IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Sung Jun Park, et al.
`In re Patent of:
`7,881,236
`Attorney Docket No.: 00035-0009IP1
`U.S. Patent No.:
`February 1, 2011
`
`Issue Date:
`Appl. Serial No.: 12/538,514
`
`Filing Date:
`August 10, 2009
`
`Title:
`Data Transmission Method and User Equipment for the
`Same
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 7,881,236 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`TABLE OF CONTENTS
`
`I.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 1 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 1 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 1 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 2 
`D.  Service Information .................................................................................. 2 
`II. 
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 2 
`III.  GROUNDS FOR STANDING AND CHALLENGE UNDER 37 C.F.R. §
`42.104 .............................................................................................................. 3 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 3 
`B.  Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 3 
`IV.  THE ’236 PATENT ....................................................................................... 11 
`A.  Brief Description of the ’236 Patent ....................................................... 11 
`B.  Applicant Admitted Prior Art (AAPA) of the ’236 Patent ..................... 13 
`C.  Claim Construction under 37 C.F.R. §§ 42.104(b)(3) ............................ 15 
`1. 
`Claim scope of the ’236 patent ...................................................... 17 
`2. 
`Claim 7 .......................................................................................... 21 
`D.  Level of Ordinary Skill in the Art as of the Critical Date ...................... 22 
`V.  MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A
`REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE
`’236 PATENT IS UNPATENTABLE .......................................................... 23 
`A.  Kitazoe Overview ................................................................................... 24 
`B.  AAPA Overview ..................................................................................... 27 
`C.  3GPP TS-36.321 Overview .................................................................... 28 
`D.  The Combination of Kitazoe, AAPA, and 3GPP TS-36.321 ................. 30 
`E.  Reasons to Combine Kitazoe, AAPA, and 3GPP TS-36.321 ................. 32 
`F.  [GROUND 1] – Claims 1-4, 6-10, and 12-13 is obvious over Kitazoe,
`the AAPA of the ’236 patent, and 3GPP TS-36.321 under 35 U.S.C. §
`103 ........................................................................................................... 34 
`G.  [GROUND 2] – Claim 5 is obvious over Kitazoe, the AAPA of the ’236
`patent, and 3GPP TS-36.321, further in view of Kitazoe-II under 35
`U.S.C. § 103 ............................................................................................ 62 
`IV.  REDUNDANCY ........................................................................................... 65 
`VI.  CONCLUSION .............................................................................................. 66 
`
`
`i
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 7,881,236 to Park, et al. (“the ’236 patent”)
`
`APPLE-1002
`
`Prosecution History of the ’236 Patent (“the Prosecution
`History”)
`
`APPLE-1003
`
`Declaration of Jonathan Wells (“Declaration”)
`
`APPLE-1004
`
`Curriculum Vitae of Jonathan Wells
`
`APPLE-1005
`
`U.S. Patent No. 8,180,058 (“Kitazoe”)
`
`APPLE-1006
`
`Reserved
`
`APPLE-1007
`
`3rd Generation Partnership Project; Technical Specification
`Group Radio Access Network; Evolved Universal Terrestrial
`Radio Access (E-UTRA) Medium Access Control (MAC)
`protocol specification (Release 8), 3GPP TS-36.321 V8.1.0,
`(March 2008) (“3GPP TS-36.321”)
`
`APPLE-1008
`
`U.S. Patent No. 6,634,020 (“Bates”)
`
`APPLE-1009
`
`U.S. Publication No. 20090163211 (“Kitazoe-II”)
`
`APPLE-1010
`
`U.S. Publication 20080059658 (“Williams”)
`
`APPLE-1011
`
`Van den Brand et al., Streaming consistency: a model for
`efficient MPSoC design, 10th Euromicro Conference on Digital
`System Design Architectures, Methods and Tools (2007) (“Van
`den Brand”)
`
`APPLE-1012
`
`U.S. Patent No. 6,161,160 (“Niu”)
`
`APPLE-1013
`
`U.S. Provisional No. 60/955,867 (“Kitazoe Provisional”)
`
`APPLE-1014
`
`U.S. Patent No. 6,772,417 (“Ko”)
`
`ii
`
`

`
`APPLE-1015
`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`U.S. Patent No. 7,675,905 (“Delaney”)
`
`APPLE-1016
`
`U.S. Provisional No. 61/015,159 (“Kitazoe-II Provisional”)
`
`APPLE-1017
`
`Joint Claim Construction Statement from Case Nos. 15-542-
`SLR-SRF, 15-543-SLR-SRF, 15-544-SLR-SRF, 15-545-SLR-
`SRF, 15-546-SLR-SRF, 15-547-SLR-SRF filed in N.D. Del.
