Uniloc 2017 LLC

Patent Trials and Appeals Board

Jul 22, 2020

IPR2019-00510 (P.T.A.B. Jul. 22, 2020)

Trials@uspto.gov Paper 21
571.272.7822 Entered: July 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC. AND LG ELECTRONICS, INC.,1
Petitioner,

v.

UNILOC 2017 LLC,
Patent Owner.
____________

IPR2019-00510
Patent 6,868,079 B1
____________

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

MEDLEY, Administrative Patent Judge.

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

1 Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
(collectively “Samsung”) were terminated from the proceeding. Paper 20.
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I. INTRODUCTION
Apple Inc., LG Electronics, Inc., Samsung Electronics Co., Ltd., and
Samsung Electronics America, Inc. (collectively “Petitioner”) filed a
Petition for inter partes review of claims 17 and 18 of U.S. Patent
No. 6,868,079 B1 (Ex. 1001, “the ’079 patent”). Paper 2 (“Pet.”). Uniloc
2017 LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
(“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
Response, we instituted inter partes review, pursuant to 35 U.S.C. § 314, as
to claims 17 and 18 based on all challenges set forth in the Petition. Paper 7
(“Decision to Institute” or “Dec.”).
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 9, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
Response (Paper 10, “Pet. Reply”), and Patent Owner filed a Sur-reply
(Paper 11, “Sur-reply”). On April 23, 2020, we held an oral hearing. A
transcript of the hearing is of record. Paper 17 (“Tr.”).
On May 15, 2020, Petitioner filed an unopposed request to withdraw
the challenges set forth in the Petition with respect to claim 18. Ex. 3001.
In essence, Petitioner requests removal of the challenges to claim 18 from
the Petition as if claim 18 was never challenged. Id. We grant Petitioner’s
request. We modify our Decision to Institute to institute inter partes review,
pursuant to 35 U.S.C. § 314, as to only claim 17 based on all challenges set
forth in the Petition.
On June 8, 2020, we granted the parties’ joint motion to terminate the
proceeding with respect to Samsung. Paper 20.
In our Scheduling Order, we notified the parties that “any arguments
not raised in the [Patent Owner] response may be deemed waived.” See
Paper 8, 7; see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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48,766 (Aug. 14, 2012) (“The patent owner response . . . should identify all
the involved claims that are believed to be patentable and state the basis for
that belief.”). Patent Owner argues that it “does not concede, and
specifically denies, that there is any legitimacy to any arguments in the
instant Petition that are not specifically addressed” in its Patent Owner
Response. PO Resp. 19 n.9. We decline to speculate as to what Patent
Owner considers is not legitimate in the Petition. Any arguments for
patentability not raised in the Patent Owner Response are deemed waived.
For the reasons that follow, we conclude that Petitioner has proven by
a preponderance of the evidence that claim 17 of the ’079 patent is
unpatentable.
A. Related Matters
Petitioner and Patent Owner indicate that the ’079 patent is the subject
of several court proceedings. Pet. 78–79; PO Resp. 3. The ’079 patent also
is the subject of Board proceeding IPR2020-00038. IPR2020-00038 was
filed by Motorola Mobility LLC and institution was granted. See Motorola
Mobility LLC, v. Uniloc 2017 LLC, IPR2020-00038, Paper 9 (PTAB April
13, 2020).
B. The ’079 Patent
The ’079 patent describes “a method of operating a radio
communication system,” where the radio communication system is “required
to be able to exchange [signaling] messages between a Mobile Station (MS)
and a Base Station (BS).” Ex. 1001, 1:7–8, 1:18–20. The ’079 patent
further describes that an object of the invention “is to improve the efficiency
of the method by which a MS requests resources from a BS.” Id. at 1:56–58.
The ’079 patent describes a secondary station (i.e., MS) transmitting a
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request for resources to a primary station (i.e., BS) in a time slot allocated to
the secondary station, where the secondary station re-transmits the request in
at least a majority of its allocated time slots until an acknowledgment is
received from the primary station. Id. at 1:60–67. Because there is no
possibility of requests from different secondary stations colliding, a
secondary station can re-transmit requests in each allocated time slot. Id. at
2:3–5. Further, the primary station can improve the accuracy with which it
determines whether a request was sent by a particular secondary station if
the received signal strength is close to the detection threshold by examining
the received signals in multiple time slots allocated to the secondary station
in question. Id. at 2:9–14.
An example radio communication system is illustrated in Figure 1,
reproduced below.

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Figure 1 is a block diagram of a radio communication system comprising a
primary station (BS) 100 and a plurality of secondary stations (MS 110). Id.
at 3:10–12. Communication from BS 100 to MS 110 takes place on
downlink channel 122, while communication from MS 110 to BS 100 takes
place on uplink channel 124. Id. at 3:19–21.
C. Challenged Claim
Petitioner challenges independent claim 17 of the ’079 patent. Claim
17 is reproduced below.
17. A method of operating a radio communication
system, comprising:
allocating respective time slots in an uplink channel to a
plurality of respective secondary stations; and
transmitting a respective request for services to establish
required services from at least one of the plurality of respective
secondary stations to a primary station in the respective time
slots;
wherein the at least one of the plurality of respective
secondary stations re-transmits the same respective request in
consecutive allocated time slots without waiting for an
acknowledgement until said acknowledgement is received from
the primary station,
wherein the primary station determines whether a request
for services has been transmitted by the at least one of the
plurality of respective secondary stations by determining
whether a signal strength of the respective transmitted request of
the at least one of the plurality of respective secondary stations
exceeds a threshold value.
Ex. 1001, 8:12–33.
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D. Asserted Grounds of Unpatentability
As modified above, we instituted trial based on all asserted grounds of
unpatentability under 35 U.S.C.2 as follows:
Claim 35 U.S.C. § References
17 103(a) Wolfe3, Bousquet4, Patsiokas5
17 103(a) Wolfe, Bousquet, Everett
6,
Patsiokas
II. ANALYSIS
A. Principles of Law
To prevail in its challenge to Patent Owner’s claim, Petitioner must
demonstrate by a preponderance of the evidence7 that the claim is
unpatentable. 35 U.S.C. § 316(e) (2012); 37 C.F.R. § 42.1(d) (2018). A
patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject

