IPR2016-01229
`Patent 7,881,236 B2
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` 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,
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`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01229
`Patent 7,881,236 B2
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`____________
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`PATENT OWNER’S REQUEST FOR REHEARING
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`PURSUANT TO 37 C.F.R. § 42.71(d)
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`
`Patent 7,881,236 B2
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`.
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` 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
`
`
`____________
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`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`
`PURSUANT TO 37 C.F.R. § 42.71(d)
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`
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`Table of Contents
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`IPR2016-01229
`Patent 7,881,236 B2
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`Page
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`I.
`Introduction .......................................................................................................... 1
`II. Background .......................................................................................................... 2
`A.
`The ’236 patent ...................................................................................... 2
`B.
`The Claims ............................................................................................ 3
`C.
`Claim Construction................................................................................ 5
`III. The Board both overlooked and misapprehended arguments about
`Kitazoe cannot show the only when behavior ................................................. 6
`A.
`The Board overlooked the Petitioner’s argument that its
`example of an additional PDCCH UL Grant is grounded in the
`patent’s specification ...........................................................................11
`The Board misapprehended the Patent Owner’s argument about
`why Kitazoe cannot show that when it had Msg3 buffer data to
`send, and it received a PDCCH grant, it did not transmit the
`Msg3 buffer data .................................................................................12
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`B.
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`TABLE OF AUTHORITIES
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`IPR2016-01229
`Patent 7,881,236 B2
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` Page(s)
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`Cases
`Ains, Inc. v. US,
`365 F. 3d 1333 (Fed. Cir. 2004) ........................................................................... 6
`Rules
`37 C.F.R. § 42.71(d)(2) .............................................................................................. 1
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`IPR2016-01229
`Patent 7,881,236 B2
`The Patent Owner, Evolved Wireless LLC, respectfully asks the Board to
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`reconsider its Final Written Decision in this proceeding, pursuant to 37 C.F.R.
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`§ 42.71(d)(2).
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`I.
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`Introduction
`The Board should reconsider its Final Written Decision in this matter for
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`two independent reasons.
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`First, the Board overlooked the Patent Owner’s argument about why the
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`additional UL Grant it discussed in the Response is not a “contrived hypothetical”
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`but is instead grounded in the ’236 patent’s specification.
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`Second, and more importantly, the Board overlooked the Patent Owner’s
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`argument that Petitioner had made a general conclusion that its prior art behaves
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`according to the Board’s narrow only when construction for the first transmitting
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`limitation, even though that prior art does not create the conditions that test the
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`only when behavior. The Petitioner’s position is analogous to an argument that an
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`observation that every one of a company’s employees who flew first class last
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`week used a company-issued voucher confirms that the company has a rule:
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`“Employees may fly first class only when they have a voucher.” The evidence
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`presented is certainly inadequate if the company’s CEO always flies first class, but
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`did not travel last week.
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`IPR2016-01229
`Patent 7,881,236 B2
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`II. Background
`The Board determined that the challenged claims of U.S. Patent No.
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`7,881,236 (“the ’236 patent”) are unpatentable as obvious. (Final Written Decision
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`(“FWD”), Paper 27, at 41.)
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`A. The ’236 patent
`The ’236 patent is directed to mobile communication technology. (FWD at
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`2.) It relates to communication between user equipment (UE) and base stations.
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`(Id. at 3.) The UE includes cell phones. (Id. at 22.) The ’236 patent is focused on
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`random access procedures. (Id. at 2.) Cell phones and base stations perform
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`random access procedures at various times, for example when the cell phone
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`initially accesses the base station. (Id. at 3.)
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`In the prior art and the claims of the ’236 patent, the cell phone transmits
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`three types of data to the base station. (Id. at 4-5.) These are 1.) a preamble, 2.)
