Uniloc 2017 LLC

Patent Trials and Appeals Board

Nov 4, 2020

IPR2019-00965 (P.T.A.B. Nov. 4, 2020)

Trials@uspto.gov Paper 21
Tel: 571-272-7822 Entered: November 4, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CISCO SYSTEMS, INC.,
Petitioner,
v.
UNILOC 2017 LLC,
Patent Owner.
____________

IPR2019-00965
Patent 6,664,891 B2
____________

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

DIRBA, Administrative Patent Judge.

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

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I. INTRODUCTION
Cisco Systems, Inc. (“Petitioner”) filed a Petition seeking institution
of inter partes review of claims 14 and 16 of U.S. Patent No. 6,664,891 B2
(Ex. 1001, “the ’891 patent”). Paper 1 (“Pet.”). Uniloc 2017 LLC (“Patent
Owner”) filed a Patent Owner Preliminary Response. Paper 6. After
reviewing these papers, we determined that Petitioner had demonstrated a
reasonable likelihood of success in proving that claims 14 and 16 of the ’891
patent are unpatentable, and we instituted an inter partes review of all
challenged claims on all grounds set forth in the Petition. Paper 7
(“Institution Decision” or “Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 9, “PO
Resp.”), Petitioner filed a Reply (Paper 11, “Pet. Reply”), and Patent Owner
filed a Sur-Reply (Paper 12, “PO Sur-Reply”). An oral hearing in this
proceeding was held on August 26, 2020, and a transcript of the hearing is
included in the record (Paper 20, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, Petitioner has shown by a preponderance
of the evidence that claims 14 and 16 of the ’891 patent are unpatentable
under 35 U.S.C. § 103(a).
A. Related Matters
The parties identify several civil actions involving the ’891 patent that
are or were pending in district court, including Uniloc 2017 LLC v.
Microsoft Corporation, No. 8:18-cv-02224 (C.D. Cal.), Uniloc 2017 LLC v.
Cisco Systems, Inc., No. 2:18-cv-00505 (E.D. Tex.), and Uniloc 2017 LLC v.
Cisco Systems, Inc., No. 2:18-cv-00415 (E.D. Tex.). Pet. 7–8; PO Resp. 6.
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The ’891 patent is also the subject of a petition for inter partes review
filed by Microsoft Corporation in IPR2019-01188 (“the 1188 IPR”), which
was instituted by the Board. PO Resp. 6; Microsoft Corp. v. Uniloc 2017
LLC, IPR2019-01188, Paper 9 (PTAB Dec. 9, 2019) (Institution Decision).
A final written decision in the 1188 IPR is being issued concurrently with
this Decision.
In addition, the ’891 patent was previously the subject of two petitions
for inter partes review filed by Samsung Electronics America, Inc.
(“Samsung”). IPR2020-00227, Paper 1; IPR2020-00340, Paper 1.
Samsung’s petitions were substantively identical to the petitions filed in this
proceeding and in the 1188 IPR, and the Board instituted those reviews and
joined Samsung to this proceeding and to the 1188 IPR. Paper 10 (Samsung
Joinder Order); 1188 IPR, Paper 15 (PTAB May 27, 2020) (Samsung
Joinder Order). Later, Samsung and Patent Owner filed joint motions to
terminate Samsung from the proceedings, which were granted, terminating
Samsung from this proceeding and the 1188 IPR and terminating Samsung’s
proceedings (IPR2020-00227 and IPR2020-00340). Paper 17 (Samsung
Termination Order); 1188 IPR, Paper 20 (PTAB July 8, 2020) (Samsung
Termination Order).
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B. The Petition’s Asserted Grounds
Petitioner asserts the following grounds of unpatentability (Pet. 18):
Claim(s) Challenged 35 U.S.C. § References/Basis
14, 16 103(a)1 Hild,2 Bluetooth3
16 103(a) Hild, Bluetooth, Moy4
Petitioner submits the testimony of Mr. James T. Geier to support its
contentions. Ex. 1003.
C. Summary of the ’891 Patent
The ’891 patent is titled “Data Delivery Through Portable Devices.”
Ex. 1001, code (54). The background of the Specification describes
“‘Context-Aware’ (CA) mobile telephones” that “provide location-specific
information” or services. Id. at 1:17–20. For example, a CA device may
allow for an “electronic business card exchange” or facilitate connections of
people with “complementary business interests” by exchanging data with
other nearby CA devices. Id. at 1:66–2:3. The ’891 patent, predicting that
Bluetooth would become a common technology, explains that mobile

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 285–88 (2011), revised 35 U.S.C. §§ 102 and 103, effective March
16, 2013. Because the application for the challenged patent was filed before
March 16, 2013, we refer to the pre-AIA versions of §§ 102 and 103.
2 U.S. Patent No. 6,532,368 B1 to Hild et al., filed on January 19, 2000,
issued March 11, 2003 (Ex. 1005).
3 “Specification of the Bluetooth System,” Volume 1, Bluetooth, v1.0B,
dated December 1, 1999 (Ex. 1006).
4 J. Moy, “OSPF Version 2,” Request for Comments 2328, dated April 1998
(Ex. 1007).
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devices could exchange such data after establishing “a two-way Bluetooth
connection” via the full handshaking process, but also explains this would
have various disadvantages, including the time required to establish the
connection and the limited number of devices able to participate. Id. at 2:6–
33.
The ’891 patent instead proposes adding to each “inquiry message” an
additional data field that carries information, thereby allowing data to be
broadcast among devices “without requiring either the sending or receiving
user device to join a piconet.” Ex. 1001, 2:47–64; see id. at 4:56–63
(explaining this “solves the limitations” of establishing a full Bluetooth
connection). The preferred embodiment describes the invention in the
context of the Bluetooth protocol. Id. at 3:4–6, 4:46–51. But see id. at 4:51–
55 (“[T]he general invention . . . is not restricted to Bluetooth devices, and is
applicable to other communications arrangements, in particular frequency
hopping systems.”). The Specification explains that a Bluetooth device
issues a series of inquiry messages when it “wants to discover other
Bluetooth devices” with which it may join a piconet. Id. at 9:4–11; see id.
at 9:6–57 (describing Bluetooth inquiry procedure). According to the
’891 patent, “the applicants have recognized that it is possible to piggy-back
a broadcast channel on the inquiry messages” in a way that is compatible
with conventional Bluetooth systems because only “CA terminals need read
the broadcast channel messages.” Id. at 8:62–9:3.
The application for the ’891 patent was filed on June 11, 2001,
claiming the benefit of foreign applications filed on August 15, 2000, and
June 26, 2000. Ex. 1001, codes (22), (30).
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D. Challenged Claims
The Petition challenges claims 14 and 16 of the ’891 patent. Of these,
claim 14 is independent, and claim 16 depends from claim 14. These claims
are reproduced below:
14. A method for enabling the user of a first portable
communications device to broadcast messages to the users of
other portable communications devices,
wherein said first portable communications device
broadcasts a series of inquiry messages each in the form of a
plurality of predetermined data fields arranged according to a
first communications protocol, and
wherein said first portable communications device adds
to each inquiry message prior to transmission an additional data
field carrying broadcast message data,
such that suitably configured other portable devices may
receive the transmitted inquiry messages and read the broadcast
data from said additional data field.
Ex. 1001, 13:15–26 (carriage returns added).
16. A method as claimed in claim 14, wherein the first
portable communications device includes an indication in one
of said predetermined data fields, said indication denoting the
presence of said additional data field.
Id. at 13:30–33.
II. ANALYSIS
A. Principles of Law
In an inter partes review, the petitioner has the burden of proving
unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
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A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are “such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The legal question of obviousness is resolved on the basis of
underlying factual determinations including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
objective evidence of obviousness or nonobviousness.5 Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). One seeking to
establish obviousness based on more than one reference also must articulate
sufficient reasoning with rational underpinnings to combine teachings. See
KSR, 550 U.S. at 418.
B. The Level of Ordinary Skill in the Art
Petitioner asserts that the level of ordinary skill in the art corresponds
to “a bachelor’s degree in computer science, computer engineering, or an
equivalent, and three years of professional experience relating to wireless
communications,” but “[l]ack of professional experience can be remedied by
additional education, and vice versa.” Pet. 11–12 (citing Ex. 1003 ¶¶ 18–
20). Patent Owner “does not offer a competing definition” of a person of
ordinary skill in the art. PO Resp. 7.

