UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`MICROSOFT CORPORATION
`
`Petitioner
`
`v.
`
`IPR LICENSING, INC.
`
`Patent Owner
`
`U.S. Patent No.: 8,380,244
`Filed: November 9, 2009
`Issued: February 19, 2013
`
`Title: Dual Mode Unit for Short Range, High Rate and Long Range, Lower Rate
`Data Communications
`
`__________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,380,244
`
`Case No.: ________________
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`TABLE OF CONTENTS
`
`I.
`
`V.
`
`Mandatory Notices (37 C.F.R. § 42.8) ............................................................2
`A.
`Real Party-in-Interest (§ 42.8(b)(1)) .....................................................2
`B.
`Related Matters (§ 42.8(b)(2)) ..............................................................2
`C.
`Counsel and Service Information (§§ 42.8(b)(3)-(4))...........................2
`Payment of Fees (§ 42.15(a) and § 42.103).....................................................3
`II.
`III. Requirements for Inter Partes Review............................................................3
`A.
`Grounds for Standing (§ 42.104(a))......................................................3
`B.
`Identification of Challenged Claims (§ 42.104(b)(1)) ..........................8
`C.
`Priority Date, Prior Art and Specific Grounds for Challenging
`Claims (§ 42.104(b)(2)).........................................................................8
`Claim Construction (§ 42.104(b)(3)) ..................................................14
`1.
`“release,” “allocate,” and “deallocate” in conjunction
`with the “assigned physical channels”......................................15
`“maintain a communication session with the cellular
`wireless network in an absence of the plurality of
`assigned physical channels”......................................................21
`IV. Overview of the Technology .........................................................................24
`A.
`Alleged Invention................................................................................24
`B.
`Prior Art...............................................................................................25
`C.
`Prosecution History.............................................................................26
`D.
`Level of Skill of a Person of Ordinary Skill in the Art.......................27
`There Is a Reasonable Likelihood That at Least One Claim of the 244
`Patent Is Unpatentable. ..................................................................................27
`A.
`Ground 1: Under 35 U.S.C. § 103, Jawanda alone or in
`combination with the GPRS and IEEE 802.11 Standards
`renders the challenged claims obvious................................................28
`1.
`Jawanda and the GPRS and IEEE 802.11 Standards................28
`2.
`The Independent Challenged Claims........................................29
`
`D.
`
`2.
`
`ii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`3.
`4.
`
`The Dependent Challenged Claims ..........................................39
`There is a strong motivation to combine Jawanda with
`the IEEE 802.11 Standard and the GPRS Standards. ...............45
`Secondary Considerations Support Obviousness..........................................47
`VI.
`VII. Claim Charts ..................................................................................................48
`A.
`Jawanda and the GPRS and IEEE 802.11 Standards..........................48
`VIII. Conclusion .....................................................................................................60
`
`iii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`Pursuant to 35 U.S.C. § 311 et seq. and 37 C.F.R § 42.1 et seq., Microsoft
`
`Corporation (“Microsoft” or “Petitioner”) hereby petitions for Inter Partes Review
`
`of U.S. Patent No. 8,380,244 (“244 patent”). On September 17, 2014, the Patent
`
`Trial and Appeal Board instituted an Inter Partes Review of the 244 patent in Case
`
`No. IPR2014-00525 (“ZTE IPR”). Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.
`
`§§ 42.22 and 42.122(b), Petitioner submits concurrently herewith a request for
`
`joinder with the ZTE IPR. However, even if joinder is not granted, Petitioner
`
`respectfully request that a proceeding be instituted based on this petition alone.
`
`This petition demonstrates a reasonable likelihood that at least one of Claims
`
`1-8, 14-16, 19-29, 36-38, and 41-44 (“the challenged claims”) is obvious in view
`
`of the prior art discussed below. Indeed, the similar claims of related U.S. Patent
`
`No. 7,616,970 (“970 parent patent”), the parent of the 244 patent, have already
`
`been invalidated based on the same prior art. Applying the more demanding clear
`
`and convincing evidence standard, the International Trade Commission (“ITC”)
`
`held those claims invalid in its Final Determination in Investigation No. 337-TA-
`
`800 (“800 Investigation”). In the Matter of Certain Wireless Devices with 3G
`
`Capability and Components Thereof, USITC Inv. No. 337-TA-800, Comm’n Op.
