Uniloc 2017 LLC

Patent Trials and Appeals Board

Mar 3, 2021

IPR2019-01471 (P.T.A.B. Mar. 3, 2021)

Trials@uspto.gov Paper 21
Tel: 571-272-7822 Date: March 3, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MICROSOFT CORPORATION, APPLE INC.,
and MOTOROLA MOBILITY LLC,
Petitioners,

v.

UNILOC 2017 LLC,
Patent Owner.

IPR2019-01471
Patent 6,836,654 B2

Before JENNIFER S. BISK, NEIL T. POWELL, and JOHN D. HAMANN,
Administrative Patent Judges.

HAMANN, Administrative Patent Judge.

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

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I. INTRODUCTION
In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
Microsoft Corporation (“Microsoft”), Apple Inc. (“Apple”), and Motorola
Mobility LLC (“Motorola”) (“Petitioners”) challenge the patentability of
claims 10–20 (“the challenged claims”) of U.S. Patent No. 6,836,654 B2
(Ex. 1001, “the ’654 patent”), owned by Uniloc 2017 LLC (“Patent
Owner”). We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed herein, we determine that Petitioners have
shown by a preponderance of the evidence that claims 10–20 are
unpatentable.
II. BACKGROUND
A. Procedural History
Microsoft filed a Petition requesting inter partes review of the
challenged claims of the ’654 patent. Paper 2 (“Pet.”). The Petition is
supported by the Declaration of Henry Houh (Ex. 1010). Patent Owner filed
a Preliminary Response. Paper 6 (“Prelim. Resp.”).
We instituted inter partes review of all of the challenged claims of the
’654 patent on all of the grounds raised in the Petition with Microsoft as the
sole petitioner. Paper 7 (“Dec. on Inst.”), 8, 24. Thereafter, we instituted
inter partes review in IPR2020-00701 (whose petition challenged the same
claims of the ’654 patent on the same grounds as Microsoft’s Petition), and
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granted Apple’s and Motorola’s Motion1 for Joinder, joining them as
petitioners in this proceeding. Paper 11, 10. Patent Owner filed a Response
to the Petition. Paper 9 (“PO Resp.”). Petitioners filed a Reply to Patent
Owner’s Response. Paper 10 (“Pet. Reply”). The Reply is supported by the
Second Declaration of Henry Houh (Ex. 1020). Patent Owner filed a
Sur-Reply to Petitioners’ Reply. Paper 12 (“PO Sur-Reply”).
An oral hearing was held on November 10, 2020. A transcript of the
oral hearing is included in the record. Paper 19 (“Tr.”).
B. Related Matters
Petitioners identify the following as related matters that involve the
’654 patent.
1. Uniloc 2017 LLC v. Microsoft Corp., 8-19-cv-00781 (C.D. Cal.)
2. Uniloc USA, Inc. v. Apple Inc., 3-19-cv-01697 (C.D. Cal.)
3. Uniloc 2017 LLC v. HTC Am., Inc., 2:18-cv-01732 (W.D. Wash.)
4. Uniloc 2017 LLC v. Motorola Mobility, LLC, 1:18-cv-01844 (D. Del.)
5. Uniloc 2017 LLC v. Google LLC, 2:18-cv-00493 (E.D. Tex.)
6. Uniloc 2017 LLC v. Samsung Elecs. Am., Inc., 2:18-cv-00508 (E.D. Tex.)
7. Uniloc 2017 LLC v. Huawei Device USA, Inc., 2:18-cv-00509 (E.D. Tex.)
8. Uniloc 2017 LLC v. Google LLC, 2:18-cv-00422 (E.D. Tex.)
9. Uniloc USA, Inc. v. Huawei Device USA, Inc., 2-18-cv-00357 (E.D. Tex.)
10. Uniloc USA, Inc. v. Motorola Mobility, LLC, 1:18-cv-01230 (D. Del.)
11. Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., 2:18-cv-00309 (E.D. Tex.)
12. Uniloc USA, Inc. v. Huawei Device USA, Inc., 2:18-cv-00310 (E.D. Tex.)
13. Uniloc USA, Inc. v. Apple Inc., 1:18-cv-00293 (W.D. Tex.)
14. Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2019-01218 (PTAB)
15. Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2019-01219 (PTAB)
16. Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-01470 (PTAB)

1 Samsung Electronics America, Inc. (“Samsung”) also was a petitioner
seeking joinder at the time the petition in IPR2020-00701 was filed.
IPR2020-00701, Paper 1. The -701 proceeding was terminated as to
Samsung, however, before we instituted inter partes review in the -701
proceeding and joined it with this proceeding.
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Pet. vii–viii. Patent Owner identifies nine of these matters as being “active
proceedings.” Paper 3, 2.
C. The Challenged Patent (Ex. 1001)
The ’654 patent relates to deterring the theft of a mobile
radiotelephony device. Ex. 1001, code (57), 1:60–65. In particular, the ’654
patent discloses that it deters theft by making the device “totally unusable,”
if it is stolen. Id. at 1:60–65. The ’654 patent states that it does so by
resolving what it identifies as a problem in a prior art protection method. Id.
at 1:31–41.
More specifically, and as described by the ’654 patent, the prior art
method provides protection by “establishing a link between [a] device and a
specific user identification module and blocking the normal operation of the
device when the user identification module that is placed inside the device is
not the one that is linked to the device.” Id. at 1:21–29. The ’654 patent,
however, identifies as a problem with this method that “[w]hen the device is
lost or stolen with the identification module to which it is linked,” the device
can be freely used until the device’s network operator is notified to block the
device, which “may take a certain period of time.” Id. at 1:31–37.
In resolving this problem, the ’654 patent notes that “when the device
falls into the hands of a third party together with the identification module to
which it is linked, it has most probably been inactive for a period of time.”
Id. at 1:52–54. The ’654 patent discloses that this inactive period is
“sufficiently long” so that it can be used as a way to block the device’s
normal operation, and to require a deblocking code to use the device, in
accordance with the ’654 patent’s invention. Id. at 1:55–59.
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Figure 3, shown below, “represents a flow chart explaining the
operation of the device,” in accordance with the invention of the ’654 patent.
Id. at 2:26–27, 2:30–31.

