`
`
`
`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 B2
`_____________
`PATENT OWNER’S
`NOTICE OF APPEAL
`
`
`
`
`
`Case: IPR2014-00525
`U.S. Patent No. 8,380,244
`
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`
`
`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that patent owner
`
`IPR Licensing, Inc. (“IPR Licensing”) appeals to the United States Court of
`
`Appeals for the Federal Circuit from the Decision on Remand entered by the Patent
`
`Trial and Appeal Board (the “Board”) on March 6, 2018 (Paper 59) (the “Decision
`
`on Remand,” a copy of which is attached hereto).
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), IPR Licensing further
`
`indicates that the issues on appeal may include, without limitation:
`
`• Whether the Board erred in determining that Petitioner ZTE
`
`Corporation and ZTE (USA) Inc. (collectively, “Petitioner”), proved
`
`by a preponderance of the evidence that claim 8 of U.S. Patent No.
`
`8,380,244 is obvious in light of the prior art, see 35 U.S.C. § 103,
`
`along with all reasons, findings, opinions, and orders leading thereto
`
`or underlying that decision;
`
`
`
`
`
`• Whether the Board erroneously or impermissibly instituted review;
`
`Case: IPR2014-00525
`U.S. Patent No. 8,380,244
`
`
`• Whether inter partes review violates the Constitution by extinguishing
`
`private property rights through a non-Article III forum without a jury;
`
`and
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`• Whether the Board otherwise erroneously or impermissibly exercised
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`or exceeded its authority.
`
`Simultaneous with this submission, a copy of this Notice of Appeal is being
`
`filed with the Board, and an electronic copy, along the required docketing fee, are
`
`being filed with the United States Court of Appeals for the Federal Circuit.
`
`Dated: April 10, 2018
`
`
`
`Respectfully submitted,
`
`
`
`/Julie M. Holloway/
`Julie M. Holloway
`LATHAM & WATKINS LLP
`505 Montgomery Street
`Suite 2000
`San Francisco, CA 94111-6538
`Telephone: (415) 391-0600
`Facsimile: (415) 395-8095
`
`Counsel for Patent Holder
`IPR Licensing, Inc.
`
`
`
`
`
`2
`
`
`
`Case: IPR2014-00525
`U.S. Patent No. 8,380,244
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, in addition to being filed electronically through the
`
`Patent Trial and Appeal Board’s End to End System (PTAB E2E), the foregoing
`
`Patent Owner IPR Licensing, Inc.’s Notice of Appeal was delivered by hand on
`
`this 10th day of April, 2018, to the Director of the United States Patent and
`
`Trademark Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
` further certify that, on this 10th day of April, 2018, an electronic copy of
`
` I
`
`the foregoing Patent Owner IPR Licensing, Inc.’s Notice of Appeal, along with the
`
`required docketing fee, was submitted electronically with the United States Court
`
`of Appeals for the Federal Circuit.
`
`I further certify that on this 10th day of April, 2018, true and correct copies
`
`of the foregoing Patent Owner IPR Licensing, Inc.’s Notice of Appeal were served
`
`by electronic mail, upon the following counsel of record for Petitioners, ZTE
`
`Corporation and ZTE (USA) Inc.:
`
`
`
`
`
`Lead Counsel
`Charles M. McMahon
`Brinks Gilson & Lione
`NBC Tower, Suite 3600
`455 North Cityfront Plaza Drive
`Chicago, IL 60611-5599
`Telephone: (312) 321-4200
`Facsimile:
`(312) 321-4299
`E-mail: cmcmahon@brinksgilson.com
`
`Counsel for Petitioners ZTE Corp. &
`ZTE (USA) Inc.
`
`
`
`
`Case: IPR2014-00525
`U.S. Patent No. 8,380,244
`
`
`Backup Counsel
`Brian A. Jones
`Brinks Gilson & Lione
`NBC Tower, Suite 3600
`455 North Cityfront Plaza Drive
`Chicago, IL 60611-5599
`Telephone: (312) 321-4200
`Facsimile:
`(312) 321-4299
`E-mail: bjones@brinksgilson.com
`
`By:
`
`/Julie M. Holloway/
`Julie M. Holloway
`
`
`
`2
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`Paper 59
`Entered: March 6, 2018
`
`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 B2
`____________
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`
`
`
` DECISION ON REMAND
`35 U.S.C. § 144 and 37 C.F.R. § 42.5(a)
`
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
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`I. INTRODUCTION
`A. Background
`ZTE Corporation and ZTE (USA) Inc. (collectively, “Petitioner”)
`filed a corrected Petition requesting inter partes review of claims 1–8, 14–
`16, 19–29, 36–38, and 41–44 of U.S. Patent No. 8,380,244 B2 (Ex. 1001,
`“the ’244 patent”). Paper 9 (“Pet.”).1 IPR Licensing, Inc. (“Patent Owner”)
`filed a Patent Owner Preliminary Response (Paper 12 (“Prelim. Resp.”)).
