UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE CORPORATION AND ZTE (USA) INC.
`Petitioners
`
`v.
`
`IPR LICENSING, INC.
`Patent Owner
`
`Case IPR2014-00525
`U.S. Patent No.: 8,380,244
`
`SECOND CORRECTED PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,380,244
`
`This Second Corrected Petition is filed as part of a motion to con-ect clerical
`
`elTors. In particular, the citation on page one of the petition has been modified to
`
`replace "Exhibit 1010" with "Exhibit 1011." No substantive changes have been
`
`made to the contents of the petition. Submitted herewith are corrected Exhibit
`
`1010 and conected Exhibit 1011, which have been renumbered to conf01111 to the
`
`numbering in the Table of Exhibits contained herein.
`
`EXHIBIT
`
`l
`j-C)OOt?
`~ Izll'1 1;;-
`
` 2004
`
` Ex. 2004-0001
`
`IPR Licensing, Inc.
`Exhibit .
`ZTE Corp v. IPR Licensing, Inc.
`IPR2014-00525 
`
`

`

`Second COlTected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attomey Docket No. 14569.00009
`TABLE OF CONTENTS
`
`I. MandatOlY Notices (37 C.P.R. § 42.8) ............................................................ 1
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest (§ 42.8(b)(1)) ..................................................... 1
`
`Related Matters (§ 42.8(b)(2)) .............................................................. 1
`
`Counsel and Service Information (§§ 42.8(b)(3)-(4)) ........................... 2
`
`II.
`
`Payment of Pees (§ 42.15(a) and § 42.103) ..................................................... 3
`
`III. Requirements for Inter Partes Review ............................................................ 3
`
`A.
`
`B.
`
`C.
`
`Grounds for Standing (§ 42.104(a)) ...................................................... 3
`
`Identification of Challenged Claims (§ 42.104(b )(1)) .......................... 3
`
`Priority Date, Prior Ali and Specific Grounds for Challenging
`Claims (§ 42.1 04(b )(2)) ......................................................................... 3
`
`D.
`
`Claim Construction (§ 42.104(b)(3)) .................................................... 8
`
`1.
`
`2.
`
`"release," "allocate," and "deallocate" in conjunction
`with the "assigned physical channels" ........................................ 9
`
`"maintain a communication session with the cellular
`wireless network in an absence of the plurality of
`assigned physical channels" ...................................................... 13
`
`IV. Overview of the Technology ......................................................................... 15
`
`A.
`
`B.
`
`C.
`
`D.
`
`Alleged Invention ................................................................................ 15
`
`Prior Art ............................................................................................... 16
`
`Prosecution HistOlY ............................................................................. 17
`
`Level of Skill of a Person of Ordinary Skill in the Art ....................... 18
`
`v.
`
`There Is a Reasonable Likelihood That at Least One Claim ofthe 244
`Patent Is Unpatentable ................................................................................... 19
`
`A.
`
`Ground 1: Under 35 U.S.C. § 103, Jawanda alone or in
`combination with the GPRS and IEEE 802.11 Standards
`renders the challenged claims obvious ................................................ 19
`
`1.
`
`Jawanda and the GPRS and IEEE 802.11 Standards ................ 20
`
`11
`
` Ex. 2004-0002
`
`

`

`Second Conected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attomey Docket No. 14569.00009
`There is a strong motivation to combine Jawanda with
`the IEEE 802.11 Standard and the GPRS Standards ................ 26
`
`2.
`
`B.
`
`Ground 2: Under 35 U.S.C. § 103, Lemi1ainen alone or in
`combination with the GPRS and IEEE 802.11 Standards
`renders the challenged claims obvious ................................................ 28
`
`1.
`
`2.
`
`Lemilainen and the GPRS and IEEE 802.l1 Standards ........... 29
`
`There is a strong motivation to combine Lemilainen with
`the GPRS and IEEE 802.11 Standards ..................................... 34
`
`C.
`
`Ground 3: Under 35 U.S.c. § 103, the Draft UMTS standards in
`combination with IEEE 802.11 render the challenged claims
`obvious ................................................................................................ 34
`
`Secondary Considerations Support Obviousness .......................................... 37
`VI.
`VII. Claim Charis .................................................................................................. 38
`A.
`
`Jawanda and the GPRS and IEEE 802.11 Standards .......................... 38
`
`B.
`
`Lemilainen and the GPRS arld IEEE 802.1.1 Standar·ds ..................... .48
`
`VIII. Conclusion ..................................................................................................... 61
`
`111
`
` Ex. 2004-0003
`
`

