IPR2014-01195, Paper No.36
`November 23, 2015
`
`trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`____________
`
`Held: September 10, 2015
`____________
`
`
`
`
`
`BEFORE: JAMESON LEE, JUSTIN BUSCH, and J. JOHN
`LEE, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday,
`September 10, 2015, commencing at 2:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`November 23, 2015
`
`trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`____________
`
`Held: September 10, 2015
`____________
`
`
`
`
`
`BEFORE: JAMESON LEE, JUSTIN BUSCH, and J. JOHN
`LEE, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday,
`September 10, 2015, commencing at 2:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`J. ANDREW LOWES, ESQ.
`
`
`CLINT WILKINS, ESQ.
`
`
`Haynes and Boone, LLP
`
`
`2505 North Plano Road, Suite 4000
`
`
`Richardson, Texas 75082-4101
`
`
`and
`
`
`
`
`
`
`BEN WESTOVER, ESQ.
`Ericsson
`6300 Legacy Drive
`Plano, Texas 75024
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`HERBERT D. HART, III, ESQ.
`SHARON A. HWANG, ESQ.
`RAJENDRA A. CHIPLUNKAR, ESQ.
`McAndrews Held & Malloy LTD
`500 West Madison Street, 34th Floor
`Chicago, Illinois 60661
`
`and
`
`JAMES R. HIETALA, ESQ.
`Intellectual Ventures
`3150 139th Avenue, S.E.
`Bellevue, Washington 98005
`
`
`
`P R O C E E D I N G S
`
` 2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1
`2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`
`- - - - -
`JUDGE BUSCH: Please be seated. Good afternoon,
`everyone, and welcome. This afternoon, we have the oral
`argument for IPR2014-01195, captioned Ericsson, Incorporated
`and Telefonaktiebolaget LM Ericsson versus Intellectual
`Ventures II LLC. I'm Judge Justin Busch, joining you remotely
`from Detroit, and in the room with you are Judges Jameson Lee
`and John Lee.
`Let's start with the parties' appearances, please. Who is
`here for Petitioner?
`MR. LOWES: I'm Andrew Lowes, lead counsel for
`Petitioner, Ericsson.
`MR. WILKINS: Clint Wilkins, backup counsel for
`Ericsson.
`JUDGE BUSCH: And please speak into the
`microphone.
`MR. LOWES: Sorry about that, Your Honor, I'm
`Andrew Lowes, lead counsel for Petitioner, Ericsson, and with
`me at counsel table is Clint Wilkins, backup counsel for Ericsson.
`Then also joining us today is in-house counsel for Ericsson, Ben
`Westover.
`JUDGE BUSCH: Thank you.
`And for Patent Owner?
`MR. HART: Good afternoon, Your Honors, my name
`is Herb Hart, lead counsel for Patent Owner, and with me today
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 3
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`are my backup counsel, Sharon Hwang, who will be presenting
`our argument, and our backup counsel Rajendra Chiplunkar, who
`will be assisting.
`JUDGE BUSCH: Thank you, and welcome both, again.
`You're aware of the procedure for today's hearing that we set out
`in our trial order, but just to remind you of a couple of issues.
`Each party will have 45 minutes of total time to present your
`arguments, and please keep in mind, as already occurred, that I
`won't be able to hear you or see you if you're not at the podium. I
`also won't be able to see what you're presenting on screen if
`you're using one, so when you refer to an exhibit, on the screen,
`please state for the record the exhibit and page number or for
`demonstratives the slide number you're referring to. It's also
`important for clarity in the transcript.
`And as I said, with the microphones, please make sure
`you're pretty close to them if you are trying to make any sort of
`statement.
`As you also know, the Petitioner has the burden and
`goes first, and may reserve time for rebuttal at the start of your
`argument, and then Patent Owner will have the opportunity to
`present its response.
`Are there any questions from Petitioner's counsel?
`MR. LOWES: No, Your Honor.
`JUDGE BUSCH: And Patent Owner?
`MR. HART: No, Your Honor.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 4
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`
`JUDGE BUSCH: Okay, thank you.
`Mr. Lowes, would you like to reserve any time for
`rebuttal?
`MR. LOWES: Yes, Your Honor, I would like to
`reserve 10 minutes for rebuttal after Patent Owner's presentation.
`JUDGE BUSCH: Great, thank you, and you may begin
`when you're ready.
