Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 19
`Entered: September 17, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION and ZTE (USA) INC.,
`Petitioners,
`
`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
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 19
`Entered: September 17, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION and ZTE (USA) INC.,
`Petitioners,
`
`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
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`I. INTRODUCTION
`
`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”) pursuant to 35 U.S.C. §§ 311-319.1 See Paper 9 (“Pet.”).
`
`Patent Owner, IPR Licensing, Inc. (“Patent Owner”), filed a Preliminary
`
`Response to the Petition on July 2, 2014. See Paper 12 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
`
`partes review may not be instituted “unless . . . there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.”
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`
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`A. Petitioner’s Motion to Correct Clerical Errors
`
`Petitioner was notified by a Board Trial Paralegal in an email on
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`August 5, 2014, that the uploaded version of Corrected Exhibit 1010 was
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`truncated, and requested that Petitioner resubmit the complete exhibit. Upon
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`investigating, Petitioner determined that Corrected Exhibits 1010 and 1011,
`
`as filed, were mistakenly reversed, and that one citation in the Corrected
`
`Petition incorrectly listed Exhibit 1010 instead of Exhibit 1011. We
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`authorized Petitioner to file a Motion to Correct Clerical Errors, a Second
`
`Corrected Petition, and Second Corrected Exhibits 1010 and 1011, and
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`Petitioner complied. See Papers 14–16; Exs. 1010, 1011. In support of its
`
`Motion, Petitioner also submitted an affidavit from one of its attorney’s,
`
`
`1 Petitioner’s Motion to Correct Clerical Errors in the Petition and Resubmit
`Exhibits and Patent Owner’s opposition to such motion is discussed infra.
`See Papers 14–18.
`
`
`
`
`2
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`Case IPR2014-00525
`Patent 8,380,244 B2
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`Mr. Charles M. McMahon, in which the nature of the error and manner in
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`which the error occurred is explained. See Paper 15.
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`Patent Owner submitted its Opposition to Petitioner’s Motion to
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`Correct Clerical Errors and Resubmit Exhibits. See Paper 17. Specifically,
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`Patent Owner asserts that it would be prejudiced by Petitioner’s second
`
`opportunity to correct the Petition, because its Preliminary Response was
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`based on the “then currently pending petition and exhibits, which included
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`an incomplete copy of Exhibit 1011 (previously filed as Exhibit 1010).” Id.
`
`at 1. Patent Owner also argues that adding a portion of a document not
`
`previously part of the record constitutes new evidence. Id. at 2. Patent
`
`Owner also requested leave to file an Amended Preliminary Response
`
`should we grant Petitioner’s Motion. Id. In a Reply In Support of Its
`
`Motion to Correct Clerical Errors and Resubmit Exhibits, Petitioner counters
`
`that Patent Owner will not be prejudiced, as Patent Owner was on notice on
`
`March 21, 2014, when Petitioner filed and served a complete copy of the
`
`document (then-labeled Exhibit 1010) and Petition. See Paper 18.
`
`We grant Petitioner’s Motion to Correct Clerical Errors and Resubmit
`
`Exhibits, as correcting this error will clarify the record. Additionally,
`
`because the correct document was served on Patent Owner, and Patent
`
`Owner will have the opportunity to address this document in its Patent
`
`Owner Response, we find no prejudice to Patent Owner at this time
`
`necessitating amendment to its Preliminary Response.
`
`
`
`II. BACKGROUND
`
`Petitioner challenges the patentability of claims 1–8, 14–16, 19–29,
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`36–38, and 41–44 (i.e., “the challenged claims”) under 35 U.S.C. § 103(a).
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`Pet. 8. Upon consideration of the information presented in the Petition and
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`Preliminary Response, we determine that Petitioner has demonstrated that
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`there is a reasonable likelihood that the challenged claims are unpatentable.
