Petitioner’s Request for Rehearing
`IPR2015-01664
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
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`V.
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`INTELLECTUAL VENTURES II LLC,
`Patent Owner
`___________________
`
`IPR Case No. IPR2015-01664
`Patent 7,787,431
`___________________
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
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`IPR2015-01664
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`V.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner
`___________________
`
`IPR Case No. IPR2015-01664
`Patent 7,787,431
`___________________
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
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`TABLE OF CONTENTS
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`Page
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`I.
`INTRODUCTION ............................................................................................... 1
`II. ARGUMENT ....................................................................................................... 2
`A. The Board Misapprehended or Overlooked the ’431 Patent
`Specification and Adopted a Construction which Excludes an
`Embodiment. .................................................................................................. 2
`B. The Board Misapprehended the Petitioner’s Agreement with the
`Institution Decision’s Claim Construction. ................................................. 8
`III. CONCLUSION ................................................................................................. 11
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`-i-
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`IPR2015-01664
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.71(d), Petitioner respectfully requests rehearing
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`of the Board’s Final Written Decision entered February 8, 2017 (Paper 24,
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`hereafter “Final Written Decision”), which found that claims 8-12 and 18-22 of the
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`’431 patent (Ex. 1001) were not shown to be unpatentable. Final Written Decision,
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`p. 17. In arriving at its holding, the Board misapprehended or overlooked two key
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`points relating
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`to claim construction, which underpins
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`the patentability
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`determination in the Final Written Decision.
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`First, the Board misapprehended or overlooked a portion of the ’431 patent’s
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`specification, which directly led to the Board’s erroneous claim construction.
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`Specifically, the Board overlooked the disclosure of one of the embodiments of the
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`’431 patent, and in doing so, adopted a construction of the term “transmitting a
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`broadcast channel in [a] core-band” which erroneously excludes the disclosed
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`embodiment. This error led to the Board’s adoption of an overly-narrow claim
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`construction, and in turn, the Board’s determination that the claims were not shown
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`to be unpatentable.
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`Second, the Board misapprehended or overlooked Petitioner’s agreement
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`with the Board’s initial conclusion in the Institution Decision that the plain
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`meaning of the term “transmitting a broadcast channel in [a] core-band” should
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`apply. This misapprehension of the record also appears to have led the Board to
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`erroneously adopt Patent Owner’s flawed construction, and in turn, determine that
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`IPR2015-01664
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`the claims were not shown to be unpatentable.
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`Because the Board misapprehended or overlooked these points, Petitioner
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`requests that the Board revisit its Final Written Decision, adopt the plain meaning
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`of the term “transmitting a broadcast channel in [a] core-band” consistent with the
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`disclosed embodiments of the ’431 patent, and find that claims 8-12 and 18-22
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`have been shown to be unpatentable under the proper construction of the term.
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`II. ARGUMENT
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`A. The Board Misapprehended or Overlooked the ’431 Patent
`Specification and Adopted a Construction which Excludes an
`Embodiment.
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`In the Institution Decision (Paper 7), the Board correctly recognized that no
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`explicit construction was necessary for any claim term. Institution Decision, p. 7.
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`With specific reference to the term in question (“transmitting a broadcast channel
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`in [a] core-band”), the Board stated:
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`“[O]n this record, we determine the plain meaning of transmitting a
`broadcast channel in a core-band merely requires transmitting some
`part of the broadcast channel in a core-band and does not exclude
`transmitting another part of the broadcast channel outside the core-
`band.”
`Institution Decision, p. 11.
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`This preliminary construction was correct and consistent with the ’431 patent.
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`2
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`However, the Board reversed course in the Final Written Decision, stating
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`IPR2015-01664
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`that it was “persuaded that our preliminary partial construction was unreasonably
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`broad,” based on Patent Owner’s argument and evidence in support of an overly-
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`narrow construction. Final Written Decision, p. 8. But in construing the claim
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`according
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`to Patent Owner’s contentions,
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`the Board misapprehended or
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`overlooked a portion of the ’431 patent which discloses an embodiment of the
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`invention which would be excluded from the Board’s construction in the Final
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`Written Decision.
