UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE INC., MICROSOFT CORPORATION, MICROSOFT MOBILE OY, AND
` MICROSOFT MOBILE, INC. (F/K/A NOKIA INC.),
`PETITIONER,
`
`V.
`
`EVOLVED WIRELESS LLC,
`PATENT OWNER.
`______________
`
`Cases IPR2016-01228 and IPR2016-01229
` Patent 7,881,236 B2
`______________
`
`Record of Oral Hearing
`Held: September 15th, 2017
`
`
`Before WILLIAM V. SAINDON, PATRICK M. BOUCHER, AND
`TERRENCE W. MCMILLIN, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE INC., MICROSOFT CORPORATION, MICROSOFT MOBILE OY, AND
` MICROSOFT MOBILE, INC. (F/K/A NOKIA INC.),
`PETITIONER,
`
`V.
`
`EVOLVED WIRELESS LLC,
`PATENT OWNER.
`______________
`
`Cases IPR2016-01228 and IPR2016-01229
` Patent 7,881,236 B2
`______________
`
`Record of Oral Hearing
`Held: September 15th, 2017
`
`
`Before WILLIAM V. SAINDON, PATRICK M. BOUCHER, AND
`TERRENCE W. MCMILLIN, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`A P P E A R A N C E S
`
`ON BEHALF OF THE PETITIONER:
`W. KARL RENNER, ESQUIRE
`ROBERTO J. DEVOTO, ESQUIRE
`FISH & RICHARDSON, P.C.
`1425 K Street, NW
`11th Floor
`Washington, D.C. 20005
`202.626.6393
`
`ON BEHALF OF THE PATENT OWNER:
`RYAN M. SCHULTZ, ESQUIRE
`MILES A. FINN, PH.D., ESQUIRE
`ROBINS KAPLAN, LLP
`299 Park Avenue
`Suite 3600
`New York, New York 10022
`212.980.7439
`
`
`ALSO PRESENT:
`DAN SMITH
`ROB LYTLE
`TONYA DE LA FUENTE
`MIKE JAY
`CHARLIE MCMAHON
`MELISSA DUCCA
`
`The above-entitled matter came on for hearing on Friday, September 15th,
`2017, commencing at 1:59 p.m. at the U.S. Patent and Trademark Office, 600
`Dulany Street, Alexandria, Virginia in Courtroom A.
`
`
`
`2
`
`
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`
`P R O C E E D I N G S
` JUDGE SAINDON: Good afternoon. I'm Judge Saindon.
`With me here is Judge McMillin. And with us via the Denver
`office link is Judge Boucher.
` This is an oral hearing for IPR2016-01228 and
`01229. Involving patent 7,881,236.
` We have 45 minutes for each side set aside. And
`before we get into that, we'll do our introductions.
` Patent Owner, you can go first.
` MR. SCHULTZ: Good afternoon, Your Honors. Ryan
`Schultz on behalf of the Patent Owner, Evolved Wireless.
`With me is my colleague, Miles Finn and a representative from
`Evolved Wireless.
` JUDGE SAINDON: Okay. Welcome.
` And Petitioner.
` MR. RENNER: Hi, Your Honor. Karl Renner from Fish
`& Richardson on behalf of Apple and Microsoft entities as
`lead counsel in the case as well and joined by co-counsel Rob
`Devoto and Dan Smith as well as a few representatives. From
`Microsoft, Rob Lytle. From Apple, Tonya de la Fuente and
`Mike Jay. ZTE has Charlie McMahon. And Samsung, Melissa
`Ducca.
` JUDGE MCMILLIN: Welcome.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`3
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
` And you can stay up if you wish to begin. You have
`45 minutes. If you'd like some time to reserve, let me know.
` MR. RENNER: Thank you. Just one moment with the
`electronics.
` JUDGE SAINDON: Sure.
` MR. RENNER: And for purposes of reservation, we'll
`hope to have 15 minutes reserved for redirect.
` Thank you.
` JUDGE SAINDON: Okay. You may begin when ready.
` MR. RENNER: May it please the board. As I
`mentioned, I'm Karl Renner. I'm here on behalf of Apple and
`Microsoft entities as lead counsel in these cases.
