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, 2-4, 7-14, and 17-20

2. Patent Overview

• Title: Enhanced Wireless Handset, Including Direct Handset-To-Handset Communication Mode
• Brief Description: The ’691 patent describes a method for a wireless handset to maintain communication with a first device on one channel while simultaneously sending an "inquiry" or "find" message on a second channel to locate other nearby devices. The technology is directed at short-range, direct handset-to-handset wireless networks.

3. Grounds for Unpatentability

Ground 1: Obviousness over Haartsen/Dent Combination - Claims 1, 2, 4, 7-12, 14, and 17-20 are obvious over Haartsen ’297 in view of Dent and Haartsen ’928.

• 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 this combination teaches every element of independent claims 1 and 11. Haartsen ’297 discloses a wireless unit (the “apparatus”) participating in communications in more than one short-range network (“piconet”) at a time. This includes communicating with a master unit in a first piconet (the “object”) while establishing a connection with units in a second piconet. Haartsen ’928 teaches the specific “inquiry procedure” for a device to find and learn the addresses of other nearby units. Dent, which is expressly incorporated by reference in Haartsen ’297, provides the underlying air-interface for short-range wireless communication, including text messaging. Critically, the combination allegedly teaches the "stays in communication" limitation in two ways that map to the ’691 patent's embodiments: (1) Haartsen ’297 teaches a "hold mode" where a device can maintain a connection with the first piconet while temporarily communicating with the second, and (2) Haartsen ’928 teaches using two transceivers to maintain continuous, uninterrupted communication with both piconets simultaneously.
  • Motivation to Combine: Petitioner asserted multiple motivations. First, Haartsen ’297 expressly incorporates by reference both Dent and the application that became Haartsen ’928, providing an explicit suggestion to combine them. Second, a person of ordinary skill in the art (POSITA) would combine the references to achieve predictable benefits; for example, implementing the specific inquiry procedure of Haartsen ’928 within the multi-piconet framework of Haartsen ’297 would be a logical step to enable the discovery of devices needed to form the multiple piconets. Implementing this system using the air-interface of Dent was also obvious due to the express incorporation and shared technical field.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining the references involved applying known techniques (e.g., an inquiry procedure, a dual-transceiver design) to a known system (a short-range wireless network) to achieve predictable improvements in utility and functionality.

Ground 2: Obviousness over Haartsen/Dent/Cushman Combination - Claims 3 and 13 are obvious over Haartsen ’297 in view of Dent, Haartsen ’928, and Cushman.

• 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 Ground 1. Claims 3 and 13 add limitations requiring the generation and display of a list of the discovered devices on a graphical user interface (GUI). The combination of Haartsen ’297 and ’928 teaches collecting responses from the inquiry procedure to "make a list." Petitioner argued that Cushman, which discloses a wireless telephone with an improved user interface, teaches displaying such lists (e.g., directories) to a user via an LCD screen and GUI elements. Adding Cushman’s GUI to the system of Ground 1 would render claims 3 and 13 obvious.
  • Motivation to Combine: A POSITA would be motivated to add the teachings of Cushman to the primary combination for the simple and predictable benefit of making the system more user-friendly. Once a list of nearby devices is generated (as taught by Haartsen ’928), it would be an obvious design choice to display that list to the user so they could select a device to communicate with. Cushman provided a known solution for this exact problem.
  • Expectation of Success: The expectation of success would be high, as displaying data lists on a screen using a GUI was a conventional and well-understood technique in the art at the time.

4. Key Claim Construction Positions

• "stays in communication": This term, central to independent claims 1 and 11, is not explicitly defined in the ’691 patent. Petitioner argued that based on the specification’s disclosure of two different embodiments, a POSITA would understand the term to have a broad meaning covering two distinct scenarios:
  • (1) Continuous Communication: As shown in the two-transceiver embodiment of the ’691 patent, where communication with the first object is maintained without any disruption.
  • (2) On-Hold Communication: As shown in the single-transceiver embodiment, where the ongoing call with the first object is temporarily disrupted (i.e., placed on "hold") while the transceiver is used to send the inquiry message, but the connection is not terminated.
• This broad construction was critical to Petitioner's argument, as the prior art combination of Haartsen ’297 and ’928 discloses both a "hold" mode (mapping to the on-hold interpretation) and a two-transceiver architecture (mapping to the continuous interpretation).

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny review under 35 U.S.C. §325(d) for several reasons:
  • The primary reference, Haartsen ’297, was never cited or considered by the Examiner during the original prosecution of the ’691 patent.
  • While the Examiner considered Haartsen ’928 against a different, canceled claim, it was never applied to the issued challenged claims, which have a substantially different scope.
  • The specific arguments and combinations of prior art presented in the petition, along with the expert declaration, were not before the Examiner, creating a substantially different record.

6. Relief Requested

• Petitioner requests that the Board institute an inter partes review (IPR) of claims 1, 2-4, 7-14, and 17-20 of the ’691 patent and cancel those claims as unpatentable.