Uniloc 2017 LLC

Patent Trials and Appeals Board

Nov 4, 2020

IPR2019-01188 (P.T.A.B. Nov. 4, 2020)

Trials@uspto.gov Paper 27
Tel: 571-272-7822 Entered: November 4, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORPORATION,
Petitioner,
v.
UNILOC 2017 LLC,
Patent Owner.
____________

IPR2019-01188
Patent 6,664,891 B2
____________

Before MINN CHUNG, CHARLES J. BOUDREAU, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

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

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I. INTRODUCTION
Microsoft Corporation (“Petitioner”) filed a Petition seeking
institution of inter partes review of claims 1–4, 8, and 14–16 of U.S. Patent
No. 6,664,891 B2 (Ex. 1001, “the ’891 patent”). Paper 2 (“Pet.”). Uniloc
2017 LLC (“Patent Owner”) filed a Patent Owner Preliminary Response.
Paper 6. After reviewing these papers, we determined that Petitioner had
demonstrated a reasonable likelihood of success in proving that claims 1–4,
8, and 14–16 of the ’891 patent are unpatentable, and we instituted an inter
partes review of all challenged claims on all grounds set forth in the
Petition. Paper 9 (“Institution Decision” or “Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 13, “PO
Resp.”), Petitioner filed a Reply (Paper 14, “Pet. Reply”), and Patent Owner
filed a Sur-Reply (Paper 19, “PO Sur-Reply”).1 An oral hearing in this
proceeding was held on August 27, 2020, and a transcript of the hearing is
included in the record (Paper 26, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, Petitioner has shown by a preponderance
of the evidence that claims 1–4, 8, and 14–16 of the ’891 patent are
unpatentable under 35 U.S.C. § 103(a).

1 In the Patent Owner’s Sur-Reply, all pages are numbered with Roman
numerals. To improve readability of citations, this Decision cites to pages in
that paper by the corresponding decimal numbers.
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A. Related Matters
The parties identify several civil actions involving the ’891 patent that
are or were pending in district court, including Uniloc 2017 LLC v.
Microsoft Corporation, No. 8:18-cv-02224 (C.D. Cal.). Pet. ix; see PO
Resp. 7–8; Paper 8 (Petitioner’s Updated Mandatory Notice).
The ’891 patent is also the subject of a petition for inter partes review
filed by Cisco Systems, Inc. in IPR2019-00965 (“the 965 IPR”), which was
instituted by the Board. Pet. ix; PO Resp. 8; Cisco Sys., Inc. v. Uniloc 2017
LLC, IPR2019-00965, Paper 7 (PTAB Nov. 8, 2019) (Institution Decision in
the 965 IPR). A final written decision in the 965 IPR is being issued
concurrently with this Decision.
In addition, the ’891 patent was previously the subject of two petitions
for inter partes review filed by Samsung Electronics America, Inc.
(“Samsung”). IPR2020-00227, Paper 1; IPR2020-00340, Paper 1.
Samsung’s petitions were substantively identical to the petitions filed in this
proceeding and in the 965 IPR, and the Board instituted those reviews and
joined Samsung to this proceeding and to the 965 IPR. Paper 15 (Samsung
Joinder Order); 965 IPR, Paper 10 (PTAB Apr. 1, 2020) (Samsung Joinder
Order). Later, Samsung and Patent Owner filed joint motions to terminate
Samsung from the proceedings, which were granted, terminating Samsung
from this proceeding and the 965 IPR and terminating Samsung’s
proceedings (IPR2020-00227 and IPR2020-00340). Paper 20 (Samsung
Termination Order); 965 IPR, Paper 17 (PTAB June 30, 2020) (Samsung
Termination Order).
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B. The Petition’s Asserted Grounds
Petitioner asserts the following grounds of unpatentability (Pet. 2):
Claim(s)
Challenged 35 U.S.C. § Reference(s)/Basis
1–4, 8, 14–16 103(a) 2 Larsson,
3 the Bluetooth
Specification4
1–3, 8, 14–16 103(a) 802.115
Petitioner submits the testimony of Mr. Peter Rysavy to support its
contentions. Ex. 1003; Ex. 1029 (reply declaration).6
C. Summary of the ’891 Patent
The ’891 patent is titled “Data Delivery Through Portable Devices.”
Ex. 1001, code (54). The background of the Specification describes

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 285–88 (2011), revised 35 U.S.C. §§ 102 and 103 effective
March 16, 2013. Because the application for the challenged patent was filed
before March 16, 2013, we refer to the pre-AIA versions of §§ 102 and 103.
3 U.S. Patent No. 6,704,293 B1 to Larsson et al., filed on December 6, 1999,
issued March 9, 2004 (Ex. 1004).
4 “Specification of the Bluetooth System,” Volume 1, Bluetooth, v1.0B,
dated December 1, 1999 (Ex. 1005).
5 ANSI/IEEE Std 802.11, Part 11: Wireless LAN Medium Access Control
(MAC) and Physical Layer (PHY) Specifications, dated August 20, 1999
(Ex. 1007).
6 Patent Owner’s Sur-Reply contends that all exhibits submitted with
Petitioner’s Reply (which includes Exhibit 1029) are entitled to no weight
because they are untimely and not adequately addressed in Petitioner’s
Reply. PO Sur-Reply 1–2. However, Patent Owner provides no analysis to
explain why any of these exhibits are untimely or otherwise improper, and
we are not persuaded by Patent Owner’s conclusory assertions.
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“‘Context-Aware’ (CA) mobile telephones” that “provide location-specific
information” or services. Id. at 1:17–20. For example, a CA device may
allow for an “electronic business card exchange” or facilitate connections of
people with “complementary business interests” by exchanging data with
other nearby CA devices. Id. at 1:66–2:3. The ’891 patent, predicting that
Bluetooth would become a common technology, explains that mobile
devices could exchange such data after establishing “a two-way Bluetooth
connection” via the full handshaking process, but also explains this would
have various disadvantages, including the time required to establish the
connection and the limited number of devices able to participate. Id. at 2:6–
33.
The ’891 patent instead proposes adding to each “inquiry message” an
additional data field that carries information, thereby allowing data to be
broadcast among devices “without requiring either the sending or receiving
user device to join a piconet.” Ex. 1001, 2:47–64; see id. at 4:56–63
(explaining this “solves the limitations” of establishing a full Bluetooth
connection). The preferred embodiment describes the invention in the
context of the Bluetooth protocol. Id. at 3:4–6, 4:46–51. But see id. at 4:51–
55 (“[T]he general invention . . . is not restricted to Bluetooth devices, and is
applicable to other communications arrangements, in particular frequency
hopping systems.”). The Specification explains that a Bluetooth device
issues a series of inquiry messages when it “wants to discover other
Bluetooth devices” with which it may join a piconet. Id. at 9:4–11; see id.
at 9:6–57 (describing Bluetooth inquiry procedure). According to the
’891 patent, “the applicants have recognized that it is possible to piggy-back
a broadcast channel on the inquiry messages” in a way that is compatible
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with conventional Bluetooth systems because only “CA terminals need read
the broadcast channel messages.” Id. at 8:62–9:3.
The application for the ’891 patent was filed on June 11, 2001,
claiming the benefit of foreign applications filed on August 15, 2000, and
June 26, 2000. Ex. 1001, codes (22), (30).
D. Challenged Claims
The Petition challenges claims 1–4, 8, and 14–16 of the ’891 patent.
Of these, claims 1 and 14 are independent; claims 2–4 and 8 depend from
claim 1;7 and claims 15 and 16 depend from claim 14.
Representative claim 14 is reproduced below:
14. A method for enabling the user of a first portable
communications device to broadcast messages to the users of
other portable communications devices,
wherein said first portable communications device
broadcasts a series of inquiry messages each in the form of a
plurality of predetermined data fields arranged according to a
first communications protocol, and
wherein said first portable communications device adds
to each inquiry message prior to transmission an additional data
field carrying broadcast message data,
such that suitably configured other portable devices may
receive the transmitted inquiry messages and read the broadcast
data from said additional data field.
Ex. 1001, 13:15–26 (carriage returns added).

7 Patent Owner incorrectly refers to claim 8 as an independent claim. PO
Resp. 52; but see id. at 5 (not listing claim 8 as an independent claim). In
any event, our Decision is not affected by whether claim 8 is classified as an
independent or dependent claim.
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II. ANALYSIS
A. Principles of Law
In an inter partes review, the petitioner has the burden of proving
unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
A patent 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 legal question of obviousness is resolved on the basis of
underlying factual determinations including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
objective evidence of obviousness or nonobviousness.8 Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). One seeking to
establish obviousness based on more than one reference also must articulate
sufficient reasoning with rational underpinnings to combine teachings. See
KSR, 550 U.S. at 418.
B. The Level of Ordinary Skill in the Art
Petitioner asserts that the level of ordinary skill in the art corresponds
to “a Master’s Degree in electrical or computer engineering with a focus in

8 The record does not include allegations or evidence of objective indicia of
obviousness or nonobviousness.
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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. 12 (citing Ex. 1003 ¶ 26). Patent Owner
agrees with this articulation provided that the qualifier “at least” is removed.
PO Resp. 8, 10–11; see also Inst. Dec. 10 (adopting Petitioner’s articulation
after removing qualifier “at least”). Petitioner does not dispute the omission
of this qualifier. Pet. Reply 11.
We adopt this modified articulation: the level of ordinary skill in the
art corresponds to 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 two years of experience in wireless
communication systems.9 This articulation of the level of skill in the art is
supported by the testimony of Mr. Rysavy and is consistent with the
’891 patent specification and the asserted prior art. See Ruiz v. A.B. Chance
Co., 234 F.3d 654, 666–667 (Fed. Cir. 2000) (identifying factors); see also
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (The “level of
skill in the art is a prism or lens through which a judge, jury, or the Board
views the prior art and the claimed invention.”).
In addition, the Petition states that an ordinary artisan would have had
particular knowledge of certain wireless protocols and would have followed
the activities of and been aware of the documents published by the
organizations developing those protocols. Pet. 13 (citing Ex. 1003 ¶ 26).