`On May 17, 2016 (“Joint Claim Construction Statement”)
`
`APPLE-1018
`
`“3GPP FAQs,” available at http://www.3gpp.org/about-
`3gpp/3gpp-faqs (retrieved June 20, 2016)
`
`APPLE-1019
`
`APPLE-1020
`
`“3GPP specification: 36.321,” available at
`http://www.3gpp.org/DynaReport/36321.htm (retrieved June
`20, 2016)
`
`“3GPP specification: 36.321,” archived by the Internet Archive
`Wayback Machine on May 5, 2008, available at
`https://web.archive.org/web/20080505041953/http://www.3gpp
`.org/ftp/Specs/htmlinfo/36321.htm (retrieved June 20, 2016)
`
`APPLE-1021
`
`Declaration of Anne Koch Baland
`
`
`
`iii
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`Apple Inc., Microsoft Corporation, Microsoft Mobile Oy, and Microsoft
`
`Mobile Inc. (f/k/a Nokia Inc.) (collectively “Petitioner”) petition for Inter Partes
`
`Review (“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1-10,
`
`and 12-13 (“the Challenged Claims”) of U.S. Patent No. 7,881,236 (“the ’236
`
`patent”). The Challenged Claims are unpatentable based on teachings set forth in
`
`at least the references presented in this petition. An IPR should therefore be
`
`instituted, and the Challenged Claims canceled as unpatentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Apple Inc., Microsoft Corporation, Microsoft Mobile Oy, Microsoft Mobile
`
`Inc. (f/k/a Nokia Inc.), Microsoft Luxembourg International Mobile SARL and
`
`Microsoft Luxembourg USA Mobile SARL are the real parties-in-interest. The
`
`Microsoft entities have numerous affiliated and/or related entities. However, no
`
`unnamed Microsoft entity is funding or controlling this Petition or any resulting
`
`IPR.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ’236 patent is the subject of a number of civil actions including: Evolved
`
`Wireless, Inc. v. Apple Inc., Civil Action No. 1:15-cv-00542-SLR; Evolved
`
`Wireless, Inc. v. HTC Corporation et al., Civil Action No. 1:15-cv-00543-SLR;
`
`Evolved Wireless, Inc. v. Lenovo Group Ltd. et al., Civil Action No. 1:15-cv-
`
`00544-SLR; Evolved Wireless, Inc. v. Samsung Electronics Co., Ltd. et al., Civil
`
`1
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`Action No. 1:15-cv-00545-SLR; Evolved Wireless, Inc. v. ZTE Corporation et al.,
`
`Civil Action No. 1:15-cv-00546-SLR; and Evolved Wireless, Inc. v. Microsoft
`
`Corporation et al., Civil Action No. 1:15-cv-00547-SLR.
`
` Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`C.
`Petitioner provides the following designation of counsel.
`
`Lead Counsel
`W. Karl Renner, Reg. No. 41,265
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`Email: IPR00035-0009IP1@fr.com
`
`
`Backup counsel
`Roberto Devoto, Reg. No. 55,108
`Dan Smith, Reg. No. 71,278
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`Email: PTABInbound@fr.com
`
`
`
`Service Information
`
`D.
