Filed on behalf of: IPR LICENSING, INC.
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`Paper No. 12
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`
`By:
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`
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`Jonathan D. Link
`Latham & Watkins LLP
`555 11th Street, NW
`Washington, DC 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`E-mail: jonathan.link@lw.com
`
`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
`_____________
`
`Mailed: July 2, 2014
`
`
`Before Althea Wilburn, Trial Paralegal
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`ZTE’S PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,380,244
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`Paper No. 12
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`
`By:
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`
`
`Jonathan D. Link
`Latham & Watkins LLP
`555 11th Street, NW
`Washington, DC 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`E-mail: jonathan.link@lw.com
`
`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
`_____________
`
`Mailed: July 2, 2014
`
`
`Before Althea Wilburn, Trial Paralegal
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`ZTE’S PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,380,244
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`TABLE OF CONTENTS
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`Case IPR2014-00525
`Patent 8,380,244
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`Page
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`Introduction And Summary Of Preliminary Response ................................... 1
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`Legal Standards ............................................................................................... 5
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`I.
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`II.
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`III. Overview Of ’244 Patent ................................................................................. 7
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`IV. Overview Of The Prosecution History ............................................................ 8
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`V.
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`Claim Construction ........................................................................................ 11
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`VI. The 800 ITC Investigation ............................................................................. 12
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`VII. ZTE Has Failed To Make A Prima Facie Case Of Invalidity ....................... 13
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`A.
`
`The Petition Fails To Establish A Reasonable Likelihood That
`The Claims Of The ’244 Patent Would Have Been Obvious ............. 13
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`1.
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`2.
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`The Petition Fails To Demonstrate That The Challenged
`Claims Are Obvious In View Of Either Ground 1 Or 2 ........... 14
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`The Petition Fails To Demonstrate That Ground 3
`Renders Obvious The Challenged Claims ................................ 26
`
`B.
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`ZTE Has Failed To Establish That The “GPRS Standards” And
`The “Draft UMTS Standards” Are Prior Art ...................................... 28
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`1.
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`2.
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`The so-called “GPRS Standards” include unpublished
`drafts not intended for public dissemination............................. 29
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`The so-called “Draft UMTS Standards” ................................... 32
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`C.
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`The Asserted Grounds Are Redundant Of Lemiläinen Alone ............ 36
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`VIII. Conclusion ..................................................................................................... 38
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`TABLE OF AUTHORITIES
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`Case IPR2014-00525
`Patent 8,380,244
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`CASES
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ............................................................................... 5
`
`Page
`
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc.,
`IPR2013-00220 (Paper No. 8) (PTAB Aug. 15, 2013) ........................................ 25
`
`Ex parte Funai Elec. Co., Ltd.,
`Appeal No. 2010-003274, Reexamination 90/010,021 (BPAI Oct. 29, 2010) ..... 13
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ............................................................................................. 6, 16
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ........................................................................ 22, 23
`
`In re Kotzab,
`217 F. 3d 1365 (Fed. Cir. 2000) ........................................................... 6, 17, 19, 21
`
`In re Rouffet,
`149 F.3d 1350 (Fed. Cir. 1998) ...................................................................... 17, 18
`
`In re Sang-Su Lee,
`277 F.3d 1338 (Fed. Cir. 2002) ............................................................................. 18
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................... 6, 16, 25
`
`Oracle Corp. v. Clouding IP, LLC,
`IPR2013-00088 (Paper No. 13) (PTAB June 13, 2013) .................................. 4, 37
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ...................................................................... 22, 23
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) ............................................................................. 25
`
`Texas Instruments Inc. v. Cypress Semiconductor Corp.,
`90 F.3d 1558 (Fed. Cir. 1996) ............................................................................... 13
`
`
`
`ii
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`
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`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352, 1360 (Fed. Cir. 2011),
`cert. denied, 132 S. Ct. 1755 (2012) .............................................................. 22, 23
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`Case IPR2014-00525
`Patent 8,380,244
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`Zerto, Inc. v. EMC Israel Dev. Ctr., Ltd.,
`IPR2013-00458 (Paper No. 12) (PTAB Jan. 16, 2014) ....................... 6, 29, 31, 36
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 103 ....................................................................................... 6, 15, 26, 28
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`35 U.S.C. § 314 .......................................................................................................... 5
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`37 C.F.R. § 42.100 ..................................................................................................... 5
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`37 C.F.R. § 42.104 ................................................................................................... 15
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`37 C.F.R. § 42.8 ......................................................................................................... 1
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`77 Fed. Reg. 48756 (Aug. 14, 2012) ......................................................................... 5
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`iii
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`Case IPR2014-00525
`Patent 8,380,244
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`Pursuant to 37 C.F.R. § 42.8, Patent Owner IPR Licensing, Inc., respectfully
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`submits this preliminary response to the Petition for Inter Partes Review
`
`(“Petition”) of U.S. Patent No. 8,380,244 (hereinafter the “’244 patent”) filed by
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`ZTE Corporation and ZTE (USA) Inc. (collectively “ZTE,” also “Petitioner”) to
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`the U.S. Patent and Trademark Appeals Board (“PTAB”). For the reasons set forth
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`below, ZTE’s Petition should not be granted and should be dismissed in its
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`entirety.
