UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION AND ZTE (USA) INC.
`and
`MICROSOFT CORPORATION,
`Petitioners,
`
`V.
`
`IPR LICENSING, INC.
`Patent Owner.
`____________
`Case IPR2015-000741
`Patent 8,380,244 B2
`_____________
`
`PATENT OWNER’S
`NOTICE OF APPEAL
`
`
`1 This proceeding has been joined with Case IPR2014-00525.
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION AND ZTE (USA) INC.
`and
`MICROSOFT CORPORATION,
`Petitioners,
`
`V.
`
`IPR LICENSING, INC.
`Patent Owner.
`____________
`Case IPR2015-000741
`Patent 8,380,244 B2
`_____________
`
`PATENT OWNER’S
`NOTICE OF APPEAL
`
`
`1 This proceeding has been joined with Case IPR2014-00525.
`
`
`
`
`
`
`
`Case: IPR2015-00074
`U.S. Patent No. 8,380,244
`
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that patent owner
`
`
`
`IPR Licensing, Inc. (“IPR Licensing”) appeals to the United States Court of
`
`Appeals for the Federal Circuit from the Final Written Decision entered by the
`
`Patent Trial and Appeal Board (the “Board”) on September 14, 2015 (Paper 23,
`
`labeled as Paper 48) (the “Final Written Decision,” a copy of which is attached
`
`hereto).
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), IPR Licensing further
`
`indicates that the issues on appeal may include, without limitation:
`
`• Whether the Board erred in determining that Petitioners ZTE
`
`Corporation, ZTE (USA) Inc., and Microsoft Corporation proved by a
`
`preponderance of the evidence that claims 1-8, 14-16, 19-29, 36-38,
`
`and 41-44 of U.S. Patent No. 8,380,244 are obvious in light of the
`
`prior art, see 35 U.S.C. § 103, along with all reasons, findings,
`
`opinions, and orders leading thereto or underlying that decision;
`
`• Whether the Board erroneously applied the “broadest reasonable
`
`interpretation” standard in its construction of the disputed claims, see
`
`37 C.F.R. § 42.100(b);
`
`
`
`
`
`• Whether the Board erroneously instituted review; and
`
`Case: IPR2015-00074
`U.S. Patent No. 8,380,244
`
`
`• Whether the Board otherwise erroneously exercised or exceeded its
`
`authority.
`
`Simultaneous with this submission, a copy of this Notice of Appeal is being
`
`filed with the Board, and an electronic copy, along the required docketing fee, are
`
`being filed with the United States Court of Appeals for the Federal Circuit.
`
`Dated: November 13, 2015
`
`Respectfully submitted,
`
`
`
`
`
`/s/ Jonathan D. Link
`Jonathan D. Link
`LATHAM & WATKINS LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`
`Julie M. Holloway
`LATHAM & WATKINS LLP
`505 Montgomery Street
`Suite 2000
`San Francisco, CA 94111-6538
`Telephone: (415) 391-0600
`Facsimile: (415) 395-8095
`
`Counsel for Patent Holder
`IPR Licensing, Inc.
`
`
`2
`
`
`
`
`
`Case: IPR2015-00074
`U.S. Patent No. 8,380,244
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, in addition to being filed electronically through the
`
`Patent Trial and Appeal Board’s Patent Review Processing System (PRPS), the
`
`foregoing Patent Owner IPR Licensing, Inc.’s Notice of Appeal was delivered by
`
`hand on this 13th day of November, 2015, to the Director of the United States
`
`Patent and Trademark Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
` I
`
` further certify that, on this 13th day of November, 2015, an electronic copy
`
`of the foregoing Patent Owner IPR Licensing, Inc.’s Notice of Appeal, along with
`
`the required docketing fee, was submitted electronically with the United States
`
`Court of Appeals for the Federal Circuit.