`
`(Dec. 20, 2013). (Ex. 1011 at 293-382). As the claims of the 244 patent and the
`
`970 parent patent are similar and for the reasons set forth below, an inter partes
`
`review should be instituted, and all of the challenged claims should be held
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`unpatentable.
`
`I.
`
`MANDATORY NOTICES (37 C.F.R. § 42.8)
`
`A.
`
`Real Party-in-Interest (§ 42.8(b)(1))
`
`Microsoft Corporation is the real party-in-interest.
`
`B.
`
`Related Matters (§ 42.8(b)(2))
`
`The 244 patent is the subject of the following judicial or administrative
`
`matters, which may affect, or be affected by, a decision in this proceeding: (i)
`
`InterDigital Commc’ns Inc. v. ZTE Corp., Case No. 13-cv-00009-RGA (D. Del.),
`
`filed January 2, 2013; (ii) InterDigital Commc’ns Inc. v. Nokia Corp., Case No. 13-
`
`cv-00010-RGA (D. Del.), filed January 2, 2013; and (iii) ZTE Corp. et al. v. IPR
`
`Licensing, Inc., Case No. IPR2014-00525. Patent Owner and several InterDigital
`
`entities (collectively “InterDigital”) were the named Plaintiffs in the two listed
`
`district court cases.
`
`C.
`
`Counsel and Service Information (§§ 42.8(b)(3)-(4))
`
`Microsoft designates the following counsel:
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`Lead Counsel
`
`Backup Counsel
`
`John Haynes
`
`Reg. No. 44754
`
`Alston & Bird LLP
`
`One Atlantic Center
`
`David Frist
`
`Reg. No. 60511
`
`Alston & Bird LLP
`
`One Atlantic Center
`
`1201 West Peachtree Street
`
`1201 West Peachtree Street
`
`Atlanta, GA 30309-3424
`
`Atlanta, GA 30309-3424
`
`E-mail: john.haynes@alston.com
`
`E-mail: david.frist@alston.com
`
`Telephone: (404) 881-7737
`
`Telephone: (404) 881-7874
`
`Fax: (404) 253-8292
`
`Fax: (404) 253-8284
`
`Service of any document via hand-delivery, express mail, or regular mail
`
`may be made at the postal mailing addresses above. Electronic service may be
`
`made at the above-designated e-mail addresses.
`
`II.
`
`PAYMENT OF FEES (§ 42.15(A) AND § 42.103)
`
`Microsoft authorizes the Director to charge the filing fee specified by 37
`
`C.F.R. § 42.15(a), as well as any other necessary fees, to Account No. 16-0605.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`
`Grounds for Standing (§ 42.104(a))
`A.
`Petitioner hereby certifies that the 244 patent is available for inter partes
`
`review and that the Petitioner is not barred or estopped from requesting inter partes
`
`review challenging the claims of the 244 patent on the ground identified herein.
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`More particularly, Petitioner certifies that: (1) Petitioner is not the owner of the
`
`244 patent; (2) Petitioner has not filed a civil action challenging the validity of a
`
`claim of the 244 patent; (3) the estoppel provisions of 35 U.S.C. § 315(e)(1) do not
`
`prohibit this inter partes review; and (4) the 244 patent is a patent that is not
`
`described in section 3(n)(1) of the Leahy-Smith America Invents Act and so is
`
`available for this inter partes review, per 37 C.F.R. § 42.102(a)(2).
`
`Should joinder be granted, this Petition is proper because it has been filed
`
`within the time period set forth in 37 C.F.R. § 42.122. In the alternative, this
`
`Petition is proper under 35 U.S.C. § 315(b) because it is not filed more than one
`
`year after the date on which the Petitioner, the Petitioner’s real party-in-interest, or
`
`a privy of the Petitioner was served with a complaint alleging infringement of the
`
`244 patent.
