Uniloc 2017 LLC

Patent Trials and Appeals Board

Jan 15, 2021

IPR2019-01337 (P.T.A.B. Jan. 15, 2021)

Trials@uspto.gov Paper: 22
571-272-7822 Date: January 15, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

UNILOC 2017 LLC,
Patent Owner.
____________

IPR2019-01337
Patent 7,136,999 B1
____________

Before JENNIFER S. BISK, MIRIAM L. QUINN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

BISK, Administrative Patent Judge.

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

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I. INTRODUCTION
Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
review of claims 1–17 of U.S. Patent No. 7,136,999 B1 (Ex. 1001, “the ’999
patent”). Paper 2 (“Pet.”). Uniloc 2017 LLC (“Patent Owner”), identified
as a real party-in-interest to the ’999 patent (Paper 4, 1), filed a Preliminary
Response to the Petition. Paper 6 (“Prelim. Resp.”). We instituted this
review as to all challenged claims. Paper 7 (“Inst. Dec.”).
Subsequent to institution, Patent Owner filed a Patent Owner
Response. Paper 9 (“PO Resp.”). Petitioner filed a Reply. Paper 10
(“Reply”). And Patent Owner filed a Sur-Reply. Paper 11 (“Sur-Reply”).
An oral hearing was held on October 21, 2020. Paper 21 (“Tr.”).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
We have jurisdiction under 35 U.S.C. § 6. For the reasons that follow,
Petitioner has demonstrated by a preponderance of the evidence that claims
1, 2, 4, 5, 7–10, 13–15, and 17 of the ’999 patent are unpatentable, but has
not demonstrated that claims 3, 6, 11, 12, and 16 are unpatentable.
II. BACKGROUND
A. Related Matters
The parties identify several district court cases involving the ’999
patent. Pet. 1–2; Prelim. Resp. 8.1 Institution was denied in IPR2020-
00117, which also challenged the ’999 patent. IPR2020-00117, Paper 11
(PTAB May 28, 2020).

1 The Preliminary Response does not have page numbers.
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B. The ’999 Patent
The ’999 patent, titled Method and System for Electronic Device
Authentication, issued November 14, 2006. Ex. 1001, codes (45), (54). In
particular, the ’999 patent describes the process of authenticating devices
using Bluetooth. Id. at 1:11–59. Specifically, according to the ’999 patent,
to establish a link using Bluetooth when the devices are less than 100 meters
apart, a user enters the same numerical code (key) in the two devices, the
devices then communicate to verify that the numbers match, and, if so, each
device stores the key and uses it to authenticate the two devices for any
subsequent Bluetooth link between them. Id. at 1:39–53. The ’999 patent
also describes basic authentication over wide area networks, including the
Internet, which typically requires a user to enter a user ID and password
combination. Id. at 1:60–67.
The ’999 patent recognizes that once two devices are authenticated on
a restricted network, using an authentication scheme such as Bluetooth, the
two devices can be re-connected through another, unrestricted network, such
as the Internet by, for example, reusing the stored restricted network
authentication information. Id. at 2:24–30, 2:43–49, 4:40–55. According to
the ’999 patent, security is maintained because the initial authentication and
exchange of key information occurs in the secure system, for example, in a
context where physical proximity is required. Id. at 4:56–64.
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C. Illustrative Claims
Claims 1, 13, 14, and 17 are independent. Claims 1 and 13 are
illustrative of the subject matter at issue and read as follows:
1. A method of authenticating first and second electronic
devices, comprising:
upon link set-up over a short-range wireless link,
executing an authentication protocol by exchanging
authentication information between the first and second
electronic devices to initially authenticate communication
between the first and second devices;
later, when the first and second electronic devices
are beyond the short-range wireless link, executing the
authentication protocol by exchanging the authentication
information between the first and second electronic
devices over an alternate communications link, then only
allowing communication between the first and second
devices if the first and second devices had initially been
successfully authenticated.
13. A method of authenticating first and second electronic
devices, comprising:
upon link set-up over a first link, executing an
authentication protocol by exchanging authentication
information between the first and second electronic
devices to initially authenticate communication between
the first and second devices;
later, when the first and second electronic devices
are connected using a second link, executing the
authentication protocol by exchanging the authentication
information between the first and second electronic
devices over the second link, then only allowing
communication between the first and second devices if
the first and second devices had initially been
successfully authenticated.
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Ex. 1001, 5:17–31, 6:1–14 (emphases added to disputed limitation).
Claims 14 and 17—and, therefore, all challenged claims—contain a
limitation substantially similar to that emphasized above. See id. at
6:22–23, 6:47.
D. Proposed Grounds of Unpatentability
Claim(s) Challenged 35 U.S.C. §2 Reference(s)/Basis
1–3, 6–8, 11–14, 16, 17 103 Varadharajan3
1, 2, 4, 5, 7–10, 13–15,
17
103 Varadharajan and BT Core4
13 103 Hind5
Pet. 4, 8–68. Petitioner also relies on two Declarations of Jon Weissman
Ph.D. Ex. 1006; Ex. 1013 (Supplemental Declaration filed with the Reply).
Petitioner asserts that Varadharajan is prior art to the ’999 patent
under 35 U.S.C. § 102(b), BT Core is prior art under § 102(a), and Hind is
prior art under § 102(e). Id. at 3, 30–31 (citing Ex. 1008 (the Declaration of
Michael Foley) along with Exs. 1006, 1009, and 1010–12 to show the public
accessibility of BT Core). Patent Owner does not challenge the prior art
status of any cited reference. On this record, we determine the references

2 Because the application leading to the ’999 patent was filed before
March 16, 2013, patentability is governed by the version of 35 U.S.C. § 103
preceding the Leahy-Smith America Invents Act (“AIA”), Pub L. No. 112–
29, 125 Stat. 284 (2011).
3 U.S. Patent No. 5,887,063 (filed July 29, 1996, issued March 23, 1999)
(Ex. 1003).
4 Specification of the Bluetooth System, Wireless Connections Made Easy,
Core, Volume 1, Version 1.0B, (December 1, 1999) (Ex. 1004).
5 U.S. Patent No. 6,772,331 B1 (filed May 21, 1999, issued Aug. 3, 2004)
(Ex. 1005).
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asserted by Petitioner qualify as prior art to the challenged claims of the
’999 patent.
III. ANALYSIS
A. Level of Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis. See Al-Site
Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999) (citing Graham
v. John Deere Co., 383 U.S. 1, 17–18 (1966)). The level of skill in the art
also informs the claim construction analysis. See Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (explaining that claim construction
seeks the meaning “a skilled artisan would ascribe” to the claim term “in the
context of the specific patent claim”).
Petitioner asserts that a person of ordinary skill in the art “would have
had at least a bachelor’s degree in computer science, computer engineering,
or a related subject, and two years of experience, including industry and
graduate experience, working with security system, including
encryption/decryption and authentication processes.” Pet. 5–6 (citing
Ex. 1006 ¶¶ 31–32). Patent Owner does not dispute Petitioner’s
characterization of the level of ordinary skill in the art. PO Resp. 7 (“For
purposes of this Response only, Patent Owner does not dispute Petitioner’s
definition of a [person having ordinary skill in the art (“POSITA”)].).
Because we find Petitioner’s proposed definition generally consistent
with the subject matter of the ’999 patent and cited references, we adopt it
for purposes of this analysis.
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B. Claim Construction
For petitions filed on or after November 13, 2018, such as the one in
this case, we interpret claims in the same manner used in a civil action under
35 U.S.C. § 282(b) “including construing the claim in accordance with the
ordinary and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to the patent.”
37 C.F.R. § 42.100(b) (2019). Only terms that are in controversy need to be
construed, and then only to the extent necessary to resolve the controversy.
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017).
In pre-institution briefing, neither party expressly offered a proposed
construction for any claim term. Pet. 7; Prelim. Resp. 9. Based on Patent
Owner’s validity arguments, however, the Institution Decision addressed the
scope of the term “exchanging the authentication information.” Inst. Dec.
6–7. We also addressed claim 13, which, unlike claims 1 and 14, does not
recite “beyond the short-range wireless link” when referring to a second
communications link.6 Compare Ex. 1001, 6:1–14, with 5:24–31, 6:22–28.
1. “exchanging the authentication information”
The Institution Decision adopted a construction of “exchanging the
authentication information” 7 such that authentication information must be

