IPR2016-00757
`Patent 7,881,236 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ZTE (USA) INC., HTC CORPORATION, HTC AMERICA, INC., SAMSUNG
`ELECTRONICS CO., LTD., AND SAMSUNG ELECTRONICS AMERICA,
`INC.,
`Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`
`____________
`
`Case IPR2016-007571
`Patent 7,881,236 B2
`____________
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`.
`
`
`
`
`
`_______________________
`
`1IPR2016-01345 has been consolidated with this proceeding.
`
`
`
`Patent 7,881,236 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ZTE (USA) INC., HTC CORPORATION, HTC AMERICA, INC., SAMSUNG
`ELECTRONICS CO., LTD., AND SAMSUNG ELECTRONICS AMERICA,
`INC.,
`Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`
`____________
`
`Case IPR2016-007571
`Patent 7,881,236 B2
`____________
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`.
`
`
`
`
`
`_______________________
`
`1IPR2016-01345 has been consolidated with this proceeding.
`
`
`
`
`Table of Contents
`
`IPR2016-00757
`Patent 7,881,236 B2
`
`Page
`
`I.
`II.
`
`Introduction ...................................................................................................... 1
`Background ...................................................................................................... 2
`A.
`The ’236 patent ...................................................................................... 2
`B.
`The Claims ............................................................................................ 3
`C.
`Claim Construction................................................................................ 5
`III. The Board overlooked and misapprehended matters in its Final
`Written Decision .............................................................................................. 7
`A.
`The Board overlooked the Patent Owner’s argument that the
`Petitioner had made a general conclusion based on only a
`simple random access procedure—one with only one UL grant-
`-and thus a procedure not capable of testing the “only if”
`claimed behavior. .................................................................................. 7
`The Board overlooked the Patent Owner’s argument that the
`321 reference taught the only if behavior only in hindsight ................11
`The Board misapprehended the Petitioner’s argument about the
`321 reference, and adopted a different basis for the rejection
`than the Petitioner offered ...................................................................13
`
`B.
`
`C.
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`TABLE OF AUTHORITIES
`
`IPR2016-00757
`Patent 7,881,236 B2
`
`
` Page(s)
`
`Cases
`Allentown Mack Sales & Serv., Inc. v. N.L.R.B.,
`522 U.S. 359 (1998) ............................................................................................ 11
`In re Nuvasive,
`841 F.3d 966, 968 (Fed. Cir. 2016) .................................................................... 14
`Rules
`37 C.F.R. § 42.71(d)(2) .............................................................................................. 1
`
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`- ii -
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`IPR2016-00757
`Patent 7,881,236 B2
`The Patent Owner, Evolved Wireless LLC, respectfully asks the Board to
`
`reconsider its Final Written Decision in this proceeding, pursuant to 37 C.F.R.
`
`§ 42.71(d)(2).
`
`I.
`
`Introduction
`The Board should reconsider its Final Written Decision in this matter for
`
`three independent reasons.
`
`First, the Board overlooked the Patent Owner’s argument that Petitioner had
`
`made a general conclusion that its prior art behaves according to the Board’s
`
`narrow only if construction for the first transmitting limitation, even though that
`
`prior art does not create the conditions that test the only if behavior. The
`
`Petitioner’s position is analogous to an argument that an observation that every one
`
`of a company’s employees who flew first class last week used a company-issued
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`voucher confirms that the company has a rule: “Employees may fly first class only
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`if they have a voucher.” The evidence presented is certainly inadequate if the
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`company’s CEO always flies first class, but did not travel last week.
`
`Separately, the Board overlooked the Patent Owner’s argument that the 321
`
`reference taught the only if behavior only in hindsight. Neither the Board nor the
`
`Petitioner suggested that anyone other than the inventors appreciated the problems
`
`that reception of additional UL Grants could cause, much less disclosed the
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`- 1 -
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`claimed solution in the ’236 patent, and so to solve those problems in making the
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`IPR2016-00757
`Patent 7,881,236 B2
`
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`proposed combination is to use impermissible hindsight.
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`Finally, the Board misapprehended the Patent Owner’s argument about the
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`321 reference. The Board improperly modified the Patent Owner’s argument that
`
`the 321 reference made the only if behavior obvious into one that the 321 reference
`
`disclosed that behavior.
