UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`
`
`ZTE CORPORATION AND ZTE (USA) INC.,
`and
`MICROSOFT CORPORATION,
`Petitioners
`
`v.
`
`IPR LICENSING, INC.,
`Patent Owner.
`__________________
`
`Case IPR2014-005251
`U.S. Patent No.: 8,380,244
`__________________
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`
`
`
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`1 Case IPR2015-00074 has been joined with this proceeding.
`
`

`

`B.
`
` 
`
`C.
` 
`D.
`
` 
`
`B.
`
` 
`
`2.
` 
`
`INTRODUCTION ........................................................................................... 1 
`Claim Construction .......................................................................................... 2 
`The Plain and Ordinary Meaning of “Assigned Physical
`A.
` 
`Channels” .............................................................................................. 3 
`Patent Owner Takes the Word “Select” Out of Context to
`Require Assignment By the Subscriber Unit ........................................ 4 
`The Construction Does Not Require Selecting a Subset ....................... 5 
`The Specification Does Not Limit the Meaning of “Assigned
`Physical Channels” ................................................................................ 6 
`Jawanda Alone or in Combination with Known Wireless Protocols
`Renders the Claims Obvious ........................................................................... 8 
`Claim 1: Jawanda and GPRS Disclose “Assigned Physical
`A.
` 
`Channels” .............................................................................................. 9 
`Claim 1: Jawanda and GPRS Disclose a Processor Configured
`to “Maintain a Communication Session with the Cellular
`Wireless Network” ................................................................................ 9 
`1.
`A Skilled Artisan Would Have Been Motivated to
` 
`Combine Jawanda and the Publicly Available Draft
`GPRS Standards ........................................................................ 10 
`Jawanda’s Disclosure of “Optionally Maintaining” Is
`Consistent with GPRS ............................................................... 12 
`C.
`Claim 8: Jawanda Discloses CDMA ................................................... 13 
` 
`  Patent Owner Provides Insufficient Support for Its Meager Secondary
`Considerations Arguments ............................................................................ 14 
`Conclusion ..................................................................................................... 15 
`
`
`
`
`
`
`I.
` 
`II.
` 
`
`III.
` 
`
`IV.
`
` 
`
`V.
`
`
`
`Petitioners’ Reply in IPR2014-00525
`Attorney Docket No. 14569.00009
`TABLE OF CONTENTS
`
`
`
`ii
`
`

`

`
`
`
`Petitioners’ Reply in IPR2014-00525
`Attorney Docket No. 14569.00009
`TABLE OF AUTHORITIES
`
`Cases 
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) .............................................................................. 7
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1998) ............................................................................ 14
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .............................................................................. 5
`In re Cuozzo Speed Techs., Inc.,
`2014-1301 (Fed. Cir. Feb. 4, 2015) ........................................................................ 2
`In re De Blauwe,
`736 F.2d 699 (Fed. Cir. 1984) .............................................................................. 14
`KSR Int’l Co. v Teleflex Inc.,
`550 U.S. 389 (2007) ...................................................................................... 11, 14
`McCarty v. Lehigh Val. R.R. Co.,
`160 U.S. 110 (1895) ............................................................................................... 7
`Source Vagabond Sys. Ltd. v. Hydrapak, Inc.,
`753 F.3d 1291 (Fed. Cir. 2014) .............................................................................. 7
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) .............................................................................. 7
`PTAB Decisions 
`Idle Free Sys. Inc. v. Bergstrom Inc.,
`IPR2012-00027 (PTAB Final Decision, Jan. 7, 2014 (Paper 66)) ......................... 6
`Microstrategy, Inc. v. Zillow, Inc.,
`IPR2013-00034 (PTAB Final Decision, Mar. 27, 2014 (Paper 42)) ..................... 6
`Rules 
`37 C.F.R. § 42.121 ..................................................................................................... 6
`37 C.F.R. § 42.20(c) ................................................................................................... 6
`
`
`
`
`
`iii
`
`

