UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC., MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`AND MICROSOFT MOBILE INC. (F/K/A/ NOKIA INC.),
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`Petitioner
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`v.
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`EVOLVED WIRELESS LLC,
`Patent Owner.
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`____________
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`Case IPR2016-01228
`Patent 7,881,236
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S REQUEST FOR
`REHEARING
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC., MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`AND MICROSOFT MOBILE INC. (F/K/A/ NOKIA INC.),
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`Petitioner
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`v.
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`EVOLVED WIRELESS LLC,
`Patent Owner.
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`____________
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`Case IPR2016-01228
`Patent 7,881,236
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S REQUEST FOR
`REHEARING
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`Proceeding No.: IPR2016-01228
`Attorney Docket: 00035-0009IP1
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`I.
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`Introduction
`Patent Owner’s Request for Rehearing (Paper 28, hereinafter the “Request”)
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`should be denied because neither of the two bases for rehearing identified by the
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`Request is sustainable.
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`First, contrary to Patent Owner’s allegations, the Board did not overlook
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`Patent Owner’s hypothetical modification of Kitazoe’s disclosure, or that
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`hypothetical’s introduction of an additional UL grant. Rather, the Decision
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`directly addressed the hypothetical, noting expressly that the hypothetical’s
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`addition of a UL grant contradicted disclosure from Kitazoe. See Decision, pp. 32-
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`34.
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`Second, while Patent Owner attempts to demonstrate that the Board
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`misapprehended its flawed argument that Kitazoe “does not create the conditions
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`that test the only when behavior” of the ’236 patent claims, the record also belies
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`this argument. The Decision shows how the Board sagely embraced Kitazoe’s
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`express definition of “message 3” (which the Request and, notably, the Patent
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`Owner Response fails to even mention) as teaching the “only when behavior.” See
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`Decision, pp. 32-34. In doing so, the Board demonstrated its understanding of the
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`argument; it just simply, and correctly, found the argument uncompelling.
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`1
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`Proceeding No.: IPR2016-01228
`Attorney Docket: 00035-0009IP1
`The Request fails to show that the Decision overlooked or misapprehended
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`any argument. Accordingly, the Board should deny Patent Owner’s Request for
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`Rehearing in full.
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`II.
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`In arguing that the Board overlooked and misapprehended arguments
`about Kitazoe, Patent Owner conveniently ignores the Decision’s
`acknowledgement of Kitazoe’s express definition of “message 3”
`Without equivocation, the Decision expressly credits Kitazoe as defining, for
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`the purposes of its disclosure, the term message 3 as a message that is “sent only
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`when the random access response is received.” Decision, p. 32 (emphasis added)
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`(citing Kitazoe, 8:32-35 (“the term ‘message 3’ refers to the scheduled
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`transmission sent by the access terminal to [the] base station [] as granted by the
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`random access response message from [the] base station.”) (emphasis added)
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`(cited at Petition, p.43); Wells, ¶ 98). The Request for Rehearing simply ignores
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`the Decision’s reliance on Kitazoe’s definition of “message 3” or the Decision’s
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`discussion of the clear inconsistency between Kitazoe’s disclosure and Patent
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`Owner’s hypothetical. As described below, these aspects of the decision make
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`clear that the Board addressed both arguments identified in the Request and rightly
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`found each wanting; it did not misapprehend or overlook anything about Kitazoe,
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`as Patent Owner contends.
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`2
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`Attorney Docket: 00035-0009IP1
`III. The Board did not overlook Patent Owner’s argument that its
`hypothetical example of an additional PDCCH UL Grant is grounded in
`the ’236 patent’s specification
`Patent Owner argues that the “the Board overlooked the Patent Owner’s
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`argument that the additional PDCCH UL Grant was ‘the very grant that was
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`contemplated by the inventors of the ’236 [patent].’” Request, p. 11. The Board
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`did not overlook this argument. To the contrary, the Decision plainly demonstrates
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`that the Board clearly considered the argument in correctly holding Patent Owner’s
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`hypothetical to be inconsistent with Kitazoe’s disclosure, and therefore contrived.
