UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA) Inc.,
`HTC Corporation, and
`HTC America, Inc.,
`
`Petitioner
`
`Evolved Wireless LLC,
`
`Patent Owner
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,881,236
`
`Case No. IPR2016-00757
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Evolved Wireless, LLC Exhibit 2003 - 001
`Apple/Microsoft v. Evolved Wireless IPR2016-01229
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`Introduction......................................................................................................1
`
`II. Mandatory Notices (37 C.F.R. § 42.8) ............................................................2
`
`A.
`
`B.
`
`C.
`
`Real Parties-in-Interest (§ 42.8(B)(1)) ..................................................2
`
`Related Matters (§ 42.8(B)(2))..............................................................2
`
`Counsel Information (§ 42.8(b)(3)).......................................................3
`
`III.
`
`Payment of Fees (37 C.F.R. § 42.15(A)).........................................................3
`
`IV. Grounds for Standing (37 C.F.R. § 42.104(A))...............................................3
`
`V.
`
`Background of 236 Patent ...............................................................................4
`
`A.
`
`B.
`
`C.
`
`Summary ...............................................................................................4
`
`Prosecution History...............................................................................5
`
`Priority Date ..........................................................................................6
`
`VI. Background of Technology .............................................................................6
`
`A.
`
`B.
`
`Person of Ordinary Skill in the Art .......................................................6
`
`State of the Art ......................................................................................6
`
`VII. Prior Art References ......................................................................................10
`
`A.
`
`B.
`
`C.
`
`Prior Art Specifications (Exs. 1002 and 1003) ...................................10
`
`Ericsson Patent (Ex. 1004)..................................................................11
`
`“Printed Publication” Status................................................................12
`
`VIII. Claim Construction (37 C.F.R. § 42.104(B)(3)) ...........................................15
`
`A.
`
`“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
`
`Patent 7,881,236
`
`i
`
`IPR2016-00757
`
`Exhibit 2003-002
`
`

`
`message and the specific message is the random access
`response message” (claim 1)...............................................................16
`
`B.
`
`“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” (claim
`7)..........................................................................................................19
`
`C.
`
`Other Terms (claim 7).........................................................................19
`
`IX. Grounds of Rejection (37 C.F.R. § 42.104(B)(1)-(2), (4))............................20
`
`A.
`
`Ground 1: Claims 1-6 are invalid based on the prior art
`specifications.......................................................................................20
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Independent claim 1 is invalid..................................................22
`
`Dependent claim 2 is invalid.....................................................40
`
`Dependent claim 3 is invalid.....................................................41
`
`Dependent claim 4 is invalid.....................................................42
`
`Dependent claim 5 is invalid.....................................................44
`
`Dependent claim 6 is invalid.....................................................45
`
`Skilled artisans would have combined the
`teachings of the 300 and 321 references...................................46
`
`B.
`
`Ground 2: Claims 7-10 and 12-13 are invalid based on
`the prior art specifications and the Ericsson patent.............................48
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Independent claim 7 is invalid..................................................48
`
`Dependent claim 8 is invalid.....................................................53
`
`Dependent claim 9 is invalid.....................................................55
`
`Dependent claim 10 is invalid...................................................57
`
`Dependent claim 12 is invalid...................................................57
`
`Patent 7,881,236
`
`ii
`
`IPR2016-00757
`
`Exhibit 2003-003
`
`

`
`6.
`
`7.
`
`Dependent claim 13 is invalid...................................................57
`
`Skilled artisans would have combined the prior art
`specifications’ teachings with the Ericsson patent’s
`teachings....................................................................................58
`
`X.
`
`Conclusion .....................................................................................................59
`
`Patent 7,881,236
`
`iii
`
`IPR2016-00757
`
`Exhibit 2003-004
`
`

`
`1001
`
`1002
`
`300 reference
`
`1003
`
`321 reference
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Short Name
`
`Description
`
`236 patent
`
`U.S. Patent No. 7,881,236
`
`3GPP TS 36.300 v8.4.0 (2008-03), 3rd
`Generation Partnership Project; Technical
`Specification Group Radio Access Network;
`Evolved Universal Terrestrial Radio Access (E-
`UTRA) and Evolved Universal Terrestrial Radio
`Access Network (E-UTRAN); Overall
`description; Stage 2 (Release 8)
`
`3GPP TS 36.321 v8.2.0 (2008-05), 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)
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`Ericsson patent
`
`U.S. Patent No. 9,204,468
`
`Philips submission Change Request R2-081764, submitted by
`Philips and NXP Semiconductors to 3GPP TSG
`RAN WG2 for Meeting #61bis, held on March
`31 to April 4, 2008, in Shenzhen, China
`
`236 file history
`
`File history of U.S. Patent Application No.
`12/538,514, which issued as the 236 patent
`
`36.300 specs listing Printout of http://www.3gpp.org/ftp/Specs/
`archive/36_series/36.300/
`
`Qualcomm 156
`
`“NDI and Message 3,” R2-084156, submitted by
`Qualcomm Europe to 3GPP TSG RAN WG2 for
`Meeting #63 held in Jeju Island, Korea on
`August 18 to August 22, 2008
`
`Patent 7,881,236
`
`iv
`
`IPR2016-00757
`
`Exhibit 2003-005
`
`

