Uniloc 2017 LLC

Patent Trials and Appeals Board

Oct 12, 2021

IPR2020-00756 (P.T.A.B. Oct. 12, 2021)

Trials@uspto.gov Paper 30
571.272.7822 Date: October 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE LLC,
Petitioner,

v.

UNILOC 2017 LLC,
Patent Owner.
____________

IPR2020-00756
Patent 9,564,952 B2
____________

Before SALLY C. MEDLEY, MICHAEL R. ZECHER, and
NABEEL U. KHAN, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

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

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I. INTRODUCTION
Google LLC (“Google”), filed a Petition requesting an inter partes
review of claims 9–12 of U.S. Patent No. 9,564,952 B2 (Ex. 1001, “the ’952
patent”). Paper 1 (“Pet.”). Patent Owner, Uniloc 2017 LLC (“Uniloc”),
filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). With our
authorization, Google filed a Reply (Paper 10), and Uniloc filed a Sur-reply
(Paper 12), each of which were tailored narrowly to address the non-
exclusive list of six factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-
00019, Paper 11 (PTAB Mar. 20, 2020) (Order authorizing supplemental
briefing) (precedential) that we consider in determining whether to exercise
our discretion to institute an inter partes review when there is a related
district court case involving the same patent. Taking into account the
arguments presented in Uniloc’s Preliminary Response together with the
arguments presented in the authorized briefing, we determined that the
information presented in the Petition established that there was a reasonable
likelihood that Google would prevail with respect to at least one challenged
claim. Pursuant to 35 U.S.C. § 314, we instituted this inter partes review on
October 15, 2020, as to all of the challenged claims and all grounds raised in
the Petition. Paper 15 (“Institution Decision” or “Dec. on Inst.”).
During the course of trial, Uniloc filed a Patent Owner Response
(Paper 18, “PO Resp.”), Google filed a Reply to the Patent Owner Response
(Paper 20, “Pet. Reply”), and Uniloc filed a Sur-reply to the Reply
(Paper 22, “PO Sur-reply”). An oral hearing was held on July 15, 2021, and
a transcript of the hearing is included in the record. Paper 29 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of
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claims 9–12 of the ’952 patent. For the reasons we identify below, we hold
that Google has demonstrated by a preponderance of the evidence that all
challenged claims are unpatentable under § 103(a) as obvious.
A. Related Matters
The parties indicate that the ’952 patent is involved in a district court
case captioned Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-00552 (E.D.
Tex. filed Dec. 31, 2018). Pet. 68–69; Paper 6, 2.1 On June 19, 2020, the
U.S. District Court for the Eastern District of Texas granted Google’s
Motion to Transfer Venue to the U.S. District Court for the Northern District
of California. Ex. 1021. According to Google, the Northern District of
California dismissed the case for lack of subject matter jurisdiction because
it found that at least Fortess Credit Co. LLC held sufficient rights in the ’952
patent. Paper 19, 1 (citing Uniloc 2017 LLC v. Google LLC, No. 4:20-cv-
05345-YGR, Dkt. 120 (N.D. Cal. entered Dec. 22, 2020) (single order
addressing eleven cases)). On December 31, 2020, Google indicates that
Uniloc appealed the order dismissing the case for lack of subject matter
jurisdiction to the U.S. Court of Appeals for the Federal Circuit. Id.
B. The ’952 Patent
The ’952 patent, titled “Near Field Authentication Through
Communication of Enclosed Content Sound Waves,” issued from U.S.
Patent Application No. 13/734,178 (“the ’178 application”), filed on January
4, 2013. Ex. 1001, codes (54), (45), (21), (22). The ’952 patent claims the

1 Uniloc’s Mandatory Notices filed in accordance with 37 C.F.R. § 42.8 does
not include page numbers. Paper 6. We consider the Title page as page 1
and then proceed in numerical order.
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benefit of U.S. Provisional Application No. 61/595,599, filed on February 6,
2012. Id. at code (60).
The ’952 patent generally relates to near field authentication of users
and their computing devices, specifically by means of encoded sound waves.
Ex. 1001, 1:12–16. Figure 1 of the ’952 patent is reproduced below.

Figure 1, reproduced above, is a block diagram showing an audio
transceiving computing device transmitting data to an audio receiving
computing device. Ex. 1001, 3:23–25. In Figure 1, system 100 includes
audio transceiving computing device 102 and audio receiving computing
device 104. Id. at 3:64–67. Audio transceiving computing device 102 can
transmit data to audio receiving computing device 104 in the form of
modulated carrier wave 106, which can be a sound wave. Id. at 3:64–4:4.
The ’952 patent states that “[s]ound waves can transmit information
accurately over a very short distance (near field communications) using
inexpensive equipment.” Id. at 4:4–6.
The ’952 patent describes an illustrative example of a user seeking to
purchase a product at a register using a mobile phone. Ex. 1001, 11:9–11.
In this particular example, the mobile phone through its microphone scans a
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plurality of predetermined frequencies for a free frequency. Id. at 11:15–17.
According to the ’952 patent, a free frequency among a plurality of
predetermined frequencies is merely a frequency that has no discernable
signal, a frequency that has no signal strength that satisfies a minimum
amplitude threshold, or a frequency that otherwise meets “pre-established
criteria” for being a free frequency. Id. at 11:18–24. In another
embodiment, the ’952 patent discloses that a free frequency that meets “pre-
established criteria” may include a frequency that has a noise level below a
predetermined noise level threshold or a frequency that has an interference
level below a predetermined interference level threshold. Id. at 5:17–21.
Turning back to the illustrative example of using a mobile phone at a
register, once a free frequency from a plurality of predetermined frequencies
has been selected, the mobile phone generates a periodic enclosed content
message representing device identification data and the user’s credit card
information. Ex. 1001, 11:26–30. The mobile phone then generates a
carrier wave and modulates the carrier wave using the periodic enclosed
content message. Id. at 11:33–35. The mobile phone transmits the
modulated carrier wave at the free frequency through its output speaker. Id.
at 11:39–41. In this illustrative example, the mobile phone does not have its
physical components modified with expensive equipment, but can use the
speaker already included in the phone. Id. at 11:44–47.
The periodic enclosed content message includes a plurality of
enclosed content messages. Ex. 1001, 5:55–57, Fig. 3 (item 302a–302n).
Each of the enclosed messages includes a begin indication, a content, and an
end indication. Id. at 5:58–60, Fig. 3 (items 304, 306, 308).
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Furthermore, the device identification data includes a device
fingerprint. Ex. 1001, 6:11–19. A device fingerprint comprises a bit string
or bit array that is derived from user-configurable and non-user-configurable
data specific to the audio transceiver computing device. Id. at 6:34–37.
Non-user-configurable data includes data such as serial numbers. Id. at
6:37–39. User-configurable data includes data such as registry entries,
application usage data, file list information, and Media Access Control
addresses. Id. at 6:41–43.
C. Challenged Claims
Of the challenged claims, claim 9 is the only independent claim.
Independent claim 9 is directed to “[a] method for near field authentication
of a source, the source using an audio transceiver computing device.”
Ex. 1001, 14:53–54. Claims 10–12 directly depend from independent claim
9. Id. at 15:6–14. Independent claim 9 is illustrative of the challenged
claims and is reproduced below.
9. A method for near field authentication of a source,
the source using an audio transceiver computing device, the
method comprising:
scanning a plurality of predetermined frequencies for a
free frequency;
selecting the free frequency from the plurality of
predetermined frequencies;
generating a periodic enclosed content message;
generating a modulated carrier wave representing the
periodic enclosed content message; and
transmitting the modulated carrier wave at the free
frequency;
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wherein each period of the periodic enclosed content
message includes a begin indication, a content, and an end
indication;
wherein the content includes device identification data
including a bit array derived from user-configurable and non-
user-configurable data specific to the audio transceiver
computing device; and
wherein the modulated carrier wave comprises a sound
wave.
Id. at 14:53–15:5.
D. Asserted Prior Art References
Google relies on the prior art references set forth in the table below.
Pet. 7–8.
Name2 Reference Dates Exhibit No.
Paulson US 8,514,662 B2 issued Aug. 20, 2013; filed Aug. 27, 2010
1005
Surprenant US 8,837,257 B2 issued Sept. 16, 2014; filed June 2, 2011
1006
Beenau US 2009/0171851 A1 published July 2, 2009; filed Feb. 18, 2009
1007
McConnell WO 97/31437 published Aug. 28, 1997; filed Feb. 19, 1997
1008

E. Asserted Grounds of Unpatentability
Google challenges claims 9–12 of the ’952 patent based on the
asserted grounds of unpatentability set forth in the table below. Pet. 8, 10–
66.

2 For clarity and ease of reference, we only list the first named inventor.
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Claim(s) Challenged 35 U.S.C. § References
9–12 103(a)3 Paulson, Surprenant
9–12 103(a) Paulson, Surprenant, Beenau
11 103(a) Paulson, Surprenant, McConnell
11 103(a) Paulson, Surprenant, Beenau, McConnell
II. ANALYSIS
A. Claim Construction
In an inter partes review proceeding based on a petition filed on or
after November 13, 2018, such as here, claim terms are construed using the
same claim construction standard as in a civil action under 35 U.S.C.
§ 282(b). See 37 C.F.R. § 42.100(b) (2019). That is, claim terms generally
are construed in accordance with their ordinary and customary meaning, as
understood by one of ordinary skill in the art, and the prosecution history
pertaining to the patent at issue. Id. The ordinary and customary meaning
of a claim term “is its meaning to the ordinary artisan after reading the entire
patent,” and “as of the effective filing date of the patent application.”
Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1321 (Fed. Circ. 2005) (en
banc).
In its Petition, Google argues that no claim terms require construction
because the asserted prior art renders the claims obvious under either of the
parties’ proposed constructions in the district court case. Pet. 9. In its Patent

3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284,
287–88 (2011), amended 35 U.S.C. § 103, effective March 16, 2013.
Because the ’952 patent issued from the ’178 application, which was filed
before this date, the pre-AIA version of § 103 applies. Ex. 1001, codes (21),
(22).
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Owner Response, Uniloc provides a table listing the parties’ proposed
constructions in the district court case, but does not argue that any particular
claim term requires construction for purposes of this Final Written Decision.
See PO Resp. 6–8. After considering the fully developed trial record, the
issues raised by the parties do not turn on the construction of a particular
claim term. As a result, we need not construe any claim term for purposes of
determining whether Google has demonstrated by a preponderance of the
evidence that claims 9–12 of the ’952 are unpatentable as obvious under
§ 103(a). 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))).
In our obviousness analysis below, we address the scope and meaning
of the claim term “non-user-configurable data,” as this term pertains to the
teachings of Surprenant contested by the parties. See infra Section II.B.5.c.
More specifically, we address below whether Surprenant’s acoustics
modulation protocol identification (“AMP ID”), which is described as being
a “unique identification string” specific to “transmit device 101,” teaches or
suggests the claim term “non-user-configurable data” as that term is used in
the context of the ’952 patent. See infra id.
B. Obviousness Over the Combined Teachings of Paulson and Surprenant
Google contends that claims 9–12 of the ’952 patent are unpatentable
under § 103(a) as obvious over the combined teachings of Paulson and
Surprenant. Pet. 10–54. Google explains how the combined teachings of
Paulson and Surprenant account for the subject matter of each challenged
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claim, and provides reasoning as to why a person of ordinary skill in the art
would have been prompted to modify the teachings of these references. Pet.
10–54; Pet. Reply 2–12, 14–22. Google relies on the Declaration of Stuart J.
Lipoff accompanying the Petition and the Reply Declaration of Mr. Lipoff
accompanying the Reply to support its positions, both of which are
unrebutted on this record. Ex. 1003; Ex. 1027.
During trial, Uniloc contends that the combined teachings of Paulson
and Surprenant do not account for the following limitations: (1) “scanning a
plurality of predetermined frequencies for a free frequency”; and (2) “the
content includes device identification data including a bit array derived from
user-configurable and non-user-configurable data specific to the audio
transceiver computing device.” PO Resp. 10–19; PO Sur-reply 1–12.
Uniloc does not introduce testimony from a declarant in support of its
positions.
We begin our analysis with the principles of law that generally apply
to an obviousness ground, an assessment of the level of skill in the art,
followed by brief overviews of Paulson and Surprenant, and then we address
the parties’ contentions with respect to the challenged claims.
1. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including (1) the scope and content of the prior art; (2) any differences
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between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) when in evidence, objective indicia of non-obviousness
(i.e., secondary considerations, such as commercial success, long-felt but
unsolved needs, failure of others, etc.).4 Graham v. John Deere Co., 383
U.S. 1, 17–18 (1966). We analyze the asserted grounds based on
obviousness with the principles identified above in mind.
2. Level of Skill in the Art
In determining the level of skill in the art, various factors may be
considered, including the “type of problems encountered in the art; prior art
solutions to those problems; rapidity with which innovations are made;
sophistication of the technology; and educational level of active workers in
the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation
omitted). Relying on the testimony of Mr. Lipoff, Google provides the
following assessment of the level of skill in the art:
A person of ordinary skill at the time of the alleged
invention of the ’952 patent would have held at least a bachelor’s
degree in electrical engineering or computer science and had one
year of relevant experience in the field of wireless
communications. Less work experience may be compensated by
a higher level of education, such as a master’s degree, and vice
versa.
Pet. 8–9 (citation omitted) (citing Ex. 1003 ¶¶ 33–35). Uniloc argues that
Google’s proposed assessment is improper because it does not define
thresholds for “[l]ess work experience” or “higher level of education.” PO
Resp. 6 (alteration in original). Uniloc, however, does not offer its own