5 The record does not include allegations or evidence of objective indicia of
obviousness or nonobviousness.
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Petitioner’s proposal (unopposed by Patent Owner) is supported by
the testimony of Mr. Geier and is consistent with the ’891 patent
specification and the asserted prior art. See Ruiz v. A.B. Chance Co., 234
F.3d 654, 666-667 (Fed. Cir. 2000) (identifying factors); see also Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (The “level of skill in the
art is a prism or lens through which a judge, jury, or the Board views the
prior art and the claimed invention.”). Accordingly, we adopt the level of
ordinary skill as articulated by Petitioner. Accord Inst. Dec. 7–8 (adopting
same position).6
C. Claim Construction
Because the Petition was filed after November 13, 2018, we interpret
claim terms using the same claim construction standard as is used in federal
district court. Changes to the Claim Construction Standard for Interpreting
Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).
The Petition proposes constructions for four claim terms: “inquiry
messages,” “portable communications device,” “communications protocol,”
and “additional data field.” Pet. 12–17. In the Institution Decision, we
analyzed the meaning of the claim term “additional data field” and construed
it to be “a data field that is not in the first communications protocol.” Inst.

6 In the 1188 IPR, we adopt a slightly different definition of a person of
ordinary skill in the art. Both definitions are substantially the same for
purposes of these proceedings. In particular, our analysis and conclusions in
this Decision would be the same regardless of which definition is adopted.
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Dec. 8–11. We determined that the other terms required no construction. Id.
at 11–12.
Patent Owner disagrees with the Board’s construction of the claim
term “additional data field” (PO Resp. 9–12), and Petitioner responds that
the Board’s construction was correct (Pet. Reply 5–9). But, at the oral
hearing, both parties agreed that no issue in this case turns on the
construction of the claim term “additional data field.” Tr. 11:24–12:13,
55:22–56:8; see also Pet. Reply 9 (“[Patent Owner] does not argue that its
proposed construction would distinguish the prior art—nor could it.”). The
parties also agree that the other three terms need not be construed in this
proceeding. PO Resp. 13–14; see Pet. 12.
Having considered the full record, we conclude that we need not
construe any claim terms to resolve the controversy before us. 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 particular, the parties’ disagreement
regarding the scope of the claim term “additional data field” has no impact
on our final determination in this proceeding.7

7 The final written decision of the 1188 IPR construes the term “additional
data field” as “a data field that is not part of the inquiry message specified by
the first communications protocol,” which is consistent with the construction
adopted in the Institution Decision in this proceeding. See Inst. Dec. 11.
Adoption of that construction in this Decision would have no impact on our
findings, analysis, or conclusion here.
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D. Obviousness of Claims 14 and 16 over Hild and Bluetooth
1. Overview of Hild (Ex. 1005)8
Hild is titled “Service Advertisements in Wireless Local Networks.”
Ex. 1005, code (54). Hild’s invention “allows devices within [a] wireless
local area network to announce their services and/or discover services
provided by other devices.” Id. at 1:10–12.
Hild notes the growing importance and prevalence of “wireless ad-hoc
connections” that allow mobile devices to form a “local network” without
requiring fixed physical connections. Ex. 1005, 1:35–53. Hild identifies
and summarizes several network technologies (see generally id. at 1:54–
4:22), but identifies “Bluetooth radio technology” as a “prominent
example[]” of a technique for forming “an ad-hoc wireless communication
between mobile devices” (id. at 4:23–27). Hild provides a summary of
Bluetooth technology (id. at 2:57–3:35) and incorporates by reference a
paper describing “the Bluetooth communications scheme” (id. at 8:25–32;
see Ex. 1021 (referenced paper)), which Hild characterizes as “[w]ell suited”
when describing suitable network topologies and technologies for
implementation of its invention (Ex. 1005, 8:9–25). But see id. at 16:39–42
(“The present scheme is independent of any particular [wireless
communication] protocol and can be used in connection with [many] such
protocols.”).

8 Petitioner has shown by a preponderance of the evidence that Hild
qualifies as prior art under 35 U.S.C. § 102(e). See Pet. 19. Hild was
granted on an application filed January 19, 2000 (Ex. 1005, code (22)),
which is prior to the earliest potential priority date on the face of the ’891
patent, i.e., June 26, 2000 (Ex. 1001, code (30)). Patent Owner does not
dispute Hild’s status as prior art.
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Against this backdrop, Hild describes “a scheme for a device in an
ad-hoc wireless local network to announce its services to another device in
the local network” and “to discover services provided by other devices in the
local network.” Ex. 1005, 4:49–54. According to Hild’s scheme, each
device stores information regarding its services as well as the services
available from other devices in the local network, which it refers to
collectively as “service information.” Id. at 4:63–65, 14:18–23; see id.
at 8:34–41, 8:65–9:2 (maintaining list of services known to device). This
information may include an expiry time for each service, after which time a
service is presumed to be no longer available. Id. at 8:41–47, 13:64–14:7.
Each device broadcasts service information if the device has not received
information regarding its own services during a time period selected by that
device. Id. at 4:62–5:12.
Hild does not describe many implementation details, as its “invention
relates to the service announcements and is thus independent of” such
details. Ex. 1005, 16:34–37. Hild does state that service information may
be broadcast “in the form of a packet or frame 33” (id. at 12:46–47), as
shown in Figure 2C, depicted below.

Figure 2C is a high-level representation of the packet or frame, which shows
a packet or frame 33 as including a service (i.e., “service B1”) and
associated expiry time (i.e., “m”). Id. at Fig. 2C, 12:49–52, 12:15–17,
12:24–25. Hild notes that the packet or frame may include other
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information, e.g., a MAC layer header or a destination address. Id. at 12:52–
53, 14:23–28, 16:21–27. In addition, Hild states:
[T]he service announcements, according to the present
invention, may be transmitted at any layer of an Open System
Interconnection (OSI) protocol stack. The service
announcements may for example be transmitted at the network
protocol layer (3rd layer of the OSI stack) either as part of a
network layer header, or as an attachment to a network layer
header. . . .
It is understood by those skilled in the art that at the
present time many of the protocols that are suited for use in
wireless communications systems are still in draft status. . . .
One skilled in the art is able to implement the present scheme in
existing protocol environments as well as in protocol
environments under development or yet to be developed.
Id. at 16:28–46.
2. Overview of Bluetooth (Ex. 1006)9
Bluetooth provides a wireless communication protocol. Ex. 1006, 41.
It supports connections between two units (i.e., “a point-to-point
connection”) and between several units (i.e., “a point-to-multipoint
connection”). Id. In either case, “units sharing the same channel form a

