Oral Hearing: Petitioner’s Presentation
`August 8, 2017
`
`ZTE (USA) Inc. et al. v. Evolved Wireless LLC
`IPR2016‐00757, IPR2016‐01345
`
`1
`
`ZTE/HTC
`Exhibit 1047-0001
`
`
`August 8, 2017
`
`ZTE (USA) Inc. et al. v. Evolved Wireless LLC
`IPR2016‐00757, IPR2016‐01345
`
`1
`
`ZTE/HTC
`Exhibit 1047-0001
`
`
`
`Instituted Grounds
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted on the following grounds: Whether claims 1-6 of the ’236
`patent under 35 U.S.C. § 103 would have been obvious over the 3GPP
`Technical Specification 300 and the 3GPP Technical Specification 321; and
`whether claims 7-10 and 12-13 of the ’236 patent under 35 U.S.C. § 103
`would have been obvious over the 3GPP Technical Specification 300, the
`3GPP Technical Specification 321, and Ericsson; and
`
`Paper 11, Institution Order, at 19.
`
`2
`
`ZTE/HTC
`Exhibit 1047-0002
`
`
`
`Overview of ’236 Patent
`
`3
`
`ZTE/HTC
`Exhibit 1047-0003
`
`
`
`Overview of ’236 Patent: Figure 9
`
`FIG. 9 is a flowchart illustrating a method of
`transmitting UL data by a UE according to a preferred
`embodiment of the present invention. In more detail,
`FIG. 9 shows the operation of a HARQ entity of the UE
`according to an embodiment of the present invention at
`every TTI.
`
`Ex. 1001, ’236 patent, at 13:35-39 (emphases added)
`(referenced at Paper 3, Petition, at 4).
`
`That is, the UE according to the present embodiment
`transmits the data stored in the Msg3 buffer only when
`there is data in the Msg3 buffer when receiving the UL
`Grant signal and the UL Grant signal is received on the
`random access response message (S908).
`
`Ex. 1001, ’236 patent, at 14:3-7 (emphasis added)
`(referenced at Paper 3, Petition, at 18).
`
`4
`
`Ex. 1001, ’236 patent, at FIG. 9
`(referenced at Paper 3, Petition, at 4).
`
`ZTE/HTC
`Exhibit 1047-0004
`
`
`
`Overview of ’236 Patent: Claim 1
`
`1. 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;
`determining whether there is data stored in a message 3
`(Msg3) buffer when receiving the UL Grant signal on the
`specific message;
`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.
`
`Ex. 1001, ’236 patent, at 16:50-17:3 (emphases added).
`
`first “determining” feature
`
`Paper 28, Petitioner’s Reply, at 13.
`
`first “transmitting” feature
`
`Paper 28, Petitioner’s Reply, at 1.
`
`second “transmitting” feature
`
`Paper 28, Petitioner’s Reply, at 20.
`
`5
`
`ZTE/HTC
`Exhibit 1047-0005
`
`
`
`Overview of ’236 Patent: Claim 7
`
`7. A user equipment, comprising:
`a reception module adapted to receive an uplink grant (UL Grant)
`signal from a base station on a specific message;
`a transmission module adapted to transmit data to the base station
`using the UL Grant signal received on the specific message;
`a message 3 (Msg3) buffer adapted to store UL data to be transmitted
`in a random access procedure;
`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
`a multiplexing and assembly entity used for transmission of new data,
`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, ’236 patent, at 16:50-17:3 (emphases added).
`
`first “determining” feature
`
`Paper 28, Petitioner’s Reply, at 13.
`
`first “transmitting” feature
`
`Paper 28, Petitioner’s Reply, at 1.
`
`second “transmitting” feature
`
`Paper 28, Petitioner’s Reply, at 20.
`
`6
`
`ZTE/HTC
`Exhibit 1047-0006
`
`
`
`Overview of ’236 Patent: Claims 1 & 7
`
`Patent
`Owner
`
`The similarities between claim 1 (a method claim) and claim 7 (an
`apparatus claim), are notable.
`
`Paper 22, Patent Owner’s Response, at 30
`(referenced at Paper 28, Petitioner’s Reply, at 2).
`
`Patent
`Owner
`Claim 7 is the same, but for the fact that it is written as an apparatus
`claim, with entities “adapted to” perform steps.
`
`Paper 22, Patent Owner’s Response, at 31
`(referenced at Paper 28, Petitioner’s Reply, at 2).