2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’079
patent has an effective filing date before the effective date of the applicable
AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
103.
3 US 4,763,325, issued August 9, 1988 (Ex. 1005, “Wolfe”).
4 US 6,298,052 B1, issued October 2, 2001 (Ex. 1006, “Bousquet”).
5 PCT Application Publication No. WO 1992/21214, published November
26, 1992 (Ex. 1007, “Patsiokas”).
6 VERY SMALL APERTURE TERMINALS (VSATS), Institution of Electrical
Engineers (IEE), Telecommunication Series 28, First Edition (John L.
Everett ed., Peter Peregrinus Ltd. 1st ed. 1992) (“Everett,” filed as Part 1 and
Part 2, both parts identified as Ex. 1008). See also Ex. 1017 ¶¶ 5–7.
7 The burden of showing something by a preponderance of the evidence
requires the trier of fact to believe that the existence of a fact is more
probable than its nonexistence before the trier of fact may find in favor of
the party who carries the burden. Concrete Pipe & Prods. of Cal., Inc. v.
Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993).
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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 between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) when in evidence, objective evidence of
nonobviousness.8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill
In determining the level of ordinary 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). Petitioner relies on the testimony of Dr. Paul Steffes, who
testifies that a person with ordinary skill in the art would have had “a Master
of Science Degree in an academic area emphasizing telecommunications
systems, or an equivalent field (or a similar technical Master’s Degree, or
higher degree) with a concentration in telecommunications systems” or “a
Bachelor’s Degree (or higher degree) in an academic area emphasizing
telecommunications systems with two or more years of work experience in
telecommunications systems.” Pet. 7–8 (citing Ex. 1003 ¶ 31). Patent
Owner does not propose an alternative assessment. See generally PO Resp.

8 Patent Owner does not present any objective evidence of nonobviousness
as to the challenged claim.
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We adopt Dr. Steffes’s assessment of a person with ordinary skill in
the art as it is consistent with the ’079 patent and the asserted prior art. We
further note that the prior art of record in the instant proceeding reflects the
appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261
F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific
findings as to the level of ordinary skill in the art “where the prior art itself
reflects an appropriate level and a need for testimony is not shown”).
C. Claim Construction
In an inter partes review for a petition filed on or after November 13,
2018, “[claims] of a patent . . . shall be construed using the same claim
construction standard that would be used to construe the [claims] in a civil
action under 35 U.S.C. § 282(b), including construing the [claims] in
accordance with the ordinary and customary meaning of such claims as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent.” See Changes to the Claim Construction Standard
for Interpreting Claims in Trial Proceedings Before the Patent Trial and
Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37
C.F.R. § 42.100(b) effective November 13, 2018) (now codified at
37 C.F.R. § 42.100(b) (2019)); see also Phillips v. AWH Corp., 415 F.3d
1303, 1312– 14 (Fed. Cir. 2005).
“acknowledgment”
Claim 17 recites “wherein the at least one of the plurality of respective
secondary stations re-transmits the same respective request in consecutive
allocated time slots without waiting for an acknowledgement until said
acknowledgment is received from the primary station.” Petitioner proposes
that “acknowledgment” should be construed to mean “a message sent from
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the primary station to the secondary station stating the primary station’s
receipt of the secondary station’s request.” Pet. 8–9 (citing Ex. 1003 ¶ 34).
In our Decision to Institute, we adopted Petitioner’s proposed claim
construction for “acknowledgment” to mean “a message sent from the
primary station to the secondary station stating the primary station’s receipt
of the secondary station’s request.” Dec. 6–7. Neither party has indicated
that our interpretation was improper, and we do not perceive any reason or
evidence that now compels any deviation from our initial interpretation.
Accordingly, “acknowledgment” means “a message sent from the primary
station to the secondary station stating the primary station’s receipt of the
secondary station’s request.”
For purposes of this Decision, we need not expressly construe any
other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed
that are in controversy, and only to the extent necessary to resolve the
controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the
context of an inter partes review).
D. Asserted Obviousness of Claim 17 over Wolfe, Bousquet, Everett, and
Patsiokas
Petitioner contends claim 17 is unpatentable under 35 U.S.C. § 103(a)
as obvious over Wolfe, Bousquet, Everett, and Patsiokas. Pet. 16–57, 73–
78. In support of its showing, Petitioner relies upon the declaration of Dr.
Steffes. Id. (citing Ex. 1003).
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1. Wolfe
Wolfe describes a method of frame management in a time division
multiple access (TDMA) communication system in which a fixed time frame
is divided into segments that are assigned to separate stations. Ex. 1005,
4:47–51. Each station is responsible for the management of its own
segment. Id. at 4:51–52. The frame is further provided with an overflow
area. Id. at 4:52–53. Whenever a station overflows the capacity of its own
assigned segment, a request is made to a central station to assign a small slot
in the overflow area to that station. Id. at 4:53–56. The control of the slot
reverts to the central station when its use by the station terminates. Id. at
4:56–57.
An example format of a frame of a TDMA system is illustrated in
Figure 3 reproduced below.

