Uniloc 2017 LLC

Patent Trials and Appeals Board

Nov 27, 2020

IPR2019-01026 (P.T.A.B. Nov. 27, 2020)

Trials@uspto.gov Paper 20
571-272-7882 Date: November 27, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORP.
Petitioner,

v.

UNILOC 2017 LLC,
Patent Owner.
____________

IPR2019-01026
Patent 6,993,049 B2
____________

Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
Administrative Patent Judges.

BAER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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Patent 6,993,049 B2
2
Microsoft Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”),
requesting an inter partes review of claims 11 and 12 (the “challenged
claims”) of U.S. Patent No. 6,993,049 B2 (Ex. 1001, “the ’049 Patent”).
Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary Response to the
Petition (Paper 6, “Prelim. Resp.”). Upon consideration of the Petition and
Preliminary Response, we instituted inter partes review of all challenged
claims on all grounds raised. Paper 7 (“Dec. Inst.”).
Patent Owner filed a Response to the Petition (Paper 9, “PO Resp.”)
and Petitioner filed a Reply (Paper 10, “Pet. Reply”). Patent Owner filed a
Sur-Reply (Paper 12, “PO Sur-Reply”). An oral hearing was held on
September 10, 2020, and the hearing transcript is included in the record. See
Paper 19 (“Tr.”).
In our Scheduling Order, we notified the parties that “any arguments
not raised in the [Patent Owner] response may be deemed waived.” See
Paper 8, 7; see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,766 (Aug. 14, 2012) (“The patent owner response . . . should identify all
the involved claims that are believed to be patentable and state the basis for
that belief.”). Patent Owner argues that it “does not concede, and
specifically denies, that there is any legitimacy to any arguments in the
instant Petition that are not specifically addressed” in its Patent Owner
Response. PO Resp. 27 n.5. We decline to speculate as to what Patent
Owner considers to be not legitimate in the Petition. Any arguments for
patentability not raised in the Patent Owner Response are deemed waived.
We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
set forth below, we find Petitioner has shown by a preponderance of
evidence that claims 11 and 12 of the ’049 patent are unpatentable.
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A. RELATED PROCEEDINGS
The parties identify the following related matters:
Uniloc 2017 LLC v. HTC America, Inc., 2:18-cv-01727 (W.D.
Wash.), filed November 30, 2018; Uniloc 2017 LLC v. Motorola Mobility,
LLC, 1:18-cv-01840 (D. Del.), filed November 20, 2018; Uniloc 2017 LLC
v. ZTE, Inc. et al., 3:18-cv03063 (N.D. Tex.), filed November 17, 2018;
Uniloc 2017 LLC v. Blackberry Corporation, 3:18-cv-03068 (N.D. Tex.),
filed November 17, 2018; Uniloc USA Inc., et al. v. LG Electronics USA
Inc., et al., 5:18-cv-06738 (N.D. Cal.), filed November 6, 2018; Uniloc USA
Inc., et al., v. ZTE (USA) Inc., et al., 3:18-cv-02839 (N.D. Tex.) filed
October 24, 2018; Uniloc 2017 LLC v. Microsoft Corporation, 8:18-cv-
01279 (C.D. Cal.), filed July 24, 2018; Uniloc USA, Inc. v. ZTE (USA), Inc.,
2:18-cv-00307 (E.D. Tex.), filed July 23, 2018; Uniloc USA Inc. v.
Blackberry Corporation, 3:18-cv-01885 (N.D. Tex.), filed July 23, 2018;
Uniloc USA, Inc., v. Huawei Device USA, Inc., 2:18-cv-00074 (E.D. Tex.),
filed March 13, 2018; Uniloc USA Inc. v. LG Electronics USA Inc., 3:18-cv-
00559 (N.D. Tex.), filed March 9, 2018; Uniloc USA, Inc. v. Logitech, Inc.,
5:18-cv-01304 (N.D. Cal.), filed February 28, 2018; Uniloc USA, Inc. v.
Samsung Electronics America, Inc., 2:18-cv-00040; Apple Inc., et al. v.
Uniloc 2017 LLC, PTAB IPR2019-00251. Pet. ix–x; Paper 3, 2.
B. THE ’049 PATENT
The ’049 patent is directed to a communication system comprising a
primary station and one or more secondary stations. Ex. 1001, code (57).
The primary station broadcasts a series of inquiry messages, and adds to the
inquiry messages an additional data field for polling secondary stations. Id.
This system is useful for communications between the stations without
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requiring a permanently active link, such as is common with the Bluetooth
communications protocol. Id.
C. ILLUSTRATIVE CLAIM
Petitioner challenges claims 11 and 12 of the ’049 Patent. Claim 11 is
the only independent challenged claim and is reproduced below:
11. A method of operating a communication system comprising
a primary station and at least one secondary station, the method
comprising the primary station broadcasting a series of inquiry
messages, each in the form of a plurality of predetermined data
fields arranged according to a first communications protocol,
and adding to an inquiry message prior to transmission an
additional data field for polling at least one secondary station,
and further comprising the at least one polled secondary station
determining when an additional data field has been added to the
plurality of data fields, determining whether it has been polled
from the additional data field and responding to a poll when it
has data for transmission to the primary station.
Ex. 1001, 8:35–47.
D. PRIOR ART AND ASSERTED GROUNDS
Petitioner asserts the following grounds of unpatentability. Pet. 2.
Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
11, 12 103
Larsson2, Bluetooth
Specification3, RFC8264

