IR2016-000757
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`ZTE (USA) INC, HTC CORPORATION, AND HTC AMERICA, INC.
`Petitioners
`v.
`
`EVOLVED WIRELESS, LLC
`Patent Owner
`______________
`
`Case IPR2016-00757
`Patent 7,881,236
`______________
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITIONERS’ PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,881,236
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`

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`IR2016-000757
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`TABLE OF CONTENTS
`
`I.
`Introduction ........................................................................................................ 1
`II. The State of the art ............................................................................................. 2
`A. Mobile telephony and LTE ......................................................................... 2
`B. Identifying radio resources ......................................................................... 4
`C. Base station communicates the radio resources it has allocated to a
`UE with uplink grants ................................................................................. 6
`D. A UE having new data to upload, but lacking radio resources
`sufficient for the upload, used the random access procedure to obtain
`the resources ................................................................................................ 7
`III. The claims ........................................................................................................11
`A. Independent claim 1 .................................................................................. 11
`B. Independent claim 7 .................................................................................. 13
`IV. Claim Construction ..........................................................................................15
`A. Claim 1 ...................................................................................................... 16
`1. The claim language, properly read, excludes the possibility of
`transmitting new data along with the Msg3 buffer data .................... 16
`2. Petitioners’ claim construction is highly suspect because it claims
`an inoperative method ........................................................................ 19
`3. ZTE’s arguments all fail .................................................................... 20
`a. Petitioners improperly dissect differences in meaning between
`“only if” and “if” .........................................................................20
`b. Petitioners’ other arguments fail, too ..........................................21
`4. Patent Owner’s proposed construction for claim 1 ............................ 24
`B. Claim 7 ...................................................................................................... 24
`V. Petitioner’s argument that the 321 reference teaches limitation 1(e) is wrong,
`even using Petitioners’ unreasonable claim construction ........................................28
`VI. The claims, using the broadest reasonable construction, are not obvious .......29
`A. Petitioners’ argument that the 320 reference teaches not transmitting
`the Msg3 buffer data along with the new data fails because it is
`based on a logical error ............................................................................. 30
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`IPR2016-00757
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`B. Petitioners failed to address the proper construction of limitation
`1(e), and then failed to find that limitation in the prior art, so Ground
`1 fails for this additional reason ................................................................ 33
`C. Petitioners address neither the proper construction of limitation 7(e)
`nor 7(g), and then failed to find those limitations in the prior art, so
`Ground 2 fails ........................................................................................... 34
`D. Petitioners’ simultaneous development argument is irrelevant and
`wrong ........................................................................................................ 35
`VII. Conclusion ........................................................................................................35
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`TABLE OF AUTHORITIES
`
`IPR2016-00757
`
` Page(s)
`
`Cases
`AIA Eng’g Ltd. v. Magotteaux Int’l S/A,
`657 F.3d 1264 (Fed. Cir. 2011) .......................................................................... 19
`
`Chef Am., Inc. v. Lamb-Weston, Inc.,
`358 F.3d 1371 (Fed. Cir. 2004) .......................................................................... 21
`
`Chevron USA Inc. v. Echazabal,
`536 U.S. 77 (2002) .............................................................................................. 17
`
`Despoir, Inc. v. Nike USA, Inc.,
`2005 U.S. Dist. LEXIS 10845 (N.D. Ill. Feb. 9, 2005) ...................................... 17
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015), aff’d, 136 S. Ct. 2131 (2016) .......................... 15
`
`In re Magnum Oil Tools Int’l, Ltd.,
`2016 U.S. App. LEXIS 13461 (Fed. Cir July 25, 2016) .................................... 35
`
`Par Pharm., Inc. v. TWi Pharms., Inc.,
`
`773 F.3d 1186 (Fed. Cir. 2014) .......................................................................... 29
`
`PPC Broadband, Inc. v. Corning Optical Communs. RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ...................................................................... 20, 21
`
`Pods, Inc. v. Porta Stor, Inc.,
`484 F.3d 1359 (Fed. Cir. 2007) .......................................................................... 22
`
`Shenyang Yuanda Aluminum Industry Eng’g. v. United States,
`776 F.3d 1351 (Fed. Cir. 2015) .......................................................................... 17
`
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`IR2016-000757
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`Pursuant to 37 C.F.R. § 42.107, Patent Owner Evolved Wireless, LLC
`submits this Preliminary 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 fails to establish a reasonable likelihood that Petitioners would
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`prevail with respect to any claim challenged in the Petition. The failure is
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`manifold. First, the Petition offers unreasonably broad constructions for one
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`limitation of the independent claims of U.S. Patent No. 7,811,236 (the “’236
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`patent”). Second, the Petition fails to apply the reasoning it used to come up with
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`the first limitation’s construction to a second limitation. Then, the Petition fails to
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`show how this second limitation is rendered obvious. For this reason alone, after
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`construing the claims, the Board should deny the Petition.
