Filed on behalf of: IPR LICENSING, INC.
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`Entered: December 5, 2014
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`Jonathan D. Link
`Latham & Watkins LLP
`555 11th Street, NW
`Washington, D.C. 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`E-mail: jonathan.link@lw.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`IPR LICENSING, INC.
`Patent Owner
`_______________________
`
`Case IPR2015-00074
`U.S. Patent No. 8,380,244
`_______________________
`
`Before PATRICK E. BAKER, Trial Paralegal.
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`MICROSOFT CORPORATION’S PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,380,244
`
`
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`

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`
`TABLE OF CONTENTS
`
`Case IPR2015-00074
`U.S. Patent No. 8,380,244
`
`Page
`
`Introduction And Summary Of Preliminary Response ................................... 1
`
`Legal Standards ............................................................................................... 3
`
`
`
`I.
`
`II.
`
`III. Overview Of the ‘244 Patent ........................................................................... 5
`
`IV. Overview Of The Prosecution History ............................................................ 7
`
`V.
`
`Claim Construction ........................................................................................ 10
`
`VI. The 800 ITC Investigation ............................................................................. 10
`
`VII.
`
`the Petition Should be Denied as Duplicative ............................................... 12
`
`VIII. Microsoft Has Failed To Make A Prima Facie Case Of Invalidity ............... 15
`
`A.
`
`The Petition Fails To Establish A Reasonable Likelihood That
`The Claims Of The ‘244 Patent Would Have Been Obvious ............. 15
`
`1.
`
`The Petition Fails To Demonstrate A Reasonable
`Likelihood That The Challenged Claims Are Obvious In
`View Of “Ground 1” ................................................................. 16
`
`B. Microsoft Has Failed To Establish That The “GPRS Standards”
`Are Prior Art ........................................................................................ 24
`
`IX. The Petition Is Barred Under 35 U.S.C. § 315(b) ......................................... 26
`
`A.
`
`B.
`
`C.
`
`D.
`
`Factual Background ............................................................................. 27
`
`The Plain Language Of 35 U.S.C. § 315(b) Bars The Petition ........... 28
`
`Nokia Is A Privy Of Microsoft ............................................................ 32
`
`Petitioner’s Purported Liability “Separate And Apart” From
`Nokia’s Liability Is Irrelevant ............................................................. 34
`
`X.
`
`Conclusion ..................................................................................................... 35
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`i
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`
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`Case IPR2015-00074
`
`U.S. Patent No. 8,380,244
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page(s)
`
`Anova Food, LLC v. Sandau,
`IPR2013-00114 (PTAB Sept. 13, 2013) ............................................................... 29
`
`Apple Inc. v. Achates Reference Publ’g Co., Inc.,
`IPR2013-00080 (PTAB June 3, 2013) .................................................................. 34
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ............................................................................... 4
`
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc.,
`IPR2013-00220 (PTAB Aug. 15, 2013) ............................................................... 24
`
`Ex parte Funai Elec. Co., Ltd.,
`Appeal No. 2010-003274, Reexamination 90/010,021 (BPAI Oct. 29, 2010) ..... 12
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ............................................................................................. 4, 19
`
`Hartford Underwriters Ins. Co. v. Union Planters Bank, N.A.,
`530 U.S. 1 (2000) .................................................................................................. 29
`
`Hoechst Aktiengesellschaft v. Quigg,
`917 F.2d 522 (Fed. Cir. 1990) ............................................................................... 29
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ........................................................................ 21, 23
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) .................................................................. 5, 19, 20
`
`In re Rouffet,
`149 F.3d 1350 (Fed. Cir. 1998) ...................................................................... 19, 20
`
`In re Sang-Su Lee,
`277 F.3d 1338 (Fed. Cir. 2002) ............................................................................. 20
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324 (PTAB Nov. 21, 2013) ............................................................... 13
`ii
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`

`

`
`
`Killip v. Office of Pers. Mgmt.,
`991 F.2d 1564 (Fed. Cir. 1993) ............................................................................. 31
`
`Case IPR2015-00074
`U.S. Patent No. 8,380,244
`
`
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... passim
`
`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
