`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`BROADCOM CORPORATION
`
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET L.M. ERICSSON
`
`Patent Owner
`
`____________________
`
`Case IPR2013-00636
`
`U.S. Patent Nos. 6,424,625
`
`___________________
`
`
`
`PATENT OWNER’S MOTION TO AMEND
`
`U.S. PATENT NO. 6,424,625 UNDER 37 C.F.R. § 42.121
`
`
`
`
`
`
`
`EXHIBIT
`
`NO.
`
`EXHIBIT DESCRIPTION
`
`Exhibit 1001 U.S. Patent No. 6,424,625 (“the ’625 Patent”)
`
`Garrabrant et al., U.S. Patent No. 5,610,595, entitled “Packet
`
`Exhibit 1002
`
`Radio Communication System Protocol” (“Garrabrant”)
`
`Kemp, U.S. Patent No. 6,621,799, entitled “Semi-Reliable Data
`
`Exhibit 1005
`
`Transport” (“Kemp”)
`
`Certified Translation of Hettich Thesis, entitled “Development and
`
`performance evaluation of a Selective Repeat – Automatic Repeat
`
`Request (SR-ARQ) protocol for transparent, mobile ATM access,”
`
`Exhibit 1007
`
`(1996) (“Hettich”)
`
`Certified Translation of Walke et. al., German Patent No. DE
`
`19543280, entitled “Process and Cellular Mobile Communication
`
`System for Wireless Broadband Connection of Mobile Stations
`
`with ATM Interfaces to Error Protection of an ATM Network”
`
`Exhibit 1008
`
`(“Walke”)
`
`Bertsekas, et al., DATA NETWORKS, Prentice-Hall, pp. 58-73
`
`Exhibit 1012
`
`(1987) (“Bertsekas”)
`
`Exhibit 2022 Declaration of Robert Akl, D.Sc. in support of Motion to Amend
`
`Exhibit 2023 Application No. 09/179,952 (“the ’625 App.”)
`
`Petras & Hettich, “Performance Evaluation of a Logical Link
`
`Control Protocol for an Air Interface,” Int’l J. of Wireless
`
`Exhibit 2024
`
`Information Networks, Vol. 4, No. 4, 1997 (“Petras & Hettich”)
`
`Petras, et al., “Candidate protocol stack (MAC + LLC) for a
`
`Wireless ATM air interface,” ETSI EP BRAN, WG3 Temporary
`
`Exhibit 2025
`
`document wg3td78 (13 October 1997) (“Petras et al.”)
`
`ii
`
`
`
`Vornefeld, “Simulative and analytical study of measures
`
`supporting the quality of service in a radio-based ATM network,”
`
`Exhibit 2026
`
`April 1, 1997 (“Vornefeld”)
`
`
`
`
`
`iii
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`
`
`I. INTRODUCTION
`
`In the event that the challenged claims are found unpatentable, Patent Owner
`
`Telefonaktiebolaget L.M. Ericsson (“Ericsson”) hereby moves pursuant to the
`
`Board’s March 10, 2014 Order, Paper No. 25, and 37 C.F.R. § 42.121 to cancel
`
`claim 1 of U.S. Pat. No. 6,424,625 (“the ’625 Patent”) and submit proposed
`
`substitute claim 20 in its place.
`
`II. LISTING OF PROPOSED SUBSTITUTE CLAIM
`
`The following claim listing clearly identifies the changes to the ’625 Patent
`
`so that the Board can easily and quickly identify the new limitations and deletions
`
`of limitations. See 37 C.F.R. § 42.121(b); Nichia Corp. v. Emcore Corp.,
`
`IPR2012-00005, Paper 68 at *50 (PTAB Feb. 11, 2014). Specifically, Petitioner
`
`has used underlining to indicate text inserted in the corresponding original claim,
`
`as suggested by the Board. Toyota Motor Corp. v. Am. Vehicular Sciences LLC,
`
`IPR2013-00419, Paper 32 at *2 (PTAB March 7, 2014).
