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`Filed on behalf of: INTERDIGITAL TECHNOLOGY CORPORATION
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`Paper No. 9
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`By:
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`Jonathan D. Link
`Latham & Watkins LLP
`555 11th Street, NW
`Washington, D.C. 20004-1304
`Telephone:(202) 637-2200
`Facsimile: (202) 637-2201
`E-mail: jonathan.link@lw.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ZTE CORPORATION AND ZTE (USA) INC.
`Petitioner
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`V.
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`INTERDIGITAL TECHNOLOGY CORPORATION
`Patent Owner
`____________
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`Case IPR2014-00275
`Patent 7,941,151
`____________
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`Mailed: April 17, 2014
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`
`Before PATRICK E. BAKER, Trial Paralegal
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`PATENT OWNER’S PRELIMINARY RESPONSE TO
`ZTE’S PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,941,151
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`TABLE OF CONTENTS
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`Case IPR2014-00275
`Patent 7,941,151
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`Page
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`Introduction ...................................................................................................... 1
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`Summary of Preliminary Response ................................................................. 3
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`I.
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`II.
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`III. Overview of 151 Patent ................................................................................... 3
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`IV. Claim construction ........................................................................................... 4
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`A.
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`B.
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`C.
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`D.
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`“same physical downlink control channel” ........................................... 4
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`“channel assignment information” ........................................................ 7
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`“shared channel” .................................................................................... 8
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`“based on WTRU identity (ID)-masked cyclic redundancy
`check (CRC) parity bits” ..................................................................... 11
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`V.
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`151 patent is valid over Cited Prior art .......................................................... 11
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`A. Ground 1 Fails: Siemens 004 Does Not Anticipate Or Render
`Obvious Any Of The Claims ............................................................... 12
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`1.
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`2.
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`3.
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`4.
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`Overview of Siemens 004 and HS-SCCH ................................ 12
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`Siemens 004 does not disclose the preamble of claim 1:
`“A method for utilizing channel assignment information
`for an uplink shared channel or a downlink shared
`channel, the method comprising:” ............................................ 15
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`Siemens 004 Does Not Disclose An “Uplink Shared
`Channel” (Claim 1) ................................................................... 16
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`Siemens 004 does not disclose “determining whether the
`channel assignment information is for assigning radio
`resources for the uplink shared channel or the downlink
`shared channel” (Claim 1) ........................................................ 18
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`Case IPR2014-00275
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`Patent 7,941,151
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`Siemens 004 does not disclose the order of the two
`determinations required by “and if so” (Claim 1) .................... 19
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`Siemens 004 does not anticipate dependent claims 2-6
`and 8 .......................................................................................... 20
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`Siemens 004 does not anticipate claim 9 .................................. 20
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`Siemens 004 does not anticipate Claim 16 ............................... 21
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`Siemens 004 does not anticipate dependent claims 17-21
`and 23-24 ................................................................................... 21
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`5.
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`6.
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`7.
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`8.
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`9.
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`10.
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`Siemens 004, alone, does not render the claims obvious,
`and any obviousness argument would be redundant ................ 21
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`Ground 2 Is Redundant And Fails: Siemens 004 And The
`Admitted Prior Art Do Not Render Claims 1-6 and 16-21
`Obvious ............................................................................................... 23
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`Ground 3 is Redundant And Fails: Siemens 004 Combined
`With 3GPP TS 25.212 Does Not Render Claims 1-6 and 16-21
`Obvious ............................................................................................... 27
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`B.
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`C.
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`D. Ground 4 is Redundant And Fails: Siemens 004 Combined
`With InterDigital 810 Does Not Render Claims 1-2 and 16-17
`Obvious ............................................................................................... 29
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`E.
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`F.