`

`Second Corrected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`TABLE OF EXHIBITS
`
`Exhibit
`1001
`
`1002
`
`1003
`1004
`1005
`1005.01
`1005.02
`1005.03
`1005.04
`1005.05
`1005.06
`1005.07
`1005.08
`1005.09
`1005.10
`1006
`1006.01
`1006.02
`1006.03
`1006.04
`1006.05
`1006.06
`1006.07
`1006.08
`1006.09
`1006.10
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`
`Description
`U.S. Patent No. 8,380,244 B2
`("244 patent")
`Declaration of Dr. Hany Bims in Support of the Petition
`for Inter Paries Review of U.S. Patent No. 8,380,244
`("Bims Decl.")
`U.S. Patent No. 6,243,581 to Jawanda
`U.S. Patent No. 6,681,259 to Lemi1ainen
`GPRS Standards
`GSM 02.60 v. 6.l.l R97
`GSM 03.02 v. 6.1.0 R97
`GSM 03.60 v. 6.l.l R97
`GSM 04.07 v. 6.1.0 R97
`GSM 04.08 v. 6.l.l R97
`GSM 04.60 v. 6.1.0 R97
`GSM 04.64 v. 6.1.0 R97
`GSM 04.65 v. 6.1.0 R97
`GSM 05.01 v. 6.l.l R97
`GSM 03.64 v. 6.1.0 R97
`Draft UMTS Standards
`3GPP TS 25.212 v. 2.0.0
`3GPP TS 25.201 v. 2.1.0
`3GPP TS 25.211 v. 2.1.0
`3GPP TS 23.121 v. 3.0.0
`3GPP TS 25.101 v. 2.0.0
`3GPP TS 24.008 v. 3.0.0
`3GPP TS 25.301 v. 3.0.0
`3GPP TS 25.213 v. 2.1.0
`3GPP TS 25.302 v. 2.3.0
`S2-99712 (Change Request re UMTS)
`3GPP TR 21.900 v. 3.1.0
`1O-8-l3 Amended Joint Cl. Const. Chari
`Joint Cl. Const. Br. (Public)
`337-TA-800 Comm'n Opinion (Public)
`337-TA-800 ALI's Initial Determination (Public)
`Jim Geier, Wireless LANs (Macmillan Tech. Pub. 1999)
`Reichert Publication
`
`.
`
`IV
`
` Ex. 2004-0004
`
`

`

`Exhibit
`1014
`1015
`1016
`1017
`1018
`1019
`
`Second Con-ected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attomey Docket No. 14569.00009
`Description
`Torsner & Malmgren Publication
`Zeisberg Publication
`U.S. Patent No. 6,546,425 to Hanson
`RFC 2002, IP Mobility SuppOli
`12/615,098 Application Prosecution HistOlY
`IEEE Pmi 11: Wireless LAN Medium Access Control
`(MAC) and Physical Layer (PHY) specifications, August
`20, 1999
`Assignment Records for the 244 Patent
`3GPP TR 101031 v2.2.1 (Hiperlan12 Standard)
`U.S. Patent No. 5,406,643 to Burke
`InterDigital's Infringement Contentions as to the 244
`Patent (Exhibit 116 to Motion to Amend the Complaint in
`the 337-TA-868 Investigation)
`10/341,528 App., May 5, 2005 Office Action
`
`1020
`1021
`1022
`1023
`
`1024
`
`v
`
` Ex. 2004-0005
`
`