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`Perhaps recognizing the unreasonableness of its proposed construction, the
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`Petition also offers a narrower construction, but the Board should deny the Petition
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`under this construction too. This is because Petitioners’ argument that Exhibit 1002
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`(“the 320 reference”) fills the gap in its primary reference (“the 321 reference”) is
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`incorrect. The 320 reference shows only a simple case in the random access
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`procedure that is at issue, and because the reference does not consider more
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`complex cases (cases that the ’236 patent inventors did consider), the conclusion
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`Petitioners drew from it is unsupported.
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`Finally, even using Petitioners’ unreasonably broad construction, the Petition
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`fails to demonstrate that the 321 reference teaches a claim element present in all
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`grounds. Indeed, that reference, which allegedly discloses the two conditions
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`IPR2016-00757
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`required for transmitting the claimed buffer data, does not explicitly or inherently
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`disclose this claim limitation. As such, all grounds should be denied.
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`Accordingly, after the Board makes the correct, broadest reasonable
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`construction, the Petition should be wholly denied.
`II. The State of the art
`A. Mobile telephony and LTE
`This section reviews the scope of the prior art. This review is mandated by
`Graham, because Petitioner’s grounds all rely on obviousness.
`
`Mobile telephony systems are divided into three parts. Ex. 1001 at 1:33–41.
`
`First, there are mobile phones, also called “user equipment” (“UE”). Id. Second are
`base stations, sometimes called “eNode B” or “Node B.” Id. Third is the core
`network. Id. Figure 1 from the ’236 patent shows these three parts.
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`Figure 1 (Ex. 1001 at 3 (sheet 1))
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`IPR2016-00757
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`Figure 2, below, also shows these three parts, and also shows that a mobile
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`UE can communicate with more than one base station. In mobile telephony
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`systems, a UE can move across a geographic region, at one time carrying out a
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`two-way conversation with one base station and at a later time carrying out a two-
`way conversation with another base station. See Ex. 1036 at 5.
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`
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`
`
`Figure 2 (Ex. 20011 at 30)
`At the time of the invention, in 2008, the telecommunications industry was
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`developing the cellular standard now known as Long Term Evolution (“LTE”).
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`Pet. at 6. The LTE standard was finalized in December 2008, and the first publicly
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`available LTE service was launched in December 2009. Ex. 2002 at 1–2.
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`1 Ex. 2001 contains portions of the Dahlman textbook, Ex. 1036, that Petitioners
`did not cite.
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`IPR2016-00757
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`LTE systems did not simply spring into existence in 2008–2009, however.
