`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`ZTE (USA) INC., HTC CORPORATION, HTC AMERICA, 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 RESPONSE TO PETITIONERS’ PETITION FOR
`INTER PARTES REVIEW OF UNITED STATES PATENT NO. 7,881,236
`
`
`
`1 IPR2016-01345 has been consolidated with this proceeding.
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`IPR2016-00757
`Patent 7,881,236 B2
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The State of the art ........................................................................................... 2
`
`III. The claims ........................................................................................................ 6
`
`A.
`B.
`
`Independent claim 1 .............................................................................. 6
`Independent claim 7 .............................................................................. 8
`
`IV. Claim Construction .......................................................................................... 9
`
`A.
`B.
`
`C.
`D.
`
`E.
`
`F.
`
`G.
`
`Introduction ........................................................................................... 9
`A person of ordinary skill would read the claims as transmitting
`Msg3 data “only if” the condition in 1(e) is satisfied ......................... 13
`Petitioners’ proposed construction is inoperative ............................... 17
`The principle of expressio unius supports Patent Owner’s “only
`if” construction .................................................................................... 19
`The USPTO’s examination of a child patent of the ’236 patent
`confirms that the proper construction is the “only if” one .................. 22
`Petitioners’ various claim construction arguments fail ....................... 25
`1.
`Petitioners improperly dissect differences in meaning
`between “only if” and “if” ........................................................ 25
`Petitioners’ other arguments fail, too ........................................ 26
`2.
`Claim 7 ................................................................................................ 29
`
`V.
`
`Petitioners’ invalidity argument fails because they do not show that
`their prior art teaches certain claim limitations, independent of the
`claim construction used ................................................................................. 33
`
`A.
`
`B.
`
`Petitioners’ argument that the 321 reference teaches limitation
`1(c) is wrong, even using Petitioners’ unreasonable claim
`construction ......................................................................................... 33
`Petitioners also failed to show that the prior art satisfies the
`second transmitting limitation completely .......................................... 35
`Petitioners’ failed to establish a prima facie case against
`the full claim 1(f) limitation because they analyzed a
`rewritten claim .......................................................................... 36
`Even if Petitioners had correctly rewritten the claim 1(f)
`limitation, Petitioners’ proof still fails ...................................... 38
`
`1.
`2.
`
`
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`i
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`IPR2016-00757
`Patent 7,881,236 B2
`VI. None of the prior art teaches the “only if” behavior or renders it
`obvious ........................................................................................................... 42
`
`A.
`
`B.
`C.
`
`D.
`
`The 321 reference renders the “only if” behavior in the 1(e)
`limitation obvious only in hindsight ................................................... 42
`The 300 reference did not teach the “only if” feature ......................... 43
`Petitioners’ combination of the 300 reference and the 321
`reference does not make the “only if” feature obvious. ...................... 46
`Petitioners’ simultaneous development argument is wrong ............... 47
`
`VII. Conclusion ..................................................................................................... 47
`
`
`
`
`
`
`
`ii
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`

`
`
`TABLE OF AUTHORITIES
`
`IPR2016-00757
`Patent 7,881,236 B2
`
` Page(s)
`
`Cases
`
`AIA Eng’g Ltd. v. Magotteaux Int’l S/A,
`657 F.3d 1264 (Fed. Cir. 2011) ....................................................................................... 17
`Chef Am., Inc. v. Lamb-Weston, Inc.,
`358 F.3d 1371 (Fed. Cir. 2004) ............................................................................... 26, 27
`Chevron USA Inc. v. Echazabal,
`536 U.S. 77 (2002) ................................................................................................................ 20
`Despoir, Inc. v. Nike USA, Inc.,
`2005 U.S. Dist. LEXIS 10845 (N.D. Ill. Feb. 9, 2005) ............................................... 20
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015), aff’d, 136 S. Ct. 2131 (2016) ............................. 9
`In re Magnum Oil Tools Int’l, Ltd.,
`2016 U.S. App. LEXIS 13461 (Fed. Cir. July 25, 2016) ................................... 35, 48
`PPC Broadband, Inc. v. Corning Optical Communs. RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016).......................................................................................... 26
`Pods, Inc. v. Porta Stor, Inc.,
`484 F.3d 1359 (Fed. Cir. 2007) ....................................................................................... 27
`Shenyang Yuanda Aluminum Industry Eng’g. v. United States,
`776 F.3d 1351 (Fed. Cir. 2015) ....................................................................................... 19
`
`
`
`
`
`iii
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`IPR2016-00757
`Patent 7,881,236 B2
`
`Patent Owner Evolved Wireless, LLC submits this Response to the above-
`captioned Petition for Inter Partes Review of U.S. Patent No. 7,811,236 (“Pet.,”
`
`Paper 1).
