Trials@uspto.gov
`571-272-7822
`
`
`Paper 11
`Entered: December 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) Inc., HTC CORPORATION, and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00757
`Patent 7,881,236 B2
`____________
`
`
`Before WILLIAM V. SAINDON, PETER P. CHEN, and TERRENCE W.
`McMILLIN, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 11
`Entered: December 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) Inc., HTC CORPORATION, and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00757
`Patent 7,881,236 B2
`____________
`
`
`Before WILLIAM V. SAINDON, PETER P. CHEN, and TERRENCE W.
`McMILLIN, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2016-00757
`Patent 7,881,236 B2
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`I. INTRODUCTION
`ZTE (USA) Inc., HTC Corporation, and HTC America, Inc.
`(collectively, “Petitioner”), filed a Petition for inter partes review of
`claims 1–10 and 12–13 of U.S. Patent No. 7,881,236 B2 (Ex. 1001, “the
`’236 patent”). Paper 3 (“Pet.”). Patent Owner, Evolved Wireless LLC, filed
`a Preliminary Response. Paper 8 (“Prelim. Resp.”). Institution of an inter
`partes review is authorized by statute when “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
`Upon consideration of the Petition and the Preliminary Response, we
`are persuaded Petitioner has demonstrated a reasonable likelihood that it
`would prevail in establishing the unpatentability of claims 1–10 and 12–13
`of the ’236 patent. Accordingly, we institute an inter partes review.
`
`A. Related Matters
`The ’236 patent is the subject of several litigations, captioned Evolved
`Wireless, LLC v. Apple, Inc., C.A. 15-cv-542 (D. Del.); Evolved Wireless,
`LLC v. HTC Corp., C.A. 15-cv-543 (D. Del.); Evolved Wireless, LLC v.
`Lenovo Group Ltd., C.A. 15-cv-544 (D. Del.); Evolved Wireless, LLC v.
`Samsung Electronics Co. Ltd., C.A. 15-cv-545 (D. Del.); Evolved Wireless,
`LLC v. ZTE Corp., C.A. 15-cv-546 (D. Del.); and Evolved Wireless, LLC v.
`Microsoft Corp., C.A. 15-cv-547 (D. Del.). Pet. 3. The ’236 patent is also
`the subject of IPR2016–00981, IPR2016-01228, IPR2016-01229, and
`IPR2016-01345, in which decisions regarding whether to institute trial have
`not yet been rendered. Petitioner has filed petitions requesting inter partes
`review of other patents owned by Patent Owner.
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`B. The ’236 Patent
`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 the Evolved Universal Mobile
`Telecommunication System (“E-UMTS”), which is a Long Term Evolution
`(“LTE”) system developed and standardized in the 3rd Generation
`Partnership Project (“3GPP”). Ex. 1001, Abstract, (54), 1:17–32. In
`particular, the ’236 patent describes a random access procedure for a user
`equipment (UE) and a base station in such a telecommunication system. Id.
`at 3:42–59. Figure 1 of the ’236 patent is reproduced below.
`
`
`Figure 1 is a schematic view of an E-UMTS system with core network 102
`and Evolved UMTS Terrestrial Radio Network (E-UTRAN) 101 including
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`User Equipment (UE) 103, base stations eNode B 104a-n, and access
`gateway 105. Ex. 1001, 1:33–37. In its “Discussion of the Related Art,” the
`’236 patent describes a random access procedure for a UE to gain access to
`an LTE system, where the UE stores data to be transmitted in a message 3
`(Msg3) buffer and transmits the data “in correspondence with” receipt from
`the base station of an uplink (UL) grant signal that contains information
`about radio resources. Id. at 3:42–44, 4:18–26. According to the ’236
`patent, then current LTE system standards provided that data stored in the
`Msg3 buffer of the UE would be transmitted to the base station “regardless
`of the reception mode of the UL Grant signal” and that “if the data stored in
`the Msg3 buffer is transmitted in correspondence with the reception of all
`UL Grant signals, problems may occur.” Id. at 4:26–32 (emphasis added).