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`The development of LTE began in 2004. Ex. 2001 at 20. Development of LTE
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`took place in a standard-setting organization called the Third Generation
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`Partnership Project (“3GPP”), where members from virtually every
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`telecommunications company and organization in the world, including Petitioner
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`ZTE, contributed. Id. Pet. at 6; Ex. 2003 at 2. The 3GPP organized many working
`groups, each to develop the LTE standard. Id. Petitioner ZTE chaired one working
`group. Id. Documents these working groups created are Petitioners’ primary
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`references, Exhibits 1002 and 1003. One working group relevant here was “WG2,”
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`which helped define how a UE would initially access a base station. Ex. 1016 at
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`¶¶ 36–37. Critical to this was defining a “random access procedure” in which a
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`base station could learn two important facts:
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`1. The fact that a UE–perhaps a UE with which the base station had no
`previous communication – had new data to transmit to the base station.
`2. How much new data the UE had to transmit.
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`Ex. 1003 at 21 (§ 5.4.5). With that information known, the base station is ready to
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`receive the UE’s new data. How the LTE standard permitted the base station to
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`learn these facts will be discussed below. When these facts are known, the base
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`station can allocate “radio resources” to a UE.
`Identifying radio resources
`B.
`The ’236 patent relates to the allocation of radio resources to UEs. See Ex.
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`1001 at 4:18–30. More specifically, the patent relates to allocations of radio
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`resources for uploads. Id. An upload is transfer of data from the UE “up” to a base
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`IPR2016-00757
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`station, the data then being sent over the core network to a final destination(s). Id.
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`at 4:42–47.
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`Radio resources include the times and frequency bands a UE may use to send
`its data to a base station. See, e.g., Ex. 1003 at 7. Figure 3, below, shows radio
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`resources assigned to two UEs. Each UE uses resource blocks that do not overlap
`in the time/frequency plane.
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`
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`Figure 3 (Ex. 2001 at 292)
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`A base station must assign radio resources to UEs judiciously, accounting for
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`the volume of data to be uploaded and that data’s priority. Ex. 2001 at 79. For
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`example, if a base station assigned too many resources to one UE, then other UEs
`might be perform to operate adequately. Id. at 291. Similarly, if too many
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`frequency bands were assigned to low priority data, then there might be
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`insufficient radio resources to assign to UEs that had generated new, high priority
`data. Id. More specifically, for example, a base station may try not to run out of
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`resources for voice calls, as voice calls can be easily ruined in “high latency”
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`situations. Id; see also Ex. 1002 at 25 (§ 5.2.7.1).
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`IPR2016-00757
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`To minimize latency, then, a base station should know how much new data
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`the UEs in its cell have generated and stored for upload. Base stations that know
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`how much new data is waiting to be uploaded by all the UEs with which they are
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`in communication are able to identify the resources appropriate for each. Ex. 2001
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`at 79-81.
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`Once a base station has determined a suitable allocation of resources, it must
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`communicate these resources to the UEs. This is the subject of the next section.
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`Once the UEs know which resources each may use, they may carry out to two-way
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`communication with a base station, with each receiving an allocation, transmitting
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`its data, receiving a new allocation, and so on until the UE is out of data.
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`C. Base station communicates the radio resources it has allocated to a
`UE with uplink grants
`As a general matter, for LTE uploads, the base station transmits the
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`allocations it has made through uplink grants (“UL Grant”). Ex. 1001 at 4:18–21.
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`Each UL Grant contains the time(s) and frequency band(s) a UE may use to
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`transmit its data. Id. at 4:21–26. There are two ways to provide UL Grants. Id.
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`The first type of UL Grant is a message contained in a random access
`response. Id. at 5:14–17. UL Grants contained in Random Access Responses are
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`used by base stations when, for example, the UE is not in the midst of an ongoing
`two-way communication with the base station. Id. at 3:45–51. One example of this
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`situation includes a UE’s initial access to a base station in a handover procedure.
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`Id. at 3:49–50.
