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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC., MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`AND MICROSOFT MOBILE INC. (F/K/A/ NOKIA INC.),
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`Petitioner
`
`v.
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`EVOLVED WIRELESS LLC,
`Patent Owner.
`
`____________
`Case IPR2016-01229
`Patent 7,881,236
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`I.
`II.
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`I.
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`II.
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`
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
`Patent Owner’s Exhibit 2009 does not meet the requirements of a
`declaration, and is entitled to no weight .......................................................... 2
`III. Claim Construction .......................................................................................... 3
`A. The Institution Decision correctly found that the claim term “if” means
`what it says, rather than “only if” ............................................................. 4
`B. Patent Owner chose not to file a motion to amend the claims, and
`instead attempts to narrow the claims with its improper proposed
`construction of “if” as “only if” ................................................................ 5
`C. Patent Owner’s “only if” construction ignores the claim’s focus on “a
`specific message” ...................................................................................... 6
`D. Patent Owner’s “if then else” claim interpretation is flawed and
`unsupported by evidence .......................................................................... 9
`E. Patent Owner's claim construction analysis ignores the preamble
`recitation of “comprising” ...................................................................... 12
`F. The “expressio unius” principle relied on by Petitioner is not applicable
`to claim construction ............................................................................... 14
`G. Patent Owner mischaracterizes the claims of the ’236 patent and the
`Petition in arguing that the claims are rendered inoperative .................. 18
`H. Patent Owner’s arguments regarding a child patent of the ’236 patent are
`immaterial to the present proceeding ...................................................... 20
`The combination of Kitazoe, TS 36.321, and Niu renders the Challenged
`Claims obvious .............................................................................................. 21
`A. Niu is analogous art to the ’236 patent ................................................... 21
`B. Niu teaches “determining whether there is data stored in a” buffer ....... 24
`C. The Petition shows that a POSITA would have been motivated to
`combine Kitazoe, Niu, and TS 36.321 .................................................... 26
`Conclusion ..................................................................................................... 26
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`i
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`
`EXHIBIT LIST
`
`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
`
`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
`
`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
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`

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`APPLE-1015
`
`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`U.S. Patent No. 7,675,905 (“Delaney”)
`
`APPLE-1016
`
`U.S. Provisional No. 61/015,159 (“Kitazoe-II Provisional”)
`
`APPLE-1017
`
`APPLE-1018
`
`APPLE-1019
`
`APPLE-1020
`
`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”)
`
`“3GPP FAQs,” available at http://www.3gpp.org/about-
`3gpp/3gpp-faqs (retrieved June 20, 2016)
`
`“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
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`Declaration of Anne Koch Baland
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`APPLE-1022
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`U.S. Patent No. 6,986,122 to Garvey (“Garvey”)
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`
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`
`iii
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`I.
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
`
`Introduction
`Petitioners submit this Reply to Patent Owner’s Response (Paper 14,
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`hereinafter the “POR”). The POR largely rehashes arguments previously presented
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`in Patent Owner’s Preliminary Response and found unpersuasive by the Board at
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`institution. In repeating these arguments, Patent Owner continues its attempt to
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`rewrite the plain language of the claims to replace the claim term “if” with the
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`narrower term “only if” in an effort avoid the prior art.
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`Patent Owner also fails to provide any credible evidence to support its
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`rehashed arguments. Patent Owner repeatedly cites to Exhibit 2009, styled as a
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`“declaration,” for support. But Exhibit 2009 does not include the required
`
`warnings regarding the penalties for perjury or a statement by the declarant
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`regarding the truth of the statements therein. Thus, the exhibit falls short of the
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`requirements for declarations in IPR proceedings, and is entitled to no weight. See
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`37 CFR § 1.68; Fedex v. Katz, CBM2015-00053, Paper 9 at 7-8 (PTAB June 29,
`
`2015); Bumble Bee Foods v. Kowalski, Case IPR2014-00224, Paper 18 at pp. 14-
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`15 (PTAB June 5, 2014).