`
`Exhibit No.
`
`Short Name
`
`Description
`
`1009
`
`1010
`
`36.300 page
`
`LG 387
`
`1011
`
`LG 388
`
`Printout of http://www.3gpp.org/DynaReport/
`36300.htm
`
`“Handling of Received UL Grant in RA
`procedure,” R2-084387, submitted by LG
`Electronics Inc. to 3GPP TSG RAN WG2 for
`Meeting #63 held in Jeju Island, Korea on
`August 18 to August 22, 2008
`
`Change Request R2-084388, submitted by LG
`Electronics Inc. to 3GPP TSG RAN WG2 for
`Meeting #63 held in Jeju Island, South Korea on
`August 18 to August 22, 2008
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`988 provisional
`
`U.S. Provisional Application No. 61/087,988
`
`Qualcomm 202
`
`U.S. Patent No. 9,094,202
`
`Qualcomm 257
`
`U.S. Provisional Application No. 61/088,257
`
`Qualcomm 307
`
`U.S. Provisional Application No. 61/087,307
`
`Min decl.
`
`Wei decl.
`
`Butler aff. I
`
`Butler aff. II
`
`236 patent
`assignments
`
`Declaration of Paul S. Min
`
`Declaration of Ma Wei
`
`Affidavit of Christopher Butler dated January
`26, 2016
`
`Affidavit of Christopher Butler dated March 21,
`2016
`
`Printout of assignment search of 236 patent,
`available at http://assignment.uspto.
`gov/#/search?q=7881236
`
`Patent 7,881,236
`
`v
`
`IPR2016-00757
`
`Exhibit 2003-006
`
`

`
`Exhibit No.
`
`Short Name
`
`Description
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`3GPP FAQs
`
`Printout of 3GPP FAQs, available at
`http://www.3gpp.org/about-3gpp/3gpp-faqs.
`
`Delegates Corner
`
`Printout of Delegates Corner, available at
`http://www.3gpp.org/specifications-
`groups/delegates-corner.
`
`3/11/08 Krause
`e-mail
`
`Printout of http://list.etsi.org/scripts/wa.exe?
`A2=ind0803&L=3GPP_TSG_RAN_WG2&F=
`&S=&P=32768
`
`6/11/10 office action Office Action, dated June 11, 2010, filed in the
`file history of U.S. Patent Application No.
`12/538,514, which issued as the 236 patent
`
`9/3/10 amendment Amendment Under 37 C.F.R. § 1.111, dated
`September 3, 2010, filed in the file history of
`U.S. Patent Application No. 12/538,514, which
`issued as the 236 patent
`
`9/20/10 notice of
`allowance
`
`Notice of Allowance and Fees Due, dated
`September 20, 2010, filed in the file history of
`U.S. Patent Application No. 12/538,514, which
`issued as the 236 patent
`
`36.321 specs listing Printout of http://www.3gpp.org/ftp/
`Specs/archive/36_series/36.321/
`
`36.321 page
`
`Printout of http://www.3gpp.org/DynaReport/
`36321.htm
`
`3GPP FAQs archive Printout of archived version of 3GPP Frequently
`Asked Questions, available at
`https://web.archive.org/web/20080611055805/ht
`tp://www.3gpp.org/faq/faq_2005_2.htm
`
`Patent 7,881,236
`
`vi
`
`IPR2016-00757
`
`Exhibit 2003-007
`
`

