Unified Patents Inc v. Blue Sky Networks LLC

1. Case Identification

• Case #: IPR2018-00069
• Patent #: 8,265,691
• Filed: October 13, 2017
• Petitioner(s): Unified Patents Inc.
• Patent Owner(s): Blue Sky Networks, LLC
• Challenged Claims: 1-4, 7-14, and 17-20

2. Patent Overview

• Title: Enhanced Wireless Handset, Including Direct Handset-to-Handset Communication Mode
• Brief Description: The ’691 patent discloses methods and apparatuses for short-range wireless communication. The core technology enables a wireless handset to maintain an existing communication link on a first channel while simultaneously sending an inquiry or "find" message on a second channel to discover other nearby devices.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 4, 7-12, 14, and 17-20 are obvious over Haartsen [’297](https://ai-lab.exparte.com/case/ptab/IPR2018-00069/doc/1010) in view of [Dent](https://ai-lab.exparte.com/case/ptab/IPR2018-00069/doc/1011) and Haartsen [’928](https://ai-lab.exparte.com/case/ptab/IPR2018-00069/doc/1012).

• Prior Art Relied Upon: Haartsen ’297 (Patent 6,026,297), Dent (Patent 5,896,375), and Haartsen ’928 (Patent 6,590,928).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination teaches all limitations of the independent claims. Haartsen ’297 discloses a primary wireless unit (unit X) that can contemporaneously participate in multiple short-range networks ("piconets"). This unit can communicate with a master device in a first piconet (the first "object") while establishing a new, second piconet to communicate with other devices (the other "objects"). To do this, Haartsen ’297 teaches placing the first communication link in a "hold" mode, which Petitioner contended satisfies the "stays in communication" limitation. Haartsen ’928, which is incorporated by reference into Haartsen ’297, teaches the specific "inquiry procedure" for discovering nearby units. Dent, also incorporated by reference, provides the necessary air-interface details, such as a transceiver for sending and receiving messages.
  • Motivation to Combine: Petitioner asserted multiple motivations. First, Haartsen ’297 expressly incorporates both Haartsen ’928 and Dent by reference, providing a direct suggestion to combine their teachings. A POSITA would combine Haartsen ’928's inquiry procedure with Haartsen ’297's multi-piconet system to provide the useful, predictable function of discovering new devices while maintaining an existing connection. Further, a POSITA would implement the system using two transceivers, as taught by Haartsen ’928, to achieve higher throughput and obviate the need for a "hold" mode, thereby enabling continuous, undisrupted communication on both channels.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying known techniques (e.g., an inquiry procedure, multi-channel communication) to a known system type (short-range piconets) to achieve predictable results and enhanced utility.

Ground 2: Claims 3 and 13 are obvious over Haartsen ’297, Dent, and Haartsen ’928, in further view of [Cushman](https://ai-lab.exparte.com/case/ptab/IPR2018-00069/doc/1013).

• Prior Art Relied Upon: Haartsen ’297 (Patent 6,026,297), Dent (Patent 5,896,375), Haartsen ’928 (Patent 6,590,928), and Cushman (Patent 6,125,287).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination in Ground 1 to address dependent claims 3 and 13, which add limitations requiring the generation and display of a list of discovered devices on a graphical user interface (GUI). Petitioner argued that while the primary combination teaches discovering devices and collecting responses, Cushman teaches the missing GUI element. Cushman discloses a wireless telephone with an improved user interface, including an LCD screen and memory, that allows a user to browse a directory list using graphical elements to initiate communications.
  • Motivation to Combine: A POSITA would combine Cushman's teachings with the primary combination for simple, common-sense reasons. After using the inquiry procedure of Haartsen ’928 to discover nearby devices, it would be a logical and necessary step to display that information to the user. A POSITA would have found it obvious to use a well-known GUI with an LCD, as taught by Cushman, to present the list of discovered devices, allowing the user to view and select devices for communication. This combination would yield the predictable result of a more user-friendly and functional device.
  • Expectation of Success: The integration of a standard GUI to display a generated list of network devices was a routine design choice at the time, ensuring a high expectation of success.

4. Key Claim Construction Positions

• “stays in communication”: Petitioner argued this term should be construed according to its plain and ordinary meaning, which encompasses two embodiments described in the ’691 patent's specification. The first is a continuous, undisrupted communication link (enabled by a two-transceiver device). The second is an "on-hold" communication link where the connection is maintained but temporarily inactive while a single transceiver performs another task. This construction was critical because the prior art disclosed both a "hold" mode (Haartsen ’297) and a two-transceiver architecture (Haartsen ’928), ensuring the prior art would meet the limitation under either interpretation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d) for three primary reasons:
  • The primary reference, Haartsen ’297, was new art not before the Examiner during the original prosecution.
  • While other references were of record, they were not applied in the manner asserted in the petition. Specifically, Haartsen ’928 was cited against a cancelled original claim with a substantially different scope, and Dent was never substantively discussed by the Examiner.
  • The specific arguments, combinations of references, and the expert declaration of Dr. Zygmunt Haas presented a record and analysis that were significantly different from what the Examiner considered.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-4, 7-14, and 17-20 of the ’691 patent as unpatentable.