Figure 3 is a timing diagram illustrating a “format for a TDMA frame”. Id.
at 5:16–17. “The frame begins with two reference bursts RBa and RBb,
which are separately assigned to each of two reference stations.” Id. at
5:17–20. “A preallocated segment is subdivided into traffic bursts TB1 –
TBN” where “[e]ach of the traffic bursts are assigned to one of N ground
stations 10.” Id. at 5:35–36. The TDMA frame also includes an overflow
area that is divided into overflow slots, where each of the overflow slots is
assigned to one of traffic bursts TB’1 – TB’M, and where unused slots
represent spare overflow capacity. Id. at 6:1–4.
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2. Bousquet
Bousquet describes a shared resource transmission system that is used
to set up transmission between a calling station and a called station.
Ex. 1006, 1:7–9. The system entails a calling station sending data packets
using a resource shared with other stations, where the data packets are access
packets for setting up a call between a calling station and a called station.
Id. at 1:18–21. “The various stations share the resource without any prior
reservation of time slots and without any temporal synchronization of the
stations.” Id. at 1:22–24. “Because there is no reservation, collisions can
occur between access packets sent by different stations.” Id. at 1:24–26. To
limit call set-up time and the probability of collision of access packets
transmitted by a station, each station requiring to set up a call transmits at
least two access packets without waiting for an acknowledgment between
sending the access packets. Id. at 2:49–54. More specifically, the same
access packet is sent n times (n>1) in a given time period whether an
acknowledgment message is received from the station to which these
packets are sent or not. Id. at 2:54–57. “The systematic repetition of the
access packets in the predefined time period therefore increases the
probability that at least one of the packets will reach the destination station,
which reduces the time necessary to set up a call.” Id. at 3:53–56.
3. Patsiokas
Patsiokas describes a method and apparatus whereby a
communication unit transmits a communication channel request and the
nearest base site makes the communication channel grant. Ex. 1007, 4:11–
14.9 “A base site receives the channel request signal, measures the received

9 Citations are to page numbers located at the bottom of the pages.
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signal strength (RSS or RSSI) level of the received signal, and if that level is
above a first threshold level, a communication channel is granted to the
requesting unit, thus establishing a communication link.” Id. at 4:14–18.
The first threshold level is a predetermined value of decibels above a
maximum sensitivity level of a base site. Id. at 6:34–36. Then, the base site
maintains the communication link as long as the RSSI level does not drop
below a second threshold level that is substantially lower than the first
threshold level. Id. at 4:18–21. The second threshold level is the maximum
sensitivity level of the base site. Id. at 6:30–31.
4. Everett
Everett describes a communication system involving “Very Small
Aperture Terminals (VSATs),” where a VSAT includes any form of small
terminal system. Ex. 1008, 1.10 Typically, a VSAT communication system,
or VSAT system, comprises a hub earth station, with a larger aperture
antenna, controlling a cluster of VSATs, with smaller antennas. Id. at 2–3.
The objective of the VSAT system is to provide an end-to-end
communication link for a user. Id. at 8. An example VSAT system is
illustrated in Figure 1.6 reproduced below.

10 Like the parties do, we cite to the internal page numbers of the pages
rather than the page numbers included at the bottom of each page.
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Figure 1.6 illustrates three forms of a VSAT system. Id. at 11–12.
According to Everett, these three forms include: (a) data distribution
(involving a one-way communication link); (b) data gathering (also
involving a one-way communication link); or (c) interactive (involving a
two-way communication link). Id. at 11. A typical two-way VSAT system
involves a hub in a star configuration transmitting a time division multiplex
(TDM) stream to all VSATs in the network. Id. at 14. A VSAT with a
message for the hub will transmit a short duration burst on a calling channel
requesting access to a channel to transmit its message. Id. The hub
acknowledges the request, assigns a channel and the VSAT changes
frequency and transmits its message. Id. In a busy network, there will be
collisions between some access request bursts and the VSAT may not get an
acknowledgment from the hub. Id. Under these circumstances, the VSAT
re-transmits its burst request after a pseudo randomly determined interval
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and continues doing so until it receives an acknowledgment and is assigned
a channel. Id.
Everett further describes an access channel that provides all the
signaling information from a VSAT to a hub, where the VSAT can, inter
alia, request a channel, and where the VSAT can re-transmit this request
after a pre-determined delay in the event of a collision with another channel
request sent by another VSAT. Id. at 337–38. Everett further describes a
control channel, where the control channel is a signaling channel used by the
hub to respond to VSAT requests on the access channel. Id. at 338. The
control channel has a defined packet structure to allow responses to the
VSAT, including, inter alia, an acknowledge channel used to send back
“clear-to-transmit” messages to the VSAT. Id. at 339.
5. Discussion
Petitioner contends that the “Wolfe-Bousquet-Patsiokas” combination
renders claim 17 obvious for the reasons described in connection with
Petitioner’s “Ground 1,” but to the extent that Wolfe does not render obvious
the proposed construction of “acknowledgment” and re-transmission until an
acknowledgment is received, Petitioner argues that Everett in combination
with Wolfe, Bousquet, and Patsiokas meets those claimed limitations as
proposed in “Ground 2.” Pet. 75. The two challenges are otherwise the
same. Id. at 16–57, 73–78. For purposes of this Decision, we focus our
analysis on Petitioner’s challenge that claim 17 is unpatentable under
35 U.S.C. § 103(a) as obvious over Wolfe, Bousquet, Everett, and Patsiokas
(Ground 2).
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Claim 17 recites a “method of operating a radio communication
system, comprising.”11 Petitioner contends that Wolfe describes a satellite
communication system in which ground stations 10 and reference station 18
communicate over wireless satellite signals. Pet. 40 (citing Ex. 1005, 1:13–
2:9). Petitioner further contends, and we agree, that in Wolfe’s system,
transmissions between the ground stations and the satellite occur at a radio
frequency, and that a person having ordinary skill in the art would have
found a satellite communication system operating at radio frequency to be a
radio communication system. Id. (citing Ex. 1005, 7:23–28; Ex. 1003 ¶ 85).
Petitioner explains, and we agree, that by describing a method of frame
management for a satellite communication system operating at radio
frequency, Wolf describes a “method of operating a radio communication
system.” Id. Patent Owner does not dispute Petitioner’s showing with
respect to Wolfe meeting the preamble of claim 17. See generally PO Resp.
Claim 17 recites “allocating respective time slots in an uplink channel
to a plurality of respective secondary stations.” Petitioner contends, and we
find, that Wolfe describes a plurality of ground stations 10 (respective
secondary stations) where each station is given a portion of a pre-allocated
segment of a divided TDMA frame for uplink to satellite 12 (allocating
respective time slots in an uplink channel). Id. at 41–43 (citing Ex. 1005,
1:13–2:9, 5:6–15, 5:34–46, 8:65–68, Figs. 1, 3; Ex. 1003 ¶¶ 86–87). Patent
Owner does not dispute Petitioner’s showing with respect to Wolfe meeting
this limitation. See generally PO Resp.