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`Ground 5 Is Redundant And Fails: Siemens 004 Combined
`With Motorola 683 Does Not Render Claims 8 and 23 Obvious ....... 32
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`Ground 6 Is Redundant And: Siemens 004 and Siemens 010
`Do Not Render Claims 8 and 23 Obvious ........................................... 35
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`VI. Conclusion ..................................................................................................... 38
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`TABLE OF AUTHORITIES
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`Case IPR2014-00275
`Patent 7,941,151
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`Page
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`CASES
`Creston Elecs. v. Norman IP Holdings, LLC,
`IPR2013-00278 (Paper. No. 11) (PTAB Nov. 15, 2003) .................................... 26
`
`Heart Failure Techs., LLC v. CardioKinetix, Inc.,
`IPR2013-00183 (Paper No. 12) (PTAB July 21, 2013) ........................................ 26
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`Helifix Ltd. v. Blok-Lok, Ltd.,
`208 F.3d 1339 (Fed. Cir. 2000) ............................................................................. 25
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`In re Kubin,
`561 F.3d 1351 (Fed. Cir. 2009) ................................................................ 31, 35, 38
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`In re O'Farrell,
`853 F.2d 894 (Fed. Cir. 1988) .................................................................. 31, 35, 38
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`Innogentics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) ............................................................................. 26
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`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ............................................................................. 26
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`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .............................................................................................. 26
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`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00003 (Paper No. 7) (PTAB Oct. 25, 2012) ............................... passim
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`Oracle Corp. v. Clouding IP, LLC,
`IPR2013-00088 (Paper No. 13) (PTAB June 13, 2013) ............................... passim
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`OTHER AUTHORITIES
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`35 U.S.C. § 102 ......................................................................................................2, 3
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`35 U.S.C. § 103 ......................................................................................................2, 3
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`37 C.F.R § 1.111 ........................................................................................................ 8
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`Patent 7,941,151
`37 C.F.R. § 42.8 ......................................................................................................... 1
`37 C.F.R. § 42.8 ......................................................................................................... 1
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`Case IPR2014-00275
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`Pursuant to 37 C.F.R. § 42.8, Patent Owner InterDigital Technology
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`Case IPR2014-00275
`Patent 7,941,151
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`Corporation respectfully submits this preliminary response to the Petition for Inter
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`Partes Review (“Petition”) of U.S. Patent No. 7,941,151 (hereinafter the “’151
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`patent”) filed by ZTE Corporation and ZTE (USA) Inc. (collectively “ZTE,” also
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`“Petitioner”) to the U.S. Patent and Trademark Appeals Board (“PTAB”). For the
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`reasons set forth below, ZTE’s Petition should not be granted and should be
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`dismissed in its entirety.
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`I.
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`INTRODUCTION
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`The Petition’s primary reference, Siemens 004, is a proposal, barely more
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`than a page, made by Siemens to Working Group 1 (“WG1”) of 3GPP (Exhibit
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`1003). WG1 is a group within 3GPP that develops sections of cellular standards.
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`As part of the development process, WG1 considers proposals made by
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`participants, such as Siemens, for adoption. Notably, Siemens 004 was never
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`adopted by WG1, so as to become part of the 3GPP WCDMA standard.
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`Siemens 004 falls far short of anticipating the claims of the ’151 patent.
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`Siemens 004 fails to disclose the “uplink shared channel” required by every claim.
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`Instead, Siemens discloses an Enhanced Uplink Dedicated Channel, or EU-DCH –
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`the opposite of a shared channel. For this reason alone, Siemens 004 cannot
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`anticipate the claims.
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`Petitioner, aware of the weakness of the Siemens 004 reference, resorts to
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`mud-slinging. The Petition makes much of the failure to disclose Siemens 004 to
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`the Patent Office. As an initial matter, any suggestion of inequitable conduct is
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`completely irrelevant. An IPR may only be instituted upon showing a reasonable
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`likelihood that the claims are unpatentable under either 35 U.S.C. §§ 102 or 103.
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`Moreover, as Petitioner is well aware, and as the complete record in the ITC
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`investigation shows, Petitioners utterly failed to show intent to deceive. During the
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`ITC investigation, Petitioner and its co-Respondents asserted inequitable conduct
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`based on the failure to disclose Siemens 004. The overwhelming evidence
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`demonstrated that this failure was due to an error, and there was not a shred of
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`evidence of intent to deceive. InterDigital therefore moved for summary judgment,
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`asking the Administrative Law Judge (ALJ) to find that Respondents could not
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`prove intent to deceive. The ALJ held that the defense survived summary
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`judgment “just barely,” and indicated that he wished to hear any further testimony
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`at the hearing before making a final decision. Exhibit 2001 (Order No. 94, at 8).
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`However, the ALJ rejected Respondents’ “convoluted conspiracy theory.” Id.
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`Respondents were unable to, and did not, offer any further evidence at the hearing.
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`2
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`II.