`
`I further certify that on this 13th day of November, 2015, true and correct
`
`copies of the foregoing Patent Owner IPR Licensing, Inc.’s Notice of Appeal were
`
`served by electronic mail, upon the following counsel of record for Petitioners
`
`Microsoft Corp., ZTE Corporation and ZTE (USA) Inc.:
`
`
`
`
`
`Lead Counsel
`Charles M. McMahon
`Brinks Gilson & Lione
`NBC Tower, Suite 3600
`455 North Cityfront Plaza Drive
`Chicago, IL 60611-5599
`Telephone: (312) 321-4200
`Facsimile:
`(312) 321-4299
`E-mail: cmcmahon@brinksgilson.com
`
`Counsel for Petitioners ZTE Corp. &
`ZTE (USA) Inc.
`Joseph A. Micallef
`Reg. No. 39,772
`Sidley Austin LLP
`1501 K Street, NW
`Washington, DC 20005
`E-mail: jmicallef@sidley.com
`Telephone: (202) 736-8492
`
`Counsel for Petitioner Microsoft Corp.
`
`
`
`
`
`Case: IPR2015-00074
`U.S. Patent No. 8,380,244
`
`
`Backup Counsel
`Brian A. Jones
`Brinks Gilson & Lione
`NBC Tower, Suite 3600
`455 North Cityfront Plaza Drive
`Chicago, IL 60611-5599
`Telephone: (312) 321-4200
`Facsimile:
`(312) 321-4299
`E-mail: bjones@brinksgilson.com
`
`Douglas I. Lewis
`Reg. No. 39,748
`Sidley Austin LLP
`One South Dearborn
`Chicago, IL 60603
`E-mail: dilewis@sidley.com
`Telephone: (312) 853-4169
`
`Scott M. Border
`Sidley Austin LLP
`1501 K Street, NW
`Washington, DC 20005
`E-mail: sborder@sidley.com
`Telephone: (202) 736-8818
`
`By:
`
`/s/ Jonathan D. Link
`Jonathan D. Link
`
`
`
`2
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 48
`Entered: September 14, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION and ZTE (USA) INC.,
`and
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`IPR LICENSING, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-005251
`Patent 8,380,244 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`1 Case IPR2015-00074 has been joined with this proceeding.
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`I. INTRODUCTION
`
`ZTE Corporation and ZTE (USA) Inc. (collectively, “Petitioner”)
`
`filed a corrected Petition requesting inter partes review of claims 1–8, 14–
`
`16, 19–29, 36–38, and 41–44 of U.S. Patent No. 8,380,244 B2 (Ex. 1001,
`
`“the ’244 patent”). Paper 9 (“Pet.”). IPR Licensing, Inc. (“Patent Owner”)
`
`filed a Patent Owner Preliminary Response (Paper 12 (“Prelim. Resp.”)).
`
`Pursuant to 35 U.S.C. § 324, the Board instituted trial as to claims 1–8, 14–
`
`16, 19–29, 36–38, and 41–44 on one ground of unpatentability, 35 U.S.C.
`
`§ 103(a). Paper 19 (“Dec.”).
`
`Subsequent to institution, we granted the Motion for Joinder filed by
`
`Microsoft Corporation, joining Case IPR2015-00074 with the instant trial.2
`
`Paper 31. Patent Owner filed a Patent Owner Response (Paper 25 (“PO
`
`Resp.”)) and Petitioner filed a Reply (Paper 38 (“Pet.Reply”)). Oral hearing
`
`was held on May 21, 2015, and a transcript of the hearing is in the record.
`
`Paper 47 (“Tr.”).
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has proven, by a
`
`preponderance of the evidence, that claims 1–8, 14–16, 19–29, 36–38, and
`
`41–44 of the ’244 patent are unpatentable.
