Uniloc 2017 LLC

Patent Trials and Appeals Board

Aug 9, 2021

IPR2020-00463 (P.T.A.B. Aug. 9, 2021)

Trials@uspto.gov Paper 29
571-272-7822 Date: August 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

GOOGLE LLC,
Petitioner,
v.
UNILOC 2017 LLC,
Patent Owner.
____________________

IPR2020-00463
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____________

Before DAVID C. MCKONE, JESSICA C. KAISER, and
SHARON FENICK, Administrative Patent Judges.

FENICK, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background and Summary
Google LLC (“Petitioner”), filed a Petition for inter partes review of
claims 1, 8, and 15 (“the challenged claims”) of U.S. Patent No. 8,194,632
B2 (Ex. 1001, “the ’632 patent”). Paper 1 (“Pet.”). Uniloc 2017 LLC
(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
Pursuant to 35 U.S.C. § 314, we instituted this proceeding. Paper 13 (“Inst.
Dec.”).
Patent Owner filed a Patent Owner’s Response (Paper 17, “PO
Resp.”), Petitioner filed a Reply to the Patent Owner’s Response (Paper 19,
“Reply”), and Patent Owner filed a Sur-Reply to the Reply (Paper 21, “Sur-
reply”). An oral argument was held on May 13, 2021 (Paper 28, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b)(4). This Decision is a
final written decision under 35 U.S.C. § 318(a) as to the patentability of
claims 1, 8, and 15. Based on the record before us, Petitioner has proved, by
a preponderance of the evidence, that claims 1, 8, and 15 are unpatentable.
B. Real Parties in Interest and Related Matters
Petitioner identifies only itself as the real party in interest. Pet. 60.
Patent Owner identifies only itself as the real party in interest. Paper 3, 1.
Petitioner and Patent Owner identify Uniloc 2017 LLC v. Google
LLC, No. 2:18-cv-00499 (E.D. Tex.) (“related district court action”) as a
related matter. Pet. 60; Paper 3, 2. Petitioner and Patent Owner each note
that this case has been transferred to the Northern District of California.
Paper 7, 1–2; Paper 12, 1; Ex. 1023. Petitioner in an updated mandatory
notice states that the Northern District of California dismissed the litigation
for lack of subject matter jurisdiction, and that a notice of appeal has been
filed. Paper 18.
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C. The ’632 Patent
The ’632 patent is directed to establishing network connections
between a stationary terminal (such as a laptop, desktop, or workstation) and
a remote device (a remote stationary terminal or a mobile device, such as a
smart phone or PDA) through intermediary mobile devices. Ex. 1001, code
(54), 1:25–31, 2:51–56. Figure 1 of the ’632 patent is reproduced below:

Figure 1 is a diagram of an environment in which the invention may be
deployed. Id. at 2:29–30, 2:40–41.
In Figure 1, mobile devices 110 and 115 are connected via cellular
wireless network system 100, and mobile device 110 is connected via a
short-range wireless technology, such as Bluetooth, with stationary terminal
125. Id. at 1:40–50, 1:61–67, 3:20–40, 5:1–20. Stationary terminal 125 also
can access the Internet 120. Id. at 3:9–16.
The ’632 patent describes one embodiment of the invention in which a
network connection is established between an initiating stationary terminal
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(such as stationary terminal 125 in Fig. 1) and a remote device (such as
mobile device 115 in Fig. 1), and describes this embodiment with reference
to Figure 3, reproduced below. Id. at 2:34–36, 4:29–67.