` And quickly I direct us to Slides 2 and 3. We'll
`show you Slide 2 to provide a summary of the demonstratives
`that we furnished. These are pretty comprehensive of the
`issues that are outstanding. We don't intend to walk through
`all of them, many of them are, we believe, handled well by
`the briefing. So we'll direct your attention to specific
`parts of them, but we thought this would be a useful
`mechanism for you to understand what we provided for you.
` Go to Slide 5, please. The two proceedings that
`are at hand here have before you several different grounds of
`rejection anchored by primary reference, Kitazoe, and with a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`4
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`secondary reference, a 3GPP document. There are two
`additional references, one for each set of grounds that are
`folded into these, the admitted prior art of the '236 patent.
`And we'll talk at length about that in the Niu reference
`alternatively.
` If we can move to Slide 10, please. The '236
`patent; we know you're well familiar with this patent given
`the recent oral hearing that has been had on it, but we'll
`say just a few words to help us to orient ourselves as to the
`issues that are at present at issue. And along those lines,
`we wanted to look at the message exchange that's here to
`enable a user equipment, UE, to communicate with the base
`station, which you can see labeled on this figure at
`Slide 10.
` The four messages that are shown here are fairly
`representative of an LTE exchanged handshake at the front end
`for this random access process and procedure. Message one
`being a random access preamble that is sent from the UE over
`to the base station when it comes into range.
` Message two being a random access response,
`something coming back from the base station and it's
`accompanied by a UL Grant, an uplink grant. Think of it
`essentially as something that's going to give a little
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`5
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`information to enable further communications between the two.
`And specifically, for instance, it could be time slots or
`frequencies indicated by that.
` Once the UL Grant is received by the user
`equipment, depending on the context and the timing of it and
`where it came from, there's a decision to be made by the user
`equipment; what's it going to do, how will it reply, will it
`go into a reply. And before this, it may decide to put out
`buffer data, it may put new data forward, it depends really
`on the context and some logic. And that's going to be a lot
`of the conversation we'll have here this afternoon.
` So we're going to look at those conditions. If you
`look at Slide 11, please. The '236 patent, it describes what
`it thinks is a problem that relates to what is sent in
`response by this UE when it receives a second message or
`otherwise. So the UE has the option of, as mentioned,
`providing a message back that has buffered information or new
`information in it. And the patent describes a situation
`where a second exchange happens, a second message comes from
`the base station.
` And in response, at times, it proclaims that
`base -- that buffer data is sent in response. That
`apparently causes a problem. There's not a lot of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`6
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`information in the patent about what that problem is, just
`that if there's a second exchange, a second receipt of an
`Uplink Grant, and the response to which is a message three
`piece of information, the patent proclaims that there's an
`issue.
` Next, Slide 12, please. When we look at the claims
`of the patent and we look at this problem, we notice that
`notoriously absent from the claims is any mention at all of
`the problem, any mention at all of the specific solution to
`the problem, instead there's a lot of discussion of a
`specific message and how a specific message is handled in the
`claim. We'll certainly talk a lot about that.
` There are specific actions that are called out in
`the claim. And along those lines, those actions relate to
`that specific single message that's called out. You have the
`receipt of an Uplink Grant and that Uplink Grant is on the
`specific message. You have a few determination steps that
`relate to looking at what's in the buffer as well as was that
`specific message a random access response, a message two.
`And then you have a couple transmission steps that follow.
`Those transmission steps set forth the apparent and overt and
`affirmative sending of information if conditions are met.
` So we're going to look at two pieces of this claim,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`7
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`in particular, during our presentation. The first is the
`first determining step, speaking of the message three buffer
`and does it have data in it. And the second being the first
`transmission step that has an if clause in it.
` The if clause that's in that second -- or that
`first transmission step is the subject of a claim
`construction dispute so we thought we'd start there in our
`conversation before turning to the prior art. And I thought
`we'd start with just reading that out loud together, if we
`could.
` That transmitting steps reads, "Transmitting the
`data stored in the message three buffer to the base station
`using the UL Grant signal received on a specific message."
`What are they talking about here? They're talking about
`transmitting the message three buffer information in reply to
`a UL Grant. And then it says if, if there is data first. If
`there is data stored in the message three buffer when
`receiving the UL Grant signal and if the specific message is
`a random access response message. So two different
`conditions that trigger the affirmative action of
`transmitting that is specified here.