`545 F.3d 1340 (Fed. Cir. 2008) ............................................................................. 26
`
`Medtronic, Inc. v. Endotach LLC,
`IPR2014-00695 (PTAB Sept. 25, 2014) ............................................................... 31
`
`Medtronic, Inc. v. Nuvasive, Inc.,
`IPR2014-00487 (PTAB Sept. 11, 2014) ............................................................... 13
`
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
`IPR2014-00436 (PTAB June 19, 2014) ................................................................ 13
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ............................................................................. 21
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) ............................................................................. 23
`
`Siegel v. Daiwa Securities Co. Ltd.,
`842 F. Supp. 1537 (S.D.N.Y. 1994) ...................................................................... 33
`
`Taylor v. Sturgell,
`553 U.S. 880 (2008) .............................................................................................. 33
`
`Tegal Corp. v. Tokyo Electron Co., Ltd.,
`No. 01-1019, 2002 U.S. App. LEXIS 1992 (Fed. Cir. Feb. 1, 2002) ................... 33
`
`Texas Instruments Inc. v. Cypress Semiconductor Corp.,
`90 F.3d 1558 (Fed. Cir. 1996) ............................................................................... 11
`
`Unified Patents, Inc. v. PersonalWeb Techs., LLC,
`IPR2014-00702 (PTAB July 24, 2014) ................................................... 13, 14, 15
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ............................................................................. 21
`
`
`
`
`iii
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`
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`Zerto, Inc. v. EMC Israel Dev. Ctr., Ltd.,
`IPR2013-00458 (PTAB Jan. 16, 2014) ............................................................ 5, 25
`
`Case IPR2015-00074
`U.S. Patent No. 8,380,244
`
`OTHER AUTHORITIES
`
`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) ...................................................... 30
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`35 U.S.C. § 103(a) ........................................................................................ 4, 18, 24
`
`35 U.S.C. § 311(b) ..................................................................................................... 5
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`35 U.S.C. § 314(a) ..................................................................................................... 4
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`35 U.S.C. § 315(a) ................................................................................................... 29
`
`35 U.S.C. § 315(b) ........................................................................................... passim
`
`35 U.S.C. § 325(d) ................................................................................................... 14
`
`37 C.F.R. § 42.100(b) ................................................................................................ 4
`
`37 C.F.R. § 42.104(b) .............................................................................................. 18
`
`37 C.F.R. § 42.8 ......................................................................................................... 1
`
`77 Fed. Reg. 48680 (Aug. 14, 2012) ....................................................................... 32
`
`77 Fed. Reg. 48756 (Aug. 14, 2012) .................................................................. 4, 32
`
`H.R. Rep. No. 112-98 .............................................................................................. 30
`
`Patent Trial and Appeal Board, Standard Operating Procedure 2 (Rev. 8),
`Publication of Opinions and Designation of Opinions as Precedential ................ 31
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`iv
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`
`
`Petitioner Microsoft Corporation
`
`Case IPR2015-00074
`U.S. Patent No. 8,380,244
`(hereinafter “Microsoft” or
`the
`
`“Petitioner”) filed a Petition for Inter Partes Review of U.S. Patent No. 8,380,244
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`(Paper No. 1) (the “Petition”), along with a Motion for Joinder (Paper No. 3) (the
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`“Motion”). The Motion would join the Petition with the inter partes review in ZTE
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`Corporation v. IPR Licensing, Inc., IPR2014-00525 (the “ZTE IPR”).
`
`Pursuant to 37 C.F.R. § 42.8 and the Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response (Paper No. 7),
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`Patent Owner IPR Licensing, Inc., (hereinafter “Patent Owner”) respectfully
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`submits this preliminary response to the Petition for Inter Partes Review of U.S.
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`Patent No. 8,380,244 (the “‘244 patent”) (IPR2015-00074) filed by Microsoft to
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`the U.S. Patent and Trademark Appeals Board (hereinafter “PTAB” or the
`
`“Board”). For the reasons set forth below, Microsoft’s Petition should not be
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`granted and should be dismissed in its entirety.
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`I.
