Case 1:13-cv-00010-RGA Document 344 Filed 09/02/14 Page 1 of 3 PageID #: 26035
`
`
`
`
`
`Smith,
`Katzenstein
`& Jenkins LLP
`
` Attorneys at Law
`
`
`
`September 2, 2014
`
`BY ECF
`
`
`
`The Corporate Plaza
`800 Delaware Avenue, Suite 1000
`P. O. Box 410
`Wilmington, DE 19899
`(Courier 19801)
`Phone (302) 652-8400
`Fax (302) 652-8405
`www.skjlaw.com
`
`The Honorable Richard G. Andrews
`J. Caleb Boggs Federal Building
`844 N. King Street
`Unit 9
`Room 6325
`Wilmington, DE 19801-3555
`
`Re:
`
`InterDigital Comm., Inc. et al. v. Nokia et al. C.A. No. 13-00010 RGA
`
`Dear Judge Andrews:
`
`Pursuant to footnote 5 of the Order on Motions in Limine (Docket No. 339) and as discussed at
`the final Pre-Trial Conference, InterDigital submits the USPTO’s decision denying institution of
`an inter partes review of the ’151 patent (’151 IPR Denial) and provides relevant authority
`establishing its admissibility as evidence in this case.
`
` The ’151 IPR Denial is a final decision
`
`The ’151 IPR Denial is a final decision. A decision by the USPTO, through the Patent Trial and
`Appeals Board (PTAB), concerning “whether to institute an inter partes review under this section
`shall be final and nonappealable.” 35 U.S.C. §314(d); see also St. Jude Medical, Cardiology
`Division v. Volcano Corp. 749 F.3d 1373, 1375 (Fed. Cir. 2014)(holding that §314(d) “provides
`no authorization to appeal a non-institution decision[.]”); Dominion Dealer Solutions, LLC, v.
`Michele K. Lee, No. 3:13CV699 (E.D. Va. Apr. 18, 2014)(dismissing action seeking review of
`decisions not to institute inter partes review.) Thus, the ’151 IPR Denial is final.
`
` The ’151 IPR Denial was on the merits
`
`The ’151 IPR Denial was based on the merits of the underlying petition. The ’151 IPR Denial is
`a 20-page decision by the PTAB analyzing much of the same prior art and many of the same
`arguments being advanced by Nokia in this case. See Ex. 1, Decision Denying Institution of
`Inter Partes Review. The PTAB fully analyzed the ’151 patent and interpreted the claims in the
`’151 IPR Denial, generally giving the claims their broadest reasonable interpretation. Id. at 3-10.
`The PTAB then closely analyzed the Siemens 004 reference – the reference that is the sole
`
`Microsoft Corporation
`
`Exhibit 1035-00001
`
`

