Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 47
`Entered: March 26, 2018
`
`
`
`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
`_________
`
`
`
`Before WILLIAM V. SAINDON, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges
`
`
`McMILLIN, Administrative Patent Judge
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`1 IPR2016-01345 has been consolidated with this proceeding.
`
`

`

`IPR2016-00757
`Patent 7,881,236 B2
`
`
`I. INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.71(d), Evolved Wireless, LLC (“Patent
`
`Owner”) requests rehearing of our Final Written Decision (Paper 42,
`
`“Dec.”). Paper 43 (“Req. Reh’g”). As authorized by the Board (Paper 44,
`
`2–3), Petitioners filed an opposition to Patent Owner’s rehearing request
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`(Paper 45) and Patent Owner filed a reply in support of its request for
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`rehearing (Paper 46).
`
`For the reasons set forth below, Patent Owner’s Request for
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`Rehearing is denied.
`
`II. STANDARD OF REVIEW
`
`A party requesting rehearing bears the burden of showing that the
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`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
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`specifically all matters we misapprehended or overlooked, and the place
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`where each matter was addressed previously in a motion, an opposition, or a
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`reply. Id. With this in mind, we address the arguments presented by Patent
`
`Owner.
`
`III. ANALYSIS
`
`Patent Owner submits that we (1) “overlooked the Patent Owner’s
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`argument that Petitioner has made a general conclusion that its prior art
`
`behaves according to the Board’s narrow only if construction for the first
`
`transmitting limitation, even though that prior art does not create the
`
`conditions that test the only if behavior;” (2) “overlooked the Patent Owner’s
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`argument that the 321 reference taught the only if behavior only in
`
`hindsight;” and (3) “misapprehended” and “improperly modified the Patent
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`Owner’s argument that the 321 reference made the only if behavior obvious
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`into one that the 321 reference disclosed that behavior.” Req. Reh’g 1–2.
`
`2
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`

`

`IPR2016-00757
`Patent 7,881,236 B2
`
`We have fully reviewed and considered all of Patent Owner’s arguments in
`
`the rehearing request and are not persuaded that any changes to our Final
`
`Written Decision are necessary or appropriate.
`
`In the Final Written Decision, with regard to claim construction, the
`
`Board concluded, “we agree with Patent Owner that ‘if’ in the ‘transmitting’
`
`limitations of independent claims 1 and 7 is properly construed, under the
`
`broadest reasonable interpretation standard, as introducing necessary
`
`conditions, rather than sufficient conditions.” Dec. 15. The transmitting
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`limitations of claim 1 recite:
`
` transmitting the data stored in the Msg3 buffer to the base
`station using the UL Grant signal received on the specific
`message, if there is data stored in the Msg3 buffer when receiving
`the UL Grant signal on the specific message and the specific
`message is the random access response message; and
`in
`transmitting new data
`to
`the base
`station
`correspondence with the UL Grant signal received on the specific
`message, if there is no data stored in the Msg3 buffer when
`receiving the UL Grant signal on the specific message or the
`specific message is not the random access response message.
`
`
`
`Ex. 1001, 16:59–17:3 (emphasis added). Independent claim 7 contains
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`commensurate limitations. Id. at 17:30–18:7. The operation of these two
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`transmitting limitations can be described as follows:
`
`Those limitations implicate two conditions, resulting in different
`data being transmitted depending on whether both conditions are
`satisfied or not. The first condition is whether “there is data
`stored in the Msg3 buffer when receiving the UL Grant signal on
`the specific message,” and the second condition is whether “the
`specific message is the random access response message.” Ex.
`1001, col. 16, l. 59 – col. 17, l. 3; col. 17, l. 38 – col. 18, l. 7. “If”
`both conditions are satisfied, the “data stored in the Msg3 buffer”
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`3
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`

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`IPR2016-00757
`Patent 7,881,236 B2
`
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`are transmitted to the base station; and “if” either condition is not
`satisfied, “new data” are transmitted to the base station. Id.
`
`Dec. 10–11. The Patent Owner refers to these operations, in light of the
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`claim construction adopted by the Board, as the “‘only if’ behavior” in the
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`rehearing request. Req. Reh’g passim. In the Final Written Decision, the
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`Board found that the 321 reference2 and the 300 reference3 taught the first
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`“transmitting” limitation and the 321 reference taught the second
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`“transmitting” limitation under a proper claim construction. Dec. 28.
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`Pursuant to 35 U.S.C. §316(e), the Petitioner had “the burden of
`
`proving a proposition of unpatentability by a preponderance of the
`
`evidence.” In support of its arguments in the Response, Patent Owner relied
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`on the Declaration of Todor Cooklev, Ph. D. (Ex. 2006) which was unsigned
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`and to which we gave no evidentiary weight.4 See Dec. 23–25. In contrast,
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`Petitioner’s case was supported by the Declaration of Paul S. Min, Ph. D.
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`(Ex. 1006) to which we gave appropriate evidentiary weight. Dec. passim.
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`Petitioner’s evidence cannot be rebutted by Patent Owner’s unsworn
`
`attorney argument. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d
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`1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not
`
`evidence and cannot rebut . . . evidence.”). Thus, the weight of the
`
`evidence greatly favored Petitioner.
`
`
`2 3GPP TS 36.321 v8.2.0 (2008) (Ex. 1003, “3GPP TS 321”).
`3 3GPP TS 36.300 v8.4.0 (2008) (Ex. 1002, “3GPP TS 300”).
`4 In our Final Written Decision, we noted that, despite having notice of the
`defect with the Cooklev Declaration, Patent Owner took no affirmative steps
`to cure the defect. Dec. 23–25. Patent Owner did not request leave to cure
`the defect in the Cooklev Delcaration in connection with the rehearing
`request or otherwise.
`
`4
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`

