EXHIBIT X 

Petition for Inter Partes Review submitted by DeCurtis in 

IPR2021-00783, concerning U.S. Patent 10,157,514 

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09831-00001/12630555.7 

UNITED STATES PATENT AND TRADEMARK OFFICE 

___________________ 

BEFORE THE PATENT TRIAL AND APPEAL BOARD 

___________________ 

DECURTIS, LLC 

Petitioner 

v. 

CARNIVAL CORP. 

Patent Owner 

____________ 

U.S. Patent No. 10,157,514 

“Portable wireless devices for use in 

wireless guest engagement systems” 

____________ 

Inter Partes Review No. 2021-00783 

–––––––––––––– 

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 

10,157,514 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.100 ET SEQ. 

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TABLE OF CONTENTS 

Page 

I. INTRODUCTION .................................................................................1

II. MANDATORY NOTICES ...................................................................2

A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) ..........................2

B. Related Matters (37 C.F.R. § 42.8(b)(2)) ....................................3

1. Related Patent Office Proceedings ...................................3

2. Related Litigation .............................................................3

3. Related Applications .........................................................3

C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) and 

Service Information (37 C.F.R. § 42.8(b)(3)-(4)) .......................4

D. Payment of Fees (37 C.F.R. § 42.15(a)) .....................................5

III. REQUIREMENTS FOR INTER PARTES REVIEW ..........................6

IV. STATEMENT OF RELIEF REQUESTED FOR THE 

CHALLENGED CLAIM (37 C.F.R. § 42.104(B) ................................6

V. OVERVIEW OF THE ’514 PATENT ..................................................7

VI. PERSON OF ORDINARY SKILL IN THE ART ................................7

VII. CLAIM CONSTRUCTION ..................................................................8

VIII. BLUETOOTH LOW ENERGY OVERVIEW .....................................8

IX. ASSERTED PRIOR ART AND MOTIVATION TO 

COMBINE .......................................................................................... 13

A. Soleimani (Ex-1003) ................................................................ 13

B. Yuen (Ex-1004) ........................................................................ 14

C. Hulusi (Ex-1005) ...................................................................... 15

D. Berg (Ex-1006) ......................................................................... 16

E. Badinski (Ex-1007) .................................................................. 17

F. Raina (Ex-1008) ....................................................................... 17

G. BLE Specification (Ex-1009) ................................................... 18

H. Motivation to Combine The Cited References ........................ 19

X. GROUND 1: SOLEIMANI, YUEN, AND HULUSI ....................... 21

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A. Claim 11 ................................................................................... 21

1. 11pre .............................................................................. 21

2. 11a: “a body having a fully enclosed cavity, the 

body having all dimensions equal to or smaller than 

2.5 inches, and the body having a thickness equal to 

or smaller than 5⁄8 inch;” ............................................... 21

3. 11b: “a processor, a memory, a battery, and first 

and second wireless communication antennas 

disposed in the cavity;” ................................................. 25

4. 11c: “wherein the first and second wireless 

communication antennas are respectively 

configured for Bluetooth low energy (BLE) and 

near field communication (NFC) communications,”

 ........................................................................................ 31

5. 11d: “the processor is configured to establish 

secure communication links with remote 

communication devices using the first wireless 

communication antenna configured for BLE 

communications,” .......................................................... 31

6. 11e: ................................................................................. 32

(i) “the memory stores ... [a] public ... 

identifier[] unique to the portable wireless 

device,” ................................................................ 32

(ii) “the memory stores ... [a] private ... 

identifier[] unique to the portable wireless 

device,” ................................................................ 35

7. 11f .................................................................................. 36

8. 11g .................................................................................. 37

XI. GROUND 2: BERG, BADINSKI, AND GOOSEN RENDER 

OBVIOUS CLAIM 11 ....................................................................... 38

A. Claim 11 ................................................................................... 39

1. 11pre .............................................................................. 39

2. 11a .................................................................................. 39

3. 11b .................................................................................. 45

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4. 11c .................................................................................. 46

5. 11d .................................................................................. 46

6. 11e: ................................................................................. 47

7. 11f .................................................................................. 51

8. 11g .................................................................................. 53

XII. GROUND 3: BERG, BADINSKI, AND BLE SPECIFICATION 

RENDER OBVIOUS CLAIM 11 ...................................................... 55

A. Claim 11 ................................................................................... 55

1. 11pre-11e and 11g ......................................................... 55

2. 11f .................................................................................. 55

XIII. GROUND 4: RAINA, YUEN, AND HULUSI RENDER 

OBVIOUS CLAIM 11 ....................................................................... 58

A. Claim 11 ................................................................................... 59

1. 11pre .............................................................................. 59

2. 11a .................................................................................. 59

3. 11b .................................................................................. 62

4. 11c .................................................................................. 66

5. 11d .................................................................................. 66

6. 11e .................................................................................. 67

(i) “the memory stores ... [a] public ... 

identifier[] unique to the portable wireless 

device,” ................................................................ 67

(ii) “the memory stores ... [a] private ... 

identifier[] unique to the portable wireless 

device,” ................................................................ 70

7. 11f .................................................................................. 71

8. 11g .................................................................................. 74

XIII. INSTITUTING THIS IPR WOULD BE EQUITABLE .................... 75

A. 35 U.S.C. § 325(d) Factors Support Institution ....................... 75

B. NHK-Fintiv Factors Support Institution ................................... 77

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1. Overlap Between Issues Raised in the Petition and 

in the Parallel Proceeding .............................................. 77

2. Likelihood of a Stay ....................................................... 78

3. Proximity of the Court’s Trial Date to a FWD .............. 78

4. Investment in the Parallel Proceeding ........................... 79

5. Whether the Petitioner and the Defendant in the 

Parallel Proceeding are the Same Party ......................... 80

6. Other Circumstances, that Impact the Board’s 

Exercise of Discretion, Including the Merits ................. 80

XIV. CONCLUSION .................................................................................. 81

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LIST OF EXHIBITS 

Exhibit No. Description 

Ex-1001 U.S. Patent No. 10,157,514 (“the ’514 patent”) 

Ex-1002 File History of U.S. Patent No. 10,157,514 (U.S. Patent Application 

No. 15/460,983) 

Ex-1003 U.S. Patent No. 9,483,887 (“Soleimani”) 

Ex-1004 U.S. Patent No. 8,935,119 (“Yuen”) 

Ex-1005 U.S. Patent Pub. No. 2016/0198287 (“Hulusi”) 

Ex-1006 PCT/EP2016/059748 (“Berg”) 

Ex-1007 U.S. Patent Pub. No. 2015/0220109 (“Badinski”) 

Ex-1008 U.S. Patent Pub. No. 2016/0055697 (“Raina”) 

Ex-1009 Specification of the Bluetooth System, Covered Core Package 

version: 4.0 (June 20, 2010) (“BLE Specification”) 

Ex-1010 

Christian Alexander Goosen, Design and Implementation of a 

Bluetooth 4.0 LE Infrastructure for Mobile Devices, Ulm University, 

Faculty of Engineering and Informatics (May 16, 2014) (“Goosen”)

Ex-1011 U.S. Patent Pub. No. 2016/0077495 (“Brown”) 

Ex-1012 Declaration of Dr. Kevin Almeroth (“Almeroth”) 

Ex-1013 List of Recent Expert Witness Engagements of Dr. Kevin Almeroth 

Ex-1014 Curriculum Vitae of Dr. Kevin Almeroth 

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Petition for Inter Partes Review of 

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Exhibit No. Description 

Ex-1015 

Chief Judge Moore’s Eight Order Concerning Jury Trials and Other 

Proceedings relating to Coronavirus Public Emergency (S.D. Fla 

Feb. 10, 2021) (available at 

https://www.flsb.uscourts.gov/sites/flsb/files/documents/news/USD

C_AO_2021-12_Coronavirus_Public_Emergency_-

_Eighth_Order_Concerning_Jury_Trials_and_Other_Proceedings_

02-10-21.pdf) 

Ex-1016 Complaint, Carnival Corp. v. DeCurtis Corp. et al., Case No. 1:20-

cv-21547-JEM, Dkt. 1 (S.D. Fla. April 10, 2020) 

Ex-1017 U.S. Patent Pub. No. 2017/0180930 (“Mycek”) 

Ex-1018 Scheduling Order, Carnival Corp. v. DeCurtis Corp. et al., Case No. 

1:20-cv-21547-JEM, Dkt. 73 (S.D. Fla. Sept. 14, 2020) 

Ex-1019 Hall-Ellis Declaration 

Ex-1020 Hall-Ellis CV 

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Petition for Inter Partes Review of 

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CHALLENGED CLAIM 

Claim 11 

11pre A portable wireless device comprising: 

11[a] a body having a fully enclosed cavity, the body having all dimensions 

equal to or smaller than 2.5 inches, and the body having a thickness equal 

to or smaller than 5⁄8 inch;

11[b] a processor, a memory, a battery, and first and second wireless 

communication antennas disposed in the cavity,

11[c] wherein the first and second wireless communication antennas are 

respectively configured for Bluetooth low energy (BLE) and near field 

communication (NFC) communications, 

11[d] the processor is configured to establish secure communication links with 

remote communication devices using the first wireless communication 

antenna configured for BLE communications, 

11[e] the memory stores both public and private identifiers unique to the 

portable wireless device, 

11[f] the processor controls the first wireless communication antenna to emit 

a periodic beacon signal broadcasting the unique public identifier of the 

portable wireless device using BLE communications, and 

11[g] the processor controls the first wireless communication antenna to 

transmit the private identifier only across secure communication links 

established with remote communication devices using BLE 

communications. 

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Petition for Inter Partes Review of 

U.S. Patent No. 10,157,514 

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I. INTRODUCTION 

Petitioner, DeCurtis LLC, is an Orlando-based technology company who has 

for 20+ years worked on guest engagement systems for cruise lines and theme parks. 

Petitioner, in fact, previously worked as a consultant for Patent Owner (“PO”), 

Carnival Corporation, on Carnival’s guest engagement system. After the parties’ 

commercial relationship ended, Petitioner, consistent with its business, entered into 

commercial relationships with other cruise lines. Unbeknownst to Petitioner, 

however, Carnival had sought and obtained vastly overbroad patents, covering a 

wide range of well-known and obvious technologies that were the subject of the 

parties’ prior relationship. 

Carnival soon began to improperly threaten both Petitioner and its new 

customers with baseless infringement claims, including claims based on the specific 

patent challenged in this Petition. These threats have disrupted Petitioner’s business, 

interfered with its customer relationships, and are clearly aimed at driving Petitioner 

out of the market and out of business. In April 2020, Petitioner filed suit, seeking a 

declaration of non-infringement and unenforceability of the patents, as well as 

affirmative relief for the damage caused to its business and customer relationships. 

In parallel, Petitioner respectfully asks the Board to clear the market of these facially 

invalid patents, and help remove the cloud that PO has placed over Petitioner’s 

business. 

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Petition for Inter Partes Review of 

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Challenged here is U.S. Patent No. 10,157,514 (“the ’514 patent”), which is 

directed to a portable wireless device for gaining access to secure areas. 

Embodiments are described for use in hotels, cruise ships, and other guest 

establishments. Only one ’514 claim is at issue, and it claims nothing more than a 

small wireless device form factor, having dimensions within a specified range, that 

relies on the pre-existing Bluetooth Low Energy (“BLE”) and Near Field 

Communication (“NFC”) standards to transmit a “public identifier” via a periodic 

beacon signal, and a “private identifier” via a secure, encrypted channel. As will be 

demonstrated below, there is nothing new about this technique, which was disclosed 

throughout the prior art. 

Petitioner respectfully requests Inter Partes review of claim 11 (“the 

challenged claim”) of the ’514 patent assigned to PO pursuant to 35 U.S.C. § 311 

and 37 C.F.R. § 42.100. 

II. MANDATORY NOTICES 

Pursuant 37 C.F.R. § 42.8(a)(1), the following mandatory notices are provided 

as part of this Petition. 

A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) 

The real party-in-interest for Petitioner is DeCurtis LLC. 

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B. Related Matters (37 C.F.R. § 42.8(b)(2)) 

1. Related Patent Office Proceedings 

Concurrent with this Petition, Petitioner is also requesting inter partes review 

of related U.S. Patent Nos. 10,045,184 (“the ’184 patent”) and 10,049,516 (“the ’516 

patent”). 

2. Related Litigation 

PO is currently asserting the ’514 patent against Petitioner in DeCurtis LLC 

v. Carnival Corp, Case No. 1:20-cv-22945-RNS (S.D. Fla.) (“the Litigation”), which 

was transferred from Case No. 6:20-cv-607-ORL-40LRH (M.D. Fla.). 

