
meaning. DECT phone device may meet claim language as long as any
feature of the device the makes it allegedly special does not take the device
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outside of the limit of the claims. The claims do not include or exclude
DECT phones or the context of a DECT phone so use of a device associated
with a DECT phone by itself is not relevant. As explained above, we do not
limit the claimed “mobile device” to a smartphone. Additionally, Patent
Owner has not presented evidence in the Specification or extrinsic evidence
regarding the minimum range of mobile phone or whether a mobile phone
must be able to be used outside of a home.
As to whether the DECT phone is “theoretical,” in an obviousness
analysis, prior art is valid for all that it teaches even if it is “theoretical” or
has not been produced to a real-life device.16 The Court of Appeals for the
Federal Circuit addressed the issue of whether enablement is a requirement
for a reference cited in an obviousness rejection and determined the
following:
While a reference must enable someone to practice the invention
in order to anticipate under § 102(b), a non-enabling reference
may qualify as prior art for the purpose of determining
obviousness under § 103. Reading & Bates Constr. Co. v. Baker
Energy Resources Corp., 748 F.2d 645, 652, 223 USPQ 1168,
1173 (Fed.Cir.1984) (reference that lacks enabling disclosure is
not anticipating, but “itself may qualify as a prior
art reference under § 103, but only for what is disclosed in it”
(emphasis in original)); see Beckman Instruments, Inc. v. LKB
Produkter AB, 892 F.2d 1547, 1551, 13 USPQ2d 1301, 1304
(Fed.Cir.1989) (“[e]ven if a reference discloses an inoperative
device, it is prior art for all that it teaches”).

Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir.

16 Patent Owner does not appear to be arguing that the bimode device needed
to be reduced to practice.
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1991) (emphasis added).17
As to the form-factor or size of the “mobile device,” Patent Owner has
not presented evidence in the Specification or extrinsic evidence regarding
the minimum or maximum size the claimed “mobile device” or whether the
claimed “mobile device” must be able to be used outside of a home. Also,
as explained above, we do not limit the “mobile device” to a smartphone so
it is not relevant whether prior art device uses GSM functions as a back-up
to the STN connection.
For the foregoing reasons, we do not adopt Patent Owner’s proposed
construction of “mobile device” or its implicit limitations on the term
“mobile device.”
The Petitioner’s Reply asserts that the claim term “mobile device”
should be any device that is mobile. Reply 2. Patent Owner asserts “[s]uch
a construction is plainly overbroad, as separating the two words fails to give
any weight to the term as a whole as it would have been understood by one
of ordinary skill in the art.” Sur-Reply 5.
We determine that the claim itself limits the “mobile device” to one
that “operates within a cellular wireless network system.” A “mobile
device” must be a device able to carry out the functions recited in the claim.

17 In its Reply, Petitioner cites to Ex. 1049. Reply 5. Patent Owner asserts
the cited standard of Exhibit 1049 cannot be considered to be applicable to
Charbonnier because it did not teach any standard involving Internet access
via GSM because the General Packet Radio Service (GPRS), on which
Internet access through GSM is provided, was not available until the year
2000. Sur-Reply 8. This dispute regarding GSM is not relevant because the
claims as properly construed do not require a smartphone device.
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The use of the word “mobile” shows the device is cordless or otherwise not
fixed to a location. We determine no other construction of the term “mobile
device” is necessary. We need not, and do not, expressly construe this term
further.
C. Obviousness of Claims the Combination of Charbonnier, RFC793,
SMS Specification, and DECT Speakerphone (ground 3)
Petitioner contends that claims 1, 3, 5, 6, 8, and 10 are unpatentable
under 35 U.S.C. § 103(a) as obvious over of Charbonnier, RFC793, SMS
Specification, and DECT Speakerphone. Pet. 8. To support its contentions,
Petitioner provides explanations as to how the prior art allegedly teaches
each claim limitation. Id. at 26–52, 65–68. For convenience, all references
cited in the grounds of the Petition are summarized below.
1. Charbonnier (Ex. 1028)
Charbonnier is a European Patent Application titled, “Method for
Establishing Communication Between Two Telephone Facilities Through a
Computer Network by SMS Message.” Ex. 1028, code (54). Charbonnier
discloses a technique for bimode mobile phones, which operate on both
cellular (e.g., GSM) and DECT wireless networks, to establish TCP/IP
communications over the Internet. Id. ¶ 18. According to Charbonnier, in
order for two mobile phones to establish an Internet connection with each
other, the phones first must obtain temporary computer addresses, known as
Internet Protocol (“IP”) addresses, and exchange the temporary IP addresses
with each other. Id. ¶ 2. Charbonnier discloses that it would be desirable for
the mobile phones to maintain a connection with the Internet while they
exchange their respective IP addresses. Id. ¶¶ 2–3. Charbonnier proposes
that bimode mobile phones provide this opportunity by allowing the mobile
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phone’s to exchange IP addresses using a cellular network, thereby leaving
open for other uses the mobile phones’ respective connections with the
Internet. Id. ¶¶ 6–9. Figure 1 of Charbonnier, reproduced below, is
illustrative.

