`
`
`
`
`
`
`Paper No. 28
`Filed June 14, 2017
`
`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 IPR2016-00757i
`Patent 7,881,236 B2
`
`
`
`
`
`
`Before WILLIAM V. SAINDON, PETER P. CHEN, and
`TERRENCE W. MCMILLIN, Administrative Patent Judges.
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`TO PETITIONER’S PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 7,881,236 B2
`
`
`
`
`i IPR2016-01345 has been consolidated with this proceeding.
`
`

`

`Case IPR2016-00757
`Patent 7,881,236 B2
`
`
`
`I.
`II.
`
`
`Table of Contents
`
`
`
`Introduction ................................................................................................................. 1
`The First “Transmitting” Feature ............................................................................. 1
`A.
`Petitioner need not show the prior art satisfies the first
`“transmitting” feature to establish invalidity. ............................................... 2
`Patent Owner incorrectly restricts the first “transmitting” feature. .......... 3
`Expressio unius does not restrict “if ” to “only if.” ............................ 3
`1.
`2.
`Patent Owner’s matrices do not restrict “if ” to “only if.” .............. 5
`3.
`Extrinsic evidence does not restrict “if ” to “only if.” ..................... 6
`4.
`The child patent’s prosecution does not restrict “if ” to
`“only if.” ................................................................................................ 8
`Patent Owner’s inoperability argument fails. .................................... 8
`5.
`Petitioner established the 321 reference taught the first
`“transmitting” feature even under Patent Owner’s restrictive “only
`if ” interpretation. .......................................................................................... 10
`III. The First “Determining” Feature ........................................................................... 13
`A.
`Patent Owner incorrectly restricts the first “determining” feature. ........ 14
`B.
`Petitioner established that the 321 reference taught the first
`“determining” feature given its plain language and with Patent
`Owner’s restrictions. ...................................................................................... 15
`Patent Owner’s contrary assertions fail. ..................................................... 17
`C.
`The Second “Transmitting” Feature ....................................................................... 20
`A.
`Petitioner need not show the prior art satisfies the second
`“transmitting” feature to establish invalidity. ............................................. 21
`Petitioner provided unrebutted evidence that the 321 reference
`taught the second “transmitting” feature. .................................................. 21
`Patent Owner incorrectly restricts the second “transmitting”
`feature and mischaracterizes Dr. Min’s testimony. .................................... 22
`
`B.
`
`C.
`
`IV.
`
`B.
`
`C.
`
`
`
`
`
`i
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`

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`Case IPR2016-00757
`Patent 7,881,236 B2
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`
`
`
`Table of Authorities
`
`Bumble Bee Foods, LLC v. Kowalski,
`IPR2014-00224, Paper 18 (PTAB Jun. 5, 2014) ............................................................. 6
`Chevron USA Inc. v. Echazabal,
`536 U.S. 77 (2002) .............................................................................................................. 4
`Despoir, Inc. v. Nike USA, Inc.,
`2005 WL 659199 (N.D. Ill. Feb. 9, 2005) ........................................................................ 4
`Ex parte Gibbings,
`Appeal No. 2015-004458 (PTAB Dec. 8, 2016) ................................................... 2, 9, 21
`Ex parte Schulhauser,
`Appeal No. 2013-007847 (PTAB Apr. 28, 2016) ........................................................... 2
`FedEx Corp. v. Katz Tech. Licensing, L.P.,
`CBM2015-00053, Paper 9 (PTAB Jun. 29, 2015) ........................................................... 6
`Hewlett-Packard Co. v. Mustek Sys., Inc.,
`340 F.3d 1314 (Fed. Cir. 2003) ........................................................................................ 26
`IBM Corp. v. IV II LLC,
`IPR2015-01323, Paper 38 (PTAB Sept. 27, 2016) ......................................................... 7
`Intervet Am., Inc. v. Kee-Vet Labs., Inc.,
`887 F.2d 1050 (Fed. Cir. 1989) .......................................................................................... 4
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) .......................................................................................... 8
`Philips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................................ 7
`Shenyang Yuanda Aluminum Industry Eng’g v. United States,
`776 F.3d 1351 (Fed. Cir. 2015) .......................................................................................... 4
`Southwall Tech., Inc., v. Cardinal IG Co.,
`54 F.3d 1570 (Fed. Cir. 1995) ............................................................................................ 6
`Unwired Planet, LLC v. Google Inc.,
`841 F.3d 995 (Fed. Cir. 2016) .......................................................................................... 26
`
`ii
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`
`Table of Abbreviations
`Abbreviation Paper/Exhibit No. Description
`
`Cooklev
`
`Exhibit 2006
`
`Declaration of Todor Cooklev, Ph.D.
