IPR2016-01229
`Patent 7,881,236 B2
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., MICROSOFT CORPORATION,
`MICROSOFT MOBILE OY, and
`MICROSOFT MOBILE INC. (F/K/A/ NOKIA INC.),
`Petitioner,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01229
`Patent 7,881,236 B2
`
`
`____________
`
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS REQUEST FOR
`
`REHEARING PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`Patent 7,881,236 B2
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., MICROSOFT CORPORATION,
`MICROSOFT MOBILE OY, and
`MICROSOFT MOBILE INC. (F/K/A/ NOKIA INC.),
`Petitioner,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01229
`Patent 7,881,236 B2
`
`
`____________
`
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS REQUEST FOR
`
`REHEARING PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`Table of Contents
`
`IPR2016-01229
`Patent 7,881,236 B2
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`Page
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`I. The Board both overlooked and misapprehended arguments about
`Kitazoe cannot show the only when behavior ................................................. 1
`II. Kitazoe’s Disclosure Regarding Transmitting Message 3 Does Not
`Disclose Transmitting Stored Msg 3 Buffer Data “Only When” the
`Claimed Conditions are True. .......................................................................... 2
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`IPR2016-01229
`Patent 7,881,236 B2
`I. The Board both overlooked and misapprehended arguments about
`Kitazoe cannot show the only when behavior
`Petitioners ask the Board to continue to overlook and misapprehend Patent
`
`Owner’s argument that Petitioners had the burden to show that when Kitazoe had
`
`stored Msg3 buffer data and received a UL Grant on the PDCCH, it did not
`
`transmit the stored Msg3 buffer data. Indeed, Petitioners assert that the Board
`
`considered this argument when it relied upon disclosures in Kitazoe that message 3
`
`is only transmitted when a random access response is received. Opp. at 2-9. That
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`is not Patent Owner’s argument, much less the claim limitation.
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`As Patent Owner argued in its Response, under the properly adopted
`
`construction of “if” in limitations 1(e) and 7(e) of the challenged claims,
`
`Petitioners were required to show that in all circumstances Kitazoe allegedly
`
`disclosed that stored Msg 3 buffer data would be sent “only when” the claim
`
`limitations were true. Res. at 38-42. Importantly, the challenged claims do not
`
`claim merely transmitting message 3. Rather, they claim what data should be
`
`transmitted in certain situations, either stored Msg3 buffer data or new data. Ex.
`
`1001 at 16:50-18:54.
`
`Petitioners’ entire opposition rests on the premise that the Board considered
`
`and rejected Patent Owner’s argument because Kitazoe explicitly defined message
`
`3 to only be sent in response to a random access response. Opp. at 2. That premise
`
`is irrelevant because the challenged claims do not claim sending of message 3.
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`IPR2016-01229
`Patent 7,881,236 B2
`Rather, as argued by Patent Owner, the claims are directed transmitting certain
`
`data, stored Msg3 buffer data or new data, in certain situations. Res. 38-42. Thus,
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`Petitioners’ premise is wrong. Petitioners’ reliance on an incorrect premise
`
`demonstrates that: one, the Board overlooked and/or misapprehended Patent
`
`Owner’s argument; and two, the only conclusion that can be reached upon
`
`consideration of the argument is to find the challenged claims patentable.
`
`II. Kitazoe’s Disclosure Regarding Transmitting Message 3 Does Not
`Disclose Transmitting Stored Msg 3 Buffer Data “Only When” the
`Claimed Conditions are True.
`The Board misapprehended Patent Owner’s argument by focusing on
`
`Kitazoe’s definition of message 3. As Patent Owner argued, Petitioners were
`
`required to show that the Kitazoe disclosed that in all circumstances the stored
`
`Msg 3 buffer data would be transmitted only when the two claimed limitations
`
`were true. Res. at 38. The definition of message 3 in Kitazoe offers no disclosure
`
`as to what data is included in the message 3, much less that stored Msg 3 buffer
`
`data will be sent only when the two claimed limitations are true. FWD at 32; Ex.
