`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`ZTE Corporation and ZTE (USA) Inc.
`
`Petitioners
`
`v.
`
`InterDigital Technology Corporation
`
`Patent Owner
`
`U.S. Patent No.: 8,380,244
`Filed: November 9, 2009
`Issued: February 19, 2013
`
`Title: Dual Mode Unit for Short Range, High Rate and Long Range, Lower Rate
`Data Communications
`
`__________________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,380,244
`
`
`
`Case No.: IPR2014-00525
`
`
`

`

`
`
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`TABLE OF CONTENTS
`
`I. 
`
`V. 
`
`Mandatory Notices (37 C.F.R. § 42.8) ............................................................ 1 
`A. 
`Real Party-in-Interest (§ 42.8(b)(1)) ..................................................... 1 
`B. 
`Related Matters (§ 42.8(b)(2)) .............................................................. 1 
`C. 
`Counsel and Service Information (§§ 42.8(b)(3)-(4)) ........................... 2 
`Payment of Fees (§ 42.15(a) and § 42.103) ..................................................... 3 
`II. 
`III.  Requirements for Inter Partes Review ............................................................ 3 
`A.  Grounds for Standing (§ 42.104(a)) ...................................................... 3 
`B. 
`Identification of Challenged Claims (§ 42.104(b)(1)) .......................... 3 
`C. 
`Priority Date, Prior Art and Specific Grounds for Challenging
`Claims (§ 42.104(b)(2)) ......................................................................... 3 
`Claim Construction (§ 42.104(b)(3)) .................................................... 8 
`1. 
`“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.  Alleged Invention ................................................................................ 15 
`B. 
`Prior Art ............................................................................................... 16 
`C. 
`Prosecution History ............................................................................. 17 
`D. 
`Level of Skill of a Person of Ordinary Skill in the Art ....................... 18 
`There Is a Reasonable Likelihood That at Least One Claim of the 244
`Patent Is Unpatentable. .................................................................................. 18 
`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 ................ 19 
`
`D. 
`
`2. 
`
`ii
`
`

`

`
`
`
`2. 
`
`B. 
`
`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`There is a strong motivation to combine Jawanda with
`the IEEE 802.11 Standard and the GPRS Standards. ............... 25 
`Ground 2: Under 35 U.S.C. § 103, Lemiläinen alone or in
`combination with the GPRS and IEEE 802.11 Standards
`renders the challenged claims obvious. ............................................... 28 
`1. 
`Lemiläinen and the GPRS and IEEE 802.11 Standards ........... 29 
`2. 
`There is a strong motivation to combine Lemiläinen with
`the GPRS and IEEE 802.11 Standards. .................................... 33 
`Ground 3: Under 35 U.S.C. § 103, the Draft UMTS standards in
`combination with IEEE 802.11 render the challenged claims
`obvious. ............................................................................................... 34 
`VI.  Secondary Considerations Support Obviousness .......................................... 37 
`VII.  Claim Charts .................................................................................................. 37 
`A. 
`Jawanda and the GPRS and IEEE 802.11 Standards .......................... 37 
`B. 
`Lemiläinen and the GPRS and IEEE 802.11 Standards ...................... 48 
`VIII.  Conclusion ..................................................................................................... 61 
`
`
`
`C. 
`
`
`
`iii
`
`