`
`ID
`
`Min
`
`Paper 11
`
`Decision Instituting Inter Partes Review
`
`Exhibit 2004
`
`Deposition of Paul S. Min, Ph.D.
`
`Petition for Inter Partes Review of U.S. Patent
`No. 7,881,236
`
`Patent Owner’s Response to Petitioners’
`Petition for Inter Partes Review of United
`States Patent No. 7,881,236
`
`Petition
`
`Paper 3
`
`Response
`
`Paper 22
`
`
`
`
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`iii
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`
`Statement of Material Facts
`Patent Owner did not submit a statement of material facts in its Patent
`
`
`
`Owner’s Response. Therefore, this reply need not provide a response pursuant to 37
`
`C.F.R. § 42.23(a), and no facts are admitted.
`
`iv
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`I.
`
`Introduction
`
`With heavy but misplaced reliance on expert opinion, Patent Owner argues
`
`Petitioner has not established that the prior art taught three claim features. Patent
`
`Owner’s reliance on Dr. Cooklev is misplaced because his declaration is unsworn, uses
`
`claim constructions the Board rejected, and applies a clear and convincing standard of
`
`invalidity. The Board should give this declaration no weight. Moreover, Patent Owner
`
`admits two claim features are conditional, thus conceding that Petitioner need not
`
`show those features in the prior art under Board precedent. Even so, Petitioner
`
`established the prior art taught every claim feature—even with the improper
`
`restrictions Patent Owner seeks to impose.
`
`II. The First “Transmitting” Feature
`
`The “first ‘transmitting’ feature” refers to the claim feature “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” in the method claims and the counterpart language in the
`
`apparatus claims. The Petition established the 321 reference taught this feature, and
`
`the Institution Decision rejected Patent Owner’s contrary arguments.
`
`In its Response, Patent Owner renews its arguments. The Board should again
`
`reject them. As discussed below, Petitioner need not show the prior art satisfies this
`
`1
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`claim feature. Patent Owner concedes it is a conditional feature, and under Board
`
`precedent, a conditional feature need not be shown to establish invalidity. In any
`
`event, Patent Owner does not dispute the prior art taught the first “transmitting”
`
`feature given its plain and ordinary meaning. Patent Owner improperly restricts this
`
`claim feature, but even with the restrictions, the prior art taught this feature.
`
`A.
`
`Petitioner need not show the prior art satisfies the first
`“transmitting” feature to establish invalidity.
`
`Patent Owner concedes the first “transmitting” feature “depend[s] on a
`
`condition.”2 Under Board precedent, “the broadest reasonable
`
`interpretation
`
`encompasses methods where only the non-conditional steps are performed and the
`
`conditional method step need not be shown in establishing invalidity.” Ex parte
`
`Gibbings, Appeal No. 2015-004458, at 6 (PTAB Dec. 8, 2016) (emphasis added) (citing
`
`Ex parte Schulhauser, Appeal No. 2013-007847, at 9-10 (PTAB Apr. 28, 2016)
`
`(precedential)). This applies to method claim 1 and apparatus claim 7 because Patent
`
`Owner concedes “[a]s in claim 1, the steps recited in claim 7 depend on a condition.”3
`
`Thus, consistent with Board precedent, Petitioner need not show the prior art satisfies
`
`the first “transmitting” feature to establish invalidity.
`
`
`2 Response, 7, 30.
`3 Id., 30 (emphasis added).
`
`2
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`
`B.
`
`Patent Owner incorrectly restricts the first “transmitting” feature.
`
`The Board correctly determined the first “transmitting” feature requires no
`
`construction, rejecting Patent Owner’s two contrary arguments: (i) to interpret “if ” as
`
`“only if ”; and (ii) to add the phrase “but not transmitting the new data” to the end of
`
`the first “transmitting” feature.4
`
`Although the Board did not construe any claim language, Patent Owner now
`
`argues “the Board’s claim construction is incorrect.”5 Patent Owner advances the same
`
`arguments the Board rejected, along with new arguments based on an unsworn
`
`declaration, other extrinsic evidence, and the file history of a different patent. As
`
`discussed below, the Board correctly declined to restrict the first “transmitting” feature,
`
`and Patent Owner’s contrary arguments fail.