PO previously asserted the ’514 patent against Petitioner in Carnival Corp. v. 

DeCurtis Corp., Case No. 1:20-cv-21547-RNS (S.D. Fla.). That case was 

consolidated with Case No. 1:20-cv-22945-RNS, and is now closed. 

3. Related Applications 

There are no related applications pending at the USPTO. 

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C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) and Service 

Information (37 C.F.R. § 42.8(b)(3)-(4)) 

Petitioner provides the following counsel and service information.1 Pursuant 

to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this Petition. 

LEAD COUNSEL BACK-UP COUNSEL 

James Glass 

Reg. No. 46729 

jimglass@quinnemanuel.com 

Quinn Emanuel Urquhart & Sullivan, 

LLP 

51 Madison Ave., 22nd Floor 

New York, NY 10010 

Tel: (212) 849-7000 

Patrick Schmidt (pro hac vice to be 

requested upon grant authorization) 

patrickschmidt@quinnemanuel.com 

Quinn Emanuel Urquhart & Sullivan, 

LLP 

865 S. Figueroa St., 10th Floor 

Los Angeles, California 90017 

Tel: (213) 443-3000 

Sam Stake (pro hac vice to be requested 

upon grant authorization) 

samstake@quinnemanuel.com 

Quinn Emanuel Urquhart & Sullivan, 

LLP 

50 California St., 22nd Floor 

San Francisco, CA 94111 

Tel: (415) 875-6600 

Gavin Snyder (pro hac vice to be 

requested upon grant authorization) 

 

1

 Petitioner consents to electronic service to 

qedecurtiscarnival@quinnemanuel.com and the email addresses listed in the table 

below. 

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gavinsnyder@quinnemanuel.com 

Quinn Emanuel Urquhart & Sullivan, 

LLP 

1109 First Avenue 

Suite 210 

Seattle, WA 98101 

Tel: (206) 905-7000 

Richard Lowry 

Reg. No. 70306 

richardlowry@quinnemanuel.com 

Quinn Emanuel Urquhart & Sullivan, 

LLP 

1300 I Street, NW 

Suite 900 

Washington, DC 20005 

Tel: (202) 538-8000 

Jared Kneitel 

Reg. No. 51178 

jaredkneitel@quinnemanuel.com 

Quinn Emanuel Urquhart & Sullivan, 

LLP 

1109 First Avenue 

Suite 210 

Seattle, WA 98101 

Tel: (206) 905-7000 

D. Payment of Fees (37 C.F.R. § 42.15(a)) 

The undersigned authorizes the Office to charge the fee for this Petition to 

Deposit Account No. 50-5708. Any additional fees that might be due are also 

authorized. 

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III. REQUIREMENTS FOR INTER PARTES REVIEW 

Petitioner certifies that the ’514 patent is available for inter partes review, 

Petitioner is not barred or estopped from requesting inter partes review on the 

grounds identified herein, and the prohibitions of 35 U.S.C. §§315(a)-(b) are 

inapplicable. 

IV. STATEMENT OF RELIEF REQUESTED FOR THE CHALLENGED 

CLAIM (37 C.F.R. § 42.104(B) 

Petitioner respectfully requests Inter Partes review of the challenged claims 

based on the following obviousness grounds: 

# Ground for Challenge 

1 Soleimani, Yuen, and Hulusi 

2 Berg, Badinski, and Goosen 

3 Berg, Badinski, and BLE Specification 

4 Raina, Yuen, and Hulusi 

These grounds are not duplicative of each other because Soleimani, Berg, and Raina 

disclose materially different techniques to manage access control, including the 

approach to transmission of public and private identifiers, within the scope of the 

’514 patent. Ground 3 also presents a unique approach to the public identifier 

limitation 11f. 

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V. OVERVIEW OF THE ’514 PATENT 

The earliest priority date listed on the face of the ’514 patent is November 11, 

2016. The ’514 patent relates to portable wireless devices in a generic “guest 

engagement” system that are used by guests to gain access to locations and services. 

Ex-1001 (’514 Patent) at 1:60-2:2. The wireless device broadcasts an identifier that 

is received by compatible stationary devices located in the guest’s environment, such 

as door access panels or vending machines. Id. at 2:3-15. In some cases, the wireless 

device communicates with the stationary devices using known wireless protocols 

such as BLE and NFC. Id. at 4:38-54, 1:48-53. The ’514 purports to solve for guests 

the problem of having to “tap or swipe an access card to activate elevators or unlock 

doors of health facilities and guest rooms during their stay.” Id. at 1:40-44. 

VI. PERSON OF ORDINARY SKILL IN THE ART 

A person of ordinary skill in the art (“POSITA”) relating to the subject matter 

of the ʼ514 patent is a person with a Bachelor of Science degree in electrical 

engineering, computer science, or a related subject matter, plus at least two years of 

professional experience in the field of computer networks, wireless communications, 

or a similar field. Ex-1012 (Almeroth Declaration) at ¶¶39-41. This level of skill is 

approximate, and more experience would compensate for less formal education, and 

vice versa. Id. 

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VII. CLAIM CONSTRUCTION 

Claim construction in the Litigation has not yet started. For purposes of this 

petition, Petitioner and its expert have applied the plain and ordinary meaning of all 

claim terms of the challenged claim. Petitioner reserves all rights to respond at the 

appropriate time to any claim construction-related argument advanced by PO. 

VIII. BLUETOOTH LOW ENERGY OVERVIEW 

The claim at issue in this Petition recites use of the preexisting BLE protocol, 

and many of the claimed concepts (e.g., beacon-emitting devices, transmission of 

public and private identifiers, using secure communication links) are nothing more 

than straightforward applications of the functionality afforded by this protocol. Ex1012 at ¶44. Petitioner’s prior art grounds specifically rely on references applying 

the BLE protocols in secure environments and payment systems. Nevertheless, the 

following background of the BLE specification is provided for further context and 

the background knowledge of a POSITA. Id. 

BLE was introduced in 2010 in the 4.0 version of the Bluetooth specification, 

more than six years prior to the earliest priority date listed on the face of the ’514 

patent. Ex-1009 at 1; Ex-1012 at ¶45. The Generic Access Profile (GAP) is the 

framework that defines how BLE devices interact with each other, including device 

roles, advertisements, connection establishment, and security. Ex-1009 at 1625, 

1634; Ex-1012 at ¶45. Devices can take on roles such as a Broadcaster, which 

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sends out advertisements but does not receive packets or allow connections with 

other devices, and an Observer, which listens for advertising but does not initiate a 

connection. Ex-1009 at 1638. Devices can also assume roles such as a Central, 

which discovers and listens for advertising devices and can connect to the 

advertising device, and a Peripheral, which sends advertisements and accepts 

connections from Central devices. Ex-1009 at 1639. A single device may operate 

in multiple roles at the same time. Id. 

A. Advertising Events 

In an advertising state (i.e., Broadcaster role), a device periodically broadcasts 

an “Advertising Event” on an advertising event interval (comprising a fixed-length 

“advInterval” and pseudorandom-length “advDelay”). Ex-1009 at 2197, 2223; Ex1012 at ¶46. 

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Ex-1009 at 2223.2 

The BLE Specification defines four advertising event types, each including a 

“public device address” that uniquely identifies a wireless device to other devices in 

proximity. Id. at 2197; Ex-1012 at ¶47. For example, during an advertising event, 

a device transmits a connectable undirected advertising 

(“ADV_NONCONN_INFO,” id. at 2222) channel packet PDU with a payload 

containing that device’s public device address (i.e., “AdvA” field).3 Ex-1009 at 

2204, 2221-22. 

 

2

 Annotations to Figures are added unless indicated otherwise. 

3

 The same is true for all other advertising event types ADV_IND, 

ADV_DIRECT_IND, and ADV_SCAN_IND. Id. at 2203-05. 

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Id. at 2204. In response to receiving the advertising packet, a device in the central 

role may make a connect request (CONNECT_REQ) identifying itself to the 

advertiser device. Id. at 2222-26, 2206-07. When the advertiser device accepts the 

connect request, a point-to-point connection results between the central device 

(which becomes the master) and the advertiser device (which becomes the slave). 

Id. at 2224. Once the connection is established, the two devices can exchange data 

on one of 37 data channels: 

Id. at 127; Ex-1012 at ¶47. 

B. Pairing Events 

Pairing is a process where devices exchange the information necessary to 

establish an encrypted connection. It involves authenticating the identity of the two 

devices to be paired, encrypting the link, and distributing keys to allow security to 

be restarted on a reconnection. Ex-1009 at 1959; Ex-1012 at ¶48. Pairing establishes 

keys that are used for encrypted communications. Ex-1009 at 1959. Either master 

or slave device can initiate pairing. 

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Id. In Phase 1, the devices perform a handshaking procedure to exchange 

capabilities and authenticate. In Phase 2, the devices exchange a Temporary Key 

(TK) and use it to create a Short Term Key (STK) which is used to encrypt the 

connection. Using the secure connection, a device can send other keys in Phase 3, 

including a private identifier to establish a bond with the other device for future 

communications. Id. at 1974-75; Ex-1012 at ¶49. Specifically, the devices can 

securely exchange private keys, including an Identity Resolving Key (IRK) (id. at 

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1972-73) that indicates a device’s private address. Ex-1009 at 1973 (citing 1732). 

Notably, if authentication requirements are not met by either device, a pairing 

procedure will end without exchanging private key information. Id. at 1721. 

IX. ASSERTED PRIOR ART AND MOTIVATION TO COMBINE 

The references used in this Petition are prior art under at least 35 U.S.C. § 

102(a)(1) and were not cited during prosecution unless otherwise noted. 

A. Soleimani (Ex-1003) 

Soleimani describes a mobile device (e.g., 140a-140e, 230; highlighted in 

yellow below) that is portable and configured to communicate with devices (e.g., RF 

communication unit 214; highlighted in green below) related to entering or exiting 

a protected area. Ex-1003 at 3:59-4:3, 4:23-34, 4:48-51, Figs. 1-11; Ex-1012 at ¶51. 

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Id. at Fig. 4. The portable device uses wireless communication protocols such as 

BLE and NFC, including BLE broadcasting and secure communications. Id. at 8:15-

19 (BLE), 6:42-46 (NFC), 6:25-37 (BLE beacon emitted from RF communication 

unit), 17:60-18:7 (reversal of BLE roles), 12:53-13:14 (transmission of encrypted 

message for door access), Figs. 2-5. 

B. Yuen (Ex-1004) 

Yuen describes small form factor wearables “designed to be worn relatively 

continuously by a person.” Ex-1004 at 17:8-15. Yuen discloses a portable biometric 

monitoring device that (1) has a small form factor (dimensions less than 2.5 inches, 

thickness less than 5/8 inch) and (2) houses a processor, memory, battery, a BLE 

antenna, and an NFC antenna for facilitating wireless communications in a 

waterproof cavity. Ex-1004 at 17:8-24, 17:65-18:14; 33:24-29, 46:5-10, 53:36-46, 

54:40-46; Ex-1012 at ¶52. 

 

Id. at Figs. 2A-2B. 

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C. Hulusi (Ex-1005) 

Hulusi discloses a portable wireless device (e.g., NFC device 108) that 

communicates with external devices using several wireless communication 

protocols to, for example, unlock a door. Ex-1005 at ¶¶[0040]. [0046], [0051], Fig. 

1. Hulusi’s device houses a processor (e.g., processor 204), a memory (e.g., memory 

208, data storage 212), a battery (e.g., power source 260), an NFC antenna 224 

(highlighted in green below) and a BLE antenna 224 (highlighted in orange below). 

Id. at ¶¶[0046], [0054], [0049], [0089], Fig. 2; Ex-1012 at ¶53. 

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Id. at Fig. 2. 

D. Berg (Ex-1006) 

Berg discloses a portable wearable device (e.g., 104, 512) configured for 

wireless communications related to accessing a protected area at an access point such 

as a door or gate. Ex-1006 at ¶¶[0010]-[0014], Figs. 1, 2, 5A-5C. Berg’s wearable 

device can communicate with external devices using wireless communication 

protocols such as BLE and NFC. Id. at ¶¶[0014], [0071], [0081], Fig. 2; Ex-1012 at 

¶54. 

Id. at Fig. 1. Berg discloses that only after authenticating a wearable device, further 

communication of sensitive access control information such as keys, codes, and 

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credentials may occur over an encrypted communication link with the reading device 

112. Id. at ¶[0073]. 

E. Badinski (Ex-1007) 

Badinski discloses a wearable computing device (“WCD”) that can be in the 

form of a ring worn on the finger of a user, and used to access locked doors. Ex1007 at ¶¶[0155], [0264], Fig. 1A, 25. The WCD houses components such as a 

processor, memory, battery, and BLE/NFC antennas in a “completely waterproof” 

housing. Id. at ¶¶[0161], [0162], [0170], [0174], [0182], [0187]-[0200], [0254], 

[0270], [0282], Fig. 2. Badinski’s device has a small form factor with all dimensions 

less than 2.5 inches and thickness less than 5/8 inch. 