`The ’236 patent purports to solve such problems. Id. at 4:33–34. Figure 9
`of the ’236 patent is reproduced below.
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`Figure 9 is a flowchart of the method of the ’236 patent showing the
`operation of a Hybrid Automatic Repeat Request (HARQ) entity in a UE.
`Id. at 13:35–39. After a UL grant signal is received from the base station
`eNode B in step 902, the UE determines in step 906 whether there is data in
`the Msg3 buffer. Id. at 13:42–44. The data stored in the Msg3 buffer may
`be a Medium Access Control Protocol Data Unit (MAC PDU), including a
`user equipment identifier. Id. at 5:23–25.
`In step 907, the UE determines whether the received UL grant signal
`is on a random access response (RAR) message. Id. at 13:66–14:3. The UE
`transmits to the base station the data in the Msg3 buffer “only when” there is
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`data in the Msg3 buffer and the UL grant signal is on a random access
`response message, then in step 908. Id. at 14:3–8.
`Conversely, if there is no data in the Msg3 buffer, or if the UL grant
`signal is not on a random access response message, then the UE determines
`that the base station eNode B is making a request for the transmission of
`new data, and performs new data transmission in step 909. Id. at 14:7–13.
`
`C. Illustrative Claims
`Claims 1 and 7 of the ’236 patent are independent. Claim 1 recites:
`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, 16:50–17:3. Claim 7 recites:
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`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, 17:30–18:8.
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–10 and 12–13 of the ’236 patent are
`unpatentable based on the following specific grounds:
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`References
`3GPP Technical Specification
`300 (“300”)1 and 3GPP
`Technical Specification 321
`“321”)2
`300, 321, and Ericsson3
`
`Basis
`§ 103(a) 1–6
`
`Challenged Claims
`
`§ 103(a) 7–10, 12–13
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`In re Cuozzo Speed Techs., LLC, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`
`
`1 3GPP Technical Specification 36.300 v8.4.0 (2008) (Ex. 1002,
`“Specification 300”).
`2 3GPP Technical Specification 36.321 v8.2.0 (2008) (Ex. 1003,
`“Specification 321”).
`3 U.S. Patent No. 9,204,468 B2, filed June 9, 2008, issued Dec. 1, 2015 (Ex.
`1004, “Ericsson”).
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`Petitioner argues that in claim 1’s limitation, “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,” the broadest reasonable
`interpretation of the term “if” is the plain and ordinary meaning, and in
`particular, “if” should not be construed as “only if.” Pet. 16–19 (emphasis
`added). Petitioner contends similarly as to the term “if” in claim 7’s
`limitation “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.” Pet. 19
`(emphasis added).
`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.” Prelim. Resp. 13; see
`id. at 11–24. 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.” Id. We have reviewed and
`considered Patent Owner’s arguments, and for purposes of this Decision,
`decline to adopt Patent Owner’s proposed construction. 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
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`b” format; accordingly, only one of the two limitations may occur for an
`uplink grant.
`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. As used in the
`Specification to describe transmission “only when” the Message3 buffer
`contains data and the UL grant signal is received on the random access
`response message (Ex. 1001, 14:3–8), the term “only” is merely one
`example of circumstances of transmission, and construing “if’ to mean “only
`if” would constitute improper incorporation of a limitation from the
`Specification.
`We further determine that none of the other terms, including those
`proposed by Petitioner, require express construction for purposes of this
`Decision.
`
`B. Asserted Obviousness Over 3GPP Technical Specifications 300 and 321:
`claims 1–6
`Petitioner relies on the declaration of Dr. Paul S. Min and contends
`that independent claim 1 and dependent claims 2–6 are unpatentable under
`35 U.S.C. § 103 as obvious over the 3GPP Technical Specifications 300 and
`321. Pet. 20–48.
