`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE INC., MICROSOFT CORP., MICROSOFT MOBILE OY, AND
`MICROSOFT MOBILE INC.,
`Petitioners
`v.
`
`EVOLVED WIRELESS, LLC
`Patent Owner
`______________
`
`Case IPR2016-01229
`Patent 7,881,236
`______________
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITIONERS’ PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,881,236
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`IPR2016-01229
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`TABLE OF CONTENTS
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`I.
`Introduction ........................................................................................................ 1
`II. The State of the art ............................................................................................. 2
`A. Mobile telephony and LTE ......................................................................... 2
`B. Identifying radio resources ......................................................................... 4
`C. Base station communicates the radio resources it has allocated to a
`UE with uplink grants ................................................................................. 6
`D. A UE having new data to upload, but lacking radio resources
`sufficient for the upload, uses the random access procedure to obtain
`the resources ................................................................................................ 7
`III. The claims ........................................................................................................ 10
`A. Independent claim 1 .................................................................................. 10
`B. Independent claim 7 .................................................................................. 13
`IV. Claim Construction .......................................................................................... 14
`A. Claim 1 ...................................................................................................... 15
`1. The claim language, properly read, excludes the possibility of
`transmitting new data along with the Msg3 buffer data .................... 15
`2. Petitioners’ claim construction is highly suspect because it claims
`an inoperative method ........................................................................ 18
`3. Petitioners’ claim construction arguments fail .................................. 19
`a. Petitioners improperly dissect differences in meaning between
`“only when” and “if” ................................................................... 19
`b. Petitioners’ reliance on their cases is unfounded ........................ 20
`1. The broadest reasonable construction for claim 1 must be
`consistent with the expressio unius principle .................................... 21
`B. Claim 7 ...................................................................................................... 22
`1. The broadest reasonable construction for claim 7 must be
`consistent with the expressio unius principle .................................... 23
`V. The claims, using the broadest reasonable construction, are not obvious ....... 24
`A. Niu is not analogous prior art, and so cannot serve as a basis for
`Petitioners’ obviousness arguments .......................................................... 25
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`B. Petitioners’ argument that the Kitazoe reference teaches not
`transmitting the Msg3 buffer data along with the new data is contrary
`to the prior art as a whole .......................................................................... 28
`C. Ground 2 fails because it depends on the incorrect analysis found in
`Ground 1 ................................................................................................... 34
`VI. Conclusion ........................................................................................................ 34
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`TABLE OF AUTHORITIES
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`IPR2016-01229
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`Page(s)
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`Cases
`AIA Eng’g Ltd. v. Magotteaux Int’l S/A,
`657 F.3d 1264 (Fed. Cir. 2011) .......................................................................... 18
`
`CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG,
`224 F.3d 1308 (Fed. Cir. 2000) .......................................................................... 20
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`Chevron USA Inc. v. Echazabal,
`536 U.S. 77 (2002) .............................................................................................. 16
`
`Chi. Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC,
`677 F.3d 1361 (Fed. Cir. 2012) .......................................................................... 20
`
`Despoir, Inc. v. Nike USA, Inc.,
`2005 U.S. Dist. LEXIS 10845 (N.D. Ill. Feb. 9, 2005) ...................................... 16
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015), aff’d, 136 S. Ct. 2131 (2016) .......................... 14
`
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) .......................................................................... 25
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`PPC Broadband, Inc. v. Corning Optical Communs. RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ...................................................................... 19, 20
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`Schott Gemtron Corp. v. SSW Holding Co.,
`IPR2014-00367, Paper 62 (PTAB May 26, 2015) ............................................. 26
`
`Shenyang Yuanda Aluminum Industry Eng’g. v. United States,
`776 F.3d 1351 (Fed. Cir. 2015) .......................................................................... 15
`
`Other Authorities
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`MPEP § 2141 ............................................................................................................. 2
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`IPR2016-01229
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`Pursuant to 37 C.F.R. § 42.107, Patent Owner Evolved Wireless, LLC
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`submits this Preliminary Response to the above-captioned Petition for Inter Partes
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`Review of U.S. Patent No. 7,811,236 (“Pet.,” Paper 2).
`I.
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`Introduction
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`The Petition fails to establish a reasonable likelihood that Petitioners would
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`prevail with respect to any claim challenged in the Petition. The failure is
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`manifold. First, the Petition offers unreasonably broad constructions for two
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`limitations of the independent claims of U.S. Patent No. 7,811,236 (the “’236
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`patent”), Exhibit 1001.