 

Id. at Figs. 12A and 12B; Ex-1012 at ¶55. 

F. Raina (Ex-1008) 

Raina discloses a wearable device (e.g., mobile device 130) that is portable 

and configured for wireless communications related to gaining access to a secure 

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area. Ex-1008 at ¶[0022], Figs. 1-5. The mobile device 130 can take the form of 

“mobile phones, tablets, wearable computers, such as GOOGLE glass or smart 

devices embedded into clothing, a smart watch, fitness tracker, or wireless enabled 

shoes, or some other type of mobile computer.” Id. at ¶[0024]. Raina’s device can 

include multiple, distinct interfaces 601 that communicate with external devices 

using wireless protocols such as BLE and NFC. Id. at ¶[0058], Fig. 6; Ex-1012 at 

¶56. 

Ex-1008 at Fig. 1. 

G. BLE Specification (Ex-1009) 

The BLE Specification is a prior art specification that was integrated into 

Bluetooth 4.0 in December 2010 and codifies wireless personal area network 

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technology aimed at applications in wireless mobile devices. Ex-1009. The 

specification teaches the broadcast of advertising packets at periodic intervals. Id. 

at 2197, 2223; Ex-1012 at ¶57. 

Ex-1009 at 2223. 

H. Motivation to Combine The Cited References 

This Petition relies on Soleimani, Berg, and Raina as primary references, as 

modified by the teachings of Yuen, Hulusi, Badinski, and/or the BLE Specification 

(collectively, the “Cited References”). Motivations for each of these combinations 

are discussed below, as are the element-specific motivations to combine. 

A POSITA would have been motivated to modify the primary references 

according to the teachings of the secondary references for several reasons common 

to all grounds. Ex-1012 at ¶59. The Cited References are in the same field of 

endeavor as the ’514 patent—portable wireless devices using the BLE 

communication protocol. Ex-1006 at 3:6-41, Figs. 1-4C; Ex-1004 at 17:8-18:14, 

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25:3-39, Figs. 1-2B; Ex-1003 at 8:5-19, 6:19-60, Figs. 1, 2; Ex-1005 at ¶¶[0046], 

[0054], [0049], [0089], Fig. 2; Ex-1007 at ¶¶[0161]-[0200], [0254], [0270], [0282], 

Fig. 2; Ex-1009 at 126-28, 2197, 2203, 2221-22; Ex-1008 at ¶[0024], Figs. 1, 2, and 

5; Ex-1012 at ¶59. 

The Cited References also use similar techniques to solve the same problems

as the ’514 patent. Berg, Soleimani, Hulusi, and Raina use the same techniques as 

the ’514 patent (i.e., portable wireless devices transmitting device identifiers using 

BLE) to provide a more user-friendly validation of access information to provide 

access to a secure resource such as, for example, specific areas of a building. Ex1006 at 3:32-41, 7:52-8:3, Fig. 1; Ex-1003 at 3:59-4:3, 4:23-34, 4:48-51, Figs. 1-11; 

Ex-1005 at ¶¶[0062], Fig. 3; Ex-1008 at ¶[0022], Figs. 1-3. Other references reflect 

a form factor used by the ’514 patent—Yuen and Badinski disclose a small form 

factor for a portable wireless device housing a processor, memory, battery, and 

BLE/NFC antennas. Ex-1004 at 17:8-24, 17:65-18:14; 33:24-29, 46:5-10, 53:36-

46, 54:40-46; Ex-1007 at ¶¶[0192], [0161]-[0182], [0187]-[0200], [0254], [0270], 

[0282], Figs. 2, 6, 12A, 12B; Ex-1001 at 3:46-59. It was well-known in the art that 

interfacing with access control systems presented issues such as inconvenience to 

the user, power consumption inefficiencies, and security vulnerabilities. Ex-1006 at 

1:43-2:13; Ex-1003 at 1:5-23; Ex-1012 at ¶60. These problems prompted the 

development of the solutions described in the Cited References, and would have 

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motivated a POSITA to combine the prior art references as set forth in the grounds 

below. Ex-1012 at ¶60. 

X. GROUND 1: SOLEIMANI, YUEN, AND HULUSI 

This ground relies on Soleimani as a primary reference. Soleimani describes 

a portable wireless device that interacts with an access system for authentication. 

Additionally, Petitioner relies on Yuen for its disclosure of the recited form factor 

dimensions and Hulusi for its disclosure of BLE/NFC antennas pertinent to 

limitations 11b-11c. 

A. Claim 11 

1. 11pre 

“[a] portable wireless device”: Soleimani discloses a wireless mobile device 

(e.g., 140a-140e, 230) that is portable and configured for wireless communications 

related to entering or exiting a protected area. Ex-1003 at 3:59-4:3, 4:23-34, 4:48-

51, 7:22-25, 8:15-19, 17:60-18:7, Figs. 1-11; Ex-1012 at ¶62. 

2. 11a: “a body having a fully enclosed cavity, the body having all 

dimensions equal to or smaller than 2.5 inches, and the body 

having a thickness equal to or smaller than 5⁄8 inch;”

Soleimani’s wireless mobile devices may take the form of wearable devices, 

such as a smartphone or smart watch device (i.e., those manufactured by Apple and 

Pebble). Ex-1003 at 4:23-29. Soleimani also discloses that these wireless mobile 

devices “may be implemented in a keyfob form factor without any user interface or 

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user input elements for direct manipulation.” Id. at 4:29-34; Ex-1012 at ¶63. 

Although Soleimani does not disclose particular dimensions, a POSITA would 

recognize that these disclosures imply the type of devices that have a form factor 

within the recited dimensions. Ex-1012 at ¶63. Achieving the recited dimensions 

for these types of devices was well-within the level of ordinary skill in the art at the 

relevant time. Id. 

Ultimately, this limitation recites nothing more than an obvious design choice. 

See Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1345-46 (Fed. Cir. 1984) (recognizing 

that a difference in relative dimension untethered to performance will not render 

claims patentably distinct); Estey v. Burdett, 109 U.S. 633, 640 (1884) (“no 

invention in making length or size greater or lesser”); Uber Techs., Inc. v. X One, 

Inc., 957 F.3d 1334, 1340 (Fed. Cir. 2020) (differences “amount[ed] to a design 

choice” and POSITA “has good reasons to pursue the known options”); Miniature 

Precision Components, Inc. v. Eagle Indus., Inc., IPR2017-01403, Paper 29 

(P.T.A.B. Sept. 28, 2018) (the choice “for aesthetic purposes” mere obvious design 

choice); In re Asiatico, No. 2012-003942, 2015 WL 1522469, at *2 (P.T.A.B. Mar. 

31, 2015); M.P.E.P § 2144.04.10; see also Ex-1002 at 285, 417 (Examiner 

recognizing limitations 11a and 11b as obvious changes in size). A POSITA would 

thus view the recited dimensions as obvious over Soleimani. Ex-1012 at ¶64. 

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A POSITA would also recognize that Soleimani’s wireless mobile device 

includes an enclosure to house electrical components to increase portability and be 

suitable as, for example, a keyfob. Ex-1012 at ¶65; Ex-1003 at 4:31-34. 

While a POSITA would readily understand based on the Soleimani’s 

disclosure that it was obvious for Soleimani’s wireless mobile device to exist in the 

recited form factor, to the extent PO argues otherwise, such dimensions are expressly 

disclosed by Yuen. Ex-1012 at ¶¶66-69. Yuen establishes that there was no 

technical limitation to achieving the recited form factor, and confirms that this 

limitation would be obvious to a POSITA. Id. Yuen discloses a portable wireless 

device (e.g., “biometric monitoring device”) with all components enclosed in a 

“watertight seal” (Ex-1004 at 29:20-31) that is “typically of a small size” and 

“designed to be worn relatively continuously by a person” (id. at 17:8-15). Yuen’s 

device houses a processor (id. at 18:31-39), memory (id.), battery (id. at 33:24-26), 

a Bluetooth Low Energy antenna (id. at 46:5-10, 55:59-56:2), and an NFC antenna 

(id. at 54:40-46) for facilitating wireless communications. In some cases, the 

biometric device can be inserted into a wristband or bracelet, as disclosed in known 

devices such as Fitbit Flex. Id. at 17:25-33; see also id. at 1:42-52 (Fitbit Ultra). 

Yuen explains that the portable wireless device may exist in “extremely small sizes” 

such as “2′′ long, 0.75′′ wide, and 0.5′′ deep,” or in other cases, “0.5′′ wide by 1.3′′ 

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long by 0.25′′ thick.” Id. at 1:42-52, 17:25-33, 18:15-50, Figs. 2A, 2B. This meets 

the claimed dimensions. 

(i) Motivation to Combine 

A POSITA would have been motivated to modify the portable wireless device 

of Soleimani to include a body having a fully enclosed cavity, and all dimensions as 

taught in Yuen, to improve user experience by enabling increased wearability, 

portability, and protection from external elements like liquids and debris when 

entering or exiting a protected area. Ex-1004 at 29:20-31, 33:49-55, Figs. 2B-3C; 

Ex-1012 at ¶67; Ex-1003 at 4:31-34 (“[W]ireless mobile device 140 e may be 

implemented in a keyfob form factor without any user interface or user input 

elements.”); Section VIII.H. This modification is supported by Soleimani’s 

disclosure of providing convenient and secure access to privileged areas and 

promoting the portability of a wearable device. Ex-1003 at 1:5-22; Ex-1012 at ¶67. 

Soleimani also welcomes modification by recognizing that its disclosure is not 

limited to particular components or form factors. Ex-1003 at 18:22-32. A POSITA 

reviewing Soleimani would thus look to complimentary prior art to understand other 

potential design options. Ex-1012 at ¶67. It would have been obvious to a POSITA 

at the time of invention to modify the form factor of Soleimani to easily transport a 

wearable and offer versatility in application. Id. 

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Design and market forces such as “advances in sensor, electronics, and power 

source miniaturization” would have also favored combining Soleimani and Yuen to 

achieve a small and durable form factor. Ex-1004 at 1:43-52; Ex-1012 at ¶68. 

Indeed, Yuen discloses that small form factor wearables such as the Fitbit Ultra and 

the Fitbit Flex were already available for sale. Ex-1004 at 1:43-52, 17:25-33. 

Moreover, a POSITA would have had a reasonable expectation of success

because Soleimani and Yuen disclose straightforward techniques that are based on 

standard technology and wireless communication protocols like BLE, and could be 

readily implemented to provide a known and expected result. Ex-1012 at ¶69; Ex1003 at 8:11-19. Notably, the ’514 patent ascribes no significance to, and derives 

no unexpected results from, the dimensions recited in this limitation. Ex-1001 at 

3:24-57, 9:28-34. 

3. 11b: “a processor, a memory, a battery, and first and second 

wireless communication antennas disposed in the cavity;”

Soleimani discloses that the wireless mobile device (e.g., 140a-140e) may be 

implemented on a computer system depicted in Figure 11 below. Ex-1003 at 18:47-

52; Ex-1012 at ¶70. 

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Id. at Fig. 11. Soleimani describes a portable wireless device with a processor (Ex1003 at 18:52-67, 18:33-46; e.g., highlighted in yellow above), a memory (id. at 

18:33-67, 10:56-63; e.g., highlighted in orange above), and a power source (see id. 

at 7:16-21 (not shown)), Fig. 11. 

The device can communicate using wireless protocols such as BLE (id. at 

8:11-19) and NFC (id. at 6:42-47). Soleimani discloses the potential use of the 

wireless communication device in an environment comprising multiple different 

access control devices, using many different communication protocols or 

frequencies. See Ex-1003 at 3:59-64 & Fig. 1, at 6:19-47 (describing RF 

communication units transmitting advertisements using BLE, 802.11, RFID, and 

NFC protocols); see also id. at 6:56-60 (discussing the possibility that neighboring 

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RF communication units would use different channels or RF frequencies to avoid 

RF signal collisions or contentions). Thus, a POSITA would recognize the benefits 

of implementing Soleimani’s disclosed wireless communication device with at least 

one BLE antenna, and at least one NFC antenna, so that the device could 

communicate with a variety of different access control devices. Ex-1012 at ¶71. 