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`I.
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`INTRODUCTION AND SUMMARY OF PRELIMINARY RESPONSE
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`ZTE’s Petition should be denied. ZTE has failed to meet its burden to
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`demonstrate a reasonable likelihood that it will prevail with respect to at least one
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`of the challenged claims of the ’244 patent. The analysis alleging obviousness of
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`the challenged claims is incomplete, cursory and legally deficient. ZTE also fails
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`to provide sufficient evidence to demonstrate that certain references are in fact
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`prior art. To draw attention away from these deficiencies, ZTE selectively cites to
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`the prosecution history of the ’244 patent in an effort to imply that the Petition
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`should be granted because the Examiner did not do his job. This inaccurate
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`characterization only confirms the deficiencies in ZTE’s Petition.
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`The Patent Owner, through this Preliminary Response, will demonstrate how
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`the Petition fails on at least three procedural grounds.
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`1
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`Patent 8,380,244
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`First, the Petition, which relies solely on grounds of obviousness, fails to
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`make out a prima facie case of obviousness. For example, the Petition asserts
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`obviousness based on combinations. However, the Petition never identifies any
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`specific combination of prior art elements that it asserts renders any challenged
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`claim obvious. Instead, for each so-called combination, the Petition simply asserts,
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`for several claim elements, that the element is disclosed in multiple references.
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`The Petition declares that, to the extent the element is not disclosed in one
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`reference, it may be found in another reference, but without any guidance as to
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`which element and which reference satisfies a particular, unknown deficiency. For
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`example, the Petition asserts that every element of all but one dependent claim is
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`disclosed by Lemiläinen. However, with the exception of that dependent claim, for
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`all of the challenged claims, the Petition asserts that to the extent certain elements
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`are not disclosed by Lemiläinen, they are disclosed by GPRS (ZTE Ex. 1005) or by
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`IEEE 802.11 (ZTE Ex. 1019). The Petition thus never specifies which elements
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`are to be chosen from Lemiläinen, and which from GPRS or IEEE 802.11. Similar
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`deficiencies undermine the combinations of Jawanda with GPRS and/or IEEE
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`802.11. The specific combination is left as an exercise for the reader – as is the
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`motivation to combine the specific elements in question to arrive at the challenged
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`claim.
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`2
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`The Petition also asserts single-reference obviousness, not anticipation, with
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`respect to Lemiläinen (ZTE Ex. 1004), and thus concedes that some elements are
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`not disclosed by the reference. However, the Petition never states which elements
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`are not disclosed, or why it would be obvious to modify Lemiläinen to include the
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`unidentified missing elements. The Petition thus does not make out a prima facie
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`case of obviousness based on Lemiläinen alone. Similar deficiencies undermine
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`single-reference obviousness in light of Jawanda as well (ZTE Ex. 1003).