6 Claim 17 also does not use the term “beyond the short-range wireless link,”
but does specify that the “said first communications link and said second
communications link are different types of links.” Ex. 1001 6:50–52.
7 Specifically, claim 1 recites “executing an authentication protocol by
exchanging authentication information between the first and second
electronic devices to initially authenticate communication between the first
and second devices” (“the first exchange of authentication information”
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the same in both the first and second exchange of authentication information
limitations. Inst. Dec. 6–8. This determination was made despite Patent
Owner’s arguments that “because the claims recite first ‘exchanging
authentication information’ over a first link and then ‘exchanging the
authentication information’ over a second link, the claims all require
exchanging ‘similar’ authentication information over both links.” Id. at 6–7.
In particular, the Institution Decision states that although “the patentee’s
mere use of a term with an antecedent does not require that both terms have
the same meaning” (id. at 7 (citing Microprocessor Enhancement Corp. v.
Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008)), “Patent
Owner does not further explain, nor is it clear based on the claim language
or Specification, why the authentication information used by the two
communication links must be ‘similar,’” as opposed to being identical (id.).
In its Response Brief, Patent Owner maintains that the authentication
information exchanged over the second link must have a “relationship with,”
but “need not be identical” to the authentication information exchanged over
the first link. PO Resp. 8–9. According to Patent Owner “[a]lthough the
authentication information need not be identical, use of the antecedent ‘the’
to refer to the authentication information does indicate a relationship with
the first-recited authentication information, whether the information be the