`
`1. Expressio unius does not restrict “if” to “only if.”
`
`Patent Owner argues “expressio unius supports Patent Owner’s ‘only if ’
`
`construction.”6 The Board correctly rejected this argument7 and should do so again.
`
`Patent Owner’s expressio unius argument is simply an end run around the rule
`
`prohibiting improper incorporation from the specification. This is evident from
`
`Patent Owner’s assertion that “the ’236 patent’s Figure 9 is to be understood
`
`
`4 ID, 9-10.
`5 Response, 1.
`6 Id., 19.
`7 ID, 9.
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`3
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`Case IPR2016-00757
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`according to the expressio unius principle.”8 But it is improper to restrict “if ” to “only
`
`if ” based on the Figure 9 embodiment. As the Board found, (i) “the term ‘only’ does
`
`not appear anywhere in claims 1 or 7”; (ii) in the specification, “the term ‘only’ is
`
`merely one example of circumstances of transmission”; and (iii) “construing ‘if ’ to
`
`mean ‘only if ’ would constitute improper incorporation of a limitation from the
`
`Specification.”9
`
`Patent Owner’s cited authority does not support its expressio unius argument.10
`
`Shenyang and Chevron do not even involve patent law. See Shenyang Yuanda Aluminum
`
`Industry Eng’g v. United States, 776 F.3d 1351, 1353 (Fed. Cir. 2015); Chevron USA Inc. v.
`
`Echazabal, 536 U.S. 77, 81 (2002). Despoir—the only cited patent case—supports
`
`Petitioner’s position. In Despoir, the court mentioned expressio unius, but rejected a
`
`proposed construction on the ground that “limitations inferable from embodiments
`
`shown in patent drawings or specifications, but omitted from claims, are not to be
`
`read into claims.” Despoir, Inc. v. Nike USA, Inc., 2005 WL 659199, at *17 (N.D. Ill. Feb.
`
`9, 2005) (quoting Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1053 (Fed. Cir.
`
`1989)). Here, Patent Owner commits the same error: it tries to restrict “if ” to “only
`
`if ” based on an embodiment shown in the patent drawings.
`
`
`8 Response, 22 (emphasis added).
`9 ID, 10.
`10 Response, 19-20.
`
`4
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`
`2.
`
`Patent Owner’s matrices do not restrict “if” to “only if.”
`
`Patent Owner asserts its attorney-created matrices show: (i) “if ” means “only
`
`if ”; and (ii) “Petitioner’s ‘if’ construction.”11 Patent Owner is incorrect.
`
`First, Petitioner is not proposing a construction of “if.” Petitioner is proposing
`
`that “if ” “requires no construction and should be given its plain and ordinary
`
`meaning consistent with the broadest reasonable interpretation (BRI) standard.”12
`
`Thus, there is no “Petitioners’ ‘if ’ construction.” Patent Owner is simply deflecting
`
`from its baseless attempt at restricting “if ” to “only if.”
`
`Second, Patent Owner’s matrices serve no purpose other than to reinforce that
`
`Patent Owner is restricting the claims. The matrices may show transmission of
`
`message 3 data only if the two recited claim conditions are true,13 but the matrices do
`
`not match the plain meaning of the claims under the BRI standard. The claims
`
`unambiguously use the word “if.” The matrices do not represent the claim language.
`
`Third, Patent Owner incorrectly asserts the Board adopted Patent Owner’s
`
`“only if ” construction, “implicitly recognizing DeMorgan’s law.”14 This is false. The
`
`Board expressly rejected Patent Owner’s “only if ” construction, stating “[w]e have not
`
`
`11 Id., 9-13.
`12 Petition, 16.
`13 Response, 10.
`14 Id., 11.
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`5
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`adopted Patent Owner’s proposed construction, or construed ‘if ’ to mean ‘only if,’
`
`and accordingly are not persuaded by Patent Owner’s arguments.”15
`
`3.
`
`Extrinsic evidence does not restrict “if” to “only if.”
`
`Patent Owner asserts “if ” means “only if ” based on: (i) the unsworn
`
`“declaration” of Dr. Todor Cooklev, Ex. 2006; and (ii) the December 321 reference,
`
`Ex. 2005. That argument fails for several reasons.
