UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BROADCOM CORPORATION
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)
`Patent Owner
`____________________
`
`Case IPR2013-00636
`Patent 6,424,625
`Title: Method and Apparatus for Discarding Packets in a Data Network
`Having Automatic Repeat Request
`
`PATENT OWNER’S RESPONSE
`BY ERICSSON UNDER 37 C.F.R. § 42.120
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BROADCOM CORPORATION
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)
`Patent Owner
`____________________
`
`Case IPR2013-00636
`Patent 6,424,625
`Title: Method and Apparatus for Discarding Packets in a Data Network
`Having Automatic Repeat Request
`
`PATENT OWNER’S RESPONSE
`BY ERICSSON UNDER 37 C.F.R. § 42.120
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`
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`Case IPR2013-00636
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`TABLE OF CONTENTS
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`I.
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`Statement of Precise Relief Requested ................................................. 2
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`II.
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`Statement of Facts ................................................................................. 3
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`III. The Petition is Barred by 35 U.S.C. §315(b) ........................................ 8
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`A. Broadcom is in Privity with the D-Link Defendants ................... 9
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`B. The D-Link Defendants are Real Parties-in-Interest. ................. 12
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`IV. The ’625 Patent is Valid ...................................................................... 15
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`A. Overview of Ericsson’s ’625 Patent ........................................... 15
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`B. Broadest Reasonable Construction ............................................ 18
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`C. Garrabrant Does Not Anticipate Claim 1 of the ’625 Patent ..... 20
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`1. Garrabrant does not disclose “commanding a receiver to
`receive” ............................................................................... 24
`
`2. Garrabrant does not disclose “commanding a receiver to
`release” ............................................................................... 30
`
`3. Garrabrant does not disclose “discarding unacknowledged
`packets” .............................................................................. 31
`
`4. The SABM command in Garrabrant does not anticipate claim
`1 of the ’625 patent ............................................................. 34
`
`D. Hettich Does Not Anticipate Claim 1 of the ’625 Patent ........... 37
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`1. The Hettich Delay PDU commands a receiver to ignore, and
`not receive cells .................................................................. 39
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`2. The Hettich Delay PDU does not command a receiver to
`release expectations of receiving outstanding packets ....... 40
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`3. The transmitter in Hettich does not “discard all packets” ..... 42
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`E. Walke Does Not Render Obvious Claim 1 of the ’625 Patent .. 46
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`1. The delay command in Walke commands a receiver to
`ignore, not receive one cell ................................................. 48
`
`2. The delay command in Walke does not command a receiver
`to release expectations of receiving outstanding packets ... 49
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`3. Walke does not teach or suggest “discarding” all cells ........ 53
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`V.
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`Conclusion ..................................................................................................... 54
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`iii
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`Case IPR2013-00636
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`Cases
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`TABLE OF AUTHORITIES
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`Cal. Physicians’ Serv. v. Aoki Diabetes Research Inst., 163 Cal. App. 4th 1506
`
`(Cal. App. 2008) .............................................................................................. 9, 10
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`Ericcsson Inc. v. D-Link Corp., No. 6:10-CV-473 (LED/KGF) ............................... 3
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`In re Guan Inter Partes Reexamination Proceeding, Control No. 95/001,045 (Aug.
`
`25, 2008) .............................................................................................................. 13
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`Speedtrack, Inc. v. Office Depot, Inc., No. C 07-3602 PJH, 2014, WL 1813292, at
`
`*5-6 (N.D. Cal. May 6, 2014) .............................................................................. 11
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`Taylor v. Sturgell, 553 U.S. 880 (2008) ............................................................ 10, 11
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`Statutes
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`35 U.S.C. § 102(b) .................................................................................................1, 2
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`35 U.S.C. § 103(a) .................................................................................................1, 2
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`35 U.S.C. § 312(a)(2) .......................................................................................... 9, 15
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`35 U.S.C. § 315(b) ........................................................................................... passim
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`35 U.S.C. § 316 .......................................................................................................... 2
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`Regulations
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`37 C.F.R. § 42.23 ....................................................................................................... 1
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`37 C.F.R. § 42.120 ..................................................................................................... 2
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,759 (Aug. 14, 2012)…9, 10, 13
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`Legislative History
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`154 Cong. Rec. S9987 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl) .............. 9
`
`157 Cong. Rec. S1376 (daily ed. March 8, 2011) (statement of Sen. Kyl) ............ 10
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`Secondary Sources
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`
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`2 Restatement of Judgments § 62, Comment a ....................................................... 11
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`18A Wright & Miller § 4449 ................................................................................... 11
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`EXHIBIT LIST
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`EXHIBIT NO.