1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103.
See Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). As the application
that issued as the ’049 patent was filed before the effective date of the
relevant amendments, the pre-AIA version of § 103 applies.
2 U.S. Patent No. 6,704,293 B1 (iss. Dec. 6, 1999) (Ex. 1004, “Larsson”).
3 Bluetooth™ Core Specification Vol. 1, ver. 1.0 B (pub. Dec. 1, 1999)
(Ex. 1005, “Bluetooth Specification”).
4 David C. Plummer, An Ethernet Address Resolution Protocol,
IETF Request for Comments No. 826 (Pub. Nov. 1982) (Ex. 1006,
“RFC826”).
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Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
11, 12 § 103 802.11
5
I. ANALYSIS
A. LEVEL OF SKILL IN THE ART
Petitioner asserts that a skilled artisan would have had “a Master’s
Degree in electrical or computer engineering with a focus in communication
systems or, alternatively, a Bachelor’s Degree in electrical or computer
engineering and at least two years of experience in wireless communication
systems.” Pet. 10. In addition, according to Petitioner, “[a]dditional
education in a relevant field, or industry experience may compensate for a
deficit in one of the other aspects of the requirements stated above.” Id.
Patent Owner does not contest or offer its own formulation for a skilled
artisan. PO Resp. 4. We agree with and adopt Petitioner’s proposal because
it is consistent with the ’049 patent, as well as the problems and solutions in
the prior art of record. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501
F.3d 1254, 1256 (Fed. Cir. 2007).
B. CLAIM CONSTRUCTION
In inter partes reviews, we interpret claims “using the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this
standard, we construe claims “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. Only claim