`
`Exhibit No.
`
`Short Name
`
`Description
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`6/15/08 Krause
`e-mail
`
`61bis docs
`
`Bucknell e-mail
`
`Printout of https://list.etsi.org/scripts/wa.exe?
`A2=ind0806&L=3GPP_TSG_RAN_WG2&F=
`&S=&P=74127
`
`Printout of http://www.3gpp.org/ftp/tsg_ran/
`WG2_RL2/TSGR2_61bis/Docs/
`
`Printout of https://list.etsi.org/scripts/wa.exe?A2
`=ind0803&L=3GPP_TSG_RAN_WG2&F=&S=
`&P=120934
`
`61bis attendees
`
`Printout of list of attendees at 3GPP TSG RAN
`WG2 Meeting 61bis
`
`61bis report
`
`Report of 3GPP TSG RAN WG2 Meeting 61bis
`
`61bis Tdoc list
`
`Printout of List of Tdocs submitted for 3GPP
`TSG RAN WG2 Meeting 61bis
`
`Dahlman textbook
`
`Excerpts from Dahlman, Erik. 3G Evolution:
`HSPA and LTE for Mobile Broadband.
`Amsterdam: Academic, 2007.
`
`1037
`
`TR 21.900 v8.2.0
`
`1038
`
`1039
`
`63 report
`
`63 docs
`
`3GPP TR 21.900 v8.2.0 (2008-03), 3rd
`Generation Partnership Project; Technical
`Specification Group Services and System
`Aspects; Technical Specification Group working
`methods (Release 8)
`
`Report of 3GPP TSG RAN WG2 Meeting 63
`
`Printout of
`http://www.3gpp.org/ftp/tsg_ran/WG2_RL2/TS
`GR2_63/Docs/
`
`Patent 7,881,236
`
`vii
`
`IPR2016-00757
`
`Exhibit 2003-008
`
`

`
`Exhibit No.
`
`Short Name
`
`Description
`
`1040
`
`TS 36.300 v8.3.0
`
`1041
`
`TS 36.300 v8.2.0
`
`1042
`
`TS 36.300 v8.1.0
`
`1043
`
`TS 36.300 v8.0.0
`
`1044
`
`TS 36.101 v8.2.0
`
`3GPP TS 36.300 v8.3.0 (2007-12), 3rd
`Generation Partnership Project; Technical
`Specification Group Radio Access Network;
`Evolved Universal Terrestrial Radio Access (E-
`UTRA) and Evolved Universal Terrestrial Radio
`Access Network (E-UTRAN); Overall
`description; Stage 2 (Release 8)
`
`3GPP TS 36.300 v8.2.0 (2007-09), 3rd
`Generation Partnership Project; Technical
`Specification Group Radio Access Network;
`Evolved Universal Terrestrial Radio Access (E-
`UTRA) and Evolved Universal Terrestrial Radio
`Access Network (E-UTRAN); Overall
`description; Stage 2 (Release 8)
`
`3GPP TS 36.300 v8.1.0 (2007-06), 3rd
`Generation Partnership Project; Technical
`Specification Group Radio Access Network;
`Evolved Universal Terrestrial Radio Access (E-
`UTRA) and Evolved Universal Terrestrial Radio
`Access Network (E-UTRAN); Overall
`description; Stage 2 (Release 8)
`
`3GPP TS 36.300 v8.0.0 (2007-03), 3rd
`Generation Partnership Project; Technical
`Specification Group Radio Access Network;
`Evolved Universal Terrestrial Radio Access (E-
`UTRA) and Evolved Universal Terrestrial Radio
`Access Network (E-UTRAN); Overall
`description; Stage 2 (Release 8)
`
`3GPP TS 36.101 v8.2.0 (2008-05), 3rd
`Generation Partnership Project; Technical
`Specification Group Radio Access Network;
`Evolved Universal Terrestrial Radio Access (E-
`UTRA); User Equipment (UE) radio
`transmission and reception (Release 8)
`
`Patent 7,881,236
`
`viii
`
`IPR2016-00757
`
`Exhibit 2003-009
`
`

`
`Exhibit No.
`
`Short Name
`
`Description
`
`1045
`
`TS 36.213 v8.3.0
`
`1046
`
`District Court
`Proposed
`Constructions
`
`3GPP TS 36.213 v8.3.0 (2008-05), 3rd
`Generation Partnership Project; Technical
`Specification Group Radio Access Network;
`Evolved Universal Terrestrial Radio Access (E-
`UTRA); Physical layer procedures (Release 8)
`
`Exhibit A to Joint Claim Construction
`Statement, filed on May 17, 2016 as D.I. 57-1 in
`Evolved Wireless, LLC v. ZTE Corp., 15-cv-
`546-SLR-SRF
`
`Patent 7,881,236
`
`ix
`
`IPR2016-00757
`
`Exhibit 2003-010
`
`

