Filed on behalf of: IPR LICENSING, INC.
`
`
`
`
`
`Jonathan D. Link
`LATHAM & WATKINS LLP
`555 11th Street, NW, Ste. 1000
`Washington, DC 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`E-mail: jonathan.link@lw.com
`
`
`By:
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`
`
`
`
`Entered: January 6, 2015
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION AND ZTE (USA) INC.
`Petitioner
`
`V.
`
`IPR LICENSING, INC.
`Patent Owner
`____________
`
`Case IPR2014-00525
`Patent 8,380,244
`_____________
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`
`PATENT OWNER’S RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,380,244
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`
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`
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`

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`TABLE OF CONTENTS
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`Case: IPR2014-00525
`U.S. Patent No. 8,380,244
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`Page
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`INTRODUCTION ........................................................................................... 1
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`RELATED LITIGATION AND EXPERTS ................................................... 1
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`
`
`I.
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`II.
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`III. BACKGROUND AND INVENTION OF ’244 PATENT ............................. 2
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`IV. PROSECUTION HISTORY ........................................................................... 5
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`V.
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`THE 800 ITC INVESTIGATION ................................................................... 9
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`VI. OVERVIEW OF PRIOR ART ........................................................................ 9
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`VII. CLAIM CONSTRUCTION .......................................................................... 13
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`VIII. JAWANDA, ALONE OR COMBINED WITH GPRS DOCUMENTS
`AND/OR IEEE 802.11 DOES NOT INVALIDATE .................................... 17
`
`A.
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`
`
`B.
`
`
`
`C.
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`
`
`D.
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`
`
`E.
`
`F.
`
`
`2.
`
`Jawanda Does Not Disclose Physical Channels Available for
`the Subscriber Unit to Select For Use ................................................. 17
`Neither Jawanda Nor The Then-Existing GPRS Standard
`Discloses Maintaining A Logical Connection With The Cellular
`Network ............................................................................................... 27
`1.
`Jawanda does not teach maintaining a logical connection
`with the cellular network .......................................................... 27
`The GPRS Standards, Release 97, do not teach
`maintaining a PDP context in an absence of the plurality
`of assigned physical channels ................................................... 34
`The Elements Added By Dependent Claims 8 And 30 Are Not
`Disclosed By Jawanda With A GPRS Cellular Connection ............... 39
`ZTE Has Failed To Prove Inherency, A Single Reference, Or
`Motivation To Combine ...................................................................... 40
`Secondary Considerations Support Non-Obviousness ....................... 44
`Petitioner ZTE And Its Expert Take Inconsistent Litigation-
`Driven Positions .................................................................................. 46
`
`IX. CONCLUSION .............................................................................................. 48
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`
`i
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`Case: IPR2014-00525
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`U.S. Patent No. 8,380,244
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`
`In re Omeprazole Patent Litig.,
`483 F.3d 1364 (Fed. Cir. 2007) ............................................................................. 40
`
`Kyocera Wireless Corp. v. ITC,
`345 F.3d 1340 (Fed. Cir. 2008) ............................................................................. 42
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`711 F.3d 1348 (Fed. Cir. 2013) ............................................................................. 44
`
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) ............................................................................. 14
`
`OTHER AUTHORITIES
`
`77 Fed. Reg. 48756 (Aug. 14, 2012) ....................................................................... 23
`
`
`
`ii
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`Case: IPR2014-00525
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`U.S. Patent No. 8,380,244
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
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`Petitioner did not submit statements of material facts in its petition for inter
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`partes review. Accordingly, no response is due pursuant to 37 C.F.R. §42.23(a),
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`and no facts are admitted.
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`iii
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`I.
`
`INTRODUCTION
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`
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`Case: IPR2014-00525
`U.S. Patent No. 8,380,244
`
`On September 17, 2014, the Patent Trial and Appeal Board (“Board”)
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`granted ZTE Corporation’s (“ZTE”) Petition for inter partes review of claims 1-8,
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`14-16, 19-29, 36-38, and 41-44 of U.S. Patent No. 8,380,244 (the “’244 patent”).