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`Claims are construed in these proceedings according to the broadest
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`reasonable construction in light of the patent’s specification, and claims are not to
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`be interpreted in a way that excludes embodiments disclosed in the specification.
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`See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (broadest
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`reasonable construction applies in inter partes review); Oatey Co v. IPS Corp., 514
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`F.3d 1271, 1276-77 (Fed. Cir. 2008) (“[w]e normally do not interpret claim terms
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`in a way that excludes embodiments disclosed in the specification…”). Because
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`the Board’s construction excludes an embodiment disclosed in the ’431 patent, the
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`Board’s revised claim construction is incorrect.
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`In the Final Written Decision, the Board cites to column 4, line 65 through
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`column 6, line 32 of the ’431 patent to support its claim construction analysis and
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`agreement with the Patent Owner’s incorrect construction. Final Written Decision,
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`3
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`p. 7. The cited portion of the ’431 patent describes in part that, in one
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`IPR2015-01664
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`embodiment, “a preamble, called an essential, or primary preamble (EP), is
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`designed to only occupy the CB [core-band], as depicted in FIG. 8.” Ex. 1001,
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`5:19-21. However, the cited portion of the ’431 patent does not state or otherwise
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`support the proposition which limits transmission of a “broadcast channel” to only
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`the core band, as adopted by the Board. See, e.g., Final Written Decision, p. 8
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`(“our preliminary partial construction was unreasonably broad to the extent that
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`construction indicated the transmitting a broadcast channel limitation would be met
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`by the transmission of a broadcast channel that is only partially within the core-
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`band.”)
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`Indeed, the ’431 patent discloses and supports an embodiment in which a
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`broadcast channel occupies both the core band and the side bands, i.e., a broadcast
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`channel that that is only partially within the core band, consistent with the Board’s
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`preliminary construction. The Board’s revised claim construction excludes this
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`embodiment. Specifically, at column 5, lines 36-55, the ’431 patent describes an
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`embodiment in which a full-bandwidth preamble (FP) is formed by adding to the
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`primary preamble (EP) an auxiliary preamble (AP) which occupies the side bands
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`(SB). Ex. 1001, 5:36-41. The ’431 patent further describes broadcasting this full-
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`bandwidth preamble, stating:
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`4
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`IPR2015-01664
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`“In still another embodiment, the formation of an FP by adding an AP
`allows a base station to broadcast the FP, and a mobile station to use
`its corresponding EP [primary preamble], to access this base station.”
`Ex. 1001, 5:51-55 (emphasis added). This embodiment is shown in FIG. 8
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`of the ’431 patent, as indicated by the (c) portion of the figure:
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`Ex. 1001, FIG. 8.
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`FIG. 8(a) above depicts that the primary preamble (EP) is confined to a core-
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`band as recited in claim 8. FIG. 8(c) likewise depicts that the primary preamble
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`5
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`(EP) is confined to a core-band as recited in claim 8. The only difference between
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`IPR2015-01664
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`FIG. 8(a) and FIG. 8(c) is that the side bands (SB) in FIG. 8(c) are used to
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`broadcast additional information (the auxiliary preamble (AP)) in addition to the
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`primary preamble (EP), which is consistent with the claim language of claim 8.
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`Both embodiments of FIG. 8(a) and FIG. 8(c) allow a mobile station to receive the
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`primary preamble (EP) confined within the core band to enable radio operations, as
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`recited in the claim.