`
`Petitioner, ZTE (USA) Inc., HTC Corporation, and HTC America, Inc.,
`
`requests inter partes review of claims 1-10 and 12-13 of U.S. Patent No. 7,881,236
`
`(“the 236 patent”), attached as Exhibit 1001. Public records indicate that Evolved
`
`Wireless LLC (“Patent Owner”) holds rights to the 236 patent. (See Ex. 1020.)
`
`There is a reasonable likelihood that Petitioner will prevail with respect to at least
`
`one claim challenged in this petition for the following reasons.
`
`I.
`
`Introduction
`
`The challenged claims of the 236 patent are invalid for obviousness based on
`
`the very same version of the LTE standard that the patent purports to fix. Claiming
`
`priority to August 11, 2008, the 236 patent seeks to solve an alleged problem in the
`
`then-current LTE system standard concerning the conditions for transmission of
`
`“message 3” data. (Ex. 1001, 236 patent, at 4:26-34.) According to the 236 patent,
`
`that version of the LTE standard erroneously permitted user equipment to transmit
`
`message 3 data if the equipment received a “UL Grant signal” for data other than
`
`the message 3 data. (Id. at 13:5-21.) In a “preferred embodiment,” the 236 patent
`
`suggests solving this alleged problem by “restrictively transmit[ing]” message 3
`
`data “only in the case where” the UL Grant signal is received via a specific
`
`message known as a random access response, “but not in all cases where the UL
`
`Grant signal is received.” (Id. at 13:22-27 (emphasis added).)
`
`However, the patent’s claims impose no such exclusive limitation, and even
`
`Patent 7,881,236
`
`1
`
`IPR2016-00757
`
`Exhibit 2003-011
`
`

`
`if they did, this “solution” was already well-known and documented in the prior-art
`
`version of the LTE standard. At most, for a brief period, one section of that
`
`standard (3GPP TS 36.321 v8.2.0, referred to herein as “the 321 reference”)
`
`included a potential ambiguity about the conditions for message 3 transmission.
`
`But, within weeks, two companies independently recognized the potential
`
`ambiguity and resolved it to limit message 3 transmission to the correct conditions.
`
`Under the broadest reasonable interpretation of the claims, the potential
`
`ambiguity is irrelevant, and the challenged claims are invalid for obviousness
`
`based on the combined disclosure of the 321 reference and 3GPP TS 36.300 v8.4.0
`
`(referred to herein as the “300 reference”). Even if the Board construes the claims
`
`more narrowly, these two LTE standard documents still render the challenged
`
`claims obvious because a skilled artisan would have known how to resolve the
`
`potential ambiguity in the 321 reference, particularly in view of the correct and
`
`unambiguous disclosure in the 300 reference.
`
`II. Mandatory Notices (37 C.F.R. § 42.8)
`
`A.
`
`Real Parties-in-Interest (§ 42.8(B)(1))
`
`ZTE Corporation, ZTE (USA) Inc., HTC Corporation, and HTC America,
`
`Inc. are the real parties-in-interest.
`
`B.
`
`Related Matters (§ 42.8(B)(2))
`
`The 236 patent is the subject of the following pending matters, which may
`
`Patent 7,881,236
`
`2
`
`IPR2016-00757
`
`Exhibit 2003-012
`
`

`
`affect, or be affected by, a decision in this proceeding: Evolved Wireless, LLC v.
`
`Apple, Inc., 15-cv-542 (D. Del.); Evolved Wireless, LLC v. HTC Corp., 15-cv-543
`
`(D. Del.); Evolved Wireless, LLC v. Lenovo Group Ltd., 15-cv-544 (D. Del.);
`
`Evolved Wireless, LLC v. Samsung Electronics Co. Ltd., 15-cv-545 (D. Del.);
`
`Evolved Wireless, LLC v. ZTE Corp., 15-cv-546 (D. Del.); and Evolved Wireless,
`
`LLC v. Microsoft Corp., 15-cv-547 (D. Del.). Petitioner is unaware of any other
`
`pending matter that would affect, or by affected by, a decision in this proceeding.
`
`C.
`
`Counsel Information (§ 42.8(b)(3))
`
`Lead counsel is Charles M. McMahon. Back-up counsel are Hersh H.
`
`Mehta, Stephen S. Korniczky, Martin Bader, and Ericka J. Schulz. Powers of
`
`attorney accompany this petition. Petitioner consents to service by e-mail. Please
`
`send all correspondence to lead and back-up counsel at the addresses provided in
`
`the signature block of this petition.
`
`III. Payment of Fees (37 C.F.R. § 42.15(A))
`
`Petitioner authorizes the Office to charge the filing fee specified by 37
`
`C.F.R. § 42.15(a), and any other necessary fee, to Deposit Account No. 50-0417.
`
`IV. Grounds for Standing (37 C.F.R. § 42.104(A))
`
`Petitioner certifies that it has standing to request and is not barred from
`
`requesting an inter partes review of the 236 patent pursuant to 35 U.S.C. § 315.
`
`Neither Petitioner nor any privy of Petitioner has filed any civil action challenging
`
`Patent 7,881,236
`
`3
`
`IPR2016-00757
`
`Exhibit 2003-013
`
`

