[00:00:00] Speaker 01: The case is Unilock 2017 versus Google, 2022 to 1031. [00:00:12] Speaker 01: Mr. Jackson, when you are ready. [00:00:16] Speaker 02: Thank you, Your Honors. [00:00:16] Speaker 02: I may please the court. [00:00:18] Speaker 02: I apologize for the delay. [00:00:20] Speaker 02: I was getting my laptop open and ready to refer to the appendix if necessary. [00:00:25] Speaker 02: Your Honor, Uniloc respectfully requests a reversal of the PTAB's order in this case for three reasons. [00:00:34] Speaker 02: The first reason hinges on the claim language relevant to this appeal. [00:00:40] Speaker 02: And this is the middle paragraph that begins with transmitting by the stationary terminal. [00:00:45] Speaker 02: And if I could, I'm going to read sort of an ellipsed version of that paragraph. [00:00:51] Speaker 02: It says, transmitting by the stationary terminal [00:00:54] Speaker 02: an invitation message, ellipses, to the proximate mobile device whereupon the proximate mobile device establishes communication with the remote device. [00:01:05] Speaker 02: So the sending of the invitation message has to prompt the proximate mobile device to establish communication with the remote device. [00:01:14] Speaker 02: In Connolly, it works exactly the opposite. [00:01:18] Speaker 02: You have to have the established communication between the two mobile phones before [00:01:24] Speaker 02: what the PTAB identified as the invitation message can be sent to the local mobile phone. [00:01:29] Speaker 02: So that's reason number one. [00:01:30] Speaker 02: Reason number two, and Google has tacitly admitted this, Connolly does not disclose that the stationary terminal sends the remote device identifier. [00:01:45] Speaker 02: Now, they caveat that by saying it doesn't explicitly say that. [00:01:48] Speaker 02: But then we get into an argument, well, is it implicit? [00:01:51] Speaker 02: Is it knowledge of those of skill in the art? [00:01:53] Speaker 02: And the bottom line is that the PTAB only ruled on the ground based solely on Connolly, no other references. [00:02:02] Speaker 02: And Connolly does not disclose that feature. [00:02:06] Speaker 02: The third reason is that, frankly, the PTAB modified the petition by relying on the, I believe it's the Guthrie reference. [00:02:15] Speaker 02: relying on the Guthrie reference to disclose the sending of the remote device identifier. [00:02:22] Speaker 02: The remote device identifier is a claim element, and when you rely on a secondary reference to disclose that claim element, that's modifying the petition. [00:02:32] Speaker 02: The portion of the petition that the PTAB ruled on did not rely on [00:02:40] Speaker 02: rely on Connolly for disclosure of that claim element. [00:02:43] Speaker 02: So the failure there is supplementing the record, whether it be solely based on Guthrie or Guthrie in conjunction with expert testimony. [00:02:53] Speaker 02: Either way, both of those were used to supplement the Connolly reference to show that that claim element was present in the prior art. [00:03:03] Speaker 03: You mentioned the record. [00:03:04] Speaker 03: I want to make sure I understand the record. [00:03:06] Speaker 03: As I understand it, Google presented expert [00:03:10] Speaker 03: testimony and an annotated version of Connolly reference mapping it directly onto the claims at issue. [00:03:18] Speaker 03: You presented no testimony, no expert support and didn't try to depose their expert. [00:03:25] Speaker 03: The board looked at all this and said there's persuasive evidence on their side and we review for substantial evidence. [00:03:33] Speaker 03: Do I have that all correct? [00:03:34] Speaker 02: Yes, you're correct that Unilot did not present its own expert testimony and my understanding is that the deposition of their expert was not taken. [00:03:45] Speaker 02: I wasn't involved at the time. [00:03:47] Speaker 03: Fair enough. [00:03:49] Speaker 03: How could we say there's not substantial evidence under this circumstance to support what the board found? [00:03:55] Speaker 02: Because our arguments are based [00:03:57] Speaker 02: on Connolly itself, which of course is evidence, on Guthrie itself, which of course is evidence as well. [00:04:02] Speaker 02: So when you read those references, you see these defects here. [00:04:08] Speaker 03: Well, maybe when I read the references, but a person of skill in the art read the references and presented that reading to the board, and the board considered it and the contrary arguments and told us what they told us. [00:04:20] Speaker 02: Well, with all due respect, Your Honor, I think the expert gave his interpretation. [00:04:25] Speaker 02: of those references, which again, the references need to be, you know, the basis of the grounds