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`INTRODUCTION AND SUMMARY OF PRELIMINARY RESPONSE
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`Microsoft’s Petition should be denied. It is “identical to Ground 1 asserted
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`by ZTE in its IPR.” Petition at 14. In addition, Microsoft has failed to meet its
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`burden to demonstrate a reasonable likelihood that it will prevail with respect to at
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`least one of the challenged claims of the ‘244 patent. Microsoft’s analysis alleging
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`obviousness of the challenged claims is incomplete, cursory and legally deficient.
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`1
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`Case IPR2015-00074
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`U.S. Patent No. 8,380,244
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`Microsoft also fails to provide sufficient evidence to demonstrate that certain
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`references are in fact prior art.
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`The Patent Owner, through this Preliminary Response, will demonstrate how
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`the Petition fails on at least four procedural grounds.
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`First, the Petition is substantively duplicative to the currently pending ZTE
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`IPR. Petitioner admits that it is based on the same grounds and same combinations
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`of prior art. See, e.g., Motion at 4. Petitioner fails to explain why its duplicative
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`Petition is necessary for the resolution of the ZTE IPR, or why the Board cannot
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`address the merits of the very same prior art and arguments without instituting
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`another inter partes review. As such, the Board should exercise its discretion and
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`deny the Petition.
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`Second, the Petition fails to make out a prima facie case of obviousness.
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`For example, the Petition asserts obviousness based on a combination without
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`identifying any specific combination of prior art elements that allegedly render any
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`challenged claim obvious. Instead, for the supposed “combination,” the Petition
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`simply asserts, for several claim elements, that the element is disclosed in multiple
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`references. For example, the Petition asserts that every element of claims 1 and 23,
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`except for the IEEE 802.11 wireless LAN, is disclosed by Jawanda. However,
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`with the exception of that one element, the Petition recites disclosures in both
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`Jawanda and a collection of documents (the “GPRS documents”) that the Petition
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`2
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`Case IPR2015-00074
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`U.S. Patent No. 8,380,244
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`refers to as the “GPRS Standards” (Petition at 48-52). The Petition thus never
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`specifies which elements are to be chosen from Jawanda, and which from the
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`GPRS documents. The specific combination of elements is left as an exercise for
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`the reader – as is the motivation to combine the specific elements in question to
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`arrive at each of the challenged claims.
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`Third, the Petition relies on numerous non-patent references, the so-called
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`“GPRS Standards,” without providing sufficient evidence that this collection of
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`documents qualify as publications as of the priority date of the ‘244 patent. In
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`particular, some of the documents are marked “Draft” and the Petition does not
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`provide any motivation to combine draft GPRS documents with other non-draft
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`GPRS documents to form a single reference.
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`Fourth, the Petition is barred under 35 U.S.C. § 315(b), as Microsoft is in
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`privity with a party that was served with a complaint more than one year before the
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`Petition.1 Nokia, Inc., a privy of Petitioner, was served with a complaint alleging
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`infringement of the ‘244 patent more than one year before the Petition.
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`Petitioner’s argument applying an unduly narrow interpretation of § 315(b) should
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`be rejected.
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`II. LEGAL STANDARDS
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`1 For the reasons set forth in the Opposition to Petitioner’s Motion for Joinder
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`(Paper No. 9), Petitioner’s Motion for Joinder is improper and should be denied.
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`3
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`Case IPR2015-00074
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`U.S. Patent No. 8,380,244
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`The institution of an inter partes review requires a showing by the Petitioner
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`that there is a “reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
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`In conducting its review, the Board will interpret claims using the broadest
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`reasonable interpretation as understood by one of ordinary skill in the art and
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`consistent with the disclosure. See 37 C.F.R. § 42.100(b); Office Patent Trial
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`Practice Guide (“OPTPG”), 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). There is
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`a heavy presumption that a claim term carries its ordinary and customary meaning.
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`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`By statute, a patent is invalid as obvious only:
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`if the differences between the subject matter sought to be
`patented 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.