`
`Accordingly, pursuant to 35 U.S.C. § 314, we institute an inter partes review
`
`as to claims 1–8, 14–16, 19–29, 36–38, and 41–44 of the ’244 patent on the
`
`ground identified in the Order of this decision.
`
`
`
`A. Related Proceedings
`
`
`
`Petitioner indicates that the ’244 patent is the subject of the following
`
`judicial matters: (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.
`
`
`
`B. 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. In an embodiment, a 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) as shown in Figure 6:
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`
`
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`4
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`Figure 6 is a block diagram illustrating the subscriber unit.
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`
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`Specifically, 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,
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`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 is
`
`being transmitted over the second communication path, the protocol
`
`converter initiates a spoofing function, which involves having the CDMA
`
`transceiver loop back synchronous data bits to spoof the terminal equipment
`
`so that it appears that “a sufficiently wide wireless communication link is
`
`continuously available.” Id. at 9:58–63, 10:29–59.
`
`[W]ireless 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
`
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`5
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`channel bandwidth 160 and makes it available for another
`transceiver and another subscriber unit 101.
`
`Id. at 10:34–43.
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`
`
`C. Illustrative Claim
`
`Petitioner challenges claims 1–8, 14–16, 19–29, 36–38, and 41–44 of
`
`the ’244 patent. Of the challenged claims, claims 1 and 23 are independent.
`
`Claim 1 is illustrative of the challenged claims, and is 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.
`
`
`D. The Prior Art
`
`Petitioner relies on the following prior art references (Pet. 4–6) and
`
`the declaration of Dr. Harry Bims (Ex. 1002):
`
`
`
`Jawanda
`
`References Patents/Printed
`Publications
`U.S. Patent No. 6,243,581 B1
`
`Lemiläinen U.S. Patent No. 6,681,259 B1
`
`
`Date
`
`Exhibit
`
`June 5, 2001
`(filed Dec. 11, 1998)
`Jan. 20, 2004
`(filed May 10, 1999)
`
`1003
`
`1004
`
`
`
`
`6
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`Patent 8,380,244 B2
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`GPRS
`Standards
`
`
`General Packet Radio Service
`Standards2
`GSM 02.60 v. 6.1.1 R97
`
`GSM 03.02 v. 6.1.0 R97
`
`GSM 03.60 v. 6.1.1 R97
`
`GSM 04.07 v. 6.1.0 R97
`
`GSM 04.08 v. 6.1.1 R97
`
`GSM 04.60 v. 6.1.0 R97
`
`GSM 04.64 v. 6.1.0 R97
`
`GSM 04.65 v. 6.1.0 R97
`
`GSM 05.01 v. 6.1.1 R97
`
`GSM 03.64 v. 6.1.0 R97
`
`
`
`Nov. 1998
`
`July 1998
`
`Aug. 1998
`
`July 1998
`
`Aug. 1998
`
`Aug. 1998
`
`July 1998
`
`July 1998
`
`July 1998
`
`Oct. 1998
`
`
`Draft
`UMTS
`Standards
`
`
`Draft UMTS Standards3
`
`3GPP TS 25.212 v.2.0.0
`
`3GPP TS 25.201 v.2.1.0
`
`3GPP TS 25.211 v.2.1.0
`
`3GPP TS 23.121 v.3.0.0
`
`June 1999
`
`June 1999
`
`June 1999
`
`July 1999
`
`1005
`
`1005.01
`
`1005.02
`
`1005.03
`
`1005.04
`
`1005.05
`
`1005.06
`
`1005.07
`
`1005.08
`
`1005.09
`
`1005.10
`
`1006
`
`1006.01
`
`1006.02
`
`1006.03
`
`1006.04
`
`
`2 GPRS standards refer to ten technical specifications for the General Packet
`Radio Service (“GPRS”) on Global System for Mobile Communications
`(“GSM”) networks allegedly published by the European
`Telecommunications Standards Institute on the date indicated. Pet. 6.