`
`II. RELATED LITIGATION AND EXPERTS
`Petitioner ZTE and Patent Owner IPR Licensing, Inc. (“Patent Owner”),
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`InterDigital Communications, Inc., InterDigital Technology Corporation, and
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`InterDigital Holdings, Inc. (collectively, “InterDigital”) are in litigation in the
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`District of Delaware (the “Delaware Litigation”), in which InterDigital asserted the
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`’244 patent against ZTE and others. In the Delaware Litigation, ZTE’s expert, Dr.
`
`Steven McLaughlin, testified regarding the ’244 patent. On October 28, 2014, the
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`jury returned a verdict, finding the ’244 patent valid and infringed.
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`InterDigital also asserted a related patent, U.S. Patent No. 7,616,970 (the
`
`“’970 patent”), in an investigation against Nokia before the U.S. International
`
`Trade Commission, Investigation No. 337-TA-800 (the “ITC 800 Investigation”).
`
`In the ITC 800 Investigation, Nokia Corporation and Nokia Inc.’s expert was Dr.
`
`Harry Bims. ZTE has submitted a declaration from Dr. Bims in this proceeding.
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`In the ITC 800 Investigation, InterDigital’s expert was Dr. Wayne Stark.
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`1
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`Case: IPR2014-00525
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`U.S. Patent No. 8,380,244
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`This Response includes a declaration from Dr. Stark, attached as Exhibit
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`2005. This Response also cites to various admissions from ZTE’s expert, Dr.
`
`Bims, as well as from ZTE’s expert in the Delaware Litigation, Dr. McLaughlin.
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`III. BACKGROUND AND INVENTION OF ’244 PATENT
`The ’244 patent describes and claims specific improvements to a dual-mode
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`subscriber unit. A dual-mode subscriber unit can use two different networks to
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`transfer data, typically a cellular network and a wireless local area network
`
`(WLAN). Typically, cellular networks are long range and generally available, but
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`relatively slow. WLANs are typically faster, but shorter range and not always
`
`available. ZTE’s Petition describes the invention as merely a dual-mode device
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`that can preferentially use a WLAN network when available. This description is
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`inaccurate and fails to acknowledge the key improvements that the ’244 patent
`
`describes and claims. Two of the key improvements proposed by the ’244 patent
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`allow for faster data transmission over cellular networks, and faster access to the
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`cellular network.
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`The first improvement relates to how physical channels are selected. In the
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`then-existing cellular standards, such as GPRS, if a subscriber unit needed to
`
`transfer data, it would request physical channels from the base station. The base
`
`station would select the physical channels and tell the subscriber unit to use those
`
`selected channels. The subscriber unit would then use those channels to transfer
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`2
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`Case: IPR2014-00525
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`U.S. Patent No. 8,380,244
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`data. Ex. 2005 (Stark Decl.) at ¶ 28. This time-consuming process made the
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`transfer of data over a cellular network relatively slow.
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`In the invention of the ’244 patent, the subscriber unit, rather than the base
`
`station, decides which channels, and how many channels, it will use to transmit
`
`data at a given time. This is clear from the description of “a subscriber unit of the
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`present invention,” as shown in Figure 6. ZTE Ex. 1001 (’244 patent) at 4:59-60.
`
`The specification explains that this subscriber unit includes a “bandwidth
`
`management function” which is “responsible for allocating . . . CDMA radio
`
`channels as required.” Id. at 9:64-66. The proposed construction of the defendants
`
`in the Delaware District Court action, adopted by the District Court and by both
`
`ZTE and InterDigital in this IPR, recognizes that the subscriber unit, not the base
`
`station, selects the physical channels to be used.1 Pet. at 10.2 This feature is an
`
`
`1
`Patent Owner’s proposed construction of “plurality of assigned physical
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`channels” in the Delaware District Court action likewise recognized that this
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`description of the “present invention” requires the subscriber unit, not the base
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`station, to assign or allocate the physical channels. Pet. at 10.