`

`Case 1:13-cv-00010-RGA Document 344 Filed 09/02/14 Page 2 of 3 PageID #: 26036
`The Honorable Richard G. Andrews
`September 2, 2014
`Page 2
`
`remaining basis of Nokia’s inequitable conduct defense – and affirmatively determined that
`Siemens 004 does not anticipate the claims of the ’151 patent. Id. at 10-18. The PTAB further
`analyzed Siemens 004 reference in view of other prior art asserted in this case, and affirmatively
`determined that none of the combinations rendered the claims of the ’151 patent obvious. Id. at
`18-19.1 The PTAB thus addressed the merits of the prior art when it issued the ’151 IPR Denial.
`See, e.g., The Proctor & Gamble Co. v. Team Tech. Inc., No. 12-cv-552 at 21-24 and 77 (S.D.
`Ohio, July 3, 2014)(Granting partial summary judgment of no invalidity based in part on PTAB’s
`denial of petition for inter partes review).
`
` The ’151 IPR Denial is part of the prosecution history
`
`The ’151 IPR Denial is unquestionably part of the prosecution history. See Opposition to
`Defendant’s Motion in Limine #3, Ex. 1 (docket of the PTO prosecution file history for the ’151
`Patent, including the July 7, 2014 Denial of IPR Trial Request). This is consistent with the
`USPTO’s rules requiring that a “concluded reexamination file . . . containing the request and the
`decision denying the request becomes part of the patent’s record,” even though no reexamination
`certificate issues. See Ex. 4, MPEP § 2247, at 2200-68 (ex parte); Ex. 5, MPEP § 2647, at 2600-
`42 (inter partes). The Federal Circuit has confirmed this and the Delaware courts have followed
`it. CR Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861, 866-69 (Fed. Cir. 2004)
`(considering both the “initial examination” and “reexamination” of the patent-in-suit as part of
`the “prosecution history” that comprises the “intrinsic record”); St. Clair Intellectual Property
`Consultants, Inc. v. Matsushita Elec. Indus. Co., 691 F. Supp. 2d 538, 550 (D. Del. 2010)
`(“[S]tatements made during a reexamination” are part of intrinsic record).
`
`A final decision on a petition for an IPR is treated no differently. See Intellectual Ventures I
`LLC v. PNC Fin. Servs. Grp., Inc., No. 14-cv-0832, 2014 WL 3942277, at *2 (W.D. Penn. Aug.
`12, 2014) (noting IPR and CBM proceedings “will become part of the intrinsic records of the
`patents”).
`
` The ’151 IPR Denial is necessary to respond to Nokia’s claim that Siemens 004 was
`never considered by the USPTO
`
`Nokia has indicated that it intends to argue that certain prior art, including Siemens 004, was not
`considered by the USPTO. Therefore, the jury is entitled to hear that the USPTO, through the
`PTAB, considered and rejected some of the exact same arguments regarding some of the exact
`same prior art, including Siemens 004, as will be proffered by Nokia at trial. See Sciele Pharma
`Inc. v. Lupin Ltd., 684 F.3d 1253, 1260-61 (Fed. Cir. 2012)(“Whether a reference was before the
`PTO goes to the weight of the evidence, and the parties are of course free to, and generally do,
`make these arguments to the fact finder.”)
`
`1 The Court commented on the qualifications of the Administrative Patent Judges that performed
`the analysis in the ’151 IPR Denial, suggesting that they are not persons of ordinary skill in the
`art. An APJ must have both a law degree and a technical degree. See Ex. 2, USPTO online job
`positing for Administrative Patent Judge (“Key requirements: Proof of bachelor or higher
`technical degrees and law degrees.”); Ex. 3, USPTO Recruitment Brochure at 2 (“Basic
`Qualifications: Degree(s)/work experience in science or engineering”)
`
`Microsoft Corporation
`
`Exhibit 1035-00002
`
`

`

`Case 1:13-cv-00010-RGA Document 344 Filed 09/02/14 Page 3 of 3 PageID #: 26037
`The Honorable Richard G. Andrews
`September 2, 2014
`Page 3
`
`
` The full prosecution history of the ’151 patent should be considered by the jury
`
`The full prosecution history of the ’151 patent, including the ’151 IPR Denial, should be
`considered by the jury. The Federal Circuit has found reversible error for failure to “give any
`credence to the PTO reexamination proceeding, which upheld the validity of claims 1 and 6
`despite the presence of much of the same art as was before the district court.” Custom
`Accessories v. Jeffrey-Allan Indus., 807 F.2d 955, 961 (Fed. Cir. 1986). The ’151 IPR Denial
`held that there was not even a reasonable likelihood that Siemens 004, alone or in combination
`with other references, would invalidate the claims of the ’151 patent. This finding should be
`before the jury, and it would be error to exclude it.
`
`Allowing the jury to consider the ’151 IPR Denial is consistent with the treatment of
`reexamination proceedings in Delaware. Pegasus Dev. Corp. v. Directv, Inc., No. 00-1020-
`GMS, 2003 WL 21105073 (D. Del. 2003) (“Moreover, the court notes that if, after
`reexamination, the plaintiffs’ patents are again upheld, the plaintiffs’ rights will only be
`strengthened, as the challenger’s burden of proof becomes more difficult to sustain.”) (citing
`Custom Accessories) (granting stay pending reexamination); see also E.I. du Pont de Nemours v.
`Polaroid Graphics, 706 F. Supp. 1135, 1141 & n.8 (D. Del. 1989) (noting that “‘the exhaustive
`consideration given the prior art by the PTO during [reexamination] must be weighed in
`determining patentability.’”) (alteration in original and footnote omitted, emphasis added)
`(quoting Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549, 1558 (Fed. Cir. 1985)).
`
`Respectfully,
`
`/s/ Neal C. Belgam
`
`Neal C. Belgam (No. 2721)
`
`NCB/jcb
`
`Enclosures
`
`cc:
`
`
`
`Clerk of Court (by efile)
`All counsel of record (by efile and email)
`
`Microsoft Corporation
`
`Exhibit 1035-00003
`
`