`3 Draft UMTS Standards refers to nine technical specifications produced by
`the 3rd Generation Partnership Project (“3GPP), which define portions of the
`Universal Mobile Telecommunications System (“UMTS”). Pet. 6–7.
`
`
`
`
`7
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`
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`June 1999
`
`July 1999
`
`April 1999
`
`June 1999
`
`June 1999
`
`Aug. 24-27, 1999
`
`
`1006.05
`
`1006.06
`
`1006.07
`
`1006.08
`
`1006.09
`
`1006.10
`
`Aug. 20, 1999
`
`1019
`
`
`3GPP TS 25.101 v.2.0.0
`
`3GPP TS 24.008 v.3.0.0
`
`3GPP TS 25.301 v.3.0.0
`
`3GPP TS 25.213 v.2.1.0
`
`3GPP TS 25.302 v.2.3.0
`
`3GPP TSG-SA Meeting
` #7 S2-99712
`Part 11: Wireless LAN
`Medium Access Control
`(MAC) and Physical Layer
`(PHY) Specifications, IEEE
`802.11 Standard, Institute of
`Electrical and Electronics
`Engineers.
`
`IEEE
`802.11
`Standard
`
`
`
`E. The Asserted Grounds
`
`Petitioner challenges claims 1–8, 14–16, 19–29, 36–38, and 41–44 of
`
`the ’244 patent based on the alleged grounds of unpatentability set forth in
`
`the table below. Pet. 8.
`
`Reference(s)
`
`Jawanda alone or in combination
`with the GPRS
`and IEEE 802.11 Standards
`
`Lemiläinen alone or in
`combination with the
`GPRS and IEEE 802.11
`Standards
`
`Basis
`
` § 103(a)
`
`Claims
`Challenged
`1–8, 14–16,
`
`19–29, 36–
`
`38, 41–44
`
`§ 103(a)
`
`1–8, 14–16,
`
`19–29, 36–
`
`38, 41–44
`
`
`
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`8
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`Case IPR2014-00525
`Patent 8,380,244 B2
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`Reference(s)
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`Draft UMTS Standards in
`combination with
`Lemiläinen
`
`Basis
`
`§ 103(a)
`
`Claims
`Challenged
`1–8, 14–16,
`
`19–29, 36–
`
`38, 41–44
`
`
`
`III. ANALYSIS
`
`A. Claim Interpretation
`
`
`
`In an inter partes review, “[a] claim in an unexpired patent shall be
`
`given its broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” 37 C.F.R. § 42.100(b); see Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,764, 48,766 (Aug. 14, 2012) (Claim
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`Construction); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
`
`Cir. 2004). Under the broadest reasonable interpretation standard, claim
`
`terms generally are 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. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). Any special definition for a claim term must be set forth in the
`
`specification “with reasonable clarity, deliberateness, and precision.” In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`
`definition, limitations are not to be read from the specification into the
`
`claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`Petitioner initially argues that we adopt its proposed claim
`
`constructions from the pending district court proceeding for the following
`
`four claim terms: “plurality of assigned physical channels,” “release,”
`
`“allocate,” and “deallocate.” Pet. 9–13. Pointing to claims 1 and 15,
`
`Petitioner asserts that the terms ‘“allocate’ and ‘assign’ must have different
`
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`9
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`meanings because the claims require physical channels to be both ‘assigned’
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`and ‘allocated.’” Id. at 10. Petitioner relies on the testimony of its
`
`declarant, Dr. Bims, who opines that:
`
`with the understanding that InterDigital’s construction simply
`implies that “assign” and “allocate” describe using a channel
`for data transmission and “release” and “deallocate” describe
`stopping use of a channel for data transmission . . .
`InterDigital’s construction and ZTE’s construction do not have
`appreciable distinctions to a person having ordinary skill in the
`art.
`
`Ex. 1002 ¶ 100.