`MR. LOWES: All right. Well, thank you, and good
`afternoon. As I already said, I'm Andrew Lowes, I represent the
`Petitioner, Ericsson, in this matter, and for my presentation today,
`I would like to start with just a brief overview of claim 1 of the
`'431 patent, followed by a short summary of the primary
`references, then I will go through additional evidence and
`arguments from the record, some of which has occurred since the
`institution decision that further supports and confirms the Board's
`decision that claims 1 and 2 are unpatentable, and that that
`decision should remain unchanged.
`If we could, please, move to slide 5 of Exhibit 1040.
`This is claim 1, reproduced on the left, and as you can see, claim
`1 describes a method of establishing a downlink communication
`session from a base station to a mobile. The claim in the
`preamble sets forth that it's a variable bandwidth wireless
`communication system communicating under different
`communication schemes that each have a different bandwidth.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 5
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`
`The preamble also says that it's a process performed by
`a base station of generating an information-bearing signal for
`wireless transmission. So, this is operation at the base station, not
`at a mobile, but at the base station. And then the claim has three
`primary features. The first, as shown on slide 5, is that the claim
`elements require a variable bandwidth multi-subcarrier
`communication system. This is done by scaling or grouping of
`those subcarriers. Within those groups is a defined subset called
`a core-band, which is the second feature, and those subcarriers
`carry control information, and other signaling. And then there's a
`third aspect, which is the primary preamble, which is the
`information that's actually transmitted from the base station to the
`mobile and it defines specific features of that preamble.
`If we could, now, move to slide 9 of Exhibit 1040.
`Here again is claim 1, reproduced on the left-hand side and the
`circled claim language here, circled in blue, is the claim language
`that's in dispute between the parties. Specifically, after
`institution, the Patent Owner in their response has raised the need
`to construe three claim elements, attempting to read limitations
`into the specification to narrow those to avoid the prior art
`references that are in the proceeding.
`Those elements are, (a), substantially not wider than,
`(b), radio control and operation signaling, and (c), sufficient for
`basic radio operation, and those features are underlined here on
`the bottom right in the exploded portion of the claim.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 6
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`
`In addition, there is an issue concerning application of
`the different communication schemes, element (d), and finally,
`reasons to combine the references, and I'll address those in order
`as we go through the presentation.
`If we could go to slide 10 of Exhibit 1040. Here again
`is the claim language of claim 1 that's in dispute between the
`parties, along with the three primary references, or the three
`references demonstrating the elements of the claim.
`With respect to the references, the Li reference is the
`primary reference, it demonstrates and discloses a variable
`bandwidth system that utilizes subcarrier grouping to define
`various bandwidths of communication in one form, it can set a
`subset of subcarriers, and those are defined as a basic cluster, and
`then the patent recognizes that if you need more bandwidth to
`communicate, it can also designate auxiliary clusters to increase
`that bandwidth.
`Now, Li is all about subcarrier allocation, but it does
`recognize that in cellular communication systems, that downlink
`control channels are known and needed, but it doesn't provide any
`disclosure of what those would be or how they would be
`implemented with the system.
`So, the Yamaura reference is all about how downlink
`control is established and created, and you can see here, this
`figure, the black text is actually figure 17 from the Yamaura
`reference, it's been annotated by Dr. Haas to show the features of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 7
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`the Li reference here, and how that would be combined with the
`Yamaura reference.
`Turning to the UTRA reference, also called Beta in our
`filings, UTRA is simply implementation details about an OFDM
`system and provides information about the minimum operating
`channel bandwidth. Li doesn't have information, or doesn't
`define what the minimum channel bandwidth would be, and
`UTRA provides that and says that would be 100 kilohertz. So,
`those are the references being utilized to demonstrate these claim
`elements.
`Turning to the claim, there's a core-band, including a
`plurality of subcarrier groups, substantially centered at an
`operating frequency, as can be seen in the drawing, Yamaura
`discloses those features. The subcarrier groupings here they're
`showing just subcarrier 1 and 2, but Yamaura makes clear that it
`can be any number of subcarriers to carry out their control
`channel or core-band.
`The claim says that the subcarriers need to be centered
`at the operating center frequency of the different communication
`schemes. That is taught through the Li reference, which provides
`a set of basic clusters as one communication scheme having one
`bandwidth and then adding to that auxiliary clusters which
`increases the bandwidth into a second communication scheme.