`I.
`Introduction
`The Petition has many failings. First, even using Petitioners’ unreasonably
`
`broad “if” claim construction, its purportedly-invalidating prior art (the “321
`
`reference, Exhibit 1003) fails to show two limitations of the challenged
`
`independent claims. For one limitation, 1(c), Petitioners’ Declarant made a mistake
`
`in interpreting the prior art. For a second limitation, 1(f), his analysis of an
`
`algorithm in the 321 reference skipped over a step that disproves his point.
`
`Accordingly, the Petition does not create a prima facie case of invalidity.
`
`Second, the Board’s claim construction is incorrect. It is inoperative, and it
`
`further fails to match the independent, not-litigation-driven, analysis of a child
`
`patent to the ’236 patent provided by the USPTO’s examiner. Most importantly,
`
`though, the Board’s claim construction does not match the logic of the claims or
`
`read the claims as a person of ordinary skill in the art would read them. That
`
`person’s reading is based on computer programming and hardware specification
`
`tools, where, for example, the word “if” has a specialized meaning when options
`
`for an “if not” event are specified.
`
`Third, using the correct “only if” construction, it is seen that Petitioners’ 300
`
`reference (Exhibit 1002), fails to fill the gap in its primary reference, the 321
`
`reference (Exhibit 1003). The 300 reference shows only a simple case in the
`
`random access procedure that is at issue, and because the reference does not
`
`
`
`1
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`IPR2016-00757
`Patent 7,881,236 B2
`
`consider more complex cases (cases that the ’236 patent inventors did consider),
`
`the conclusion Petitioners drew from it is unsupported. Further, the 321 reference
`
`does not teach the “only if” behavior unless one reads that reference with hindsight
`
`based on the teachings of the ’236 patent.
`
`With respect to claim 7 (the only other challenged independent claim), it is
`
`not invalid for all the same reasons as claim 1 survives. But further, should the
`
`Board adopt the (correct) “only if” construction, then claim 7 and its dependents
`
`survive because Petitioners did not challenge these claims using the “only if”
`
`construction.
`
`Accordingly, no matter if the Board selects the unreasonably broad “if” claim
`
`construction or the correct “only if” construction, the Petition should be wholly
`
`rejected and no challenged claims should be cancelled.
`II. The State of the art
`
`The ’236 patent is titled, “Data Transmission Method and User Equipment for
`
`the Same” and generally describes a method “for efficiently transmitting data
`
`stored in a message 3 (Msg3) buffer and a user equipment” in a mobile
`
`communication system such as a Long Term Evolution (“LTE”) system developed
`
`and standardized in the 3rd Generation Partnership Project (“3GPP”). Ex. 1001,
`
`Abstract, (54), 1:17-32.
`
`Figure 1 below is an annotated version of the ’236 patent’s Fig. 5. Fig. 5
`illustrates communication between a UE (e.g., a mobile telephone) and a base
`
`
`
`2
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`

`

`IPR2016-00757
`Patent 7,881,236 B2
`station (e.g., a cell phone tower). Cooklev at ¶ 37.2 In particular, Fig. 5 illustrates a
`“random access procedure” between a UE and a base station used, for example, to
`
`enable the UE to obtain initial access to the base station. Ex. 1001 at 3:45-49. Fig.
`
`5 (the basis for the annotated in Figures 1-3 herein) illustrates a contention-based
`random access procedure. Id. at 6:53-55. In Figures 1-3 below, time increases
`along the downwards direction. Min Tr. at 68:4-8.3
`
`
`
`
`Figure 1
`
`As the ’236 patent describes, there are (at least in a simple case) four
`
`messages sent between the UE and the base station. They are:
`
`
`
`
`2 “Cooklev” refers to the Declaration of Todor Cooklev, Ph.D., Ex. 2006.
`
`3 “Min Tr.” refers to the deposition transcript of Petitioners’ expert, Dr. Paul Min
`
`taken March 16, 2017 in Chicago Il. It is attached as Exhibit 2004.