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`EXHIBIT DESCRIPTION
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`Exhibit 1001
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`U.S. Patent No. 6,424,625 (“the ’625 Patent”)
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`Garrabrant et al., U.S. Patent No. 5,610,595, entitled “Packet
`
`Exhibit 1002
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`Radio Communication System Protocol” (“Garrabrant”)
`
`Certified Translation
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`of Hettich Thesis,
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`entitled
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`“Development and performance evaluation of a Selective
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`Repeat – Automatic Repeat Request (SR-ARQ) protocol for
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`transparent, mobile ATM access,”
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`Exhibit 1007
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`(1996) (“Hettich”)
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`Walke et. al., German Patent No. DE 19543280, entitled
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`“Process and Cellular Mobile Communication System for
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`Wireless Broadband Connection of Mobile Stations with
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`ATM Interfaces to Error Protection of an ATM Network”
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`Exhibit 1008
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`(“Walke”)
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`Exhibit 2002
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`Complaint
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`Exhibit 2003
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`Amended Complaint
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`Exhibit 2005
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`Form 10-Q SEC Filing
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`Exhibit 2007
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`REDACTED – E-mail Stream from Shang to Tu
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`Exhibit 2008
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`E-mail from Nemunaitis to Morgan, 12/9/13
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`Exhibit 2009
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`REDACTED - EC Complaint against Ericsson
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`Exhibit 2016
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`Patent Owner’s Copy of Order, ECF Doc 670
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`Motion of Broadcom, et al for Leave to File Amicus Brief in
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`Exhibit 2017
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`Ericsson v. D-Link
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`Exhibit 2018
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`Final Judgment Pursuant to FRCP 54(b)
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`Exhibit 2019
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`Black’s Law Dictionary, 9th Ed. 2009 (definition of “privity”)
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`Declaration of Robert Akl, D.Sc. in support of Patent Owner’s
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`Exhibit 2020
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`Response
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`Exhibit 2021
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`Merriam Webster Dictionary (definition of “command”)
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
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`Petitioner did not submit a statement of material facts in its petition for inter
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`partes review. Accordingly, the Patent Owner cannot properly submit, as required
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`by 37 CFR §42.23, a statement of material facts in dispute. Out of an abundance
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`of caution, however, Patent Owner identifies the following disputed material facts:
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`A. Whether U.S. Pat. No. 5,610,595 to Garrabrant renders claim 1 of the
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`’625 Patent unpatentable under 35 U.S.C. § 102(b);
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`B. Whether German Pat. No. DE 19543280 to Hettich renders claim 1 of
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`the ’625 Patent unpatentable under 35 U.S.C. § 102(b);
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`C. Whether Walke renders claim 1 of the ’625 Patent unpatentable under
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`35 U.S.C. § 103(a); and
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`D. Whether this inter partes review is barred under 35 U.S.C. §315(b).
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`PATENT OWNER RESPONSE TO PETITION
`I. Statement of Precise Relief Requested
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`Pursuant to 35 U.S.C. § 316 and 37 C.F.R. § 42.120, Patent Owner requests
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`that the Board confirm the validity of claim 1 of the ’625 Patent. Specifically,
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`Patent Owner requests that the Board find:
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`A.