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`Perhaps recognizing the unreasonableness of its proposed constructions, the
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`Petition also offers narrower constructions, but the Board should deny the Petition
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`under these constructions too. Exhibit 1005 (the Kitazoe reference) satisfies
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`Petitioners’ “only when” construction only if one takes one sentence in the
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`reference and declares it to a hard-and-fast definition of the term “random access
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`procedure.” This is contrary to the prior art as a whole. The Kitazoe reference
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`cannot show that certain acts happen “only when” certain events occur, because
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`that reference presents only a limited review of the random access procedure that is
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`at issue in the ’236 patent, and it does not consider more complex cases (cases that
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`the ’236 patent inventors did consider). Accordingly, the conclusion Petitioners
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`draw from the Kitazoe reference is unsupported.
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`But even more fatal to the Petition is its reliance on Niu, Exhibit 1012. Niu is
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`used solely for obviousness grounds. Niu is not analogous art, yet it underlies both
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`the Petition’s Grounds. Accordingly, and independent of what construction the
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`Board selects, the Petition should be wholly denied.
`II. The State of the art
`A. Mobile telephony and LTE
`This section reviews the scope of the prior art. This review is mandated by
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`Graham, because Petitioners’ grounds all rely on obviousness. MPEP § 2141.
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`Mobile telephony systems are divided into three parts. Ex. 1001 at 1:33-41.
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`First, there are mobile phones, also called “user equipment” (“UE”). Id. Second are
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`base stations, sometimes called “eNode B” or “Node B.” Id. Third is the core
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`network. Id. Figure 1 from the ’236 patent shows these three parts.
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`Figure 1 (Ex. 1001 at 3 (sheet 1))
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`Figure 2, below, also shows these three parts, and also shows that a mobile
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`UE can communicate with more than one base station. In mobile telephony
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`systems, a UE can move across a geographic region, at one time carrying out a
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`two-way conversation with one base station, and at a later time carrying out a two-
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`way conversation with another base station. See Ex. 2001 at 30.
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`Figure 2 (Ex. 2001 at 30)
`At the time of the invention, in 2008, the telecommunications industry was
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`developing the cellular standard now known as Long Term Evolution (“LTE”).
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`Pet. at 15. The LTE standard was finalized in December 2008, and the first
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`publicly available LTE service was launched in December 2009. Ex. 2002 at 1-2.
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`LTE systems did not simply spring into existence in 2008-2009, however.
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`The development of LTE began in 2004. Ex. 2001 at 20. Development of LTE
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`took place in a standard-setting organization called the Third Generation
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`Partnership Project (“3GPP”), where members from virtually every
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`telecommunications company and organization in the world, including Petitioner
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`Microsoft Mobile, Inc. (then known as Nokia), contributed. Ex. 2004 at 1-2 (citing
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`Nokia Corporation’s attendance at 3GPP TSG RAN WG2 Meeting 61bis (Exhibit
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`1033 to IPR2016-00757)); Ex. 2005 at 9 (memorializing a Nokia presentation on
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`“Correction to UE grant monitoring” in the Report of 3GPP TSG RAN WG1
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`meeting held in Shenzhen, China March 31-April 4, 2008). Working Group 2
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`(WG2) was a 3GPP group that developed LTE’s random access procedure. Ex.
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`2003 at 16-17.
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`The LTE random access procedure helps define how a UE initially accesses a
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`base station and how the base station could learn two important facts:
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`1. The fact that a UE–perhaps a UE with which the base station had no
`previous communication–had new data to transmit to the base station.
`2. How much new data the UE had to transmit.
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`Ex. 2006 at 21 (§ 5.4.5). With that information known, the base station is ready to
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`receive the UE’s new data. How the LTE standard permitted the base station to
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`learn these facts will be discussed below. When these facts are known, the base
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`station can allocate “radio resources” to a UE.
`B.
`Identifying radio resources
`The ’236 patent relates to the allocation of radio resources to UEs. See Ex.
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`1001 at 4:18-30. More specifically, the patent relates to allocations of radio
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`resources for uploads. Id. An upload is transfer of data from the UE “up” to a base
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`station, the data then being sent over the core network to a final destination(s). Id.
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`at 4:42-47.
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`Radio resources include the times and frequency bands a UE may use to send
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`its data to a base station. Ex. 2001 at 81. Figure 3, below, shows radio resources
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`assigned to two UEs. Each UE uses resource blocks that do not overlap in the
`time/frequency domain.