Figure 3 illustrates “a function flow chart of a device in accordance
with the invention” of the ’654 patent. Id. at 2:61–62. Starting at box K1,
“the device is in a state of availability, that is to say that the user has access
to all the functions of the device.” Id. at 2:62–65. As illustrated by box K2,
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the user has the choice whether to lock the device. Id. at 2:65–66. If the
user locks the device (box K2), “the identification module that is inside the
device is automatically linked to the device. For this purpose, the device
starts reading a data D1 in the identification module (for example, the
international identification number IMSI) and he stores it in the random-
access memory 24,” the ’654 patent states. Id. at 2:67–3:6. As illustrated,
“[o]nce locked, the device remains in the state of availability indicated in
box K1.” Id. at 3:6–7.
In accordance with the ’654 patent, “[w]hen the device is in the state
of availability, one looks whether it is locked (box K3). If it is not locked
(arrow N3), the device remains in the state of availability indicated in box
K1.” Id. at 3:7–10. However, “[i]f it is locked (arrow Y3), one looks
whether the identification module which is placed inside the device is the
one that is linked to the device (box K4).” Id. at 3:10–13. If the
identification module inside the device “is not the one that is linked to the
device (arrow N4), the device goes to a first blocking state indicated in box
K5,” and “is disconnected from the network.” Id. at 3:14–18.
Alternatively, “[i]f the identification module that is placed inside the
device is linked to the device (arrow Y4), one looks whether the device has
remained in the state of availability for a certain period of time T . . . (box
K10),” as illustrated. Id. at 3:32–36. If not T “(arrow N10), the device
remains in the state of availability indicated in box K1.” Id. at 3:36–37.
However, if the device has remained available for time period T, the device
“passes on to a second blocking state indicated in box K11,” and
“initialize[s] a variable A which represents the number of attempts made at
supplying a deblocking code.” Id. at 3:37–42. “In this second blocking state
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the device only processes incoming calls (box K13) and, possibly, the
outgoing calls that correspond to emergency numbers (box K14).” Id. at
3:44–46.
The ’654 patent discloses that at this stage the user is prompted to
supply a deblocking code, and “[i]f the code . . . is recognized (arrow Y11),
the device goes back to the state of availability indicated in box Kl.” Id. at
3:49–53. On the other hand, if the code is not recognized (arrow N11),
variable A is tested (box K15), and if A is lower than a certain figure, A is
incremented (box K16); otherwise “the test of box K15 causes the total
blocking of the device indicated in box K30” (i.e., a third blocking state).
Id. at 3:53–61. The ’654 patent discloses that “[t]o leave this third blocking
state[,] it is necessary to contact the organization that provides the
identification module.” Id. at 3:61–63.
D. The Challenged Claims
Petitioners challenge claims 10–20 of the ’654 patent. Claims 10 and
17 are independent claims. Claim 10 is illustrative of the challenged claims
and is reproduced below:
10. A method of protecting a mobile radiotelephony device, the
method comprising:
ver[i]fying a user identification module mounted inside
the mobile radiotelephony device is linked to the mobile
radiotelephony device;
detecting a period of inactivity of the mobile
radiotelephony device during a normal operation of the mobile
radiotelephony device, wherein the normal operation includes a
processing of all outgoing calls;
preventing the normal operation of the mobile
radiotelephony device in response to the verification of the
linked user identification module and in response to the detection
of the period of inactivity of the mobile radiotelephony device.
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Ex. 1001, 5:27–40.
E. Instituted Grounds of Unpatentability
We instituted trial based on the following grounds of unpatentability,
which are all the grounds of unpatentability raised in the Petition:
Claims Challenged 35 U.S.C.
§2
References/Basis
10–20 103(a) Nokia,3 Barvesten4
10–20 103(a) Barvesten, Schultz5

Pet. 12–64; Dec. on Inst. 8, 24.
III. LEVEL OF ORDINARY SKILL IN THE ART
To determine whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham v. John Deere Co., 383 U.S. 1,
17 (1966). In assessing 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)
(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,

2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’654
patent issued from an application filed before March 16, 2013, we apply the
pre-AIA version of the statutory basis for unpatentability.
3 Owner’s Manual for the Nokia 9000i Communicator, Issue 1.1 (Ex. 1003).
4 Barvesten, US 5,940,773 (issued Aug. 17, 1999) (Ex. 1006).
5 Charles P. Schultz, Communication Device Inactivity Password Lock, 29
MOTOROLA TECH. DEVS. 14–15 (Nov. 1996) (Ex. 1008).
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962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.
In our Decision on Institution, we adopted Petitioners’ proposed
definition for one having ordinary skill in the art at the time of the invention
of the ’654 patent as one who “would have a bachelor’s degree in electrical
engineering or computer science, and one year of general programming
experience,” and that “[a]dditional experience may substitute for education,
and additional education may substitute for experience.” Dec. on Inst. 14–
15 (quoting Pet. 10–11 (citing Ex. 1010 ¶ 43)).
Patent Owner does not dispute our adoption of Petitioners’ definition,
and does not provide its own definition for the level of ordinary skill at the
time of the invention of the ’654 patent. See PO Resp. 4.
Because Petitioners’ definition of the level of skill in the art is
consistent with the ’654 patent and the asserted prior art, we maintain
Petitioners’ definition for purposes of this Final Written Decision. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d
at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioners’
definition in our analysis below.
IV. CLAIM CONSTRUCTION
Because the Petition was filed after November 13, 2018, we construe
the challenged claims by applying the standard used in federal courts, in
other words, the claim construction standard that would be used to construe
the claim in a civil action under 35 U.S.C. § 282(b), which is articulated in
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See
37 C.F.R. § 42.100(b) (2019). Under Phillips, the words of a claim are
generally given their “ordinary and customary meaning,” which is the
meaning they would have to a person of ordinary skill in the art at the time
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of the invention, in light of the specification and prosecution history. See
Phillips, 415 F.3d at 1312–13, 1315–16.
The parties argue that all claim terms6 should be given their plain and
ordinary meaning. Pet. 11; PO Resp. 6. The parties dispute, however, what
the plain and ordinary meaning is for “ver[i]fying a user identification
module mounted inside the mobile radiotelephony device is linked to the
mobile radiotelephony device” (the “verifying step”), as recited in claim 10.
See, e.g., Pet. Reply 1–5; PO Sur-Reply 1–7. In particular, as we discuss
below, the parties point to separate and contradictory district court
construction orders to support what they argue is the plain and ordinary
meaning of this limitation.
As background, terms of the ’654 patent were construed in four
district court litigations; we identify these claim construction orders in the
table below.
1. Mem. Opin. on Claim Construction, Uniloc 2017 LLC v. Motorola
Mobility, LLC, 1-18-cv-01841 (consolidated with 1-18-cv-01844)
(D. Del. Jan. 17, 2020) (Ex. 2001).
2. Claim Construction Mem. Opin. and Order, Uniloc 2017 LLC v.
Samsung Electronics America, Inc., 2-18-cv- 00508, (Mag. J. Payne)
(E.D. Tex. Jan. 20, 2020) (Ex. 2003), (adopted by J. Gilstrap
(Ex. 2004)).
3. Claim Construction Mem. Opin. and Order, Uniloc 2017 LLC v.
Google LLC, 2-18-cv-00493, (Mag. J. Payne) (E.D. Tex. Jan. 20,
2020) (Ex. 2005), (adopted by J. Gilstrap (Ex. 2006)).