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`SUMMARY OF PRELIMINARY RESPONSE
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`Case IPR2014-00275
`Patent 7,941,151
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`Siemens 004 does not anticipate the asserted claims, because it fails to
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`disclose an uplink shared channel, as required by every claim. Instead, Siemens
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`004 discloses the opposite, a dedicated channel.
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`The Petition asserts several obviousness combinations, and also asserts, in
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`Ground 1, that Siemens 004 alone renders the claims obvious. Each of these
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`obviousness positions is redundant. The Petition asserts, in Ground 1, that
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`Siemens 004 discloses every element of the challenged claims, thereby anticipating
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`the claims under 35 U.S.C. §102. Pet. at 23-25, 32-33. Therefore, the position
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`stated, in Ground 1, that Siemens 004 alone renders these claims obvious under 35
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`U.S.C. §103 is redundant. Likewise, Grounds 2-4, asserting that some or all of
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`these claims are rendered obvious by three sources – “Admitted Prior Art,” 3GPP
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`TS 25.212, and InterDigital 810 – are redundant. The Petition also asserts, in
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`Ground 1, that Siemens 004 discloses the requirement added by claims 8 and 23,
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`“wherein the physical downlink control channel carries both downlink and uplink
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`channel assignment information simultaneously.” Pet. at 29-31, 33. Therefore,
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`Grounds 5-6, asserting that these claims are rendered obvious by two sources –
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`Motorola 683 and Siemens 010 – are redundant.
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`III. OVERVIEW OF 151 PATENT
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`Patent 7,941,151
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`The ’151 patent describes and claims an improved technique for assigning
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`radio resources to a WTRU, or Wireless Transmit Receive Unit, i.e., a User
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`Equipment (UE) or a handset. The specific described embodiments use the prior
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`art HSDPA, High Speed Downlink Packet Access, as a starting point, and
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`specifically its control channel, HS-SCCH, the High Speed Shared Control
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`Channel. Exhibit 1001, ’151 Patent, at 3:13-21, 3:51-4:3 (embodiment 1), 4:4-27
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`(embodiment 2), 4:28-57 (embodiment 3), 4:58-5:16 (embodiment 4) and 5:17-24
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`(embodiment 5). In HSDPA, the HS-SCCH provided downlink control
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`information for assigning radio resources for the High Speed Downlink Physical
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`Channel, HS-DPCH. The inventors proposed modifying HS-SCCH in various
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`ways to enable it to carry channel assignment information for an Enhanced Uplink
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`shared channel, as well as for the existing HS-DPCH.
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`IV. CLAIM CONSTRUCTION
`A.
`“same physical downlink control channel”
`The correct construction for this term is “a radio resource used to transmit
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`uplink and/or downlink channel assignment information.” The Petition purports to
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`disagree with this construction, but admits, at pages 7-8, that this construction is
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`the broadest reasonable construction. InterDigital’s proposed construction is
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`therefore indisputably a reasonable construction.
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`There is no genuine dispute about most aspects of the construction of this
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`term. First, InterDigital and Petitioner agree that it is a “radio resource.” Second,
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`InterDigital and Petitioner agree that it must transmit downlink control information
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`that can be either uplink or downlink channel assignment information. Third,
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`InterDigital and Petitioner agree that in claims 1 and 16, downlink and uplink
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`channel assignment information is not required to be transmitted simultaneously.
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`The simultaneity requirement is added by dependent claims 8 and 23.
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`The fundamental difference between the two constructions is what it means
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`to use a/the “same” PDCCH. The intrinsic evidence confirms that it means that the
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`same PDCCH will be used, whether the downlink control information is channel
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`assignment for uplink or downlink. The PDCCH therefore must be capable of
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`transmitting both types of information.
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`InterDigital’s position tracks the plain language of the claims. The claim
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`language requires only that first, a “same” PDCCH is used to transmit uplink or
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`downlink channel assignment information (or both), and that second, the “same”
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`PDCCH is capable of transmitting both uplink channel assignment information
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`and downlink channel assignment information. These two requirements are met
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`by InterDigital’s construction: “a radio resource [that is] used to transmit uplink
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`and/or downlink channel assignment information.” Necessarily, if that radio
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`resource is used to do either, it must be capable of doing both.
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`Specifically, the method step recited in the first element of claim 1 requires
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`only the WTRU “receiving ... downlink or uplink channel assignment information
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`via a same physical downlink control channel.” The method step does not require
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`that the WTRU receive both downlink and uplink channel assignment information.