`
`the validity of any claim of the 236 patent or previously requested inter partes
`
`review of the 236 patent. Petitioner also certifies that it files this petition less than
`
`one year after the date on which Petitioner or any privy of Petitioner was served
`
`with a complaint alleging infringement of the 236 patent.
`
`V.
`
`Background of 236 Patent
`
`A.
`
`Summary
`
`The 236 patent has 13 claims, including method claims 1-6 and apparatus
`
`claims 7-13. Claims 1 and 7 are independent.
`
`Relevant to the claims is Figure 9, provided below with annotations. Figure
`
`9 shows “a method of transmitting UL data by a UE according to a preferred
`
`embodiment of the present invention.” (Ex. 1001, 236 patent, at 13:35-37.)
`
`Patent 7,881,236
`
`4
`
`IPR2016-00757
`
`Exhibit 2003-014
`
`

`
`In this figure, the relevant blocks are S902 and S906-S909. In block S902,
`
`the “HARQ entity of the UE may determine whether or not a UL Grant signal
`
`received from the eNode B [is] indicated at the TTI.” (Id. at 13:42-44.) In block
`
`S906, “the UE determines whether there is data in the Msg3 buffer.” (Id. at 13:66-
`
`67.) If not, the UE “performs new data transmission (S909).” (Id. at 14:7-13.)
`
`Otherwise, “the UE determines whether the received UL Grant signal is received
`
`on the random access response message (S907).” (Id. at 14:1-3.) If not, the UE
`
`performs new data transmission (S909).” (Id. at 14:7-13.) Otherwise, in block
`
`S908, the UE transmits the data stored in the Msg3 buffer. (Id. at 14:3-7.)
`
`B.
`
`Prosecution History
`
`On June 11, 2010, the examiner issued a non-final office action rejecting
`
`original claims 1, 5, 7, and 12-15 under 35 U.S.C. § 102(e) based on U.S. Patent
`
`Application Publication 2010/0034162. (See Ex. 1024, 6/11/10 office action.) The
`
`examiner indicated that claims 2-4, 6, and 8-11 would be allowable if rewritten in
`
`independent form. (Id. at 4.) In response, on September 3, 2010, the applicant
`
`cancelled dependent claims 2 and 8 and incorporated their features into
`
`independent claims 1 and 7. (Ex. 1025, 9/3/10 amendment, at 2-7.) On September
`
`20, 2010, in response to the amendment, the examiner issued a notice of allowance,
`
`leading to the issuance of the 236 patent. (Ex. 1026, 9/20/10 notice of allowance.)
`
`Patent 7,881,236
`
`5
`
`IPR2016-00757
`
`Exhibit 2003-015
`
`

`
`C.
`
`Priority Date
`
`The 236 patent claims priority to a provisional filed on August 11, 2008.
`
`VI. Background of Technology
`
`A.
`
`Person of Ordinary Skill in the Art
`
`The person of ordinary skill in the art of the subject matter of the 236 patent
`
`would have had a master’s degree in electrical engineering with 2-3 years of
`
`experience in cellular communication systems, and would have been aware of the
`
`efforts of the Third Generation Partnership Project and its various groups. (Ex.
`
`1016, Min decl., at ¶ 34.) Alternatively, that person would have had a Ph.D. in
`
`electrical engineering with the same familiarity with the work of the Third
`
`Generation Partnership Project and its various groups. (Id.)
`
`B.
`
`State of the Art
`
`In 2008, the telecommunications industry was developing the cellular
`
`standard now known as Long Term Evolution (“LTE”). (Ex. 1016, Min decl., at ¶
`
`35.) Development of LTE took place in a standard-setting organization called the
`
`Third Generation Partnership Project (“3GPP”). (Id.) 3GPP had members from
`
`virtually every telecommunications company and organization in the world. (Id.)
`
`3GPP had several groups. (Id. at ¶ 36.) Relevant here is the Technical
`
`Specification Group Radio Access Network (“TSG RAN”). (Id.) TSG RAN
`
`developed LTE’s radio access network, which allows user equipment (“UE”), such
`
`Patent 7,881,236
`
`6
`
`IPR2016-00757
`
`Exhibit 2003-016
`
`