`
`
`
`A. Related Proceedings
`
`
`
`The parties represent that the ’244 patent is the subject of the
`
`following judicial proceedings: (1) InterDigital Commc’ns Inc. v. ZTE
`
`
`2 In this Decision, we refer to ZTE Corporation and ZTE (USA) (the original
`Petitioner) and Microsoft Corporation (the joined Petitioner) collectively as
`“Petitioner.”
`
`2
`
`
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`Corp., Case No. 13-cv-00009-RGA (D. Del.), filed January 2, 2013; (2)
`
`InterDigital Commc’ns Inc. v. Nokia Corp., Case No. 13-cv-00010-RGA (D.
`
`Del.), filed January 2, 2013; and (3) InterDigital Commc’ns Inc. v. Samsung
`
`Elec. Co. Ltd., Case No. 13-cv-00011-RGA (D. Del.), filed January 2, 2013.
`
`Pet. 2; Paper 6, 2.
`
`
`
`B. The ’244 Patent (Ex. 1001)
`
`The ’244 patent is directed to a system and method of short-range,
`
`high-speed, and long-range, lower-speed, data communications using a dual-
`
`mode unit. Ex. 1001, Abstract. The wireless communication path is
`
`selected based on a request to establish a communication session between
`
`first and second sites, by first determining whether the first wireless digital
`
`communication path is available. Id. at 3:19–22. The first wireless
`
`communication path is a wireless LAN connection, and the second wireless
`
`communication path is a cellular connection. Id. at 3:23–28. The ’244
`
`patent describes several embodiments for indicating availability of the first
`
`wireless communication mode. Id. at 3:44–54. For example, if the first
`
`wireless communication path is unavailable, the communication session is
`
`established using the second wireless communication path, and “the local
`
`wireless transceiver is controlled to make it appear to the second wireless
`
`digital communication path as though the bandwidth were continuously
`
`available during the communication session, irrespective of any actual need
`
`to transport data communication signals between said first and second sites.”
`
`Id. at 3:60–4:1.
`
`In another example, the second wireless digital communication path
`
`“is provided by establishing a logical connection using a higher layer
`
`3
`
`
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`protocol, such as a network layer protocol” from a subscriber unit to an
`
`intended peer node. Id. at 4:5–11. The network layer logical connection “is
`
`made through a wireless channel that provides a physical layer connection
`
`between the portable computer node, through a base station, and the
`
`intended peer node.” Id. at 4:11–14. The physical layer channel is released,
`
`“while maintaining the appearance of a network layer connection to the
`
`higher level protocols.” Id. at 4:16–18. The ’244 patent contemplates that
`
`the physical links “are preferably known wireless communication air
`
`interfaces using digital modulation techniques such as [the] Code Division
`
`Multiple Access (CDMA) standard . . . . [O]ther wireless communication
`
`protocols and other types of links 30 may also be used to advantage with the
`
`invention.” Id. at 5:31–37.
`
`This embodiment is illustrated in Figure 6, reproduced below:
`
`
`
`Figure 6 is a block diagram illustrating the subscriber unit.
`
`Specifically, the subscriber unit 101 connects to a computer 110 via a
`
`computer interface 120, to transmit data over the Internet via a first
`
`4
`
`
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`communication route or second communication route. Id. at 9:27–57. The
`
`interface establishes a connection over the first, faster wireless
`
`communication path 213, e.g., wireless local area network (WLAN), if
`
`available, using a protocol such as IEEE 802.1. Id. at 3:23–27, 8:46–59,
`
`9:40–42. If the WLAN connection is not available, the interface
`
`automatically switches to a second, slower, wireless digital long-range
`
`communication path, e.g., CDMA. Id. at 3:29–50, 9:15–57. When data are
`
`being transmitted over the second communication path, the CDMA protocol
`
`converter initiates a spoofing function, so that it appears to the terminal
`
`equipment that the subscriber unit is connected to the public network at all
`
`times. Id. at 9:58–63. The bandwidth management function allocates and
`
`deallocates CDMA radio channels, and is also responsible for dynamic
`
`management of bandwidth allocated to a session by “dynamically allocating
`
`sub-portions of the CDMA radio channels 160” using a wireless
`
`communication protocol. Id. at 9:66–10:3. The ’244 patent explains how in
`
`the long range, lower data rate mode:
`
`wireless bandwidth is allocated only when there is actual data
`present from the terminal equipment to the CDMA transceiver
`. . . . [W]hen 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.