` If we go to Slide 28, we'll dig a little deeper
`into this. And Slide 28 is the first of the slides in a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`8
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`sequence that was shown to you briefly in the table of
`contents that deals with the various different issues that
`were set forth in relaying the construction. So this is to
`orient us.
` Slide 29 is really where we get into the details.
`In Slide 29, we actually reproduce that clause that I just
`mentioned highlighting the if statement, that single and sole
`if statement, and showing how it unambiguously is recited
`here. Notoriously absent from not only this particular
`element, but from the claim in general, are any terms that
`limit or preclude transmission of the message three buffer
`data.
` There's no term that says that you would limit it,
`no preclusion, no only, no only if, no only when. Those
`terms are all absent from this claim. The claim in the
`affirmative stating that you do transmit under a couple of
`conditions if those conditions are met. Now --
` JUDGE BOUCHER: Is it your position then the
`Patent Owner has cited de Morgan's law and so is it your
`position that the entire universe of potential conditions is
`not satisfied by those two transmission steps?
` MR. RENNER: That's a great question, Your Honor.
`Our position is that that's actually not relevant. Our
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`9
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`position is that if the universe were canvassed by them or
`not, the claim is still the claim and the claim specifies
`what you do with respect to a specific message. So when you
`test this claim as it's written, you're to test it the way
`it's written, and you're to focus on a specific message and
`whether the specific message was handled.
` When you go through the claim, you'll find that
`specific messages may, in fact, trigger the two conditions as
`appropriate and, therefore, have a message three transmit
`into one instance and the second of the clauses would drop
`out. It would just not be satisfied, the conditions would
`not be satisfied. Or vice-versa if the conditions that are
`surrounding the message three transmission were not met, that
`claim element would not be applicable and the transmission
`for message three data would just be in opposite.
` So to your point, Your Honor, whether all of the
`different matrices, boxes, if you will, are accounted for, is
`one question and it's a good question. But more relevant in
`claim nomenclature and the way we apply our claims, is
`whether these claims are actually satisfied by something
`that's performed in the method.
` So we think, it's our position, that you'd have to
`test the claim against the specific message.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`10
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
` JUDGE BOUCHER: Yes, but it sounds as though
`you're reading the claim by excluding one of the conditional
`limitations at a time, but doesn't the fact that -- I mean,
`isn't it relevant that the claim actually does recite
`mutually exclusively conditions under which some behavior
`takes place? Why isn't it correct that this is just reciting
`an if-then-else, kind of statement?
` MR. RENNER: Thank you, Your Honor --
` JUDGE BOUCHER: I mean, it sounds like the way
`you're construing the claim is you have if-then, and you
`don't really worry about the else. And then you've got
`another claim that has the if-else, but you don't worry about
`the other then condition. But the claim has all of it in
`there. And I still grapple with why that isn't relevant and
`why the Patent Owner isn't correct.
` MR. RENNER: Thank you. Yes, Your Honor, if there
`had been language in the claim that had said if then -- if
`you can satisfy the conditions, you do something that is you
`transmit. And in the same gloss, else, you don't transmit,
`then you'd have language in there that would actually tell us
`to not transmit the message three data. And then you could
`have a second clause perhaps, I'm doing something different,
`but here you have no instruction as the claim goes as to what
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`11
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`you would do with message three data if the conditions of,
`for instance, clause 1 were not met.
` And so we don't believe we're reading out the
`second condition. In fact, we're reading it for what it
`states. It's a condition that's either satisfied or it's
`not. The way the claim is written it could be satisfied and
`still never inform what you do with a message three piece of
`information.
` It's emblematic that the Schulhauser case that was
`recently promoted as a precedential case out of the PTAB
`addressed this exact same issue. And if you look at the
`claims in that case, they speak to if clauses styled in
`exactly the same way on conditions that are mutually
`exclusively and yet comprehensive of the universe. And in a
`case that's quite clear and we think appropriately, that you
`read the claim for what the claim says. You test each
`limitation for that limitation's sake and you leave to the
`patent drafter to either write into the claim that they
`exclude certain things from happening or to leave the
`universe open as to those things happening.