Figure 1 shows a schematic view of telephone facilities 1 and 2
connected to Internet 100 via Switched Telephone Network (“STN”) 101
and servers 3 and 4, respectively. Id.; see also id. ¶ 15–16. Each of
telephone facility 1 and 2 also is connected to cellular telephone
network 102 (e.g., GSM). Id. Fig. 1, ¶¶ 15–16. Each of facility 1 and 2
include a bimode mobile phone 6 and 8 and DECT base station 5 and 7,
respectively. Id. ¶ 18. Each of mobile phone 6 and 8 communicate with
DECT base station 5 and 7, respectively, using a DECT radio link. Id. ¶ 30.
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Charbonnier discloses that mobile phones 6 and 8 obtain temporary IP
addresses from their service providers. Id. ¶¶ 2–3, Fig. 2 (step 25). Mobile
phone 6 then sends an SMS message containing its temporary IP address
(IP1) to phone 8. Id. at Fig. 2 (step 26), ¶¶ 36, 48. Upon receipt of the SMS
message, phone 8 connects to the Internet and obtains a temporary IP
address (IP2). Id. at Fig. 2 (step 27), ¶¶ 37, 48. Phone 8 then sends an IP-
based response message via Internet 100 to phone 6, addressing the message
to IP1 (the IP address of phone 6 from the SMS message) and including IP2
(the IP address of phone 8). Id. at Fig. 2 (step 28), ¶¶ 37–39, 48. This
response is transmitted from phone 8 to its DECT base station 7, which
transmits the response to phone 6 via fixed network 101, Internet 100
(through any service providers 3, 4), and DECT base station 5. Id. at Fig. 1,
¶¶ 37–40, 48. Thus, a bidirectional TCP/IP data connection is established
over Internet 100 between DECT base station 7 and phone 6. Id. at Fig. 2
(step 29), ¶ 10.
2. RFC793 (Ex. 1010)
RFC793 is from the Request for Comments (“RFC”) series of
documents, see, e.g., Ex. 1010, 1, and is titled “Transmission Control
Protocol, DARPA Internet Program Protocol Specification,” id. at 5.18
RFC793 includes disclosure regarding opening and using TCP ports for
application addressing. Id. at 10, 11, 12, 14, 16, 17, 18–21, 24–28, 30, 32,

18 Here we cite to the page number printed on the exhibit by Petitioner, e.g.,
“Ex. 1010 – Page 1” and “Ex. 1010 – Page 5.” For the remainder of this
Decision, to be consistent with the citations in the Petition, we instead cite to
the TCP specification page numbers, e.g., [Page 1] (which corresponds to
Ex. 1010 – Page 10).
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45, 46, 54, 55, 79, 90, 93.
3. SMS Specification (Ex. 1014)
SMS Specification is a document titled “Universal Mobile
Telecommunications System (UMTS); Technical realization of the Short
Message Service (SMS) (3G TS 23.040 version 3.5.0 Release 1999).”
Ex. 1014. SMS includes disclosure regarding opening and using SMS ports
for application addressing. Id. at 13–14, 66–69, 72, 73.
4. DECT Speakerphone (Ex. 1029)
DECT Speakerphone is a printout of a product page describing the
Panasonic KXT-CD 735 DECT phone. Ex. 1029. A picture of the phone is
reproduced below.

The picture shows a Panasonic KXT-CD 735 DECT phone, which
includes a handset and a base unit or base station. Id. As can be seen in the
picture, and described in the product page, the base station includes a dual
keypad and digital speakerphone for making and receiving calls when the
handset is elsewhere. Id. The base station also includes a visual display,
shown in the picture. Id.
5. Analysis
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a. Claims 1 and 6
Petitioner identifies where it asserts each recitation of claims 1 and 6
are taught in the asserted prior art references, and sets forth a rationale to
combine the references. Pet. 35–52, 65–68. Petitioner relies primarily on
Charbonnier. Figure 1 of Charbonnier, which we have annotated and
reproduced below, is illustrative. Red annotations identify elements
described in Charbonnier’s disclosure; blue annotations indicate Petitioner’s
identification of claim elements.

