IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Sung Jun Park, et al.
`In re Patent of:
`7,881,236
`Attorney Docket No.: 00035-0009IP2
`U.S. Patent No.:
`February 1, 2011
`Issue Date:
`Appl. Serial No.: 12/538,514
`Filing Date:
`August 10, 2009
`Title:
`Data Transmission Method and User Equipment for the
`Same
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 7,881,236 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`Evolved Wireless, LLC Exhibit 2004-001
`Samsung Electronics v. Evolved Wireless IPR2016-01345
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`TABLE OF CONTENTS
`
`I.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 1
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 1
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 1
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 2
`D.  Service Information .................................................................................. 2
`II.
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 2
`III. GROUNDS FOR STANDING AND CHALLENGE UNDER 37 C.F.R. §
`42.104 .............................................................................................................. 3
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 3
`B.  Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 3
`IV. THE ’236 PATENT ....................................................................................... 11
`A.  Brief Description of the ’236 Patent ....................................................... 11
`B.  Claim Construction under 37 C.F.R. §§ 42.104(b)(3) ............................ 13
`Claim scope of the ’236 patent ...................................................... 15
`1.
`2.
`Claim 7 .......................................................................................... 18
`C.  Level of Ordinary Skill in the Art as of the Critical Date ...................... 20
`V.  MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A
`REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE
`’236 PATENT IS UNPATENTABLE .......................................................... 21
`A.  Kitazoe Overview ................................................................................... 21
`B.  Niu Overview .......................................................................................... 24
`C.  3GPP TS-36.321 Overview .................................................................... 25
`D.  The Combination of Kitazoe, Niu, and 3GPP TS-36.321 ...................... 27
`E.  Reasons to Combine Kitazoe, Niu, and 3GPP TS-36.321 ..................... 29
`F.  [GROUND 1] – Claims 1-4, 6-10, and 12-13 is obvious over Kitazoe,
`Niu, and 3GPP TS-36.321 under 35 U.S.C. § 103 ................................. 31
`G.  [GROUND 2] – Claim 5 is obvious over Kitazoe, Niu, and 3GPP TS-
`36.321, further in view of Kitazoe-II under 35 U.S.C. § 103 ................. 61
`IV. REDUNDANCY ........................................................................................... 64
`VI. CONCLUSION .............................................................................................. 65
`
`i
`
`Exhibit 2004-002
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 7,881,236 to Park, et al. (“the ’236 patent”)
`
`APPLE-1002
`
`Prosecution History of the ’236 Patent (“the Prosecution
`History”)
`
`APPLE-1003
`
`Declaration of Jonathan Wells
`
`APPLE-1004
`
`Curriculum Vitae of Jonathan Wells
`
`APPLE-1005
`
`U.S. Patent No. 8,180,058 (“Kitazoe”)
`
`APPLE-1006
`
`Reserved
`
`APPLE-1007
`
`3rd Generation Partnership Project; Technical Specification
`Group Radio Access Network; Evolved Universal Terrestrial
`Radio Access (E-UTRA) Medium Access Control (MAC)
`protocol specification (Release 8), 3GPP TS-36.321 V8.1.0,
`(March 2008) (“3GPP TS-36.321”)
`
`APPLE-1008
`
`U.S. Patent No. 6,634,020 (“Bates”)
`
`APPLE-1009
`
`U.S. Publication No. 20090163211 (“Kitazoe-II”)
`
`APPLE-1010
`
`U.S. Publication 20080059658 (“Williams”)
`
`APPLE-1011
`
`Van den Brand et al., Streaming consistency: a model for
`efficient MPSoC design, 10th Euromicro Conference on Digital
`System Design Architectures, Methods and Tools (2007) (“Van
`den Brand”)
`
`APPLE-1012
`
`U.S. Patent No. 6,161,160 (“Niu”)
`
`APPLE-1013
`
`U.S. Provisional No. 60/955,867 (“Kitazoe Provisional”)
`
`ii
`
`Exhibit 2004-003
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`
`APPLE-1014
`
`U.S. Patent No. 6,772,417 (“Ko”)
`
`APPLE-1015
`
`U.S. Patent No. 7,675,905 (“Delaney”)
`
`APPLE-1016
`
`U.S. Provisional No. 61/015,159 (“Kitazoe-II Provisional”)
`
`APPLE-1017
`
`Joint Claim Construction Statement from Case Nos. 15-542-
`SLR-SRF, 15-543-SLR-SRF, 15-544-SLR-SRF, 15-545-SLR-
`SRF, 15-546-SLR-SRF, 15-547-SLR-SRF filed in N.D. Del.