9 Petitioner has shown by a preponderance of the evidence that Bluetooth
qualifies as prior art under 35 U.S.C. § 102(a) and (b). See Pet. 19. In
particular, the record reflects that Bluetooth was publicly available at least as
early as March 31, 2000. See Ex. 1003 ¶¶ 71–73; Ex. 1006, 1; Ex. 1028; Ex.
1029; Ex. 1030, 5. This date is more than one year prior to the filing date of
the ’891 patent (see 35 U.S.C. § 102(b); Ex. 1001, code (22)), and it is prior
to the earliest potential priority date of the patent on this record (see
35 U.S.C. § 102(a); Ex. 1001, code (30)). Patent Owner does not dispute
Bluetooth’s status as prior art. See generally PO Resp.
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piconet,” where “[o]ne . . . unit acts as the master . . . whereas the other
unit(s) act as slave(s).” Id. at 41–42 (emphasis omitted).
Bluetooth shows the standard packet format and access code format in
Figures 4.1 and 4.2, respectively. Figure 4.1 is reproduced below:

As shown in Figure 4.1, above, packets include an “access code” and can
include a “header” and a “payload.” Ex. 1006, 47–48; see id. at 48 (only the
access code is used during the inquiry procedure). The format for the access
code is shown in Figure 4.2, which is reproduced below:

As shown in Figure 4.2, above, the access code includes a 4-bit “preamble”
and a 64-bit “sync word,” which is followed by a 4-bit “trailer” when the
corresponding packet includes a header. Id. at 48.
Bluetooth describes an inquiry procedure that “discover[s] which
other Bluetooth units are within range.” Ex. 1006, 108. For the inquiry
procedure, the access code used is “the inquiry access code (IAC).” Id.
at 99; see id. at 48 (identifying two variations of the inquiry access code: a
general inquiry access code and a dedicated inquiry access code that “is
common for a dedicated group of Bluetooth units that share a common
characteristic”). When a unit wants to discover other units, “it continuously
transmits the inquiry message (which is the ID packet . . .) at different hop
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frequencies.” Id. at 108. If a device responds to an inquiry message, a
piconet then may be formed. See id.
3. Proposed Combination of Hild and Bluetooth; Reason to
Combine
Petitioner contends that a person of ordinary skill in the art would
have been motivated to combine Hild and Bluetooth and that the ordinary
artisan would have found it obvious to do so by integrating Hild’s service
information into Bluetooth’s inquiry messages via an additional data field
added to each inquiry message. Pet. 25–37. Patent Owner argues that
Petitioner fails to sufficiently explain why or how a person of ordinary skill
in the art would have made this combination and contends that Petitioner
relies on conclusory statements and improper hindsight. PO Resp. 14–36.
Having considered each of the parties’ arguments and the full record,
we are persuaded that a person of ordinary skill in the art would have been
motivated to combine Hild and Bluetooth and would have found it obvious
to do so in the manner proposed by Petitioner. We first identify the parties’
specific arguments, and then we explain our findings and analysis.
a. Petitioner’s Position
Petitioner first argues that a person of ordinary skill in the art would
have been motivated to combine Hild and Bluetooth. Pet. 25–26 (citing
Ex. 1003 ¶¶ 75–104). Petitioner submits that a person of ordinary skill in
the art “when considering the teachings of Hild would have also considered
the teachings of Bluetooth, as they are analogous prior art that both pertain
to the same field of endeavor of ad hoc wireless networking.” Id. at 25
(citing Ex. 1003 ¶ 74; Ex. 1005, 3:10–12, 4:48–55; Ex. 1006, 499, 897). In
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addition, Petitioner contends that Hild expressly states that Hild should be
combined with Bluetooth. Id. at 25–26. In support, Petitioner notes that
Hild discusses Bluetooth technology at length and describes the Bluetooth
communication scheme as “[w]ell suited” for implementing Hild’s
invention. Id. (alteration in original) (quoting Ex. 1005, 8:21–25; citing
Ex. 1005, 2:57–3:36, 8:25–32).
Second, Petitioner argues that a person of ordinary skill in the art,
motivated to combine Hild and Bluetooth, would have found it obvious to
do so by integrating Hild’s service information into Bluetooth’s inquiry
messages. Pet. 26–28 (citing Ex. 1003 ¶¶ 79–82). In particular, Petitioner
notes that both Hild’s service information and Bluetooth’s inquiry messages
are used to discover new devices. Id. at 26 (citing Ex. 1005, 5:43–45;
Ex. 1006, 108). Petitioner also contends that Hild improves this “simple
device discovery” by allowing devices to announce their services to other
devices. Id. at 26–27 (citing Ex. 1005, 4:51–52). Petitioner submits, “Hild
explains that proactively broadcasting information about devices’ services
‘allows a network to be formed ad-hoc if needed, and dissolved if not
needed anymore.’” Id. at 27 (quoting Ex. 1005, 5:49–50). According to
Petitioner, because Hild intends for its broadcast to be used to determine
whether to form a network, it would have been obvious to combine the
references by sending Hild’s service information before forming a Bluetooth
piconet. Id. (citing Ex. 1003 ¶¶ 80–81). From this, Petitioner reasons that it
would have been obvious to integrate Hild’s service information into
Bluetooth’s inquiry message. Id. at 27–28 (citing Ex. 1003 ¶¶ 81–82;
Ex. 1006, 99).
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Third, Petitioner asserts that a person of ordinary skill in the art would
have found it obvious to integrate Hild’s service information into
Bluetooth’s inquiry message by adding a data field to the latter. Pet. 28–33
(citing Ex. 1003 ¶¶ 83–92). According to Petitioner, Hild teaches that
service information “may be transmitted at any layer of an Open System
Interconnection (OSI) protocol stack” and provides an example of
transmitting the information “as an attachment to a network layer header.”
Id. at 28 (quoting Ex. 1005, 16:28–34). Petitioner also argues that an
ordinary artisan would have recognized a Bluetooth access code to be a
protocol header at the physical layer or data link layer of the OSI stack. Id.
(citing Ex. 1003 ¶ 84). Accordingly, Petitioner submits that it would have
been obvious, from these teachings, “to attach Hild’s service announcement
information to the Bluetooth inquiry procedure’s transmission of an access
code (inquiry message).” Id. at 28–29 (citing Ex. 1003 ¶ 84).10
Finally, Petitioner argues that a person of ordinary skill in the art
would have an expectation of success because such a person would have
known that the resulting packet: (1) would be substantially similar to
Bluetooth’s standard packet format and (2) could be transmitted during
otherwise unused timeslots. Pet. 29–33 (citing Ex. 1003 ¶¶ 86–92;
Ex. 1006, 43, 101, 110, Figs. 4.1, 9.4; Ex. 1010, 14:13–16; Ex. 1011, 13:27–
34). Petitioner further argues that the proposed combination would have
been obvious to try because there are only seven OSI layers, each providing