`
`Id. at 10:34–43.
`
`
`
`
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1 and 23 are independent. Claims 2–
`
`8, 14–16, 19–22 depend directly or indirectly from claim 1; and claims 24–
`
`5
`
`
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`29, 36–38, and 41–44 depend directly or indirectly from claim 23. Claim 1
`
`follows:
`
`1. A subscriber unit comprising:
`
`a cellular transceiver configured to communicate with a
`cellular wireless network via a plurality of assigned physical
`channels;
`
`an IEEE 802.11 transceiver configured to communicate
`with an IEEE 802.11 wireless local area network; and
`
`a processor configured to maintain a communication
`session with the cellular wireless network in an absence of the
`plurality of assigned physical channels while the IEEE 802.11
`transceiver communicates packet data with the IEEE 802.11
`wireless local area network.
`
`Ex. 1001, 11:5–16.
`
`
`Petitioner relies on the following prior art references (Pet. 4–6):
`
`D. Prior Art
`
`Jawanda
`
`GPRS
`Standards
`
`
`References Patents/Printed
`Publications
`U.S. Patent No. 6,243,581 B1
`
`General Packet Radio Service
`Standards3
`GSM 02.60 v. 6.1.1 R97
`GSM 03.02 v. 6.1.0 R97
`GSM 03.60 v. 6.1.1 R97
`GSM 04.07 v. 6.1.0 R97
`GSM 04.08 v. 6.1.1 R97
`GSM 04.60 v. 6.1.0 R97
`GSM 04.64 v. 6.1.0 R97
`
`Date
`
`Exhibit
`
`June 5, 2001
`(filed Dec. 11, 1998)
`
`
`1003
`
`1005
`
`Nov. 1998
`July 1998
`Aug. 1998
`July 1998
`Aug. 1998
`Aug. 1998
`July 1998
`
`1005.01
`1005.02
`1005.03
`1005.04
`1005.05
`1005.06
`1005.07
`
`
`3 GPRS Standards refer to ten technical specifications for the General Packet
`Radio Service (“GPRS”) on Global System for Mobile Communications
`(“GSM”) networks allegedly published by the European
`Telecommunications Standards Institute on the dates indicated. Pet. 6.
`
`6
`
`
`
`
`
`July 1998
`July 1998
`Oct. 1998
`Aug. 20, 1999
`
`1005.08
`1005.09
`1005.10
`1019
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`
`GSM 04.65 v. 6.1.0 R97
`GSM 05.01 v. 6.1.1 R97
`GSM 03.64 v. 6.1.0 R97
`Part 11: Wireless LAN
`Medium Access Control
`(MAC) and Physical Layer
`(PHY) Specifications, IEEE
`802.11 Standard, Institute of
`Electrical and Electronics
`Engineers.
`
`IEEE
`802.11
`Standard
`
`
`
`E. Instituted Grounds
`
`We instituted the instant trial based on the following ground of
`
`unpatentability. Dec. 22.
`
`References
`
`Basis
`
`Claims Challenged
`
`Jawanda, the GPRS Standard
`and IEEE 802.11 Standard
`
` § 103(a) 1–8, 14–16, 19–29, 36–38,
`and 41–44
`
`
`
`III. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`
`Citing the testimony of its declarant, Dr. Bims, Petitioner asserts that
`
`the person of ordinary skill in the art “would have a master’s degree or the
`
`equivalent in electrical engineering and three or more years of work
`
`experience relating to data communications over wireless networks.”