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`Nothing in the Patent Owner Response justifies a change in the preliminary
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`conclusions set forth in the Institution Decision. Thus, the Board should maintain
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`conclusions set forth in its Institution Decision and find the Challenged Claims
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`obvious.
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`1
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`II.
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`Patent Owner’s Exhibit 2009 does not meet the requirements of a
`declaration, and is entitled to no weight
`With its POR, Patent Owner filed Exhibit 2009, which is entitled
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`“Declaration of Todor Cooklev Ph.D.” See Ex. 2009, p. 1. While this document is
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`styled as a declaration, it does not meet the requirements of a declaration set forth
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`in 37 CFR 1.68, and thus is entitled to no weight.
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`In an IPR proceeding, “[e]vidence consists of affidavits, transcripts of
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`depositions, documents, and things.” 37 C.F.R. § 42.63. A declaration is
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`considered an “affidavit,” but only if the declaration meets the requirements of 37
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`C.F.R. 1.68, which states that:
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`a “declaration may be used in lieu of the oath otherwise
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`required, if, and only if, the declarant is on the same document,
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`warned that willful false statements and the like are punishable
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`by fine or imprisonment, or both (18 U.S.C. 1001)”
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`and that
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`the “declarant must set forth in the body of the declaration that
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`all statements made of the declarant’s own knowledge are true
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`and that all statements made on information and belief are
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`believed to be true.”
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`See 37 C.F.R. § 42.2 and 37 CFR § 1.68 (emphasis added).
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`
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`2
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`

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`
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`Notoriously absent from Exhibit 2009 is any indication that the declarant
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`was “warned that willful false statements and the like are punishable by fine or
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`imprisonment, or both (18 U.S.C. 1001),” or a statement by the declarant that “all
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`statements made of the declarant’s own knowledge are true and that all statements
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`made on information and belief are believed to be true.” See 37 CFR 1.68.
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`Exhibit 2009, therefore, fails to qualify as evidence, and with good reason,
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`as these warnings provide necessary safeguards to ensure credibility. See Fedex v.
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`Katz, CBM2015-00053, Paper 9 at 7-8 (PTAB June 29, 2015). Indeed, the Board
`
`has given “no weight” to purported declarations that fail to meet these basic
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`requirements. See id. (giving “no weight” to declaration where declarant was “was
`
`not warned that willful false statements are punishable by fine or imprisonment, or
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`sworn under penalty of perjury.”); Bumble Bee Foods v. Kowalski, Case IPR2014-
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`00224, Paper 18 at pp. 14-15 (PTAB June 5, 2014) (same). Thus, in light of the
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`deficiencies discussed above, the Board should give no weight to Patent Owner’s
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`Exhibit 2009.
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`III. Claim Construction
`To manufacture patentability, Patent Owner again attempts to make issues of
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`claim construction where none exist. Claims receive their “broadest reasonable
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`construction” in an inter partes review. See Cuozzo Speed Techs., LLC v. Lee, 136
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`S. Ct. 2131, 2142 (2016); 37 C.F.R. § 42.100(b). “The words of a claim are
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`3
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`

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`generally given their ordinary and customary meaning as understood by a person
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`of ordinary skill in the art when read in the context of the specification and
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`prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
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`1365 (Fed. Cir. 2012).
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`Patent Owner’s attempts to rewrite the claims to replace the unambiguous
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`term “if” with “only if” run afoul on these established canons of claim
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`constructions, and should be rejected yet again.
