`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC., MICROSOFT COROPORATION, 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 RESPONSE TO PETITIONERS’ PETITION FOR
`INTER PARTES REVIEW OF UNITED STATES PATENT NO. 7,881,236
`
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`IPR2016-01229
`Patent 7,881,236 B2
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`V.
`
`C.
`D.
`
`E.
`
`TABLE OF CONTENTS
`I.
`Introduction ...................................................................................................... 1
`The State of the art ........................................................................................... 2
`II.
`III. The problem the inventors solved ................................................................... 5
`IV. The claims ........................................................................................................ 7
`A.
`Independent claim 1 .............................................................................. 7
`B.
`Independent claim 7 .............................................................................. 9
`Claim Construction ........................................................................................ 10
`A.
`Introduction ......................................................................................... 10
`B.
`A person of ordinary skill would read the claims as transmitting
`Msg3 data “only if” the condition in 1(e) is satisfied ......................... 15
`Petitioners’ proposed construction is inoperative ............................... 18
`The principle of expressio unius supports Patent Owner’s “only
`if” construction .................................................................................... 21
`The USPTO’s examination of a child patent of the ’236 patent
`confirms that the proper construction is the “only if” one .................. 25
`Petitioners’ various claim construction arguments fail ....................... 28
`F.
`Claim 7 must be construed consistent with claim 1 ............................ 30
`G.
`VI. Niu is not analogous prior art, and even if it were it does not teach the
`“determining whether there is data stored in a message 3 buffer”
`limitation ........................................................................................................ 32
`A. Niu is not analogous art ....................................................................... 33
`B.
`Petitioners misquote Niu, obscuring their failure to show that
`Niu meets the “determining” limitation .............................................. 36
`There is no motivation to combine Niu’s wired system with the
`’236 Patent’s wired system ................................................................. 38
`VII. The Kitazoe reference is unavailing under the correct claim
`construction because Petitioners extract teachings from Kitazoe that it
`does not contain ............................................................................................. 39
`VIII. Ground 2 fails because it depends on the incorrect analysis found in
`Ground 1 ........................................................................................................ 45
`
`C.
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`IPR2016-01229
`Patent 7,881,236 B2
`Patent 7,881,236 B2
`IX. Conclusion ..................................................................................................... 45
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`IPR2016-01229
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`IX.
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`Conclusion ................................................................................................... ..45
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`IPR2016-01229
`Patent 7,881,236 B2
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`
`
`Patent Owner Evolved Wireless, LLC submits this Response to the above-
`captioned Petition for Inter Partes Review of U.S. Patent No. 7,811,236 (“Pet.,”
`Paper 2).
`Introduction
`I.
`The challenged claims of the ’236 patent are valid. Regardless of the claim
`construction the Board adopts, the Petition’s Niu reference, Exhibit 1012, is not
`analogous prior art. This reference underlies both Grounds, and therefore all
`Grounds fail.
`Moreover, the Board instituted trial in this matter using a claim construction
`at odds with the understanding a person of ordinary skill (“POSA”). Expert
`testimony confirms that the claims at issue are drafted in what a POSA would call
`a “if condition then action1 else action2” formulation. The testimony further
`establishes that the construction for such language forbids carrying out action2
`when the stated condition calls for action1 to be occur. The Board’s initial
`construction, therefore, is too broad. Further underscoring POSA’s proper reading
`of the claims is the expressio unius principle, which, as discussed in more detail
`below, was recently confirmed, post-Institution, by the Office’s grant of a
`continuation patent of the ’236 patent.
`In view of the proper “only if”/ “only when” construction, Petitioner has
`reached unfounded conclusions regarding the disclosure of Petitioners’ primary
`reference (Kitazoe reference, Exhibit 1005). While Kitazoe’s teachings are not
`inconsistent with Petitioners’ argument, an analysis of the problem the ’236 patent
`
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`Patent 7,881,236 B2
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`inventors addressed demonstrates that Petitioners’ conclusions about Kitazoe are
`unsupported.
`Accordingly, pursuant to the proper claim construction, the Petition should be
`rejected and no challenged claims should be cancelled.