4 In its Patent Owner Response, Uniloc does not present arguments or
evidence of secondary considerations. See PO Resp.
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assessment of the level of skill in the art, much less indicate that the
resolution of any issue depends on a specific type of work experience or a
specific level of education. See id. We, therefore, adopt Google’s proposed
assessment of the level of skill in the art and apply it to our obviousness
analysis below because it is consistent with the ’952 patent and the asserted
prior art.
3. Overview of Paulson
Paulson discloses a method of wirelessly transmitting and receiving
data through sonic communication. Ex. 1005, code (57). Sonic transmission
frequencies are initially determined by the highest frequencies the transmit
device can send and the receive device can detect and decode. Id. at 12:51–
56. Samples of the ambient sound in the area are used to create a noise
characteristic. Id. at 11:17–19. This noise characteristic is analyzed to
determine which sonic frequencies, if any, are available. Id. at 13:14–16.
For example, a noise characteristic may show an absence of sonic noise in
the frequency range of 15 Khz to 22 Khz. Id. at 13:17–19.
If the noise characteristic indicates that the desired sonic transmission
frequencies are unavailable, transmission of the sonic signal can be delayed.
Ex. 1005, 11:19–22; see also id. at 13:26–38 (disclosing the same in the
context of steps 406 and 408 of Figure 4). Paulson discloses an example in
which the noise of a coffee grinder in a coffee shop may fill a wide range of
the available sonic frequency spectrum for a very short time period. Id. at
11:27–29. In this example, the delay may be for an interval of time until a
subsequent sample of the sound indicates that the grinder has stopped and
the sonic transmission frequencies are available. Id. at 11:30–33; see also
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id. at 13:38–49 (disclosing that the delay may be “a predetermined period of
time” or “a random or pseudo-random period of time”).
4. Overview of Surprenant
Surprenant is related to Paulson because Surprenant shares an
inventor and assignee with Paulson, and incorporates Paulson by reference.
See Ex. 1005, codes (21), (75); Ex. 1006, code (75), 1:7–10. Surprenant
discloses AMP to enable two or more devices to communicate acoustically
with one another, without the need for specialized hardware. Ex. 1006,
4:6–9. Surprenant discloses converting a message to binary data;
modulating one or more selected frequencies for one or more acoustic carrier
signals based on the binary data to generate one or more modulated acoustic
carrier signals; and storing the modulated acoustic carrier signal in a buffer
for subsequent output and transmission by a speaker. Id. at code (57).
Surprenant explains that the message may include an AMP ID.
Ex. 1006, 7:44. In one embodiment, Surprenant discloses that the AMP ID
is a unique identification string that is associated with the transmit device.
Id. at 7:45–49. In another embodiment, Surprenant discloses that the AMP
ID may comprise credentials that enable the receive device to access an
account and perform services such as financial transactions, file sharing, or
information exchange. Id. at 7:53–57.
5. Claim 9
The preamble of independent claim 9 recites “[a] method for near
field authentication of a source, the source using an audio transceiver
computing device.” Ex. 1001, 14:53–54. Google contends that, to the
extent the preamble is limiting, Paulson discloses a “method, apparatus and
computer program product . . . for wirelessly transmitting and receiving data
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through sonic communication.” Pet. 20 (citing Ex. 1005, code (57))
(alteration in original). Relying on the testimony of Mr. Lipoff, Google
explains that, because sound waves have a limited range, a person of
ordinary skill in the art would have understood that a sonic communication
system satisfies the “near field” requirement. Id. at 22 (citing Ex. 1003
¶ 63). Additionally, Google cites to Surprenant’s teaching that data
transmission is received within a 10 cm range. Id. at 23 (citing Ex. 1006,
8:38–41).
Google also relies on Paulson’s disclosure of sonic codes and public-
private key management in the context of sonic security processing.
Pet. 21–22 (citing Ex. 1005, 10:48–56). Google explains that a person of
ordinary skill in the art would have recognized that public-private key
systems comprise authenticating a source. Id. at 22 (citing Ex. 1003 ¶ 61).
Additionally, Google asserts that Surprenant also teaches authenticating a
source because Surprenant uses an AMP ID that comprises credentials, and a
person of ordinary skill in the art would have understood that credentials are
used during authentication. Id. (citing Ex. 1006, 7:54–57; Ex. 1003 ¶ 62).
Based on Paulson’s disclosure of sonic communications, Google
explains that a person of ordinary skill in the art would have understood that
Paulson’s method of communication uses an audio transceiver because sonic
communications use an audio/sonic transmitter and receiver in the form of a
speaker and microphone. Pet. 21 (citing Ex. 1005, Fig. 7; Ex. 1003 ¶ 59).
Google asserts that Paulson also discloses computing devices in the form of
mobile devices and computers. Id. (citing Ex. 1005, 4:11–16; Ex. 1003
¶ 60).
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The first step of independent claim 9 recites “scanning a plurality of
predetermined frequencies for a free frequency.” Ex. 1001, 14:56–57.
Google contends that Paulson teaches this limitation. Pet. 23–29. As
support for its contentions, Google points to Paulson’s Figure 4, which
identifies a “Set of Sonic Transmission Frequencies For Transmitting A
Sonic Carrier Signal” in step 402. Id. at 24 (quoting Ex. 1005, Fig. 4 (step
402)). According to Google, Paulson describes step 402 as setting the sonic
transmission frequencies to the highest frequencies available, and Paulson
states that “[t]hese frequencies are initially determined by the highest
frequencies the transmit device can send and the receive device can detect
and decode.” Id. at 24–25 (quoting Ex. 1005, 12:53–56). Then, at step 406,
Google argues that Paulson “determine[s] what sonic frequencies, if any, are
available.” Id. at 25–26 (quoting Ex. 1005, 13:11–19).
According to Google, Paulson explains that this determination is
based on an analysis of the noise characteristic. Pet. 25–26 (citing Ex. 1005,
13:11–16). Google argues that the noise characteristic is created by taking
“[s]amples of the ambient sound in the area” and using these samples to
“create [the] noise characteristic indicative of the most prevalent sounds.”
Id. at 23, 25 (first alteration in original) (quoting Ex. 1005, 11:16–18) (citing
Ex. 1005, 13:1–10, Fig. 4 (step 404)).
Google further argues that Paulson checks whether “the noise
characteristic is low enough to not interfere with the transmission of sonic
carrier signals,” and this check includes verifying whether the “signal-to-
noise (SNR) ratio at these frequencies is higher than a predetermined
threshold.” Pet. 26 (quoting Ex. 1005, 13:50–59). Relying on the testimony
of Mr. Lipoff, Google explains that a person of ordinary skill in the art
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would have recognized that, for a given signal level, the SNR increases
when the noise level decreases. Id. at 26–27 (citing Ex. 1003 ¶ 72). Google
concludes that Paulson’s frequency selection is based on a predetermined
threshold, such as having a low enough noise characteristic as reflected in a
higher SNR. Id. at 27. Google asserts that its conclusion in this regard is
consistent with how the ’952 patent describes a “free frequency” as being,
“for example, a frequency which has a noise level below a predetermined
noise level threshold or a frequency that has an interference level below a
predetermined interference level threshold.” Id. (emphases omitted)
(quoting Ex. 1001, 5:17–21).
The second step of independent claim 9 recites “selecting the free
frequency from the plurality of predetermined frequencies.” Ex. 1001,
14:58–59. Google relies on essentially the same arguments and evidence
discussed above for the “scanning” limitation to explain how Paulson
teaches this limitation. Pet. 23–29. Google explains that a person of
ordinary skill in the art would have understood Paulson to disclose
“selecting the free frequency from the plurality of predetermined
frequencies” because Paulson uses the noise characteristic to choose one or
more free frequencies as part of a “careful selection of the sonic
transmission frequencies.” Id. at 29 (quoting Ex. 1005, 11:13–16).
The third and fourth steps of independent claim 9 recite “generating a
periodic enclosed content message” and “generating a modulated carrier
wave representing the periodic enclosed content message,” respectively.
Ex. 1001, 14:60–62. For these two steps, Google relies on Surprenant’s
teachings of “converting a message to binary data” and “modulating one or
more selected frequencies for one or more acoustic carrier signals based on
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the binary data to generate one or more modulated acoustic carrier signals.”
Pet. 29–30 (citing Ex. 1006, code (57)). Relying on the testimony of Mr.
Lipoff, Google argues the following:
A person of ordinary skill in the art would have understood
that converting a message to binary data and using the binary
data to modulate a carrier signal based on the data to be within
the scope of the claimed “generating a modulated carrier wave
representing the . . . enclosed content message,” because the
modulated carrier signal includes the binary message data.
Id. at 30–31 (citing Ex. 1003 ¶ 77).
Google further argues that Paulson and Surprenant collectively teach
that the message is “periodic.” Pet. 31. Google argues that Surprenant
discloses “transmit[ting] an AMP ID multiple times.” Id. (alteration in
original) (quoting Ex. 1006, 16:22–23). According to Google, this multiple
transmission strategy helps to overcome noise, as Paulson describes a system
that “transmit[s] sonic carrier signals multiple times in an effort to overcome
a temporary use of the desired sonic frequencies in the area.” Id. (alteration
in original) (quoting Ex. 1005, 11:23–27). Google further relies on
Paulson’s explicit disclosure that the delay between transmissions “can be a
predetermined period of time.” Id. (emphasis omitted) (quoting Ex. 1005,
13:27–49). Google concludes that, “[w]hen a message is repeated with a
predetermined delay, it repeats at a regular interval that one of ordinary skill
would have understood to be ‘periodic’ as that term is used in the ’952
patent.” Id. at 32 (citing Ex. 1001, 5:52–54, 7:4–16; Ex. 1003 ¶ 80).
The fifth and final step of independent claim 9 recites “transmitting
the modulated carrier wave at the free frequency.” Ex. 1001, 14:63–64.
Google argues that Paulson teaches this limitation because it discloses
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transmitting sonic carrier signals carrying the modulated data over the air at
one or more sonic transmission frequencies. Pet. 32–33 (citing Ex. 1005,
2:26–28, 2:31–33, 12:34–36). Relying on the testimony of Mr. Lipoff,
Google further explains that Paulson transmits the modulated data over the
same free frequency selected using its noise-characteristic process. Id. at 33
(citing Ex. 1003 ¶ 83). Google also cites Surprenant’s teachings regarding
transmitting at one or more frequencies. Id. (citing Ex. 1006, 7:4–8, 7:58–
61).
After setting forth the method steps, independent claim 9 recites a first
“wherein” clause specifying that “each period of the periodic enclosed
content message includes a begin indication, a content, and an end
indication.” Ex. 1001, 14:65–67. Google relies on Figure 4 of Surprenant,
reproduced below, to teach this limitation.