`

`Second Conected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`
`Pursuant to 35 U.S.C. § 311 etseq. and 37 C.F.R § 42.1 etseq., ZTE
`
`Corporation and ZTE (USA) Inc. (collectively "ZTE" or "Petitioners") hereby
`
`petition for Inter Partes Review of U.S. Patent No. 8,380,244 ("244 patent"). This
`
`petition demonstrates a reasonable likelihood that at least one of Claims 1-8, 14-
`
`16, 19-29,36-38, and 41-44 ("the challenged claims") is obvious in view of the
`
`prior art discussed below. Indeed, the very similar claims of related U.S. Patent
`
`No. 7,616,970 ("970 parent patent"), the parent of the 244 patent, have already
`
`been invalidated based on the same prior art. Applying the more demllilding clear
`
`and convincing evidence standlli·d, the International Trade COl11111ission ("ITC")
`
`held those claims invalid in its Final Detenmnation in Investigation No. 337-TA-
`
`800 ("800 Investigation"). In the Matter of Certain Wireless Devices with 3G
`
`Capability and Components Thereof, USITC Inv. No. 337-TA-800, COl11111'n Op.
`
`(Dec. 20, 2013) (adopting the ALI's entire Initial Detennination (ID) as to the 970
`
`patent). (Ex. 10 II at 293-382). For the smne reasons, this petition should be
`
`instituted, and all of the challenged claims be held unpatentable.
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8)
`
`A.
`
`Real Party-in-Interest (§ 42.8(b)(1))
`
`ZTE Corporation and ZTE (USA) Inc. are the real parties-in-interest.
`
`B.
`
`Related Matters (§ 42.8(b)(2))
`
`The 244 patent is the subject of the following judicial or administrative
`
`I
`
` Ex. 2004-0006
`
`

`

`Second COlTected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attomey Docket No. 14569.00009
`
`matters, which may affect, or be affected by, a decision in this proceeding: (1)
`
`InterDigital Commc'ns Inc. v. ZTE Corp., Case No. 13-cv-00009-RGA (D. Del.),
`
`filed Janumy 2, 2013; (2) InterDigital Commc 'ns Inc. v. Nokia COIp., Case No. 13-
`
`cv-OOOlO-RGA (D. Del.), filed Janumy 2,2013; and (3) InterDigital Commc 'ns
`
`Inc. v. Sal71sung Elec. Co. Ltd., Case No. 13-cv-00011-RGA (D. Del.), filed
`
`January 2,2013.
`
`C.
`
`Counsel and Service Information (§§ 42.8(b )(3)-( 4))
`
`ZTE designates the following counsel:
`
`Lead Counsel
`Charles M. McMahon
`
`Backup Counsel
`Blian A. Jones
`
`Reg. No. 44,926
`
`Reg. No. 68,770
`
`Brinks Gilson & Lione
`
`Brinks Gilson & Lione
`
`NBC Tower, Suite 3600
`
`NBC Tower, Suite 3600
`
`455 North Cityfront Plaza Dlive
`
`455 North Cityfront Plaza Drive
`
`Chicago, IL 60611-5599
`
`Chicago, IL 60611-5599
`
`E-mail: cmcmahon@blinksgilson.com E-mail: bjones@brinksgilson.com
`
`Telephone: (312) 321-4200
`
`Telephone: (312) 321-4200
`
`Fax: (312) 321-4299
`
`Fax: (312) 321-4299
`
`2
`
` Ex. 2004-0007
`
`