10 Although the Petition cites to paragraph 84 of Mr. Geier’s declaration
(Ex. 1003), the most relevant testimony from Mr. Geier appears in the
following paragraph. This appears to be a typographical error, and we have
considered both paragraphs of Mr. Geier’s declaration.
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predictable solutions for communicating information to another device with
a reasonable expectation of success, and Hild expressly teaches that its
service announcements “may be transmitted at any [OSI] layer.” Pet. 33–35
(citing Ex. 1003 ¶¶ 93–96; Ex. 1022, Fig. 1-16; Ex. 1005, 16:28–34).
Finally, Petitioner submits that the proposed combination would have
provided a predictable result within the skillset of a person of ordinary skill
in the art. Id. at 36–37 (citing Ex. 1003 ¶¶ 97–101). According to
Petitioner, those of ordinary skill in the art would have been motivated to
use otherwise unused bandwidth in a communication system and would have
known how to do so. Id. at 36–37 (citing, inter alia, Ex. 1014). Moreover,
Petitioner submits that “others had already described adding transmitter
identity and clock information to an inquiry message for use in the Bluetooth
communications protocol.” Id. at 36 (citing Ex. 1013).
b. Patent Owner’s Position
First, Patent Owner argues that Petitioner fails to sufficiently explain
why a person of ordinary skill in the art would have combined Hild and
Bluetooth given the existence of Bluetooth’s Service Discovery Protocol
(SDP). PO Resp. 14–24. According to Patent Owner, a person of ordinary
skill in the art would not have employed Hild’s service discovery protocol
because Bluetooth includes an SDP that is optimized for Bluetooth
communications. Id. at 14–16 (citing Ex. 1006, 323–383 (Part E); Ex. 1005,
3:3–5, 8:21–24). Patent Owner also argues that an ordinary artisan, aware of
Bluetooth’s SDP, “would not employ Hild’s teachings.” Id. at 16. Patent
Owner argues that Petitioner’s failure to address Bluetooth’s SDP (or to
explain why an ordinary artisan “would look to Hild as opposed to Bluetooth
for a Service Discovery Protocol”) undercuts the reasons provided in the
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Petition for why the combination would have been obvious and, similarly,
renders the Petition deficient. Id. at 16–18; see also 18–24 (faulting the
Petition and Mr. Geier for failing to address Bluetooth’s SDP at various
points in their analysis). In addition, Patent Owner contends that the Petition
fails to explain how to integrate Bluetooth’s SDP with Hild’s teachings. Id.
at 21–23 (citing Ex. 1006, 330–332; Ex. 1005,11 12:61–13:14 & Figs. 2B,
2E)
Next, Patent Owner argues that Petitioner fails to sufficiently explain
how Hild would be combined with Bluetooth’s inquiry scheme because the
combination does not provide for the exchange of messages between
devices. PO Resp. 24–28. In particular, Patent Owner argues that “Hild
requires at least two devices to be transmitting their service information.”
Id. at 25 (emphasis omitted) (citing Ex. 1005, 8:62–64). Patent Owner also
argues that a Bluetooth unit may be either transmitting inquiry messages (in
the inquiry substate) or receiving them (in the inquiry scan substate), but it
may not be in both substates. Id. at 25–26; Tr. 34:20–35:17, 41:12–43:1.
So, according to Patent Owner, “there may be only a single device
transmitting service data” in Petitioner’s proposed combination, and the
transmitting device “[would] not receive Hild service data” from another
device—as a result, Patent Owner contends that Petitioner’s proposed
combination defeats Hild’s purpose. PO Resp. 26–27 (emphasis omitted).

11 Although Patent Owner here cites to columns, lines, and figures in
“EX1006” (PO Resp. 22), the text discusses the contents of Hild’s
disclosure, which is in Exhibit 1005. This appears to be a typographical
error, and we have considered the identified portions of Hild (Ex. 1005).
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In addition, Patent Owner contends that the Petition engages in
impermissible hindsight reconstruction and relies on speculative and
conclusory testimony from Mr. Geier. PO Resp. 30–37; see also id. at 31
(arguing that Petitioner “layers speculation upon speculation, using the ’891
patent as a guide, to reach the conclusion of exactly the challenged claims”).
For example, according to Patent Owner, Petitioner’s conclusion that it
would have been obvious to attach Hild’s service information to Bluetooth’s
inquiry message (see Pet. 29) “relies solely on the testimony of its
declarant,” who “merely parrots the same speculative and conclusory
statement of the Petition.” PO Resp. 30. Patent Owner provides similar
challenges to other selected statements made in the Petition. Id. at 31–34
(quoting Pet. 28–29, 46–47).
Patent Owner further argues that Petitioner fails to explain why a
person of ordinary skill in the art would “necessarily” have combined the
references as Petitioner proposes, rather than using “one of the other
possible implementations disclosed by Hild.” PO Resp. 30–31. Patent
Owner submits that “Hild discloses a wide range of implementations,” as it
discloses that service information may be transmitted at any layer of the OSI
stack. Id. at 32–33. Patent Owner submits that Hild’s service information
may be transmitted “in the form of a ‘packet or frame’” (id. at 31, 33
(quoting Ex. 1005, 12:46–47)), and from this, Patent Owner concludes that
Hild discloses sending its service information in a “separate packet or
frame” (id. (emphasis added)) and that “Hild itself suggests that even within
Bluetooth’s inquiry process, a service announcement may be transmitted in a
packet or frame preceding or following Bluetooth’s inquiry message” (id at
34). Patent Owner argues that sending service data in an inquiry message
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unduly limits the recipients to those units in the inquiry scan substate. Id.
at 35. Finally, Patent Owner challenges Mr. Geier’s testimony that the
proposed combination would save power, and Patent Owner faults Mr. Geier
for failing to consider whether more power would be saved by sending
Hild’s service information before a Bluetooth inquiry message (in order to
avoid the repetition requirements for inquiry messages). Id. at 35–36 (citing
Ex. 1003 ¶ 143).
c. Analysis
We begin by framing our inquiry. Our focus is on evaluating
Petitioner’s proposal to determine whether that particular combination
would have been obvious to a person of ordinary skill in the art. We need
not—and do not—consider whether other combinations of Hild and
Bluetooth would have been obvious to the ordinary artisan. Indeed,
Petitioner need not show that its proposal is the most obvious combination
of the references. See Dome Patent L.P. v. Lee, 799 F.3d 1372, 1381 (Fed.
Cir. 2015) (“[J]ust because ‘better alternatives’ may exist in the prior art
‘does not mean that an inferior combination is inapt for obviousness
purposes.’” (quoting In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012))).
Consequently, Patent Owner’s arguments faulting Petitioner for not
addressing unspecified alternative combinations of Hild and Bluetooth—or
challenging the Petition for failing to explain why an ordinary artisan would
“necessarily” have made the proposed combination—miss the mark. E.g.,
PO Resp. 33.
As detailed above (supra § II.D.3.a), the Petition contends that a
person of ordinary skill in the art would have been motivated to implement
Hild using Bluetooth because Hild provides an express teaching to use the
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Bluetooth communications protocol. Pet. 25–26. The Petition continues by
asserting that a person of ordinary skill in the art, motivated to combine
these references, would have found it obvious to do so by integrating Hild’s
service information into Bluetooth’s inquiry messages (id. at 26–28), and the
Petition contends that this ordinary artisan would have found it obvious to
do this by adding a data field to Bluetooth’s inquiry message (id. at 28–33).
See also id. at 33–37 (providing additional rationale for motivation to make
proposed combination). Petitioner’s assertions are logical, detailed, and
supported by evidence of record, including both Mr. Geier’s expert
testimony and documentary evidence. We are persuaded that Petitioner’s
proposal is clearly articulated and sufficiently particularized.
In addition, we are persuaded that a person of ordinary skill in the art
would have been motivated to implement Hild using Bluetooth because Hild
provides an express suggestion to do so. In particular, Hild expressly states
that the Bluetooth communications scheme12 is “[w]ell suited” to its
invention and incorporates by reference an article describing Bluetooth
technology. Ex. 1005, 8:25–31; see Ex. 1021 (copy of publication
incorporated by reference into Hild). Hild also describes the Bluetooth
protocol extensively in its background and characterizes it as a “prominent