`Pursuant to 35 U.S.C. § 324, the Board instituted trial on one ground of
`unpatentability, Claims 1–8, 14–16, 19–29, 36–38, and 41–44 under 35
`U.S.C. § 103 as obvious over Jawanda, the GPRS Standards, and the IEEE
`802.11 Standard. Paper 19, 22. After institution of trial, Patent Owner filed
`a Patent Owner Response (Paper 25 (“PO Resp.”)) and Petitioner filed a
`Reply (Paper 38 (“Pet. Reply”)). Oral hearing was held on May 21, 2015,
`and a transcript of the hearing is in the record. Paper 47 (“Tr.”). On
`September 14, 2014, we issued a Final Written Decision holding that
`Petitioner had demonstrated by a preponderance of the evidence that claims
`1–8, 14–16, 19–29, 36–38, and 41–44 of the ’244 patent were unpatentable
`as obvious based on the instituted ground. Paper 48 (“Final Dec.”).
`Patent Owner appealed to the United States Court of Appeals for the
`Federal Circuit. Paper 49. On April 20, 2017, the Federal Circuit issued a
`decision affirming our conclusion that the asserted prior art references
`rendered claims 1–7, 14–16, 19–29, 36–38, and 41–44 obvious, and vacated
`
`
`1 We granted the Motion for Joinder filed by Microsoft Corporation, joining
`Case IPR2015-00074 with this proceeding. Paper 31. Subsequently,
`Petitioner Microsoft Corporation filed a motion to terminate its participation
`in this proceeding on May 17, 2017, which we granted May 23, 2017. Paper
`53.
`
`
`
`2
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`IPR2014-00525
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`and remanded to the Board to consider again our finding of obviousness of
`claim 8, which depends from claim 1. IPR Licensing, Inc. v. ZTE Corp.,
`ZTE (USA) Inc., Microsoft Corp., 685 F. App’x 933 (Fed. Cir. 2017)
`(unpublished). In particular, the Federal Circuit agreed with our claim
`construction for the claim 1 phrase “maintain[ing] a communication
`session,” but held that “substantial evidence does not support the Board’s
`articulated motivation to combine the asserted references to arrive at the
`invention defined in claim 8.” Id. at 935, 939. The Federal Circuit’s
`mandate issued on June 19, 2017.
`The Board has reviewed the record in light of the Federal Circuit’s
`decision. For the reasons that follow, we determine that Petitioner has
`shown by a preponderance of the evidence that claim 8 of the ’244 patent is
`unpatentable.
`
`
`B. Conference Call after Remand
`The Board held a conference call on July 18, 2017, with the parties to
`discuss potential actions to be taken in view of the remand by the Federal
`Circuit. A court reporter was present on the call, and a transcript of the call
`was filed by Patent Owner. Ex. 2026. Both parties agreed that additional
`briefing beyond the arguments and evidence presently in the record was
`unnecessary, and that the narrow issue to be addressed was the motivation to
`combine the PDP Context feature of the GPRS Standards that enables the
`subscriber unit to “maintain a communication session” with a CDMA
`network as required by claim 8. Paper 54, 2–3. We authorized Petitioner to
`file a paper containing a numeric listing of citations to the existing record
`
`
`
`
`3
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`Patent 8,380,244 B2
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`indicating where the evidence pertaining to this issue was originally
`introduced or argued in the Petition (id. at 3).
`
`
`C. Related Proceedings
`The parties represent that the ’244 patent is the subject of the
`following judicial proceedings: (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.
`Pet. 2; Paper 6, 2.
