IPR2016-00757
`Patent 7,881,236 B2
`
`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.,
`Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`
`____________
`
`Case IPR2016-007571
`Patent 7,881,236 B2
`____________
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS REQUEST FOR
`
`REHEARING PURSUANT TO 37 C.F.R. § 42.71(d)
`
`.
`
`
`
`
`
`_______________________
`
`1IPR2016-01345 has been consolidated with this proceeding.
`
`
`
`Patent 7,881,236 B2
`
`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.,
`Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`
`____________
`
`Case IPR2016-007571
`Patent 7,881,236 B2
`____________
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS REQUEST FOR
`
`REHEARING PURSUANT TO 37 C.F.R. § 42.71(d)
`
`.
`
`
`
`
`
`_______________________
`
`1IPR2016-01345 has been consolidated with this proceeding.
`
`
`
`
`Table of Contents
`
`IPR2016-00757
`Patent 7,881,236 B2
`
`Page
`
`I.
`
`II.
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`The Board overlooked Patent Owner’s argument that
`Petitioners had not demonstrated that the proposed combination
`would transmit the stored Msg 3 buffer data only when the
`claim limitations were true. ................................................................... 1
`The Board overlooked the Patent Owner’s argument that the
`321 reference taught the only if behavior only in hindsight. ................. 4
`III. The Board misapprehended Petitioners’ argument about the 321
`reference, and adopted a different basis for the rejection than
`Petitioners offered. ................................................................................ 5
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`- i -
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`Table of Authorities
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`IPR2016-00757
`Patent 7,881,236 B2
`
`
` Page(s)
`
`Cases
`Canon Inc. et al. v. Papst Licensing GmbH & Co. KG,
`IPR2016-01213, Paper 33 ..................................................................................... 4
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 5
`In re Nuvasive,
`841 F.3d 966, PINCITE (Fed. Cir. 2016) ............................................................. 5
`
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`- ii -
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`IPR2016-00757
`Patent 7,881,236 B2
`I. The Board overlooked Patent Owner’s argument that Petitioners had not
`demonstrated that the proposed combination would transmit the stored
`Msg 3 buffer data only when the claim limitations were true.
`The Board overlooked Patent Owner’s argument that Petitioners failed to
`
`show that the proposed combination would satisfy the claim limitation of
`
`transmitting in all circumstances the stored Msg 3 buffer data only when the two
`
`limitations were true. Petitioners encourage the Board to continue to overlook this
`
`argument because the only conclusion that can reach upon consideration of this
`
`argument is that the challenged claims are patentable.
`
`The Board correctly determined that the term “if” in limitations 1(e) and 7(e)
`
`in the challenged claims means “only when.” FWD at 15. As Patent Owner
`
`argued, Petitioners were then required to show that the prior art disclosed that in all
`
`circumstances the stored Msg 3 buffer data would be transmitted only when the
`
`two claim limitations were true. See, e.g. Res. at 9-24, 29-32, 35-47. However,
`
`the Petition and supplemental briefing rely on disclosures that allegedly show
`
`transmission of stored Msg 3 buffer data in only one scenario, but, importantly, do
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`not demonstrate that such transmission will occur “only when” the claim
`
`limitations are met because they do not address the scenario below. Pet. at 31-32,
`
`Opp. at 1-2.
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`Indeed, the below scenario demonstrates that Petitioners have not shown the
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`proposed combination discloses the “only when” limitation because it proves that
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`- 1 -
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`in the proposed combination stored Msg 3 buffer data would be sent in response to
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`IPR2016-00757
`Patent 7,881,236 B2
`
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`the UL Grant on the PDCCH.
`
`
`
`As argued by Patent Owner, Sec. 5.4.2.1 of 36.321 states that stored Msg 3
`
`buffer data will be sent if there is an (1) on-going random access procedure and (2)
`
`stored Msg 3 data. Res. at 42-46; Ex. 1003 at 18. In Fig. 7 above, these two
`
`conditions in 5.4.2.1 would be true such that stored Msg 3 buffer data would be
`
`sent in response to receiving UL Grant on the PDCCH. The UL Grant on the
`
`PDCCH may include a C-RNTI. Ex. 1008 at 10. 36.321 states “[i]f the UE
`
`receives both a grant for its RA-RNTI [random access response] and a grant for its
`
`C-RNTI [PDCCH] [like in Fig. 7], the UE may choose to continue with either the
`
`grant for its RA-RNTI or the grant for its C-RNTI.” Ex. 1008 at 18 (emphasis
`
`added). Thus, the proposed combination, when faced with the scenario in Fig. 7,
`
`could choose to continue with the UL Grant on the PDCCH and transmit stored
`
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`- 2 -
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`Msg 3 buffer data. The ability to choose does not satisfy the Board’s construction
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`IPR2016-00757
`Patent 7,881,236 B2
`
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`of “only when.”
`
`Such transmission violates the Board’s construction that stored Msg 3 buffer
`
`data is sent only when receiving an UL Grant on the random access response and
`
`there is stored Msg 3 data.1 Res. at 42-46. Petitioners have set forth no evidence
`
`to the contrary. As such, Petitioners have not shown that the proposed
`
`combination would transmit stored Msg 3 buffer data only when the uplink grant
`
`was received on a random access response and there was stored Msg 3 buffer data.
