Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 27
`Entered: November 30, 2017
`
`
`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.
`____________
`
`Case IPR2016-01229
`Patent 7,881,236 B2
`____________
`
`
`
`Before WILLAM V. SAINDON, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 27
`Entered: November 30, 2017
`
`
`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.
`____________
`
`Case IPR2016-01229
`Patent 7,881,236 B2
`____________
`
`
`
`Before WILLAM V. SAINDON, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`IPR2016-01229
`Patent 7,881,236 B2
`
`
`In response to a Petition (Paper 2, “Pet.”) filed by Apple Inc.,
`Microsoft Corporation, Microsoft Mobile Oy, and Microsoft Mobile Inc.
`(f/k/a Nokia Inc.) (collectively, “Petitioner”), we instituted an inter partes
`review of claims 1–10, 12, and 13 of U.S. Patent No. 7,881,236 B2 (“the
`’236 patent”). Paper 8 (“Dec.”), 21. During the trial, Evolved Wireless
`LLC (“Patent Owner”) timely filed a Response (Paper 14, “PO Resp.”), to
`which Petitioner timely filed a Reply (Paper 16, “Reply”). An oral hearing
`was held on September 15, 2017, and a copy of the transcript was entered
`into the record. Paper 22 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has shown, by a preponderance of the evidence, that claims 1–10, 12, and 13
`are unpatentable.
`
`
`I. BACKGROUND
`A. The ’236 Patent
`The ’236 patent “relates to a mobile communication technology.” Ex.
`1001, col. 1, ll. 17–18. In particular, the patent describes a random access
`procedure for user equipment (“UE”) and a base station in a
`telecommunication system. Id. at col. 3, ll. 42–59. Figure 1 of the ’236
`patent illustrates a particular example of such a telecommunication system—
`the Evolved Universal Mobile Telecommunication System (“E-UMTS”),
`and is reproduced below.
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`Figure 1 provides a schematic view of a network architecture for the E-
`UMTS, which may be conceived in terms of two component networks:
`Evolved UMTS Terrestrial Radio Access Network (“E-UTRAN”) 101 and
`Core Network 102. Id. at col. 1, ll. 26–35. The first of these, E-UTRAN
`101, may include user equipment (“UE”) 103, multiple base stations 104
`(referred to in the ’236 patent as “eNode B” or “eNB”), and Access Gateway
`(“AG”) 105. Id. at col. 1, ll. 35–39. Access Gateway 105 is positioned at
`the end of the network and connected to an external network, and can
`include a portion for processing user traffic and a portion for processing
`control traffic. Id. at col. 1, ll. 38–41.
`As the ’236 patent describes, “a UE performs the random access
`procedure” in a number of instances, including “when the UE performs
`initial access” to a base station and “when there is uplink data transmission
`in a situation where uplink time synchronization is not aligned or where a
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`specific radio resource used for requesting radio resources is not allocated.”
`Id. at col. 3, ll. 42–57. A version of Figure 5 of the ’236 patent annotated by
`Petitioner is reproduced below.
`
`
`Figure 5 shows an example of a random access procedure performed
`between user equipment UE and base station eNB. Id. at col. 6, ll. 53–55.
`The procedure begins with transmission of a “random access preamble”
`from the UE to the base station at step S501 (referred to as a “message 1”
`transmitting step). Id. at col. 4, ll. 3–7. The UE receives a “random access
`response” from the base station at step S502 “in correspondence with the
`transmitted random access preamble” (referred to as a “message 2” receiving
`step). Id. at col. 4, ll. 7–11. Of particular relevance, the UE then transmits
`an uplink message to the base station at step S503 (referred to as a “message
`3” or “Msg3” transmitting step). Id. at col. 4, ll. 11–14. The UE receives a
`corresponding “contention resolution” message from the base station at step
`S504 (referred to as a “message 4” receiving step). Id. at col. 4, ll. 14–17.