11 We need not resolve the issue of whether the preamble is limiting
because, regardless of whether the preamble is limiting, Petitioner shows
that Wolfe meets the preamble.
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Claim 17 recites “transmitting a respective request for services to
establish required services from at least one of the plurality of respective
secondary stations to a primary station in the respective time slots.”
Petitioner contends, and we find, that Wolfe’s ground station 10 (secondary
station) signals to reference station 18 (primary station) that a channel is
required using its preallocated time slot. Id. at 43 (citing Ex. 1005, 5:6–15,
6:10–31.) Petitioner contends, and we agree, that Wolfe’s signal from
ground station 10 to reference station 18 for additional capacity is a
transmitted request for services to establish required services because the
channel is required to complete a telephone call. Id. at 43–44 (citing
Ex. 1005, 6:10–31). Petitioner explains that Wolfe’s ground station 10
forwards the received call request to reference station 18 as a connection
request for allocation of an additional time slot in the overflow section. Id.
Petitioner relies on annotated Wolfe Figure 3 to illustrate Wolfe’s
description of ground station 10 transmitting a respective request for
services to establish required services in the respective time slots, which
results in reference station 18 allocating to a ground station 10 an overflow
slot. Id. at 44–45 (citing Ex. 1005, Abstract, 1:8–11, 2:32–38, 4:47–57, 5:6–
15, 5:52–58, 6:10–50, 8:6–9, 8:55–68, Fig. 3; Ex. 1003 ¶¶ 88–92). We
determine that Petitioner has shown sufficiently how Wolfe meets the
limitation and Patent Owner does not dispute Petitioner’s showing. See
generally PO Resp.
Claim 17 recites “wherein the at least one of the plurality of respective
secondary stations re-transmits the same respective request in consecutive
allocated time slots without waiting for an acknowledgement until said
acknowledgement is received from the primary station.” Petitioner relies on
Everett for its description of acknowledgments and re-transmission until an
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acknowledgment is received. Pet. 75; Reply 9 (“the proposed combination
relies only on Everett’s concept of using acknowledgments and ceasing re-
transmissions”). Petitioner relies on Bousquet in combination with Wolfe to
meet “at least one of the plurality of respective secondary stations re-
transmits the same respective request in consecutive allocated time slots
without waiting for an acknowledgment.” See e.g., Pet. 48–53; Pet. Reply 4.
Petitioner contends, and we agree, that Everett describes a secondary
station (VSAT) that receives an acknowledgment when a primary station
(hub) acknowledges the request, which is separate from the primary station’s
task of assigning a channel. Pet. 75 (citing Ex. 1008, 14, 337–339). We
further agree with Petitioner that a person having ordinary skill in the art
would have appreciated that Everett’s technique offered benefits to
communication systems because Everett describes providing “the hub with
the necessary control over VSAT transmissions and also prevents a VSAT
. . . from repeatedly transmitting in an attempt to establish contact with the
hub.” Id. (citing Ex. 1008, 207; Ex. 1003 ¶ 143). Petitioner contends, and
we agree, that a person having ordinary skill in the art would have been
motivated to implement Everett’s technique of sending acknowledgments in
Wolfe’s satellite system, where bandwidth is limited, to prevent unnecessary
continued re-transmissions and to further safeguard Wolfe’s system. Id. at
76–77 (citing Ex. 1008, 14, 207; Ex. 1005, 2:26–31; Ex. 1003 ¶¶ 145–146).
It is not disputed that Everett describes sending acknowledgments to
cease re-transmissions. PO Resp. 10. Patent Owner argues, however, that
Everett fails to disclose re-transmitting the same respective request “in
consecutive allocated time slots without waiting for an acknowledgment
until said acknowledgment is received from the primary station.” PO
Resp. 10 (emphasis in original), 12; see also Sur-reply 8–9. Petitioner does
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not rely on Everett alone to teach the entire phrase of “re-transmits the same
respective request in consecutive allocated time slots without waiting for an
acknowledgment until said acknowledgment is received from the primary
station.”12 Patent Owner’s argument (PO Resp. 10–11) that in Everett’s
system, re-transmissions are done at randomly selected time intervals, which
fails to meet the claimed “in consecutive allocated time slots” portion of the
disputed phrase overlooks the challenge in its entirety. The Petition does not
rely on Everett to show re-transmissions in consecutive time slots.
Accordingly, we are not persuaded by Patent Owner’s arguments regarding
Everett.
Petitioner relies on Bousquet for its description of re-transmission of
the same request without waiting for an acknowledgment. Pet. 48–49 (citing
Ex. 1006, 2:48–60, 3:53–56; Ex. 1003 ¶ 97). In particular, Bousquet
describes “each station requiring to set up a call should transmit at least two
access packets without waiting for an acknowledgment between sending the
access packets.” Ex. 1006, 2:48–53. According to Bousquet, re-
transmission “is done within a time period less than that required for a round
trip of a packet between the calling station and the called station.” Id. at
2:57–59. Bousquet further describes “systematic repetition of the access
packets in the predefined time period therefore increases the probability that
at least one of these packets will reach the destination station, which reduces
the time necessary to set up a call.” Id. at 3:53–56. Although Bousquet
describes that “[t]he n packets transmitted can be transmitted on the same
carrier frequency and spaced in time, preferably at random,” Bousquet