`

`
`
`
`
`
`Exhibit
`1001
`1002
`
`1003
`1005.03
`1009
`
`1025
`
`2005
`
`2006
`
`2013
`2022
`
`2023
`
`Petitioners’ Reply in IPR2014-00525
`Attorney Docket No. 14569.00009
`REFERENCED EXHIBITS2
`Description
`U.S. Patent No. 8,380,244 (“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 (“Jawanda”)
`GSM 03.60 v. 6.1.1 R97
`Joint Claim Construction Brief (Public), InterDigital
`Commc’ns, Inc. v. Huawei Techs. Co., No. 1:13-cv-0008,
`No. 1:13-cv-0009, No. 1:13-cv-00010 (D. Del. filed Nov.
`21, 2013)
`Deposition of Dr. Wayne E. Stark (dated March 24, 2015)
`(“Stark Tr.”)
`Declaration of Dr. Wayne E. Stark (dated Jan. 6, 2015)
`(“Stark Decl.”)
`Deposition Transcript of Dr. Harry Bims (dated Dec. 19,
`2014) (“Bims Tr.”)
`U.S. Patent No. 7,616,970 (“970 parent patent”)
`Supplemental Markman Opinion and Claim Construction
`Order, InterDigital Commc’ns, Inc. v. Nokia Corp., No.
`1:13-cv-0010 (D. Del. Mar. 6, 2015 and Mar. 13, 2015)
`InterDigital Commc’ns, Inc. v. U.S. Int’l Trade Comm’n,
`No. 2014-1176 (Fed. Cir. Feb. 18, 2015)
`
`
`
`
`
`2 Petitioners’ are filing and serving concurrently with this paper Petitioners’
`Updated Exhibit List in its entirety. 37 C.F.R. § 42.63(e).
`
`iv
`
`

`

`
`
`
`Petitioners’ Reply in IPR2014-00525
`Attorney Docket No. 14569.00009
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Patent Owner did not submit a statement of material facts in its Patent
`
`Owner Response. Accordingly, Petitioners’ Reply need not provide a response
`
`pursuant to 37 C.F.R. § 42.23(a), and no facts are admitted.
`
`
`
`
`
`
`
`Pet.
`Prelim. Resp.
`PO Resp.
`
`ABBREVIATIONS
`ZTE’s Second Corrected Petition for Inter Partes Review
`Patent Owner’s Preliminary Response
`Patent Owner’s Response
`
`v
`
`

`

`
`
`
`I.
`
`Petitioners’ Reply in IPR2014-00525
`Attorney Docket No. 14569.00009
`
`INTRODUCTION
`The central disputed issue is the meaning of “assigned physical channels.”
`
`Petitioners have proposed a construction that is true to the claim language and the
`
`specification, capturing the broadest reasonable interpretation of those three words.
`
`By contrast, Patent Owner has ignored the claim language and seeks to inject
`
`extraneous limitations into Petitioners’ proposed construction in a misguided effort
`
`to preserve patentability. Beyond claim construction, the disputes are few. On
`
`those points, the evidence, including admissions from Patent Owner’s expert,
`
`demonstrate that the challenged claims would have been obvious in view of the art.
`
`During the pendency of this proceeding, the Federal Circuit affirmed the
`
`International Trade Commission’s determination that the parent of the 244 patent,
`
`U.S. Patent No. 7,616,970 (“970 parent patent”), is invalid on at least the same
`
`grounds for which the Board instituted this IPR. Ex. 2023, at 17-19. Because the
`
`970 parent patent and 244 patent share the same specification and substantially
`
`similar claims, (see Ex. 2013), the Federal Circuit’s reasoning applies equally to
`
`the 244 patent. Importantly, the Federal Circuit affirmed the ITC’s claim
`
`construction for “a plurality of physical layer channels are available for assignment
`
`for communication with the cellular network,” a term that does not differ in scope
`
`from the “assigned physical channels” at issue here. See Ex. 2023, at 17-18. As
`
`explained below, Petitioners’ proposals as to the 244 patent are consistent with the
`
`Federal Circuit’s reasoning, whereas Patent Owner’s views are not.
`1
`
`