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`IPR2016-00757
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`Non-Random Access UL Grants are the second type of UL Grant. Id. at 5:9–
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`11. One exemplar of the first type of Non-Random Access UL Grants is grants
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`contained in a PDCCH communication. Id. The PDCCH (Physical Downlink
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`Control Channel) is a radio channel used by base stations to deliver UL Grants
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`once the base station has identified the specific UE to which it directs the UL
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`Grant. See id. at 3:20–31. Non-Random Access UL Grants is grants contained in a
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`PDCCH communication, or, here, “PDCCH UL Grants” are sent periodically by
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`the network to provide opportunities for UEs to send, for example, Buffer Status
`Reports.2 See Ex. 1002 at 62 and Ex. 1003 at 18.
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`D. A UE having new data to upload, but lacking radio resources
`sufficient for the upload, used the random access procedure to
`obtain the resources
`The prior art random access procedure enabled a UE that had no ongoing
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`communication with a base station, but that had generated new data, to acquire
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`radio resources for the upload. Ex. 1001 at 11:22–47. As previously discussed, in
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`this circumstance the UE must first send two facts to the base station: 1) the fact
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`that the UE has new data; and 2) how much new data it has to upload.
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`As explained by the ’236 patent, at least in a simple case, the prior art random
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`access procedure requires four transmissions to be successfully transmitted before
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`the UE can upload its new data to the base station for delivery to the ultimate
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`
`2 By referring to Non-Random Access UL Grants as PDCCH, Patent Owner does
`not represent that all Non-Random Access UL Grants are delivered on the
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`PDCCH.
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`IPR2016-00757
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`recipient. Id. at 8:38-9:47. These four transmissions are illustrated in Figure 3. Id.
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`at 6 (sheet 4). They are 1) the Random Access Preamble; 2) the random access
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`response; 3) the Scheduled Transmission; and 4) the Contention Resolution
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`message. Figure 4 shows these same four messages, using different nomenclature.
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`Ex. 1036 at 10. (Figure 3s Scheduled Transmission and the Contention Resolution
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`messages are called “RRC Signaling”). Importantly, Figure 4 shows when new
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`data (called “user data” in Figure 4) is transmitted with respect to the four
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`messages shown in Figure 3’s random access procedure. It is the delivery of the
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`new data/user data that is the ultimate goal of the UE that performed a random
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`access procedure.
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`Figure 3 (Ex. 1001 at 6 (sheet 4))
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`Figure 4 ( Ex. 1036 at 10)
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`The four messages involved in the random access procedure each have unique
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`purposes.
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`IPR2016-00757
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`The first of the four messages is a Random Access Preamble. If a UE has high
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`priority data (“new data”) to upload to the base station but it lacks radio resources
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`for the new data, then it sends a Random Access Preamble to the base station. Id. at
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`8:41–47. In sending the Random Access Preamble to the base station, then, the UE
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`has delivered the first of the two important facts identified above.
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`The second of the four messages is a UL Grant contained in a random access
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`response. Successful receipt of this UL Grant by the UE triggers the UE to send the
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`third message to the base station, as the UE now knows that the base station is
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`aware that it has new data awaiting upload. Ex. 1001 at 8:48-9:5.
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`The third of the four messages is the Scheduled Transmission. The Scheduled
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`Transmission conveys information to the base station about how much new data
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`the UE has to upload to send to the base station. Id. at 11:38-43; Ex. 1002 at 62.
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`This information is often in the form of a buffer status report (“BSR”). Ex. 1001 at
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`11:39–41. It is also referred to as the data stored in the message 3 buffer, or the
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`“Msg3 buffer data.” Id. at 11:52–59. In sending the Scheduled Transmission/ Msg3
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`Buffer data to the base station, then, the UE has delivered the second of the two
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`important facts identified above. But before the UE uploads the new data, it must
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`receive an UL Grant sufficient for its data.
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`The last of the four messages is the Contention Resolution (“CR”) message.
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`The CR message serves two functions. First, the CR message is to permit each UE
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`receiving it to recognize that the CR message was, or was not, directed to it. Ex.