9 In the 965 IPR, we adopt a slightly different definition of a person of
ordinary skill in the art. Both definitions are substantially the same for
purposes of these proceedings. In particular, our analysis and conclusions in
this Decision would be the same regardless of which definition is adopted.
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Patent Owner argues that these statements improperly supply an ordinary
artisan with “highly detailed knowledge” (PO Resp. 8–10) and that, as a
result, the Petition fails to show unpatentability (id. at 11, 21–24). We are
not persuaded that these statements are problematic,10 but we have not relied
on any of them in this proceeding. For example, Petitioner’s grounds do not
rely on any allegedly problematic statements (see infra § II.D.3), and we do
not include any of them in our articulation of the level of ordinary skill in the
art. Accordingly, Patent Owner’s critique is dismissed as moot.
C. Claim Construction
Because the Petition was filed after November 13, 2018, we interpret
claim terms using the same claim construction standard as is used in federal
district court. Changes to the Claim Construction Standard for Interpreting
Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); see
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)
(summarizing claim construction standard).
In the Petition, Petitioner “contends that no claim terms require
specific construction to resolve the unpatentability issues presented.”

10 Mr. Rysavy testified, for example, that a person of ordinary skill in the art
would have been aware of, and had a working knowledge of, the Bluetooth
Specification (Ex. 1005) and 802.11 (Ex. 1007). Ex. 1003 ¶ 26. Mr.
Rysavy’s testimony is credible, as it is logical and consistent with the cited
evidence, and Patent Owner identifies no evidence or rationale to the
contrary (see Tr. 49:7–50:4 (declining to clarify)). Accordingly, even if
Patent Owner’s critique was not moot, we would not have been persuaded
by it.
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Pet. 13. Patent Owner advances constructions for the terms “additional data
field” and “inquiry message,” which each appear in all challenged
independent claims (PO Resp. 13–20), and Patent Owner requests that the
Board “adopt the ordinary and customary meaning” for all other terms (id.
at 20).
We address the parties’ disputes regarding the two claim terms
identified by Patent Owner, and we determine that no other claim terms need
to be construed for this proceeding. See, e.g., Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(“[W]e need only construe terms ‘that are in controversy, and only to the
extent necessary to resolve the controversy . . . .’” (quoting Vivid Techs., Inc.
v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
1. Additional Data Field
Patent Owner advocates two definitions for the term “additional data
field.” PO Resp. 13–19. First, Patent Owner argues that it “should be
construed to mean ‘an extra data field appended to the end of an inquiry
message.’” Id. at 15 (emphasis omitted). Second, Patent Owner argues that
it “should be construed as representing data not in the ‘first communications
protocol.’” Id. at 18. We address these issues in turn.
a. The additional data field need not be appended “to
the end” of an inquiry message.
Patent Owner argues that the “’891 patent repeatedly and consistently
characterizes the term ‘additional data field’ to be ‘an extra data field
appended to the end of an inquiry message.’” PO Resp. 13. However,
Patent Owner supports this argument by reproducing a figure and quoting
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passages that appear nowhere in the ’891 patent. In particular, Patent Owner
reproduces “Figure 5” and quotes a passage of text (id. at 13–15 (citing
Ex. 1001, Fig. 5, 4:59–5:11)); however, neither of these appears in the
Specification (compare id., with Ex. 1001). Similarly, Patent Owner points
to the discussion of “Human/machine Interface Devices (HIDs),” but the
Specification includes no mention of this term. Compare PO Resp. 17–18
(citing Ex. 1001, 1:9–18, 5:6–9, 5:11–17), with Ex. 1001. These arguments,
accordingly, are not persuasive.
Patent Owner also points to a figure that does appear in the
’891 patent (Figure 6) and its associated description. PO Resp. 15–16
(quoting Ex. 1001, 9:58–67 and reproducing Figure 6). Figure 6 shows an
“ID packet” followed by “CA data,” and the quoted description states that
“[b]y adding the [extra] field [with CA data] to the end of the inquiry
message, it will be appreciated that non-CA receivers can ignore it without
modification.” Ex. 1001, Fig. 6, 9:58–67. From this, Patent Owner
concludes that appending the extra data field to the end of the inquiry
message is “essential” to the invention. PO Resp. 16. We disagree.
“[T]he words of a claim ‘are generally given their ordinary and
customary meaning,’” which 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.”
Phillips, 415 F.3d at 1312–13 (quoting Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he person of ordinary skill
in the art is deemed to read the claim term not only in the context of the
particular claim in which the disputed term appears, but in the context of the
entire patent, including the specification.” Id. at 1313. A term’s ordinary
meaning may be supplanted when the specification “reveal[s] a special
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definition given to a claim term by the patentee” or when the specification
“reveal[s] an intentional disclaimer, or disavowal, of claim scope.” Id.
at 1316.
We perceive (and Patent Owner identifies) no justification for
importing a requirement that the “additional data field” be added to the end
of the inquiry message. Although the Specification describes an
embodiment where the “additional data field” is added to the end of the
inquiry message (e.g., Ex. 1001, 9:58–67, Fig. 6), it also indicates that this
particular placement is optional, not required (e.g., id. at 4:5–10 (explaining
that an additional data field “may” be added at the end of an inquiry message
“and/or” an indication that denotes an additional data field may be
included)). Patent Owner argues that adding the additional data field to the
end of the inquiry message is “essential” because the Specification identifies
a benefit of doing so. PO Resp. 16 (citing Ex. 1001, 9:58–67). However,
this passing reference is insufficient to redefine the term “additional data
field” in the manner proposed by Patent Owner. See Aventis Pharma S.A. v.
Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012) (“‘[I]t is . . . not enough
that the only embodiments, or all of the embodiments, contain a particular
limitation’ to limit a claim term beyond its ordinary meaning.” (quoting
Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir.
2012)); Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379,
1381 (Fed. Cir. 2008) (“A patentee may act as its own lexicographer and
assign to a term a unique definition that is different from its ordinary and
customary meaning; however, a patentee must clearly express that intent in
the written description.”).
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Moreover, the doctrine of claim differentiation gives rise to a
presumption that Patent Owner’s proposed construction is improper.
Claim 15 depends from claim 14 and further recites “the first portable
communications device adds said additional data field at the end of a
respective inquiry message.” Ex. 1001, 13:27–29 (emphasis added); see
also id. at 12:28–30 (including commensurate limitation in claim 2, which
depends from claim 1). The existence of this dependent claim strongly
indicates that the additional data field recited in claim 14 need not be added
to the end of an inquiry message. See Phillips, 415 F.3d at 1315 (“[T]he
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.”); SunRace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1303
(Fed. Cir. 2003) (explaining that the presumption arising from the doctrine
of claim differentiation “is especially strong when the limitation in dispute is
the only meaningful difference between an independent and dependent
claim, and one party is urging that the limitation in the dependent claim
should be read into the independent claim”). Patent Owner identifies (and
we perceive) no justification for departing from this presumption. As a
result, Patent Owner’s reliance on Inpro II Licensing, S.A.R.L. v. T-Mobile
USA, Inc., 450 F.3d 1350, 1354–55 (Fed. Cir. 2006) is misplaced. See PO
Resp. 16–18.
Accordingly, we conclude that the claimed “additional data field”
need not be appended to the end of the inquiry message. Patent Owner’s
proposal also seeks to replace the claim term “additional” with the term
“extra” and the claim term “add[ed]” with the term “appended.” Compare
PO Resp. 15 (proposing “an extra data field appended to the end of an
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inquiry message”), with Ex. 1001, 12:23–24 (claim 1 reciting “add to each
inquiry message . . . an additional data field”), 13:22–23 (claim 14 reciting
“adds to each inquiry message . . . an additional data field”). However,
Patent Owner does not persuasively explain the need for either of these
alterations, so we decline to make them.
b. The additional data field is not in the inquiry message
specified by the first communications protocol.
In the Institution Decision, we preliminarily construed “additional
data field” as “a data field that is not in the first communications protocol.”
Inst. Dec. 15; see id. at 11–15 (providing analysis). Agreeing with this
aspect of our analysis, Patent Owner contends that the additional data field
“should be construed as representing data not in the ‘first communications
protocol.’” PO Resp. 18–19 (quoting Inst. Dec. 14–15).
In its Reply, Petitioner agrees that “the intrinsic record supports that
the additional data is not part of the ‘inquiry message’ specified by the first
communications protocol.” Pet. Reply 6. But, according to Petitioner, the
intrinsic record does not support construing this term such that the data field
cannot be a part of the first communications protocol itself. Id. at 4–5.
Petitioner also asserts that “[t]he specification does not exclude from the
alleged invention a protocol that specifies adding a data field to convey
additional information.” Id. at 5; see id. at 4 (“This does not foreclose the
protocol specifying additional data fields that, when added, change the
message and satisfy the claims (as with 802.11, and its broadcast and
targeted probe messages).”).
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Patent Owner responds:
As the Board correctly determined, there can be no question,
from at least the arrangement set forth in the claim language,
that the “additional data field” is added in addition to, and
hence must be distinct from, those “data fields” that are
collectively defined as being “arranged according to a first
communications protocol.” Petitioner’s erroneous
interpretation would subsume into one what the claim language
expressly distinguishes.
PO Sur-Reply 4 (quoting Inst. Dec. 14).
Having reviewed the parties’ arguments and the full record, we
conclude that an “additional data field” is not a part of the inquiry message
specified by the first communications protocol. As the Institution Decision
explained:
Representative claim 14 recites “inquiry messages each in the
form of a plurality of predetermined data fields arranged
according to a first communications protocol,” and the claim
then recites a separate “additional data field” that is added to
the inquiry message. Ex. 1001, 13:19–23. Claim 1 includes
essentially the same recitations. Id. at 12:19–24. This
arrangement suggests that the additional data field is not part of
the message specified by the first communications protocol.
See Phillips, 415 F.3d at 1314 (“[T]he context in which a term
is used in the asserted claim can be highly instructive.”).
Moreover, the Specification notes that the existing Bluetooth
protocol does not include a field for providing this type of
information (before the formation of a piconet), and in that
context, the Specification adds a data field to an inquiry
message that is not provided for in the standard. E.g., Ex. 1001,
8:31–66, 10:1–15. Thus, the claims and the Specification
indicate that the “additional data field” is not a part of the
inquiry message specified by the first communications protocol.
Inst. Dec. 14. Neither party disagrees with this analysis, and we adopt it in
this Decision.
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But, as Petitioner persuasively explains, our preliminary construction
in the Institution Decision also included another requirement. See Pet.
Reply 4–6; Tr. 18:17–26 (restating Petitioner’s argument). In particular, the
preliminary construction specified that the “additional data field” is “a data
field that is not in the first communications protocol” (Inst. Dec. 15
(emphasis added)), rather than a data field that “is not a part of the inquiry
message specified by the first communications protocol” (id. at 14 (emphasis
added)). As a result, under the preliminary construction, an “additional data
field” is a data field that is not part of the inquiry message specified by the
first communications protocol and is not elsewhere specified in that
protocol. We are persuaded that the Institution Decision did not provide
sufficient support for this additional requirement, and we perceive (and
Patent Owner identifies) no justification for it. Accordingly, we revise the
preliminary construction to remove this additional requirement.11
Accordingly, in this Decision, we construe the claim term “additional
data field,” recited in claims 1 and 14, to mean “a data field that is not part
of the inquiry message specified by the first communications protocol.”
2. Inquiry Message
Patent Owner contends that the “inquiry message” recited in all
challenged independent claims is “a message seeking a response for
identifying devices available for communication.” PO Resp. 20. Patent