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`2
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`Patent Owner conferred with Petitioner and received approval from the
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`Board to refile an exact copy of ZTE’s Second Corrected Petition (Paper 16) as
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`Patent Owner’s Exhibit 2004.
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`3
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`Case: IPR2014-00525
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`U.S. Patent No. 8,380,244
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`improvement over the prior art, in which the base station determined which
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`channels the subscriber unit would use to transmit data.
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`The second improvement is maintaining a logical connection between the
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`subscriber unit and the cellular network, in the absence of cellular physical
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`channels. Ex. 2005 (Stark Decl.) at ¶ 35; ZTE Ex. 1001 (’244 patent) at 4:11-18.
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`As both parties’ experts agree, a logical connection is a connection between the
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`protocol stacks of the subscriber unit and the base station, above the physical layer.
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`Ex. 2005 (Stark Decl.) at ¶ 59; Ex. 2006 (Bims Tr.) at 140:7-142:8. It is essentially
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`stored information about the higher-layer protocols in the cellular protocol stack.
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`Ex. 2005 (Stark Decl.) at ¶ 59-60; Ex. 2006 (Bims Tr.) at 140:10-19. Because the
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`logical connection is maintained, the subscriber unit avoids “the overhead
`
`associated with having to set up an end to end connection each time that data needs
`
`to be transferred.” ZTE Ex. 1001 (’244 patent) at 4:19-26. That is, when the
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`physical cellular connection is needed again to send data, the end-to-end
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`connection can be set up more quickly, because the logical connection is still in
`
`place. Ex. 2005 (Stark Decl.) at ¶¶ 36, 124; Ex. 2006 (Bims Tr.) at 145:15-19.
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`The subscriber unit can select the physical channels that it needs and transmit data.
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`Ex. 2005 (Stark Decl.) at ¶¶ 31-33. In other words, in the invention of the ’244
`
`patent, the subscriber unit allocates physical channels by selecting them for use.
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`4
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`Case: IPR2014-00525
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`U.S. Patent No. 8,380,244
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`Id. This is in contrast to the prior art cellular standards, in which the network, via
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`the base station, would select the channels that the subscriber unit would then use.
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`IV. PROSECUTION HISTORY
`The Petition provides a grossly inaccurate description of the prosecution
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`history. The copy of the prosecution history that is attached to the Petition and is
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`misleadingly referred to in Dr. Bims’ Declaration as the [’098 Application History]
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`is incomplete and omits several critical documents. In particular, the Petition
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`omits any discussion of the Examiner interview, during which the Patent Owner
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`and Examiner discussed the Jawanda reference and the Patent Owner agreed to
`
`propose an amendment. See Ex. 2001 (InterDigital Sections Prosecution History)
`
`at 33-34 (Reply to Office Action, April 20, 2012, discussing Examiner interview),
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`and at 1-2 (Summary of Interview, April 11, 2012). Petitioner also misleadingly
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`omitted, from the copy of the prosecution history attached to the petition, both the
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`Interview Summary and the Reply to Office Action discussing the interview. The
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`claims were allowed shortly after the Reply.
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`As a threshold matter, there is no basis for the Petitioner’s suggestion that
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`the Examiner “made a mistake in allowing the claims.” Pet. at 18. ZTE argues
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`that the Examiner’s reference to U.S. Patent No. 5,577,033 (“Chang”) in the Notice
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`of Allowability somehow evidences that the Examiner made some unspecified
`
`mistake, such as providing the Notice of Allowability in the wrong file. See id.
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`5
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`Case: IPR2014-00525
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`U.S. Patent No. 8,380,244
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`This argument is wholly unsupported. The Chang reference, like the ’244 patent,
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`relates to wireless data communications. Ex. 2005 (Stark Decl.) at ¶ 49. In
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`particular, Chang describes “[a] method and apparatus for using switched
`
`telecommunications services to emulate a local area network (LAN) medium.” See
`
`Ex. 2007 (Chang) at Abstract. In fact, in the Notice of Allowability, the Examiner
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`expressly noted that Chang describes “disconnect[ing] the physical channel while
`
`maintaining the logical channel.” See ZTE Ex. 1018 (ZTE Sections Prosecution
`
`History) at 6 (Notice of Allowability, May 31, 2012) (citing Ex. 2007 (Chang) at
`
`7:53-54). It is clear from the Examiner’s comments – and, in particular, from his
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`reference to disconnecting physical channels and maintaining logical channels –
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`that Chang was not included in the Notice of Allowability by mistake, but that the
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`Examiner believed that Chang related to the pending claims’ subject matter.