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`
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`Figure 3 (Ex. 2001 at 81)
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`A base station must assign radio resources to UEs judiciously, accounting for
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`the volume of data to be uploaded and that data’s priority. See Ex. 2001 at 79. For
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`example, if a base station assigned too many resources to one UE, then other UEs
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`might be unable perform to operate adequately. See id. at 81. Similarly, if too
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`many frequency bands were assigned to low priority data, then there might be
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`insufficient radio resources to assign to UEs that had generated new, high priority
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`data. See id. More specifically, for example, a base station may try not to run out of
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`resources for voice calls, as voice calls can be easily disrupted in “high latency”
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`situations. Id.
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`To minimize latency, then, a base station should know how much new data
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`the UEs in its cell have generated and stored for upload. Base stations that know
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`how much new data is waiting to be uploaded by all the UEs with which they are
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`in communication are able to identify the resources appropriate for each. See Ex.
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`2001 at 79-81.
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`Once a base station has determined a suitable allocation of resources, it must
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`communicate these resources to the UEs. This is the subject of the next section.
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`Once the UEs know which resources each may use, each may carry out two-way
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`communications with a base station, with each UE receiving an allocation,
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`transmitting its data, receiving a new allocation, and so on until the UE is out of
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`data.
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`C. Base station communicates the radio resources it has allocated to a
`UE with uplink grants
`As a general matter, for LTE uploads, the base station transmits the
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`allocations it has made through uplink grants (“UL Grant”). Ex. 1001 at 4:18-21.
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`Each UL Grant contains the time(s) and frequency band(s) a UE may use to
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`transmit its data. Id. at 4:21-26. There are two ways to provide UL Grants. Id.
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`The first type of UL Grant is a message contained in a random access
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`response. Id. at 5:14-17. UL Grants contained in random access responses are used
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`by base stations when, for example, the UE is not in the midst of an ongoing two-
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`way communication with the base station. Id. at 3:45-51. One example of this
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`situation includes a UE’s initial access to a base station in a handover procedure.
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`Id. at 3:49-50.
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`One example of second type of UL Grant is a grant contained in a PDCCH
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`communication. Id. The PDCCH (Physical Downlink Control Channel) is a radio
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`channel used by base stations to deliver UL Grants once the base station has
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`identified the specific UE to which it directs the UL Grant. See id. at 3:20-31. Non-
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`random access UL Grants are grants contained in a PDCCH communication. UL
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`Grants contained in a PDCCH communication are sent periodically by the network
`to provide opportunities for UEs to send, for example, Buffer Status Reports.1 See
`Ex. 2007 at 62; Ex. 2006 at 18.
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`D. A UE having new data to upload, but lacking radio resources
`sufficient for the upload, uses the random access procedure to obtain
`the resources
`The prior art random access procedure enabled a UE that had no ongoing
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`communication with a base station, but that had generated new data, to acquire
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`radio resources for the upload. Ex. 1001 at 11:22-47. As previously discussed, in
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`this circumstance the UE must first send two facts to the base station: 1) the fact
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`that the UE has new data; and 2) how much new data it has to upload.
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`As explained by the ’236 patent, at least in a simple case, the prior art random
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`access procedure requires four transmissions to be successfully transmitted before
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`the UE can upload its new data to the base station for delivery to the ultimate
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`recipient. Id. at 8:38-9:47. These four transmissions are illustrated in Figure 3. Id.
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`at 6 (sheet 4). They are 1) the random access preamble; 2) the random access
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`response; 3) the Scheduled Transmission; and 4) the contention resolution
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`message. Figure 4 shows these same four messages, using different nomenclature.
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`Ex. 2001 at 93. (Figure 3’s Scheduled Transmission and the contention resolution
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`messages are called “RRC Signaling”). Importantly, Figure 4 shows when new
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`data (called “user data” in Figure 4) is transmitted with respect to the four
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`1 By referring to non-random access UL Grants as PDCCH, Patent Owner does not
`represent that all non-random access UL Grants are delivered on the PDCCH.
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`messages shown in Figure 3’s random access procedure. It is the delivery of the
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`new data/user data that is the ultimate goal of the UE that performed a random
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`access procedure.
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`Figure 3 (Ex. 1001 at 6 (sheet 4))
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`Figure 4 ( Ex. 2001 at 93)
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`The four messages involved in the random access procedure each have unique
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`purposes.