`
`Proposed Substitute Claim
`
`20. (Proposed Substitute for Original Claim 1) A method for discarding
`
`packets in a data network employing a packet transfer protocol including an
`
`automatic repeat request scheme, comprising the steps of:
`
`a transmitter in the data network commanding a receiver having a receiver
`
`window in the data network to
`
`1
`
`
`
`a) receive at least one packet having a sequence number that is not
`
`consecutive with a sequence number of a previously received packet, wherein the
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`sequence number of the at least one packet is outside of the receiver window and
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`b) release any expectation of receiving outstanding packets having sequence
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`numbers prior to the at least one packet; and the transmitter discarding all packets
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`for which acknowledgment has not been received, and which have sequence
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`numbers prior to the at least one packet.
`
`III. STATEMENT OF SUBSTITUTION CONTINGENCIES
`
`Consistent with 37 C.F.R. § 42.121(a)(3), this Motion includes one proposed
`
`substitute claim for the one challenged claim to be replaced. Further, under 37
`
`C.F.R. § 42.121(a)(2), the amendment herein does not seek to enlarge the scope of
`
`claim 1 of the ’625 Patent or introduce new subject matter. Proposed Substitute
`
`claim 20 merely adds features to claim 1 and does not remove any limitation
`
`therefrom. See Synopsis, Inc. v. Mentor Graphics Corp., IPR2012-00042, Paper
`
`No. 60 at *43 (PTAB Feb. 19, 2014).
`
`Proposed substitute claim 20 is a contingent substitute claim to replace
`
`original claim 1. Claim 20 adds two additional limitations to original claim 1.
`
`First, claim 20 explicitly recites a “a receiver having a receiver window.” Second,
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`the amendment recites the phrase “wherein the sequence number of the at least one
`
`packet is outside of the receiver window.” As discussed further below, such a
`
`2
`
`
`
`feature is neither anticipated by or obvious in view of the prior art known to the
`
`patent owner. Claim 20 is introduced only in the event that original claim 1 is
`
`determined to be unpatentable. By submitting this proposed amendment, Patent
`
`Owner does not waive its right, and expressly reserves its right, to appeal the
`
`Board’s patentability determination with respect to the original claim 1.
`
`IV. SUPPORT FOR THE PROPOSED AMENDMENT -- WRITTEN DESCRIPTION
`
`In compliance with 37 C.F.R. 42.121(b)(1), the substitute claim is supported
`
`by the original disclosures of the ’625 Patent. Patent Owner provides its proposed
`
`definition of the term “receiver window” introduced in the proposed amendment.
`
`A. Claim Construction for New Claim Terms
`
` Proposed substitute claim 20 introduces the term “receiver window.”
`
`Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 68 at 51 (PTAB Feb. 11,
`
`2014) (“A motion to amend claims must identify how the proposed substitute
`
`claims introduce new claim terms.”). The ordinary and customary meaning, as
`
`would be understood by one of skill in the art in the context of the entire disclosure
`
`of this term is: a range of packets that can be accepted by the receiver. (Ex. 2022,
`
`Akl Dec. ¶ 17.) Because the specification uses the term broadly, the term should
`
`be given the full scope of its ordinary and customary meaning, i.e., “a range of
`
`packets that can be accepted by the receiver.” In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007). (Akl Dec. ¶ 17.)
`
`3
`
`
`
`B. Descriptive Support for Amendment
`
`The ’625 Patent issued from Application No. 09/179,952 (“the ’625 App.”)
`
`(attached hereto as Ex. 2023). The following chart identifies the descriptive
`
`support for each element of each proposed claim can be found in the ’625 App. and
`
`in the ’625 Patent. (Ex. 1001):
`
`Proposed Claim
`
`Descriptive Support (Ex. 2022 (’625
`
`App.) and Ex. 1001 (’625 Pat.))
`
`20. (Proposed Substitute for
`
`’625 App. at Abstract (25:1-12); ’625
`
`Original Claim 1) A method for
`
`Pat. at Abstract. (“Techniques are
`
`discarding packets in a data network
`
`provided for use with automatic repeat
`
`employing a packet transfer protocol
`
`request (ARQ) schemes in a data
`
`including an automatic repeat request
`
`network to minimize a bandwidth used
`
`scheme, comprising the steps of:
`
`by a receiver and a transmitter in the
`
`network to transfer data packets, by
`
`discarding outdated packets that have
`
`not yet been successfully transferred.”)