limitation) and later, when the first and second electronic devices are beyond
the short-range wireless link executing the authentication protocol by
exchanging the authentication information between the first and second
electronic devices over an alternate communications link” (the “second
exchange of authentication information” limitation). Claims 13, 14, and 17
recite substantially similar limitations.
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same as or derived from the other recited authentication information, e.g.,
modified, enhanced, etc.” Id. at 9.
Petitioner asserts that “there is no dispute as to whether the challenged
grounds invalidate the asserted claims under a broad or narrow interpretation
of this term” and, therefore, “the Board need not adopt a construction.”
Reply 3 (citing PO Resp. 8–27).
Although Patent Owner emphasizes that construction of the term is
required (see PO Resp. 8; Sur-Reply 2), we agree with Petitioner that our
analysis, below, does not depend on whether “exchanging the authentication
information” requires that the first and second authentication information be
exactly the same or merely similar. Thus, we decline to decide the exact
relationship between the two recitations of “authentication information” in
the claims other than to agree with both parties that they are not wholly
unrelated.
2. Claim 13
The Institution Decision noted that during prosecution, the pending
claims were rejected over Hind as an anticipatory reference and, in response,
Patent Owner filed an amendment representing that the independent claims
were not anticipated by Hind because they included the terms “beyond the
short-range wireless link” and “over an alternate communications link.”
Inst. Dec. 8 (citing Ex. 1002, 110–112, 122). Because claim 13 does not
include these terms, the Institution Decision adopted a construction that
“both the first and second link recited by claim 13 can be short-range.” Id.
at 9.
Patent Owner does not address claim 13 in the claim construction
section of its Response. See PO Resp. 8–9. In its arguments regarding the
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validity of claim 13, however, Patent Owner asserts that “‘the second link’
as recited in Claim 13 at least refers to another link that is separate and
distinct from ‘the first link’ as recited in Claim 13.” Id. at 25. Further,
Patent Owner asserts that “the ’999 Patent understands that if ‘the first link’
recitation of Claim 13 is, for example, a Bluetooth link between two devices,
then a second link would have to be something different than the Bluetooth
link between those two devices.” Id. at 26. In its Sur-Reply, Patent Owner
clarifies that it is not arguing that the two links must be of different types,
but that the two links must be separate and distinct and cannot be “the same
link at different points in time.” Sur-Reply 4. However, Patent Owner
appears to rely on a construction that any Bluetooth connection between two
devices that reuses an authentication key is not a second link, but is simply a
reestablishment of the first link. PO Resp. 26. Patent Owner bases this
assertion on certain language in the ’999 patent: “the key exchanged upon
link initialization identifies a unique link and can be used reliably for
subsequent authentication when the link is re-established.” Id. (citing Ex.
1001, 1:47–53) (emphasis added by Patent Owner).
According to Petitioner, Patent Owner’s construction is incorrect.
Reply 3–6. Instead, Petitioner asserts that “the express language of claim 13
requires only that the first and second devices are connected using the
second link ‘later,’ after the authentication protocol involving the exchange
of authentication information is executed over the first link.” Id. at 5.
Petitioner points out that unlike claim 13, claim 17 explicitly recites
“wherein said first communication link and said second communication link
are different types of links.” Id. at 4 (citing Ex. 1001, 6:50–52).
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We do not agree with Patent Owner that the quoted language of the
’999 patent requires a construction of the term “second link” that excludes
any Bluetooth connection that reuses authentication information. Other than
the one vaguely worded sentence in the ’999 patent, Patent Owner does not
point to any supporting evidence for this interpretation. PO Resp. 25–26;
Ex. 1001, 1:47–53).
To the contrary, the evidence supports a finding that when two
devices reestablish communication after being disconnected, the subsequent
Bluetooth link is considered a different link. See Reply 18 (citing Ex. 1004,
151 (“Consequently, once a semi-permanent link key is defined, it may be
used in the authentication of several subsequent connections between the
Bluetooth units sharing it.”). This understanding is consistent with the ’999
patent, which refers to “initial Bluetooth link[s]” and “subsequent Bluetooth
link[s]” (Ex. 1001, 1:49–50, 1:58, 4:40), and discloses that multiple links
can be made between two Bluetooth compatible devices (id. at 1:17–20),
without any clarification that such links are considered the same if
authentication information is reused.
Accordingly, we find that claim 13 requires two different links, one of
which occurs later in time than the other, but that those links are not required
to be of different types. And we do not agree with Patent Owner’s narrow
reading, based on one sentence in the ’999 patent, that Bluetooth links that
reuse authentication codes are considered the same link.
C. Obviousness over Varadharajan
Petitioner contends that claims 1–3, 6–8, 11–14, 16, and 17 of the
’999 patent are unpatentable because their subject matter would have been
obvious over the disclosure of Varadharajan. Pet. 8–30.
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1. Overview of Varadharajan
Varadharajan is titled “Communication System for Portable
Appliances.” Ex. 1003, code (54). Varadharajan describes a host device
and a portable device that are “capable of communicating both remotely, e.g.
via a modem link, and directly, when the host and portable device are
docked or otherwise locally associated.” Id. at 4:1–5. To ensure security,
the portable device and host device “periodically exchange a security key via
the direct communication link, and the key is then used to control or encrypt
subsequent remote communications.” Id. at 4:8–12. According to
Varadharajan, this security key may be created and exchanged by “any of a
variety of ways known to those skilled in the art” and the direct or local
communication may take place using “an I.R. transmitter/receiver unit.” Id.
at 4:13–15, 4:26–34.
In one embodiment, Varadharajan describes a process in which,
“[e]ach time the portable computer 50 is in local or direct communication
with the desk top computer 48, this is detected . . . and the identity of the
portable computer 50 is authenticated by the desk top computer 48 by a
suitable test such as a challenge/response routine.” Ex. 1003, 4:62–67.
Only if the portable computer 50 passes this authentication test does the desk
top computer initiate a process in which a “key generating device 28
generates a fresh security key which is stored in the encryption/decryption
unit 30 of the host device 10 and transmitted via the local I.R. link to be
stored in the encryption/decryption unit 38 of the portable device 12.” Id. at
4:62–5:8. Subsequently, when the two devices are in remote
communication, for authentication, the host device issues a random
challenge to the portable device, which in turn calculates a response
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including the “current security key” and transmits this to the host device. Id.
at 5:32–40.
2. Analysis
Petitioner asserts Varadharajan teaches or suggests each of the
limitations of independent claims 1, 13, 14, and 17. Pet. 9–30. In particular,
Petitioner contends that Varadharajan’s challenge/response routine over the
I.R. link teaches the first exchange of authentication information limitation.
Id. at 16–19 (citing Ex. 1003, 2:43–49, 4:13–21, 4:62–5:2, 5:33–40;
Ex. 1006 ¶¶ 60–64). In addition, Petitioner contends that Varadharajan’s
disclosure of the challenge/response routine over the remote communication
link teaches the second exchange of authentication information limitation.
Id. at 21–22 (citing Ex. 1003, 4:26–34, 4:62–67, 5:33–40; Ex. 1006 ¶¶ 71–
73).
Patent Owner does not agree that Varadharajan teaches the first and
second exchange of authentication information limitations. PO Resp. 10–13.
In particular, Patent Owner emphasizes that Varadharajan describes creating
“a fresh security key” every time the portable computer is in proximity to the
desktop computer after first authenticating the portable computer. Id. at 10.
According to Patent Owner, because this fresh security key is subsequently
used to authenticate the remote communication, that key has “no particular
relationship to” the key used to authenticate the local connection. Id. at 10–
11 (citing Ex. 1003, 5:4–8). Patent Owner also notes that Varadharajan
discloses that frequent changes to the security key are used to enhance
security. Id. at 11 (citing Ex. 1003, 2:51–58).
The Institution Decision notes that “it is not clear that [Varadharajan]
implies that the security key transmitted via the local I.R. Link is never
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stored and reused when a remote authentication between the two devices
occurs” and pointed to language in Varadharajan that the key update is not
allowed to occur over a modem link. Inst. Dec. 11–12 (citing Ex. 1003,
5:10–14). We, thus, concluded that we were not persuaded “a person of
ordinary skill in the art would have understood Varadharajan to teach that
the security key from the first, local, exchange is never stored and reused as
the current security key in the second, remote, exchange.” Id. at 12.
In Response, Patent Owner explains that Varadharajan does not
affirmatively state that the security key is reused between a local and remote
connection and that, in fact, the only detailed language in Varadharajan
implies the opposite—that the security key is changed after every local
authentication—and, thus, the disclosure of Varadharajan does not explicitly
disclose reusing the same or similar authentication information in the second
link. PO Resp. 11–12. Patent Owner also points out that Varadharajan’s
language, noted in the Institution Decision, teaching that key updates cannot
be done over the remote connection, does not support a finding that
Varadharajan discloses using the same or similar authentication information
over the two connections. Id.
Petitioner argues that Varadharajan expressly describes using the
same or similar authentication information between the two links. Reply 6–
7. As support, Petitioner asserts that Varadharajan discloses that the two
devices “perform authentication ‘[e]ach time’ the two devices are in
communication, including after they initially exchange a security key” and
“Varadharajan further discloses the two devices then exchange the same key
when they later authenticate over a different, alternate link, such as a modem
link.” Id. at 7 (citing Ex. 1003 5:33–40; Ex. 1006 ¶¶ 60–62, 74–76).
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According to Petitioner, “[t]his is in part because the security key cannot be
updated over the modem link, as noted in the Institution Decision and not
disputed by [Patent Owner].” Id.
We disagree with Petitioner that this description of Varadharajan’s
disclosure is uncontested by Patent Owner. See Reply 7. To the contrary,
Patent Owner argues that Varadharajan does not use the same or similar key
during the remote authentication because a new key was already created
before the second authentication when the two devices were in proximity,
but after the local authentication. PO Resp. 10–12; Sur-Reply 6–10. Thus,
according to Patent Owner, it is irrelevant that the key update cannot occur
over the remote link. Moreover, despite our statement in the Institution
Decision (see Inst. Dec. 12), upon further review of Varadharajan’s
language, we agree with Patent Owner that whether the security key can be
updated over a remote communication link is irrelevant to Patent Owner’s
point that the security key is changed between the local authentication and
the remote authentication.
Patent Owner also argues that the language Petitioner relies on to
show that the remote authentication uses the same key as the initial
authentication does not support such a reading. Sur-Reply 7. We agree with
Patent Owner. Petitioner relies on the following language (Pet. 22;
Reply 7):
During a subsequent remote communication exchange via
the modem link 53, the desk top computer 48 issues a random
challenge to the portable computer 50. The portable computer
50 calculates a response as a function of the challenge and the
current security key and transmits this to the desk top computer
48. The desk top computer checks the response and if it
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corresponds correctly to the challenge, allows [the] session to
continue.
Ex. 1003, 5:33–40 (emphasis added). According to Petitioner, this language
implies that “the portable device sends a response including the same
security key that is exchanged during execution of the authentication
protocol over the short-range wireless link.” Pet. 22 (emphasis added).
However, we read this language the same way Patent Owner does, that
remote authentication uses the current security key, which was updated after
the first authentication occurred and, therefore, is not the same or similar key
used in the first authentication.
Petitioner also asserts that Varadharajan discloses “the host device
and the portable device may refresh the security key when the[y]
communicate over a short-range link, but need not always do so.” Reply 8.
However, we agree with Patent Owner (Sur-Reply 9–10) that the language
Petitioner relies on for this statement does not, in fact, state that security
keys need not be refreshed, but instead simply explains that “the described
embodiments incorporate a secret key which is changed very frequently . . .,
thus offering substantial extra protection.” Id. at 9 (citing Ex. 1003, 2:51–
58). Although we agree with Petitioner that this language does not explicitly
state that “Varadharajan’s security key must always be changed when the
two devices communicate over the short-range link,” we note that Petitioner