12 Hild was written before Bluetooth was published. See Ex. 1005, 3:3–9
(“The Bluetooth operating environment is not yet fully defined . . . .”);
compare Ex. 1005, code (30) (foreign application filed January 25, 1999),
with Ex. 1006, 1 (providing date of December 1, 1999, for Bluetooth), 868–
878 (identifying July 5, 1999, as date for first draft). But, according to Hild,
an ordinary artisan would have been able to implement its invention in an
emerging protocol such as Bluetooth. Ex. 1005, 2:57–62, 16:39–47.
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example[]” of a protocol allowing the formation of “an ad-hoc wireless
communication between mobile devices.” Ex. 1005, 2:57–3:36, 4:23–29.
Further, we are persuaded that a person of ordinary skill in the art
would have found it obvious to implement Hild with Bluetooth by
integrating Hild’s service information into Bluetooth’s inquiry messages.
Petitioner explains sufficiently why a person of ordinary skill in the art
would have found this to be obvious, and Petitioner’s assertions and
explanations are both logical and supported by the evidence cited by
Petitioner, including the testimony of Mr. Geier. Pet. 26–28 (citing Ex. 1003
¶¶ 79–82). In particular, Hild states that its invention allows a network to be
formed between devices “if needed.” Ex. 1005, 5:47–50. Bluetooth
provides for an inquiry procedure which is used by a device to discover
other Bluetooth devices to establish a new piconet. Ex. 1006, 99, 108.
Hild’s service information and Bluetooth’s inquiry messages are both used
for device advertisement and discovery. Id. at 108; Ex. 1005, 5:37–55.
Accordingly, we are persuaded that a person of ordinary skill would have
been motivated by Hild’s teaching to send service information before the
devices form a Bluetooth piconet and that it would have been obvious to use
Bluetooth’s inquiry message for this purpose.
In addition, we are persuaded that a person of ordinary skill in the art
would have found it obvious to integrate Hild’s service information into
Bluetooth’s inquiry messages by adding a data field containing Hild’s
service information to Bluetooth’s inquiry message. Petitioner explains
sufficiently why a person of ordinary skill in the art would have found this to
be obvious, and Petitioner’s assertions and explanations again are both
logical and supported by the evidence cited by Petitioner, including the
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testimony of Mr. Geier. Pet. 28–33 (citing Ex. 1003 ¶¶ 83–92). In
particular, Hild teaches that service information “may be transmitted at any
layer of an Open System Interconnection (OSI) protocol stack” and provides
an example of transmitting the information “as an attachment to a network
layer header.” Ex. 1005, 16:28–35. Mr. Geier testifies that, based on this
teaching, a person of ordinary skill in the art would have found it obvious to
attach Hild’s service information to Bluetooth’s access code because he
would have recognized the Bluetooth access code to be a protocol header at
the physical layer or data link layer. Ex. 1003 ¶¶ 83–85 (citing Ex. 1005,
16:28–35; Ex. 1006, 47–48, 108, 143, 249, 510). Mr. Geier further testifies
that a person of ordinary skill would have had an expectation of success
because “the resulting transmission structure is substantially similar to
[Bluetooth’s] standard packet format” and because he would have
recognized that the additional data would fit into time periods that are
unused during the inquiry procedure. Ex. 1003 ¶¶ 86–92 (citing Ex. 1006,
43, 91, 101, 110, Figs. 4.1, 9.4; Ex. 1010, 14:13–16; Ex. 1011, 8:25–31,
13:27–34); see also Ex. 1006, 101 (“Since the page message is the ID packet
which is only 68 bits in length, there is ample of time (224.5 µs minimal) to
switch the synthesizer.”); Ex. 1003 ¶ 90 (“It was already well-known in the
art that transmission circuits were known to be capable of hopping between
frequencies in as little as 2 µs.” (citing Ex. 1010, 14:13–16, Ex 1011, 13:27–
34)). We credit Mr. Geier’s testimony because it is logical and supported by
the evidence of record.
We are further persuaded that Petitioner’s proposal would have been
obvious to a person of ordinary skill in the art because documentary
evidence shows that it was already known to add additional data to a
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Bluetooth inquiry message. See Pet. 36 (citing Ex. 1013; Ex. 1003 ¶ 98). In
particular, another prior art reference describes adding transmitter identity
and clock information to a Bluetooth inquiry message. Ex. 1013, 5:53–6:16;
see Ex. 1003 ¶ 98 (describing Exhibit 1013). And we are also persuaded
that a person of ordinary skill in the art would have been generally motivated
to use otherwise unused bandwidth in a communication system. E.g.,
Ex. 1003 ¶¶ 99–100 (citing Ex. 1014).
Finally, we also find that Petitioner’s proposal would have been
within the skill of an ordinary artisan and obvious for him to try. See
Pet. 33–37. Hild expressly teaches that its service announcements “may be
transmitted at any [OSI] layer,” including, for example, as an attachment to a
network layer header (Ex. 1005, 16:28–35), and Hild specifically states that
an ordinary artisan would be able to implement its invention “in protocol
environments under development or yet to be developed” (id. at 16:39–47).
Mr. Geier further explains that the combination would have been obvious to
try because there are only seven OSI layers that each provide predictable
solutions for communicating information between devices. Ex. 1003 ¶¶ 93–
96. We credit this testimony because it is logical and supported by the
evidence of record.
The arguments presented by Patent Owner are not persuasive and do
not illuminate any deficiencies in Petitioner’s contentions, rationale, or
evidence.
First, Patent Owner’s arguments regarding Bluetooth’s SDP are
premised on a misunderstanding of Petitioner’s proposed combination—
Patent Owner faults the Petition for failing to explain why an ordinary
artisan “would look to Hild as opposed to Bluetooth” (PO Resp. 17
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(emphasis added); PO Sur-Reply 2), but Petitioner instead proposed an
implementation of Hild using Bluetooth (see Pet. Reply 13; see also Pet. 25–
33).13 Thus, Patent Owner’s arguments are inapposite. Relatedly, Patent
Owner argues that the Petition fails to explain how to integrate Hild’s
teaching and Bluetooth’s SDP. PO Resp. 21–23; PO Sur-Reply 4–5. But
this again fails to address Petitioner’s proposal, which implemented Hild’s
teaching with Bluetooth’s inquiry messages, not Bluetooth’s SDP.
Patent Owner also asserts that an ordinary artisan, aware of
Bluetooth’s SDP, “would not employ Hild’s teachings.” PO Resp. 16.
However, we perceive (and Patent Owner identifies) no evidence indicating
that Bluetooth’s SDP would have been relevant to an ordinary artisan when
determining whether to follow Hild’s express instruction to use Bluetooth
technology.14 Patent Owner’s unsupported attorney arguments to the
contrary are afforded little weight. See In re Geisler, 116 F.3d 1465, 1470