`

`Second COlTected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`
`Service of any document via hand-delivelY, express mail, or regular mail
`
`may be made at the postal mailing addresses above. Electronic service may be
`
`made at the above-designated e-mail addresses.
`
`II.
`
`PAYMENT OF FEES (§ 42.15(A) AND § 42.103)
`
`ZTE authorizes the Director to charge the filing fee specified by 37 C.F.R.
`
`§ 42.15(a), as well as any other necessary fees, to Account No. 23-1925.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`
`A.
`
`Grounds for Standing (§ 42.104(a»
`
`ZTE celiifies that the 244 patent is available for inter partes review and that
`
`ZTE is not balTed or estopped from requesting an inter partes review challenging
`
`the claims of the 244 patent on any ground identified in this petition.
`
`B.
`
`Identification of Challenged Claims (§ 42.104(b )(1»
`
`ZTE requests inter partes review of challenged claims 1-8, 14-16, 19-29,36-
`
`38, and 41-44 and requests that each of these claims be found unpatentable and
`
`cancelled.
`
`C.
`
`Priorit<j Date, Prior Art and Specific Grounds for Challenging
`Claims (§ 42.104(b)(2»
`
`For purposes of detennining what is plior art to the 244 patent, InterDigital
`
`is limited to the September 21,1999 priority date on the face of the 244 patent.
`
`(See Ex. 100] (244 patent) at 1-2). In the 800 Investigation, the ITC rejected
`
`InterDigital's attempt to show conception with diligence earlier than the filing date
`
`3
`
` Ex. 2004-0008
`
`

`

`Second COlTected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`
`for the 970 parent patent, which shares the same specification as the 244 patent and
`
`claims only trivial differences. (Ex. 1011 (337-TA-800 ALl's Initial
`
`Deternlination (Public) at 342-45). To the extent that InterDigital may argue a
`
`priority date earlier than September 21, 1999, ZTE reserves the light to proffer
`
`arguments rebutting any alleged earlier conception, reduction to practice and/or
`
`diligence by InterDigital.
`
`ZTE requests inter partes review of the 244 patent in view of the following
`
`references, which qualify as prior art based on the claimed priOlity date of
`
`September 21, 1999, as shown and discussed below.
`
`Exhibit Description
`
`Dated
`
`Type of Prior Art
`
`1003
`
`U.S. Patent No. 6,243,581 to Dec. 11, 1998
`
`§ 102(e)
`
`Jawanda
`
`(U.S. filing date)
`
`1004
`
`U.S. Patent No. 6,681,259 to May 10, 1999
`
`§ 102(e)
`
`Lemi1iiinen
`
`(U.S. filing date)
`
`1005
`
`GPRS Standards
`
`publically
`
`§§ 102(a) and (b);
`
`available
`
`and in combination
`
`under § 103
`
`GSM 02.60 v. 6.1.1 R97 Nov. 1998
`
`GSM 03.02 v. 6.1.0 R97 July 1998
`
`4
`
` Ex. 2004-0009
`
`

`

`Second Corrected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attomey Docket No. 14569.00009
`
`Exhibit Description
`
`Dated
`
`Type of Prior Art
`
`GSM 03.60 v. 6.1.1 R97 Aug. 1998
`
`GSM 03.64 v. 6.1.0 R97 Oct. 1998
`
`GSM 04.07 v. 6.1.0 R97 July 1998
`
`GSM 04.08 v. 6.1.1 R97 Aug. 1998
`
`GSM 04.60 v. 6.1.0 R97 Aug. 1998
`
`GSM 04.64 v. 6.1.0 R97 July 1998
`
`GSM 04.65 v. 6.1.0 R97 July 1998
`
`GSM 05.01 v. 6.1.1 R97 July 1998
`
`1006
`
`Draft UMTS Standards
`
`public ally
`
`§§ 102(a) and (b);
`
`..
`
`available
`
`and in combination
`
`under § 103
`
`3GPP TS 25.212 v. 2.0.0 June 1999
`
`3GPP TS 25.201 v. 2.1.0 June 1999
`
`3GPP TS 25.211 v. 2.1.0 June 1999
`
`3GPP TS 23.121 v. 3.0.0 July 1999
`
`3GPP TS 25.101 v. 2.0.0 June 1999
`
`3GPP TS 24.008 v. 3.0.0 July 1999
`
`3GPP TS 25.301 v. 3.0.0 April 1999
`
`5
`
` Ex. 2004-0010
`
`