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`Second, the Petition relies on two non-patent references, the so-called
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`“GPRS Standards” and “Draft UMTS Standards” (ZTE Ex. 1006), without
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`providing sufficient evidence that these collections of documents qualify as
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`publications as of the priority date of the ’244 patent. In fact, the documents are
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`far from being final, published, complete standards. They include incomplete
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`drafts as well as mere proposals. The Petition makes no attempt to explain away
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`the notations of “Draft,” “TBD,” “for further study,” and the like, much less
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`provide any basis to conclude such drafts and proposals were ready for public
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`dissemination, or even available to those outside the group working on the
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`standards, as of the dates listed on the reference. The Petition instead relies solely
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`on the opinion of Petitioner’s expert as evidence that these documents were
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`publicly available as of those dates. However, Petitioner’s expert has failed to
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`point to any support for this opinion, and has no relevant personal knowledge.
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`Third, the Petition asserts multiple redundant grounds. The Petition does
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`not assert that any reference anticipates, and relies solely on obviousness.
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`However, the Petition asserts that Lemiläinen discloses every element of the
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`claims, except for the element added by one dependent claim. Notably, the
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`Petition “expresses no tentativeness or lack of confidence in connection with
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`finding that any claim limitation is disclosed in” Lemiläinen. Oracle Corp. v.
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`Clouding IP, LLC, IPR2013-00088 (Paper No. 13) (PTAB June 13, 2013), at 5.
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`Nonetheless, the Petition also asserts Jawanda combined with GPRS and/or IEEE
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`802.11, and Draft UMTS combined with Lemiläinen and/or IEEE 802.11, as
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`further grounds for obviousness.1
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`Each of these grounds is redundant. The Petition does not “articulate any
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`meaningful distinction” between the various disclosures, such as Lemiläinen and
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`GPRS, “in terms of potential strengths and weaknesses in the application of each
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`disclosure” to the limitations of the challenged claims. Oracle, IPR2013-00088
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`(Paper No. 13), at 3. Indeed, the Petition does not even identify any element that is
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`missing from Lemiläinen and therefore must be found in GPRS or IEEE 802.11.
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`1
`This final ground is not included in a claim chart, and the descriptions in the
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`Petition of the combination are vague and inconsistent. It is therefore unclear what
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`combination the Petition is actually proposing for the Draft UMTS Standards.
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`Nor does the Petition indicate that Jawanda, for example, either alone, or in
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`combination with other references, is a preferred basis for invalidity as compared
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`to Lemiläinen. If Petitioner believed that some references or combinations have
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`“certain weaknesses” as compared to others, with regard to some claim limitations,
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`“it was incumbent upon [Petitioner] to identify those weaknesses so as to allow the
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`Board to recognize and weigh that factor in rendering the decision to institute
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`review.” Id. at 5.
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`II. LEGAL STANDARDS
`The institution of an inter partes review requires a showing by the Petitioner
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`that there is a “reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
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`In conducting its review, the Board will interpret claims using the broadest
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`reasonable interpretation as understood by one of ordinary skill in the art and
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`consistent with the disclosure. See 37 C.F.R. § 42.100(b); Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). There is a heavy
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`presumption that a claim term carries its ordinary and customary meaning. CCS
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`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
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`By statute, a patent is invalid as obvious only:
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`if the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a
`whole would have been obvious at the time the invention was
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`made to a person having ordinary skill in the art . . . to which
`said subject matter pertains.
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`See 35 U.S.C. § 103(a). An obviousness analysis must also consider: (1) the scope
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`and content of the prior art; (2) the differences between the prior art and the
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`claimed invention; (3) the level of ordinary skill in the art; and (4) objective
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`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966);
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406-407 (2007) (noting that these four
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`factors “continue to define the inquiry that controls”). Such an analysis must be
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`conducted on an element-by-element basis, comparing each of the claim elements
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`to the prior art. “[T]o establish obviousness based on a combination of the
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`elements disclosed in the prior art, there must be some motivation, suggestion or
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`teaching of the desirability of making the specific combination that was made by
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`the applicant.” In re Kotzab, 217 F. 3d 1365, 1369-70 (Fed. Cir. 2000).