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`A. The Institution Decision correctly found that the claim term “if”
`means what it says, rather than “only if”1
`In its Institution Decision, the Board correctly rejected Patent Owner’s
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`attempts to rewrite the plain language of the claims, and chose not to “construe ‘if’
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`more narrowly, as ‘only if,’” in independent claims 1 and 7. See Institution
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`Decision, p. 9. The Decision also noted that “the claims use the term ‘if,’ and the
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`terms ‘only,’ ‘only when,’ or ‘only if’ are absent from the claims,” and that
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`“construing ‘if’ to mean ‘only if’ would constitute improper importation of a
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`1 Patent Owner uses the terms “only if” and “only when” interchangeably in
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`the POR, repeatedly referring to its position as the “’only if’’/’only when’
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`construction. See, e.g., POR, pp. 1, 14, 16, 25. For simplicity, the present paper
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`refers to the proposed language “only if.” The positions in the present paper
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`regarding “only if” also apply to the language “only when.”
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`4
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`limitation from an embodiment described in the Specification.” Id. (emphasis
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`added). As the Institution Decision correctly recognized, “the language of the
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`claims is drafted in open-ended form with the transition phrase, ‘comprising,’
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`which does not exclude additional, unrecited elements or method steps.” Id.
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`Patent Owner presents several arguments attacking the Institution Decision’s
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`findings, all of which should fail.
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`B.
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`Patent Owner chose not to file a motion to amend the claims, and
`instead attempts to narrow the claims with its improper proposed
`construction of “if” as “only if”
`In the present case, Patent Owner had the opportunity to file a motion to
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`amend to “cancel a challenged claim or propose a reasonable number of substitute
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`claims.” 37 CFR § 42.121. Indeed, Patent Owner could have sought introduction
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`of an amendment to change “if” to “only if,” thus narrowing the claim scope that
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`Patent Owner sought through original prosecution. Instead, Patent Owner chose to
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`forego this opportunity, and attempts to narrow the claims not through amendment,
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`but by improperly interpreting the claim term “if” as “only if.” The Board should
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`not allow Patent Owner to effectively amend the claims of the ’236 patent through
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`its improper interpretation of “if” as “only if,” and should instead interpret the
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`claims according to the plain and unambiguous language solicited in prosecution
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`and included in the issued patent.
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`5
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`C.
`
`Patent Owner’s “only if” construction ignores the claim’s focus on
`“a specific message”
`Patent Owner’s interpretation of the claim term “if” as “only when” attempts
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`to impart a universality to the process of the independent claims by interpreting the
`
`process as describing the UE’s behavior for all messages it receives. But the plain
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`language of the claims makes clear that the recited process is related to handling “a
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`specific message” received by the UE, rather than all messages received by the UE.
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`See ’236 patent, claim 1. Patent Owner’s interpretation of “if” as “only when” thus
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`attempts to extend the claimed process to additional unrecited messages beyond the
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`recited “specific message.” The plain language of the claims of the ’236 patent
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`does not justify this change in claim scope. Throughout its POR, Patent Owner
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`repeatedly introduces hypothetical scenarios involving the receipt of additional
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`messages including uplink grants in arguing that the process of Kitazoe does not
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`meet the language of the independent claims. For example, Patent Owner
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`annotates FIG. 4 of Kitazoe to add one such additional received message and
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`uplink grant. Below, to illustrate, Patent Owner’s annotation of Fig. 4 is
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`reproduced, showing its insertion of 404’ and corresponding annotations in green,
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`which correspond to messages attributed by Patent Owner to the Fig. 4 flow but
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`which are rather clearly absent from the same:
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`6
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`
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`POR, p, 40 (showing Kitazoe, FIG. 4, annotated)
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`Here, Patent Owner argues that “Kitazoe takes a narrow view of what can
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`occur during a random access procedure” because it describes a process in which
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`“only one UL Grant is received.” POR, p. 40. Patent Owner faults Kitazoe for not
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`“consider[ing] the more complex case,” illustrated in annotated FIG. 4 above, in
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`which two uplink grants are received. Id. But the claims of the ’236 patent also do
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`not require consideration of this “more complex case,” as they recite “receiving an
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`uplink grant (UL Grant) signal from a base station on a specific message” without
`7
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`requiring receipt of any additional messages or UL grants. See ’236 patent, claim
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`1 (emphasis added).