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`See Decision, p. 34.
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`The Decision addresses Patent Owner’s hypothetical modification of
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`Kitazoe. In particular, the Decision acknowledges two specific contentions by
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`Patent Owner: (1) that “Kitazoe takes a narrow view of what can occur during a
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`random access procedure” and (2) that Kitazoe “‘does not consider the more
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`complex case’ in which a ‘UL Grant is not in a random access response message
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`but is instead contained in a PDCCH communication.’” Id. at pp. 33-34 (emphasis
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`added) (quoting POR, pp. 40-41). As to the second contention, the Decision
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`remarks, “[i]n such a ‘more complex case,’ Patent Owner argues, ‘the Msg3 buffer
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`data is sent responsive to a [different message], an UL Grant not in a random
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`access response.’” Decision, p. 34 (emphasis added). Yet, Patent Owner contends
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`that the Board overlooked inserting a “UL Grant… in a PDCCH communication”
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`3
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`Proceeding No.: IPR2016-01228
`Attorney Docket: 00035-0009IP1
`to yield an “additional PDCCH UL Grant.” See Request, p. 11. This position is
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`unsupportable.
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`The Board correctly found that Patent Owner’s hypothetical directly
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`contradicts Kitazoe’s express definition of a “message 3” (discussed above).
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`Decision, pp. 32, 34. Indeed, as the Board recognized in the Decision, sending
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`Kitazoe’s message 3 using “an UL Grant not in a random access response,” as
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`proposed in Patent Owner’s hypothetical, is contrary to the Kitazoe’s definition of
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`“message 3,” as Kitazoe is clear that it sends its message 3 data only “as granted
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`by the random access response message.” Decision, p. 32 (citing Petition, p. 42;
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`Kitazoe, 8:32-35; Wells, ¶¶ 98). Thus, it is not sent using UL grants from other
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`received messages. Id.
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`The Decision also found that Patent Owner “hypothesize[d] a system that is
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`more complex than Kitazoe.” Decision, p. 34. To this point, the Decision
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`disapproved of Patent Owner’s conjuring of a hypothetical that mended together
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`features of Kitazoe with those of a purported background system—rather than the
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`claims—of the ’236 patent. Decision, p. 34 (citing to Patent Owner Response at
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`pp. 40-41, which compare Fig. 7 of Kitazoe with the background system of Fig.8
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`of the ‘236 Patent). The Decision noted that this contrived hypothetical was both
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`contrary to Kitazoe’s express disclosure and ineffective at demonstrating Kitazoe’s
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`lack of satisfaction of the claims of the ’236 patent. Decision, p. 34. To this later
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`Proceeding No.: IPR2016-01228
`Attorney Docket: 00035-0009IP1
`point, the Decision pointed out that a comparison between Patent Owner’s
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`contrived hypothetical and the claims “does not negate the fact that the system
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`described in Kitazoe does,” in fact, meet the claims. Id. Indeed, the Decision
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`properly credited Dr. Wells’ testimony, the only credible expert testimony on the
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`record, as supporting the inapplicability of Patent Owner’s hypothetical to the
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`simpler system of Kitazoe. See Decision, p. 34.
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`Thus, rather than overlooking the “additional PDCCH UL Grant” in Patent
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`Owner’s hypothetical, the Decision directly addresses this aspect of the
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`hypothetical and thoroughly denounces it as contradicting Kitazoe’s express
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`disclosure. The Board’s conclusion is well supported by the testimonial evidence
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`of record. The Decision does not contain the supposed oversights that Patent
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`Owner identifies, and the Board should therefore deny the Request for Rehearing
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`with respect to this point.