`
`First, “evidence extrinsic to the patent and prosecution history, such as expert
`
`testimony, cannot be relied on to change the meaning of the claims when that
`
`meaning is made clear by those documents.” Southwall Tech., Inc., v. Cardinal IG Co., 54
`
`F.3d 1570, 1578 (Fed. Cir. 1995). Patent Owner admits “[t]he patent is clear”16—thus
`
`conceding that its resort to extrinsic evidence is improper.
`
`Second, Dr. Cooklev’s opinion is entitled to no weight. In an IPR, a declaration
`
`is accorded no weight unless it acknowledges that: (i) willful false statements are
`
`punishable by fine, imprisonment, or both; or (ii) the statements are true under
`
`penalty of perjury. See Bumble Bee Foods, LLC v. Kowalski, IPR2014-00224, Paper 18 at
`
`14-15 (PTAB Jun. 5, 2014) (according no weight to a declaration lacking the required
`
`acknowledgments); FedEx Corp. v. Katz Tech. Licensing, L.P., CBM2015-00053, Paper 9
`
`at 7-8 (PTAB Jun. 29, 2015) (same); IBM Corp. v. IV II LLC, IPR2015-01323, Paper
`
`
`15 ID, 13.
`16 Response, 45.
`
`6
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`38 at 10-11 (PTAB Sept. 27, 2016) (same). Dr. Cooklev’s “declaration” lacks both
`
`required acknowledgments,17 so the Board should accord it no weight.
`
`Third, Dr. Cooklev improperly incorporates restrictions from the patent’s
`
`preferred embodiment. He opines “the random access procedure as described in the
`
`’236 patent is not disclosed in any of the prior art references.”18 Thus, he wrongly
`
`compares the preferred embodiment to the prior art—tacitly restricting “if ” to “only
`
`if.” The Board rejected Patent Owner’s attempt at “improper incorporation of a
`
`limitation from the Specification.”19 The Board should do the same with Dr. Cooklev.
`
`Fourth, the December 321 reference is irrelevant here not only because it is
`
`extrinsic evidence but also because it is dated three months after the ’236 patent’s
`
`priority date. See Philips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)
`
`(“the ordinary and customary meaning of a claim term is the meaning that the term
`
`would have to a person of ordinary skill in the art in question at the time of the
`
`invention, i.e., as of the effective filing date of the patent application”) (emphasis
`
`added). In any event, the December 321 reference nowhere states “if ” means “only
`
`if.”20
`
`Therefore, Patent Owner’s extrinsic evidence cannot restrict “if ” to “only if.”
`
`17 See Cooklev.
`18 Id., ¶ 78 (emphasis added).
`19 ID, 10.
`20 Dr. Min did not “testif[y] that the Board, to find an ‘only if ’ version of the 321
`reference, need not look later than the December 321 reference.” See Resp., 14 n.6
`(citing Min, 164:14-165:1). This is evident from the cited testimony.
`
`7
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`
`4.
`
`The child patent’s prosecution does not restrict “if” to “only
`if.”
`
`Patent Owner argues “[t]he USPTO’s examination of a child patent of the ’236
`
`patent confirms that proper construction is the ‘only if ’ construction.”21 To the
`
`contrary, the child patent’s examination supports Petitioner’s position that “if ” cannot
`
`be restricted to “only if.”
`
`Patent Owner concedes the ’236 patent’s claims differ from the child patent’s
`
`claims in one material way: the ’236 patent claims recite the word “if ” whereas the
`
`child patent claims recite “only when.”22 This concession underscores Petitioner’s
`
`position.23 Patent Owner’s decision to narrow the language from “if ” in the ’236
`
`patent to “only when” in the child patent demonstrates the difference in meaning
`
`between these two phrases and belies Patent Owner’s argument that they mean the
`
`same thing. Having chosen the word “if ” in the ’236 patent, Patent Owner cannot
`
`restrict it to “only if ” through construction absent a disclaimer or disavowal. See
`
`Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). Patent Owner
`
`does not identify any disclaimer or disavowal, so its attempt to narrow the claims fails.
`
`5.
`
`Patent Owner’s inoperability argument fails.
`
`Patent Owner asserts “Petitioners’ proposed construction is inoperative,”
`
`relying on (i) its attorney-created matrices, and (ii) deposition testimony of Petitioner’s
`
`21 Response, 22.
`22 Id., 23.