`
`II. Background
`The Board determined that the challenged claims of U.S. Patent No.
`
`7,881,236 (“the ’236 patent”) are unpatentable as obvious. (Final Written Decision
`
`(“FWD”), Paper 42, at 39.)
`
`A. The ’236 patent
`The ’236 patent is directed to mobile communication technology. (FWD at
`
`2.) It relates to communication between user equipment (UE) and base stations. Id.
`
`The UE includes cell phones. (See ’236 patent (Ex. 1001) at 1:22-25; FWD at 2-3.)
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`The ’236 patent is focused on random access procedures. (Id. at 2.) Cell phones
`
`and base stations perform random access procedures at various times, for example
`
`when the cell phone initially accesses the base station. (Id. at 3-4.)
`
`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.)
`
`Message 3 buffer data (“Msg3 buffer data”), and 3.) New data. (Id.) The cell phone
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`- 2 -
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`transmits the preamble at a time it selects—after all, if it is only making an initial
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`IPR2016-00757
`Patent 7,881,236 B2
`
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`access to a base station, the base station is ignorant of the cell phone and the cell
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`phone needs to announce itself to the base station. (See id. at 3-4.) But the timing
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`of the cell phone’s transmission of the other two types of data (the Msg3 buffer
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`data and the new data) is controlled by the base station. (Id. at 4-5.) The base
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`station issues authorizations, called UL Grants (Uplink Grants), to the cell phone.
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`Id. 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. (Id. at 5; Ex.
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`1001 at 8:13-15.)
`
`Important to this proceeding, there are (at least) two types of UL Grant. (Id.
`
`at 5, 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
`
`Channel (“PDCCH”). (FWD at 5.) For simplicity, this motion refers to them as
`
`“random access response UL Grants” and “PDCCH UL Grants.”
`
`The Claims
`B.
`The ’236 patent has two independent claims, claims 1 and 7. As the Patent
`
`Owner explained in its Response, the claims entail transmitting limitations that
`
`happen (or not) depending on a condition, there (and here) called “Condition X.”
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`(Paper 22 (“Response”) at 7). 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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`IPR2016-00757
`Patent 7,881,236 B2
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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 7-8.)
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`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
`
`1:
`
`(Response at 7.) And here is that showing for the relevant portions of claim 7:
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`(Id. at 8.) 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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`IPR2016-00757
`Patent 7,881,236 B2
`
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`authorizes the transmission of the Msg3 buffer data is a random access response
`
`UL Grant and not a PDCCH UL Grant. (Response at 7.)
`
`C. Claim Construction
`The Board, relying at least partially on the interplay between the two
`
`transmitting limitations and the file history of a child patent of the ’236 patent,
`
`correctly construed the “if” language of the two transmitting limitations associated
`
`with Condition X to create a necessary, not just a sufficient, condition for the
`
`transmission. (FWD at 15.) Understanding what this narrow claim construction
`
`entails is important, because it provides the basis for the challenged claims’
`
`validity—an argument that the Board overlooked.
`
`The Petitioner had first argued that Condition X is merely a sufficient
`
`condition. (Id. at 23 (“[a]lthough Petitioner advocates for a construction in which
`
`‘if’ introduces sufficient conditions, . . . .”).) But in construing the claims such that
`
`Condition X is a necessary condition, the Board rejected Petitioner’s argument.
`
`(The Petitioner called the construction the Board adopted the “only if”
`
`interpretation. (Pet. at 16-17.).)
`
`Of course, in construing the first transmitting limitation to require
`
`transmitting the Msg3 buffer data only when Condition X is met, rather than
`
`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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`IPR2016-00757
`Patent 7,881,236 B2
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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, Petitioner was
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`required to prove a negative.
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`More specifically, Petitioner was required to demonstrate that the references
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`disclosed by preponderance of the evidence a system that does not transmit the
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`Msg3 buffer data when Condition X is not met, or at least render that behavior
`
`obvious. The Petitioner relied solely on an obviousness combination—the 300
`
`reference and the 321 reference (collectively, the “prior art specifications”)—that
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`purportedly disclosed the only if behavior. However, the prior art specifications are
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`insufficient to prove the negative.