12 See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.”).
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further describes that packets can be transmitted on different carrier
frequencies “with a temporal distribution.” Id. at 3:57–61.
Petitioner contends a person having ordinary skill in the art would
have understood that Bousquet’s technique of reducing call setup time to be
applicable to Wolfe’s TDMA system. First, Petitioner contends, and we
agree, that both Wolfe and Bousquet describe satellite communication
systems for handling call requests designed to support communications
between a primary station and at least one secondary station. Pet. 25–27, 49
(citing Ex. 1005, 1:13–31; Ex. 1006, code (57), 1:12–21, 2:10–21).
Petitioner further contends, and we agree, that it was known that long time
delays were associated with transmissions in a satellite-based system. Id. at
27–28 (citing Ex. 1005, 3:65–4:14; Ex. 1006, 1:58–64). As explained
above, Bousquet describes that (1) a station requiring to set up a call will
transmit at least two access packets without waiting for an acknowledgment
between sending the access packets, (2) re-transmission is done within a
time period less than that required for a round trip of a packet between a
calling station and a called station, and (3) systematic repetition of the access
packets in the predefined time period increases the probability that at least
one of the packets will reach the destination station, which reduces the time
necessary to set up a call. Ex. 1006, 2:48–53, 2:57–59, 3:53–56.
We agree with Petitioner that because “Bousquet describes that
‘[o]ther implementations are possible’ including transmission of packets
with ‘temporal spacing,’” a person having ordinary skill in the art “would
have found Bousquet’s techniques to be applicable [to] systems where
packet transmission is ‘spaced in time,’ like transmissions of a TDMA
system, such as Wolfe’s.” Pet. 50 (citing Ex. 1005, 1:1–15; Ex. 1006, 2:25–
28, 3:57–64; Ex. 1003 ¶ 99). We give substantial weight to Dr. Steffes’s
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testimony that a person having ordinary skill in the art “would have found it
obvious to apply Bousquet’s approach to reduce call setup time even though
Bousquet applies a contention-based approach to uplink signaling as
compared to Wolfe’s contention-free system,” because his testimony is
supported by Bousquet itself. Ex. 1003 ¶ 99 (citing Ex. 1006, 3:57–64,
where Bousquet describes that packets can be transmitted on different carrier
frequencies “with a temporal distribution” (emphasis added)). Based on the
record before us, we determine that a person having ordinary skill in the art
at the time of the invention would have understood that Bousquet’s
technique of systematic repetition of transmitting a request from a secondary
station to a primary station without waiting for an acknowledgment, thereby
increasing the probability that at least one of the requests will reach the
primary station, which reduces the time necessary to set up a call, would
equally be applicable to Wolfe’s system. Ex. 1003 ¶ 99; Ex. 1006, 2:48–53,
3:53–56.
Petitioner contends that it would have been obvious that in Wolfe’s
modified system (with the teachings of Bousquet applied to Wolfe), re-
transmission would have occurred in consecutive time slots (multiple slotted
requests). Pet. 30 (citing Ex. 1003 ¶ 66), 50. In that regard, Dr. Steffes
testifies as follows:
Specifically, a POSITA13 would have found it obvious to modify
Wolfe’s system to send multiple slotted requests within the
timeframe for a roundtrip communication. A POSITA would
have known that the typical round-trip delay for a satellite system
at the relevant time was approximately 550 milliseconds (ms).
EX1008, 317; EX1006, 4:6-11 (“a round trip between the
stations that are to enter into communication, i.e. approximately
0.6 seconds for a geostationary orbit satellite.”); EX1005, 3:68-

13 Person of Ordinary Skill in the Art (“POSITA”).
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4:4 (“propagation of the request to the reference station 18 and
of the reply to the requesting station 10…approaching 1
second”). Also, in Wolfe, “frames repeat often enough that a
telephone conversation can be made to appear continuous and
instantaneous.” EX1005, 1:45-47. It was well-known before the
Critical Date that a frame repeating rate of one frame per every
150 millisecond, or less, was acceptable for voice signals under
ITU recommendations. EX1011, 5 (ITU Standards).
Accordingly, frames in Wolfe’s system repeat more quickly
(every 150 ms) than the round-trip communication delay needed
to receive acknowledgment of a request (550 ms). For example,
based on a rate of one frame per every 150 ms and a round-trip
delay of 550 seconds,14 a POSITA would have recognized that at
least three packets may be sent within the typical satellite round-
trip time frame. Because time slots in Wolfe are allocated at time
intervals shorter than the round-trip delay, implementing
Bousquet’s re-transmission technique by transmitting multiple
requests in consecutive allocated time slots would have increased
the probability that at least one request is received and reduced
the time for call set-up.
Ex. 1003 ¶ 66.
Dr. Steffes explains, with supporting evidence, how and why a person
having ordinary skill in the art would have combined Bousquet with Wolfe,
resulting in re-transmitting the same respective request in consecutive
allocated time slots without waiting for an acknowledgment. Id. For
example, Dr. Steffes contends that in order to modify Wolfe’s system to
send multiple requests within the timeframe for a roundtrip communication
(e.g., to apply the teachings of Bousquet), a person having ordinary skill in
the art would have known (1) the typical round-trip delay for a satellite
system at the relevant time was approximately 550 milliseconds (ms) (Ex.
1006, 4:6–11); (2) that Wolfe’s frames in Wolfe’s system repeat more

14 We understand “550 seconds” should be “550 milliseconds.”
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quickly (every 150 ms) than the round-trip communication delay needed to
receive acknowledgment of a request (550 ms) (Ex. 1011, 5 (ITU
Standards); Ex. 1005, 1:45–47); and (3) based on a rate of one frame per
every 150 ms and a round-trip delay of 550 milliseconds at least three
packets may be sent within the typical satellite round-trip time frame,
increasing the probability that at least one request is received and reducing
the time for call set-up. Ex. 1003 ¶ 66.
We give substantial weight to Dr. Steffes’s testimony that a person
having ordinary skill in the art would have found it obvious to modify
Wolfe’s system to send multiple slotted requests within the timeframe for a
roundtrip communication, to increase the probability that at least one request
is received, while reducing the time for call set-up, as taught by Bousquet
which teaches packets transmitted on different carrier frequencies, with a
temporal distribution. Id.; see also Ex. 1003 ¶ 69 (“a POSITA would have
modified Wolfe to re-transmit requests in consecutive frames until a point in
time when an acknowledgment of the first request would have been
expected”).15
Patent Owner argues that Petitioner fails to show why a person having
ordinary skill in the art would have combined the references “in a manner to
re-transmit in even two ‘consecutive allocated time slots.’” PO Resp. 12–
13; Sur-reply 2. Patent Owner does not address Petitioner’s contentions,

15 We disagree with Patent Owner that Dr. Steffes’s testimony is conclusory
and entitled to no weight and provides “only a hindsight reconstruction of
the claim limitations, rather than an analysis based on a POSITA’s
understanding of the references as a whole.” Sur-reply 7. Dr. Steffes’s
testimony is well reasoned, is not based on hindsight reconstruction, and
provides a basis for us to conclude that the particular facts to which he
attests are more likely than not.