`
`
`D. The ‘244 Patent (Ex. 1001)
`The ’244 patent is directed to a system and method of short-range,
`high-speed, and long-range, lower-speed, data communications using a dual-
`mode unit. Ex. 1001, Abstract. The wireless communication path is
`selected based on a request to establish a communication session between
`first and second sites, by first determining whether the first wireless digital
`communication path is available. Id. at 3:19–22. The first wireless
`communication path is a wireless LAN connection, and the second wireless
`communication path is a cellular connection. Id. at 3:23–28. The ’244
`patent describes several embodiments for indicating availability of the first
`wireless communication mode. Id. at 3:44–54. For example, if the first
`wireless communication path is unavailable, the communication session is
`established using the second wireless communication path, and “the local
`wireless transceiver is controlled to make it appear to the second wireless
`
`
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`4
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`IPR2014-00525
`Patent 8,380,244 B2
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`digital communication path as though the bandwidth were continuously
`available during the communication session, irrespective of any actual need
`to transport data communication signals between said first and second sites.”
`Id. at 3:60–4:1.
`In another example, the second wireless digital communication path
`“is provided by establishing a logical connection using a higher layer
`protocol, such as a network layer protocol” from a subscriber unit to an
`intended peer node. Id. at 4:5–11. The network layer logical connection “is
`made through a wireless channel that provides a physical layer connection
`between the portable computer node, through a base station, and the
`intended peer node.” Id. at 4:11–14. The physical layer channel is released,
`“while maintaining the appearance of a network layer connection to the
`higher level protocols.” Id. at 4:16–18. The ’244 patent contemplates that
`the physical links “are preferably known wireless communication air
`interfaces using digital modulation techniques such as [the] Code Division
`Multiple Access (CDMA) standard . . . . [O]ther wireless communication
`protocols and other types of links 30 may also be used to advantage with the
`invention.” Id. at 5:31–37.
`This embodiment is illustrated in Figure 6, reproduced below:
`
`
`
`
`5
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`Figure 6 is a block diagram illustrating the subscriber unit.
`
`Specifically, the subscriber unit 101 connects to a computer 110 via a
`computer interface 120, to transmit data over the Internet via a first
`communication route or second communication route. Id. at 9:27–57. The
`interface establishes a connection over the first, faster wireless
`communication path 213, e.g., wireless local area network (WLAN), if
`available, using a protocol such as IEEE 802.1. Id. at 3:23–27, 8:46–59,
`9:40–42. If the WLAN connection is not available, the interface
`automatically switches to a second, slower, wireless digital long-range
`communication path, e.g., CDMA. Id. at 3:29–50, 9:15–57. When data are
`being transmitted over the second communication path, the CDMA protocol
`converter initiates a spoofing function, so that it appears to the terminal
`equipment that the subscriber unit is connected to the public network at all
`times. Id. at 9:58–63. The bandwidth management function allocates and
`deallocates CDMA radio channels, and is also responsible for dynamic
`management of bandwidth allocated to a session by “dynamically allocating
`
`6
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`IPR2014-00525
`Patent 8,380,244 B2
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`sub-portions of the CDMA radio channels 160” using a wireless
`communication protocol. Id. at 9:66–10:3. The ’244 patent explains how in
`the long range, lower data rate mode:
`wireless bandwidth is allocated only when there is actual data
`present from the terminal equipment to the CDMA transceiver
`. . . . [W]hen 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.
`Id. at 10:34–43.
`
`
`E. Remanded Claim 8
`Claim 8 depends from independent claim 1. Claims 1 and 8 are
`reproduced below.
`1. A subscriber unit comprising:
`a cellular transceiver configured to communicate with a
`cellular wireless network via a plurality of assigned physical
`channels;
`
`an IEEE 802.11 transceiver configured to communicate
`with an IEEE 802.11 wireless local area network; and
`
`a processor configured to maintain a communication
`session with the cellular wireless network in an absence of
`the plurality of assigned physical channels while the IEEE
`802.11 transceiver communicates packet data with the IEEE
`802.11 wireless local area network.
`
`
`
`
`
`
`8. The subscriber unit of claim 1, wherein the cellular wireless
`network is a code division multiple access (CDMA) wireless
`network, and the cellular transceiver is a cellular code
`division multiple access (CDMA) transceiver.
`
`Ex. 1001, 11:5–16, 11:39–42.