`
`Proving a negative is generally difficult because, loosely speaking, it may
`
`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
`
`one place. And fatal to Petitioner’s argument as adopted by the Board, the only
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`place they looked—the prior art specifications—did not consider conditions that
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`could test the whether the Msg3 buffer data is transmitted Condition X is not met.
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`IPR2016-00757
`Patent 7,881,236 B2
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`III. The Board overlooked and misapprehended matters in its Final Written
`Decision
`A. The Board overlooked the Patent Owner’s argument that the Petitioner
`had made a general conclusion based on only a simple random access
`procedure—one with only one UL grant--and thus a procedure not
`capable of testing the “only if” claimed behavior.
`The Board overlooked the Patent Owner’s argument that the 300 reference
`
`cannot teach the only if claimed behavior because it does not create the conditions
`
`that test that claimed behavior.
`
`As noted above, the claims all require that transmission of the Msg3 buffer
`
`data occur only when Condition X is met. (See FWD at 15.) That means, since
`
`Condition X requires that the UL Grant be a random access response UL Grant,
`
`that the Msg3 buffer data be transmitted only if the UL Grant that authorizes the
`
`transmission is a random access response UL Grant. Putting that statement in the
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`context of the purported-invalidating art, and remembering that Condition X asks
`
`“is there 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?” (Response at 30, n.7), the Petitioner must show that the prior art
`
`specifications do not transmit the Msg3 buffer data when there is data in the
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`message 3 buffer and a PDCCH Grant is received.
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`Putting it more simply, the Petitioner had the burden to show that the prior
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`IPR2016-00757
`Patent 7,881,236 B2
`
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`art specifications teach that when the Msg3 buffer had data to send, and a PDCCH
`
`grant was received, it did not transmit the Msg3 buffer data.
`
`The Petitioner’s faulty argument went as follows. It argued that the 300
`
`reference teaches the only if feature. (Pet. at 31 (“The 300 reference taught the
`
`“only if” feature.”).) As the Patent Owner’s Response pointed out, the Petitioner’s
`
`argument relies on the following figure from the 300 reference that illustrates a
`
`random access procedure.
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`
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`(Response at 26; Pet. at 31.) Combining the 321 and the 300 references, the
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`Petitioner concluded “[t]hese two facts established that a UE should transmit
`
`message 3 only if it receives a random access response grant while data is in the
`
`message 3 buffer.” (Pet. at 32.)
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`In its Response, however, the Patent Owner observed that the prior art
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`IPR2016-00757
`Patent 7,881,236 B2
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`specification’s illustration of a random access procedure according to the 300
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`reference represents only a simple example of a random access procedure.
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`(Response at 44.) The Patent Owner illustrated a more complex case of UL Grant
`
`reception in its own annotations of the Petitioner’s figure, copied here.
`
`
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`(Id.) As the Patent Owner explained, it added a second UL Grant to the figure. (Id.
`
`at 44.) That grant, identified as 2’, could be a PDCCH UL Grant. (Id.)
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`Next, the Patent Owner explained how the prior art to the ’236 patent would
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`transmit the Msg3 buffer data in response to the PDCCH UL Grant 2’. (Id at 45.)
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`Because the 300 reference is the prior art (the Petitioner even calls it “The prior art
`
`specification” (Pet. at 10)), there can be no dispute that in the random access
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`procedure shown in the Patent Owner’s annotated figure, the Msg3 buffer data
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`IPR2016-00757
`Patent 7,881,236 B2
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`would be transmitted when a PDCCD UL Grant is received. The Response said as
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`much. (Response at 45. (“Accordingly, in the case described by [the Patent
`
`Owner’s annotated figure], the Msg3 buffer data is sent using the 2’ message, an
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`UL Grant not in a random access response.”).)
`
`
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`This transmission disproves the proposition that the prior art teaches the only
`
`if behavior: here, the Msg3 buffer data is transmitted, but in correspondence to
`
`something other than a random access response UL Grant. The Response said that.