`On May 17, 2016 (“Joint Claim Construction Statement”)
`
`APPLE-1018
`
`“3GPP FAQs,” available at http://www.3gpp.org/about-
`3gpp/3gpp-faqs (retrieved June 20, 2016)
`
`APPLE-1019
`
`APPLE-1020
`
`“3GPP specification: 36.321,” available at
`http://www.3gpp.org/DynaReport/36321.htm (retrieved June
`20, 2016)
`
`“3GPP specification: 36.321,” archived by the Internet Archive
`Wayback Machine on May 5, 2008, available at
`https://web.archive.org/web/20080505041953/http://www.3gpp
`.org/ftp/Specs/htmlinfo/36321.htm (retrieved June 20, 2016)
`
`APPLE-1021
`
`Declaration of Anne Koch Baland
`
`iii
`
`Exhibit 2004-004
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`Apple Inc., Microsoft Corporation, Microsoft Mobile Oy, and Microsoft
`
`Mobile Inc. (f/k/a Nokia Inc.) (collectively “Petitioner”) petition for Inter Partes
`
`Review (“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1-10,
`
`and 12-13 (“the Challenged Claims”) of U.S. Patent No. 7,881,236 (“the ’236
`
`patent”). The Challenged Claims are unpatentable based on teachings set forth in
`
`at least the references presented in this petition. An IPR should therefore be
`
`instituted, and the Challenged Claims canceled as unpatentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`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 are the real parties-in-interest. The
`
`Microsoft entities have numerous affiliated and/or related entities. However, no
`
`unnamed Microsoft entity is funding or controlling this Petition or any resulting
`
`IPR.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ’236 patent is the subject of a number of civil actions including: Evolved
`
`Wireless, Inc. v. Apple Inc., Civil Action No. 1:15-cv-00542-SLR; Evolved
`
`Wireless, Inc. v. HTC Corporation et al., Civil Action No. 1:15-cv-00543-SLR;
`
`Evolved Wireless, Inc. v. Lenovo Group Ltd. et al., Civil Action No. 1:15-cv-
`
`00544-SLR; Evolved Wireless, Inc. v. Samsung Electronics Co., Ltd. et al., Civil
`
`1
`
`Exhibit 2004-005
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`Action No. 1:15-cv-00545-SLR; Evolved Wireless, Inc. v. ZTE Corporation et al.,
`
`Civil Action No. 1:15-cv-00546-SLR; and Evolved Wireless, Inc. v. Microsoft
`
`Corporation et al., Civil Action No. 1:15-cv-00547-SLR.
`
` Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`C.
`Petitioner provides the following designation of counsel.
`
`Lead Counsel
`W. Karl Renner, Reg. No. 41,265
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`Email: IPR00035-0009IP2@fr.com
`
`Backup counsel
`Roberto Devoto, Reg. No. 55,108
`Dan Smith, Reg. No. 71,278
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`Email: PTABInbound@fr.com
`
`Service Information
`
`D.
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR00035-0009IP2@fr.com
`
`(referencing No. 00035-0009IP2 and cc’ing PTABInbound@fr.com,
`
`renner@fr.com, devoto@fr.com, and dsmith@fr.com).