Pet. 34. Figure 4 of Surprenant, reproduced above, illustrates modulated
acoustic carrier signal 111 that includes locking segment 400, mark segment
402, and data segment 404. Ex. 1006, 8:54–58.
Relying on the testimony of Mr. Lipoff, Google asserts that a person
of ordinary skill in the art would have understood that locking segment 400
or mark segment 402 teaches the claimed “begin indication” because they
are disposed at the beginning of the modulated carrier signal and they
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indicate the beginning of the periodic enclosed content message. Pet. 35
(citing Ex. 1003 ¶ 86). In this regard, Google explains that Surprenant
teaches that mark segment 402 “may be used to reset data reception
parameters (buffers are cleared) and prepare for the reception of the data,
looking for a start-bit,” and explains that “[d]ata alignment begins
following the mark segment 402.” Id. (quoting Ex. 1006, 9:1–7) (alteration
in original).
With respect to the claimed “content,” Google explains that following
mark segment 402, Surprenant discloses data segment 404 that “may
comprise 2 to N words of data.” Pet. 38 (quoting Ex. 1006, 9:8). Relying on
the testimony of Mr. Lipoff, Google asserts that a person of ordinary skill in
the art would have understood that Surprenant’s data segment 404 teaches
the claimed “content” because it contains the information that the system
desires to transmit. Id. (citing Ex. 1003 ¶ 93).
Turning to the claimed “end indication,” Google contends that
Surprenant teaches that the data is “followed by a cyclic redundancy check,
CRC.” Pet. 38 (quoting Ex. 1006, 9:8–9). To illustrate this teaching,
Google annotates Figure 4 of Surprenant as shown below.