`
`
`
`3
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`

`IPR2016-00757
`Patent 7,881,236 B2
`Direction
`Synonym(s)
`Message
`UE to base station
`Message 1
`Random access preamble
`Base station to UE
`Message 2
`Random access response
`Message 3 (Msg3) UE to base station
`Scheduled transmission
`Contention resolution message Message 4
`Base station to UE
`Id. at 4:3-17; Fig. 5; 8:38-9:48.
`
`Figure 2 below is a further annotated version of the ’236 patent’s Fig. 5. This
`
`figure shows, in green, that the base station sends uplink grants (“UL Grants”) to
`
`the UE. UL Grants allocate resources (including time slots and frequencies) to the
`UE for its use. See Ex. 1001 at 8:12-16; Min Tr. at 9:17-10:1.
`
`Figure 2
`
`
`
`
`
`
`
`Figure 2 also illustrates that UL Grants come in two types. One type is an UL
`
`Grant received on a Random Access Response message. Ex. 1001 at 4:22-26; Min
`
`Tr. at 41:12-15. The second type is an UL Grant on a PDCCH DCI format 0, or,
`
`
`
`4
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`IPR2016-00757
`Patent 7,881,236 B2
`
`for short, “a PDCCH uplink grant.” Ex. 1001 at 5:9-13; Min Tr. at 42:10-24. An
`
`UL Grant received on a Random Access Response message is used, for example,
`
`to allocate resources for a UE to use to send a Buffer Status Report (“BSR”) to a
`
`UE. Cooklev at ¶ 43. A BSR informs the base station how much data the UE has to
`upload. Id. A PDCCH uplink grant is used, for example, to allocate resources for a
`
`UE to use to send that data described in the BSR using a HARQ scheme. Cooklev
`
`at ¶ 81. HARQ is an error-handling protocol. Cooklev at ¶ 49.
`
`While Figure 2 above shows that message 3 is sent in response to an UL
`
`Grant in a Random Access Response, before the invention of the ’236 patent,
`
`during an ongoing random access procedure, a UE transmitted a message 3
`
`independent of the type of the UL Grant it received. Ex. 1001 at 4:26-32 (making
`
`that transmission “regardless of the reception mode of the UL Grant signal”). The
`
`annotation in Figure 2 further shows a fifth transmission, the transmission of “New
`
`data” from the UE to the base station. As the ’236 patent indicates, the prior four
`
`messages (messages 1-4) prepare the system so that the UE may uplink this new
`data to the base station. See Ex. 1001 at 9:48-51. The new data is sent in
`correspondence to an UL Grant on the PDCCH. Id. at 11:19-21.
`
`Figure 3 below is a further annotated version of the ’236 patent’s Fig. 5. This
`
`figure indicates the sources of the data the UE used for transmitting message 3 data
`and new data. The data for message 3 are stored in a message 3 (Msg3) buffer. Id.
`
`at Abstract; 3:42–44, 4:18–26. The data for the new data transmission are stored in
`a HARQ buffer. Id. at 5:59-67.
`
`
`
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`5
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`IPR2016-00757
`Patent 7,881,236 B2
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`
`
`Figure 3
`
`
`III. The claims
`Independent claim 1
`A.
`
`Claim 1 reads as follows:
`
`1.
`
`1(b)
`
`A method of transmitting data by a user equipment through an uplink,
`the method comprising:
`receiving an uplink grant (UL Grant) signal from a base station on a
`specific message;
`1(c) determining whether there is data stored in a message 3 (Msg3) buffer
`when receiving the UL Grant signal on the specific message;
`1(d) determining whether the specific message is a random access response
`message;
`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
`transmitting new data to the base station in 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.
`
`1(e)
`
`1(f)
`
`
`
`6
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`

`IPR2016-00757
`Patent 7,881,236 B2
`
`Ex. 1001 at 16:50-17:3 (emphasis added).
`
`A number of observations about claim 1 are relevant. First, reading the claim
`
`in light of the patent specification, claim 1 refers to the Scheduled Transmission as
`the transmission of “data stored in a message 3 (Msg3) buffer.” Id. at 4:11-14.
`
`Also, claim 1’s reference to a “specific message” in limitation 1(d) can refer to two
`
`types of UL Grants: in limitation 1(e), an UL Grant provided in a random access
`
`response; and in limitation 1(f), an UL Grant provided in a PDCCH.