`

`Case 1:13-cv-00010-RGA Document 344-1 Filed 09/02/14 Page 1 of 21 PageID #: 26038
`
`EXHIBIT 1
`
`Microsoft Corporation
`
`Exhibit 1035-00004
`
`

`

`Case 1:13-cv-00010-RGA Document 344-1 Filed 09/02/14 Page 2 of 21 PageID #: 26039
`Trials@uspto.gov
`Paper 11
`
`571-272-7822
`Entered: July 7, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION and ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`INTERDIGITAL TECHNOLOGY CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2014-00275
`Patent 7,941,151 B2
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Microsoft Corporation
`
`Exhibit 1035-00005
`
`

`

`Case 1:13-cv-00010-RGA Document 344-1 Filed 09/02/14 Page 3 of 21 PageID #: 26040
`IPR2014-00275
`Patent 7,941,151 B2
`
`I. INTRODUCTION
`
`ZTE Corporation and ZTE (USA) INC. (“Petitioners”) filed a Petition
`requesting an inter partes review of claims 1-6, 8, 9, 16-21, 23, and 24 of
`U.S. Patent No. 7,941,151 (Ex. 1001, “the ’151 patent”) pursuant to 35
`U.S.C. §§ 311-319. Paper 1 (“Pet”). Patent Owner, InterDigital Technology
`Corp. (“Patent Owner”), filed a Preliminary Response to the Petition on
`April 17, 2014. Paper 9. (“Prelim. Resp.”) We have jurisdiction under 35
`U.S.C. § 314.
`
`
`II. BACKGROUND
`The standard for instituting an inter partes review is set forth in 35
`U.S.C. § 314(a), which provides as follows:
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`Petitioner asserts that claims 1-6, 8, 9, 16-21, 23, and 24 (i.e. “the
`challenged claims”) are unpatentable under 35 U.S.C. § 102(b) and 35
`U.S.C. § 103(a).1 Pet. 6.
`Upon consideration of the Petition and Preliminary Response, we are
`not persuaded that there is a reasonable likelihood that Petitioner will prevail
`in establishing the unpatentability of the challenged claims. We,
`
`
`1 We do not consider Petitioner’s allegation that “InterDigital’s employees
`did not invent the subject matter” (Pet. 4) of the challenged claims of the
`’151 patent, because such matters are not within our jurisdiction under 35
`U.S.C. § 311(b). Pet. 1-4.
`
`
`
`2
`
`Microsoft Corporation
`
`Exhibit 1035-00006
`
`