`

`
`
`
`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
`
`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`TABLE OF EXHIBITS
`Description
`U.S. Patent No. 8,380,244 B2
`(“244 patent”)
`Declaration of Dr. Harry Bims in Support of the Petition
`for Inter Partes 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 Lemiläinen
`GPRS Standards
`GSM 02.60 v. 6.1.1 R97
`GSM 03.02 v. 6.1.0 R97
`GSM 03.60 v. 6.1.1 R97
`GSM 04.07 v. 6.1.0 R97
`GSM 04.08 v. 6.1.1 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. 6.1.1 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
`10-8-13 Amended Joint Cl. Const. Chart
`Joint Cl. Const. Br. (Public)
`337-TA-800 Comm’n Opinion (Public)
`337-TA-800 ALJ’s Initial Determination (Public)
`Jim Geier, Wireless LANs (Macmillan Tech. Pub. 1999)
`Reichert Publication
`
`iv
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`Description
`Torsner & Malmgren Publication
`Zeisberg Publication
`U.S. Patent No. 6,546,425 to Hanson
`RFC 2002, IP Mobility Support
`12/615,098 Application Prosecution History
`IEEE Part 11: Wireless LAN Medium Access Control
`(MAC) and Physical Layer (PHY) specifications, August
`20, 1999
`Assignment Records for the 244 Patent
`3GPP TR 101 031 v2.2.1 (Hiperlan/2 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
`
`Exhibit
`1014
`1015
`1016
`1017
`1018
`1019
`
`1020
`1021
`1022
`1023
`
`1024
`
`
`
`
`
`
`v
`
`

`

`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 et seq. and 37 C.F.R § 42.1 et seq., 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 demanding clear
`
`and convincing evidence standard, the International Trade Commission (“ITC”)
`
`held those claims invalid in its Final Determination 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, Comm’n Op.
`
`(Dec. 20, 2013) (adopting the ALJ’s entire Initial Determination (ID) as to the 970
`
`patent). (Ex. 1010 at 293-382). For the same 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
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney 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 January 2, 2013; (2) InterDigital Commc’ns Inc. v. Nokia Corp., Case No. 13-
`
`cv-00010-RGA (D. Del.), filed January 2, 2013; and (3) InterDigital Commc’ns
`
`Inc. v. Samsung 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
`
`Reg. No. 44,926
`
`Brinks Gilson & Lione
`
`NBC Tower, Suite 3600
`
`455 North Cityfront Plaza Drive
`
`Chicago, IL 60611-5599
`
`E-mail: cmcmahon@brinksgilson.com
`
`Telephone: (312) 321-4200
`
`Fax: (312) 321-4299
`
`
`Backup Counsel
`Brian A. Jones
`
`Reg. No. 68,770
`
`Brinks Gilson & Lione
`
`NBC Tower, Suite 3600
`
`455 North Cityfront Plaza Drive
`
`Chicago, IL 60611-5599
`
`E-mail: bjones@brinksgilson.com
`
`Telephone: (312) 321-4200
`
`Fax: (312) 321-4299
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`
`Service of any document via hand-delivery, 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 certifies that the 244 patent is available for inter partes review and that
`
`ZTE is not barred 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.
`
`Priority Date, Prior Art and Specific Grounds for Challenging
`Claims (§ 42.104(b)(2))
`
`For purposes of determining what is prior art to the 244 patent, InterDigital
`
`is limited to the September 21, 1999 priority date on the face of the 244 patent.
`
`(See Ex. 1001 (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
`
`

`

`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 ALJ’s Initial
`
`Determination (Public) at 342-45). To the extent that InterDigital may argue a
`
`priority date earlier than September 21, 1999, ZTE reserves the right 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 priority 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) 
`
`Lemiläinen 
`
`(U.S. filing date) 
`
`1005 
`
`GPRS Standards 
`
`
`
`
`
`
`
`
`
`publically
`
`available 
`
`§§ 102(a) and (b);
`
`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
`
`

`

`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
`
`
`
`
`
`
`
`
`
`
`
`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
`
`publically
`
`available 
`
`§§ 102(a) and (b);
`
`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
`
`

`

`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 art 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, Lemiläinen is prior art 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 of the 244 patent by more than four months. InterDigital tried to
`
`swear behind Lemiläinen in the 800 Investigation, but, as noted above, the ITC
`
`rejected the earlier priority 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 portions 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 ¶¶120-121).
`
`Similarly, for purposes of this petition, “Draft UMTS Standards” refers to
`6
`
`