`The third element is -- second element is --
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 8
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`
`JUDGE BUSCH: Counsel, with respect to that aspect,
`is it your argument that it is the knowledge of an artisan in
`combining those that would result in the broadcast channel still --
`I'm sorry, in the core-band still being centered within all of those
`different operating frequencies?
`MR. LOWES: Yes, Your Honor, it is. It's Yamaura
`discloses that you want to have the control channels centered, and
`that to accomplish that, you would organize the clusters around
`that centered channel.
`Moving on to what's listed as element (b), there's a
`broadcast channel that carries radio and control -- radio control
`and operations signaling, that's disclosed by Yamaura, and its
`down-link disclosure, and where the next element is where the
`core-band is substantially not wider than its smallest possible
`operating channel bandwidth of the system. Here, this is the
`combination UTRA defines the smallest operating channel
`bandwidth as being 10 kilohertz. Yamaura says that you want the
`control band to be narrow bandwidth, and it would be obvious to
`utilize that in a narrow bandwidth, the smallest possible operating
`channel bandwidth using 100 kilohertz, which is also 24
`subcarriers.
`Turning now to the last element --
`JUDGE JAMESON LEE: Can you repeat that again, I
`want to pay special attention. How does the art meet that
`limitation, substantially not wider?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 9
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`
`MR. LOWES: The UTRA reference is combined with
`Li. Li doesn't define what is the smallest operating channel, and
`the UTRA reference, the Li reference doesn't define that. UTRA
`has specific teachings that it's going to be 100 kilohertz and it's
`going to utilize 24 subcarriers.
`So, when UTRA is combined with Li, the smallest
`operating channel bandwidth is going to be 100 kilohertz, the 24
`subcarriers. But Yamaura says that you want the control band to
`be as small as possible, so the smallest possible operating channel
`bandwidth is 100 kilohertz, and therefore the core-band would be
`100 kilohertz, which is your control signaling.
`Okay, returning to the last feature of the claim, wherein
`the information-bearing signal has a primary preamble sufficient
`for basic radio operation, that again is going to be the Yamaura
`reference, and its broadcast preamble. So, that is how the claim
`elements are mapped to the prior art.
`If I could go to the next slide. Turning to slide 11 of
`Exhibit 1040, these are the claim elements that were initially
`raised in the petition and discussed in the Patent Owner's
`preliminary response. As noted by the Board in the institution
`decision, there's really not much material difference between the
`parties' positions, so we're not going to discuss that further.
`Next slide, slide 12. These are the claim elements that
`are in dispute between the parties, and the claim term here is
`"substantially not wider," a broadcast channel carrying radio
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 10
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`control and operation signaling, and a primary preamble
`sufficient for basic radio operation.
`And overall, the Patent Owner has identified certain
`elements from the specification that they would like to read into
`the claims that aren't found in these elements, and as we'll
`discuss, some of those features are not even in the patent itself,
`much less there's no requirement that under a broadest reasonable
`interpretation that those elements should be read into the claims.
`Next slide, slide 13 of Exhibit 1040. With respect to the
`core-band that's substantially not wider than a smallest possible
`operating channel bandwidth of the system, it's our position that
`there's really no construction necessary. "Not wider" means just
`that, and substantially is just a term of approximation. The prior
`art before the Board is that the core-band will be equal to the
`smallest operating channel bandwidth, so there's really no
`construction necessary.
`If a construction is needed, then it should at least follow
`the file history of what the Patent Owner or the applicant made
`statements to the Patent Office, and it should be that the
`core-band should be narrower than or equal to in width within a
`degree of accuracy that accounts for process and operational
`tolerances.
`Next slide.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
` 11
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`
`JUDGE JOHN LEE: Before you move on, counsel,
`what is the intrinsic evidence that you're aware of that supports
`your construction?
`MR. LOWES: The intrinsic evidence is the statements
`in the patent itself, as well as the provisional application that was
`incorporated by reference, as well as the statements made in the
`file history.
`JUDGE JOHN LEE: Right, and of those, which would
`you say is the most compelling for your proposed construction?
`MR. LOWES: I would say that both are very important,
`because they're embodiments that clearly disclose equal, but I
`think the most compelling are the statements that they made to
`the examiner during prosecution.
`Next slide, please. So, with reference to what's in the
`patent itself, turning to the '431, we're on slide 14 here. Column
`4, line 67, it says, "a core-band ... is defined as the frequency
`segment that is not greater than the smallest operating channel
`bandwidth." Clearly "not greater than" includes "equal."
