Filed on behalf of Intellectual Ventures II LLC
`By: Herbert D. Hart III
`Sharon A. Hwang
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street
`Chicago, Illinois 60661
`Tel.: (312) 775-8000
`Fax: (312) 775-8100
`Email: hhart@mcandrews-ip.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET
`LM ERICSSON,
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`______________
`
`Case IPR2014-01195
`Patent No. 7,787,431
`______________
`
`PATENT OWNER’S OPPOSITION TO REQUEST FOR REHEARING
`
`
`
`
`By: Herbert D. Hart III
`Sharon A. Hwang
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street
`Chicago, Illinois 60661
`Tel.: (312) 775-8000
`Fax: (312) 775-8100
`Email: hhart@mcandrews-ip.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET
`LM ERICSSON,
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`______________
`
`Case IPR2014-01195
`Patent No. 7,787,431
`______________
`
`PATENT OWNER’S OPPOSITION TO REQUEST FOR REHEARING
`
`
`
`
`
`Patent Owner’s Opposition to Request for Rehearing
`IPR2014-01195
`
`
`The Board did not abuse its discretion in declining to institute inter partes
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`
`
`
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`review of claims 8-12 and 18-22 of U.S. Patent No. 7,787,431 (“the ‘431 patent”).
`
`Contrary to Petitioner’s argument, the Board did not “overlook” pages 9-12 of the
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`Petition. Petitioner simply failed to argue until its Request for Rehearing that
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`Yamaura allegedly teaches a core-band that is not greater than the smallest
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`operating channel bandwidth among all the possible spectral bands with which the
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`receiver is designed to operate. Indeed, nothing in pages 9-12 of the Petition
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`specifies where the disclosure of the missing claim element can be found in
`
`Yamaura. Moreover, nothing in the cited prior art teaches or suggests the
`
`inventions of the challenged claims. Petitioner’s Request for Rehearing should
`
`therefore be denied.
`
`A. The Abuse of Discretion Standard
`
`Under 37 CFR §42.71(c), the Board will review an institution decision under
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`an abuse of discretion standard. An abuse of discretion may be determined “if a
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`decision is based on an erroneous interpretation of law, if a factual finding is not
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`supported by substantial evidence, or if the decision represents an unreasonable
`
`judgment in weighing relevant factors.” TD Ameritrade v. Trading Techs. Int’l,
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`Inc., CBM2014-00137, Decision Denying Rehearing (Paper 34 at 3, February 2,
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`2015). None of these factors is present here.
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`Patent Owner’s Opposition to Request for Rehearing
`IPR2014-01195
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`B. The Petition is Silent as to the “Smallest Operating Bandwidth”
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`In accordance with 37 CFR §42.104(b)(4), a Petition “must specify where
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`each element of the claim is found in the prior art patents or printed publications
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`relied upon.” Here, the Petition included (1) an overview of the ‘431 patent, the
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`prosecution history, and the prior art (Petition, pp. 2-15); (2) a claim construction
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`analysis (Id. at 15-19); and (3) an explanation of how each claim limitation is met
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`by the combined references (Id. at 20-60). Pages 20-60 purport to “specify where
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`each element of the claim is found in the prior art patents,” and page 20 confirms
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`that “[t]he following analysis explains how each claim limitations is met by the
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`combined references.” That is an acknowledgement that the earlier discussions do
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`not. The Board recognizes that “it is improper to omit arguments from where they
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`are expected, based on explicit caption in the petition….” Microstrategy, Inc. v.
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`Zillow, Inc., IPR2013-00034, Decision Denying Request for Rehearing (Paper 23
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`at 3, April 22, 2013).
`
`C. Petitioner’s Request for Rehearing Improperly Introduces New
`Arguments Regarding “Smallest Operating Channel Bandwidth”
`As to challenged claims 8-12 and 18-22, Petitioner does not dispute that its
`
`claim analysis did not specify where “a core-band that is not greater than the
`
`smallest operating channel bandwidth among all the possible spectral bands with
`
`which the receiver is designed to operate” is found in Yamaura. Request at 1, 4, 8;
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`see also Petition at 21-24, 36. Petitioner instead argues that the Board (and Patent
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`2
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`Patent Owner’s Opposition to Request for Rehearing
`IPR2014-01195
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`Owner) “overlooked” pages 9-12 of the Petition, which purport to describe “the
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`general operation of the Yamaura reference at a 20 MHz transmission band”
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`Request at 1.
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`As a threshold matter, pages 9-12 of the Petition do not explain how the
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`quotations, citations, and figures from Yamaura relate to the claims, as required
`
`under 37 CFR §42.104(b)(4). Instead, pages 9-12 provide a general description of
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`Yamaura without reference to any claim language.
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`More importantly, the Request is the first time Petitioner has argued that (1)
`
`Yamaura only teaches a 20MHz operating channel, and (2) 20MHz is “the smallest
`
`operating channel bandwidth among all the possible spectral bands with which the
`
`receiver is designed to operate” in Yamaura. Only from these new arguments can
`
`Petitioner now conclude that Yamaura discloses a core-band having a frequency
`
`segment that is “not greater” than 20MHz, the only operating channel.