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`Claim 1 of the ’625 patent is not anticipated under 35 U.S.C. § 102(b)
`
`by the Garrabrant reference or by the Hettich reference;
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`B.
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`Claim 1 of the ’625 patent is not anticipated under 35 U.S.C. § 102(b)
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`by the Hettich reference;
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`C.
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`Claim 1 of the ’625 patent is non-obvious under 35 U.S.C. § 103(a)
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`over the Walke reference; and
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`D.
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`That this inter partes review is barred under 35 U.S.C. §315(b).
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`II.
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`Statement of Facts
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`Over three years before Broadcom filed the present Petition, Ericsson served
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`a complaint against D-Link Corporation and D-Link Systems, Inc. (“D-Link”),
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`Netgear, Inc. (“Netgear”), Acer Inc. and Acer America Corporation (“Acer”), and
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`Gateway Inc. (“Gateway”) for infringement of its patents. Ericsson Inc. v. D-Link
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`Corp., No. 6:10-CV-473 (LED/KGF) (“D-Link Lawsuit”); (Ex. 2002). Ericsson
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`later amended its complaint and added Dell, Inc. (“Dell”), Toshiba Corporation,
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`Toshiba America, Inc., Toshiba America Information Systems, Inc. and Toshiba
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`America Consumer Products, LLC (“Toshiba”), and Belkin International, Inc.
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`(“Belkin”) as defendants.1 (Ex. 2003).
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`
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`The complaint alleged infringement of U.S. Patent Nos. 6,424,625,
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`6,519,215, and 6,466,568. (Ex. 2003). The D-Link Defendants challenged the
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`validity of Ericsson’s patents and denied infringement. With respect to validity, the
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`D-Link Defendants served thousands of pages of invalidity contentions and expert
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`reports, involving many of the same assertions that are now the basis for
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`Broadcom’s IPR petition. With respect to infringement, the Defendants’ supplier,
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`Broadcom, produced technical documents relating to the design and operation of
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`its chips and agreed to voluntarily appear and testify at trial on behalf of the D-
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`1 The defendants listed in the Complaint and the Amended Complaint shall
`collectively be referred to as “D-Link Defendants.”
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`Link Defendants. (Exs. 2004, 2015). On the eve of trial, the D-Link Defendants
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`abandoned their invalidity case regarding the ’215 Patent and the ’568 Patent, but
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`continued challenging validity with respect to the ’625 Patent. At the end of the
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`trial, the jury found that the D-Link Defendants infringed three Ericsson patents
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`based on their WLAN-compliant products. (Ex. 2018). The D-Link Defendants
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`appealed to the Federal Circuit (where the appeal is now pending), D-Link
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`Lawsuit, Nos. 2013-1625, -1631, -1632, -1633.
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`Broadcom has been working behind the scenes for years to help its
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`customers defeat Ericsson’s infringement claims. As far back as July 2010,
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`Broadcom assisted Acer, during negotiations with Ericsson, in analyzing the very
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`patents that are now the subject of Broadcom’s petition. (Ex. 2007). Discussing an
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`upcoming meeting on that topic, an Acer executive noted, “[The] [m]ain purpose is
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`to discuss comments from Acer’s vendors, including Intel, Broadcom and
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`Atheros.” Id. As part of its effort to bring to the attention of the Board information
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`bearing on the relationship among Broadcom and the D-Link Defendants, Ericsson
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`provided notice to Acer that it was seeking relief from the Protective Order in the
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`D-Link Lawsuit. (Ex. 2008). In response, Acer asserted that the information
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`Ericsson sought to give the Board was “privileged and [was] inadvertently
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`produced.” Id. Acer obviously believes that its relationship with Broadcom is
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`sufficiently close, and their interests are sufficiently aligned, to support a privilege
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`covering relevant communications between the two.
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`Broadcom’s SEC filings furnish additional evidence that it was a real party-
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`in-interest in the D-Link Lawsuit, in privity with the D-Link Defendants, and that
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`the D-Link Defendants are real parties in interest to its IPR petition. (Ex. 2005).