Figure 3 is a flow chart that depicts steps performed by a stationary terminal,
a mobile device proximate to the stationary terminal, and a remote device.
Id. at 4:29–67. The stationary terminal and proximate mobile device
establish a Bluetooth (or other short-range wireless technology)
communication link with each other. Id. at 4:36–44, Fig. 3 (elements 305,
310). The stationary terminal transmits an invitation message to the
proximate mobile device. Id. at 4:47–51, Fig. 3 (element 320). This
message includes information necessary for the remote device to establish a
connection with the stationary terminal (such as an IP address and TCP port
information) and the remote device’s cellular telephone number. Id. at 4:47–
51. The proximate mobile device transmits an SMS message to the remote
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device, using the provided cellular telephone number and including the
provided connection information, and the remote device extracts and utilizes
the included information to establish a connection to the stationary terminal.
Id. at 4:51–67, Fig. 3 (elements 330, 340, 345, 350, 355, 360).
D. Illustrative Claim
Claim 1 of the ’632 patent is illustrative and is reproduced below.
1. A method for establishing a data communications
session between a stationary terminal and a remote
device, the method comprising:
establishing a communication link through a
short-range wireless technology between the
stationary terminal and a proximate mobile device
wherein the proximate mobile device operates
within a cellular wireless network system;
transmitting, by the stationary terminal, an
invitation message comprising a network address
relating to the stationary terminal and a remote
device identifier to the proximate mobile device
through the established communication link,
whereupon the proximate mobile device establishes
communication with the remote device using the
remote device identifier and provides the network
address of the stationary terminal to the remote
device; and
establishing a connection between the
stationary terminal and the remote device for data
communications based upon an initial
communication by the remote device through use of
the network address of the stationary terminal
provided to the remote device by the proximate
mobile device.
Ex. 1001, 6:26–48.
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The remaining two challenged claims refer explicitly to the steps of
claim 1. Claim 8 recites “[a] non-transitory computer-readable medium
including instructions that, when executed by a processor of a stationary
terminal, causes the processor to establish a data communications session
between the stationary terminal and a remote mobile device, by performing
all the steps of claim 1,” and claim 15 recites “[a] computer system
configured to initiate a data communications session with a remote device,
the computer system comprising a processor configured to perform all the
steps of claim 1.” Id. at 6:63–67, 8:1–4.
E. Evidence Relied Upon
Reference Date Exhibit
Conley et al.
(“Conley”) US 2004/0215974 A1 Oct. 28, 2004 1002
J. Rosenberg et al., SIP: SESSION
INITIATION PROTOCOL, NETWORK
WORKING GROUP REQUEST FOR COMMENTS
3261 (“RFC 3261”)
2002 1003
Petitioner also relies upon the Declaration of Brian Von Herzen, Ph.D.
(Ex. 1012). Patent Owner does not rely on expert testimony.
F. The Instituted Grounds of Unpatentability
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 8, 15 103 Conley
1, 8, 15 103 Conley, RFC 3261
II. ANALYSIS
A. Claim Construction
We apply the same claim construction standard that is applied in civil
actions under 35 U.S.C. § 282(b), which is articulated in Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R § 42.100(b)
(2019). Under Phillips, claim terms are afforded “their ordinary and
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customary meaning.” Phillips, 415 F.3d at 1312 (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he ordinary
and customary meaning of a claim term is the meaning that the term would
have to a person of ordinary skill in the art in question at the time of the
invention . . . .” Id. at 1313. Only claim terms that are in controversy need
to be construed and only to the extent necessary to resolve the controversy.
See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
1013, 1017 (Fed. Cir. 2017).
In our Decision on Institution, we found that, while a claim
construction order was issued in the related district court action construing