A POSITA would also recognize that BLE and NFC each have their own 

respective benefits and drawbacks in different communication contexts. For 

example, while BLE has the advantage of longer-range communication, it requires 

a power source. Ex-1012 at ¶72. NFC, on the other hand, can rely upon inductive 

coupling and thus requires no internal power source. Id. NFC also operates only at 

relatively closer distances, which limits the communication range, but also generally 

requires the user to explicitly bring the device within range of the reader which adds 

a measure of protection. Id. A POSITA would recognize that implementing a dual 

antenna system into the wireless mobile device of Soleimani would allow the 

wireless device to capture the benefits of each of these respective protocols, and 

operate more flexibly and effectively in a wider variety of communication contexts. 

Id. 

While a POSITA would readily understand based on the Soleimani’s 

disclosure that its system would include a battery and antennas, to the extent PO 

argues otherwise, such trivial additions are expressly disclosed by Hulusi. Ex-1012 

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at ¶73. Hulusi discloses a portable wireless device (e.g., NFC device 108), such as 

a smart phone or mobile computing device, that wirelessly communicates with 

external devices to gain access to a secure resource by, for example, unlocking a 

door. Ex-1005 at ¶¶[0040], [0055], [0088], Figs. 1, 2, 4, and 7. Hulusi’s device 

houses a processor (e.g., processor 204 highlighted in yellow below), a memory 

(e.g., memory 208 and data storage 212 highlighted in orange below), a battery (e.g., 

power control module 260 highlighted in green below), and an NFC antenna 224 

configured for NFC communications (highlighted in purple below). Id. at ¶¶[0046], 

[0049], [0054] (power control module 260 can be a battery), Fig. 2. Hulusi also 

includes antenna 244 configured for BLE communications (highlighted in blue 

below). Id. at ¶¶[0089] (NFC device 108 can be configured to communicate using 

BLE), [0049] (dedicated antenna 244 can be used for Bluetooth communications), 

Fig. 2. 

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Id. at Fig. 2. 

(i) Motivation to Combine 

In addition to the reasoning set forth above regarding limitation 11a and in 

Section VIII.H, a POSITA would have been motivated to modify the portable 

wireless device of Soleimani according to the teachings of Hulusi. Ex-1012 at ¶¶73-

76. 

A POSITA would have been motivated to modify the Soleimani device to 

include a battery, as taught in Hulusi, to improve user experience by improving 

portability and rechargeability of the device. Ex-1012 at ¶75. With a rechargeable 

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battery, a user could interact with numerous access points of an access control 

system for an extended period of time, thereby increasing convenience for the user. 

Id.; Ex-1003 at 1:5-11 (disclosing the aim to provide convenient access to privileged 

areas and promoting the portability of a wearable). 

A POSITA would also have been motivated to modify the Soleimani device 

to include independent BLE and NFC antennas, as taught in Hulusi, to improve user 

experience by improving versatility in interfacing with other external devices. Ex1012 at ¶76; Section VIII.H. With a dedicated antenna for each of BLE and NFC, a 

user could still interact with an access control system even if one antenna stopped 

working. Ex-1012 at ¶76; Ex-1003 at 1:5-11 (disclosing the aim to provide 

convenient and secure access to privileged areas and promoting the portability of a 

wearable device). Such modification also increases the versatility of the device by 

enabling simultaneous communications with external access systems at differing 

distances—i.e., NFC at short range and BLE at longer range. Ex-1012 at ¶76; Ex1003 at 6:42-47 (indicating that the RF communication unit 214 of the access control 

system uses both NFC and BLE protocols to communicate with wireless mobile 

devices). Moreover, a POSITA would have had a reasonable expectation of success

because Soleimani and Hulusi disclose straightforward components that are based 

on standard BLE and NFC technology and could be readily implemented to provide 

a known and expected result. Ex-1012 at ¶76. 

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4. 11c: “wherein the first and second wireless communication 

antennas are respectively configured for Bluetooth low energy 

(BLE) and near field communication (NFC) communications,”

As discussed in limitation 11b, Soleimani discloses that the wireless mobile 

device can be configured to communicate using wireless protocols such as BLE (id. 

at 8:11-19) and NFC (id. at 6:42-47). A POSITA would understand the benefits of 

including two distinct BLE and NFC antennas for the reasons discussed regarding 

limitation 11b. Ex-1012 at ¶77. 

Hulusi provides additional disclosure rendering this limitation obvious. Ex1012 at ¶78. As discussed regarding limitation 11b, Hulusi discloses an NFC 

antenna 224 configured for NFC communications (Ex-1005 at ¶[0049]) and an 

antenna 244 configured for BLE communications (id. at ¶¶[0089], [0049], Fig. 2). 

5. 11d: “the processor is configured to establish secure 

communication links with remote communication devices using 

the first wireless communication antenna configured for BLE 

communications,” 

Soleimani discloses that the portable wireless device (e.g., wireless mobile 

device 230 highlighted in orange below) transmits message 236 (highlighted in 

yellow below) to RF communication unit 214 (highlighted in red below) using the 

BLE protocol. Id. at 12:53-62, 13:15-18; Ex-1012 at ¶79. As Soleimani discloses, 

“[w]ireless mobile device 230 may be configured to encrypt one or more portions of 

message 236.” Ex-1003 at 12:67-13:6. 

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Id. at Fig. 4. 

6. 11e:

(i) “the memory stores ... [a] public ... identifier[] unique to 

the portable wireless device,” 

Soleimani discloses that, in some embodiments, the RF communication unit 

214 operates in a BLE GAP Broadcaster Role and the wireless mobile device 230 

operates in a BLE GAP Observer role. Id. at 6:25-30, 8:15-19. Thus, RF 

communication unit 214 may broadcast RF advertisement message 220 in a BLE 

beacon format that includes a UUID (Universally Unique Identifier) to uniquely 

identify RF communication unit 214. Ex-1003 at 6:30-35, 11:43-56; see also ExCase 1:20-cv-22945-RNS Document 284-24 Entered on FLSD Docket 04/25/2022 Page 41 of

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1009 at 1576 (“A UUID is a universally unique identifier that is guaranteed to be 

unique across all space and all time.”); Ex-1012 at ¶80. 

Ex-1003 at Fig. 2. 

Significantly, Soleimani expressly discloses that this communication model 

may be “reversed,” such that the RF communication unit 214 operates in BLE GAP 

Observer role and wireless mobile device operates in BLE GAP Broadcaster role. 

Id. at 17:60-18:7. In other words, in this alternative embodiment, mobile device 230 

transmits the RF advertisement 220, including transmission of an advertisement with 

a UUID from the portable user device to the access panel. See id. at 6:30-35; Ex1012 at ¶81. 

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Ex-1003 at Fig. 2. A POSITA would recognize that a UUID in the BLE standard is 

a “public identifier” as claimed by the ’514 patent. Ex-1012 at ¶81; Ex-1009 at 

1576. 

As discussed regarding limitation 11b supra, Soleimani discloses memory 

including ROM “for storing static information and instructions for processor 1104.” 

Ex-1003 at 18:62-65. In view of this disclosure and the disclosure of the wireless 

mobile device 230 broadcasting the Advertisement Message 220 containing the 

UUID, a POSITA would understand that the UUID is stored in memory on the 

wireless mobile device 230. Ex-1012 at ¶¶82-83. 

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(ii) “the memory stores ... [a] private ... identifier[] unique to 

the portable wireless device,” 

Soleimani discloses that the wireless mobile device 230 is configured to 

transmit a private identifier unique to the device to RF communication unit 214 of 

the access panel. For example, Soleimani teaches that when wireless mobile device 

230 approaches an access control point, the wireless mobile device 230 may transmit 

an encrypted message (236) via BLE. Ex-1003 at 12:52-62, 12:67-13:6; Ex-1012 at 

¶84. The transmitted message 236 encodes, for example, “an identifier associated 

with wireless mobile device 230” for encrypted transmission. Ex-1003 at 13:6-

13:14. A POSITA would recognize that the embodiments of Soleimani relating to 

encryption would involve this “identifier” comprising a “private identifier.” Id. at 

12:67-13:14; Ex-1012 at ¶84. Indeed, encryption is a technique for preventing an 

attacker from intercepting, and improperly using a message. Ex-1012 at ¶84. Where 

the information to be transferred is a “private identifier,” Soleimani’s encryption 

techniques would be appropriate. Id. 

RF communication unit 214 performs “validation of message 236, and 

determine[s] whether access should be granted to the secured area or resource 

controlled by access control device 210.” Ex-1003 at 13:15-18; Ex-1012 at ¶85. To 

determine whether to grant access, RF communication unit 214 may, in some 

implementations, pass message 236 to access control server 110, which “maintain(s) 

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a database indicating which users or wireless mobile devices should be granted 

access.” Ex-1003 at 13:26-32; see also id. at 5:11-15. For example, Soleimani 

discloses that certain “wireless mobile devices may not be granted access on 

weekends or during the night, but may be granted access at other times.” Id. at 

13:34-37. A POSITA would recognize that in order for the access panel to validate 

message 236 and determine whether to grant access, the mobile device would have 

to communicate an identifier that is unique to the device to the access panel so that 

the identifier could be compared to the door access information in the access control 

server 110. Ex-1012 at ¶85. 

In view of the above and the discussion regarding the “public identifier” 

portion of limitation 11e, a POSITA would view it obvious to store the identifier 

associated with the mobile device 230 of Soleimani in the memory of mobile device 

230 to facilitate secure wireless communications with numerous external devices as 

the user of the device travels throughout a secure area or building. Ex-1012 at ¶86; 

Ex-1003 at 1:6-22, Figs. 1. 

7. 11f 

“the processor controls the first wireless communication antenna”:

Soleimani discloses that the processor of wireless mobile device 230 executes 

functions stored in memory to perform the disclosed implementations (Ex-1003 at 

18:33-67, 19:17-31), including use of the BLE antenna in broadcasts 

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communications with RF communication unit 214. Id. at 6:30-35, 17:60-18:7, Figs. 

2-10; Ex-1012 at ¶87. 

“to emit a periodic beacon signal broadcasting the unique public identifier 

of the portable wireless device using BLE communications,”: Soleimani discloses 

that the portable wireless device (e.g., wireless mobile device 230) can operate in a 

BLE GAP (Generic Access Profile) Broadcaster role, in which it broadcasts RF 

advertisement 220 in “beacon” format. Id. at 6:19-37, 17:60-18:7, Figs. 2-3. As 

discussed regarding limitation 11e supra, the RF advertisement 220 includes the 

unique public identifier (e.g., UUID) that identifies the wireless mobile device 230. 

Id. at 6:19-37, 11:38-42, 17:60-18:7; Ex-1012 at ¶88. 

8. 11g 

“the processor controls the first wireless communication antenna”: 

Soleimani discloses this as described regarding limitation 11f, supra. 

“to transmit the private identifier only across secure communication links 

established with remote communication devices using BLE communications”: 

Soleimani discloses that wireless mobile device 230 can transmit information using 

encryption to “secure communications” between it access control device 160 like 

RF communication unit 214. Ex-1003 at 5:12-19. For example, the wireless mobile 

device uses encrypted BLE communications (e.g., BLE GATT communication link) 

to transmit the private identifier uniquely identifying the device (e.g., “identifier 

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associated with the wireless mobile device 230”) only across secure communication 

links (e.g., encrypted) established with remote communication devices (e.g., RF 

communication unit 214). Ex-1003 at 12:53-13:8; see id. at 5:11-24. Soleimani 

discloses wherein wireless mobile device 230 encrypts message 236 using, for 

example, a key associated with the device, to encode the private identifier. As 

discussed above regarding limitation 11e, in some cases access is granted by 

comparing the private identifier of the device to a database indicating which devices 

should be granted access. Id. at 13:26-37. In light of these disclosures, a POSITA 

would understand that a private identifier used to access a secured area or resource 

should only be transmitted over a secure communications link, such as an encrypted 

link, to avoid theft or inadvertent disclosure of the private identifier. Ex-1012 at 

¶90; Ex-1003 at 1:6-11. 

XI. GROUND 2: BERG, BADINSKI, AND GOOSEN RENDER OBVIOUS 

CLAIM 11 

Petitioner relies on Berg as a primary reference. Berg describes a portable 

wireless device that interacts with an access system for authentication. Additionally, 

Petitioner relies on Badinski to provide the recited form factor described in limitation 

11a and Goosen to provide the periodic beacon signal described in limitation 11f. 

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A. Claim 11 

1. 11pre 

“[a] portable wireless device”: Berg discloses a wearable device (e.g., 104, 

512) that is portable and configured for wireless communications related to entering 

or exiting a protected area. Ex-1006 at ¶¶[0010], [0014], Figs. 1, 2, 5A-5C. Berg 

discloses wearable devices that can include, for example, “watches, rings, belts, 

bracelets, jewelry, clothing, buttons, necklaces, shoes, hats, pins,” and even “may be 

worn as an implant introduced intradermally (e.g., within the skin, etc.) and/or 

subdermally (e.g., under the skin, etc.) in a user.” Id. at ¶[0012]. Berg also discloses 

that the wearable device can include “one or more antennas 212A-N” that can 

communicate with external devices using a variety of wireless communication 

protocols including both BLE and NFC. Id. at ¶[0081], Fig. 2; see also id. at 

¶¶[0079], [0014], [0071]; Ex-1012 at ¶92. 