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Ex. 1028, Fig. 1 (annotated). Figure 1 shows a schematic view of telephone
facilities 1 and 2 connected to Internet 100. Pertinent to the discussion
below, Petitioner identifies DECT base station 7, modified to include a
speakerphone as taught in DECT Speakerphone, as the “stationary terminal,”
mobile phone 6 as the “initiating remote device,” and mobile phone 8 as the
“proximate mobile device.” Pet. 35–37, 67–68. Petitioner identifies the
local DECT radio link between mobile phone 8 and DECT base station 7 as
the “short-range wireless technology” “communication link” “between the
stationary terminal and proximate mobile device.” Id. at 37–39. Petitioner
identifies GSM cellular network 102 as part of the cellular wireless network
system within which the proximate mobile device (mobile phone 8)
operates. Id. at 39–40.
Although Charbonnier discloses using SMS messaging (see, e.g.,
Ex. 1028 ¶ 36) to send notices from mobile phone 6 to facility 2, and using
the TCP/IP protocol (see, e.g., Ex. 1028 ¶ 40) for communication between
facility 1 and facility 2, Charbonnier does not expressly disclose certain
details regarding SMS ports, TCP ports, and destination IP addresses.
Petitioner relies on SMS Specification and RFC793 to provide such details,
asserting such were “well-known implementation details set forth in the TCP
standard [RFC793] and SMS Specification related to TCP ports and SMS
ports, respectively.” Pet. 29; see generally id. at 40–52.
Patent Owner does not raise arguments disputing Petitioner’s
showing, except certain limitations, as explained below. As detailed below,
having reviewed Petitioner’s arguments and the evidence regarding the
subject matter, we are persuaded Petitioner has made a sufficient showing.
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Preamble
Petitioner establishes by a preponderance of the evidence that Johnson
teaches a “method of establishing a data communications session between a
stationary terminal and an initiating remote device, the method comprising.”
as recited in claim 1 and “A non-transitory computer-readable medium
including instructions that, when executed by a processor, cause the
processor to establish a data communications session between a stationary
terminal and an initiating remote mobile device, the instructions of the
computer-readable medium comprising instructions for.” Pet. 35–37;
Ex. 1028 ¶¶ 20, 24, 26, 31–40, 48, 51–52, Figs. 1–2; Ex. 1002 ¶¶ 91–94.
For example, as to claim 1 Petitioner contends Charbonnier discloses a
method of establishing a data communications session (VoIP call using
TCP/IP) between a stationary terminal (DECT base station 7) and an
initiating remote device (mobile phone 6). Pet. 35–36. Additionally,
Petitioner contends Charbonnier discloses the mobile phones 6 and 8 contain
“programmable logic blocks,” including “applications” for establishing the
Internet connection and VoIP communication automatically, without user
intervention. Id.
“. . . stationary terminal . . .”
Petitioner establishes by a preponderance of the evidence that
Charbonnier and the DECT Speakerphone teach “establishing a
communication link through a short-range wireless technology between the
stationary terminal and a proximate mobile device wherein the proximate
mobile device operates within a cellular wireless network system,” as recited
in claims 1 and 6. Pet. 37–40; Ex. 1028 ¶¶ 10, 14–23, 30, 41–43, Fig. 1,
claim 5; Ex. 1002 ¶¶ 95–101; Ex. 1042 (DECT as ESTI standard); Ex. 1048,
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8 (DECT TR 1010 159 v.1.2.1); Ex. 1043, at code (57), 1:27–31,1:42–46
(Nilssen patent on cordless cell phone system).
Petitioner argues it would have been obvious to modify Charbonnier’s
DECT base 7 to include a digital speakerphone as taught by DECT
Speakerphone. Pet. 67. We find persuasive Petitioner’s rationale for the
combination because both Charbonnier and DECT Speakerphone relate to
DECT phones, and DECT Speakerphones provides several express
motivations to combine by teaching digital speakerphones in DECT base
stations. Id. at 66–67 (citing Ex. 1029, 1). Furthermore, DECT
Speakerphone provides several reasons to include a digital speakerphone,
including: (1) making and receiving calls from the base unit even when the
handset is elsewhere, (2) hand free for more convenience, and (3) conference
calling where more than one person can listen or speak. Id. (citing Ex. 1029,
1). We are persuaded by Petitioner’s argument that a person of ordinary
skill in the art would have had a reasonable expectation of success in adding
a speakerphone to Charbonnier’s DECT base station 7 based on, for
example, DECT Speakerphone and other documents showing Samsung and
other phones with similar DECT speakerphones in the base station. Id. at 67
(citing Ex. 1046, Exhibit A).
Furthermore, we find persuasive Petitioner’s argument that DECT
base station 7, modified to include a speakerphone, would have been
considered a “stationary terminal.” As we discussed above with regard to
claim construction, we do not adopt Patent Owner’s construction of
“terminal.” Supra Sec. II.C.
Patent Owner does not dispute that it would have been obvious to
combine a speakerphone with DECT base station 7. However, Patent Owner
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asserts DECT base station is not a “stationary terminal” and a bimode phone
is not a “mobile device.” PO Resp. 10–17. Patent Owner’s assertion is
based on: its argument that DECT telephone base is not capable of
establishing a communication link through a short-range wireless technology
between the stationary terminal and a proximate mobile device; and, its
proposed construction of “mobile device.” Id. at 8, 14–16.
Patent Owner also asserts “A DECT telephone base is not capable of
short-range wireless communications, such as Bluetooth communications,
that may be employed by computers. Rather, a DECT telephone base is only
capable of special-purpose communication with a corresponding handset.”
Id. at 13–14. In its Sur-Reply, Patent Owner further asserts “whatever short-
range link is used, it needs to be one that is established between two
computing devices, not pre-configured using the DECT protocol between
the base and handset of Charbonnier.” Sur-Reply 9–10. Patent Owner has
not provided a construction for “short-range wireless communication.”
Patent Owner has not established that such communication must be between
two computing devices. Other that the suggestion in the Specification that a
smartphone is an example of the mobile device and that Bluetooth is an
example of the short-range wireless communication, Patent Owner has not
provided support for the limitations it suggests we impose on the claims.
The radio connection between the DECT telephone base 7 and mobile phone
8 is undoubtedly short-range wireless communication.
Further, even under Patent Owner’s unduly narrow construction of
“mobile device” as a computing device, Petitioner contends that
Charbonnier discloses that mobile phones 6 and 8 contain programmable
logic blocks that run applications. Pet. 35–37 (citing Ex. 1028 ¶¶ 20, 24, 26,
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27, 48, 51, 52; Ex. 1002 ¶¶ 92–93); see id. at 37–40; Reply 4–5. We agree
with Petitioner. Charbonnier discloses that mobile phone 6 is a GSM phone
incorporating a DECT radio handset module, a programmable logic block
for communicating through the Internet, an Internet connection block, an
Internet telephony block, a DECT call button, a GSM call button, and
Internet button. Ex. 1028 ¶ 20. Charbonnier discloses that the mobile phone
contains an application for connection to the Internet. Ex. 1028 ¶ 26.
Charbonnier discloses that the mobile phone contains a telephony over the
Internet application. Ex. 1028 ¶ 27. Dr. Houh testifies that “a
‘programmable logic block’ running an ‘application’ is inherently a
‘processor.’” Ex. 1002 ¶ 93. We credit Dr. Houh’s testimony in
determining that Charbonnier’s disclosure of a mobile phone that runs
applications for establishing an Internet connection and VoIP
communication describes a “mobile device” even under Patent Owner’s