`

`
`
` CLAIM CONSTRUCTION
`II.
`The parties agree in principle on a proposed construction for “assigned
`
`Petitioners’ Reply in IPR2014-00525
`Attorney Docket No. 14569.00009
`
`physical channels” (the only claim construction still in dispute here), but contest
`
`the meaning of that construction—a dispute the Board must resolve by adopting
`
`the broadest reasonable meaning. In re Cuozzo Speed Techs., Inc., 2014-1301, slip
`
`op. at 11-19 (Fed. Cir. Feb. 4, 2015). The claim language itself includes just three
`
`simple words: “assigned physical channels.” Ex. 1001, at 11:7-9. Rather than
`
`proposing a claim construction, Patent Owner instead distorts and reinterprets the
`
`word “select” from Petitioners’ proposed construction in a misguided attempt to
`
`preserve patentability. PO Resp. at 13-15.3
`
`Specifically, Patent Owner seeks to limit “assigned physical channels” in
`
`two ways: (1) to channels that are specifically chosen by the subscriber unit; and
`
`(2) where the subscriber unit has the ability to choose a subset of available
`
`channels. PO Resp. at 3 n.1, 10, 14-15, 26. These extraneous limitations, based on
`
`the word “select” and a meritless disclaimer argument, should be rejected because
`
`they are both improper and inconsistent with the broadest reasonable interpretation.
`
`
`3 Although Patent Owner explains that “maintaining a communication session in
`the absence of assigned physical channels” is a phrase that requires construction, it
`identifies no dispute between the parties as to the broadest reasonable
`interpretation of this term. PO Resp. at 15-17.
`
`2
`
`

`

`
`
`
`Petitioners’ Reply in IPR2014-00525
`Attorney Docket No. 14569.00009
` The Plain and Ordinary Meaning of “Assigned Physical Channels”
`A.
`The plain and ordinary meaning of “assigned physical channels” is not
`
`complicated or ambiguous. They are channels at the physical layer that have been
`
`assigned, for example, to the subscriber unit. In other words, they are physical
`
`channels available for the subscriber unit to select for use, which is consistent with
`
`the broadest reasonable interpretation. Pet. at 11-12; Ex. 1002 (Bims Decl.), ¶¶ 97-
`
`99; Ex. 1001, at 10:36-43. Contrary to Patent Owner’s arguments (PO Resp. at 3,
`
`13-15, 26), the claim language does not dictate which entity must choose, or
`
`“assign,” the channels (e.g., base station or subscriber unit) or how many of those
`
`channels must be used (e.g., all, some, or none). Indeed, claim 1 does not require
`
`use of the assigned physical channels at all; it merely recites what must happen in
`
`their absence. Ex. 1001, at 11:12-16; Pet. at 11-12.
`
`The parties agree that the claims correspond to a two-step process in which
`
`channels are first made available (assigned) and then they are selected for use
`
`(allocated). Pet. 9-13; Ex. 1002 (Bims Decl.), ¶¶ 97-98; Ex. 2005 (Stark Decl.),
`
`¶ 70; see Ex. 1025 (Stark Tr.), at 31:14-16. Claim 1 describes the result of the first
`
`step (assignment) in its recitation of “assigned physical channels,” without
`
`specifying any particular entity responsible for the assignment. Ex. 1001, at 11:7-
`
`9; Pet. at 10. By reciting the past participle “assigned,” claim 1 clearly indicates
`
`that the channels have already been assigned, and it does not matter whether the
`
`base station or the subscriber unit assigned them. Ex. 1001, at 11:7-9.
`3
`
`