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`Message 3 buffer data (“Msg3 buffer data”), and 3.) New data. (Id. at 4, 7.) The
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`cell phone transmits the preamble at a time it selects—after all, if it is only making
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`an initial access to a base station, the base station is ignorant of the cell phone and
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`the cell phone needs to announce itself to the base station. (Id. at 4, 22.) But the
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`timing of the cell phone’s transmission of the other two types of data (the Msg3
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`buffer data and the new data) is controlled by the base station. (Id. at 5.) The base
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`station issues authorizations, called UL Grants (Uplink Grants), to the cell phone.
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`IPR2016-01229
`Patent 7,881,236 B2
`(Id. at 5.) UL Grants inform the cell phone of the radio resources (essentially the
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`transmission time and frequency slots) it may use to transmit its data.
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`Important to this proceeding, there are (at least) two types of UL Grant. (Id.
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`at 36; Ex. 1001, col. 17, ll. 25–29.) These two types of UL Grant can be
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`distinguished by how they are delivered: one is delivered in a random access
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`response message, and the other is delivered on the Physical Downlink Control
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`Channel (“PDCCH”). (Ex. 1001, col. 17, ll. 25–29.) For simplicity, this motion
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`refers to them as “random access response UL Grants” and “PDCCH UL Grants.”
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`The Claims
`B.
`The ’236 patent has two independent claims, claims 1 and 7. As the Patent
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`Owner explained in its Response, the claims entail transmitting limitations that
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`happen (or not) depending on a condition, there (and here) called “Condition X.”
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`(Paper 14 (“Response”) at 8). Restating claim 1 in terms of Condition X, there are
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`two transmitting limitations. In the first transmitting limitation, the Msg3 buffer
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`data is transmitted if Condition X is met; in the second transmitting limitation, the
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`new data is transmitted if Condition X is not met. (Id. at 8.)
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`IPR2016-01229
`Patent 7,881,236 B2
`In the Response, the Patent Owner showed how the independent claims have
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`transmitting limitations that depend on Condition X. Here is that showing for claim
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`1:
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`(Response at 8.) And here is that showing for the relevant portions of claim 7:
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`(Id. at 9.) In the portions of claim 7 above, Condition X is shown underlined in
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`limitation 7(e) and NOT Condition X is shown underlined in limitation 7(g). (Id.)
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`Importantly, one part of Condition X requires that the UL Grant that
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`authorizes the transmission of the Msg3 buffer data is a random access response
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`UL Grant and not a PDCCH UL Grant. (Response at 8.)
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`IPR2016-01229
`Patent 7,881,236 B2
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`C. Claim Construction
`The Board, relying at least partially on the interplay between the two
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`transmitting limitations and the file history of a child patent of the ’236 patent,
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`correctly construed the “if” language of the two transmitting limitations associated
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`with Condition X to create a necessary, not just a sufficient, condition for the
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`transmission. (FWD at 17.)
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`The Petitioner had argued that Condition X is merely a sufficient condition.
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`(Id. at 12 (“the term ‘if’ is used to indicate that the action occurs in the presence of
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`the condition, but possibly also at other times.”).) But in construing the claims
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`such that Condition X is a necessary condition, the Board rejected Petitioner’s
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`argument. (The Petitioner called the construction the Board adopted the “only
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`when” interpretation. (Pet. at 34.).)
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`Of course, in construing the first transmitting limitation to require
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`transmitting the Msg3 buffer data only when Condition X is met, rather than
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`merely making that condition one possible reason the Msg3 buffer data is
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`transmitted, the Board greatly increased the difficulty for Petitioner to invalidate
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`the claims. For instead of simply finding a reference that provided one example of
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`transmitting the Msg3 buffer data when Condition X is true, the Petitioner also
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`must prove a negative. That is not easy to do. Ains, Inc. v. US, 365 F. 3d 1333,
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`1342, 1344 (Fed. Cir. 2004) (explaining that “it is always difficult to prove a
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`IPR2016-01229
`Patent 7,881,236 B2
`negative” when a party need show [a]bsent a statutory amendment, there is no
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`situation in which appropriated funds could be used to fund a federal entity).