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`IV. The Board did not misapprehend Patent Owner’s argument alleging
`that Kitazoe fails to show that it does not transmit the Msg3 buffer data
`when it received a PDCCH grant and has Msg3 buffer data to send
`Again ignoring the express definition of “message 3” from Kitazoe and the
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`Decision’s reliance on it, Patent Owner argues that the Board misapprehended its
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`argument “that Kitazoe does not address any transmission following the reception
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`of a PDCCH UL Grant when there is data in the Msg 3 buffer.” Request, p. 12.
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`Patent Owner is wrong. The Decision addressed this point directly, finding that
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`“Kitazoe teaches that message 3 is sent only when the random access response is
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`received,” and that Kitazoe’s message 3 is, therefore, not sent “following the
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`reception of a PDCCH UL Grant.” Decision, p. 32; Request, p. 12. Indeed, this
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`conclusion is supported by the only credible testimony on the record, that of Dr.
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`Wells, who noted that Kitazoe’s processes are incongruent with the Patent Owner’s
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`contrived hypothetical, which “does not relate[] to what is described in Kitazoe.”
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`Decision, p. 34, citing to Ex. 2010, 60:21-22. 61:6-8.
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`As described above, the Board correctly found that Patent Owner’s
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`hypothetical, which calls for message 3 to be sent “following the reception of a
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`PDCCH UL Grant,” directly contradicts Kitazoe’s express definition of a “message
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`3.” See Decision, pp. 32, 34. Kitazoe states that, in its disclosure:
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`the scheduled
`to
`term ‘message 3’ refers
`[T]he
`transmission sent by the access terminal to [the] base
`station [] as granted by the random access response
`message from [the] base station.
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`Kitazoe, 8:32-35 (cited at Petition, p. 43 (emphasis in original)). The Decision
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`credits this disclosure, which Dr. Wells’s supporting testimony corroborated, as
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`teaching that “message 3 is sent only when the random access response is
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`received.” Decision, p. 32 (emphasis added) (citing Kitazoe, 8:32-35; Wells, ¶ 98).
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`Because Kitazoe’s “message 3 is sent only when the random access response is
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`6
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`Proceeding No.: IPR2016-01228
`Attorney Docket: 00035-0009IP1
`received,” it follows that Kitazoe teaches its message 3 is not sent “following the
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`reception of a PDCCH UL Grant.” Decision, p. 32; Request, p. 12.
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`The Board’s statement that Patent Owner’s hypothetical “does not ‘relate[]
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`to what is described in Kitazoe’” does not misapprehend Patent Owner’s
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`hypothetical. The hypothetical involves sending Kitazoe’s message 3 using “an
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`UL Grant not in a random access response.” POR, p. 42. As the Board found,
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`this directly contradicts Kitazoe's disclosure (which the Board credited) that its
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`message 3 is transmitted “as granted by the random access response message,” and
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`thus “only when the random access response is received.” Decision, p. 32
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`(emphasis added) (quoting Kitazoe, 8:32-35). The Board clearly demonstrated that
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`it understood Patent Owner’s argument, and correctly dismissed it as inconsistent
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`with Kitazoe’s express disclosure, an inconsistency that Dr. Wells’s testimony
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`directly supports. See Decision, pp. 32-34.
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`Further, contrary to Patent Owner’s contention, the following Board
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`statement does not demonstrate misapprehension of Patent Owner’s hypothetical
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`by the Board: “[t]he fact that Patent Owner can hypothesize a system that is more
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`complex than Kitazoe that does not teach or suggest the claim limitation does not
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`negate the fact that the system described in Kitazoe does.” Decision, p. 34. Patent
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`Owner asserts that “to test the only when behavior, a prior art system must
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`demonstrate both transmitting the Msg3 buffer data when it has the data and it
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`7
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`Proceeding No.: IPR2016-01228
`Attorney Docket: 00035-0009IP1
`receives a random access response UL Grant and also not transmitting the Msg3
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`buffer data when it received a PDCCH UL Grant.” Request, pp. 13-14. Even if
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`this is accepted as true (which it is not), the Board did in fact find that Kitazoe
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`passes both these tests.