`

`Case 1:13-cv-00010-RGA Document 344-1 Filed 09/02/14 Page 4 of 21 PageID #: 26041
`Case IPR2014-00275
`Patent 7,941,151
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`consequently, deny the Petition and do not institute an inter partes review of
`the ’151 patent based on any of the asserted grounds.
`
`
`A. Related Proceedings
`Petitioner asserts that the ’151 patent is the subject of the following
`
`judicial or administrative matters, Certain Wireless Devices with 3G and/or
`4G Capabilities and Components Thereof, U.S.I.T.C Inv. No. 337-TA-868;
`InterDigital Commc’ns Inc. v. Huawei Techs. Co., Ltd., Case No. 13-cv-
`00008-RGA (D. Del.), filed January 2, 2013; InterDigital Commc’ns Inc. v.
`ZTE Corp., Case No. 13-cv-00009-RGA (D. Del.), filed January 2, 2013;
`InterDigital Commc’ns Inc. v. Nokia Corp., Case No. 13-cv-00010-RGA
`(D. Del.), filed January 2, 2013; and InterDigital Commc’ns Inc. v. Samsung
`Elec. Co. Ltd., Case No. 13-cv-00011-RGA (D. Del.), filed January 2, 2013.
`Pet. 4.
`
`
`B. The ’151 Patent (Ex. 1001)
`The ’151 patent describes a system and method of wireless
`communication that provides channel assignment information used to
`support an uplink shared channel (“UL”) and a downlink shared channel
`(“DL”). Ex. 1001, 1:16-20. The system includes at least one Node-B or
`base station that dynamically allocates radio resources for both UL and DL
`transmissions from and to a wireless transmit/receive unit (“WTRU”) via a
`common control channel. Id. at 2:19-29. The communication of radio
`resource assignment information between Node-B and the WTRU includes a
`specific indicator of whether the radio resource assignment is for either UL
`or DL transmission. Id. at 3:40-45. The WTRU is configured to determine
`
`
`
`
`3
`
`Microsoft Corporation
`
`Exhibit 1035-00007
`
`

`

`Case 1:13-cv-00010-RGA Document 344-1 Filed 09/02/14 Page 5 of 21 PageID #: 26042
`Case IPR2014-00275
`Patent 7,941,151
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`whether the transmission is for assigning UL or DL radio resource
`assignment. Id. at 3:48-50. In one embodiment, the specific indicator may
`be contained in one or more unused bits, referred to as the impossible code
`combinations, in the channelization code set mapping in the current High
`Speed Download Packet Access (HSDPA). Id. at 3:51-4:3. The system may
`also include a radio network controller (“RNC”) that controls Node-B to
`transmit a message to the WTRU indicating which time slots support UL
`channel transmission and which time slots support DL channel
`transmissions. Id. at 2:34-40.
`Figure 1 of the ’151 patent is reproduced below.
`
`
`Figure 1 depicts a wireless communication system showing
`communication between Node-B and the WTRU 106 via the control
`channel, DL, and UL. Id. at 3:24-29. The control channel transmits
`assignment information for both UL and DL transmissions to the WTRU
`from Node-B. Id. at 3:30-32. Downlink transmission from Node-B to the
`WTRU is transmitted via the DL, and uplink transmission from the WTRU
`to Node-B is transmitted via the UL. Id. at 3:26-32.
`Figure 3 of the ’151 patent is reproduced below.
`
`
`
`
`4
`
`Microsoft Corporation
`
`Exhibit 1035-00008
`
`

`

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`Case IPR2014-00275
`Patent 7,941,151
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`
`
`
`
`Figure 3 depicts a flowchart that includes the steps of transmitting a
`message for radio resource assignment via the common control channel from
`Node-B to the WTRU, which receives and demodulates the message at step
`204. Id. at 5:25-50. The WTRU then determines if the message is intended
`for the WTRU at step 206, and if the message is intended for the WTRU at
`step 206, another determination is made regarding whether the message is
`for the assignment of radio resources for DL transmission or UL
`transmission at step 208. Id. Depending on the determination made in step
`208, the WTRU receives data via the DL channel or transmits data via the
`UL channel. Id.
`
`
`
`
`5
`
`Microsoft Corporation
`
`Exhibit 1035-00009
`
`