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supported by Dr. Steffes, to which we give substantial weight. For example,
Patent Owner does not address Dr. Steffes’s testimony that a person having
ordinary skill in the art applying Bousquet to Wolfe, would have known to
transmit three packets (one packet per frame in the allocated time slot
assigned to the secondary station)16 within the typical satellite round-trip
time frame. Ex. 1003 ¶ 66. Dr. Steffes’s testimony stands unrebutted. He
was not cross-examined and Patent Owner did not file any rebuttal testimony
to show that Dr. Steffes is incorrect about how and why a person having
ordinary skill in the art would have integrated Bousquet’s teachings into
Wolfe’s system. Accordingly, we disagree that the combined teachings of
Wolfe and Bousquet fail to meet the “re-transmits the same respective
request in consecutive time slots without waiting for an acknowledgment.”
Similarly, Patent Owner’s arguments attacking each of the Wolfe,
Bousquet, and Everett references individually is unavailing because such
arguments overlook the proposed challenge, which is based on the combined
teachings of the references. For instance, Patent Owner argues that none of
Wolfe, Everett, or Bousquet describes “wherein the at least one of the
plurality of respective secondary stations re-transmits the same respective
request in consecutive allocated time slots without waiting for an
acknowledgement until said acknowledgement is received from the primary
station.” PO Resp. 7–11. Patent Owner’s arguments attacking each
reference individually are unpersuasive, because the challenge is based on
the combined teachings of Wolfe, Everett, and Bousquet as set forth in the
Petition. For instance, Patent Owner argues that “because Bousquet limits