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`The Patent and Trademark Office is authorized to charge Deposit Account
`
`No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and any
`
`additional fees.
`
`2
`
`Exhibit 2004-006
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`III. GROUNDS FOR STANDING AND CHALLENGE UNDER 37
`C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ‘236 patent is available for IPR. The present
`
`petition is being filed within one year of service of a complaint against the
`
`Petitioner of infringement of the ’236 patent. Petitioner is not barred or estopped
`
`from requesting this review challenging the Challenged Claims on the below-
`
`identified grounds.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`Petitioner requests an IPR of the Challenged Claims on the grounds set forth
`
`in the table shown below, and that the Challenged Claims be found unpatentable.
`
`An explanation of how these claims are unpatentable under the statutory grounds is
`
`provided below, including claim construction as appropriate and an indication of
`
`where each element can be found in the cited prior art. Additional explanation and
`
`support for each ground is set forth in Exhibit 1003, the Declaration of Jonathan
`
`Wells (“Declaration”), referenced throughout this Petition.
`
`’236 Patent Claims
`Ground
`Ground 1 1-4, 6-10, 12-13
`
`Ground 2 5
`
`Basis for Rejection
`Obvious over Kitazoe and Niu further in
`view of 3GPP TS-36.321 under 35
`U.S.C. § 103
`Obvious over Kitazoe, Niu, and 3GPP
`TS-36.321 further in view of Kitazoe-II
`under 35 U.S.C. § 103
`
`3
`
`Exhibit 2004-007
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`
`
`
`The ’236 patent issued from U.S. Application No. 12/538,514, filed August
`
`10, 2009. The ’236 patent claims the benefit of U.S. Provisional Application No.
`
`61/087,988, filed August 11, 2008. The ’236 patent also claims priority to a
`
`Korean patent application numbered 10-2009-0057128, which was filed on June
`
`29, 2009. Accordingly, the earliest possible priority date for the ’236 patent is
`
`August 11, 2008 (hereinafter the “Critical Date”).1
`
`Ex. 1005 (“Kitazoe”) qualifies as prior art at least under 35 U.S.C § 102(e).
`
`Kitazoe was filed on June 10, 2008, more than one month before the Critical Date.
`
`Thus, by virtue of its actual filing date, Kitazoe is prior art to the ’236 patent under
`
`35 U.S.C. § 102(e).
`
`In addition, Kitazoe claims the benefit of two provisional applications: U.S.
`
`Provisional No. 60/945,465 filed June 21, 2007; and U.S. Provisional No.
`
`
`1 Petitioner does not acknowledge that the ’236 patent is entitled to its proclaimed
`
`priority date. Rather, Petitioner merely acknowledges the earliest proclaimed
`
`priority date of the ’236 patent by identifying it as the Critical Date with respect to
`
`the prior art analysis in the present Petition. Petitioner reserves the right to
`
`challenge the veracity of the ’236 patent’s priority claim in this or other
`
`proceedings involving the ’236 patent.
`
`4
`
`Exhibit 2004-008
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`60/955,867 filed August 14, 2007 (Ex. 1013, the “Kitazoe Provisional”). The
`
`Kitazoe Provisional was filed more than 11 months before the Critical Date of the
`
`’236 patent. As described below, because at least one claim of the Kitazoe patent
`
`is supported by disclosure in the Kitazoe Provisional, teachings common to the
`
`Kitazoe patent and Kitazoe Provisional are available as prior art as of the Kitazoe
`
`Provisional’s August 14, 2007 filing date. See Cisco v. Capella, Case IPR2014-
`
`01276, Paper 40, p. 22 note 9 (P.T.A.B. February 17, 2016) (Petitioner “need not
`
`show that every claim of” a prior art patent “is supported by the” corresponding
`
`provisional application “to demonstrate that subject matter disclosed in both . . . is
`
`entitled to the benefit of the filing date of the” provisional application) (citing
`
`Dynamic Drinkware v. National Graphics, 800 F.3d 1375 (Fed. Cir. 2015)).
