PTAB

IPR2020-00463

Google LLC v. Uniloc 2017 LLC

Log In

1. Case Identification

2. Patent Overview

  • Title: Method for Establishing Network Connections Between Stationary Terminals and Remote Devices Through Mobile Devices
  • Brief Description: The ’632 patent discloses a method for establishing a data communications session between a stationary terminal (e.g., a computer) and a remote device. The connection is facilitated by a proximate mobile device that acts as an intermediary, using its cellular network connection to relay connection information.

3. Grounds for Unpatentability

Ground 1: Claims 1, 8, and 15 are obvious over Conley

  • Prior Art Relied Upon: Conley (Application # 2004/0215974)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Conley, by itself, teaches or suggests every limitation of the challenged claims. Conley describes a system where a first computing device (the stationary terminal) uses a proximate cellular phone (the proximate mobile device) to establish a data connection with a second, remote computing device.
      • A short-range wireless link (e.g., Bluetooth) is established between the stationary terminal (Conley’s "first device 140") and the proximate mobile device (Conley’s "telephonic device 110"), which operates on a cellular network.
      • The stationary terminal transmits an "invitation message" (Conley’s "small amount of information," including an IP address) to the proximate mobile device over the Bluetooth link. Petitioner contended it would have been obvious for this message to also contain an identifier for the remote device to enable routing (e.g., an SMS destination address).
      • The proximate mobile device then forwards this information over a primary cellular channel (e.g., SMS) to the remote device.
      • Finally, the remote device uses the received IP address to initiate a data connection back to the stationary terminal over a secondary channel, such as the Internet.
    • Key Aspects: For dependent claims 8 and 15, Petitioner asserted that Conley discloses the remote device can be a cellular phone ("remote mobile device") and that the stationary terminal includes the necessary processor and memory to execute the method steps.

Ground 2: Claims 1, 8, and 15 are obvious over Conley in view of RFC 3261

  • Prior Art Relied Upon: Conley (Application # 2004/0215974) and RFC 3261 (SIP: Session Initiation Protocol, June 2002)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Conley provides the foundational system architecture, while RFC 3261 provides a well-known, standardized protocol for implementing the session initiation described by Conley. Conley expressly suggests that its system can be implemented using Internet Protocol (IP) telephony. RFC 3261 describes the Session Initiation Protocol (SIP), the prevailing standard for establishing such sessions. The "invitation message" generally described in Conley is rendered specific by implementing it as a standard SIP "INVITE" message from RFC 3261. Crucially, the SIP INVITE message format explicitly contains fields for both the sender’s network address (e.g., sip:alice@atlanta.com) and the remote device’s identifier (e.g., sip:bob@biloxi.com), directly teaching the limitations of claim 1[b]. The connection establishment process is mapped to the standard SIP handshake (INVITE, OK, ACK messages), where the "initial communication by the remote device" corresponds to the "200 (OK)" message sent in response to the INVITE.
    • Motivation to Combine: A POSITA would combine the references for several reasons. First, Conley’s express mention of IP telephony provides a direct suggestion to look to known IP telephony protocols like SIP (from RFC 3261). Second, using a standardized protocol would make Conley’s system more efficient, interoperable, and predictable. Specifically, using a single, standardized INVITE message to convey both the sender's address and recipient's identifier would be more efficient for the low-bandwidth primary channel that Conley describes.
    • Expectation of Success: A POSITA would have a high expectation of success in combining the references. The combination involves applying a well-known, standardized protocol (SIP) to implement a system (Conley) for the exact purpose for which the protocol was designed: establishing a communication session. This constitutes a predictable application of a known technology to a known problem.

4. Key Claim Construction Positions

  • Petitioner argued that the Board need not formally construe any claim terms to resolve the dispute, as the cited prior art renders the claims obvious under either party’s proposed constructions from related district court litigation.
  • For the term "stationary terminal," Petitioner contended Conley’s disclosed laptop or table-top computer satisfies the term under any reasonable interpretation.
  • For "short-range wireless technology," Petitioner noted that Conley explicitly discloses Bluetooth. Petitioner argued that because dependent claim 2 of the ’632 patent specifies Bluetooth, the scope of the term in independent claim 1 must encompass it, and Conley’s disclosure of Bluetooth is therefore sufficient.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §314(a) or §325(d) would be inappropriate.
  • The petition asserted that the cited prior art references, Conley and RFC 3261, were not considered by the USPTO during the original prosecution of the ’632 patent. The examiner’s sole rejection was based on double patenting, which was traversed with a terminal disclaimer. Therefore, the petition presented new arguments and art that warrant review.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 8, and 15 of the ’632 patent as unpatentable.