16 We note that the ’079 patent does not use the term “consecutive,” but
references repeating a request (i.e., a packet) at a rate of once per frame or
less. Ex. 1001, 4:8–12.
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its ‘repetition’ to ‘in the predefined time period,’ Bousquet cannot and does
not disclose” the claimed re-transmission of “the same respective request ‘in
consecutive allocated time slots without waiting for an acknowledgement
until said acknowledgement is received from the primary station.’” Id.
at 9 (emphasis in original); Sur-reply 5. Patent Owner’s argument is not
responsive to Petitioner’s showing, which also relies on Everett for its
description of acknowledgments and re-transmission until an
acknowledgment is received. Pet. 75; Reply 9 (“the proposed combination
relies only on Everett’s concept of using acknowledgments and ceasing re-
transmissions”). Thus, we are not persuaded by Patent Owner’s piecemeal
approach, attacking each reference alone. See Keller, 642 F.2d at 426.
Patent Owner further argues that because Bousquet discloses the
systematic repetition of the access packets in a predefined time period,
Bousquet teaches away from re-transmitting in consecutive time slots as
claimed. PO Resp. 8–9; Sur-reply 3–4. Patent Owner fails to explain why
Bousquet’s description of systematic repetition of access packets in a
predefined time period even matters insofar as the claim language is
concerned. We agree with Petitioner that there is nothing in claim 17, for
example, that precludes re-transmissions in a predefined time period, and
Patent Owner has not shown with supporting evidence, for example,
otherwise. Pet. Reply. 22. Accordingly, we disagree that Bousquet teaches
away from the claimed invention.
Patent Owner argues that Petitioner fails to reconcile Everett’s
allegation of acknowledgment processing with Bousquet, which teaches re-
transmission of requests independent of whether an acknowledgment is
received or not. Sur-reply 10. We disagree. Petitioner explains that to limit
unnecessary consumption of bandwidth, it would have been obvious to a
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person having ordinary skill in the art that further re-transmissions would
have been avoided upon receipt of acknowledgment of an earlier request.
Pet. 31–32 (citing Ex. 1003 ¶ 69), 76–77 (citing Ex. 1008, 10; Ex. 1003
¶ 145). Petitioner contends, and we agree, that a person having ordinary
skill in the art would have been motivated to implement Everett’s technique
of sending acknowledgments in the combined Wolfe-Bousquet satellite
system, where bandwidth is limited, to prevent unnecessary continued re-
transmissions and to further safeguard the system. Id. at 76–77 (citing
Ex. 1008, 14, 207; Ex. 1005, 2:26–31; Ex. 1003 ¶¶ 145–146). It would have
been obvious to a person having ordinary skill in the art that once the
uninterrupted consecutive requests are received from the primary station
(taught by the Wolfe-Bousquet satellite system), the primary station sends to
the secondary station an acknowledgment of receipt, as taught by Everett to
prevent unnecessary continued re-transmissions and to safeguard the system
as explained by Dr. Steffes. Ex. 1003 ¶¶ 145–146. Again, we give Dr.
Steffes’s unrebutted and factually supported testimony substantial weight.
Patent Owner did not file testimony of its own to rebut Dr. Steffes’s
testimony to show, for example, that he is incorrect about how and why a
person having ordinary skill in the art would have integrated Everett’s
teachings into the Wolfe-Bousquet system.
Claim 17 recites “wherein the primary station determines whether a
request for services has been transmitted by the at least one of the plurality
of respective secondary stations by determining whether a signal strength of
the respective transmitted request of the at least one of the plurality of
respective secondary stations exceeds a threshold value.” Petitioner explains
that in Patsiokas, the primary station uses a predetermined threshold
measurement to ascertain the received signal strength (“RSS”) level of the
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received signal and compares the RSS level to a threshold level before the
primary station allocates a communication channel in response to the
request. Pet. 53 (citing Ex. 1007, 2:11–21). Petitioner contends, and we
agree, that Patsiokas’s description of “the base site detects channel request
signals having an RSSI level at or above a first threshold” before granting a
communication link in combination with the Wolfe-Bousquet-Everett
system, meets the above identified limitation. Id. at 53–55 (citing Ex. 1007,
2:11–21, 4:27–5:3, Fig. 3; Ex. 1003 ¶ 110). While Patent Owner argues that
it would not have been obvious to combine Patsiokas with the Wolfe-
Bousquet-Everett system, Patent Owner does not contest that the
combination of the references meets the last wherein limitation. See
generally PO Resp.
Petitioner sets forth reasoning with rational underpinnings as to why a
person having ordinary skill in the art would have combined the teachings of
Wolfe, Bousquet, Everett, and Patsiokas. Pet. 37–40, 55–57, 74–78 (citing
multiple passages from Ex. 1005, Ex. 1007, and Ex. 1003). Petitioner
explains that like Wolfe’s system, Patsiokas’s system employs a channel
acquisition method and includes a primary station with an ability to
independently detect a request for a service as well as allocate a channel to a
plurality of secondary stations, and that it would have been obvious for a
person having ordinary skill in the art to look at other communication
systems having similar functions. Id. at 55 (citing Ex. 1007, 1:36–2:1,
Fig. 3; Ex. 1005, 5:20–21; Ex. 1003 ¶ 111). Notwithstanding Patent
Owner’s arguments that Patsiokas is not relevant to the claimed invention,
which we address next, we are persuaded that Petitioner has shown, by a
preponderance of the evidence that Patsiokas is relevant to the claimed
invention.
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Patent Owner argues that “[a] POSITA would not have made any of
the hypothetical combinations proposed by the Petition involving Patsiokas
because, unlike Wolfe, Bousquet, and Everett, which are satellite systems,
Patsiokas relates to ‘second generation cordless telephone (CT2)’ radio
telephones.” PO Resp. 13–14 (citing Ex. 1007, 1:15–2:8). We are not
persuaded by this argument. Patent Owner directs us to no evidence in
support of its assertions as to what a person having ordinary skill in the art
would have known at the time of the invention. See Estee Lauder Inc. v.
L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (argument of counsel
cannot take the place of evidence lacking in the record). Here for example,
we do not have before us a declarant on behalf of Patent Owner to inform us
what a person having ordinary skill in the art would have known at the time
of the invention or that such person would not have considered Patsiokas
relevant to the claimed invention. We cannot take the unsworn word of an
attorney, who, on this record has not been shown to be a person having
ordinary skill in the art. On the other hand, Petitioner has provided a
declarant, whom we find is qualified to testify on the matters before us. See,
e.g., Ex. 1003 ¶¶ 1–17. Dr. Steffes testifies as follows:
[L]ike Wolfe’s system, Patsiokas’[s] system employs a channel
acquisition method and includes a primary station with an ability
to independently detect a request for a service as well as allocate
a channel to a plurality of secondary stations. EX1007, 1:36-
1:33-2:1 (“each base site is monitoring the channels of the CT2
system independently”), FIG. 3; EX1005, 5:20-21 (“[t]wo
independent reference stations”). It would have been obvious to
a POSITA to look at other communication systems having
similar functions.
Id. ¶ 111. Dr. Steffes testifies that like Wolfe’s system, Patsiokas’s system
employs a channel acquisition method and includes a primary station with
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an ability to independently detect a request for a service as well as allocate a
channel to a plurality of secondary stations. Id. We give his testimony
substantial weight that a person having ordinary skill in the art would have
looked to communication systems with similar functions. Id. Patent
Owner’s attorney argument that a person having ordinary skill in the art
would not have looked to radio telephone systems such as Patsiokas’s fails
to take into account the evidence of record. Moreover, claim 17 broadly
recites “[a] method of operating a radio communication system.” Ex. 1001,
8:11. We find both satellite systems such as Wolfe’s and terrestrial systems
such as Patsiokas’s to fit within the broad category of a “radio
communication system.” Ex. 1005, 7:23–28 (“RF transmission frequency”);
Ex. 1003 ¶ 85 (explaining that a POSITA would have found a satellite
communication system operating at radio frequency to be a radio