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`2002 at 363, 368–69. Second, the CR message contains an UL Grant sufficient for
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`the new data the UE has to upload. Ex. 1003 at 14. Importantly, and in
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`IPR2016-00757
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`contradistinction from the UL Grant in the second message, the UL Grant that is
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`part of the CR message is sent on the PDCCH channel, and is not sent in a random
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`access response. Id. In other words, for example, even if two UEs both initiated a
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`random access procedure using the same Random Access Preamble, the CR
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`message enables the correct UE to determine that the UL Grant is for its new data,
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`and enables the other UE to determine that the UL Grant is not for its new data. In
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`such a way, contentions between different UEs (simultaneous transmissions in the
`same frequency channels) are avoided.
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`After the last of the four messages in the random access procedure is
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`successfully received, the UE is finally able to upload its new data to the base
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`station as illustrated in Figure 4, above.
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`What is critical to note about the prior art—and the ’236 patent did not
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`change this—is that the uploading of new data required two separate transmission
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`by the UE (not counting the preamble’s transmission):
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`1. First, the UE sent the Scheduled Transmission, which delivered the
`buffer status report to the base station.
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`2. Second, occurring after the Scheduled Transmission and separated
`from it by the UE’s reception of the CR message, the UE sent the
`new data to the base station.
`The Scheduled Transmission and the new data are transmissions go hand in
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`hand with each other. The former enables the base station to allocate radio
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`resources for the latter’s transmission.
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`Also critical to note about the prior art—and not changed by the ’236
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`patent—is that the two separate UE transmissions just noted were each responsive
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`to their own UL Grant. One UL Grant authorized the base station to transmit the
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`Scheduled Transmission and a second UL Grant authorized the base station to
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`IPR2016-00757
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`upload its new data.
`III. The claims
`Independent claim 1
`A.
`Claim 1 reads as follows:
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`1.
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`A method of transmitting data by a user equipment through an uplink,
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`the method comprising:
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`1(b)
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`receiving an uplink grant (UL Grant) signal from a base station on a
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`specific message;
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`1(c) determining whether there is data stored in a message 3 (Msg3) buffer
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`when receiving the UL Grant signal on the specific message;
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`1(d) determining whether the specific message is a random access response
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`message;
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`1(e)
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`transmitting the data stored in the Msg3 buffer to the base station using
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`the UL Grant signal received on the specific message, if there is data
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`stored in the Msg3 buffer when receiving the UL Grant signal on the
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`specific message and the specific message is the random access
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`response message; and
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`1(f)
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`transmitting new data to the base station in correspondence with the
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`UL Grant signal received on the specific message, if there is no data
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`stored in the Msg3 buffer when receiving the UL Grant signal on the
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`specific message or the specific message is not the random access
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`response message.
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`Ex. 1001 at 16:50-17:3 (emphasis added).
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`A number of observations about claim 1 are relevant.
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`First, reading the claim in light of the patent specification, claim 1 refers to
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`the Scheduled Transmission as the transmission of “data stored in a message 3
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`(Msg3) buffer.” Id. at 4:11-14. Also, claim 1s reference to a specific message can
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`in limitation 1(d) refer to either of the two types of UL Grant: in limitation 1(e) a
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`UL Grant provided in in a random access response is required, and in limitation
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`1(f) one provided in a PDCCH UL Grant is required.
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`Second, limitations 1(e) and 1(f) both depend on a condition, here called
`Condition X. Condition X is the underlined language in limitations 1(e) and 1(f)
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`copied above. It is this:
`Condition X–is there is data stored in the Msg3 buffer
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`when receiving the UL Grant signal on the specific
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`message and the specific message is the random access
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`response message?
`Using the Condition X language, limitations 1(e) and 1(f) read:
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`1(e)
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`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;
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`and
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`1(f)
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`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.
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`Evidently, these two limitations are of the form “If X, then do one thing, but if
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`not X, do the other thing.” This simple observation is relevant to the claim
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`construction.