`
`To date, Petitioner has not been served with a complaint alleging
`
`infringement of the 244 patent. The fact that Petitioner’s subsidiary, Nokia Inc.,
`
`was served with a complaint on March 13, 2013 does not bar the present petition.
`
`Petitioner’s wholly-owned subsidiary Microsoft Mobile Oy (“MMO”) acquired
`
`Nokia Inc. on April 25, 2014 and assumed certain liabilities related to the
`
`complaint filed against Nokia Inc. alleging infringement of the 244 patent. (Ex.
`
`1026 (Microsoft Press Release); Ex. 1027 (Pending Litigation Agreement)).
`
`Petitioner, however, was selling the Surface Pro 2 with a 3G and 4G chip and WiFi
`
`4
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`prior to the acquisition of Nokia Inc. and still does so today (Ex. 1028 (Microsoft
`
`Product Listing); Ex. 1029 (Surface 2 Launch)). Thus, Petitioner was and is
`
`exposed to liability under the 244 patent separate and apart from any liability to
`
`Nokia Inc. Moreover, because Petitioner acquired an interest in Nokia Inc. more
`
`than one year after the complaint was filed against Nokia Inc., Petitioner is not
`
`barred under § 315(b) because of the complaint filed against Nokia Inc. because
`
`Petitioner was not in privity with Nokia Inc.
`
`The relevant time period for determining privity under § 315(b) is “on the
`
`date of service of the complaint.” Chi Mei Innolux Corp. v. Seminconductor
`
`Energy Lab. Co., Ltd., IPR2013-00028, Paper 14 at 6; id. at 6-7 (“[Patent Owner]
`
`does not provide persuasive evidence or explanation establishing that [non-party]
`
`CMO (or Innolux) was a privy of the (eventual) Petitioner CMI [which was later
`
`formed from a merger of three companies, including non-party CMO] on the date
`
`of service of the complaint . . . As such, the service of a complaint against [CMO]
`
`more than a year before the filing of the instant Petition by CMI has not been
`
`demonstrated to run afoul of 35 U.S.C. § 315(b)”); see also Zoll LifeCor v. Philips,
`
`IPR2013-00616, Paper 17 at 15-16 (stating that the relevant time period for privity
`
`analysis is at the time the complaint is served). Further, Section 315(b) does not
`
`bar institution of inter partes review where parties became privies after the service
`
`of the complaint. ABB Tech., Ltd. v. IPCO, LLC, IPR2013-00482, Paper 8 at 10
`
`5
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`(P.T.A.B., Feb. 9, 2014) (finding that § 315(b) did not bar institution when a
`
`privity relationship was formed six (6) years after service of the complaint).
`
`Because Petitioner was not in privity with Nokia Inc. at the time the complaint was
`
`served, the present relationship between the companies does not bar institution
`
`under § 315(b).
`
`The fact that Petitioner’s subsidiary MMO acquired Nokia Inc. does not
`
`dictate a different result. Antitrust regulations, such as gun-jumping laws,
`
`precluded Microsoft from interfering with the InterDigital/Nokia litigation directly
`
`or via filings in the Patent Office. See Section 1 of the Sherman Act, 15 U.S.C. §
`
`1; Hart-Scott-Rodino Act, Section 7A of the Clayton Act, 15 U.S.C. § 18a.
`
`Because the transaction through which Petitioner acquired Nokia Inc. was not
`
`completed until after the one-year window expired, Microsoft could not influence
`
`or control any action by Nokia, Inc., including any decision on whether to file an
`
`IPR in response to the complaint filed against Nokia Inc. Further, Petitioner sells
`
`products separate and apart from the products sold by Nokia Inc. so Petitioner’s
`
`interests extend beyond those of Nokia Inc. Because Petitioner was and is exposed
`
`to liability separate from Nokia Inc., only obtained rights in Nokia Inc. after the
`
`one year period of § 315(b) expired, and was precluded from interfering with the
`
`Nokia litigation under gun-jumping laws, the present Petition cannot be barred
`
`based on the assumption of liabilities as a result of the acquisition of Nokia Inc.
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`See Apple, Inc. v. Achates Reference Pub. Co., IPR2013-00080, Paper 22 at 18-20
`
`(holding that being a co-defendant is not necessarily the type of relationship that
`
`would establish privity, if the co-defendant was exposed to liability separate and
`
`apart from the actions of the other co-defendant).