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`See 35 U.S.C. § 103(a) (amended 2013). An obviousness analysis must also
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`consider: (1) the scope and content of the prior art; (2) the differences between the
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`prior art and the claimed invention; (3) the level of ordinary skill in the art; and
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`(4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1,
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`17 (1966); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406-407 (2007) (noting that
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`these four factors “continue to define the inquiry that controls”). Such an analysis
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`4
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`Case IPR2015-00074
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`U.S. Patent No. 8,380,244
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`must be conducted on an element-by-element basis, comparing each of the claim
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`elements to the prior art. “[T]o establish obviousness based on a combination of
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`the elements disclosed in the prior art, there must be some motivation, suggestion
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`or teaching of the desirability of making the specific combination that was made by
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`the applicant.” In re Kotzab, 217 F.3d 1365, 1369-70 (Fed. Cir. 2000).
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`An inter partes review may be requested only on the basis of prior art
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`consisting of patents or printed publications. 35 U.S.C. § 311(b). The Petitioner
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`must establish that the prior art on which it relies qualifies as a patent or printed
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`publication. See Zerto, Inc. v. EMC Israel Dev. Ctr., Ltd., IPR2013-00458 (Paper
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`No. 12) (PTAB Jan. 16, 2014), at 27. A “working draft that is not yet ready for
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`public dissemination” is not a printed publication, absent credible evidence that the
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`draft was available to interested members of the public. Id.
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`III. OVERVIEW OF THE ‘244 PATENT
`The ‘244 patent describes and claims specific improvements to a dual-mode
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`subscriber unit. The Petition’s description of the invention as simply a dual-mode
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`device that can preferentially use a WLAN network when available is inaccurate,
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`and ignores these improvements.
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`One improvement is that the subscriber unit, rather than the base station,
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`decides which channels, and how many channels, it will use to transmit data at a
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`given time. This is clear from the description of “a subscriber unit of the present
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`5
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`Case IPR2015-00074
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`U.S. Patent No. 8,380,244
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`invention,” as shown in Figure 6. Microsoft Ex. 1001 (‘244 patent) at 4:59-60.
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`The specification explains that this subscriber unit includes a “bandwidth
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`management function” which is “responsible for allocating . . . CDMA radio
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`channels as required.” Id. at 9:64-66. Patent Owner’s proposed construction of
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`“plurality of assigned physical channels” in the Delaware district court recognizes
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`that this preferred embodiment requires the subscriber unit, not the base station, to
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`assign or allocate the physical channels. Petition at 16. The proposed construction
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`of the defendant in that case, adopted by the District Court and by Microsoft,
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`similarly recognizes that the subscriber unit, not the base station, selects the
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`physical channels to be used. Id. This feature is an improvement over the prior
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`art, in which the base station determined which channels the subscriber unit would
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`use to transmit data.
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`Another improvement is maintaining a logical connection between the
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`subscriber unit and the cellular network, in the absence of cellular physical
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`channels. That is, the logical connection is maintained when the cellular physical
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`channels are not in use. Microsoft Ex. 1001 (‘244 patent) at 4:11-18. Because the
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`logical connection is maintained, the subscriber unit avoids “the overhead
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`associated with having to set up an end to end connection each time that data needs
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`to be transferred.” Id. That is, when the physical cellular connection is needed
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`6
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`Case IPR2015-00074
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`U.S. Patent No. 8,380,244
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`again to send data, it can be set up more quickly, because the logical connection is
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`still in place.
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`IV. OVERVIEW OF THE PROSECUTION HISTORY
`The Petition provides a grossly inaccurate description of the prosecution
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`history of the ‘244 patent, and the copy of the prosecution history that is attached
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`to the Petition and misleadingly referred to in Dr. Bims’ Declaration as “‘098
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`Application History” is incomplete and omits several critical documents. In
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`particular, the Petition omits any discussion of the Examiner interview, during
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`which the Patent Owner and Examiner discussed the primary reference relied upon
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`in the Petition (namely, Jawanda) and the Patent Owner agreed to propose an
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`amendment. See Ex. 2003 (InterDigital Sections Prosecution History) at 33-34
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`(Reply to Office Action, April 20, 2012, discussing Examiner interview), and at 1-
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`2 (Summary of Interview, April 11, 2012). Petitioner also misleadingly omitted,
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`from the copy of the prosecution history attached to the Petition, both the Interview
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`Summary, and the Reply to Office Action discussing the interview. The claims of
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`the ’244 patent were allowed shortly after the Reply.