`
`Second, limitations 1(e) and 1(f) both depend on a condition, denoted herein
`
`as Condition X. Condition X is the underlined language in limitations 1(e) and 1(f)
`copied above. Condition X considers two pieces of information:
`
`Test a: Is there data stored in the Msg3 buffer when
`
`receiving the UL Grant signal on the specific message?
`
`and
`
`Test b: is the specific message the random access
`
`response message?
`Using the Condition X language, limitations 1(e) and 1(f) read:
`transmitting the data stored in the Msg3 buffer to the base station using the
`UL Grant signal received on the specific message, if Condition X is met;
`and
`transmitting new data to the base station in correspondence with the UL
`Grant signal received on the specific message, if Condition X is not met.
`These two limitations are of the form “If X, then do one thing, but if not X,
`
`1(e)
`
`1(f)
`
`
`
`do the other thing.” This simple observation is relevant to the claim construction.
`
`The Institution Decision supports this position. Paper 11 at 9-10 (“On the record
`
`before us, we find that the language of the two ‘transmitting’ limitations has
`
`
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`7
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`IPR2016-00757
`Patent 7,881,236 B2
`
`sufficient clarity, in that the first limitation is drafted in conjunctive, ‘a and b’
`
`format, while the second limitation is drafted in disjunctive, ‘not a or not b’ format;
`
`accordingly, only one of the two limitations may occur for an uplink grant.)
`
`(Emphasis added).
`
`Independent claim 7
`
`B.
`Claim 7, the only other independent claim in the ’236 patent presents the
`
`same Condition X as does Claim 1. Claim 7, reads as follows:
`
`
`
`A user equipment, comprising:
`7.
`7(b) a reception module adapted to receive an uplink grant (UL Grant) signal
`from a base station on a specific message;
`7(c) a transmission module adapted to transmit data to the base station using the
`UL Grant signal received on the specific message;
`7(d) a message 3 (Msg3) buffer adapted to store UL data to be transmitted in a
`random access procedure;
`7(e) a Hybrid Automatic Repeat Request (HARQ) entity adapted to determine
`whether there is data stored in the Msg3 buffer when the reception module
`receives the UL Grant signal and the specific message is a random access
`response message, acquiring the data stored in the Msg3 buffer if there is
`data stored in the Msg3 buffer when the reception module receives the UL
`Grant signal and the specific message is the random access response
`message, and controlling the transmission module to transmit the data stored
`in the Msg3 buffer to the base station using the UL Grant signal received by
`the reception module on the specific message; and
`7(f) a multiplexing and assembly entity used for transmission of new data,
`7(g) wherein the HARQ entity acquires the new data to be transmitted from the
`multiplexing and assembly entity if there is no data stored in the Msg3
`buffer when the reception module receives the UL Grant signal on the
`specific message or the received message is not the random access response
`message, and controls the transmission module to transmit the new data
`acquired from the multiplexing and assembly entity using the UL Grant
`signal received by the reception module on the specific message.
`Ex. 1001 at 17:30-18:7 (emphasis added). Here, Condition X is shown underlined
`in limitation 7(e) and NOT Condition X is shown underlined in limitation 7(g). In
`
`
`
`8
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`IPR2016-00757
`Patent 7,881,236 B2
`
`large part, claim 7 claims an apparatus that performs the method claimed in
`
`claim 1.
`
`IV. Claim Construction
`
`The Board gives each claim “its broadest reasonable construction in light of
`the specification of the patent in which it appears.” In re Cuozzo Speed Techs.,
`LLC, 793 F.3d 1268, 1275 (Fed. Cir. 2015), aff’d, 136 S. Ct. 2131, 2142 (2016).
`
`Introduction
`A.
`The parties and the Board agree that two tests or conditions must be evaluated
`
`in order to determine what data the claims of the ’236 patent require to be sent. Pet.
`
`at 16, 26, 37-38; Paper 11 at 9-10. As previously noted these two tests or
`
`conditions are:
`
`• Test a: is there data stored in the Msg3 buffer
`when receiving the UL Grant signal on the specific
`message?
`• Test b: is the specific message is the random
`access response message?
`These two conditions are independent of one another, and can be placed in a two-
`
`by-two matrix. Each cell in the matrix can be considered to be one “condition.”