`In addition, the provisional application that was
`incorporated into the '431 patent and was cited in our reply
`demonstrates that "the core-band ... is defined as the frequency
`segment that must be less than or equal to the smallest operating
`channel bandwidth."
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
` 12
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`
`So, here in the actual disclosure of the patent, you have
`embodiments that disclose "equal to" in terms of the core-band
`relationship.
`Next slide, slide 15. With respect to the statements
`made during prosecution, it's really, it's been defined or
`designated as a term of approximation, and in Patent Owner's
`briefing, as they brought this issue forward, they said that
`"substantially" is either a term of approximation or a term of
`magnitude. Now, they made no reference to the file history when
`they brought that argument forward, but reading the file history,
`you can see that that was actually discussed.
`So, here, the applicants, when addressed with this issue
`after an interview with the examiner, the examiner raised the
`issue of "substantially" might be indefinite. They argued that the
`applicants’ use of "substantially" is definite under Section 112,
`second paragraph, "due at least to limitations of the English
`language as well as real-world technological limitations."
`Their example, "for instance, applicants' phrase 'a
`core-band ... substantially centered at an operating center
`frequency,' and similar" -- and similar uses of substantially --
`"balance clarity with the fact that real-world systems have process
`and operational tolerances whereby a core-band may not be
`exactly centered at an operating center frequency."
`So, here they're making it clear that this is about
`exactness, or approximation. So, the word "substantially" is
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 13
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`being used as an approximation term. It's not being used as a
`magnitude, as the Patent Owner is suggesting.
`JUDGE JOHN LEE: And this is the evidence you
`referred to just a moment ago in responding to my question?
`MR. LOWES: Yes, Your Honor, it is.
`Judge Lee?
`JUDGE JAMESON LEE: Do you agree that at least it
`has the potential of referring to magnitude?
`MR. LOWES: The word "substantially?"
`JUDGE JAMESON LEE: Um-hmm.
`MR. LOWES: Yes, it does have that potential, but it's a
`question of is there anything clarifying that in the record, and I
`believe this is clarifying that issue.
`JUDGE JAMESON LEE: So, this is sort of one of
`those words in the English language that kind of mean opposite
`things, depending on context. Like buckle is one such word, you
`know, something buckles means infirmity, but if you buckle up, it
`means you're securing yourself. I just know that there's a class of
`words that can go both ways, the opposite ways.
`MR. LOWES: Yes, Your Honor.
`JUDGE JAMESON LEE: Is this one of those?
`MR. LOWES: Yes, I believe it is, and I believe the
`examiner, that's what the examiner was indicating, that there
`needed to be clarity for that, and the applicants provided that in
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 14
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`their response as to how that -- the word "substantially" is being
`used in the claims.
`JUDGE BUSCH: If we go with Patent Owner's
`proposed construction, is that determinative of your petition?
`MR. LOWES: That the "substantially not wider than"
`is much -- yes, I believe it would be.
`JUDGE BUSCH: Okay, thank you.
`MR. LOWES: All right, next slide. So, we've kind of
`covered this, but why is Petitioner's position wrong? They're
`saying that the "substantially not wider" means significantly not
`wider. For example, significantly narrower than the smallest
`possible operating channel bandwidth. Again, there are
`embodiments disclosed in the patent, as well as the provisional, in
`the intrinsic record, that talk about less than or equal to. There
`has been no express disclaimer of that. There's been nothing to
`suggest that they're not encompassing that within the definition of
`the claims.
`So, they're trying to read out embodiments by reading in
`narrowing limitations into the claims. Secondarily, as we just
`looked at the file history, the issue was addressed during
`prosecution, and they picked one way for the word
`"substantially," it's a word of approximation, meaning not exactly
`centered, but close to centered. That's exactly what you have
`here. And third, even under their own definition, the patent is not
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 15
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`clear, it just creates more ambiguity within the patent as to what
`is meant by "substantially not wider."
`Next slide.
`JUDGE JAMESON LEE: What if, hypothetically, you
`disregard the prosecution history remarks and you just look at the
`disclosure, what kind of examples do they have? Do they have
`examples that are simply very, very close, or do they have
`examples that are substantially less? What are all of the examples
`disclosed in the spec? Without regard to their representation to
`the examiner?