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`The first of the four messages is a random access preamble. If a UE has high
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`priority data (“new data”) to upload to the base station but it lacks radio resources
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`for the new data, then it sends a random access preamble to the base station. Id. at
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`8:41-47. In sending the random access preamble to the base station, then, the UE
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`has delivered the first of the two important facts identified above.
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`The second of the four messages is an UL Grant contained in a random access
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`response. Successful receipt of this UL Grant by the UE triggers the UE to send the
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`third message to the base station, as the UE now knows that the base station is
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`aware that it has new data awaiting upload. Ex. 1001 at 8:48-9:5.
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`The third of the four messages is the Scheduled Transmission. The Scheduled
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`Transmission conveys information to the base station about how much new data
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`the UE has to upload to send to the base station. Id. at 11:38-43; Ex. 2007 at 62.
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`This information is often in the form of a buffer status report (“BSR”). Ex. 1001 at
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`11:39-41. It is also referred to as the data stored in the message 3 buffer, or the
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`“Msg3 buffer data.” Id. at 11:52-59. In sending the Scheduled Transmission/ Msg3
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`Buffer data to the base station, then, the UE has delivered the second of the two
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`important facts identified above. But before the UE uploads the new data, it must
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`receive an UL Grant sufficient for its data.
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`The last of the four messages is the contention resolution (“CR”) message.
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`The CR message serves two functions. First, the CR message is to permit each UE
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`receiving it to recognize that the CR message was, or was not, directed to it. Ex.
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`2001 at 94, 99-100. Second, the CR message contains an UL Grant sufficient for
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`the new data the UE has to upload. Ex. 2006 at 14. Importantly, and in
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`contradistinction to the UL Grant in the second message, the UL Grant that is part
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`of the CR message is sent on the PDCCH channel, and is not sent in a random
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`access response. Id. In other words, for example, even if two UEs both initiated a
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`random access procedure using the same random access preamble, the CR message
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`enables the correct UE to determine that the UL Grant is for its new data, and
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`enables the other UE to determine that the UL Grant is not for its new data. In such
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`a way, contentions between different UEs (simultaneous transmissions in the same
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`frequency channels) are avoided.
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`After the last of the four messages in the random access procedure is
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`successfully received, the UE is finally able to upload its new data to the base
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`station as illustrated in Figure 4, above.
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`What is critical to note about the prior art—and the ’236 patent did not
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`change this—is that the uploading of new data required two separate transmissions
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`by the UE (not counting the preamble’s transmission):
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`1. First, the UE sent the Scheduled Transmission, which delivered the
`buffer status report to the base station.
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`2. Second, occurring after the Scheduled Transmission and separated
`from it by the UE’s reception of the CR message, the UE sent the
`new data to the base station.
`The Scheduled Transmission and the new data are transmissions go hand in
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`hand with each other. The former enables the base station to allocate radio
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`resources for the latter’s transmission.
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`Also critical to note about the prior art—and not changed by the ’236
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`patent—is that the two separate UE transmissions just noted were each responsive
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`to their own UL Grant. One UL Grant authorized the UE to transmit the Scheduled
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`Transmission and a second UL Grant authorized the UE to upload its new data.
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`III. The claims
`A.
`Independent claim 1
`Claim 1 reads as follows:
`1.
`A method of transmitting data by a user equipment through an uplink,
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`[1.0]2
`1(b)
`[1.1]
`1(c)
`[1.2]
`1(d)
`[1.3]
`1(e)
`[1.4]
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`the method comprising:
`receiving an uplink grant (UL Grant) signal from a base station on a
`specific message;
`determining whether there is data stored in a message 3 (Msg3) buffer
`when receiving the UL Grant signal on the specific message;
`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).
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`1(f)
`[1.5]
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`A number of observations about claim 1 are relevant.
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`First, reading the claim in light of the patent specification, claim 1 refers to
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`the Scheduled Transmission as the transmission of “data stored in a message 3
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`(Msg3) buffer.” Id. at 4:11-14. Also, claim 1’s reference to a specific message can
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`2 In IPRs 2016-001228 and -1229, filed by Apple and Microsoft entities,
`Petitioners number the claim limitations as indicated above in square brackets. In
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`IPRs 2016-00757 and -01345, the ZTE/HTC and Samsung petitioners use the
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`letters a, b, c, etc. as headings. See. e.g., Ex. 2003(ZTE/HTC petition) at 22-37
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`(claim limitations 1(a)-1(f)) and pages 48- 53 (claim limitations 7(a)-7(j)). Patent
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`Owner uses the 1(a), 1(b), . . . nomenclature as shown above to ease the parties’
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`and the Board’s communications.