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`More specifically, Petitioner must find prior art that does not transmit the
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`Msg3 buffer data when Condition X is not met, or at least render that behavior
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`obvious. The Petitioner purported to find art—Kitazoe—but as will become
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`apparent, Kitazoe is insufficient to prove the negative.
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`Proving a negative is generally difficult because, loosely speaking, it may
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`require looking “everywhere” to make sure one’s conclusion is correct. As
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`explained below, Petitioners didn’t look everywhere. In fact, they only looked in
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`one place. And fatal to Petitioner’s argument, the one place they looked—
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`Kitazoe—admittedly did not consider conditions that could test the whether the
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`Msg3 buffer data is transmitted if Condition X is met.
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`III. The Board both overlooked and misapprehended arguments about
`Kitazoe cannot show the only when behavior
`The Board made at least two errors that independently warrant
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`reconsideration. The Board overlooked the Patent Owner’s argument that the
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`specification of the ’236 patent teaches that an example random access procedure
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`described in the Response reflects the inventors’ invention, and is not “contrived”
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`as the Petitioner’s expert asserts. And perhaps more importantly, the Board
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`misapprehended the Patent Owner’s argument about why Kitazoe cannot show that
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`IPR2016-01229
`Patent 7,881,236 B2
`when it had Msg3 buffer data to send, and it received a PDCCH grant, it did not
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`transmit the Msg3 buffer data.
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`As noted above, the claims all require that transmission of the Msg3 buffer
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`data occurs only when Condition X is met. (See FWD at 7-8.) That means, since
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`Condition X requires that the UL Grant be a random access response UL Grant,
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`that the Msg3 buffer data be transmitted only when the UL Grant that authorizes
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`the transmission is a random access response UL Grant. Putting that statement in
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`the context of the purported-invalidating art, and remembering that Condition X
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`asks “if there is data stored in the Msg3 buffer when receiving the UL Grant signal
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`on the specific message and the specific message is the random access response
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`message” (Response at 30, n.5), the Petitioner must show that Kitazoe does not
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`transmit the Msg3 buffer data when there is data in the message 3 buffer and a
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`PDCCH Grant is received.
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`Putting it more simply, the Petitioner had the burden to show that when
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`Kitazoe had Msg3 buffer data to send, and received a PDCCH grant, it did not
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`transmit the Msg3 buffer data.
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`The Petitioner argued that when Kitazoe had Msg3 buffer data to send, and
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`it received a PDCCH grant, it did not transmit the Msg3 buffer data. (Paper 2
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`(“Pet.”) at 40 (discussing “only when” with respect to the first transmitting
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`IPR2016-01229
`Patent 7,881,236 B2
`limitation), 45 (discussing “only when” with respect to the second transmitting
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`limitation).)
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`The Petitioner explained Kitazoe’s behavior using an annotated figure from
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`that publication. It is copied here.
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`(Pet. at 43.)
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`The Petitioner’s annotations (correctly) illustrate a cell phone (“AT”)
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`receiving authorization to transmit its Msg3 buffer data, in a random access
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`response UL Grant, from a base station (“Serving BS”). And the annotations
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`(correctly) illustrate the cell phone sending the Msg3 buffer data (“Message 3”) to
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`the base station in response to that random access response UL Grant.
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`IPR2016-01229
`Patent 7,881,236 B2
`From this illustration, the Petitioner concluded that, with respect to the first
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`transmitting limitation, Msg 3 buffer data is sent by Kitazoe only when it has
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`received an UL Grant in a random access response message. (Id. at 41. (“Because
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`the message 3 is sent when this particular uplink grant is received and this
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`particular uplink grant is only included in the random access response, as discussed
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`above, Kitazoe teaches that message 3 is sent only when the random access
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`response is received (i.e., only when ‘the specific message is the random access
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`response message’).”) In other words, the Petitioner argued that Kitazoe shows the
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`required only when behavior.
