Paper No. 10
`
`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 IPR2016-00758
`Patent 8,218,481
`____________
`
`Petitioner’s Motion for Leave to File a Reply to Patent Owner’s
`Preliminary Response to Petition for Inter Partes Review
`
`
`
`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 IPR2016-00758
`Patent 8,218,481
`____________
`
`Petitioner’s Motion for Leave to File a Reply to Patent Owner’s
`Preliminary Response to Petition for Inter Partes Review
`
`
`
`Case IPR2016-00758
`Patent No. 8,218,481
`
`Pursuant to 37 C.F.R. § 42.108(c), Petitioner seeks the Board’s leave to file
`
`the attached two-page reply to Patent Owner’s preliminary response. Good cause
`
`supports this request. Patent Owner has misstated both the teachings of the prior art
`
`and Petitioner’s arguments, requiring a brief reply to correct the record on which
`
`the Board will render its institution decision.
`
`In its preliminary response, Patent Owner states, without any support, that
`
`“Panasonic 792 does not include any discussion as to the existence of a frame, the
`
`size of a frame, or that the alleged consecutive sequence is entirely within such al-
`
`leged frame.” (Paper 9 at 12.) In addition, with respect to dependent claims 4 and
`
`11, Patent Owner incorrectly states that the Petition is “silent” as to the recited “in-
`
`teger multiple.” (Id. at 15.) Patent Owner’s statements are plainly incorrect. As
`
`discussed in the attached reply, Panasonic 792 discloses in its very first paragraph
`
`that the consecutive sequence is entirely within one frame, and the Petition ex-
`
`pressly addresses the required “integer multiple.”
`
`Therefore, Petitioner requests the Board’s leave to file the attached reply to
`
`Patent Owner’s preliminary response.
`
`1
`
`
`
`Case IPR2016-00758
`Patent No. 8,218,481
`
`Date: July 15, 2016
`
`Respectfully submitted,
`
`/s/ Charles M. McMahon
`Charles M. McMahon (Reg. No. 44,926)
`MCDERMOTT WILL & EMERY
`227 W. Monroe
`Chicago, IL 60606
`T: 312-984-7764
`F: 312-984-7700
`cmcmahon@mwe.com
`
`Attorney for Petitioner
`
`2
`
`
`
`Case IPR2016-00758
`Patent No. 8,218,481
`
`Attachment A
`
`
`
`Paper No. __
`
`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 IPR2016-00758
`Patent 8,218,481
`____________
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response to
`Petitioner’s Petition for Inter Partes Review
`
`
`
`Case IPR2016-00758
`Patent No. 8,218,481
`
`On March 23, Petitioner filed its petition for inter partes review. On June
`
`30, Patent Owner filed its preliminary response. In its response, Patent Owner stat-
`
`ed, without support, that “Panasonic 792 does not include any discussion as to the
`
`existence of a frame, the size of a frame, or that the alleged consecutive sequence
`
`is entirely within such alleged frame.” (Paper 9 at 12.) That is incorrect.
`
`In its very first paragraph, Panasonic 792 discloses that a consecutive se-
`
`quence is entirely within one frame. In particular, Panasonic 792 states, “Random
`
`access burst sub-frame may be composed of a preamble part and a message part.”
`
`(Ex. 1002 at 1.) As the petition demonstrates, the preamble part shown in Figure 1
`
`of Panasonic 792 includes a “consecutive sequence,” as claim 1 recites. (Paper 2 at
`
`24-25 (citing Ex. 1002 at § 2.2, Figure 1).) Therefore, contrary to Patent Owner’s
`
`assertion, Panasonic 792 discloses and the Petition demonstrates that the consecu-
`
`tive sequence in the preamble part is entirely within one “Random access burst
`
`sub-frame,” i.e., entirely within one frame.
`
`With respect to dependent claims 4 and 11, Patent Owner also stated incor-
`
`rectly that “the Petition is silent . . . on the required ‘integer multiple.’” (Paper 9 at
`
`15.) Again, this is incorrect.
`
`The relevant section of the Petition begins by expressly stating that “Pana-
`
`sonic 114 discloses ‘a value of said applied cyclic shift is determined as an integer
`
`multiple of a predetermined circular shift unit.’” (Paper 2 at 33 (emphasis added).)
`
`1
`
`
`
`Case IPR2016-00758
`Patent No. 8,218,481
`
`The Petition goes on to explain that the “indices of cyclic shift (m) serve as exam-
`
`ples of predetermined circular shift units,” and the included Figure 1 from Pana-
`
`sonic 114 shows that m is an integer from 1 to 8. (Paper 2 at 34 (“m=1 to 8”).)
`
`Date: July 15, 2016
`
`Respectfully submitted,
`
`/s/ Charles M. McMahon
`Charles M. McMahon (Reg. No. 44,926)
`MCDERMOTT WILL & EMERY
`227 W. Monroe
`Chicago, IL 60606
`T: 312-984-7764
`F: 312-984-7700
`cmcmahon@mwe.com
`
`Attorney for Petitioner
`
`2
`
`
`
`Case IPR2016-00758
`Patent No. 8,218,481
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the foregoing Petitioner’s Motion for Leave to File
`
`a Reply to Patent Owner’s Preliminary Response to Petition for Inter Partes
`
`Review, including its attachment, was sent on July 15, 2016, via e-mail to Patent
`
`Owner’s attorneys at the following e-mail addresses:
`
`Cyrus A. Morton (Reg. No. 44,954)
`cmorton@robinskaplan.com
`Ryan M. Schultz (Reg. No. 65,134)
`rschultz@robinskaplan.com
`ROBINS KAPLAN LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402-2015
`T: 612-349-8500
`F: 612-339-4181
`
`/s/ Hersh H. Mehta
`Hersh H. Mehta (Reg. No. 62,336)
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