6 Petitioners additionally argue that “deblocking code” (recited in dependent
claims 11, 18, and 19) and “debugging code” (recited in dependent claim 15)
would “benefit from construction to clarify their ordinary meaning.”
Pet. 11. Patent Owner, however, does not dispute the plain and ordinary
meaning of these terms, nor that the cited references teach them. See
generally PO Resp.; PO Sur-Reply. Thus, there is no controversy for us to
resolve as to the plain and ordinary meaning of these terms.
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4. Uniloc 2017 LLC v. HTC Am., Inc., C18-1732 RSM Order Re Claim
Construction (W.D. Wash. Oct. 26, 2020) (Ex. 2007).

In particular, the parties express their dispute over the plain and
ordinary meaning of the verifying step in the context of the related phrase
“linked user identification module.” See, e.g., Pet. Reply 1–5; PO Sur-Reply
1–7. We set forth the district courts’ constructions for this phrase below.
First, the Motorola court construed “linked user identification
module” to mean “an authorized user identification module that permits the
normal operation of the device.” Ex. 2001, 3. In so doing, the Motorola
court reasoned that “[t]here is nothing in the patent that requires that only
one linked user identification module will permit the normal operation of the
device for all embodiments.” Id.
Second, the Samsung court instead construed “linked user
identification module” to mean “a user identification module that is the only
one that permits normal operation of the device.” Ex. 2003, 17. Third, the
Google court construed “linked user identification module” to have the same
meaning as found by the Samsung court — both Samsung and Google were
before Magistrate Judge Payne and Judge Gilstrap. Ex. 2005, 13.
Fourth, the HTC court recognized the different constructions of the
Motorola court and the Google/Samsung courts, and found that “both
constructions have support.” Ex. 2007, 5; see also id. at 5–7 (the HTC court
recounting reasoning from the Motorola and Google/Samsung courts). The
HTC court, however, adopted the Google/Samsung courts’ construction for
“linked user identification module.” Id. at 7.
In our proceeding, Petitioners argue that the Motorola court’s
construction for “linked user identification module” is aligned with the plain
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and ordinary meaning of the verifying limitation. Tr. 9:14–12:7. On the
other hand, Patent Owner argues that the Samsung, Google, and HTC courts’
construction for “linked user identification module” is aligned with the plain
and ordinary meaning of the verifying limitation. Tr. 30:22–31:20, 32:7–
33:20. In other words, the parties dispute whether there is only one linked
user identification module that will permit normal operation of the device.
We also note that the Google court separately construed the verifying step
(independent of the “linked user identification module”) to mean
“confirming that a user identification module mounted inside the mobile
radiotelephony device permits normal operation of the mobile
radiotelephony device.” Ex. 2005, 14 (emphasis omitted). The parties do
not dispute this construction, separate from their dispute over the meaning of
“linked user identification module.”
In addition, Patent Owner separately argues in its Response that the
plain and ordinary meaning of the verifying limitation also requires
“ensuring that the user identification module cannot be used with any other
device.” PO Resp. 7–8 (citing Ex. 1001, Fig. 3, 2:61–3:43); see also id.
(citing Ex. 1001, 4:23–30) (arguing that the ’654 patent teaches limiting use
of the user identification module). We disagree with Patent Owner that the
Specification supports such a requirement. See Ex. 1001, Fig. 3, 2:61–3:43,
4:23–30. Rather, the portions of the Specification that Patent Owner cites
relate to limiting the normal operation of a device, and do not relate to
limiting the operation of the identification module in the manner Patent
Owner argues. See id. In addition, even if the cited portions of the
Specification disclose what Patent Owner alleges, which they do not, Patent
Owner does not provide sufficient justification for importing “such that [the
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user identification module] can only function with that device” into this
limitation. See PO Resp. 7–8; see also Bradium Techs. LLC v. Iancu, 923
F.3d 1032, 1049 (Fed. Cir. 2019) (quoting Wenger Mfg., Inc. v. Coating
Mach. Sys., Inc., 239 F.3d 1225, 1237 (Fed. Cir. 2001) (“[I]t is long-settled
that even though ‘claims must be read in light of the specification of which
they are a part, it is improper to read limitations from the written description
into a claim.’”)).
Having reviewed the parties’ arguments and the district court claim
construction orders, we determine that we do not need to reach this dispute
between the parties. Rather, we agree with Petitioners, as we discuss below,
that the combination of Nokia and Barvesten teaches the verifying limitation
under either parties’ interpretation of its plain and ordinary meaning. See
infra Section VI(C)(2). In other words, the combination of Nokia and
Barvesten teaches the verifying limitation under both the Motorola court’s
construction and the Samsung/Google/HTC courts’ construction. Id. Thus,
we conclude that no express claim construction as to the plain and ordinary
meaning of “linked user identification module” is necessary to determine
whether Petitioners have shown by a preponderance of evidence that the
challenged claims are unpatentable. See, e.g., Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy,
and only to the extent necessary to resolve the controversy.’”).
V. PRINCIPLES OF LAW
A 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
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matter, as a whole, would have been obvious at the time of the invention to a
person having ordinary skill in the art. 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) objective evidence
of non-obviousness, if present.7 See Graham, 383 U.S. at 17–18. When
evaluating a claim for obviousness, we also must “determine whether there
was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
VI. ALLEGED OBVIOUSNESS OVER NOKIA AND BARVESTEN
Petitioners argue that the combination of Nokia and Barvesten renders
claims 10–20 of the ’654 patent obvious under 35 U.S.C. § 103(a). Pet. 12–
44. We have reviewed the parties’ arguments and the evidence of record.
For the reasons that follow, we determine that Petitioners show by a
preponderance of the evidence that one of ordinary skill in the art would
have found claims 10–20 obvious over the combination of Nokia and
Barvesten.