11 To the degree there is any more to Petitioner’s argument (see Pet. Reply
4–5 (contending the Specification does not exclude a protocol that specifies
adding a data field to convey additional information)), Petitioner does not
sufficiently explain its argument or how it relates to the parties’ claim
construction dispute.
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Owner argues: (1) the ’891 patent “repeatedly and consistently describes”
the term in this manner and (2) a person of ordinary skill in the art “would
be very familiar with the Bluetooth protocol, which defines an ‘inquiry
message’ as a message transmitted in order to discover other Bluetooth
devices.” Id. (citing Ex. 1001;12 Ex. 1005, 897).
Petitioner responds that Patent Owner’s construction is improper
because “the ’891 patent unequivocally states that the alleged invention is
not restricted to Bluetooth.” Pet. Reply 6 (citing Ex. 1001, 3:4-6, 46-49).
Petitioner contends that a person of ordinary skill in the art would have
understood this term consistent with its ordinary meaning, e.g., “‘a query for
information’ or ‘a message seeking information.’” Id. at 7 (citing Ex. 1029
¶ 9). Petitioner also argues that neither the claims nor the Specification
support Patent Owner’s narrow construction. Id. at 7–8.
Patent Owner replies that Petitioner’s arguments are untimely because
the Petition failed to expressly construe this claim term. PO Sur-Reply 9. In
addition, Patent Owner faults Petitioner for not addressing “the district court
analysis of the ‘inquiry message’ term,” where “Patent Owner has simply
proposed that the Board adopt, verbatim, the court’s construction of ‘inquiry
message’ for purposes of this proceeding” and where the district court
rejected Petitioner’s proposal. Id. at 9–10 (citing Ex. 1027, 16–17
(“Markman Order”)).

12 Although Patent Owner cites the ’891 patent, the quoted material does not
appear at the cited locations. Compare PO Resp. 20 (citing Ex. 1001, 1:56–
57, 4:11–13, 4:23–26), with Ex. 1001. However, we located two of the three
quotes in the ’891 patent’s Specification (see Ex. 1001, 8:53–55, 9:6–8), and
we consider those passages in this Decision.
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Patent Owner is wrong on several important points. First, the
Markman Order cited by Patent Owner construed a different patent. See
Ex. 1027 (construing terms in U.S. Patent No. 6,993,049 (the “’049
patent”)). Patent Owner makes no mention of this discrepancy (see
generally Sur-Reply 9–11) and was unable to address it at oral argument
(Tr. 47:6–20). Consequently, because Patent Owner fails to explain why the
construction of terms in the ’049 patent should be considered in this
proceeding,13 we do not evaluate the contents of the Markman Order or
Patent Owner’s arguments relying upon it. See Emerson Elec. Co. v.
SIPCO, LLC, No. 2019-1301, 2020 WL 5816758, slip op. 18 (Fed. Cir. Sep.
30, 2020) (non-precedential) (“[T]he construction of a particular term in one
patent will not necessarily bear on the interpretation of the same term in a
subsequent patent because the factual context is different. The term may be
identical, but the intrinsic evidence is not.”).14

13 Petitioner also briefly relies on proceedings involving the ’049 patent, but
similarly fails to sufficiently explain the relevance of that patent. See Pet.
Reply 6 (arguing judicial estoppel based on Patent Owner’s arguments in the
district court case); Paper 23, 1 (identifying claim constructions adopted in
inter partes review of the ’049 patent); Tr. 52:6–53:14. This is not a
situation where the relevance is apparent from the patents themselves, such
as when one patent is a continuation of another. In fact, the ’049 and
’891 patents contain materially different disclosures, even though they have
some similarities (e.g., a shared inventor). Compare Ex. 1001, with
Ex. 1030 (’049 patent). Because the parties fail to establish that the ’049
patent is relevant, we consider neither the ’049 patent nor proceedings
involving it.
14 Moreover, Patent Owner first raised arguments based on the Markman
Order in its Sur-Reply, even though this order issued a year before Patent
Owner’s Response. See PO Resp. 20; Ex. 1027. This delay is improper, and
we deem these arguments to be waived to the extent they introduce a new
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Second, Petitioner’s arguments in the Reply are timely because they
respond to a claim construction dispute raised by Patent Owner. See
Consolidated Trial Practice Guide 44–45 (Nov. 2019) (“Consolidated
TPG”), available at https://www.uspto.gov/TrialPracticeGuideConsolidated
(“The petitioner may respond to any such new claim construction issues
raised by the patent owner, but cannot raise new claim construction issues
that were not previously raised in its petition.”).
Third, Patent Owner is wrong to suggest that the claimed “inquiry
message” is a Bluetooth inquiry message. See PO Resp. 20, 29–30.
Although the specification uses Bluetooth in its preferred embodiment, it
expressly states that the “invention . . . is not restricted to Bluetooth
devices.” Ex. 1001, 4:51–55; see id. at 3:4–6 (“Suitably, although not
essentially, the above-referenced first communications protocol comprises
Bluetooth messaging . . . .”). The claims also indicate that the invention is
not limited to Bluetooth: claim 1 specifies that each inquiry message is “in
the form of a plurality of predetermined data fields arranged according to a
first communications protocol,” and dependent claim 4 further specifies that
the communications protocol is Bluetooth. Id. at 12:15–27, 12:35–36; see
Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328, 1335 (Fed. Cir.
2007) (“An independent claim impliedly embraces more subject matter than
its narrower dependent claim.”). As a result, we conclude that a person of
ordinary skill in the art would understand the claim term “inquiry message”
to be broader than the “inquiry message” defined in Bluetooth.

basis for urging Patent Owner’s proposed construction rather than respond to
Petitioner’s opposing claim construction arguments.
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But that does not end our inquiry. Patent Owner contends that an
ordinary artisan’s understanding of an “inquiry message” would be informed
by Bluetooth’s inquiry message, and in particular, that he would understand
the claimed “inquiry message” similarly to be sent to identify devices
available for communication. See PO Resp. 20, 29–30. We disagree.
The intrinsic evidence does not support Patent Owner’s proposed
construction. The context of the claims specifies no particular meaning for
the term “inquiry message”: the claims reference the fields contained within
the inquiry message (and added to it), but provide no indication of its
purpose. Ex. 1001, 12:15–27, 13:15–26. The specification, likewise, does
not support Patent Owner’s narrow meaning. The preferred embodiment
includes Bluetooth’s inquiry message specifically, but as explained above,
the claims are not so limited. The specification does indicate that an inquiry
message is sent before a connection is established between a sender and a
recipient. See, e.g., id. at 2:60–64 (noting that adding information to inquiry
message means that the sending and receiving devices need not join a
piconet), 4:56–63 (explaining that use of “inquiry phase . . . solves the
limitations” of establishing a full Bluetooth connection). But the claims
recite an “inquiry message” generally, without specifying whether a
connection exists between the sender and the recipient.15 The prosecution
history includes no relevant discussion. See generally Ex. 1002.

15 Incidentally, Petitioner’s evidence shows that Larsson discloses that its
request for route (“RfR”) message is sent before a connection is established
between a sender and a recipient. See, e.g., Ex. 1004, 2:51–3:28, 4:5–8;
Ex. 1003 ¶ 63. But Patent Owner does not construe the term “inquiry
message” to be a message sent before a connection is established; rather,
Patent Owner argues that the inquiry message must “seek[] a response for
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Moreover, Patent Owner identifies (and we perceive) no extrinsic
evidence supporting Patent Owner’s position. Patent Owner points to
Petitioner’s declarant, who testifies that an ordinary artisan would have been
familiar with Bluetooth and its inquiry message, and to Bluetooth’s
definition of its inquiry message. PO Resp. 20, 29–30 (citing Ex. 1005, 897;
Ex. 1003 ¶ 26). However, as explained above, a person of ordinary skill in
the art would have understood the claimed “inquiry message” to be broader
than Bluetooth’s inquiry message. The cited evidence does not support
Patent Owner’s assertion that a person of ordinary skill in the art would
understand the claimed “inquiry message” to necessarily seek a response for
identifying devices available for communication, and Patent Owner’s
unsupported assertions are given little weight. See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments that are
unsupported by factual evidence are entitled to little probative value).
Thus, we agree with Petitioner that, in this proceeding, the term
“inquiry message” should be given its plain and ordinary meaning to a
person of ordinary skill in the art. Mr. Rysavy testifies that a person of
ordinary skill in the art would understand this term to refer generally to a
message that seeks information. Ex. 1029 ¶¶ 9, 11–14; see also Ex. 1003
¶ 63. Patent Owner identifies no evidence that contradicts Mr. Rysavy’s
testimony. We credit Mr. Rysavy’s testimony, as it is logical and supported
by the asserted rationale and evidence. Accordingly, we decline to construe
the claim term “inquiry message,” as Patent Owner requests, as “a message
seeking a response for identifying devices available for communication,”

identifying devices available for communication.” PO Resp. 20 (emphasis
added).
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and we construe this term in accordance with its plain and ordinary meaning,
which we determine to be a message that seeks information.
D. Obviousness in view of Larsson and the Bluetooth Specification
1. Overview of Larsson (Ex. 1004)16
Larsson is titled “Broadcast as a Triggering Mechanism for Route
Discovery in Ad-Hoc Networks.” Ex. 1004, code (54). Larsson seeks to
minimize the number of broadcast messages required for route discovery in
an ad-hoc network, such as a Bluetooth scatternet. Id. at 1:14–16, 5:36–47;
see id. at Fig. 3, 1:65–2:18 (explaining need for route discovery in Bluetooth
scatternet by illustrating a scatternet “formed by multiple independent and
unsynchronized piconets” and describing use of forwarding nodes to transfer
information from a source node in one piconet to a destination node in a
different piconet).
By way of background, Larsson explains that, in ad-hoc networks,
“nodes may change their location in the network.” Ex. 1004, 1:17–35, 3:37–
50. To send a message to a destination node, a source node must identify a
route to that destination. Id. at 2:51–3:25. So, if the route is not known, or
if the route is broken, a source node will first broadcast a request for route
message (“RfR message” or “route request message”) to its neighbor nodes.
Id. at 2:66–3:2, 3:25–27. Each node, after receiving a new RfR message,