`

`Second Corrected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`
`Exhibit Description
`
`Dated
`
`Type of Prior Art
`
`3GPP TS 25.213 v. 2.1.0 June 1999
`
`3GPP TS 25.302 v. 2.3.0 June 1999
`
`1019
`
`IEEE 802.11 Standard
`
`August 20, 1999
`
`§§ 102(a) and (b)
`
`There is no dispute that the Jawanda is prior ali against the 244 patent under
`
`35 U.S.c. § 102(e), as a U.S. patent issued from an application filed on December
`
`11, 1998, which was more than eight months prior to the September 21, 1999
`
`priority date for the 244 patent.
`
`Likewise, Lemi1iiinen is prior ali under § 102(e) as a U.S. Patent that issued
`
`from an application filed on May 10, 1999, which predates the September 21,1999
`
`priority date ofthe 244 patent by more than four months. InterDigital uied to
`
`swear behind Lemiliiinen in the 800 Investigation, but, as noted above, the ITC
`
`rejected the earlier pliOlity claim.
`
`For purposes of this petition, "GPRS Standards" refers to the ten sections of
`
`the Global System for Mobile Communication ("GSM") standard listed above,
`
`which define pOliions of the General Packet Radio Service ("GPRS"). Each of the
`
`constituent sections of the GPRS Standards is undisputedly prior art because it was
`
`available to the interested public in or before November 1998. (Ex. 1007 (3GPP
`
`TR 21.900); Ex. 1002 (Bims Decl. at "11"11120-121).
`
`Similarly, for purposes of this petition, "Draft UMTS Standmds" refers to
`
`6
`
` Ex. 2004-0011
`
`

`

`Second Conected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`
`the nine sections of the 3rd Generation Partnership Project ("3GPP") draft standards
`
`listed above, which define portions of the Universal Mobile Telecommlllications
`
`System ("UMTS"). Each of the constituent sections of the Draft UMTS Standards
`
`is prior art because it was available to the interested public in or before June 1999.
`
`(Id.). A document that has been made available to interested members of the
`
`public qualifies as a "printed publication" 11lder 35 U.S.c. § 102. 111 re Hall, 781
`
`F.2d 897,898-99 (Fed. Cir. 1986). Indeed, the Federal Circuit has upheld a
`
`previous finding by the Commission that similar GSM standards docmnents were
`
`widely available to the interested public. Kyocera Wireless CO/po v. US. Int'l
`
`Trade Comm '11,545 F.3d 1340, 1350-51 (Fed. Cir. 2008) (fmding that standards
`
`developed by the standards body responsible for the GPRS standards were
`
`sufficiently public to qualify as prior art). InterDigital also tried to swear behind
`
`the Draft UMTS Standards in the 800 Investigation, but, as noted above, the ITC
`
`rejected the earlier priority claim.
`
`Although the GPRS and Draft UMTS Standards are defined in a series of
`
`sections, one of ordinary skill in the art would treat the sections for each standard
`
`as a single, cohesive reference because they collectively defme a single standard,
`
`specifically reference one another, and are not meant to be considered in isolation.
`
`(Id. at ~122). Therefore, it would have been obvious to one of ordinary skill in the
`
`ali at the time to combine the selected docllnents for a given standard. The
`
`7
`
` Ex. 2004-0012
`
`

`

`Second CmTected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attomey Docket No. 14569.00009
`
`motivation to combine them is compelling because the documents are designed to
`
`work together as a single, coherent reference. (Id.). The standards sections can be
`
`considered different chapters of a manual for building and operating a standard-
`
`compliant cellular communication system, so it would be not only obvious, but
`
`also necessary, for a person of ordinary skill to read all the related sections of the
`
`standard together. (ld.).
`
`ZTE challenges claims 1-8, 14-16, 19-29,36-38, and 41-44 based on the
`
`following statutory grounds:
`
`Ground
`
`Basis
`iUnder 35 U.S.C. § 103, Jawanda alone or in combination with the GPRS
`
`1
`
`2
`
`3
`
`and IEEE 802.11 Standards renders the challenged claims obvious.
`
`Under 35 U.S.C. § 103, Lemiliiinen alone or in combination with the
`
`GPRS and IEEE 802.11 Standards renders the challenged claims
`
`obvious.
`
`Under 35 U.S.C. § 103, the Draft UMTS Standards in combination with
`
`Lemiliiinen renders the challenged claims obvious.
`
`D.
`
`Claim Construction (§ 42.104(b)(3))
`
`A claim subject to inter partes review receives its broadest reasonable
`
`constmction in light of the patent's specification. 37 C.F.R. § 42.100(b). In
`
`detennining the broadest reasonable construction, the Patent Office may consider
`
`8
`
` Ex. 2004-0013
`
`