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`Broadcom states in these filings that it is not uncommon for Broadcom “to
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`indemnify some customers and strategic partners under our agreements if a third
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`party alleges or if a court finds that our products or activities have infringed upon,
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`misappropriated or misused another party’s proprietary rights.” (Id. at 53/65). To
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`protect these interests, Broadcom “engage[s] in litigation to . . . determine the
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`validity and scope of the proprietary rights of others, including [its] customers.”
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`(Id.) This IPR is just another instance of Broadcom filing litigation on behalf of its
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`customers pursuant to its indemnity obligations.
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`In another instance, while the D-Link litigation was pending, Broadcom
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`filed a Complaint in the European Commission arguing that Ericsson’s assertion of
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`its patents against Broadcom’s customers violated European Union competition
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`laws. (Ex. 2009). In its complaint, Broadcom referred to the D-Link Lawsuit and,
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`in language that reflects the identity of interest between itself and the D-Link
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`Defendants stated that “Ericsson’s efforts to hold-up Broadcom’s customers are
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`tantamount to holding up Broadcom itself . . . .” (Id. at ¶101).
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`Less than three months after Ericsson obtained a judgment of infringement
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`against the D-Link Defendants, Broadcom filed its petition for IPR of the same
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`claims infringed by the D-Link Defendants’ use of its chips, relying on the same
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`references the D-Link Defendants used in their invalidity case.2 Broadcom made
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`the rote assertion that there were no other real parties in interest, but in the body of
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`its petition admitted that it supplied “Wi-Fi compliant products, such as the
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`BCM4313 and BCM4321” to the D-Link Defendants that were found to infringe.
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`Paper No. 3 at 1. It requires no logical leap to see first, that Broadcom has a duty to
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`indemnify (and a community of interest with) some or all D-Link Defendants
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`because its own products caused the D-Link Defendants to infringe Ericsson’s
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`patents, and second, that the coordination of Broadcom’s successive attack on
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`Ericsson’s patents is no coincidence.
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`There is further evidence that the D-Link Defendants are real parties in
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`interest to Broadcom’s IPR proceeding. Broadcom filed a “Motion of Amici Wi-Fi
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`Chip Companies” in this Court, in the pending appeal from the judgment in the D-
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`2 Broadcom immediately petitioned for inter partes review (“IPR”) of the three
`patents the D-Link Defendants were found to infringe—U.S. Patent Nos. 6,466,568
`(“the ‘568 Patent”) (IPR2013-00602), 6,424,625 (“the ‘625 Patent”) (IPR2013-
`00636, and 6,772, 215 (“the ‘215 Patent”) (IPR2013-00601).
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`Link Lawsuit. (Ex. 2017). In that motion, Broadcom specifically stated that the
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`damages verdict “affect[s] amici even though they were not parties to the case”
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`because “the award would affect demand for those chips and may also provoke
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`indemnification issues.” (Id. at p. 4) (emphasis added). This demonstrates not
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`only the effect of the relationship, but also Broadcom’s willingness to take action
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`in support of the D-Link Defendants.
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`Broadcom cannot deny the existence of indemnity agreements and other
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`evidence bearing on its community of interests with the D-Link Defendants, but
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`Ericsson was prevented from bringing these to the attention of the Board because
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`they are subject to a Protective Order. (Ex. 2016). The contents and scope of these
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`documents continues to remain secret, but their existence is not: in its public order
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`denying Ericsson Inc.’s Emergency Motion for Relief from the Protective Order,
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`the district court recited that “[d]uring the course of the litigation, Ericsson
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`discovered (1) an indemnity agreement between Toshiba and non-party Broadcom
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`Corporation (‘Broadcom’), (2) an indemnity agreement between Dell and
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`Broadcom, and
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`(3) an email between Dell and Broadcom discussing
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`indemnification[.]” (Ex. 2016). There is no question an indemnity relationship
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`exists between Broadcom and at least two of the D-Link Defendants and there was
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`communication regarding the relationship during the pendency of the D-Link
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`lawsuit.
