PTAB

IPR2019-00965

Cisco Systems Inc v. Uniloc 2017 LLC

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1. Case Identification

2. Patent Overview

  • Title: Context-Aware Mobile Telephones
  • Brief Description: The ’891 patent describes a method for portable communication devices to broadcast messages to other nearby devices. The technology focuses on appending an additional data field, carrying broadcast message data, to standard inquiry messages that are transmitted according to a wireless communications protocol like Bluetooth.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hild and Bluetooth - Claims 14 and 16 are obvious over Hild in view of Bluetooth.

  • Prior Art Relied Upon: Hild (Patent 6,532,368) and Bluetooth (Specification of the Bluetooth System, v1.0B, Dec. 1, 1999).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hild teaches a method for portable devices, such as cellular phones, to broadcast service announcement information to other devices to facilitate the ad-hoc formation of a network. Hild expressly identifies the Bluetooth communications scheme as being "well suited" for implementing its service announcement techniques. Bluetooth discloses a standard inquiry procedure where a device broadcasts "inquiry messages" to discover other devices in range before establishing a connection (a "piconet"). Petitioner asserted that combining Hild's service announcement data with Bluetooth's pre-connection inquiry messages would result in the method of claim 14. For dependent claim 16, Petitioner argued that the standard Bluetooth packet format includes a "trailer" field that is present only when additional information follows the inquiry access code, and the presence of this trailer would serve as the claimed "indication" that the additional service data from Hild is attached.
    • Motivation to Combine: A POSITA would combine these references for several reasons. First, Hild provided an express teaching to use its service announcement scheme with Bluetooth. Second, a POSITA would be motivated to modify Bluetooth's basic device discovery by incorporating Hild’s service information into the inquiry message. This would allow devices to determine whether to form a network based on available services before initiating the connection, a more efficient process than discovering services only after a connection is formed.
    • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success. The combination involved a simple modification: attaching Hild’s service announcement data to Bluetooth’s existing inquiry message structure. The Bluetooth specification itself revealed that its inquiry procedure uses a time-slot structure with significant unused time periods (approx. 244.5 µs per half-slot) during transmission. A POSITA would have recognized these unused periods as a suitable and predictable opportunity to transmit the additional service data from Hild without disrupting the protocol's standard operation.

Ground 2: Obviousness over Hild, Bluetooth, and Moy - Claim 16 is obvious over Hild, Bluetooth, and Moy.

  • Prior Art Relied Upon: Hild (Patent 6,532,368), Bluetooth (Specification of the Bluetooth System, v1.0B, Dec. 1, 1999), and Moy (“OSPF Version 2,” Request for Comments: 2328, Apr. 1998).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically addressed the "indication" limitation of claim 16. Petitioner argued that Moy teaches a packet-based communication protocol (OSPF) that uses a "Type" field in a standard packet header to explicitly indicate the presence and type of additional data fields that follow. This concept of using a dedicated field to signal the message structure was a common and well-understood technique in data communications.
    • Motivation to Combine: A POSITA would be motivated to incorporate Moy's teaching into the Hild/Bluetooth combination to provide a more robust and efficient system. Using an explicit indication would allow a receiving device to immediately determine from the inquiry message whether it should continue listening for additional service announcement data. This would be particularly beneficial for power-constrained portable devices, as it would allow them to conserve power by not activating receiver circuitry unnecessarily. Petitioner identified Bluetooth's "Dedicated Inquiry Access Code (DIAC)" as the natural mechanism for this indication, as DIACs were specifically reserved for custom inquiries among specific classes of devices.
    • Expectation of Success: Success was expected because the combination represented the application of a common technique (Moy's type field) to a known system (Hild/Bluetooth) to solve a known problem (power management and efficient discovery). Using a specific DIAC value to indicate the presence of Hild's service data was merely the ordinary use of a feature for its intended purpose, yielding the predictable result that receiving devices could distinguish these enhanced inquiry messages from standard ones.

4. Key Claim Construction Positions

  • "inquiry messages": Petitioner proposed this term includes messages that allow a potential "slave" device to find a potential "master" device and request to join its network (piconet). This construction aligns with the pre-connection discovery function described in the Bluetooth protocol.
  • "additional data field": Petitioner argued this term should be construed as a data field that is not part of the standard, first communications protocol. In the context of the grounds, this means the service announcement data taught by Hild is "additional" because it is not defined within the standard Bluetooth inquiry message format.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review (IPR) and the cancellation of claims 14 and 16 of Patent 6,664,891 as unpatentable.