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`In the random access procedure, the UE stores data to be transmitted
`via the message 3 in a “Msg3 buffer” and transmits the stored data “in
`correspondence with the reception of an Uplink (UL) Grant signal.” Id. at
`col. 4, ll. 18–21. The UL Grant signal indicates information about uplink
`radio resources that may be used when the UE transmits a signal to the base
`station. Id. at col. 4, ll. 21–26. According to the ’236 patent, then-current
`Long-Term Evolution (“LTE”) system standards provided that data stored in
`the Msg3 buffer of the UE would be transmitted to the base station
`“regardless of the reception mode of the UL Grant signal,” and that “if the
`data stored in the Msg3 buffer is transmitted in correspondence with the
`reception of all UL Grant signals, problems may occur.” Id. at col. 4, ll. 26–
`32 (emphases added). The ’236 patent purports to solve such problems. Id.
`at col. 4, ll. 33–34.
`Figure 9 of the ’236 patent is reproduced below.
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`Figure 9 is a flowchart of the method described by the ’236 patent, showing
`the operation of an uplink Hybrid Automatic Repeat Request (“HARQ”)
`entity in a UE. Id. at col. 13, ll. 35–39. After a UL grant signal is received
`from the base station at step 902, the UE determines at step 906 whether
`there are data in the Msg3 buffer. Id. at col. 13, ll. 42–44, 66–67. If so, a
`further determination is made at step 907 whether the received UL grant
`signal is on a random access response (“RAR”) message. Id. at col. 13, l.
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`66–col. 14, l. 3. The UE transmits the data in the Msg3 buffer to the base
`station “only when” both conditions are met, i.e., “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).” Id. at
`col. 14, ll. 3–7. Conversely, if either condition is not met, i.e. there are no
`data in the Msg3 buffer or the UL Grant signal is not on a random access
`response message, then the UE determines that the base station is making a
`request for transmission of new data and performs new-data transmission at
`step 909. Id. at col. 14, ll. 7–13.
`
`
`B. Illustrative Claims
`Claims 1 and 7 of the ’236 patent, reproduced below, are independent
`claims respectively directed at the above-described method and at user
`equipment that implements the above-described method.
`1. A method of transmitting data by a user equipment through an
`uplink, the method comprising:
`receiving an uplink grant (UL Grant) signal from a base station
`on a specific message;
`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.
`
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`
`
`7. A user equipment, comprising:
`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,
`
`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.
`
`IPR2016-01229
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`C. Instituted Grounds of Unpatentability
`We instituted trial for challenges under 35 U.S.C. § 103(a) over the
`following combinations of references. Dec. 21.
`
`
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`
`References
`Kitazoe,1 Niu,2 and Specification 3213
`Kitazoe, Niu, Specification 321, and Kitazoe II4
`
`Challenged Claim(s)
`1–4, 6–10, 12, and 13
`5
`
`D. Real Parties in Interest and Related Proceedings
`Petitioner identifies Apple Inc., Microsoft Corporation, Microsoft
`Mobile Oy, Microsoft Mobile Inc. (f/k/a Nokia Inc.), Microsoft Luxembourg
`International Mobile SARL, and Microsoft Luxembourg USA Mobile SARL
`as real parties in interest. Pet. 1. Petitioner asserts that “[t]he Microsoft
`entities have numerous affiliated and/or related entities,” but that “no
`unnamed Microsoft entity is funding or controlling this Petition or any
`resulting IPR.” Id. Patent Owner identifies only itself as a real party in
`interest. Paper 5, 2.
`The parties indicate that the ’236 patent is the subject of several
`district-court litigations: Evolved Wireless, LLC v. Apple, Inc., No. 1:15-cv-
`542 (D. Del.); Evolved Wireless, LLC v. HTC Corp., No. 1:15-cv-543
`(D. Del.); Evolved Wireless, LLC v. Lenovo Group Ltd., 1:15-cv-544
`(D. Del.); Evolved Wireless, LLC v. Samsung Electronics Co. Ltd., 1:15-cv-
`545 (D. Del.); Evolved Wireless, LLC v. ZTE Corp., 1:15-cv-546 (D. Del.);
`Evolved Wireless LLC v. Microsoft Corp., 1:15-cv-547 (D. Del.). Pet. 1–2;
`Paper 5, 2–3. In addition, the ’236 patent is the subject of the following
`
`
`1 U.S. Patent No. 8,180,058 B2, filed June 10, 2008, issued May 15, 2012
`(Ex. 1005, “Kitazoe”).
`2 U.S. Patent No. 6,161,160, filed Sept. 3, 1998, issued Dec. 12, 2000 (Ex.
`1012, “Niu”).