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`It is clear from a review of the entire prosecution history that the claims
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`were allowed because the Patent Owner successfully distinguished the claims over
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`Jawanda and other prior art during the Examiner interview. There is no basis for
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`the Petition’s suggestion that the Examiner “made a mistake in allowing the
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`7
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`Case IPR2015-00074
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`U.S. Patent No. 8,380,244
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`claims.” Petition at 27. Rather, as is apparent from the portions of the prosecution
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`history conspicuously not submitted by Petitioner, the Examiner properly
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`considered the claims of the ‘244 patent in view of the cited references, including
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`Jawanda.
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`In an Office Action dated October 20, 2011, the Examiner rejected the
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`claims over references including U.S. Patent No. 6,243,581 to Jawanda. See Ex.
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`2003 (InterDigital Sections Prosecution History) at 5. The Examiner asserted that
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`Jawanda disclosed “maintaining a communication session,” and in doing so relied
`
`on the identical disclosures on which Petitioner relies. Specifically, the Examiner
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`noted that Jawanda teaches “seamlessly handoff transfer of datagrams from
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`WWAN connection . . . to WLAN connection, WHILE maintaining WWAN
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`connection.” Id. at 8 (emphasis in original). The Examiner relied on this
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`disclosure as describing “maintain[ing] a communication session with the WWAN
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`. . . WHILE communicat[ing] datagrams (i.e. packet data) with the WLAN.” Id.
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`(capitalization in original). Petitioner relies on the identical disclosure as
`
`disclosing maintaining a communication session: “the WWAN connection
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`(cellular connection) may optionally be maintained.” Petition at 35. The
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`Examiner, like Petitioner, also pointed to the fact that Jawanda describes
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`maintaining an “application session.” Ex. 2003 (InterDigital Sections Prosecution
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`8
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`Case IPR2015-00074
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`U.S. Patent No. 8,380,244
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`History) at 8; Petition at 34-35. Notably, this Office Action was omitted from
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`Petitioner’s attached copy of the prosecution history.
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`Following the October 20, 2011 Office Action, Patent Owner initiated an
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`interview, which took place April 11, 2012. The prior art discussed during the
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`interview included the Jawanda reference, and another patent. Ex. 2003
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`(InterDigital Sections Prosecution History) at 1. Patent Owner agreed to “propose
`
`an amendment in response to the interview on 4/11/2012.” Id. The Examiner’s
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`summary of the April 11, 2012 interview does not appear in the copy of the
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`prosecution history submitted by Petitioner.
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`On April 20, 2012, Patent Owner submitted a Reply, amending the claims
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`and discussing the interview. Ex. 2003 (InterDigital Sections Prosecution History)
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`at 21-37. This Reply does not appear in the copy of the prosecution history
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`submitted by Petitioner. In the Reply, Patent Owner noted that, “[a]s discussed
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`with the Examiner during the April 11, 2012 telephonic interview,” the prior art,
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`including “Lemiläinen and Jawanda, alone or in combination, fail to teach or
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`suggest ‘a processor configured to maintain a communication session with the
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`cellular wireless network in an absence of the plurality of assigned physical
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`channels while the IEEE 802.11 transceiver communicates packet data with the
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`IEEE 802.11 wireless local area network.’” Id. at 34-35.
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`9
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`U.S. Patent No. 8,380,244
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`In response to this Reply, on May 31, 2012, the Examiner issued a notice of
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`allowance. Microsoft Ex. 1018, at 5.
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`V. CLAIM CONSTRUCTION
`As explained in detail below, the Petition does not provide sufficient
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`evidence of obviousness. The Petition fails to describe the differences between the
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`claims and the identified references. The Petition also fails to identify any specific
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`changes to the references, or any specific combination of elements, that allegedly
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`renders the challenged claims obvious. Nor does the Petition identify any
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`motivation to modify the references or to combine specific elements so as to yield
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`the claimed combination. The Petition thus fails to make a prima facie showing of
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`obviousness.