16 Petitioner has shown by a preponderance of the evidence that Larsson
qualifies as prior art under 35 U.S.C. § 102(e). See Pet. 15. Larsson was
granted on an application filed December 6, 1999 (Ex. 1004, code (22)),
which is prior to the earliest potential priority date on the face of the
’891 patent, i.e., June 26, 2000 (Ex. 1001, code (30)). Patent Owner does
not dispute Larsson’s status as prior art.
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stores relevant information and rebroadcasts the RfR message to its neighbor
nodes. Id. at 3:14–16. Ultimately, the destination node receives the RfR
message and “send[s] a response back to the source node.” Id. at 3:16–23.
This response identifies the route, and the source node can then transmit the
original message. Id. at 3:23–25.
Larsson seeks to reduce the number of broadcast messages by placing
a particular type of broadcast message (i.e., one for which the source node
expects a reply) in an RfR message and transmitting the combined message
throughout the ad-hoc network. Ex. 1004, 4:5–16, 5:36–43. Larsson
explains that every broadcast message includes both a broadcast identifier
and a source address (e.g., the Bluetooth Device Address (BD_ADDR)) to
uniquely identify the broadcast. Id. at 5:51–60.
In Larsson’s exemplary operation, the “source node piggybacks the
[particular type of] broadcast message in a request for route broadcast
message.” Ex. 1004, 6:3–7; see id. at Fig. 6 (flowchart illustrating
operation). Then, “the source node broadcasts the request for route message
to its neighbor nodes.” Id. at 6:11–13. After receiving this request for route
message, each neighbor node “determines whether the piggybacked data
indicates that the node is the destination node.” Id. at 6:18–19, 6:45–46. If
not, the node “rebroadcasts the request for route message to its neighbor
nodes” after replacing the address. Id. at 6:46–57. But, if the node is the
destination node, it “piggyback[s] a reply message in [a] route response
message,” which is sent back to the source node along the route identified by
the relayed messages. Id. at 6:58–7:6; see also id. at Figs. 6a, 6b.
Larsson also describes an example embodiment where the
piggybacked broadcast message can be an address resolution protocol (ARP)
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message in an IP network.17 Ex. 1004, Fig. 7, 7:36–38 (describing “an
exemplary method for triggering route discovery in an IP network using
DHCP, name resolution, or ARP broadcast messages”); see id. at 7:16–35
(describing techniques to implement IP in a Bluetooth scatternet). For
example, Larsson’s source node can piggyback an ARP message in a
“network adaptation layer route request broadcast message.” Id. at 7:48–53.
To indicate that the route request message contains the ARP message, “a
piggyback indicator can be inserted in the network adaptation layer route
request broadcast message.” Id. at 7:53–58. Alternatively, in a protocol
with a fixed-length route request message, “a length indicator . . . will
implicitly indicate [whether] the request contains piggyback data.” Id.
at 7:58–61. The combined message is broadcast to neighboring nodes, who
each send the piggybacked data “to the higher protocol layers” and
determine whether it should “generate[] a reply message to the piggybacked
broadcast message.” Id. at 7:62–65, 8:8–14. If so, the node generates a
reply to the ARP message and piggybacks the reply in a “network adaptation
layer response message.” Id. at 8:19–24. Finally, Larsson teaches that, if
the source node does not receive a reply, it “issue[s] the broadcast again and
the method is repeated.” Id. at 8:50–55.

17 Larsson explains that Internet Protocol (IP) is a “networking protocol,”
and in this protocol, “three exemplary types of broadcast messages where
the source expects a reply are dynamic host configuration protocol (DHCP),
name resolution and address resolution protocol” (ARP). Ex. 1004, 3:51–
63. “ARP is used when the logical address of the node is known, e.g., the IP
address, but the hardware address, e.g., the Ethernet address of the node is
not known.” Id. at 3:60–63.
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2. Overview of the Bluetooth Specification (Ex. 1005)18
The Bluetooth Specification provides a wireless communication
protocol. Ex. 1005, 41. It supports connections between two units (i.e., “a
point-to-point connection”) and between several units (i.e., “a point-to-
multipoint connection”). Id. In either case, “units sharing the same channel
form a piconet,” where “[o]ne . . . unit acts as the master . . . whereas the
other unit(s) act as slave(s).” Id. at 41–42. “Multiple piconets with
overlapping coverage areas form a scatternet.” Id. at 42 (emphasis omitted).
The Bluetooth Specification shows the standard packet format in
Figure 4.1, which is reproduced below:

18 Petitioner has shown by a preponderance of the evidence that the
Bluetooth Specification qualifies as prior art under 35 U.S.C. § 102(a) and
(b). See Pet. 17–18. In particular, the record reflects that the Bluetooth
Specification was publicly available at least as early as May 31, 2000. See
Ex. 1003 ¶ 33; Ex. 1024; Ex. 1013, 5:35–39; Ex. 1014, 8:28–38. This date
is more than one year prior to the filing date of the ’891 patent (see
35 U.S.C. § 102(b); Ex. 1001, code (22)), and it is prior to the earliest
potential priority date of the patent on this record (see 35 U.S.C. § 102(a);
Ex. 1001, code (30)). Patent Owner does not dispute the Bluetooth
Specification’s status as prior art, but challenges its authenticity. PO
Resp. 24–26. Patent Owner waived this authenticity challenge by not timely
objecting to Exhibit 1005. See 37 C.F.R. § 42.64; Pet. Reply 14. But, even
if Patent Owner had preserved this argument, we would have been
persuaded that the Bluetooth Specification was sufficiently authenticated by
Mr. Rysavy. See Ex. 1003 ¶ 33; see also Ex. 1029 ¶¶ 18–24.
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As shown in Figure 4.1, above, packets include an “access code” and can
include a “header” and a “payload.” Ex. 1005, 47–48.
Each Bluetooth device “is allocated a unique 48-bit Bluetooth device
address (BD_ADDR).” Id. at 143. The format of BD_ADDR is shown in
Figure 13.1, which is reproduced below:

As shown in Figure 13.1, the BD_ADDR is comprised of three fields: LAP,
UAP, and NAP. Ex. 1005, 143. These fields correspond to a lower address
part, upper address part, and non-significant address part, respectively. Id.
3. Motivation to Combine Larsson and the Bluetooth Specification
Petitioner argues that a person of ordinary skill in the art would have
been motivated to combine Larsson and the Bluetooth Specification.
Pet. 20–23 (citing Ex. 1003 ¶¶ 44–51). In particular, Petitioner submits that
Larsson describes an invention “for use in a Bluetooth scatternet,” and
consequently, a person of ordinary skill in the art would have implemented
the teachings of Larsson using the “then-current Bluetooth Specification,”
i.e., Exhibit 1005. Id. at 20–21 (quoting Ex. 1004, 5:45–47; citing Ex. 1003
¶¶ 44–46; Ex. 1004, 1:14–16, 1:37–38). Second, according to Petitioner, a
person of ordinary skill in the art would have looked to the Bluetooth
Specification because Larsson “specifies use of the Bluetooth Device
Address (‘BD_ADDR’) . . . but does not provide BD_ADDR details other
than to say that it is ‘a globally unique 48 bit IEEE 802 address.’” Id. at 21
(quoting Ex. 1004, 5:51–60; citing Ex. 1003 ¶ 47; Ex. 1005, 143). Third,
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Petitioner contends that a person of ordinary skill would have implemented
the teachings of Larsson using the Bluetooth Specification because Larsson
“presumes a working knowledge of Bluetooth” and provides few details
regarding the contents of that protocol. Id. at 21–22 (citing Ex. 1003 ¶ 48).
Finally, Petitioner contends that using the Bluetooth Specification to
implement details of Larsson’s system would have yielded compatible and
predictable results. Id. at 22–23 (citing Ex. 1003 ¶¶ 49–50).
Patent Owner contends that Petitioner’s rationale to combine the
references is “dependent on the Petitioner’s improper highly detailed level of
skill in the art” and, thus, must fail. PO Resp. 22–23.
We are persuaded that a person of ordinary skill in the art would have
been motivated to combine Larsson and the Bluetooth Specification as
Petitioner proposes. Petitioner’s assertions and explanations are consistent
with and supported by the evidence cited by Petitioner. Larsson expressly
states that “the present invention is described as a route discovery technique
for use in a Bluetooth scatternet.” Ex. 1004, 5:45–47 (emphasis added).
Larsson references aspects of the Bluetooth protocol, such as the Bluetooth
Device Address (BD_ADDR), without providing extensive implementation
details. E.g., id. at 5:52–60. We are persuaded that, given Larsson’s
statements, a person of ordinary skill in the art would have consulted the
then-current Bluetooth specification. Mr. Rysavy testifies that the Bluetooth
Specification (Ex. 1005) was the then-current specification for the Bluetooth
protocol. Ex. 1003 ¶¶ 45–46. Mr. Rysavy’s testimony is credible, as it is
logical and consistent with the evidence of record. Accordingly, we are
persuaded that a person of ordinary skill in the art would have been
motivated to combine Larsson and the Bluetooth Specification.
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We disagree with Patent Owner’s argument that Petitioner’s
motivation to combine is predicated on Petitioner’s statements regarding the
knowledge of an ordinary artisan. See PO Resp. 22–23. A person of
ordinary skill in the art would have been motivated to combine Larsson with
the Bluetooth Specification given Larsson’s express reference to and
reliance on Bluetooth (as explained above), whether or not an ordinary
artisan previously had a working knowledge of the Bluetooth Specification
or followed its development. See supra § II.B (addressing level of ordinary
skill in the art).
Accordingly, we are persuaded that a person of ordinary skill in the
art would have been motivated to combine Larsson and the Bluetooth
Specification.
4. Independent Claims 1 and 14
We begin our analysis with independent claim 14. See supra § I.D
(identifying claim 14 as representative).
a. “A method for enabling the user of a first portable
communications device to broadcast messages to the users
of other portable communications devices”
The preamble of claim 14 recites, “A method for enabling the user of
a first portable communications device to broadcast messages to the users of
other portable communications devices . . . .” Petitioner asserts that, “[i]f
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the preamble is limiting, Larsson discloses it”19 (Pet. 23; see id. at 23–25),
and Patent Owner has not argued otherwise (see generally PO Resp.).
Petitioner’s assertions are supported by the cited evidence and are
persuasive. In particular, Larsson’s source node broadcasts messages to the
destination nodes, and these messages include a “broadcast message which
the source node expects a reply message” that is placed “in a broadcast
message which determines a route to the node which generates the reply
message.” E.g., Ex. 1004, 4:26–32; see id. at 1:36–45 (Bluetooth devices
can include PDAs or telephones), 1:46–2:7 (referring to Bluetooth devices as
“nodes”). Accordingly, we are persuaded that Larsson discloses the
preamble of claim 14.
b. “wherein said first portable communications device
broadcasts a series of inquiry messages”
Claim 14 recites “wherein said first portable communications device
broadcasts a series of inquiry messages.” Petitioner asserts that Larsson
teaches this limitation and renders it obvious. Pet. 25–26, 30–31. Petitioner
contends that Larsson discloses that the source node broadcasts RfR
messages to neighboring nodes. Id. at 25 (citing Ex. 1004, 2:66–3:2, 5:35–
7:15, Fig. 6a (step 615), Fig. 7a (step 715)). According to Petitioner,
Larsson’s RfR messages are inquiry messages if an inquiry message is
understood as a message that “seek[s] a response from specified devices or
inquire[s] about the ability to connect.” Id. at 30–31 (citing Ex. 1003 ¶ 63;
Ex. 1004, 2:66–3:2, 8:18–41, Figs. 6a, 6b, 7a, 7b, 8a, 8b). Petitioner also

19 Because Petitioner has shown sufficiently that the recitations in the
preamble are satisfied by Larsson, we need not determine whether the
preamble is limiting. See Vivid Techs., 200 F.3d at 803.
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submits that Larsson’s RfR messages teach “a series” of inquiry messages
because Larsson’s source node will rebroadcast the message if it fails to
receive a reply. Id. at 25–26 (citing Ex. 1004, 8:50–55). Moreover,
Petitioner argues that an ordinary artisan would have found it obvious to use
a series of RfR messages “to establish and re-establish routes to the various
nodes in the network.” Id. at 26 (citing Ex. 1003 ¶¶ 59–63; Ex. 1004, 3:12–
29).
Relying on its proposed construction of the term “inquiry message,”
Patent Owner contends that Larsson’s RfR messages fail to disclose inquiry
messages. PO Resp. 26–30. Patent Owner argues Larsson’s RfR message
“discover[s] a route to a known recipient device already joined to a piconet,
as opposed to discovering recipient devices that may seek to join.” Id. at 27
(citing Ex. 1004, Fig. 3, Abstract, 1:67–2:1, 4:23–25, 4:37–47, 5:36–37,
5:44–45). Patent Owner also argues that the Petition fails because it relies
on Mr. Rysavy’s testimony, which does not define “inquiry message” and
fails to reconcile his interpretation with the specific inquiry message
specified in Bluetooth. Id. at 28–29 (citing Ex. 1003 ¶ 63).
We are persuaded that Larsson’s RfR messages disclose the claimed
“inquiry messages.” As explained above, a person of ordinary skill in the art
would have understood the term “inquiry messages,” in accordance with its
plain and ordinary meaning, as messages that seek information, and not as
Patent Owner proposes. See supra § II.C.2. Applying that conclusion,
Larsson’s RfR messages teach the claimed “inquiry messages” because
Larsson’s RfR messages seek information. E.g., Ex. 1004, 4:5–22; see Pet.
Reply 15 (contending that Patent Owner does not dispute that Larsson
teaches claim term under this construction); see generally PO Sur-Reply 11–
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13 (no contention that Larsson fails to teach term under this construction).
Relatedly, we are not persuaded by Patent Owner’s generalized critiques of
Mr. Rysavy’s testimony because Mr. Rysavy was not required to provide an
express construction for “inquiry messages” (see Consolidated TPG 44–45)
and because the ’891 patent makes clear that this claim term is not limited to
Bluetooth’s inquiry message (see Ex. 1001, 3:4–6, 4:51–55).
In addition, even if we were to adopt Patent Owner’s proposed
construction (i.e., an “inquiry message” is “a message seeking a response for
identifying devices available for communication” (PO Resp. 20)), we would
still find that Larsson’s RfR messages disclose the claimed “inquiry
messages.” We agree with Petitioner that “[t]he whole premise of the RfR
messages is that a path to a destination device is either absent or ‘broken’”
(Pet. Reply 16), and this may occur when a node moves within (or leaves) a
network. See Ex. 1004, 3:25–28 (“In accordance with reactive routing, the
source node will only request a new route when the actual route being used
is broken.”), 3:37–40 (explaining that nodes change location in the network),
8:50–55 (noting that RfR message may not reach destination node). Thus, a
response to an RfR message indicates that the destination and intermediate
routing nodes are available for communication. Patent Owner asserts that
this is “plainly distinguishable” from its proposed construction (PO Sur-
Reply 12); however, Patent Owner fails to elaborate, and we do not perceive
the distinction. Patent Owner also argues that Larsson says nothing about
“whether the destination node itself is available for communication,”
implying that the relevant inquiry is a state or condition of the destination
node (PO Sur-Reply 12–13), but such a requirement appears nowhere in
Patent Owner’s proposed construction or in the claim.
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Finally, Petitioner’s assertions and explanations demonstrate that
Larsson also teaches the remainder of this limitation. In particular,
Larsson’s source node broadcasts an RfR message to neighboring nodes and
will rebroadcast the message if it does not receive a reply. E.g., Ex. 1004,
Fig. 6a (step 615), Fig. 7a (step 715), 5:61–6:17, 7:62–64, 8:50–55.
Accordingly, we are persuaded that Larsson teaches this claim
limitation.
c. “inquiry messages each in the form of a plurality of
predetermined data fields arranged according to a first
communications protocol”
Claim 14 recites “inquiry messages each in the form of a plurality of
predetermined data fields arranged according to a first communications
protocol.” Petitioner asserts that Larsson and the Bluetooth Specification, in
combination, render this limitation obvious (Pet. 26–30), and in its papers,
Patent Owner has not argued otherwise (see generally PO Resp.).
We are persuaded by Petitioner’s assertions and explanations for this
limitation. The combination of Larsson and the Bluetooth Specification
teaches or suggests various data fields for RfR messages. Larsson’s RfR
messages contain a source address, such as the Bluetooth Device Address
(BD_ADDR). Ex. 1004, 5:52–58. According to the Bluetooth
Specification, BD_ADDR includes three fields (LAP, UAP, and NAP).
Ex. 1005, 143. In addition, because Larsson uses Bluetooth as its underlying
communication protocol, a person of ordinary skill in the art would have
understood that Larsson’s RfR messages would be sent in the form of the
standard Bluetooth packet (which includes an access code, header, and
payload fields), with the substance of the RfR message contained in the
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payload. Ex. 1003 ¶¶ 67–68; see Ex. 1005, 47 (standard Bluetooth packet
format); Ex. 1004, 5:45–46 (“[T]he present invention is described as a route
discovery technique for use in a Bluetooth scatternet.”). We credit Mr.
Rysavy’s testimony regarding this limitation, as it is logical, clear, and
consistent with the evidence of record.
As a result, we are persuaded that Larsson and the Bluetooth
Specification render this limitation obvious for two reasons, each of which is
independently sufficient. First, RfR messages in the form of a plurality of
predetermined data fields arranged according to the Bluetooth protocol
would have been obvious to a person of ordinary skill in the art because
these messages, when transmitted, would have been formatted as a standard
Bluetooth packet with an access code, a header, and a payload field that
includes the substance of the RfR message. See Ex. 1003 ¶¶ 67–70; cf. PO
Resp. 40–41 (“The request for route broadcast message is clearly intended to
be a message for use in the Bluetooth scatternet . . . .”). Second, Larsson’s
RfR messages contain a plurality of predetermined data fields arranged
according to the Bluetooth protocol because they contain the BD_ADDR
fields (LAP, UAP, and NAP). See Ex. 1003 ¶¶ 64–66, 70.
At the oral hearing, Patent Owner presented new arguments regarding
this claim limitation that were not previously raised in its briefing. See
generally Tr. 27:12–37:11; also compare id. at 33:10–36:12 (citing PO
Resp. 26–30, 33–41; PO Sur-Reply 14),20 with PO Resp. 26–30, 33–41, and