`

`
`
`
`Petitioners’ Reply in IPR2014-00525
`Attorney Docket No. 14569.00009
`As to the second step (allocation), claim 1 is silent. Instead, it is dependent
`
`claim 15 that is expressly directed to allocation. Id. at 12:1-3; Pet. at 10. Thus, the
`
`plain language of claims 1 and 15 demonstrates that those three simple words,
`
`“assigned physical channels,” are not limited to channels assigned by the
`
`subscriber unit or from which the subscriber unit must select a subset.
`
`
`
`B.
`
`Patent Owner Takes the Word “Select” Out of Context to Require
`Assignment By the Subscriber Unit
`Ignoring the clear import of the claims, Patent Owner focuses singularly on
`
`the word “select” in the proposed construction. Taking “select” entirely out of
`
`context, Patent Owner would require the subscriber unit to make an affirmative
`
`choice beyond the decision to use a channel. E.g., PO Resp. at 3 n.1, 13-15, 17-18.
`
`However, any subscriber unit that uses a channel necessarily “selects,” or
`
`“allocates,” that channel for use, even if the base station assigned or chose the
`
`channel previously. Pet. at 11, 13; Ex. 1002 (Bims Decl.), ¶ 100. Dr. Stark
`
`candidly agreed in the context of the 970 parent patent specification, equating
`
`“allocation” with “use.” Ex. 1025 (Stark Tr.), at 38:7-39:7; 39:23-40:4. The
`
`Federal Circuit has since affirmed that understanding, relying on Dr. Stark’s prior
`
`testimony. Ex. 2023, at 18. The Federal Circuit rejected Patent Owner’s attempt
`
`to distinguish the prior art by differentiating “allocation” from “use” in view of the
`
`specification common to both the 970 and 244 patents. Ex. 2023, at 17-18
`
`(recognizing that Dr. Stark equated “allocation” and “use” in the context of the 970
`
`4
`
`

`

`Petitioners’ Reply in IPR2014-00525
`
`Attorney Docket No. 14569.00009
`
`parent patent). Thus, any subscriber unit that is capable of using a channel is
`
`necessarily capable of selecting it for use.
`
` The Construction Does Not Require Selecting a Subset
`C.
`Patent Owner also incorrectly asserts that the phrase “assigned physical
`
`channels” mandates that the subscriber unit be capable of selecting “a subset of a
`
`larger group of channels.” PO Resp. at 26.4 Patent Owner plucks the word
`
`“subset” from a single sentence of the specification, which describes only an
`
`“example” of how a subset of channels “may” be configured, not how the channels
`
`must be configured. See Ex. 1001, at 7:24-29. Contrary to Patent Owner’s
`
`representations, Petitioners have not argued that this sentence limits the claims.
`
`Compare PO Resp. at 15, with Pet. at 11-12. Indeed, reading in extraneous
`
`limitations from the specification is improper when the claim language is broader.
`
`In re Bigio, 381 F.3d 1320, 1324-25 (Fed. Cir. 2004). Patent Owner’s resort to a
`
`dictionary definition of the word “select” also illustrates how Patent Owner is
`
`using extrinsic evidence to reinterpret Petitioners’ construction and argue that it
`
`4 While not explicitly proposing a construction with the word “subset” in this
`proceeding, Patent Owner persuaded the District Court to adopt such a
`construction. Ex. 2022, at 9-12. Petitioners contend that the District Court’s new
`construction is far narrower than the broadest reasonable interpretation. Even
`under the narrower Phillips standard, Petitioners contend that the District Court’s
`inclusion of “subset” in the modified construction is incorrect.
`
`5
`
`

`

`Petitioners’ Reply in IPR2014-00525
`
`Attorney Docket No. 14569.00009
`
`requires selection of a subset. PO Resp. at 26. But, under the broadest reasonable
`
`interpretation of “assigned physical channels,” there is no requirement that the
`
`subscriber unit must select a subset of those channels.
`
`More important, if Patent Owner desired its claims to be limited to
`
`assignment by the subscriber unit or selection of a subset, it should have moved to
`
`amend the claims to read in the narrowing limitations it now seeks. 37 C.F.R.
`
`§ 42.121. Its failure to do so should waive this argument. Indeed, Patent Owner
`
`cannot be permitted to avoid the burden of proof it would otherwise carry had it
`
`filed a motion to amend. 37 C.F.R. § 42.20(c); Idle Free Sys. Inc. v. Bergstrom
`
`Inc., IPR2012-00027, at 33 (PTAB Final Decision, Jan. 7, 2014 (Paper 66)); see
`
`also Microstrategy, Inc. v. Zillow, Inc., IPR2013-00034 (PTAB Final Decision,
`
`Mar. 27, 2014 (Paper 42)), at 11-15 (rejecting attempt by Patent Owner to limit the
`
`claims through an improper “same proceeding disavowal” argument rather than
`
`though a motion to amend).
`
`D.
`
` The Specification Does Not Limit the Meaning of
`“Assigned Physical Channels”
`Patent Owner desperately clings to two statements of the “present invention”
`
`as evidence that the claims should be limited to a subscriber unit that uses only a
`
`subset of the assigned physical channels. PO Resp. at 3, 14-15. But these general
`
`statements provide no such support. Without specifying any particular features as
`
`essential, the specification merely states that “FIG. 6 . . . includes a subscriber unit
`
`6
`
`

