Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 32
`Entered: March 26, 2018
`
`
`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
`____________
`
`
`
`Before WILLAM V. SAINDON, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 32
`Entered: March 26, 2018
`
`
`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
`____________
`
`
`
`Before WILLAM V. SAINDON, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2016-01229
`Patent 7,881,236 B2
`
`
`Patent Owner requests rehearing of our Final Written Decision
`holding claims 1–10, 12, and 13 of U.S. Patent No. 7,881,236 (“the ’236
`patent”) unpatentable. Paper 28 (“Req. Reh’g”). Pursuant to our
`authorization, Petitioner filed an Opposition (Paper 30) and Patent Owner
`filed a Reply (Paper 31). By email correspondence, we denied Petitioner’s
`requests either to expunge Patent Owner’s Reply from the record as
`advancing new arguments or to authorize Petitioner to file a sur-reply.
`For the reasons set forth below, Patent Owner’s Request for
`Rehearing is denied.
`
`
`I. BACKGROUND
`“The burden of showing a decision should be modified lies with the
`party challenging the decision.” 37 C.F.R. § 42.71(d). When requesting
`rehearing of a decision, the party must identify specifically all matters the
`party believes the Board misapprehended or overlooked, and the place where
`each matter was previously addressed in the record. Id.
`Patent Owner’s Request for Rehearing focuses on the “transmitting”
`limitations of independent method claim 1 and the corresponding limitations
`of independent apparatus claim 7. The “transmitting” limitations of claim 1
`recite:
`
`transmitting the data stored in the Msg3 buffer to the base
`station using the UL Grant signal received on the specific
`message, if there is data stored in the Msg3 buffer when receiving
`the UL Grant signal on the specific message and the specific
`message is the random access response message; and
`transmitting new data to the base station in correspondenc
`with the UL Grant signal received on the specific message, if
`there is no data stored in the Msg3 buffer when receiving the UL
`
`2
`
`
`
`IPR2016-01229
`Patent 7,881,236 B2
`
`
`Grant signal on the specific message or the specific message is
`not the random access response message.
`
`Ex. 1001, col. 16, l. 59–col. 17, l. 3 (emphases added). In the Final Written
`Decision, we agreed with Patent Owner that, under the broadest reasonable
`interpretation, the recitation of “if” in these limitations introduces necessary
`conditions rather than sufficient conditions. Paper 27 (“Dec.”), 12–17. That
`is, the operation of the two “transmitting” limitations can be described as
`follows:
`Those limitations implicate two conditions, resulting in different
`data being transmitted depending on whether both conditions are
`satisfied or not. The first condition is whether “there is data
`stored in the Msg3 buffer when receiving the UL Grant signal on
`the specific message,” and the second condition is whether “the
`specific message is the random access response message.” . . .
`“If” both conditions are satisfied, the “data stored in the Msg3
`buffer” are transmitted to the base station; and “if” either
`condition is not satisfied, “new data” are transmitted to the base
`station.
`
`Id. at 12 (citations omitted). This construction is frequently referred to by
`the parties as the “only when” construction.
`Although Petitioner advocated for a broader construction in which the
`recitation of “if” more broadly introduces sufficient conditions, the Petition
`also addressed the construction we adopted. Paper 2, 40–41; see Dec. 33
`(noting Petitioner’s alternative argument). In addition to the documentary
`prior art cited by the Petition, Petitioner also relied on a Declaration by
`Jonathan Wells, Ph.D., which we accorded evidentiary weight. Ex. 1003;
`see Dec. 32–34. In contrast, we did not accord weight to a Declaration by
`Todor Cooklev, Ph.D., proffered by Patent Owner, because that declaration
`
`3
`
`
`
`IPR2016-01229
`Patent 7,881,236 B2
`
`was unsworn and therefore defective.1 Ex. 2011; Dec. 10–11. Petitioner’s
`evidence cannot be rebutted by Patent Owner’s unsworn attorney argument.
`See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir.
`2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut
`. . . evidence.”). Thus, the weight of the evidence greatly favored Petitioner.
`Weighing that evidence—even adopting the construction of the
`“transmitting” limitations advocated by Patent Owner—we concluded that
`Petitioner demonstrated sufficiently that both “transmitting” limitations are
`disclosed by Kitazoe. Dec. 33–35. Ultimately, we concluded that Petitioner
`demonstrated, by a preponderance of the evidence, that both independent
`claims 1 and 7 are unpatentable over the combination of art considered, and
`that the claims that depend therefrom are also unpatentable. Id. at 42.
`In its Request for Rehearing, Patent Owner contends that “[t]he Board
`should reconsider its Final Written Decision . . . for two independent
`reasons.” Req. Reh’g 1. First, Patent Owner contends that we “overlooked
`the Patent Owner’s argument about why the additional UL Grant it discussed
`in the Response is not a ‘contrived hypothetical’ but is instead grounded in
`the ’236 patent’s specification.” Id. Second, “and more importantly,” Patent
`Owner contends that we overlooked an argument advanced by Patent Owner
`in its response that the prior art relied on by Petitioner “does not create the
`conditions that test” the adopted construction. Id.