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`The Board denied Ericsson’s request for discovery that would have
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`established the existence of the indemnity relationships, the substance of the
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`conversation between Dell and Broadcom pertaining to Broadcom’s indemnity
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`obligation, and likely produced additional evidence establishing Broadcom’s
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`privity relationship with the defendants. Paper No. 20. Ericsson filed a Request
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`for Rehearing that the Board denied. Paper No. 24. The Board issued its Decision
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`for Institution of Inter Partes Review on March 10, 2014, Paper No. 25, and
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`Ericsson now submits its Patent Owner’s Response.
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`III.
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`The Petition is Barred by 35 U.S.C. §315(b)
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`The D-Link Defendants were formally served with a complaint more than
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`one year before the filing date of the Petition; Petitioner is subject to the 35 U.S.C.
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`§ 315(b)3 bar as a privy to the D-Link Defendants, and because the D-Link
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`3 Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if
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`the petition requesting the proceeding is filed more than 1 year after the date on
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`which the petitioner, real party in interest, or privy of the petitioner is served with a
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`complaint alleging infringement of the patent.”
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`Defendants are real parties-in-interest to this action, despite Petitioner’s failure to
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`designate them as such under 35 U.S.C. § 312(a)(2).
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`A. Broadcom is in Privity with the D-Link Defendants
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`Broadcom has an indemnity relationship with Dell and Toshiba, and has
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`initiated multiple legal actions on behalf of the community of interest. These
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`actions specifically relate to the ’625 Patent and Broadcom’s BCM4313 and
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`BCM4321 chips, the property in question here. The result of these legal actions
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`will directly impact both Broadcom and these D-Link Defendants, demonstrating
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`that their relationship is sufficiently close that both should be bound by the trial
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`outcome and related estoppels.
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`The term “privity” describes a relationship between a litigant and a nonparty
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`that is characterized by a “mutuality of interest,” Ex. 2019 (Black’s Law
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`Dictionary, 9th Ed. (2009)), “sufficiently close such that both should be bound by
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`the trial outcome and related estoppels,” Office Patent Trial Practice Guide, 77
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`Fed. Reg. at 48759. Both Congress and the PTO expanded the meaning of privity
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`for use in the AIA and acknowledged that the PTO will give effect to judgments by
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`extending the term “beyond the classical description.” 154 Cong. Rec. S9987
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`(daily ed. Sept. 27, 2008) (statement of Sen. Kyl) (citing Cal. Physicians’ Serv. v.
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`Aoki Diabetes Research Inst., 163 Cal. App. 4th 1506 (Cal. App. 2008)); see also
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`Trial Practice Guide, 77 Fed. Reg. at 48,759. The PTO further noted that “privity
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`is an equitable rule that takes into account the ‘practical situation,’ and should
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`extend to parties to transactions and other activities relating to the property in
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`question.” Trial Practice Guide, 77 Fed. Reg. at 48759 (quoting 157 Cong. Rec.
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`S1376 (dialed ed. Mar. 8, 2011) (statement of Sen. Kyl)). Thus, both Congress and
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`the PTO specifically expanded the traditional notions of privity to cater the
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`doctrine to the unique context of IPR proceedings.
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`The PTO acknowledged the aim of the AIA in the Trial Practice Guide and
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`stated that there are multiple factors relevant to the “real party-in-interest” and
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`“privity” analysis, and it specifically cited both Taylor v. Sturgell, 553 U.S. 880
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`(2008) and Aoki, 163 Cal. App. 4th 1506. Taylor listed six distinct bases on which
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`a party in a later case could be bound by the judgment in an earlier case to which
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`he was not a party. 553 U.S. at 894–95. Two relevant factors listed in Taylor are
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`whether the parties maintain a pre-existing “substantive legal relationship,” or
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`whether the later party had the opportunity to control the original party’s
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`participation in a proceeding. Id. Each of these factors is applicable here.