`
`
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`
`7
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`IPR2014-00525
`Patent 8,380,244 B2
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`
`F. Ground of Unpatentability
`The following ground of unpatentability and prior art references are at
`issue in this remand:
`References
`
`Basis
`
`Claim Challenged
`
` § 103(a) 8
`
`Jawanda,2 the GPRS
`Standard3
`and IEEE 802.11 Standard4
`
`Pet. 8; see IPR Licensing, Inc., 685 F. App’x at 935.
`
`
`II. ANAYLSIS
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs.,
`LLCv. Lee, 136 S.Ct. 2131, 2142 (2016) (affirming that USPTO has
`statutory authority to construe claims according to 37 C.F.R. § 42.100(b)).
`Under the broadest reasonable interpretation standard, claim terms are
`generally given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`
`2 U.S. Patent No. 6,243,581 B1, June 5, 2001 (filed Dec. 11, 1998) (Ex.
`1003, “Jawanda”).
`3 General Packet Radio Service Standards, (Ex. 1005, “GPRS Standards”).
`4 Part 11: Wireless LAN Medium Access Control (MAC) and Physical
`Layer (PHY) Specifications, IEEE 802.11 Standard, Institute of Electrical
`and Electronics Engineers, Aug. 20, 1999, (Ex. 1019, “IEEE 802.11
`Standard”).
`
`
`
`8
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`IPR2014-00525
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`
`We construed the term “plurality of assigned physical channels” in
`our Final Decision as “physical channels made available for use by the
`subscriber unit.” Final Dec. 13. The Federal Circuit confirmed our
`construction of “plurality of assigned physical channels” despite Patent
`Owner’s assertion that we relied on a new construction presented by
`Petitioner in its Reply. IPR Licensing, Inc., 685 F. App’x at 937–938. The
`court characterized this as “harmless error” because Patent Owner did not
`show any detriment. Accordingly, we incorporate and maintain our
`construction of “plurality of assigned physical channels” in the present
`decision. Final Dec. 13; IPR Licensing, Inc., 685 F. App’x at 938.
`We determined that no other claim term needs express interpretation
`in our analysis of claim 8. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy.”).
`
`
`B. Overview
`Petitioner contends that claim 8 of the ’244 patent is unpatentable
`under 35 U.S.C. § 103(a) as obvious over Jawanda, the GPRS Standards,
`and IEEE 802.11 Standard. Pet. 19–28. In its Petition, Petitioner provides
`citations for where each claim limitation is disclosed by Jawanda, the GPRS
`Standards, and IEEE 802.11 Standard. Petitioner further relies on the
`declaration of Dr. Bims to support the analysis advocated in the Petition.
`Ex. 1002.
`Having reviewed Petitioner’s arguments, Patent Owner’s arguments,
`and the supporting evidence, we determine that Petitioner has shown by a
`
`
`
`
`9
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`IPR2014-00525
`Patent 8,380,244 B2
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`preponderance of the evidence that claim 8 is unpatentable over Jawanda,
`the GPRS Standards, and IEEE 802.11 Standard. We begin our discussion
`with a brief summary of the cited references, and then we address the
`parties’ contentions in turn.
`1. Overview of Jawanda (Ex. 1003)
`Jawanda discloses a method and system for seamless roaming
`between wireless data communication networks with a mobile terminal.
`Ex. 1003, 1:10–13. Specifically, the system includes a plurality of wireless
`interfaces that:
`supports simultaneous wireless connections with first and
`second wireless communication networks, and a network access
`arbitrator that routes data communicated between the software
`executed by the data processing resources and the first and
`second wireless communication networks.
`Id. at 1:64–2:1.
`The system of wireless data communication between wireless data
`networks is illustrated in Figure 3, which is reproduced below.
`
`
`Fig. 3 is a schematic diagram of a wireless data communication
`system for seamless roaming between wireless networks.
`
`10
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`IPR2014-00525
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`
`Jawanda discloses that the wireless signal can be transmitted
`according to any currently available or future wireless data protocol such as
`code division multiple access (CDMA), cellular digital packet data (CDPD),
`or general packet radio service (GPRS). Id. at 3:6–9. One of the functions
`of the network access arbitrator is to cause “the transfer of datagrams to be
`seamlessly handed off from the wireless connection with wireless wide area
`network (WWAN) 10 to the wireless connection with WLAN 12 while
`maintaining the session between applications 90 and 91.” Id. at 5:35–39,
`Fig. 4.