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`in limitation 1(d) refer to either of the two types of UL Grant: in limitation 1(e) a
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`UL Grant provided in in a random access response is required, and in limitation
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`1(f) one provided in a PDCCH UL Grant is required.
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`Second, limitations 1(e) and 1(f) both depend on a condition, here called
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`Condition X. Condition X is the underlined language in limitations 1(e) and 1(f)
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`copied above. It is this:
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`Condition X–is there data stored in the Msg3 buffer when
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`receiving the UL Grant signal on the specific message
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`and the specific message is the random access response
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`message?
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`Using the Condition X language, limitations 1(e) and 1(f) read:
`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.
`Evidently, these two limitations are of the form “If X, then do one thing, but if
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`1(e)
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`1(f)
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`not X, do the other thing.” This simple observation is relevant to the claim
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`construction.
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`Finally, it is notable that one cannot simply perform the claimed steps 1(a)
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`through 1(f) seriatim and transmit data in the message3 buffer and also transmit the
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`new data. That is because claim 1 contemplates the receipt of only one uplink
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`grant: the claim refers in limitation 1(b) to “an uplink grant . . . on a specific
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`message” and limitations 1(c)-(f) then refer to “the UL Grant signal on the specific
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`message.” And, as noted above at § II.D (page 10), two uplink grants must be
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`received in order to transmit both the data stored in the Msg3 buffer (i.e., make the
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`Scheduled Transmission) and the new data. Thus, making one pass through the
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`steps of claim 1 is insufficient to transmit the Msg3 buffer data and to transmit the
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`new data. This observation is relevant to whether Petitioners’ claim construction is
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`operative (it is not).
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`B.
`Independent claim 7
`Claim 7, the only other independent claim in the ’236 patent, reads as follows:
`A user equipment, comprising:
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`7.
`[7.0]
`7(b)
`[7.1]
`7(c)
`[7.2]
`7(d)
`[7.3]
`7(e)
`[7.4]
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`a reception module adapted to receive an uplink grant (UL Grant) signal
`from a base station on a specific message;
`a transmission module adapted to transmit data to the base station using the
`UL Grant signal received on the specific message;
`a message 3 (Msg3) buffer adapted to store UL data to be transmitted in a
`random access procedure;
`a Hybrid Automatic Repeat Request (HARQ) entity adapted to 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, 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 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
`a multiplexing and assembly entity used for transmission of new data,
`7(f)
`7(g) wherein the HARQ entity 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 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.
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`Ex. 1001 at 17:30-18:7. There are many similarities between the method claim 1
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`and the apparatus claim 7. In the next section, Patent Owner will identify some of
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`these similarities and point out how Petitioners’ proposed claim construction
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`ignores them.
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`IV. Claim Construction
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`Patent Owner observes that Petitioners’ claim construction arguments are
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`similar to those raised in their petition in IPR2016-01228 and to the arguments
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`raised in other petitions by other parties: IPR2016-00757 (Ex. 2003, the
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`“ZTE/HTC Petition”) and in IPR2016-01345 (Ex. 2008, the “Samsung Petition”).
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`These petitions’ claim constructions are all unreasonable, for similar reasons.
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`The Board gives each claim “its broadest reasonable construction in light of
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`the specification of the patent in which it appears.” In re Cuozzo Speed Techs.,
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`LLC, 793 F.3d 1268, 1275 (Fed. Cir. 2015), aff’d, 136 S. Ct. 2131, 2142 (2016).
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`Petitioners’ claim construction permits transmitting the data stored in the
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`Msg3 buffer to be made along with a transmission of the new data: “Patent Owner
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`may attempt to argue that the term ‘if’ should be interpreted as ‘only when,’
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`thereby narrowing the scope of claim 1 to this example from the specification.”
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`Pet. at 20. In other words, Petitioners argue that the transmission of the Msg3
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`buffer data can occur even under the conditions of limitation 1(f), when the new
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`data is sent, without receipt of an intervening CR message. That is because, in
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`Petitioners’ view, the claim uses the language “if” rather than “only when”
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`language. Id.