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`IPR2016-00757
`Patent 7,881,236 B2
`
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`Patent Owner first argues that the Board failed to consider a “more
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`complex case of UL Grant reception” based on an annotated Figure 7 of the
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`300 reference to which Patent Owner added a second UL Grant. Req.
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`Reh’g. 9. Patent Owner argued that this “more complex case” showed that
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`the data in the Msg3 buffer could be transmitted based on a UL Grant not in
`
`a random access response. Id. at 10. The fact that Patent Owner can
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`hypothesize a system that is more complex than the cited references teach
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`does not negate the teachings of the cited references.5
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`Patent Owner next argues, “[t]he Board overlooked . . . the Patent
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`Owner’s argument concerning the 321 reference relied on hindsight.” Req.
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`Reh’g. 11. Specifically, Patent Owner argues:
`
`The Petitioner argued that the 321 reference rendered the
`only if behavior obvious. (Pet. at 29-31.) The Patent Owner
`argued that the 321 reference rendered the only if feature of the
`claim obvious only in hindsight. (Response at 42-43.) The
`Patent Owner pointed out that the Petitioner’s argument hinges
`on the recognition that “erroneous grants” were known at the
`time of the invention. (Id. at 42.) The Patent Owner pointed out
`that recognition of any grant as being problematic only first
`appeared in the ’236 patent. (Id.) Accordingly, the Patent
`Owner argued that the Petitioner’s argument with respect to the
`321 reference relies on improper hindsight. (Id. at 42-43.)
`
`Req. Reh’g. 11–12. In the Response, Patent Owner’s hindsight argument
`
`was presented as part of its argument that “[n]one of the prior art teaches the
`
`
`5 Patent Owner’s hypothetical case was discussed and found not to be
`persuasive in the Final Written Decisions in IPR2016-01228 (Paper 27, 33–
`34) and IPR2016-01229 (Paper 27, 35) in which independent claims 1 and 7
`of the ’236 patent were held to be unpatentable in view of combinations of
`references not asserted in this proceeding. IPR2016-01228 Paper 27, 40–41;
`IPR2016-01229 Paper 27, 41–42.
`
`5
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`

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`IPR2016-00757
`Patent 7,881,236 B2
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`‘only if’ behavior or renders it obvious.” PO Resp. 42–43. We implicitly
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`responded to this argument by finding the 321 reference and the 300
`
`reference teach this feature. Dec. 28. We also noted the evidence of
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`simultaneous invention, which indicates that others recognized the problem
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`recognized by the inventors of the ’236 patent and offered the same solution
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`as claimed in the ’236 patent. Dec. 28–29.
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`Patent Owner finally argues that the Board misapprehended an
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`argument made by Petitioner. Req. Reh’g 2, 13–14. Patent Owner argues,
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`“[n]otably the Board understood that Petitioner argued that the 321 and 300
`
`references . . . each separately teach the ‘only if’ behavior.” Id. at 13 (citing
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`Dec. 23). There was no misapprehension by the Board of Petitioner’s
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`argument. On pages 29–31 of the Petition, there was a section titled, “[t]he
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`321 reference by itself renders the ‘only if’ feature obvious” and, on pages
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`31-32 of the Petition, there was a section titled, “[t]he 300 reference taught
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`the ‘only if’ feature.”
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`Patent Owner also suggests “[t]he Board improperly analyzed
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`arguments about the 321 reference as if that reference supported an
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`anticipation argument, and accordingly misapprehended the Petitioner’s
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`Ground for invalidity.” Req. Reh’g 13. In support of this argument, Patent
`
`Owner quotes the following sentence from page 23 of the Final Written
`
`Decision: “Petitioner asserts that both 3GPP TS 321 and 3GPP TS 300
`
`would be interpreted by one of ordinary skill in the art to teach or suggest
`
`transmission of the data in the Msg3 buffer only if both conditions (1) and
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`(2) are met and transmission of new data if either condition (1) or (2) is not
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`met.” Id. This statement was made in the context of the Board’s
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`“Obviousness Analysis” of claim 1 and relates to the Board’s analysis of
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`6
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`

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`IPR2016-00757
`Patent 7,881,236 B2
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`whether the cited combination of references teaches or suggests all the
`
`limitations of claim 1. See Pet. 18–30. As shown in the Final Written
`
`Decision, the Board reviewed and considered the teachings and suggestions
`
`of the cited combination of references and concluded claim 1 would have
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`been obvious. Id. Patent Owner has not shown that this conclusion was in
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`error.
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`Accordingly, it is ORDERED that Patent Owner’s Request for
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`IV. ORDER
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`Rehearing is denied.
`
`
`
`
`
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`
`
`7
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`

`

`IPR2016-00757
`Patent 7,881,236 B2
`
`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
`
`
`PATENT OWNER:
`
`Cyrus Morton
`Ryan Schultz
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`
`
`8
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`