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR00035-0009IP1@fr.com
`
`(referencing No. 00035-0009IP1 and cc’ing PTABInbound@fr.com,
`
`renner@fr.com, devoto@fr.com, and dsmith@fr.com).
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`II.
`The Patent and Trademark Office is authorized to charge Deposit Account
`
`No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and any
`
`additional fees.
`
`2
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`III. GROUNDS FOR STANDING AND CHALLENGE UNDER 37
`C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’236 patent is available for IPR. The present
`
`petition is being filed within one year of service of a complaint against the
`
`Petitioner of infringement of the ’236 patent. Petitioner is not barred or estopped
`
`from requesting this review challenging the Challenged Claims on the below-
`
`identified grounds.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`Petitioner requests an IPR of the Challenged Claims on the grounds set forth
`
`in the table shown below, and that the Challenged Claims be found unpatentable.
`
`An explanation of how these claims are unpatentable under the statutory grounds is
`
`provided below, including claim construction as appropriate and an indication of
`
`where each element can be found in the cited prior art. Additional explanation and
`
`support for each ground is set forth in Exhibit 1003, the Declaration of Jonathan
`
`Wells (“Declaration”), referenced throughout this Petition.
`
`’236 Patent Claims
`Ground
`Ground 1 1-4, 6-10, 12-13
`
`Ground 2 5
`
`Basis for Rejection
`Obvious over Kitazoe and Applicant
`Admitted Prior Art (AAPA) of the ’236
`patent further in view of 3GPP TS-
`36.321 under 35 U.S.C. § 103
`Obvious over Kitazoe, AAPA of the
`’236 patent, and 3GPP TS-36.321
`
`3
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`
`Ground
`
`’236 Patent Claims
`
`Basis for Rejection
`further in view of Kitazoe-II under 35
`U.S.C. § 103
`
`
`
`The ’236 patent issued from U.S. Application No. 12/538,514, filed August
`
`10, 2009. The ’236 patent claims the benefit of U.S. Provisional Application No.
`
`61/087,988, filed August 11, 2008. The ’236 patent also claims priority to a
`
`Korean patent application numbered 10-2009-0057128, which was filed on June
`
`29, 2009. Accordingly, the earliest possible priority date for the ’236 patent is
`
`August 11, 2008 (hereinafter the “Critical Date”).1
`
`Ex. 1005 (“Kitazoe”) qualifies as prior art at least under 35 U.S.C § 102(e).
`
`Kitazoe was filed on June 10, 2008, more than one month before the Critical Date.
`
`Thus, by virtue of its actual filing date, Kitazoe is prior art to the ’236 patent under
`
`35 U.S.C. § 102(e).
`
`
`1 Petitioner does not acknowledge that the ’236 patent is entitled to its proclaimed
`
`priority date. Rather, Petitioner merely acknowledges the earliest proclaimed
`
`priority date of the ’236 patent by identifying it as the Critical Date with respect to
`
`the prior art analysis in the present Petition. Petitioner reserves the right to
`
`challenge the veracity of the ’236 patent’s priority claim in this or other
`
`proceedings involving the ’236 patent.
`
`4
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`In addition, Kitazoe claims the benefit of two provisional applications: U.S.
`
`Provisional No. 60/945,465 filed June 21, 2007; and U.S. Provisional No.
`
`60/955,867 filed August 14, 2007 (Ex. 1013, the “Kitazoe Provisional”). The
`
`Kitazoe Provisional was filed more than 11 months before the Critical Date of the
`
`’236 patent. As described below, because at least one claim of the Kitazoe patent
`
`is supported by disclosure in the Kitazoe Provisional, teachings common to the
`
`Kitazoe patent and Kitazoe Provisional are available as prior art as of the Kitazoe
`
`Provisional’s August 14, 2007 filing date. See Cisco v. Capella, Case IPR2014-
`
`01276, Paper 40, p. 22 note 9 (P.T.A.B. February 17, 2016) (Petitioner “need not
`
`show that every claim of” a prior art patent “is supported by the” corresponding
`
`provisional application “to demonstrate that subject matter disclosed in both . . . is
`
`entitled to the benefit of the filing date of the” provisional application) (“Cisco v.