of rejection in, as your honor knows, in an IPR. [00:04:34] Speaker 02: And so they need to disclose the elements and not be supplemented or interpreted through expert testimony, which honestly fills the gap in, in, uh, in Connolly by interpreting, uh, Guthrie and frankly, I think, um, even extending Guthrie a little bit. [00:04:56] Speaker 02: So I also want to go back and emphasize my point number one, because I really don't think there's much of a dispute. [00:05:05] Speaker 02: Google didn't squarely address the sequencing issue in the claims. [00:05:11] Speaker 02: And so as a practitioner that's seen lots of these kind of briefs, I can see that that's a sensitive area for them. [00:05:17] Speaker 02: I think they recognize that's a problem. [00:05:19] Speaker 02: And the sequence, the timing about what has to happen first [00:05:24] Speaker 02: is key because it's right in the claim element. [00:05:26] Speaker 02: That sequence is recited in the claims. [00:05:29] Speaker 03: If I'm understanding correctly, is this your argument based on the whereupon provision? [00:05:35] Speaker 03: Yes. [00:05:35] Speaker 03: If Google didn't focus on it, it may be because I'm not sure I even saw that argument in your opening brief. [00:05:41] Speaker 03: Can you help me with where that was? [00:05:44] Speaker 02: Your Honor, I may need to do that on rebuttal if I could. [00:05:49] Speaker 03: That's fine. [00:05:49] Speaker 03: But I guess that I thought that you [00:05:53] Speaker 03: You all were clear in the most part of the briefing that the only dispute was whether or not the stationary terminal sent the remote phone's address to the proximate phone, and that that was the only dispute. [00:06:08] Speaker 03: But now here today, your first argument is really not that. [00:06:12] Speaker 03: It's something about the whereupon and the relative timing. [00:06:15] Speaker 02: I think certainly Google did characterize the dispute as being that lone issue. [00:06:21] Speaker 02: And I think because they felt stronger about that. [00:06:24] Speaker 02: In our briefs, there are places where we, I'm not sure I would have phrased it this way, Your Honor, but we did say that we agree that there's one issue. [00:06:32] Speaker 02: But the issue that was articulated, and I'm thinking about a section in the reply brief that I'll have to locate for Your Honor. [00:06:40] Speaker 02: is more elaborate than just the sending of the remote device identifier? [00:06:45] Speaker 03: Well, I hope you'll be able to find that in your reply brief, because what I see at pages seven to eight of the gray reply brief is the only dispute is whether Connelly teaches or suggests that Terminal 140 provides the SMS address to local phone 110 as the claim requires transmitting by the stationary terminal, dot, dot, dot, a remote device identifier. [00:07:09] Speaker 03: to the proximate mobile device, unless I'm completely missing this, that all has to do with a portion of the claim limitation that precedes the whereupon phrase. [00:07:21] Speaker 03: Isn't that correct? [00:07:22] Speaker 02: That is correct, Your Honor. [00:07:24] Speaker 02: And again, I can't explain why that sentence is written that way. [00:07:28] Speaker 02: But on page nine, there begins section D, which goes into the whereupon limitation, which is this timing sequence. [00:07:38] Speaker 02: and deals with that and certainly in the reply and talks about it. [00:07:44] Speaker 03: I guess that was sort of where I was getting is I see it at page 9 and thereafter in the gray brief. [00:07:51] Speaker 03: Why isn't that too late to make that argument? [00:07:54] Speaker 02: Your Honor, I believe it is in the opening brief as well and I can certainly look for that citation while Unalox Council is addressing the court. [00:08:06] Speaker 02: And if I could, unless there are other questions, I think I'd like to reserve the remainder of my time for rebuttal. [00:08:11] Speaker 01: We will do that for you, Mr. Jackson. [00:08:13] Speaker 01: Thank you, Your Honor. [00:08:16] Speaker 01: Ms. [00:08:16] Speaker 01: Kessel. [00:08:17] Speaker 00: May it please the court? [00:08:19] Speaker 00: I'll actually start briefly with what Uniloc identifies as the disputed step. [00:08:24] Speaker 00: And if you look at page seven of the woo brief, you'll see the only part that is bolded, what Uniloc contends as the disputed step, [00:08:32] Speaker 00: is transmitting by the stationary terminal an invitation message comprising and then a remote device identifier. [00:08:40] Speaker 00: That was the focus and context for the briefing on appeal. [00:08:44] Speaker 00: And to that end, the question is really whether substantial evidence supports the board's determination that a computer sending an invitation text message