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`Thus, the ’431 patent discloses an embodiment that broadcasts a primary
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`preamble (EP) confined to the core band that allows access to the base station,
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`while simultaneously broadcasting additional control signals in the side bands (the
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`AP). That is, this embodiment of the ’431 patent discloses a broadcast channel
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`that is only partially within the core-band, which must be encompassed in a
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`proper construction of “transmitting a broadcast channel in [a] core-band” as
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`recited. Nothing in the ’431 patent itself, or the file history of the ’431 patent,
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`indicates that this embodiment should be excluded from the claim construction of
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`“transmitting a broadcast channel in [a] core-band.” See Oatey, 514 F.3d at 1276-
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`77 (embodiments disclosed in specification not excluded from claim construction
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`except in cases of clear disclaimer in the specification or prosecution history).
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`Accordingly, interpreted according to the embodiments disclosed in the ’431
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`patent specification (which have not been disclaimed), “transmitting a broadcast
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`6
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`channel in [a] core-band” must encompass transmitting part of a broadcast channel
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`IPR2015-01664
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`in a core band and part of the broadcast channel in side bands, consistent with the
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`Board’s preliminary construction in the Institution Decision.
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`The Board’s Final Written Decision, which adopts a construction (advocated
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`by Patent Owner) that excludes this embodiment, is therefore in error. The
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`evidence cited by the Board does not comport with the ’431 patent specification,
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`and appears to have led the Board to this incorrect conclusion. As shown above,
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`the ’431 patent discloses an embodiment which supports an interpretation that
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`some part of a broadcast channel can be transmitted in a core band and some part
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`in side bands, outside the core band.
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`Thus, contrary to Patent Owner’s expert and the Board’s adoption of his
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`testimony, construing the claim term to encompass transmission of part of the
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`broadcast channel in side bands (as the term was initially construed) is proper, as it
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`includes the embodiments disclosed in the specification and is consistent with the
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`’431 patent. The construction advocated by Patent Owner and its expert, as
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`Petitioner previously stated, is unduly narrow and inconsistent with the ’431
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`patent.
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`This misapprehension underpins the entire Final Written Decision, as the
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`Board’s determination on patentability is based solely on Yamaura’s alleged
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`deficiencies in light of this incorrect claim construction. For example, because the
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`7
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`construction was overly narrow, the Board’s requirement that “Petitioner must
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`IPR2015-01664
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`demonstrate that the prior art teaches or suggests transmitting a broadcast channel,
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`wherein the entire channel is contained within the core-band” is in error. Final
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`Written Decision, p. 9. Likewise, the Board faults Yamaura allegedly because
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`“BCH and FCH are not entirely transmitted within Yamaura’s narrow band.” Final
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`Written Decision, p. 16. But under the correct construction of the term and the
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`construction adopted in the Institution Decision, which is consistent with the
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`embodiments disclosed in the ’431 patent, this perceived fault of Yamaura is of no
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`moment, as the challenged claims of the ’431 patent encompass transmitting a
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`broadcast channel in part outside of the core band under a proper construction.
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`Because the Board’s construction of “transmitting a broadcast channel in [a] core-
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`band” is too narrow and excludes disclosed embodiments of the ’431 patent,
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`Petitioner respectfully requests rehearing and reconsideration of the Final Written
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`Decision in accordance with the proper construction of the term.
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`B.
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`The Board Misapprehended the Petitioner’s Agreement with the
`Institution Decision’s Claim Construction.
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`As stated in the preceding section, in the Institution Decision, the Board
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`correctly recognized that no explicit construction was necessary for any claim
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`term. (Institution Decision, p. 7). The Board’s statement in its Final Written
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`Decision that it was “persuaded that our preliminary partial construction was
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`unreasonably broad,” is in error for the reasons summarized above, but was also
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`8
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`perhaps based on a misapprehension of the record. In particular, in arriving at its
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`IPR2015-01664
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`conclusion, the Board wrote: “[w]e note Petitioner neither agrees with our
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`preliminary statement in the Institution Decision nor disputes Patent Owner’s
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`assertion that our statement was incorrect. Pet. Reply 3-5.” Final Written
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`Decision, p. 7.