`
`II. The State of the art
`
`The ’236 patent is titled, “Data Transmission Method and User Equipment for
`the Same” and generally describes a method “for efficiently transmitting data
`stored in a message 3 (Msg3) buffer and a user equipment” in a mobile
`communication system such as a Long Term Evolution (“LTE”) system developed
`and standardized in the 3rd Generation Partnership Project (“3GPP”). Ex. 1001,
`Abstract, (54), 1:17-32.
`Figure 1 below is an annotated version of the ’236 patent’s Fig. 5. Fig. 5
`illustrates communication between a UE (e.g., a mobile telephone) and a base
`station (e.g., a cell phone tower). Cooklev at ¶ 35-37.1 In particular, Fig. 5
`illustrates a “random access procedure” between a UE and a base station used, for
`example, to enable the UE to obtain initial access to the base station. Ex. 1001 at
`3:45-49. Fig. 5 (the basis for the annotated in Figures 1-3 herein) illustrates a
`contention-based random access procedure. Id. at 6:53-55. In Figures 1-3 below,
`time increases along the downwards direction.
`
`
`1 “Cooklev” refers to the Declaration of Dr. Todor Cooklev, Ex. 2011.
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`
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`Figure 1
`As the ’236 patent describes, there are (at least in a simple case) four
`messages sent between the UE and the base station. They are identified in the
`following table:
`
`
`Direction
`Synonym(s)
`Message
`UE to base station
`Message 1
`Random access preamble
`Base station to UE
`Message 2
`Random access response
`Message 3 (Msg3) UE to base station
`Scheduled transmission
`Contention resolution message Message 4
`Base station to UE
`Id. at 4:3-17; Fig. 5; 8:38-9:48.
`Figure 2 below is a further annotated version of the ’236 patent’s Fig. 5. This
`figure shows, in green, that the base station sends uplink grants (“UL Grants”) to
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`the UE. UL Grants allocate resources (including time slots and frequencies) to the
`UE for its use. See Ex. 1001 at 8:12-16; Wells Tr. at 9:19-10:7.2
`
`
`
`
`Figure 2
`
`
`Figure 2 also illustrates that UL Grants come in two types. One type is an UL
`Grant received on a Random Access Response message. Ex. 1001 at 4:22-26;
`Cooklev at ¶ 65-66; see Wells Tr. at 13:6-16. The second type is an UL Grant on a
`PDCCH DCI format 0, or, for short, “a PDCCH uplink grant.” Ex. 1001 at 5:9-13;
`Cooklev at 65, 80. An UL Grant received on a Random Access Response message
`is used, for example, to allocate resources for a UE to use to send a Buffer Status
`
`2 “Wells Tr.” refers to the deposition transcript of Petitioners’ expert, Dr. Jonathan
`
`Wells, taken April 20, 2017 in Washington D.C. It is attached as Exhibit 2012.
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`Report (“BSR”) to a UE. Id. at ¶ 39. A BSR informs the base station how much
`data the UE has to upload. Id. A PDCCH uplink grant is used, for example, to
`allocate resources for a UE to use to send that data described in the BSR using a
`HARQ scheme. Id. at ¶ 68-69. HARQ is an error-handling protocol. Id. at ¶ 45.
`Figure 3 below is a further annotated version of the ’236 patent’s Fig. 5. This
`figure indicates the sources of the data the UE used for transmitting message 3 data
`and new data. The data for message 3 are stored in a message 3 (Msg3) buffer. Id.
`at Abstract; 3:42–44, 4:18–26. The data for the new data transmission are stored in
`a HARQ buffer. Id. at 5:59-67.
`
`
`
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`Figure 3
`
`
`III. The problem the inventors solved
`
`In a simple prior art random access procedure, e.g., the embodiment shown in
`Figures 2-3, a UE with new data to transmit but no resources to transmit would
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`send a message 1, a random access preamble. Cooklev at ¶ 61. In response, the
`base station would send message 2 to the UE, and the message 2 contains an UL
`Grant—referred to as an UL Grant in a random access response. Id. at 65-66. After
`receiving the UL Grant in a random access response, the UE would send message 3
`to the base station. Id. at ¶ 67. Having received the message 3, the base station
`would send message 4, containing an UL Grant in the PDCCH (not an UL Grant in
`a random access response) to the UE. Id. at ¶ 71. Finally, with the random access
`procedure completed, the UE would then use the resources allocated in the
`PDCCH UL Grant to transmit its new data. Id.
