UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`BROADCOM CORPORATION
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`Petitioner
`
`v.
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`WI-FI ONE, LLC
`
`Patent Owner
`
`____________________
`
`Case IPR2013-00636
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`U.S. Patent No. 6,424,625
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`___________________
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`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION
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`TO MOTION TO AMEND U.S. PATENT NO. 6,424,625
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`BROADCOM CORPORATION
`
`Petitioner
`
`v.
`
`WI-FI ONE, LLC
`
`Patent Owner
`
`____________________
`
`Case IPR2013-00636
`
`U.S. Patent No. 6,424,625
`
`___________________
`
`
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`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION
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`TO MOTION TO AMEND U.S. PATENT NO. 6,424,625
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`EXHIBIT DESCRIPTION
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`EXHIBIT
`NO.
`Exhibit 2001 PO’s Request for Production
`Exhibit 2002 Texas D-Link Complaint
`Exhibit 2003 Texas D-Link Amended Complaint
`Exhibit 2004 Texas D-Link Docket as of 11-1-13
`Exhibit 2005 Form 10-Q SEC Filing
`Exhibit 2006 Texas D-Link Intel Intervention
`Exhibit 2007 E-mail String 06-04-10
`Exhibit 2008 E-mail String 12-09-13
`Exhibit 2009 EC Complaint
`Exhibit 2010 Letter from Ayers to Massa 11-15-13
`Exhibit 2011 Letter from Massa to Ayers 11-25-13
`Exhibit 2012 Email String 11-12-13
`Exhibit 2013 E-mail String 11-13-13
`Exhibit 2014 Texas D-Link Docket December 2013
`Exhibit 2015 Texas D-Link Amended Disclosures
`Exhibit 2016 D-Link Order
`Motion of Broadcom et al for Leave to File Amicus Brief in
`Ericsson v. D-Link
`Exhibit 2017
`Exhibit 2018 Final Judgment Pursuant to FRCP 54(b)
`Exhibit 2019 Black’s Law Dictionary 9th Ed 2009 (definition of privity)
`Declaration of Robert Akl, D.Sc. in Support of Patent Owner’s
`Response
`Exhibit 2020
`Exhibit 2021 Merriam Webster Dictionary (definition of command)
`Exhibit 2022 Declaration of Robert Akl, D.Sc. in Support of Patent Owner’s
`
`ii
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`
`
`EXHIBIT
`NO.
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`EXHIBIT DESCRIPTION
`
`Motion to Amend
`Exhibit 2023 Application No. 09/179,952
`Exhibit 2024 Petras and Hettich Article
`Petras et al (Candidate protocol stack for a wireless ATM air
`interface)
`Exhibit 2025
`Exhibit 2026 Vornefeld
`Reply Declaration of Robert Akl, D.Sc., in Support of Patent
`Owner’s Motion to Amend
`
`Exhibit 2027
`
`iii
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`
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`I.
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`The proposed amendment “wherein the sequence number of the at least
`one packet is outside of the receiver window” is supported by the ’625
`patent.
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`Broadcom’s argument that the ’625 patent allegedly does not support the
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`proposed amendment is premised on the faulty assumption that the receiver and
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`transmitter windows must be of identical size W, where W=2k-1. (Paper No. 44 at
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`4.) The ’625 patent has no such requirement. In a Go-Back-N Scheme, the
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`receiver window includes “just one position” (’625 pat. at 2:61-63), whereas in the
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`Selective Reject Scheme, the receiver window “can include up to 2k-1 positions,”
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`(id. at 2:61-62; Akl Tr. (Ex. 1021) at 114:21-115:2). In either scheme, the
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`transmitter window is “an arbitrary window size W” in the general case, or “[i]n
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`the special case, the window size is W=2k-1.” (’625 pat. at 5:58-63.) In an
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`embodiment of the ’625 patent, “the receiver and the transmitter must both use the
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`same arbitrary value for W.” (Id. at 7:21-22.) But that does not require identical
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`transmitter and receiver window size. Because the receiver window size in a Go-
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`Back-N Scheme is “just one position” (id. at 2:61-63), the size of the receiver
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`window cannot be limited to 2k-1 as Broadcom erroneously suggests (Paper No. 44
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`at 4.) W refers to the transmitter, not receiver window size. (Akl Dec. ¶ 10.)
