
`Smith,
`Katzenstein
`& Jenkins LLP
`
` Attorneys at Law
`
`
`September 5, 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
`The District Court for the District of Delaware
`844 N. King Street
`Wilmington, Delaware 19801
`
`Re: InterDigital Comm., Inc. et al. v. Nokia et al.
` C.A. No. 13-010-RGA
`
`Dear Judge Andrews:
`
`A.
`
`Plaintiffs InterDigital Communications, Inc., InterDigital Technology
`Corporation, IPR Licensing, Inc. and InterDigital Holdings, Inc. (“InterDigital”)
`hereby respond to Defendants Nokia Corp., Nokia Inc. and Microsoft Mobile
`Oy’s (“Defendants”) September 4, 2014 letter (“Letter”) regarding the USPTO’s
`decision denying institution of an inter partes review of the ‘151 patent (‘151 IPR
`Denial). InterDigital is responding to several misstatements of law and fact, as
`well as new issues raised by Defendants’ in their Letter.
`
`The ‘151 IPR Denial is A Decision on the Merits
`
`Defendants state that the ‘151 IPR Denial is not a decision on the merits.
`Defendants are wrong. There is no effective difference between the “reasonable
`likelihood of success” standard for institution of an IPR and the patentability
`standard. An IPR is instituted upon a showing that “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. §314(a)(emphasis added). If the petition
`fails to meet this low threshold, this means the Patent Office reviewed the
`evidence and argument presented in the petition and determined there is not even
`a reasonable likelihood that the petitioner could prevail on its assertion that the
`challenged patent claims are not patentable. See 35 U.S.C. §318(a)(The Patent
`Trial and Appeals Board (“PTAB”) issues “a final written decision with respect
`to the patentability of any patent claim challenged by the petitioner.”). Therefore,
`a decision whether to institute a petition necessarily involves a decision regarding
`the patentability of the challenged claims.
`
`Contrary to Defendants’ Letter, the ‘151 IPR Denial did in fact address
`the obviousness of the claims of the ‘151 patent in view of Siemens 004
`
`Microsoft Corporation
`
`Exhibit 1036-00001
`
`

`

`The Honorable Richard G. Andrews
`September 5, 2014
`Page 2
`
`combined with other prior art. Specifically, the ‘151 IPR Denial states that
`“[h]aving considered Petitioner’s arguments concerning the combination of
`Siemens 004 with each of the APA [Admitted Prior Art], 3GPP, InterDigital 810,
`Motorola 683 and Siemens 010, we are not persuaded that Petitioner has
`demonstrated a reasonable likelihood that it would prevail in demonstrating
`obviousness of the challenged claims.” Ex. 1, Decision Denying Institution of
`Inter Partes Review at 18. The PTAB could not have been clearer that it
`considered, and rejected, the arguments that the claims of the ‘151 patent were
`obvious in light of Siemens 004 in combination with other prior art.1
`
`Defendants also incorrectly assert that the ’151 IPR Denial is not a
`decision on the merits because “the PTAB’s decision was based on a construction
`of ‘shared channel’ that was explicitly rejected by the Court.” Defendants are
`wrong. The term “shared channel” was neither argued in front of the Court, nor
`addressed in the claim construction opinion and order. Memorandum Opinion on
`Claim Construction (D.I. 253, April 22, 2014); Claim Construction Order (D.I.
`224, April 29, 2014). Instead, the parties agreed to a construction of “shared
`channel,” notifying the Court of the same in a May 2, 2014 letter. More
`importantly, the issues in the ’151 IPR Denial focused on whether the uplink
`channel in Siemens 004 was “shared.” Under either the agreed construction or
`that used by the PTAB, the word “shared” as used in the phrase “shared channel”
`has exactly the same meaning. Compare, “channel that can convey information
`to or from a plurality of WTRUs” (May 2, 2014 Letter (D.I. 261) at 1) and “a
`radio resource that can convey information to or from a plurality of WTRUs” (Ex.
`1, Decision Denying Institution of Inter Partes Review at 10). Nokia did not
`argue prejudice arising from any differences in the two constructions because
`there is none. Any differences are insubstantial and irrelevant just as much here
`as they were in the ’151 IPR Denial.
`
`The ‘151 IPR Denial is Part of the Prosecution History
`
`Defendants’ Letter ignores that the USPTO considers the ‘151 IPR Denial
`as 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). The PTAB’s comments
`in ScentAir Techs. Inc. v. Prolitec, Inc. that an IPR is not examination are not to
`the contrary. Examination is not the only part of the intrinsic record of the
`prosecution history, as recognized by courts. Intellectual Ventures I LLC v. PNC
`
`B.
`
`
`1 Defendants’ allegation that the PTAB did not address obviousness is wrong. Without informing
`the Court, Defendants quoted from a portion of the IPR Denial where the Patent Office refused to
`consider obviousness based on Siemens 004 alone because Petitioner had failed to advance any
`arguments of obviousness based on Siemens 004 alone. See Ex. 1, Decision Denying Institution of
`Inter Partes Review at 10, n. 5. The Petitioner, however, did offer evidence and arguments of
`obviousness based on Siemens 004 in combination with other prior art, and that evidence and those
`arguments were expressly considered and found wanting by the Patent Office.. Id. at 18-19.
`
`Microsoft Corporation
`
`Exhibit 1036-00002
`
`