`Figure 4, reproduced below, describes “a high level logical flowchart
`of a method of wireless data communication in which a data communication
`session is seamlessly handed off between wireless data communication
`networks.” Ex. 1003, 4:20–23.
`
`
`
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`11
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`Figure 4 illustrates communications handoff between wireless networks.
`The methodology begins with the assumption that a wireless data
`connection between a mobile device and a WWAN 10 has been established
`outside the service area of the WLAN 12, and the mobile device travels into
`the service area of the WLAN 12, and then returns to the remote location.
`Id. at 4:24–30. In block 120, after detecting the availability of a higher
`bandwidth data connection, the mobile device establishes a second wireless
`data connection with a WLAN. Id. at 5:20–32. The Specification notes that
`“following block 120, the user has concurrent wireless data connections with
`both WWAN 10 and WLAN 12.” Id. at 5:32–34. Next, in block 122, the
`network arbitrator “causes the transfer of datagrams to be seamlessly handed
`off from the wireless connection with WWAN 10 to the wireless connection
`with WLAN 12 while maintaining the session between applications 90 and
`91.” Id. at 5:34–39. Continuing to block 126, if for example, the mobile
`
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`12
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`IPR2014-00525
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`device has moved out of the range of the WLAN 122, it is determined
`whether the transfer of datagrams should be handed off to the connection
`with WWAN 10, and the wireless connection is reestablished. Id. at 5:43–
`67.
`2. Overview of GPRS Standards (Ex. 1005)
`
`The reference to “GPRS Standards” pertains to ten sections from the
`Global System for Mobile Communication (GSM) standard, and defines
`features relating to a General Packet Radio Service (“GPRS”). Pet. 6. In
`particular, the GPRS Standards disclose the use of multiple physical data
`channels by a mobile station to transmit data. Pet. 21–22 (citing Ex.
`1005.09, 6; Ex. 1002 ¶ 184). To transmit packet data, the physical channels
`may be grouped to form logical uplink channels (e.g., Packet Data Traffic
`Channel (“PDTCH”) and Packet Associated Control Channel (“PACCH”)).
`Id. at 22 (citing Ex. 1005.09, 6, 10; Ex. 1002 ¶ 184). A mobile station may
`allocate one or more of the assigned uplink PDTCHs as needed for
`transmission of data. Id. at 22 (citing Ex. 1005.09 § 2; Ex. 1002 ¶ 184).
`Further, a Packet Data Protocol Context (PDP Context) feature preserves
`information about the cellular communication session between the mobile
`devise and base station. Ex. 1005.03, 79.
`3. Overview of IEEE 802.11 Standard (Ex. 1019)
`The IEEE 802.11 Standard is part of a family of networking standards
`dealing with wireless local and metropolitan area networks. Ex. 1019,
`00005. In particular, the IEEE 802.11 Standard describes a wireless data
`protocol for Wireless LAN Medium Access Control (MAC) and a Physical
`Layer (PHY) Specification for wireless connectivity of fixed, portable, and
`moving stations within a local area. Id. at 00017.
`
`
`
`
`13
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`4. Discussion
`Petitioner bears the burden of proving unpatentability of the
`challenged claims, and the burden of persuasion never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the facts
`supporting its challenge by a preponderance of the evidence. 35 U.S.C. §
`316(e); 37 C.F.R. § 42.1(d).
`In its Petition, Petitioner argued that “Jawanda teaches and/or renders
`obvious all of the challenged claims, either alone or in combination with
`GPRS and IEEE 802.11 Standards.” Pet. 19. Specifically, that Jawanda
`discloses (1) a dual mode subscriber unit (mobile phone 16 connected to
`terminal unit 14); (2) a high speed wireless network (WLAN); and (3) “a
`lower-speed network such as a CDMA or GPRS cellular network. Id. at 20
`(citing Ex. 1003, 2:42–47; Abstract; Ex. 1002 ¶¶ 177-179)). Petitioner
`relied on the GPRS Standards to provide the “implementation details” not
`particularly taught by Jawanda. Pet. 21. For example, in our Final Written
`Decision, we were persuaded by Petitioner that the “assigned physical
`channels” limitation of claim 1 was satisfied by the description in the GPRS
`Standards regarding “eight basic physical data channels per mobile station
`grouped to form logical uplink channels (e.g., Packet Data Traffic Channel
`(“PDTCH”) and a Packet Associated Control Channel (“PACCH”)) to
`transmit data, and that ‘a mobile station may allocate one or more of the
`assigned uplink PDTCHs as needed for transmission of data.’” Final Dec.