`
`1005 at 8:32-35. This disclosure cited by Petitioners and relied upon by the Board
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`only discloses that message 3 is sent in response to a random access response.
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`That simply is not the claim limitation at issue here.
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`In other words, the definition of Kitazoe offers no disclosure that stored Msg
`
`3 buffer data will be sent in its message 3 or that new data would be sent in the
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`IPR2016-01229
`Patent 7,881,236 B2
`message 3. There simply is no link that the message 3 in Kitazoe only includes
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`stored Msg 3 buffer data. While Petitioners are notably silent on this key issue in
`
`their opposition brief and Petition, such proposed linkage would not address
`
`whether the message 3 in Kitazoe could ever include new data when there was no
`
`stored Msg 3 buffer data as required by the claims under the Board’s construction.
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`Moreover, Kitazoe’s definition of message 3 does not preclude sending
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`stored Msg 3 buffer data in response to an UL Grant received on the PDCCH as
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`argued by Patent Owner. Nowhere in Kitazoe, or in the Petition, does Kitazoe
`
`disclose it would not transmit a message with the stored Msg 3 buffer data when
`
`the device receives the UL Grant on the PDCCH in Patent Owner’s hypothetical as
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`shown below in 404’:
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`Res. at 40.
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`IPR2016-01229
`Patent 7,881,236 B2
`Again, the claims do not claim that the transmission must only be done in
`
`message 3. Moreover, while message 3 may be a message that includes the
`
`claimed data, stored Msg 3 buffer data or new data, there is no evidence that
`
`Kitazoe’s message 3 is the only message that could be transmitted with the claimed
`
`data, such as stored Msg 3 buffer data. Petitioners offer no evidence to support
`
`such assertion. Kitazoe, as argued by Petitioners, merely limits that message 3 is
`
`sent in response to a random access response without disclosing anything about
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`what data is included in message 3. Opp. at 7. As such, Kitazoe does not preclude
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`the transmission of other messages that may include the stored Msg 3 buffer data
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`when an UL Grant is received on the PDCCH. In other words, it is possible for
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`Kitazoe to transmit stored Msg3 buffer data in response to receiving an UL Grant
`
`on the PDCCH. Thus, Kitazoe does not disclose this limitation under the Board’s
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`construction of transmitting stored Msg 3 buffer data “only when” the two claim
`
`limitations are true.
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`The Board misapprehended Patent Owner’s argument by relying solely on
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`the definition of message 3 provided in Kitazoe. Petitioners encourage the Board
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`to continue to misapprehend the argument by only citing the Kitazoe definition in
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`response to Patent Owner’s argument. The Board should not accept this invitation.
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`When Patent Owner’s argument is considered and properly understood, it
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`IPR2016-01229
`Patent 7,881,236 B2
`demonstrates that Petitioners have not met their burden to show the claims are
`
`unpatentable.
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`
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`
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`Dated: January 26, 2018
`
`
`
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`
`
`Respectfully submitted,
`
`/Ryan M. Schultz/
`Registration No. 65,134
`Attorney for Patent Owner
`
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`IPR2016-01229
`Patent 7,881,236 B2
`
`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this January 26, 2018, a copy of PATENT
`
`OWNER’S REPLY IN SUPPORT OF ITS REQUEST FOR REHEARING has
`
`been served in its entirety by electronic mail to the petitioners:
`
`W. Karl Renner
`renner@fr.com
`Roberto J. Devoto
`devoto@fr.com
`Dan Smith
`dsmith@fr.com
`FISH & RICHARDSON P.C.
`IPR00035-00091P2@fr.com
`PTABInbound@fr.com
`
`Dated: January 26, 2018
`
`
`
`
`
`
`
`
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`88700710.1
`
`Respectfully submitted,
`
`
`/Ryan M. Schultz/
`
`Registration No. 65,134
`Attorney for Patent Owner
`
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