`

`Second Corrected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attomey Docket No. 14569.00009
`
`the patentee's prior statements conceming the scope of the claims. 35 U.S.c. §
`
`301. ZTE offers proposed claim constructions only to comply with 37 C.F.R.
`
`§ 42.100(b) and for the sole purpose of this Petition. Therefore, ZTE's proposed
`
`constructions in this Petition do not bind ZTE in any infringement litigation, where
`
`a different claim construction standard applies.
`
`1.
`
`"release," "allocate," and "deallocate" in conjunction with
`the "assigned physical channels"
`
`The claims of the 244 patent recite various fom1s of the terms "release,"
`
`"allocate," and "deallocate" when referring to the "assigned physical channels."
`
`For example, Claims 1, 5, 7, 15, and 21 recite the tenn "assigned physical
`
`channels." Claims 5 and 21 recite the "release" of assigned physical channels.
`
`Claim 15 recites a configuration that can "allocate" and "deallocate" the assigned
`
`physical channels. All of these terms are used to describe states or state changes of
`
`the "physical channels" of the cellular wireless network. In order to keep these
`
`terms in context of the "assigned physical channel" to which the "release,"
`
`"allocate," and "deallocate" actions apply, the telms are discussed together below.
`
`In the pending district coilli proceeding, InterDigital Commc 'ns Inc. v. ZTE
`
`Corp., Case No. 13-cv-00009-RGA (D. Del.) ("Delaware Lawsuit"), the parties
`
`have proposed constmctions for "[a ]/[the] plurality of assigned physical charmel"
`
`and separate constructions for "release," "allocate," and "deallocate." For purposes
`
`of this petition, ZTE submits that the constr1.1ctions ZTE has proposed in the
`
`9
`
` Ex. 2004-0014
`
`

`

`Second Conected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attomey Docket No. 14569.00009
`
`Delaware Lawsuit (shown in bold text below) should be adopted.
`
`plurality of
`
`ZTE
`plurality of physical
`
`InterDigital
`tw or more physical layer channels
`
`assigned
`
`channels available for the
`
`allocable by the subsCliber unit as
`
`physical
`
`subscriber unit to select for needed to transfer data
`
`chaunels
`
`use
`
`release
`
`make no longer assigned
`
`stop the subscriber unit from using
`
`allocate
`
`select for use
`
`assIgn
`
`deallocate
`
`select to stop using
`
`stop the subscriber unit from using
`
`(Ex. 1008 (10-8-13 Amended Joint Cl. Const. Chart) at Ex. A, p. 18-23).
`
`Proper construction of these terms begins with the claim language itself,
`
`which mandates that "allocate" and "assign" must have different meanings because
`
`the claims require physical channels to be both "assigned" and "allocated." For
`
`example, claim 1 recites "a plurality of assigned physical chamlels," which means
`
`that the physical channels have already been assigned. Claim 15, which depends
`
`from claim 1, recites that "the processor is fmiher configmed to allocate and
`
`deallocate at least one of the plurality of assigned physical channels." (Ex. 1001
`
`(244 Patent), 12:1-3). As a result, "allocate" must mean something different from
`
`"assign."
`
`ZTE's constructions give consistent meaning to each word in the claim.
`
`10
`
` Ex. 2004-0015
`
`