`
`For example, claim 1 of the Kitazoe patent recites the following:
`
`A method that facilitates employing a random
`access procedure
`in
`a wireless
`communication
`environment, comprising:
`transmitting a random access preamble to a base
`station;
`receiving a random access response from the base
`station based upon the random access preamble; and
`transmitting a scheduled transmission message,
`which includes an encrypted portion and an unencrypted
`portion, to the base station as granted by the random access
`response and before receiving a contention resolution
`
`5
`
`Exhibit 2004-009
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`message from the base station when employing contention
`based random access.
`Similarly, the Kitazoe Provisional describes a method for performing a
`
`“random access procedure” in which “unencrypted” and “encrypted” messages are
`
`concatenated by the UE into a single message sent during the random access
`
`procedure (i.e., message 3). See Kitazoe Provisional, p. 22. The following figure
`
`from the Kitazoe Provisional shows this method:
`
`User
`equipment
`
`Base
`station
`
`[1]
`
`[2]
`
`[3]
`
`[4]
`
`[5]
`
`Kitazoe Provisional, Detail of FIG. A4, p. 22 (annotated)
`
`As shown at annotation [1] in the figure, the Kitazoe Provisional discloses
`
`that the user equipment (UE) “transmit[s] a random access preamble to a base
`
`
`
`6
`
`Exhibit 2004-0010
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`station” as recited in claim 1 of the Kitazoe patent. See id. At annotation [2], the
`
`UE “receiv[es] a random access response from the base station based upon the
`
`random access preamble.” See id. At annotation [3], the UE transmits a message 3
`
`to the base station in response to the random access response. The message 3 is the
`
`“scheduled transmission message” recited in claim 1 of the Kitazoe patent. See id.
`
`at FIG. A-1, p. 20. The Kitazoe Provisional further teaches that the scheduled
`
`transmission message “includes an encrypted portion” (see annotation [4]) “and an
`
`unencrypted portion” (see annotation [5]) as recited in claim 1. The scheduled
`
`transmission message is transmitted before the contention resolution message (see
`
`annotation [6]) from the base station.
`
`Thus, for at least these reasons, claim 1 of Kitazoe is fully supported by the
`
`Kitazoe Provisional. Accordingly, teachings in Kitazoe that are also disclosed by
`
`the Kitazoe Provisional are available as prior art as of its August 14, 2007 filing
`
`date. See Cisco v. Capella, Case IPR2014-01276, Paper 40, p. 22 note 9 (P.T.A.B.
`
`February 17, 2016) (citing Dynamic Drinkware v. National Graphics, 800 F.3d
`
`1375 (Fed. Cir. 2015)). Such teachings are identified throughout the present
`
`Petition by parallel citations to the Kitazoe Provisional.
`
`In addition, other claims in Kitazoe are supported at least by the disclosure
`
`in the sections of the Kitazoe Provisional included in the table below. These
`
`identifications are merely exemplary, and the Kitazoe Provisional may include
`
`7
`
`Exhibit 2004-0011
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`
`additional disclosure supporting claims of Kitazoe:
`
`Kitazoe Claims
`
`Supporting Disclosure in
`Kitazoe Provisional
`See, e.g., pp. 20-22.
`2, 6, 10, 13, 24, 32, 38
`3, 4, 15, 17, 25, 27, 31, 34
`See, e.g., ¶ 0030, p. 21.
`5, 18, 40
`See, e.g., provisional claims 1-5.
`7, 16, 20, 26, 29, 35
`See, e.g., p. 21.
`8, 9, 11, 12, 19, 21, 28, 37, 39 See, e.g., p. 22.
`22, 30
`See, e.g., ¶ 0030, p. 21, provisional claims 1-5.
`23, 33, 36, 41
`See, e.g., pp. 20-22, FIG. 2.
`See, e.g., pp. 20-22, ¶ 0035.