`23 Patent Owner treats “only when” and “only if ” as the same. Id., 25.
`
`8
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`expert, Dr. Paul Min.24 The Board correctly rejected the inoperability argument,25 and
`
`should do so again for three reasons.
`
`First, Petitioner is not proposing a construction, so there is no “Petitioners’
`
`proposed construction.” Again, Patent Owner is deflecting from its attempt to restrict
`
`“if ” to “only if.”
`
`Second, Patent Owner’s matrices are irrelevant. As discussed in Section II.B.2,
`
`the matrices present the “only if ” restriction that is not part of the claims.
`
`Third, Patent Owner’s assertion that “[a] UE cannot send both Msg3 buffer [sic,
`
`data?] and new data using a single UL Grant” is misplaced.26 Patent Owner incorrectly
`
`presumes both “transmitting” steps must be shown to establish invalidity. Patent
`
`Owner concedes both “transmitting” steps “depend on a condition.”27 Under Board
`
`precedent, “the broadest reasonable interpretation encompasses methods where only
`
`the non-conditional steps are performed and the conditional method step need not be
`
`shown in establishing invalidity. Gibbings, Appeal No. 2015-004458, at 6.28
`
`
`
`Thus, Patent Owner’s inoperability argument fails.
`
`
`24 Id., 17.
`25 ID, 9.
`26 Response, 19.
`27 Id., 30.
`28 Thus, it is also irrelevant whether Dr. Min “confirmed that it is impossible under
`the prior art LTE standard to transmit both new data and msg3 data using a single UL
`Grant.” See id., 19. And he confirmed no such thing. See Min, 70:7-21.
`
`9
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`
`C.
`
`Petitioner established the 321 reference taught the first
`“transmitting” feature even under Patent Owner’s restrictive “only
`if” interpretation.
`
`Patent Owner asserts the cited prior art did not teach the first “transmitting”
`
`feature under the unreasonably narrow “only if ” interpretation. As discussed in
`
`Section II.B, the “only if ” interpretation is incorrect under the BRI standard, so
`
`Patent Owner’s argument is misplaced. But if the narrower “only if ” construction
`
`applies, Patent Owner is incorrect for the reasons described on pages 29-37 of the
`
`Petition and the following reasons.
`
`First, Patent Owner incorrectly argues the 321 reference renders the “only if ”
`
`feature obvious “only in hindsight.”29 Patent Owner fails to rebut three of Petitioner’s
`
`assertions:
`
`(1)
`
`“the 321 reference taught that the UE ‘shall’ monitor’ for random access
`
`responses and, after successfully receiving one, ‘process the received UL
`
`grant value’”;30
`
`(2)
`
`“the 321 reference did not say anything about monitoring for a grant on
`
`a PDCCH during the random access procedure”;31 and
`
`(3)
`
`“[i]t would have been a common-sense design choice for a UE to select
`
`the correct grant (in the random access response) rather than the
`
`
`29 Response, 42.
`30 Petition, 29 (quoting Min Decl., ¶ 72).
`31 Id., 30.
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`incorrect one (in the PDCCH) and to transmit message 3 using the
`
`random access response grant.”32
`
`These unrebutted assertions demonstrate—with no hindsight—that the
`
`’321
`
`reference taught transmitting Msg3 data only if the UL grant was received in a random
`
`access response message.
`
`Second, Patent Owner relies on Dr. Cooklev’s opinion, which is unsworn and
`
`therefore entitled to no weight under Board precedent (see Section II.B.3). In addition,
`
`Dr. Cooklev erred by presuming the ’236 patent is valid and applying the clear and
`
`convincing standard of invalidity.33
`
`Third, Patent Owner incorrectly argues “[t]he 300 reference did not teach the
`
`‘only if’ feature.”34 Patent Owner wrongly focuses only on Figure 10.1.5.1-1 in the 300
`
`reference, ignoring the text that follows the figure and explains: (i) that the Random
`
`Access Response conveys an “initial UL Grant”; and (ii) that message 3 “depends on
`
`the UL grant conveyed in step 2.”35 This text establishes the “only if ” restriction.
`
`Patent Owner commits the same error with Dahlman. It ignores Dahlman’s teaching
`
`that “[i]n the third step, the terminal transmits the necessary messages to the eNodeB
`
`
`32 Id.
`33 Cooklev, ¶¶ 17-18.
`34 Response, 43.