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`An inter partes review may be requested only on the basis of prior art
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`consisting of patents or printed publications. 35 U.S.C. § 311(b). The Petitioner
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`must establish that the prior art on which it relies qualifies as a patent or printed
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`publication. See Zerto, Inc. v. EMC Israel Dev. Ctr., Ltd., IPR2013-00458 (Paper
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`No. 12) (PTAB Jan. 16, 2014), at 27. A “working draft that is not yet ready for
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`public dissemination” is not a printed publication, absent credible evidence that the
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`draft was available to interested members of the public. Id.
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`III. OVERVIEW OF ’244 PATENT
`The ’244 patent describes and claims specific improvements to a dual-mode
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`Case IPR2014-00525
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`subscriber unit. The Petition’s description of the invention as simply a dual-mode
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`device that can preferentially use a WLAN network when available is inaccurate,
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`and ignores these improvements.
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`One improvement is that the subscriber unit, rather than the base station,
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`decides which channels, and how many channels, it will use to transmit data at a
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`given time. This is clear from the description of “a subscriber unit of the present
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`invention,” as shown in Figure 6. ZTE Ex. 1001 (’244 patent) at 4:59-60. The
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`specification explains that this subscriber unit includes a “bandwidth management
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`function 134” which is “responsible for allocating and deallocating CDMA radio
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`channels as required.” Id. at 9:64-66. InterDigital’s proposed construction of
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`“plurality of assigned physical channels” in the Delaware district court recognizes
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`that this preferred embodiment requires the subscriber unit, not the base station, to
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`assign or allocate the physical channels. Petition at 10. ZTE’s proposed
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`construction, while incorrect, similarly recognizes that the subscriber unit, not the
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`base station, selects the physical channels to be used. Id. This feature is an
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`improvement over the prior art, in which the base station determined which
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`channels the subscriber unit would use to transmit data.
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`Another improvement is maintaining a logical connection between the
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`subscriber unit and the cellular network, in the absence of cellular physical
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`channels. That is, the logical connection is maintained when the cellular physical
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`channels are not in use. ZTE Ex. 1001 (’244 patent) at 4:11-18. This “frees
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`wireless channel bandwidth for use by other subscriber units.” Id. at 4:19-26. At
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`the same time, because the logical connection is maintained, the subscriber unit
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`avoids “the overhead associated with having to set up an end to end connection
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`each time that data needs to be transferred.” Id. That is, when the physical cellular
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`connection is needed again to send data, it can be set up more quickly, because the
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`logical connection is still in place.
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`IV. OVERVIEW OF THE PROSECUTION HISTORY
`The Petition provides a grossly inaccurate description of the prosecution
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`history, and the copy of the prosecution history that is attached to the Petition is
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`incomplete. In particular, the Petition omits any discussion of the Examiner
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`interview, during which the Patent Owner and Examiner discussed the Jawanda
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`reference, as well as a patent to Lemiläinen,2 and the applicant agreed to propose
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`2
`The Jawanda reference is the same one relied on by Petitioner. However,
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`the Lemilainen patent discussed in the prosecution history is not the same
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`Lemilainen patent that is relied on by Petitioner. The latter is cited prior art, but is
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`not discussed in the prosecution history.
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`an amendment. See Ex. 2001 (InterDigital Sections Prosecution History) at 33-34
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`(Reply to Office Action, April 20, 2012, discussing Examiner interview), and at 1-
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`2 (Summary of Interview, April 11, 2012). Petitioner omitted, from the copy of
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`the prosecution history attached to the petition, both the Interview Summary, and
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`the Reply to Office Action discussing the interview. The claims were allowed
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`shortly after the Reply.
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`It is clear from a review of the entire prosecution history that the claims
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`were allowed because the applicant successfully distinguished Jawanda and the
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`Lemiläinen patent during the Examiner interview. There is no basis for the
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`Petition’s suggestion that the Examiner “made a mistake in allowing the claims.”
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`Petition at 18. A summary of the relevant portions of the prosecution history
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`follow.
