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`Paper 45
`Filed January 19, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ZTE (USA) Inc., HTC Corporation, HTC America, Inc.,
`Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc.,
`
`Petitioner,
`
`v.
`
`Evolved Wireless LLC,
`
`Patent Owner.
`
`
`Case IPR2016-007571
`Patent 7,881,236 B2
`
`
`
`
`Before WILLIAM V. SAINDON, PATRICK M. BOUCHER, and
`TERRENCE W. MCMILLIN, Administrative Patent Judges.
`
`
`
`OPPOSITION TO PATENT OWNER’S REHEARING REQUEST
`
`
`
`
`1 IPR2016-01345 has been consolidated with this proceeding.
`
`
`
`Case IPR2016-00757
`Patent 7,881,236 B2
`
`
`
`The Board should deny Patent Owner’s Request for Rehearing (Paper 43,
`
`“Request”) and decline to reconsider its Final Written Decision (Paper 42, “Decision”).
`
`As discussed below, Patent Owner’s three contrary arguments lack merit.
`
`I.
`
`
`
`
`The Decision considered the prior art disclosure and did not need to
`address Patent Owner’s contrived hypothetical.
`
`Patent Owner first argues the Decision did not consider the following figure,
`
`calling it “a more complex case” of the random access procedure.2
`
`
`
`But Patent Owner’s figure appears nowhere in the 300 or 321 references and has no
`
`basis in those references. In related IPRs involving the same claims of the ’236 patent,
`
`the Board correctly rejected Patent Owner’s figure, calling it a “contrived hypothetical”:
`
`“[T]his complex case is a ‘contrived hypothetical’ that does
`not ‘relate to what is described in [the prior art].’ The fact
`that Patent Owner can hypothesize a system that is more
`
`2 Response at 9.
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`1
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`complex than [the prior art] that does not teach or suggest
`the claim limitation does not negate the fact that the system
`described in [the prior art] does.”3
`
`The Board’s reasoning applies here. The fact that Patent Owner has hypothesized a
`
`system that may not teach the first “transmitting” feature does not negate the fact that
`
`the 300 and 321 references teach that feature.
`
`
`
`And they do. As the Decision found, the 300 and 321 references meet the first
`
`“transmitting” feature of the claims based on: (i) Sections 5.1.4 and 5.4.2.1 of the 321
`
`reference, (ii) Figure 10.1.5.1-1 of the 300 reference, (iii) Section 10.1.5.1 of the 300
`
`reference, and (iv) Dr. Min’s testimony concerning these passages of the 300 and 321
`
`references.4 The Request does not challenge these findings.
`
`
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`Moreover, Patent Owner’s argument that “Petitioner was required to prove a
`
`negative”5 misapprehends the preponderance of the evidence standard as requiring
`
`absolutely certainty. Petitioner has offered evidence of how one of skill in the art
`
`would understand the disclosures of the 300 and 321 references.6 Patent Owner has
`
`offered no evidence—beyond mere speculation—in rebuttal. The Board properly
`
`discounted Patent Owner’s argument. See Canon Inc. et al. v. Papst Licensing GmbH &
`
`Co. KG, IPR2016-01213, Paper 33 at 36, 39-40 (finding, based on Petitioner’s expert
`
`
`3 Apple Inc. v. Evolved Wireless LLC, IPR2016-01228, Paper 27 at 34 (P.T.A.B. Nov. 30,
`2017); Apple Inc. v. Evolved Wireless LLC, IPR2016-01229, Paper 27 at 35 (P.T.A.B.
`Nov. 30, 2017).
`4 Decision at 25-28.
`5 Request at 6.
`6 Paper 3 (Petition) at 29-35; Ex. 1016 (Min Decl.) at ¶¶ 70-80.
`
`2
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`testimony, that a person of ordinary skill would have understood from the prior art
`
`that negative claim limitations would have been obvious, and rejecting Patent Owner’s
`
`contrary hypothetical argument as “irrelevant” and lacking in evidentiary support).
`
`
`
`Therefore, Patent Owner’s first argument does not justify reconsideration. But
`
`should the Board decide to reconsider its Decision to address Patent Owner’s
`
`argument, Petitioner requests that the Board reject the argument (as it did in IPR2016-
`
`01228 and IPR2016-01229) and maintain that the challenged claims are invalid.7
`
`II. The Decision rejected Patent Owner’s “hindsight” argument.
`
`Patent Owner next argues that “[t]he Board overlooked the Patent Owner’s
`
`argument that the Patent Owner’s argument [sic, Petitioner’s argument] concerning the
`
`321 reference relied on hindsight.”8 This argument also fails.