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`When discussing “substantive legal relationships,” Taylor specifically stated
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`that these relationships “are sometimes collectively referred to as ‘privity.’” Id. at
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`894 n.8. The Court then cited to the Restatement:
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`[A] person standing in one of a variety of pre-existing legal
`relationships with a party may be bound by a judgment affecting that
`party. These relationships are often referred to as involving “privity.”
`The circumstances under which such relationships result in preclusion
`are the subject of specific rules such as those governing . . .
`indemnitor and indemnitee[.]
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`2 Restatement of Judgments § 62, Comment a (emphasis added); see also
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`Speedtrack, Inc. v. Office Depot, Inc., No. C 07-3602 PJH, 2014 WL 1813292, at
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`*5-6 (N.D. Cal. May 6, 2014) (an indemnification agreement between the
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`defendants and their software supplier established that the parties were in privity
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`despite a lack of control over the suit, barring the infringement claims as res
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`judicata). The Supreme Court specifically relied on the Restatement, and
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`explained that the term “privity” has “come to be used more broadly, as a way to
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`express the conclusion that nonparty preclusion is appropriate on any ground.”
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`Taylor, 553 U.S. at 894 n. 8 (citing 18A Wright & Miller § 4449, pp. 351-353, and
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`n. 33). Thus, the Court not only relied on authority that prescribes an indemnity
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`relationship as a pre-existing substantive legal relationship, but also confirmed the
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`broader interpretation of the term “privity.”
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`The substantive legal relationship between Broadcom and the D-Link
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`Defendants, specifically Dell and Toshiba, relates to the property in question.
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`Ericsson’s patents are the property in question both here and in the previous
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`litigation—and, as Broadcom admits, both proceedings are closely related: “Patent
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`Owner’s infringement allegations were based in part on Defendants’ use of
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`Petitioner’s WiFi compliant products, such as the BCM4313 and BCM4321.”
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`Paper No. 3 at 1. Ericsson proved the existence of Broadcom’s indemnity
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`relationships that dictate its contractual relationship to the property, and also that
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`Broadcom has an express policy of initiating litigation to control the property, and
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`did take several actions relating to the property in question during the D-Link
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`Lawsuit. (See Exs. 2005 at 53/65; 2009, 2015 at p. 3, 6, 2016, 2017). Thus, not
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`only does Broadcom maintain substantive legal relationships with the D-Link
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`Defendants, but it has carried out multiple legal actions to control the property in
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`question, and could have exercised control the D-Link Lawsuit. These substantive
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`legal relationships and corresponding actions to control the ’625 Patent prove that
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`Broadcom is in privity with the Dell and Toshiba, among others, and therefore
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`barred under Section 315(b).
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`B. The D-Link Defendants are Real Parties-in-Interest.
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`The D-Link Defendants’ substantive legal relationships with Broadcom and
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`the parties' coordinated activity demonstrate that the D-Link Defendants are real
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`parties in interest to this IPR. In IPR proceedings, “the ‘real party-in-interest’ is
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`the party that desires review of the patent. Thus, the ‘real party-in-interest’ may be
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`the petitioner itself, and/or it may be the party or parties at whose behest the
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`petition has been filed.” Trial Practice Guide, 77 Fed. Reg. at 48759. The same
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`factors for determining privity apply to real parties in interest. Id. In addition, the
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`PTO also relies on In re Guan Inter Partes Reexamination Proceeding, Control No.
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`95/001,045, Decision Vacating Filing Date, at 8 (Aug. 25, 2008), which states that
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`the petitioner must identify another entity as the real party in interest if it
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`“[a]llow[s] another entity to direct or control the content (e.g., provide the prior
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`patents/printed publication on which the reexam is to be based) of the request
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`whether such is termed ‘technical review’ or some other phrase.” (emphasis
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`added). Broadcom’s substantive legal relationships with at least Dell and Toshiba,
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`Broadcom’s use of the same prior art references as the D-Link Defendants, and the
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`timing of Broadcom’s Petition for IPR confirm that both Broadcom and the D-Link
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`Defendants are real parties in interest.