certain terms in the challenged claims, with the exception of the term “short-
range wireless technology,” no term required construction to resolve the
controversy. Inst. Dec. 19–20. With respect to the term “short-range
wireless technology,” we determined that the correct construction of the
term encompasses Bluetooth technology, and that no further construction
was necessary. Id. at 20.
Patent Owner argues that the term “short-range wireless technology”
should not be interpreted as not encompassing “Wi-Fi technology” or as
directed exclusively to such technology. PO Resp. 10–13. Patent Owner
argues that a claim construction would allow us to evaluate an alternative
argument made in the Petition. Id. at 13 (citing Pet. 22). Patent Owner
agrees that the Specification discloses Bluetooth as an exemplary short-
range wireless technology. Id. at 12 (citing Ex. 1001, 3:25–26, 4:42, 6:49–
50); see Reply 18. Patent Owner argues, however, that claim construction is
appropriate because, if we did adopt a construction that exclusively requires
Wi-Fi, Petitioner’s “alternative obviousness theory” would need to be
considered. PO Resp. 28 (citing Pet. 22). However, this theory relies again
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on the prior art disclosure of Bluetooth, which the parties each agree is
properly included in “short-range wireless technology” according to the
language of the claims. Id. at 11–12; Reply 18.
No specific construction for “short-range wireless technology” is
argued by either party, and none is necessary to resolve the controversy
before us. We agree with the parties that the ’632 patent describes Bluetooth
as one possible short-range wireless technology, and that the correct
construction of “short-range wireless technology” encompasses Bluetooth
technology. See Pet. 11; Reply 12; Ex. 1001, 2:61–62 (“Mobile device 110
also supports a short-range wireless technology such as Bluetooth.”), 2:1–6,
3:20–28, 4:36–44, 5:1–3, 6:6–9, claim 2. We do not find it necessary to
provide express claim constructions for any other terms. See Nidec, 868 F.3d
at 1017.
B. Legal Standards
It is a petitioner’s burden to demonstrate unpatentability. See
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
1316, 1326–27 (Fed. Cir. 2008)).
A claim is unpatentable under 35 U.S.C. § 103 if the differences
between the claimed subject matter and the prior art are “such that the
claimed invention as a whole would have been obvious before the effective
filing date of the claimed invention to a person having ordinary skill in the
art to which the claimed invention pertains.” We resolve the question of
obviousness on the basis of underlying factual determinations, including
(1) the scope and content of the prior art; (2) any differences between the
claimed subject matter and the prior art; (3) the level of skill in the art; and
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(4) objective evidence of nonobviousness, i.e., secondary considerations.1
See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
C. Level of Ordinary Skill in the Art
Petitioner, relying on the testimony of Dr. Von Herzen, identifies a
person of ordinary skill in the art as someone who “would have held at least
a bachelor’s degree in electrical engineering, computer science, or an
equivalent field, and approximately two years of industrial or academic
experiences working in the fields of mobile and/or computer networking.”
Pet. 7; Ex. 1012 ¶ 28. Patent Owner does not offer an opinion on
Petitioner’s definition, either agreeing or disagreeing, and does not offer a
counter definition of a person of ordinary skill in the art. PO Resp. 6.
We find Petitioner’s definition to be consistent with the problems and
solutions disclosed in the patent and prior art of record, and adopt it as our
own. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
D. Obviousness of Claims 1, 8, and 15 over Conley
Petitioner argues that claims 1, 8, and 15 are unpatentable as obvious
over Conley. See Pet. 18–36. Patent Owner raises several specific
substantive arguments regarding the step of “transmitting, by the stationary
terminal, an invitation message . . .” as discussed in detail below. PO Resp.
14–26. For the reasons given below, Petitioner has shown obviousness by a
preponderance of the evidence for the challenged claims.
1. Overview of Conley
Conley discloses a method for establishing a secondary
communication channel between at least two computing devices through use