7 Patent Owner does not present arguments or evidence of such objective
evidence of non-obviousness in its Response. See generally PO Resp.
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A. Summary of Nokia
Nokia is the “Owner’s Manual” for Nokia’s 9000i Communicator,
which is “a mobile phone, messaging device, Internet access terminal and
palmtop organizer all in one compact unit.” Ex. 1003, 1, 7. Nokia explains
that the 9000i Communicator has two interfaces, including a phone
interface, and a communicator interface. Id. at 7–8.
For the first start-up, Nokia instructs the user to “[i]nstall the SIM
card and switch on the phone interface before opening the communicator
interface. In most locations, this will configure the settings for your voice
mail and the” Short Message Service Center. Id. at 10. Nokia instructs the
reader to then perform certain other steps for configuring the device’s
settings and completing the start-up procedure. Id. at 11.
Nokia provides a “Security” section that discusses the option of
locking the communicator, which would, inter alia, prevent outgoing calls.
Id. at 81. Nokia also explains that “[i]f autolock is on, the communicator
will lock automatically after [a] defined inactivity period.” Id.
B. Summary of Barvesten
Barvesten relates to improving security (e.g., making safe against
theft) of terminals (e.g., mobile telephones) having an access unit (e.g., a
card) that can be inserted into the device. Ex. 1006, 1:10–28, 2:8–11.
Barvesten teaches one way to improve security is “to protect the terminal
unit as well as the access unit [by] . . . implement[ing] a ‘lock’ in the
terminal unit as well as in the access unit wherethrough a user has to enter a
code to ‘unlock’ the terminal unit and a further code to” get access to the
card. Id. at 1:24–29. Barvesten teaches that “[t]his however is tedious since
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two different codes have to be entered each time upon use which is very
inconvenient.” Id. at 1:29–31.
Barvesten provides a solution such that a user does not have to enter
two different codes upon every activation of a mobile telephone. Ex. 1006,
1:42–50. To that end, Barvesten teaches storing the code (e.g., IMSI-code)
for an access unit (e.g., a SIM-card) “in an EEPROM-storage” in the
telephone. Id. at 3:18–25, 4:26–28. Upon subsequent activation of the
telephone, the telephone and the card inserted therein communicate with
each other. Id. at 4:24–26. In particular, the card’s IMSI-code is compared
to the IMSI-code stored in the telephone. Id. at 4:47–50. If the card’s
IMSI-code corresponds to the IMSI-code stored in the telephone, the
telephone starts up without asking for any further code. Id. at 4:50–53.
C. Challenged Claim 10
1. Protecting a Mobile Radiotelephony Device
Petitioners argue that Nokia teaches “[a] method of protecting a
mobile radiotelephony device,” as recited in claim 10’s preamble. Pet. 16–
18; id. at 16 (citing Ex. 1010 ¶¶ 121–123). More specifically, Petitioners
argue that Nokia teaches “protecting the mobile device by describing the
use of SIM cards as a security measure.” Id. at 17–18 (citing Ex. 1003, 11).
Petitioners argue that Nokia also “describe[s] a locking system as an
additional security measure.” Id. at 18 (citing Ex. 1003, 81, 111).
After reviewing Petitioners’ arguments and evidence, including
Dr. Houh’s Declaration, which are not addressed by Patent Owner (see
generally PO Resp.), we are persuaded that Petitioners demonstrate by a
preponderance of the evidence that the combination of Nokia and Barvesten
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teaches claim 10’s preamble. In light of this finding, we need not, and thus
do not, reach whether claim 10’s preamble is limiting.
2. Verifying a User Identification Module
Claim 10 further recites “ver[i]fying a user identification module
mounted inside the mobile radiotelephony device is linked to the mobile
radiotelephony device.” Ex. 1001, 5:29–31. For the reasons we discuss
below, we agree with Petitioners and we find that Nokia, Barvesten, and the
combination thereof each teach this limitation under the plain and ordinary
meaning of this term, and as construed by the Motorola and
Samsung/Google/HTC courts. Pet. 19–25; Pet. Reply 6–16.
a. Nokia
We agree with Petitioners and find that Nokia teaches mounting a
SIM card (a user identification module) inside Nokia’s communicator
(mobile radiotelephony device). Ex. 1003, 7–8, 11–12, Figs. 2-1–2-4; Pet.
19–20. Nokia also teaches a “SIM change security” feature that “checks
whether the SIM card in the communicator has been changed . . . every time
the phone interface is switched on.” Ex. 1003, 82; Pet. 20. In accordance
with this security feature, “[i]f the SIM card has been changed and the new
SIM card has not previously been used with [the] communicator, the
communicator locks itself until the lock code . . . is correctly entered.” Ex.
1003, 82; Pet. 20. Nokia teaches that “the communicator recognizes five
different SIM cards as the owner’s cards.” Ex. 1003, 82; Pet. 20.
We find that these disclosures from Nokia teach having a user
identification module (a SIM card) mounted (installed) inside Nokia’s
mobile phone, and verifying that the SIM card is linked to the Nokia phone
(checking whether or not the SIM card in the communicator is new and not
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18
previously used with the communicator)). Ex. 1003, 12, 82; Pet. 20. In
other words, Nokia teaches confirming that a user identification module
(SIM card) mounted inside the mobile radiotelephony device
(communicator) permits normal operation of the mobile radiotelephony
device. Id.; Pet. 20; Pet. Reply 6–8. Nokia also teaches that its
communicator can recognize the owner’s SIM cards, but requires a lock
code if a SIM card is new and unused previously. Ex. 1003, 82. In other
words, each of the recognized owner’s SIM cards are “an authorized user
identification module that permits the normal operation of the device,” in
accordance with the Motorola court’s construction. Ex. 1003, 12, 82; Ex.
2001, 3; Pet. 20; Pet. Reply 6–8. Moreover, we credit Dr. Houh’s
testimony that these disclosures from Nokia teach “verifying the user
identification module is linked to the mobile phone in the context of
describing the 9000i Communicator’s ‘SIM change security’ feature.” Ex.
1010 ¶ 127 (citing Ex. 1003, 82); Pet. 19–20; Pet. Reply 7. This testimony
is consistent with Nokia’s teachings discussed above. Compare Ex. 1010
¶ 127, with Ex. 1003, 11–12, 82.
In summary, we find that Nokia teaches this limitation under its plain
and ordinary meaning, and as construed, in relevant part, by the Motorola
court.
Additionally, we agree with Petitioners and find that Nokia also
teaches to one of ordinary skill in the art having a SIM card “that is the only
one that permits normal operation of the device,” in accordance with the
Samsung/Google/HTC courts’ construction. Pet. Reply 13–15. Nokia
teaches that its SIM change security feature allows for an owner to have