`42
`
`
`
`Accordingly, Kitazoe is entitled to the earlier priority date of the Kitazoe
`
`Provisional, and thus is prior art to the ’236 patent at least under 35 U.S.C. §
`
`102(e).
`
` Ex. 1007 (“3GPP TS-36.321”) qualifies as prior art at least under 35 U.S.C
`
`§ 102(a). The reference was made publicly available by the 3rd Generation
`
`Partnership Project (3GPP) on their website in March of 2008. See Ex. 1021, ¶¶ 3-
`
`9. 3GPP TS-36.321 was thus published more than four months before the Critical
`
`Date of the ’236 patent, and is therefore prior art at least under 35 U.S.C. § 102(a).
`
`Ex. 1012 (U.S. Patent No. 6,161,160, “Niu”) issued December 12, 2000,
`
`more than 7 years before the Critical Date of the ’236 patent. Niu is thus prior art
`
`to the ’236 patent at least under 35 U.S.C. § 102(b).
`
`8
`
`Exhibit 2004-0012
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`Ex. 1009 (“Kitazoe-II”) claims the benefit of U.S. Provisional No.
`
`61/015,159 (Ex. 1016, “Kitazoe-II Provisional”) filed December 19, 2007. As
`
`described below, because at least one claim of the Kitazoe-II patent is supported by
`
`disclosure in the Kitazoe-II Provisional, teachings common to the Kitazoe-II patent
`
`and Kitazoe Provisional are available as prior art as of the Kitazoe-II Provisional’s
`
`December 19, 2007 filing date. See Cisco v. Capella, Case IPR2014-01276, Paper
`
`40, p. 22 note 9 (P.T.A.B. February 17, 2016) (citing Dynamic Drinkware v.
`
`National Graphics, 800 F.3d 1375 (Fed. Cir. 2015)).
`
`For example, claim 1 of the Kitazoe-II patent recites the following:
`
`A method for wireless communication, comprising:
`sending a message on a control channel for random
`access by a user equipment (UE);
`sending a reserved channel identifier to indicate the
`message being sent on the control channel; and
`sending the message and the reserved channel
`identifier on an uplink shared channel carrying the control
`channel.
`Similarly, the Kitazoe-II Provisional describes a method used in “wireless
`
`communication networks” including a UE sending a “message 3” to a base station
`
`during a random access procedure on a “common control channel (CCCH)” (i.e., a
`
`control channel for random access as recited in the claim). See Kitazoe-II
`
`Provisional, p. 39. The Kitazoe-II Provisional discloses sending a “reserved MAC
`
`9
`
`Exhibit 2004-0013
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`LCID” (i.e., a reserved channel identifier) to indicate the message being sent. See
`
`id. at p. 40. The reserved MAC LCID is “multiplexed onto” a MAC PDU
`
`containing the message 3, and both are sent on a “random access channel
`
`(RACH),” which is an uplink shared channel carrying the CCCH (the control
`
`channel). See id. at p. 39.
`
`Thus, for at least these reasons, claim 1 of Kitazoe-II is fully supported by
`
`the Kitazoe-II Provisional. Accordingly, teachings in Kitazoe-II that are also
`
`disclosed by the Kitazoe-II Provisional are available as prior art as of its December
`
`19, 2007 filing date. See Cisco v. Capella, Case IPR2014-01276, Paper 40, p. 22
`
`note 9 (P.T.A.B. February 17, 2016) (citing Dynamic Drinkware v. National
`
`Graphics, 800 F.3d 1375 (Fed. Cir. 2015)). Such teachings are identified
`
`throughout the present Petition by parallel citations to the Kitazoe-II Provisional.
`
`In addition, other claims in Kitazoe-II are supported at least by the
`
`disclosure in the sections of the Kitazoe-II Provisional included in the table below.