` And that's the contract we all make. As
`prosecutors, when we're prosecuting claims, we have to make
`the decisions, do you bring in details from the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`12
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`specification, do you claim all of the steps or a subset of
`the steps, it's your choice as a patent drafter. But when
`you claim a subset of the steps, you have both the benefit of
`potentially ensnaring infringers and the burden of being
`tested against prior art.
` In this case, the patent drafter had nothing in
`their claims about the negative, about that you don't
`actually send either pieces of data under a certain
`circumstance. They claimed the affirmative, which is part
`of, I grant you, what is described in the specification.
` Does that help?
` JUDGE BOUCHER: That helps. Thanks.
` JUDGE SAINDON: So, Counsel, just to beat on this
`horse, are you saying, okay, we have -- in the first
`transmitting, you have condition A and B, and then in the
`second transmitting, you have not A or not B, and you're
`saying the second transmitting may occur, but that doesn't
`tell us that we can't still send a message three?
` MR. RENNER: Yes, Your Honor, I'm telling you the
`claim doesn't tell us what happens. Whether technologically
`you could, whether people might, those are issues this claim
`doesn't take up. The claim itself leaves open. It just
`doesn't inform as to what happens when those issues are sat-
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`13
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`-- when the conditions are satisfied in either one of the
`circumstances, it tell us affirmatively what to do, but the
`claim leaves open for whatever reason the patent drafter
`decided to not also write in that you don't take the other
`step.
` So, for instance, in the first clause, it tells us
`affirmatively do transmit message three, but it doesn't go on
`to say but don't transmit new data. And in the second
`clause, they say do transmit new data, but they never say yet
`don't transmit message three.
` The patent drafter chose to leave those terms out
`of the claim and to use the open-natured clause if. And only
`now asks Your Honors to inject the term "only," which is
`really an amendment and not a construction at all. They want
`to leave the term "if" in, they just want to add it a new
`limitation that they themselves acknowledge is narrowing.
` JUDGE SAINDON: And so say the prior art were
`sending the data stored in the message three buffer upon
`condition C, something not already specified, you're saying
`the claim doesn't preclude that additional step?
` MR. RENNER: That's correct, Your Honor, the claim
`just doesn't speak to it.
` JUDGE SAINDON: Now, does the prior art still have to
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`14
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`send new data if not A or not B even if it has this -- it
`also happens to send message three if C?
` MR. RENNER: The scenario is getting more
`complicated. Can you please one more time for me make sure
`I'm following properly?
` JUDGE SAINDON: Okay. So I think we -- if -- say
`condition C happened and the phone sends message three, the
`hypo we just had, so that presumes that we have not A or not
`B. Okay. So does the prior art have to send new data because it
`has not A or not B and then it still sends message three for
`whatever other reason, but does it still have to send the new
`data because we have not A or not B?
` MR. RENNER: I think I would say it this way -- I'm
`not sure. I'm trying to really -- but I think I would say it
`this way: The claim is amenable to actually specifying not
`taking steps. Let's just say that the claim covers -- it
`canvasses the universe of options. So it's hard to imagine
`what that C would look like. That's one of the reasons that
`I'm having a hard time conjuring a response here.
` But let's just take for the sake of argument that
`it does canvass the universe of options, our position is that
`it hasn't -- it could be amended, you know, it could be
`amended with yet additional steps that say don't do certain
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`15
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`things. And it never comes out and tell us, it doesn't give
`us that instruction.
` While those steps might be supported by the
`specification and they might enable you to fully and
`comprehensively cover what was now said to be the invention
`or whatever is being promoted, them being absent leaves us
`open to not knowing the answer to what the claim -- what it
`would do, you know, which aspects would be permissible or not
`in terms of the affirmative.
` JUDGE SAINDON: So I guess maybe to ask this
`another way, we're either going to transmit the message three
`or the new data according to the claims every time?
` MR. RENNER: Right.
` JUDGE SAINDON: And then your position is that you
`might also transmit message three under some other
`circumstance?
` MR. RENNER: Potentially, that's correct, Your
`Honor.
` JUDGE SAINDON: But we always do either 1.4 or 1.5,
`the steps on your Slide 19 as you've got them labeled.
` MR. RENNER: It seems that that's the case, yes.