2. 11a 

Berg discloses a wearable device that houses a processor, memory, and 

communications capability that can exist in several small form factors, including as 

a watch, ring, button, and subdermal implant. Ex-1006 at ¶[0012], Fig. 2. Berg does 

not expressly recite dimensions, but its teachings suggest a form factor within the 

recited dimensions. Ex-1012 at ¶93. Additionally, Badinski discloses a similar 

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device, proving that such dimensions were achievable and desirable for devices like 

those disclosed in Berg. Id. at ¶¶93-102.

“a body having a fully enclosed cavity”: A POSITA would recognize that 

Berg discloses a wearable device that includes an enclosure to house electrical 

components as well as a small form factor to increase portability and be suitable as, 

for example, a subdermal implant. Ex-1012 at ¶94; see Ex-1006 at ¶¶[0006], [0012]. 

“the body having all dimensions equal to or smaller than 2.5 inches, and 

the body having a thickness equal to or smaller than 5⁄8 inch”: A POSITA would 

also view the recited dimensions as obvious over Berg’s teachings. Berg specifically 

teaches form factors (e.g., a “key fob,” Ex-1006 at ¶[0004], and/or “watches, rings, 

belts, bracelets, jewelry, [etc.],” id. at ¶[0012], which are all small form factors and 

consistent with the recited dimensions. Ex-1012 at ¶95. Berg’s teaching of portable 

devices in the form of subdermal implants also strongly suggests a device well 

within the recited dimensions. Id. Portable wireless devices, including multiantenna devices, within the recited form factor were common in the prior art, were 

desirable because their small size and light weight made them easy to carry for users. 

Id. There are no technical reasons that prevent Berg’s device from meeting the form 

factor, which is actually relatively large for portable devices of this type, and a 

POSITA would be motivated to implement a form factor within the recited 

dimensions to increase portability. Id. Ultimately, this limitation recites nothing 

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more than an obvious design choice, as discussed regarding limitation 11a in Ground 

1. Id. 

While a POSITA would find it obvious for Berg’s wearable device to exist in 

the recited form factor, to the extent PO argues otherwise, such dimensions are 

expressly disclosed by Badinski. Badinski discloses a wearable computing device 

(“WCD”) in the form of a wrist band, bracelet, ring, “or any other type of wearable 

accessory.” Ex-1007 at ¶[0155], Fig. 1A; Ex-1012 at ¶96. Badinski also discloses 

that the WCD includes a processor (Ex-1007 at ¶[0162]), a battery (id.), and a 

memory (id. at ¶¶[0165]). Badinski also teaches communication by a single device 

according to multiple protocols, including “NFC” and “Bluetooth,” (id. at ¶[0170]), 

and clarifies that the SoC IC can include BLE capability, (id. at ¶[0270]). Like Berg, 

Badinski discloses a wearable (e.g., WCD 2510 highlighted in orange below) that 

communicates with an access node (e.g., 2530 highlighted in red below) to unlock a 

door using BLE communications. Id. at ¶¶[0264], [0265], [0270], Fig. 25. 

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Id. at Fig. 25.

“a body having a fully enclosed cavity”: Badinski discloses a housing (e.g., 

1210) of WCD that houses all device components in a “hermetically sealed” cavity 

(e.g., 1220 highlighted below in yellow) excluding all water and debris. Ex-1007 at 

¶¶[0193], [0197], Figs. 12A-12F; see also id. at Figs. 4-8, 13-16C; Ex-1012 at ¶97. 

 

Ex-1007 at Fig. 4. 

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“the body having all dimensions equal to or smaller than 2.5 inches, and 

the body having a thickness equal to or smaller than 5⁄8 inch;”: Badinski discloses 

that housing 1210 can take on various form factors. Ex-1007 at ¶[0192]; Ex-1012 

at ¶98. For example, Badinski discloses that the WCD interior diameter d1 can be 

between 12mm to 24mm (0.47 inches to 0.95 inches) and the exterior diameter d2

can be between 18mm to 30mm (0.71 inches to 1.18 inches). Ex-1007 at ¶[0192], 

Fig. 12B. Badinski also discloses that the thickness between diameters d1 and d2 can 

be, for example, between 1.5mm to 3mm (0.06 inches to 0.12 inches). Id. Badinski 

further discloses that the width of the WCD in the longitudinal direction (“WR”) can 

be, for example, from 3mm to 8mm (0.12 inches to 0.31 inches). Id. at ¶[0192], Fig. 

12A.

 

Id. at Figs. 12A and 12B. 

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(i) Motivation to Combine 

A POSITA would have been motivated to modify the portable wireless device 

of Berg to include a body having a fully enclosed and watertight cavity, the body 

having dimensions as taught in Badinski, to improve user experience by increasing 

wearability, portability, and protection from external elements like liquids when 

entering or exiting a protected area. Ex-1007 at ¶¶[0193], [0197]; Ex-1012 at ¶¶99-

101; Section VIII.H. This modification is supported by Berg’s disclosure to promote 

the portability and interoperability of the wearable device. Ex-1006 at ¶¶[0006], 

[0009]; Ex-1012 at ¶99. It would have been obvious to a POSITA at the time of 

invention to modify the form factor of Berg to easily transport a wearable and offer 

versatility in application, considered known and expected results. Ex-1012 at ¶99. 

Additionally, design objectives to protect sensitive credentials in access 

control systems would have favored combining Berg and Badinski and would have 

motivated a POSITA to combine these references to achieve a small and durable 

form factor. Ex-1012 at ¶100. 

Moreover, a POSITA would have had a reasonable expectation of success

because Berg and Badinski disclose straightforward techniques that are based on 

standard technology components and could be readily implemented to provide a 

known and expected result. Ex-1012 at ¶101; Ex-1006 at ¶¶[0006], [0009]; Ex-1007 

at ¶[0270]. 

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As discussed above in limitation 11a of Ground 1, this limitation recites 

nothing more than an obvious design choice. Ex-1012 at ¶102. 

3. 11b 

Berg describes a portable wireless device with a processor (e.g., 208 boxed in 

purple below; Ex-1006 at ¶[0079]), a memory (e.g., 204 boxed in red below; id.), 

and a battery (id. at ¶[0082] (not shown below)). Id. at ¶[0012], [0019], [0080], Fig. 

2. Berg also discloses first and second wireless communication antennas (e.g., 212A 

and 212B boxed in blue and orange below) disposed in the cavity of the wearable 

device. Id. at ¶¶[0081], [0079], Fig. 2; Ex-1012 at ¶103. 

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Ex-1006 at Fig. 1. Berg discloses that the first and second antennas are configured 

for wireless communication using “[a]ny number of communication protocols” 

including BLE and NFC. Id. at ¶¶[0014], [0071], [0081]. 

4. 11c 

Berg further discloses that the wearable device includes first and second 

antennas (e.g., 212A and 212B; see Fig. 2 supra) “configured to enable wireless 

communications between the wearable device 104 and a reading device 112.” Ex1006 at ¶[0081]. The first and second wireless communication antennas can be 

respectively configured for numerous protocols, including BLE and NFC 

communications. Ex-1006 at ¶¶[0014], [0081]. Berg describes that wearable device 

104 can “communicate with a reading device 112 across one or more wireless 

communication connections,” which “can include communications via at least one 

of ... BLE [and] NFC.” Id. at ¶[0071]; Ex-1012 at ¶104. 

5. 11d

Berg discloses that the processor 208 of the wearable device executes 

functions stored in memory “to run other components of the wearable device 104,” 

such as the BLE and NFC antennas. Ex-1006 at ¶¶[0080], [0079] (describing 

antennas as “components”), Fig. 2; see id. at ¶[0083]. As described in connection 

with limitation 11c, the wearable device uses a first wireless communication antenna 

configured for BLE communications to communicate with other remote devices, 

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such as reading device 112 and mobile device 108. Id. at ¶[0081], Figs. 1 and 2; Ex1012 at ¶105. Furthermore, Berg discloses that these BLE communication links with 

remote communication devices can be secure communication links. Ex-1006 at 

¶[0133] (“wireless links can also be secure links and may be capable of 

communicating encrypted information”). For example, Berg discloses that after 

authenticating a wearable device, further communication of sensitive information 

such as keys, codes, and credentials may be required to occur over an encrypted 

communication link. Id. at ¶[0073]. 

6. 11e: 

(i) “the memory stores ... [a] public ... identifier[] unique to 

the portable wireless device,” 

Berg discloses a wearable device (e.g., 104 highlighted in orange below) with 

memory 204 that stores “credential information and/or access control information.” 

Ex-1006 at ¶[0080]. “Credential information” includes “unique identifications, 

manufacturer identification, passwords, keys, encryption schemes, transmission 

protocols, and the like.” Id. at ¶[0020]. Berg explains that the purpose of the 

“credential information” is “to authenticate and/or to verify its authenticity with a 

reader, mobile device, and/or interrogator.” Id. A POSITA would understand that 

this teaching requires that the “credential information” be “unique to the device.” 

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Ex-1012 at ¶106. Thus, Berg’s “credential information,” stored on the portable 

device, is a “public identifier” as claimed. Id. 

That Berg’s “credential” information is a “public identifier” is confirmed by 

Berg’s further description of how the “credential information” is used in the overall 

authentication/validation process. Ex-1012 at ¶107. Berg describes a process 

wherein a wearable device 104 is authenticated with a reading device 112 before 

validation communications can occur, during which access control information is 

exchanged. Ex-1006 at ¶[0073] (“In one embodiment, authentication may be 

required between the wearable device 104 and the reading device 112 before further 

communications are enabled.”). Berg discloses that the authentication process may 

include “simple authentication based on site codes, trusted data formats, shared 

secrets, and/or the like.” Id. A POSITA would recognize that Berg is describing 

that the reading device receives “credential information” unique to the mobile device 

for purposes of performing an initial authentication of the user’s identity. Ex-1012 

at ¶107; Ex-1006 at ¶[0073]. As Berg describes, this may be performed in advance 

of “further communications” that involve the exchange of sensitive “access control 

information” over a more secure, encrypted channel. Ex-1006 at ¶¶[0073]-[0074]. 

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Id. at Fig. 1. 

(ii) “the memory stores ... [a] private ... identifier[] unique to 

the portable wireless device,” 

In addition to “credential information,” Berg discloses that its portable device 

with memory 204 stores “access control information,” which can include “unique 

identifications, manufacturer identification, passwords, keys, encryption schemes, 

transmission protocols, and the like.” Ex-1006 at ¶¶[0080] (“access control 

information”; stored in memory). As Berg describes, “access control information is 

more sensitive and may require more involved validation via, for example, an 

encrypted exchange of access control information.” Id. at [0073]. A person of 

ordinary skill in the art would recognize that Berg’s “access control information” is 

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the “private identifier” that uniquely identifies the device, as claimed. Ex-1012 at 

¶108. 

This is confirmed by Berg’s further description of the “access control 

information.” After an authentication process (described in the prior limitation), 

Berg describes how “further communications” can be enabled. Ex-1006 at ¶[0073]. 

Such “further communications” may involve the reading device requesting “access 

control information” from the wearable device for the purposes of validating the 

wearable device to the reading device. Id. at ¶[0074]; Ex-1012 at ¶109. Because 

“access control information” is more sensitive, Berg teaches that the use of an 

“encrypted exchange of access control information.” Ex-1006 at ¶[0073]; Ex-1012 

at ¶109. 

Thus, as a POSITA would recognize, Berg is teaching that the portable device 

transmits “credential information” (i.e., a “public identifier”) to a reading device for 

initial authentication, which can then trigger the reading device requesting more 

sensitive “access control information” (i.e., a “private identifier”) over an encrypted 

channel for validation. Ex-1012 at ¶110. Upon validation, the reading device 112 

may provide access of the device 104 to “a secure room” by unlocking a physical 

door, for example. Ex-1006 at ¶[0074]; see also id. at ¶[0100] & Figs 4A-4D. In 

sum, based on Berg’s teachings, a POSITA would recognize the “access control 

information” as the “private identifier” of the ’514 patent. Ex-1012 at ¶110. 

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7. 11f 

“the processor controls the first wireless communication antenna”: Berg 

discloses that the processor 208 of the wearable device executes functions stored in 

memory “to run other components of the wearable device 104,” such as the BLE and 

NFC antennas. Ex-1006 at ¶¶[0080] (processor runs components of wearable 

device), [0079] (describing antennas as “components”), see also id. at ¶[0083] & 

Fig. 2; Ex-1012 at ¶111. 