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`In an Office Action dated October 20, 2011, the Examiner rejected the
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`claims over references including U.S. Patent No. 6,243,581 to Jawanda. See Ex.
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`2001 (InterDigital Sections Prosecution History) at 5. The Examiner asserted that
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`Jawanda disclosed “maintaining a communication session,” and in doing so relied
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`on the identical disclosures on which Petitioner relies. Specifically, the Examiner
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`noted that Jawanda teaches “seamlessly handoff transfer of datagrams from
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`WWAN connection . . . to WLAN connection, WHILE maintaining WWAN
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`connection.” Id. at 8 (emphasis in original). The Examiner relied on this
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`disclosure as describing “maintain[ing] a communication session with the WWAN
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`. . . WHILE communicat[ing] datagrams (i.e. packet data) with the WLAN.” Id.
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`(capitalization in original). Petitioner relies on the identical disclosure as
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`disclosing maintaining a communication session: “the WWAN connection
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`(cellular connection) may optionally be maintained.” Petition at 24. The
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`Examiner, like Petitioner, also pointed to the fact that Jawanda describes
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`maintaining an “application session.” Ex. 2001 (InterDigital Sections Prosecution
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`History) at 8; Petition at 23. Notably, this Office Action was omitted from
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`Petitioner’s attached copy of the prosecution history.
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`Following the October 20, 2011 Office Action, the applicant initiated an
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`interview, which took place April 11, 2012. The prior art discussed during the
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`interview included the Jawanda reference, and a patent to Lemiläinen. Ex. 2001
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`(InterDigital Sections Prosecution History) at 1. The applicant agreed to “propose
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`an amendment in response to the interview on 4/11/2012.” Id. The Examiner’s
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`summary of the April 11, 2012 interview does not appear in the copy of the
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`prosecution history submitted by Petitioner.
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`On April 20, 2012, the applicant submitted a Reply, amending the claims
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`and discussing the interview. Ex. 2001 (InterDigital Sections Prosecution History)
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`at 21-37. This Reply does not appear in the copy of the prosecution history
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`submitted by Petitioner. In the Reply, the applicant noted that, “[a]s discussed
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`10
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`with the Examiner during the April 11, 2012 telephonic interview,” the prior art,
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`including “Lemiläinen and Jawanda, alone or in combination, fail to teach or
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`suggest ‘a processor configured to maintain a communication session with the
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`cellular wireless network in an absence of the plurality of assigned physical
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`channels while the IEEE 802.11 transceiver communicates packet data with the
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`IEEE 802.11 wireless local area network.’” Id. at 34-35.
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`In response to this Reply, on May 31, 2012, the Examiner issued a notice of
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`allowability. ZTE Ex. 1018, at 5.
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`V. CLAIM CONSTRUCTION
`As explained in detail below, the Petition does not provide sufficient
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`evidence of obviousness. The Petition fails to describe the differences between the
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`claims and the identified references. The Petition also fails to identify any specific
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`changes to the references, or any specific combination of elements, that allegedly
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`renders the challenged claims obvious. Nor does the Petition identify any
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`motivation to modify the references or to combine specific elements so as to yield
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`the claimed combination. The Petition thus fails to make a prima facie showing of
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`obviousness.
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`Therefore, while InterDigital disagrees with Petitioner’s proposed claim
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`constructions, there is no need to address claim construction at this stage. The
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`Petition should be dismissed because, absent a prima facie showing of
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`obviousness, the Petition cannot establish a reasonable likelihood that it would
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`prevail in showing that the challenged claims are obvious. This is so regardless of
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`the claim constructions applied.
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`VI. THE 800 ITC INVESTIGATION
`In order to bolster its inadequate obviousness position, discussed below,
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`Petitioner attempts to rely on the finding of an Administrative Law Judge (“ALJ”)
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`in a prior ITC investigation invalidating the parent patent of the ’244 patent, U.S.