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`The receiver and the transmitter must use the same arbitrary value for W so
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`that the receiver knows which packets to properly receive. “If the difference
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`between N(S) and ESN . . . is less than 2k-1 and RPEB=TRUE at a packet
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`1
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`reception, then the packet will be accepted and forwarded to higher layer as long as
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`the data carried in the packet is also correct.” (‘625 pat. at 6:31-35.) Furthermore,
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`in a Selective Reject Scheme, “A packet shall be accepted, apart from the normal
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`Go-Back-N function, when N(S)-ESN<2k-W, RPEB=TRUE and the data in the
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`packet are correct.” (Id. at 7:23-25.) These calculations occur so that the receiver
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`knows whether the received packet was within the transmitter window – if so, the
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`packet is accepted, otherwise rejected, including a packet whose sequence number
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`is outside the receiver window. (Akl Tr. (Ex. 1021) at 116:3-118:19; ’625 pat. at
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`6:36-43; Akl Dec. at ¶ 11.)
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`Besides factually inaccurate, Broadcom’s contention that the proposed
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`amendment is not supported by the ’625 patent is based solely on attorney
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`argument. The ’625 patent specification and Dr. Akl’s testimony relating to the
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`receiver window size is unrebutted by Broadcom’s expert.
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`II. Claim 20 is not anticipated by Vornefeld.
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`Vornefeld creates, rather than releases, expectations of cells having a lower
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`sequence number. (Paper No. 36 at 10-11; Ex. 2022 at ¶ 26.) When packets are
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`accepted outside a receiver window in Vornefeld, the receiver window is adjusted
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`so that the last sequence number (not the first sequence number) in the receiver
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`window is sequence number of the just received packet, and continues to wait for
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`outstanding packets before releasing the received packets to the higher layer.
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`2
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`
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`(Vornefeld Fig. 5.3, 5.6; Paper No. 36 at 11; Ex. 2022 at ¶ 26.) And as Vornefeld
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`receiver in Fig. 5.3 continues to wait for SN2, expectations for all outstanding
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`packets are not released. (Paper No. 44 at 9.)
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`Broadcom argues that the “releasing expectation” limitation is met when the
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`receiver receives SN5 with only SN1 outstanding in Fig. 5.3 of Vornefeld. (Paper
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`No. 44 at 9.) Not so. The Vornefeld receiver cannot distinguish between cells
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`discarded and incorrectly received: “However, the recipient cannot differentiate
`
`between I-Frames discarded and incorrectly [received] outside of the reception
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`window so that in the worst cases, there may be a doubling or exchanging of
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`ATM-cells.” (Vornefeld at 42; Akl Tr. (Ex. 1021) at 147:12-18.) The Vornefeld
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`receiver cannot release expectations for outstanding cells because the upper layers
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`in the receiver may require those outstanding cells. (Akl Dec. ¶ 13.) Vornefeld
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`creates, rather than releases expectations for these cells, because the receiver
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`cannot differentiate between old and new cells. (Id.) Dr. Akl’s testimony cited by
`
`Broadcom (Paper No. 44 at 9) is in accord and unrebutted.
`
`Broadcom argues that because “transmitting a packet outside a receiver
`
`window is itself not inventive” (Paper No. 44 at 7), that the proposed amended
`
`claim cannot be novel. But Broadcom ignores many limitations of the amended
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`claim, including the “releasing” limitation, the “discarding limitation,” and the
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`“transmitter limitations.” Patent Owner’s showing that the amended claim as a
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`3
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`
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`whole is patentable over the prior art, including Vornefeld (Paper No. 36 at 8-12;
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`Akl Tr. (Ex. 1021) at 129:4-14), remains unrebutted. Broadcom also argues
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`(without any support) that Vornefeld releases expectations “of one or more of the
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`discarded packets at the lower end of the window.” (Paper No. 44 at 9-10.) This is
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`incorrect. Vornefeld creates, rather than releases expectations of cells at the lower
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`end of the window. (Paper No. 36 at 10-11; Ex. 2022, ¶26)
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`III. The proposed amendment further limits the claims.