`

`The Honorable Richard G. Andrews
`September 5, 2014
`Page 3
`
`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 case law cited by Defendants is inapposite. In quoting from footnote
`31 in Sigram, Defendants neglected to include the next sentence, which states that
`“[a]s the [interim] rejections on reexamination are not binding, they are generally
`not relevant to the issues to be tried.” Sigram Schindler Beteiligungsgesellschaft
`mbH v. Cisco Sys., Inc. Nos. 09-72-SLR, 09-232-SLR, 2010 WL 2977552, at
`*416, n.31 (D. Del. July 26, 2010)(emphasis added). In SRI Int’l Inc. v. Internet
`Sec. Sys. Inc., the court noted that “[a]bsent unusual circumstances, none of
`which were presented here, non-final decisions made during reexamination are
`not binding”, where non-binding decisions were those “not vetted by the Federal
`Circuit.” 647 F. Supp. 2d 323, 356, n. 39 (D. Del. 2009). Thus, both deal with
`reexamination proceedings that were not yet final. This is not the case with the
`‘151 IPR Denial, as it is a final decision that is non-appealable.
`
`Further, in noting that it “typically does not admit evidence of
`reexamination proceedings at trial,” the court in Boston Scientific Corp. v.
`Johnson & Johnson Inc. requested that the parties “be prepared to address, at the
`pre-trial hearing, the admissibility of [a witness’] statements (cited by BSC) made
`during the co-pending reexamination for impeachment purposes.” 679 F.Supp.
`2d 539, 548, n.12 (D. Del. 2010). There is no indication about the status of the
`reexamination proceeding or whether these statements were precluded or not by
`that court.
`
`The ‘151 IPR Denial is relevant and Probative to Defendants’
`Defenses
`
`Defendants’ arguments that the USPTO did not fully consider Siemens
`004 are wrong. The 20 page decision of the ‘151 IPR Denial demonstrates that
`the USPTO expressly considered the Siemens 004 reference, both alone and in
`combination with other prior art. Defendants’ arguments that anticipation is not
`obviousness are irrelevant. As noted supra, the ‘151 IPR Denial expressly
`addresses whether the challenged claims of the ‘151 patent were obvious in light
`of Siemens 004 and other prior art. Ex. 1, Decision Denying Institution of Inter
`Partes Review at 18-19. Defendants’ assertions to the contrary are wrong.
`Because Siemens 004 was considered, both alone and in combination with other
`prior art, the ‘151 IPR Denial is relevant to show that the USPTO has considered
`the Siemens 004 reference.
`
`Admission of the ‘151 IPR Denial Would Not Expand the Scope of the
`Case
`
`Defendants’ assertion that InterDigital withheld key evidence from the
`
`C.
`
`D.
`
`Microsoft Corporation
`
`Exhibit 1036-00003
`
`