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`Applying Petitioners’ reasoning that “if” in these limitations means “not only
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`if” to both 1(e) and (f) limitations, then, Petitioners’ proposed construction is:
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`IPR2016-01229
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` 1(e)
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`1(f)
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`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 optionally transmitting the new data; 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,
`and optionally transmitting the data stored in the Msg3 buffer.
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`A. Claim 1
`Petitioners’ proposed construction, which permits transmitting the Msg3
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`buffer data along with new data (in limitation 1(f)), and which permits transmitting
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`new data along with the Msg3 buffer data (in limitation 1(e)), is unreasonably
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`broad.
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`1. The claim language, properly read, excludes the possibility of
`transmitting new data along with the Msg3 buffer data
`The ’236 patent, as discussed above, describes initiating a random access
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`procedure so that the UE can transmit its new data to a base station. Two UE
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`transmissions, one for the Msg3 buffer data and one for the new data, each
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`responsive to its own UL Grant, are required. In this circumstance, where there is a
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`series of terms, a statement mentioning one term is reasonably interpreted as
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`excluding the other term.
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`That is the principle of expressio unius est exclusio alterius. The principle
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`means “the express mention of one thing excludes all others.” Shenyang Yuanda
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`Aluminum Industry Eng’g. v. United States, 776 F.3d 1351, 1359 (Fed. Cir. 2015).
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`Under its guidance, the correct reading of limitation 1(f) excludes transmitting the
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`IPR2016-01229
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`Msg3 buffer data if the expressed claim limitations are present, and the correct
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`reading of limitation 1(e) excludes transmitting the new data if the expressed claim
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`limitations are present. As a result, the correct claim construction must exclude
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`Petitioners’ claim construction.
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`The expressio unius principle is applicable to patent law. Despoir, Inc. v. Nike
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`USA, Inc., 2005 U.S. Dist. LEXIS 10845, *1 (N.D. Ill. Feb. 9, 2005) (using the
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`principle to construe claim language, and “recognizing the validity of the canon of
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`construction, expressio unius est exclusio alterius, in a discussion about the
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`meaning of the term in patented items.”). It is applicable where, like here, the thing
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`mentioned and the thing not mentioned, go hand in hand:
`The canon depends on identifying a series of two or more
`terms or things that should be understood to go hand in
`hand, which is abridged in circumstances supporting a
`sensible inference that the term left out must have been
`meant to be excluded . . . expressio unius properly
`applies only when in the natural association of ideas in
`the mind of the reader that which is expressed is so set
`over by way of strong contrast to that which is omitted
`that the contrast enforces the affirmative inference.
`Chevron USA Inc. v. Echazabal, 536 U.S. 77, 81 (2002) (citations and quotation
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`marks omitted). In the present matter, the two things are transmitting the Msg3
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`buffer data and transmitting the new data. These things go hand in hand, and are
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`naturally associated by one of skill in the art when reading the patent’s
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`specification, because they are the only two sets of user data the patent
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`contemplates the UE transmitting.
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`IPR2016-01229
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`The ’236 patent’s Figure 9, copied below, confirms that the two things go
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`hand in hand, because it identifies them as the only endpoints of the claimed
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`process. This is visible in the figure’s two separate paths, one ending in step S909,
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`the transmission of new data, and the other ending the step S908, the transmission
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`of the Msg3 buffer data.
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`Figure 5 (Ex. 1001 at 10 (sheet 8))
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`Notably, the block for S909 does not include the phrase “but do not transmit
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`the Msg3 buffer data,” and the block for S908 does not include the phrase “but do
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`not transmit the new data.” But these omissions are precisely the omissions that
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`fall within the scope of the expressio unius principle.
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`Further, the patent’s specification confirms that its Figure 9 is to be
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`understood according to the expressio unius principle. The specification’s
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`discussion of Figure 9 explicitly excludes the things that the blocks S908 and S909
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`do not mention:
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`That is, the UE according to the present embodiment
`transmits the data stored in the Msg3 buffer only when
`there is data in the Msg3 buffer when receiving the UL
`Grant signal and the UL Grant signal is received on the
`random access response message (S908). If there is no
`data in the Msg3 buffer when receiving the UL Grant
`signal or the UL Grant is not received on the random
`access response message, the UE determines that the
`eNode B makes a request not for the transmission of the
`data stored in the Msg3 buffer but for transmission of
`new data, and performs new data transmission (S909).
`Ex. 1001 at 14:13-13 (emphasis added). Accordingly, Figure 9 is to be understood
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`according to the expressio unius principle.
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`2. Petitioners’ claim construction is highly suspect because