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`Patent No. 7,616,970 (hereinafter the “’970 patent”).3 Petition at 1. This finding,
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`which is currently being appealed before the Federal Circuit, is of little or no
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`relevance. The ITC’s finding involved a different patent, with different claims,
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`and Petitioner has provided no support for its assertion that the challenged claims
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`are similar. Furthermore, even assuming that Petitioner could support its assertion
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`that the ’244 patent and ’970 patent include similar terms, the ALJ in the prior ITC
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`investigation applied different claim constructions from those being proposed and
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`applied by the Petitioner here. The ALJ’s finding should therefore be given no
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`weight.
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`3
`Petitioner has provided no evidence of the ALJ’s findings on the ’970 patent.
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`The portions of the ALJ’s Initial Determination relating to the ’970 patent were not
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`attached to the Petition, and the Commission Opinion that was attached provides
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`no specifics.
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`In any case, the ITC’s finding is not binding on the Board. It is well-
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`established that “decisions of the ITC involving patent issues have no preclusive
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`effect in other forums.” Texas Instruments Inc. v. Cypress Semiconductor Corp.,
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`90 F.3d 1558, 1569 (Fed. Cir. 1996). For example, the Board of Patent Appeals
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`and Interferences has declined to find claims invalid during reexamination, where
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`the ITC had previously determined that those same claims were invalid. Decision
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`on Appeal at 2, Ex parte Funai Elec. Co., Ltd., Appeal No. 2010-003274,
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`Reexamination 90/010,021 (BPAI Oct. 29, 2010) (ITC had invalidated claims 19
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`and 21, among others, and BPAI affirmed claims 19 and 21, among others).
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`VII. ZTE HAS FAILED TO MAKE A PRIMA FACIE CASE OF
`INVALIDITY
`A. The Petition Fails To Establish A Reasonable Likelihood That
`The Claims Of The ’244 Patent Would Have Been Obvious
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`The Petition alleges three separate grounds of obviousness:
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`Ground 1: Jawanda alone or in combination with the GPRS and IEEE
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`802.11 Standards (Petition at 19);
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`Ground 2: Lemiläinen alone or in combination with the GPRS and IEEE
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`802.11 Standards (Petition at 28-34); and
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`Ground 3: Draft UMTS standards in combination with Lemiläinen (Petition
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`at 34-37).
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`With respect to each of these obviousness arguments, the Petition fails to
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`(a) articulate the differences between the references and the challenged claims,
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`(b) provide a motivation for why one of ordinary skill in the art would have
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`modified or combined specific elements from each of the references to achieve the
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`claimed invention and (c) establish that each of the references is prior art.
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`Therefore, for at least these reasons, the Petition fails to set forth a prima facie case
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`of obviousness as required under KSR for any of its alleged grounds, and thus has
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`not demonstrated a reasonable likelihood of prevailing on this challenge.
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`1.
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`The Petition Fails To Demonstrate That The Challenged
`Claims Are Obvious In View Of Either Ground 1 Or 2
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`The Petition asserts that each of Claims 1-8, 14-16, 19-29, 36-38 and 41-44
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`is invalid for obviousness based on Ground 1 (Jawanda alone or in combination
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`with GPRS and IEEE 802.11) or on Ground 2 (Lemiläinen alone or in combination
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`with GPRS and IEEE 802.11). The Petition’s obviousness analysis fails to
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`properly set forth what modifications would be made to Jawanda alone or
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`Lemialinen alone in order to arrive at the claimed invention. Nor does the
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`obviousness analysis properly set forth an actual, specific combination of elements
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`selected from each of the references under either of these grounds. The Petition
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`also neglects to provide a motivation for a specific modification, or combination of
`
`the elements of the references, in Ground 1 or 2. Therefore, the Petition fails to
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`establish a prima facie case of obviousness for either combination.
`14
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`Case IPR2014-00525
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`Patent 8,380,244
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`The Petition Fails To Articulate The Differences
`Between Lemiläinen And The Claims
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`a.
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`For Ground 2, the Petition asserts that “Lemiläinen teaches and/or renders
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`obvious all of the challenged claims, either alone or in combination with the GPRS
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`and IEEE 802.11 Standards.” Petition at 28. As an initial matter, the Petition
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`asserts invalidity solely on the basis of obviousness. Nowhere does the Petition
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`assert that any reference anticipates any of the claims of the ’244 patent. The
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`Petition thus tacitly concedes that Lemiläinen, for example, fails to disclose
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`limitations of the claims, but, with the exception of the limitation added by
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`dependent claim 8, never identifies any of the missing limitations.