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Id. at 39. This annotated version of Surprenant’s Figure 4, reproduced
above, illustrates modulated acoustic carrier signal 111 that includes locking
segment 400, mark segment 402, data segment 404, and a CRC following
data segment 404. According to Google, the purpose of the CRC, or
alternatively a checksum, is to ensure data integrity. Id. (citing Ex. 1006,
9:8–12). Google asserts that a person of ordinary skill in the art would have
understood the CRC or checksum teaches the claimed “end indication.” Id.
(citing Ex. 1003 ¶ 94).
Google provides further reasoning why a person of ordinary skill in
the art would have understood that “each period of the periodic enclosed
content message includes” the locking or mark segments 400 and 402, data
segment 404, and CRC. Pet. 40–41 (citing Ex. 1003 ¶¶ 96–100). For
example, Google argues mark segment 402 ensures that data buffers are
cleared of old data and it identifies where the data starts so that new data
may be received properly. Id. at 40 (citing Ex. 1006, 9:1–7; Ex. 1003 ¶ 97).
Relying on the testimony of Mr. Lipoff, Google argues that a person of
ordinary skill in the art could only verify the integrity of each data
transmission if the CRC is also transmitted during each data transmission.
Id. at 41 (citing Ex. 1003 ¶ 99).
Independent claim 9 recites a second “wherein” clause specifying that
the “content includes device identification data including a bit array derived
from user-configurable and non-user-configurable data.” Ex. 1001, 15:1–3.
For this limitation, Google relies on Surprenant’s teaching that “the message
may include an AMP ID.” Pet. 42 (quoting Ex. 1006, 7:44–57). Google
argues that, because Surprenant’s AMP ID is a “unique identification string”
that is specific to “the transmit device 101 and/or the user of the transmit
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device 101,” a person ordinary skill in the art would have understood it to
include “device identification data.” Id. (quoting Ex. 1006, 7:45–49).
Google also asserts that a person of ordinary skill in the art would have
understood that the AMP ID includes a “bit array” because the method
processes binary data in the form of bits. Id. at 42–43 (citing Ex. 1006, 9:8–
9, 17:20; Ex. 1003 ¶ 102).
Google further contends that Surprenant’s AMP ID is derived from
“user-configurable” data. Pet. 44–45. In particular, because the AMP ID
may comprise credentials, Google argues that a person of ordinary skill in
the art would have understood that these credentials are user-configurable.
Id. at 44 (citing Ex. 1006, 7:53–57; Ex. 1003 ¶¶ 105, 106).
Google also contends that Surprenant’s AMP ID is derived from
“non-user-configurable data.” Pet. 45–46. Here, Google relies on
Surprenant’s teaching that “the AMP ID is a unique identification string”
specific to “transmit device 101.” Id. (citing Ex. 1006, 7:45–49; Ex. 1003
¶ 107). Relying on the testimony of Mr. Lipoff, Google argues that, because
Surprenant’s AMP ID is disclosed as a “unique identification string” specific
to a transmit device, a person of ordinary skill in the art would have
understood it to be derived from a unique property of the device itself that is
not user-configurable. Id. at 46 (citing Ex. 1003 ¶ 107).
Google further explains that Surprenant does not identify expressly
the unique identification that is the AMP ID as a serial number or some
other information, but to the extent that there is ambiguity as to the exact
type of unique information the AMP ID is derived from, it would have been
obvious to use any of the options that the ’952 patent identifies as well-
known. Pet. 45 (citing Ex. 1003 ¶ 107). As one example, Google argues
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that the ’952 patent indicates that device fingerprints were known and
described elsewhere, including in U.S. Patent No. 5,490,216 (Ex. 1009, “the
’216 patent”), which the ’952 patent incorporates by reference. Pet. 43
(citing Ex. 1001, 6:27–33); see also Ex. 1001, 6:22–24 (describing a device
fingerprint as comprising binary data that identifies the audio transceiver
computing device by a unique data string). Google, in turn, points out that
the ’216 patent describes a security key as generated from information
entered by a user combined with a serial number generated from information
provided by the environment, and that the environment details comprise, for
example, an ROM checksum or other elements that are not user-
configurable. Pet. 43–44, 46 (citing Ex. 1009, 4:4–29).
With respect to the limitation stating “specific to the audio transceiver
computing device,” Google asserts that both the user-configurable data and
non-user-configurable data in Surprenant meet this requirement. Pet. 46–47.
In particular, Google argues that Surprenant’s credentials are specific to the
transmit device and its related access rights, which is consistent with
Surprenant’s earlier teaching that the AMP ID is specific to the transmit
device. Id. at 47 (citing Ex. 1006, 7:45–49). Google further explains that
the credentials amount to user-configurable data because they allow a
receive device to access an account and perform various services, such as
financial transactions, whereas the AMP ID amounts to non-user-
configurable data because it helps to uniquely identify the transmit device
and it would have been obvious for the AMP ID to take the form of, for
example, the device’s serial number. Id. at 46–47 (citing Ex. 1006, 7:53–57;
Ex. 1003 ¶ 109).
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Lastly, independent claim 9 recites a third “wherein” clause
specifying that “the modulated carrier wave comprises a sound wave.”
Ex. 1001, 15:4–5. Google contends that Paulson and Surprenant collectively
teach this limitation because it would have been obvious to use Surprenant’s
AMP to transmit information using Paulson’s sonic carrier signals at a
frequency selected based on the noise in the environment. Pet. 47. Relying
on the testimony of Mr. Lipoff, Google asserts that a person of ordinary skill
in the art would have understood that Paulson’s sonic carrier signals carrying
data modulated according to Surprenant’s AMP falls within the scope of the
claimed “modulated carrier wave compris[ing] a sound wave” because sonic
and acoustic both refer to sound. Id. at 47–48 (Ex. 1003 ¶ 111).
Turning to rationale to combine, Google contends that it would have
been obvious to combine the teachings of Paulson with those of Surprenant
in a manner that uses Surprenant’s improved modulation protocol in
Paulson’s sonic communication system. Pet. 15 (citing Ex. 1003 ¶¶ 47–56).
Google argues that Paulson provides an example of a modulation protocol
based upon frequency shift key modulation (“FSK”), but states that alternate
modulation protocols may also be used. Id. at 16 (citing Ex. 1005, 12:19–
31). Meanwhile, Google argues that Surprenant is directed to an “Acoustic
Modulation Protocol” or AMP (id. (citing Ex. 1006, code (54)), and teaches
that this AMP is an alternative to and improvement upon other prior art
modulation protocols (id. at 18 (citing Ex. 1006, 2:29–35); see also
Ex. 1006, 2:30–33 (identifying FSK as the prior art solution)). Moreover,
Google points out that Paulson and Surprenant are in the same field of
sonic/acoustic carrier signals, share an inventor and assignee, and Surprenant
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cites to Paulson and then incorporates Paulson by reference. Pet. 15–16
(citing Ex. 1005, code (57); Ex. 1006, code (57), 1:6–10).
During trial, Uniloc presents arguments that fall within one of the
following three groupings: (1) Paulson does not teach “scanning a plurality
predetermined frequencies,” as recited in independent claim 9; (2) Paulson
does not teaching “scanning . . . for a free frequency” among the “plurality
of predetermined frequencies,” as recited in independent claim 9; and
(3) Google fails to demonstrate that either Surprenant, or the admitted prior
art as evidenced by the ’216 patent, teaches “content [that] includes device
identification data including a bit array derived from user-configurable and
non-user-configurable data specific to the audio transceiver computing
device,” as recited in independent claim 9. PO Resp. 10–19; PO Sur-reply
1–12. We address these argument groupings in turn.
a. “scanning a plurality of predetermined frequencies”
In its Patent Owner Response, Uniloc contends that Paulson does not
teach “scanning a plurality of predetermined frequencies,” as recited in
independent claim 9, because the purported indiscriminate “range of sonic
frequencies” sampled at step 404 in Figure 4 of Paulson is not set by the
“highest frequencies” determined at step 402. PO Resp. 10–11 (quoting
Ex. 1005, 13:3, 12:51–53). According to Uniloc, because Paulson discloses
that “the sonic transmission frequencies available according to the noise
characteristic may be too high for the receive device to sample and
demodulate,” the sampling performed at step 404 in Paulson must be outside
“the high frequencies . . . the receive device can detect and decode.” Id. at
11 (first quoting Ex. 1005, 13:29–32, then quoting id. at 12:53–56). Uniloc
also argues that other disclosures in Paulson highlight this purported
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disconnect between the frequencies that are “initially determined” in step
402 with the sampling that occurs at step 404. Id. (citing Ex. 1005, 13:19–
21).
In its Reply, Google maintains that step 402 in Figure 4 of Paulson
teaches “scanning a plurality predetermined frequencies,” as recited in
independent claim 9. Pet. Reply 2–3 (citing Pet. 23–29, Ex. 1003 ¶¶ 65–75;
Ex. 1005, 14:10–15, Fig. 4; Ex. 1027 (Reply Declaration of Stuart J. Lipoff)
¶ 8). Google argues that Uniloc’s arguments to the contrary are based on a
misunderstanding of Paulson’s disclosure—namely, that the frequencies
“initially determined” at step 402 are not then scanned at step 404. Id. at 3.
To support its argument, Google directs us to Paulson’s Title, which
explicitly states its goal to “use[] modulation frequencies that reduce the
probability of conflict with ambient noise in the environment.” Id. at 3–4
(alteration in original) (quoting Ex. 1005, code (54)). Google argues that
Figure 4 merely illustrates a technique for achieving Paulson’s goal of
reducing the impact of noise interference. Id. at 4 (citing Ex. 1005, 3:1–4;
Ex. 1027 ¶ 10). More specifically, Google argues that, for Paulson to
achieve its stated goal, it is essential that the noise characteristic created at
step 404 covers at least the frequencies “initially determined” at step 402.
Id. (citing Ex. 1027 ¶ 11). Indeed, Google asserts that step 406 in Figure
4—aptly labeled “Could Noise Interfere with Demodulating Data from Set
of Sonic Transmission Frequencies?—is directed to making this
determination. Id. at 4–5 (citing Ex. 1005, 13:27–29, 13:50–52; Ex. 1027
¶ 12).
Relying on the supporting testimony of Mr. Lipoff, together with
Paulson’s corresponding description of step 406 that identifies two examples
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when noise may cause interference, Google argues that Paulson’s system
determines whether the receive device is capable of sampling and
demodulating data in the presence of known noise at step 406. Pet. Reply 5–
7 (citing Ex. 1005, 11:5–12; 13:11–35, 13:52–59; Ex. 1027 ¶¶ 14, 16).
Stated differently, Google argues that, using the noise characteristic
determined at step 406, Paulson’s “system verifies whether the receive
device may reliably receive the data at the identified frequency given the
now-known signal-to-noise ratio.” Id. at 7–8 (citing Pet. 26–28; Ex. 1003
¶ 72; Ex. 1005, 11:27–35; 13:50–59; Ex. 1027 ¶ 17). Google asserts this is
why, after the frequencies are “initially determined” at step 402, Paulson’s
system performs a secondary check to determine whether the receiving
device is capable of sampling and demodulating the incoming transmission.
Id. at 8 (citing Ex. 1027 ¶ 18). Google further argues that its position in this
regard is consistent with Paulson’s “initially determined” language used in
step 402, the further refining of available frequencies in light of the noise
characteristic of the surrounding environment, and the direct link between
the output of step 402 and the input of step 404 illustrated in Figure 4. Id. at
8–9 (citing Ex. 1005, annotated version of Fig. 4; Ex. 1027 ¶¶ 19, 20).
In its Sur-reply, Uniloc reiterates its position that Paulson’s disclosure
of frequencies that are “initially determined” as step 402 does not preset the