`

`Second COlTected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attomey Docket No. 14569.00009
`
`"Assign" is the opposite of "release" and, thus, a state of "assigned" or "released"
`
`describes whether or not the subscriber unit has been given pelmission to use a
`
`physical channe!. (Ex. 1002 (Bims Dec!.) at ~'197-99). Similarly, "allocate" is the
`
`opposite of "deallocate" and, thus, a state of "allocated" or "deallocated" describes
`
`whether or not the subscriber unit has selected to use or to stop using an assigned
`
`channe!. (Id.) This is driven by the well-known network requirement that a
`
`subscriber unit cannot use ( allocate) a resource (physical channel) until it has been
`
`made available (assigned) to the subscriber unit. (Ex. 1002 (Bims Dec!.) at ~97).
`
`The intrinsic record supportsZTE's proposed constructions for each of these
`
`telT11s. (See Ex. 1009 (Joint C!. Const. Br.) at 71-74; Ex. 1002 (Bims Dec!. at
`
`~~98-99). The specification of the 244 patent teaches that the subscriber unit
`
`includes a bandwidth management function that selects assigned channels for use
`
`[i.e., allocates assigned channels] as needed to send data. (Ex. 1001 (244 Patent)
`
`7:24-29; Ex. 1002 (Bims Dec!.) at ~98). For example, the specification explains
`
`how the subscriber unit may allocate assigned channels depending on whether the
`
`channels are needed to send data at any particular time:
`
`[W]ireless bandwidth is allocated only when there is actual data
`
`present from the tenninal equipment to the CDMA transceiver 140.
`
`Therefore, the network layer need not allocate the assigned wireless
`
`bandwidth for the entirety of the communications session. That is,
`
`11
`
` Ex. 2004-0016
`
`

`

`Second Corrected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attomey Docket No. 14569.00009
`
`when data is not being presented upon the tel111ina1 equipment to the
`
`network equipment, the bandwidth management function 134
`
`deallocates initially assigned radio channel bandwidth 160 and makes
`
`it available for another transceiver and another subsCliber unit 101.
`
`(Ex. 1001 (244 Patent) 10:34-43; Ex. 1002 (Bims Dec!.) at ~99).
`
`It is clear from the first two sentences of this passage that the patentee
`
`understood the difference between "assign" and "allocate" and intentionally used
`
`those words to mean different things. The patent unmistakably uses "assigned" to
`
`mean a chml11el that has been made available for the subscriber unit to use-even if
`
`the SUbscliber unit is not actually using the channe!. By contrast, to "allocate" an
`
`assigned channel means to "select" that channel for use to send data. (Ex. 1002
`
`(Bims Dec!.) at ~~98-99). The last sentence of the quoted passage fuliher confinns
`
`that the subscriber unit "deallocates" assigned bmldwidth when not needed to
`
`transmit data. In other words, the device stops using the assigned bandwidth when
`
`it has no data to transmit. (Ex. 1002 (Bims Dec!.) at ~99).
`
`InterDigital's proposed constructions m'e circular and inject requirements
`
`that are unsupported by the claim language or the specification. For example,
`
`InterDigital has proposed that "allocate" means "assign." Substiulting this
`
`interpretation into the language of claim 15 would result in a circular and indefinite
`
`claim limitation: "the processor is further configured to assign and deallocate at
`
`12
`
` Ex. 2004-0017
`
`

`

`Second COITected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attomey Docket No. 14569.00009
`
`least one of the plurality of assigned physical channels."
`
`In addition, taken together, InterDigital's proposed constructions would
`
`inject the unsupported requirement that the subscriber unit itself must "assign" the
`
`"plurality of physical channels." The specification explains that "[t]he bandwidth
`
`management function 134 is responsible for allocating and deallocating CDMA
`
`radio chamlels 160 as required," but neither the specification nor the other claims
`
`ever state or suggest that the subscliber unit is responsible for assigning the
`
`physical channels. (Ex. 1002 (Bims DecJ.) at '\[98).
`
`To make any sense ofInterDigital's proposals, where "assigned" (past tense)
`
`is collapsed to mean the same thing as "allocable" (future capability), then the net
`
`effect is that "assign" and "allocate" would both simply mean "use," and
`
`"deallocate" and "release" would both simply mean "stop using." (Ex. 1002 (Bims
`
`Decl.) at '\[100). With this understanding in mind, whether ZTE's or InterDigital's
`
`proposed constmction of "[a] plurality of physical channels," "release," "allocate,"
`
`or "deallocate" applies in this proceeding, the challenged claims are invalid as
`
`discussed in Part v.
`
`2.
`
`"maintain a communication session with the cellular
`wireless network in an absence of the plurality of assigned
`physical channels"
`
`Claim 1 recites the tenn "maintain a communication session with the cellular
`
`wireless network in an absence of the plurality of assigned physical channels." In
`
`13
`
` Ex. 2004-0018
`
`