does not point to any language in Varadharajan stating that it need not
always be refreshed. Id. In fact, the only language in Varadharajan on this
issue appears to be that “[e]ach time the portable computer 50 is in local or
direct communication with the desktop computer 48,” authentication is
performed and then, if the portable computer passes the test, a key update
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routine is initiated that changes the security key. Ex. 1003, 4:62–5:8. This
language supports Patent Owner’s reading.
Petitioner provides expert testimony supporting its position. Pet. 22
(citing Ex. 1006 ¶¶ 71–73); Reply 7–8 (citing Ex. 1006 ¶¶ 74–76; Ex. 1013
¶¶ 12–13). We, however, do not credit Dr. Weissman’s testimony on this
issue, as it relies solely on the same portions of Varadharajan discussed
above, without addressing Varadharajan’s explicit language describing key
updates. See Ex. 1006 ¶ 73 (relying on Ex. 1003, 4:62–67 and 5:33–40 as
supporting, without elaboration, a reading that the remote authentication
uses “the same security key” as the initial authentication); Ex. 1013 ¶ 12
(relying, again, on Ex. 1003, 5:33–40 to support a conclusion that “[w]hen
the host device and the portable device later authenticate over a different,
alternate link, such as a modem link, the two devices then exchange the
same key to authenticate each other”); Ex. 1003, 4:62–5:8 (describing
authentication followed by key update “[e]ach time” the two computers
communicate over a local link).
In his Supplemental Declaration, Dr. Weissman adds that “[a]s
Varadharajan does not disclose a mechanism to update the security key over
the modem link, it discloses using the same security key for authentication
over the disclosed modem link.” Ex. 1013 ¶ 12. However, as noted above,
we agree with Patent Owner that it is immaterial what link the key update is
made through—what matters is whether the key update is done after the
initial authentication such that a different key is used for the remote
authentication. And Varadharajan explicitly states that the update is made
after the initial authentication and before the remote authentication.
Ex. 1003, 4:62–5:8. Dr. Weissman also states, in his Supplemental
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Declaration, that the key update “need not occur every time the host device
and portable device are in communication over the short range link,” but,
again, for this conclusion he relies solely on the portion of Varadharajan that
states that keys are updated frequently. Ex. 1013 ¶ 13 (citing Ex. 1003,
2:52–58). Dr. Weissman adds that “[a] person of ordinary skill in the art
would not interpret this disclosure, and other disclosures from Varadharajan
generally, to require that a security key refresh always occurs when the host
device and the portable device communicate over the short-range link.” Id.
However, we do not credit this conclusory statement given Dr. Weissman
does not take into account, or otherwise acknowledge, Varadharajan’s
explicit language describing key updates in a paragraph that begins with the
phrase “[e]ach time the portable computer 50 is in local or direct
communication with the desk top computer 48 . . . .” Ex. 1003 4:62–5:8.
Accordingly, based upon our review of the current record, we
conclude that Petitioner has not demonstrated a reasonable likelihood of
establishing that claims 1–3, 6–8, 11–14, 16, and 17 would have been
obvious over Varadharajan.
D. Obviousness over Varadharajan and BT Core
Petitioner contends that claims 1, 2, 4, 5, 7–10, 13–15, and 17 of the
’999 patent are unpatentable because their subject matter would have been
obvious over the combined disclosure of Varadharajan and BT Core.
Pet. 30–56.
1. Overview of BT Core
BT Core is titled “Specification of the Bluetooth System” and
“defines the requirements for a Bluetooth transceiver operating in [the
2.4GHz ISM] band.” Ex. 1004, 1, 18.
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2. Analysis for Claim 1
a. a method of authenticating first and second electronic devices
The preamble of claim 1 recites “a method of authenticating first and
second electronic devices.” Ex. 1001, 5:17–18. Petitioner asserts that both
Varadharajan and BT Core teach these features. Pet. 37–39. Specifically,
Petitioner explains that “Varadharajan and BT Core disclose a method for
authenticating a portable device (first electronic device) and a host device
(second electronic device)” using “both a direct link (short-range
communication link) and a modem link (alternate communication link).” Id.
37–38 (citing Ex. 1003, Abstract, 3:26–49, 4:8–21; Ex. 1006 ¶¶ 112–113).
Petitioner explains that “[w]hen the portable device and the host device are
configured to use Bluetooth and desire to communicate with each other, they
initially perform an initialization process where the devices are paired to
each other.” Id. at 38 (citing Ex. 1004, 153–154).
Based on the record, we are persuaded by Petitioner’s showing that
Varadharajan and BT Core teach or suggest a method of authenticating first
and second electronic devices. Patent Owner does not dispute Petitioner’s
contentions regarding this limitation. See PO Resp. 10–13. Accordingly, we
determine that Petitioner has established by a preponderance of the evidence
that Varadharajan and BT Core teach or suggest a method of authenticating
first and second electronic devices as required by claim 1.
b. upon link set-up over a short-range wireless link, executing an
authentication protocol by exchanging authentication information
between the first and second electronic devices to initially
authenticate communication between the first and second devices
later, when the first and second electronic devices are beyond the
short-range wireless link executing the authentication protocol by
exchanging the authentication information between the first and
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second electronic devices over an alternate communications link
Claim 1 recites “upon link set-up over a short-range wireless link,
executing an authentication protocol by exchanging authentication
information between the first and second electronic devices to initially
authenticate communication between the first and second devices” and
“later, when the first and second electronic devices are beyond the short-
range wireless link executing the authentication protocol by exchanging the
authentication information between the first and second electronic devices
over an alternate communications link.” Ex. 1001, 5:19–28. Petitioner
asserts that the combined teachings of Varadharajan and BT Core teach
these features. Pet. 39–47.
In particular, Petitioner relies on BT Core as showing a method of
communicating between the portable and host devices over a short-range
communication link. Pet. 32–36. Petitioner describes the Bluetooth pairing
process, which begins “when an initialization key (Kinit) is created based on
a PIN and a random number,” followed by authentication between the
devices, “including generation of an authentication response based on Kinit.”
Id. at 32 (citing Ex. 1004, 154, 169–170, 195–197). Moreover, “[u]pon
successful authentication, a link key, which may be temporary or semi-
permanent, is created, which is used for authentication between the two
devices ‘for all subsequent connections until it is changed.’” Id. (citing
Ex. 1004, 169–170, 195–196, 198).
Petitioner concedes that “Varadharajan does not expressly disclose the
short-range communication link may be a radio-based link, such as a
Bluetooth link” (id. at 32), but asserts that “it would have been obvious to
modify Varadharajan’s portable and host devices to implement Bluetooth as
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an alternative short-range wireless link for purposes of enabling short-range
communications over Bluetooth” (id. at 32–33 (citing Ex. 1006 ¶ 101)).
According to Petitioner, at the time of the invention, Bluetooth and its
advantages over infrared technology were known to a person of ordinary
skill in the art. Id. at 33 (citing Ex. 1001, 1:17–20), 34 (citing Ex. 1006
¶¶ 103–104), 35–36 (citing Ex. 1006 ¶¶ 105–109). Moreover, using
Bluetooth “would have required only the simple substitution of known
techniques (Bluetooth for infrared) in similar devices, in a similar manner, to
achieve predictable results” and a person of ordinary skill “would have
appreciated that Bluetooth’s radio-frequency (‘RF’) link provides
advantages over the infrared technology taught in Varadharajan.” Id. at 33–
34 (citing Ex. 1006 ¶¶ 103–104). Petitioner also notes that Varadharajan
explicitly states that its system can use “any of a variety of ways known to
those skilled in the art” to generate the first security key. Id. at 34 (citing
Ex. 1003, 4:13–21). Petitioner concludes that a person of ordinary skill in
the art “would have found it obvious to use Bluetooth’s well-known
authentication protocol based on the similarities of the authentication
protocols described in each of Varadharajan and BT Core, as well as to
support a protocol that was well known as of the Critical Date” and “would
have had a reasonable expectation of success in attempting to do as much.”
Id. at 36 (citing Ex. 1006 ¶ 109).
Specifically, Petitioner relies on BT Core for disclosing the recited
“short-range wireless link” and the Bluetooth authentication protocol for
disclosing “executing an authentication protocol by exchanging
authentication information between the first and second electronic devices to
initially authenticate communication between the first and second devices.”
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Pet. 39, 41–42 (citing Ex. 1004, 99, 108, 149–154, 169–178, 1043, 1045–
1047, 1053; Ex. 1006 ¶¶ 115–117, 123). Petitioner relies on Varadharajan’s
modem link for disclosing the recited “later, when the first and second
electronic devices are beyond the short-range wireless link.” Id. at 42–43
(citing Ex. 1003, 2:19–27, 5:33–40; Ex. 1006 ¶¶ 124–126). For “executing
the authentication protocol by exchanging the authentication information
between the first and second electronic devices over an alternate
communications link,” Petitioner relies on Varadharajan’s disclosure of an
attempt to communicate via a modem link and that it may use the Bluetooth
authentication protocol’s challenge-response scheme using “the same link
key . . . as exchanged over the short-range wireless link” to authenticate the
two devices over that link. Id. at 45–47 (citing Ex. 1003, 4:26–34, 4:62–67,
5:33–40; Ex. 1004, 149–154, 170; Ex. 1006 ¶¶ 130–133).
Patent Owner argues that Petitioner fails to show the combination of
Varadharajan and BT Core teaches or suggests the first and second
exchanging of authentication information limitations. PO Resp. 13–20; Sur-
Reply 11–14. Initially, Patent Owner acknowledges that the “Petition
asserts that the Bluetooth authentication protocol’s challenge-response
scheme can be implemented in lieu of the authentication protocol’s
challenge-response scheme used by Varadharajan.” PO Resp. 14. However,
Patent Owner argues that there “exists no motivation to combine the
Bluetooth authentication protocol’s challenge-response scheme with that of
Varadharajan.” Id. at 15. According to Patent Owner, “Varadharajan would
not have considered the system of BT Core to be a viable option because the
authentication protocol used to enable the features of Varadharajan would be
incompatible with those taught by BT Core.” Id.
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In support of this assertion, Patent Owner asserts that Varadharajan’s
authentication protocol “is key to” its “overall inventive aspect” and “would
not have functioned properly with the authentication protocol implemented
in BT Core.” Id. at 16. Patent Owner explains that Varadharajan states that
“the risk of security compromise when communicating directly is nil or
relatively low” (id. (quoting Ex. 1003, 4:5–12)) and asserts that
Varadharajan “clearly teaches that radio-based communication mediums are
inherently insecure” (id. (citing Ex. 1003, 1:10–17)); Sur-Reply 11–12.
Patent Owner adds, without pointing to any intrinsic or extrinsic evidence,
that “it is well known to any POSITA” “that the challenges of maintaining
security in an I.R. link are entirely different than those posed in a RF
wireless link” (id. at 16) and “that other individuals that the user is not aware
of and often times cannot know exist, are easily capable of intercepting RF-
based communications between the devices being authenticated” (id. at 17).
Moreover, according to Patent Owner, “[t]he core aspect of the
authentication scheme taught by Varadharajan depends upon computer
generated security keys that are very long and are changed frequently.” Id.
at 17–18 (citing Ex. 1003, 1:42–45, 2:52–58, 4:35–38). Patent Owner
concludes that “because BT Core teaches the use of a substantially shorter
security key,” it “teaches away from a system that utilizes very long security
keys for providing a sufficient level of security as proposed by
Varadharajan” and “BT Core teaches away from a security key . . . which is
changed frequently.” Id. at 19–20.
Petitioner responds that a person of ordinary skill in the art would be
motivated to use Bluetooth’s authentication mechanism with Varadharajan’s
direct link. Reply 10–14. Specifically, Petitioner explains that “the relevant
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date to consider is June 2000,” the filing date of the ’999 patent, at which
time, “a person of ordinary skill in the art would have considered
Bluetooth’s radio-based authentication and security schemes as posing
‘relatively low’ risk of a security breach.” Reply 9–10. As evidence for this
knowledge, Petitioner points to the statement in the ’999 patent’s
background that Bluetooth includes an authentication mechanism that is
“more robust than other systems” and claims 5 and 6 of the ’999 patent
“indicate that the recited short-range wireless link can be either a ‘radio link’
(claim 5) or an ‘infra-red’ link (claim 6).’” Id. at 10 (quoting Ex. 1001,
1:26–27, 1:36–37).8 Petitioner also explains that Varadharajan “does not
require that the risk of security of signal interception be ‘nil or zero,’ but
rather that it be ‘relatively low.’” Id. at 10–11 (citing Ex. 1003, 4:7–8).
According to Petitioner, a person of ordinary skill in the art at the relevant
time “would have considered Bluetooth’s security scheme, including its