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`It is clear from a review of the entire prosecution history that the claims
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`were allowed because the applicant successfully distinguished the claims over
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`Jawanda and other prior art during the Examiner interview. A summary of the
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`relevant portions of the prosecution history follows.
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`In an Office Action dated October 20, 2011, the Examiner rejected the
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`claims over several references, including U.S. Patent No. 6,243,581 to Jawanda.
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`See Ex. 2001 (InterDigital Sections Prosecution History) at 5. The Examiner
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`asserted that Jawanda disclosed “maintaining a communication session,” and in
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`6
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`Case: IPR2014-00525
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`U.S. Patent No. 8,380,244
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`doing so relied on the identical disclosures in Jawanda, including Fig. 4 box 122,
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`column 5 lines 32 to 34, and column 5 line 65 to column 6 line 1, on which
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`Petitioner relies.
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` Specifically, the Examiner noted that Jawanda teaches
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`“seamlessly handoff transfer of datagrams from WWAN connection . . . to WLAN
`
`connection, WHILE maintaining WWAN connection.” Id. at 8 (emphasis in
`
`original). The Examiner relied on this disclosure as describing “maintain[ing] a
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`communication session with the WWAN . . . WHILE communicat[ing] datagrams
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`(i.e. packet data) with the WLAN.” Id. (capitalization in original). Petitioner, and
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`its expert Dr. Bims, rely on the identical disclosure – Jawanda (Ex. 1003) at Fig. 4
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`box 122, 5:32-34, 5:65-6:1 – as disclosing maintaining a communication session:
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`“the WWAN connection (cellular connection) may optionally be maintained.” Pet.
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`at 24; see also ZTE Ex. 1002 (Bims Decl.) at ¶ 195. The Examiner, like Petitioner,
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`also pointed to the fact that Jawanda describes maintaining an “application
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`session.” Ex. 2003 (InterDigital Sections Prosecution History) at 8; Pet. at 23.
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`Notably, this Office Action was omitted from Petitioner’s attached copy of the
`
`prosecution history, and was not addressed by ZTE’s Petition or Dr. Bims.
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`Following the October 20, 2011 Office Action, the Patent Owner initiated an
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`interview, which took place April 11, 2012. The prior art discussed during the
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`interview included the Jawanda reference, and another patent. Ex. 2001
`
`(InterDigital Sections Prosecution History) at 1. The Patent Owner agreed to
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`7
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`Case: IPR2014-00525
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`U.S. Patent No. 8,380,244
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`“propose an amendment in response to the interview on 4/11/2012.” Id. The
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`Examiner’s summary of the April 11, 2012 interview does not appear in the copy
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`of the prosecution history submitted by Petitioner.
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`On April 20, 2012, the Patent Owner submitted a Reply, amending the
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`claims and discussing the interview. Ex. 2001 (InterDigital Sections Prosecution
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`History) at 21-37. This Reply does not appear in the copy of the prosecution
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`history submitted by Petitioner. In the Reply, the Patent Owner noted that, “[a]s
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`discussed with the Examiner during the April 11, 2012 telephonic interview,” the
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`prior art, including “Lemiläinen and Jawanda, alone or in combination, fail to teach
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`or suggest ‘a processor configured to maintain a communication session with the
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`cellular wireless network in an absence of the plurality of assigned physical
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`channels while the IEEE 802.11 transceiver communicates packet data with the
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`IEEE 802.11 wireless local area network.’” Id. at 34-35.