unduly narrow construction.
Patent Owner also asserts that “even assuming arguendo that a bimode
phone is a mobile device, and the DECT base station is a stationary terminal,
the bimode phone and DECT base do not ‘establish’ a short range
connection as that phrase is described in the ‘298 Patent Specification.” PO
Resp. 14. Patent Owner asserts that “establishing” is setting up or
configuring as opposed to initiating. Id. at 14–15 (citing Atlas IP, LLC v.
Medtronic, Inc., 809 F.3d 599, 605–06 (Fed. Cir. 2015) (determining, in an
unrelated case, that “establish” means “set up” rather than “initiate”)).
Additionally, Patent Owner asserts that the ’298 patent Specification uses
the short-range connection between the mobile device and the stationary
terminal to facilitate “transparent handoffs” in which the user is assumed to
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be “away from the stationary terminal” when a short-range connection
cannot be made. Id. at 15–16.
Petitioner contends “just like a Bluetooth device, the DECT mobile
phone can be ‘paired’ with a DECT base station to establish a trusted
relationship in advance.” Reply 7 (citing Pet. 39-40). Petitioner further
contends “[t]he uncontested evidence of record is that an actual DECT radio
communication link, i.e., the claimed ‘communication link,’ is not
‘established’ unless and until the devices are within the 300 foot DECT
radio range.” Id. (citing Pet. at 37–40 (discussing the radio ranges of the
systems); Ex. 1052 ¶ 11 (Houh declaration in support of Reply)). We agree.
Establishing a connection can be associated with pairing a mobile phone
with a DECT stationary terminal. In that way, losing the connection is an
indication that the mobile phone is away from the DECT stationary terminal,
similar to how Bluetooth is described in the specification.
In fact, Patent Owner admits “Charbonnier states that the handsets 6,
8 are paired, and therefore connected by radio link to the respective DECT
bases thereof 5, 7 . . . .” Sur-Reply 10. Nevertheless, Patent Owner asserts
“Charbonnier does not teach or suggest when or how this pairing is
accomplished.” Id. at 10–11. To the extent that Patent Owner requests
some higher level of detail regarding specifically how a pairing would be
accomplished, we determine that such detail is not required. Cf., In re
Fisher, 427 F.2d 833, 839 (CCPA 1970) (indicating patents in the
mechanical or electrical arts involve predictable factors compared to the
more unpredictable chemical and biological arts); cf. also Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“a
patent need not teach, and preferably omits, what is well known in the art”).
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We are persuaded that Petitioner’s contentions are sufficient.
Also, according to Patent Owner, the DECT bimode phone does not
comprise a mobile device for the reasons discussed above associated with
Patent Owner’s construction of that term. Id. at 14, 7–9. Patent Owner’s
arguments do not undermine Petitioner’s showing. As we discussed above
with regard to claim construction, supra Sec. II.B, we do not adopt Patent
Owner’s construction of “mobile device,” nor its implicit constructions.
Therefore, we find unavailing Patent Owner’s argument that DECT bimode
phone (mobile phone 6 shown in Figure 1 above) does not comprise a
mobile device.
For the foregoing reasons, we find Petitioner’s arguments and the
evidence of record to be sufficient for the purposes of showing this
limitation by a preponderance of the evidence.
“opening a listening port on the proximate mobile device to receive
communications through a pagemode messaging service”
Petitioner establishes by a preponderance of the evidence that
Charbonnier and the SMS Specification teach “opening a listening port on
the proximate mobile device to receive communications through a pagemode
messaging service,” as recited in claims 1 and 6. Pet. 40–41; Ex. 1028 ¶¶ 8,
37, 48, Figs. 1, 2, claims 3, 10; Ex. 1002 ¶¶ 102–105. For example,
Charbonnier discloses the proximate mobile device (phone 8) receiving
communications (SMS invitation messages) through a page-mode messaging
service (SMS service on GSM network 102) and the SMS Specification
discloses opening a listening port (opening an SMS port) by associating
SMS ports with applications, just like TCP ports. Pet. 40–41.
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“receiving . . . an invitation message . . .”
Petitioner establishes by a preponderance of the evidence that
Charbonnier and the SMS Specification teach “receiving, at the listening
port and through the page-mode messaging service, an invitation message
from the initiating remote device, wherein such invitation message
comprises a network address and listening port related to the initiating
remote device,” as recited in claims 1 and 6. Pet. 42–46; Ex. 1028 ¶¶ 8, 37,
48, Figs. 1, 2, claims 3, 10; Ex. 1002 ¶¶ 106–115. For example, Petitioner
contends it would have been obvious to a person having ordinary skill in the
art to include in the SMS message the listening port (destination TCP port)
related to the initiating remote device (phone 6) along with the IP address
(IP1). Pet. 43–46.
“transmitting the network address and listening port”
Petitioner establishes by a preponderance of the evidence that
Charbonnier and the DECT Speakerphone teaches “transmitting the network
address and listening port received by the proximate mobile device to the
stationary terminal though the short-range wireless technology whereupon
the stationary terminal receives the network address and listening port,
transmits a response to the network address and listening port related to the
initiating remote device,” as recited in claims 1 and 6. Pet. 46–48; Ex. 1028
¶¶ 20, 24–27, 37, 40, 48, 52, Figs. 1, 2, claims 3, 10; Ex. 1002 ¶¶ 116–123;
Ex. 1031, Figs. 1, 9–10 (DECT ESTI TS 102 265 v.1.1.1); Ex. 1032, 124
(DECT ETSI EN 301 649 v.1.3.1). For example, Petitioner contends, in a
configuration of Charbonnier in which Charbonnier’s programmable logic
blocks for establishing Internet communication are internal to the DECT
base station 7, it would have been obvious that mobile phone 8 would have
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transmitted the destination network address (IP1) and TCP port to the DECT
base station 7 using other DECT protocols, so that the Internet
communication block in the DECT base station 7 can create, address, and
transmit the TCP/IP response to mobile phone 6. Pet. 49 (citing Ex. 1028
¶ 52). Additionally, Petitioner contends it would have been obvious to also
receive the listening port (TCP port), either in the properly addressed header
of the TCP/IP response (in a configuration where the programmable logic
blocks for establishing Internet communication are internal to the mobile
phones) or via the DECT protocols so that the DECT base station 7 can
create and properly address the TCP/IP response (in a configuration where
the programmable logic blocks for establishing Internet communication are
internal to the DECT base station 7). Id. at 49–50. Petitioner further
contends the IP1 and TCP port are “related to mobile phone 6” as they
uniquely identify the addressable communication socket or transport address
for mobile phone 6. Id. at 50.
“whereupon the stationary terminal . . . establishes a virtual reliable
connection with the initiating remote device for data communications”
Petitioner establishes by a preponderance of the evidence that
Charbonnier and the DECT Speakerphone teaches “whereupon the
stationary terminal . . . establishes a virtual reliable connection with the
initiating remote device for data communications,” as recited in claims 1 and
6. Pet. 46–48; Ex. 1028 ¶¶ 20, 24–27, 37, 40, 48, 52, Figs. 1, 2, claims 3,
10; Ex. 1002 ¶¶ 116–125; Ex. 1031, Figs. 1, 9–10; Ex. 1032, 124. For
example, Petitioner contends in a configuration of Charbonnier in which
Charbonnier’s programmable logic blocks for establishing Internet
communication are internal to the DECT base station 7, the TCP/IP
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connection with the initiating remote device (phone 6) terminates at DECT