1 The record does not include allegations or evidence of objective indicia of
nonobviousness.
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of a primary channel. Ex. 1002 ¶ 10. Figure 1 of Conley, reproduced
below, “illustrates one exemplary situation” in which this may occur. Id.
¶¶ 14, 21.

Figure 1 depicts two telephones, 110 and 112, each connected to the other
via telephone network 120. Id. ¶ 21. Telephone network 120 provides
communication channel 160 between the telephones, which could be an
audio channel or, alternatively, a data channel such as Short Messaging
Service (SMS), among other data channel possibilities. Id. ¶¶ 21, 22.
Telephone 110 is connected to device 140 via secure link 130 (labelled
“Phone-Computer Channel”), and similarly telephone 112 is connected to
device 142 via secure link 132 (labelled “Phone-Computer Channel”). Id.
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Conley describes that the secure link may be a Bluetooth link, or that,
alternatively, a telephone and a device could be “a single, integrated unit”
where “the secure link may be accomplished by a direct connection.” Id.
¶¶ 21, 24, 26, 27. If the secure link between a device and a telephone is a
Bluetooth link, Conley discloses that “the device could use the Bluetooth
Serial Port Profile to send an SMS message containing the data [to be
transmitted to another telephone].” Id. ¶ 26.
Figure 4 of Conley is reproduced below:

Figure 4 is a flow chart depicting a method for establishing a secondary
channel through use of a primary channel. Id. ¶¶ 17, 29.
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The method depicted in Figure 4 begins with step 410, in which “a
network link, for example via the Internet, is initiated . . . by a [first]
device.” Id. ¶ 29. Next, in step 420, the first device connects to a telephonic
unit. Id. Then, “[i]f the users of at least two telephonic units desire to
transmit data or files between their devices, for example their computers,”
they establish communication over a telephone network. Id. The first
device determines whether this communication has been established in
decision diamond 430, and if it has not, waits for such communication to be
in process. Id. Next, in steps 440 and 450, the first device connects to the
telephonic unit and sends a small amount of information, such as the
location information of the first device, to the second device via the
telephone network. Id. ¶¶ 23, 30. Upon receipt, the second device uses the
information to establish a second channel connection with the first device,
step 460, and when the process is finished, “both primary and secondary
channels are operable simultaneously.” Id.
2. Claim 1 – Obviousness over Conley
Petitioner argues that Conley’s telephonic device 112 and second
device 142 together teach the claimed remote device, and that Conley’s
device 140 teaches the claimed stationary terminal. Petitioner’s expert Dr.
Von Herzen annotated Conley’s Figure 1, as reproduced below, to illustrate
this argument.
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Pet. 19; Ex. 1012 ¶ 47. In this annotated version of Conley’s Figure 1, a
portion including Conley’s telephonic device 112 and second device 142 is
shaded green to indicate Petitioner’s contention that together they teach the
claimed remote device, as Conley teaches that a telephone and a device may
be “a single, integrated unit.” Id. at 15, 18–21 (citing Ex. 1002 ¶¶ 21, 26,
27; Ex. 1012 ¶ 47). Petitioner argues that Conley describes that device 140
(shaded in blue) may be a laptop computer or table-top computer, and thus
Conley teaches or suggests a device that is a “laptop, desktop, [or]
workstation” and therefore a stationary terminal. Id. at 20 (quoting Ex.
1001, 1:28–29; citing Ex. 1002 ¶ 24; Ex. 1012 ¶ 49).
a) Preamble and first limitation (“establishing a communication
link . . .”)
Petitioner argues that Conley teaches the preamble: “[a] method for
establishing a data communications session between a stationary terminal
and a remote device.” Ex. 1001, 6:26–27. As described above, Petitioner
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argues that Conley teaches the stationary terminal and the proximate mobile
device. Petitioner additionally argues that first device 140 establishes a
secondary communications channel, as seen on the annotated version of
Figure 1 above in purple. Pet. 14, 18–20 (citing Ex. 1002, code (57), ¶¶ 21,
24, 26, 27; Ex. 1012 ¶¶ 47–49).
The first limitation of the method of claim 1 is “establishing a
communication link through a short-range wireless technology between the
stationary terminal and a proximate mobile device wherein the proximate
mobile device operates within a cellular wireless network system.”
Ex. 1001, 6:29–33. Petitioner argues that the proximate mobile device is
taught by Conley’s telephonic device 110, operating within a cellular
network, and connected via a Bluetooth communication link to first device
140. Pet. 21–23 (citing Ex. 1002 ¶¶ 21, 22, 26, 27, 30; Ex. 1012 ¶¶ 51–53).
As discussed above, Section II.A, we construe “short-range wireless
technology” to encompass Bluetooth technology.
Patent Owner argues that “the Petitioner fails to explain why a person
of ordinary skill would implement the system of Conley in a fashion where
the first device is not an integrated unit while the second device is, except by
using the ’632 patent as a roadmap.” Sur-reply 6 n.1.
We credit Dr. Von Herzen’s uncontroverted testimony that Conley
discloses telephonic device 112 and that second device 142 “can be
implemented as multiple devices or as a single device.” Ex. 1012 ¶ 47
(citing Ex. 1002 ¶¶ 21, 26, 27). The language of Conley describes that
devices 140 and 142 are securely linked to respective telephones 110 and
112. Ex. 1002 ¶ 21. It describes that these secure links may be
accomplished by one of five different exemplary means. Id. It then
additionally discloses that, “[a]lternately, if the telephone and device are a
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single, integrated unit . . . the secure link may be accomplished by a direct
connection.” Id. Conley does not describe or imply that only one of these
possibilities must apply to all telephone/device pairs.
Petitioner is not required to show that one of ordinary skill would