`MR. LOWES: Right. So, we've gone through at least
`two of those, one of them is that the core-band is not greater than,
`so that it's equal. It also in the provisional says that it's equal to
`and not less than, and then the only numeric value that they give
`is that the core-band is four megahertz and the operating channel
`bandwidth is five. And, so, that's the only numeric values that
`they have. We have no idea of what's simply less than or what's
`substantially -- how that would be realized. And I think the same
`is true for "substantially centered."
`JUDGE JAMESON LEE: Well, even if it means
`substantially the same, is there an objective standard to determine
`how different must it be before it gets out of that scope?
`MR. LOWES: I don't believe there is, and certainly
`that's why the word perhaps should not have been used in the
`claim, but that's what the Patent Owner picked, or the applicant,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 16
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`and there is no standard set forth in the patent as to what is
`substantially or what's not, what is an exact. We have their
`statements in the file history about what that means, which I think
`adds clarity, but there isn't anything in the patent itself that
`provides clarity for that term.
`JUDGE JOHN LEE: But wasn't there expert evidence
`about whether or not the difference between four and five would
`be substantially less or substantially narrower?
`MR. LOWES: Yes, the Patent Owner offered expert
`testimony that four is substantially less than five, and then when
`we took the deposition of the expert, we said, well, what about
`4.1, simply adding 0.1 to that? And the expert said he couldn't
`tell, he wouldn't know what that would mean and he wouldn't
`take a position of whether that's substantially less than or
`substantially not greater than or not.
`JUDGE JOHN LEE: But he was sure that four was
`significantly less?
`MR. LOWES: Correct. And on the same token, our
`expert has said that substantially not wider than, two equal terms
`would be substantially not wider than each other.
`I think we've gone through this, so let's skip to slide 19.
`Slide 19, Judge Lee, I believe the testimony you're talking about
`is here on slide 19, when we were talking about Patent Owner's
`expert, Dr. Zeger, about whether 4.5 is substantially not wider
`than 5, and he couldn't tell us that.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 17
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`
`So --
`JUDGE BUSCH: So, do you believe this is indefinite?
`MR. LOWES: Well, there's no exact example provided,
`and the file history makes it clear that it's a term of magnitude.
`So, whether or not something is substantially not wider isn't a
`question we have to address today, because we're offering that the
`core-band equals the smallest operating channel bandwidth.
`JUDGE JAMESON LEE: Did you misspeak, because
`you just said it's a term of magnitude, don't you mean the other
`way?
`
`MR. LOWES: Yes, I'm sorry, a term of approximation.
`Thank you. But whether it's indefinite or not, it's just unclear,
`and I think the file history adds the clarity that we need, it's
`unclear from the specification, but it's clear from the file history
`what's meant by the term.
`Next slide. Here in terms of the disclosure of the
`references, the Li reference is modified by UTRA to define what
`is that minimum operating channel bandwidth and it's 100
`kilohertz. Yamaura discloses that you want the core-band or
`control channel to be a narrow set of subcarriers. And UTRA
`discloses that it would be 24 subcarriers. And Yamaura says it
`can be any number of subcarriers. So, it would be obvious to
`implement Yamaura's control channel within the narrow 100
`kilohertz operating channel bandwidth.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 18
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`
`And, so, it would be the core-band would be
`substantially not wider, because it would be equal to the 100
`kilohertz minimum operating channel bandwidth.
`JUDGE BUSCH: What is it in UTRA that indicates
`that it should be 100 -- that the combination of UTRA and
`Yamaura indicates that the minimum bandwidth should be the
`core-band? Why wouldn't the core-band be narrower than that
`minimum -- than that 100 kilohertz when you combine those
`two?
`
`MR. LOWES: Yamaura discloses providing the narrow
`bandwidth being very small, in terms of at least two subcarriers,
`and it can be more than that, but it wants it to be as small as
`possible to implement the benefits such that the receivers don't
`have to process and decode a large bandwidth of spectrum. And,
`so, you would want it to be as small as possible and that would be
`the minimum.
`JUDGE BUSCH: In this combination, could it be 50
`kilohertz?
`MR. LOWES: It potentially could be, but that's not our
`position, our position is that it would be 100 kilohertz equal to the
`minimum operating channel bandwidth.