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`Consistent with the claim’s failure to limit itself to more than one uplink
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`grant and consistent with its reference to a specific message, the Petition applies a
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`combination of Kitazoe, Niu, and TS 36.321 to the claims to demonstrate how the
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`combination involves “transmitting” in response to the receipt of specific
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`messages, thereby meeting the conditions associated with each step.2 For instance,
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`the first specific message identified in the Petition is the “random access response
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`404.” The combination describes that receipt of this specific message results in the
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`transmission of the data stored in the Msg3 buffer (in message 3, 406 of Kitazoe,
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`which is notably not new data in Kitazoe) using a grant received in the random
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`access response. This specific message is handled under the first conditional in the
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`claim because there is data stored in the Msg3 buffer and the specific message is a
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`random access. Note that, contrary to Patent Owner’s allegations (discussed
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`below), Kitazoe does not teach that new data is transmitted in this situation.
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`2 Again, based on the plain language of the claims, a system need not receive
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`more than one specific message to meet the claims, as the claims require only “a
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`specific message,” not multiple messages.
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`8
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`Another specific message identified in the Petition is the “contention
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`resolution message 408” taught by Kitazoe. The combination describes that
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`receipt of this second specific message results in the transmission of new data.
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`This second specific message is handled under the second conditional in the claim
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`because it is sent when the specific message is not a random access response.
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`Accordingly, Patent Owner’s interpretation of “if” as “only if” extends the
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`claimed process to additional unrecited messages beyond the recited “specific
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`message.” Nothing in the plain language of the claims provides justification for
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`extending the scope of the claims to the handling of these additional unrecited
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`messages. Thus, Patent Owner’s “only if” interpretation is improper.
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`D.
`
`Patent Owner’s “if then else” claim interpretation is flawed and
`unsupported by evidence
`The POR argues that “the Board instituted trial in this matter using a claim
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`construction at odds with the understanding a person of ordinary skill.” POR, p. 1.
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`Patent Owner asserts that the claims of the ’236 patent are drafted in an “’if
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`condition then action1 else action2’ formulation,” which it claims necessitates the
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`claim term “if” being read as “only if.” Id. This argument fails for several
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`reasons.
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`First, Patent Owner bases this argument almost entirely on the supposed
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`“expert testimony” from Exhibit 2009. See POR, pp. 15-17 (including seven
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`
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`9
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`

`

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`citations to Ex. 2009 (¶¶ 90-109)3). As described above, Exhibit 2009 does not
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`meet the requirements for an IPR declaration, and therefore should be given no
`
`weight. See Section II, supra; 37 CFR § 1.68; see, e.g., Fedex v. Katz, CBM2015-
`
`00053, Paper 9 at 7-8 (PTAB June 29, 2015); Bumble Bee Foods v. Kowalski, Case
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`IPR2014-00224, Paper 18 at pp. 14-15 (PTAB June 5, 2014). Thus, Patent
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`Owner’s “if then else” interpretation of the claims of the ’236 patent is
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`unsupported by evidence.
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`Second, Patent Owner cites no case law in support of interpreting claim
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`language according to “fundamental computer science programming language
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`construct[s]” as it does in the POR. POR, p. 15. Patent Owner appears to argue
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`that a POSITA would apply such programming constructs to the claim to interpret
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`its meaning, but provides no evidence that those of skill in the art interpret claims
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`as they interpret source code, and cites no case law indicating this is a proper
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`mechanism for interpreting patent claim language.
`
`
`3 This section of the POR includes a total of eight citations: seven to Ex.
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`2009 (¶¶ 90-109), and one to the ’236 patent. See POR, pp. 15-18. The single
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`citation to the ’236 patent is related to the relationship between FIG. 9 and the ’236
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`specification, not to the Patent Owner’s “if then else” interpretation of the claims.