`
`Pet. 18–19 (citing Ex. 1002 ¶ 90). Notwithstanding Petitioner’s assertions
`
`regarding the level of ordinary skill in the art, we find that the level of
`
`ordinary skill in the art is reflected by the prior art of record. See Okajima
`
`v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57
`
`7
`
`
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA
`
`1978).
`
`
`
`Based on the stated qualifications of Dr. Harry Bims (Ex. 1002 ¶¶ 10–
`
`16) and his Curriculum Vitae (Id. at Appendix A), we find Petitioner’s
`
`Declarant is qualified to testify in this case. Likewise, based on the stated
`
`qualifications of Dr. Wayne E. Stark (Ex. 2005 ¶¶ 7–13) and his Curriculum
`
`Vitae (Id. at Appendix 1), we find Patent Owner’s Declarant is qualified to
`
`testify in this case.
`
`
`
`B. Claim Interpretation
`
`
`
`In an inter partes review, the Board interprets a claim term in an
`
`unexpired patent according to the broadest reasonable construction in light
`
`of the specification of the patent in which it appears. 37 C.F.R.
`
`§ 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
`
`1278–79 (Fed. Cir. 2015). (“Congress implicitly approved the broadest
`
`reasonable interpretation standard in enacting the AIA,” and “the standard
`
`was properly adopted by PTO regulation.”).
`
`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). An inventor may rebut that presumption by providing a
`
`definition of the term in the specification with “reasonable clarity,
`
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`
`Cir. 1994). In the absence of such a definition, limitations are not to be
`
`8
`
`
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`read from the specification into the claims. In re Van Geuns, 988 F.2d
`
`1181, 1184 (Fed. Cir. 1993).
`
`Petitioner proposes the same constructions for the following claim
`
`terms as in the related district court proceeding:
`
`Claim Term
`
`Proposed Construction
`
`plurality of assigned physical
`channels
`
`release
`allocate
`deallocate
`maintain a communication
`session with the cellular
`wireless network in an absence
`of the plurality of assigned
`physical channels
`
`plurality of physical channels
`available for the subscriber unit to
`select for use
`make no longer assigned
`select for use
`select to stop using
`maintain a logical connection with
`the cellular wireless network when
`none of the plurality of physical
`channels are in use by the
`subscriber unit
`
`Pet. 9–10.
`
`Citing claims 1 and 15 by way of example, Petitioner contends that the terms
`
`‘“allocate’ and ‘assign’ must have different meanings because the claims
`
`require physical channels be both ‘assigned’ and ‘allocated.”’ Id. at 10.
`
`Relying on the testimony of Dr. Bims, Petitioner asserts that “allocate” and
`
`“deallocate” are opposite states that describe “whether or not the subscriber
`
`unit has selected to use or to stop using an assigned channel” (id. (citing Ex.
`
`1002 ¶¶ 97–99)), because the “subscriber unit cannot use (allocate) a
`
`resource (physical channel) until it has been made available (assigned) to the
`
`subscriber unit” (id. at 11 (citing Ex. 1002 ¶ 97)). Petitioner also points to
`
`relevant passages from the Specification of the ’244 patent to support its
`
`claim construction. Id. at 11–12 (citing Ex. 1001, 7:24–29; 10:34–43; Ex.
`
`9
`
`1002 ¶ 99).)
`
`
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`
`In its Preliminary Response, Patent Owner disagreed generally with
`
`Petitioner’s proposed claim constructions for each of these limitations,
`
`arguing that “there is no need to address claim construction at this stage.”
`
`Prelim. Resp. 11. Based on the evidence of record at that time, we saw “no
`
`need to construe expressly any of the terms in the challenged claims at this
`
`time.” Dec. 10. With the record fully developed, we again consider the
`
`parties’ arguments. Presently, Patent Owner agrees with Petitioner that the
`
`terms “assigned physical channels” and “maintain a communication session
`
`with the cellular network in an absence of the plurality of assigned physical
`
`channels” require construction. PO Resp. 13.