`
`a transmitter in the data network
`
`’625 App. at 8:12-14; ’625 Pat. at 5:16-
`
`commanding a receiver having a
`
`18 (“a communications system wherein
`
`receiver window in the data network to
`
`a transmitter and a receiver are
`
`exchanging data packets, at a
`
`4
`
`
`
`packet discard procedure,”); ’625 App.
`
`at 8:21-22; ’625 Pat. at 5:28-29 (“In the
`
`case where the transmitter discards a
`
`packet, it orders the receiver to accept
`
`the next packet,”); ’625 App. at 4:14-17;
`
`’625 Pat. at 2:61-65 (“receiver window
`
`size in a Selective Reject scheme can
`
`include up to 2k-1 positions, instead of
`
`just one position as in a Go-Back-N
`
`scheme. In Selective Reject a range of
`
`packets can be received since the
`
`receiver window can include up to 2k-1
`
`positions.”).
`
`a) receive at least one packet having a
`
`’625 App. at 8:21-25; ’625 Pat. at 5:28-
`
`sequence number that is not consecutive
`
`33 (“In the case where the transmitter
`
`with a sequence number of a previously
`
`discards a packet, it orders the receiver
`
`received packet
`
`to accept the next packet, by setting a
`
`certain Receiver Packet Enforcement Bit
`
`(RPEB) in the ARQ header of the next
`
`packet and sending the packet to the
`
`5
`
`
`
`receiver. When the receiver receives the
`
`packet, the RPEB bit will cause the
`
`receiver to accept the packet.”)
`
`, wherein the sequence number of the at
`
`’625 App. at 10:18-21; ’625 Pat. at
`
`least one packet is outside of the
`
`6:32-36 (“If the difference between
`
`receiver window and
`
`N(S) and ESN (for example, ESN1) is
`
`less than 2k-1 and RPEB=TRUE at a
`
`packet reception, then the packet will be
`
`accepted and forwarded to higher layer
`
`as long as the data carried in the packet
`
`is also correct.”); ’625 App. at 4:14-17;
`
`’625 Pat. at 2:60-65 (“The receiver
`
`window size in the Selective Reject
`
`scheme can include up to 2k-1 positions,
`
`instead of just one position as in a Go-
`
`Back-N scheme. In Selective Reject a
`
`range of packets can be received since
`
`the receiver window can include up to
`
`2k-1 positions.”)
`
`b) release any expectation of receiving
`
`’625 App. at 8:17-19, 13:11-14:28,
`
`6
`
`
`
`outstanding packets having sequence
`
`15:1-5; ’625 Pat. at 5:22-25, 8:4-67, 9:1-
`
`numbers prior to the at least one packet;
`
`6 (“Thus, the receiver can be
`
`commanded to skip or overlook the
`
`packets which have been discarded, or
`
`in other words, to release any
`
`expectation of receiving the packets
`
`which have been discarded.”)
`
`and the transmitter discarding all
`
`’625 App. at 12:11-16, 12:22-26, 15:26-
`
`packets for which acknowledgment has
`
`29; ’625 Pat. at 7:34-41, 7:49-54, 9:32-
`
`not been received, and which have
`
`36 (“Namely, a receive enforcement bit
`
`sequence numbers prior to the at least
`
`such as the RPEB described above with
`
`one packet.
`
`respect to other embodiments, is sent to
`
`facilitate discarding of packets from a
`
`transmitter buffer.”)
`
` A
`
` person of ordinary skill in the art would conclude that the inventors were
`
`in possession of the invention claimed in substitute claim 20 as of October 1998.
`
`(Akl Dec. ¶¶ 18-19.) As shown above, the original disclosure of the application
`
`relied upon reasonably conveys to a person of ordinary skill in the art that the
`
`inventor had possession of the claimed subject matter as of the filing date. See
`
`7
`
`
`
`Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 68 at 54 (PTAB Feb. 11,
`
`2014).