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`In its Response, however, the Patent Owner observed that Kitazoe “takes a
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`narrow view of what can occur during a random access procedure.” (Response at
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`41.) The Patent Owner illustrated a more complex case of UL Grant reception in its
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`own annotations of the Petitioner’s figure, copied here.
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`IPR2016-01229
`Patent 7,881,236 B2
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`(Id.) As the Patent Owner explained, it added a second UL Grant to Kitazoe’s
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`figure. (Id.) That grant, identified as 404’, was posited to be a PDCCH UL Grant.
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`Id. at 41. The Response stated that this additional UL Grant (additional to the
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`random access response UL Grant 404 already shown in Kitazoe) was “the very
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`grant that was contemplated by the inventors of the ’236 and it is shown as item
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`S805 in the ’236 patent’s Fig. 8.” (Id.) Next, the Patent Owner explained how the
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`prior art to the ’236 patent would transmit the Msg3 buffer data in response to the
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`PDCCH UL Grant 404’.(Id at 43-44.)
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`Finally, the Patent Owner explained why Kitazoe could not be used to show
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`the only when behavior: Kitazoe does not contemplate cases, like the one the
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`IPR2016-01229
`Patent 7,881,236 B2
`Patent Owner proffered, where the cell phone receives a PDCCH UL Grant and
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`does not transmit the Msg3 buffer data. (Id at 44.)
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`The Board’s Final Written Decision misapprehended the Patent Owner’s
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`argument that Kitazoe does not teach the only when behavior. The Board said that
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`the “Patent Owner’s reliance on its ‘more complex case’ is unavailing.” (FWD at
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`35.) As support for this conclusion, The Board offered only two sentences. It
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`quoted Petitioner’s expert: “As Dr. Wells testifies, this complex case is a
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`‘contrived hypothetical’ that does not ‘relate’ to what is described in Kitazoe.” Id.
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`Then it stated, “[t]he fact that Patent Owner can hypothesize a system that is more
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`complex than Kitazoe that does not teach or suggest the claim limitation does not
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`negate the fact that the system described in Kitazoe does.” (Id.)
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`A. The Board overlooked the Petitioner’s argument that its example of an
`additional PDCCH UL Grant is grounded in the patent’s specification
`As to whether the case is a “contrived hypothetical,” the Board overlooked
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`the Patent Owner’s argument that the additional PDCCH UL Grant was “the very
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`grant that was contemplated by the inventors of the ’236 [patent].” (Response at
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`42.) As the Response explained repeatedly, additional UL Grants, and the fact that
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`they would cause problems like loss of data and deadlock are not contrived.
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`(Response at 5-7.) Petitioner’s expert failed to address how the ’236 patent’s
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`teachings about additional grants are wrong or “contrived.” Overlooking the
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`Patent Owner’s argument establishes that there is no reasoned basis in the FWD to
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`IPR2016-01229
`Patent 7,881,236 B2
`find the case contrived, and overlooking the fact that the Petitioner’s expert also
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`ignored the specification’s teachings reinforced the error. (And of course it cannot
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`be a valid criticism of the case as being a hypothetical—as the Board recognized in
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`its Institution Decision when it discussed the “’a and b’ format” and the “’not a or
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`not b’ format,” the ’236 patent presents issues of logic, and so consideration of
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`hypotheticals is only reasonable. (Paper 8 at 10).)
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`B. The Board misapprehended the Patent Owner’s argument about why
`Kitazoe cannot show that when it had Msg3 buffer data to send, and it
`received a PDCCH grant, it did not transmit the Msg3 buffer data
`The Board’s statement that the random access procedure discussed in the
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`Patent Owner’s Response “does not ‘relate[] to what is described in Kitazoe.”