`
`Finally, MMO and Nokia Inc. are not real parties-in-interest to this Petition.
`
`The determination of whether a party is a real party-in-interest to a petition focuses
`
`on whether the non-party exercises, or could exercise, control over the petitioner’s
`
`participation in the proceeding, and whether the non-party is funding or directing
`
`the proceeding. Id. at 48,759-60; see also ABB Tech., Ltd. v. IPCO, LLC,
`
`IPR2013-00482, Paper 8 at 10 (P.T.A.B., Feb. 9, 2014) (“A primary consideration
`
`includes whether a non-party exercises control over a petitioner’s participation in a
`
`proceeding”). MMO and Nokia Inc. are subsidiaries of Petitioner and have no
`
`control over the present proceeding and are not funding or directing the
`
`proceeding. Medtronic, Inc. v. Robert -00488, Paper 17 at 9-11 (finding that a
`
`subsidiary was not a real party-in-interest to its parent’s petition because a parent
`
`company “has the ability to exercise some measure of control over its subsidiary,
`
`and not necessarily the reverse.”); see also ABB Tech., IPR2013-00482, Paper 8 at
`
`10-11 (Patent Owner did not set forth sufficient evidence that Petitioner’s sister
`
`company was a real party-in-interest where it showed only that the sister company
`
`would benefit from the IPR, but did not show that the sister company had control
`
`7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`over the proceeding); TRW Auto. US LLC v. Magna Elecs., Inc., IPR2014-00293,
`
`Paper 18 at 12 (two parties “related” to petitioner are not real parties-in-interest
`
`absent additional evidence regarding the two parties control, direction, or funding
`
`of the petitioner’s participation in the proceeding); Alcon Research, Ltd. v. Neev,
`
`IPR2014-00217, Paper 21 at 7 (fact that Petitioner is a subsidiary of non-party is
`
`not sufficient to demonstrate that non-party had control over Petitioner in the
`
`proceeding or was funding the proceeding, and therefore, non-party was not a real
`
`party-in-interest).
`
`Identification of Challenged Claims (§ 42.104(b)(1))
`B.
`Microsoft requests inter partes review of challenged claims 1-8, 14-16, 19-
`
`29, 36-38, and 41-44 and requests that each of these claims be found unpatentable
`
`and cancelled.
`
`C.
`
`Priority Date, Prior Art and Specific Grounds for Challenging
`Claims (§ 42.104(b)(2))
`
`For purposes of determining what is prior art to the 244 patent, InterDigital
`
`is limited to the September 21, 1999 priority date on the face of the 244 patent.
`
`(See Ex. 1001 (244 patent) at 1-2). In the 800 Investigation, the ITC rejected
`
`InterDigital’s attempt to show conception with diligence earlier than the filing date
`
`for the 970 parent patent, which shares the same specification as the 244 patent and
`
`claims only trivial differences. (Ex. 1011 (337-TA-800 ALJ’s Initial
`
`Determination (Public) at 342-45). To the extent that InterDigital offers evidence
`
`8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`and argues for a priority date earlier than September 21, 1999, Microsoft reserves
`
`the right to proffer arguments rebutting any alleged earlier conception, reduction to
`
`practice and/or diligence by InterDigital.
`
`Microsoft requests inter partes review of the 244 patent in view of the
`
`following references, which qualify as prior art based on the claimed priority date
`
`of September 21, 1999, as shown and discussed below.1
`
`Exhibit Description
`
`Dated
`
`Type of Prior Art
`
`1003
`
`U.S. Patent No. 6,243,581 to
`
`Dec. 11, 1998
`
`§ 102(e)
`
`Jawanda
`
`(U.S. filing date)
`
`1005
`
`GPRS Standards
`
`publicly available
`
`§§ 102(a) and (b);
`
`and in combination
`
`under § 103
`
`GSM 02.60 v. 6.1.1 R97 Nov. 1998
`
`GSM 03.02 v. 6.1.0 R97 July 1998
`
`GSM 03.60 v. 6.1.1 R97 Aug. 1998
`
`GSM 03.64 v. 6.1.0 R97 Oct. 1998
`
`GSM 04.07 v. 6.1.0 R97 July 1998
`
`1 Exhibits 1001 through 1024 to this Petition are identical to the exhibits with the
`same number in the ZTE IPR.