`
`Capella”) (citing Dynamic Drinkware v. National Graphics, 800 F.3d 1375 (Fed.
`
`Cir. 2015) (“Dynamic Drinkware”)).
`
`For example, claim 1 of the Kitazoe patent recites the following:
`
`A method that facilitates employing a random
`access procedure
`in
`a wireless
`communication
`environment, comprising:
`transmitting a random access preamble to a base
`station;
`receiving a random access response from the base
`station based upon the random access preamble; and
`
`5
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`transmitting a scheduled transmission message,
`which includes an encrypted portion and an unencrypted
`portion, to the base station as granted by the random access
`response and before receiving a contention resolution
`message from the base station when employing contention
`based random access.
`Similarly, the Kitazoe Provisional describes a method for performing a
`
`“random access procedure” in which “unencrypted” and “encrypted” messages are
`
`concatenated by the UE into a single message sent during the random access
`
`procedure (i.e., message 3). See Kitazoe Provisional, p. 22. The following
`
`annotated figure from the Kitazoe Provisional shows this method:
`
`Kitazoe Provisional, Detail of FIG. A4, p. 22 (annotated)
`
`
`
`6
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`As shown at annotation [1] in the figure, the Kitazoe Provisional discloses
`
`that the user equipment (UE) “transmit[s] a random access preamble to a base
`
`station” as recited in claim 1 of the Kitazoe patent. See id. At annotation [2], the
`
`UE “receiv[es] a random access response from the base station based upon the
`
`random access preamble.” See id. At annotation [3], the UE transmits a message 3
`
`to the base station in response to the random access response. The message 3 is the
`
`“scheduled transmission message” recited in claim 1 of the Kitazoe patent. See id.
`
`at FIG. A-1, p. 20. The Kitazoe Provisional further teaches that the scheduled
`
`transmission message “includes an encrypted portion” (see annotation [4]) “and an
`
`unencrypted portion” (see annotation [5]) as recited in claim 1. The scheduled
`
`transmission message is transmitted before the contention resolution message (see
`
`annotation [6]) from the base station.
`
`Thus, for at least these reasons, claim 1 of Kitazoe is fully supported by the
`
`Kitazoe Provisional. Accordingly, teachings in Kitazoe that are also disclosed by
`
`the Kitazoe Provisional are available as prior art as of its August 14, 2007 filing
`
`date. See Cisco v. Capella, at 22 note 9 (citing Dynamic Drinkware at 1375).
`
`Such teachings are identified throughout the present Petition by parallel citations to
`
`the Kitazoe Provisional.
`
`In addition, other claims in Kitazoe are supported at least by the disclosure
`
`in the sections of the Kitazoe Provisional included in the table below. These
`
`7
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`identifications are merely exemplary, and the Kitazoe Provisional may include
`
`additional disclosure supporting claims of Kitazoe:
`
`Kitazoe Claims
`
`Exemplary Supporting Disclosure in
`Kitazoe Provisional
`
`pp. 20-22.
`2, 6, 10, 13, 24, 32, 38
`3, 4, 15, 17, 25, 27, 31, 34
`¶ 0030, p. 21.
`5, 18, 40
`Provisional claims 1-5.
`7, 16, 20, 26, 29, 35
`p. 21.
`8, 9, 11, 12, 19, 21, 28, 37, 39 p. 22.
`22, 30
`¶ 0030, p. 21, provisional claims 1-5.
`23, 33, 36, 41
`pp. 20-22, FIG. 2.
`pp. 20-22, ¶ 0035.