`
`For the claim term “ʻmaintain a communication session with the
`
`cellular wireless network in an absence of the plurality of assigned physical
`
`channels,ʼ” (emphasis omitted) Petitioner takes the position that Patent
`
`Owner’s proposed construction from the related district court proceeding
`
`should be adopted. Pet. 13–15. Petitioner, however, does not proffer
`
`specific arguments directed to the interpretation of this claim term in the
`
`instant proceeding.
`
`Patent Owner disagrees generally with Petitioner’s proposed claim
`
`constructions for each of these limitations, arguing that “there is no need to
`
`address claim construction at this stage.” Prelim. Resp. 11.
`
`Having considered the positions of both Petitioner and Patent Owner,
`
`and the evidence presented, we see no need to construe expressly any of the
`
`terms in the challenged claims at this time.
`
`
`
`B. Obviousness Grounds Based On Jawanda
`
`We now turn to Petitioner’s asserted grounds of unpatentability and
`
`Patent Owner’s arguments in its preliminary response. In the analysis that
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`10
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`Patent 8,380,244 B2
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`follows, we may discuss facts as they have been presented thus far in this
`
`proceeding. Any inferences or conclusions drawn from those facts are
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`neither final nor dispositive of any issue on which we institute trial.
`
`Petitioner challenges claims 1–8, 14–16, 19–29, 36–38, and 41–44 as
`
`rendered obvious under 35 U.S.C. § 103(a) over Jawanda alone or in
`
`combination with the GPRS Standards and IEEE 802.11 Standard. Pet. 19–
`
`28. In support thereof, Petitioner provides claim charts that identify the
`
`disclosure in Jawanda alleged to describe the subject matter in claims 1–8,
`
`14–16, 19–29, 36–38, 41–44. Id. at 38–48. Petitioner further relies on the
`
`declaration of Dr. Bims to support the analysis advocated in the Petition.
`
`Ex. 1002.
`
`We have reviewed the parties’ contentions and supporting evidence.
`
`Given the evidence on this record, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertion that
`
`challenged claims 1–8, 14–16, 19–29, 36–38, and 41–44 are obvious over
`
`Jawanda, the GPRS Standards, and the IEEE 802.11 Standards, as discussed
`
`below.
`
`1. Overview of Jawanda (Ex. 1003)
`
`We begin our analysis with a general discussion of the asserted
`
`references. 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
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`executed by the data processing resources and the first and
`second wireless communication networks.
`
`Id. at 1:63–2:1.
`
`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.
`
`
`
`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 3:6–8. 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
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`maintaining the session between applications 90 and 91.” Id. at 5:35–39,
`
`Fig. 4.
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`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.
`
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`4. Claims 1 and 23
`
`a. Printed Publication Analysis
`
`As an initial matter, we address Patent Owner’s contention that
`
`Petitioner fails to establish that the GPRS Standards qualify as prior art
`
`printed publications within the meaning of 35 U.S.C. § 102. Prelim.
`
`Resp. 3. In the Petition, Petitioner relies on the priority date of September
`
`21, 1999, listed on the second page of the ’244 patent, and argues each of the
`
`documents referred to collectively as the GPRS Standards, qualify as prior
`
`art to the ’244 patent because they were available to the public on or before
`
`November 1998. Pet. 3–8. Petitioner asserts that “one of ordinary skill in
`
`the art would treat the sections for each standard as a single, cohesive
`
`reference because they collectively define a single standard, specifically
`
`reference one another, and are not meant to be considered in isolation.” Id.
`
`at 7 (citing Ex. 1002 ¶ 122).4 Reasoning that it would have been obvious to
`
`combine the selected documents, Petitioner asserts that a person of ordinary
`
`skill would have to read all the related sections of the standard together in
`
`order to build and operate a standard-compliant cellular communication
`
`system. Id. at 7–8.