would include something to identify the message's recipient. [00:08:58] Speaker 00: In other words, tell the message where it has to go. [00:09:01] Speaker 00: Google again submitted expert testimony in a corroborating textbook, showing that a skilled artisan would have understood that the computer would include such an identifier in its message. [00:09:13] Speaker 00: In fact, the evidence shows that including this identifier, describing where the message is going, who's receiving the message, is the minimum amount of information that would be included. [00:09:25] Speaker 00: The board credited Google's evidence to find Connelly taught or suggested the transmitting limitation, and that's enough to affirm the board's unpatentability determination. [00:09:35] Speaker 00: Uniloc has raised a number of other issues on appeal, but none changes the fact that Connolly discloses a computer sending a text message, the invitation message, to set up a secondary channel, and the skilled artisan would have understood that that message would include a remote device identifier, and Google respectfully requests this court affirm. [00:09:58] Speaker 00: To briefly address Uniloc's reframing of the issue, they are now suggesting that Connelly's first phone, not its computer, is what's sending the invitation message. [00:10:08] Speaker 00: They have raised and suggested that if the computer was the device that was sending the invitation message, that's somehow changing how Connelly operates. [00:10:20] Speaker 00: that Connelly, in fact, teaches away from that specific operation because it has to wait for the phones to start talking. [00:10:27] Speaker 00: But all of that is ignoring the express disclosure of Connelly. [00:10:30] Speaker 00: And if you look through Connelly and walk through Connelly, you'll see that's the case. [00:10:34] Speaker 00: And starting in paragraph 23, which is on appendix page 452, you'll see that Connelly explains the first device, which is the computer, sends a small amount of information through the primary channel to get the process started. [00:10:49] Speaker 00: If you look on the next page, Appendix 453, paragraph 26 in particular, you'll see that Conley says that in the SMS embodiment, what we're talking about here, the small amount of information would be a text message that's sent using the Bluetooth serial port profile. [00:11:05] Speaker 00: And then if you turn back to the previous page, appendix 452, and paragraph 22 in particular, you'll see that Connelly explains when the computer sends the small amount of information, it sends the message to first phone 110, which then relays it across the primary channel to the recipient device. [00:11:24] Speaker 00: We discussed this in our petition mapping, Appendix 65-72. [00:11:27] Speaker 00: It's supported by our expert's declaration, starting at Appendix 1298. [00:11:32] Speaker 00: There's no change to how Connolly operates. [00:11:35] Speaker 00: Connolly is not teaching away. [00:11:38] Speaker 00: Connolly expressly says that the computer sends the invitation text message. [00:11:42] Speaker 00: It does so to set up a second channel of communication directly between [00:11:46] Speaker 00: the computer and the second device. [00:11:48] Speaker 00: Again, the only question that was before the board was whether the computer's invitation text message would identify where the message is going. [00:11:57] Speaker 00: And as the board found, citing Google's unrebutted expert testimony and the corroborating textbook, a skilled artisan would have understood so much. [00:12:05] Speaker 00: That finding is supported by substantial evidence. [00:12:08] Speaker 00: And again, we respectfully request this court affirm. [00:12:11] Speaker 03: Unless... Do you think the whereupon argument comes too late? [00:12:14] Speaker 00: Yes, Your Honor. [00:12:15] Speaker 00: It's not raised in the blue brief anywhere, as I noted before, but also for the same reasons we just talked about and the framing of unilaterally exposition that the phone is what's sending the invitation message. [00:12:29] Speaker 00: That's ignoring the express disclosure of Connolly. [00:12:31] Speaker 00: It's just incorrect on the merits as well. [00:12:35] Speaker 00: Unless the court has any further questions, we'll rest on our briefing. [00:12:38] Speaker 01: Thank you, counsel. [00:12:41] Speaker 01: Mr. Jackson has some rebuttal time. [00:12:43] Speaker 02: Yes, Your Honor. [00:12:44] Speaker 02: Thank you, Your Honor. [00:12:45] Speaker 02: And I'd like to go back and address Judge Stark's question about where in the opening brief this argument about the sequencing was addressed. [00:12:53] Speaker 02: And it's quickly reading the brief. [00:12:56] Speaker 02: The best location I found was on page 28 over to