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`In response to this Reply, on May 31, 2012, the Examiner issued a notice of
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`allowability. ZTE Ex. 1018 (ZTE Sections Prosecution History) at 5. Thus, it is
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`clear that the Examiner found that Jawanda – and specifically the very disclosures
`
`that Petitioner and its expert point to – fails to disclose, inter alia, the final element
`
`of claim 1 (and the parallel element of claim 23). Ex. 2005 (Stark Decl.) at ¶ 48.
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`8
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`

`

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`
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`V. THE 800 ITC INVESTIGATION
`Petitioner ZTE makes various references to the ITC’s findings regarding the
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`Case: IPR2014-00525
`U.S. Patent No. 8,380,244
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`’970 patent in the ITC 800 Investigation. See, e.g., Pet. 1. But the ’970 patent is
`
`not at issue in this IPR. Moreover, its claims differ substantively from the ’244
`
`patent’s challenged claims, and the ITC adopted different constructions than those
`
`advocated by Petitioner ZTE in this IPR. Accordingly, the ITC’s findings in the
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`ITC 800 Investigation should be given little if any weight, especially when
`
`compared to the jury’s findings in the Delaware Litigation, which did concern the
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`’244 patent’s challenged claims. Notably, as discussed below, Dr. Bims provided
`
`opinions in the ITC 800 Investigation, including opinions regarding the purported
`
`prior art at issue in this IPR, that differ from his positions here. See infra § VIII.F.
`
`VI. OVERVIEW OF PRIOR ART
`Jawanda discloses a dual-mode device, which uses a standard cellular
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`connection, such as then-existing GPRS, and an unspecified WLAN. ZTE Ex.
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`1003 (Jawanda) at 2:42-47. As discussed above, Jawanda was expressly
`
`considered by the Examiner during prosecution. The Examiner found that
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`Jawanda fails to disclose maintaining a communication session with the cellular
`
`wireless network in an absence of the plurality of assigned physical channels,
`
`while the IEEE 802.11 transceiver is transmitting data.
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`9
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`Case: IPR2014-00525
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`U.S. Patent No. 8,380,244
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`In fact, Jawanda, unlike the ’244 patent, does not disclose any specific
`
`features of the cellular network. In particular, Jawanda says nothing about
`
`physical channels – much less which entity assigns those physical channels. Ex.
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`2005 (Stark Decl.) at ¶¶ 66-67; Ex. 2006 (Bims Tr.) at 49:21-50:3. Nor does
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`Jawanda say anything about a communication session, i.e., a logical connection.
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`Jawanda simply teaches that when the WLAN connection is being used, the
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`cellular connection, as a whole, is either terminated, or optionally maintained.
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`ZTE Ex. 1003 (Jawanda) at Figure 4; Ex. 2005 (Stark Decl.) at ¶ 129.
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`As explained in the declaration of Dr. Wayne Stark, attached, Jawanda
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`teaches using a standard cellular connection, such as the then-existing GPRS
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`Standard. Ex. 2005 (Stark Decl.) at ¶ 40. Petitioner’s expert, Dr. Bims, agrees.
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`ZTE Ex. 1002 (Bims Decl.) at ¶ 166 (“In order to implement the GPRS protocol
`
`suggested by Jawanda, a person having ordinary skill in the art would use the
`
`GPRS standards available at the time of the Jawanda patent.” 3). In the cellular
`
`standards at the time of the invention, the base station, not the subscriber unit,
`
`selected the channels. For example, as explained in more detail below, in GPRS,
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`the network would respond to a PACKET CHANNEL REQUEST message sent by
`
`
`3
`Emphasis added throughout, unless otherwise indicated.
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`10
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`Case: IPR2014-00525
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`U.S. Patent No. 8,380,244
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`a subscriber by telling the subscriber unit which physical channels, called PDCHs4,
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`to use to send data. Ex. 2005 (Stark Decl.) at ¶ 74. The subscriber unit would then
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`use the PDCHs identified by the network. In CDPD, the network, and specifically
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`the base station, selected the channel that the subscriber unit would then use. Ex.