`3 3GPP Technical Specification 36.321 V8.1.0 (March 2008) (Ex. 1007,
`“Specification 321”).
`4 U.S. Patent Publication No. 2009/0163211 A1, filed Dec. 17, 2008,
`published June 25, 2009 (Ex. 1009, “Kitazoe II”).
`
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`inter partes reviews: IPR2016-00757, which has been consolidated with
`IPR2016-01345 (both of which involve a different petitioner); and IPR2016-
`01228 (which involves this Petitioner on different grounds).
`
`
`E. Cooklev Declaration
`Patent Owner proffers a Declaration by Todor Cooklev, Ph.D., as
`evidentiary support of its claim-construction and substantive arguments. Ex.
`2011. Petitioner argues that the Declaration “is entitled to no weight”
`because “[n]otoriously absent from Exhibit [20115] is any indication that the
`declarant was ‘warned that willful false statements and the like are
`punishable by fine or imprisonment, or both (18 U.S.C. 1001),’ or a
`statement by the declarant that ‘all statements made of the declarant’s own
`knowledge are true and that all statements made on information and belief
`are believed to be true.’ See 37 CFR 1.68.” Reply 2–3. We agree with
`Petitioner that Dr. Cooklev’s Declaration is defective and can be accorded
`no weight.
`In an inter partes review proceeding, evidence includes “affidavits,”
`which are defined in our regulations by reference to the provisions of 37
`C.F.R. § 1.68 and 28 U.S.C. § 1746. See 37 C.F.R. § 42.2. The former of
`these, i.e., 37 C.F.R. § 1.68, requires that a declarant be warned, on the same
`document, that “willful false statements and the like are punishable by fine
`or imprisonment, or both.” The latter, i.e., 28 U.S.C. § 1746, provides that
`unsworn declarations may substitute for sworn declarations if accompanied
`by a statement in substantially the form, “I declare . . . under penalty of
`
`
`5 Petitioner incorrectly refers to Dr. Cooklev’s Declaration as “Exhibit 2009”
`in its Reply.
`
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`perjury under the laws of the United States of America that the foregoing is
`true and correct.” To give weight to Dr. Cooklev’s statements would thwart
`the purpose of these provisions. See Intel Corp. v. Alacritech, Inc., Case
`IPR2017-01402, slip op. at 6 (PTAB Nov. 6, 2017) (Paper 8).
`At the oral hearing, Patent Owner conceded that Dr. Cooklev’s
`Declaration is defective. Tr. 36:16–17 (“Well, yes, he did not swear under
`the penalty of perjury”). Indeed, Patent Owner had notice of the defect in
`Dr. Cooklev’s Declaration at least as early as the filing of Petitioner’s Reply
`on July 26, 2017. Reply 2–3. Nevertheless, Patent Owner took no
`affirmative steps to cure the defect. Although we recognize that Petitioner
`may well have capitalized tactically on the defect by forgoing cross-
`examination in which Dr. Cooklev may have provided sworn testimony
`consistent with his Declaration, we cannot simply ignore the regulatory and
`statutory requirements that render that Declaration defective. To give
`weight to the Declaration would require us to surmise that Dr. Cooklev
`would swear to the statements in his Declaration, and we are in no position
`to do so.
`Accordingly, we give no weight to Dr. Cooklev’s Declaration.
`
`
`II. ANALYSIS
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
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`reasonable interpretation standard); Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`
`1. “transmitting . . . if”
`A claim-construction disagreement between the parties is grounded in
`use of the word “if” in the two “transmitting” limitations of independent
`claims 1 and 7. See Pet. 15–18; PO Resp. 10–32; Reply 3–21. Those
`limitations implicate two conditions, resulting in different data being
`transmitted depending on whether both conditions are satisfied or not. The
`first condition is whether “there is data stored in the Msg3 buffer when
`receiving the UL Grant signal on the specific message,” and the second
`condition is whether “the specific message is the random access response
`message.” Ex. 1001, col. 16, l. 59–col. 17, l. 3; col. 17, l. 38–col. 18, l. 7.
`“If” both conditions are satisfied, the “data stored in the Msg3 buffer” are
`transmitted to the base station; and “if” either condition is not satisfied, “new
`data” are transmitted to the base station. Id.
`Petitioner presents an argument that effectively addresses each
`“transmitting” limitation in isolation, contending that “the claim language
`. . . speaks for itself,” and that “the term ‘if’ is used to indicate that the action
`occurs in the presence of the condition, but possibly also at other times.”