“to emit a periodic beacon signal broadcasting the unique public identifier 

of the portable wireless device using BLE communications,”: Berg does not 

expressly disclose that the wearable device emits a periodic beacon signal 

broadcasting the unique public identifier. However, this feature would be obvious 

in view of the teachings in Goosen. Ex-1012 at ¶¶112-16. 

Goosen describes a small, stationary device called a “Beacon” that uses BLE 

to periodically transmit advertisement packages for applications at expositions and 

conferences. Ex-1010 at 2-3, 9-10; see id. at 13 (“In advertising mode, the BLE 

device periodically transmits a data package containing information about the device 

and its services.”). The BLE beacon message includes a UUID (i.e., a universal 

unique identifier, as provided in the BLE specification) associated with the device. 

Id. at 10, 15-16 (describing that the Beacon’s advertising transmission includes a 

UUID in the original configuration). When a consumer walks near a booth at an 

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expo, his or her smartphone will receive the beacon signal, including the UUID, 

which the smartphone can use to identify the source of the beacon, and provide 

location sensitive information to a server. Id. at 2-3, 13; Ex-1012 at ¶113. 

As Goosen teaches, the implementation of a “beacon” is really just a “very 

simple” implementation of BLE-enabled devices that periodically advertise 

themselves with special advertising packages. Ex-1010 at 9. Goosen also teaches 

how this is merely a logical application of the capability already included in the BLE 

specification, which provides a “Generic Access Profile (GAP)” defining the 

different Bluetooth modes that a device may take on (i.e., “advertising,” 

“observing,” “central,” or “peripheral”). Id. at 7-8; Ex-1012 at ¶114. 

Significantly, while the aforementioned disclosures of Goosen teach the use 

of stationary beacons transmitting UUIDs, Goosen further describes that the roles of 

the mobile device and Beacon can be reversed, such that the smartphone transmits 

advertising messages and the Beacon scans for messages. Ex-1010 at 37 (Section 

7.3: “Role Reversal”). In fact, Goosen teaches that such an “inverted” 

communication model, where the mobile device takes on the beacon role, “can lead 

to some very interesting applications” in which “the system [can] replace 

smartphones with something smaller, more efficient, like bracelets, or build[] BLE 

capabilities into watches.” Id.; Ex-1012 at ¶115. 

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As a POSITA would recognize, Goosen’s teaching to implement a portable, 

BLE-beacon to periodically transmit a UUID, dovetail with Berg’s teachings 

regarding compact mobile devices that transmit unique identifiers for purposes of 

authentication with, for example, secured doors. Ex-1012 at ¶116. Goosen, in fact, 

teaches the use of “[w]earable advertisers” in a “smart home” environment to 

perform applications, such as unlocking doors. Ex-1010 at 38. In view of the 

disclosures of Berg and Goosen, a POSITA would consider it obvious to use a BLE 

antenna to emit a periodic beacon signal broadcasting a unique public identifier of a 

portable wireless device to facilitate wireless communications with external devices 

while making efficient use of battery power. Ex-1012 at ¶116; Ex-1010 at 1, 41 

(highlighting the battery advantages of BLE). A POSITA would further recognize 

the advantage of using BLE advertising broadcasts because of its low power usage 

and the resulting ability to use a smaller and more portable wireless device. Ex-1012 

at ¶116; Ex-1010 at 43. 

8. 11g 

“the processor controls the first wireless communication antenna”: Berg 

discloses this as described regarding limitation 11f, supra. 

“to transmit the private identifier only across secure communication links 

established with remote communication devices using BLE communications”: 

Berg discloses that only after authenticating a wearable device, further 

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communication of sensitive access control information such as keys, codes, and 

credentials can require an encrypted communication link with the reading device 

112. Ex-1012 at ¶118. Specifically, Berg teaches that “access control information 

is more sensitive and may require more involved validation via, for example, an 

encrypted exchange of access control information.” Ex-1006 at ¶[0073]. Thus, Berg 

teaches the use of an encrypted channel BLE communication links between a 

wearable device and a reading device 112 can be secure communication links. Id. 

at ¶[0133] (“wireless links can also be secure links and may be capable of 

communicating encrypted information”); Ex-1012 at ¶118. 

A POSITA would recognize how in a secure environment, the access control 

information that is used to determine whether to unlock a secure door for a user, is 

sensitive information that could be misused if intercepted by an attacker. Ex-1012 

at ¶119; see, e.g., Ex-1010 at 42 (“Beacons exist, and so do devices that can intercept 

their signals.”). Thus, in order maintain security, a POSITA would recognize the 

advantages of transmitting access control information only across a secure, 

encrypted link, as taught by Berg. Ex-1012 at ¶119. 

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XII. GROUND 3: BERG, BADINSKI, AND BLE SPECIFICATION 

RENDER OBVIOUS CLAIM 11 

For this ground, Petitioner relies on Berg and Badinski as in Ground 2. 

Additionally, Petitioner relies on the BLE Specification for its disclosure regarding 

the periodic beacon signal described in limitation 11f. Ex-1012 at ¶120. 

A. Claim 11 

1. 11pre-11e and 11g 

These limitations are disclosed by Berg and Badinski as described above in 

Ground 2. 

2. 11f 

“the processor controls the first wireless communication antenna”: Berg 

discloses this limitation as discussed in limitation 11f of Ground 2. 

“to emit a periodic beacon signal broadcasting the unique public identifier 

of the portable wireless device using BLE communications,”: Berg does not 

expressly disclose that the wearable device emits a periodic beacon signal 

broadcasting the unique public identifier. However, this feature would be obvious 

in view of the teachings in the BLE Specification. Ex-1012 at ¶¶123-127. Although 

Ground 2 relies on Goosen which describes teachings of the BLE Specification, this 

ground is based on the BLE Specification itself for completeness. 

The BLE Specification discloses a “public device address” that uniquely 

identifies a wireless device during a BLE advertising event to devices in proximity. 

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Ex-1009 at 2197; Ex-1012 at ¶124. For example, during an advertising event, a 

device transmits a connectable undirected advertising (“ADV_NONCONN_INFO,” 

Ex-1009 at 2222) channel packet PDU with a payload containing that device’s public 

device address (i.e., “AdvA” field).4 Id. at 2204, 2221-22. 

Id. at 2204. The BLE Specification also discloses that a mobile device can use BLE 

to broadcast the public device address by emitting a periodic beacon signal on an 

advertising event interval (including fixed-length “advInterval” and pseudorandomlength “advDelay”). Id. at 2223; Ex-1012 at ¶124. 

 

4

 The same is true for all other advertising event types ADV_IND, 

ADV_DIRECT_IND, and ADV_SCAN_IND. Ex-1009 at 2203-05. 

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Ex-1009 at 2223. 

(i) Motivation to Combine 

A POSITA would be motivated to review and incorporate portions of the BLE 

Specification in view of Berg’s disclosure of a wearable device using a BLE antenna 

for BLE communications. Ex-1006 at ¶¶[0014], [0081], Fig. 2; Ex-1012 at ¶125; 

Section VIII.H. As a POSITA would recognize, the BLE Specification’s teaching 

to implement a BLE-beacon to periodically transmit a public device address, 

dovetails with Berg’s teachings regarding compact mobile devices that use BLE to 

transmit unique identifiers for purposes of authentication with, for example, secured 

doors. Ex-1012 at ¶125; Ex-1006 at ¶¶[0010], [0014]. In view of the disclosures of 

Berg and the BLE Specification, a POSITA would recognize as well-known and 

obvious at the time of invention to use a BLE antenna to emit a periodic beacon 

signal broadcasting a unique public identifier of a portable wireless device to 

facilitate wireless communications with external devices while making efficient use 

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of battery power. Ex-1012 at ¶125. A POSITA would further recognize the 

advantage of using BLE advertising broadcasts because of its low power usage and 

the resulting ability to use a smaller and more portable wireless device. Id. 

Additionally, design objectives such as advances in access control technology, 

including device and communication protocols that evolve to offer more security, 

portability, and interoperability, like BLE as demonstrated by its codification as a 

wireless specification, would have favored combining Berg and the BLE 

Specification and would have motivated a POSITA to combine these references to 

achieve improvements and in battery efficiency and wireless interactions with access 

and payment portals. Ex-1012 at ¶126. 

Moreover, a POSITA would have had a reasonable expectation of success

because Berg and the BLE Specification disclose straightforward techniques that are 

based on standard technology and could be readily implemented to provide a known 

and expected result. Ex-1012 at ¶127. 

XIII. GROUND 4: RAINA, YUEN, AND HULUSI RENDER OBVIOUS 

CLAIM 11 

For this ground, Petitioner relies on a primary reference, Raina, which 

discloses an access control system in which devices are configured to wirelessly 

provide access information to receiving systems to gain access. Raina describes a 

portable wireless device that interacts with an access system for authentication and 

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validation. Petitioner also relies on Yuen to provide the recited form factor and 

Hulusi to disclose the recited antennas. Ex-1012 at ¶128. 

A. Claim 11 

1. 11pre 

“[a] portable wireless device”: Raina discloses a wearable device (e.g., 

“mobile device 130”) that is portable and configured for wireless communications 

with “zone computers 150” for gaining access to a secure area. Ex-1008 at ¶[0022], 

Figs. 1-3. Raina discloses that the mobile device 130 can take the form of “mobile 

phones, tablets, wearable computers, such as GOOGLE glass or smart devices 

embedded into clothing, a smart watch, fitness tracker, or wireless enabled shoes, or 

some other type of mobile computer.” Id. at ¶[0024]. Raina also discloses that the 

wearable device can include multiple, distinct interfaces 601 that communicate with 

external devices using wireless communication protocols including both BLE and 

NFC. Id. at ¶[0058], Fig. 6 (elements 601a, 601b, and 601c); Ex-1012 at ¶129. 

2. 11a 

Raina discloses a wearable device that houses a processor (e.g., processor 

602), memory (e.g., data storage 604), and wireless communications interfaces 

(e.g. ̧601b BLE and 601c NFC). Ex-1008 at ¶¶[0057]-[0059], Fig. 6. Raina teaches 

that these elements can exist in several small form factors, including specifically a 

“smart watch,” “fitness tracker,” and “smart devices embedded into clothing.” Id.

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at [0024]. While Raina does not expressly recite dimensions, its teachings suggest 

a form factor within the recited dimensions and render such a form factor obvious. 

Ex-1012 at ¶130. Additionally, Yuen discloses a similar device, proving that such 

dimensions were achievable and desirable for devices like those disclosed in Raina. 

Ex-1012 at ¶¶130-37. 

“a body having a fully enclosed cavity”: A POSITA would recognize that 

Raina discloses a wearable device that includes an enclosure to house electrical 

components as well as a small form factor to increase portability and be suitable as, 

for example, a fitness tracker. Ex-1008 at ¶[0024]; Ex-1012 at ¶131. 

“the body having all dimensions equal to or smaller than 2.5 inches, and 

the body having a thickness equal to or smaller than 5⁄8 inch”: A POSITA would 

also view the recited dimensions as obvious over Raina’s teachings. Ex-1012 at 

¶132. Raina specifically teaches form factors (e.g., a “smart watch,” “fitness 

tracker,” and “smart devices embedded into clothing”), that are all small form factors 

and consistent with the recited dimensions. Ex-1008 at [0024]. Portable wireless 

devices, including multi-antenna devices, within the recited form factor were 

common in the prior art and were desirable because their small size and light weight 

made them easy to carry for users. Ex-1012 at ¶132. There are no technical reasons 

that prevent Raina’s device from meeting the form factor, which is actually relatively 

large for portable devices of this type, and a person of ordinary skill in the art would 

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be motivated to implement a form factor within the recited dimensions to increase 

portability. Id. 

While a POSITA would readily understand based on the Raina’s disclosure 

that it was obvious for Raina’s wearable device to exist in the recited form factor, to 

the extent PO argues otherwise, such dimensions are expressly disclosed by Yuen. 

See limitation 11a of Ground 2; Ex-1012 at ¶133. Yuen’s teachings are suggested 

by Raina, which specifically discloses that the mobile devices may comprise “fitness 

trackers.” Ex-1008 at ¶[0024]; Ex-1012 at ¶133. 

(i) Motivation to Combine 

A POSITA would have been motivated to modify the portable wireless device 

of Raina to include the dimensions as taught in Yuen, to improve user experience by 

increasing wearability, portability, and protection from external elements like liquids 

when entering or exiting a protected area. Ex-1004 at 29:20-31, 33:49-55, Figs. 2B3C; Ex-1012 at ¶¶132-37; Section VIII.H. This modification is supported by Raina’s 

disclosure to protect sensitive credentials and promote the portability and 

interoperability of a wearable device. Ex-1008 at ¶¶[0004]; Ex-1012 at ¶134. It 

would have been obvious to a POSITA at the time of invention to modify the form 

factor of Raina to easily transport a wearable and offer versatility in application, 

considered known and expected results. Ex-1012 at ¶134. 