`20 (citing Pet. 22 (internal citations omitted). As to the “maintain a
`communication session” limitation of claim 1, we found that “the GPRS
`Standards ‘disclose a logical connection that can be maintained when
`
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`14
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`physical channels are absent or not in use.’” Id. at 24 (internal citations
`omitted).
`As noted above, the Federal Circuit affirmed our claim construction,
`and the Parties concurred that if our claim construction stood, then our
`finding that claim 1 is unpatentable as obvious based on Jawanda, the GPRS
`Standards, and IEEE 802.11 Standard is correct. IPR Licensing, Inc., 685 F.
`App’x at 938–939. Specifically, our finding as to claim 1 that a person with
`ordinary skill in the art would have combined Jawanda, the GPRS Standards,
`and IEEE 802.11 Standard. Because this finding is uncontroverted, we
`focus our analysis on claim 8.5
`Dependent claim 8 additionally recites that “the cellular wireless
`network is a code division multiple access (CDMA) network.” Ex. 1001,
`11:39–41. Petitioner argued that the CDMA limitation of claim 8 is satisfied
`by the passage in Jawanda describing that, “[f]or data connections, such
`wireless signals can be transmitted according to any currently available or
`future wireless data protocol such as code division multiple access (CDMA),
`CDPD, or GPRS.” Pet. 45 (citing Ex. 1003, 3:6–9) (emphasis added).
`Petitioner advanced several reasons, supported by the testimony of Dr.
`Bims, explaining why one of skill in the art would have been motivated to
`combine the teachings of Jawanda with the GPRS and IEEE 8.02.11
`standards. Pet. 26–28. For example, Petitioner argued that “Jawanda
`provides an express motivation to combine its teachings with the GPRS and
`IEEE 802.11 Standards,” namely because Jawanda teaches both a WWAN
`and WLAN for use with a mobile terminal, and that the mobile terminal and
`
`5 We note that any allegation by Patent Owner that Petitioner’s arguments in
`its reply were outside the scope is moot because we did not rely on such
`arguments in our reconsideration of claim 8.
`
`15
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`IPR2014-00525
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`
`mobile phone “can communicate with the WWAN ‘according to any
`currently available or future wireless data protocol such as code division
`multiple access (CDMA), CDPD, or GPRS.’” Id. at. 26 (citing Ex. 1003,
`3:1–9, 4:31–34, Fig. 1); Ex. 1002 ¶¶ 181–182. Petitioner also argued that “it
`would have been an obvious design choice to a person of ordinary skill in
`the art that the mobile phone in Jawanda be selected to comply with the
`then-existing, well-known GPRS Standard. Id. at 27 (citing Ex. 1002 ¶
`166). Further, Petitioner argued that “a person of ordinary skill would have
`found it obvious to reference the GPRS Standards for details about how to
`implement the cellular features taught in Jawanda.” Id. at 27 (citing Ex.
`1002 ¶ 122). According to Petitioner, it would have been obvious to
`implement the WLAN using the IEEE 802.11 Standard because (1) “it was
`the first publically available and internationally accepted wireless data
`protocol for WLANs” amongst few available options (id. (citing Ex. 1002 ¶¶
`138-150, 167)); and (2) “one of ordinary skill naturally would have looked
`to the IEEE 802.11 Standard for details on how to realize the WLAN
`implementation described in Jawanda (id. at 27–28 (citing Ex. 1002 ¶¶ 138-
`150, 167)).
`In response to these rationales, Patent Owner argued that because
`GPRS uses time division multiple access (TDMA) and not CDMA,
`“Jawanda with GPRS does not include a cellular network that is a CDMA
`network.” PO Resp. 39. The Federal Circuit found that “the suggestion in
`Jawanda to combine Jawanda with GPRS or CDMA is not a suggestion to
`combine Jawanda and specific features of GPRS with CDMA.” IPR
`Licensing, Inc., 685 F. App’x at 939. (emphasis added). At the same time,
`the Court also recognized that “the record might contain substantial evidence
`
`
`
`
`16
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`IPR2014-00525
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`
`to support a motivation to combine the PDP Context feature of the GPRS
`Standards with the CDMA network referenced in Jawanda.” Id. at 940.