`
`1. Technical Specification 300 (Ex. 1002)
`Technical Specification 300 is published by the 3GPP and “provides
`
`an overview and overall description of the E-UTRAN (Evolved Universal
`Terrestrial Radio Access Network) radio interface protocol architecture” in
`an LTE system. Ex. 1002, 11. Section 10.1.5 describes Random Access
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`Procedure, and section 10.1.5.1 outlines a contention-based random access
`procedure. Id. at 48–49.
`
`2. 3GPP Technical Specification 321 (Ex. 1003)
`Technical Specification 321 is published by the 3GPP and “specifies
`the E-UTRA [Evolved Universal Terrestrial Radio Access] MAC [Medium
`Access Control] Protocol” in an LTE system. Ex. 1003, 6. Section 5.4 of
`Technical Specification 321 describes uplink data transfer, section 5.4.1
`describes UL Grant reception, and section 5.4.2.1 states:
`At the given TTI [transmission time interval], the HARQ entity shall:
`
` -
`
` if an uplink grant indicating that the NDI has been incremented
`compared to the value in the previous transmission of this HARQ
`process is indicated for this TTI or if this is the very first transmission
`for this HARQ process (i.e. a new transmission takes place for this
`HARQ process):
`- if there is an ongoing Random Access procedure and there is a MAC
`PDU in the [Message3] buffer:
`- obtain the MAC PDU to transmit from the [Message3] buffer.
`- else, if the “uplink prioritization” entity indicates the need for a new
`transmission:
`- obtain the MAC PDU to transmit from the “Multiplexing and
`assembly” entity;
`- instruct the HARQ process corresponding to this TTI to
`trigger a new transmission using the identified parameters.
`
`
` Id. at 18.
`
`3. Analysis
`
`Petitioner explains how Technical Specifications 300 and 321 teach
`the limitations of claims 1–6. Pet. 20–48 (citing Ex. 1016). For independent
`claim 1, Petitioner contends Specifications 300 (including section 10.1.5.1
`described above) and 321 teach “receiving an uplink grant (UL Grant) signal
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`from a base station on a specific message” (Pet. 23–24, citing Ex. 1016
`¶¶ 56–57).
`
`Petitioner contends Specification 321 teaches claim 1’s next limitation
`of “determining whether there is data stored in a message 3 (Msg3) buffer
`when receiving the UL Grant signal on the specific message,” by stating that
`“if an uplink grant for this TTI has been received, and “if . . . there is a MAC
`PDU in the Msg3 buffer: obtain the MAC PDU to transmit from the
`[Message3] buffer.” Pet. 24–25, citing Ex. 1016 ¶¶ 59, 61; Ex. 1003 §§
`5.4.1, 5.4.2.1. Petitioner further contends Specification 321 teaches the
`limitation of “determining whether the specific message is a random access
`response message,” by stating that the UE shall indicate a valid uplink grant
`if the uplink grant “has been received in a Random Access Response.” Pet.
`25–26, citing Ex. 1016 ¶ 62; Ex. 1003, § 5.4.1.
`Petitioner further contends that Specifications 300 and 321 teach the
`conjunctive limitation, “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” (where “if” is given its plain and ordinary meaning, and
`also where “if” were construed as “only if”). Pet. 26–37, citing Ex. 1016 ¶¶
`65–67, 70–85. In particular, Specification 321 states that the HARQ entity
`of the UE obtains “the MAC PDU to transmit from the [Message3] buffer”
`and the uplink Shared Data Channel carries data from the UE to the base
`station. Pet. 26–27, citing Ex. 1016 ¶ 65, 67; Ex. 1003, § 5.4.2.1; Ex. 1002,§
`10.1.5.1.
`Lastly, Petitioner contends that Specifications 300 and 321 (including
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`section 5.4.2.1 described above) teach the disjunctive limitation,
`“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.”
`Petitioner asserts this limitation is taught in any of the three possible
`scenarios: random access message, but no data stored; or, no data stored, and
`no random access message; or, data stored, but no random access message.