`But in a more complex random access procedure, the problem of improper
`transmission could occur in the prior art systems. And as the ’236 patent describes,
`this improper transmission can result in the loss of data and the deadlock that could
`result. Ex. 1001 at 12:13-24, 13:14-18; Cooklev at ¶¶ 84-85. This is because, for
`example, there may be many UEs trying to perform random access procedures at
`the same time. Id. at ¶ 75. While these procedures are ongoing, the base station is
`unable to uniquely identify the various UEs. Cooklev at ¶ 75. Thus, after receiving
`an UL Grant in a random access response, a UE could receive an UL Grant on the
`PDCCH before it had made a successful transmission of message 3. See id. at ¶ 77.
`But not only does Petitioners’ primary reference, Kitazoe, fail to disclose a
`solution to the problem of multiple UL grants, Petitioners’ own expert, Dr. Wells,
`admitted that Kitazoe does not even recognize the problems associated with
`multiple uplink grants before a successful transmission of message 3. See Wells Tr.
`at 58:23-65:22 (esp., discussing the “hypothetical” of whether Kitazoe
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`contemplated reception of such multiple uplink grants, stating “I don’t think that
`relates to what is described in Kitazoe”); see also Cooklev at ¶ 77. Without
`recognition of the problem, arguments that it was obvious to solve are without
`merit.
`
`IV. The claims
`Independent claim 1
`A.
`
`Claim 1 reads as follows:
`
`1.
`
`1(b)
`
`A method of transmitting data by a user equipment through an uplink,
`the method comprising:
`receiving an uplink grant (UL Grant) signal from a base station on a
`specific message;
`1(c) determining whether there is data stored in a message 3 (Msg3) buffer
`when receiving the UL Grant signal on the specific message;
`1(d) determining whether the specific message is a random access response
`message;
`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 correspondence with the
`UL Grant signal received on the specific message, if there is no data
`stored in the Msg3 buffer when receiving the UL Grant signal on the
`specific message or the specific message is not the random access
`response message.
`Ex. 1001 at 16:50-17:3 (emphasis added).
`A number of observations about claim 1 are relevant. First, claim 1’s
`reference to a “specific message” in limitation 1(d) can refer to two types of UL
`Grants: in limitation 1(e), an UL Grant provided in a random access response; and
`in limitation 1(f), an UL Grant provided in a PDCCH.
`
`1(e)
`
`1(f)
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`Second, limitations 1(e) and 1(f) both depend on a condition, denoted herein
`as Condition X. Condition X is the underlined language in limitations 1(e) and 1(f)
`copied above. Condition X considers two pieces of information:
`Test a: Is there data stored in the Msg3 buffer when
`receiving the UL Grant signal on the specific message?
`and
`Test b: is the specific message the random access
`response message?
`Using the Condition X language, limitations 1(e) and 1(f) read:
`1(e)
`transmitting the data stored in the Msg3 buffer to the base station using
`the UL Grant signal received on the specific message, if Condition X is
`met; and
`transmitting new data to the base station in correspondence with the UL
`Grant signal received on the specific message, if Condition X is not met.
`These two limitations are of the form “If X, then do one thing, but if not X,
`
`do the other thing.” This simple observation is relevant to the claim construction.
`The Institution Decision supports this position. Paper 11 at 9-10 (“On the record
`before us, we find that the language of the two ‘transmitting’ limitations has
`sufficient clarity, in that the first limitation is drafted in conjunctive, ‘a and b’
`format, while the second limitation is drafted in disjunctive, ‘not a or not b’ format;
`accordingly, only one of the two limitations may occur for an uplink grant.)
`(Emphasis added).
`
`1(f)
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`Independent claim 7
`B.
`Claim 7, the only other independent claim in the ’236 patent presents the
`
`same Condition X as does Claim 1. Claim 7 reads as follows:
`
`
`
`A user equipment, comprising:
`7.