5 ANSI/IEEE Std 802.11, Part 11: Wireless LAN Medium Access
Control (MAC) and Physical Layer (PHY) Specifications
(pub. Aug. 20, 1999) (Ex. 1007, “802.11”).
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terms that are in controversy need to be construed and only to the extent
necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
Patent Owner proposes we construe “additional data field” as “an
extra data field appended to the end of an inquiry message.” PO Resp. 6.
Patent Owner further argues that the claimed “inquiry message” should be
limited to “a specific type of message used, at least in part, to discover other
devices in the vicinity which may request to join a piconet.” Id. at 8–9.
Petitioner argues Patent Owner’s constructions are incorrect because they
improperly import limitations from preferred embodiments in the
Specification. See Pet. Reply 1–2, 3.
The parties’ arguments related to these terms impact only Petitioner’s
first unpatentability ground involving Larsson. See PO Resp. 11–12; 14–17;
Pet. Reply 7–16. Because we do not address that ground for the reasons
discussed below, see infra section I.D.2, we do not need to address the
parties’ arguments related to construing “additional data field” and “inquiry
message.”
C. ASSERTED PRIOR ART
1. 802.11 (Ex. 1007)
802.11 is an IEEE standard that specifies “[t]he medium access
control (MAC) and physical characteristics for wireless local area networks
(LANs).” Ex. 1007, iii. The network includes a basic service set (BSS),
which is “[a] set of stations controlled by a single coordination function.”
Id. at 3. To communicate with other stations, a station uses a scan function
to “determin[e] the characteristics of the available BSSs.” Id. at 101.
“Active scanning involves the generation of Probe frames and the
subsequent processing of received Probe Response frames.” Id. at 126. A
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typical broadcast probe request message seeks a response from any BSS and
does not include the address of a specific SSID. Ex. 1003 ¶ 43 (citing
Ex. 1007, 126, Fig. 66). If a device wishes to probe a specific BSS,
however, then it includes the SSID of the specifically-targeted BSS during
the active scanning process. Id. (citing Ex. 1007, 126).
D. OBVIOUSNESS ANALYSIS
1. Obviousness over 802.11
Petitioner asserts that claims 11 and 12 would have been obvious in
view of 802.11. Pet. 40. Based on Petitioner’s analysis and for the reasons
explained below, we find Petitioner has shown by a preponderance of
evidence that claims 11 and 12 would have been obvious over 802.11.
a. “adding . . . an additional data field”
Petitioner explains that 802.11 describes a local wireless network with
different stations (STAs) communicating with one another according to a
protocol. Id. at 40. “802.11 specifies that, as part of the active scanning
process used to join a network, an STA broadcasts ‘Probe Requests,’” that
include “predetermined data fields arranged according to the 802.11 wireless
LAN protocol.” Id. at 46 (quoting Ex. 1007, 126); id. at 46–47 (citing
Ex. 1007, 45, Fig. 23).
Petitioner explains that 802.11 teaches the key “adding to an inquiry
message prior to transmission an additional data field for polling at least one
secondary station” limitation because it teaches
[a] Probe Request message is one of two types. A “broadcast”
type seeks responses from all available access point stations, and
is indicated by a “0 length” or null SSID. Another type of Probe
Request, used when the station polls a specific access point, adds
an additional data field, namely the SSID of that AP. In the latter
type of probe request, which might be called a “targeted” probe
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request, the added SSID of the targeted station is “an additional
data field for polling” that station.
Id. at 48 (citing Ex. 1003 ¶¶ 101–104).
Patent Owner argues that 802.11 does not teach the claimed adding-
an-additional-data-field step because a broadcast probe request’s zero-length
SSID information field is still an existing, predetermined field, and thus the
SSID information field in a targeted probe request cannot be an additional
data field. PO Resp. 18–19. In addition, because 802.11’s zero-length SSID
field “conveys information,” the targeted probe request’s non-zero-length
field is not an additional data field. Id. at 20.
We agree with Petitioner that 802.11’s targeted probe request includes
an additional data field, as compared to a broadcast probe request. As
Petitioner’s expert, Dr. Rysavy, explains, “[a] POSITA would understand
that ‘0 length’ means that nothing is included for this SSID field, i.e., there
is no SSID field.” Ex. 1003 ¶ 102; see Ex. 1028 ¶¶ 40–47 (explaining that a
zero-length field means there is nothing coded for the field); Ex. 1029, 11
(explaining that “[a] data field can be nonexistent (of zero length) in certain
kinds of messages”). On the other side, Patent Owner presents no evidence
beyond attorney argument that one skilled in the art would have understood
that a zero-length SSID information field is an existing field. In short,
802.11’s broadcast probe requests include nothing that corresponds to the
SSID information field, whereas 802.11’s targeted probe requests have an
SSID information field. Thus, the targeted probe requests have an additional
data field, as claim 11 requires.
Patent Owner’s second argument—that “a 0 length SSID information
field conveys information,” PO Resp. 20—does not undermine our finding
that 802.11’s targeted probe requests have an additional data field as
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compared to its broadcast probe requests. As Petitioner explains, “even if
the absence of a field of encoded data from a probe may communicate
information to a station, the field is still absent.” Pet. Reply 22. We agree
with Petitioner that communicating information via the nonexistence of a
field is irrelevant to whether a nonexistent SSID information field is an
existing field. Accordingly, for the reasons explained above, we agree with
Petitioner that a person of ordinary skill in the art would have understood
that 802.11 discloses “adding to an inquiry message prior to transmission an
additional data field for polling at least one secondary station,” as the
challenged claims require. See Pet. 48–49; Pet. Reply 18–23.
b. Undisputed Limitations in Claim 11
Claim 11 recites “[a] method of operating a communication system
comprising a primary station and at least one secondary station.” Petitioner
asserts that 802.11 teaches this limitation because “it describes operating
wireless local area networks that connect . . . stations within a local area”