`(Pet. 37–40, citing Ex. 1016 ¶¶ 90–94; Ex. 1003, §§ 5.4.1, 5.4.2.1; Ex. 1002,
`§ 10.1.5.)
`Patent Owner argues the Specification 321’s disclosure “does not
`explicit[ly] recite that any determination is made regarding whether the
`specific message is a random access response.” Prelim. Resp. 28. Patent
`Owner further argues, “[a]t best, it may be a possibility . . . [h]owever,
`inherency cannot be established by possibilities or probabilities.” Id. at 29.
`Petitioner’s challenge to claims 1–6, however, is not based on anticipation
`requiring explicit disclosure or inherency, but rather, on obviousness over
`the combination of Specifications 300 and 321, for which a teaching or
`suggestion of the recited limitation suffices. Patent Owner makes other
`arguments premised on its proposed claim construction and on Petitioner’s
`contentions premised on “if” being construed to mean “only if.” Prelim.
`Resp. 29–34. We have not adopted Patent Owner’s proposed construction,
`or construed “if” to mean “only if,” and accordingly are not persuaded by
`Patent Owner’s arguments.
`For purposes of this Decision and on the record before us, we
`determine the Petition and supporting evidence adequately describe how
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`Specifications 300 and 321 teach or suggest the limitations of independent
`claim 1, as set forth above. In addition, on the record before us, we
`determine the Petition and supporting evidence adequately describe how
`Specifications 300 and 321 teach or suggest the limitations of dependent
`claims 2–6, as to which Patent Owner has not yet presented separate
`arguments.
`Petitioner also argues that one of ordinary skill would have combined
`the two references. Pet. 46–48. Petitioner contends:
`[S]killed artisans would have consulted the two complementary
`references together because both specifications were part of the
`then-current LTE standard. . . . Skilled artisans considered the
`LTE standard as one collective reference set. . . . Even the 236
`patent refers to “the LTE system standard” as a whole. (Id.
`(citing Ex. 1001, 236 patent, at 4:26, 12:17, 12:49, 13:6).)
`Skilled artisans also would have consulted the 300 and 321
`references together because both specifications described LTE’s
`random access procedure.
`
`Pet. 46. In the Preliminary Response, Patent Owner does not provide any
`arguments disputing these contentions. On this record, we are persuaded
`that Petitioner has provided sufficient articulated reasoning with rational
`underpinnings for combining the teachings of Technical Specifications 300
`and 321. For purposes of this decision, Petitioner has shown a reasonable
`likelihood that it would prevail in showing that independent claim 1 and
`dependent claims 2–6 would have been obvious over 3GPP Technical
`Specifications 300 and 321.
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`C. Asserted Obviousness Over 3GPP Technical Specifications 300 and 321,
`and Ericsson: claims 7–10, 12–13
`
`Petitioner relies on the testimony of Dr. Min and contends that
`independent claim 7 and dependent claims 8–10 and 12–13 are unpatentable
`under 35 U.S.C. § 103 as obvious over the 3GPP Technical Specifications
`300 and 321 and Ericsson. Pet. 48–59, citing Ex. 1016 ¶¶ 121–147.
`1. Ericsson (Ex. 1004)
`Ericsson is titled “Timing Alignment in an LTE System” and
`generally describes the use of a timing advance value for transmissions from
`a user equipment to a controlling node of a cell in a cellular communications
`system, such as an LTE system. Ex. 1004, Abstract, 1:5–8, 7:15–18. When
`the Ericsson method is “applied in an LTE system, the procedure in which it
`is employed is preferably an LTE Random Access procedure.” Id. at 7:21–
`23. Figure 6 of Ericsson is reproduced below.
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`Figure 6 is a schematic block diagram of a transceiver for use as a user
`terminal or user equipment. Ex. 1004, 7:24–26. Transceiver 600 comprises
`antenna 610, transmit part 630, receive part 620, memory 650, and
`microprocessor 640. Id. at 7:26–30. Memory 640, transmit part 630, and
`antenna 610 can transmit access requests to a controlling node, and antenna
`610 and receiver 620 can receive messages from a controlling node. Id. at
`7:33–40.