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`2005 (Stark Decl.) at ¶ 105. Indeed, ZTE’s expert in the Delaware Litigation, Dr.
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`McLaughlin, admitted as much.5 Ex. 2008 (McLaughlin ITC 868 Inv. Dep. Tr.) at
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`257:19-22. Similarly, in IS-95, the base station, in response to a request from the
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`subscriber unit, would tell the subscriber unit which channel to use. Ex. 2005
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`(Stark Decl.) at ¶ 30.
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`Furthermore, in the then-existing cellular standards, including GPRS, there
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`was no notion of a separate logical connection that was maintained without the
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`corresponding physical connection. In GPRS, the higher-layer information was
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`stored in a “PDP context.” Id. at ¶ 40. However, when the physical radio link was
`
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`4
`PDCH is an acronym for Packet Data Channel.
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`5
`
`Dr. McLaughlin was also an expert in the U.S. International Trade
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`Commission, Investigation No. 337-TA-868, which concerned the ’970 patent.
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`There, as in the Delaware Litigation, he provided opinions regarding several of the
`
`same references at issue here.
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`11
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`U.S. Patent No. 8,380,244
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`terminated, the PDP context was not preserved. Id. There was therefore no logical
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`connection, in the absence of the physical channels.
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`Petitioner’s expert Dr. Bims included several cites from various GPRS
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`documents in his declaration, to support his opinion that PDP context is preserved
`
`when the physical channels are absent. ZTE Ex. 1002 (Bims Decl.) at ¶¶ 200-203.
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`Some of these cites discuss PDP context. However, as Dr. Bims admitted, none of
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`these cites say anything about physical channels. Id.; Ex. 2006 (Bims Tr.) at
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`145:21-148:2, 148:7-149:6. These cites therefore cannot, and do not, disclose
`
`maintaining PDP context in the absence of physical channels.6 Ex. 2005 (Stark
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`Decl.) at ¶ 124. They merely disclose that in GPRS, a PDP context could be
`
`activated and deactivated.
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`6
`Preserving PDP context when the radio link is terminated was not part of the
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`standard at the time of the invention. Ex. 2005 (Stark Decl.) at ¶ 40. In the
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`Delaware Litigation, Petitioner attempted to rely on draft GPRS documents as
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`disclosing this feature. These draft documents are obviously not part of the then-
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`existing GPRS Standard, and a person of ordinary skill in the art, attempting to
`
`implement the then-existing GPRS Standard, would not rely on them. Id. at ¶¶ 40,
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`131. However, in its Petition and supporting expert declaration from Dr. Bims,
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`Petitioner has simply failed to provide any evidence of this feature.
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`12
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`Case: IPR2014-00525
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`U.S. Patent No. 8,380,244
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`In short, Jawanda fails to disclose any specifics of the cellular connection –
`
`including how physical channels are selected. Jawanda discloses a standard
`
`cellular connection, which is either terminated in its entirety, or optionally
`
`maintained in its entirety, when the WLAN is being used to transfer data. Id. at ¶
`
`147. There is no disclosure in Jawanda of a logical connection, much less
`
`maintaining a logical connection without a corresponding physical connection. Id.
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`at ¶ 117. Jawanda therefore fails to disclose either of these two key features of the
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`’244 patent: that the subscriber unit, not the base station, selects the cellular
`
`physical channels, and that a logical connection with the cellular network is
`
`maintained in an absence of physical channels while the IEEE 802.11 transceiver is
`
`transferring data. Id. at ¶¶ 71, 122. And neither of these features is taught by the
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`then-existing cellular standards, including GPRS. Id.
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`VII. CLAIM CONSTRUCTION
`In order to assess validity, the Board need only construe two terms:
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`“assigned physical channels,” and “maintain a communication session with the
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`cellular network in an absence of the plurality of assigned physical channels.”
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`Patent Owner agrees with ZTE that the relevant constructions from the Delaware
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`Litigation are correct, and should be applied in this proceeding.