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`Therefore, there is no need to address claim construction at this stage. The
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`Petition should be dismissed because, absent a prima facie showing of
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`obviousness, the Petition cannot establish a reasonable likelihood that it would
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`prevail in showing that the challenged claims are obvious. This is so regardless of
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`the claim constructions applied.
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`VI. THE 800 ITC INVESTIGATION
`In order to bolster its inadequate obviousness position, further discussed
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`below, Petitioner attempts to rely on the initial finding of an Administrative Law
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`Judge (“ALJ”) in a prior ITC investigation invalidating the parent patent of the
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`10
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`Case IPR2015-00074
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`U.S. Patent No. 8,380,244
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`‘244 patent, U.S. Patent No. 7,616,970 (the “‘970 patent”). Petition at 1. This
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`finding, which is currently being appealed before the Federal Circuit, is of little or
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`no relevance. The ITC’s finding involved a different patent, with different claims,
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`and Petitioner has provided no support for its assertion that the challenged claims
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`are similar. Furthermore, even assuming that Petitioner could support its assertion
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`that the ‘244 patent and ‘970 patent include similar claims, the ALJ in the prior
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`ITC investigation applied different claim constructions from those being proposed
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`and applied by the Petitioner here. The ALJ’s finding should therefore be given no
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`weight.
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`In any case, the ITC’s finding is not binding on the Board.2 It is well-
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`established that “decisions of the ITC involving patent issues have no preclusive
`
`effect in other forums.” Texas Instruments Inc. v. Cypress Semiconductor Corp.,
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`90 F.3d 1558, 1569 (Fed. Cir. 1996). For example, the Board of Patent Appeals
`
`and Interferences has declined to find claims invalid during reexamination, where
`
`
`2 Of greater relevance is the verdict rendered by a jury in Patent Owner’s
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`infringement suit against ZTE in the United States District Court for the District of
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`Delaware. There, the jury found all asserted claims of the ‘244 patent, including
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`some of the same claims being challenged in the Petition, not invalid over the
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`identical combination asserted in the Petition.
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`11
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`Case IPR2015-00074
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`U.S. Patent No. 8,380,244
`
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`the ITC had previously determined that those same claims were invalid. Decision
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`on Appeal at 2, Ex parte Funai Elec. Co., Ltd., Appeal No. 2010-003274,
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`Reexamination 90/010,021 (BPAI Oct. 29, 2010) (ITC had invalidated claims 19
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`and 21, among others, and BPAI affirmed claims 19 and 21, among others).
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`VII. THE PETITION SHOULD BE DENIED AS DUPLICATIVE
`The Petitioner admits that “Ground 1 asserted by Petitioner here is identical to
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`Ground 1 asserted by ZTE in its IPR.” Petition at 14. Petitioner’s Motion confirms
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`that the Petition “is based not only on the same grounds and combinations of prior
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`art that were submitted by ZTE, but also relies solely upon the same grounds on
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`which the Board has already instituted inter partes review. In substance, the
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`Microsoft Petition is virtually identical to the ZTE Petition … .” Motion at 4.
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`Petitioner has failed to identify any material differences between its Petition
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`and the ZTE IPR.3 In fact, Petitioner admits that the Petition is substantively
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`3 While Petitioner concedes that there are no substantive differences between the
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`Petition and the ZTE IPR, the Petition includes restructuring of arguments,
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`additional citations to prior art, arguments regarding related litigation and a
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`supplemental declaration from the expert, all of which would needlessly
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`complicate the ZTE IPR. As such, and for the reasons set forth in the Opposition
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`(Paper No. 9), joining the Petition with the ZTE IPR is improper.
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`12
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`

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`Case IPR2015-00074
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`U.S. Patent No. 8,380,244
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`identical.4 Motion at 4; Petition at 14. However, the Board has routinely rejected
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`petitions where a petitioner has failed to demonstrate why its petition is not
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`duplicative to an already pending inter partes review. See, e.g., Unified Patents,
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`Inc. v. PersonalWeb Techs., LLC, IPR2014-00702 (Paper No. 13) (PTAB July 24,
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`2014) (Petition denied as identical to pending IPR proceedings); Medtronic, Inc. v.