`

`Case 1:13-cv-00010-RGA Document 344-1 Filed 09/02/14 Page 7 of 21 PageID #: 26044
`Case IPR2014-00275
`Patent 7,941,151
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`
`C. Illustrative Claim
`Petitioner challenges claims 1-6, 8, 9, 16-21, 23, and 24 of the ’151
`patent, of which claims 1 and 16 are independent. Claim 1 is illustrative of
`the challenged claims, and is reproduced below:
`1. A method for utilizing channel assignment
`information for an uplink shared channel or a downlink shared
`channel, the method comprising:
`a wireless transmit/receive unit (WTRU) receiving
`downlink control information including downlink or uplink
`channel assignment information via a same physical downlink
`control channel, both downlink channel assignment information
`and uplink channel assignment information being received via
`the same physical downlink control channel;
`the WTRU determining whether the downlink control
`information is intended for the WTRU based on WTRU identity
`(ID)-masked cyclic redundancy check (CRC) parity bits, and if
`so determining whether the channel assignment information is
`for assigning radio resources for the uplink shared channel or
`the downlink shared channel; and
`the WTRU utilizing the radio resources for the uplink
`shared channel or the downlink shared channel.
`
`D. The Prior Art
`Petitioner relies on the following prior art references (Pet. 6) and the
`declaration of Dr. Vijay K. Madisetti (Ex. 1002):
`
`References Patents/Printed Publications
`Siemens
`3GPP TSG RAN WG 1 #30, Tdoc
`004
`R1-030004, Siemens, “Downlink
`Control Channel Configuration for
`Enhanced Uplink Dedicated
`Transport Channel,”
`San Diego, USA.
`
`Date
`January 7-
`10, 2003
`
`Exhibit
`1003
`
`
`
`
`6
`
`Microsoft Corporation
`
`Exhibit 1035-00010
`
`

`

`Case 1:13-cv-00010-RGA Document 344-1 Filed 09/02/14 Page 8 of 21 PageID #: 26045
`Case IPR2014-00275
`Patent 7,941,151
`
`
`3GPP TS 25.212 V5.2.0,
`3rd Generation Partnership Project;
`Technical Specification Group
`Radio Access Network;
`Multiplexing and Channel Coding
`(FDD) (Release 5), 2002-2009.
`TSG-RAN Working Group 1 #22,
`InterDigital Comm. Corp.,
`“Implicit UE Identification for
`HSDPA Downlink Signaling,”
`Torino, Italy.
`ETSI SMG2 UMTS L1 Expert
`Group, Motorola, “Mechanisms for
`Managing Uplink Interferences and
`Bandwidth,” Espoo, Finland.
`3GPP TSG RAN WG1/2 Joint
`Meeting on HSDPA, Siemens,
`“Signaling Requirements for
`HSDPA in TDD Mode,”
`Sophia Antipolis, France.
`
`September,
`2002
`
`1004
`
`August 27-
`31, 2001
`
`1005
`
`December
`14-18, 1998
`
`1006
`
`April 5-6,
`2001
`
`1007
`
`3GPP
`
`InterDigital
`810
`
`Motorola
`683
`
`Siemens
`010
`
`
`
`
`E. The Asserted Grounds
`Petitioner challenges claims 1-6, 8, 9, 16-21, 23, and 24 of the
`’151 patent based on the following statutory grounds. Pet. 6.
`Reference(s)
`Basis
`Claims
`Challenged
`1-6, 8, 9, 16-
`21, 23, and
`24
`1-6 and 16-
`21
`
`Siemens 004
`
`§ 102(b)
`or § 103(a)
`
`Siemens 004 and Admitted Prior
`Art (APA)
`
`§ 103(a)
`
`
`
`
`7
`
`Microsoft Corporation
`
`Exhibit 1035-00011
`
`

`

`Case 1:13-cv-00010-RGA Document 344-1 Filed 09/02/14 Page 9 of 21 PageID #: 26046
`Case IPR2014-00275
`Patent 7,941,151
`
`
`Reference(s)
`
`Basis
`
`Claims
`Challenged
`1-6 and 16-
`21
`1, 2, 16, and
`17
`8 and 23
`
`Siemens 004 and 3GPP
`
`§ 103(a)
`
`Siemens 004 and InterDigital
`810
`
`§ 103(a)
`
`Siemens 004 and Motorola 683
`
`§ 103(a)
`
`Siemens 004 and Siemens 010
`
`§ 103(a)
`
`8 and 23
`
`
`
`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
`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).
`Petitioner proposes using constructions from the pending district court
`and ITC proceedings for the following four claim terms: “same physical
`downlink control channel”; “channel assignment information”; “shared
`
`
`
`
`8
`
`Microsoft Corporation
`
`Exhibit 1035-00012
`
`