`
`Pages 9-12 do not, moreover, specify where Yamaura discloses any
`
`“smallest operating channel bandwidth,” let alone a core-band having “a frequency
`
`segment that is not greater than the smallest operating channel bandwidth among
`
`all the possible spectral bands with which the receiver is designed to operate.”
`
`And nowhere in pages 9-12 does Petitioner allege that 20MHz is “the smallest
`
`operating channel bandwidth among all the possible spectral bands with which the
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`receiver is designed to operate” in Yamaura. Petitioner’s mere reference to “20
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`3
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`Patent Owner’s Opposition to Request for Rehearing
`IPR2014-01195
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`MHz” on page 10 is plainly not a substitute for a specific argument that 20 MHz is
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`Yamaura’s smallest operating channel. The Board could not have overlooked an
`
`argument regarding “smallest operating channel bandwidth” that was never made.
`
`See Sony Corp. of Am. v. Network-1 Security Solutions, Inc., IPR2013-00092,
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`Decision Denying Request for Rehearing (Paper 24 at 4, July 2, 2013).
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`Further, any alleged failure of Yamaura to expressly identify bandwidths
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`other than 20 MHz does not mean either that 20MHz is the smallest operating
`
`channel bandwidth or that 20 MHz is Yamaura’s only possible spectral band. It is
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`just as likely that 20 MHz is the largest possible operating channel bandwidth, or
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`that 20 MHz is simply one operating channel bandwidth of the Yamaura receiver.
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`There is therefore no reason to presume that 20MHz is the smallest operating
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`channel bandwidth possible in Yamaura, and there is no evidence in the record to
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`support such a novel proposition.
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`D. Petitioner’s New Argument Contradicts Its Analysis of Claim 1
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`Importantly, Petitioner’s new argument as to claims 8-12 and 18-22 that
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`Yamaura discloses a core-band “that is not greater than the smallest operating
`
`channel bandwidth among all the possible spectral bands with which the receiver is
`
`designed to operate” is belied by other arguments in its Petition. For example,
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`each of challenged claims 1 and 2 has the express limitation “wherein the core-
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`band is substantially not wider than a smallest possible operating channel
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`4
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`Patent Owner’s Opposition to Request for Rehearing
`IPR2014-01195
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`bandwidth of the system.” Exhibit 1001 at 9:51-53. In its analysis of claims 1 and
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`2, Petitioner relied on a combination of Yamaura and Beta – not Yamaura alone –
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`as allegedly disclosing that express limitation. Petition at 43-44, 58.
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`E. The Board Did Not Abuse Its Discretion in Declining to Institute
`Trial on Claims 8-12 and 18-22
`It is Petitioner’s burden to demonstrate a reasonable likelihood that it can
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`prevail with respect to each ground of the petition. Yet the Petition failed to
`
`demonstrate that Yamaura teaches a core-band “that is not greater than the smallest
`
`operating channel bandwidth among all the possible spectral bands with which the
`
`receiver is designed to operate,” a limitation that Petitioner itself agreed was part
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`of the recited “core-band.” Petition at 17. Where a Petitioner completely fails to
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`address a claim element in its Petition, it is not an abuse of discretion for the Board
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`to deny institution. See Google v. EveryMD, IPR2014-000347, Decision Denying
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`Institution (Paper 9 at 19, May 22, 2014), stating that a petitioner should not
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`“submit[] a repository of all the information that a judge could possibly consider,
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`and [should] instead focus on concise, well organized, easy-to-follow arguments
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`supported by readily identifiable evidence of record.” (quoting Patent Office Trial
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`Guide, 77 Fed. Reg. at 48,763 (Aug. 14, 2012)).
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`Petitioner’s Request for Rehearing should be denied.
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`Patent Owner’s Opposition to Request for Rehearing
`IPR2014-01195
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`Dated: March 11, 2015
`
`
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`
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`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`
`
`
`6
`
`Respectfully submitted,
`
`/Herbert D. Hart III/
`Herbert D. Hart III
`Reg. No. 30,063
`Lead Counsel for Patent Owner
`INTELLECTUAL VENTURES II LLC
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`Patent Owner’s Opposition to Request for Rehearing
`IPR2014-01195
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`CERTIFICATE OF SERVICE
`
`I hereby certify that true and correct copies of the foregoing Patent
`
`Owner’s Opposition to Request for Rehearing was served on March 11, 2015,
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`via E-Mail to counsel for Petitioners at the following:
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`
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`
`
`
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`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`
`
`
`
`J. Andrew Lowes
`andrew.lowes.ipr@haynesboone.com
`David M. O’Dell
`david.odell.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`
`
`
`/Sharon A. Hwang/
`Sharon A. Hwang
`Reg. No. 39,717
`Back-up Counsel for Patent Owner
`INTELLECTUAL VENTURES II LLC
`
`Date: March 11, 2015
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