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`Finally, it is notable that one cannot simply perform the claimed steps 1(a)
`through 1(f) seriatim and transmit data in the message3 buffer and also transmit the
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`new data. That is because claim 1 contemplates the receipt of only one uplink
`grant: the claim refers in limitation 1(b) to “an uplink grant . . . on a specific
`message” and limitations 1(c)-(f) then refer to “the UL Grant signal on the specific
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`message.” And, as noted above at § II.D (page 10), two uplink grants must be
`received in order to transmit both the data stored in the Msg3 buffer (i.e., make the
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`Scheduled Transmission) and the new data. Thus, making one pass through the
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`steps of claim 1 is insufficient to transmit the Msg3 buffer data and to transmit the
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`new data. This observation is relevant to whether Petitioners’ claim construction is
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`operative (it is not).
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`Independent claim 7
`B.
`Claim 7, the only other independent claim in the ’236 patent, reads as follows:
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`7.
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`A user equipment, comprising:
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`7(b) a reception module adapted to receive an uplink grant (UL Grant) signal
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`from a base station on a specific message;
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`7(c) a transmission module adapted to transmit data to the base station using the
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`UL Grant signal received on the specific message;
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`7(d) a message 3 (Msg3) buffer adapted to store UL data to be transmitted in a
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`random access procedure;
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`IPR2016-00757
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`7(e) a Hybrid Automatic Repeat Request (HARQ) entity adapted to determine
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`whether there is data stored in the Msg3 buffer when the reception module
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`receives the UL Grant signal and the specific message is a random access
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`response message, acquiring the data stored in the Msg3 buffer if there is
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`data stored in the Msg3 buffer when the reception module receives the UL
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`Grant signal and the specific message is the random access response
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`message, and controlling the transmission module to transmit the data stored
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`in the Msg3 buffer to the base station using the UL Grant signal received by
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`the reception module on the specific message; and
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`7(f) a multiplexing and assembly entity used for transmission of new data,
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`7(g) wherein the HARQ entity acquires the new data to be transmitted from the
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`multiplexing and assembly entity if there is no data stored in the Msg3
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`buffer when the reception module receives the UL Grant signal on the
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`specific message or the received message is not the random access response
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`message, and controls the transmission module to transmit the new data
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`acquired from the multiplexing and assembly entity using the UL Grant
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`signal received by the reception module on the specific message.
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`Ex. 1001 at 17:30-18:7. There are many similarities between the method claim 1
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`and the apparatus claim 7. In the next section, Patent Owner will identify some of
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`these similarities and point out how Petitioners’ proposed claim construction
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`ignores them.
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`IPR2016-00757
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`IV. Claim Construction
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`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.,
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`LLC, 793 F.3d 1268, 1275 (Fed. Cir. 2015), aff’d, 136 S. Ct. 2131, 2142 (2016).
`
`Petitioners’ claim construction permits transmitting the data stored in the
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`Msg3 buffer to be made along with a transmission of the new data:
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`Petitioner anticipates Patent Owner might [wrongly]
`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
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`transmission of the Msg3 buffer data can occur even under the conditions of
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`limitation 1(f), when the new data is sent, without receipt of an intervening CR
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`message. That is because, in Petitioners’ view, the claim uses the language “if”
`rather than “only if” language. Id. at 16–17.
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`Applying Petitioners’ reasoning that “if” in these limitations means “not only
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`if” to both 1(e) and (f) limitations, then, Petitioners’ proposed construction is:
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`IPR2016-00757
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` 1(e)
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`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,
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`and optionally transmitting the new data; and
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`1(f)
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`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,
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`and optionally transmitting the data stored in the Msg3 buffer.
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`Patent Owner notes that Petitioners did not apply their reasoning to the 1(f)
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`limitation , so Patent Owner applies it here to assist the Board seeing the
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`unreasonableness of Petitioners’ construction.