`

`The Honorable Richard G. Andrews
`September 5, 2014
`Page 4
`
`PTAB is wrong. Despite being aware of the ‘151 IPR Denial, as well as
`InterDigital’s intention to refer to the ‘151 IPR Denial, since at least July 21,
`2014, Defendants only now raise these allegations and demand discovery. These
`allegations are not pleaded in Defendants’ answer, nor set forth in any
`contentions at any point in this case. Thus, Defendants have waived raising this
`issue at this late stage in the litigation.
`
`Even if it is appropriate to raise the issue at this late date, Defendants
`inaccurately characterize the law governing inter partes review proceedings.
`Section 1.56 of 37 C.F.R., which is the regulatory basis for inequitable conduct
`claims, specifically does not apply to post grant proceedings. 77 Fed. Reg. 48638
`(“[IPR] Proceedings, not being applications for patents, are not subject to
`§1.56.”)(Response to Comment 105). Further, 37 C.F.R. § 42.51 relates to
`discovery obligations, which are generally effective only upon institution of an
`inter partes review. See, e.g., 77 Fed. Reg. 48637 (“Scheduling Order [issued
`after institution] will authorize the patent owner to begin taking routine
`discovery” but “additional discovery may be authorized [by the PTAB] prior to
`institution.”)(Response to Comment 102). No discovery was exchanged or
`authorized by the PTAB during the pendency of the petition that resulted in the
`‘151 IPR Denial.
`
`Finally, 37 C.F.R. § 42.11 does require a duty of candor and good faith in
`proceedings before the Office. However, the scope of this duty is “comparable to
`the obligations toward the tribunal imposed by Rule 11 of the Federal Rules of
`Civil Procedure.” 77 Fed. Reg. 48630 (Response to Comment 43). Even
`assuming that a pending petition qualifies as a proceeding under this regulation,
`nowhere do Defendants set forth facts demonstrating that InterDigital has
`violated Rule 11 in its conduct. This is because InterDigital has not.
`InterDigital’s arguments and filings before the PTAB were not for an improper
`purpose. Further, they were warranted by existing law and based on evidentiary
`support. Therefore, Defendants’ allegations have no factual or legal basis and
`should not prevent admission of the ‘151 IPR Denial.
`
`
`Respectfully,
`
`/s/ Neal C. Belgam
`
`Neal C. Belgam (No. 2721)
`
`cc: Clerk of Court
` Counsel of Record
`
`Microsoft Corporation
`
`Exhibit 1036-00004
`
`

`

`Exhibit 1
`
`Exhibit 1
`
`Microsoft Corporation
`Exhibit 1036-00005
`
`Microsoft Corporation
`
`Exhibit 1036-00005
`
`

`

`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 11
`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 1036-00006
`
`

`

`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 1036-00007
`
`

`

`Case IPR2014-00275
`Patent 7,941,151
`
`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 1036-00008
`
`

`

`Case IPR2014-00275
`Patent 7,941,151
`
`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 1036-00009
`
`

`

`Case IPR2014-00275
`Patent 7,941,151
`
`
`
`
`
`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 1036-00010
`
`

`

`Case IPR2014-00275
`Patent 7,941,151
`
`
`
`
`
`6
`
`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
`
`Microsoft Corporation
`
`Exhibit 1036-00011
`
`

`

`Case IPR2014-00275
`Patent 7,941,151
`
`
`3GPP
`
`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
`
`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 1036-00012
`
`

`

`Case IPR2014-00275
`Patent 7,941,151
`
`
`Reference(s)
`
`Siemens 004 and 3GPP
`
`Siemens 004 and InterDigital
`810
`
`Basis
`
`§ 103(a)
`
`§ 103(a)
`
`Siemens 004 and Motorola 683
`
`§ 103(a)
`
`Claims
`Challenged
`1-6 and 16-
`21
`1, 2, 16, and
`17
`8 and 23
`
`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 1036-00013
`
`

`

`Case IPR2014-00275
`Patent 7,941,151
`
`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 1036-00014
`
`

`

`Case IPR2014-00275
`Patent 7,941,151
`
`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).
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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 tha