`42
`
`
`
`Accordingly, Kitazoe is entitled to the earlier priority date of the Kitazoe
`
`Provisional, and thus is prior art to the ’236 patent at least under 35 U.S.C. §
`
`102(e).
`
` Ex. 1007 (“3GPP TS-36.321”) qualifies as prior art at least under 35 U.S.C
`
`§ 102(a). The reference was made publicly available by the 3rd Generation
`
`Partnership Project (3GPP) on their website on March 20, 2008. See Ex. 1021, ¶¶
`
`3-9. 3GPP TS-36.321 was thus published more than four months before the
`
`Critical Date of the ’236 patent, and is therefore prior art at least under 35 U.S.C. §
`
`102(a).
`
`Ex. 1009 (“Kitazoe-II”) claims the benefit of U.S. Provisional No.
`
`8
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`61/015,159 (Ex. 1016, “Kitazoe-II Provisional”) filed December 19, 2007. As
`
`described below, because at least one claim of the Kitazoe-II patent is supported by
`
`disclosure in the Kitazoe-II Provisional, teachings common to the Kitazoe-II patent
`
`and Kitazoe Provisional are available as prior art as of the Kitazoe-II Provisional’s
`
`December 19, 2007 filing date. See Cisco v. Capella, Case IPR2014-01276, Paper
`
`40, p. 22 note 9 (P.T.A.B. February 17, 2016) (citing Dynamic Drinkware v.
`
`National Graphics, 800 F.3d 1375 (Fed. Cir. 2015)).
`
`For example, claim 1 of the Kitazoe-II patent recites the following:
`
`A method for wireless communication, comprising:
`sending a message on a control channel for random
`access by a user equipment (UE);
`sending a reserved channel identifier to indicate the
`message being sent on the control channel; and
`sending the message and the reserved channel
`identifier on an uplink shared channel carrying the control
`channel.
`Similarly, the Kitazoe-II Provisional describes a method used in “wireless
`
`communication networks” including a UE sending a “message 3” to a base station
`
`during a random access procedure on a “common control channel (CCCH)” (i.e., a
`
`control channel for random access as recited in the claim). See Kitazoe-II
`
`Provisional, p. 39. The Kitazoe-II Provisional discloses sending a “reserved MAC
`
`LCID” (i.e., a reserved channel identifier) to indicate the message being sent. See
`
`9
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`id. at 40. The reserved MAC LCID is “multiplexed onto” a MAC PDU containing
`
`the message 3, and both are sent on a “random access channel (RACH),” which is
`
`an uplink shared channel carrying the CCCH (the control channel). See id. at 39.
`
`Thus, for at least these reasons, claim 1 of Kitazoe-II is fully supported by
`
`the Kitazoe-II Provisional. Accordingly, teachings in Kitazoe-II that are also
`
`disclosed by the Kitazoe-II Provisional are available as prior art as of its December
`
`19, 2007 filing date. See Cisco v. Capella, Case IPR2014-01276, Paper 40, p. 22
`
`note 9 (P.T.A.B. February 17, 2016) (citing Dynamic Drinkware v. National
`
`Graphics, 800 F.3d 1375 (Fed. Cir. 2015)). Such teachings are identified
`
`throughout the present Petition by parallel citations to the Kitazoe-II Provisional.
`
`In addition, other claims in Kitazoe-II are supported at least by the
`
`disclosure in the sections of the Kitazoe-II Provisional included in the table below.
`
`These identifications are merely exemplary, and the Kitazoe-II Provisional may
`
`include additional disclosure supporting claims of Kitazoe-II:
`
`Exemplary Supporting Disclosure in
`Kitazoe-II Provisional
`
`Kitazoe-II
`Claims
`1-2, 23, 33, 34
`3
`4-5, 35
`6, 10
`7-9, 12, 26, 36
`11
`13-15, 24, 37
`
`pp. 39-40.
`p. 39.
`p. 40.