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`On August 8, 2013, Ericsson obtained a judgment of infringement against
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`the D-Link Defendants for three patents. (Ex. 2018). Less than three months later,
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`Broadcom filed its Petition for IPR of the same claims infringed by the D-Link
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`Defendants’ use of its chips, relying on the same reference the D-Link Defendants
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`used in their invalidity case. For obvious reasons, Broadcom did not seek review
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`of the claims the district court found to not be infringed. (See Ex. 2018).
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`Broadcom instead made the rote assertion that there were no other real
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`parties in interest. However, Broadcom admitted that it supplied the property in
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`question, namely the “Wi-Fi compliant products, such as the BCM4313 and
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`BCM4321” to the D-Link Defendants. Paper No. 3 at 1. The only logical inference
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`is that Broadcom’s duty to indemnify some or all the D-Link Defendants triggered
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`the successive attack on Ericsson’s patents, and that the D-Link Defendants desire
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`review of the ’215 Patent.
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`In addition, Broadcom made it clear that both itself and the D-Link
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`Defendants desire review of the ’625 patent in its “Motion of Amici Wi-Fi Chip
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`Companies.” Broadcom specifically stated that the damages verdict in the D-Link
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`Lawsuit “affect[s] amici even though they were not parties to the case” because
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`“the award would affect demand for those chips and may also provoke
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`indemnification issues.” (Ex. 2017 at p. 4) (emphasis added). This demonstrates
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`that Broadcom and the D-Link Defendants have common interests in the ’625
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`Patent, and that Broadcom is willing to take action on behalf of the D-Link
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`Defendants. Broadcom cannot hide behind its rote assertions when it is clear that
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`the D-Link Defendants “desire[ ] review of the patent” and, therefore, are real
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`parties in interest.
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`The coordination between Broadcom and the D-Link Defendants and their
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`indemnity agreements clearly demonstrate that the D-Link Defendants are real
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`parties in interest. Broadcom failed to properly designate them as such under 35
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`U.S.C. § 312(a)(2), and because the D-Link Defendants were served with a
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`complaint alleging infringement of the ’625 Patent more than one year before
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`Broadcom filed its Petition, Broadcom is barred from review under Section 315(b).
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`IV.
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`The ’625 Patent is Valid
`A. Overview of Ericsson’s ’625 Patent
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`The ’625 patent “relates to Automatic Repeat Request (ARQ) techniques for
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`transferring data in fixed/wireless data networks.” (Ex. 1001, (’625 pat.) at 1:7-
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`10.) ARQ techniques are “used to ensure reliable data transfer and protect data
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`sequence integrity.” (Id. at 1:13-15.) Detecting data sequence integrity allows the
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`receiver to request retransmission of data packets that have been lost or corrupted.
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`(Id. at 15-20.) Data integrity is commonly enforced by applying transmission rules
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`to sequentially numbered data packets. (Id. at 1:20-22.)
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`There are three main ARQ protocols for providing transmission rules for
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`transferring packets to a receiver in a particular order: Stop-and-Wait, Go-Back-N,
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`and Selective Reject (or Selective Repeat). (Id. at 1:23-25.) Generally, “Selective
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`Reject is most efficient, Stop-and-Wait is least efficient, and Go-Back-N is
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`intermediate.” (Id. at 1:28-30.) Packets received in the correct order are forwarded
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`to the next higher layer. (Id. at 2:66-67.) However, processing is halted for
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`packets arriving out of order or are not correctly received until the lost or
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`erroneous packets are received. (Id. at 2:3-27, 2:66-3:10.)
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`Normally, “it is desirable to transfer all packets without any packet loss.”
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`(Id. at 3:46-47.) But in certain applications, stale or delayed (outdated) data may
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`be useless to the receiver. (Id. at 3:47-51.) Delay-sensitive applications include
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`“telephony, video conferencing and delay sensitive control systems.” (Id. at 51-
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`53.) In situations where data packets have a limited lifetime, bandwidth usage can
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`be enhanced by “not sending (or resending) significantly delayed or outdated data
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`packets.” (Id. at 4:9-13.)