13 Patent Owner appears to have arrived at this misunderstanding by
assuming that Petitioner’s proposal could only be: (1) a modification of
Hild based on Bluetooth, with Hild as the primary reference, or (2) a
modification of Bluetooth based on Hild, with Bluetooth as the primary
reference. See PO Sur-Reply 2–4 (arguing that the Reply reframes the
Petition’s theory because the Petition proposed “modification of Bluetooth
based on Hild, not the other way around”). This is a false dichotomy.
Moreover, we do not agree with Patent Owner’s contention (id. at 3) that
Petitioner’s Reply mischaracterizes or departs from the combination
proposed in the Petition. See also Inst. Dec. 19–21, 24–25 (summarizing the
Petition’s contentions).
14 Moreover, Patent Owner does not sufficiently explain why Bluetooth
SDP would be relevant to how an ordinary artisan would have implemented
Hild using Bluetooth. For example, Patent Owner does not contend that a
person of ordinary skill in the art would have implemented Hild using
Bluetooth’s SDP instead of Bluetooth’s inquiry message.
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(Fed. Cir. 1997) (explaining that attorney arguments that are unsupported by
factual evidence are entitled to little probative value). Moreover, on this
record, we find that Bluetooth’s SDP does not teach away from Petitioner’s
proposed combination, and we perceive no conflict between Petitioner’s
proposal and Bluetooth’s SDP. See, e.g., Ex. 1006, 370 (“SDP can coexist
with other service discovery protocols.”); see also In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives . . . .”).
During the hearing, Patent Owner argued that Hild also teaches away
from a combination with Bluetooth. Tr. 30:20–32:24, 35:11–36:9 (citing
Ex. 1005, 3:3–36). This argument was not timely presented in Patent
Owner’s papers (compare Tr. 37:6–38:4 (citing to page 25 of the Response
for support), with PO Resp. 25 (presenting fundamentally different
argument); see generally PO Resp.) and, thus, was waived. See
Consolidated Trial Practice Guide 85–86 (Nov. 2019), available at
https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“During an
oral hearing, a party . . . may only present arguments relied upon in the
papers previously submitted.”); Paper 8 at 7 (Scheduling Order) (arguments
not raised in the Response may be deemed waived). However, even if this
argument had been raised timely, it would not have been persuasive. The
identified passage of Hild identifies drawbacks of Bluetooth’s centralized,
“master-slave” approach, but does not teach away from using Bluetooth
generally, or from Petitioner’s proposed use of Bluetooth’s inquiry
messages—Hild later expressly states that the Bluetooth protocol is “[w]ell
suited” for implementing its invention, and the specific drawbacks identified
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in this passage of Hild are unrelated to the proposed combination. Ex. 1005,
3:3–36, 8:26–32, 16:39–47; see Allied Erecting & Dismantling Co. v.
Genesis Attachments, LLC, 825 F.3d 1373, 1382 (Fed. Cir. 2016) (noting
reference does not teach away from a combination that does not implicate
the disadvantage identified in the reference); see also Ex. 1005, 4:27–29
(“All state-of-the-art protocols and techniques have certain
drawbacks . . . .”).
Moreover, we do not agree with Patent Owner’s argument that the
Petition does not sufficiently explain “how” its proposed combination would
be accomplished. See PO Resp. 24–28. In particular, Patent Owner argues
that Petitioner’s proposed Hild-Bluetooth combination would not allow a
device transmitting the modified inquiry messages to receive other devices’
service information, which is contrary to Hild’s teaching, because a
Bluetooth unit can either transmit inquiry messages or receive them, but
cannot do both. Id. at 26–27; see Tr. 41:12–44:20, 45:22–47:25, 51:24–
53:17 (asserting that Hild and Bluetooth are incompatible because Hild’s
devices transmit service information at a randomly selected time, where
Bluetooth devices enter one of two “mutually-exclusive states,” i.e., a
transmitting inquiry substate and a receiving inquiry scan substate). It is
unclear whether Patent Owner’s argument is: Hild and Bluetooth are
incompatible; the proposed combination violates Hild’s and/or Bluetooth’s
principle of operation; or the Petition is deficient for failing to sufficiently
explain the proposed combination. But, we disagree with all of these
arguments.
We find no incompatibility germane to our obviousness analysis.
Both Hild and Bluetooth teach that the devices transmit at certain times and
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listen for transmissions at other times. Ex. 1005, 4:62–5:12, 12:3–13:33,
Fig. 4; Ex. 1006, 108–110; see Pet. Reply 18. The fact that a Bluetooth
device cannot simultaneously be in a transmitting state and a receiving state
does not mean that it will only ever transmit or receive. And Bluetooth’s
disclosure of different states is not incompatible with Hild’s disclosure that
devices take turns transmitting.15 Ultimately, having reviewed the
references, we perceive no relevant incompatibility between Hild and
Bluetooth, and we find that the proposed combination would not change
either reference’s principle of operation or render either inoperable for its
intended purpose.
Moreover, we do not perceive any deficiency in the Petition. The
challenged claims neither require a device that both transmits and receives
nor require two transmitting devices, so Petitioner did not need to propose a
combination that specifically included any of these features. Moreover,
Petitioner was not obligated to show that Hild and Bluetooth could be bodily
incorporated. See MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d
1284, 1294 (Fed. Cir. 2015) (“[T]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . .” (quoting In re Keller, 642 F.2d 413,
425 (CCPA 1981)). Consequently, we perceive no reason why Petitioner
should have addressed these aspects of Hild and Bluetooth in its Petition.

15 The difference highlighted by Patent Owner at oral argument—i.e.,
Bluetooth describes specific device “states,” while Hild does not reference
this concept (e.g., Tr. 51:24–53:17, 58:7–17)—is immaterial. Moreover,
Patent Owner’s attorney arguments on this point are not supported by
evidence and are given little weight. See Geisler, 116 F.3d at 1470.
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In addition, Patent Owner’s arguments regarding alternative
combinations of Hild and Bluetooth are unpersuasive. We disagree with
Patent Owner’s assertion that Hild suggests that its service information
should be transmitted in a separate packet or frame that precedes or follows
a Bluetooth inquiry message. PO Resp. 34 (citing Ex. 1005, 12:46–47); see
also id. at 31, 33. Hild is largely silent on implementation details: Hild
suggests use of Bluetooth; notes that service information may be broadcast
“in the form of a packet or frame” and “may for example be transmitted . . .
as an attachment to a network layer header”; and states that “[o]ne skilled in
the art is able to implement” the invention in various protocol environments.
Ex. 1005, 8:25–32, 12:46–47, 16:28–47. We find nothing in Hild to suggest
that its service information should be transmitted separately from
Bluetooth’s inquiry message.
Also, Patent Owner argues that Petitioner’s proposal unduly limits the
recipients to those devices in an inquiry scan substate (PO Resp. 35 (citing
Ex. 1006, 109); PO Sur-Reply 9) and faults Mr. Geier for failing to consider
whether more power could be saved by sending Hild’s service information
before a Bluetooth inquiry message (PO Resp. 35–36 (citing Ex. 1003
¶ 143)). But Patent Owner identifies no evidence indicating that Petitioner’s
combination is suboptimal. See Geisler, 116 F.3d at 1470 (explaining that
attorney arguments that are unsupported by factual evidence are entitled to
little probative value). Moreover, even if evidence indicated that
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Petitioner’s proposal has disadvantages,16 we would still reach the same
result. See Dome, 799 F.3d at 1381 (“[J]ust because ‘better alternatives’
may exist in the prior art ‘does not mean that an inferior combination is inapt
for obviousness purposes.’” (quoting In re Mouttet, 686 F.3d at 1334)).
Further, we are not persuaded by Patent Owner’s arguments that
selected statements in the Petition should be disregarded as conclusory.
Although many of the identified statements are, in fact, conclusions, Patent
Owner fails to address the rationale and evidence provided by Petitioner and
its expert to support those conclusions. For example, Patent Owner
challenges the Petition’s statement that “it would have been obvious to a
POSITA to attach Hild’s service announcement information to the Bluetooth
inquiry procedure’s transmission of an access code.” PO Resp. 30 (quoting
Pet. 29). But Patent Owner does not address any of the explanation and
rationale provided by Petitioner to support this conclusion. See id.; see
generally Pet. 25–37 (contending Hild expressly suggests a combination
with Bluetooth and explaining that a person of skill would have found it
obvious to combine Hild’s service information with Bluetooth’s inquiry
procedure because, inter alia, both relate to device discovery and allow the
mobile devices to determine whether to form a network, a person of ordinary
skill would have had an expectation of success and sufficient skill, and it