base station 7, with the connection between mobile phone 8 and DECT base
station 7 using other DECT protocols. Pet. 52. Although, Petitioner relies
on another configuration (termed “the first configuration” in the Petition),
we rely on this configuration (termed “the second configuration” in the
Petition) where the endpoints of the virtual reliable connection are the
stationary terminal (DECT base station 7) and mobile phone 6 for the
purpose of this decision.
For this limitation, Petitioner argues Charbonnier’s DECT base
station 7 (stationary terminal) establishes a TCP/IP connection (virtual
reliable connection) with mobile phone 6 (initiating remote device) for data
communications (for example, a VoIP call). Pet. 51–52. Figure 1 of
Charbonnier, as annotated by Petitioner and reproduced below, is
illustrative.
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Figure 1 shows a schematic of telephone facilities 1 and 2 connected to
Internet 100.
Ex. 1028, Fig. 1. Figure 1 shows a schematic of telephone facilities 1 and 2
connected to Internet 100. Figure 1 is annotated with green to show the path
of the connection between DECT base station 7 and mobile phone 6, which
connects though STN network 101, access provider 4, Internet 100, access
provider 3, STN network 101, and DECT base station 5. Relying on the
declaration of Dr. Houh, Petitioner explains:
In the first configuration, the DECT base station 7 establishes a
TCP/IP connection with the initiating remote device (phone 6)
that terminates at phone 6 and phone 8. In the second
configuration, the TCP/IP connection with the initiating remote
device (phone 6) terminates at DECT base station 7, with the
connection between mobile phone 8 and DECT base station 7
using other DECT protocols. Under each configuration, the
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DECT base station 7 has established a virtual reliable connection
(TCP/IP) with the initiating mobile device 6.
Pet. 52 (citing Ex. 1002 ¶125).
At issue is whether the asserted stationary terminal (DECT base
station 7), rather than some other element in Charbonnier, establishes a
connection with mobile device 6, as required by the claim. In particular,
Charbonnier describes a “method for establishing communication between
the facilities 1 and 2 through Internet 100.” Ex. 1028 ¶¶ 2, 5, 29, 39.
However, each of facility 1 and facility 2 includes both a mobile phone and
DECT base station. See, e.g., id. at Fig. 1. Patent Owner asserts
Charbonnier does not expressly disclose which element(s) within facility 2
establish(es) the connection between the two facilities. PO Resp. 18. Patent
Owner argues the communication ultimately is between mobile device 6 and
mobile device 8 and the DECT base station’s function of passing along or
originating packets to enable such communication does not establish the
connection between the mobile devices. Id. Patent Owner further argues
that, in the combination including DECT Speakerphone, Petitioner does not
provide any further analysis regarding how DECT base station 7 (asserted
stationary terminal) establishes the claimed connection. Id.
We find Petitioner’s showing that DECT base station 7 establishes a
virtual reliable connection is sufficient. DECT base station 7 is the interface
between facility 2 and the network (STN network), which suggests that
DECT base station 7 establishes a connection with the network. For
example, paragraph 52 of Charbonnier states “[t]he programmable logic
blocks for establishing communication through the Internet could be
incorporated into the base . . . .” Ex. 1028 ¶ 52; Pet. 36, 49. We find this
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evidence is sufficient to show this limitation by a preponderance of the
evidence.
Patent Owner asserts that in the “first configuration” wherein the
DECT base station 7 is alleged to “establish[] a TCP/IP connection with the
initiating remote device (phone 6),” the connection “terminates at phone 6
and phone 8,” which are the devices users are using to communicate with
one another. PO Resp. 18 (citing Pet. 52) (alteration in original). Patent
Owner asserts in the “second configuration,” Petitioner alleges that “the
TCP/IP connection with the initiating remote device (phone 6) terminates at
DECT base station 7,” but does not specify where the connection terminates
at the other end and admits that the communication between user devices
does not use the virtual reliable connection because “the connection between
mobile phone 8 and DECT base station 7 uses other DECT protocols.” Id. at
18–19. Finally, regarding combinations including the DECT Speakerphone
reference, Patent Owner asserts “the Petition does not address the nature of
any connection between mobile phone 6 and its DECT base station.” Id. at
19 (citing Pet. 65–67).
Thus, because the claim requires the established connection to be with
mobile phone 6, Patent Owner argues the connection in Charbonnier has not
been shown, in Petitioner’s contention or citations to evidence, to terminate
(or have an endpoint) at mobile phone 6 (asserted initiating remote device).
Id. at 19–26. We determine Petitioner’s showing of a virtual reliable
connection with mobile phone 6 is sufficient. Additionally, Charbonnier
states “[t]he programmable logic blocks for establishing communication
through the Internet could be incorporated into the base or else shared by the
base and the mobile telephone.” Ex. 1028 ¶ 52; Pet. 48–49, 52.
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Thus, the Petition established that the logic for communication via the
internet can be in the base station or the phone. According to Charbonnier,
“[d]uring telephone communication through the Internet 100 (step 29), the
facilities 1 and 2 send each other data packets through the Internet 100
according to TCP/IP standard protocols,” i.e. a virtual reliable connection.
Ex. 1028 ¶ 40(cited at Pet. 50). Thus, as recited in the claim, the stationary
terminal (DECT base station 7) . . . establishes a virtual reliable connection
with the initiating remote device (mobile phone 6) for data communications.
Additionally, Petitioner contends “when [an] audible warning signal is
provided (Ex. 1028 at [0039]), a user could optionally use the digital
speakerphone on the DECT base station 7 to conduct the VoIP call directly
with mobile phone 6 [and] mobile phone 8 would not continue to participate
in the data communication between DECT base station 7 and mobile phone
6.” Pet. 68 (citing Ex. 1002 ¶ 159). Thus, we are persuaded that this
suggests telephone communication over Internet 100 between facility 1 and
facility 2 involves, and may terminate at, mobile phone 6 and involves and
may be established by and terminate at DECT base station 7.
Patent Owner also argues that Petitioner’s argument in the Reply that
the claims do not require endpoints to the virtual reliable connection is
incorrect. Sur- Reply 15–17 (citing Reply 12–14). As explained above, we
determine that the Petitioner has shown that the stationary terminal (DECT
base station 7 . . . establishes a virtual reliable connection with the initiating
remote device (mobile phone 6) as to be endpoints of a virtual reliable
connection, thus this argument is moot.
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Patent Owner also argues:
Petitioner argues one of ordinary skill in the at “would have been
motivated to include a NAT [Network Address Translator]
traversal technique as disclosed in TURN19” because “a POSITA
would know that there is no way to know a priori whether the
mobile phones 6 and 8 are separated by NAT and, if so, what
type of NAT.” Pet. 58 (discussing ground 220). Thus, Petitioner
is arguing one of ordinary skill in the art would not have
implemented Charbonnier without using a NAT traversal
technique such as TURN, which contradicts Petitioner’s
assertions in Grounds 1, 3, 5, and 7. At the same time, however,
Petitioner admits that “the TURN server establishes a connection
and facilitates a data exchange session between the TURN client
and the peer,” rather than the stationary terminal establishing the
connection as claimed. Pet. 57.