five different SIM cards. Ex. 1003, 82. Nokia also teaches, however, that
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the owner needs to enter a lock code when changing to a SIM card that was
not previously used. Id. Thus, without the owner entering the lock code, a
new, unused SIM card is not linked to the communicator and does not
permit normal operation of the device — “the communicator locks itself”
until the owner enters the lock code. Id. And Dr. Houh testifies that one of
ordinary skill in the art would have understood “that notwithstanding
[Nokia’s] statement about five SIM cards, in many cases the owner of the
device will use only a single SIM card with the device,” and “that at least
one linked SIM card would enable the Nokia device to be able to be used to
make . . . calls.” Ex. 1020 ¶ 6; Pet. Reply 14–15. Thus, there is only one
SIM card that permits normal operation of the device for the many
instances where the owner of the device only uses a single SIM card with
the device. Ex. 1003, 82; Ex. 1020 ¶ 6.
In summary, we find that Nokia teaches the verifying step under its
plain and ordinary meaning, and as construed, in relevant part, by the
Samsung/Google/HTC courts.
In addition, we find unavailing Patent Owner’s argument that Nokia is
not enabled. PO. Resp. 8–9. This argument “is misplaced, since even ‘[a]
non-enabling reference may qualify as prior art for the purpose of
determining obviousness,’ . . . and even ‘an inoperative device . . . is prior
art for all that it teaches.’” ABT Sys., LLC v. Emerson Elec. Co., 797 F.3d
1350, 1360 n.2 (Fed. Cir. 2015) (quoting Beckman Instruments, Inc. v. LKB
Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) and Symbol Tech., Inc.
v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991)).
We also find unavailing Patent Owner’s argument that Nokia’s
“security option could be performed anywhere in the network of the
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network operator,” and that “[t]here exists no teaching or suggestion within
the entirety of Nokia that the phone checks whether the SIM card in the
communicator has changed.” PO Resp. 10. According to Patent Owner,
Nokia “only teaches ‘[w]hen active, this security option checks whether the
SIM card in the communicator has been changed.’” Id. (quoting Ex. 1003,
82) (emphasis omitted). We disagree. First, we find that Nokia’s teaching
that the “security option checks whether the SIM card in the communicator
has been changed” at least suggests that it is the communicator (the phone)
that performs the check because the security option is a feature of the
phone, as described in Nokia (i.e., the phone’s Owner’s manual). Ex. 1003,
1, 82 (emphasis added); Pet. Reply 7. Second, additional portions of
Nokia’s “SIM change security” disclosure also teach or suggest that the
phone performs this security option. In particular, Nokia teaches that “[i]f
the SIM card has been changed and the new SIM card has not previously
been used with [the] communicator, the communicator locks itself until the
lock code . . . is correctly entered.” Ex. 1003, 82 (emphasis added). The
communicator performing the locking function itself evidences, or at least
suggests, that the communicator performs the functions of this security
feature. And Nokia teaches that it is “[t]he communicator [that] recognizes
five different SIM cards as the owner’s cards.” Id. (emphasis added). This
too evidences, or at least suggests, that the communicator performs the
functions of this security feature. Accordingly, we find that Nokia teaches
that the communicator performs the SIM change security feature (the
verifying step). See Ex. 1003, 1, 82; see also Bradium, 923 F.3d at 1049
(quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994) (“[A] reference
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must be considered not only for what it expressly teaches, but also for what
it fairly suggests.”).
We also find unavailing Patent Owner’s argument that Nokia fails to
teach that “a user identification module (SIM card) that once linked, is
restricted to use with only the mobile phone (device) that it is initially
linked with.” See, e.g., PO Resp. 8; PO Sur-Reply 7–10. As we discuss
above, the verifying step has no such requirement. See supra Section IV.
Thus, this argument is unavailing as it differs from the requirements of the
claim language. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998) (finding “the name of the game is the claim”); see also In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (stating limitations not appearing in the
claims cannot be relied upon for patentability).
We also find unavailing Patent Owner’s statements that Petitioners, in
their Reply, “newly argue that Nokia also teaches the ‘linked to’ limitations
under the district court construction.” PO Sur-Reply 8 (citing Pet. Reply
14). To the extent that Patent Owner is arguing that Petitioners’ arguments
should not be considered, we disagree. Rather, these arguments are
responsive to arguments made by Patent Owner in its Response, and are
allowed by our Rules. See 37 C.F.R. § 42.23(b); PO Resp. 8; Tr. 30:22–
31:20, 32:7–18 (Patent Owner arguing that it endorsed the Google court’s
construction in its Response and Sur-Reply); Consolidated Trial Practice
Guide November 2019 (“CTPG”), 74. Regardless, the Samsung, Google,
and HTC claim construction orders were entered by the district courts after
the Petition was filed; Patent Owner submitted the Samsung and Google
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orders with its Response, and the HTC order after its Sur-Reply.8 Thus,
these orders could not have been addressed in the Petition.
In summary, we find that Nokia teaches “ver[i]fying a user
identification module mounted inside the mobile radiotelephony device is
linked to the mobile radiotelephony device.”
b. Barvesten
We agree with Petitioners and find that Barvesten teaches mounting a
user identification module (a SIM card) inside a mobile radiotelephony
device (mobile telephone), and that the SIM card has an IMSI-code stored
in its memory. See Ex. 1006, Fig. 1, 3:12–25, 3:66–4:15; Pet 21–24. In
accordance with Barvesten’s invention, “[u]pon starting up or activation of
the telephone 1, the telephone 1 and the SIM-card 2 communicate with each
other,” and “[t]he IMSI-code for the SIM-card(-s) 2 is (are) to be stored in a
memory in the phone, e.g. in an EEPROM storage.” Ex. 1006, 4:24–28;
Pet. 24. Barvesten teaches that subsequently:
Upon activation of the telephone, wherein either a card already
is present in the telephone 1 or a new one has been introduced,
the actual IMSI-code is sent to the telephone 1 . . . via the
microprocessor 4, . . . where it is compared to in the telephone 1
stored IMSI-code(s). If IMSI corresponds to any IMSI-code
being stored in the telephone 1, the telephone is started up
without requiring any further measure to be taken or without
asking for any further code. If on the other hand there is no
correspondence between the codes, the telephone 1 demands a
PIN-code for the terminal unit or the telephone 1.