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`The term “assigned physical channels” was properly construed as “physical
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`channels available for the subscriber unit to select for use.” Ex. 2009 (Markman
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`13
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`Case: IPR2014-00525
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`U.S. Patent No. 8,380,244
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`Op.) at 14. This construction is mandated by the intrinsic evidence. The claims
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`are directed to a “subscriber unit.” The ’244 patent explains that in a subscriber
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`unit “of the present invention,” the subscriber unit, not the base station, selects the
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`cellular physical channels that it will use. Ex. 2005 (Stark Decl.) at ¶ 56. Where,
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`as here, the specification “describes the features of ‘the present invention’ as a
`
`whole, the description limits the scope of the invention.” Verizon Servs. Corp. v.
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`Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007).
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`Specifically, the ’244 patent explains that Figure 6 shows “a high-level
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`block diagram of a subscriber unit of the present invention.” ZTE Ex. 1001 (’244
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`patent) at 4:59-60. Similarly, the ’244 patent explains that “FIG. 6 . . . includes a
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`subscriber unit 101 incorporating the features of the present invention.” Id. at
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`9:27-28. It goes on to explain that the “bandwidth management function 134”
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`shown in Figure 6 “is responsible for allocating and deallocating CDMA radio
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`channels 160 as required.” Id. at 9:64-66. Thus, a subscriber unit of the present
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`invention selects the radio channels that it will use. Ex. 2005 (Stark Decl.) at ¶ 56.
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`The specification further explains, in connection with Figure 6, that “wireless
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`bandwidth is allocated only when there is actual data present.” ZTE Ex. 1001
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`(’244 patent) at 10:33-36. In other words, the subscriber unit, which knows when
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`it has data to transmit, selects the radio channels (i.e., the physical channels) as
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`needed to transfer that data. Ex. 2005 (Stark Decl.) at ¶ 56.
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`Thus, in a “subscriber unit of the present invention,” it is the subscriber unit,
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`not the network or base station, that selects the physical channels that the
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`subscriber unit uses to transfer data. As the District Court correctly noted, the
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`physical channels are made available, and then “a subset of those available
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`channels are selected for use.” Ex. 2009 (Markman Op.) at 15 (emphasis original).
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`ZTE agrees that “the subscriber unit . . . selects assigned [available] channels for
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`use … as needed to send data.” Pet. at 11. That is, the subscriber unit knows
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`channels are needed to transmit the data it has to send, and selects from the
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`available channels to meet that need. Therefore, the agreed-upon construction of
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`“assigned physical channels,” “physical channels available for the subscriber unit
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`to select for use,” is correct.
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`With respect to the other terms, regarding maintaining a communication
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`session in the absence of assigned physical channels, the key issue is the
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`construction of “communication session with the cellular wireless network.” The
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`Delaware District Court found, and the parties agree, that this term refers to a
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`“logical connection.” Ex. 2009 (Markman Op.) at 12. This is apparent, first, from
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`the surrounding claim language: the cellular physical channels are absent, and
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`therefore the session, or connection, with the cellular wireless network is
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`necessarily logical, rather than physical. Ex. 2005 (Stark Decl.) at ¶ 61.
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`U.S. Patent No. 8,380,244
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`That a “communication session” is a “logical connection” is further
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`confirmed by the specification, which explains that “the second wireless digital
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`communication path,” the cellular path, “is provided by establishing a logical
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`connection using a higher layer protocol, such as a network layer protocol, from a
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`subscriber unit . . . to an intended peer node.” ZTE Ex. 1001 (’244 patent) at 4:5-
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`10. “The network layer logical connection is made through a wireless channel
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`which provides a physical layer connection.” Id. at 4:10-14. If the connection is
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`not being used, “the physical layer channel is released while maintaining the
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`appearance of a network layer connection.” Id. at 4:14-18. Thus, the logical
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`connection to the cellular network – for example, a connection at the network layer
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`– is maintained, even when the physical channels are absent. Ex. 2005 (Stark
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`Decl.) at ¶ 62. This approach “frees wireless channel bandwidth for use by other
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`subscriber units, without the overhead associated with having to set up an end to
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`end connection each time that data needs to be transferred.” ZTE Ex. 1001 (’244
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`patent) at 4:19-26. Thus, the intrinsic evidence confirms that the “communication
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`session” of the claims, which is maintained when the physical channels are absent,
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`is a “logical connection.”7 The agreed-upon construction from the Delaware
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`7
`As both parties’ experts agree, a “logical connection” is a connection
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`between peer entities (e.g., entities in a subscriber unit and a base station) at a layer
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`Litigation, construing “communication session” as “logical connection,” is
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`therefore correct.