`
`7
`
`ZTE/HTC
`Exhibit 1047-0007
`
`
`
`First “Transmitting” Feature
`
`8
`
`ZTE/HTC
`Exhibit 1047-0008
`
`
`
`First “Transmitting” Feature
`
`1. 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;
`determining whether there is data stored in a message 3
`(Msg3) buffer when receiving the UL Grant signal on the
`specific message;
`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.
`
`Ex. 1001, ’236 patent, at 16:50-17:3 (emphasis added).
`
`first “transmitting” feature
`
`Paper 28, Petitioner’s Reply, at 1.
`
`9
`
`ZTE/HTC
`Exhibit 1047-0009
`
`
`
`First “Transmitting” Feature: Conditional Language
`
`Patent
`Owner
`As in claim 1, the steps recited in claim 7 depend on a condition.
`
`Paper 22, Patent Owner’s Response, at 30
`(referenced at Paper 28, Petitioner’s Reply, at 2).
`
`Thus, 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))
`(referenced at Paper 28, Petitioner’s Reply, at 2).
`
`10
`
`ZTE/HTC
`Exhibit 1047-0010
`
`
`
`First “Transmitting” Feature: 321 Reference
`
`“if . . . the specific message
`is the random access
`response message”
`Paper 3, Petition, at 25-26.
`
`“if there is data stored in the
`Msg3 buffer when receiving
`the UL Grant signal on the
`specific message”
`Paper 3, Petition, at 24-25.
`
`“transmitting the data stored
`in the Msg3 buffer”
`Paper 3, Petition, at 26-27.
`
`11
`
`Ex. 1003, 321 Reference, at §§ 5.4.1, 5.4.2.1
`(referenced at Paper 3, Petition, at 24-27).
`
`ZTE/HTC
`Exhibit 1047-0011
`
`
`
`First “Transmitting” Feature: 300 Reference
`
`2
`Conveys at least RA-preamble identifier, Timing
`Alignment information, initial UL grant and assignment
`of Temporary C-RNTI (which may or may not be made
`permanent upon RRC Contention Resolution);
`
`Ex. 1002, 300 Reference, at 48 (§ 10.1.5.1) (emphasis added)
`(referenced at Paper 3, Petition, at 31-32).
`
`3
`
`Size of transport blocks depends on the UL grant
`conveyed in step 2 and is at least 80 bits
`
`Ex. 1002, 300 Reference, at 48 (§ 10.1.5.1) (emphasis added)
`(referenced at Paper 3, Petition, at 32).
`
`12
`
`Ex. 1002, 300 Reference, at 48 (§ 10.1.5.1)
`(referenced at Paper 3, Petition, at 31).
`
`ZTE/HTC
`Exhibit 1047-0012
`
`
`
`First “Transmitting” Feature: Knowledge of POSITA
`
`The person of ordinary skill in the art of the subject matter of the 236 patent
`would have . . . been aware of the efforts of the Third Generation
`Partnership Project (“3GPP”) and its various groups.
`
`Exhibit 1016, Declaration of Paul S. Min, Ph.D., at ¶ 34.
`
`I do not disagree with Dr. Min’s proposed level of ordinary skill in the art.
`
`Exhibit 2006, Declaration of Todor Cooklev, Ph.D., at ¶ 33.
`
`[A] prior art reference must be considered together with the knowledge of one of ordinary
`skill in the art.
`
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)
`(referenced at Paper 3, Petition, at 33).
`
`13
`
`ZTE/HTC
`Exhibit 1047-0013
`
`
`
`First “Transmitting” Feature: Dahlman Textbook
`
`In the third step, the terminal transmits the necessary messages to
`the network using the resources assigned in the random-access
`response in the second step.
`
`Ex. 1036, Dahlman Textbook, at 368
`(referenced at Paper 3, Petition, at 33).
`
`[A] prior art reference must be considered together with the knowledge of one of ordinary
`skill in the art.
`
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)
`(referenced at Paper 3, Petition, at 33).
`
`14
`
`ZTE/HTC
`Exhibit 1047-0014
`
`
`
`First “Transmitting” Feature: Philips Reference
`
`Ex. 1005, Philips, at 2
`(referenced at Paper 3, Petition, at 34-35).
`
`[A] prior art reference must be considered together with the knowledge of one of ordinary
`skill in the art.
`
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)
`(referenced at Paper 3, Petition, at 33).
`
`15
`
`ZTE/HTC
`Exhibit 1047-0015
`
`
`
`First “Transmitting” Feature: Simultaneous Development
`
`Qualcomm
`
`LG Electronics
`
`HARQ should obtain the
`MAC PDU to transmit from
`the [Message3] buffer only
`in response to UL grant in a
`Random Access Response.