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`As to the first of Patent Owner’s tests (transmitting message 3 when a
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`random access response is received), the Board credited disclosure from Kitazoe
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`(8:32-35) and the testimony of Dr. Wells (¶¶ 98-99) in finding that Kitazoe teaches
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`the “only when” behavior. See Decision, p. 32 (citing Petition, p. 43; Wells, ¶¶ 98-
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`99; Kitazoe, 8:32-35). Specifically, the Board found that “Kitazoe’s teaching that
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`‘the term ‘message 3’ refers to the scheduled transmission sent by the access
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`terminal to [the] base station [] as granted by the random access response message
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`from [the] base station’” indicates that Kitazoe’s “message 3 is only sent using the
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`uplink grant included in the random access response.” Decision, p. 32 (citing
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`Petition, p. 43; Wells, ¶¶ 98-99; Kitazoe, 8:32-35). Thus, Kitazoe satisfies Patent
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`Owner’s first test.
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`As to the second of Patent Owner’s tests (not transmitting the message 3
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`when receiving a PDCCH UL Grant), the Board found that Kitazoe would only
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`send its message 3 using the uplink grant included in a random access response
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`based on its express definition of message 3. Decision, p. 32 (Kitazoe, 8:32-35;
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`citing Petition, p. 43; Wells, ¶¶ 98-99). Because Kitazoe will only send its
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`8
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`Proceeding No.: IPR2016-01228
`Attorney Docket: 00035-0009IP1
`message 3 using an uplink grant included in a random access response, it will not
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`send its message 3 using other uplink grants that are not included in a random
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`access response. See Kitazoe, 8:32-35; Decision, p. 32; Wells, ¶¶ 98-99; citing
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`Petition, p. 43. The PDCCH uplink grant in Patent Owner’s hypothetical “is not in
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`a random access response message[.]” POR, pp. 40-41 (emphasis added).
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`Therefore, based on its express definition of message 3, Kitazoe will not send its
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`message 3 using the PDCCH uplink grant in Patent Owner’s hypothetical. See
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`Kitazoe, 8:32-35; Decision, p. 32; Wells, ¶¶ 98-99; citing Petition, p. 43. Thus,
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`Kitazoe satisfies Patent Owner’s second test.
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`Accordingly, the Board did not misapprehend Patent Owner’s arguments
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`that both of these tests must be satisfied under the adopted claim construction. The
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`exact opposite is true: the Board acknowledged these supposed “tests” and found
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`that Kitazoe nonetheless satisfies them.
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`V. Conclusion
`Accordingly, for at least the reasons discussed above, the Board should deny
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`Patent Owner’s Request for Rehearing in its entirety.
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`9
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`Dated: 1/19/2018
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` (Trial No. IPR2017-01228)
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`Proceeding No.: IPR2016-01228
`Attorney Docket: 00035-0009IP1
`Respectfully submitted,
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`/Dan Smith/
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`W. Karl Renner, Reg. No. 41,265
`Lead Counsel
`Roberto J. Devoto, Reg. No. 55,108
`Back-up Counsel
`Dan Smith, Reg. No. 71,278
`Back-up Counsel
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`Fish & Richardson P.C.
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`Attorneys for Petitioner
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`10
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`Proceeding No.: IPR2016-01228
`Attorney Docket: 00035-0009IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1), the undersigned certifies that on January
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`19, 2018, a complete and entire copy of this Petitioner’s Opposition to Patent
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`Owner’s Request for Rehearing was provided via email to the Patent Owner by
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`serving the email correspondence addresses of record as follows:
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`Cyrus A. Morton, Ryan M. Schultz
`Robins Kaplan LLP
`2800 LaSalle Plaza, 800 LaSalle Ave
`Minneapolis, MN 55402
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`CMorton@robinskaplan.com
`RSchultz@robinskaplan.com
` Evolved_RK_Team@robinskaplan.com
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`Email:
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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`11
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