`
`V. SUBSTITUTE CLAIMS ARE PATENTABLE OVER THE PRIOR ART
`
`On September 30, 2013, Broadcom Corporation (“Petitioner”) filed a
`
`petition under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq. requesting
`
`inter partes review of U.S. Patent No. 6,424,625, proposing six grounds of
`
`rejection. On March 10, 2014, the Patent Trial and Appeal Board issued a decision
`
`instituting an inter partes review with respect three of the grounds of rejection
`
`proposed, namely that U.S. Pat. 5,610,595 (“Garrabrant”) and Development and
`
`performance evaluation of a Selective Repeat-Automatic Repeat Request (SR-
`
`ARQ) protocol for transparent, mobile ATM Access (“Hettich”) each allegedly
`
`anticipates and German Patent DE 19543280 (“Walke”) allegedly renders obvious
`
`claim 1 of the ’625 patent. Garrabrant, Hettich, and Walke are collectively referred
`
`to herein as the “Cited References.” The Patent Owner believes that Hettich is the
`
`closest known prior art.
`
`Substitute independent claim 20 is patentable over Garrabrant, Hettich, and
`
`Walke because none of those references teaches or suggests “wherein the sequence
`
`number of the at least one packet is outside of the receiver window.” The Cited
`
`References each describe Automatic Repeat Request (ARQ) techniques whereby a
`
`receiver accepts only packets having sequence numbers that fall within its receiver
`
`8
`
`
`
`window. (Ex. 1002 (Garrabrant) at 9:27-31 (“A message received by a unit in a
`
`packet radio communication system of the present invention will be rejected unless
`
`the number stored in the sequence number field 92 is in the ‘valid’ window 142.”);
`
`Ex. 1007 (Hettich) at 36 (discarding or rejecting cells show “sequence number is
`
`outside the receiver window”); Ex. 1008 (Walke at 5) (referring to an HDLC-like
`
`window mechanism); Akl Dec. ¶ 22.) Hettich employs a window size of n for both
`
`Go Back n and Selective Repeat ARQ (Hettich at 27, 28) to reject cells whose
`
`sequence number falls outside the window n (Hettich at 27 (eq. 5.1) and 28 (eq.
`
`5.7)). Walke also uses a window for rejection of cells having sequence numbers
`
`outside the window. (Walke at 13 (receiver “is able to widen its receive window”
`
`upon acceptance of frame falling within the receive window).) Because none of
`
`the cited references teaches or suggests accepting a packet whose sequence number
`
`is outside the receiver window, substitute claim 20 is patented over the cited
`
`references. (Akl Dec. ¶ 22.)
`
`The remaining references identified by petitioner fail to teach or suggest a
`
`receiver accepting a packet acceptance whose sequence number is outside of the
`
`receiver widow. Neither Ex. 1005 (U.S. Patent No. 6,621,799) (“Kemp”) nor Ex.
`
`1012 (Bertsekas, et al., DATA NETWORKS, Prentice-Hall, 1987, pp. 58-74)
`
`(“Bertsekas”) disclose a receiver receiving packets whose sequence number is
`
`outside the receiver window. Kemp discloses a TCP/IP system using a window
`
`9
`
`
`
`having a variable size. In Kemp, a receiver can only accept packets and a
`
`transmitter can only send packets having a sequence number within the window.
`
`(Kemp at 5:20-27; 7:24-31; Akl Dec. ¶ 23.) Similarly, Bertsekas teaches a
`
`transmitter that “cannot send higher numbered packets” (Bertsekas at 64) and a
`
`receiver that if it “receives a packet containing errors, it cannot accept any of the
`
`higher number packets until the [transmitter] goes back and retransmits the packet
`
`that was received in error.” Id. Accordingly, both Kemp and Bertsekas fail to
`
`teach or suggest acceptance of a packet whose sequence number is higher than the
`
`receiver window. (Akl Dec.¶ 23.)
`
`By and large, the prior art taught receivers that could only receive packets
`
`having a sequence number with the receiver window. For example, the Petras &
`
`Hettich (Ex. 2024 (Performance Evaluation of a Logical Link Control Protocol for
`
`an ATM Air Interface), Int’l J. Wireless Inform., vol. 4, No. 4, 1997) and Petras et
`
`al. ETSI (Ex. 2025 (Candidate protocol stack (MAC + LLC) for a Wireless ATM
`
`air interface), ETSI EP BRAN, Oct. 1997) each teach the use of a receiver window
`
`similar to Hettich or Walke. (Akl Dec. ¶ 24.)