`
`9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`Exhibit Description
`
`Dated
`
`Type of Prior Art
`
`GSM 04.08 v. 6.1.1 R97 Aug. 1998
`
`GSM 04.60 v. 6.1.0 R97 Aug. 1998
`
`GSM 04.64 v. 6.1.0 R97 July 1998
`
`GSM 04.65 v. 6.1.0 R97 July 1998
`
`GSM 05.01 v. 6.1.1 R97 July 1998
`
`1019
`
`IEEE 802.11 Standard
`
`August 20, 1999
`
`§§ 102(a) and (b)
`
`There is no dispute that Jawanda is prior art against the 244 patent under 35
`
`U.S.C. § 102(e), as a U.S. patent issued from an application filed on December 11,
`
`1998, which was more than eight months prior to the September 21, 1999 priority
`
`date for the 244 patent.
`
`The IEEE 802.11 Standard is prior art because it was available to the
`
`interested public on or before August 20, 1999. (Exhibit 1019 at 00003).
`
`For purposes of this petition, “GPRS Standards” refers to the ten sections of
`
`the Global System for Mobile Communication (“GSM”) standard listed above,
`
`which define portions of the General Packet Radio Service (“GPRS”). Although
`
`the GPRS Standards are defined in a series of sections, one of ordinary skill in the
`
`art would treat the sections for each standard as a single, cohesive reference
`
`because they collectively define a single standard, specifically reference one
`
`10
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`another, and are not meant to be considered in isolation. (Ex. 1002 (Bims Decl.) at
`
`¶122). Therefore, it would have been obvious to one of ordinary skill in the art at
`
`the time to combine the selected documents for a given standard. The motivation
`
`to combine them is compelling because the documents are designed to work
`
`together as a single, coherent reference. (Id.). The standards sections can be
`
`considered different chapters of a manual for building and operating a standard-
`
`compliant cellular communication system, so it would be not only obvious, but
`
`also necessary, for a person of ordinary skill to read all the related sections of the
`
`standard together. (Id.).
`
`The GPRS Standards, and each of the constituent sections of the GPRS
`
`Standards, is prior art because it was available to the interested public on or before
`
`November 1998. (Ex. 1002 (Bims Decl.) at ¶¶120-121, 123; Ex. 1007 (3GPP TR
`
`21.900)).
`
`A document that has been made available to interested members of the
`
`public qualifies as a “printed publication” under 35 U.S.C. § 102. In re Hall, 781
`
`F.2d 897, 898-99 (Fed. Cir. 1986). Indeed, the Federal Circuit has upheld a
`
`previous finding by the Commission that similar GSM standards documents were
`
`widely available to the interested public. Kyocera Wireless Corp. v. U.S. Int’l
`
`Trade Comm’n, 545 F.3d 1340, 1350-51 (Fed. Cir. 2008) (finding that standards
`
`developed by the standards body responsible for the GPRS standards were
`
`11
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`sufficiently public to qualify as prior art).
`
`Although GSM 3.60 v. 6.1.1 R97 (Ex. 1005.03) and GSM 4.60 v. 6.1.0 R97
`
`(Ex. 1005.06) are labeled “Draft” and for “Public Enquiry,” the documents were
`
`still publicly available well prior to August 1999 (Ex. 1034 (Bims Supp.), ¶¶7-16;
`
`see also Ex. 1030 (“ETSI Working Procedures”)). The ETSI Working
`
`Procedures, which were publicly available in 1998, identify the document
`
`management process of the ETSI Working Group and explains how the GPRS
`
`specifications at issue were available to the public well prior to August 1999 (Ex.
`
`1034 (Bims Supp.), ¶¶8-11; Ex. 1030 (“ETSI Working Procedures”)).