`7(b) a reception module adapted to receive an uplink grant (UL Grant) signal
`from a base station on a specific message;
`7(c) a transmission module adapted to transmit data to the base station using
`the UL Grant signal received on the specific message;
`7(d) a message 3 (Msg3) buffer adapted to store UL data to be transmitted in a
`random access procedure;
`7(e) a Hybrid Automatic Repeat Request (HARQ) entity adapted to
`
`[1] determine whether there is data stored in the Msg3 buffer when the
`reception module receives the UL Grant signal and the specific message is
`a random access response message,
`
`[2] acquiring the data stored in the Msg3 buffer if there is data stored in
`the Msg3 buffer when the reception module receives the UL Grant signal
`and the specific message is the random access response message, and
`
`[3] controlling the transmission module to transmit the data stored in the
`Msg3 buffer to the base station using the UL Grant signal received by the
`reception module on the specific message; and
`7(f) a multiplexing and assembly entity used for transmission of new data,
`7(g) wherein the HARQ entity
`
`[1] acquires the new data to be transmitted from the multiplexing and
`assembly entity if there is no data stored in the Msg3 buffer when the
`reception module receives the UL Grant signal on the specific message or
`the received message is not the random access response message, and
`
`[2] controls the transmission module to transmit the new data acquired
`from the multiplexing and assembly entity using the UL Grant signal
`received by the reception module on the specific message.
`Ex. 1001 at 17:30-18:7 (emphasis added). Here, Condition X is shown underlined
`in limitation 7(e) and NOT Condition X is shown underlined in limitation 7(g). In
`
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`large part, claim 7 claims an apparatus that performs the method claimed in
`claim 1.
`
`V. Claim Construction
`
`The Board gives each claim “its broadest reasonable construction in light of
`the specification of the patent in which it appears.” In re Cuozzo Speed Techs.,
`LLC, 793 F.3d 1268, 1275 (Fed. Cir. 2015), aff’d, 136 S. Ct. 2131, 2142 (2016).
`
`Introduction
`A.
`The Board recognizes that two tests or conditions must be evaluated in order
`to determine when the claims of the ’236 patent require Msg3 buffer data to be
`sent. IPR2016-01229, Paper 8 at 10. As previously noted these two tests or
`conditions are:
`
`• Test a: is there data stored in the Msg3 buffer
`when receiving the UL Grant signal on the specific
`message?
`• Test b: is the specific message is the random
`access response message?
`These two conditions are independent of one another, and can be placed in a two-
`by-two matrix. Each cell in the matrix can be considered to be one “condition.”
`The following matrix, Matrix 1, shows how the ’236 patent claims’ previously-
`defined Condition X fits into the matrix—Condition X being true in only the top
`left matrix cell:
`
`
`
`
`
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`
`
`Condition X
`
`Test b:
`What carried
`the UL Grant?
`
`Random
`Access
`Response [b]
`PDCCH [not
`b]
`
`Matrix 1
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`IPR2016-01229
`Patent 7,881,236 B2
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`Test a:
`Does the Msg3 buffer
`contain data?
`YES[a]
`NO[not a]
`
`True
`
`False
`
`False
`
`False
`
`Matrix 1 unambiguously defines a truth table for the claims’ Condition X. The
`dispute between the parties is as to what data is transmitted using or corresponding
`to the uplink grant in the conditions defined by the four cells that correspond to
`Condition X being true or false.
`
`Matrix 2 shows what data is transmitted corresponding to the uplink grant in
`these four conditions according to Patent Owner’s “only if” construction.
`
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`Transmitted data in PO’s
`proposed “only if”
`construction3
`
`Test b:
`What carried
`the UL Grant?
`
`Random
`Access
`Response[b]
`PDCCH[not b]
`Matrix 2
`
`Test a:
`Does the Msg3 buffer
`contain data?
`YES[a]
`NO[not a]
`
`Msg3
`
`New data
`
`New data
`
`New data
`
`
`
`
`
`
`
`Matrix 2 corresponds to Patent Owner’s proposed, “only if,” claim
`construction as indicated in the additional, underlined, claim language in the
`relevant limitations of claims 1 and 7:
`1(e)
`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, but not transmitting the new data; and
`transmitting new data to the base station in correspondence with the UL
`Grant signal received on the specific message, there is no data stored in
`the Msg3 buffer when receiving the UL Grant signal on the specific
`message or the specific message is not the random access response
`message, but not transmitting any data stored in the Msg3 buffer.