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Design and market forces such as “advances in sensor, electronics, and power 

source miniaturization” would have favored combining Raina and Yuen and would 

have motivated a POSITA to combine these references to achieve a small and 

durable form factor. Ex-1004 at 1:43-52; Ex-1008 at ¶[0024]; Ex-1012 at ¶135. 

Indeed, Yuen discloses that small form factor wearables such as the Fitbit Ultra and 

the Fitbit Flex were already available for sale. Ex-1004 at 1:43-52, 17:25-33; Ex1012 at ¶135. 

Moreover, a POSITA would have had a reasonable expectation of success

because Raina and Yuen disclose straightforward techniques that are based on 

standard technology components and could be readily implemented to provide a 

known and expected result. Ex-1012 at ¶136; Ex-1008 at ¶[0059]. 

Ultimately, this limitation recites nothing more than an obvious design choice. 

See limitation 11a of Ground 1, supra. Ex-1012 at ¶137. 

3. 11b 

Raina discloses a wearable device that houses a processor (e.g., processor 602 

highlighted in yellow below), a memory (e.g., data storage 604 highlighted in orange 

below), and first and second wireless communications interfaces (e.g. ̧601b BLE and 

601c NFC highlighted in blue and purple respectively) that can exist in several small 

and mobile form factors, including as a smart watch, fitness tracker, smart devices 

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embedded into clothing, “or some other type of mobile computer,” Ex-1008 at 

¶[0024]; id. at ¶¶[0059], [0058]; Ex-1012 at ¶138. 

Ex-1008 at Fig. 6. 

A POSITA would view the recited battery as obvious over Raina’s teachings. 

Raina specifically teaches mobile devices that wirelessly communicate (e.g., smart 

watch, fitness tracker, id. at ¶[0024]) which conventionally include batteries. Ex1012 at ¶139. A POSITA would also recognize a battery is necessary to power the 

processor 602 and wireless communications interfaces 601a-c of the mobile device. 

Id. Raina’s teaching that Bluetooth Classic “may consume more battery power” than 

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BLE strongly suggests the presence of a battery in Raina’s mobile devices. Ex-1008

at ¶[0024]; Ex-1012 at ¶139. 

In a similar manner, a POSITA would view the recited antennas as obvious 

over Raina’s teachings. Ex-1012 at ¶140. A POSITA would recognize that Raina’s 

disclosure of wireless communications interfaces 601a-c implies use of antennas to 

facilitate communications with remote devices such as zone computers 150a. Ex1008 at ¶[0058], Fig. 6; Ex-1012 at ¶140. A POSITA would find including antennas 

obvious in view of Raina’s teachings that the mobile device can be a smart watch or 

fitness tracker—devices that routinely use antennas to communicate stored data with 

external devices like a laptop or smartphone. Ex-1012 at ¶140. Moreover, Raina 

discloses that the mobile device wirelessly communicates using BLE—an activity 

that conventionally requires an antenna. Id. 

While a POSITA would readily understand based on the Raina’s disclosure 

that its system would include a battery and antennas, to the extent PO argues 

otherwise, such trivial additions are expressly disclosed by Hulusi. See limitation 

11b of Ground 1; Ex-1012 at ¶¶141-44. 

(i) Motivation to Combine 

In addition to the reasoning set forth in Section VIII.H, a POSITA would have 

been motivated to modify the portable wireless device of Raina according to the 

teachings of Hulusi. Ex-1012 at ¶¶141-44. 

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A POSITA would have been motivated to modify the Raina device to include 

a battery, as taught in Hulusi, to improve user experience by enabling improved 

portability and rechargeability of the device. Ex-1012 at ¶143; Section VIII.H. With 

a rechargeable battery, a user could interact with numerous access points of an access 

control system for an extended period of time, thereby increasing convenience for 

the user. Ex-1012 at ¶143; Raina at ¶[0004] (recognizing the inconvenience in 

conventional embodiments that lack a battery to support wireless transmissions 

facilitating access to secure areas). 

A POSITA would also have been motivated to modify the Raina device to 

include independent BLE and NFC antennas, as taught in Hulusi, to improve user 

experience by improving versatility in interfacing with other external devices. Ex1008 at ¶[0058]; Ex-1012 at ¶144; Section VIII.H. With a dedicated antenna for 

each of BLE and NFC, a user could still interact with an access control system even 

if one antenna stopped working. Ex-1012 at ¶144; Ex-1008 at ¶¶[0058], [0061] 

(disclosing the wireless device with an NFC interface and a BLE interface). Such 

modification also increases the versatility of the device by enabling simultaneous 

communications with external access systems at differing distances—i.e., NFC at 

short range and BLE at longer range. Ex-1012 at ¶144; Ex-1008 at ¶[0061] 

(recognizing the difference in range of NFC and BLE protocols). Moreover, a 

POSITA would have had a reasonable expectation of success because Raina and 

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Hulusi disclose straightforward components that are based on standard BLE and 

NFC technology and could be readily implemented to provide a known and expected 

result. Ex-1012 at ¶144. 

4. 11c 

As discussed in limitation 11b, Raina expressly discloses separate BLE and 

NFC communication interfaces, which would be understood to imply separate 

antennas to facilitate these communication protocols. Ex-1012 at ¶145. Hulusi 

discloses an NFC antenna 224 configured for NFC communications (Ex-1005 at 

¶[0049]) and an antenna 244 configured for BLE communications (id. at ¶¶[0089], 

[0049], Fig. 2). 

5. 11d 

Raina discloses the processor 602 of the mobile device 130a runs the operating 

system and access control applications stored in data storage 604. Ex-1008 at 

¶[0059]. Raina also discloses that the mobile device 130a can establish a secure 

communication link with zone computer 150a. Id. at ¶[0051]. For example, the 

mobile device 130a may use keys “to encrypt or encipher the message” between the 

mobile device 130 a and the zone computer 150 a.” Id. In another example, “both 

encrypting and MACing might be used to secure the communication.” Id.; see id. at 

¶[0055]; Ex-1012 at ¶146. 

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Raina discloses use of these secure communications in order to allow the 

mobile device 130a to provide the zone computer 150a with information that it needs 

to determine whether to grant access to the mobile device 130a. Ex-1008 at 

¶¶[0063]-[0064]. When a mobile device 130a is in a specific location (e.g., lane 

110a) of an access control area 102, the mobile device 130a can exchange messages 

with the zone computer 150a “in a secure manner using one or more encryption keys 

via a short-distance communication interface (e.g., Bluetooth) to mutually 

authenticate each other and validate a user associated with the mobile device.” Ex1008 at ¶[0064]; see also id. at ¶[0050] & Fig. 5 (Step I); Ex-1012 at ¶147. Raina 

discloses wherein this validation process can occur using BLE. Ex-1008 at ¶[0029]; 

see id. at ¶[0058]. 

6. 11e

(i) “the memory stores ... [a] public ... identifier[] unique to 

the portable wireless device,”

Raina discloses a “mobile device unique ID, which includes the calculated 

unique ID or IDs” that is broadcast by the mobile device to the zone computers. Ex1008 at ¶[0046]; see also id. at Fig. 5 (Step E). This “mobile device unique ID” is a 

“public identifier” as claimed. Ex-1012 at ¶¶148-151. 

Specifically, Raina discloses a process where the mobile device receives a 

signal with a UUID from a stationary beacon at the access control point. Ex-1008 

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at ¶[0046]. This signal is used to determine whether the mobile device is located 

within an access lane 110, id. at Fig. 5 (Step C), and, if so, causes the access control 

application 132 running on the mobile device to calculate a unique ID for the mobile 

device, id. at Fig. 5 (Step D). The mobile device then itself begins acting as a beacon, 

broadcasting its calculated “unique ID” to a local zone computer using a short-range 

broadcast, such as BLE. Id. at ¶[0046]; see also id. at ¶[0024] (“[T]he mobile 

devices 130 themselves may operate as a beacon and broadcast a beacon signal or 

act as a peripheral, enabling services and/or characteristics, or act as a central and 

start searching for peripherals with certain services and/or characteristics and/or 

name and/or other unique identifiers.”); Ex-1012 at ¶¶149-150. Raina discloses that 

“[t]he zone computer may use the unique IDs to identify the mobile device.” Ex1008 at ¶¶[0027], [0047]. 

This process is depicted by the annotated figures below: 

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Id. at Fig. 1. 

Id. at Fig. 5. 

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A person of ordinary skill in the art would recognize that the steps of 

calculating the mobile device unique ID and broadcasting it to the zone computer, 

require and disclose the storage of that ID in memory of the mobile device. Ex-1012 

at ¶¶148-151. 

(ii) “the memory stores ... [a] private ... identifier[] unique to 

the portable wireless device,” 

After the broadcasted “unique ID” of the mobile device is used to perform the 

authentication Steps C-E depicted in Figure 5, Raina discloses a validation Step I, in 

which “information for validation” is transmitted from local storage on the mobile 

device to the zone computer over an encrypted link for validation. Ex-1008 at 

¶¶[0052]-[0056]. This “information for validation” is the private identifier as 

claimed. Ex-1012 at ¶¶152-155. 

Specifically, Raina discloses that validation may involve a “stored value” or 

a “credential” system. Ex-1008 at ¶[0052]. In either case, “[t]he information for 

validation . . . can be encrypted and stored within a local data storage in the mobile 

device.” Id. at ¶[0053]; see also id. at ¶[0054] (“The information related to user’s 

account may be stored inside a secure storage area inside the mobile device . . . .”). 

This information can include information such as “user profile, balance amount, 

passes and concession information.” Id. at ¶¶[0052]. The information might, for 

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example, be used by the zone computer to grant access to the user and then to deduct 

a fare from the user’s account. Id. at ¶[0075]; Ex-1012 at ¶153. 

Raina describes the set-up of an encrypted link for the transmission of this 

information from the mobile device to the zone computer. Ex-1008 at ¶¶[0054]; Ex1012 at ¶154. Specifically, transmission of the information related to the user 

account from the mobile device to the zone computer “may involve an additional 

authentication performed between the zone computer and the secure storage, 

establishing the identity of both sides . . . .” Ex-1008 at ¶[0055]. “[O]ne or more 

keys may be used to encrypt the communication between the secure storage and the 

zone computer.” Id. at ¶[0056]. 

A POSITA would recognize that because the information for validation is 

used to grant access and deduct a fare from a specific user’s account, and because 

the information is used to “establish[] the identity” of the mobile device (Ex-1008 at 

¶[0054], the information must uniquely identify the device. Ex-1012 at ¶155. 

Accordingly, this information for validation is a “private identifier” unique to mobile 

device 130. Id. 

7. 11f 

“the processor controls the first wireless communication antenna”: Raina 

discloses the processor 602 of the mobile device 130a runs the operating system and 

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access control applications stored in data storage 604. Ex-1008 at ¶[0059]; Ex-1012 

at ¶156. 

“to emit a periodic beacon signal broadcasting the unique public identifier 

of the portable wireless device using BLE communications,”: As discussed 

regarding “public identifier” of limitation 11e, Raina discloses when the mobile 

device 130a detects it is in an area of secure access, it “may operate as a beacon and 

broadcast a beacon signal.” Ex-1008 at ¶[0024], Fig. 5 (Step E). Raina teaches that 

this may include causing the mobile device to act as a “peripheral” which, within the 

context of BLE communications, discloses that the mobile device emits “periodic” 

advertisements, as a POSITA would recognize. Ex-1012 at ¶157; see Ex-1008 at 

¶[0024]. The mobile device beacon in Raina should not be confused with Raina’s 

separate disclosure of stationary beacons, which are used to initiate the mobile 

device beacon. Ex-1008 at Fig. 5 (Steps A-C). As Raina makes clear, “in addition 

to receiving signals from the beacons 140, the mobile devices 130 themselves may 

operate as a beacon and broadcast a beacon signal or act as a peripheral”; 

specifically, the mobile device itself “broadcast[s] a beacon signal to initiate 

communication with a local zone computer. Id. at ¶[0024]. Raina further discloses 

that these broadcasts are BLE broadcasting transmissions. Id. at ¶¶[0024], [0046]. 