`
`For example, the ETSI Working Procedures explain that a “Draft”
`
`specification is sent out for Public Enquiry (“PE”) (Ex. 1030 (ETSI Working
`
`Procedures), §§ 4.4.1, 4.4.2; Ex. 1034 (Bims Supp.), ¶ 10). In a section entitled
`
`“Availability and distribution of UMTS and GSM specifications” of the ETSI
`
`Working Procedures, the established procedures confirm that specifications that
`
`have reached the initiation of the Public Enquiry stage “are made available through
`
`the ETSI Publications Office (Fax: +33 93 95 81 33) to anybody (ETSI member or
`
`not)” and may be made available in paper copies at the delegates meetings (Ex.
`
`1030 (ETSI Working Procedures), §§ 4.5.1, 4.5.2; Ex. 1034 (Bims Supp.), ¶ 11).
`
`Current versions of the ETSI Drafting Rules, which specify the rules for
`
`structure and drafting of ETSI documents, also confirm that documents submitted
`
`12
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`for Public Enquiry are made publicly available (Ex. 1034 (Bims Supp.), ¶¶ 12-15;
`
`Ex. 1031 (ETSI Drafting Rules) at 196 (describing that, for ETSI, “public
`
`availability is a broader concept than publication” and confirming that “[a] Public
`
`Enquiry version of an ETSI deliverable is made publicly available by ETSI”); id.
`
`(defining “publicly available” as “a document that may be obtained from the
`
`source organization or its distribution channels by any person (with or without
`
`payment), simply by quoting the reference given in the ETSI deliverable to the
`
`source organization or other typical supplier (e.g. National Standards Organization,
`
`Library, etc.)” and stating that “ETSI deliverables are made publicly available
`
`during the various stages of the relevant approval procedures prior to publication
`
`and at the point of publication”). The ETSI Drafting Rules thus distinguish
`
`“publicly available” from “published” and define “published” as a specific case of
`
`public availability that occurs when “all relevant approval procedures have been
`
`successfully completed.” (Ex. 1031 (ETSI Drafting Rules) at 197; Ex. 1034 (Bims
`
`Supp.), ¶15).
`
`GSM 3.60 v. 6.1.1 R97 (Ex. 1005.03), and GSM 4.60 v. 6.1.0 R97 (Ex.
`
`1005.06), which each have a 1998 copyright date, are both documents that were
`
`submitted for Public Enquiry and thus were publicly available under ETSI
`
`guidelines. (Ex. 1034 (Bims Supp.), ¶16).
`
`Microsoft challenges claims 1-8, 14-16, 19-29, 36-38, and 41-44 based on
`
`13
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
`
`the following statutory grounds:
`
`Ground
`
`1
`
`Basis
`
`Under 35 U.S.C. § 103, Jawanda alone or in combination with the GPRS
`
`and IEEE 802.11 Standards renders the challenged claims obvious.
`
`Ground 1 asserted by Petitioner here is identical to Ground 1 asserted by
`
`ZTE in its IPR. (ZTE IPR, Paper 1 at 8; id., Paper No. 19 at 8, 20-21). As in the
`
`ZTE IPR, Petitioner alleges that Jawanda alone renders the challenged claims
`
`obvious. If Jawanda is found not to disclose a limitation related to the cellular
`
`network, then Jawanda in combination with the GPRS Standards renders that
`
`limitation obvious. If Jawanda is found not to disclose a limitation related to the
`
`802.11 network, then Jawanda in combination with the IEEE 802.11 Standards
`
`renders that limitation obvious. If Jawanda is found not to disclose limitations
`
`related to the 802.11 network and the cellular network, then Jawanda in
`
`combination with the GPRS and IEEE 802.11 Standards renders that limitation
`
`obvious.
`
`Claim Construction (§ 42.104(b)(3))
`D.
`A claim subject to inter partes review receives its broadest reasonable
`
`construction in light of the patent’s specification. 37 C.F.R. § 42.100(b). In
`
`determining the broadest reasonable construction, the Patent Office may consider
`
`the patentee’s prior statements concerning the scope of the claims. 35 U.S.C. §
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`14
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`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
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`301. Microsoft offers proposed claim constructions only to comply with 37 C.F.R.