8 On August 18, 2020, the Director of the Patent & Trademark Office issued
a Memorandum addressing the use of “applicant admitted prior art” as the
basis for an inter partes review challenge. See USPTO Memorandum,
Treatment of Statements of the Applicant in the Challenged Patent in Inter
Partes Reviews Under § 311 (August 18, 2020), available at
https://www.uspto.gov/sites/default/files/documents/signed_aapa_guidance_
memo.pdf. That Memorandum concludes that two permissible uses of
admitted prior art in an inter partes review are to “support a motivation to
combine particular disclosures” and “demonstrate the knowledge of the
ordinarily-skilled artisan at the time of the invention.” Id. at 9. Petitioner’s
citation to the description of Bluetooth’s authentication mechanism and the
use of radio links in the ’999 patent fall within these categories. Notably,
Patent Owner did not object to the reliance on “APA” in the Petition, and we
see no obstacle under 35 U.S.C. § 311 to Petitioner relying on admitted prior
art in this manner.
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‘robust’ authentication protocols, as having a ‘relatively low’ risk of being
compromised.” Id. at 11; Ex. 1006 ¶ 17.
We find, based on the record, that a person of ordinary skill in the art
would consider Bluetooth’s authentication mechanism to be robust with a
relatively low risk of being compromised. This is based on both the intrinsic
evidence and extrinsic evidence, which support such a finding, and a lack of
evidence in the record to the contrary.9 See Ex. 1001, 1:11–59, 5:38–41;
Ex. 1004, 99, 108, 149–154, 169–178, 1043, 1045–1047, 1053; Ex. 1006 ¶¶
102–109; Ex. 1013 ¶¶ 17–18.
Petitioner also disagrees with Patent Owner’s argument that
Varadharajan would be incompatible with the authentication mechanism
taught by BT Core. Reply 12–14. Petitioner explains that Varadharajan
does not require long security keys that are changed frequently, but
“discloses using a ‘secret key’ which ‘can be very long since it does not
have to be remembered by the user,’ in place of using passwords that are
‘only a few characters long.’” Id. at 12 (quoting Ex. 1003, 1:42–45, 2:52–
58). According to Petitioner, even given Varadharajan’s disclosure of a
typically long security key, “a person of ordinary skill in the art would have
considered other options, such as Bluetooth’s 128-bit random number, as
sufficiently suitable for purposes of security,” especially “when accounting
for the frequency in which a security key changes.” Id. at 12–13 (citing
Ex. 1013 ¶¶ 19–20). Petitioner notes that “BT Core indicates that it may be