and “[t]he 802.11 stations, i.e. ‘STAs,’ are the claimed primary and
secondary stations.” Pet. 43, 44 (citing Ex. 1007, 1, 5; Ex. 1003 ¶ 94)
(internal quotation marks omitted). Patent Owner does not dispute
Petitioner’s assertions in this regard. We have reviewed Petitioner’s
arguments and the underlying evidence cited in support and are persuaded
Petitioner sufficiently establishes that 802.11 teaches “[a] method of
operating a communication system comprising a primary station and at least
one secondary station.”
Claim 11 further recites “the method comprising the primary station
broadcasting a series of inquiry messages.” Petitioner asserts that 802.11
teaches this limitation because it teaches “an STA broadcasts ‘Probe
Requests’ . . . with the expectation of receiving a ‘Probe Response.’” Id.
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at 44–45 (citing Ex. 1007, 126–27). Patent Owner does not dispute
Petitioner’s assertions in this regard. We have reviewed Petitioner’s
arguments and the underlying evidence cited in support and are persuaded
Petitioner sufficiently establishes 802.11 teaches “the method comprising the
primary station broadcasting a series of inquiry messages.”
Claim 11 requires that each broadcast message must be “in the form
of a plurality of predetermined data fields arranged according to a first
communications protocol.” Petitioner asserts that 802.11 teaches this
limitation because it teaches that each Probe Request frame “has
predetermined data fields arranged according to the 802.11 wireless LAN
protocol, as specified in Figure 23.” Id. at 46–47 (citing Ex. 1007, 22, 45).
Patent Owner does not dispute Petitioner’s assertions in this regard. We
have reviewed Petitioner’s arguments and the underlying evidence cited in
support and are persuaded Petitioner sufficiently establishes 802.11 teaches
“each in the form of a plurality of predetermined data fields arranged
according to a first communications protocol.”
Claim 11 recites “the at least one polled secondary station determining
when an additional data field has been added to the plurality of data fields,
determining whether it has been polled from the additional data field and
responding to a poll when it has data for transmission to the primary
station.” Petitioner asserts that 802.11 teaches this limitation because
“802.11 specifies that stations ‘receiving Probe Request frames shall
respond with a probe response only if the SSID in the probe request . . .
matches the specific SSID of the STA.’” Id. at 50 (citing Ex. 1007, 126). In
addition, Petitioner explains, “to determine if the SSID of the probe request
‘matches the SSID of the STA,’ a receiving station necessarily must
(i) determine that the SSID (‘additional data field’) has been added to the
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probe request’s data fields and (ii) determine that it has been polled from the
additional data field, i.e., determine that the received SSID matches its
own.” Id. (citing Ex. 103 ¶¶ 105–106). Patent Owner does not dispute
Petitioner’s assertions in this regard. We have reviewed Petitioner’s
arguments and the underlying evidence cited in support and are persuaded
Petitioner sufficiently establishes 802.11 teaches “the at least one polled
secondary station determining when an additional data field has been added
to the plurality of data fields, determining whether it has been polled from
the additional data field and responding to a poll when it has data for
transmission to the primary station.”
For the reasons explained above, Petitioner has proved by a
preponderance of the evidence that claim 11 would have been obvious over
802.11.
c. Claim 12
Claim 12 depends from claim 11 and additionally requires “wherein
not all inquiry messages have an additional data field for polling a secondary
station added to them.” Petitioner asserts that 802.11 discloses that “[p]robe
requests of the broadcast type lack [the] additional data field . . . and thus not
all inquiry messages have an additional data field for polling.” Id. at 52
(citing Ex. 1003 ¶ 108). Patent Owner does not dispute Petitioner’s
assertions in this regard. We have reviewed Petitioner’s arguments and the
underlying evidence cited in support and are persuaded Petitioner
sufficiently establishes 802.11 teaches “wherein not all inquiry messages
have an additional data field for polling a secondary station added to them.”
2. Other Asserted Grounds
Petitioner asserts that claims 11 and 12 would have been obvious over
Larsson, Bluetooth Specification, and RFC826. Id. at 24–39. Because we
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find that Petitioner has demonstrated claims 11 and 12 would have been
obvious over 802.11, it is unnecessary for us to reach the remaining grounds
of unpatentability proposed by Petitioner. See Beloit Corp. v. Valmet Oy,
742 F.2d 1421, 1423 (Fed. Cir. 1984) (holding that once a dispositive issue
is decided, there is no need to decide other potentially dispositive issues);
Formlabs Inc. v. Envisiontec, Inc., IPR2017-01258, Paper 41 at 17 (PTAB
Oct. 5, 2018).
II. CONSTITUTIONAL CHALLENGE TO INTER PARTES REVIEW
Patent Owner argues that Administrative Patent Judges “are principal
officers under the Appointments Clause of the Constitution” “but
undisputably are not appointed through the constitutionally-mandated
mechanism of appointment for principal officers.” PO Resp. 23. The
Federal Circuit, however, addressed this issue and devised a remedy in
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), cert.
granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13,
2020). Patent Owner argues that the remedy devised by Federal Circuit
“impermissibly rewrites the statutes governing APJs.” PO Resp. 24. We are
bound by the Federal Circuit’s decision in Arthrex. See 941 F.3d at 1337
(“This as-applied severance . . . cures the constitutional violation.”); see also
Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020)
(Moore, J., concurring in denial of rehearing) (“Because the APJs were
constitutionally appointed as of the implementation of the severance, inter
partes review decisions going forward were no longer rendered by
unconstitutional panels.”). Accordingly, we do not consider this issue any
further.
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III. CONCLUSION6
We have reviewed the Petition, Patent Owner Response, Petitioner
Reply, and Patent Owner Sur-Reply. We have considered all of the
evidence and arguments presented by Petitioner and Patent Owner, and have
weighed and assessed the entirety of the evidence as a whole.
We determine, on this record, that Petitioner has demonstrated by a
preponderance of evidence that claims 11 and 12 of the ’049 patent are
unpatentable over 802.11.