8 The HTC claim construction order (Ex. 2007) was entered by the district
court after Patent Owner’s Sur-Reply. Patent Owner, with our authorization,
filed the order as an exhibit in this proceeding. Ex. 3001 (authorizing filing
of the order).
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Ex. 1006, 4:45–56; Pet. 24. In other words, upon subsequent activation of
the phone, the phone and the SIM card inserted therein communicate with
each other, and the IMSI-code of the SIM card is compared to the
IMSI-code(s) stored in the phone, and if the SIM card’s IMSI-code
corresponds to an IMSI-code stored in the phone (i.e., if the user
identification module is linked to the mobile device), the phone starts up
without asking for any further code. Ex. 1006, 4:45–56.
We find that these disclosures from Barvesten teach having a user
identification module (a SIM card) mounted (installed) inside its phone, and
verifying that the SIM card is linked to the phone (checking whether the
SIM card’s IMSI corresponds to any IMSI-code stored in the telephone).
Id. In other words, Barvesten teaches confirming that a user identification
module (SIM card) mounted inside the mobile radiotelephony device (e.g.,
telephone 1) has a IMSI-code that corresponds to any IMSI-code stored in
telephone 1, which permits normal operation of the phone (i.e., “the
telephone is started up without requiring any further measure to be taken”).
Id.; Pet. Reply 6–7. In other words, a SIM card having an IMSI-code that
corresponds to an IMSI-code stored on telephone 1 is “an authorized user
identification module that permits the normal operation of the device,” in
accordance with the Motorola court’s construction. Ex. 1006, 4:45–56; Ex.
2001, 3. Moreover, we credit Dr. Houh’s testimony that these disclosures
from Barvesten teach “determining whether a SIM card is linked to a
mobile device based on whether the same data is stored on both the SIM
card and the device.” Ex. 1010 ¶ 128 (citing Ex. 1006, 4:24–56); Pet. 21;
Pet. Reply 12. This testimony is consistent with Barvesten’s teachings
discussed above. Compare Ex. 1010 ¶ 128, with Ex. 1006, 4:24–56.
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In summary, we find that Barvesten teaches this limitation under its
plain and ordinary meaning, and as construed, in relevant part, by the
Motorola court.
Additionally, we agree with Petitioners and find that Barvesten also
teaches to one of ordinary skill in the art having a SIM card “that is the only
one that permits normal operation of the device,” in accordance with the
Samsung/Google/HTC courts’ construction. Pet. Reply 15–16. In other
words, and for the reasons below, we find that Barvesten explicitly teaches
embodiments where there are only one SIM card. In particular, Barvesten
teaches that “[a]ccording to an advantageous embodiment of the
invention[,] it is possible to, apart from storing of the identity of the own
[sic] SIM-card, i.e. its IMSI-code, also store the IMSI-codes of a number of
other SIM-cards which should have a simplified or prioritized access to the
terminal unit or the telephone 1.” Ex. 1006, 4:33–37; Pet. Reply 15–16.
We find this passage teaches that certain embodiments have only one SIM
card because it describes having multiple SIM cards as a possibility in an
advantageous embodiment. Ex. 1006, 4:33–37. We also credit Dr. Houh’s
testimony that one of ordinary skill in the art would have readily understood
that Barvesten discloses the scenario of having a single SIM card linked to a
device. Ex. 1020 ¶ 12 (citing Ex. 1006, 4:33–37); Pet. Reply 15–16. In
addition, Barvesten teaches storing an IMSI-code “for a given number (n)
of access units (SIM).” Ex. 1006, 2:29–30; Pet. Reply 15. We agree with
and credit Dr. Houh’s testimony that one of ordinary skill in the art would
have understood that “the ‘n’ could be one, such that there would be a
single SIM card associated with the device.” Ex. 1006, 2:29–30; Ex. 1020
¶ 11; Pet. Reply 15. Barvesten does not limit “n” to specific values. Lastly,
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Barvesten teaches that “[u]pon starting up or activation of the telephone 1,
the telephone 1 and the SIM-card 2 communicate with each other,” and
“[t]he IMSI-code for the SIM-card(-s) 2 is (are) to be stored in a memory in
the phone, e.g. in an EEPROM storage.” Ex. 1006, 4:24–28 (emphasis
added); Pet. 23–24. Thus, Barvesten explicitly also accounts for
embodiments having just one SIM card by its phrasing of “SIM-card(-s) 2
is (are),” which is expressed in the singular, as well as the plural. Ex. 1006,
4:24–28.
In summary, we find that Barvesten teaches this limitation under its
plain and ordinary meaning, and as construed, in relevant part, by the
Samsung/Google/HTC courts.
In addition, we find unavailing Patent Owner’s argument that
Dr. Houh’s testimony does not use “the couplet ‘only one,’” but instead at
most provides that “Barvesten disclose[s] the scenario where a single SIM
card is linked to a particular device.” PO Sur-Reply 14 (quoting Ex. 1020
¶ 11). As we discuss above, Barvesten teaches embodiments having a single
SIM card. We see no discernible difference between saying an embodiment
has a single SIM card versus an embodiment has only one SIM card. Nor
does Patent Owner cite any expert testimony that one of ordinary skill in the
art would see any discernible difference. See generally PO Sur-Reply.
Likewise, we find unavailing Patent Owner’s argument that Dr. Houh
repeatedly references “SIM cards in the plural.” PO Sur-Reply 15 (citing
Ex. 1020 ¶ 10). The fact that Barvesten also teaches embodiments that have
multiple SIM cards does not negate Barvesten’s teachings of embodiments
having only one SIM card. Nor does it negate Dr. Houh’s testimony that
“Barvesten . . . disclose[s] the scenario where a single SIM card is linked to
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a particular device.” Ex. 1020 ¶ 11. Similarly, we find unavailing Patent
Owner’s argument that the phrase “for a given number (n) of access units
(SIM)” expresses “‘access units’ in the plural,” which “reflects the teaching
that Barvesten is purposefully and expressly designed to enable a given
mobile terminal to accept multiple SIM cards for activation.” PO Sur-Reply
15 (quoting Ex. 1006, 2:29–30, citing Ex. 1006, 4:45–47). Rather, this
language covers both embodiments (i.e., having a single card or having
multiple cards). Ex. 1006, 2:29–30. Again, however, Barvesten teaches
embodiments having only one SIM card, regardless of Barvesten’s other
teachings of other embodiments having multiple SIM cards. See Ex. 1006,
2:29–30, 4:24–28, 4:33–37; Ex. 1020 ¶¶ 11–12.
We also find unavailing Patent Owner’s statements that Dr. Houh’s
Second Declaration and Petitioners’ arguments in their Reply addressing the
district court claim construction orders are new or untimely. As above, these
arguments are responsive to arguments made by Patent Owner in its
Response, and are allowed by our Rules. See 37 C.F.R. § 42.23(b); PO
Resp. 8; Tr. 30:22–31:20, 32:7–18; CTPG 73 (“A party also may submit
rebuttal evidence in support of its reply.”) (citation omitted). And again, the
claim construction orders were entered by the district courts after the
Petition was filed, which thus could not have addressed the orders.
Accordingly, we find it appropriate to consider Petitioners’ arguments.
Lastly,9 we find unavailing Patent Owner’s argument that “Barvesten
does not teach or suggest a user identification module (SIM card) that once