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`§ 42.100(b) and for the sole purpose of this Petition. Therefore, Microsoft’s
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`proposed constructions in this Petition do not bind Microsoft in any infringement
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`litigation, where a different claim construction standard applies. The constructions
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`proposed below by Microsoft are identical to the constructions offered by ZTE in
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`its IPR.
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`Since the filing of the petition in the ZTE IPR, the court in the pending ZTE
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`and Nokia Delaware district court cases issued a Markman Order construing each
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`of the terms identified in the ZTE IPR (see Ex. 1025 (Delaware Claim
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`Construction Opinion)). The following explains why ZTE’s proposed
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`constructions are appropriate for this IPR and how those proposed constructions
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`are consistent with the Delaware Markman Order and the broadest reasonable
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`construction of the terms.
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`1.
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`“release,” “allocate,” and “deallocate” in conjunction with
`the “assigned physical channels”
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`The claims of the 244 patent recite various forms of the terms “release,”
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`“allocate,” and “deallocate” when referring to the “assigned physical channels.”
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`For example, Claims 1, 5, 7, 15, and 21 recite the term “assigned physical
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`channels.” Claims 5 and 21 recite the “release” of assigned physical channels.
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`Claim 15 recites a configuration that can “allocate” and “deallocate” the assigned
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`physical channels. All of these terms are used to describe states or state changes of
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`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
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`the “physical channels” of the cellular wireless network. In order to keep these
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`terms in context of the “assigned physical channel” to which the “release,”
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`“allocate,” and “deallocate” actions apply, the terms are discussed together below.
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`In the pending Nokia and ZTE district court proceedings, the parties
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`proposed constructions for “[a]/[the] plurality of assigned physical channel” and
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`separate constructions for “release,” “allocate,” and “deallocate.” For purposes of
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`this petition, Microsoft submits that the constructions of the Delaware district
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`court, which mirror Nokia and ZTE’s proposals, should be adopted.
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`Nokia and ZTE
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`InterDigital
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`Delaware
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`Construction
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`plurality of
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`plurality of physical
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`two or more physical
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`[plurality of] physical
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`assigned
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`channels available for
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`layer channels
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`channels available for
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`physical
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`the subscriber unit to
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`allocable by the
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`the subscriber unit to
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`channels
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`select for use
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`subscriber unit as
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`select for use
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`needed to transfer data
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`release
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`make no longer
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`stop the subscriber unit
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`make no longer
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`assigned
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`from using
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`assigned
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`allocate
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`select for use
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`Assign
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`select for use
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`deallocate
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`select to stop using
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`stop the subscriber unitselect to stop using
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`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
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`from using
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`(Ex. 1008 (10-8-13 Amended Joint Cl. Const. Chart) at Ex. A, p. 18-23; Ex. 1025
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`(Delaware Claim Construction Opinion) at 14-16).
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`The Delaware district court’s constructions should be adopted because they
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`accurately reflect that the terms “allocate” and “assign” have different meanings.
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`The claim language itself mandates that “allocate” and “assign” must have
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`different meanings because the claims require physical channels to be both
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`“assigned” and “allocated.” For example, claim 1 recites “a plurality of assigned
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`physical channels,” which means that the physical channels have already been
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`assigned. Claim 15, which depends from claim 1, recites that “the processor is
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`further configured to allocate and deallocate at least one of the plurality of
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`assigned physical channels.” (Ex. 1001 (244 patent), 12:1-3). As a result,
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`“allocate” must mean something different from “assign.”
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`The Delaware district court’s constructions give consistent meaning to each
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`word in the claim. “Assign” is the opposite of “release” and, thus, a state of
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`“assigned” or “released” describes whether or not the subscriber unit has been
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`given permission to use a physical channel. (Ex. 1002 (Bims Decl.) at ¶¶97-99;
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`Ex. 1001 (244 patent) at 7:24-29, 9:64-66, 10:34-38). Similarly, “allocate” is the
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`opposite of “deallocate” and, thus, a state of “allocated” or “deallocated” describes
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`whether or not the subscriber unit has selected to use or to stop using assigned
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`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
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`channels. (Id.). This is driven by the well-known network requirement that a
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`subscriber unit cannot use (allocate) a resource (physical channel) until it has been
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`made available (assigned) to the subscriber unit. (Ex. 1002 (Bims Decl.) at ¶97).