20 As support, Patent Owner identifies nearly every page of its Response
arguing that Larsson and the Bluetooth Specification fail to teach or suggest
a limitation of claim 14 (see generally PO Resp. 26–41), and this over-
designation further demonstrates that the argument is new. From the Sur-
Reply, Patent Owner relies on two sentences that respond to an allegedly
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PO Sur-Reply 14. Patent Owner’s belated arguments are a clear violation of
our hearing order. See Paper 24, 3 (“New arguments not previously raised in
the parties’ substantive papers in this proceeding may not be raised during
the oral argument.”); Tr. 5:11–13; see also Consolidated TPG 85–86
(“During an oral hearing, a party . . . may only present arguments relied
upon in the papers previously submitted.”). Patent Owner appears to suggest
that its new arguments are permissible because the Petition did not clearly
map the prior art to the claimed first communications protocol. See
Tr. 28:10–23, 33:10–25. We disagree. We perceive no ambiguity in the
Petition that could arguably excuse Patent Owner’s belated arguments. See
Pet. 26–30; Inst. Dec. 26–27 (summarizing the Petition); see also Tr. 27:2–8
(Patent Owner: “[T]he Petition is, in our opinion, loud and clear as to what
protocol is the first communications protocol . . . . The Petition seems to
point to the Bluetooth protocol.”). We, accordingly, deem Patent Owner’s
new arguments waived and do not consider them. See Dell Inc. v.
Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016) (vacating Board
decision that relied on assertion first introduced at oral argument). However,
even if they had not been waived, Patent Owner’s arguments would not have
been persuasive: Patent Owner did not sufficiently identify any deficiency
in the Petitioner’s contentions; Patent Owner’s oral hearing arguments were
in conflict with Patent Owner’s briefing (see infra § II.D.4.d); and
Petitioner’s arguments and evidence are persuasive, for the reasons
explained above.

new argument regarding a different claim limitation. See PO Sur-Reply 14
(citing Pet. Reply 21–22). We do not rely on the allegedly improper
argument and, thus, do not reach Patent Owner’s critique of it.
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Accordingly, we are persuaded that Larsson and the Bluetooth
Specification, in combination, render this claim limitation obvious.
d. “wherein said first portable communications device adds to
each inquiry message prior to transmission an additional
data field carrying broadcast message data”
Claim 14 recites “wherein said first portable communications device
adds to each inquiry message prior to transmission an additional data field
carrying broadcast message data.” Petitioner asserts that Larsson discloses
and renders obvious this limitation. Pet. 31–34. Petitioner contends that
Larsson’s disclosure of “‘piggybacking’ additional broadcast messages . . .
onto [a request for route] message” teaches the claimed “add[ing] to each
inquiry message . . . an additional data field.” Id. at 31 (citing Ex. 1004,
6:5–7, 7:50–53, Fig. 6a, Fig. 7a; Ex. 1003 ¶ 71). Petitioner notes that the
’891 patent also uses the term “piggy-back” when describing adding an
additional data field. Id. (citing Ex. 1001, 8:64–65). According to
Petitioner, Larsson confirms that piggybacking requires an additional data
field because it teaches that a message “length longer than the normal fixed
length [of the request for route message] will implicitly indicate that the
request contains piggyback data.” Id. at 32–33 (emphasis removed) (quoting
Ex. 1004, 7:58–61; citing Ex. 1003 ¶ 73). Petitioner also notes that Larsson
provides an example where an ARP message is piggybacked in a network
adaptation layer route request message. Id. at 33–34 (citing Ex. 1004, 3:60–
63, 4:37–47, 7:37–53).
Patent Owner disputes two aspects of Petitioner’s showing. PO Resp.
30–41. First, Patent Owner argues that Larsson does not disclose adding an
additional data field to Larsson’s RfR message. Id. at 30–33. According to
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Patent Owner, “the mere use of the term ‘piggyback’ in both [Larsson and
the ’891 patent] does not meet Petitioner’s burden of showing that Larsson
teaches the recited additional data field,” as “the term ‘piggybacking’ is
simply not synonymous with [this] claim limitation[].” Id. at 31 (citing
Ex. 1001, 4:16, 4:59–62). Patent Owner also argues that Mr. Rysavy’s
testimony on this point is insufficient because it fails to explain the alleged
correlation between the terms “additional data field” and “piggyback.” Id.
at 32–33 (citing Ex. 1003 ¶¶ 63, 71–72, 80). Patent Owner further submits
that Larsson’s message may have a longer length “by having the same
number of fields” and adding the additional data to existing fields. Id. at 33.
Second, Patent Owner argues that Larsson’s piggybacked broadcast
message is not an additional data field, under the proper construction of that
term. PO Resp. 34–41. In particular, Patent Owner contends that “all the
data in Larsson’s embodiments of piggybacked messages, including both the
broadcast message and the request for route message, is required by a ‘first
communications protocol,’ i.e., the Bluetooth protocol.” Id. at 39; see also
id. at 34 (contending “both . . . messages are required by the Bluetooth
Specification”). In support of its interpretation of Larsson, Patent Owner
contends: (1) Larsson “notes that the broadcast messages are Bluetooth
protocol messages, stating that each broadcast message will contain a
Bluetooth Device Address” (id. at 35 (citing Ex. 1004, 5:51–60)),
(2) Larsson’s devices communicate over a Bluetooth network (id. at 35–38
(citing Ex. 1004, 1:47, 2:19–20, 5:61–6:8, 6:18–21, 6:37–44, Figs. 2, 3, 4b,
5, 6a, 6b)), and (3) Larsson’s recipient device is compliant with Bluetooth
and “does not ignore the piggybacked data” (id. at 38 (citing Ex. 1004, 6:45–
46, 8:8–10, Figs. 6b, 7a, 7b, 8a, 8b)).
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Having considered each of the parties’ arguments and the full record,
we are persuaded that Larsson discloses or renders obvious this claim
limitation. We find that a person of ordinary skill in the art would have
understood Larsson’s piggybacking to teach adding an additional data field
(that contains the broadcast message) to the RfR message. E.g., Ex. 1004,
6:5–6 (“[A] source node piggybacks the broadcast message in a request for
route broadcast message . . . .”); see also id. at Abstract (explaining a
broadcast message is “place[d] . . . in a broadcast message for route
discovery” and “[t]he combined message is broadcast”); Ex. 1003 ¶¶ 71–73,
78; Ex. 1029 ¶¶ 33–47; Ex. 1001, 8:62–66 (describing “piggy-back[ing]”
broadcast data on an inquiry message).21 Patent Owner identifies (and we
perceive) no evidence indicating that a person of ordinary skill in the art
would have had a different understanding of what it meant for a first
message to be “piggybacked” on a second message.
We disagree with Patent Owner’s contention that Larsson adds
additional data to the RfR message, but not necessarily a data field.
Larsson’s recipient nodes read and respond to the broadcast message,
demonstrating that it is separately identifiable from the fields of the RfR
message. E.g., Ex. 1004, 6:45–46, 8:12–32. Mr. Rysavy explains why a
person of ordinary skill in the art would have understood Larsson to add a

21 To be clear, we do not find that Larsson teaches an “additional data field”
just because Larsson and the ’891 patent specification both include the word
“piggybacking” (see PO Resp. 30–31); rather, we find Larsson’s discussion
of piggybacking one message on another discloses adding an additional data
field to the latter. Because the ’891 specification uses the term “piggy-back”
in the same way, we cite its disclosure as further evidence of what a person
of ordinary skill in the art would understand this term to mean.
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field and cites evidence to support his assertions and rationale. See Ex. 1003
¶¶ 71–73, 78; see also Ex. 1029 ¶¶ 33–47. For example, Mr. Rysavy
explains that an ARP message (which Larsson describes as one potential
piggybacked message) itself includes fields, which would need to be
maintained in order for the ARP message to be transmitted. Ex. 1029 ¶¶ 41,
45. We credit Mr. Rysavy’s testimony—it is logical and corroborated by the
cited evidence, and Patent Owner identifies (and we perceive) no evidence
to the contrary. Accordingly, we find that a person of ordinary skill in the
art would understand Larsson’s piggybacking to disclose that the broadcast
data is added to the RfR message as its own field.
Finally, we are persuaded that Larsson’s piggybacked message
includes an “additional data field,” as we have construed that term. See
supra § II.C.1 (construing “additional data field” as “a data field that is not
part of the inquiry message specified by the first communications protocol”).
We adopt the analysis from our Institution Decision,22 which states:
Petitioner maps the Bluetooth communications protocol to the
“first communications protocol” (Pet. 28–30), and Petitioner
maps Larsson’s piggybacked broadcast message to the claimed
“additional data field” (e.g., id. at 31, 33–34 (citing, inter alia,
Ex. 1004, 7:50–53)). According to Larsson, a piggybacked
broadcast message may be an ARP message. Ex. 1004, 7:50–
53; see also id. at 3:51–63. Larsson states that the piggybacked
ARP message is created by a higher-level protocol layer. See,
e.g., Ex. 1004, 4:63–5:2 (“[A]ll nodes in the network include a
network adaptation layer and a higher layer. In the higher layer
of the source node a broadcast message . . . is generated,” and
that message is “placed in a network adaptation layer request

22 Our analysis would be the same if we had adopted Patent Owner’s
proposed construction of (or maintained our preliminary construction of)
“additional data field.”
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for route broadcast message.”). Larsson indicates that this
higher layer sits above the network adaptation layer and,
consequently, sits above the baseband protocol specified in the
Bluetooth Specification. See id. at 8:53–55 (characterizing
ARP as a protocol layer above the network adaptation layer);
compare id. at Figs. 4a, 4b (illustrating layers in Bluetooth
devices and adding network adaptation layer above L2CAP,
i.e., Logical Link Control and Adaptation Layer Protocol), with
Ex. 1005, 249 (illustrating layers in Bluetooth devices and
explaining that L2CAP is a layer higher than Bluetooth’s
Baseband protocol). Further, Larsson indicates that the ARP
message is not, in fact, in the Bluetooth communications
protocol. See Ex. 1004, 3:50–62 (identifying ARP as an IP
networking protocol message), 7:20 (noting that “Bluetooth
cannot currently support IP”).
Inst. Dec. 30–31; see also Ex. 1029 ¶ 41 (confirming that ARP messages
contain numerous data fields).
Patent Owner repeats its pre-institution argument that Larsson’s
piggybacked message is required by Bluetooth. Compare PO Resp. 34–39,
with Paper 6 (“Prelim. Resp.”), 22–27.23 These arguments remain
unpersuasive for the reasons we previously articulated (which are adopted
herein):
Patent Owner does not sufficiently explain its conclusion
that Larsson’s piggybacked broadcast messages are required by
Bluetooth. See Prelim. Resp. 22–27. Larsson discloses that its
broadcast message is transmitted via Bluetooth and preferably
incorporates an identifying address defined by Bluetooth (i.e.,
BD_ADDR), but Patent Owner identifies (and we perceive)
nothing in Larsson or the Bluetooth Specification that indicates
the piggybacked broadcast message is required by Bluetooth, or
specified by that communications protocol. Relatedly, we