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`reveals that the Petitioner and the Board agree with the Patent Owner that Kitazoe
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`does not address any transmission following the reception of a PDCCH UL Grant
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`when there is data in the Msg 3 buffer. Beyond that, it embodies the Board’s
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`misapprehension of what Kitazoe teaches.
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`That the random access procedure discussed in the Patent Owner’s
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`Response does not relate to what is described in Kitazoe is precisely the Patent
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`Owner’s point. Kitazoe does not contemplate the reception of a PDCCH UL Grant
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`when there is Msg3 buffer data to be transmitted—it is consequently Kitazoe that
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`does not relate to the content of the properly construed claims. Thus, Kitazoe
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`cannot test the only when hypothetical. The Response made that failure clear.
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`IPR2016-01229
`Patent 7,881,236 B2
`(Response at 42 (“Had Petitioners considered the case illustrated in Figure 7, they
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`would have come to a different conclusion.”).) Additionally, the Patent Owner’s
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`Response reiterated that the failure of Kitazoe to address this reception resulted in
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`a failure to show the only when behavior.
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`Petitioners’ reliance on its primary reference, Kitazoe, is
`unavailing. Petitioners extract teachings from Kitazoe that it does
`not contain. Specifically, Petitioners rely on the Kitazoe
`reference to show that the prior art teaches the 1(e) and 7(g)
`limitations in their “only when” formulation, i.e., that the UE did
`not send the Msg3 buffer data along with the new data. Pet. at
`43. But Petitioners’ reliance on Kitazoe reference for these
`teachings fails because, as described below, Petitioners make a
`logical error.
`(Response at 39.)
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`Further, the Board’s statement that “[t]he fact that Patent Owner can
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`hypothesize a system that is more complex than Kitazoe that does not teach or
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`suggest the claim limitation does not negate the fact that the system described in
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`Kitazoe does” also illustrates the Board’s misapprehension. Again, to test the only
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`when behavior, a prior art system must demonstrate both transmitting the Msg3
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`buffer data when it has the data and it receives a random access response UL Grant
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`and also not transmitting the Msg3 buffer data when it received a PDCCH UL
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`Grant. Something “more complex than Kitazoe” is what Petitioner should have
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`IPR2016-01229
`Patent 7,881,236 B2
`offered, because a demonstration of only when behavior requires showing two
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`actions following reception of the two types of UL Grant, not just the reception of
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`one type that Kitazoe hypothesizes.
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`Accordingly, the Petitioner did not meet its burden to show claim 1 obvious
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`under the correct, Board-adopted, construction.
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`The same analysis applies to the other independent claim, claim 7. It, like
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`claim 1, requires showing an apparatus adapted to carrying out the same
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`transmission of the Msg3 buffer data based on Condition X as does claim 1.
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`Accordingly, Petitioner’s argument fails in the same way.
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`Finally, all other challenged claims depend on claims 1 or 7. The base claims
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`not being obvious, the dependent claims are not obvious either.
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`For the reasons stated above, the Board should reconsider its cancellation of
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`the challenged claims of the ’236 patent.
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`Dated: December 29, 2017
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`Respectfully submitted,
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`/Ryan M. Schultz/
`Registration No. 65,134
`Attorney for Patent Owner
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`IPR2016-01229
`Patent 7,881,236 B2
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this December 29, 2017, a copy of PATENT
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`OWNER’S REQUEST FOR REHEARING has been served in its entirety by
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`electronic mail to the petitioners:
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`W. Karl Renner
`renner@fr.com
`Roberto J. Devoto
`devoto@fr.com
`Dan Smith
`dsmith@fr.com
`FISH & RICHARDSON P.C.
`IPR00035-00091P2@fr.com
`PTABInbound@fr.com
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`Dated: December 29, 2017
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`88634312.3
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`Respectfully submitted,
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`/Ryan M. Schultz/
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`Registration No. 65,134
`Attorney for Patent Owner
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