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`However, contrary to the Board’s statement, Petitioner both agreed with the
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`Board’s preliminary statement, and disputed Patent Owner’s assertion that the
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`Board’s preliminary statement was incorrect. Petitioner’s Reply clearly states:
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`“Consistent with the Institution Decision, Petitioner does not believe
`any explicit claim construction is necessary for these terms as the
`plain and ordinary meaning of the terms is sufficient to reach a
`decision
`in
`the present proceeding and
`the PO’s proposed
`constructions do not add further clarity to the claim terms.”
`Reply, p. 2 (emphasis added). The Reply further states:
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`“The claim term simply requires transmitting a broadcast channel in
`an OFDMA core-band. This has a plain and ordinary meaning that
`does not require any construction. Petitioner submits that no
`construction of the term “transmit[ting] a broadcast channel in an
`OFDMA core-band” is necessary.”
`Reply, p. 5 (emphasis added).
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`
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`The Board’s treatment of the record is important because, as a result of this
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`misapprehension, the Board apparently took the Patent Owner’s construction as
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`unrebutted. Thus, the Board appears to have improperly weighed the evidence in
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`9
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`favor of Patent Owner without considering Petitioner’s arguments. If the Board
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`IPR2015-01664
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`instead adopted the plain meaning of the term, as initially determined and as
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`advocated by Petitioner, and not Patent Owner’s overly-limited construction, the
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`Board would have found that the cited combination teaches a “transmitting a
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`broadcast channel” as recited. The Board found that the plain meaning of the term
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`“merely requires transmitting some part of the broadcast channel in a core-band
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`and does not exclude transmitting another part of the broadcast channel outside the
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`core-band” (Institution Decision, p. 11), and under this proper construction (which
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`is consistent with the specification, as summarized above), the cited combination
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`teaches the claim limitation.
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`However, because the Board misapprehended or overlooked the Petitioner’s
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`agreement with the Board’s preliminary statement in the Institution Decision and
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`the Patent Owner’s assertion that the Board’s statement was incorrect, the Board
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`erroneously adopted the Patent Owner’s incorrect claim construction. Because the
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`Board’s decision that claims 8-12 and 18-22 of the ’431 patent were not shown to
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`be unpatentable as obvious is predicated on this erroneous construction, Petitioner
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`respectfully requests reconsideration of the Decision in light of a complete
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`consideration of the record.
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`10
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`III. CONCLUSION
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`IPR2015-01664
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`reverse its decision regarding claims 8-12 and 18-22 of the ’431 patent in
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`IPR2015-01664, thereby finding that these claims have been shown to be
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`unpatentable.
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`
`
`/J. Andrew Lowes/
`J. Andrew Lowes
`Counsel for Petitioner
`Registration No. 40,706
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`11
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that I caused to be served a
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`IPR2015-01664
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`true and correct copy of the foregoing “Petitioner’s Request for Rehearing
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`Pursuant to 37 C.F.R. § 42.71(d)”, as detailed below:
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`Date of service: March 10, 2017
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`Persons Served:
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`Manner of service: Email: hhart@mcandrews-ip.com; shwang@mcandrews-
`ip.com; pmcandrews@mcandrews-ip.com;
`jhietala@intven.com; tim@intven.com; and
`IV-IP15-01664@mcandrews-ip.com
`
`Herbert D. Hart III
`Sharon A. Hwang
`Peter J. McAndrews
`McAndrews, Held & Malloy. Ltd.
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`
`James R. Hietala
`Tim R. Seeley
`Intellectual Ventures
`Building 4, Floor 2
`3150 139th Avenue SE
`Bellevue, WA 98005
`
`
`
`
`
`/J. Andrews Lowes/
`J. Andrew Lowes
`Counsel for Petitioner
`Registration No. 40,706
`
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`12
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