`
`We concur with the parties that the terms “assigned physical
`
`channels” and “maintain a communication session with the cellular network
`
`in an absence of the plurality of assigned physical channels” require
`
`construction. As to all other claim terms, we give these claim terms their
`
`broadest reasonable construction in light of the specification. See 37 C.F.R.
`
`§ 42.100(b).
`
`1. “plurality of assigned physical channels”
`
`Claim 1 recites the term “plurality of assigned physical channels.”
`
`The parties seemingly agree that we should adopt the relevant claim
`
`construction from the pending district court proceeding of “physical
`
`channels available for the subscriber unit to select for use.” Pet. 9–16; PO
`
`Resp. 13–15. Where the parties diverge is in the meaning of this
`
`construction.
`
`Patent Owner argues that the district court correctly limited the
`
`construction of “assigned physical channels” to the embodiment shown in
`
`Figure 6, because as the ’244 patent explains, “it is the subscriber unit, not
`
`10
`
`
`
`
`
`IPR2014-00525
`Patent 8,380,244 B2
`
`the network or base station, that selects the physical channels that the
`
`subscriber unit uses to transfer data.” PO Resp. 14 (citing Ex. 2005 ¶ 56).
`
`In particular, Patent Owner contends that the subscriber unit, and not the
`
`network or base station, selects the physical channels the subscriber unit
`
`uses to transfer data, and after the physical channels are made available, “a
`
`subset of those available channels are selected for use.” Id. at 15 (citing
`
`(Ex. 2009, 15). To support its proposed construction, Patent Owner directs
`
`our attention to passages in the Specification describing Figure 6 as
`
`representative of the “present invention.” Id. at 14 (citing Ex. 1001, 4:59–
`
`60, 9:28–28). In addition, Patent Owner highlights passages from the
`
`Specification explaining how the wireless bandwidth function is responsible
`
`for allocating and deallocating CDMA radio channels (id. (citing Ex. 1001,
`
`9:64–66), and “wireless bandwidth is allocated only when there is actual
`
`data present” (id. (citing Ex. 1001, 10:33–36)).
`
`Petitioner notes that the parties agree that the claims recite a two-step
`
`process “in which channels are first made available (assigned) and then they
`
`are selected for use (allocated).” Reply 3 (citing Pet. 9–13; Ex. 1002 ¶¶ 97–
`
`98; Ex. 2005 ¶ 70; Ex. 1025, 31:14–16). Petitioner argues that the language
`
`of claim 1 does not indicate “which entity must choose, or ‘assign’ the
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`channels (e.g., base station or subscriber unit) or how many of those
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`channels must be used (e.g., all, some, or none),” and instead recites “what
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`must happen in their absence.” Id. (citing Pet 11–12; Ex. 1001, 11:12–16).
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`We note that Claim 1 recites “a cellular transceiver configured to
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`communicate with a cellular wireless network via a plurality of assigned
`
`physical channels.” Ex. 1001, 11:7–9. Dependent claim 15 further recites
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`that “the processor is further configured to allocate and deallocate at least
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`11
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`one of the plurality of assigned physical channels.” Id. at 12:1–3. This
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`additional limitation in claim 15 does not change the meaning of the claim
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`term “assigned physical channels,” rather it recites an additional function
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`regarding the capability of the processor to allocate or deallocate at least one
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`of the plurality of assigned physical channels. Unlike Petitioner, Patent
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`Owner does not propose specifically a construction for the term “allocate.”
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`Patent Owner’s argument is instructive, however, in our construction of the
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`term “assigned.” According to Patent Owner, “[t]he term ‘allocate’
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`therefore does not refer to merely making the physical channels available –
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`they are already available and the cell selects them ‘in order to support the
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`GPRS traffic’ – that is, as needed to transfer data.” PO Resp. 21 (citing Ex.