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`Robert Bosch Healthcare Sys., Inc., IPR2014-00436 (Paper No. 17) (PTAB June
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`19, 2014), at 12 (Petition denied as presenting “the same, or substantially the same,
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`prior art [ ] and the same, or substantially the same, arguments previously
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`presented in the [prior] case.”); Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487
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`(Paper No. 8) (PTAB Sept. 11, 2014) (Petitioner failed to provide any specific
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`reasoning to support its argument that the grounds were not redundant to another,
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`instituted IPR); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., IPR2013-
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`00324 (Paper No. 19) (PTAB Nov. 21, 2013) (Petition denied because Petitioner
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`failed to identify any differences between previous prior art and new references).
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`4 Petitioner’s reference in its Motion to additional citations of evidence are not
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`material differences, nor does Petitioner assert that they are. Rather, Petitioner
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`confirms that its Petition “is virtually identical to the ZTE Petition, and contains
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`only minor differences” and is “substantively nearly-identical to [it].” Motion at 4,
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`6.
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`13
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`Case IPR2015-00074
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`U.S. Patent No. 8,380,244
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`In fact, each of these decisions has been designated as informative by the Patent
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`Office. See http://www.uspto.gov/ip/boards/bpai/decisions/inform/.
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`The reasoning in Unified Patents, Inc. v. PersonalWeb Technologies, LLC,
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`IPR2014-00702 (Paper No. 13) (PTAB July 24, 2014) is instructive. In Unified
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`Patents, the petitioner filed a petition for inter partes review (the “‘702 petition”)
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`of certain claims based on a single prior art reference. The patent at issue,
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`however, was already subject to three other inter partes reviews including one
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`proceeding (the “‘057 IPR”) that involved all of the same challenged claims and
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`the same single prior art reference cited in the ‘702 petition. Id. at 8.
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`Notwithstanding that the petitioner was not a party to any of the three prior inter
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`partes reviews, including the ‘057 IPR, the Board exercised its discretion under 35
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`U.S.C. § 325(d) and denied the ‘702 petition “because the same or substantially the
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`same prior art and arguments were presented previously in [the ‘057 IPR].” Id. at
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`9. As in the present Petition, the Board recognized in Unified Patents that whether
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`or not the ‘702 petition is instituted, “a determination will be made as to whether”
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`the challenged claims “are unpatentable” over the same prior art in the ‘057 IPR.
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`Id. at 8.
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`The current Petition fails to identify how it adds to the ZTE IPR or what
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`issues it addresses that the Board will not consider in the ZTE IPR. Petitioner has
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`presented no evidence or indication that its presence is necessary in the ZTE IPR.
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`
`
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`14
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`

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`Case IPR2015-00074
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`U.S. Patent No. 8,380,244
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`Petitioner has conceded that there are no substantive differences between the
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`Petition and the ZTE IPR. See, e.g., Petition at 14. The prior art and arguments
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`are the same. Motion at 4. The changes and additions that Petitioner adds are
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`allegedly minor and no different in substance. Motion at 4, 6. The Petitioner fails
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`to explain how the minor differences between the Petition and the ZTE IPR
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`necessitate institution of a second proceeding. Nor does Petitioner explain why its
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`participation in the ZTE IPR is necessary for the resolution of the ZTE IPR, or why
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`the Board cannot address the merits of the same prior art and arguments without
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`Petitioner. Thus, Petitioner has failed to meet its burden to demonstrate that the
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`Petition is appropriate or should be instituted.
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`The circumstances in the instant Petition are no different than those in
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`Unified Patents. Petitioner admits the “Petition is substantively nearly-identical to
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`the ZTE [IPR].” Motion at 6. The Petition should be denied for this reason, as it
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`offers no better grounds than that found in the ZTE IPR.
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`VIII. MICROSOFT HAS FAILED TO MAKE A PRIMA FACIE CASE OF
`INVALIDITY
`A. The Petition Fails To Establish A Reasonable Likelihood That
`The Claims Of The ‘244 Patent Would Have Been Obvious
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`The Petition alleges one ground of obviousness, but in fact includes multiple
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`grounds. “Ground 1” includes Jawanda alone, Jawanda in combination with the
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`GPRS documents, Jawanda in combination with the IEEE 802.11 Standard, and
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`15
`