`A. Claim 1
`Petitioners’ proposed construction, which permits transmitting the Msg3
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`buffer data along with new data (in limitation 1(f)), and which permits transmitting
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`new data along with the Msg3 buffer data (in limitation 1(e)), is unreasonably
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`broad.
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`1. The claim language, properly read, excludes the possibility of
`transmitting new data along with the Msg3 buffer data
`The ’236 patent, as discussed above, describes initiating a random access
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`procedure so that the UE can transmit its new data to a base station. Two UE
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`transmissions, one for the Msg3 buffer data and one for the new data, each
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`responsive to their own UL Grant, are required. In this circumstance, where there
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`is a series of terms, a statement mentioning one term is reasonably interpreted as
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`excluding the other term.
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`IPR2016-00757
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`That is the principle of expressio unius est exclusio alterius. The principle
`means “the express mention of one thing excludes all others.” Shenyang Yuanda
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`Aluminum Industry Eng’g. v. United States, 776 F.3d 1351, 1359 (Fed. Cir. 2015).
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`Under its guidance, the correct reading of limitation 1(f) excludes transmitting the
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`Msg3 buffer data if the expressed claim limitations are present, and the correct
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`reading of limitation 1(e) excludes transmitting the new data if the expressed claim
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`limitations are present. As a result, the correct claim construction must exclude
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`Petitioners’ claim construction.
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`The expressio unius principle is applicable to patent law. Despoir, Inc. v. Nike
`USA, Inc., 2005 U.S. Dist. LEXIS 10845, *1 (N.D. Ill. Feb. 9, 2005) (using the
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`principle to construe claim language, and “recognizing the validity of the canon of
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`construction, expressio unius est exclusio alterius, in a discussion about the
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`meaning of the term in patented items.”). It is applicable where, like here, the thing
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`mentioned and the thing not mentioned, go hand in hand:
`The canon depends on identifying a series of two or more
`terms or things that should be understood to go hand in
`hand, which is abridged in circumstances supporting a
`sensible inference that the term left out must have been
`meant to be excluded . . . expressio unius properly
`applies only when in the natural association of ideas in
`the mind of the reader that which is expressed is so set
`over by way of strong contrast to that which is omitted
`that the contrast enforces the affirmative inference.
`Chevron USA Inc. v. Echazabal, 536 U.S. 77, 81 (2002) (citations and quotation
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`marks omitted). In the present matter, the two things are transmitting the Msg3
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`IPR2016-00757
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`buffer data and transmitting the new data. These things go hand in hand, and are
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`naturally associated by one of skill in the art when reading the patent’s
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`specification, because they are the only two sets of user data the patent
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`contemplates the UE transmitting.
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`
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`The ’236 patent’s Figure 9, copied below, confirms that the two things go
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`hand in hand, because it identifies them as the only endpoints of the claimed
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`process. This is visible in the figure’s two paths, one ending in step S909, the
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`transmission of new data, and the other ending the step S908, the transmission of
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`the Msg3 buffer data.
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`Figure 5 (Ex. 1001 at 10 (sheet 8))
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`Notably, the block for S909 does not include the phrase “but do not transmit
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`the Msg3 buffer data,” and the block for S908 does not include the phrase “but do
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`IPR2016-00757
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`not transmit the new data.” But these omissions are precisely the omissions that
`fall within the scope of the expressio unius principle.
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`Further, the patent’s specification confirms that its Figure 9 is to be
`understood according to the expressio unius principle. The specification’s
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`discussion of Figure 9 explicitly excludes the things that the blocks S908 and S909
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`do not mention:
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`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). If there is no
`data in the Msg3 buffer when receiving the UL Grant
`signal or the UL Grant is not received on the random
`access response message, the UE determines that the
`eNode B makes a request not for the transmission of the
`data stored in the Msg3 buffer but for transmission of
`new data, and performs new data transmission (S909).
`Ex. 1001 at 14:13–13 (emphasis added). Accordingly, Figure 9 is to be understood
`according to the expressio unius principle.
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`2. Petit