`
`as a phone, to communicate with the cellular network through a base station called
`
`an eNodeB. (Id.) TSG RAN itself had several working groups, of which Working
`
`Group 2 (“WG2”) is relevant here. (Id.)
`
`One of the things WG2 was developing was LTE’s random access
`
`procedure. (Id. at ¶ 37.) Among other things, this procedure allows a UE initially to
`
`access a cellular network, for example, when the UE powers up. (Id.) As shown on
`
`the following page, the random access procedure had four conventional steps. (Id.)
`
`(Ex. 1002, 300 reference, at § 10.1.5 (Fig. 10.1.5.1-1).) The first step is the
`
`“message 1” step, in which a UE sends a random access preamble to an eNodeB,
`
`labeled “eNB” in the figure. (Ex. 1016, Min decl., at ¶ 38 (citing Ex. 1002, 300
`
`reference, at § 10.1.5.1).) Next, in the “message 2” step, the eNodeB sends the UE
`
`a random access response including an uplink grant. (Id.) Using the random access
`
`response, in the “message 3” step, the UE sends the eNodeB an uplink message,
`
`labeled “Scheduled Transmission” in the figure. (Id.) Finally, in the “message 4”
`
`Patent 7,881,236
`
`7
`
`IPR2016-00757
`
`Exhibit 2003-017
`
`

`
`step, the UE receives a message, labeled “Contention Resolution,” corresponding
`
`to the uplink message from the eNodeB. (Id.) As the 236 patent acknowledges, this
`
`procedure was well-known before the 236 patent’s claimed August 2008 priority
`
`date. (Id. (citing Ex. 1001, 236 patent, at 4:3-17).)
`
`Also well-known was that the UE transmits message 3 only if it receives a
`
`random access response, which is message 2. (Id. at ¶ 39.) This concept was
`
`documented in several places, including: (1) the 300 reference, an LTE
`
`specification published in March 2008; (2) the well-known Dahlman textbook on
`
`LTE published in 2007; and (3) a submission by Philips for a WG2 meeting in
`
`March 2008. (Id. (citing Ex. 1002, 300 reference, at § 10.1.5.1; Ex. 1036, Dahlman
`
`textbook, at 367-68; Ex. 1005, Philips submission, at Fig. 2).) Therefore, several
`
`months before the claimed priority date, skilled artisans knew that the UE should
`
`send message 3 only if it receives a random access response. (Id.)
`
`Although the 300 reference correctly captured this “only if” condition,
`
`another LTE technical specification, the 321 reference (dated June 2008), was not
`
`as clear in documenting it. (Id. at ¶ 40.) The 321 reference was clear that a UE
`
`must transmit message 3 as part of the scheduled transmission during the random
`
`access procedure if it receives an uplink grant on a random access response. (Id.)
`
`But the 321 reference was less clear about whether a UE may transmit message 3 if
`
`it receives an uplink grant on a message other than the random access response.
`
`Patent 7,881,236
`
`8
`
`IPR2016-00757
`
`Exhibit 2003-018
`
`

`
`(Id.) In other words, the 321 reference was clear about the “if” condition—that a
`
`UE transmits message 3 if it receives a random access response grant—but
`
`potentially ambiguous about the “only if” condition—whether the UE transmits
`
`message 3 only if it receives a random access response grant. (Id.) This potential
`
`ambiguity lingered in section 36.321 for several weeks. (Id.)
`
`But as WG2’s August 2008 meeting approached, two WG2 members—LG
`
`and Qualcomm—separately recognized the potential ambiguity and made exactly
`
`the same proposal to correct it at nearly the same time. (Id. at ¶ 41.) Specifically,
`
`on August 12, LG submitted two documents to WG2, proposal R2-084387 (Ex.
`
`1010) and change request R2-084388 (Ex. 1011). (Id. (citing Ex. 1039, 63 docs, at
`
`10).) Within three hours of LG’s submissions, Qualcomm submitted proposal
`
`number R2-084156 (Ex. 1008). (Id. (citing Ex. 1039, 63 docs, at 6).)
`
`Both the LG and Qualcomm submissions recognized the potential ambiguity
`
`in the 321 reference and proposed the same correction. (Id. (citing Ex. 1010, LG
`
`387, at 2; Ex. 1008, Qualcomm 156, at 1-2).) In a category F “correction,” LG
`
`offered the following proposal (top excerpt) and edit to section 36.321 (bottom):
`
`Patent 7,881,236
`
`9
`
`IPR2016-00757
`
`Exhibit 2003-019
`
`