`pp. 40-41.
`p. 41.
`pp. 40-42.
`pp. 42-43.
`
`10
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`
`Exemplary Supporting Disclosure in
`Kitazoe-II Provisional
`
`pp. 39, 42-43.
`p. 44.
`p. 43, provisional claim 1.
`p. 43.
`pp. 39-40, ¶ 0035, FIG. 2.
`p. 40, ¶ 0035, FIG. 2.
`pp. 42-43, ¶ 0035, FIG. 2.
`p. 44, ¶ 0035, FIG. 2.
`pp. 39-40, ¶¶ 0035-0036.
`
`Kitazoe-II
`Claims
`
`16
`17-19, 25, 38
`20, 21
`22
`27, 28
`29, 30
`31
`32
`39
`
`
`
`Accordingly, Kitazoe-II is entitled to the earlier priority date of the Kitazoe-
`
`II Provisional, and thus is prior art to the ’236 patent at least under 35 U.S.C. §
`
`102(e).
`
`IV. THE ’236 PATENT
`A. Brief Description of the ’236 Patent
`The ’236 patent describes “a data transmission method and a user equipment
`
`for the same” related to a “random access procedure” between a user equipment
`
`(UE) and a base station. ’236 patent, 3:42-59, 4:42-43. The patent describes that
`
`“a UE performs the random access procedure,” for example, “when the UE
`
`performs initial access” to a base station, or “when there is uplink data
`
`transmission in a situation where uplink time synchronization is not aligned or
`
`where a specific radio resource used for requesting radio resources is not
`
`11
`
`

`
`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`allocated[.]” Id. at 3:42-57. FIG. 5 from the ’236 patent shows an example
`
`random access procedure performed between a UE and an eNB (a base station):
`
`’236 patent, Detail of FIG. 5 (annotated)
`
`The ’236 patent describes that a random access procedure begins with the
`
`UE “transmitting a random access preamble to the” base station (referred to as
`
`“message 1”). Id. at 4:4-7. The UE then “receiv[es] a random access response”
`
`(referred to as “message 2”) from the base station “in correspondence with the
`
`transmitted random access preamble.” Id. at 4:7-9. The UE then “transmit[s] an
`
`uplink message” (referred to as “message 3”) to the base station “using the
`
`information received by the random access response message.” Id. at 4:11-12.
`
`The UE then “receiv[es] a message” (referred to as “message 4” or a “contention
`
`resolution” message) “corresponding to the uplink message from the” base station.
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`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
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`Id. at 4:14-16.
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`The ’236 patent describes that messages from the base station, such as the
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`random access response (message 2) and the contention resolution message
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`(message 4), can include “uplink (UL) grant signals” that “indicate[] information
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`about uplink radio resources which may be used when the UE transmits a signal to
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`the” base station. Id. at 4:22-24.
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`B. Applicant Admitted Prior Art (AAPA) of the ’236 Patent
`The specification of the ’236 patent includes a detailed description of a
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`random access procedure in an LTE system in a section entitled “Discussion of the
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`Related Art.” See ’236 patent, 1:20-4:34. The statements in this section, which
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`also refer to “the current LTE system standard” when describing features of an
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`LTE random access procedure, constitute Applicant Admitted Prior Art. See id. at
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`4:26.