`
`These identifications are merely exemplary, and the Kitazoe-II Provisional may
`
`include additional disclosure supporting claims of Kitazoe-II:
`
`Kitazoe-II
`Claims
`1-2, 23, 33, 34
`3
`4-5, 35
`6, 10
`
`Supporting Disclosure in
`Kitazoe-II Provisional
`See, e.g., pp. 39-40.
`See, e.g., p. 39.
`See, e.g., p. 40.
`See, e.g., pp. 40-41.
`
`10
`
`Exhibit 2004-0014
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`
`Supporting Disclosure in
`Kitazoe-II Provisional
`
`See, e.g., p. 41.
`See, e.g., pp. 40-42.
`See, e.g., pp. 42-43.
`See, e.g., pp. 39, 42-43.
`See, e.g., p. 44.
`See, e.g., p. 43, provisional claim 1.
`See, e.g., p. 43.
`See, e.g., pp. 39-40, ¶ 0035, FIG. 2.
`See, e.g., p. 40, ¶ 0035, FIG. 2.
`See, e.g., pp. 42-43, ¶ 0035, FIG. 2.
`See, e.g., p. 44, ¶ 0035, FIG. 2.
`See, e.g., pp. 39-40, ¶¶ 0035-0036.
`
`Kitazoe-II
`Claims
`7-9, 12, 26, 36
`11
`13-15, 24, 37
`16
`17-19, 25, 38
`20, 21
`22
`27, 28
`29, 30
`31
`32
`39
`
`
`
`Accordingly, Kitazoe-II is entitled to the earlier priority date of the Kitazoe-
`
`II Provisional, and thus is prior art to the ’236 patent at least under 35 U.S.C. §
`
`102(e).
`
`IV. THE ’236 PATENT
`A. Brief Description of the ’236 Patent
`The ’236 patent describes “a data transmission method and a user equipment
`
`for the same” related to a “random access procedure” between a user equipment
`
`(UE) and a base station. ‘236 patent, 3:42-59, 4:42-43. The patent describes that
`
`“a UE performs the random access procedure,” for example, “when the UE
`
`performs initial access” to a base station, or “when there is uplink data
`
`11
`
`Exhibit 2004-0015
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`transmission in a situation where uplink time synchronization is not aligned or
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`where a specific radio resource used for requesting radio resources is not
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`allocated[.]” Id. at 3:42-57. FIG. 5 from the ’236 patent shows an example
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`random access procedure performed between a UE and an eNB (a base station):
`
`User
`equipment
`
`Base
`station
`
`Message 1
`
`Message 2
`
`Message 3
`
`Message 4
`
`
`
`’236 patent, Detail of FIG. 5 (annotated)
`
`The ’236 patent describes that a random access procedure begins with the
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`UE “transmitting a random access preamble to the” base station (referred to as
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`“message 1”). Id. at 4:4-7. The UE then “receiv[es] a random access response”
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`(referred to as “message 2”) from the base station “in correspondence with the
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`transmitted random access preamble.” Id. at 4:7-9. The UE then “transmit[s] an
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`uplink message” (referred to as “message 3”) to the base station “using the
`
`12
`
`Exhibit 2004-0016
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`information received by the random access response message.” Id. at 4:11-12.
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`The UE then “receiv[es] a message” (referred to as “message 4” or a “contention
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`resolution” message) “corresponding to the uplink message from the” base station.
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`Id. at 4:14-16.
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`The ’236 patent describes that messages from the base station, such as the
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`random access response (message 2) and the contention resolution message
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`(message 4), can include “uplink (UL) grant signals” that “indicate[] information
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`about uplink radio resources which may be used when the UE transmits a signal to
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`the” base station. Id. at 4:22-24.