`

`Petitioners’ Reply in IPR2014-00525
`
`Attorney Docket No. 14569.00009
`
`101 incorporating the features of the present invention.” Ex. 1001, at 9:27-28;
`
`accord. id. at 4:59-60. Tellingly, although the 244 patent specification is replete
`
`with references to the “present invention,” none describes subscriber unit channel
`
`assignment, let alone the subset concept, as necessary features of the “present
`
`invention.” E.g., Ex. 1001, at 2:63-67, 3:10-14, 4:59-60, 6:40-45, 6:49-52, 6:56-
`
`59, 8:46-47, 8:63-67. Because the patent fails to identify any specific channel
`
`assignment scheme as the “present invention,” it cannot provide the disclaimer
`
`Patent Owner seeks. See Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d
`
`1295, 1308 (Fed. Cir. 2007) (requiring the specific feature to be described as the
`
`“present invention” in order to be limiting).
`
`Patent Owner’s complex logic for reading in limitations through the
`
`subscriber unit of Figure 6 would circumvent the requirement that the claims
`
`define the invention. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1347
`
`(Fed. Cir. 2010) (en banc). Again, if Patent Owner wished to add certain features
`
`described in conjunction with Figure 6, it was required to amend its claims to
`
`include such limitations. Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 F.3d
`
`1291, 1299 (Fed. Cir. 2014) (quoting McCarty v. Lehigh Val. R.R. Co., 160 U.S.
`
`110, 116 (1895) (“[I]f we once begin to include elements not mentioned in the
`
`claim, in order to limit such claim . . . we should never know where to stop.”)
`
`Using Patent Owner’s logic, the claim need only recite “a subscriber unit” to
`
`7
`
`

`

`Petitioners’ Reply in IPR2014-00525
`
`Attorney Docket No. 14569.00009
`
`incorporate all the features described in connection with Figure 6. Doing so would
`
`not satisfy the requirement of 35 U.S.C. § 112 that the claims particularly point out
`
`and distinctly claim the invention.
`
`Patent Owner’s argument is, in any event, inconsistent with the specification
`
`in several ways. For example, the specification expressly states that the claims are
`
`not limited to the specific embodiments described. See Ex. 1001, 10:65-11:3.
`
`Similarly, though Patent Owner insists the claims should be limited to the
`
`subscriber unit of Figure 6, it also vociferously asserts that spoofing, a prominent
`
`feature of Figure 6 (Ex. 1001, at 9:58-63, 10:28-33), is not required by the claims.
`
`Ex. 1009, at 69-70. Patent Owner may not cherry-pick which features are part of
`
`the “subscriber unit 101 incorporating the features of the present invention.” See
`
`PO Resp. at 3, 14, 26; Ex. 2005 (Stark Decl.), ¶ 56 (admitting that the features of
`
`Figure 6 are described at column 9:27-10:59). If the Board were to start down the
`
`slippery slope of recognizing a disclaimer based on the subscriber unit of Figure 6
`
`as the “present invention,” it would need to account for the full scope of features
`
`disclosed in that subscriber unit. The Board should therefore reject Patent Owners’
`
`meritless specification disclaimer argument.
`
` JAWANDA ALONE OR IN COMBINATION WITH KNOWN
`III.
`WIRELESS PROTOCOLS RENDERS THE CLAIMS OBVIOUS
`Petitioners address below the few points Patent Owner made in rebuttal to
`
`Petitioners’ ground for obviousness (beyond the claim construction dispute
`
`8
`
`