`You're going to trigger one of those two it seems if they're
`correct in the logic tables and that is the canvassed
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`16
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`universe. And that's much like, again, I'll reference back
`to the Schulhauser case where one of two actions that were
`differentiated from one another were taken under any
`circumstance.
` And yet the word "if" being the conditional clause
`as between the action and the condition in each of two
`competing, just like this, it was made clear, it was decided,
`and I think appropriately so, that the absence of limitation
`by the patent drafter left the claim open to just not knowing
`what happens -- what would satisfy the claim in a
`circumstance like what if the prior art we have was being
`accused of infringement. I would imagine the story might be
`quite different.
` Here it's open enough that that prior art should
`meet the claim much like if it were accused of infringement,
`I would be sure the Patent Owner would be saying the claim
`should be open enough to cover because they drafted it the
`way they drafted it. And, frankly, in these proceedings,
`there is no presumption of validity to keep in mind. We
`don't have to interpret a claim to add limitations to it or
`otherwise save its validity.
` We start to interpret it to be reasonably broad,
`broadest reasonable interpretation, we're not looking for
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`17
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`more than that. And yet in these proceedings, there's motion
`to amend practice. And we know for patentees, all the time
`patentees acknowledge that they've got too much breath in
`their claims. That's what narrowing reissues are for as
`well.
` Many, many a time a Patent Owner has gone back to
`the patent office having realized their claims -- they just
`don't cover what they thought they cover, they don't maybe
`capture something in the specification they believe was
`important to distinguish from prior art or to -- for whatever
`purposes they want.
` And without their presumption of validity and with
`those tools available, we think, it's our position, that
`asking this court, this board, to narrow the claims by
`injecting a word, not even interpreting if as something
`different than if, but just injecting the word "only." It's
`quite clearly an amendment by fiat. We think that would be
`badly inappropriate.
` Are there questions on that? It's a very important
`issue and one we don't want to shortchange for sure.
` JUDGE SAINDON: No.
` MR. RENNER: Okay. So you've asked questions that
`have really brought me forward.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`18
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
` I will mention another aspect of this and that is
`there's a case that was cited in the affirmative in support
`of the construction. And I wanted to address that. It was a
`case the PPC Broadband and Corning Optical case. I only make
`mention of it because the case deals with construction of the
`term "around." And in that case, the PTAB was -- it was
`reversed by the Federal Circuit and it had used a dictionary
`definition to define that term.
` So around became -- at the end of the proceedings,
`it became in the immediate vicinity of, semicolon, near. And
`the Federal Circuit found that to be not appropriate. They
`pushed back and they said that a better construction would be
`encircle or surround. Well, that was the case that was
`supposed to support what we're being asked for now, replacing
`if with only if.
` But in that case, you can see around is neither
`present in the PTAB construction, nor the Federal Circuit
`construction because those are constructions. They're not
`amendments by fiat, they're not like what we're being asked
`to do here. We think that case is not appropriately
`supporting the position here.
` And we refer you to Slides 26 and 27 as well as
`pages 42 and -3 of the petition for the discussion of the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`19
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`application of Kitazoe, but that's not as much at issue at
`this point. What's at issue here is the construction itself
`we believe.
` So with that, I would actually turn us to the
`second issue, but I'm happy to entertain further questions on
`the construction issue. Again, it's an important one. I
`don't want to rush us along here.
` Okay. So Slide 13 is where we go then. And we're
`backing up a little bit because now we're into the realm I
`mentioned before. We're going to focus on two different of
`the claim terms. The second term is the determining term.
`This term deals with determining whether there exists data in
`that buffer when you get a message two with a UL Grant. And
`what we want to do here first is draw out what is the prior
`art and make sure you understand what the prior is and then
`its combination and then we'll apply it to the claim.
` So next slide, please, 14. The Kitazoe reference,
`I won't take too long on it because it's really -- this
`debate is a little bit more on the AAPA than it is Kitazoe.
`Kitazoe, though, is, as you may recall, the primary reference
`in each of the grounds. And it does deal with a process
`quite similar to the '236 patent.
` Figure 4 is shown on this slide and it shows you a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`20
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`variety of the steps that are taken in an ordered way that is
`similar to the Figure 4 of '236. We see that Kitazoe
`transmits a message three buffer, in fact, in response to a
`random access response message. You can see it there in the
`middle of the slide, it's small print of course, but message
`three encrypted it says -- or unencrypted it says. And that
`comes in response two. And there's no dispute over that.