`Central to Patent Owner’s argument that “Jawanda with GPRS does
`not include a cellular network that is a CDMA network” is the fact that
`TDMA and CDMA are different cellular network protocols. PO Resp. 39.
`Patent Owner supports its position with the testimony of Dr. Stark, that “[a]
`person of ordinary skill in the art would understand that these are
`fundamentally different approaches to multiple-access, and therefore, it
`would be improper to rely on a TDMA system, such as GPRS, for purposes
`of the independent claims while relying on a CDMA system for purposes of
`the dependent claims.” Ex. 2005 ¶ 127.
`Patent Owner’s arguments directed specifically to the GPRS
`Standards, presume that one of ordinary skill would not look outside the
`confines of the GPRS Standards for any modification. This approach,
`however, is contrary to KSR, which states “[a] person of ordinary skill is also
`a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 406 (2007). KSR explains explicitly that the ordinary
`artisan recognizes “that familiar items may have obvious uses beyond their
`primary purposes, and in many cases a person of ordinary skill will be able
`to fit the teachings of multiple patents together like pieces of a puzzle.” KSR
`Int’l Co., 550 U.S. at 420 (emphasis added).
`We find more persuasive the evidence in the record demonstrating
`that the ’244 patent itself recognizes that CDMA was a known digital
`wireless communication protocol in the relevant timeframe. For example,
`the background of the invention describes the use of advanced digital
`wireless communication protocols, such as CDMA. Ex. 1001, 1:64–66. In
`
`
`
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`17
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`IPR2014-00525
`Patent 8,380,244 B2
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`explaining how the multichannel digital transceiver provides access to
`physical communication links, the ’244 patent states that “[t]he physical
`links are preferably known wireless communication air interfaces using
`digital modulation techniques such as Code Division Multiple Access
`(CDMA) standard specified by IS-95.” Id. at 5:31–34 (emphasis added).
`In addition, we credit the testimony of Petitioner’s expert, Dr. Bims,
`
`that
`
`GSM and CDMA were both well-known ‘2G’ cellular network
`technologies, providing for primarily voice communications
`over wireless channels. GSM was developed by the European
`Telecommunications Standards Institute (ETSI) in the late
`1990's, and CDMA was first implemented by Qualcomm in the
`mid 1990's as TIA Interim Standard 95 (IS-95). Packet data
`overlays for GSM (GPRS) and CDMA (IS-657) were
`developed shortly thereafter to improve data communications
`using such wireless networks. GSM and CDMA matured into
`the UMTS and CDMA2000 Standards, and ultimately into the
`4G LTE popular today.
`Ex. 1002 ¶ 119. We also credit the testimony of Dr. Bims that one of
`ordinary skill in the art at the time of the claimed invention would have been
`aware of the problem of mobile devices frequently switching between
`networks and of solutions “to transparently maintain a communication
`session when handing off the session to a different type of physical
`connection.” Id. at ¶ 151.
`Additionally, our review of the GPRS Standard reveals that it is not as
`restrictive as Patent Owner’s expert, Dr. Stark, suggests (see e.g., Ex. 2005
`¶ 127 “GPRS uses time-division multiple access (“TDMA”), whereby a base
`station selects channels by assigning time slots to the subscriber unit, and
`different subscriber units transmit data at different times. This is in contrast
`
`
`
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`IPR2014-00525
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`to a CDMA system, where subscriber units use spreading codes to transmit
`data, and therefore can transmit data at the same time. A person of ordinary
`skill in the art would understand that these are fundamentally different
`approaches to multiple-access”). For example, the GPRS Standard
`recognizes that “additional functionalities not documented in this EN may be
`implemented . . . . [t]his additional functionality may be on a network-wide
`basis, or particular to one or a group of users.” Ex. 1005.01, 6. Moreover,
`the GPRS Standard states that “[t]he GPRS shall not prevent the user’s
`operation of other GSM services.” Id. at 13.
`Further, we are persuaded that the Petition and supporting evidence
`shows that the PDP context feature was not limited in its use to only GPRS.
`Indeed, Petitioner demonstrates convincingly the inclusion of the PDP
`context feature in a CDMA-based standard in arguing that “[t]he same PDP
`Context feature disclosed in the GPRS Standards is also included in the
`sub
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