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` The Federal Circuit has repeatedly held that “[a]dmissions in the
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`specification regarding the prior art are binding on the patentee for purposes of a
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`later inquiry into obviousness.” Pharmastem Therapeutics v. Viacell, 491 F.3d
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`1342, 1362 (Fed. Cir. 2007) (citing Constant v. Advanced Micro-Devices, Inc., 848
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`F.2d 1560, 1570 (Fed.Cir.1988) (“A statement in the patent that something is in the
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`prior art is binding on the applicant and patentee for determinations of anticipation
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`and obviousness.”)); Sjolund v. Musland, 847 F.2d 1573, 1577-79 (Fed.Cir.1988)
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`(patent specification admitted that certain matter was prior art, and thus “the jury
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`was not free to disregard [that matter]” and “must have accepted [it] as prior art, as
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`a matter of law”). The Board has also repeatedly held that “admission[s] of the
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`scope and content of the prior art” in a patent’s specification are available as prior
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`art for the purposes of inter partes review proceedings. Ericsson v. Intellectual
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`Ventures, Case No. IPR2014‐01330, Paper 29 at 2, note 3 (P.T.A.B. February 19,
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`2016); see also Apple v. Yozmot 33, Case No. IPR2015-00761, Paper 5 at 11
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`(P.T.A.B. July 29, 2015) (Board considered statements in a patent’s background
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`section admitted prior art) (“Yozmot 33”); Intri-Plex Tech. v. Saint–Gobain
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`Performance Plastics, Case No. IPR2014–00309, Paper 83 at (P.T.A.B. March 23,
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`2014). In Ex parte Ji-Young Lee, the Board found that “where terms such as
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`‘background art,’ or ‘related art,’ or ‘conventional’” appear in a patent’s
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`specification, they should be “presume[d]” to denote admissions of prior art even if
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`the specification does not specifically use the term “prior art.” Ex parte Ji-Young
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`Lee, Case No. 2006-2328 p. 41, 2006 WL 4075454, at *20 (B.P.A.I. Feb. 23, 2007)
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`(non-precedential).
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`The statements regarding the LTE random access procedure in the ’236
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`patent’s “Discussion of the Related Art” section are “admission[s] of the scope and
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`content of the prior art,” and thus constitute Applicant Admitted Prior Art. The
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`section’s title (“Discussion of the Related Art”) alone indicates that the section is
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`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`describing prior art related to the disclosure of the ’236 patent. See Ex parte Ji-
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`Young Lee at 41. In a similar situation, in the Apple v. Yozmot 33 case, the Board
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`considered statements in a patent to be AAPA merely because they occurred in a
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`“Background” section of the patent, even though the statements did not specifically
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`refer to the disclosures as “prior art.” See Yozmot 33 at 11. Accordingly, the
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`inclusion of the statements regarding the LTE random access procedure in a
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`section of the ’236 patent purporting to described “related art” is sufficient to
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`render those statement AAPA.
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`In addition, the section describes the current state of LTE systems as of the
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`filing of the ’236 patent, and thus those statements function as admissions of
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`features that existed in LTE systems before the patent was filed. For example, the
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`patent states that the operations of “a 3rd Generation Partnership Project Long
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`Term Evolution (3GPP LTE) communication system” have “been currently
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`standardized in the 3GPP.” The ’236 patent also describes the operations of an
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`LTE system with reference to “the current LTE system standard,” thereby
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`indicating that the LTE system standard pre-dated the patent.
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`Accordingly, the statements in the “Discussion of the Related Art” section of
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`the ’236 patent are Applicant Admitted Prior Art. A detailed explanation of these
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`statements appears in Section V.B, infra.
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`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
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`15
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`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`A claim subject to IPR is given its “broadest reasonable construction in light
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`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). For
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`this proceeding only, 2 Petitioner submits the arguments below regarding claim
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`2 Any interpretations of the Challenged Claims by Petitioner are for the sole
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`purpose of determining whether the prior art anticipates or renders obvious the
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`Challenged Claims in these proceedings. Petitioner does not concede that any
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`Challenged Claim meets statutory standards for patent claiming, and neither
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`Petitioner’s interpretations of the Challenged Claims, nor Petitioner’s analysis of
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`the Challenged Claims relative to the cited art should be treated as such a
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`concession. Petitioner recognizes that IPR is not an appropriate forum to address
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`certain issues, such as the patentability of the claimed invention under 35 U.S.C. §
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`101 or the failure to comply with 35 U.S.C. § 112, and, therefore reserves all rights
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`to contend that one or more Challenged Claims are invalid for reasons out of scope
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`for IPR, including but not limited to the failure to claim patentable subject matter
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`under 35 U.S.C. § 101, and lack of definiteness or lack of written description under
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`35 U.S.C. § 112. The failure to claim patentable subject matter under 35 U.S.C. §
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`101 or the presence of definiteness and description problems in the Challenged
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`Claims is no bar to IPR in appropriate circumstances; the Board may set aside such
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`issues when reviewing claims under 35 U.S.C. §§ 102 and 103. E.g., Vibrant
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`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`construction. For terms not addressed below, Petitioner submits that no specific
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`construction is necessary.3
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`1.