have been motivated to select a configuration having different connections
between each telephonic device and computing device pair over one having
identical connections for each pair. See Novartis Pharm. Corp. v. West-
Ward Pharm. Int’l Ltd., 923 F.3d 1051, 1059 (Fed. Cir. 2019) (“Our case
law does not require that a particular combination must be the preferred, or
the most desirable, combination described in the prior art in order to provide
motivation for the current invention.”) (quoting In re Fulton, 391 F.3d 1195,
1200 (Fed. Cir. 2004); Infineum USA L.P. v. Chevron Oronite Co. LLC, 844
Fed. Appx. 297, 305 (Fed. Circ. 2021) (unpublished). Petitioner has shown
that the configuration it relies on is encompassed in Conley’s disclosure and
supported this showing with citations to Conley and expert testimony, and,
thus, we do not agree that this showing is deficient.
Beyond this argument, Patent Owner does not dispute Petitioner’s
arguments with respect to the preamble or the first limitation. See PO Resp.
14–26. Petitioner directs us to sufficient evidence to support the balance of
its contentions. Therefore, we find Petitioner has met its burden of proof on
this limitation.
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b) Second limitation (“transmitting . . . an invitation message
comprising a network address . . . and a remote device
identifier to the proximate mobile device through the
established communication link, whereupon the proximate
mobile device establishes communication with the remote
device using the remote device identifier and provides the
network address of the stationary terminal to the remote
device”)
The method of claim 1 further includes the step of “transmitting, by
the stationary terminal, an invitation message comprising a network address
relating to the stationary terminal and a remote device identifier to the
proximate mobile device through the established communication link,
whereupon the proximate mobile device establishes communication with the
remote device using the remote device identifier and provides the network
address of the stationary terminal to the remote device.” Ex. 1001, 6:34–42.
Petitioner argues that the transmission of an invitation message as in
this limitation is taught in Conley, where a “small amount of information” is
transmitted by first device 140 to the second device, via the Bluetooth
connection to telephonic device 110 and then via primary channel 160.
Pet. 23–26 (citing Ex. 1002 ¶¶ 21–23, 26, 30, 34, 36, 40; Ex. 1012 ¶¶ 54–
55). Petitioner argues that inclusion of “a network address relating to the
stationary terminal” in the invitation message sent to the proximate mobile
device and then the provision of that network address to the remote device is
taught by the inclusion of the IP address of the sender (the first device) in the
“small amount of information” sent by first device 140 through primary
channel 160 to the second device, as described in Conley. Pet. 26, 28–29
(citing Ex. 1002 ¶¶ 22, 23, 30, 36; Ex. 1012 ¶¶ 56, 58).
Petitioner additionally contends that Conley teaches or suggests the
inclusion of a remote identifier in the invitation message transmitted by
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Conley’s first device 140 to the proximate mobile device (telephonic device
110), because Conley describes that primary channel 160 might be a data
channel (e.g. SMS), and one of ordinary skill in the art would have
understood that in order to send an SMS message, the address of the
recipient must be included, and this would teach or suggest the “remote
device identifier” of claim 1. Pet. 26–27, 29 (citing Ex. 1002 ¶¶ 21, 22, 23,
30, 34; Ex. 1012 ¶¶ 57, 58). Petitioner argues that one of ordinary skill
“would have understood that when a computer sends an SMS message via a
connected telephone, the computer provides the telephone with the
SMS_Submit Transfer Protocol Data Unit along with a command to send the
message.” Id. at 27, 29 (citing Ex. 1012 ¶ 57; Ex. 10192 at 21–23, 25–29).
Petitioner additionally argues that the provision of the network address of
the terminal to the remote device is also taught by the inclusion in the SMS
message in Conley, which is transmitted to telephonic device 112, of the IP
address of the first device 140. Id. at 28–29 (citing Ex. 1002 ¶¶ 23, 30, 36;
Ex. 1012 ¶¶ 58, 59).
Patent Owner contends that Conley does not disclose this claim
limitation because Conley does not disclose the inclusion of a remote device
identifier for Conley’s second device 142. Patent Owner argues that “the
Petition and the Reply both point to Conley’s second device 142 as being
the required ‘remote device.’” Sur-reply 4, 5 (“As seen in Conley’s Figure
1, Petitioner points to Conley’s second device 142 (desktop computer on the
right-hand side) as being the required ‘remote device’.”), 6 (arguing that the
remote device identifier would be the identifier of Conley’s second device