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`The remaining claim terms need not be construed to address validity, and
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`can be accorded their plain meaning.
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`VIII. JAWANDA, ALONE OR COMBINED WITH GPRS DOCUMENTS
`AND/OR IEEE 802.11 DOES NOT INVALIDATE
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`Petitioner ZTE has addressed Claims 1 and 23 together. Claim 23 is
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`essentially the same as claim 1, but in method form, and Patent Owner InterDigital
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`will therefore address the two claims together.
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`A.
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`
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`Jawanda Does Not Disclose Physical Channels Available for the
`Subscriber Unit to Select For Use
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`Jawanda fails to disclose the “assigned physical channels” elements of
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`claims 1 and 23. Specifically, Jawanda says nothing about physical channels –
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`neither the term, nor the concept, are mentioned anywhere in Jawanda. Ex. 2005
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`(Stark Decl.) at ¶¶ 66-67; ZTE Ex. 1003 (Jawanda). As Dr. Bims admitted,
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`Jawanda says nothing about physical channels. Ex. 2006 (Bims Tr.) at 42:3-49:10.
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`It follows that Jawanda says nothing about which entity selects the cellular
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`physical channels. Ex. 2005 (Stark Decl.) at ¶¶ 66-67.
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`______________________________________________________________________________
`in the cellular protocol stack above the physical layer. Ex. 2005 (Stark Decl.) at ¶
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`59; Ex. 2006 (Bims Tr.) at 140:7-142:7.
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`U.S. Patent No. 8,380,244
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`As both parties’ experts agree, Jawanda teaches using a cellular wireless
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`“data connection” that is defined by a cellular standard, such as GPRS. ZTE Ex.
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`1003 (Jawanda) at 3:6-9; Ex. 2005 (Stark Decl.) at ¶ 67; ZTE Ex. 1002 (Bims
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`Decl.) at ¶ 166. The existing cellular standards, at the time of the invention of the
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`’244 patent, all required the base station, not the subscriber unit, to “select for use”
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`the physical channels. Ex. 2005 (Stark Decl.) at ¶ 68. For example, IS-95
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`provided only one physical channel, and the base station directed the subscriber
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`unit to that channel. Id. at ¶ 30. In CDPD, as ZTE’s expert Dr. McLaughlin has
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`admitted, the base station selects the channel. Id. at ¶ 104; Ex. 2008 (McLaughlin
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`ITC 868 Inv. Dep. Tr.) at 304:5-20, 300:10-301:24. And in GPRS, the base
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`station, not the subscriber unit, selects the physical channels. Ex. 2015 (Delaware
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`Trial Tr.) at 1103:5-21.
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`In GPRS, the subscriber unit initiates the process by transmitting a PACKET
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`CHANNEL REQUEST message to the base station. ZTE Ex. 1005.06 (GSM 4.60)
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`§7.1.2.1; Ex. 2005 (Stark Decl.) at ¶¶ 74-75. The network would then send a
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`PACKET UPLINK ASSIGNMENT message, telling the mobile station which
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`physical channels, called PDCHs, to use. ZTE Ex. 1005.06 (GSM 4.60)
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`§7.1.2.2.1; Ex. 2005 (Stark Decl.) at ¶¶ 75-75. The message identifies “one or
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`more PDCHs to be used by the mobile station” to transfer data. ZTE Ex. 1005.06
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`(GSM 4.60) §7.1.2.2.1; Ex. 2005 (Stark Decl.) at ¶¶ 75-76. Importantly, the use of
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`these PDCHs by the mobile station is mandatory, not optional. Ex.