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`The ’625 patent discloses and claims ARQ techniques that “minimize
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`bandwidth usage by accounting for data packets that have an arbitrary but limited
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`lifetime.” (Id. at 4:16-19.) Go-Back-N and Selective Reject embodiments that
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`“discard outdated data packets” are disclosed in the ’625 patent. (Id. at 22-25.) In
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`particular, the ’625 patent allows receivers to skip or overlook discarded packets
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`(e.g., release any expectation of receiving discarded packets). (Id. at 5:18-25.)
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`Thus, the ’625 patent discards packets that are outdated, and also informs a
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`receiver that it should not expect to receive those discarded packets. (Id. at 5:15-
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`27.)
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`In one embodiment, a transmitter that discards a packet, “orders a receiver to
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`accept the next packet, by setting a certain Receiver Packet Enforcement Bit
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`(RPEB) in the ARQ header of the next packet and sending the packet to the
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`receiver.” (Id. at 5:28-32.) The RPEB bit forces the receiver to accept the
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`received packet. (Id. at 5:32-33.) The preferred embodiment of an ARQ packet is
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`illustrated in Fig. 8 of the ’625 patent:
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`Here the ARQ packet 810 includes an ARQ header 812 and a data portion 818.
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`(Id. at 5:33-35.) “The header 812 includes a receive packet enforcement bit RPEB
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`814, and a k-bit sequence number N(S) 816.” (Id. at 5:35-37.) The ARQ packet
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`810 can be used under various conditions. First, if a NACK is sent by an ARQ
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`receiver and is properly received by an ARQ transmitter, and further if “the NACK
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`is valid for one discarded data packet, then the next data packet to be retransmitted
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`can have an RPEB set to TRUE.” (Id. at 5:43-48.) Alternatively, if a
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`retransmission timer expires for one or more data packets causing those data
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`packets to be discarded, the “next incoming data packet to be transmitted, or the
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`first data packet to be retransmitted, can have an RPEB set to TRUE.” (Id. at 5:49-
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`54.) In any event, “[w]hen a correct packet with RPEB=TRUE is received, then all
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`packets preceding this packet and up to the next outstanding packet will be
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`released from the buffer and forwarded to the next higher layer.” (Id. at 9:1-4.)
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`B. Broadest Reasonable Construction
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`Claim 1 reads as follows:
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`A method for discarding packets in a data network
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`employing a packet transfer protocol including an automatic
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`repeat request scheme, comprising the steps of:
`a transmitter in the data network commanding a receiver
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`in the data network to
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` a) receive at least one packet having a sequence
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`number that is not consecutive with a sequence number of a
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`previously received packet and
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` b) release any expectation of receiving outstanding
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`packets having sequence numbers prior to the at least one
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`packet; and
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`the
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`transmitter discarding all packets
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`for which
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`acknowledgment has not been received, and which have
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`sequence numbers prior to the at least one packet.
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`Broadcom proposes, and the Board agreed, that the “broadest reasonable
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`construction” of “commanding” is “an instruction represented in a control field to
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`cause an addressed device to execute a specific control function.” (Pet. at 18-19.)
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`This construction—which is cropped from an IEEE dictionary and divorced from
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`the specification—does not represent the broadest reasonable construction. (Id. at
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`19, n.3 (citing IEEE Dictionary), Ex. 2020 Akl Dec. ¶ 22.)
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`The plain and ordinary meaning of “commanding” requires the commander
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`(i.e., the “transmitter”) to “exercise a dominating influence over: have command
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`of” or be able “to direct authoritatively: order.” (Ex. 2021 (Merriam-Webster
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`Dictionary) definition of “command”). The ’625 patent supports such a plain
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`reading of this common term. (Akl Dec. ¶ 23.) In certain circumstances, the
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`transmitter is able to force the receiver to accept any pack
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