communication system); Ex. 1007, 1:15–16 (invention relates to “radio
telephone communication systems”). For all of these reasons, we are
persuaded that Petitioner has shown, by a preponderance of the evidence,
that Patsiokas is relevant to the claimed invention.
Petitioner argues, and we agree, that “a POSITA would have been
motivated to implement Patsiokas’[s] signal threshold method in the Wolfe-
Bousquet communication system because this allows the primary station to
allocate a channel to secondary stations that are unlikely to drop calls.”
Pet. 38 (citing Ex. 1007, 4:34–36). Petitioner explains that by measuring
signal-strength related parameters of incoming requests, the primary station
assesses whether the communication channel allocated to calls would have a
signal strength sufficient for successfully connecting the calls, taking into
account weather conditions and signal interference. Id. (citing Ex. 1007,
4:34–36; Ex. 1008, 303–304, 424–428; Ex. 1009, 1; Ex. 1010, 2:20–27;
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Ex. 1003 ¶ 82). Petitioner further argues, and we agree, that a “POSITA
also would have been motivated to implement Patsiokas’[s] signal threshold
method in the Wolfe-Bousquet communication system because the primary
station’s maximum sensitivity level is applicable and relevant to establishing
and maintaining a reliable call connection in a satellite system, such as
Wolfe’s system.” Id. at 55–56 (citing Ex. 1003 ¶ 112). Notwithstanding
Patent Owner’s arguments, addressed below, we are persuaded that
Petitioner has shown, by a preponderance of the evidence, that a person
having ordinary skill in the art would have been motivated to implement
Patsiokas’s signal threshold method in the Wolfe-Bousquet-Everett
communication system.
Patent Owner argues, “Patsiokas addresses a shortcoming in cordless
radio telephone systems that is not identified or present in the satellite
systems of Wolfe, Bousquet, and Everett, and therefore, a POSITA would
not have been motivated to make the proposed combinations with
Patsiokas.” PO Resp. 14. In particular, Patent Owner argues that the
shortcoming identified in Patsiokas is that when a user moves out of range of
a base station, a communications link will be dropped. Id. at 16 (citing
Ex. 1007, 3:12–25). Patent Owner argues that that problem does not exist in
any of the Wolfe, Bousquet, or Everett, because satellite systems do not
suffer from range issues, and, therefore “a POSITA would not have been
motivated to make the hypothetical combinations involving Patsiokas, at
least because there is no concern of a user walking out of range of the base
station in satellite systems.” Id. at 16–18.
As explained in the Petition, in both radio telephone systems such as
Patsiokas’s and satellite systems such as Wolfe’s, the problem of a
communication link deteriorating and/or failing was known. Pet. 39, 56–57.
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Patsiokas describes that a “base site that grants the channel request is not
necessarily the one closest to the radio telephone unit transmitting the
channel request signal” and that the “user may move out of range of the base
site, thus causing the communication link to be dropped.” Ex. 1007, 1:35–
2:3. Satellite systems like Wolfe’s also suffered from signal deterioration or
failing (e.g., dropped calls) due to weather and interference issues.
Ex. 1008, 303–304 (“losses of data caused by atmospheric attenuation”),
424–428 (“signal strength . . . reduced by . . . water vapor”); Ex. 1009, 1
(“disadvantages of the satellite system are . . . the effect of local weather
conditions and interferences”): Ex. 1010, 2:20–27 (“rain fade is a serious
problem”).
Patent Owner does not dispute that signal deterioration or failure was
a problem in both satellite and telephone (terrestrial) systems. Rather than
focus on the known problem of a communication link deteriorating and/or
failing, Patent Owner narrowly focuses on the reason why, in Patsiokas, the
communication link deteriorates or fails. Whether a signal is deteriorating
and/or failing because a user is nearly out of range of a base station versus
whether a signal is deteriorating and/or failing because of interference or
weather related issues has not been demonstrated to be of concern to a
person having ordinary skill in the art at the time of the invention.
Dr. Steffes’s testimony focuses on the problem in both satellite and
telephone (terrestrial) systems of a communication link deteriorating and/or
failing (dropped calls). We give substantial weight to Dr. Steffes’s
testimony that “a POSITA would have been motivated to implement
Patsiokas’s signal threshold method in the Wolfe-Bousquet communication
system because this allows the primary station to allocate a channel to
secondary stations that are unlikely to drop calls.” Ex. 1003 ¶ 82. We
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further give Dr. Steffes’s testimony substantial weight that the “teachings in
Patsiokas would have therefore been applicable to the Wolfe system,
because the initial connection is indicative of the likelihood of dropped calls
in a channel connection over the call time duration.” Id.
Patent Owner’s attorney argument that “a POSITA would not have
been motivated to make the proposed combinations” is not supported by
record evidence. PO Resp. 14. Again, Patent Owner could have presented a
declaration from an expert who could have opined as to what a person
having ordinary skill in the art would have known at the time of the
invention. Here, however, Patent Owner’s attorney is the one arguing to us
what a person having ordinary skill in the art would or would not have done,
without evidence that Patent Owner’s attorney is a person having ordinary
skill in the art. Accordingly, we are not persuaded by Patent Owner’s
attorney arguments. For all of these reasons, we are persuaded that
Petitioner has shown, by a preponderance of the evidence, that a person
having ordinary skill in the art would have combined the teachings of Wolfe,
Bousquet, Everett, and Patsiokas. Id. at 37–40, 55–57, 74–78 (citing
multiple passages from Ex. 1005, Ex. 1007, and Ex. 1003).
Accordingly, for the reasons given above, having considered
Petitioner’s and Patent Owner’s arguments and evidence, we determine that
Petitioner has shown by a preponderance of the evidence that claim 1 of the
’079 patent would have been obvious over Wolfe, Bousquet, Patsiokas, and
Everett.
C. Remaining Ground Challenging Claim 17 of the ’079 Patent
For the reasons discussed above, Petitioner has shown, by a
preponderance of the evidence, that claim 17 of the ’079 patent is
unpatentable as obvious over Wolfe, Bousquet, Patsiokas, and Everett. In
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addressing this ground, we have addressed the challenged claim. See 35
U.S.C. § 318(a) (requiring the Board to “issue a final written decision with
respect to the patentability of any patent claim challenged by the petitioner
and any new claim added under section 316(d)”); see also SAS Inst. Inc. v.
Iancu, 138 S. Ct. 1348, 1359 (2108) (holding that a petitioner “is entitled to
a final written decision addressing all of the claims it has
challenged”). Accordingly, we need not and do not decide whether
Petitioner has shown by a preponderance of the evidence that claim 17 also
would have been obvious based on Wolfe, Bousquet, and Patsiokas. Cf. In
re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other grounds
of unpatentability after affirming the anticipation ground); see also Beloit
Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (holding that once
a dispositive issue is decided, there is no need to decide other issues).
III. CONCLUSION17
For the foregoing reasons, we determine that Petitioner has shown by
a preponderance of the evidence that claim 17 of the ’079 patent is
unpatentable, as summarized in the following table:

17 Should Patent Owner wish to pursue amendment of the challenged claim
in a 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.
16654 (Apr. 22, 2019). If Patent Owner chooses to file 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).
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Claim 35 U.S.C. § References Claim Shown Unpatentable
Claim Not
Shown
Unpatentable

17 103(a)
Wolfe,
Bousquet,
Patsiokas,
Everett

17

17 103(a)
18
Wolfe,
Bousquet,
Patsiokas

Overall
Outcome
17

IV. ORDER
Accordingly, it is:
ORDERED that claim 17 of the ’079 patent has been shown to be
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

18 As explained immediately above, we need not and do not decide whether
Petitioner has shown by a preponderance of the evidence that claim 17 also
would have been obvious based on Wolfe, Bousquet, and Patsiokas.
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For PETITIONER:

Walter Renner
Jeremy Monaldo
Roberto DeVoto
Grace Kim
FISH & RICHARDSON P.C.
axf-ptab@fr.com
jjm@fr.com
devoto@fr.com
gkim@fr.com

For PATENT OWNER:

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