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`B. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). For
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`this proceeding only, 2 Petitioner submits the arguments below regarding claim
`
`
`2 Any interpretations of the Challenged Claims by Petitioner are for the sole
`
`purpose of determining whether the prior art anticipates or renders obvious the
`
`Challenged Claims in these proceedings. Petitioner does not concede that any
`
`Challenged Claim meets statutory standards for patent claiming, and neither
`
`Petitioner’s interpretations of the Challenged Claims, nor Petitioner’s analysis of
`
`the Challenged Claims relative to the cited art should be treated as such a
`
`13
`
`Exhibit 2004-0017
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`construction. For terms not addressed below, Petitioner submits that no specific
`
`construction is necessary.3
`
`
`concession. Petitioner recognizes that IPR is not an appropriate forum to address
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`certain issues, such as the patentability of the claimed invention under 35 U.S.C. §
`
`101 or the failure to comply with 35 U.S.C. § 112, and, therefore reserves all rights
`
`to contend that one or more Challenged Claims are invalid for reasons out of scope
`
`for IPR, including but not limited to the failure to claim patentable subject matter
`
`under 35 U.S.C. § 101, and lack of definiteness or lack of written description under
`
`35 U.S.C. § 112. The failure to claim patentable subject matter under 35 U.S.C. §
`
`101 or the presence of definiteness and description problems in the Challenged
`
`Claims is no bar to IPR in appropriate circumstances; the Board may set aside such
`
`issues when reviewing claims under 35 U.S.C. §§ 102 and 103. E.g., Vibrant
`
`Media, Inc. v. Gen’l Elec. Co., IPR2013-00172, 2014 WL 3749773, at *6–7
`
`(Patent Tr. & App. Bd. July 28, 2014).
`
`3 Because the standards of claim interpretation applied in litigation differ from
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`PTO proceedings, any interpretation of claim terms in this IPR is not binding upon
`
`Petitioner in any litigation related to the subject patent. See In re Zletz, 13 USPQ2d
`
`1320, 1322 (Fed. Cir. 1989). Further, due to the different claim construction
`
`standards, Petitioner identifying any feature in the cited references as teaching a
`
`14
`
`Exhibit 2004-0018
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`Claim scope of the ’236 patent
`
`1.
`The specification of the ’236 patent describes purported solutions to
`
`problems related to transmitting message 3 data “in correspondence with the
`
`reception of all UL Grant signals.” ’236 patent, 4:30-34. Specifically, the
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`specification states that “information [] to be transmitted through message 3”
`
`between the user equipment and base station “may be lost” in some situations if the
`
`user equipment transmits message 3 data using “an Uplink (UL) Grant signal
`
`received on a message other than a random access response message.” Id. at
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`12:27-29, 13:17-18. The specification describes a purported solution to this
`
`problem in which the UE “transmits the data stored in the Msg3 buffer only when
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`there is data in the Msg3 buffer when receiving the UL Grant signal and the UL
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`Grant signal is received on the random access response message[.]” Id. at 14:4-7
`
`(emphasis added). The elements of the Challenged Claims of the ’236 patent,
`
`however, are not limited to these purported solutions to this problem described in
`
`the specification, and use broader language than that used in the specification to
`
`describe some features. For example, claim 1 recites a similar feature to the
`
`purported solution above from the specification, but uses the broader term “if” as
`
`
`claim element is not an admission that the claim element is met by any feature for
`
`infringement purposes.
`
`15
`
`Exhibit 2004-0019
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`opposed to the more narrow term “only when” from specification. Compare id. at
`
`claim 1 to 14:4-7. Any attempt by the Patent Owner to advance that elements of
`
`the Challenged Claims should be interpreted narrowly to coincide with the
`
`solutions described in the specification should be rejected, as the claims should not
`
`be narrowed by fiat, particularly in proceedings before the PTAB.
`
`The Federal Circuit has stated that importing limitations from a patent’s
`
`specification into its claims is “one of the cardinal sins of patent law.” Phillips v.