`Page 39 of the Patent Owner response tells us that the Patent
`Owner does not dispute that this figure shows the
`transmission of message three buffer data in response to that
`random access response.
` The criticism of Kitazoe is for failing to consider
`the case of two different UL Grants. It's a question of
`whether it considered this problem, solved this problem.
`We've marked number 1 the idea that the claim doesn't talk
`about the problem of two UL grants. Keep in mind, we earlier
`looked at the claim together and it's about a specific
`message and it is about how it is handled in terms of the
`transmission step on the conditions, but there's no mention
`in the claim of two UL grants coming.
` And then we'd say also that when we look at the
`Wells' transcript, pages 58 to 65, they were cited as
`supporting the idea that there was an affirmative disregard
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`21
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`by Kitazoe of that problem. I commend those pages to Your
`Honors. I think it looks quite different than that.
`Dr. Wells was presented with hypotheticals that are not the
`hypothetical that matches up to the problem addressed by the
`patent.
` We can go into those if it's helpful, but I would
`just for sure commend those to you and make sure you
`understand that his statements were not statements that
`Kitazoe fails to address those two -- the hypothetical that
`is in the patent itself. It's a different hypothetical,
`different problems. Kitazoe, we can go into it if it's
`helpful, we think affirmatively addresses not only the first
`and the second of the two steps, but all four conditions.
` With that in mind, though, we look at Kitazoe and
`we know we want to complement it because we want to have an
`affirmative teaching of checking that buffer. So if we
`could, let's talk about the admitted prior art and also the
`Niu reference, which was combined with Kitazoe to form their
`combinations that are applied.
` So Slide 15 is where we are. And in Slide 15, we
`look at the actual admitted prior art language that was in
`the '236 patent. In fact, we see that now, quote --
` JUDGE BOUCHER: So you just said the Niu reference.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`22
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
`Are we talking about the Niu reference here or are we just
`talking about the admitted prior art?
` MR. RENNER: Yes, Your Honor, we're talking about
`the admitted prior art for now and then we'll turn to the Niu
`reference afterwards.
` Thank you for clarifying.
` JUDGE BOUCHER: Okay.
` MR. RENNER: So on Slide 15, we're talking just
`about the admitted prior art. And we'll show you here the
`quote from the '236 specification just to ground our
`conversation. And I'll read the part that I think is maybe
`most salient here. It says, "According to the current LTE
`system standard." So we're talking about LTE quite clearly
`when we're talking about this admitted prior art. It says,
`"If the UL Grant signal is received in a state in which the
`data is stored" -- data is stored in the message three
`buffer. If that's true, then data stored in that message
`three buffer is transmitted.
` Okay. So when we talk about if-thens, here's an
`if, the condition, and then you take the action. If the
`signal -- the state of the buffer is it's got data with
`message three data in it, then we take the action. The data
`is stored, is transmitted.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`23
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Patent No. 7,881,236 B2
`
`
` In paragraph 74 to 75 and 88 of his declaration,
`Dr. Wells helps us see this through the eyes of a person of
`ordinary skill.
` So let's take a look, if we could, at Slide 65.
`It's at the end of our presentation. We added a couple of
`slides to address what this really talks about. If we look
`at Slide, again, 65 here, it shows at the beginning of
`paragraph 75 where Dr. Wells tells us a few things. He says
`that -- focusing on the top box here he says, in order to do
`what this passage states -- and that is to transmit the data
`stored in the message three buffer -- if the UL grant signal
`is received in a state in which that buffer is populated, the
`user equipment must necessarily determine whether there is
`data stored in the message three buffer.
` Now, of course he's offering his opinions about
`what a person of ordinary skill would think and know. So
`toward the back end of that same paragraph -- let's go to
`Slide 67, please -- he makes this point by saying further,
`that performing such determinations prior to reading from or
`transmitting data stored in a buffer, prior to doing those
`things, it would have been known to a POSITA.
` Again, I'll read, performing such determinations,
`that is determining whether or not the buffer has data in it,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`24
`
`
`
`Case IPR2016-01228 and IPR2016-01229
`Pat
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