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`10
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`
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`In addition, Patent Owner’s “claims as source code” argument focuses on
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`Proceeding No.: IPR2016-01229
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`one supposedly “fundamental computer science programming language construct”
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`to support its incorrect “only if” claim construction, while ignoring a different
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`construct that matches the plain language of the claims. POR, p. 15. Another
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`“fundamental computer science programming language construct” is a simple “if
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`condition then action1” without the “else.” See, e.g., Garvey, 1:21-33 (describing
`
`that an “IF clause” can stand-alone, and that an “ELSE clause” is “optional.”). For
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`example, Garvey states that “[o]ne of the structured programming constructs is the
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`well-known IF construct,” which “consists of an IF clause followed by zero or
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`more ELSEIF clauses, an optional ELSE clause, and an ENDiIF statement.” Id. at
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`1:21-24 (emphasis added). Garvey provides the following example of an IF
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`construct without an accompanying ELSE:
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`Garvey, 1:28-33.
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`
`
`
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`The independent claims of the ’236 patent recite two conditionals preceded
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`by the term “if,” and do not include the term “else.” Thus, Patent Owner’s “claims
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`as source code” argument in fact ignores the “fundamental programming language
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`
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`11
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`construct” that best fits the plain language of the claims: the “well-known IF
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`Proceeding No.: IPR2016-01229
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`construct.” Garvey, 1:21-22.
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`E.
`
`Patent Owner's claim construction analysis ignores the preamble
`recitation of “comprising”
`“The well-established meaning of `comprising' in a method claim indicates
`
`that the claim is open-ended and allows for additional steps.” Solvay v. Honeywell
`
`Intern., 742 F. 3d 998, 1005 (Fed. Cir. 2014) (citing Invitrogen Corp. v. Biocrest
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`Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003)). Thus, in the absence of specific
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`claim language to the contrary, prior art that teaches the recited elements of the
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`claims as arranged teaches the claim, regardless of whether it teaches additional
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`elements or actions beyond those recited. See id.
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`Patent Owner ignores the “comprising” preamble in the independent claims,
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`and incorrectly asserts that the mere possibility that Kitazoe performs additional
`
`steps in addition to those recited in the claims prevents the combination of Kitazoe,
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`TS 36.321, and Niu from rendering the claims obvious. For example, Patent
`
`Owner concocts a hypothetical situation (not described in Kitazoe) where an
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`additional uplink grant (404') is received in Kitazoe's FIG. 7 process. See POR, p.
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`40. Patent Owner illustrates this hypothetical situation in the following annotated
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`figure (Patent Owner's annotation in green):
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`12
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`
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`Patent Owner states that “Kitazoe’s figure represents a simple example of a
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`random access procedure, wherein only one UL Grant is received before the CR
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`message (message 4) is sent.” POR, p. 40. However, the independent claims do
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`not recite that multiple uplink grants are received before the CR message (message
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`4) is sent, and in fact do not recite a “CR message” or “message 4” at all. Thus, it
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`is unclear how Kitazoe’s handling of these hypothetical, unclaimed scenarios is at
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`all relevant to claim construction.
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`Patent Owner cannot escape the fact that the process shown in FIG. 7 of
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`Kitazoe matches the process recited in the independent claims, and thus resorts to
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`adding additional messages to this flow in order to argue the claim is not met. The
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`Board should focus on the actual limitations recited in the claim rather than Patent
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`Owner’s hypotheticals, which will lead it to conclude, as it did in the Institution
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`13
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`Decision, that the combination of Kitazoe, TS 36.321, and Niu teaches each and
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`every element of the Challenged Claims.
`
`F.
`
`The “expressio unius” principle relied on by Petitioner is not
`applicable to claim construction
`The principle of expressio unius est exclusio alterius (“the express mention
`
`of one thing excludes all others”) is “[t]ypically used in statutory interpretation.”