9 We need not, and thus do not, reach Patent Owner’s arguments (PO Sur-
Reply 11–12) about Petitioners improperly relying on inherency (Pet. Reply
16) because our Decision does not rely on these arguments from Petitioners.
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linked, is restricted to use with only the mobile phone (device) that it is
initially linked with.” PO Resp. 11. Again, this claim limitation has no
such requirement. See supra Section IV. Thus, this argument is unavailing
as it differs from the requirements of the claim language. See Hiniker, 150
F.3d at 1369; In re Self, 671 F.2d at 1348.
In summary, we find that Barvesten teaches “ver[i]fying a user
identification module mounted inside the mobile radiotelephony device is
linked to the mobile radiotelephony device.”
c. Nokia and Barvesten
Petitioners rely on Barvesten’s teachings to address potential
deficiencies in Nokia. Pet. 21–25; Pet. Reply 10–18. More specifically,
Petitioners alternatively argue that Barvesten teaches the verifying step,
including teaching a device that compares data stored in the identification
module with data stored in the device for verifying that they are linked, and
having only one identification module that permits normal operation of the
device. Pet. 21–25; Pet. Reply 10–18.
In addition, Petitioners argue that one of ordinary skill in the art
would have been motivated to combine the teachings of “Nokia . . . with
Barvesten, and would have had a reasonable expectation of success in
making the combination to implement a device that integrated the mobile
device and security measures of Barvesten with the device inactivity lock
security measure of Nokia.” Pet. 14 (citing Ex. 1010 ¶¶ 55–58). To that
end, Petitioners argue that Nokia “and Barvesten [are] expressly aimed at
improving security for mobile telephone devices,” and one of ordinary skill
in the art, reading Nokia, would have understood “that implementing the
teachings of Barvesten into Nokia would have improved the security taught
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by Nokia.” Id. at 15 (citing Ex. 1010 ¶¶ 56–57). Petitioners add that one of
ordinary skill in the art “would have had no issues integrating the Barvesten
and Nokia device security technologies into the same mobile device, and
doing so would have predictably resulted in a mobile device with both the
device inactivity locking of Nokia and the single-code verification of
Barvesten.” Id. at 15–16 (citing Ex. 1010 ¶ 55).
We are persuaded that Petitioners provide “articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
Kahn, 441 F.3d at 988 (citations omitted), cited with approval in KSR, 550
U.S. at 418. In other words, we agree with Petitioners that one of ordinary
skill in the art would have found it obvious to combine Nokia’s and
Barvesten’s teachings.
We find unavailing Patent Owner’s argument that “Barvesten cannot
be reasonably combined with Nokia because it was well known to any
[person of ordinary skill in the art] at the time of the ’654 Patent that a
network operator subsidized use of the phone in return for profits associated
with providing its communication services.” PO. Resp. 12. Patent Owner
continues that “[w]ere the SIM card checking technique of Barvesten to be
implemented in the Communicator described in Nokia, the network operator
could not monitor or control how the Communicator is used.” Id. Patent
Owner similarly argues that “Barvesten effectively teaches away from a SIM
card checking technique used by Barvesten because such a system would not
allow a network operator to control when and how its subsidized phones are
used.” Id. We are not persuaded by these arguments, including because the
premise of Patent Owner’s arguments (i.e., a subsidizing network operator
could not monitor or control how the device is used) is unsupported by
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evidence, such as expert testimony, and thus we afford it little, if any weight.
See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that
attorney arguments that are unsupported by factual evidence are entitled to
little probative value). Moreover, we credit Dr. Houh’s testimony “that the
device subsidy applies to the device, not the SIM card that represents the
account for a phone line,” and thus, “Patent Owner’s reasoning is flawed.”
Ex. 1020 ¶ 9; Pet. Reply 18. Furthermore, Patent Owner does not identify
any specific teaching in Barvesten or Nokia that supports its argument that
they teach away from the claimed invention — a reference teaches away if it
criticizes, discredits, or otherwise discourages modifying the reference to
arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
3. Detecting a Period of Inactivity
Petitioners argue that Nokia teaches “detecting a period of inactivity
of the mobile radiotelephony device during a normal operation of the
mobile radiotelephony device, wherein the normal operation includes a
processing of all outgoing calls,” as recited in claim 10. Pet. 25–26. More
specifically, Petitioners argue that Nokia “teaches a mobile telephone that
becomes locked; i.e., normal operation (such as ‘making and receiving
calls’ . . .) is prevented, upon expiration of a predefined period of
inactivity.” Id. (citing Ex. 1003, 81). Moreover, Petitioners argue that
Nokia teaches a “configuration menu to set a 5 minute defined inactivity
period (Autolock).” Id. at 26 (citing Ex. 1003, 82, Fig. 10-2; Ex. 1010
¶ 130).
After reviewing Petitioners’ arguments and evidence, including
Dr. Houh’s Declaration, which are not addressed by Patent Owner (see
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generally PO Resp.), we are persuaded that Petitioners demonstrate by a
preponderance of the evidence that the combination of Nokia and Barvesten
teaches “detecting a period of inactivity of the mobile radiotelephony
device during a normal operation of the mobile radiotelephony device,
wherein the normal operation includes a processing of all outgoing calls.”
4. Preventing the Normal Operation of the Device
Petitioners argue that Nokia teaches “preventing the normal operation
of the mobile radiotelephony device in response to the verification of the
linked user identification module and in response to the detection of the
period of inactivity of the mobile radiotelephony device,” as recited in
claim 10. Pet. 27–29. More specifically, Petitioners argue that Nokia
combined with Barvesten teaches “that normal operation of the mobile
device is prevented in response to verifying the linked user identification
module . . ., and upon expiration of the period of inactivity.” Id. at 27
(citing Ex. 1010 ¶¶ 131–134; Pet. 19–26). Furthermore, Petitioners argue
that Nokia teaches “preventing normal operation of the device upon
determining that an unlinked user identification module is installed in the
device” via Nokia’s teaching that “the device becomes locked if it is
determined that a new SIM card is installed in the device, and remains
locked until a proper lock code is supplied.” Id. at 28–29 (quoting Ex.
1003, 82). Nokia “further teaches that upon verification of the SIM card
(either because it is linked or by entry of the device lock code), normal
operation can ensue, but will then be prevented in response to a period of
inactivity,” according to Petitioners. Id. (citing Pet. 21–25).
After reviewing Petitioners’ arguments and evidence, including
Dr. Houh’s Declaration, which are not addressed by Patent Owner (see
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generally PO Resp.), we are persuaded that Petitioners demonstrate by a
preponderance of the evidence that the combination of Nokia and Barvesten
teaches “preventing the normal operation of the mobile radiotelephony
device in response to the verification of the linked user identification
module and in response to the detection of the period of inactivity of the
mobile radiotelephony device.”
5. Summary
In summary, based on the arguments and evidence of record, we find
that Petitioners demonstrate by a preponderance of the evidence that claim
10 is unpatentable under 35 U.S.C. § 103(a) over the combination of Nokia
and Barvesten.
D. Challenged Claims 11–20
Petitioners argue, with specific cites to Nokia and Barvesten, as well
as Dr. Houh’s testimony, that the combination of Nokia and Barvesten
teaches the limitations recited in claims 11–20. Pet. 29–44. Patent Owner’s
Response does not separately address Petitioners’ arguments directed to
these claims. PO Resp. 7–13 (grouping independent claims 10 and 1710
together in arguing that Petitioners fail to show unpatentability of the
independent claims), 14 (arguing that “[t]he deficiencies of the Petition . . .
concerning the challenged independent claims also apply to the analysis of
the challenged dependent claims”); PO Sur-Reply 7, 16–17 (same).