`
`(Id. at ¶ 43 (citing Ex. 1010, LG 387, at 3; Ex. 1011, LG 388, at 2 (formatting in
`
`original)).) Similarly, Qualcomm offered the following proposal (top) and edit to
`
`section 36.321 (bottom):
`
`(Id. (citing Ex. 1008, Qualcomm 156, at 2, 5 (formatting in original)).) As a result,
`
`both Qualcomm and LG independently proposed the same correction at nearly the
`
`same time in order to clarify the same potentially ambiguous language in the 321
`
`reference. (Id. at ¶ 44.) Both proposals sought to restore the established procedure
`
`that skilled artisans had both known and documented in the 300 reference, the
`
`Dahlman textbook, and the Philips submission months earlier. (Id.) Accepting
`
`Qualcomm’s version, WG2 later corrected section 36.321 to include the “only if”
`
`condition, consistent with this earlier documentation. (Id. (citing Ex. 1038, 63
`
`report, at 90).)
`
`VII. Prior Art References
`
`A.
`
`Prior Art Specifications (Exs. 1002 and 1003)
`
`“Prior art specifications” refers collectively to two 3GPP technical
`
`specifications, the 300 reference and the 321 reference, both of which were
`
`approved technical specifications of the then-current LTE standard as of March
`
`Patent 7,881,236
`
`10
`
`IPR2016-00757
`
`Exhibit 2003-020
`
`

`
`2008 and June 2008, respectively. The 300 reference is provided as Exhibit 1002,
`
`and the 321 reference is provided as Exhibit 1003.
`
`The 300 reference was not cited to the Patent Office or considered by the
`
`examiner during the prosecution of the application that issued as the 236 patent.
`
`The 321 reference was cited to the Patent Office, but the examiner did not apply it
`
`in a rejection of any pending claim of the application that issued as the 236 patent.
`
`Under pre-AIA 35 U.S.C. § 102(a), the 300 reference is prior art to every
`
`claim because its publication date (on or before March 11, 2008) predates the 236
`
`patent’s claimed priority date (August 11, 2008). Likewise, the 321 reference is
`
`prior art to every claim under § 102(a) because its publication date (on or before
`
`June 15, 2008) predates the 236 patent’s claimed priority date (August 11, 2008).
`
`The 300 and 321 references are “printed publications” under § 102(a) for the
`
`reasons in section VII.C, infra at pp. 12-15.
`
`B.
`
`Ericsson Patent (Ex. 1004)
`
`“The Ericsson patent” refers to U.S. Patent No. 9,204,468, originally
`
`assigned to Telefonaktiebolaget L M Ericsson (Publ). The Ericsson patent was not
`
`cited to the Patent Office or considered by the examiner during the prosecution of
`
`the application that issued as the 236 patent. Under § 102(e), the Ericsson patent is
`
`prior art to every claim of the 236 patent because its effective U.S. filing date (June
`
`9, 2008) predates the 236 patent’s claimed priority date (August 11, 2008).
`
`Patent 7,881,236
`
`11
`
`IPR2016-00757
`
`Exhibit 2003-021
`
`

`
`C.
`
`“Printed Publication” Status
`
`Under pre-AIA 35 U.S.C. § 102(a), the prior art specifications are “printed
`
`publications.” A document qualifies as a printed publication if skilled artisans
`
`exercising reasonable diligence could have located it. See MIT v. AB Fortia, 774
`
`F.2d 1104, 1109 (Fed. Cir. 1985); Kyocera Wireless Corp. v. U.S. Int’l Trade
`
`Comm’n, 545 F.3d 1340, 1350-51 (Fed. Cir. 2008); see also In re Hall, 781 F.2d
`
`897, 898-99 (Fed. Cir. 1986); ZTE Corp. v. IPR Licensing, Inc., IPR2014-00525,
`
`Paper 19 at 14-17 (P.T.A.B. Sept. 17, 2014).
`
`The 300 and 321 references qualify as printed publications before the 236
`
`patent’s claimed priority date for two independent reasons. First, both references
`
`were published without restriction on 3GPP’s public website. Both references were
`
`also provided via e-mails to subscribers of the WG2 e-mail exploder list.
`
`Beyond the documents themselves, these facts are evidenced by testimony
`
`from a WG2 member who attended the relevant WG2 meetings (Ex. 1017),
`
`affidavits from the Internet Archive authenticating archived, time-stamped copies
`
`of the relevant webpages (Exs. 1018, 1019), and testimony from Dr. Paul Min
`
`based on his experience with 3GPP working groups and their documentation
`
`procedures (Ex. 1016).
`
`In particular, members of the public could have accessed the 300 and 321
`
`references before the 236 patent’s claimed August 2008 priority date via 3GPP’s
`
`Patent 7,881,236
`
`12
`
`IPR2016-00757
`
`Exhibit 2003-022
`
`