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`1005.10 §6.1.1). Thus, to the extent Petitioner argues that the terms “assign”
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`and “allocate” have different meanings, we agree.
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`Petitioner argues persuasively that the language of claim 1 does not
`
`dictate which entity actually chooses or assigns the physical channels, and
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`instead recites what happens in the absence of physical channels. Reply 3.
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`As noted by Petitioner, “[b]y reciting the past participle ‘assigned,’ claim 1
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`clearly indicates that the channels have already been assigned, and it does
`
`not matter whether the base station or the subscriber unit assigned them.”
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`Id. Based on the context of claim 1, Patent Owner’s proposed
`
`interpretation, particularly the language suggesting that the subscriber unit
`
`selects the assigned channels as well as the language suggesting that the
`
`assigned channels are selected from a subset of available channels, is not the
`
`broadest reasonable interpretation. We must be careful not to read
`
`limitations from a particular embodiment appearing in the specification into
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`12
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`the claim, if the claim language is broader than that embodiment. Van
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`Geuns, 988 F.2d at 1184.
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` Patent Owner’s reliance on the particular embodiment described in
`
`Figure 6 does not persuade us to read into the claim term “assigned physical
`
`channels” the requirement that the subscriber unit selects the assigned
`
`channels. See Dow Chem. Co. v. United States, 226 F.3d 1334, 1342 (Fed.
`
`Cir. 2000) (as a general rule, patent claims are not limited to the preferred
`
`embodiment).4 Nor are we persuaded by the passage in the Specification
`
`cited by Patent Owner, to read a requirement into the claim that the assigned
`
`channels are selected from a subset of available channels. “[D]isavowal
`
`requires that ‘the specification [or prosecution history] make[] clear that the
`
`invention does not include a particular feature.’” GE Lighting Solutions,
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`LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed
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`Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341
`
`(Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded
`
`that the Specification makes clear that claim 1 is limited to only the
`
`subscriber unit assigning the physical channels from a subset of channels.
`
`Therefore, for purposes of this Final Written Decision, we construe, in light
`
`of the Specification, the claim term “assigned physical channels” as
`
`“physical channels made available for use by the subscriber unit.”
`
`
`4 In contrast, we note that the district court issued a supplemental claim
`construction opinion that altered its original construction of “assigned
`physical channels,” finding that “the subscriber unit must select a subset of
`channels for use. . . .” Ex. 2022, 9–12. Unlike the district court, we apply
`the broadest reasonable interpretation standard in construing the claims. See
`Cuozzo, 793 F.3d at 1278–79.
`
`13
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`2. maintain a communication session with the cellular wireless
`network in an absence of the plurality of assigned physical
`channels
`
`Claim 1 includes the limitation “maintain a communication session
`
`with the cellular wireless network in an absence of the plurality of assigned
`
`physical channels.” Ex. 1001, 11:12–14. Claim 23 includes a similar
`
`limitation. Id. at 12:41–43. In its Petition, Petitioner argues that Patent
`
`Owner’s proposed construction from the related district court proceeding,
`
`i.e., maintain a logical connection with the cellular wireless network when
`
`none of the plurality of physical channels are in use by the subscriber unit,
`
`should be adopted. Pet. 13–15. Patent Owner agrees. PO Resp. 14–16.
`
`Upon considering the district court’s claim construction order, we determine
`
`that it is consistent with the broadest reasonable interpretation of those terms
`
`in light of the ’244 patent specification. Accordingly, we adopt the district
`
`court’s construction set forth above. See Ex. 2009 at 12–14.
`
`
`
`C. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such
`
`that the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art; (3)
`
`the level of ordinary skill in the art; and (4) objective evidence of
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`14
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`Patent 8,380,244 B2
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`n onobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`In that regard, an obviousness analysis “need not seek out precise teachings
`
`directed to the specific subject matter of the challenged claim, for a court
`
`can take account of the inferences and creative steps that a person of
`
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic,
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`504 F.3d at 1259.