23 Although the pages in Paper 6 are numbered with Roman numerals, we
cite to its pages by the corresponding decimal numbers to improve
readability of citations.
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perceive no support for Patent Owner’s contention that
Larsson’s piggybacked message can be read by any Bluetooth-
compliant device, including those devices that do not
implement Larsson’s technique. See Prelim. Resp. 23, 27. In
fact, Larsson indicates that the opposite is true, as it illustrates
changes made to allow Bluetooth units to implement IP. E.g.,
Ex. 1004, Figs. 4a, 4b, 7:16–35. Finally, although Patent
Owner correctly notes that Larsson’s neighbor nodes “do[] not
ignore the piggybacked data, but also process the piggybacked
data” (Prelim. Resp. 26), this statement does not support Patent
Owner’s position, as claim 14 expressly requires that “suitably
configured other portable devices,” such as Larsson’s neighbor
nodes, can “read the broadcast data from said additional data
field.”
Inst. Dec. 31.
Patent Owner responds to this analysis by arguing that the Figure 7
embodiment of Larsson “does not seek to modify Bluetooth by using ARP
messages, as suggested in the Institution Decision, but is for use in a
protocol that already uses ARP broadcast messages.” PO Resp. 39–40
(citing Ex. 1004, 7:37–53); see Tr. 38:6–19 (apparently arguing that Larsson
does not disclose ARP messages sent in a Bluetooth network). We disagree.
Larsson seeks to limit the number of messages sent to establish routing in ad
hoc networks such as Bluetooth. E.g., Ex. 1004, 4:5–8, 5:45–46. Larsson
explains that “Bluetooth cannot currently support IP,” but “[i]t would be
desirable to support IP in a Bluetooth scatternet.” Id. at 7:16–20. So,
Larsson “illustrates exemplary Bluetooth units which can implement IP” in
Figure 4b (id. at 7:21–35), and then Larsson “illustrates an exemplary
method for triggering route discovery in an IP network using DHCP, name
resolution or ARP broadcast messages” in Figure 7 to show how its
invention can piggyback these messages on a network adaptation layer route
request broadcast message (id. at 7:36–61). Accordingly, we find that the
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identified embodiment of Larsson describes transmission of piggybacked
ARP messages in a Bluetooth scatternet.
Accordingly, we are persuaded that Larsson discloses and renders
obvious this claim limitation.
e. “such that suitably configured other portable devices may
receive the transmitted inquiry messages and read the
broadcast data from said additional data field.”
Finally, claim 14 recites “such that suitably configured other portable
devices may receive the transmitted inquiry messages and read the broadcast
data from said additional data field.” Petitioner asserts that Larsson
discloses and renders obvious this limitation (Pet. 31–34), and Patent Owner
does not argue otherwise (see generally PO Resp.).
Petitioner’s assertions and explanations are consistent with and
supported by the evidence cited by Petitioner. In particular, Larsson’s nodes
receive the RfR message and read the piggybacked data. Ex. 1004, Fig. 6b
(step 640), Fig. 7b (step 740), 6:45–46, 8:12–32. Accordingly, we are
persuaded that Petitioner sufficiently has shown that Larsson teaches this
claim limitation.
For the foregoing reasons, Petitioner has proved by a preponderance
of the evidence that the subject matter of claim 14 would have been obvious
over Larsson and the Bluetooth Specification.
f. Claim 1 recites commensurate limitations
Independent claim 1 recites a system that includes first and second
portable devices capable of sending and receiving a wireless message,
respectively, where the first portable device is arranged to perform steps
commensurate with those recited in method claim 14. Compare Ex. 1001,
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12:15–27 (claim 1), with id. at 13:15–26 (claim 14). Petitioner submits that
Larsson and the Bluetooth Specification, in combination, render obvious the
limitations of claim 1 for substantially the same reasons provided for claim
14. Pet. 38–40. Patent Owner presents the same arguments for both claims
1 and 14. See PO Resp. 52.
Petitioner’s assertions and explanations are consistent with and
supported by the evidence cited by Petitioner. Accordingly, for the reasons
explained above with respect to independent claim 14, Petitioner has shown
by a preponderance of the evidence that the subject matter of claim 1 would
have been obvious over Larsson and the Bluetooth Specification.
5. Dependent Claims 2 and 15
Claim 15 depends from claim 14 and further recites “wherein the first
portable communications device adds said additional data field at the end of
a respective inquiry message.” Ex. 1001, 13:27–29. Similarly, claim 2,
which depends from claim 1, further recites “wherein the at least one first
portable device is arranged to add said additional data field at the end of a
respective inquiry message.” Id. at 12:28–30.
Petitioner has shown by a preponderance of the evidence that these
additional limitations would have been obvious in light of Larsson. See
Pet. 34–36 (citing Ex. 1003 ¶¶ 82–84; Ex. 1004, 7:57–61); see also id.
at 40–41. Mr. Rysavy testifies that a person of ordinary skill in the art
would have found it obvious to add the additional data field to the end of the
inquiry message because this would “be the most logical place” and “placing
the additional data anywhere else would have been counter-intuitive.”
Ex. 1003 ¶ 82. We credit this testimony because Mr. Rysavy provides a
detailed and logical explanation that supports his assertions. Beyond the
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arguments addressed above with respect to independent claim 14, Patent
Owner does not contest Petitioner’s assertions with respect to dependent
claims 2 and 15. PO Resp. 52.
Accordingly, Petitioner has proved by a preponderance of the
evidence that the subject matter of dependent claims 2 and 15 would have
been obvious over Larsson and the Bluetooth Specification.
6. Dependent Claims 3 and 16
Claim 16 depends from claim 14 and further recites “wherein the first
portable communications device includes an indication in one of said
predetermined data fields, said indication denoting the presence of said
additional data field.” Ex. 1001, 13:30–33. Similarly, claim 3, which
depends from claim 1, further recites “wherein the at least one first portable
device is arranged to include an indication in one of said predetermined data
fields, said indication denoting the presence of said additional data field.”
Id. at 12:31–34.
Petitioner has shown by a preponderance of the evidence that Larsson
teaches these additional limitations. See Pet. 36–37 (citing Ex. 1004, 7:53–
61; Ex. 1003 ¶¶ 85–87); see also id. at 41. In particular, Larsson describes
inserting a “piggyback indicator” into the transmitted message to denote the
presence of a piggybacked broadcast message. Ex. 1004, 7:53–58. In
addition, Larsson teaches that, if the RfR message is a fixed length, “a length
indicator [that] indicates a length longer than the normal fixed length will
implicitly indicate that the request contains piggybacked data.” Id. at 7:58–
61. In either case, the indicator would have been included in one of the
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predetermined data fields.24 See Ex. 1003 ¶ 85 (testifying that an ordinary
artisan would have had this understanding); see also supra § II.D.4.c
(finding that the Larsson-Bluetooth combination discloses a plurality of
predetermined data fields). Beyond the arguments addressed above with
respect to independent claim 14, Patent Owner does not contest Petitioner’s
assertions with respect to claims 3 and 16. PO Resp. 52.
Accordingly, Petitioner has proved by a preponderance of the
evidence that the subject matter of dependent claims 3 and 16 would have
been obvious over Larsson and the Bluetooth Specification.
7. Dependent Claim 4
Claim 4 depends from claim 1 and further recites “wherein said first
communications protocol comprises Bluetooth messaging.” Ex. 1001,
12:35–36.
Petitioner has shown by a preponderance of the evidence that Larsson
teaches this additional limitation. See Pet. 41–42. As explained above,
Petitioner mapped Bluetooth to the claimed “first communications protocol,”
and Petitioner demonstrated that Larsson discloses use of the Bluetooth
protocol. See supra § II.D.4.c (relying on finding that the “first
communications protocol” maps to Bluetooth); see also Ex. 1004, 5:45–46.
Beyond the arguments addressed above with respect to independent claim
14, Patent Owner does not contest Petitioner’s assertions with respect to
claim 4. PO Resp. 52.

24 This finding is predicated on the first of the two alternative findings
reached in Section II.D.4.c of this Decision.
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Accordingly, Petitioner has proved by a preponderance of the
evidence that the subject matter of dependent claim 4 would have been
obvious over Larsson and the Bluetooth Specification.
8. Dependent Claim 8
Claim 8 recites, “A mobile communication device for use as said first
portable device in the system of claim 1, the device comprising
communications components capable of wireless message transmission and
arranged to broadcast a series of inquiry messages each in the form of a
plurality of predetermined data fields arranged according to a first
communications protocol, and to add to each inquiry message prior to
transmission said additional data field.” Ex. 1001, 12:54–61.
Petitioner has shown by a preponderance of the evidence that claim 8
would have been obvious in light of Larsson and the Bluetooth
Specification. See Pet. 42–44 (citing Ex. 1004, 1:37–46, 5:47–49; Ex. 1003
¶¶ 99–100). As explained above, Petitioner mapped Larsson’s source node
to the claimed “first portable device” (see supra § II.D.4.a), and Petitioner
persuasively shows that Larsson’s source node is a mobile communication
device that adds a piggybacked broadcast message to an RfR message before
transmission (see supra §§ II.D.4.b, II.D.4.d). Beyond the arguments
addressed above with respect to independent claim 14, Patent Owner does
not contest Petitioner’s assertions with respect to claim 8. PO Resp. 52.
Accordingly, Petitioner has proved by a preponderance of the
evidence that the subject matter of dependent claim 8 would have been
obvious over Larsson and the Bluetooth Specification.
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E. Obviousness in view of 802.11
1. Overview of 802.11 (Ex. 1007)25
802.11 is an IEEE standard that specifies “medium access control
(MAC) and physical characteristics for wireless local area networks.”
Ex. 1007, i, iii–iv. Pursuant to the 802.11 protocol, a station can wirelessly
communicate directly with other stations that are members of the same basic
service set (BSS). Id. at 10. The BSS may be an independent basic service
set (IBSS) or may be part of an extended service set (ESS). See id. at 4, 10–
12. An ESS includes and interconnects a set of BSSs and facilitates
communication between stations residing in different BSSs. Id. at 4, 11–12.
An 802.11 station scans to “determin[e] the characteristics of the
available BSSs.” Ex. 1007, 101, 125. In an active scan, the station transmits
probe request frames that contain either the “broadcast SSID” or, if scanning
for a particular service set, “the desired SSID.” Id. at 125; see id. at 8 (SSID
is an abbreviation of “service set identifier”). A station receiving a probe
request will respond only if: (1) the SSID in the probe request matches the
receiving station’s SSID or (2) “the SSID in the probe request is the
broadcast SSID.” Id. at 126.