`Pet. 18. That is, Petitioner contends that “if” in each “transmitting”
`limitation should be construed as introducing a sufficient condition.
`Patent Owner presents a counterargument that considers an interplay
`between the two “transmitting” limitations, correctly observing that the two
`conditions “are independent of one another” and that the recitations in the
`two “transmitting” limitations are “logical opposite[s].” PO Resp. 10–15.
`
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`As Patent Owner asserts, “both limitations cannot, at the same time, be
`true.” Id. at 14. In considering this logical interplay, Patent Owner contends
`that “if” in each “transmitting” limitation should therefore be construed as
`introducing a necessary condition: “The proper claim construction is one
`that follows the claim’s plain language . . . ; that is Msg3 data is transmitted
`if [both conditions are] met . . . and new data are transmitted if [either
`condition] is not met.” Id. at 15.6
`We have considered the positions of both parties and conclude that
`Patent Owner presents the more compelling reading of the claim. In
`isolation, the plain and ordinary meaning of “if” is amenable to both
`sufficient-condition and necessary-condition constructions. Indeed, it is
`trivial to construct English sentences in which a listener would naturally
`understand one of those constructions to be implicated. For instance, “If
`there is smoke, there is fire” is naturally understood not to preclude the
`possibility of fire if there is no smoke (sufficient if). Conversely, “If you
`take another step, I’ll shoot,” is naturally understood to mean that the
`speaker will not shoot if the listener does not take another step (necessary
`if).
`
`
`6 Patent Owner characterizes its position as equivalent to reciting “but not
`transmitting the new data” as part of the first “transmitting” limitation, i.e.,
`when both conditions are met; and to reciting “but not transmitting any data
`stored in the Msg3 buffer” as part of the second “transmitting” limitation,
`i.e., when at least one of the conditions is not met. PO Resp. 12–13.
`Although such additional language is logically consistent with Patent
`Owner’s position, we find it unnecessary to incorporate such negative
`limitations into the claims; the proper construction can be resolved by
`correctly construing the meaning of “if.”
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`To resolve the ambiguity, we look, as we must, to the context
`provided by the claims themselves, as well as to the Specification in whose
`light they must be considered under the broadest-reasonable-interpretation
`standard. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`(Fed. Cir. 1996) (“the context of the surrounding words of the claim also
`must be considered in determining the ordinary and customary meaning of
`those terms”). We agree with Patent Owner’s characterization of
`Petitioner’s position as improperly including the optional possibility of
`transmitting data stored in the Msg3 buffer even when both conditions are
`not satisfied. See PO Resp. 14–15. Such an optional possibility is a logical
`consequence of a sufficient-if construction, and we acknowledge that such a
`reading would be tenable if the claim included only the first “transmitting”
`step.7 But the claim explicitly answers the question of what occurs when at
`least one of the conditions is not satisfied: “new data” are transmitted to the
`base station. Ex. 1001, col. 16, l. 16–col. 17, l. 3; col. 17, l. 52–col. 18, l. 7.
`By isolating the “transmitting” limitations, Petitioner improperly reaches too
`broad a construction of the claim as a whole.
`Furthermore, Patent Owner’s proposed construction is consistent with
`the Specification of the ’236 patent. For example, in motivating its
`disclosure, the Specification observes that, in the prior art, “if the UL Grant
`signal is received in a state in which data is stored in the Msg3 buffer, the
`data stored in the Msg3 buffer is transmitted regardless of the reception
`mode of the UL Grant signal.” Id. at col. 4, ll. 26–30 (emphasis added).
`The Specification purports to resolve such a deficiency because “if the data
`
`
`7 Indeed, this is precisely the case for a child of the ’236 patent, as discussed
`infra.
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`stored in the Msg3 buffer is transmitted in correspondence with the reception
`of all UL Grant signals, problems may occur.” Id. col. 4, ll. 30–34
`(emphasis added). In addition, the description of Figure 9 of the patent,
`reproduced above, explicitly explains that data in the Msg3 buffer are
`transmitted to the base station “only when” both conditions recited in the
`claims are met, i.e. they are necessary conditions. Id. at col. 14, ll. 3–8.