`
`The following matrix, Matrix 1, shows how the ’236 patent claims’ previously-
`defined Condition X fits into the matrix—Condition X being true in only the top
`
`left matrix cell:
`
`
`
`
`
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`IPR2016-00757
`Patent 7,881,236 B2
`
`Test a:
`Does the Msg3 buffer
`contain data?
`YES[a]
`NO[not a]
`
`True
`
`False
`
`False
`
`False
`
`Condition X
`
`Test b:
`What carried
`the UL Grant?
`
`Random
`Access
`Response [b]
`PDCCH [not
`b]
`
`Matrix 1
`
`
`
`
`
`Matrix 1 unambiguously defines a truth table for the claims’ Condition X. The
`
`dispute between the parties is as to what data is transmitted using or corresponding
`
`to the uplink grant in the conditions defined by the four cells that correspond to
`Condition X being true or false.
`
`Matrix 2 shows what data is transmitted corresponding to the uplink grant in
`
`these four conditions according to Patent Owner’s “only if” construction. Matrix 2
`
`corresponds to Patent Owner’s proposed, “only if,” claim construction as indicated
`
`in the additional, underlined, claim language:
` 1(e)
`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,
`but not transmitting the new data; and
`transmitting new data to the base station in correspondence with the UL
`Grant signal received on the specific message, 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, but not
`transmitting any data stored in the Msg3 buffer.
`
`1(f)
`
`
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`10
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`IPR2016-00757
`Patent 7,881,236 B2
`
`Transmitted data in PO’s
`proposed “only if”
`construction4
`
`Test b:
`What carried
`the UL Grant?
`
`Random Access
`Response[b]
`PDCCH[not b]
`Matrix 2
`
`Test a:
`Does the Msg3 buffer
`contain data?
`YES[a]
`NO[not a]
`
`Msg3
`New data
`
`New data
`New data
`
`
`
`
`
`
`
`In the “only if” construction, Msg3 data is transmitted only if Condition X is true,
`
`and in all other stated conditions, new data is transmitted.
`The Board, implicitly recognizing DeMorgan’s law, 5 acknowledged that this
`is the structure of the claim. Paper 11 at 9-10 (“On the record before us, we find
`
`
`
`that the language of the two ‘transmitting’ limitations has sufficient clarity, in that
`
`the first limitation is drafted in conjunctive, ‘a and b’ format, while the second
`
`limitation is drafted in disjunctive, ‘not a or not b’ format; accordingly, only one of
`
`the two limitations may occur for an uplink grant.”).
`
`
`
`
`4 This table does not state what is/is not transmitted if other conditions, not
`
`involving conditions a or b, are met.
`
`5 DeMorgan’s Law provides that “not (A and B)” is logically equivalent to “not A
`
`or not B.”
`
`
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`11
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`IPR2016-00757
`Patent 7,881,236 B2
`
`Petitioners understood that Patent Owner would properly advocate for the
`
`“only if” construction, and so doing they helped define their “if” construction: their
`
`“if” construction permits transmitting the data stored in the Msg3 buffer in
`conditions other than when Condition X is true:
`
`Petitioner anticipates Patent Owner might argue that the first
`“transmitting” feature [which Petitioner defined as the transmission of
`limitation 1(e)] defined as requires transmitting the Msg3 data only if
`those two conditions are met, attempting to transform the sufficient
`condition “if” into the necessary condition “only if.” Although the
`narrower “only if” interpretation matches an embodiment described in
`the specification, the plain claim language “if” encompasses a broader
`scope and is not limited to the more restrictive “only if” condition.
`Pet. at 16-17 (emphasis in original). In other words, Petitioners argue that the
`
`transmission of the Msg3 buffer data is not limited to the cell in Matrix 2 where
`Condition X is true; accordingly, Petitioners’ “if” construction must be represented
`by a matrix where “Msg3” appears in at least one of the “Condition X = false” cells
`
`shown in Matrix 1.
`
`But Petitioners improperly read limitation 1(e) in isolation, rather than—as
`
`the Board did—in view of the entire claim and, in particular, in view of 1(f).
`
`Limitation 1(f) is the logical opposite of 1(e): both limitations cannot, at the same
`
`time, be true.