`
`Disagreeing with the Petitioner’s characterization of the GPRS
`
`Standards as a printed publication for purposes of this Petition, Patent
`
`Owner points to sections GSM 3.60 v. 6.1.1 R97 (Ex. 1005.03) and GSM
`
`4.60 v.6.1.0 R97 ( Ex. 1005.06), as representing on their face ‘“working
`
`
`4 Petitioner characterizes the GPRS Standards as “a single, cohesive
`reference.” Because Petitioner relies on the GPRS Standards to supplement
`the teachings of the primary reference in arguing the unpatentability of the
`challenged claims based on obviousness grounds, we need not consider
`whether the GPRS Standards actually are a “single reference.”
`
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`drafts’ that are ‘not yet ready for public dissemination.’” Prelim. Resp. 29.
`
`In support thereof, Patent Owner explains that the notation “Public Enquiry”
`
`at the end of each document represents an event occurring prior to the event
`
`of editing and publication. Id. at 29–30. Patent Owner, thus, takes the
`
`position that Dr. Bims’ testimony, suggesting the document was publicly
`
`available as of the date listed on the document, is unsupported. Id. at 30–31
`
`(citing Ex. 1002 ¶¶ 120, 123).
`
`When determining whether to deny a ground of unpatentability on the
`
`basis that an asserted reference is not a prior art printed publication, we
`
`decide each case on the basis of its own facts. In particular, the
`
`determination of whether a given reference qualifies as a prior art printed
`
`publication involves a case-by-case inquiry into the facts and circumstances
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`surrounding the reference’s disclosure to members of the public. In re
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`Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is
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`whether the reference was made “sufficiently accessible to the public
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`interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158,
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`1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A
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`given reference is ‘publicly accessible’ upon a satisfactory showing that
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`such document has been disseminated or otherwise made available to the
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`extent that persons interested and ordinarily skilled in the subject matter or
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`art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v.
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`Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (quoting Wyer,
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`655 F.2d at 226).
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`The testimony of Dr. Bims, as presented by Petitioner, states that the
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`GPRS Standard was developed as an open standard, “available as of the
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`dates listed on the top of the specification,” and published up to four times a
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`Patent 8,380,244 B2
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`year. Ex. 1002 ¶ 120. Dr. Bims opines that “[a] person of ordinary skill in
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`the art working in the cellular industry would certainly be aware of the
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`publication and availability of the GSM, GPRS, and UMTS standards,
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`including the GPRS Standards and Draft UMTS Standards identified as
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`exhibits to the petition.” Id. Dr. Bims further explains how an interested
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`person “could even sign up for email distribution lists of the various working
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`groups developing the standards, who would receive notifications of newly
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`available documents.” Id. ¶ 121.
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`On this record, we credit Dr. Bims’ testimony that the GPRS
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`Standards were available to an interested member of the public as of the date
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`listed on the top of the specification. We do not find persuasive Patent
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`Owner’s argument suggesting the designation of “Public Enquiry” means
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`that the draft is in a pre-publication state. Moreover, the evidence proffered
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`by Patent Owner regarding the “Public Enquiry” notation (Exhibit 2002)
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`describes the European Telecommunications Standards Institute (“ETSI”)
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`standards-making-approval process on June 10, 2014, and does not establish
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`whether the documents in question were publicly available prior to the
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`critical date of September 21, 1999. More telling in this regard is the
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`copyright notification and date, i.e., “©European Telecommunications
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`Standards Institute 1998,” listed on each document, reasonably suggesting
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`publication prior to the critical date. See, e.g., Ex. 1005.01, 2.
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`Given the evidence on this record so far, we determine that Petitioner
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`has made a threshold showing establishing that the GPRS Standards are a
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`prior art printed publication within the meaning of 35 U.S.C. § 102, and are
`
`available as prior art, for the purposes of this decision, to demonstrate a
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`reasonable likelihood that the challenged claims are unpatentable under 35
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`U.S.C. § 103(a).