`
`It is proposed to that only when a
`new UL grant is indicated in a
`Random Access Response, the
`HARQ entity instructs the HARQ
`process to store a MAC PDU
`stored in [Message 3] buffer in
`HARQ buffer.
`
`Ex. 1008, Qualcomm 156, at 2, 5 (emphasis added)
`(referenced at Paper 3, Petition, at 37).
`
`Ex. 1010, LG 387, at 3 (emphasis added)
`(referenced at Paper 3, Petition, at 36).
`
`[Simultaneous development by others is] strong evidence of what
`constitutes the level of ordinary skill in the art.
`
`Geo M. Martin Co. v. Alliance Machine Sys. Int’l LLC, 618 F.3d 1294, 1306 (Fed. Cir. 2010)
`(referenced at Paper 3, Petition, at 35).
`
`16
`
`ZTE/HTC
`Exhibit 1047-0016
`
`
`
`First “Transmitting” Feature: Patent Owner’s Arguments
`
`Patent
`Owner
`[T]he Board’s claim construction is incorrect.
`
`Paper 22, Patent Owner’s Response, at 1
`(referenced at Paper 28, Petitioner’s Reply, at 3).
`
`We have not adopted the Patent Owner’s proposed construction
`or construed “if” to mean “only if,” and accordingly are not
`persuaded by Patent Owner’s arguments.
`
`Paper 11, Institution Decision, at 13
`(referenced at Paper 28, Petitioner’s Reply, at 3).
`
`17
`
`ZTE/HTC
`Exhibit 1047-0017
`
`
`
`First “Transmitting” Feature: Patent Owner’s Arguments
`
`Patent
`Owner
`[T]he Board’s claim construction is incorrect.
`
`Paper 22, Patent Owner’s Response, at 1
`(referenced at Paper 28, Petitioner’s Reply, at 3).
`
`We also decline to construe “if” more narrowly as “only if,” in
`either claim 1 or claim 7, because the claims use the term “if,”
`the claim language does not by its language limit transmitting as
`recited therein, and the term “only” does not appear anywhere
`in claims 1 or 7.
`
`Paper 11, Institution Decision, at 10
`(referenced at Paper 28, Petitioner’s Reply, at 3).
`
`18
`
`ZTE/HTC
`Exhibit 1047-0018
`
`
`
`First “Transmitting” Feature: Patent Owner’s Arguments
`
`Patent
`Owner
`The USPTO’s examination of a child patent of the ’236 patent confirms that
`proper construction is the “only if” construction.
`
`Paper 22, Patent Owner’s Response, at 22
`(referenced at Paper 28, Petitioner’s Reply, at 8).
`
`’236 Patent Claims:
`transmitting . . . if
`[the condition is met]
`Paper 22, Response, at 23 (emphasis added)
`(referenced at Paper 28, Petitioner’s Reply, at 8).
`
`Child Patent Claims:
`transmitting . . . only when
`[the condition is met]
`
`Paper 22, Response, at 23 (emphasis added)
`(referenced at Paper 28, Petitioner’s Reply, at 8).
`
`[I]n accord with our settled practice, we construe the claim as written,
`not as the patentees wish they had written it.
`
`Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004)
`(referenced at Paper 3, Petition, at 17).
`
`19
`
`ZTE/HTC
`Exhibit 1047-0019
`
`
`
`First “Transmitting” Feature: Patent Owner’s Arguments
`
`Patent Owner makes several arguments for why the limitation should be
`construed to add at its conclusion the phrase, “but not transmitting the new
`data,” including, expressio unius est exclusion alterius, inoperability, and the
`language of the claim, which according to Patent Owner “contemplates the
`receipt of only one uplink grant.” Patent Owner likewise argues that the final
`limitation of claim 1 should be construed to add at its conclusion the phrase,
`“but not transmitting any data stored in the Msg3 buffer.” We have reviewed
`and considered Patent Owner’s arguments, and for purposes of this Decision,
`decline to adopt Patent Owner’s proposed construction.
`
`Paper 11, Institution Decision, at 9
`(referenced at Paper 28, Petitioner’s Reply, at 1-2)
`(citations omitted).
`
`20
`
`ZTE/HTC
`Exhibit 1047-0020
`
`
`
`First “Determining” Feature
`
`21
`
`ZTE/HTC
`Exhibit 1047-0021
`
`
`
`First “Determining” Feature
`
`1. 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;
`determining whether there is data stored in a message 3
`(Msg3) buffer when receiving the UL Grant signal on the
`specific message;
`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.