`
`1(f)
`
`
`
`7(e) a Hybrid Automatic Repeat Request (HARQ) entity adapted to
`[1] determine whether there is data stored in the Msg3 buffer when
`the reception module receives the UL Grant signal and the specific
`message is a random access response message,
`
`3 This table does not state what is/is not transmitted if other conditions, not
`
`involving conditions a or b, are met.
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`Patent 7,881,236 B2
`[2] acquiring the data stored in the Msg3 buffer if there is data stored
`in the Msg3 buffer when the reception module receives the UL Grant
`signal and the specific message is the random access response
`message, and
`[3] controlling the transmission module to transmit the data stored in
`the Msg3 buffer, but not the new data, to the base station using the
`UL Grant signal received by the reception module on the specific
`message; and
`7(g) wherein the HARQ entity
`[1] acquires the new data to be transmitted from the multiplexing and
`assembly entity if there is no data stored in the Msg3 buffer when the
`reception module receives the UL Grant signal on the specific
`message or the received message is not the random access response
`message, and
`[2] controls the transmission module to transmit the new data
`acquired from the multiplexing and assembly entity, but not the
`Msg3 data, using the UL Grant signal received by the reception
`module on the specific message.
`
`
`In the “only if” construction, Msg3 data is transmitted only if Condition X is true,
`and in all other stated conditions, new data is transmitted.
`
`The Board, implicitly recognizing DeMorgan’s law, 4 acknowledged that this
`is the structure of the claim. Paper 8 at 10-11 (“On the record before us, we find
`that the language of the two “transmitting” limitations has sufficient clarity, in that
`the first limitation is drafted in conjunctive, ‘a and b’ format, while the second
`limitation is drafted in disjunctive, ‘not a or not b’ format; accordingly, exactly one
`of the two conditions must apply for any given a and b.”).
`
`
`4 DeMorgan’s Law provides that “not (A and B)” is logically equivalent to “not A
`
`or not B.”
`
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`Petitioners understood that Patent Owner would properly advocate for the
`“only when”/“only if” construction, and so doing they helped define their “if”
`construction: their “if” construction permits transmitting the data stored in the
`Msg3 buffer in conditions other than when Condition X is true:
`
`Patent Owner may attempt to argue that the term “if” should be interpreted as ‘only
`when,’ thereby narrowing the scope of claim 1 to this example from the
`specification.” Pet. at 20. In other words, Petitioners argue that the transmission of
`the Msg3 buffer data is not limited to the cell in Matrix 2 where Condition X is
`true; accordingly, Petitioners’ “if” construction must be represented by a matrix
`where “Msg3” appears in at least one of the “Condition X = false” cells shown in
`Matrix 1.
`But Petitioners improperly read limitation 1(e) in isolation, rather than—as
`the Board did—in view of the entire claim and, in particular, in view of 1(f).
`Limitation 1(f) is the logical opposite of 1(e): both limitations cannot, at the same
`time, be true. Petitioners then redraft the claim by arguing that Msg3 data can be
`transmitted if 1(e)’s test, Condition X, is not satisfied. Specifically, Petitioners
`would have at least the following fall within the claim scope of 1(f):
`1(f) transmitting new data to the base station in correspondence with
`the UL Grant signal received on the specific message, if Condition X is
`not met, and optionally transmitting the data stored in the Msg3 buffer.
`In other words, Petitioners rewrite claim limitation 1(f), using Institution
`Decision parlance, to be (if (not a or not b) transmit new data and optionally
`
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`transmit Msg3 buffer data). Not only is this redrafting is contrary to the language
`of the claims, it finds no support in the specification. There is not a single disclosed
`embodiment that supports Petitioners’ construction. C.R. Bard, Inc. v. United
`States Surgical Corp., 102 F. Supp. 2d 199, 215 (D. Del. 2000) (“patent claims
`should not be construed to cover embodiments that are not supported by the
`specification.”).
` The proper claim construction is one that follows the claim’s plain language
`and the specification; that is, Msg3 data is transmitted if Condition X is met (i.e., (a
`and b) in Institution Decision parlance) and new data are transmitted if Condition X
`is not met ((not a or not b) in Institution Decision parlance). Any other reading
`eviscerates its plain logical structure.