9 Patent Owner does not support with evidence its attorney argument
characterizing Varadharajan’s disclosure and Bluetooth’s authentication
behavior and asserting what a person of ordinary skill in the art would
understand at the relevant time. See PO Resp. 13–20.
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‘desirable’ to change a link key” and “a person of ordinary skill in the art
would have considered a 128-bit random number to be ‘very long.’” Id.
(citing Ex. 1004, 151–152, 157; Ex. 1006 ¶ 100; Ex. 1013 ¶¶ 19–21).
Petitioner also disagrees with Patent Owner’s assertion that Varadharajan
would have to revamp its entire authentication scheme and mode of
operation to achieve the desired level of security when using Bluetooth as
the direct link authorization mechanism pointing to Varadharajan’s
statement that any “‘suitable’ test” may be used for such authorization.
Reply 13–14 (quoting Ex. 1003, 4:62–67).
We find, based on the record, that a person of ordinary skill in the art
would have understood using Bluetooth’s authentication mechanism in place
of Varadharajan’s described “challenge/response routine,” to be a feasible
option. This is based on both the intrinsic evidence and extrinsic evidence,
which support such a finding, and a lack of evidence in the record to the
contrary.7 See Ex. 1003, 4:62–67 (“Each time the portable computer 50 is in
local or direct communication with the desk top computer 48 . . . the identity
of the portable computer 50 is authenticated by the desk top computer 48 by
a suitable test such as a challenge/response routine as outlined below.”);
Ex. 1004, 99, 108, 149–154, 169–178, 1043, 1045–1047, 1053; Ex. 1006 ¶¶
96–123; Ex. 1013 ¶¶ 14–22. We are not persuaded by Patent Owner’s
argument that BT Core teaches away from a very long, frequently changed,
security key. See PO Resp. 19–20. Nothing in Varadharajan or BT Core
may be said to discourage a person of ordinary skill from using the
Bluetooth authentication mechanism for the authentication over
Varadharajan’s direct link. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). To the contrary, the facts suggest that a person of ordinary skill
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would have understood Varadharajan to encourage the use of any known,
robust, authentication scheme (see Ex. 1003, 4:62–67), and the record shows
that a person of ordinary skill would have understood Bluetooth’s
authentication mechanism to be such a scheme (see Ex. 1001, 1:11–59,
5:38–41; Ex. 1004, 151–152, 157; Ex. 1006 ¶¶ 100–109; Ex. 1013 ¶¶ 17–
21).
Finally, we find Petitioner has sufficiently shown that a person of
ordinary skill in the art would have had reason to attempt to use Bluetooth’s
authentication mechanism over Varadharajan’s direct link because it was a
well-known method of implementing robust short-range communication and
doing so would have required only the simple substitution of Bluetooth for
infrared, in a similar manner, to achieve predictable results. Pet. 32–36;
Reply 8–14; Ex. 1006 ¶¶ 96–123; see KSR v. Teleflex, 550 U.S. 398, 417
(2007).
c. then only allowing communication between the first and second
devices if the first and second devices had initially been
successfully authenticated
Claim 1 recites “then only allowing communication between the first
and second devices if the first and second devices had initially been
successfully authenticated.” Ex. 1001, 5:28–31. Petitioner asserts that
Varadharajan teaches this feature. Pet. 47–48. Specifically, Petitioner
explains that Varadharajan teaches a subsequent remote communication
exchange via a modem link during which the desktop computer allows
communication between the first and second devices only if the response
corresponds correctly to the challenge. Id. 47 (citing Ex. 1003, 5:33–40;
Ex. 1006 ¶¶ 134–136). According to Petitioner, “Varadharajan further
discloses that if a security key is not exchanged over the short-range wireless
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link, then the portable device is not allowed to communicate with the host
device over the modem link.” Id. at 48 (citing Ex. 1003, 1:20–25, 3:16–20,
5:32–55). Petitioner also explains that “when the host and portable devices
are configured to support Bluetooth, if the portable device does not have the
current link key, then the host and portable devices will not be allowed to
communicate.” Id. (citing Ex. 1004, 194–195; Ex. 1006 ¶ 137).
Based on the record, we are persuaded by Petitioner’s showing that
the combination of Varadharajan and BT Core teaches or suggests “then
only allowing communication between the first and second devices if the
first and second devices had initially been successfully authenticated.”
Patent Owner does not dispute Petitioner’s contentions regarding this
limitation. See PO Resp. 10–13. Accordingly, we determine that Petitioner
has established by a preponderance of the evidence that the combination of
Varadharajan and BT Core teaches or suggests “then only allowing
communication between the first and second devices if the first and second
devices had initially been successfully authenticated” as recited by claim 1.
d. Conclusion Claim 1
Based on the record, we determine that Petitioner has established by a
preponderance of the evidence that claim 1 of the ’999 patent would have
been obvious over the combined disclosures of Varadharajan and BT Core.
3. Analysis for Claims 13, 14, and 17
Independent claims 13, 14, and 17 recite similar subject matter to
independent claim 1. The differences between claim 13 and claim 1, as
discussed above in the claim construction section (supra § III.B), include
that the links are described as “first” and “second” “links” as opposed to
“short-range wireless link” and “alternate communications link” that is
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“beyond the short-range wireless link.” Compare Ex. 1001, 5:17–31 (claim
1), with Ex. 1001, 6:1–14. Petitioner relies on the same analysis for these
portions of claim 13 as it does for claim 1. Pet. 39, 41–48. Patent Owner
does not argue that the differences in wording of claim 13 lead to additional
issues. PO Resp. 13–20 (discussing primarily claim 1 and noting that “the
remaining independent claims” have “similarly recited” limitations).
Instead of reciting methods, like claims 1 and 13, claim 14 recites
“[a]n electronic device” and claim 17 recites “[a] communications system.”
Ex. 1001, 6:15, 6:35. The subject matter encompassed by claims 14 and 17,
however, is very similar to that of claim 1 and, for the most part, Petitioner
relies on the same analysis for the limitations of claims 1, 14, and 17. See
Pet. 37–39, 41–48. For the “processor” recited by claim 14, Petitioner
points to Varadharajan. Pet. 14–15 (citing Ex. 1003, Fig. 1, Abstract, 4:44–
46; Ex. 1006 ¶¶ 54–55), 40. For the “memory loaded with a software
routine executed by the processor” recited by claim 14, Petitioner points to
Varadharajan (Pet. 15–17 (citing Ex. 1003, 4:35–43, 5:2–9, 6:27; Ex. 1006
¶¶ 56–59)) and BT Core (id. at 40 (citing Ex. 1004, 108–112, 194–198; Ex.
1006 ¶¶ 119–120). Patent Owner does not argue that the differences in
wording of claim 13 lead to additional issues. PO Resp. 13–20 (discussing
primarily claim 1 and noting that “the remaining independent claims” have
“similarly recited” limitations).
Based on the record, we determine that Petitioner has established by a
preponderance of the evidence that claims 13, 14, and 17 of the ’999 patent
would have been obvious over the combined disclosures of Varadharajan
and BT Core.
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4. Analysis for Dependent Claims
We have considered Petitioner’s argument and supporting evidence,
including Dr. Weissman’s testimony, regarding dependent claims 2, 4, 5, 7–
10, and 15 of the ’999 patent. Pet. 49–56; Ex. 1006 ¶¶ 141–157. Patent
Owner does not separately argue the limitations added in these dependent
claims. See PO Resp. 27 (“The deficiencies of the Petition articulated above
concerning the challenged independent claims also apply to the analysis of
the challenged dependent claims.”). We find that Petitioner has shown, by a
preponderance of the evidence, that these limitations are taught or suggested
by Varadharajan and BT Core and has provided sufficiently “articulated
reasoning,” with “rational underpinning” and evidentiary support, to
combine the teachings of these references to predictably yield the recited
systems and methods. See KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d at
988).
Specifically, dependent claim 2 depends from claim 1 and adds a
limitation “wherein the authentication information is an authentication key.”
Ex. 1001, 5:32–33. Petitioner relies on BT Core’s discussion of the host and
portable devices exchanging key information. Id. (citing Ex. 1004, 154,
169–170; Ex. 1006 ¶¶ 141–142). We determine that the Petition has shown,
by a preponderance of the evidence, that claim 2 would have been obvious
over Varadharajan and BT Core.
Dependent claim 4 depends from claim 1 and recites: “wherein the
first device is a master device and the second device is a slave device.”
Ex. 1001, 5:36–37. Petitioner relies on BT Core’s statement that, in
Bluetooth, one unit acts as a master and the other a slave. Pet. 50–51 (citing
Ex. 1004, 41; Ex. 1006 ¶ 144). We determine that the Petition has shown,
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by a preponderance of the evidence, that claim 4 would have been obvious
over Varadharajan and BT Core.
Dependent claim 5 depends from claim 1 and recites: “wherein the
short-range wireless link is a radio link.” Ex. 1001, 5:38–39. Petitioner
relies on BT Core’s disclosure that Bluetooth is a short-range radio link.
Pet. 51–52 (citing Ex. 1004, 41; Ex. 1006 ¶ 147). We determine that the
Petition has shown, by a preponderance of the evidence, that claim 5 would
have been obvious over Varadharajan and BT Core.
Dependent claim 7 depends from claim 1 and recites: “wherein the
link set-up occurs when the first and second devices are in physical
proximity.” Ex. 1001, 5:42–43. Petitioner relies on both Varadharajan and
BT Core’s disclose short-range communication when devices are in close
proximity. Pet. 52–53 (citing Ex. 1003, Abstract, 6:7–8; Ex. 1004, 41, 149;
Ex. 1006 ¶¶ 148–150). We determine that the Petition has shown, by a
preponderance of the evidence, that claim 7 would have been obvious over
Varadharajan and BT Core.
Dependent claim 8 depends from claim 1 and recites: “wherein the
short-range wireless link conforms to a given RF protocol.” Ex. 1001, 5:44–
45. Petitioner relies on BT Core’s disclosure of the Bluetooth protocol, a
radio frequency protocol. Pet. 53–54 (citing Ex. 1004, 41, 250–251, 832;
Ex. 1006 ¶¶ 151–152). We determine that the Petition has shown, by a
preponderance of the evidence, that claim 8 would have been obvious over
Varadharajan and BT Core.
Dependent claim 9 depends from claim 8 and recites: “wherein the
given RF protocol is Bluetooth.” Ex. 1001, 5:46–47. Petitioner relies on BT
Core’s disclosure of the Bluetooth protocol, a radio frequency protocol.
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Pet. 54 (citing Ex. 1004, 41; Ex. 1006 ¶¶ 153–154). We determine that the
Petition has shown, by a preponderance of the evidence, that claim 9 would
have been obvious over Varadharajan and BT Core.
Dependent claim 10 depends from claim 1 and dependent claim 15
depends from claim 14. Both claims recite: “wherein the link set-up step
includes entry of a given personal identification number into each of the first
and second electronic devices.” Ex. 1001, 5:48–50, 6:29–31. Petitioner
relies on BT Core’s disclosure that a user may select a unique personal
identification number (“PIN”) for purposes of setting up a Bluetooth
connection. Pet. 54–56 (citing Ex. 1004, 152, 561; Ex. 1006 ¶¶ 156–157).
We determine that the Petition has shown, by a preponderance of the
evidence, that claims 10 and 15 would have been obvious over Varadharajan
and BT Core.
5. Conclusion
Accordingly, based upon our review of the current record, we
conclude that Petitioner has shown, by a preponderance of the evidence, that
claims 1, 2, 4, 5, 7–10, 13–15, and 17 of the ’999 patent would have been
obvious over the combined disclosures of Varadharajan and BT Core.
E. Obviousness over Hind
Petitioner contends that claim 13 of the ’999 patent is unpatentable
because its subject matter would have been obvious over the disclosure of
Hind. Pet. 56–68. Specifically, Petitioner asserts that “Hind was considered
during prosecution of the ’999 patent,” but Patent Owner “failed to
incorporate limitations into claim 13 that it argued overcame the Hind
reference,” and, thus, “Hind renders obvious claim 13.” Id. at 56.
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1. Overview of Hind
Hind is titled “Method and Apparatus for Exclusively Pairing
Wireless Devices.” Ex. 1005, code (54). Hind describes “creating a secure,
short-range network for securely transmitting information among wireless
devices and creating a secure communications mechanism for paired
devices.” Id. at 1:17–21. For example, Hind discloses that a pair of devices
may create a pairing relationship by each storing a key associated with the
paired device.10 Id. at 2:55–3:1. That key can be “reused anytime the paired
devices wish to communicate securely.” Id. at 3:3–5.
Hind also discloses using digital certificates to connect in a secure
manner.11 Id. at 6:10–12. Figure 6 of Hind is reproduced below.