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`The proposed amendments cover a transmitter, that, in addition to the
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`limitations found in the original claim, commands a receiver to receive a packet
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`outside its receive window. This proposed amendment further limits the types of
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`packets that the transmitter can command the receiver to accept. Rather than
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`commanding a receiver to accept any packet, the proposed amendment now limits
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`the transmitter to commanding a receiver to accept packets outside its receive
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`window. Because the claim now only covers a subset of the original claims, it is
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`narrower. See Glaxo Wellcome, Inc. v. Impax Labs., Inc., 356 F.3d 1348, 1353
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`(Fed. Cir. 2004).
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`IV. The Patent Owner has shown patentability over the prior art in general.
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`Patent Owner discussed how a person of ordinary skill in the art would
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`interpret the prior art references, including Garrabrant (Ex. 1002), Hettich (Ex.
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`1007), Walke (Ex. 1008), Kemp (Ex. 1005), Bertsekas (Ex. 1012), Petras &
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`4
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`
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`Hettich (Ex. 2024), Petras et al. (Ex. 2025), and Vornefeld (Ex. 2026) in light of
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`the proposed amendment. Paper No. 26 at 8-12. Patent Owner’s motion
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`conclusively showed a person of ordinary skill in the art would understand that the
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`proposed amendment was not taught or suggested by the prior art (id.; Ex. 2022, ¶
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`2), would understand that Vornefeld accepts packets outside its receive window
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`and creates expectations of receiving packets whose sequence numbers are lower
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`than the received packet (Paper No. 26 at 10-11; Ex. 2022, ¶ 26), and would
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`understand that the closest prior art – Hettich – does not teach or disclose the
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`proposed amended claim (Paper No. 26 at 11-12; Ex. 2022, ¶27). Moreover,
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`Broadcom presented no testimony rebutting any of Patent Owner’s motion to
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`amend or Dr. Akl’s declaration, including the background and experience of a
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`person of ordinary skill in the art.
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`Finally, Broadcom’s argument that Patent Owner’s motion to amend did not
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`“present any evidence as to the level of ordinary skill in the art” (Paper No. 44 at
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`11) is also legally erroneous. To the extent that Broadcom contends that a motion
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`to amend must include an express definition of a person of ordinary skill in the art,
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`no such requirement exists. Compare Int’l Flavors & Fragrances, Inc. v. U.S.A.,
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`IPR2013-00124, Paper No. 10 (no express definition for a POSITA) with Int’l
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`Flavors & Fragrances, Inc. v. U.S.A., IPR2013-00124, Paper No. 12 (determining
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`the amended claims were patentable over the prior art).
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`5
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`Respectfully submitted,
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`LEE & HAYES PLLC
`
`
`
`
` /Peter J. Ayers/
`Peter J. Ayers, Reg. No. 38,374
`John Shumaker, Reg. No. 52,223
`LEE & HAYES, PLLC
`13809 Research Blvd., Suite 405
`Austin, TX 78750
`Phone: (512) 605-8162
`Fax: (509) 944-4693
`peter@leehayes.com
`jshumaker@leehayes.com
`
`J. Christopher Lynch, Reg. No. 34,216
`LEE & HAYES, PLLC
`601 W. Riverside Ave., Suite 1400
`Spokane, WA 99201
`Telephone: 509.324.9256
`Fax: 509.323.8979
`chris@leehayes.com
`
`Counsel for Patent Owner
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`Dated: November 3, 2014
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on November 3, 2014 the foregoing PATENT
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`OWNER’S REPLY TO PETITIONER’S OPPOSITION TO MOTION TO
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`AMEND U.S. PATENT NO. 6,424,625 was served on Lead and Back-up Counsel
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`for Broadcom Corporation by sending the same via electronic mail to the address
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`provided by Broadcom:
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`Dominic E. Massa, Lead Counsel
`Michael A. Diener, Back-up Counsel
`Wilmer Cutler Pickering Hale and Dorr, LLP
`60 State Street
`Boston, MA 02109
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`LEE & HAYES PLLC
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` /Peter J. Ayers/
`Peter J. Ayers
`Reg. No. 38,374
`
`
`7
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