range of frequencies sampled at step 404 and, therefore, Paulson does not
teach “scanning a plurality of predetermined frequencies,” as recited in
independent claim 9. PO Sur-reply 1–2. To support its argument that
Paulson indiscriminately samples frequencies at step 404 that are “too high
for the receive device to sample and demodulate,” Uniloc directs us to
sample frequencies that are “too high” for the system to decode, which,
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according to Uniloc, are represented by the frequencies that exceed the sonic
frequency limit 502 illustrated in Figure 5. Id. at 2–3 (quoting Ex. 1005,
13:29–32) (citing Ex. 1005, Fig. 5). Uniloc also argues that Mr. Lipoff’s
supporting testimony on this particular issue should be discarded because it
is “plainly inconsistent” with the express disclosure in Paulson. Id. at 3.
Lastly, Uniloc argues that Google raises a new inherency theory for the first
time in the Reply because Google argues that step 404 of Paulson must
necessarily “cover at least the frequencies initially set in [s]tep 402.” Id. at
3–4 (quoting Pet. Reply 4). Uniloc, however, asserts that Google has failed
to meet the exacting standard for demonstrating obviousness by inherency.
Id. at 4–5.
Based on the fully developed trial record, we agree with Google that
the frequencies “initially determined” as step 402 of Figure 4 preset the
range of frequencies that are sampled, scanned, and eventually selected as
one or more frequencies for transmission throughout steps 404–414 and,
therefore, Paulson teaches “scanning a plurality of predetermined
frequencies,” as recited in independent claim 9. See Pet. 23–25; Pet. Reply
2–9. We begin our analysis by looking at Figure 4 of Paulson, reproduced
below, and its corresponding description.
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Figure 4, reproduced above, illustrates a flowchart representing “the
operations for implementing sonic transmission strategies that reduce the
probability of interference from noise.” Ex. 1005, 3:1–4; see also id. at
12:49–51 (disclosing the same). Beginning with step 402, Paulson discloses
setting the initial sonic transmission frequencies to the highest frequencies in
the communication system, which, according to Paulson, are “frequencies
[that] are initially determined by the highest frequencies the transmit device
can send and the receive device can detect and decode.” Id. at 12:51–56
(emphasis added). At step 404, Paulson discloses “creat[ing] a noise
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characteristic over a predetermined time period that reflects a range of sonic
frequencies and their gain in a geographic location.” Id. at 13:1–4.
At step 406, using the noise characteristic created in the previous step,
Paulson discloses “determin[ing] whether a receive device could potentially
demodulate data from sonic carrier signals and sonic transmission
frequencies.” Ex. 1005, 13:11–14. In one implementation of this particular
step, Paulson requires analyzing the noise characteristic “to determine what
sonic transmission frequencies, if any, are available.” Id. at 13:15–17. If
“the receive device is incapable of demodulating data transmitted over the
set of sonic frequencies” because, as one example, “the sonic transmission
frequencies available according to the noise characteristic may be too high
for the receive device to sample and demodulate,” Paulson discloses
“suspend[ing] transmission of the sonic carrier signals for a time interval,”
and returning to step 404 to sample the noise characteristic yet again “[o]nce
that time interval expires.” Id. at 13:27–49.
Eventually, when the receive device is capable of demodulating a set
of sonic transmission frequencies, Paulson discloses proceeding to step 410
to “check[] if the noise floor at these particular frequencies in the noise
characteristic is low enough to not interfere with the transmission at the
sonic transmission frequencies.” Ex. 1005, 13:50–56. Paulson states that,
“[i]f the signal-to-noise . . . ratio [SNR] at these frequencies is higher than a
predetermined threshold, it is probable that the receive device could
demodulate data” when transmitting the sonic carrier signals. Id. at 13:56–
59. Paulson, however, explains that, in other instances, a reduction or
decrease in the sonic transmission frequencies may increase the usability of
the sonic communication system. Id. at 13:66–14:1. At step 412, sonic
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transmission frequencies are decreased, particularly in a situation where it
would increase the usability as it impacts “the distance and direction a sonic
signal may travel.” Id. at 14:7–9. Finally, at step 414, Paulson discloses
selecting a set of sonic transmission frequencies (i.e., one or more
frequencies) “for transmitting a sonic carrier signal with[in] a geographic
location.” Id. at 14:10–15.
Given that steps 402–414 of Figure 4 are taken to reduce the impact of
noise interference on sonic carrier signals (Ex. 1005, code (54), 3:1–4,
12:49–51), we find that Paulson “initially determine[s]” the frequencies the
transmit device is capable of sending and the receive device is capable of
detecting and decoding at step 402, and then further refines those “initially
determined” frequencies by determining whether they are capable of being
demodulated at step 406 using the noise characteristic created at step 404
(id. at 12:51–13:49). When considering the “initially determined”
frequencies and subsequent refining process together with the sampling,
scanning, and eventual selection of one or more frequencies for transmission
that occurs throughout steps 404–414, we find that Paulson teaches
“scanning a plurality of predetermined frequencies,” as recited in
independent claim 9.
Google’s declarant, Mr. Lipoff, provides testimony supporting our
findings in this regard. In his Declaration accompanying the Petition, Mr.
Lipoff provides the following testimony regarding the “initially determined”
frequencies at step 402:
a person of ordinary skill in the art would have recognized these
frequencies to be within the scope of a “plurality of
predetermined frequencies” because the frequencies are set
initially, before communication takes place, and are based on the
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capabilities of the communicating devices [(i.e., the transmit
device and the receive device)], which are known in advance in
at least one disclosed embodiment.
Ex. 1003 ¶ 68 (citing Ex. 1005, 13:23–26). In his Declaration
accompanying the Reply Brief, Mr. Lipoff clarifies how the “initially
determined” frequencies at step 402 preset the range of frequencies
discussed in the context of steps 404 and 406 by testifying that, “[t]o achieve
[Paulson’s] goal of reducing the probability of interference from noise, one
of ordinary skill [in the art] would have understood that it is essential for the
noise characteristic created at Step 404 to cover at least the frequencies
initially set in Step 402.” Ex. 1027 ¶ 11. Mr. Lipoff further clarifies that
“[o]ne of ordinary skill [in the art] would have understood that the phrase
‘initially determined,’ in conjunction with Paulson’s disclosure about further
refining the available frequencies in light of the noise characteristic in the
surrounding environment, conveys that the range of frequencies identified at
Step 402 is related to the later steps in Paulson’s process,” specifically steps
404 and 406. Id. ¶ 19. We credit the aforementioned testimony of Mr.
Lipoff because it takes into account the reasonable inferences a person of
ordinary skill the art would draw to explain how Paulson’s “initially
determined” frequencies at step 402 preset the range of frequencies that are
further refined based on the noise characteristic in the surrounding
environment at steps 404 and 406. See KSR, 550 U.S. at 418 (An
obviousness evaluation “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.”).
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We do not agree with Uniloc’s argument that Paulson discloses
indiscriminately sampling frequencies at step 404 that are “too high for the
receive device to sample and demodulate,” rather than sampling the
frequencies “initially determined” at step 402. See PO Resp. 10–11;
PO Sur-reply 1–3. Uniloc’s argument is based on a single sentence in
Paulson, which states: “[i]n one instance, the sonic transmission frequencies
available according to the noise characteristic may be too high for the
receive device to sample and demodulate.” Ex. 1005, 13:29–32. According
to Uniloc, this sentence amounts to sufficient evidence that would support a
finding that the sampling performed at step 404 in Paulson must be outside
“the high frequencies . . . the receive device can detect and decode.”
PO Resp. 11 (alteration in original); see also PO Sur-reply 2–3 (arguing the
same).
Uniloc’s argument, however, treats this single sentence in Paulson in
isolation, and fails to consider the teachings of Paulson, as a whole. See In
re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (“It is impermissible
within the framework of section 103 to pick and choose [teachings] from
any one reference . . . to the exclusion of other parts necessary to the full
appreciation of what such reference fairly suggests to one of ordinary skill in
the art.” (quoting In re Wesslau, 353 F.2d 238, 241 (CCPA 1965))). When
considering what the relevant steps of Figure 4 fairly suggests to a person of
ordinary skill in the art, the sentence in Paulson at issue refers to “sonic
transmission frequencies available according to the noise characteristic,”
which, in our view, includes the “initially determined” frequencies at step
402 that may be available when taking into account the noise characteristic
created at step 404. As Google explains in its Reply, reading Paulson in this
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way is consistent with its goal to “use[] modulation frequencies that reduce
the probability of conflict with ambient noise in the environment.” Pet.
Reply 3–4 (quoting Ex. 1005, code (54)) (alteration in original); see also
Ex. 1005, 3:1–4, 12:49–51 (disclosing the same goal of reducing the impact
of noise interference).
Once again, Mr. Lipoff provides testimony supporting our view that
Paulson’s noise characteristic created at step 404 and the frequencies
sampled and demodulated at steps 404 and 406 are based on the “initially
determined” frequencies at step 402. According to Mr. Lipoff, Uniloc’s
reading of Paulson does not account for the “environmental noise, as
determined by and reflected in the noise characteristic,” and how this noise
“influences what frequencies a receiving device is able to sample and
demodulate.” Ex. 1027 ¶ 14. Mr. Lipoff further testifies that “one of
ordinary skill [in the art] would have understood that, in the absence of
noise, a receiving device may be able to sample and demodulate an
incoming transmission on a wide range of frequencies. But once noise
(and the resulting [SNR]) is taken into account, that same device may be
incapable of doing so at each of those same frequencies.” Id. Turning to the
two examples when noise may cause interference that are disclosed in
Paulson, one of which being when “the sonic transmission frequencies
available according to the noise characteristic may be too high for the
receive device to sample and demodulate” (Ex. 1005, 13:29–32), Mr. Lipoff
testifies that this particular example indicates that “[t]he level of noise at
these frequencies . . . may still be high enough to render the receive device
incapable of receiving a transmission because the resulting [SNR] may not
meet the receive device’s requirement’s for reliable reception” (Ex. 1027
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¶ 16). We credit the aforementioned testimony of Mr. Lipoff because it
takes into account the reasonable inferences a person of ordinary skill the art
would draw to explain how Paulson achieves its goal of reducing the impact
of noise interference by using the noise characteristic created at step 404 to
determine whether the “initially determined” frequencies at step 402 have a
higher SNR than a predetermined threshold at step 406. See KSR, 550 U.S.
at 418.
We also do not agree with Uniloc that the frequencies that exceed the
sonic frequency limit 502 illustrated in Figure 5 support its argument that
Paulson discloses indiscriminately sampling frequencies at step 404 that are
“too high for the receive device to sample and demodulate,” rather than
sampling the frequencies “initially determined” at step 402. See PO Sur-
reply 2–3. Figure 5 of Paulson is reproduced below.