16 Incidentally, we are not persuaded that Petitioner’s proposed combination
has any material disadvantages. Patent Owner argues that devices would
need to be in a listening state to receive the transmitted information (PO
Resp. 35) and that less power would be used if the information was
transmitted less often (id. at 36); however, at most, these statements identify
fundamental tradeoffs for wireless communications, not disadvantages that
would lead an ordinary artisan away from Petitioner’s proposed solution.
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would have been obvious to try given the limited number and predictability
of layers in the OSI stack).
Finally, although we are always mindful of the danger of improper
hindsight bias,17 we are also not persuaded by Patent Owner’s argument that
the Petition improperly relies on hindsight. See PO Resp. 31 (contending
Petitioner “layers speculation upon speculation, using the ’891 patent as a
guide”). As explained above, Petitioner provides detailed and logical
analysis, which is supported by Petitioner’s proffered expert testimony as
well as other references that predate the ’891 patent, and Petitioner
sufficiently explains why a person of ordinary skill in the art would have
combined the references to yield the claimed invention. KSR, 550 U.S. at
418 (explaining that an obviousness analysis “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”). Patent Owner, on the other hand, provides little explanation and
identifies little evidence to the contrary.
Accordingly, after reviewing the evidence of record and the parties’
arguments, we are persuaded that Petitioner has shown that it would have
been obvious to combine Hild and Bluetooth in the manner proposed.

17 See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of
the distortion caused by hindsight bias and must be cautious of arguments
reliant upon ex post reasoning.”); Polaris Indus., Inc. v. Arctic Cat, Inc., 882
F.3d 1056, 1068 (Fed. Cir. 2018) (“We have observed that the prejudice of
hindsight bias often overlooks that the genius of invention is often a
combination of known elements which in hindsight seems preordained.”
(internal quotation marks omitted)).
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4. Independent Claim 14
The preamble of claim 14 recites, “A method for enabling the user of
a first portable communications device to broadcast messages to the users of
other portable communications devices . . . .” Petitioner asserts Hild teaches
the preamble (see Pet. 37–41), and Patent Owner has not argued otherwise
(see generally PO Resp.). Petitioner’s assertions are supported by the cited
evidence and are persuasive. Hild describes devices (e.g., “cellular phones”)
that “broadcast[] service information in the form of a packet or frame” to
other devices. Ex. 1005, 7:10–19, 12:46–47; see also id. at 5:27–31, 8:9–11.
Hild’s method enables a user to send messages to other users via the devices.
E.g., id. at 15:50–54 (describing “electronic business card exchange[]”); see
also Ex. 1003 ¶ 115. Accordingly, we are persuaded that Hild discloses the
preamble of claim 14.
Claim 14 recites “wherein said first portable communications device
broadcasts a series of inquiry messages each in the form of a plurality of
predetermined data fields arranged according to a first communications
protocol.” Petitioner asserts that Hild and Bluetooth, in combination, render
this limitation obvious “because Hild suggests using the Bluetooth protocol,
and Bluetooth describes broadcasting inquiry messages.” Pet. 41; see id.
at 41–45. Patent Owner has not argued otherwise. See generally PO Resp.
Petitioner’s assertions are supported by the cited evidence and are
persuasive. In particular, Bluetooth teaches broadcasting a series of inquiry
messages (the claimed “inquiry messages”) that each include a plurality of
fields—e.g., a preamble field and a sync word field—which are arranged
according to the communication protocol described in Bluetooth. Ex. 1006,
48, 55, 108; Ex. 1003 ¶¶ 131–133. Hild suggests implementing its service
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discovery protocol with the Bluetooth communications scheme. Ex. 1005,
8:21–32. And, for the reasons explained above (supra § II.D.3.c), we are
persuaded that a person of ordinary skill in the art would have been
motivated to combine Hild and Bluetooth as proposed by Petitioner.
Accordingly, we are persuaded that Hild and Bluetooth, in combination,
render this limitation obvious.
Next, claim 14 recites “wherein said first portable communications
device adds to each inquiry message prior to transmission an additional data
field carrying broadcast message data.” Petitioner asserts that Hild and
Bluetooth render obvious this limitation. Pet. 45–50. In particular,
Petitioner contends that Hild’s devices broadcast service information, which
teaches the claimed “broadcast message data.” Id. at 45, 49. According to
Petitioner, it would have been obvious to attach Hild’s service information
to each Bluetooth inquiry message prior to transmission. Id. at 45–49.
Patent Owner submits that neither Hild nor Bluetooth discloses this
limitation (PO Resp. 28) and alleges deficiencies in Petitioner’s proposed
combination of Hild and Bluetooth (id. at 28–36), which we summarized and
addressed above (supra § II.D.3.c).
Petitioner’s assertions regarding this claim limitation are supported by
the cited evidence and are persuasive. And again, for the reasons explained
above (supra § II.D.3.c), we are persuaded that a person of ordinary skill in
the art would have been motivated to combine Hild and Bluetooth in the
manner proposed by Petitioner, and we are not persuaded by Patent Owner’s
arguments to the contrary. As explained above, we are also persuaded that
the Hild-Bluetooth combination renders obvious an “additional data field”
added to Bluetooth’s inquiry messages to carry Hild’s service information
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(i.e., “broadcast message data”). Hild’s service information would be
attached prior to transmission in order to be included in the transmission (see
Ex. 1003 ¶¶ 142–143),18 and we are persuaded that it would have been
obvious to include the service information in “each” inquiry message
because both Hild and Bluetooth teach repeated, periodic broadcasts (see
Ex. 1003 ¶¶ 144–145 (citing Ex. 1005, 9:40–43; Ex. 1006, 101, 110)).
Accordingly, we are persuaded that Hild and Bluetooth, in combination,
render this limitation obvious.
Finally, claim 14 recites “such that suitably configured other portable
devices may receive the transmitted inquiry messages and read the broadcast
data from said additional data field.” Petitioner asserts that Hild and
Bluetooth, in combination, render this limitation obvious (Pet. 50–52), and
Patent Owner has not argued otherwise (see generally PO Resp.).
Petitioner’s assertions are supported by the cited evidence and are
persuasive. In particular, Hild teaches that, after being broadcast, service
information is received and read by other devices. Ex. 1005, Abstract,
Fig. 2D, 12:53–61, 16:24–26. Moreover, Bluetooth teaches that devices
listen for broadcast inquiry messages. Ex. 1006, 109 (describing inquiry
scan); see also id. at 111 (“[T]he inquiry message is received in the inquiry