`
`B. A person of ordinary skill would read the claims as transmitting
`Msg3 data “only if” the condition in 1(e) is satisfied
`Not only does the logical structure of the claim require the “only if”
`construction, as explained by Dr. Cooklev, a person of ordinary skill in the art
`would read the claim as such. Dr. Cooklev explains that, to a person of ordinary
`skill, an instruction of the form “if condition then action1 else action2” is a
`fundamental computer science programming language construct. Id. at ¶¶ 90-92.
`He gives a simple example confirming how a person of ordinary skill performing
`that instruction would not perform action2 if the stated condition were true: it
`would lead to an incorrect result. Id. at ¶¶ 93-94. In his example, if action1 is “add
`one” and action2 is “add 2,” then if a condition calls for action1, a person of
`
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`ordinary skill would understand that carrying out both action1 and action2—
`netting out to adding three—is contrary to the instruction. Id. at ¶ 95.
`Further, Dr. Cooklev expresses a more general rule for not performing action2
`if action1 is called for. Id. This more general rule allows other actions—actions
`other than the explicitly stated action1 and action2—to be performed without
`violating the instruction. But for two actions that are “paired up” in the if-then-else
`construct, to say “perform one of them” is to say “don’t do the other one.”
`Pursuant to POSA’s understanding of the claim language, action1 is
`transmitting the message 3 buffer data, and action2 is transmitting new data.
`Further, the condition is “Is Condition X true.” Accordingly, the proper
`construction is the Patent Owner’s “only if” construction—message 3 buffer data
`may be transmitted “only if”/”only when” condition X is met, and Petitioners’
`proposal should be rejected.
`To further underscore how one of skill in the art would read the claim, Dr.
`Cooklev has created a flowchart. Cooklev at ¶¶ 96-108. POSAs commonly use
`flowcharts to document an algorithm’s functionality. Cooklev at ¶ 97. Dr.
`Cooklev’s flowchart shown in his declaration at paragraph 98 and is copied below
`for convenience. As discussed in his declaration, ¶¶ 99-105, Dr. Cooklev,
`consistent with practice, uses rectangular blocks for procedures, and diamond
`decision symbol to correspond to the claim language’s Condition X decision. Id. at
`¶ 106.
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`
`
`Based on the flowchart that illustrates the algorithm set forth in claim 1, a
`POSA would read the flowchart, and thus the claim, to require only transmitting
`the message 3 buffer data if Condition X is true. Cooklev at ¶ 109. The Board
`should note that Dr. Cooklev’s flowchart has the same structure as shown in the
`’236 patent’s Fig. 9. That structure is a decision based on Condition X--
`transmitting message 3 in one branch of the decision and transmitting new data in
`the other branch. Further, it should be noted that, as discussed below in section
`V.D., the patent explicitly ties that flowchart structure to the “only if” language.
`Ex. 1001 at 14:13-13. Accordingly, Dr. Cooklev’s analysis is fully consistent with
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`IPR2016-01229
`Patent 7,881,236 B2
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`both the patent’s specification and Patent Owner’s proposed construction. For this
`additional reason, Patent Owner’s “only if” construction is proper.
`
` Petitioners’ proposed construction is inoperative
`C.
`Further supporting the argument that Petitioners’ proposed “if” construction is
`improper is the fact that it renders the claimed invention inoperative. AIA Eng’g
`Ltd. v. Magotteaux Int’l S/A, 657 F.3d 1264, 1278 (Fed. Cir. 2011) (stating a
`construction that renders claim inoperative “should be viewed with extreme
`skepticism.”).
`
`Matrix 3 and Matrix 4, below, show two embodiments of the “if”
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`
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`construction. Both show Msg3 buffer data being transmitted when Condition X is
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`false. Matrix 3 posits that only Msg3 data is sent if a = true and b = false; Matrix 4
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`posits that Msg3 data are sent along with new data under those conditions. (Patent
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`Owner does not present matrices where Msg3 buffer data is sent for a = false,
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`because in that condition, there is no Msg3 buffer data to send. Nevertheless, the
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`same arguments as presented below would apply to those scenarios too.)