`
`Shenyang Yuanda Aluminum Industry Eng’g. v. United States, 776 F.3d 1351,
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`1359 note 1 (Fed. Cir. 2015). The principle applies when “a series of two or more
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`terms or things that should be understood to go hand in hand” is “abridged in
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`circumstances supporting a sensible inference that the term left out must have been
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`meant to be excluded.” Barnhart v. Peabody Coal Co., 537 U.S. 149, 168 (2003).
`
`For example, under this principle, a court order that specifically excludes
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`“windows with glass” implies that “walls with glass” are included. See Shenyang
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`Yuanda Aluminum Industry Eng’g. v. United States, 776 F.3d 1351, 1359 (Fed. Cir.
`
`2015).
`
`This principle is not applicable to construing claims of a patent. In fact, the
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`principle itself is contrary to the established rule that “comprising” claims, such as
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`the claims of the ’236 patent, are open-ended, and do not exclude elements that are
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`not explicitly recited. See, e.g., Solvay v. Honeywell Intern., 742 F. 3d 998, 1005
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`(Fed. Cir. 2014) (citing Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364,
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`1368 (Fed. Cir. 2003)).
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`Patent Owner does not cite any controlling authority applying the expressio
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`unius principle to patent claim construction. The Federal Circuit and Supreme
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`Court decisions cited in the POR do not relate to patents or apply the expressio
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`unius principle to patent claim construction. See POR, p. 22 citation of Chevron
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`USA Inc. v. Echazabal, 536 U.S. 77, 81 (2002) (using the expressio unius principle
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`to interpret the “Americans with Disabilities Act of 1990”); POR, p. 21 citation of
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`Shenyang Yuanda Aluminum Industry Eng’g. v. United States, 776 F.3d 1351 (Fed.
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`Cir. 2015) (using the expressio unius principle to interpret “the scope of …
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`antidumping and countervailing duty orders on aluminum extrusions from the
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`People's Republic of China.”)
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`Patent Owner cites a single, non-controlling district court case from 2005 to
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`support its assertion that the “expressio unius principle is applicable to patent law.”
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`See POR, p. 22 (citing Despoir, Inc. v. Nike USA, Inc., 2005 U.S. Dist. LEXIS
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`10845, *1 (N.D. Ill. Feb. 9, 2005)). While the court in Despoir does apply the
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`expressio unius principle in construing patent claims, it appears to have
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`misinterpreted the authority it cites in support of doing so. The court cites another
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`district court case that used the expressio unius principle to interpret the scope of a
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`patent license agreement, not to interpret the claims of a patent itself. See Medinol
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`Ltd. v. Boston Scientific Corp. , 346 F. Supp. 2d 575, 598 (S.D.N.Y. 2004)
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`(discussing the inclusion of “the rights to manufacture and use” patented
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`technology in one section of a license agreement, and omission from another
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`Proceeding No.: IPR2016-01229
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`section). The Despoir court also cites a Supreme Court case related to “whether a
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`complaint in an employment discrimination lawsuit must contain specific facts
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`establishing a prima facie case of discrimination.” Swierkiewicz v. Sorema, N.A.,
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`534 U.S. 506 (2002). This case is also not related to patent claim construction.
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`Accordingly, the Despoir decision is contrary to established claim construction
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`case law regarding “comprising” claims, and should not be followed by the Board.
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`Thus, Patent Owner's reliance on a principle of statutory construction in
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`construing the claims of the '236 patent is improper and contrary to established
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`patent case law. The Board should therefore disregard these arguments.