`

`Case 1:13-cv-00010-RGA Document 344-1 Filed 09/02/14 Page 10 of 21 PageID #: 26047
`Case IPR2014-00275
`Patent 7,941,151
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`channel”; and “based on WTRU identity (ID )-masked cyclic redundancy
`check (CRC) parity bits.” Pet. 7-9. For three of the claim terms: “same
`physical downlink control channel”; “channel assignment information”; and
`“based on WTRU identity (ID)-masked cyclic redundancy check (CRC)
`parity bits;” Petitioner asserts that Patent Owner should be bound in the
`instant proceeding by the broad construction it has proposed in the related
`judicial and administrative proceedings. Pet. 7-10. However, Petitioner
`does not proffer specific arguments directed to the interpretation of these
`claim terms in the instant proceeding. Thus, for purposes of this decision,
`we do not construe expressly at this time the claim terms “same physical
`downlink control channel”; “channel assignment information”; and “based
`on WTRU identity (ID )-masked cyclic redundancy check (CRC) parity
`bits.”
`With respect to the claim term “shared channel,” Petitioner argues that
`this term should be construed to mean a “channel that can convey
`information to or from a plurality of WTRUs.” 2 Pet. 9. Taking the position
`that the term “shared channel” is properly construed as “a radio resource that
`can convey information to or from a plurality of WTRUs,” Patent Owner
`points to intrinsic evidence from the surrounding claim language and
`specification in support of their construction. Prelim. Resp. 8. For example,
`the specification states that “the control channel ‘conveys radio resource
`allocation information to a plurality of wireless transmit/receive units
`(WTRUs).’” Id. at 9, citing Ex. 1001, 1:33-36. Petitioner’s bald assertion,
`that the Patent Owner’s proposed construction from the district court and
`
`2 We note that the body of claim 1 refers specifically to an “uplink shared
`channel” or a “downlink shared channel,” and not generally to a “shared
`channel”.
`
`
`
`9
`
`Microsoft Corporation
`
`Exhibit 1035-00013
`
`

`

`Case 1:13-cv-00010-RGA Document 344-1 Filed 09/02/14 Page 11 of 21 PageID #: 26048
`Case IPR2014-00275
`Patent 7,941,151
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`ITC proceedings “is incorrect,” and that there is no reason to define “shared
`channel” as “a radio resource” is not persuasive.3 Pet. 9. For purposes of
`this decision, and based on the record before us, we adopt Patent Owner’s
`proposed construction of the claim term “shared channel” to mean “a radio
`resource that can convey information to or from a plurality of WTRUs” as
`the broadest reasonable construction consistent with the specification.4
`For purposes of this decision, we need not construe expressly any of
`the other terms in the challenged claims at this time.
`
`
`B. Anticipation Based On Siemens 004
`Petitioner challenges claims 1-6, 8, 9, 16-21, 23, and 24 as anticipated
`under 35 U.S.C. § 102(b) by Siemens 004, or alternatively, as rendered
`obvious under 35 U.S.C. § 103(a) over Siemens 004.5 Pet. 15-33. In
`support thereof, Petitioner provides claim charts that identify the disclosure
`in Seimens 004 alleged to anticipate the subject matter in claims 1-6, 8, 9,
`16-21, 23, and 24. Id. at 51-55. Petitioner further relies on the declaration
`of Dr. Madisetti to support the analysis advocated in the Petition. Ex. 1002.
`We have considered the arguments and evidence presented, and are not
`
`
`3 Petitioner’s mere reference to claim construction arguments from another
`proceeding, without informing us how these arguments are relevant to the
`instant proceeding, are afforded minimal weight. See 37 C.F.R.
`§ 42.104(b)(5).
`4 We note that our construction conforms to the definition of “shared
`channel” from the 3GPP Dictionary. See Ex. 2008, 25.
`5 While Petitioner alleges claims 1-6, 8, 9, 16-21, 23, and 24 are
`alternatively unpatentable under 35 U.S.C. § 103(a) over Siemens 004 (Pet.
`6), Petitioner advances no separate obviousness argument in this regard.
`Thus, we consider Petitioner’s challenge to the claims only on the basis of
`35 U.S.C. § 102(b).
`
`
`
`10
`
`Microsoft Corporation
`
`Exhibit 1035-00014
`
`