`
`
`
`Patent Owner’s “hindsight” argument relies on Dr. Cooklev’s unsworn
`
`declaration.9 The Decision properly accorded Dr. Cooklev’s declaration no weight,
`
`reasoning that “we do not consider Ex. 2006 [Cooklev Declaration] and give no weight
`
`
`7 To the extent Patent Owner argues that its hypothetical is “not contrived”—as it
`did in IPR2016-01228 and IPR2016-01229—Petitioners note that Patent Owner’s
`argument is based on Dr. Cooklev’s unsworn declaration, which the Board properly
`accorded no weight (Decision at 25). See, e.g., IPR2016-01228, Paper 28 (Request) at
`11 (citing Response at 5-7); IPR2016-01228, Paper 14 (Response) at 5-7 (citing Ex.
`2009 (Cooklev Dec.) at ¶¶ 61, 67, 71, 75, 77, 84-85).
`8 Request at 11.
`9 See Request at 11 (citing Paper 22 (Response) at 42-43); see also Paper 22 (Response)
`at 42-43 (citing Ex. 2006 (Cooklev Dec.) at ¶¶ 85, 128).
`
`3
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`to Patent Owner’s reliance on the Cooklev declaration.”10 Thus, the Decision properly
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`gave no weight to Patent Owner’s “hindsight” argument and other arguments relying
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`on Dr. Cooklev’s declaration.
`
`
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`Further, Patent Owner’s argument that “[n]othing in the FWD disputes that
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`the inventors of the ’236 patent discovered the problems of deadlock and loss of
`
`data” is misleading at best.11 The Decision addresses and agrees with Petitioners’
`
`argument that “simultaneous invention by others working within 3GPP on the LTE
`
`standard . . . provide[s] further support for concluding claim 1 would have been
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`obvious.”12
`
`
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`Therefore, Patent Owner’s second argument does not justify reconsideration.
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`But should the Board decide to reconsider its Decision to address Patent Owner’s
`
`argument, Petitioner requests that the Board reject the argument and maintain that the
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`challenged claims are invalid. Petitioner directs the Board to its petition (Paper 3) at
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`pages 29-31 and its reply (Paper 28) at pages 10-11, where Petitioner explained why the
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`321 reference taught the first “transmitting” feature free of hindsight.
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`III. The Decision adhered to the instituted grounds.
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`
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`Patent Owner lastly argues that the Decision “improperly analyzed the
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`Petitioner’s arguments about the 321 reference as if that reference supported an
`
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`10 Decision at 25.
`11 Request at 12.
`12 Decision at 29.
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`4
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`anticipation argument, and accordingly misapprehended the Petitioner’s Ground for
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`invalidity.” That is wrong.
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`
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`The Decision repeatedly states its analysis is based on obviousness. Several non-
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`exhaustive examples follow:
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`• “3. Obviousness Analysis”13
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`• “For the foregoing reasons, we conclude that Petitioner demonstrates, by a
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`preponderance of the evidence, that claims 1-6 are unpatentable under 35
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`U.S.C. § 103(a) over 3GPP TS 300 and 3GPP TS 321 and claims 7-10, 12, and
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`13 are unpatentable under 35 U.S.C. § 103(a) over 3GPP TS 300, 3GPP TS 321,
`
`and Ericsson.14
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`• “In addition, we agree with Petitioner that Ex. 1005 and Ex. 1008 are evidence
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`of simultaneous invention by others working within 3GPP on the LTE standard
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`and provide further support for concluding claim 1 would have been obvious.”15
`
`Therefore, like its other arguments, Patent Owner’s final argument does not justify
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`reconsideration.
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`13 Decision at 18 (emphasis added).
`14 Decision at 39 (emphasis added).
`15 Decision at 29 (emphasis added).
`
`5
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`January 19, 2018
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`Respectfully submitted,
`/Charles M. McMahon/
`Charles M. McMahon (Reg. 44,926)
`Hersh H. Mehta (Reg. 62,336)
`MCDERMOTT WILL & EMERY LLP
`
`Attorneys for Petitioner
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`6
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`
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`Case IPR2016-00757
`Patent 7,881,236 B2
`
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`CERTIFICATE OF SERVICE
`
`I certify that I sent a copy of the foregoing OPPOSITION TO PATENT OWNER’S
`
`REQUEST FOR REHEARING on January 19, 2018 by electronic mail to the attorneys of
`
`record for the Patent Owner at the following e-mail addresses:
`
`cmorton@robinskaplan.com
`
`rschultz@robinskaplan.com
`
`mfinn@robinskaplan.com
`
`Evolved_RK_Team@robinskaplan.com
`
`/Hersh H. Mehta/
`Hersh H. Mehta (Reg. 62,336)
`
`
`
`
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