25 Petitioner has shown by a preponderance of the evidence that 802.11
qualifies as prior art under 35 U.S.C. § 102(a) and (b). See Pet. 45. In
particular, the record reflects that 802.11 was publicly available at least as
early as December 31, 1999. See Ex. 1003 ¶¶ 36–38; Ex. 1006 ¶¶ 6–11;
Ex. 1026. This date is more than one year prior to the filing date of the
’891 patent (see 35 U.S.C. § 102(b); Ex. 1001, code (22)), and it is prior to
the earliest potential priority date of the patent on this record (see 35 U.S.C.
§ 102(a); Ex. 1001, code (30)). Patent Owner does not dispute 802.11’s
status as prior art.
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The probe request is a type of management frame. Ex. 1007, 48. All
management frames include the fields depicted in Figure 23 (id. at 45),
which is reproduced below.

As shown in Figure 23, above, a management frame includes MAC header
fields, a frame body, and a frame check sequence (FCS). Ex. 1007, 7, 45.
The frame body of a probe request also includes the information in Table 11
(id. at 44, 48), which is reproduced below.

As shown in Table 11, above, a probe request frame body includes “SSID”
and “supported rates.” Ex. 1007, 48. The former, “[t]he SSID element[,]
indicates the identity of an ESS or IBSS,” and its format is shown in
Figure 35. Id. at 55. Figure 35 is reproduced below.

As shown in Figure 35, above, the SSID element format includes a one-octet
element ID field, a one-octet length field, and a variable length “SS ID.”
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Ex. 1007, 55. For an SSID element, the first field—the element ID—is set
to zero. See id. (Table 20). The length of the information field—i.e.,
“SS ID”—is “between 0 and 32 octets.” Id.; see also id. (Figure 34). “A 0
length information field indicates the broadcast SSID.” Id.
2. Independent Claims 1 and 14
Claims 1 and 14 both recite “add[ing] to each inquiry message . . . an
additional data field.” Petitioner contends that the claimed “inquiry
message” is satisfied by 802.11’s probe request (Pet. 52–53, 64) and that the
claimed “additional data field” is satisfied by a “targeted SSID” (id. at 54,
65). Petitioner explains that there are “two types” of probe requests, which
Petitioner refers to as “broadcast” and “targeted” probe requests. Id. at 54.
Petitioner submits that the broadcast probe requests “seek responses from all
available stations and are indicated by a zero length SSID information field,
i.e., the lack of an SSID information field.” Id. at 54–55 (citing Ex. 1007,
55, 126). Petitioner contends that a targeted probe request, on the other
hand, “seeks a probe response from a specific station.” Id. at 56. According
to Petitioner, the station transmitting a targeted probe request “adds an
additional data field containing the SSID of the desired station.” Id. at 56
(citing Ex. 1007, 55, 126–127). To identify the “additional data field,”
Petitioner annotates Figure 35 of 802.11 (id.), as shown below.

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Petitioner’s annotation of Figure 35, depicting the SSID element format,
includes a red box around the variable length “SS ID” field. Pet. 56
(annotating Ex. 1007, Fig. 35).
Patent Owner argues that the identified SSID field cannot be the
claimed “additional data field.” PO Resp. 44–45. According to Patent
Owner, “the arrangement of the SSID data field is spelled out in the 802.11
communications protocol, and thus the SSID data fields are part of the
message in the form of a plurality of data fields arranged according to a first
communications protocol, namely the 802.11 protocol.” Id. at 45; see id.
at 46–48 (arguing that the SSID field is an existing field in 802.11’s probe
request). In addition, Patent Owner contends that 802.11 does not disclose
that the SSID field is added to a probe request, as would be required by the
claim. Id. at 41–43 (citing Ex. 1007, 55, 126–27), 47. Patent Owner asserts
that some probe request messages are created with data in the SSID field,
and some are not. Id. at 43, 47.
Having considered the parties’ arguments and the evidence of record,
we are not persuaded that 802.11 renders obvious the subject matter of claim
14. In particular, we find that 802.11’s SSID field is not an “additional data
field” under our construction of that claim term. See supra § II.C.1
(construing “additional data field” as “a data field that is not part of the
inquiry message specified by the first communications protocol”).
As noted above, Petitioner maps 802.11’s probe request to the claimed
“inquiry message” (Pet. 52–53, 64; accord Pet. Reply 23; Tr. 20:13–21:5),
the 802.11 protocol to the claimed “first communications protocol” (Pet. 52–
53), and the SSID field specified in Figure 35 of 802.11 to the claimed
“additional data field” (id. at 54–56). However, the SSID field is part of the
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probe request specified by the 802.11 protocol. See Ex. 1007, 45, 48, 55
(showing that 802.11 probe request includes a “Frame Body,” which
includes SSID information, which includes the SSID field). And, as a result,
the SSID field is not an “additional data field,” which must not be part of the
inquiry message (probe request) specified by the first communications
protocol (802.11). See Tr. 25:14–25 (Petitioner conceding that 802.11 does
not satisfy limitation under the Board’s construction of “additional data
field” if “the probe message generally is the inquiry message”).
We are not persuaded by Petitioner’s arguments that a targeted probe
request contains an “additional data field” as compared to a broadcast probe
request. See, e.g., Pet. Reply 23; accord Pet. 54–56. As our claim
construction makes clear, the data field is “additional” to the “predetermined
data fields” in the “inquiry message,” not additional as to some other
message. Thus, Petitioner’s comparison between a targeted and a broadcast
probe is misplaced because the Petition does not map the latter to the
claimed “inquiry message.” See Pet. 52–56; see also Pet. Reply 23;
Tr. 20:13–21:5.
Furthermore, even if the Petition had mapped the broadcast probe
request to the claimed “inquiry message,” the result would be the same.
Claim 14 requires “add[ing] . . . an additional data field” to each “inquiry
message” prior to transmission. Ex. 1001, 13:22–23. Thus, under such a
mapping, Petitioner would need to have shown that 802.11 teaches or
suggests adding the SSID field to a broadcast probe request before
transmitting a targeted probe request. Petitioner makes no such showing,
and 802.11 provides a different teaching. In 802.11, probe requests include
an SSID field: a targeted probe is created by populating this field with the
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target station ID, and a broadcast probe is created by not populating this
field with data. See Ex. 1007, 55; see also id. at 125–126. Adding data to
an existing data field in a message is not the same as adding a data field to a
message.
Because the SSID field is not an “additional data field” under our
construction of that term, we conclude that Petitioner has not shown by a
preponderance of the evidence that the subject matter of independent
claims 1 and 14 would have been obvious in light of 802.11.
3. Dependent Claims 2, 3, 8, 15, and 16
Claims 2, 3, and 8 depend from claim 1, and claims 15 and 16 depend
from claim 14. Although Petitioner cites 802.11 for the additional elements
recited in these dependent claims, Petitioner does not provide additional
analysis regarding the claimed “additional data field.” See Pet. 59–62, 66–
68. Accordingly, for the reasons set forth above with respect to claims 1 and
14 (see supra § II.E.2), we conclude that Petitioner also has not shown by a
preponderance of the evidence that the subject matter of dependent claims 2,
3, 8, 15, and 16 would have been obvious over 802.11.
F. Patent Owner’s Constitutional Challenge
Patent Owner argues that Administrative Patent Judges (“APJs”) are
unconstitutionally appointed principal officers. PO Resp. 52–55 (citing
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)). According to Patent Owner, the Federal Circuit erred by remedying
the constitutional violation, and thus, this case must be dismissed. Id.
IPR2019-01188
Patent 6,664,891 B2
52
We are bound by the Federal Circuit’s decision in Arthrex, which
addressed this issue. 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.
III. CONCLUSION26
Based on the evidence presented with the Petition, the evidence
introduced during the trial, and the parties’ respective arguments, Petitioner
has shown by a preponderance of the evidence that the subject matter of
claims 1–4, 8, and 14–16 would have been obvious over Larsson and
Bluetooth, but Petitioner has not shown by a preponderance of the evidence
that the subject matter of claims 1–3, 8, and 14–16 would have been obvious
over 802.11.

26 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, 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).
IPR2019-01188
Patent 6,664,891 B2
53
In summary:
Claims 35 U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–4, 8,
14–16 103(a)
Larsson,
Bluetooth 1–4, 8, 14–16

1–3, 8,
14–16 103(a) 802.11 1–3, 8, 14–16
Overall
Outcome 1–4, 8, 14–16

IV. ORDER
It is hereby:
ORDERED that claims 1–4, 8, and 14–16 of the ’891 patent are
determined to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
IPR2019-01188
Patent 6,664,891 B2
54
PETITIONER:
Andrew M. Mason
Todd M. Siegel
Joseph T. Jakubek
John M. Lunsford
KLARQUIST SPARKMAN, LLP
andrew.mason@klarquist.com
todd.siegel@klarquist.com
joseph.jakubek@klarquist.com
john.lunsford@klarquist.com

Naveen Modi
Phillip Citroen
Joseph Palys
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
phillipcitroen@paulhastings.com
josephpalys@paulhastings.com

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