10 To the extent that any of Patent Owner’s arguments in its Sur-Reply (PO
Sur-Reply 10–13) focus on claim 17’s “computer readable code” or
“computer readable medium” separately from Patent Owner’s arguments for
claim 10 regarding where the verifying step occurs (which Patent Owner
raised in its Response, PO Resp. 10–11), they are new arguments that should
have been raised in Patent Owner’s Response, if at all. See CTPG 74 (citing
37 C.F.R. § 42.23). Thus, we do not consider claim 17 separately.
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Based on the evidence and arguments of record, we find that
Petitioners demonstrate by a preponderance of the evidence that claims 11–
20 would have been obvious to one of ordinary skill in the art over the
combined teachings of Nokia and Barvesten.
VII. ALLEGED OBVIOUSNESS OVER BARVESTEN AND SCHULTZ
Petitioners argue that claims 10–20 are unpatentable over the
combination of Barvesten and Schultz. Pet. 44–64. Thus, this ground of
unpatentability challenges the same claims we already determine are
unpatentable over the combination of Nokia and Barvesten. See supra
Section VI(C)–(D) (determining Petitioner shows that claims 10–20 are
unpatentable). Under the circumstances of this case, analyzing an additional
ground challenging the same claims, which we have determined to be
unpatentable, would not be an efficient use of the Board’s time and
resources. See Bos. Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984,
990 (Fed. Cir. 2020) (“We agree that the Board need not address issues that
are not necessary to the resolution of the proceeding.”).
Accordingly, we do not reach this remaining obviousness ground.
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)
(determining once a dispositive issue is decided, there is no need to decide
other issues).
VIII. CONSTITUTIONAL CHALLENGE
Patent Owner argues that Administrative Patent Judges are
unconstitutionally appointed principal officers, and that the decision in
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Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1337 (Fed. Cir. 2019),
cert. granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206
(Oct. 13, 2020), was impermissible and inadequate to cure the Constitutional
violation. PO Resp. 14–17. We note that Patent Owner’s constitutional
challenge was addressed by the Federal Circuit’s Arthrex decision. Arthrex,
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) (en banc) (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.
IX. CONCLUSION11
Based on the full record, we determine that Petitioners show by a
preponderance of the evidence that claims 10–20 of the ’654 patent are
unpatentable under 35 U.S.C. § 103(a) in view of the combination of Nokia
and Barvesten.

11 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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Claim(s) 35 U.S.C. § Reference(s)
/Basis
Claims Shown
Unpatentable
Claims Not
Shown
Unpatentable
10–20 103(a) Nokia,
Barvesten
10–20
10–20 103(a) Barvesten,
Schultz12

Overall
Outcome
10–20
X. ORDER
In consideration of the foregoing, it is hereby
ORDERED that, pursuant to 35 U.S.C. § 314(a), Petitioners have
shown by a preponderance of the evidence that claims 10–20 of the ’654
patent are unpatentable; and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.

12 As we explain above, because we determine that claims 10–20 are
unpatentable over Nokia and Barvesten, we decline to address this ground.
IPR2019-01471
Patent 6,836,654 B2
35
PETITIONER:

Todd M. Siegel
Andrew M. Mason
John M. Lunsford
Joseph T. Jakubek
KLARQUIST SPARKMAN, LLP
todd.siegel@klarquist.com
andrew.mason@klarquist.com
john.lunsford@klarquist.com
joseph.jakubek@klarquist.com

Tiffany C. Miller
James M. Heintz
DLA PIPER LLP (US)
Apple-Uniloc19-DLA@us.dlapiper.com

PATENT OWNER:

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