page 29 in the opening brief. [00:13:03] Speaker 02: And I will summarize a little bit of what's said here. [00:13:06] Speaker 02: But it says in the, this is the, [00:13:11] Speaker 02: bottom paragraph, the paragraph that bridges pages 28 and 29. [00:13:14] Speaker 02: It says Connolly repeatedly emphasizes that Terminal 140, that's the laptop, sends its IP address to Phone 110 only after, and this is italicized, after Phone 10 is already in communication, that's also italicized, with Phone 112 over the phone and or SMS channel. [00:13:31] Speaker 02: And then there's two quotations from Connolly that are provided there in the parentheticals. [00:13:41] Speaker 02: or three, actually. [00:13:42] Speaker 02: And then this says all that fundamentally changes if Connelly is modified by Guthrie to allow the local computing device, the laptop, to establish communication, that's the claim language, and send the SMS. [00:13:54] Speaker 02: So this, at least, I didn't read on further, but you can see this goes into how then Connelly would be altered if you change the sequence. [00:14:06] Speaker 02: If you change the sequence of who sends what messages first, [00:14:10] Speaker 02: Now when you get over to figures four and five, this looping to determine whether the channel has been established, which is what Connolly requires, gets eliminated from the embodiments here that are shown in these flow charts. [00:14:23] Speaker 03: But you agree there's no reference to the whereupon provision of the Linn claims at pages 28 and 29? [00:14:31] Speaker 02: The word whereupon, Your Honor? [00:14:34] Speaker 03: Well, it's the whole phrase from the claim. [00:14:36] Speaker 02: Right. [00:14:37] Speaker 02: The concept is certainly here, I submit, Your Honor. [00:14:40] Speaker 02: And again, take the first sentence of that paragraph where it's talking about the timing, the sequencing. [00:14:48] Speaker 02: And then the last sentence, which ends with allowing the local computing device to establish the communication as in the SMS. [00:14:57] Speaker 02: Establish the communication is the claim language. [00:15:00] Speaker 02: It says, whereupon the proximate mobile device establishes communication with the remote device. [00:15:06] Speaker 02: not quoted, I grant you that it's certainly not quoted here in this paragraph, but the concepts come right out of this whereupon clause in the claim language. [00:15:15] Speaker 02: And they've addressed it somewhat in their response brief. [00:15:21] Speaker 02: Again, I think they somewhat tried to tiptoe around the issue because I think they recognized it was a weakness, but it isn't something that's new that was pulled out only in the reply brief. [00:15:35] Speaker 02: I also wanted to emphasize again that I think relying on the Guthrie reference, as well as the expert testimony, to fill that hole in – it doesn't even fill this timing hole, by the way. [00:15:50] Speaker 02: This sequencing is not addressed by Guthrie reference. [00:15:56] Speaker 02: It would, if you in fact merge those two together, require, as we argued here in the opening brief, that the principle of operation of [00:16:03] Speaker 02: Connolly would have to be changed. [00:16:06] Speaker 02: It wouldn't be allowed to sit there waiting for the communication to be established first. [00:16:10] Speaker 02: It would somehow have to initiate and cause the communication to be established from the beginning as opposed to waiting to see if it's there. [00:16:18] Speaker 02: And so I think that the PTAD by relying on Guthrie certainly [00:16:22] Speaker 02: altered the petition, and in doing so, that's legal error. [00:16:27] Speaker 02: And I know that Google has asked for a remand if this court were to agree with Uniloc in this appeal, and I'd point out that the second ground that the PTAB did not rule on, which relied on an RFC reference, one of the Request for Comment papers, that document was not relied upon to address this sequencing issue either. [00:16:52] Speaker 02: even remand to address that alternative ground would be futile because it doesn't address the sequencing issue. [00:16:59] Speaker 02: The RFC was used to show a specific set of data that could be sent over a communication channel and put more concretely in front of the PTAB this idea that data such as a mobile device identifier could be potentially sent in that article. [00:17:17] Speaker 02: Again, Connolly doesn't disclose that. [00:17:19] Speaker 02: The secondary reference is May. [00:17:22] Speaker 02: But they were not part of the grounds upon which the PTAB issued its ruling. [00:17:28] Speaker 02: And unless there are other questions, Your Honor, I'll yield the rest of my time. [00:17:31] Speaker 01: Thank you, Counsel. [00:17:32] Speaker 01: The case is submitted.