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`That only downlink or uplink information need be received is consistent with the
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`other method steps recited in claim 1, which require “determining whether the
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`channel assignment is for ... the uplink shared channel or the downlink shared
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`channel,” and then “utilizing the radio resources for the uplink shared channel or
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`the downlink shared channel.” The same is true of the corresponding language of
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`claim 16.
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`The first element of claim 1 goes on to recite a clause that says “both
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`downlink channel assignment
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`information and uplink channel assignment
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`information being received via the same physical downlink control channel.”
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`However, this clause does not describe a step in the claimed method. Rather, it
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`describes the capabilities of the “same PDCCH.” The method step, as explained
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`above, requires only that downlink or uplink channel assignment be received on “a
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`same PDCCH.” The clause simply says that the “same PDCCH” that was
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`introduced in the method step must be capable of receiving “both downlink ... and
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`uplink channel assignment information.” This dual capability is precisely what
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`distinguished the claimed PDCCH from the prior art HS-SCCH (High Speed-
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`Shared Control Channel) of HSDPA. As explained in the specification, the prior
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`art HS-SCCH was capable of carrying only downlink channel assignment
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`information, not both downlink and uplink information. Exhibit 1001, ’151 Patent,
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`at 1:37-42.
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`Indeed, because the PDCCH is capable of carrying both types of
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`information, it typically (though not necessarily) will carry both types over time.
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`Therefore, both types of information are described as “being received” via the
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`PDCCH. It is indisputable that this verb tense – the present progressive –
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`describes activity that is ongoing over time – here, the receipt of uplink and
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`downlink channel assignment information over time on “the same PDCCH.”
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`In short, the first step in claim 1 requires only that: (i) the WTRU receives
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`“downlink or uplink channel assignment information”; and (ii) does so “via a same
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`PDCCH,” where “the same PDCCH” is capable of receiving both downlink and
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`uplink channel assignment information. The same analysis applies to the
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`corresponding language recited in claim 16. Thus, InterDigital’s proposed
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`construction is not only reasonable – the intrinsic evidence confirms that it is
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`correct.
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`“channel assignment information”
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`B.
`The proper construction for this term is “information regarding radio
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`resource assignment for the uplink or downlink channel.” The Petition admits, at
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`pages 8-9, that this is the broadest reasonable construction. It is therefore
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`indisputably a reasonable construction.
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`It is also correct in light of the intrinsic evidence. The plain language of
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`claims 1 and 16 reveals that “channel assignment information” is “information
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`regarding radio resource assignment for the uplink or downlink channel.” Exhibit
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`1001, ’151 Patent, at 5:61-67, 6:4-7, 6:64-7:2, 7:6-9. Likewise, the specification
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`repeatedly refers to “channel assignment information” as “radio resources
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`assignment information.” Id. at 3:37, 3:41-42, 3:46, 5:28-29. Thus, the intrinsic
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`evidence confirms that InterDigital’s proposed construction is not only reasonable,
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`but correct.
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`“shared channel”
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`C.
`This term is properly construed as “a radio resource that can convey
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`information to or from a plurality of WTRUs.” The Petition agrees with
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`InterDigital on the most important aspect of this construction, namely that a shared
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`channel can convey information to or from a plurality of WTRUs. That
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`requirement was emphasized during prosecution of the parent application, where
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`the applicant distinguished shared channels from dedicated channels, arguing that
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`the former are “shared … among a plurality of WTRUs, and are completely
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`different in nature from dedicated channels.” Exhibit 2002 (’405 pros. hist., Reply
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`Pursuant to 37 C.F.R § 1.111, Feb. 24, 2006, at NK868ITC011070920-21).
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`Patent 7,941,151
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`The only dispute raised by the Petition is whether “shared channel” is
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`properly construed as “a radio resource” – that is, whether it is a physical resource
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`that can actually “convey information” as required by both proposed constructions.
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`The intrinsic evidence confirms that it is.
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`The surrounding claim language explains that the WTRU receives
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`“downlink control information” that provides “channel assignment information.”
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`As the specification explains, the control channel “conveys radio resource
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`allocation information to a plurality of wireless transmit/receive units (WTRUs).”
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`Exhibit 1001 (’151 Patent, at 1:33-36). In other words, the claimed “channel
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`assignment information” is “radio resource allocation information.” It follows that
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`a “channel” is a “radio resource.”