`
`Petitioners have not cited anywhere in the FWD where the Board considered
`
`this argument. Indeed, there is no reference to Fig. 7 in the FWD. Rather,
`
`Petitioners merely recite the portions of the FWD where Petitioners made their
`
`general conclusion related to the one scenario that Petitioners addressed. That does
`
`not demonstrate that the Board considered Patent Owner’s argument regarding
`
`other scenarios. As shown above, when this argument is considered, it
`
`demonstrates that Petitioners have not met their burden to show the challenged
`
`claims are unpatentable.
`
`Petitioners make several other irrelevant arguments. First, the fact that Fig.
`
`7 is not found in the prior art is baseless. Fig. 7 shows a scenario where the “only
`
`
`1 36.300 (Ex. 1002) adds nothing that would change this analysis. Indeed, Fig. 7 is
`an annotated figure from 36.300.
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`- 3 -
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`when” construction is not satisfied by Petitioners’ proposed combination. Res. at
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`IPR2016-00757
`Patent 7,881,236 B2
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`43-46. There is no requirement for it to be in the prior art to be considered.
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`Second, as discussed more fully in Patent Owner’s reply in IPR2016-01228,
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`which it incorporates by reference herein, the scenario provided in Fig. 7 must be
`
`considered by the Board because it demonstrates that the proposed combination
`
`does not disclose the claims as construed by the Board. It is not describing a more
`
`complex system than allegedly disclosed in the prior art, but rather a scenario
`
`showing that the proposed combination would not meet the properly construed
`
`claim limitation of “if.”
`
`Third, Petitioners’ reliance on Canon is misplaced. None of the limitations
`
`in the challenged patent in Canon involved a limitation requiring an action “only
`
`if” certain limitations are true. See Canon Inc. et al. v. Papst Licensing GmbH &
`
`Co. KG, IPR2016-01213, Paper 33 at 36, 39-40. Thus, the findings in Canon have
`
`no bearing in the present matter.
`
`II. The Board overlooked the Patent Owner’s argument that the 321 reference
`taught the only if behavior only in hindsight.
`The FWD did not address Patent Owner’s argument that Petitioners relied on
`
`hindsight in its assertions related to the 321 reference. Patent Owner argued that
`
`the ’236 patent itself disclosed the problem its inventors had identified, and that
`
`Petitioners sought to use this teaching in the ’236 patent to support their proposed
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`- 4 -
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`combination with the 321 reference. Res. at 42-43. Petitioners argue that the
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`IPR2016-00757
`Patent 7,881,236 B2
`
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`Board considered this argument in its discussion to alleged simultaneous invention
`
`by others. Simultaneous invention and hindsight are different issues.
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`Indeed, Petitioners recognize this problem by asking the Board to consider
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`portions of the record not cited by the Board on page 29 of the FWD. Petitioners’
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`newly identified pages in the Petition still fail to overcome the burden because they
`
`merely state no hindsight is needed. Such conclusory statements are not sufficient
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`to overcome their burden. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
`
`Petitioners failed to identify any evidence as to why one of skill would modify the
`
`321 reference in the claimed manner. Thus, the Board should find upon
`
`reconsideration that the challenged claims are patentable.
`
`III. The Board misapprehended Petitioners’ argument about the 321 reference,
`and adopted a different basis for the rejection than Petitioners offered.
`Petitioners’ only argument is that the Board based its analysis on
`
`obviousness by citing portions of the FWD where the Board used the term
`
`“obvious” or “obviousness.” That ignores Patent Owner’s specific argument that
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`Petitioners’ argument of obviousness was based on the 321 reference modified by
`
`common sense. The Board adopted this newly created argument of anticipation by
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`the 321 reference. FWD. at 25. As such, undisputed Federal Circuit precedent
`
`requires reconsideration. See In re NuVasive, 841 F.3d 966, 968 (Fed. Cir. 2016).
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`- 5 -
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`Dated: January 26, 2018
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`IPR2016-00757
`Patent 7,881,236 B2
`
`
`
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`Respectfully submitted,
`
`/Ryan M. Schultz/
`Registration No. 65,134
`Attorney for Patent Owner
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`- 6 -
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`CERTIFICATE OF SERVICE
`
`IPR2016-00757
`Patent 7,881,236 B2
`
`
`I hereby certify that on this January 26, 2018, a copy of PATENT
`
`OWNER’S REPLY IN SUPPORT OF ITS REQUEST FOR REHEARING has
`
`been served in its entirety by electronic mail to the petitioners:
`
`For ZTE petitioners:
`Charles M. McMahon
`cmcmahon@mwe.com
`Hersh H. Mehta
`hmehta@mwe.com
`
`For HTC petitioners:
`Stephen S. Korniczky
`skorniczky@sheppardmullin.com
`Martin Bader
`mbader@sheppardmullin.com
`Ericka J. Schulz
`eschulz@sheppardmullin.com
`
`For Samsung petitioners
`James M. Glass
`jimglass@quinnemanuel.com
`Kevin P.B. Johnson
`kevinjohnson@quinnemanuel.com
`Todd M. Briggs
`toddbriggs@quinnemanuel.com
`John T. McKee
`johnmckee@quinnemanuel.com
`
`Dated: January 26, 2018
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`
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`Respectfully submitted,
`
`
`/Ryan M. Schultz/
`
`8693449.1
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`- 7 -
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`Registration No. 65,134
`Attorney for Patent Owner
`
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