`

`Petitioners’ Reply in IPR2014-00525
`
`Attorney Docket No. 14569.00009
`
`addressed above). Because Patent Owner admits that the method claims are
`
`essentially the same as the device claims but written in method form (PO Resp. at
`
`17, 39), Petitioners likewise treat claims 1 and 8 as representative claims.
`
`A.
`
` Claim 1: Jawanda and GPRS Disclose “Assigned Physical
`Channels”
`Patent Owner does not dispute that the combination of Jawanda and the
`
`GPRS protocols known at the relevant time disclose “assigned physical channels”
`
`under a correct reading of Petitioners’ proposed construction. PO Resp. at 18. As
`
`explained above, the broadest reasonable interpretation of the claims does not limit
`
`them to a narrow type of “assigned physical channel” that must be assigned by a
`
`particular entity or require selection of a subset. Thus, under the proper
`
`construction of “assigned physical channels,” Patent Owner’s “subset” and entity-
`
`based distinctions are irrelevant, and there is no dispute that Petitioners have
`
`shown that Jawanda and GPRS disclose this limitation. Pet. at 21-22, 38-39.
`
`B.
`
` Claim 1: Jawanda and GPRS Disclose a Processor Configured to
`“Maintain a Communication Session with the Cellular Wireless
`Network”
`Patent Owner does not dispute that the GPRS documents on which
`
`Petitioners and Dr. Bims rely disclose a logical connection that can be maintained
`
`9
`
`

`

`Petitioners’ Reply in IPR2014-00525
`
`Attorney Docket No. 14569.00009
`
`when physical channels are absent or not in use.5 Unable to distinguish the claims
`
`from the prior art, Patent Owner makes a meritless attack on Jawanda’s explicit
`
`motivation to combine.
`
`
`1.
`
`A Skilled Artisan Would Have Been Motivated to Combine
`Jawanda and the Publicly Available Draft GPRS Standards
`Patent Owner argues that one of ordinary skill in the art reading Jawanda
`
`would have looked only to a final version of a standards document, but not to a
`
`publicly available “draft” version. PO Resp. at 37; Ex. 2005 (Stark Decl.), ¶¶ 40,
`
`131-32; Ex. 1025 (Stark Tr.), at 88:20-89:1. In Patent Owner’s view, cell phone
`
`designers would not look to a draft version because the resulting device might not
`
`comply with the final standard. PO Resp. at 43; Ex. 2005 (Stark Decl.), ¶¶ 131-32.
`
`But the law does not require that the resulting device be the most desirable
`
`or commercially feasible combination. “‘[T]he question is whether there is
`
`
`5 Although not disputed, Patent Owner misleadingly suggests a lack of disclosure
`by repeatedly referring to “then-existing” GPRS standards. E.g,. PO Resp. at 9-13,
`34-37. But this is based entirely on Patent Owner’s view that Exhibit 1005.03 is
`excluded from the “then-existing” GPRS standards because as a publicly available
`draft version, it preceded the first final release of GSM 03.60 (version 6.11), which
`did not occur until after the priority date. Ex. 1025 (Stark Tr.), at 72:4-73:5. This
`is nothing more than a rehash of Patent Owner’s meritless argument that there is
`lack of motivation to combine Jawanda with a publicly available “draft” document.
`
`10
`
`

`

`Petitioners’ Reply in IPR2014-00525
`
`Attorney Docket No. 14569.00009
`
`something in the prior art as a whole to suggest the desirability, and thus the
`
`obviousness, of making the combination,’ not whether there is something in the
`
`prior art as a whole to suggest that the combination is the most desirable
`
`combination available.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
`
`(internal quotation omitted). Indeed, as the Supreme Court has cautioned, “[r]igid
`
`preventative rules that deny fact-finders recourse to common sense, however, are
`
`neither necessary nor consistent with the law.” KSR Int’l Co. v Teleflex Inc., 550
`
`U.S. 389, 421 (2007). As explained by Dr. Bims, persons working in the field
`
`would not ignore the drafts of cellular standards documents. Ex. 2006 (Bims Tr.),
`
`at 24:9-27:2, 168:18-171:5. On the contrary, given the timeframe required for
`
`developing a final product, Dr. Bims testified that it is imperative for cell phone
`
`manufacturers to be aware of and keep up with the developing standards. Id.
`
`Jawanda provides explicit motivation to use “any currently available or
`
`future wireless data protocol,” such as GPRS, whether implemented in commercial
`
`systems or described in drafts for future implementation. Ex. 1003 (Jawanda), at
`
`3:6-9 (emphasis added). As Dr. Stark admitted on cross-examination, Jawanda’s
`
`teaching is directed to known “wireless data protocols”—not “standards.” Ex.
`
`1025 (Stark Tr.), at 91:1-16. Dr. Stark also admitted that the “draft” standards
`
`document relied on by Dr. Bims describes a draft wireless data protocol. Ex. 1025
`
`(Stark Tr.), at 95:3-10. Thus, one of ordinary skill in the art reading Jawanda
`
`11
`
`