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`The specification similarly explains, at 3:37-39, that “radio resources
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`assignment information … is transmitted through the common control channel.”
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`Again, the specification refers to the claimed “channel assignment information” as
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`“radio resources assignment information.” The specification is replete with
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`references to assigning “radio resources” for the uplink or downlink shared
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`channel. Indeed, in each of the five disclosed embodiments, the WTRU receives
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`an indication that a “radio resource” is assigned. See, e.g., id. at 3:40-50, 3:51-55,
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`3:61-64, 3:67-4:3, 4:4-7, 4:28-31, 4:58-61, 5:17-20. Furthermore, the specification
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`describes a process in accordance with the invention as including transmission of
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`“a message for radio resource assignment” via “a common control channel.” Id. at
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`5:27-30.
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`The Petition does not provide any argument to support its proposed
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`construction, and merely refers to its attached claim construction brief. Pet. at 9.
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`Petitioner should not be permitted to evade the page limit by including arguments
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`in the attached claim construction brief that are not included in the Petition. In any
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`case, Petitioner’s arguments simply ignore the fact that, as discussed above, the
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`specification repeatedly equates “channel” and “radio resource.”
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`Petitioner’s arguments, in its attached claim construction brief, that the
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`“shared channel” need not be a “physical channel” are contradicted by the intrinsic
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`evidence. The specification states that the radio resources are assigned “for the DL
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`or the UL transmissions.” Id. at 3:45-50. Transmissions cannot be sent without a
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`physical connection. Indeed, Petitioner’s expert in the ITC investigation, Dr. Min,
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`admitted as much: transmission cannot occur without the use of physical radio
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`resources. Exhibit 2003 (Min Rebuttal Witness Statement, at Q997). Therefore,
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`the arguments raised by Petitioner in its attached claim construction brief are
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`simply incorrect.
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`In short, there can be no dispute that, according to the specification, the
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`“shared channel” is a shared “radio resource.” InterDigital’s proposed construction
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`is both reasonable and correct.
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`“based on WTRU identity (ID)-masked cyclic redundancy check
`(CRC) parity bits”
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`D.
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`This term is correctly construed as “based on cyclic redundancy check parity
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`bits masked by a masking code associated with the WTRU.” The Petition admits,
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`at page 10, that InterDigital’s proposed construction is the broadest reasonable
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`construction. It is therefore indisputably a reasonable construction.
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`Indeed, although InterDigital and Petitioner disputed the construction of this
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`term in the ITC investigation, Petitioner removed the construction of this term
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`from the list of issues to be decided by the Administrative Law Judge. Exhibit
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`2004 (Redline of Joint Outline of the Issues to Be Decided in the Final Initial
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`Determination, at 2) (this term is deleted); Exhibit 2005 (Joint Outline of the Issues
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`to Be Decided in the Final Initial Determination) (this term is absent). Petitioner
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`has thus effectively conceded that InterDigital’s proposed construction is correct.
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`InterDigital’s proposed construction is correct because it is simply the
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`ordinary meaning of the claim language. Furthermore, the relevant step/function is
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`broadly disclosed in specification: “The WTRU 106 then determines if the
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`message is intended for the WTRU 106 (step 206). A WTRU-specific CRC may
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`be utilized for this purpose.” Exhibit 1001 (’151 Patent, at 5:33-35). Nothing in
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`the intrinsic evidence limits this claim term to any particular comparison.
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`V.
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`151 PATENT IS VALID OVER CITED PRIOR ART
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`Case IPR2014-00275
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`Patent 7,941,151
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`A. Ground 1 Fails: Siemens 004 Does Not Anticipate Or Render
`Obvious Any Of The Claims
`1. Overview of Siemens 004 and HS-SCCH
`As explained in the background section of the ’151 patent, HS-SCCH is a
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`known prior art control channel used in HSDPA. Exhibit 1001 (’151 Patent) at
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`1:23-36. Both the ’151 patent and Siemens 004 use certain aspects of HS-SCCH
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`as a starting point. Specifically, Figure 2 of the ’151 patent is “a look-up table for
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`channelization code set mapping in an HSDPA, which is utilized in conjunction
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`with the system of Figure 1.” Exhibit 1001 (’151 Patent, at 2:50-53). In other
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`words, Figure 2 illustrates an aspect of the then-known HSDPA system. The
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`specification is very clear on this point, stating that “FIG. 2 is a look-up table for
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`channelization code set mapping currently used in the HSDPA.” Id. at 3:55-57
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`(emphasis added). Thus, there can be no dispute that Figure 2 is acknowledged
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`prior art, and specifically part of the then-existing HSDPA.