`
`2. Analysis
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`Petitioner contends that “[a]s explained below, these claims [7–10,
`and 12–13] are directed to a UE and recite transmission and reception
`modules adapted to perform recited functions. The 300 and 321 references
`expressly taught the claimed functions for the reasons in section IX.A, supra
`at pp. 20-47. Complementing these teachings, the Ericsson patent expressly
`taught the transmission and reception modules themselves.” Pet. 48.
`Petitioner contends that for the limitations of independent claim 7,
`Ericsson supplies details for the recited reception module (e.g., receiver 620)
`and transmission module (e.g., transmit part 630 and antenna 610). Pet. 49–
`51. Patent Owner states, “[a]s previously discussed, claim 7 has many
`similarities to claim 1. . . . Petitioner[] has not provided a reasoned argument
`that the prior art teaches the 7(e) and (g) limitations.” Prelim. Resp. 34. As
`denoted by Petitioner, the 7(e) limitation recites “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” and the 7(g)
`limitation recites “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.”
`Petitioner asserts the Specification 321 teaches both the 7(e) and 7(g)
`limitations. Pet. 51–52. For the purposes of this Decision, we agree, for the
`reasons stated above for the similar limitations in claim 1. For purposes of
`this Decision and on the record before us, we also determine the Petition and
`supporting evidence also adequately describe how Technical Specification
`300 and 321 and Ericsson teach or suggest the remaining limitations of
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`independent claim 7, and dependent claims 8–10 and 12–13, as to which
`Patent Owner has not yet presented separate arguments.
`Petitioner also argues why one of ordinary skill would have combined
`the identified teachings in the references. Pet. 58–59. Petitioner contends:
`The 300 and 321 references described a UE, an eNodeB, and
`their components at a high level from a functional point of view,
`but by their very nature, did not provide all of the specific
`structural details. (Id. at ¶ 157 (citing Ex. 1003, 321 reference, at
`4.1 (“The objective is to describe the MAC architecture and the
`MAC entity from a functional point of view.”).) Many structural
`features such as a transmission module and reception module
`would have been routine, common-sense design choices for the
`skilled artisan, who would have recognized that those features
`are necessary to implement working LTE devices. (Id. at ¶ 157.)
`But to the extent the skilled artisan had wanted more information
`about a UE’s structure, the skilled artisan would have logically
`and predictably consulted a reference such as the Ericsson patent,
`which provided a block diagram of the components included in
`a UE, such as transmission and reception modules.
`
`Pet. 58. In the Preliminary Response, Patent Owner does not provide
`any arguments disputing these contentions. On this record, we are
`persuaded that Petitioner has provided sufficient articulated reasoning
`with rational underpinnings for combining the teachings of Technical
`Specifications 300 and 321 with Ericsson. For purposes of this
`decision, Petitioner has shown a reasonable likelihood that it would
`prevail in showing that independent claim 7 and dependent claims 8–
`10 and 12–13 would have been obvious over Technical Specifications
`300 and 321 and Ericsson.
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`III. CONCLUSION
`For the foregoing reasons, we are persuaded the information presented
`in the Petition establishes a reasonable likelihood that Petitioner would
`prevail in establishing unpatentability of claims 1–10 and 12–13 of the ’236
`patent.
`
`IV. ORDER
`
`
`
`Accordingly, it is
`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
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial on the
`grounds of unpatentability authorized above; the trial commences on the
`entry date of this Decision.
`
`19
`
`
`
`
`
`IPR2016-00757
`Patent 7,881,236 B2
`
`PETITIONER:
`
`Charles McMahon
`Hersh Mehta
`MCDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`Stephen Korniczky
`Martin Bader
`Ericka Jacobs Schulz
`SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`PATENT OWNER:
`
`Cyrus Morton
`Ryan Schultz
`Robins Kaplan LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`
`20
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