PO Resp. 26–27. In other words, Patent Owner asserts TURN (ground 2,
Pet. 53–65) and Petitioner contentions regarding TURN, are necessary for
this ground (ground 3) and attempts to show that this ground fails because
either it does not describe the operation of a NAT or the NAT terminates the
virtual reliable connection so it does not terminate in the DECT base station
7. In the Decision to Institute, we rejected this argument as not being
relevant to the grounds that do not include TURN. Inst. Dec. 33. Patent
Owner further argues “[t]he Decision on Institution misapprehends that the
argument in the preceding paragraph regarding TURN pertains only to the
ground involving Charbonnier and TURN. See Decision 33.” PO Resp. 27.

19 Ex. 1035. TURN is asserted in grounds 2 and 4.
20 Ground 2 is obviousness of the claims over Charbonnier, RFC793, SMS
Specification, TURN and ground 4 is obviousness of the claims over
Charbonnier, RFC793, SMS Specification, TURN, and DECT
Speakerphone
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Patent Owner argues to the contrary, “that Petitioner’s arguments as to the
TURN reference would logically apply to any combination with
Charbonnier, such that one of ordinary skill in the art would not have
implemented Charbonnier without using a NAT traversal technique such as
TURN.” Id.
The Petition states “[because] service providers would often provide a
private IP address, rather than a public IP address because of the scarcity of
IPv4 addresses . . . if the DECT systems in Charbonnier are separated by
NAT” there would be motivation to use a known NAT transversal technique.
Pet. 57–58. We determine this is not a statement that a NAT is required in
all cases but rather a statement that a NAT could be involved. Thus, we
disagree that the combination asserted in ground 3 requires a description of a
NAT or that the inability to determine “whether the mobile phones 6 and 8
are separated by NAT and, if so, what type of NAT” is inconsistent with
Petitioner’s contentions in ground 3. See PO Resp. 26–27 (quoting Pet. 58);
Reply 16. Petitioner’s ground 3 does not mention a NAT. Thus, because
Patent Owner’s argument involves a different asserted ground of
unpatentability, it does not alter our analysis with regard to the ground we
address in this section of our Decision.
Patent Owner also argues, for the first time in the Sur-Reply, that the
“whereupon” language should be construed to mean certain action(s) are to
be performed based on the occurrence of certain other action(s), i.e. the
stationary terminal transmits a response to the network address and listening
port related to the initiating remote device, and establishes a virtual reliable
connection with the initiating remote device for data communications in
response to receiving the network address and listening port that was
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transmitted in an immediately preceding claim element. Sur-Reply 13.
Patent Owner then presents scenarios based on Petitioner’s contentions that
would allegedly fail to meet its new proposed claim construction. Id. at 13–
15. At the time of filing its Patent Owner Response, Patent Owner knew
Petitioner’s contentions regarding the whereupon clause and nothing in the
Reply purports to construe the whereupon clause in any way that would
open the door to a response from Patent Owner. See Pet. 20, 55–57. Thus,
Patent Owner cannot raise this new claim construction and arguments based
on that construction for the first time in a Sur-Reply. Arguments not
presented in the Patent Owner Response “will be deemed waived.” Practice
Guide Update at 15 (A “sur-reply that raises a new issue or belatedly
presents evidence may not be considered”; a sur-reply may “respond” to
arguments “raised” in the reply but “respond . . . does not mean embark in a
new direction with a new approach as compared to positions taken in a prior
filing.”)). We decline to adopt this construction or consider this argument.
For the reasons above, we are persuaded that Petitioner has shown by
a preponderance of the evidence that Charbonnier, RFC793, SMS
Specification, and DECT Speakerphone teach the limitations of claims 1 and
6.
b. Claims 3 and 8
Claim 3 depends from claim 1. Claim 8 depends from claim 6.
Claims 3 and 8 recite “the page-mode messaging service comprises SMS,”
which Petitioner sufficiently shows to be disclosed in Charbonnier by a
preponderance of the evidence. Pet. 52; Ex. 1028 ¶¶ 8, 37, 48, code (54),
Fig. 2, claims 3, 10; Ex. 1002 ¶ 126. For example, Petitioner contends
Charbonnier discloses that the page-mode messaging service is SMS. Pet.
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52. Patent Owner does not make arguments specific to this claim.
For the reasons above, we are persuaded that Petitioner has shown by
a preponderance of the evidence that Charbonnier, RFC793, SMS
Specification, and DECT Speakerphone teach the limitations of claims 3 and
8.
c. Claims 5 and 10
Claim 5 depends from claim 1. Claim 10 depends from claim 6.
Claims 5 and 10 recite “the network address comprises an IP address,”
which Petitioner sufficiently shows to be disclosed in Charbonnier by a
preponderance of the evidence. Pet. 52; Ex. 1028 ¶¶ 35, 37, 48, code (54),
Fig. 2; Ex. 1002 ¶ 127. For example, Petitioner contends Charbonnier
discloses “IP address is a computer address on the Internet 100 which can be
fixed or dynamic.” Pet. 52 (quoting Ex. 1028 ¶ 35). Patent Owner does not
make arguments specific to this claim.
For the reasons above, we are persuaded that Petitioner has shown by
a preponderance of the evidence that Charbonnier, RFC793, SMS
Specification, and DECT Speakerphone teach the limitations of claims 5 and
10.
D. Obviousness of Claims over Charbonnier, RFC793, SMS Specification
(ground 1)
Petitioner contends that claims 1, 3, 5, 6, 8, and 10 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Charbonnier, RFC793, SMS
Specification. Pet. 26. This ground, not including the DECT Speakerphone
reference, challenges claims we have already determined are unpatentable
based on the ground including the DECT Speakerphone (i.e., ground 3).
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Thus, this Decision addresses all claims challenged. See 35 U.S.C. §
318(a) (“If an inter partes review is instituted and not dismissed under this
chapter, the Patent Trial and Appeal Board shall issue a final written
decision with respect to the patentability of any patent claim challenged by
the petitioner and any new claim added under section 316(d).”).
In addition, Petitioner’s challenge without the DECT Speakerphone
hinges on the same issues as the grounds already addressed, because Patent
Owner’s argument against the ground 3 is based on Patent Owner’s
arguments regarding ground 1. See PO Resp. 13–27.
Accordingly, in the circumstances of this case, we decline to address
the challenges presented in Petitioner’s ground 1.
E. Obviousness of Claims over Charbonnier, RFC793, SMS