`
`AWH Corp., 415 F. 3d 1303, 1320 (Fed. Cir. 2005); see also Flo Healthcare
`
`Solutions, LLC v. Kappos, 697 F. 3d 1367, 1376 (Fed. Cir. 2012) (under the
`
`broadest reasonable interpretation standard, “it is not proper to import from the
`
`patent's written description limitations that are not found in the claims
`
`themselves.”); Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875
`
`(Fed. Cir. 2004); Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906 (Fed.
`
`Cir. 2004); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
`
`2003); Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003). Even
`
`where a patent “describes only a single embodiment,” it is improper to limit the
`
`scope of the claims to that embodiment if the claims recite broader language.
`
`Phillips., 415 F.3d at 1323. Under the broadest reasonable interpretation standard,
`
`it is especially important to avoid reading limitations into the claims in order to
`
`allow the Patent Owner the opportunity to “remove any ambiguity in claim term
`
`16
`
`Exhibit 2004-0020
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`meaning” by amending the claims. In re Bigio, 381 F. 3d 1320 (Fed. Cir. 2004)
`
`(citing In re Prater, 415 F.2d 1393, 1405 (CCPA 1969) (“We are not persuaded by
`
`any sound reason why, at any time before the patent is granted, an applicant should
`
`have limitations of the specifications read into a claim where no express statement
`
`of the limitation is included in the claim.”))
`
`In the present proceeding, the Challenged Claims of the ’236 patent should
`
`not have limitations read into them from the examples described in the
`
`specification. For example, claim 1 of the ’236 patent recites the following
`
`“transmitting the data stored in the Msg3 buffer . . . 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.” ‘236 patent, claim 1
`
`(emphasis added). The ’236 patent describes an example of a process in which
`
`“the data stored in the Msg3 buffer [is transmitted] 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 14:4-8 (emphasis
`
`added). Patent Owner may attempt to argue that the term “if” should be
`
`interpreted as “only when,” thereby narrowing the scope of claim 1 to this example
`
`from the specification. Narrowing the scope of the claim in this way amounts to
`
`improperly incorporating a limitation from the ’236 specification into the claims.
`
`First, the Challenged Claims themselves do not include the term “only.”
`
`17
`
`Exhibit 2004-0021
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`Second, the use of a different term (“if”) in claim 1 than used in the ’236
`
`specification (“only when”) to describe the example indicates that the claim is not
`
`limited in scope to this example. See Chi. Bd. Options Exch. v. Int'l Sec. Exch.,
`
`677 F.3d 1361, 1369 (Fed. Cir. 2012) (“The general presumption that different
`
`terms have different meanings remains.”). Indeed, the difference in language
`
`demonstrates that the Applicant of the ’236 patent knew how to describe an action
`
`as occurring exclusively in the presence of a condition by using the term “only.”
`
`In contrast, in claim 1 and elsewhere, the term “if” is used to indicate that the
`
`action occurs in the presence of the condition, but possibly also at other times.
`
`This interpretation is supported by the preamble’s recitation of “comprising,”
`
`indicating a method can include additional actions and still fall within the scope of
`
`the claim. See Invitrogen v. Biocrest Manufacturing, 327 F.3d 1364, 1368 (Fed.
`
`Cir. 2003) (“The transition ‘comprising’ in a method claim indicates that the claim
`
`is open-ended and allows for additional steps.”); see also Genentech, Inc. v. Chiron
`
`Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997).
`
`Accordingly, Petitioner submits that, even though the ’236 specification
`
`includes descriptions of more narrow examples, the claim language of the ’236
`
`patent speaks for itself, and the Board should decline to narrow the claims by
`
`importing limitations from the specification.
`
`2.
`
`Claim 7
`
`18
`
`Exhibit 2004-0022
`
`

`
`Attorney Docket No. 00035-0009IP2
`IPR of U.S. Patent No. 7,881,236
`Claim 7 recites a “reception module adapted to receive an uplink grant,” a
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`“transmission module adapted to transmit data,” a “[HARQ (Hybrid Automatic
`
`Repeat Request)] entity adapted to” perform various actions, and a