`Next slide, please. We're moving to slide 21 of Exhibit
`1040. Let's go ahead and go to slide 22 of Exhibit 1040. This
`concerns the claim term "a broadcast channel carrying radio
`control and operation signaling." It's our position that radio
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 19
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`control and operation signaling is just a single concept. It's a
`concept of control signaling that affects the operation of the
`receiver. The Patent Owner has taken the position that radio
`control and operation signaling actually requires two separate
`signals as opposed to signaling as the broader concept.
`It's their position that it requires radio control signals as
`well as radio operation signals, and we'll get into the examples of
`radio operation signals, they're requiring that those have data and
`other features.
`Next slide, please. So, with respect to how does the
`patent use the term "radio control and operation signaling?" Here
`we're referring to column 4, and we are on slide 23, referring to
`the patent, column 4, lines 66 to 67. The only use of the term
`"radio control and operation signaling" is explained or described
`as radio control and operation signaling is realized through the
`use of a core-band. So, clearly it's a single concept. Had that
`been multiple concepts, it would have said that they are realized
`through the use of a core-band.
`So, even the applicant is recognizing that radio control
`and operation signaling is a single concept. So, that's the primary
`feature.
`
`In addition, signaling has an ordinary and customary
`meaning, and those are controls or they're used to set up and tear
`down calls, not data itself. And here, referring to Newton's
`Telecom Dictionary, signaling in any telephone system includes
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 20
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`some form of signaling mechanism that is required to set up and
`tear down calls. So, here again, we're talking about signaling as a
`concept, not individual signals being sent.
`JUDGE BUSCH: So, are you saying that -- go ahead,
`Judge Lee.
`JUDGE JOHN LEE: Thank you, Judge Busch. Do you
`dispute that there are signals out there that would be characterized
`as radio control signals but not radio operation signals?
`MR. LOWES: I believe that --
`JUDGE JOHN LEE: Are there such signals, or vice
`
`versa?
`
`MR. LOWES: Are there radio control signals that are
`not radio operation signals?
`JUDGE JOHN LEE: Is that a real thing?
`MR. LOWES: I guess so. Certainly in the context of
`the patent, it's talking about the initial setup, so the radio control
`and operation signaling.
`JUDGE JOHN LEE: So, if there was a piece of prior
`art that disclosed one but not the other, say radio control signals
`but not radio operation signals, right? It discloses a broadcast
`channel that carries certain signals and they are radio control
`signals only, would that meet this limitation of the claim?
`MR. LOWES: I believe it would. It's really the
`concept, radio control and operation signaling, but radio control
`and operation is itself a term of art that is indicating it's the setup
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 21
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`or control of the receiver, so by sending signals from the base
`station to the receiver, it's setting up the receiver for the
`communication session.
`JUDGE JOHN LEE: But why wouldn't it say control
`and/or operation, or something like that? It does use the word
`"and?"
`
`MR. LOWES: Correct, I don't know, I'm not sure why
`it didn't use that term.
`JUDGE JAMESON LEE: Couldn't it cover both cases?
`I mean, you don't have to have it absolutely just one concept,
`right? It reads on either one concept, or separate concepts, it still
`reads on the art.
`MR. LOWES: Absolutely, that's the broadest
`reasonable interpretation is that it's that kind of signaling that it's
`claiming.
`JUDGE BUSCH: Is your position that there's no
`signaling other than setup and tear down of calls in networks like
`this?
`
`MR. LOWES: No, certainly once the call is set up,
`there's additional signaling and those could be operation signals,
`but that's after the call is set up.
`So, continuing on with this slide, another feature is that
`the radio control and operation signaling is in the broadcast
`channel. So, it's broadcast to all users, it's not to a specific user.
`And as Dr. Haas recognized, our position is consistent as a single
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 22
`
`
`
`
`
`
`
`Case IPR2014-01195
`Patent 7,787,431 B2
`
`concept, it's the fact that it's broadcast in the broadcast channel,
`carrying the radio control operation signaling to set up the calls
`with a single user.
`Next slide, slide 24 of Exhibit 1040. So, with respect to
`the Patent Owner, their argument is that it requires both radio
`control signals and operation signals to meet the limitations of the
`claim. The Patent Owner argues that radio control signals include
`signals to set up radio operation and then their examples of radio
`operation signals within the patent include a set of data channels
`and the related dedicated control channels. However, there are at
`least two reasons that Patent Owner's position is inconsistent with
`the patent.
`First, the Patent Owner's example, it contradicts the
`ordinary and customary meaning of signaling. So, it's requiring a
`single signal, and it's requiring data in that signal. So, signaling is
`call
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