`
`We analyze the asserted ground of unpatentability in accordance with
`
`the above-stated principles.
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`
`
`D. Analysis
`
`Petitioner asserts that claims 1–8, 14–16, 19–29, 36–38, and 41–44
`
`are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination
`
`of Jawanda, the GPRS Standards, and IEEE 802.11 Standard. Pet. 19–28.
`
`In its Petition, Petitioner explains how the combination of prior art technical
`
`disclosures meets each claim limitation and articulates a rationale to
`
`combine the teachings. Id. Petitioner further relies on the declaration of Dr.
`
`Bims to support the analysis advocated in the Petition. Ex. 1002.
`
`Patent Owner responds that the combination of Jawanda, the GPRS
`
`Standards, and IEEE 802.11 Standard does not disclose every claim element.
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`PO Resp. 17– 40. Patent Owner also argues that there is insufficient reason
`
`to combine the teachings of Jawanda, the GPRS Standards, and IEEE 802.11
`
`Standard. Id. at 40–46. To support its contentions, Patent Owner proffers
`
`the Declaration of Dr. Stark. Ex. 2005.
`
`For the reasons given below, after consideration of the Petition, the
`
`arguments in the Patent Owner Response, Petitioner’s Reply, and the
`
`evidence of record, we conclude that Petitioner has demonstrated, by a
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`15
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`Patent 8,380,244 B2
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`preponderance of the evidence, that each of claims 1–8, 14–16, 19–29, 36–
`
`38, and 41–44 of the ’244 patent is unpatentable over Jawanda, the GPRS
`
`Standards, and IEEE 802.11 Standard. We begin our discussion with a brief
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`summary of the cited references, and then we address the parties’
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`contentions in turn.
`
`1. Overview of Jawanda (Ex. 1003)
`
`Jawanda discloses a method and system for seamless roaming
`
`between wireless data communication networks with a mobile terminal.
`
`Ex. 1003, 1:10–13. Specifically, the system includes a plurality of wireless
`
`interfaces that:
`
`supports simultaneous wireless connections with first and
`second wireless communication networks, and a network access
`arbitrator that routes data communicated between the software
`executed by the data processing resources and the first and
`second wireless communication networks.
`
`Id. at 1:64–2:1.
`
`The system of wireless data communication between wireless data
`
`networks is illustrated in Figure 3, which is reproduced below.
`
`Fig. 3 is a schematic diagram of a wireless data communication
`system for seamless roaming between wireless networks.
`
`
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`16
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`Patent 8,380,244 B2
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`Jawanda discloses that the wireless signal can be transmitted
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`according to any currently available or future wireless data protocol such as
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`code division multiple access (CDMA), cellular digital packet data (CDPD),
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`or general packet radio service (GPRS). Id. at 3:6–8. One of the functions
`
`of the network access arbitrator is to cause “the transfer of datagrams to be
`
`seamlessly handed off from the wireless connection with wireless wide area
`
`network (WWAN) 10 to the wireless connection with WLAN 12 while
`
`maintaining the session between applications 90 and 91.” Id. at 5:35–39,
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`Fig. 4.
`
`Figure 4, reproduced below, describes “a high level logical flowchart
`
`of a method of wireless data communication in which a data communication
`
`session is seamlessly handed off between wireless data communication
`
`networks.” Ex. 1003, 4:20–23.
`
`Figure 4 illustrates communications handoff between wireless networks.
`
`
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`17
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`The methodology begins with the assumption that a wireless data
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`connection between a mobile device and a WWAN 10 has been established
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`outside the service area of the WLAN 12, and the mobile device travels into
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`the service area of the WWAN 12, and then returns to the remote location.
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`Id. at 4:24–30. In block 120, after detecting the availability of a higher
`
`bandwidth data connection, the mobile device establishes a second wireless
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`data connection with a WLAN. Id. at 5:20–32.
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