Because Raina discloses that the mobile device acts as a “peripheral,” id. at 

¶[0024], (a term of art from the BLE specification) it discloses periodic 

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advertisement transmissions. Ex-1012 at ¶158; see also Ex-1009 at 1698-1703 

(describing that a device in the “Peripheral Role” transmits “undirected advertising 

events”), 2223 (describing that “all undirected advertising events” are transmitted 

periodically based on a calculated interval). A POSITA would further recognize 

from Raina’s disclosure of the mobile device acting as “beacon” implies periodic 

transmissions to the zone computer. Ex-1012 at ¶158. Finally, as discussed for 

limitation 11e, these broadcast messages include a unique identifier, which can be 

calculated by the mobile device and acts a unique public identifier for the device. 

Ex-1008 at ¶[0046]; Ex-1012 at ¶158. Raina discloses that “[t]he zone computer 

may use the unique IDs to identify the mobile device.” Ex-1008 at ¶¶[0027], [0047]. 

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Id. at Fig. 5. 

8. 11g 

“the processor controls the first wireless communication antenna”: Raina 

discloses this as described regarding limitation 11f, supra. 

“to transmit the private identifier only across secure communication links 

established with remote communication devices using BLE communications”: 

Raina discloses that “information for validation,” including user credentials used for 

validation, can be sent only across secure communication links established with the 

zone computers 150 using BLE communications. Ex-1008 at ¶[0064]; Ex-1012 at 

¶160. Raina discloses that “[a] secure communication channel is established for 

message exchange between the mobile device and the zone computer to facilitate 

validation.” Ex-1008 at ¶¶[0031], [0029]. Keys may be used to encrypt or encipher 

messages between the mobile device 130 and the zone computer 150 on the secure 

communication channel. Id. at ¶[0051]. Raina discloses that during validation, the 

mobile device 130 sends user credentials in this secure manner. Id. at ¶¶[0043], 

[0044]; see id. at ¶¶[0074], [0080] (“Validation 1122 is described with respect 

to FIG. 10 and may include a message exchange with mobile device 130 a to receive 

user credentials and validate the user 131 a based on the credentials.”); Ex-1012 at 

¶160. Once validated, the user of the mobile device may be granted access to, for 

example, a secure area. Ex-1008 at ¶[0029], Fig. 1. 

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This exchange occurs using BLE communications. Ex-1008 at ¶¶[0058] 

(“[M]essage exchanges between the mobile device 130 a and the zone 

computer 150 a are done through Bluetooth or Bluetooth 4.0 or BLE.”), [0064] 

(“Messages are exchanged with the zone computer 150 a for the sub-location in a 

secure manner using one or more encryption keys via a short-distance 

communication interface (e.g., Bluetooth) to mutually authenticate each other and 

validate a user associated with the mobile device and to allow access to the restricted 

area through the sub-location if the user is validated”); Ex-1012 at ¶161. 

A POSITA would recognize how in a secure environment, the “information 

for validating,” including user credentials used to determine whether to grant access 

to a secure area, is sensitive information that could be misused if intercepted by an 

attacker. Ex-1012 at ¶162. Thus, in order maintain security, a POSITA would 

recognize the advantages of transmitting access control information only across a 

secure, encrypted link, as taught by Raina. Id. 

XIII. INSTITUTING THIS IPR WOULD BE EQUITABLE 

A. 35 U.S.C. § 325(d) Factors Support Institution 

The Board should not exercise its discretion under § 325(d). Neither of the 

two prongs relevant to discretionary denial under 325(d) are applicable here. 

Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-

01469, Paper 6 at 7 (PTAB Feb. 13, 2020). 

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First, the primary references discussed in Grounds 1-4 have not been 

considered by the Patent Office in prosecution by the examiner or listed in an IDS, 

and there are no IPR or post-grant proceedings involving the ’514 patent to date. See 

generally Ex-1001, Ex-1002. None of the references mentioned in this Petition were 

cited or mentioned during prosecution. Ex-1002. 

Second, the art cited in this petition is not cumulative of the art substantively 

considered by the Examiner—namely, Brown (Ex-1011) and Mycek (Ex-1017). Ex1002 at at 282-301, 416-433; see id. at 436 (citing other references cited). The 

Examiner recognized allowable subject matter in limitations recited in dependent 

claim 59 (issued as claim 11)—including limitations 11e, 11f, and 11g addressed in 

this Petition. Id. at 300, 433. The prior art references in this Petition provide the 

exact disclosure of the limitations recited in challenged claim 11 and are more 

probative to the obviousness inquiry than references previously considered by the 

Office. See, e.g., Grounds 1-4 at limitations 11e, 11f, and 11g. In contrast to the 

Examiner’s finding, the prior art cited in this Petition renders obvious claim 11 of 

the ’514 patent. 

Discretionary denial under § 325(d) is thus unwarranted. Pure Storage, Inc. 

v. Realtime Data LLC, Case No. IPR2018-00549, Paper 7 at 11 (PTAB July 23, 

2018). 

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B. NHK-Fintiv Factors Support Institution 

The Board balances six factors in considering denial under 35 U.S.C. §314(a); 

here, the weight of these factors strongly favors institution. Apple Inc. v. Fintiv, Inc., 

IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). 

1. Overlap Between Issues Raised in the Petition and in the 

Parallel Proceeding 

Petitioner stipulates herein that, if this IPR proceeding is instituted, then 

Petitioner will not pursue in the Litigation the specific grounds identified above in 

connection with the referenced patents and claim, or any other ground that was raised 

or could have been reasonably raised in an IPR (i.e., any ground that could be raised 

under §§ 102 or 103 on the basis of prior art patents or printed publications).5 See 

35 U.S.C. §315(e)(2). 

Although this Petition challenges the only claim at issue in the Litigation, this 

waiver eliminates any overlap in invalidity issues between the Litigation and an IPR, 

thus alleviating any concerns of inefficiency and duplicative efforts. Sand 

 

5

 This stipulation is not intended, and should not be construed, to limit Petitioner’s 

ability to assert invalidity of the asserted claim of the ’514 patent in the Litigation 

on any other ground (i.e., invalidity under §§ 101, 112), regardless of whether inter 

partes review is instituted. 

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Revolution II, LLC v. Continental Intermodal Grp. – Trucking LLC, IPR2019-01393, 

Paper 24 at 11-12 (June 16, 2020) (informative) (“Sand Revolution”); Sotera 

Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18-19 (December 1, 

2020). 

Accordingly, this factor favors institution. 

2. Likelihood of a Stay 

Neither party has requested a stay in the parallel Litigation. Typically, a 

district court stay of the litigation pending resolution of the PTAB trial allays 

concerns about inefficiency and duplication of efforts. However, here those 

concerns are alleviated by the above stipulation, which confirms that the PTAB—

and the PTAB alone—will address invalidity under §§ 102 and 103 based on patents 

and printed publications. This ensures that IPR is a “true alternative” to the district 

court proceeding. Sand Revolution, IPR2019-01393, Paper 24 at 7. 

This factor weighs in favor of institution or is at least neutral. 

3. Proximity of the Court’s Trial Date to a FWD 

At the time of filing this Petition, trial is scheduled for January 18, 2022. Ex1018. However, several deadlines on the schedule have slipped and have not been 

rescheduled. The parties were slated to file opening Claim Construction briefing on 

March 26, 2021 according to the schedule, but have not done so. Id. The parties 

have yet to even exchange terms for construction, originally scheduled to occur on 

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December 3, 2020. Id. As of the filing of this Petition, there are no stipulations 

between the parties as to when these deadlines, or other missed deadlines, are to be 

rescheduled. 

The pandemic and resulting unprecedented disruption to district court 

proceedings adds uncertainty to the scheduled trial date. Specifically, in an Order 

dated February 10, 2021, the Chief United States District Judge for the SDFL 

required that all trials scheduled to begin on or after March 30, 2020 are continued 

until May 3, 2021. Ex-1015. And the suspension has created a large backlog of 

trials in other matters, including criminal trials that take precedence over this district 

court case. Even in cases where trial is earlier than an expected final written 

decision, the Board should seek “to balance considerations such as system 

efficiency, fairness, and patent quality.” Fintiv, IPR2020-00019, Paper 11 at 5 

(collecting cases). Here, that balance weighs in favor of institution. 

4. Investment in the Parallel Proceeding 

This is a unique case. Although PO filed a complaint on April 10, 2020, 

investment in the parallel proceeding has been minimal. Ex-1016. As mentioned, 

the parties have stipulated to stay all claim construction related deadlines until the 

resolution of various ongoing discovery disputes—in fact, the parties have yet to 

exchange constructions (originally scheduled to occur on December 3, 2020). Ex1018. Congress, when enacting the America Invents Act, explained that district 

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court defendants should be permitted more than 6 months to fully evaluate claims in 

a parallel litigation—extending the IPR bar date from 6 months to 1 year. See 157 

Cong. Rec. S5429 (Sept. 8, 2011) (S. Kyl) (explaining importance of allowing an 

accused infringer to seek IPR in view of estoppel, and concomitant need to extend 

deadline from six months to 12 months to afford defendants a reasonable opportunity 

to identify and understand patent claims before filing an IPR that may trigger 

estoppel). 

At this point, the district court has invested virtually no time in assessing the 

parties’ claims and defenses—including invalidity. No motion for preliminary 

injunction was filed. There have been no summary judgment motions. No 

depositions have been taken yet. The district court will have invested little time in 

addressing the invalidity of the ’514 patent by the time this Board decides whether 

to institute this Petition. 

Given these circumstances, this factor favors institution. 

5. Whether the Petitioner and the Defendant in the Parallel 

Proceeding are the Same Party 

The parties are the same in this IPR and in the Litigation. 

6. Other Circumstances, that Impact the Board’s Exercise of 

Discretion, Including the Merits 

Other circumstances strongly favor institution. In particular, denying 

institution here will (1) negate the statutorily provided 1-year filing period—because 

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this Petition was filed before closure of the 1-year window; (2) encourage forum 

shopping; and (3) condition the institution of IPRs on the timing of an oft-changed 

trial placeholder. No other parties have sought IPR of the ’514 patent. 

Moreover, the merits of the present Petition are particularly strong and 

outweigh countervailing considerations of efficiency. Had the Examiner been aware 

of these references during prosecution, the Examiner would not have issued the 

challenged claims of the ’514 patent. As detailed above, the combinations based on 

Soleimani, Berg, and Raina provide compelling disclosures that render obvious the 

challenged claims of the ’514 patent. These considerations weigh in favor of 

institution. Illumina, Inc. v. Natera, Inc, IPR2019-01201, Paper 19 at 8 (PTAB Dec. 

18, 2019) (instituting when “the strength of the merits outweigh relatively weaker 

countervailing considerations of efficiency”). 

XIV. CONCLUSION 

For at least the foregoing reasons, this Petition should be instituted. 

DATED: April 7, 2021 /s/ James Glass 

James Glass (Reg. No. 46729) 

 

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CERTIFICATION UNDER 37 C.F.R. § 42.24 

Under the provisions of 37 C.F.R. § 42.24, the undersigned hereby certifies 

that the word count for the foregoing Petition for inter partes review (excluding the 

table of contents, table of authorities, mandatory notices, certificate of service or 

word count, and appendix of exhibits or claim listing) totals 13,758 words, which is 

within the word limit allowed under 37 C.F.R. § 42.24(a)(i). 

Date: April 7, 2021 /s/ James Glass 

James Glass (Reg. No. 46729) 

 

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CERTIFICATE OF SERVICE 

Pursuant to 37 C.F.R. §§ 42.6(e), 42.105(a), the undersigned hereby certifies 

service on the Patent Owner of a copy of this Petition and its respective exhibits at 

the official correspondence address for the attorney of record for the ’514 Patent as 

shown in USPTO PAIR via FedEx: 

MCDERMOTT WILL & EMERY LLP 

The McDermott Building 

500 North Capitol Street, N.W. 

Washington, D.C. 20001 

Additionally, a copy of this Petition and its respective exhibits were served 

via FedEx to the following address: 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

Columbia Center, 1152 15th Street, N.W., 

Washington, D.C. 20005-1706 

Courtesy copies were also sent via electronic mail to Patent Owner’s counsel 

of record in the related district court proceeding, Case No. 1:20-cv-22945-RNS (S.D. 

Fla.) at the following addresses: 

Diana Szego Fassbender 

dszego@orrick.com 

Steven J. Routh 

srouth@orrick.com 

T. Vann Pearce, Jr. 

vpearce@orrick.com 

Robert L. Uriarte 

ruriarte@orrick.com 

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Orrick’s Carnival-DeCurtis Email List 

Carnival-DeCurtis_OHS@orrick.com 

Mayanne Downs 

mayanne.downs@gray-robinson.com 

Jorge Espinosa 

jorge.espinosa@gray-robinson.com 

Robert R. Jimenez 

robert.jimenez@gray-robinson.com 

Date: April 7, 2021 /s/ James Glass 

James Glass (Reg. No. 46729) 

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