`35 Petition, 32 (quoting Ex. 1002, § 10.1.5.1).
`
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`using the resources assigned in the random-access response in the second step”—
`
`which taught the “only if ” restriction.36
`
`Fourth, Patent Owner fails to rebut Petitioner’s showing that “[t]he Philips
`
`submission provides no other way for the UE to arrive at the ‘Transmit on UL-SCH’
`
`block, which is where the UE transmits message 3.”37 Patent Owner argues that
`
`“Petitioners fail to suggest that the Phillips [sic, Philips] submission ever considered
`
`any other ways to arrive at that block,” but Philips plainly shows only one way to
`
`arrive there.38
`
`Fifth, Patent Owner does not rebut Petitioner’s evidence of simultaneous
`
`development by others.39 Patent Owner instead relies solely on its misplaced argument
`
`that the prior art did not teach the “only if ” restriction.40
`
`Finally, Patent Owner incorrectly argues that “Petitioners did not address the
`
`‘only if’ construction with respect to Ground 2.”41 On the contrary, in analyzing
`
`Ground 2, the Petition states, “The 300 and 321 references expressly taught the
`
`
`36 Id., 33 (quoting Ex. 1036, 368).
`37 Id., 34.
`38 Id.
`39 See Petition, 35-37.
`40 Response, 47.
`41 Id.
`
`12
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`Case IPR2016-00757
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`claimed functions for the reasons in section IX.A, supra at pp. 20-47,”42 and those
`
`pages expressly analyze the “only if ” restriction.43
`
`
`
`Therefore, although Board precedent establishes that the conditional first
`
`“transmitting” feature does not limit claim scope, Petitioner nevertheless established
`
`that the prior art taught this feature—even with Patent Owner’s improper restrictions.
`
`III. The First “Determining” Feature
`
`The “first ‘determining’ feature” refers to the claim feature “determining
`
`whether there is data stored in a message 3 (Msg3) buffer when receiving the UL
`
`Grant signal on the specific message” in the method claims and the counterpart
`
`language in the apparatus claims. The Petition established the 321 reference taught
`
`this feature.44 Patent Owner did not dispute that showing pre-institution.
`
`As discussed below, Patent Owner does not contest that the prior art taught the
`
`first “determining” feature given its plain language and instead seeks to impose
`
`unreasonably narrow restrictions on its meaning. Petitioner has established that the
`
`321 reference taught the first “determining” feature—both under its plain language
`
`and with Patent Owner’s unsupported restrictions.
`
`
`42 Petition, 48.
`43 Id., 20-47.
`44 Id., 24-25.
`
`13
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`A.
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`Patent Owner incorrectly restricts the first “determining” feature.
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`Patent Owner asserts “Petitioners have not shown that the 321 reference
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`teaches the claimed element—making the claimed determination within the specified
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`TTI [(transmission time interval)].”45 Patent Owner incorrectly restricts the first
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`“determining” feature in two respects.
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`First, Patent Owner misapplies the word “when” in the context of the first
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`“determining” feature. The temporal link merely requires that data be present in the
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`Msg3 buffer when the UL Grant is received on the specific message. Indeed, Patent
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`Owner concedes this point by asserting the following “test” for the first
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`“determining” feature: “is there data stored in the Msg3 buffer when receiving the UL
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`Grant signal on the specific message?”46 But Patent Owner then suggests incorrectly
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`that the determination of whether this condition is true must be done within an
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`arbitrary time—“the specified TTI”—of the receiving step. The determination may
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`be done when the UL grant is received, but the claim does not require that, especially
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`not under the BRI standard. Thus, by its own admission, Patent Owner’s temporal
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`link between the “determining” and “receiving” steps is improper.
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`Second, even when read in the proper context, the word “when” in the first
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`“determining” feature is not restricted to any “specified TTI” under the BRI standard,
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`45 Response, 35.
`46 Id., 9.
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`as Patent Owner suggests.47 Patent Owner has not identified anything in the intrinsic
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`record that would restrict “when” to “the specified TTI.” A TTI is an example of a
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`time period, and that is exactly how Petitioner and Dr. Min treated it.48 Indeed, Patent
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`Owner does not dispute that the “when” language is satisfied if the “determining”
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`and “receiving” occur in the same TTI—as Petitioner and Dr. Min demonstrated is
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`taught in the 321 reference—but nothing requires this unreasonable and arbitrary
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`limitation in the claim scope.