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`The intrinsic record supports Nokia and ZTE’s proposed constructions for
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`each of these terms. (See Ex. 1009 (Joint Cl. Const. Br.) at 71-81; Ex. 1002 (Bims
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`Decl. at ¶¶98-99; Ex. 1001 (244 patent) at 7:24-29, 9:64-66, 10:34-38). The
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`specification of the 244 patent teaches that the subscriber unit includes a
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`bandwidth management function that selects assigned channels for use [i.e.,
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`allocates assigned channels] as needed to send data. (Ex. 1001 (244 patent) 7:24-
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`29; Ex. 1002 (Bims Decl.) at ¶98). For example, the specification explains how
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`the subscriber unit may allocate assigned channels depending on whether the
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`channels are needed to send data at any particular time:
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`[W]ireless bandwidth is allocated only when there is actual data
`present from the terminal equipment to the CDMA transceiver 140.
`Therefore, the network layer need not allocate the assigned wireless
`bandwidth for the entirety of the communications session. That is,
`when data is not being presented upon the terminal equipment to the
`network equipment,
`the bandwidth management
`function 134
`deallocates initially assigned radio channel bandwidth 160 and makes
`it available for another transceiver and another subscriber unit 101.
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`(Ex. 1001 (244 patent) 10:34-43; see also Ex. 1002 (Bims Decl.) at ¶99).
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`It is clear from the first two sentences of this passage that the patentee
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`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
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`understood the difference between “assign” and “allocate” and intentionally used
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`those words to mean different things. The patent unmistakably uses “assigned” to
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`mean a channel that has been made available for the subscriber unit to use—even if
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`the subscriber unit is not actually using the channel. By contrast, to “allocate” an
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`assigned channel means to “select” that channel for use to send data. (Ex. 1002
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`(Bims Decl.) at ¶¶98-99). The last sentence of the quoted passage further confirms
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`that the subscriber unit “deallocates” assigned bandwidth when not needed to
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`transmit data. In other words, the device stops using the assigned bandwidth when
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`it has no data to transmit. (Ex. 1002 (Bims Decl.) at ¶99; Ex. 1001 (244 patent) at
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`9:64-66, 10:34-38)).
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`InterDigital’s proposed constructions in Delaware are circular and
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`nonsensical. For example, InterDigital has proposed that “allocate” means
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`“assign.” Substituting this interpretation into the language of claim 15 would
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`result in a circular and indefinite claim limitation: “the processor is further
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`configured to assign and deallocate at least one of the plurality of assigned
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`physical channels.” See Becton, Dickinson & Co. v. Tyco Healthcare Grp,. LP,
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`616 F.3d 1249, 1255 (Fed. Cir. 2010) (“A claim construction that renders asserted
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`claims facially nonsensical ‘cannot be correct.’”). The 244 patent's specification
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`also distinguishes between “allocate” and assigned”: “[T]he network layer need not
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`allocate the assigned wireless bandwidth for the entirety of the communications
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`Petition for Inter Partes Review of U.S. Patent No. 8,380,244
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`session.” (Ex. 1001 (244 patent) at 10: 36-38 (emphasis added).
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`In addition, taken together, InterDigital’s proposed constructions would
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`inject the unsupported requirement that the subscriber unit itself must “assign” the
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`physical channels. Specifically, considering InterDigital’s construction of
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`“allocate,” the term “assigned physical channels” would mean “two or more
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`physical layer channels [assignable] . . .” This result does not make any sense as a
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`channel that has already been assigned cannot be assignable. In contrast, the
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`intrinsic record supports Nokia and ZTE’s proposed construction for “assigned
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`physical channels,” which means “physical channels available for the subscriber
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`unit to select for use” (e.g., Ex. 1001 (244 patent) at 2:8-10; 6:30-7:2; 10:36-38).
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`The specification explains that “[t]he bandwidth management function 134 is
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`responsible for allocating and deallocating CDMA radio channels 160 as
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`required,” b