`
`public website without any restrictions. (Ex. 1016, Min decl., at ¶¶ 158, 172.) Both
`
`references were uploaded to 3GPP’s website with timestamps showing the upload
`
`date and time and the associated hyperlink as shown below.
`
`Reference
`300 reference
`
`321 reference
`
`Hyperlink
`http://www.3gpp.org/ftp/Specs/archive/36_
`series/36.300/36300-840.zip
`http://www.3gpp.org/ftp/Specs/archive/36_
`series/36.321/36321-820.zip
`
`Timestamp
`3/17/2008, 9:49 AM
`
`6/17/2008, 7:18 AM
`
`(Ex. 1017, Wei decl., at ¶¶ 6-12, Exs. 1, 3, 5; Ex. 1016, Min decl., at ¶¶ 161, 175
`
`(citing Ex. 1027, 36.321 specs listing, at 1; Ex. 1007, 36.300 specs listing, at 1);
`
`Ex. 1018, Butler aff. I, at ¶ 6, 1018-0011; Ex. 1019, Butler aff. II, at ¶ 6, 1019-
`
`0003.) By navigating 3GPP’s public website and accessing the hyperlinks above, a
`
`member of the public could have downloaded the 300 reference since March 17,
`
`2008, and could have downloaded the 321 reference since June 17, 2008. (Ex.
`
`1017, Wei decl., at ¶¶ 6-12, Exs. 1-6; Ex. 1016, Min decl., at ¶¶ 164, 178.) Exhibits
`
`1002 and 1003 are true and correct copies of the 300 reference and the 321
`
`reference, respectively, that Dr. Min downloaded by navigating the 3GPP website
`
`and accessing the links above without any restriction. (Ex. 1016, Min decl., at ¶¶
`
`160, 174.) Mr. Wei downloaded identical versions by following the same steps.
`
`(Ex. 1017, Wei decl., at ¶¶ 6-9, Exs. 2 & 9.)
`
`The time stamps shown above are reliable. (Ex. 1017, Wei decl., at ¶¶ 6-12;
`
`Ex. 1016, Min decl., at ¶¶ 161, 175 (citing Ex. 1021, 3GPP FAQs, at 9 (“time
`
`Patent 7,881,236
`
`13
`
`IPR2016-00757
`
`Exhibit 2003-023
`
`

`
`stamp of the Zip file can be relied upon to indicate when the upload occurred”)).)
`
`Documents become available on the 3GPP website and remain publicly available
`
`as of the date and time indicated by the specific time stamp reflected on the
`
`website. (Ex. 1017, Wei decl., at ¶¶ 6-12; Ex. 1022, Delegates Corner, at 3
`
`(“Documents are not deleted following the meeting, but are retained on the public
`
`server indefinitely.”).) Therefore, the 300 and 321 references have been available
`
`to members of the public on 3GPP’s public website since at least March 17, 2008
`
`and June 17, 2008, respectively, and remain available there today. (Ex. 1016, Min
`
`decl., at ¶¶ 164, 178.)
`
`The skilled artisan also could have received the 300 and 321 references
`
`before the 236 patent’s claimed priority date by subscribing to WG2’s e-mail
`
`exploder list (3GPP_TSG_RAN_WG2@LIST.3GPP.ORG). (Ex. 1017, Wei decl.,
`
`at ¶ 3; Ex. 1016, Min decl., at ¶ 168, 182.) On March 11, 2008, 3GPP’s technical
`
`officer Joern Krause sent an e-mail to WG2’s exploder list, notifying WG2
`
`members that the final version of 3GPP technical specifications, including the 300
`
`reference, were available on 3GPP’s website and providing a link to the folder
`
`storing those specifications. (Ex. 1016, Min decl., at ¶ 169.) Mr. Krause sent a
`
`similar e-mail for the 321 reference on June 15, 2008. (Ex. 1016, Min decl., at ¶
`
`183.) Any interested member of the public could have subscribed to this list and
`
`received the 300 and 321 references because this list was open to the public when
`
`Patent 7,881,236
`
`14
`
`IPR2016-00757
`
`Exhibit 2003-024
`
`

`
`those references were sent to it. (Ex. 1017, Wei decl., at ¶ 3; Ex. 1016, Min decl.,
`
`at ¶ 165, 179.) The skilled artisan would have subscribed to this list to monitor the
`
`standards development