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`This same figure appears in Siemens 004. Both the ’151 patent and Siemens
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`004 describe making some use of the channelization-code sets in the “redundant
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`area” of this figure. The ’151 patent specifically describes using these “unused” or
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`“impossible” combinations to indicate, to a WTRU, uplink (UL) channel
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`assignment information. Exhibit 1001 (’151 Patent, at 3:51-4:3). Siemens 004
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`merely describes using these “redundant” code sets for “downlink signaling” for an
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`Enhanced Uplink Dedicated Channel. Exhibit 1003 (Siemens 004, at § 2; Fig. 1).
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`Case IPR2014-00275
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`Patent 7,941,151
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`Based on this shared starting point from the prior art HSDPA (Figure 2 of the ’151
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`patent) the Petition asserts that “Siemens 004 is identical in substance to the first
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`embodiment,” and therefore anticipates the claims. Pet. at 3, 18. Of course, even
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`if Siemens 004 did disclose every aspect of that first embodiment – and it does not
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`– this would not establish anticipation of the claims. The Petition admits that the
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`patent discloses several embodiments. Pet. at 13. In fact, Siemens 004 fails to
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`disclose key elements of the claims, as discussed below.
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`The Petition asserts that the inventors of the ’151 patent “copied” Figure 2
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`from Siemens 004, suggesting that the inventors obtained an inventive feature from
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`Siemens 004. Pet. at 2. Notably, after a complete ITC investigation and a full
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`hearing, Petitioner is unable to point to any actual evidence of copying, and there is
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`none. In fact, as discussed above, the ’151 patent clearly indicates that this figure
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`is prior art, from “current HSDPA.” Exhibit 1001 (’151 Patent, at 3:55-57).
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`Furthermore, a Nokia submission to WG1, which pre-dates Siemens 004
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`and the ’151 patent, includes this identical figure. Exhibit 2006 (3GPP TSG RAN
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`WG 1 #23 Meeting, Nokia, Compact Signalling of Multi-Code Allocation for
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`HSDPA, version 2, Espoo, Finland, Jan. 8-11, 2002, at NK868ITC01590672).
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`Thus, the figure did not originate with Siemens 004, but rather, just as the ’151
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`patent states, was an aspect of HSDPA that was known well prior to Siemens 004.
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`Notably, this Nokia submission was disclosed in the first Information Disclosure
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`13
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`Case IPR2014-00275
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`Patent 7,941,151
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`Statement filed with the Patent Office in connection with the prosecution of the
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`parent of the ’151 patent. Exhibit 2007 (Information Disclosure Statement, Sept.
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`1, 2004, at NK868ITC011070755).
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`Siemens 004 describes re-using certain aspects of the HS-SCCH for
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`downlink control of a dedicated transport channel referred to as EU-DCH, the
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`Enhanced Uplink Dedicated Channel. The EU-DCH was the subject of a Working
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`Group 1 (WG1) “feasibility study,” as stated in the introductory sentence of
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`Siemens 004. Therefore, EU-DCH was not yet defined. It is, however,
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`consistently described as a dedicated channel. In describing Siemens 004, the
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`Petition misleadingly uses the terminology of the ’151 patent, referring to the
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`subject of the WG1 feasibility study as simply an “Enhanced Uplink” channel.
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`Pet. at 12. However, Siemens 004 never refers to the channel as an “Enhanced
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`Uplink” channel, and instead consistently refers to it as an Enhanced Uplink
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`Dedicated Channel, or EU-DCH. The Petition does not identify a single document
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`that refers to the subject of the feasibility study as an “Enhanced Uplink” channel.
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`And Siemens 004 never describes the Enhanced Uplink Dedicated Channel, EU-
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`DCH, as a shared channel.