`
`The concept of receiving packets outside a receiver window is not, by itself,
`
`novel. For example, in a document dated Aril 1, 1997, Ulrich Vornefeld disclosed
`
`a receiver that can accept packets outside of its receiver window. (Ex. 2026
`
`(Vornefeld, Simulative and analytical study of measures supporting the quality of
`
`10
`
`
`
`service in a radio-based ATM network.) Apr. 1, 1997). In Vornefeld, a receiver
`
`may accept a frame outside its reception window by assuming packets having
`
`previous sequence numbers are discarded. (Akl Dec. ¶ 25.) The received packet
`
`#3 is defined to be the last sequence number in the receiver window such that the
`
`receiver now expects to receive cells having sequence numbers lower than the
`
`received cell. (Vornefeld at Fig. 5.6; Akl Dec. ¶ 25.)
`
`Vornefeld teaches accepting a packet whose sequence number is outside the
`
`receiver window and creating expectations of receiving packets whose sequence
`
`numbers are lower than the received packet. (Akl Dec. ¶ 26.) Because Vornefeld
`
`creates rather than releases expectation of cells having a lower sequence number,
`
`Vornefeld does not anticipate substitute claim 20. Moreover, even art that accepts
`
`a cell outside the receiver window does not render obvious substitute claim 20.
`
`(Akl Dec. ¶ 26.) Because a Vornefeld receiver receives a packet outside its
`
`window and creates expectations of receiving cells having lower sequence
`
`numbers, one of ordinary skill in the art would not combine a reference such as
`
`Vornefeld that creates expectations with a reference that releases expectations of
`
`receiving cells having lower sequence numbers. (Akl Dec. ¶ 26.)
`
`Patent Owner believes the substitute claim 20 is patentable over the known
`
`prior art, including the closest known prior art (Hettich). Because the ’625 patent
`
`was the first invention to conceive of “accepting packets outside a receive
`
`11
`
`
`
`window,” along with “releas[ing] any expectation of receiving packets having
`
`sequence numbers prior to the at least one packet,” a person of ordinary skill in the
`
`art would not expect the prior art to teach or suggest substitute claim 20. (Akl Dec.
`
`¶ 27.)
`
`VI. CONCLUSION
`
`For the reasons described above, Patent Owner moves to amend the
`
`challenged claims in the event the Board concludes that the challenged claims are
`
`unpatentable.
`
`Respectfully submitted,
`
`
`
`
`
` /s/ Peter J. Ayers
`Peter J. Ayers
`Registration No. 38,374
`LEE & HAYES, PLLC
`Customer No. 12-0769
`Phone: (512) 505-8162
`Facsimile: (509) 944-4693
`Attorney Docket No.: E034-0004IPR
`
`
`Dated: June 11, 2014
`
`
`
`
`
`12
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on June 11, 2014, I caused a true and correct
`
`copy of the following materials:
`
` PATENT OWNER’S MOTION TO AMEND U.S. PATENT
`
`6,424,625 UNDER 37 CFR § 42.121
`
` Exhibits 2022-2026
`
` Table of Exhibits
`
`to be served on Lead and Back-Up Counsel for Broadcom Corporation by sending
`
`the same electronically to the service address provided in Broadcom’s Mandatory
`
`Notices:
`
`Dominic E. Massa, Lead Counsel
`Michael A. Diener, Back-up Counsel
`Wilmer Cutler Pickering Hale and Dorr, LLP
`60 State Street
`Boston, MA 02109
`WH-External-Broadcom-IPR2013-636@wilmerhale.com
`dominic.massa@wilmerhale.com
`
`michael.diener@wilmerhale.com
`
`
`LEE & HAYES PLLC
`
` /s/ Peter J. Ayers
`
`
`
`
`
`Peter J. Ayers, Reg. No. 38,374
`
`
`
`13
`
`
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