`

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`Case IPR2014-00275
`Patent 7,941,151
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`persuaded that Siemens teaches the “uplink shared channel,” as recited in the
`preamble, and further in the second determining step of “whether the
`channel assignment information is for assigning radio resources for the
`uplink shared channel,” as required by each of the challenged claims. A
`detailed analysis of our determination follows after a brief overview of
`Siemens 004.
`
`1. Overview of Siemens 004 (Ex. 1003)
`Siemens 004 is a feasibility study presented to the TRG-RAN
`Working Group 1 by Siemens, and titled “Downlink Control Channel
`Configuration for Enhanced Uplink Dedicated Transport Channel.”
`Ex. 1003, 1. In particular, Siemens 004 discusses re-use of the existing High
`Speed Shared Control Channel (HS-SCCH) also for downlink control
`information of the enhanced uplink dedicated transport channel (EU-DCH).
`Id. Siemens discloses that the same shared control channel may “be used for
`ED-DCH and HSDPA users in time multiplex.” Id. Siemens also describes
`re-use of the existing HS-SCCH part 1 coding format, and more specifically
`the “8 unused codewords within the channelisation code-set field . . .” for
`EU-DCH downlink signaling. Id. Siemens 004 further suggests that with
`re-use of the HS-SCCH channel and coding format, “detection based on the
`implicit UE-ID and decoding of part 1 is identical for HSDPA and EU-DCH
`data transmission and receiver implementation is notably simplified.” Id. at
`2.
`
`
`2. Claim 1
`Before delving into the specific arguments regarding the limitations
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`allegedly taught by Siemens, we address Patent Owner’s argument that
`Siemens 004 does not disclose the “uplink shared channel” required by each
`claim, but instead discloses the opposite, an uplink dedicated channel.
`Prelim. Resp. 1, 3. The term “uplink shared channel” is initially found in the
`preamble of claim 1, which recites “[a] method for utilizing channel
`assignment information for an uplink shared channel or a downlink shared
`channel.” Ex. 1001, 5:58-60 (emphasis added).
`Petitioner relies on the definitions of “uplink channel” and “shared
`channel” proffered by Dr. Madisetti to support their argument that Siemens
`004 discloses the preamble of claim 1, and in particular that the EU-DCH of
`Siemens 004 discloses the recited “uplink shared channel.” Pet. 18-21;
`citing Ex. 1002 ¶ 157-159. According to Dr. Madisetti, the EU-DCH
`described in Siemens 004 “is an ‘uplink channel’ because it is a channel
`used to convey information from a handset to a base station. In addition, the
`EU-DCH is a ‘shared channel’ because it can convey information from a
`plurality of handsets.” Ex. 1002 ¶ 159.
`Pointing to the definitions of “dedicated channel” and “shared
`channel” from the 3GPP Dictionary in support of their position, Patent
`Owner counters that a dedicated channel is the opposite of a shared channel
`because “a dedicated channel is dedicated to a specific UE, whereas shared
`channels are dynamically shared between several UEs.” Prelim. Resp. 16,
`citing Ex. 2008, 10, 25. Patent Owner maintains that Siemens 004
`“consistently refers to an Enhanced Uplink Dedicated (emphasis omitted)
`Channel” and not “an uplink shared (emphasis omitted) channel,” as
`described in the ’151 patent, and that there is no disclosure in Siemens 004
`that suggests that the EU-DCH channel is the same as the enhanced uplink
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`shared channel described and claimed in the ’151 patent. Prelim. Resp. 17-
`18.
`
`Patent Owner’s argument has persuaded us that Petitioner has not
`identified sufficiently in Siemens 004 that the EU-DCH channel is the same
`as the claimed uplink shared channel, because the EU-DCH is described as a
`dedicated channel. Likewise, Dr. Madisetti, does not provide sufficient and
`persuasive evidence demonstrating that a person of ordinary skill in the art
`would have understood the Siemens 004 EU-DCH channel to be the same as
`the claimed uplink shared channel. Id. at 18, see Ex. 1002 ¶¶ 151-166.