`
`And while Petitioners suggest that the Patent Owner is redrafting the claim, in
`
`truth, Petitioners are doing so by arguing that Msg3 data can be transmitted if
`
`
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`12
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`IPR2016-00757
`Patent 7,881,236 B2
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`1(e)’s test, Condition X, is not satisfied. Specifically, Petitioners would have at
`
`least the following fall within the claim scope of 1(f):
`
`1(f) transmitting new data to the base station in correspondence with
`the UL Grant signal received on the specific message, if Condition X is
`
`not met, and optionally transmitting the data stored in the Msg3 buffer.
`
`In other words, Petitioners rewrite claim 1(f), using Institution Decision
`
`parlance, to be (if (not a or not b) transmit new data and optionally transmit Msg3
`
`buffer data).This rewriting is contrary to the language of the claims. It finds no
`
`support in the specification. Indeed, there is no disclosed embodiment that supports
`
`such a construction.
`
` The proper claim construction is one that follows the claim’s plain language;
`
`that is, Msg3 data is transmitted if Condition X is met (i.e., (a and b) in Institution
`Decision parlance) and new data are transmitted if Condition X is not met ((not a or
`
`not b) in Institution Decision parlance). Any other a reading eviscerates its plain
`
`logical structure.
`
`B. A person of ordinary skill would read the claims as transmitting
`Msg3 data “only if” the condition in 1(e) is satisfied
`Not only does the logical structure of the claim require the “only if”
`
`construction, the claim language comports with language that Petitioners admit is
`
`“only if.” This fact further confirms that the proper construction to one of skill in
`
`the art is Patent Owner’s “only if” construction.
`
`More specifically, Petitioners have identified “only if” language in a revised
`
`321 submission that matches the ’236 patent’s claim language. This matching of
`
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`IPR2016-00757
`Patent 7,881,236 B2
`
`admitted “only if” language confirms that the claim language, properly read by one
`
`of skill in the art, is “only if.” Petitioners point to the 321 reference, Exhibit 1003,
`
`and argue that it is ambiguous as to whether this reference requires an “only if”
`
`condition for transmission of Msg3 data. Pet. at 3 (“At most, for a brief period, one
`
`section of -. . . the 321 reference . . . included a potential ambiguity about the
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`conditions for message 3 transmission.”). This 321 reference is dated June 2008.
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`According to Petitioners, this ambiguity lasted weeks until a revised reference was
`submitted. Id. at 8-9 (“This potential ambiguity lingered in section 36.321 for
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`several weeks.”)
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`In December 2008, a revised 321 reference was submitted. That document,
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`herein called “the December 321 reference,” is attached as Exhibit 2005.
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`Petitioners contend that the December 321 reference was amended to require the
`“only if” conditions and resolve any ambiguity. Id. at 10 (“WG2 later corrected
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`section 36.321 to include the ‘only if’ condition, consistent with this earlier
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`documentation.”). According to Petitioners’ own expert, the language of the
`December 321 reference is an example of “only if” language.6 The relevant portion
`is found in section 5.4.2.1, the same section as the section in the 321 reference
`
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`6 Petitioners’ Expert testified that the Board, to find an “only if” version of the 321
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`reference, need not look later than the December 321 reference. See Min Tr. at
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`164:14-165:1.
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`Patent 7,881,236 B2
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`Petitioners analyzed and found to have the potential ambiguity. That section reads
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`as follows:
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`
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`
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`Ex. 2005 at 22. This language is plainly of the form of the claim language—“If
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`Condition X is true, obtain the message3 buffer data for transmitting, else [i.e., if
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`not Condition X] obtain the new data for transmitting.” Cooklev at ¶ 127. This is
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`because the line “if there is a MAC PDU in the Msg3 buffer and the uplink grant
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`was received in a Random Access Response” restates Condition X, and based on
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`Condition X’s value either the Msg3 buffer data are obtained or the new data from
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`the multiplexing and assembly entity are obtained. Cooklev at ¶¶ 119-127.
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`The December 321 reference language, which Petitioners admit is “only if”
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`language, is therefore the same form as the ’236 patent’s claim language. (That
`form, as stated above is “If X, then do one thing, but if not X, do the other thing.”
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`(See pp. 7)) Because the language of the December 321 reference parallels the
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`Patent 7,881,236 B2
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`language of the ’236 patent’s claim 1, a person of ordinary skill would read the
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`claims as she would read the December 321 reference. That reading, as admitted
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`by Petitioners, is the “only if” reading.