`The parties also address the relevance of the prosecution history of a
`child of the ’236 patent. PO Resp. 25–27; Reply 20–21. During prosecution
`of U.S. Patent No. 9,532,336 B2 (Ex. 2013, “the ’336 patent”), which shares
`the same written description as the ’236 patent, explicit language was
`included in the independent method claims to require transmission of data
`stored in the Msg3 buffer “only when” such data are stored in the Msg3
`buffer and the UL Grant was received on the random access response
`message. Ex. 2014, 146. Such “only when” language did not appear in the
`claims as originally filed, and was added in response to a rejection in which
`the Examiner made the following remarks:8
`Claim 1 recites the limitation “if there is data stored in the Msg3
`buffer and if the UL Grant signal was received on the random
`access response.” The limitation is directed to the action to
`transmit the UL Grant, however, there is no language to limit the
`claim to only this scenario or the claim language does not
`provide an alternative for what if the statement is not true. The
`Applicant’s invention is not being claimed in independent claims
`1 and 9.
`
`Id. at 139 (emphases added).
`
`
`8 Independent method claim 26 of the ’336 patent was added by amendment
`at the same time, including the “only when” language. Ex. 2014, 151.
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`Importantly, the claims in the ’336 patent do not include language that
`corresponds to the second “transmitting” limitation of the claims at issue in
`this proceeding—the “only when” language was added to a limitation that
`corresponds to the first “transmitting” limitation. We agree with Patent
`Owner’s characterization of the relevance of these facts and of the
`Examiner’s prior basis for rejection of unamended claims of the ’336 patent.
`That is “the Examiner specifically rejected a claim without the ‘only when’
`language because there was no alternative recited in the claim . . . if the
`condition[s were] not met.” PO Resp. 27. The addition of the “only when”
`language in the ’336 patent resolves the ambiguity, recognized by the
`Examiner, that is otherwise resolved in the claims at issue in this proceeding
`by the presence of the second “transmitting” limitation.
`We disagree with Petitioner’s contention that “the Examiner’s
`reasoning is flawed because . . . a comprising claim is open-ended and may
`cover additional, unrecited actions (such as actions performed when a
`condition is not met).” Reply 20. In making his remarks, the Examiner had
`rejected the claim for indefiniteness, and nothing in the amendment that
`resolved the indefiniteness to the Examiner’s satisfaction, i.e., reciting “only
`when,” precludes additional, unrecited actions when the conditions are not
`met. In light of the difference in the claims in the two patents, we are also
`not persuaded by Petitioner’s contention that “the cited portions of the child
`patent’s file history reinforce Petitioner’s argument that the term ‘if’ in the
`claims of the ’236 patent means ‘if.’” Id. As indicated above, the word “if,”
`in isolation and without more, is ambiguous whether it introduces a
`sufficient or necessary condition. That ambiguity was resolved by additional
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`language in the claims of the ’336 patent and is resolved in the claims of the
`’236 patent through the logical interplay of express limitations.
`For these reasons, we agree with Patent Owner that “if” in the
`“transmitting” limitations of independent claims 1 and 7 is properly
`construed, under the broadest-reasonable-interpretation standard, as
`introducing necessary conditions, rather than sufficient conditions.9 We
`adopt such a construction for purposes of this Decision.
`
`
`2. Other Terms
`The Petition addresses the construction of certain other terms recited
`in independent claim 7, taking the position that such terms should not be
`construed as means-plus-function limitations—a position different than that
`taken by Petitioner in related litigation where a different claim-construction
`standard is applied. Pet. 19. Patent Owner does not respond to Petitioner’s
`position and does not proffer its own construction of those terms.
`Given that the identified terms do not recite the word “means,” and
`given that Patent Owner does not challenge Petitioner’s position, we find it
`unnecessary to construe the terms expressly. Williamson v. Citrix Online,
`
`
`9 This construction is consistent with the reasoning of Ex Parte Schulhauser,
`Appeal No. 2013-007847, slip op. (PTAB Apr. 28, 2016) (precedential).
`Similar to the claims at issue in this proceeding, Schulhauser considered a
`claim that recited “mutually exclusive” steps. Schulhauser, slip op. at 6.