`
`Ex. 1001, ’236 patent, at 16:50-17:3 (emphasis added).
`
`first “determining” feature
`
`Paper 28, Petitioner’s Reply, at 13.
`
`22
`
`ZTE/HTC
`Exhibit 1047-0022
`
`
`
`First “Determining” Feature: 321 Reference
`
`Ex. 1003, 321 Reference, at §§ 5.4.1, 5.4.2.1
`(referenced at Paper 3, Petition, at 24-27).
`
`“determining whether there is
`data stored in a Msg3 buffer
`when receiving the UL Grant
`signal on the specific
`message”
`
`Paper 3, Petition, at 24-25.
`
`23
`
`ZTE/HTC
`Exhibit 1047-0023
`
`
`
`First “Determining” Feature: Patent Owner’s Arguments
`
`Patent
`Owner
`Petitioners have not shown that the 321 reference
`teaches the claimed element—making the claimed
`determination within the specified TTI [(transmission
`time interval)].
`
`Paper 22, Patent Owner’s Response, at 35
`(referenced at Paper 28, Petitioner’s Reply, at 14).
`
`Patent
`Owner
`Test a: Is there data stored in the Msg3 buffer when
`receiving the UL Grant signal on the specific message?
`
`Paper 22, Patent Owner’s Response, at 9
`(referenced at Paper 28, Petitioner’s Reply, at 14).
`
`24
`
`ZTE/HTC
`Exhibit 1047-0024
`
`
`
`First “Determining” Feature: Patent Owner’s Arguments
`
`Patent
`Owner
`Petitioners have not shown that the 321 reference teaches the
`claimed element—making the claimed determination within
`the specified TTI [(transmission time interval)].
`Paper 22, Patent Owner’s Response, at 35
`(referenced at Paper 28, Petitioner’s Reply, at 14).
`
`Q. 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?
`
`A. Yes.
`
`Exhibit 2004, Deposition of Paul S. Min, Ph.D., at 76:6-12
`(referenced at Paper 28, Petitioner’s Reply, at 17).
`
`25
`
`ZTE/HTC
`Exhibit 1047-0025
`
`
`
`Second “Transmitting” Feature
`
`26
`
`ZTE/HTC
`Exhibit 1047-0026
`
`
`
`Second “Transmitting” Feature
`
`1. 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;
`determining whether there is data stored in a message 3
`(Msg3) buffer when receiving the UL Grant signal on the
`specific message;
`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.
`
`Ex. 1001, ’236 patent, at 16:50-17:3 (emphasis added).
`
`second “transmitting” feature
`
`Paper 28, Petitioner’s Reply, at 20.
`
`27
`
`ZTE/HTC
`Exhibit 1047-0027
`
`
`
`Second “Transmitting” Feature: Conditional Language
`
`Patent
`Owner
`As in claim 1, the steps recited in claim 7 depend on a condition.
`
`Paper 22, Patent Owner’s Response, at 30
`(referenced at Paper 28, Petitioner’s Reply, at 21).
`
`Thus, 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))
`(referenced at Paper 28, Petitioner’s Reply, at 21).
`
`28
`
`ZTE/HTC
`Exhibit 1047-0028
`
`
`
`Second “Transmitting” Feature: 321 Reference
`
`“if . . . the specific message
`is not the random access
`response message”
`Paper 3, Petition, at 37-40.
`
`“if there is no data stored in
`the Msg3 buffer when
`receiving the UL Grant signal
`on the specific message”
`Paper 3, Petition, at 37-40.
`
`“transmitting new data”
`
`Paper 3, Petition, at 37-40.
`
`29
`
`Ex. 1003, 321 Reference, at §§ 5.4.1, 5.4.2.1
`(referenced at Paper 3, Petition, at 24-27).
`
`ZTE/HTC
`Exhibit 1047-0029
`
`
`
`Second “Transmitting” Feature: Patent Owner’s Arguments
`
`Patent
`Owner
`Min reaches this conclusion, however, without
`discussing Line 13.
`
`Paper 22, Patent Owner’s Response, at 38
`(referenced at Paper 28, Petitioner’s Reply, at 24).
`
`Q.
`
`If the condition specified in line 13 was true, will lines
`14 to 16 be executed?
`
`A. Yes, of course, because that’s what it says.
`
`Exhibit 2004, Deposition of Paul S. Min, Ph.D., at 166:21-23
`(referenced at Paper 28, Petitioner’s Reply, at 24-25).