18 Patent Owner complains that this testimony is conclusory. See PO
Resp. 34. We disagree. Patent Owner appears to fault Mr. Geier (and
Petitioner) for not explaining why the service announcement could not be
sent after the inquiry messages (id. at 34–35), but this misunderstands
Petitioner’s argument, which contends that the service information is
attached to the inquiry message. Petitioner sufficiently explains that, in its
proposal, service information would be attached before the message is sent.
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scan substate . . . .” (emphasis omitted)). Accordingly, we are persuaded
that Hild and Bluetooth, in combination, render this limitation obvious.
For the foregoing reasons, Petitioner has proved by a preponderance
of the evidence that the subject matter of claim 14 would have been obvious
over Hild and Bluetooth.
5. Dependent Claim 16
Claim 16 depends from claim 14 and additionally recites: “wherein
the first portable communications device includes an indication in one of
said predetermined data fields, said indication denoting the presence of said
additional data field.” Petitioner asserts that Hild and Bluetooth, in
combination, render this limitation obvious (Pet. 53), and Patent Owner has
not argued otherwise (see generally PO Resp.).
Petitioner’s assertions are supported by the cited evidence and are
persuasive. In particular, the claimed “one of said predetermined fields” is
taught by one of the fields of a Bluetooth access code—the trailer. Ex. 1006,
48. Mr. Geier testifies that the trailer is included “only when additional data
follows the access code.” Ex. 1003 ¶ 166 (citing Ex. 1006, 48, 50).
Mr. Geier further testifies that, in the proposed combination, a person of
ordinary skill in the art would have found it obvious to add the trailer before
Hild’s additional service information. Id. ¶ 171 (explaining that “a trailer
should be added after the sync word and before [Hild’s] additional service
information” to “provide for ‘extended DC compensation’ as taught by
Bluetooth”). Mr. Geier’s testimony is credible, as it is logical and consistent
with the cited portions of Bluetooth. Further, we are persuaded that a person
of ordinary skill in the art, when implementing the proposed combination,
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36
would have included the trailer field and that this field would indicate the
presence of Hild’s service information, as required by claim 16.
Accordingly, Petitioner has proved by a preponderance of the
evidence that the subject matter of claim 16 would have been obvious over
Hild and Bluetooth.
E. Obviousness in view of Hild, Bluetooth, and Moy
Petitioner contends that the combination of Hild, Bluetooth, and Moy
also renders dependent claim 16 obvious. Pet. 54–60. This claim depends
from independent claim 14 and, thus, includes all limitations of that claim.
Patent Owner does not present any arguments specifically directed to this
proposed combination. See generally PO Resp.
For the reasons provided below, Petitioner has proved by a
preponderance of the evidence that the subject matter of claim 16 would
have been obvious over Hild, Bluetooth, and Moy.
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1. Overview of Moy (Ex. 1007)19
Moy describes the OSPF20 packet-based communication protocol.
Ex. 1007, 6. “Every OSPF packet starts with a standard 24 byte header,”
which “contains all the information necessary to determine whether the
packet should be accepted for further processing.” Id. at 190. This header
includes a “Type” field that identifies the type of packet. Id. at 189–191.
For each packet type, OSPF specifies a different set of fields that follow the
standard header. Id. at 189, 193–202. For example, Moy describes a “Hello
packet”—packet type 1—which is multicast periodically “to establish and
maintain neighbor relationships.” Id. at 190, 193–194. This packet includes
fields that are not found in the other packet types. Compare id. at 193–194
(identifying, e.g., Network Mask and HelloInterval), with id. at 195–202 (not
including these fields in other packet types).
2. Dependent Claim 16
Relying on the arguments previously made for independent claim 14
(see supra § II.D.4), Petitioner further contends that Hild, Bluetooth, and
Moy render obvious “wherein the first portable communications device

19 Petitioner has shown by a preponderance of the evidence that Moy
qualifies as prior art under 35 U.S.C. § 102(a) and (b). See Pet. 19. In
particular, the record reflects that Moy was publicly available before the end
of 1998. See Ex. 1025 ¶¶ 17–22; Ex. 1007, 1. This date is more than one
year prior to the filing date of the ’891 patent (see 35 U.S.C. § 102(b);
Ex. 1001, code (22)), and it is prior to the earliest potential priority date of
the patent on this record (see 35 U.S.C. § 102(a); Ex. 1001, code (30)).
Patent Owner does not dispute Moy’s status as prior art. See generally PO
Resp.
20 OSPF is an abbreviation for the “Open Shortest Path First” TCP/IP
internet routing protocol. Ex. 1007, 6.
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includes an indication in one of said predetermined data fields, said
indication denoting the presence of said additional data field,” as recited in
claim 16. Pet. 54–60 (citing Ex. 1003 ¶¶ 174–199). Patent Owner has not
argued otherwise. See generally PO Resp.
Petitioner’s assertions are supported by the cited evidence and are
persuasive. In particular, we are persuaded that a person of ordinary skill in
the art would have been motivated to combine Hild, Bluetooth, and Moy for
the reasons explained above with respect to the Hild-Bluetooth combination
and because the addition of Moy involves the ordinary use of common
techniques with predictable results. See supra § II.D.3.c; Ex. 1003 ¶¶ 181,
183–184, 197. In addition, we are persuaded that a person of ordinary skill
would have had an expectation of success because dedicated inquiry access
codes (DIACs) are reserved for inquiry of “specific classes of Bluetooth
devices” (Ex. 1006, 48, 147; Ex. 1003 ¶ 182) and because other engineers
had used DIACs in a similar way (Ex. 1023 ¶¶ 66–68; Ex. 1003 ¶ 185).
Moy’s Type field (the claimed “indication”) identifies which
additional fields following the standard header are present, as each type of
packet includes different fields. Ex. 1007, 190–191, 193; see Ex. 1003
¶ 195. Mr. Geier testifies, “This use of one field in a protocol header to
indicate the type of packet, and thus the presence of other type-specific
packet fields, was very common in many communications protocols.”
Ex. 1003 ¶ 197. Further, Bluetooth provides a DIAC “for a dedicated group
of Bluetooth units that share a common characteristic.” Ex. 1006, 48. Mr.
Geier explains that, given these facts, it would have been obvious to an
ordinary artisan to use a DIAC value to indicate the presence of the attached
service information in the proposed combination “so that a device receiving
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inquiry messages would be able to distinguish between ordinary Bluetooth
inquiry messages that do not have attached service announcement
information, and inquiry messages according to Hild’s teachings, which do
have attached service announcement information after the inquiry access
code.” Ex. 1003 ¶ 198. Mr. Geier’s testimony is credible, as it is logical
and consistent with the cited prior art references.
Accordingly, Petitioner has proved by a preponderance of the
evidence that the subject matter of claim 16 would have been obvious over
Hild, Bluetooth, and Moy.
F. Patent Owner’s Constitutional Challenge
Patent Owner argues that Administrative Patent Judges (“APJs”) are
unconstitutionally appointed principal officers. PO Resp. 37–40 (citing
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), cert.
granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13,
2020)). According to Patent Owner, the Federal Circuit erred by remedying
the constitutional violation, and thus, this case must be dismissed. Id.
We are bound by the Federal Circuit’s decision in Arthrex, which
addressed this issue. See 941 F.3d at 1337 (“This as-applied severance . . .
cures the constitutional violation.”); see also Arthrex, Inc. v. Smith &
Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in
denial of rehearing) (“Because the APJs were constitutionally appointed as
of the implementation of the severance, inter partes review decisions going
forward were no longer rendered by unconstitutional panels.”).
Accordingly, we do not consider this issue any further.
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III. CONCLUSION21
Based on the evidence presented with the Petition, the evidence
introduced during the trial, and the parties’ respective arguments, Petitioner
has shown by a preponderance of the evidence that the subject matter of
claims 14 and 16 would have been obvious over Hild and Bluetooth and that
the subject matter of claim 16 would have been obvious over Hild,
Bluetooth, and Moy.
In summary:
Claims 35 U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
14, 16 103(a) Hild, Bluetooth 14, 16
16 103(a) Hild, Bluetooth, Moy 16

Overall
Outcome 14, 16

21 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding, 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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IV. ORDER
It is hereby:
ORDERED that claims 14 and 16 of the ’891 patent are determined to
be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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PETITIONER:
David McCombs
Theodore Foster
Adam Fowles
HAYNES AND BOONE, LLP
david.mccombs.ipr@haynesboone.com
ipr.theo.foster@haynesboone.com
adam.fowles.ipr@haynesboone.com

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

PATENT OWNER:

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