`
`b. Jawanda Analysis
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`Turning to the claims, Petitioner asserts that Jawanda discloses the
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`limitation of a dual-mode subscriber unit, as set forth in independent claims
`
`1 and 23, for communicating via either of a higher-speed wireless LAN
`
`network, or a lower-speed cellular network, such as GPRS. Pet. 20.
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`Petitioner argues that Jawanda discloses the limitation in claim 1 of “a
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`cellular transceiver configured to communicate with a cellular wireless
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`network via a plurality of assigned physical channels” and the corresponding
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`limitation in claim 23, which Petitioner refers to collectively as the “cellular
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`physical channels” limitation. Id. at 21. Specifically, Petitioner argues that
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`Jawanda describes a mobile phone capable of communicating with an
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`available cellular network like GPRS, and that one of ordinary skill in the art
`
`would have understood how the mobile phone includes a cellular transceiver
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`configured to communicate with a cellular network. Id. (citing Ex. 1003,
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`4:31–35, 4:47–53; Ex. 1002 ¶¶ 181–82). Noting that Jawanda does not
`
`disclose expressly the feature of “a plurality of physical channels,” Petitioner
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`submits that this teaching is inherent in Jawanda because “Jawanda
`
`expressly cites GPRS as one such available cellular network.” Id. For
`
`example, the GPRS Standards describes the grouping of eight basic physical
`
`data channels per mobile station 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.”
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`Id. at 22 (citing Ex. 1005.09 § 2; Ex. 1002 ¶ 184).
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`17
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`With regards to the limitation in claim 1 of “an IEEE 802.11
`
`transceiver configured to communicate with an IEEE 802.11 wireless local
`
`area network” and the related limitation in claim 23, Petitioner admits that
`
`Jawanda does not refer specifically to the IEEE802.11 Standard as an
`
`available protocol for the WLAN network. Id. at 27. Nonetheless,
`
`Petitioner argues, “it would have been obvious to one of ordinary skill in the
`
`art that the IEEE 802.11 Standard presented one available option for the
`
`WLAN network.” Id. at 20; see also id. at 26–28.
`
`
`
`Petitioner argues further that Jawanda discloses both the limitation in
`
`claim 1 of “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,” and the similar
`
`“maintaining the communication session” limitation of claim 23. Id. at 22–
`
`23. Referring to Figure 3 of Jawanda and the testimony of Dr. Bims,
`
`Petitioner explains how Jawanda meets this limitation via “application 90,
`
`running on mobile terminal 14, and communicating with application 91
`
`running on a remote terminal 24,” and the network access arbitrator selects
`
`between the cellular access interface or the wireless local areas network
`
`interface to transmit and receive datagrams during the communication
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`session. Id. at 23 (citing Ex. 1003, 3:66–4:19; Ex. 1002 ¶ 193). According
`
`to Petitioner, Jawanda describes how applications can continue to send or
`
`receive datagrams without interruption, by substituting the WLAN path for
`
`the cellular path to preserve the communication session. Id. (citing Ex.
`
`1003, 5:34–42, Fig. 4; Ex. 1002 ¶¶ 194, 195). Explaining further, Petitioner
`
`points to the teaching in Jawanda describing how “the WWAN connection
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`18
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`(cellular connection) may optionally be maintained or terminated” after the
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`handoff to the higher bandwidth WLAN connection. Id. at 24 (citing Ex.
`
`1003, 5:64–6:1, Fig. 4; Ex. 1002 ¶ 195).