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`Petitioners’ reliance on the December 321 reference as an example of “only
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`if” language further belies Petitioners’ argument that the claims of the ’236 patent
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`do not prohibit the transmission of Msg3 data in circumstances other than that of
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`limitation 1(e). This is because Petitioners argue that the December 321 reference
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`embodies the “only if” construction, and like the present invention, that reference
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`contains no explicit language prohibiting transmission of Msg3 data in
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`circumstances other than that of if Condition X is satisfied. For example it does not
`say “If X, then do one thing but not the other thing, but if not X, do the other
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`thing.” The same is true of the claims of the present invention, and Petitioners
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`cannot have it both ways. They cannot argue for a construction of the December
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`321 reference that is consistent with what a person of skill in the art would
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`understand, yet in turn argue for a colloquial understanding of the language of the
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`claims of the present invention.
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`Ultimately, as explained by Dr. Cooklev, to a person of ordinary skill, an
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`instruction of the form “if condition then action1 else action2” is a fundamental
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`computer science programming language construct. Id. at ¶¶ 94-99. He gives a
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`simple example confirming how a person of ordinary skill would not perform
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`action2 if the stated condition were true: it would lead to an incorrect result. Id. at
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`96-98. Dr. Cooklev expresses a more general rule for not performing action2 if
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`IPR2016-00757
`Patent 7,881,236 B2
`action1 is called for. Id. at ¶ 99. Thus he explains how Petitioners’ analysis of the
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`claim language (in contrast to their analysis of the December 321 reference) is not
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`based on the understanding of one of ordinary skill in the art. Accordingly, the
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`proper construction is the Patent Owner’s “only if” construction and Petitioners’
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`rejection should be rejected.
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` Petitioners’ proposed construction is inoperative
`C.
`Further supporting the argument that Petitioners’ proposed “if” construction is
`improper is the fact that it renders the claimed invention inoperative. AIA Eng’g
`Ltd. v. Magotteaux Int’l S/A, 657 F.3d 1264, 1278 (Fed. Cir. 2011) (stating a
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`construction that renders claim inoperative “should be viewed with extreme
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`skepticism.”).
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`
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`Matrix 3 and Matrix 4, below, show two embodiments of the “if”
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`construction. Both show Msg3 buffer data being transmitted when Condition X is
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`false. Matrix 3 posits that only Msg3 data is sent if a = true and b = false; Matrix 4
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`posits that Msg3 data are sent along with new data under those conditions. (Patent
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`Owner does not present matrices where Msg3 buffer data is sent for a = false,
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`because in that condition there is no Msg3 buffer data to send. Nevertheless, the
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`same arguments as presented below would apply to those scenarios too.)
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`Test a:
`Does the Msg3 buffer
`contain data?
`YES[a]
`NO[not a]
`
`Msg3
`Msg 3 data
`
`New data
`New data
`
`Transmitted data in
`Petitioners’ proposed “if”
`construction
`
`Test b:
`What carried
`the UL Grant?
`
`Random Access
`Response[b]
`PDCCH[not b]
`Matrix 3
`
`Transmitted data in
`Petitioners’ proposed “if”
`construction
`
`Test b:
`What carried
`the UL Grant?
`
`Random Access
`Response[b]
`PDCCH[not b]
`
`Matrix 4
`
`Test a:
`Does the Msg3 buffer
`contain data?
`YES[a]
`NO[not a]
`
`Msg3
`New data
`and
`Msg 3 data
`
`New data
`New data
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`Both Matrices 3 and 4 illustrate impossibilities.
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`In Matrix 3, new data is not sent for a = true and b = false. But that is
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`
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`impossible according to limitation 1(f): Condition X is false, and new data must be
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`transmitted. Further confirming the impossibility, the 321 reference (Exhibit
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`1003)—which purportedly invalidates the claims of the ’236 patent, teaches
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`transmitting new data for a = true and b = false. Pet. at 39 (Scenario 3).
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`
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`Turning to Matrix 4, which includes two sets of data being transmitted
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`(Msg3 buffer data and new data), this scenario is inoperative. A UE cannot send
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`both Msg3 buffer and new data using a single UL Grant. But this is the
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`transmission required because claim language makes clear that there is a single UL
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`Grant: the claim refers in limitation 1(b) to “an uplink grant . . . on a specific
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`message”