`

`Second Corrected Petition for Inter Partes Review ofD.S. Patent No. 8,380,244
`Attomey Docket No. 14569.00009
`
`the Delaware Lawsuit, the pariies have proposed the following constmctions for
`
`this teml. For purposes of this petition only, and for the reasons explained below,
`
`ZTE submits that InterDigital's proposed construction of this teml (ShOW1l in bold
`
`text below) should be adopted.
`
`InterDigital
`ZTE
`spoof the subscriber unit to malce it appear maintain a logical connection with the
`
`that a cellular· wireless communication
`
`cellular wireless network when none of
`
`link is continuously available in arl
`
`the plurality of physical channels are in
`
`absence of the plurality
`
`use by the subscriber unit
`
`of assigned physical channels
`
`(Ex. 1008 (10-8-13 Amended Joint Cl. Const. Chari) at Ex. A, p. 17-18).
`
`InterDigital's proposed construction is broader thaIl ZTE' s proposal, and
`
`InterDigital has relied on its construction in the Delaware Lawsuit, broadly
`
`asserting that ZTE's products infi·inge the challenged claims. ZTE has opposed
`
`InterDigital's proposed construction for a variety of reasons, including that the
`
`broader constmction is not supported by the specification. (See Ex. 1009 (Joint Cl.
`
`Const. Br.) at 66-70). However, for purposes of this proceeding, ZTE submits that
`
`InterDigital's construction should be adopted.
`
`In the 800 Investigation, InterDigital succeeded in proposing nearly the same
`
`constrl.lction for a velY similar limitation of the 970 parent patent. Specifically,
`
`14
`
` Ex. 2004-0019
`
`

`

`Second Corrected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`
`InterDigital proposed interpreting "maintain a communication session above a
`
`physical layer ... when none of the plurality of physical layer channels are
`
`assigned" to mean "a connection above the physical layer ... is maintained when
`
`the allocable physical layer channels are not in use by the subscriber unit." (Ex.
`
`1002 (Bims Dec!.) at ~1 01). Although ZTE opposed InterDigital's construction in
`
`that investigation, the ITC adopted and applied InterDigital's construction in its
`
`infringement and invalidity analysis, ultimately finding the claims of the 970
`
`patent to be infringed but invalid. (Ex. 1002 (Bims Dec!.) at ~101). Because
`
`InterDigital has already succeeded once in obtaining its broad construction of the
`
`970 parent patent, ZTE submits, for purposes of this proceeding only, that
`
`InterDigital's proposed construction should be adopted for the corresponding
`
`limitation of the 244 patent, and therefore, "maintain a communication session
`
`with the cellular wireless network in an absence of the plurality of assigned
`
`physical channels" should be construed to mean "maintain a logical connection
`
`with the cellular wireless network when none of the plurality of physical channels
`
`are in use by the subscriber unit." Applying this construction, the challenged
`
`claims are invalid, as discussed in Part v.
`
`IV. OVERVIEW OF THE TECHNOLOGY
`
`A.
`
`Alleged Invention
`
`15
`
` Ex. 2004-0020
`
`

`

`Second COlTected Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attomey Docket No. 14569.00009
`
`InterDigita1 contends that the alleged invention of the 244 Patent is a dual-
`
`mode device that can preferentially transfer packet data using a short range, higher-
`
`speed communication path (802.11 wireless local area network, or "WLAN")
`
`while maintaining a communication session with a cellular network, even when
`
`cellular physical chamlels are absent. As will be shown, dual-mode devices were
`
`known in the art,