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Figure 5, reproduced above, is a graph that illustrates “a sonic frequency
response as received by a receive device” in accordance with one
embodiment. Ex. 1005, 3:5–7. This figure depicts four regions that provide
a graphical representation of noise characteristic 500 for a particular
geographic location. Id. at 14:19–23. Of particular importance, Paulson
states that “[r]egion II reflects the sonic transmission frequencies suitable for
sending sonic carrier signals” and, in this example, that “sonic carrier signals
504 and 506 may be used for modulating data according to a sonic protocol
such as FSK.” Id. at 14:26–30. Paulson then states, “while higher sonic
transmission frequencies in Region II may be available, the sampling rate of
the communication system may limit the highest frequency to a sonic
frequency limit 502.” Id. at 14:33–36. In our view, Figure 5 and its
corresponding description are consistent with steps 402–414 illustrated in
Figure 4 because Figure 5 merely illustrates that the sampling rate may not
exceed sonic frequency limit 502, and within that limit, the communication
system has determined that sonic carrier signals 504 and 506 are two signals
that are suitable for modulating data because the noise characteristic is low
enough to not interfere with transmission. Compare Ex. 1005, 13:50–59,
with id. at 14:19–36; see also Tr. 40:24–42:4 (arguing that Figure 5 and its
corresponding description actually supports a conclusion of obviousness).
Lastly, we do not agree with Uniloc’s argument that Google raises a
new inherency theory for the first time in the Reply. See PO Sur-reply 3–5.
Contrary to Uniloc’s argument, Google does not use language that would
implicate inherency (e.g., necessarily, necessarily present, etc.) when
arguing that the noise characteristic created in step 404 of Paulson “cover[s]
at least the frequencies initially set in [s]tep 402.” Pet. Reply 4. Instead, we
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understand Google to argue that, when viewing the teachings of Paulson
through the perspective of a person of ordinary skill in the art as provided by
the unrebutted testimony of Mr. Lipoff, Paulson’s “initially determined”
frequencies at step 402 preset the range of frequencies that are further
refined based on the noise characteristic in the surrounding environment at
steps 404 and 406. Pet. 24–27; Ex. 1003 ¶¶ 68–73; Pet. Reply 4–8; Ex. 1027
¶¶ 11–19. Google’s arguments and evidence with respect to this particular
issue are consistent with the well-settled principle that “[w]hat a prior art
reference discloses or teaches is determined from the perspective of one of
ordinary skill in the art.” See Sundance, Inc. v. DeMonte Fabricating Ltd.,
550 F.3d 1356, 1361 n.3 (Fed. Cir. 2008).
b. “scanning . . . for a free frequency” among the “plurality of
predetermined frequencies”
In its Patent Owner Response, Uniloc contends that the plain language
of independent claim 9 and the specification of the ’952 patent both support
reading the scanning of a “free frequency” from among the “plurality of
predetermined frequencies” as simply requiring the selection of a frequency
that is transmittable. PO Resp. 12 (citing Ex. 1001, 11:18–24). In contrast,
Uniloc argues that Paulson’s sonic frequency sampling scheme results in
outputting frequencies that are “available according to the noise
characteristic,” yet are “too high for the receive device to sample and
demodulate.” Id. (quoting Ex. 1005, 13:29–32). Uniloc also argues that Mr.
Lipoff’s supporting testimony on this particular issue should be discarded
because it is “plainly inconsistent” with the express disclosure in Paulson.
Id. at 13.
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In its Reply, Google disagrees with Uniloc’s argument that Paulson
discloses an inefficient system that generates a noise characteristic for a
wide array of frequencies that the transmitting and receiving devices have no
hope of using to effect a successful transmission. Pet. Reply 9–10. Relying
on the testimony of Mr. Lipoff, Google argues that “[n]othing in Paulson
suggests such an inefficient system” and “Uniloc has provided no evidence
to support” reading Paulson in this way. Id. at 10 (citing Ex. 1027 ¶ 21)
(emphasis omitted). Instead, Google maintains that, when considering
Paulson’s teachings, “one of ordinary skill [in the art] would have
understood that the frequencies identified in [s]tep 402 are scanned during
subsequent steps to determine which are free for transmission.” Id. (citing
Ex. 1003 ¶¶ 67–70). In addition, Google argues that independent claim 9
does not exclude systems that occasionally fail to find a free frequency for
transmission. Id. at 11. Google asserts that Paulson teaches such a system
because it iterates until it finds a free frequency for transmission with
minimal noise interference. Id. at 11–12 (citing Pet. 23–29; Ex. 1005, Fig. 4
(steps 406–410)).
In its Sur-reply, Uniloc reiterates its position that the plain language of
independent claim 9 and the specification of the ’952 patent both support
reading the “scanning,” itself, as simply requiring the selection of the first
free frequency that is transmittable. PO Sur-reply 5–6 (citing PO Resp. 10–
13; Ex. 1001, 11:18–24). Uniloc argues that Paulson’s sonic frequency
sampling scheme is inefficient because it performs an indiscriminate scan at
step 404 that involves sampling frequencies that are “too high” to be usable
by the system (e.g., because the sampled frequencies exceed sonic frequency
limit 502 illustrated in Figure 5). Id. at 6–7 (quoting Ex. 1005, 13:29–32)
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(citing Ex. 1005, 14:34–36, Fig. 5). Stated differently, Uniloc argues that
Paulson’s disclosure of determining that certain frequencies conflict with
local ambient noise at step 404 and, as a result, are unusable, is
distinguishable from “scanning . . . for a free frequency,” as recited in
independent claim 9. Id. at 7 (alteration in original). Uniloc also argues that
Google’s reliance on step 406 in Paulson is unavailing because it amounts to
a separate and subsequent decision to determine whether the frequencies that
were indiscriminately sampled at step 404 may be usable for transmission,
thereby confirming that Paulson lacks scanning for a free frequency in the
manner required by independent claim 9. Id. (citing Ex. 1005, 13:12–14).
Based on the fully developed trial record, we agree with Google that
the sampling, scanning, and the eventual selection of one or more
frequencies for transmission throughout steps 404–414 in Figure 4 teaches
“scanning . . . for a free frequency” among the “plurality of predetermined
frequencies,” as recited in independent claim 9. See Pet. 25–29; Pet. Reply
9–12. As we explain above, after Paulson “initially determine[s]” the
frequencies the transmit device is capable of sending and the receive device
is capable of detecting and decoding at step 402, the system engages in a
refining process that involves sampling, scanning, and the eventual selection
of one or more frequencies for transmission that occurs throughout steps
404–414. See supra Section II.B.5.a. Indeed, there does not appear to be a
dispute between the parties that Paulson’s sonic frequency sampling scheme
illustrated in Figure 4 concludes with step 414, which results in the selection
of one or more frequencies “for transmitting a sonic carrier signal with[in] a
geographic location.” Ex. 1005, 14:10–15.
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We do not agree with Uniloc’s argument that Paulson’s sonic
frequency sampling scheme is inefficient because it performs an
indiscriminate scan at step 404 that involves sampling frequencies that are
“too high” to be usable by the system. See PO Resp. 12–13; PO Sur-reply
6–7. Once again, Uniloc’s argument in this regard is predicated on the
notion that Paulson discloses indiscriminately sampling frequencies at step
404 that are “too high for the receive device to sample and demodulate,”
rather than sampling the frequencies “initially determined” at step 402. For
the same reasons we identify above, this argument is unavailing because it
requires reading a single sentence from Paulson in isolation, without
considering the teachings of Paulson, as a whole; it runs afoul of Paulson’s
stated goal of reducing the impact of noise interference; and it is
contradicted by the unrebutted testimony of Mr. Lipoff. See supra Section
II.B.5.a.
To the extent Uniloc argues that the plain language of independent
claim 9 and the specification of the ’952 patent both support its position that
the “scanning,” by itself, simply requires selecting the first “free frequency,”
without the addition of any other intermediate processing steps, we do not
agree. See PO Resp. 12; PO Sur-reply 5–6. The plain language of
independent claim 9 recites, in relevant part, “scanning a plurality of
predetermined frequencies for a free frequency” and then “selecting the free
frequency from the plurality of predetermined frequencies.” Ex. 1001,
14:56–59. Neither of these two method steps, nor any other steps required
by independent claim 9, place further restrictions or limitations on scanning
and selecting a “free frequency” among the “plurality of predetermined
frequencies.” Moreover, the use of the transitional phrase “comprising” in
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independent claim 9 favors reading the method steps, particularly the
“scanning” and “selecting” steps, as open-ended because it is considered a
“standard transition term used to make clear that the claim does not preclude
the presence of components or steps that are in addition to, though not
inconsistent with, those recited in the limitations that follow.” Amgen Inc. v.
Amneal Pharm. LLC, 945 F.3d 1368, 1379 (Fed. Cir. 2020).
The specification of the ’952 patent also does not support reading
independent claim 9 as precluding intermediate processing steps, but instead
contemplates the potential inclusion of such steps. As support for its reading
of independent claim 9, Uniloc directs us to the following disclosure in the
specification:
In step 604, the audio transceiver computing device 102 selects
the free frequency from the plurality of predetermined
frequencies. For example, the mobile phone can identify the first
free frequency it scans that has no discernable signal, or that has
no signal strength that satisfies a minimum amplitude threshold,
or that otherwise meets a pre-established criteria for a free
frequency.
PO Resp. 12 (quoting Ex. 1001, 11:18–24); PO Sur-reply 6 (quoting the
same). This disclosure in the specification provides three examples by
which audio transceiver computing device 102 selects a free frequency from
a plurality of predetermined frequencies, one of which requires selecting a
free frequency, if any are available, from among a plurality of predetermined
frequencies based on “pre-established criteria.” In our view, Paulson’s
disclosure of reducing noise interference by using the noise characteristic
created at step 404 to determine whether the “initially determined”
frequencies at step 402 have a higher SNR than a predetermined threshold at
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step 406 is consistent with the “pre-established criteria” example identified
in the specification. See Ex. 1005, 13:1–59, Fig. 4 (steps 402, 404, 406).
Our determination in this regard finds support in other disclosures in
the specification of the ’952 patent and the supporting testimony of Mr.
Lipoff. For instance, the specification provides examples of what may
qualify as a “free frequency” by explicitly stating that “[t]he free frequency
can be . . . a frequency which has a noise level below a predetermined noise
level threshold.” Ex. 1001, 5:17–21. Recognizing the similarities between
this example in the specification and Paulson’s selection of a frequency
based on a “predetermined threshold,” Mr. Lipoff provides the following
supporting testimony accompanying the Petition: “[Paulson’s] frequency
selection based on a ‘predetermined threshold,’ such as having a low enough
noise characteristic as reflected in a higher [SNR], is consistent with how the
’952 patent describes a ‘free frequency’ as being, ‘for example, a frequency
which has a noise level below a predetermined noise level threshold.’”
Ex. 1003 ¶ 73 (quoting Ex. 1001, 5:17–21). Notably, Uniloc does not
address the similarities between the examples of selecting a free frequency
set forth in the specification of the ’952 patent and Paulson’s selection of a
frequency based on a “predetermined threshold” in its briefing during trial,
nor does Uniloc address Mr. Lipoff’s supporting testimony on this particular
issue.
c. “the content includes device identification data including a bit array
derived from user-configurable and non-user-configurable data
specific to the audio transceiver computing device”
Uniloc’s arguments with respect to this limitation fall into three
categories: (1) whether Google’s reliance on Surprenant to account for this
limitation is predicated on a fallacy; (2) whether Google’s alternative
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position that the teachings of admitted prior art, as evidenced by the ’216
patent incorporated by reference in the ’952 patent, properly accounts for
this limitation; and (3) whether certain claim amendments presented during
prosecution purportedly distinguish the admitted prior art incorporated by
reference in the ’952 patent. Beginning with the teachings of Surprenant,
Uniloc contends that the underlying premise behind Google’s reliance on
Surprenant’s AMP ID is that it must be “non-user-configurable data”
because it is an identification string that is unique and specific to a device.
PO Resp. 14. Uniloc, however, argues that “one cannot reasonably conclude
an identification string is non-user-configurable simply ‘because’ it is
purportedly unique and specific to a device.” Id. Uniloc asserts that,
because the plain language of independent claim 9 also requires “user-
configurable . . . data specific to the audio transceiver device,” it cannot be
the case that all data that is unique and specific to a device must be “non-
user-configurable data.” Id. at 15 (alteration in original).
In its Reply, Google contends that Uniloc misrepresents the argument
presented in the Petition because it never asserts that all data that is “unique
and specific to a device” is necessarily “non-user-configurable” data.
Pet. Reply 14; see also id. at 15 (stating that “Google has not argued that all
data that is specific to the audio transceiver computing device is ‘non-user-
configurable’”). Instead, relying on the testimony of Mr. Lipoff, Google
argues that, “[b]ecause [Surprenant’s] AMP ID is disclosed as a ‘unique