10 Petitioner refers to this as the “secret/link key embodiment.” Pet. 63.
11 Petitioner refers to this as the “certificate embodiment.” Pet. 63–65.
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Figure 6 of Hind depicts the pairing of two devices, headset 6001 and
mobile telephone 6003, using certificates. Id. at 6:58–59, 12:64–13:4. Each
of the two devices is provided with a device certificate. Id. at 13:4–10. To
pair the devices, they are brought into radio proximity and the user pushes a
button 6020, which causes the device to transmit its certificate 6030 to the
other device. Id. at 13:13–17. The other device verifies the certificate by
displaying a device identifier using a previously generated public key, and if
it matches the known device identifier, the user pushes a button 6060 to
accept the pairing. Id. at 13:17–31. According to Hind, after this process,
“the two devices are paired and can securely reauthenticate (using
certificates or optionally the link keys as a shared secret) and establish
encrypted communications at any time in the future.” Id. at 13:33–36.
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2. Analysis
Petitioner asserts that Hind teaches or suggests each of limitations of
claim 13. Pet. 56–68. In particular, Petitioner contends that both the
secret/link key embodiment and the certificate embodiment disclosed by
Hind disclose the first exchange of authentication information limitation.
Pet. 63–65. Specifically, Petitioner explains that in the secret/link key
embodiment, a PIN is used to generate the secret/link key, which is used for
authentication and encryption and “then reused anytime the paired devices
wish to communicate securely.” Id. at 61–62, 63. According to Petitioner, a
person of ordinary skill in the art “would appreciate that when two electronic
devices desire to authenticate communications with each other at a later time
. . . the secret/link key would be ‘reused.’” Id. at 67 (citing Ex. 1006 ¶ 187);
see also Reply 15–16 (citing Ex. 1013 ¶ 25). For the certificate
embodiment, Petitioner asserts that certificates are generated as shown in
Hind’s Figure 1A (Pet. 62) and authentication is performed using the
exchange of certificate information as disclosed in Hind’s Figure 2 (id. at
63–64) and, later, the two devices exchange the certificate information for
authentication over a second link (id. at 67–68).
Patent Owner does not agree that Hind teaches the first and second
exchange of authentication information limitations. PO Resp. 20–27. Patent
Owner’s position is based on a construction of the term “second link” that
excludes any Bluetooth link reusing an authentication code. See id. at 23–24
(pointing to Hind’s Figure 2 as describing a process flow that occurs after
the first authentication, but is “substantially different” and does not require
“entry or storage of secrets associated with each potential communication
partner, such as user identifiers and passwords, PINs, or encryption keys”),
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24 (asserting that the portion of Hind that discusses reauthentication using
certificates or link keys is a different embodiment that discusses “how two
devices can reauthenticate to establish encrypted communications in the
future on the same link”) (emphasis added); 25 (asserting that Hind’s
statement that the stored key is then reused also “assumes re-establishing the
same link rather than a ‘second link’”); Sur-Reply 14–17.
As discussed in the claim construction section above (supra § III.B.2),
we do not adopt Patent Owner’s narrow construction of the term “second
link” as excluding all Bluetooth links that reuse authentication codes.
Therefore, we find Petitioner has established by a preponderance of the
evidence that Hind at least suggests the first and second exchange of
authentication information limitations. We agree with Petitioner that both of
Hind’s embodiments—secret/link key and certificate exchange—teach or
suggest that authentication information is reused in second links, including
subsequent Bluetooth connections, between the devices as recited in claim
13. Ex. 1005, Figs. 1A, 2, 2:55–66, 3:3–5, 9:16–61, 11:5–48, 13:33–36.
We have reviewed Petitioner’s arguments and evidence concerning
the claim limitations not specifically contested by Patent Owner, and we are
likewise persuaded that Petitioner has established by a preponderance of the
evidence that Hind teaches or suggests each of those limitations.
Accordingly, based upon our review of the current record, we
conclude that Petitioner has demonstrated a reasonable likelihood of
establishing that claim 13 would have been obvious over Hind.
F. Patent Owner’s Constitutional Challenge
Patent Owner argues that Administrative Patent Judges (“APJs”) are
unconstitutionally appointed principal officers. PO Resp. 27–31 (citing
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Patent 7,136,999 B1