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`
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`Patent Owner responds by arguing that the Petitioner’s contentions
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`fail to establish a prima facie case of obviousness. Prelim. Resp. 20–24. In
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`particular, Patent Owner asserts that while the Petitioner implies that
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`Jawanda discloses all elements of the challenged claims, the Petition appears
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`to concede that Jawanda does not disclose the IEEE 802.11 Standard as the
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`WLAN. Id. at 19–20. Patent Owner asserts that the Petition fails to
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`“identify any basis for combining Jawanda with specific elements in GPRS
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`or IEEE.802.11.” Id. at 20. Characterizing Petitioner’s proffered motivation
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`to combine the GPRS and IEEE 802 Standards with Jawanda as inadequate,
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`Patent Owner asserts that the Petition’s stated rationale is not sufficiently
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`specific, and does not provide an articulated reason with rational
`
`underpinnings to combine specific teachings in the references in a particular
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`manner, to arrive at the claimed invention. Id. at 25.
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`
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`We agree with Patent Owner that the Petition seems to concede that
`
`Jawanda does not expressly disclose the IEEE 802.11 Standard for the
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`WLAN. As such, we are not persuaded that Petitioner has shown
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`sufficiently that Jawanda alone discloses the required elements of the
`
`challenged claims. Nevertheless, we are persuaded by Petitioner’s argument
`
`that Jawanda suggests the use of the GPRS Standards as a wireless data
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`protocol, and the GPRS Standards describes the implementation details. See
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`Ex. 1003, 3:1–9. We also are persuaded by Petitioner’s argument that the
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`wireless local area network would use the known IEEE 802.11 Standard.
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`Pet. 17 (citing Ex. 1002 ¶¶ 46–48).
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`19
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`
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`Notwithstanding Patent Owner’s contentions, at this juncture in the
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`proceeding, we find persuasive Petitioner’s articulated reason to combine the
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`dual-mode subscriber unit of Jawanda with the wireless LAN described in
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`the IEEE 802.11 Standard, e.g., because the IEEE 802.11 Standard “was the
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`first publically available and internationally accepted wireless data protocol
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`for WLANs, and it was one of the few WLAN options available at the time.”
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`Pet. 27 (citing Ex. 1002 ¶¶ 138–150, 167). Relying on its declarant, Dr.
`
`Bims, Petitioner’s contention that it would have been obvious for a person of
`
`ordinary skill in the art to select the mobile phone in Jawanda based on
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`compliance with the then-existing, well-known GPRS Standards, is likewise
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`persuasive. Id. at 27 (citing Ex. 1002 ¶ 166). Patent Owner has not
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`explained adequately why combining the dual-mode subscriber unit of
`
`Jawanda with the wireless LAN described in the IEEE 802.11 Standard
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`would have been beyond the level of ordinary skill, or why one selecting the
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`mobile phone based on the GPRS Standards would not have been obvious to
`
`one of ordinary skill in the art.
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`5. Conclusion
`
`Given the evidence before us, we are persuaded sufficiently by
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`Petitioner’s arguments concerning the disclosure in Jawanda of a dual-mode
`
`subscriber unit for communicating via either a higher-speed WLAN network
`
`or a lower-speed cellular network, such as GPRS, and that the dual-mode
`
`subscriber unit maintains the communication session with the cellular
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`wireless network while the IEEE transceiver communicates with the WLAN.
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`Moreover, we are persuaded by Petitioner’s proffered reason to combine the
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`GPRS Standard and IEEE 802.11 Standard with the dual-mode subscriber
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`unit of Jawanda, based on compliance with well-known standards.
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`Accordingly, on this record, Petitioner has demonstrated a reasonable
`
`likelihood that it would prevail with respect to its contention that claims 1–8,
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`14–16, 19–29, 36–38, and 41–44 of the ’244 patent are obvious over
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`Jawanda, the GPRS Standards, and the IEEE 802.11 Standard.
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`
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`C. Obviousness Based On Lemiläinen
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`Petitioner challenges claims 1–8, 14–16, 19–29, 36–38, and 41–44 as
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`rendered obvious under 35 U.S.C. § 103(a) over Lemiläinen alone or in
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`combination with the GPRS Standards and IEEE 802.11 Standard. Pet. 28–
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`34. Petitioner points to the similarities between the teachings in Lemiläinen
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`and Jawand
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