`The Board held that, under the broadest reasonable interpretation, the claim
`“covers at least two methods, one in which the prerequisite condition for the
`[first] step is met and one in which the prerequisite condition for the
`[second] step is met.” Id. at 8. The Board did not thereby hold that the
`language of one of the steps could simply be read out of the claim (as
`Petitioner’s argument would effectively require) nor that that language could
`not properly inform construction of the other of the steps.
`
`17
`
`
`
`IPR2016-01229
`Patent 7,881,236 B2
`
`LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (“the failure to use the
`word ‘means’ also creates a rebuttable presumption—this time that § 112,
`para. 6 does not apply”); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy.”). We accord the terms their ordinary and customary meaning,
`without resort to the provisions of 35 U.S.C. § 112, ¶ 6.
`
`
`B. Legal Principles
`A claim is unpatentable for obviousness under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of non-
`obviousness, i.e., secondary considerations.10 Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`
`
`10 The parties do not address secondary considerations, which, accordingly,
`do not form part of our analysis.
`
`18
`
`
`
`IPR2016-01229
`Patent 7,881,236 B2
`
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`To prevail on its challenges, Petitioner must demonstrate by a
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has
`the burden from the onset to show with particularity why the patent it
`challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc. 815 F.3d
`1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter
`partes review petitions to identify “with particularity . . . the evidence that
`supports the grounds for the challenge to each claim”)). The burden of
`persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC. v.
`Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech.
`Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008))
`(discussing the burden of proof in inter partes review). Furthermore,
`Petitioner does not satisfy its burden of proving obviousness by employing
`“mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016).
`
`
`C. Level of Skill in the Art
`Petitioner contends that a person of ordinary skill in the art “would
`have had a Master’s of Science Degree in an academic area emphasizing
`electrical engineering, physics, computer engineering, or an equivalent field
`(or a similar technical Master’s Degree, or higher degree) with a
`concentration in wireless communication and networking systems.” Pet. 20.
`
`19
`
`
`
`IPR2016-01229
`Patent 7,881,236 B2
`
`Alternatively, according to Petitioner, a person of ordinary skill “would have
`had a Bachelor’s Degree (or higher degree) in an academic area emphasizing
`electrical engineering, physics, or computer engineering and having two or
`more years of experience in wireless communication and networking
`systems.” Id. Petitioner asserts that “[a]dditional education in a relevant
`field, such as computer engineering, physics, or electrical engineering, or
`industry experience may compensate for a deficit in one of the other aspects
`of the requirements stated above.” Id. at 20–21. In addition, Petitioner
`contends that a person of ordinary skill “would also have had experience
`with the wireless Standard Setting Organizations such as ETSI, IEEE, and
`3GPP[11], and would have been familiar with relevant standards and draft
`standards directed to wireless communications.” Id. Petitioner’s declarant,
`Jonathan Wells, Ph.D., makes substantially the same statements as appear in
`the Petition. Ex. 1003 ¶ 39.
`Patent Owner does not directly address the level of skill possessed by
`a person of ordinary skill in the art in its Response.
`For purposes of this Decision, we agree with and adopt the level of
`skill proposed by Petitioner.
`
`
`
`11 The Third Generation Partnership Project (“3GPP”), which published
`Specification 321, is a standards-setting organization for mobile
`communications and was developing the LTE cellular communication
`system. See Pet. 33; PO Resp. 2; Ex. 1001, col. 1, ll. 22–25.
`
`
`20
`
`
`
`IPR2016-01229
`Patent 7,881,236 B2
`
`
`D. Scope and Content of the Prior Art
`1. Kitazoe
`a. Availability as Prior Art
`The ’236 patent was filed on August 10, 2009, claiming the benefit of
`the August 11, 2008, filing date of U.S. Prov. Appl. No. 61/087,988 under
`35 U.S.C. § 119(e), and claiming priority under 35 U.S.C. § 119(a) to
`Korean patent application 10-2009-0057128, filed June 25, 2009. Ex. 1001
`at [60], [30]. Petitioner “does not acknowledge that the ’236 patent is
`entitled to its proclaimed priority date.” Pet. 4, n.1. Patent Owner does not
`address this issue in its Response.
`Kitazoe was filed on June 10, 2008, claiming the benefit of the August
`14, 2007, filing date of U.S. Prov. Appl. No. 60/955,867 under 35 U.S.C.
`§ 119(e). Ex. 1005 at [60]. Petitioner contends that “at least one claim of
`the Kitazoe patent
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