identification string’ specific to a transmit device, one of ordinary skill [in
the art] would have understood it to be derived from a unique property of the
device itself that is not user-configurable.” Id. at 14 (quoting Ex. 1003 ¶ 107
(quoting Ex. 1006, 7:45–49)). Google further argues that Mr. Lipoff testifies
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that the serial number of a device is just one example of an identifier that
would help uniquely identify Surprenant’s transmit device. Id. at 14–15
(citing Ex. 1003 ¶ 109). Lastly, Google argues that Uniloc’s reliance on the
language of independent claim 9 is misplaced because Google explains in
the Petition how both “non-user-configurable data” (e.g., a unique
identification string, such as a serial number) and “user-configurable data”
(e.g., credentials) are specific to Surprenant’s audio transceiver computing
device. Id. at 15–16 (citing Pet. 46–47; Ex. 1006, 7:45–49, 7:53–57;
Ex. 1003 ¶ 109).
In its Sur-reply, Uniloc notes that Google carries the burden of
persuasion to demonstrate that Surprenant’s AMP ID teaches the “non-user-
configurable data,” and then proceeds to reiterate its position from the Patent
Owner Response that Google has not explained adequately how
Surprenant’s AMP ID is derived, in part, from “non-user-configurable data”
merely because it is a “unique identification string” specific to “transmit
device 101.” PO Sur-reply 8–10. Uniloc further argues that “non-user-
configurable data” is a “term that means what it says” in that “[i]t must be
data that is not configurable by the user.” Id. at 10. Uniloc then reproduces
the passage in Surprenant describing the AMP ID that Google relies on in
the Petition before asserting that nothing in the relevant disclosure precludes
the possibility that Surprenant’s AMP ID also amounts to “user-configurable
data.” Id. (citing Ex. 1006, 7:45–49).
At the outset, we note that Uniloc advocates—and Google does not
dispute—that the claim term “non-user-configurable data” should be
construed in accordance with its plain and ordinary meaning—namely, data
that is not configurable by a user. See PO Sur-reply 10 (arguing that “non-
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user-configurable data . . . must be data that is not configurable by the
user”); Tr. 31:13–17, 32:21–23 (arguing the same). Instead, the parties’
dispute appears to turn on what types of data amount to data that is not
configurable by a user. The specification of the ’952 patent provides
important guidance in this respect because it discloses that “[n]on-user-
configurable data includes data such as hardware component model
numbers, serial numbers, and version numbers, and hardware component
parameters such as processor speed, voltage, current signaling, and clock
specifications.” Ex. 1001, 6:37–41 (emphasis added). Dependent claim 8 of
the ’952 patent, which was not challenged in this proceeding, further limits
“non-user-configurable data” to only “hardware component numbers, serial
numbers, and version numbers.” Id. at 14:50–52. In contrast, independent
claim 9 is broader in scope because it does not limit “non-user-configurable
data” to any specific type of data and, therefore, encompasses all the
examples from the specification identified above. With this in mind, we turn
to Google’s reliance on Surprenant’s AMP ID to teach the “non-user-
configurable data,” as recited in independent claim 9.
Based on the fully developed trial record, we agree with Google that
Surprenant’s AMP ID teaches the “non-user-configurable data” because it
discloses that it is a “unique identification string” specific to “transmit
device 101.” Pet. 45 (quoting Ex. 1006, 7:45–49). Although Surprenant
does not provide further clarification as to what might qualify as a “unique
identification string,” Mr. Lipoff provides testimony accompanying the
Petition that explains the following: “[b]ecause the AMP ID is disclosed as
a ‘unique identification string’ specific to a transmit device, one of ordinary
skill [in the art] would have understood it to be derived from a unique
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property of the device itself that is not user-configurable.” Ex. 1003 ¶ 107.
As just one example, Mr. Lipoff testifies that it would have been obvious to
a person of ordinary skill in the art for Surprenant’s AMP ID “to take the
form of . . . the device’s serial number,” because it is a “unique identification
string” that is nothing more than “data [that] helps uniquely identify the
transmit device.” Id. ¶ 109. We credit the aforementioned testimony of Mr.
Lipoff because it is consistent with Surprenant’s disclosure that the AMP ID
is a “unique identification string” specific to “transmit device 101,” and his
testimony also is consistent with the examples of “non-user-configurable
data” set forth in the specification of the ’952 patent.
We do not agree with Uniloc’s argument that the plain language of
independent claim 9 prohibits interpreting all “data specific to the audio
transceiver computing device” as “non-user-configurable data” because at
least some “user-configurable data” must exist that also is specific to the
audio transceiver computing device. PO Resp. 14–15; PO Sur-reply 8–10.
We do not understand Google to take the position that all data that is unique
and specific to an audio transceiver computing device is “non-user-
configurable data.” Instead, relying on the teachings of Surprenant together
with the supporting testimony of Mr. Lipoff, Google explains in both the
Petition and Reply how “non-user-configurable data” (i.e., a unique
identification string, such as a serial number) and “user-configurable data”
(i.e., credentials) are specific to the audio transceiver computing device.
See Pet. 46–47 (citing Ex. 1006, 7:45–49, 7:53–57; Ex. 1003 ¶ 109);
Pet. Reply 15–16 (citing the same).
Turning to the teachings of admitted prior art as evidenced by the ’216
patent, Uniloc contends that Google’s alternative theory is “demonstrably
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false.” PO Resp. 15–16. Uniloc argues that, given the context by which the
’216 patent was addressed in the ’952 patent, “the ’216 patent can hardly be
considered a clear and unambiguous admission that it was known to derive a
‘bit array’ from ‘non-user-configurable data specific to the audio transceiver
computing device.’” Id. at 16–17 (citing Ex. 1001, 6:22–33). Uniloc further
argues that, when citing to and incorporating by reference the ’216 patent,
the ’952 patent draws a distinction between examples of “user-configurable
data and non-user-configurable data specific to the audio transceiver device”
from other forms of indicia consisting of “manufacture name, model name,
and/or device type.” Id. at 17 (quoting Ex. 1001, 6:37–56).
In its Reply, Google argues that Uniloc’s argument that the ’216
patent should not be treated as admitted prior art is unavailing. Uniloc does
not respond to our preliminary determination in the Institution Decision that
the ’216 patent may be relevant, irrespective of any incorporation by
reference, as evidence of the general background knowledge of a person of
ordinary skill in the art. Pet. Reply 16 (citing Dec. on Inst. 26–27). Google
asserts that our preliminary findings on this particular issue are supported by
case law and Uniloc has not provided a sufficient basis to reconsider those
findings. Id. at 16–17. Google further argues that, given the context in
which the ’216 patent was addressed in the ’952 patent, it is clear that only
the description of the device fingerprints in the ’216 patent are incorporated
by reference. Id. at 17 (citing Ex. 1001, 6:27–33). Google also argues that
the ’952 patent directly links these known device fingerprints to the claimed
features—namely “a bit array derived from user-configurable and non-user-
configurable data specific to the audio transceiver computing device.” Id.
(quoting Ex. 1001, 6:34–37).
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In its Sur-reply, Uniloc contends that Google does not point to any
statement in the ’952 patent that clearly and unambiguously treats the device
fingerprints of the ’216 patent as admitted prior art. PO Sur-reply 10–11.
Instead, Uniloc argues that the ’952 patent begins a new description of
device fingerprints according to an exemplary embodiment following a
paragraph break, thereby underscoring that the patentee never intended to
consider the incorporation by reference of the ’216 patent and its teachings
of device fingerprints as admitted prior art for purposes of “a bit array
derived from user-configurable data and non-user-configurable data specific
to the audio transceiver computing device,” as recited in independent claim
9. Id. at 11.
We agree with Google that incorporation by reference of the device
fingerprints taught by the ’216 patent into the ’952 patent is clear and
unambiguous. See Pet. 43–44; Pet. Reply 17–18. The relevant disclosure in
the specification of the ’952 patent states the following:
A device fingerprint comprises binary data that identifies
the audio transceiver computing device 102 by deriving a unique
data string from multiple portions of indicia stored in memory
locations within the device, where such indicia can include, for
example, data representing a manufacture name, a model name,
or a device type. Device fingerprints and generation thereof are
known and are described, e.g., in U.S. Pat. No. 5,490,216
(sometimes referred to herein as the ’216 Patent), and in related
U.S. Patent Application Publications 2007/0143073,
2007/0126550, 2011/0093920, and 2011/0093701 (the “related
applications”), the descriptions of which are fully incorporated
herein by reference.
Ex. 1001, 6:22–33 (emphases added). The plain language in the
specification expressly limits the incorporation by reference to the
descriptions of the “device fingerprints and the generation thereof” that are
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acknowledged to be known and described in the ’216 patent. See, e.g.,
Zenon Environmental, Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1379 (Fed.
Cir. 2007) (“The plain language expressly limits the incorporation to only
relevant disclosures of the patents, indicating that the disclosures are not
being incorporated in their entirety.”).
In the very next paragraph, the specification states that, “[i]n general,
the device fingerprint comprises a bit string or bit array that includes or is
derived from user-configurable and non-user-configurable data specific to
the audio transceiver computing device.” Ex. 1001, 6:34–37 (emphasis
added). For three reasons, we agree with Google that this sentence provides
a direct link between the device fingerprints taught by the ’216 patent and
the limitation of independent claim 9 at issue here (i.e., “a bit array derived
from user-configurable and non-user-configurable data specific to the audio
transceiver computing device”). See Pet. 42–43; Pet. Reply 17–18. First,
this sentence from the specification begins with the transitional phrase “[i]n
general,” thereby implying that the discussion is about device fingerprints,
as a whole, including those taught by the ’216 patent. Second, by referring
to the device fingerprint using “the” instead of “a,” this sentence appears to
provide proper antecedent basis for the device fingerprints taught by the
’216 patent that were discussed in the preceding paragraph. Third, this
sentence immediately follows the paragraph that expressly limits the
incorporation by reference to the description of the “device fingerprints and
the generation thereof” that are acknowledged to be known and described in
the ’216 patent. Accordingly, we agree with Google that the ’216 patent
qualifies as admitted prior art that may be used to teach the limitation of
independent claim 9 at issue here because the ’952 patent limits its
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incorporation by reference to the device fingerprints taught by the ’216
patent, and the ’952 patent admittedly discloses that these known device
fingerprints comprise a bit array derived from user-configurable and non-
user-configurable data specific to the audio transceiver computing device.
Nevertheless, regardless of whether the specification readily admits
that the device fingerprints taught by the ’216 patent properly accounts for
“a bit array derived from user-configurable and non-user-configurable data
specific to the audio transceiver computing device,” as recited in
independent claim 9, Google is still free to rely on the ’216 patent as
evidence of the general background knowledge possessed by a person of
ordinary skill in the art. See Ariosa Diagnostics v. Verinata Health, Inc.,
805 F.3d 1359, 1365 (Fed. Cir. 2015) (explaining that evidence submitted
with a petition may be considered to demonstrate the general knowledge that
a person of ordinary skill in the art “would bring to bear in reading the prior
art identified as producing obviousness”); see also Randall Mfg. v. Rea, 733
F.3d 1355, 1362–63 (Fed. Cir. 2013) (emphasizing that additional prior art
references or evidence are not for the purpose of changing the prior art
combination that forms the basis of the asserted ground, but rather are
merely for the purpose of providing evidence of the state of the art,
including the general background knowledge of a person of ordinary skill in
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the art).5 We made the same preliminary determination in the Institution
Decision and, during trial, Uniloc does not provide a sufficient basis for us
to treat the device fingerprints taught by the ’216 patent any differently for
purposes of this Final Written Decision. See Dec. on Inst. 26–27. Based on
the fully developed trial record, we determine that the “device fingerprints
and the generation thereof” that are acknowledged to be known and
described in the ’216 patent are part of the general background knowledge
that a person of ordinary skill in the art would consider in the context of an
obviousness evaluation for the reasons we identify above.
We do not agree with Uniloc’s argument that the incorporation by
reference of the device fingerprints taught by the ’216 patent cannot be
considered a clear and unambiguous admission that it was known to derive a
bit array from user-configurable and non-user-configurable data specific to
the audio transceiver computing device. See PO Resp. 16–17; PO Sur-reply
10–11. As we explain above, the ’952 patent expressly limits the
incorporation by reference to the descriptions of the “device fingerprints and
the generation thereof” that are acknowledged to be known and described in
the ’216 patent, and then provides a direct link between these admittedly
known device fingerprints and the claimed features of independent claim 9
that require “a bit array derived from user-configurable and non-user-