`The specification of the ’236 patent describes purported solutions to
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`Claim scope of the ’236 patent
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`problems related to transmitting message 3 data “in correspondence with the
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`reception of all UL Grant signals.” ’236 patent, 4:30-34. Specifically, the
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`specification states that “information [] to be transmitted through message 3”
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`between the user equipment and base station “may be lost” in some situations if the
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`user equipment transmits message 3 data using “an Uplink (UL) Grant signal
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`received on a message other than a random access response message.” Id. at
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`Media, Inc. v. Gen’l Elec. Co., IPR2013-00172, 2014 WL 3749773, at *6–7
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`(P.T.A.B. July 28, 2014).
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`3 Because the standards of claim interpretation applied in litigation differ from
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`PTO proceedings, any interpretation of claim terms in this IPR is not binding upon
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`Petitioner in any litigation related to the subject patent. See In re Zletz, 13 USPQ2d
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`1320, 1322 (Fed. Cir. 1989) (“In re Zletz”). Further, due to the different claim
`
`construction standards, Petitioner identifying any feature in the cited references as
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`teaching a claim element is not an admission that the claim element is met by any
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`feature for infringement purposes.
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`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`12:27-29, 13:17-18. The specification describes a purported solution to this
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`problem in which the UE “transmits the data stored in the Msg3 buffer only when
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`there is data in the Msg3 buffer when receiving the UL Grant signal and the UL
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`Grant signal is received on the random access response message[.]” Id. at 14:4-7
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`(emphasis added). The elements of the Challenged Claims of the ’236 patent,
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`however, are not limited to these purported solutions to this problem described in
`
`the specification, and use broader language than that used in the specification to
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`describe some features. For example, claim 1 recites a similar feature to the
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`purported solution above from the specification, but uses the broader term “if” as
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`opposed to the more narrow term “only when” from specification. Compare id. at
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`claim 1 to 14:4-7. Any attempt by the Patent Owner to advance that elements of
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`the Challenged Claims should be interpreted narrowly to coincide with the
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`solutions described in the specification should be rejected, as the claims should not
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`be narrowed by fiat, particularly in proceedings before the PTAB.
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`The Federal Circuit has stated that importing limitations from a patent’s
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`specification into its claims is “one of the cardinal sins of patent law.” Phillips v.
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`AWH Corp., 415 F. 3d 1303, 1320 (Fed. Cir. 2005); see also Flo Healthcare
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`Solutions, LLC v. Kappos, 697 F. 3d 1367, 1376 (Fed. Cir. 2012) (under the
`
`broadest reasonable interpretation standard, “it is not proper to import from the
`
`patent's written description limitations that are not found in the claims
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`Attorney Docket No. 00035-0009IP1
`IPR of U.S. Patent No. 7,881,236
`themselves.”); Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875
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`(Fed. Cir. 2004); Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906 (Fed.
`
`Cir. 2004); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
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`2003); Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003). Even
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`where a patent “describes only a single embodiment,” it is improper to limit the
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`scope of the claims to that embodiment if the claims recite broader language.
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`Phillips., 415 F.3d at 1323. Under the broadest reasonable interpretation standard,
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`it is especially important to avoid reading limitations into the claims in order to
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`allow the Patent Owner the op