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).
7 As explained above, we do not reach this ground because Petitioner has
demonstrated that claims 11 and 12 would have been obvious over 802.11.
See Beloit, 742 F.2d at 1423 (holding that once a dispositive issue is
decided, there is no need to decide other potentially dispositive issues);
Formlabs, Paper 41 at 17.
Claims
35 U.S.C.
§
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
11, 12 103 Larsson, Bluetooth
Specification,
RFC8267

11, 12 103 802.11 11, 12
Overall
Outcome
11, 12
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IV. ORDER
It is hereby:
ORDERED that claims 11 and 12 of the ’049 patent are unpatentable
under 35 U.S.C. § 103(a) as obvious over 802.11; and
FURTHER ORDERED that this Decision is final, and a party to this
proceeding seeking judicial review of the Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER:
Andrew Mason
Todd Siegel
Joseph Jakubek
John Lunsford
Sarah Jelsema
andrew.mason@klarquist.com
todd.siegel@klarquist.com
joseph.jakubek@klarquist.com
john.lunsford@klarquist.com
sarah.jelsema@klarquist.com

PATENT OWNER:
Ryan Loveless
Brett Mangrum
James Etheridge
Jeffrey Huang
ryan@etheridgelaw.com
brett@etheridgelaw.com
jim@etheridgelaw.com
jeff@etheridgelaw.com