5 See Applicant Admitted Prior Art Memorandum at 9, available at
https://www.uspto.gov/sites/default/files/documents/signed_aapa_guidance_
memo.pdf (“Statements made in the specification of the patent that is being
challenged in an IPR can be used as evidence of [the] general knowledge [of
a person of ordinary skill in the art], and, thus, . . . can be used to . . . supply
missing claim limitations that were generally known in the art prior to the
invention.”)
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configurable data specific to the audio transceiver computing device.”
Whether the ’952 patent draws a distinction between examples of “user-
configurable and non-user-configurable data specific to the audio transceiver
computing device” and other forms of indicia consisting of “manufacture
name, model name, and/or device type,” as asserted by Uniloc, is of no
moment because it has no bearing on whether the “device fingerprints”
taught by the ’216 patent and incorporated by reference into the ’952 patent
properly account for the disputed claimed features of independent claim 9.
See PO Resp. 17.
Lastly, Uniloc turns to the prosecution history of the ’952 patent to
support its argument that the ’216 patent should not be treated as admitted
prior art, but in doing so discusses a claim referring to “biometric data.”
PO Resp. 18 (citing Ex. 1002 (prosecution history of the ’952 patent), 675,
835). Uniloc argues that the claim amendments entered during prosecution
recited “a novel combination of biometric data and ‘device identification
data.’” Id. at 19; see also PO Sur-reply 11–12 (arguing the same). In its
Reply, Google contends that Uniloc essentially repeats the same prosecution
history arguments presented in the Preliminary Response that we determined
were not persuasive on the preliminary record. Pet. Reply 19–20.
We agree with Google that Uniloc’s arguments directed to the
prosecution history of the ’952 patent that are raised in the Patent Owner
Response are the same arguments raised in the Preliminary Response.
Compare PO Resp. 18–19, with Prelim. Resp. 24–25. For the same reasons
discussed in the Institution Decision, those arguments are unavailing. See
Dec. on Inst. 27. That is, we do not agree with Uniloc’s arguments directed
to the prosecution history of the ’952 patent because none of the claims
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challenged in this inter partes review recite “biometric data.” See Ex. 1001,
14:53–15:14 (claims 9–12). Independent claim 1, which is not challenged in
this inter partes review, recites, in relevant part, that “the content includes
biometric data and a bit array.” Ex. 1001, 14:20–21. Accordingly, Uniloc
improperly relies on claims in the prosecution history (i.e., independent
claim 1) that are materially different from those at issue in this inter partes
review (i.e., challenged claims 9–12).
To the extent that Uniloc relies on claims from the prosecution history
of the ’952 patent that do not include the “biometric data” limitation (see PO
Resp. 18 (citing Ex. 1002, 715, 721)), we do not agree with Uniloc’s
arguments. Based on the fully developed trial record, there is no indication
that the Examiner considered and decided the issue of whether the ’216
patent could have been applied as either admitted prior art or as evidence of
the general background knowledge possessed by a person of ordinary skill in
the art. See Ex. 1002. Nor is there evidence that the Examiner considered
the teachings of the ’216 patent in relation to the “non-user-configurable
data” and “user-configurable data” limitations of independent claim 9. See
id.
d. Summary
In summary, Google has demonstrated by a preponderance of the
evidence that the subject matter of independent claim 9 would have been
obvious over the combined teachings of Paulson and Surprenant.
6. Claims 10–12
Each of claims 10–12 directly depend from independent claim 9.
Ex. 1001, 15:6–14. Google provides citations to Paulson and Surprenant,
along with arguments and supporting evidence as to how the combined
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teachings of Paulson and Surprenant account for the additional limitations of
these dependent claims. Pet. 48–54.
For example, dependent claim 12 recites that “the carrier wave is
modulated by the periodic enclosed content message.” Ex. 1001, 15:13–14.
Google contends that Surprenant teaches this limitation because Surprenant
discloses “converting a message to binary data; [and] modulating one or
more selected frequencies for one or more acoustic carrier signals based on
the binary data.” Pet. 53–54 (emphases omitted) (quoting Ex. 1006, code
(57)). Relying on the testimony of Mr. Lipoff, Google argues that a person
of ordinary skill in the art would have understood that “modulating acoustic
carrier signals based on binary data is within the scope of modulating the
carrier wave (the acoustic carrier signal) based on the periodic enclosed
content message (the binary data).” Id. at 54 (citing Ex. 1003 ¶ 124).
During the course of trial, Uniloc does not address separately
Google’s arguments and supporting evidence as to how the combined
teachings of Paulson and Surprenant account for the additional limitations of
dependent claims 10–12. See PO Resp. 10–18; PO Sur-reply 1–12. We
have reviewed Google’s arguments and supporting evidence as to how the
combined teachings of Paulson and Surprenant accounts for the additional
limitations of these dependent claims, and we agree with and adopt Google’s
analysis. See Pet. 48–54. Accordingly, Google has demonstrated by a
preponderance of the evidence that the subject matter of dependent claims
10–12 would have been obvious over the combined teachings of Paulson and
Surprenant.
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C. Obviousness Over the Combined Teachings of
Paulson, Surprenant, and Beenau
Google contends that claims 9–12 of the ’952 patent are unpatentable
under § 103(a) as obvious over the combined teachings of Paulson,
Surprenant, and Beenau. Pet. 54–62. Google explains how the combined
teachings of Paulson, Surprenant, and Beenau account for the subject matter
of each challenged claim, and provides reasoning as to why a person of
ordinary skill in the art would have been prompted to modify the teachings
of these references. Pet. 54–62; Pet. Reply 2, 13. Google relies on the
Declaration of Stuart J. Lipoff accompanying the Petition to support its
positions, which is unrebutted on this record. Ex. 1003.
In its Patent Owner Response, apart from its arguments directed to the
obviousness ground based on the combined teachings of Paulson and
Surprenant, Uniloc does not address separately Google’s arguments and
supporting evidence as to how the combined teachings of Paulson,
Surprenant, and Beenau account for the limitations of claims 9–12. See PO
Resp. 10–19. For the first time in its Sur-reply, Uniloc contends that Beenau
fails to address the deficiencies in the proposed combination of Paulson and
Surprenant, but Uniloc presents this argument only after Google notes in the
Reply that Uniloc fails to address Google’s reliance on the teachings of
Beenau in the Patent Owner Response. See PO Sur-reply 12–13.
We begin our analysis with a brief overview of Beenau, and then we
address the parties’ contentions with respect to the challenged claims.
1. Overview of Beenau
Beenau discloses a method for using radio frequency ID (RFID)
technology to initiate and complete financial transactions. Ex. 1007 ¶ 19.
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Beenau explains that, like barcode and voice data entry, RFID is a
contactless information acquisition technology. Id. ¶ 2.
In one embodiment, Beenau discloses a fob and RFID reader may
engage in mutual authentication. E.g., Ex. 1007 ¶ 22. The RFID reader is
populated with a unique identifier (e.g., a serial number), which may be used
by the fob to determine if the RFID reader is authorized to receive the fob’s
account number. Id. ¶ 90. Beenau further discloses the use of a personal
identification number (PIN) in order to verify purchases above a particular
spending limit. Id. ¶ 140. The user may enter this PIN in a keypad at the
merchant system or RFID reader, and the fob verifies the PIN by comparing
the PIN to the PIN stored on the fob’s memory. Id. The fob PIN may be
user-selected. Id. ¶ 162.
2. Claim 9
Google relies on the same arguments and supporting evidence
identified above with respect to the obviousness ground based on the
combined teachings of Paulson and Surprenant to account for all the
limitations of independent claim 9, except “wherein the content includes
device identification data including a bit array derived from user-
configurable and non-user-configurable data specific to the audio transceiver
computing device.” See Pet. 58. Google takes the alternative position that,
if the combined teachings of Paulson and Surprenant do not account for this
limitation, then it would have been taught by Beenau. Id. More specifically,
Google relies on Surprenant to teach a “bit array” (id. at 61–62 (citing
Ex. 1006, 9:8–9, 17:20; Ex. 1003 ¶ 142)), but Google turns to Beenau to
teach “user-configurable and non-user-configurable data specific to the
audio transceiver computing device” (id. at 58–61).
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Google asserts that Beenau’s “unique identifier,” which may be a
serial number, teaches “non-user-configurable data.” Pet. 58–59 (citing
Ex. 1007 ¶ 90). Google cites to claim 1 of Beenau (id. at 58), which refers
to the unique identifier as a “unique device identification code,” and argues
that an authorized sample receiver receives this code from an RF device.
(Ex. 1007, Claim 1).
Google explains that Beenau also teaches transmitting PIN
information, which a person of ordinary skill in the art would have
recognized teaches “user-configurable data.” Pet. 59 (citing Ex. 1007
¶¶ 140–142). According to Google, Beenau states that the “PIN may be fob
user selected.” Id. at 60 (emphasis omitted) (quoting Ex. 1007 ¶ 162).
Google argues that, during a transaction, the PIN may be provided at either
the fob itself or the RFID reader. Id. at 59 (citing Ex. 1007 ¶ 140). When
providing the PIN to the fob itself, Google argues that the fob transmits the
PIN to an RFID reader as part of a process to verify the user’s identity. Id.
at 59–60 (citing Ex. 1007 ¶ 140; Ex. 1003 ¶ 137).
Google appears to contend that Beenau’s fob teaches the “audio
transceiver computing device.” Pet. 61 (explaining that Google relies on the
embodiment where the fob transmits the PIN to the RFID reader, and stating
that “the PIN is specific to the fob and is therefore ‘specific to the audio
transceiver computing device.’”). In arguing that the PIN is specific to the
fob, Google also cites to Beenau’s teaching that a corroborating PIN is
stored locally in the fob’s memory. Id. (citing Ex. 1007 ¶¶ 140–142).
Google further alleges that a “unique identifier” such as a serial
number is specific to the audio transceiver computing device. Pet. 60 (citing
Ex. 1003 ¶ 139). In support of this position, Google’s declarant, Mr. Lipoff,
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testifies that the purpose of using a fob-based system is that, when the fob’s
identifier is recognized and the related PIN is provided via the fob, the two
pieces of information together authenticate the user of that fob and
restrictions on tasks like making purchases are lifted. Ex. 1003 ¶ 139.
Although Mr. Lipoff relies on the “fob’s identifier,” Beenau suggests that it
is the RFID reader—not the fob—that contains and transmits the unique
identifier (e.g., serial number). See Ex. 1007 ¶ 90, Claim 1.
Turning to the rationale to combine, Google proposes combining the
teachings of Paulson and Surprenant with those of Beenau based on the
assertion that a person of ordinary skill in the art would have been motivated
to implement the RFID technology in Beenau by using sound waves instead.
Pet. 56. In support of this assertion, Google explains that both Paulson and
Surprenant describe sonic/acoustic communications as a better alternative to
other forms of wireless communication, including RFID. Id. at 55 (citing
Ex. 1005, 2:8–14; Ex. 1006, 4:6–20). According to Google, this is because
the majority of equipment necessary for sonic/acoustic communication is
already included on computers and mobile devices and, therefore, using
sound as the communication medium has economic advantages because it
eliminates the need for expensive hardware. Id. at 55–56 (citing Ex. 1005,
3:51–67; Ex. 1006, 4:6–20). Google also cites to Paulson’s disclosure that
“sound transmission is unregulated,” so “the full spectrum of sonic
frequencies is generally available for use by the sonic communication
system.” Id. at 56 (quoting Ex. 1005, 11:1–5). Accordingly, Google
concludes that applying the teachings of Beenau by using sound waves
instead of RFID would have merely involved substituting one known
communication mechanism (i.e., sound) for another (i.e., RFID), with the
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predictable benefits of eliminating the need to add specialized RFID
hardware and avoiding the use of a regulated spectrum. Id. As further
support for its conclusion, Google also points out that Paulson, Surprenant,
and Beenau all involve similar applications, such as conducting financial
transactions. Id. at 56–57 (citing Ex. 1007 ¶ 19; Ex. 1005, 10:37–47;
Ex. 1006, 7:54–57).
As we explain above, Uniloc does not address separately Google’s
arguments and supporting evidence as to how the combined teachings of
Paulson, Surprenant, and Beenau account for all the limitations of
independent claim 9 in the Patent Owner Response. See PO Resp. 10–19.
Although Uniloc contends that Beenau fails to address the deficiencies in the
proposed combination of Paulson and Surprenant in the Sur-reply, Uniloc
only presents this argument after Google notes in the Reply that Uniloc
failed to address Google’s reliance on the teachings of Beenau in the Patent
Owner Response. See PO Su-reply 12–13.
In the Scheduling Order, we cautioned Uniloc “that any arguments
not raised in the [Patent Owner Response] may be deemed waived.” Paper
16, 8; see also In re NuVasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016)
(holding that patent owner’s failure to proffer argument at trial as instructed
in the scheduling order constitutes waiver). The Board routinely holds
patent owners to this cautionary statement. See, e.g., Werner Co. v.
Louisville Ladder, Inc., IPR2019-00336, Paper 34 at 39 (PTAB Aug. 24,
2020) (Final Written Decision) (“Patent Owner’s arguments made for the
first time in its Sur-reply are waived because they were not made in the
Patent Owner Response, and Petitioner relied on their absence to its
detriment and was deprived of the chance to present arguments and evidence
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in its Reply to rebut Patent Owner’s assertions.”). We see no reason to
deviate from this position in this proceeding, especially because Uniloc does
not attempt to explain why we should consider its belated arguments
directed to the teachings of Beenau. See PO Sur-reply 12–13.
Even if Uniloc did not waive its argument that Beenau fails to address
the deficiencies in the proposed combination of Paulson and Surprenant, this
argument is unavailing. As we explain above, there are no such deficiencies
in the proposed combination of Paulson and Surprenant for Beenau to
remedy. See supra Section II.B.5.a–c. Moreover, we have reviewed
Google’s arguments and supporting evidence as to how the combined
teachings of Paulson, Surprenant, and Beenau accounts for all the limitations
of independent claim 9, and we agree with and adopt Google’s analysis. See
Pet. 58–62. Accordingly, Google has demonstrated by a preponderance of
the evidence that the subject matter of independent claim 9 would have been
obvious over the combined teachings of Paulson, Surprenant, and Beenau.
3. Claims 10–12
Google relies on the same arguments and supporting evidence
identified above with respect to the obviousness ground based on the
combined teachings of Paulson and Surprenant to account for all the
limitations of dependent claims 10–12. Pet. 62 (citing id. at 48–54). During
the course of trial, Uniloc does not address separately Google’s arguments
and supporting evidence as to how the combined teachings of Paulson and
Surprenant account for the additional limitations of dependent claims 10–12.
See PO Resp. 10–18; PO Sur-reply 1–12. We have reviewed Google’s
arguments and supporting evidence as to how the combined teachings of
Paulson and Surprenant accounts for the additional limitations of these
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dependent claims, and we agree with and adopt Google’s analysis. See Pet.
48–54, 62. Accordingly, Google has demonstrated by a preponderance of
the evidence that the subject matter of dependent claims 10–12 would have
been obvious over the combined teachings of Paulson, Surprenant, and
Beenau.
D. Obviousness Over the Combined Teachings of
Paulson, Surprenant, and McConnell
Google contends that dependent claim 11 of the ’952 patent is
unpatentable under § 103(a) as obvious over the combined teachings of
Paulson, Surprenant, and McConnell. Pet. 62–65. Google explains how the
combined teachings of Paulson, Surprenant, and McConnell account for the
subject matter of this challenged claim, and provides reasoning as to why a
person of ordinary skill in the art would have been prompted to modify the
teachings of these references. Id. Google relies on the Declaration of Stuart
J. Lipoff accompanying the Petition to support its positions, which is
unrebutted on this record. Ex. 1003. In its Patent Owner Response, apart
from the arguments directed to the obviousness ground based on the
combined teachings of Paulson and Surprenant, Uniloc does not address
separately Google’s arguments and supporting evidence as to how the
combined teachings of Paulson, Surprenant, and McConnell account for the
additional limitation of dependent claim 11. See PO Resp. 10–19; PO Sur-
reply 1–13.
We begin our analysis with a brief overview of McConnell, and then
we set forth Google’s contentions with respect to dependent claim 11.
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1. Overview of McConnell
McConnell generally relates to digital communications networks and,
in particular, to communications using acoustic energy. Ex. 1008, 1:4–5. In
one embodiment, McConnell discloses a vehicle that is equipped with a
Coded Sound Generator. Id. at 6:28, 7:10. A mode selection switch allows
an operator to set the Coded Sound Generator to be activated continuously at
intervals or only upon user command. Id. at 7:19–21.
2. Claim 11
Claim 11 directly depends from independent claim 9, and further
recites that “the transmitting step further comprises transmitting the
modulated carrier wave until a stop indication is received from a user.”
Ex. 1001, 15:10–12. Google takes the alternative position that, if the
combined teachings of Paulson and Surprenant do not account for the
limitation of dependent claim 11, then this limitation is taught by
McConnell. Pet. 64. More specifically, Google contends that McConnell
teaches the limitation of dependent claim 11 because it discloses a mode
selection switch that allows a user to change modes from continuously at
intervals to only upon user command. Id. (citing Ex. 1008, 7:19–25, 12:23–
13:2). Google asserts that, when the user changes modes in this way,
McConnell’s system stops transmitting continuously at intervals and awaits
further user input before transmitting. Id. (citing Ex. 1003 ¶ 147). In other
words, Google argues that the user instructs the transmitter to stop
transmitting until the user provides further input, which teaches
“transmitting the modulated carrier wave until a stop indication is received
from a user.” Id. (citing Ex. 1003 ¶ 147).
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Turning to rationale to combine, Google argues that it would have
been obvious to incorporate McConnell’s mode selection switch into the
combined system of Paulson and Surprenant to prevent adding potentially
disturbing noise to the environment, reduce the opportunity for
eavesdropping, and conserve battery power. Pet. 65. As further support for
its rationale to combine argument, Google also points out that each of
Paulson, Surprenant, and McConnell pertain to similar systems that transmit
data through acoustic energy, and they all do so by transmitting the
information repeatedly. Id. (citing Ex. 1005, 11:23–27; then citing Ex. 1006,
16:22–23; and then citing Ex. 1008, 7:19–25, 12:23–13:2).
As we explain previously, Uniloc does not address separately
Google’s arguments and supporting evidence as to how the combined
teachings of Paulson, Surprenant, and McConnell account for the additional
limitation of dependent claim 11. See PO Resp. 10–18; PO Sur-reply 1–12.
We have reviewed Google’s arguments and supporting evidence as to how
the combined teachings of Paulson, Surprenant, and McConnell account for
the additional limitation of this dependent claim, and we agree with and
adopt Google’s analysis. See Pet. 62–65. Accordingly, Google has
demonstrated by a preponderance of the evidence that the subject matter of
dependent claim 11 would have been obvious over the combined teachings
of Paulson, Surprenant, and McConnell.
E. Obviousness Over the Combined Teachings of
Paulson, Surprenant, Beenau, and McConnell
Google contends that dependent claim 11 is unpatentable under
§ 103(a) as obvious over the combined teachings of Paulson, Surprenant,
Beenau, and McConnell. Pet. 66. Google takes the alternative position that,
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if the combined teachings of Paulson, Surprenant, and Beenau do not
account for the limitation of dependent claim 11, then this limitation is
taught by McConnell for the same reasons discussed above with respect to
the obviousness ground based on Paulson, Surprenant, and McConnell. Id.
During the course of trial, Uniloc does not address separately
Google’s arguments and supporting evidence as to how the combined
teachings of Paulson, Surprenant, Beenau, and McConnell account for the
additional limitation of dependent claim 11. See PO Resp. 10–18; PO Sur-
reply 1–12. We have reviewed Google’s arguments and supporting evidence
as to how the combined teachings of Paulson, Surprenant, Beenau and
McConnell account for the additional limitation of this dependent claim, and
we agree with and adopt Google’s analysis. See Pet. 66. Accordingly,
Google has demonstrated by a preponderance of the evidence that the
subject matter of dependent claim 11 would have been obvious over the
combined teachings of Paulson, Surprenant, Beenau, and McConnell.
III. CONCLUSIONS6
Based on the fully developed trial record, Google has demonstrated by
a preponderance of the evidence that claims 9–12 are unpatentable under

6 Should Uniloc wish to pursue amendment of the challenged claims in a
reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Uniloc’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 Uniloc chooses to file a reissue application or a
request for reexamination of the challenged patent, we remind Uniloc of its
continuing obligation to notify the Board of any such related matters in
updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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§ 103(a) as obvious. A summary of our conclusions is set forth in the table
below.
Claims 35 U.S.C. § Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
9–12 103(a) Paulson,
Surprenant
9–12
9–12 103(a) Paulson,
Surprenant,
Beenau
9–12
11 103(a) Paulson,
Surprenant,
McConnell
11
11 103(a) Paulson,
Surprenant,
Beenau,
McConnell
11
Overall
Outcome
9–12
IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 9–12 of the ’952 patent are held to be
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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FOR PETITIONER:
Erika H. Arner
Jason E. Stach
Benjamin A. Saidman
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
erika.arner@finnegan.com
jason.stach@finnegan.com
benjamin.saidman@finnegan.com

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