2 We refer for this exhibit to the internal page numbers rather than the page
numbers added by Petitioner.
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142); Reply 16, 21. Patent Owner argues that an SMS message would have
had the address of telephone 112, and not second device 142. This argument
rests in part on Patent Owner’s rejection of Petitioner’s mapping of the
remote device as telephone 112 and device 142 as a single, integrated unit,
which we have addressed above, Section I.D.2.a. With that mapping in
mind (which we find supported in Conley’s teachings), we find persuasive
Petitioner’s argument, backed with uncontroverted expert testimony and
citations to supporting documentation, that the SMS messages sent over
Conley’s primary channel 160 (if that channel was an SMS data channel
(Ex. 1012 ¶¶ 21, 22)) would include the address of the recipient, that is, a
single integrated unit incorporating telephone 112. Pet. 26–27 (citing
Ex. 1002 ¶¶ 23, 30, 34; Ex. 1012 ¶ 57; Ex. 1019, 21–23, 25–29); Reply 2–4;
Ex. 1012 ¶ 50.
Patent Owner additionally argues that “[n]othing in Conley discloses
or even suggests that any communication of data over the already
established primary channel would somehow require the inclusion of a
‘remote device identifier,’ much less that inclusion of a ‘remote device
identifier’ is somehow necessary to even allow each and every
communication of data over the established primary channel.” PO Resp.
18–19. Because the transmission to the remote device including the “small
amount of information” in Conley occurs only after this channel is
established, Patent Owner argues, there would be no need to use a remote
device identifier:
Petitioner’s speculative and illogical rewrite of Conley is
tantamount to arguing that once you and a friend have
successfully started a telephone conversation over a traditional
Public Switched Telephone Network or PSTN, every time you
want to say something you have to hang up and redial, as
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opposed to simply continue speaking and allowing the
established connection to convey your voice.
Id. at 19. But we agree with Petitioner that Conley discloses the existing
channel may be “a data channel such as Short Messaging Service (SMS).”
Ex. 1002 ¶ 21; Pet. 23, 27, 29–30. It is uncontroverted that “an SMS
message includes the address of the recipient, which in this case would be
the remote device.” Pet. 27; Ex. 1012 ¶ 57. Thus, we determine that a
person of ordinary skill in the art would have understood that even where
prior SMS messages had been sent or a specific SMS channel established,
the Conley invitation message, if sent via SMS, would have included a
remote device identifier.
For these reasons, we determine that Petitioner has met its burden of
proof on this limitation.
c) Third limitation (“establishing a connection between the
stationary terminal and the remote device . . . .”)
The method of claim 1 further includes the limitation “establishing a
connection between the stationary terminal and the remote device for data
communications based upon an initial communication by the remote device
through use of the network address of the stationary terminal provided to the
remote device by the proximate mobile device.” Ex. 1001, 6:43–48.
Petitioner argues that, in Conley, the second device 142 uses the
information received from telephone 110 to establish a secondary channel,
and that one of ordinary skill would have understood this to teach or suggest
the use of an initial communication by the remote device. Pet. 30–31 (citing
Ex. 1002 ¶¶ 21, 23, 27, 30, Fig. 4; Ex. 1012 ¶¶ 60, 61). Petitioner contends
that one of ordinary skill would have known how devices would connect to
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each other over a secondary channel such as the Internet. Id. at 31–32
(citing Ex. 1012 ¶ 61; Ex. 1006, 524, 539–540).
Patent Owner does not dispute Petitioner’s arguments with respect to
this third limitation. See PO Resp. 14–26. Petitioner directs us to sufficient
evidence to support the balance of its contentions. Pet. 30–32. Therefore,
we find Petitioner has met its burden of proof on this limitation.
d) Conclusion
In sum, on the complete record, we conclude that Petitioner has
proved by a preponderance of the evidence that claim 1 would have been
obvious over Conley.
3. Analysis of Claims 8 and 15
Petitioner argues that claim 8’s “non-transitory computer-readable
medium including instructions that, when executed by a processor of a
stationary terminal, causes the processor to establish a data communications
session between the stationary terminal and a remote mobile device, by
performing all the steps of claim 1,” is taught or suggested by the memory
220 of first device 140. Pet. 34–35 (citing Ex. 1002 ¶ 24, Fig. 2). Petitioner
further argues that the processor of first device 140 teaches the “processor of
[the] stationary terminal.” Id. (citing Ex. 1002 ¶ 24, Fig. 2). Petitioner
additionally contends that the telephonic device 142 is a “remote mobile
device” thus teaching “a remote mobile device” as in claim 8, as well as the
“remote device” of claim 1. Id. at 34 (citing Ex. 1012 ¶ 64). We find that
Petitioner has shown that Conley teaches these additional aspects of claim 8
based on those contentions.
Petitioner additionally argues that claim 15’s “computer system
configured to initiate a data communications session with a remote device”
and “comprising a processor configured to perform all the steps of claim 1”
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are similarly taught by first device 140 and its processor. Id. at 36 (citing
Ex. 1012 ¶ 67). We find that Petitioner has shown that Conley teaches these
additional aspects of claim 15 based on those contentions.
Patent Owner does not present any arguments for claims 8 or 15 other
than those presented for claim 1, addressed above.
For the reasons discussed above, we conclude that Petitioner has
proved by a preponderance of the evidence that claims 8 and 15 would have
been obvious over Conley.
E. Remaining Grounds
Having determined that Petitioner establishes by a preponderance of
the evidence that the challenged claims would have been obvious over
Conley, we do not address Petitioner's additional grounds challenging these
claims. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a
petitioner “is entitled to a final written decision addressing all of the claims
it has challenged”); Boston Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x
984, 990 (Fed. Cir. 2020) (nonprecedential) (“We agree that the Board need
not address [alternative grounds] that are not necessary to the resolution of
the proceeding.”).
III. PATENT OWNER’S ARGUMENT UNDER ARTHREX
Patent Owner argues that the Federal Circuit determined in Arthrex,
Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), that
Administrative Patent Judges were appointed unconstitutionally, but that the
Federal Circuit’s remedy was inappropriate and insufficient to cure the
constitutional violation. PO Resp. 34–37.
We need not consider Patent Owner’s constitutional argument because
the U.S. Supreme Court addressed this issue in United States v. Arthrex,
Inc., 141 S. Ct. 1970 (2021).
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IV. CONCLUSION3
Petitioner has shown by a preponderance of the evidence that claims
1, 8, and 15 would have been obvious over Conley.

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED, based on a preponderance of the evidence, that claims 1,
8, and 15 are unpatentable; and
FURTHER ORDERED, because this is a final written decision, the
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.

3 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
4 As discussed above, Section II.E, having determined that the challenged
claims would have been obvious over Conley, we do not address Petitioner's
additional grounds challenging these claims.
Claims

35 U.S.C. § Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 8, 15 103 Conley 1, 8, 15
1, 8, 15 103 Conley, RFC 32614

Overall
Outcome
1, 8, 15
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FOR PETITIONER:
Erika H. Arner
Daniel C. Tucker
Cory C. Bell
FINNEGAN, HENDERSON, FARABOW,
GARRETT, & DUNNER, LLP
erika.arner@finnegan.com
daniel.tucker@finnegan.com
cory.bell@finnegan.com

FOR PATENT OWNER:

Ryan Loveless
Brett 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