Specification, TURN (ground 2) and Obviousness of Claims over
Charbonnier, RFC793, SMS Specification, TURN, and DECT Speakerphone
(ground 4)
The grounds including TURN (i.e., grounds 2 and 4) challenge claims
we have already determined are unpatentable based on the ground including
the DECT Speakerphone (i.e., ground 3). Thus, this Decision addresses all
claims challenged. See 35 U.S.C. § 318(a) (“If an inter partes review is
instituted and not dismissed under this chapter, the Patent Trial and Appeal
Board shall issue a final written decision with respect to the patentability of
any patent claim challenged by the petitioner and any new claim added
under section 316(d).”).
Accordingly, in the circumstances of this case, we decline to address
the challenges presented in Petitioner’s grounds 2 and 4.
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F. Obviousness of Claims the Combination of Charbonnier, RFC793, SMS
Specification, DECT Speakerphone, and Lee (ground 7)
Petitioner contends that claims 4 and 9 are unpatentable under 35
U.S.C. § 103(a) as obvious over of Charbonnier, RFC793, SMS
Specification, DECT Speakerphone, and Lee. Pet. 8. To support its
contentions, Petitioner provides explanations as to how the prior art
allegedly teaches each claim limitation. Id. at 68–73. Lee (Ex. 1006)
Lee is a United States Patent Application titled, “Method and
Apparatus for Digital Cellular Internet Voice Communications.” Ex. 1006,
code (54). Lee discloses that the GSM cellular wireless network system
supports TCP/IP communications. Id. at Fig. 2 (Digital Cellular Network
62), 3:1–12 (data rates are sufficient); 4:46–54 (GSM and others), 14:55–65
(TCP/IP), 15:48–63 (TCP/IP).
Analysis
Petitioner identifies where it asserts each recitation of claims 4 and 9
are taught in the asserted prior art references, and sets forth a rationale to
combine the references. Pet. 69–73. Claims 4 and 9 are dependent from
claims 1 and 6 (respectively) and Petitioner’s contentions regarding these
dependent claims are based on its contention’s relating to the independent
claims from which these claims depend.
Petitioner argues it would have been obvious to modify Charbonnier’s
GSM network 102 to include the GSM network supported TCP/IP based
communications as taught by Lee. Id. at 70. We find persuasive Petitioner’s
rationale for the combination because would have known that the disclosure
in Lee that the GSM network supported TCP/IP was consistent with the
standards that defined the GSM network. Id. (citing Ex. 1033, 6 (GSM EN
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301 113 v.6.1.1); Ex. 1002 ¶ 164). We are persuaded Petitioner has shown
that a person of ordinary skill in the art would have had a reasonable
expectation of success in modifying Charbonnier’s GSM network 102 to
include the GSM network supported TCP/IP based communications as
taught by Lee. Id.
“the cellular wireless network system supports TCP/IP based
communications”
Petitioner establishes by a preponderance of the evidence that
Charbonnier and Lee teach “the cellular wireless network system supports
TCP/IP based communications,” as recited in claims 4 and 9. Pet. 70–71;
Ex. 1028 ¶¶ 10, 15, Fig. 1; Ex. 1002 ¶¶ 165–167. For example, Charbonnier
states that the GSM network supports data communications and Lee
discloses that the GSM network supports TCP/IP based communications, for
example, the H.225 and H.245 TCP/IP communications within the H.323
VoIP protocol. Pet. 70.
“the listening port comprises a TCP port”
Petitioner establishes by a preponderance of the evidence that
Charbonnier and Lee teach “the listening port comprises a TCP port,” as
recited in claims 4 and 9. Pet. 71; Ex. 1002 ¶¶ 168–169. For example,
Petitioner contends it would have been obvious for “the listening port [to
comprise] a TCP port” in order to receive the TCP-based response taught by
Charbonnier as taught by RFC793. Pet. 71.
“the virtual reliable connection comprises a TCP connection”
Petitioner establishes by a preponderance of the evidence that
Charbonnier and Lee teach “the virtual reliable connection comprises a TCP
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connection,” as recited in claims 4 and 9. Pet. 72–73; Ex. 1028 ¶ 53; Ex.
1006, 3:1–35, 4:46–54, 6:10–8:11, 8:1–10:3, 14:55–65, 16:61–17:6, Fig. 2;
Ex. 1002 ¶¶ 168–169. For example, Petitioner contends Lee, like
Charbonnier, discloses using SMS invitations and TCP/IP responses to
establish VoIP communications. Pet. 71.
For the reasons above, we are persuaded that Petitioner has shown by
a preponderance of the evidence that Charbonnier, RFC793, SMS
Specification, and DECT Speakerphone, and Lee teach the limitations of
claims 4 and 9.
G. Obviousness of Claims over Charbonnier, RFC793, SMS Specification,
Lee (ground 5), Obviousness of Claims over Charbonnier, RFC793, SMS
Specification, TURN, and Lee (ground 6), Obviousness of Claims over
Charbonnier, RFC793, SMS Specification, TURN, DECT Speakerphone,
and Lee (ground 8)
Here, the grounds including TURN (i.e., grounds 6 and 8) challenge
claims we have already determined are unpatentable based on the ground
including the DECT Speakerphone (i.e., ground 7). Also, the ground not
including the DECT Speakerphone (i.e., ground 5) challenge claims we have
already determined are unpatentable based on the ground including the
DECT Speakerphone (i.e., ground 7). Thus, this Decision addresses all
claims challenged. See 35 U.S.C. § 318(a) (“If an inter partes review is
instituted and not dismissed under this chapter, the Patent Trial and Appeal
Board shall issue a final written decision with respect to the patentability of
any patent claim challenged by the petitioner and any new claim added
under section 316(d).”) .
Accordingly, in the circumstances of this case, we decline to address
the challenges presented in Petitioner’s grounds 5, 6, and 8.
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IV. CONSTITUTIONAL CHALLANGES
Patent Owner asserts adjudication of the challenged patent violates the
United States Constitution because (1) “the Arthrex decision’s remedy
(invalidation of the statutory limitations on removal of APJs) impermissibly
re-writes the statutes governing APJs.” Sur-Reply 18. Patent Owner,
therefore asserts “only Congress can fix the IPR statutory scheme, and this
case must be dismissed.” Id. at 21.
We note that this argument was raised for the first time in the Sur-
Reply. We decline to consider Patent Owner’s arguments; in spite of Patent
Owner’s disagreement with the decision, the issue has been addressed by the
Federal Circuit’s decision in Arthrex v. Smith & Nephew, 947 F.3d 1320,
1337–38 (Fed. Cir. 2019) (addressing an appointments clause challenge),
cert. granted sub nom United States v. Arthrex, Inc. (U.S. October 13, 2020)
(No. 19-1434).
V. CONCLUSION
For the foregoing reasons, we determine Petitioner has demonstrated,
by a preponderance of the evidence, the unpatentability of claims 1, 3–5, 6,
8–10 of the ’298 patent.21