`Indeed, Patent Owner has provided credible evidence showing that the EU-
`DCH channel described in Siemens 004 is not the same channel as the
`“uplink shared channel” recited in the preamble of claim 1.
`We next consider use of the term “uplink shared channel” within the
`body of claim 1. In particular, the second determining limitation recites
`“determining whether the channel assignment information is for assigning
`radio resources for the uplink shared channel or the downlink shared
`channel.” Ex. 1001, 6:4-7 (emphasis added).
`Petitioner argues that the second determining limitation is met
`because “the HS-DSCH described in Siemens 004 is a ‘downlink shared
`channel,’ the EU-DCH described in Siemens 004 is an ‘uplink shared
`channel,’ and the HS-SCCH transmits ‘channel assignment information’ for
`the HS-DSCH and EU-DCH.” Pet. 26. Petitioner relies on the declaration
`of Dr. Madisetti to explain how
`a person of ordinary skill in the art reviewing Siemens 004
`would have understood, if the channelization-code-set includes
`one of the 120 codewords used for HSDPA, then a WTRU
`could determine whether information in the HS-SCCH is for the
`HS-DSCH, which is the “downlink shared channel”; similarly,
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`if the codeword is one of the 8 codewords not used for HSDPA,
`then the WTRU could determine whether information in the
`HS-SCCH is for the EU-DCH, which is the “uplink shared
`channel.”
`Ex. 1002 ¶ 197. Dr. Madisetti opines that Siemens 004 discloses the second
`determining limitation because both Siemens 004 and the ’151 patent
`describe the use of the channelization-code-set field of the HS-SCCH to
`determine whether “the channel assignment information is for assigning
`radio resources to the HS-DSCH or the Enhanced Uplink channel . . .” and
`because Siemens 004 discloses “the same channels used in exactly the same
`way” as the ’151 patent. Id. ¶¶ 200-203.
`
`Patent Owner counters that Siemens 004 does not disclose the “second
`determining” limitation. Prelim. Resp. 18. Explaining further, Patent
`Owner reasons that because Siemens 004 does not disclose an “uplink
`shared channel,” it follows that Siemens 004 does not disclose “channel
`assignment information . . . for the uplink shared channel.” Prelim. Resp.
`18. Moreover, Patent Owner contends that Siemens is silent regarding
`channel assignment information even for the “Enhanced Uplink Dedicated
`Channel that is disclosed.” Id. While admitting that Siemens discloses
`usage of unused codewords for EU-DCH downlink signaling, Patent Owner
`submits that Siemens 004 does not disclose the use of codewords to provide
`channel assignment information for assigning radio resources for the uplink
`shared channel, nor in determining whether the channel assignment
`information is for “assigning radio resources for the uplink shared channel or
`the downlink shared channel.” Id. at 19. Thus, Patent Owner suggests that
`the Siemens 004 EU-DCH downlink signaling need not be channel
`assignment information, and instead, could be other control information (i.e.
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`H-ARQ which relates to error correction). Id.
`
`Aside from arguments made with respect to use of the claim term
`“uplink shared channel” in the preamble, Petitioner does not proffer
`additional arguments regarding further use of the claim term “uplink shared
`channel” in the second determining limitation. Because Petitioner failed to
`show, with sufficient evidence, that the EU-DCH channel from Siemens 004
`is an “uplink shared channel,” as used in the preamble of claim 1,
`Petitioner’s further argument that the second determining limitation in the
`body of the claim is met because “the EU-DCH [channel] . . . is an ‘uplink
`shared channel”’ (Pet. 26) is likewise unpersuasive for the reasons discussed
`above. Thus, we agree with Patent Owner that Petitioner has not shown that
`Siemens 004 discloses the step of “determining whether the channel
`assignment information is for assigning radio resources for the uplink shared
`channel or the downlink shared channel,” because Siemens 004 does not
`disclose an “uplink shared channel.”
`
`Based on the current record, we are not persuaded by Petitioner’