`
`
`
`1 In the Final Written Decision, we noted that, despite having notice of the
`defect with the Cooklev Declaration, Patent Owner took no affirmative steps
`to cure the defect. Dec. 11. Patent Owner did not request leave to cure the
`defect in the Cooklev Declaration with its Request for Rehearing or
`otherwise.
`
`4
`
`
`
`IPR2016-01229
`Patent 7,881,236 B2
`
`
`II. ANALYSIS
`Both of Patent Owner’s contentions are grounded in its position that
`that Kitazoe did not consider conditions that could test whether the Msg3
`buffer data are transmitted if the conditions recited in the claims are not
`met.2 Req. Reh’g 6. That is, Patent Owner does not dispute in its Request
`for Rehearing that transmission occurs when the conditions are met. Id.; see
`also Paper 14, 40 (“Patent Owner does not dispute that [Kitazoe] shows
`transmission of the Msg3 buffer data . . . taking place after receipt of a
`random access response.”). Instead, Patent Owner bases its request on an
`argument that Kitazoe insufficiently addresses the circumstance of what
`behavior results when the conditions are not met.
`In addressing the “transmitting” limitations, the Final Written
`Decision considered and addressed this circumstance, i.e. “when at least one
`of the recited conditions is not met.” Dec. 34. In addressing that
`circumstance, we cited disclosure by Kitazoe identified by Petitioner that
`“teach that the encrypted scheduled transmission message, i.e., the ‘new
`data,’ is transmitted only after the random access procedure is complete.”
`Id. at 34–35.
`In its Request for Rehearing, Patent Owner reiterates its argument that
`“Kitazoe ‘takes a narrow view of what can occur during a random access
`procedure.’” Req. Reh’g 9 (quoting Paper 14, 41). Instead, as it did in its
`Response, Patent Owner “illustrate[s] a more complex case of UL Grant
`
`
`2 There appears to be an important omission of the word “not” in the
`following sentence of the Request for Rehearing: “And fatal to Petitioner’s
`argument, the one place they looked—Kitazoe—admittedly did not consider
`conditions that could test the [sic] whether the Msg3 buffer data is
`transmitted if Condition X is [not] met.” Req. Reh’g 6.
`
`5
`
`
`
`IPR2016-01229
`Patent 7,881,236 B2
`
`reception.” Id. But we expressly considered this “more complex case”—for
`which Patent Owner relies on unsworn attorney argument and the unsworn
`Cooklev Declaration—in light of the cross-examined testimony of Dr.
`Wells. Dec. 34–35. As summarized in the Final Written Decision, Dr.
`Wells testified that Patent Owner’s “more complex case” is a “contrived
`hypothetical” that does not “relate[] to what is described in Kitazoe.” Id. at
`35 (quoting Ex. 2010, 60:21–22, 61:6–8). That such a case may have been
`discussed in the Specification of the ’236 patent is not relevant to what a
`person of ordinary skill in the art would understand from Kitazoe’s
`teachings. See Req. Reh’g 11–12.
`Although we have reconsidered Patent Owner’s reiterated argument,
`we do not now reach a different conclusion. Patent Owner effectively
`attempts to intensify Petitioner’s burden by casting the already narrower
`construction of “if” adopted by the Final Written Decision as encompassing
`a negative limitation. Req. Reh’g 5–6. That is, Patent Owner contends that
`Petitioner could only make a sufficient showing by exhaustively
`demonstrating that no prior art performs the respective “transmitting” steps
`when the conditions are not met. Id. at 6 (“Petitioners didn’t look
`everywhere.”). This argument demands too much by relying on hypothetical
`scenarios not addressed by the reference itself, with the attorney argument
`by Patent Owner supported only by the defective Declaration of its witness.
`As in the Final Written Decision, we continue to accord weight to the
`contrary testimony of Dr. Wells, while not according weight to the testimony
`of Dr. Cooklev.
`
`6
`
`
`
`IPR2016-01229
`Patent 7,881,236 B2
`
`
`For these reasons, we are not persuaded that the Final Written
`Decision misapprehended or overlooked any argument by Patent Owner that
`would justify a change in that Decision.
`
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`7
`
`
`
`IPR2016-01229
`Patent 7,881,236 B2
`
`PETITIONER
`Walter Renner
`Roberto Devoto
`Daniel Smith
`FISH & RICHARDSON P.C.
`IPR00035-0009IP2@fr.com
`PTABInbound@fr.com
`PATENT OWNER
`Cyrus Morton
`Ryan Schultz
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`
`
`
`
`8
`
`
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