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`Transmitted data in
`Petitioners’ proposed “if”
`construction
`
`IPR2016-01229
`Patent 7,881,236 B2
`
`Test a:
`Does the Msg3 buffer
`contain data?
`YES[a]
`NO[not a]
`
`Test b:
`What carried
`the UL Grant?
`
`Random Access
`Msg3
`Response[b]
`PDCCH[not b] Msg 3 data
`Matrix 3
`
`New data
`New data
`
`Transmitted data in
`Petitioners’ proposed “if”
`construction
`
`Random
`Access
`Response[b]
`PDCCH[not b]
`
`Test b:
`What carried
`the UL Grant?
`
`Matrix 4
`
`Test a:
`Does the Msg3 buffer
`contain data?
`YES[a]
`NO[not a]
`
`Msg3
`
`New data
`and
`Msg 3 data
`
`New data
`
`New data
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`Both Matrices 3 and 4 illustrate impossibilities.
`
`In Matrix 3, new data is not sent for a = true and b = false. But that is
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`impossible according to limitation 1(f): Condition X is false, and new data must be
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`transmitted. Further confirming the impossibility, the 321 reference (Exhibit
`
`1003)—which purportedly invalidates the claims of the ’236 patent, teaches
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`

`IPR2016-01229
`Patent 7,881,236 B2
`transmitting new data for a = true and b = false. Pet. at 39 (Scenario 3). This is the
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`exact problem solved in the ’236 patent. Ex. 1001 at 4:26-34.
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`
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`Turning to Matrix 4, which includes two sets of data being transmitted
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`(Msg3 buffer data and new data), this scenario is inoperative. A UE cannot send
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`both Msg3 buffer and new data using a single UL Grant. But this is the
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`transmission required because claim language makes clear that there is a single UL
`
`Grant: the claim refers in limitation 1(b) to “an uplink grant . . . on a specific
`
`message” and limitations 1(c)-(f) then refers to “the UL Grant signal on the
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`specific message” for both transmissions (emphasis added). Ex. 1001 at 16:50-17:3
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`(claim 1), 17:30-18:8 (claim 7).
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`And of critical significance, Petitioners’ own expert, Dr. Wells, confirmed
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`that it is impossible under the prior art LTE standard to transmit both new data and
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`msg3 data using a single UL Grant. See Wells Tr. at 75:20-76:20. More
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`specifically, although he had not considered the exact question of whether both
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`new data and msg3 data could be transmitted using only one UL Grant (id. at
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`75:25-74:4), Dr. Wells did walk through the scenarios that would permit such a
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`one-UL grant pair of transmissions:
`
`•
`
`Concerning the transmission of message 3 data response to a CR grant
`(where, according to the LTE standard, new data is sent) “I didn’t [show
`any examples of that] because that is not my understanding of how the
`LTE system works.” Id. at 75:20-76:4.
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`•
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`IPR2016-01229
`Patent 7,881,236 B2
`Concerning the transmission of new data responsive to a message 2 UL
`Grant (where, according to the LTE standard, message 3 is sent) “I didn’t
`show [transmitting new data using a random access responses UL Grant]
`[b]ecause that is my understanding that the LTE doesn’t support that.”
`Id. at 76:12-20.
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`In other words, he could point to no part of the LTE prior art standard that
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`permitted adding “extra” data to the data known to be transmitted in
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`correspondence to each grant. Thus, Petitioners’ proposed construction is
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`impossible to implement.
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`
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`Under Petitioners’ construction, accordingly, claim 1 is inoperative and
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`Petitioners’ “if” construction should be viewed with extreme skepticism.
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`D. The principle of expressio unius supports Patent Owner’s “only if”
`construction
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`
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`The ’236 patent’s specification and drawings is consistent with this
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`construction, as is seen though the principle of expressio unius est exclusio
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`alterius. The principle means “the express mention of one thing excludes all
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`others.” Shenyang Yuanda Aluminum Industry Eng’g. v. United States, 776 F.3d
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`1351, 1359 (Fed. Cir. 2015). Under this principle, the correct reading of limitation
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`1(f) excludes transmitting the Msg3 buffer data if the expressed claim limitations
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`are present, and the correct reading of limitation 1(e) excludes transmitting the new
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`IPR2016-01229
`Patent 7,881