`

`Petitioners’ Reply in IPR2014-00525
`
`Attorney Docket No. 14569.00009
`
`would have been motivated to consider all publicly available potential wireless
`
`data protocols available at the time, such as the draft GPRS standards relied on
`
`here.
`
`
`2.
`
`Jawanda’s Disclosure of “Optionally Maintaining” Is
`Consistent with GPRS
`Patent Owner also presents two unfounded arguments that Jawanda teaches
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`away from combining its teachings with GPRS’s disclosure of maintaining a PDP
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`context when channels are not in use: (1) that “terminating” in Jawanda means the
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`“logical connection” is also terminated; and (2) that the physical channels remain
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`in use when the cellular connection is “optionally maintained.” PO Resp. 29-33.
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`First, Jawanda specifically teaches use of known cellular protocols, such as GPRS,
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`for the details of wireless data connections. PO Resp. at 18; Ex. 1003 (Jawanda),
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`at 3:6-9. As Dr. Stark admitted, the GPRS protocols disclosed in GSM 03.60 v.
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`6.1.1 (Ex. 1005.03) teach a PDP context that satisfies the logical connection of the
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`claims and, more important, that this PDP context can remain “active” even after
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`the physical channels are no longer in use. Ex. 1025 (Stark Tr.), at 87:14-88:19;
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`Ex. 1002 (Bims Decl.), ¶¶ 126-130, 156-157, 200-204. Jawanda does not suggest
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`any modifications to GPRS in this regard, so—far from teaching away—Jawanda
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`suggests employing the very functionality required by the claims.
`
`Patent Owner’s statement that Jawanda’s “active” cellular connection is one
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`that must be “in use” (PO Resp. 30-31) also directly contradicts Jawanda and the
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`Petitioners’ Reply in IPR2014-00525
`
`Attorney Docket No. 14569.00009
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`teachings of GPRS to which Jawanda points. At block 122, Jawanda describes
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`handing off the transfer of datagrams from the cellular connection (CAI) to the Wi-
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`Fi connection (WLAN), and it describes using these paths alternatively, not
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`concurrently. Ex. 1002 (Bims Decl.), ¶¶ 193-195. Jawanda states that “following
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`block 122, datagrams are routed . . . utilizing the higher bandwidth data path
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`between WLAN interfaces 96 rather than between CAIs.” Ex 1003 (Jawanda), at
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`Fig. 4, 5:39-42; Ex. 1002 (Bims Decl.), ¶ 193-195. Moreover, Jawanda’s
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`disclosure is consistent with GPRS, which teaches that an “active” PDP context
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`can be maintained, even after data transfer has ended and the physical channels are
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`no longer in use. Ex. 1025 (Stark Tr.), at 87:14-88:19; Ex. 1002 (Bims Decl.),
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`¶¶ 200-204; Ex. 2006 (Bims Tr.), at 47:6-20, 160:1-162:19. Thus, Jawanda’s
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`teaching to “optionally maintain” the cellular connection while the cellular
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`physical channels are not in use is consistent with the GPRS teaching to maintain
`
`the PDP context when no physical cellular channels are in use. Again, Jawanda
`
`does not teach away; it points directly to where the claimed features can be found
`
`in the prior art.
`
` Claim 8: Jawanda Discloses CDMA
`C.
`Claim 8’s addition of “CDMA” as the type of “cellular wireless network”
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`does not add patentable subject matter. Indeed, Jawanda itself explicitly states that
`
`the wireless data connections could be provided by a “code division multiple
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`access (CDMA)” network. Ex. 1003 (Jawanda), 3:6-9. Although Patent Owner
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`Petitioners’ Reply in IPR2014-00525
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`Attorney Docket No. 14569.00009