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`In contrast, Siemens 004 refers repeatedly to HS-SCCH, which is a shared
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`channel, the High Speed Shared Control Channel. Siemens 004 thus recognizes
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`the difference between a shared channel (the HS-SCCH) and a dedicated channel
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`14
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`Case IPR2014-00275
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`Patent 7,941,151
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`(the EU-DCH), and indeed these differences were well-known to those of ordinary
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`skill in the art. In fact, the 3GPP Dictionary provides definitions for (i) a
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`“dedicated channel” as “[a] channel dedicated to a specific UE,” and (ii) for a
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`“shared channel” as “[a] radio resource (transport channel or physical channel) that
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`can be shared dynamically between several UEs.” Exhibit 2008 (3GPP TR-21.905
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`V6.2.0 (3GPP Dictionary) at pp. 10, 25). Notably, the Petition appears to agree
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`with these definitions. Pet. at 11. These definitions show that a “shared channel”
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`is contrary to, and the opposite of, a dedicated channel. Petitioner’s expert in the
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`ITC 868 investigation, Dr. Paul Min, relied on the 3GPP Dictionary, and admitted
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`that it is a reliable source of information on the meaning of terms used in 3GPP.
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`Exhibit 2009 (ITC Hearing Tr., at 735:4-16). In short, therefore, Siemens 004
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`discloses only a dedicated uplink channel, not the shared uplink channel required
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`by every claim of the ’151 patent. Moreover, Siemens 004 fails to disclose several
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`other elements as well, including those discussed in more detail below.
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`2.
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`Siemens 004 does not disclose the preamble of claim 1: “A
`method for utilizing channel assignment information for an
`uplink shared channel or a downlink shared channel, the
`method comprising:”
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`Siemens 004 does not disclose the preamble. At a minimum, as discussed in
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`more detail below, Siemens 004 does not disclose “an uplink shared channel,” or
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`channel assignment information for an uplink shared channel.
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`15
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`Case IPR2014-00275
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`Patent 7,941,151
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`Siemens 004 Does Not Disclose An “Uplink Shared
`Channel” (Claim 1)
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`3.
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`Every claim requires an “uplink shared channel.” Exhibit 1001 (’151 Patent,
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`at 5:58-60; 6:61-63). Siemens 004 does not disclose an uplink shared channel.
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`Instead, Siemens 004 expressly discloses its opposite: an uplink dedicated
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`channel. Section 1 of Siemens 004 defines “EU-DCH” as an “enhanced uplink
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`dedicated transport channel.” Siemens 004 repeatedly refers to the channel as
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`“dedicated” and never refers to it as shared.
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`A dedicated channel is the opposite of a shared channel. As discussed
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`above, dedicated channels and shared channels are defined, and defined very
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`differently, by 3GPP. The 3GPP Dictionary explains that a dedicated channel is
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`dedicated to a specific UE, whereas shared channels are dynamically shared
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`between several UEs. Exhibit 2008 (3GPP TR-21.905 V6.2.0 (3GPP Dictionary)
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`at pp. 10, 25). During the ITC hearing, Petitioner’s expert Dr. Min admitted that
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`dedicated channels and shared channels are both contrary to and unlike one
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`another. Exhibit 2009 (ITC Hearing Tr., at 734:17-20). Dr. Min also admitted that
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`Siemens 004 uses the terms “shared” and “dedicated” as they are commonly
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`understood in the industry. Exhibit 2009 (ITC Hearing Tr., at 780:14-24).
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`The Petition asserts that Siemens 004 discloses a shared channel because,
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`according to the Petition, the Enhanced Uplink Dedicated Channel discussed in
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`Siemens 004 is the same channel that is described in the ’151 patent as the
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`Patent 7,941,151
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`“Enhanced Uplink” or “EU” channel. Pet. at 20. With no basis other than its own
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`say-so, the Petition first asserts that the ‘151 inventors were working on the same
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`uplink channel that was being studied by Working Group 1, as reported in Siemens
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`004. Pet. at 1-2, 18-19. Then on the strength of this baseless premise and with a
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`twist of illogic, the Petition argues that because the ’151 patent refers to the uplink
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`channel as a shared channel, this must mean that the Enhanced Uplink Dedicated
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`Channel described in Siemens 004 must actually be a shared channel. Pet. at 20.
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`Nothing, much less the ’151 patent, supports this theory. Siemens 004
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`consistently refers to an Enhanced Uplink Dedicated Channel, or its acronym, EU-
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`DCH. In contrast, neither this term, nor this acronym, appears anywhere in the
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`’151 patent, or in the provisional application. In fact, neither the provisional
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`application, nor the written description of the ’151 patent, even mentions Working
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`Group 1 or the feasibility s
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