`

`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 Telecommunications
`
`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” under 35 U.S.C. § 102. In 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 documents were
`
`widely available to the interested public. Kyocera Wireless Corp. v. U.S. Int’l
`
`Trade Comm’n, 545 F.3d 1340, 1350-51 (Fed. Cir. 2008) (finding 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 define 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
`
`art at the time to combine the selected documents for a given standard. The
`
`7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney 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. (Id.).
`
`ZTE challenges claims 1-8, 14-16, 19-29, 36-38, and 41-44 based on the
`
`following statutory grounds:
`
`Ground
`
`Basis
`Under 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, Lemiläinen 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
`
`Lemiläinen renders the challenged claims obvious. 
`
`D. Claim Construction (§ 42.104(b)(3))
`A claim subject to inter partes review receives its broadest reasonable
`
`construction in light of the patent’s specification. 37 C.F.R. § 42.100(b). In
`
`determining the broadest reasonable construction, the Patent Office may consider
`
`8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`
`the patentee’s prior statements concerning 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 forms 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 term “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 terms are discussed together below.
`
`In the pending district court proceeding, InterDigital Commc’ns Inc. v. ZTE
`
`Corp., Case No. 13-cv-00009-RGA (D. Del.) (“Delaware Lawsuit”), the parties
`
`have proposed constructions for “[a]/[the] plurality of assigned physical channel”
`
`and separate constructions for “release,” “allocate,” and “deallocate.” For purposes
`
`of this petition, ZTE submits that the constructions ZTE has proposed in the
`
`9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney 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
`
`physical
`
`channels
`
`release
`
`allocate
`
`channels available for the
`
`allocable by the subscriber unit as
`
`subscriber unit to select for
`
`needed to transfer data
`
`use
`
`make no longer assigned
`
`stop the subscriber unit from using
`
`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 channels,” which means
`
`that the physical channels have already been assigned. Claim 15, which depends
`
`from claim 1, recites that “the processor is further configured 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
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney 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 permission to use a
`
`physical channel. (Ex. 1002 (Bims Decl.) at ¶¶97-99). 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
`
`channel. (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 Decl.) at ¶97).
`
`The intrinsic record supports ZTE’s proposed constructions for each of these
`
`terms. (See Ex. 1009 (Joint Cl. Const. Br.) at 71-74; Ex. 1002 (Bims Decl. 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 Decl.) 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 terminal 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,
`when data is not being presented upon the terminal 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 subscriber unit 101.
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`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
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`(Ex. 1001 (244 Patent) 10:34-43; Ex. 1002 (Bims Decl.) 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 channel that has been made available for the subscriber unit to use—even if
`
`the subscriber unit is not actually using the channel. By contrast, to “allocate” an
`
`assigned channel means to “select” that channel for use to send data. (Ex. 1002
`
`(Bims Decl.) at ¶¶98-99). The last sentence of the quoted passage further confirms
`
`that the subscriber unit “deallocates” assigned bandwidth when not needed to
`
`transmit data. In other words, the device stops using the assigned bandwidth when
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`it has no data to transmit. (Ex. 1002 (Bims Decl.) at ¶99).
`
`InterDigital’s proposed constructions are circular and inject requirements
`
`that are unsupported by the claim language or the specification. For example,
`
`InterDigital has proposed that “allocate” means “assign.” Substituting this
`
`interpretation into the language of claim 15 would result in a circular and indefinite
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`claim limitation: “the processor is further configured to assign and deallocate at
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`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
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
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`management function 134 is responsible for allocating and deallocating CDMA
`
`radio channels 160 as required,” but neither the specification nor the other claims
`
`ever state or suggest that the subscriber unit is responsible for assigning the
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`physical channels. (Ex. 1002 (Bims Decl.) at ¶98).
`
`To make any sense of InterDigital’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