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`attempts to suggest GPRS is incompatible with a CDMA air interface because it
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`was originally developed for time division multiple access (TDMA), this false
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`distinction is belied by Dr. Stark’s own testimony. PO Resp. at 39-40. Dr. Stark
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`admitted that the GPRS network layer protocols (such as the PDP context) were
`
`eventually incorporated into CDMA air interface systems, such as WCDMA. Ex.
`
`1025 (Stark Tr.), at 92:4-20. By contrast, Patent Owner has advanced no evidence
`
`to suggest that employing the cited GPRS functionality in a CDMA-based system
`
`such as Jawanda discloses would have been beyond the level of ordinary skill at
`
`the relevant time. “[I]f a technique has been used to improve one device, and a
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`person of ordinary skill in the art would recognize that it would improve similar
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`devices in the same way, using the technique is obvious unless its actual
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`application is beyond his or her skill.” KSR, 550 U.S. at 417.
`
`IV.
`
` PATENT OWNER PROVIDES INSUFFICIENT SUPPORT FOR ITS
`MEAGER SECONDARY CONSIDERATIONS ARGUMENTS
`Patent Owner’s purported secondary considerations “evidence” cannot
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`overcome the strong case of obviousness set forth by Petitioners. This “evidence”
`
`is insufficient because it boils down to conclusory opinions, unsupported by
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`underlying documentary evidence, In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
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`1984), and lacking the requisite nexus to the claimed invention. Demaco Corp. v.
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`F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392-93 (Fed. Cir. 1998). For
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`example, in his analysis of commercial success, Dr. Stark admits that any number
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`Petitioners’ Reply in IPR2014-00525
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`Attorney Docket No. 14569.00009
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`of features might be the reason for ZTE’s commercial success, but he failed to
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`evaluate or segregate the respective contributions of any of those features. Ex.
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`1025 (Stark Tr.), at 9:2-10:20. In his analysis of “licensing by others,” Dr. Stark
`
`provided no examples of any licensing negotiation in which the 244 patent featured
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`prominently or any license that was concluded because of the 244 patent. Id. at
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`11:3-12. The remaining indicia are likewise flawed (see id. at 11:13-14:8), and
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`Patent Owner’s purported evidence is insufficient to overcome ZTE’s showing of
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`obviousness.
`
`V.
`
` CONCLUSION
`Claims 1-8, 14-16, 19-29, 36-38, and 41-44 of the 244 patent are obvious in
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`light of the combination of Jawanda, the known GPRS protocols, and the 802.11
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`protocol.
`
`Dated: April 7, 2015
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`
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`
`
`Respectfully submitted,
`/Charles M. McMahon/
`Charles M. McMahon
`Registration No. 44,926
`Attorney for Petitioners ZTE
`Corporation and ZTE (USA) Inc.
`Brinks Gilson & Lione
`NBC Tower, Suite 3600
`455 North Cityfront Plaza Drive
`Chicago, IL 60611-5599
`Telephone: (312) 321-4200
`Fax: (312) 321-4299
`
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`
`
`Petitioners’ Reply in IPR2014-00525
`Attorney Docket No. 14569.00009
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing Petitioners’ Reply to
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`Patent Owner’s Response has been served on April 7, 2015 by electronic mail on
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`the following counsel of record for Patent Owner IPR Licensing, Inc.:
`
`Lead Counsel
`Jonathan D. Link
`Reg. No. 41,548
`Latham & Watkins LLP
`555 11th Street, NW
`Suite 1000
`Washington, D.C. 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`E-mail: jonathan.link@lw.com
`
`
`Backup Counsel
`Julie M. Holloway
`Reg. No. 44,769
`Latham & Watkins LLP
`505 Montgomery Street
`Suite 2000
`San Francisco, California 94111-6538
`Telephone: (415) 391-0600
`Facsimile: (415) 395-8095
`E-mail: julie.holloway@lw.com
`
`/s/ Charles M. McMahon
`Charles M. McMahon
`
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