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`The obviousness analysis in the Petition is conclusory and does not articulate
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`a proper rationale to support its obviousness assertions as required by 37 C.F.R. §
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`42.104(b)(4). The Petition thus fails to present a prima facie case of obviousness.
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`By statute, a patent is invalid as obvious only:
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`if the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a
`whole would have been obvious at the time the invention was
`made to a person having ordinary skill in the art . . . to which
`said subject matter pertains.
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`See 35 U.S.C. § 103(a). An obviousness analysis must also consider: (1) the scope
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`and content of the prior art; (2) the differences between the prior art and the
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`claimed invention; (3) the level of ordinary skill in the art; and (4) objective
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`Case IPR2014-00525
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`Patent 8,380,244
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`evidence of nonobviousness. Graham, 383 U.S. at 17; KSR, 550 U.S. at 406–407
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`(noting that these four factors “continue to define the inquiry that controls”). Yet,
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`the Petition fails to identify the “differences between the prior art and the claims at
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`issue” as required above. See Graham, 383 U.S. at 17.
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`The Petition implies that Lemiläinen in fact discloses all elements of the
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`challenged claim. See, e.g., Petition at 28 (“Lemiläinen teaches and/or renders
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`obvious all of the challenged claims”). However, the Petition does not identify a
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`single difference between Lemiläinen and the claims of the ‘244 patent, with the
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`exception of dependent claim 8. See, e.g., Petition at 37-60 (claim charts for
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`Lemiläinen). The Petition therefore does not identify any basis for modifying
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`Lemiläinen to include any missing element (with the exception of claim 8) because
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`it does not concede that any element is missing. Nor does the Petition identify
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`combining Lemiläinen with specific elements disclosed in GPRS or IEEE 802.11.
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`It simply provides the Board with a “laundry list” of elements allegedly disclosed
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`in Lemiläinen, and in GPRS or IEEE 802.11, and leaves the Board to determine
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`which elements could be combined from which reference to yield the claimed
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`invention.
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`The lack of any particularized analysis is found throughout the Petition and
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`its expert declaration. For example, The Petition states that:
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`Patent 8,380,244
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`To the extent Lemiläinen lacks any particular implementation
`details required by the challenged claims, those details are
`taught in the GPRS Standards.
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`Petition at 31; see also 32 and 33. At best, this analysis improperly asserts that any
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`combination of the teachings of Lemiläinen, GPRS and IEEE802.11 (for Ground
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`2) could be combined to teach the challenged claims of the ‘244 patent. The
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`Petition’s claim charts are no better: for numerous elements, the claim charts
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`simply list disclosures from Lemiläinen, GPRS or IEEE 802.11 (for Ground 2),
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`without indicating which element from a particular reference Petitioner relies upon,
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`for a given claim element, to define the combination. Petition at 48-60.
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`By not articulating the differences between Lemiläinen and the claims, the
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`Petition fails to conduct an element-by-element comparison of the claim elements
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`to the references. “[T]o establish obviousness based on a combination of the
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`elements disclosed in the prior art, there must be some motivation, suggestion or
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`teaching of the desirability of making the specific combination that was made by
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`the applicant.” Kotzab, 217 F. 3d at 1370.4 Moreover, “particular findings must be
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`made as to the reason the skilled artisan, with no knowledge of the claimed
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`invention, would have selected these components for combination in the manner
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`claimed.” Id. at 1371; see also In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998)
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`4 Emphasis is added throughout this response, unless otherwise noted.
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`(“In other words, the examiner must show reasons that the skilled artisan,
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`confronted with the same problems as the inventor and with no knowledge of the
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`claimed invention, would select the elements from the cited prior art references for
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`combination in the manner claimed.”). Combining references requires a specific
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`factual inquiry that the Petition does not perform. In re Sang-Su Lee, 277 F.3d
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`1338, 1
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