`
`30
`
`ZTE/HTC
`Exhibit 1047-0030
`
`
`
`Second “Transmitting” Feature: Patent Owner’s Arguments
`
`Patent
`Owner
`It cannot be sufficient for Petitioners to argue in
`their Reply that it is sufficient that sometimes the
`prior art standard teaches the claimed behavior.
`Paper 22, Patent Owner’s Response, at 40
`(referenced at Paper 28, Petitioner’s Reply, at 26)
`(emphasis in original).
`
`[Patent Owner] faults the Board for equating prioritization
`schemes that ‘sometimes return a farther result’ with
`‘farther-over-nearer ordering.’ We reject this argument
`because combinations of prior art that sometimes meet the
`claim elements are sufficient to show obviousness.
`
`Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016) (italicized emphasis in
`original, red emphasis added) (referenced at Paper 28, Petitioner’s Reply, at 26).
`
`31
`
`ZTE/HTC
`Exhibit 1047-0031
`
`
`
`Dr. Cooklev’s Declaration
`
`32
`
`ZTE/HTC
`Exhibit 1047-0032
`
`
`
`Dr. Cooklev’s Declaration
`
`no sworn statement
`
`Paper 28, Petitioner’s Reply, at 6-7.
`
`Exhibit 2006, Declaration of Todor Cooklev, Ph.D., at 58
`(referenced at Paper 28, Petitioner’s Reply, at 6-7).
`
`We give no weight to the statements made by [the “declarant”] in the document
`entitled “Declaration” (Ex. 1012) because this document lacks the requisite
`acknowledgment by [the “declarant”] that willful false statements are punishable by
`fine, imprisonment, or both, or that the statements are true under penalty of perjury.
`
`IBM Corp. v. IV II LLC, IPR2015-01323, Paper 28 at 10-11 (PTAB Sept. 27, 2016) (emphasis added);
`see also Bumble Bee Foods, LLC v. Kowalski, IPR2014-00224, Paper 18 at 14-15 (PTAB Jun. 5, 2014);
`FedEx Corp. v. Katz Tech. Licensing, L.P., CBM2015-00053, Paper 9 at 7-8 (PTAB Jun. 29, 2015)
`(all referenced in Paper 28, Petitioner’s Reply, at 6-7).
`
`33
`
`ZTE/HTC
`Exhibit 1047-0033
`
`
`
`Dr. Cooklev’s Declaration
`
`Therefore, “if” in the 321 reference, when part of the if-then algorithms,
`would be understood by a PHOSITA to have the same meaning as in the
`if-then conditional operation. This meaning is “only if.”
`Exhibit 2006, Declaration of Todor Cooklev, Ph.D., at ¶ 35
`(referenced at Paper 28, Petitioner’s Reply, at 6).
`
`[E]vidence 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)
`(referenced at Paper 28, Petitioner’s Reply, at 6).
`
`Patent
`Owner
`The patent is clear, and Petitioners have not disputed that . . .
`
`Paper 22, Patent Owner’s Response, at 45 (emphasis added)
`(referenced at Paper 28, Petitioner’s Reply, at 6).
`
`34
`
`ZTE/HTC
`Exhibit 1047-0034
`
`
`
`Dr. Cooklev’s Declaration
`
`I further understand that the party challenging a patent
`claim’s validity bears the burden of proving that claim
`invalid by clear and convincing evidence.
`
`Exhibit 2006, Declaration of Todor Cooklev, Ph.D., at ¶ 17 (emphasis added)
`(referenced at Paper 28, Petitioner’s Reply, at 6).
`
`In an inter partes review instituted under this chapter, the
`petitioner shall have the burden of proving a proposition
`of unpatentability by a preponderance of the evidence.
`
`35 U.S.C. § 316(e) (emphasis added); see also 37 C.F.R. § 42.1.
`
`35
`
`ZTE/HTC
`Exhibit 1047-0035
`
`
`
`Dr. Cooklev’s Declaration
`
`As explained further in this Declaration, it is my opinion and conclusion that
`the random access procedure as described in the ‘236 patent is not disclosed
`in any of the prior art references and would not have been obvious to a
`person of ordinary skill in the art at the time of the invention.
`
`Exhibit 2006, Declaration of Todor Cooklev, Ph.D., at ¶ 78 (emphasis added)
`(referenced at Paper 28, Petitioner’s Reply, at 7).
`
`Under § 103, the scope and content of the prior art are to be determined;
`differences between the prior art and the claims at issue are to be ascertained;
`and the level of ordinary skill in the pertinent art resolved.
`
`Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (emphasis added).
`
`36
`
`ZTE/HTC
`Exhibit 1047-0036
`
`
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