21 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).
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VI. ORDER
Accordingly, it is
ORDERED that claims 1, 3–5, 6, 8–10 of U.S. Patent No. 8,964,298
B2 are unpatentable; and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.
In summary:
Claim(s) 35 U.S.C. § Reference(s)/Basis
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
1, 3, 5, 6,
8, 1022
103(a) Charbonnier,
RFC793, SMS
Specification

22 We need not reach the question of whether Petitioner has shown by a
preponderance of the evidence that the combination of Charbonnier,
RFC793, and SMS Specification render claims 1, 3, 5, 6, 8, and 10
unpatentable (Ground 1) as Petitioner has met its burden of demonstrating
by a preponderance of the evidence that claims 1, 3, 5, 6, 8, and 10 are
unpatentable over the combination of Charbonnier, RFC793, SMS
Specification, and DECT Speakerphone.
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Claim(s) 35 U.S.C. § Reference(s)/Basis
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
1, 3, 5, 6,
8, 1023
103(a) Charbonnier,
RFC793, SMS
Specification,
TURN

1, 3, 5, 6,
8, 1024
103(a) Charbonnier,
RFC793, SMS
Specification,
DECT
Speakerphone
1, 3, 5, 6, 8,
10

1, 3, 5, 6,
8, 10
103(a) Charbonnier,
RFC793, SMS
Specification,
TURN, and DECT
Speakerphone

23 We need not reach the question of whether Petitioner has shown by a
preponderance of the evidence that the combination of Charbonnier,
RFC793, SMS Specification, and TURN render claims 1, 3, 5, 6, 8, and 10
unpatentable (Ground 2) as Petitioner has met its burden of demonstrating
by a preponderance of the evidence that claims 1, 3, 5, 6, 8, and 10 are
unpatentable over the combination of Charbonnier, RFC793, SMS
Specification, and DECT Speakerphone.
24 We need not reach the question of whether Petitioner has shown by a
preponderance of the evidence that the combination of Charbonnier,
RFC793, SMS Specification, TURN, and DECT Speakerphone render
claims 1, 3, 5, 6, 8, and 10 unpatentable (Ground 4) as Petitioner has met its
burden of demonstrating by a preponderance of the evidence that claims 1,
3, 5, 6, 8, and 10 are unpatentable over the combination of Charbonnier,
RFC793, SMS Specification, and DECT Speakerphone.
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Claim(s) 35 U.S.C. § Reference(s)/Basis
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
4, 925 103(a) Charbonnier,
RFC793, SMS
Specification, Lee

4, 926 103(a) Charbonnier,
RFC793, SMS
Specification,
TURN, and Lee

4, 9 103(a) Charbonnier,
RFC793, SMS
Specification,
DECT
Speakerphone, Lee
4, 9

25 We need not reach the question of whether Petitioner has shown by a
preponderance of the evidence that the combination of Charbonnier,
RFC793, SMS Specification, and Lee Speakerphone render claims 4 and 9
unpatentable (Ground 5) as Petitioner has met its burden of demonstrating
by a preponderance of the evidence that claims 4 and 9 are unpatentable over
the combination of Charbonnier, RFC793, SMS Specification, DECT
Speakerphone, and Lee.
26 We need not reach the question of whether Petitioner has shown by a
preponderance of the evidence that the combination of Charbonnier,
RFC793, SMS Specification, TURN, and Lee render claims 4 and 9
unpatentable (Ground 6) as Petitioner has met its burden of demonstrating
by a preponderance of the evidence that claims 4 and 9 are unpatentable over
the combination of Charbonnier, RFC793, SMS Specification, DECT
Speakerphone, and Lee.
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Claim(s) 35 U.S.C. § Reference(s)/Basis
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
4, 927 103(a) Charbonnier,
RFC793, SMS
Specification,
TURN, DECT
Speakerphone, Lee

Overall
Outcome
1, 3–6, 8–10

27 We need not reach the question of whether Petitioner has shown by a
preponderance of the evidence that the combination of Charbonnier,
RFC793, SMS Specification, TURN, DECT Speakerphone, and Lee render
claims 4 and 9 unpatentable (Ground 8) as Petitioner has met its burden of
demonstrating by a preponderance of the evidence that claims 4 and 9 are
unpatentable over the combination of Charbonnier, RFC793, SMS
Specification, DECT Speakerphone, and Lee.
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For PETITIONER:

Brian Erickson
Brian.erickson@dlapiper.com

James Heintz
Jim.heintz@dlapiper.com

For PATENT OWNER:

Ryan Loveless
ryan@etheridgelaw.com

Brett Mangrum
brett@etheridgelaw.com

James Etheridge
jim@etheridgelaw.com

Jeffrey Huang
jeff@etheridgelaw.com