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`“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 construction 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 term “maintain a communication session with the cellular
`
`wireless network in an absence of the plurality of assigned physical channels.” In
`
`the Delaware Lawsuit, the parties have proposed the following constructions for
`
`this term. For purposes of this petition only, and for the reasons explained below,
`
`ZTE submits that InterDigital’s proposed construction of this term (shown in bold
`
`text below) should be adopted.
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`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
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`ZTE
`InterDigital
`maintain a logical connection with the
`spoof the subscriber unit to make it appear
`
`that a cellular wireless communication
`
`cellular wireless network when none of
`
`link is continuously available in an
`
`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. Chart) at Ex. A, p. 17-18).
`
`InterDigital’s proposed construction is broader than ZTE’s proposal, and
`
`InterDigital has relied on its construction in the Delaware Lawsuit, broadly
`
`asserting that ZTE’s products infringe the challenged claims. ZTE has opposed
`
`InterDigital’s proposed construction for a variety of reasons, including that the
`
`broader construction 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
`
`construction for a very similar limitation of the 970 parent patent. Specifically,
`
`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.
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
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`1002 (Bims Decl.) at ¶101). 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 Decl.) 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
`InterDigital 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 channels are absent. As will be shown, dual-mode devices were
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
`
`known in the art, and the idea of preferentially selecting one of the alternative
`
`communication paths was well known in the art at the time of the alleged
`
`invention. (Ex. 1002 (Bims Decl.) at ¶¶158-161). Further, InterDigital has taken
`
`the position in prior litigation that the “maintain a communication session”
`
`limitation is met by preserving routing information (such as an IP address) and
`
`other session management parameters contained in the “PDP Context” of
`
`WCDMA or the “session” of CDMA2000 standards. (Ex. 1002 (Bims Decl.) at
`
`¶¶250-258). Because the prior art GPRS Standards and the Draft UMTS Standards
`
`also taught preserving this same routing information, the claims of the 244 patent
`
`are not patentable over the prior art. (Ex. 1002 (Bims Decl.) at ¶¶126-130, 135).
`
`Prior Art
`
`B.
`As admitted in the Background section of the 244 patent, both cellular and
`
`WLAN communication protocols were well known in the art. Cellular protocols
`
`known at the time (such as the GPRS Standards and the Draft UMTS Standards)
`
`allowed for data communications over a wider area but, at the time of the 244
`
`patent, the data transfer rates were slow. (Ex. 1002 (Bims Decl.) at ¶¶49-50). On
`
`the other hand, wireless local area networks WLANs known at the time (such as
`
`the IEEE 802.11 Standard) offered higher data rates but had a shorter range than
`
`cellular networks. (Ex. 1002 (Bims Decl.) at ¶¶46-48). As explained in detail
`
`below, it was also known in the prior art to combine access to these two types of
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
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`networks in single dual-mode device that included all of the features claimed in the
`
`244 patent. Two patents in particular, to Jawanda and Lemiläinen, emphasized
`
`precisely this combination. (Ex. 1002 (Bims Decl.) at ¶¶104-118).
`
`Prosecution History
`
`C.
`The 244 patent stems from a series of continuations claiming priority to an
`
`application filed on September 21, 1999. (Ex. 1002 (Bims Decl.) at ¶¶68-69).
`
`Most notable in the chain is the 970 parent patent because its claims were held
`
`invalid by the ITC in the 800 investigation. (Ex. 1002 (Bims Decl.) at ¶68). The
`
`ITC found that the prior art presented in this petition invalidated the claims of 970
`
`parent patent by clear and convincing evidence. In the Matter of Certain 3G
`
`Wireless Devices and Components Thereof, USITC Inv. No. 337-TA-800,
`
`Comm’n Op. at 11 (adopting the ALJ’s findings (Ex. 1011) as to the invalidity of
`
`970 patent by clear and convincing evidence) (Ex. 1010). The 244 patent and the
`
`970 parent patent share a common specification and very similar claims. (Id.).
`
`The prosecution history of the 244 patent itself is surprisingly short,
`
`particularly given that the Examiner initially rejected many of the claims based on
`
`some of the same prior art references presented in this petition. Even more
`
`surprising is the apparent disconnect between those initial rejections and the
`
`Examiner’s ultimate reasons for allowance. The Notice of Allowance (first mailed
`
`on May 31, 2012, and reissued subsequent to multiple IDS submissions) was silent
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`Attorney Docket No. 14569.00009
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`as to why the claims were allowable over Jawanda and Lemiläinen, even though
`
`the Examiner had previously relied on these references in rejecting various claims.
`
`(Ex. 1002 (Bims Decl.) at ¶85).