37
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.
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.
IV. CONCLUSION
For the reasons expressed above, we determine that Petitioner has not
demonstrated by a preponderance of the evidence that claims 1–3, 6–8, 11–
14, 16, and 17 of the ’999 patent would have been obvious over
Varadharajan alone, but has demonstrated by a preponderance of the
evidence that claims 1, 2, 4, 5, 7–10, 13–15, and 17 of the ’999 patent would
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Patent 7,136,999 B1

38
have been obvious over Varadharajan combined with BT Core and that
claim 13 would have been obvious over Hind.12

V. ORDER
Accordingly, it is:
ORDERED that claims 3, 6, 11, 12, and 16 of the ’999 patent have not
been shown to be unpatentable;
ORDERED that claims 1, 2, 4, 5, 7–10, 13–15, and 17 of the ’999
patent have been shown to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,

12 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–3, 6–8,
11–14, 16,
17
103 Varadharajan 1–3, 6–8, 11–
14, 16, 17
1, 2, 4, 5,
7–10, 13–
15, 17
103 Varadharajan, BT
Core
1, 2, 4, 5, 7–
10, 13–15, 17

13 103 Hind 13
Overall
Outcome
1, 2, 4, 5, 7–
10, 13–15, 17
3, 6, 11, 12, 16
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Patent 7,136,999 B1

39
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.

For PETITIONER:

Larissa S. Bifano
James M. Heintz
Jonathan Hicks
DLA PIPER, LLP
larissa.bifano@dlapiper.com
jim.heintz@dlapiper.com
jonathan.hicks@dlapiper.com
Apple-Uniloc-IPR@dlapiper.com

For PATENT OWNER:

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