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`Even if the expressio unius principle were applicable to patent claims, a
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`proper application of the principle would result in a claim scope that would still be
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`met by the combination of Kitazoe, Niu, and TS 36.321. Effectively, application
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`of the principle would lead to the interpretation that the data in the message 3
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`buffer and new data cannot both be transmitted using a single uplink grant received
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`in a single specific message. This is exactly the behavior taught by the
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`combination of Kitazoe, Niu, and TS 36.321 and described in the Petition. See
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`Petition, pp. 41-48. As explained in the Petition and shown in the following FIG. 4
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`from Kitazoe, the data in the message 3 buffer is sent (and new data is not sent) if
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`there is data in the buffer and the specific message is a random access response,
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`16
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`and new data is sent (and data in the message 3 buffer is not) if there is no data in
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`Proceeding No.: IPR2016-01229
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`the buffer and the specific message is not a random access response. See Petition,
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`pp 41-48:
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`
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`Kitazoe, Detail of FIG. 4 (annotated) (from Petition, p. 39)
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`Accordingly, even if the expressio unius principle were applicable to patent
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`claims (which, as described above, it is not), the combination of Kitazoe, Niu, and
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`TS 36.321 still renders the claims obvious under a proper application of the
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`principle.
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`G.
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`Patent Owner mischaracterizes the claims of the ’236 patent and
`the Petition in arguing that the claims are rendered inoperative
`Patent Owner argues that “Petitioners’ proposed ‘if’ construction … renders
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`the claimed invention inoperative.” POR, p. 18.4 Patent Owner’s argument is
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`based on two mischaracterizations of the Petition arguments, shown on page 19 of
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`the POR as “Matrix 3” and “Matrix 4.” Id. at p. 18.
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`“Matrix 3” does not accurately represent the Petition’s interpretation of the
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`plain language of the independent claims. The table incorrectly indicates, in the
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`cell emphasized below, that “Msg 3 data” is sent when the msg3 buffer contains
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`data and the message carrying the UL grant is not a random access response:
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`POR, p. 19 (emphasis added)
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`
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`4 Patent Owner previously presented a similar argument in its preliminary
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`response (“POPR”), which was found unpersuasive by the Board in the Institution
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`Decision. See POPR, pp. 19-20; Decision, p. 10.
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`18
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`In making this characterization, Patent Owner never cites or quotes the
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`Proceeding No.: IPR2016-01229
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`Petition, which never describes or contemplates such an interpretation. In fact, as
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`pointed out in the Petition, the plain language of the claim states that rather than
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`Msg 3 data, new data is transmitted either “if there is no data stored in the Msg3
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`buffer when receiving the UL Grant signal on the specific message or the specific
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`message is not the random access response message.” ’236 patent, claim 1
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`(emphasis added). In the highlighted cell of Matrix 3, the specific message is not a
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`random access response message, so the plain language of the claim dictates that
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`new data is sent. Matrix 3 therefore contradicts the plain language of the claim,
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`and thus also contradicts Petitioner’s interpretation of the claims.
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`“Matrix 4” shows multiple messages being sent using a single uplink grant.
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`POR, pp. 19-20. Again, in making this characterization, Patent Owner never cites
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`or quotes the Petition, which never describes or contemplates such an
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`interpretation. This is confirmed by Dr. Wells’ indication during his deposition
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`that he had not considered “whether both new data and msg3 data could be
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`transmitted using only one UL Grant,” specifically because the Petition does not
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`include such an argument. See Ex. 2010 (Wells Transcript), 73:15-76:25.
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`Thus, Patent Owner’s arguments that the claims of the ’236 patent are
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`rendered inoperative are based on mischaracterizations of both the ’236 patent and
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`the Petition, and therefore fail.
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`19
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`H.
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`Patent Owner’s arguments regarding a child patent of the ’236
`patent are immaterial to the present proceeding
`Patent Owner points to the Examiner's remarks when rejecting claims of a
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`child patent of the ’236 patent to support its improper construction of “if” as “only
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`if.” See POR, p. 26. In prosecution of the child patent, the Examiner rejected the
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`claim under 35 USC 112 because it recited an “if” condition without an alternative.
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`See id. (citing Ex. 2012, 139).
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`The Board is clearly not bound by this incorrect interpretation of the claims,
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`and should not be swayed by it. In addition, the Examiner's reasoning is flawed
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`because, as discussed above, a comprising claim is open-ended and may cover
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`additional, unrecited actions (such as actions performed when a condition