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`Nevertheless, as discussed below, Petitioner has established the 321 reference
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`taught the first “determining” feature both given its plain language and with Patent
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`Owner’s unreasonably narrow restrictions.
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`B.
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`Petitioner established that the 321 reference taught the first
`“determining” feature given its plain language and with Patent
`Owner’s restrictions.
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`The Petition established that the 321 reference taught the first “determining”
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`feature under Patent Owner’s unreasonably narrow
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`interpretation and, thus,
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`established the same under the broadest reasonable interpretation.49
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`Specifically, the Petition explained why the 321 reference taught the first part—
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`“determining whether there is data stored in a message 3 (Msg3) buffer.”50 Patent
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`Owner does not dispute that the Petition established this part of the first
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`47 Id.
`48 Petition, 24.
`49 Id., 24-25.
`50 Id., 24.
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`“determining” feature. The Petition also established the 321 reference taught the
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`second part—“when receiving the UL Grant signal on the specific message.”51 Patent
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`Owner calls this conclusion “false,”52 but neither explains why nor addresses
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`Petitioner’s reasoning. Thus, the Petition and Dr. Min’s unrebutted declaration
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`testimony establish the 321 reference taught the first “determining” feature.
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`Likewise, Dr. Min’s deposition testimony establishes the 321 reference taught
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`the first “determining” feature given its plain language. On cross-examination, Dr.
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`Min testified “[i]t doesn’t really matter when the actual processing [for ‘determining’]
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`is done. It is the status of the Message3 buffer at the time” the UL Grant was
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`received that matters.53 He testified the 321 reference taught that the “determining”
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`will be performed for the same TTI in which the uplink grant was received:
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`A.
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`--
`the
`that
`the 321 reference require
`Q. Does
`determining whether there is data in the Message3
`buffer be performed in the same TTI as the one in
`which the uplink grant was received?
`That determining where – whether or not there is a
`message – data in the Message3 buffer will be
`performed, and that will be done for that TTI, the
`same TTI that the UL Grant was received, and that’s
`what I said.54
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`Even with Patent Owner’s unreasonably narrow restrictions, Dr. Min testified
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`that the 321 reference taught the first “determining” feature. For example, on cross-
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`51 Id., 24-25.
`52 Response, 34.
`53 Min, 100:4-19.
`54 Id., 78:23-79:7 (emphasis added).
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`examination, Dr. Min confirmed that the 321 reference taught the “determining” and
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`“receiving” steps in the same TTI:
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`Q.
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`Right. Okay. And you say, in paragraph 61, for
`example, in lines 1 to 7 and 11 to 12 of the excerpts
`above, the 321 reference taught that the UE would
`both receive the uplink grant and perform its
`determination in the same transmission time
`interval, TTI, right?
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`A.
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`Thus, consistent with the Petition and his declaration testimony, Dr. Min’s
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`Yes.55
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`deposition testimony confirms the 321 reference taught the first “determining”
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`feature—both given its plain language and with Patent Owner’s unreasonable and
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`arbitrary restrictions.
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`C.
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`Patent Owner’s contrary assertions fail.
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`First, Patent Owner asserts Dr. Min “confirmed that the 321 reference is not
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`inconsistent with having the determining step occur two TTIs after receipt of the
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`associated UL Grant,” citing to Ex. 2004 at 98:2-21.56 That is incorrect and irrelevant.
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`It is incorrect because the cited testimony does not even relate to Patent
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`Owner’s assertion. In the cited testimony, which begins in the middle of an answer
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`and ends at the end of the question, Dr. Min merely acknowledged he understood
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`counsel’s hypothetical.
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`55 Id., 76:6-12 (emphasis added).
`56 Response, 34.
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`Patent Owner’s assertion is also irrelevant because, as discussed above, the first
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`“determining” feature does not restrict the “determining” and “receiving” to the same
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`TTI under the BRI standard. Moreover, even if such a restriction did apply, it is
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`enough that the 321 reference teaches an example that satisfies the claimed feature—
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`i.e., the specific example Dr. Min described in which the “determining” and
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`“receiving” steps occur within a single TTI. It is irrelevant that the 321 reference is
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`“not inconsistent” with other examples that do not satisfy Patent Owner’s
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`unreasonably narrow restriction on the claimed feature.
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`Second, Patent Owner asserts Dr. Min said “[t]he LTE 321 specificati