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`(Id. (“In light of these observations, then, it is clear that Petitioners’ conclusion that
`
`the 320 reference shows that transmitting the Msg3 buffer data only if an UL Grant
`
`in a Random Access Response has been received is false.”).) The Patent Owner
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`went on to explain the root problem behind the Patent Owner’s argument. (Id. at
`
`45-46 (“The error Petitioners made was to make a general conclusion based only
`
`on one example of a simple random access procedure. Had Petitioners considered
`
`the case illustrated in [the annotated figure], they would have come to a different
`
`conclusion.”).)
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`The Board’s Final Written Decision (“FWD”) overlooked the argument that
`
`the Petitioner had made a general conclusion based on only a simple random
`
`access procedure. The FWD contains no discussion of this argument. Having
`
`overlooked the Patent Owner’s argument, the FWD does not provide the Board’s
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`reasoning, and so it violates the Administrative Procedures Act (“APA”).
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`IPR2016-00757
`Patent 7,881,236 B2
`
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`Allentown Mack Sales & Serv., Inc. v. N.L.R.B., 522 U.S. 359, 374-75 (1998)
`
`(citation omitted) (“The APA requires ‘reasoned decisionmaking’ for both agency
`
`rulemaking and adjudications because it ‘promotes sound results, and unreasoned
`
`decisionmaking the opposite.’”).
`
`The same analysis applies to the other independent claim, claim 7. It, like
`
`claim 1, requires showing an apparatus adapted to carrying out the same
`
`transmission of the Msg3 buffer data based on Condition X as does claim 1.
`
`Accordingly, the Board’s Final Written Decision fails for the same reason as claim
`
`1. Finally, all other challenged claims depend on claims 1 or 7. The base claims
`
`not being obvious, the dependent claims are not obvious either.
`
`B. The Board overlooked the Patent Owner’s argument that the 321
`reference taught the only if behavior only in hindsight
`The Board overlooked the Patent Owner’s argument that the Patent Owner’s
`
`argument concerning the 321 reference relied on hindsight.
`
`The Petitioner argued that the 321 reference rendered the only if behavior
`
`obvious. (Pet. at 29-31.) The Patent Owner argued that the 321 reference rendered
`
`the only if feature of the claim obvious only in hindsight. (Response at 42-43.) The
`
`Patent Owner pointed out that the Petitioner’s argument hinges on the recognition
`
`that “erroneous grants” were known at the time of the invention. (Id. at 42.) The
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`Patent Owner pointed out that recognition of any grant as being problematic only
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`IPR2016-00757
`Patent 7,881,236 B2
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`first appeared in the ’236 patent. (Id.) Accordingly, the Patent Owner argued that
`
`the Petitioner’s argument with respect to the 321 reference relies on improper
`
`hindsight. (Id. at 42-43.)
`
`More specifically, the Patent Owner’s Response stated,
`
`Instead, it is only the ’236 patent where certain grants were first
`recognized as being problematic. For example, the inventors of
`the ’236 patent first discovered that in the prior art, with an
`erroneously-driven CR
`timer,
`the UE could come
`to
`“deadlock.” Ex. 1001 at 12:13-34; Cooklev at ¶ 85. Similarly,
`the inventors of the patent first discovered that in the prior art,
`reception of a second UL Grant while the contention resolution
`process was still active, could lead to loss of data. Ex. 1001 at
`13:14-18.
`(Response at 42.)
`
`The Board’s FWD, however, did not address this argument. Nothing in the
`
`FWD disputes that the inventors of the ’236 patent discovered the problems of
`
`deadlock and loss of data. (FWD at 23-28.) The FWD did not discuss “erroneous
`
`grants,” let alone address whether any prior art document taught that some grants
`
`were problematic. (Id.)
`
`Because the Board overlooked the Patent Owner’s argument that its
`
`obviousness finding relies on hindsight, the FWD does not provide the Board’s
`
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`- 12 -
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`reasoning as to this argument, and so it violates the APA. Allentown Mack Sales,
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`IPR2016-00757
`Patent 7,881,236 B2
`
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`522 U.S. at 374-75. Accordingly, the Board should reconsider its conclusion to
`
`cancel the claims based on the 321 reference.
`
`C. The Board misapprehended the Petitioner’s argument about the 321
`reference, and adopted a different basis for the rejection than the
`Petitioner offered
`The Board improperly analyzed the Petitioner’s arguments about the 321
`
`reference as if that reference supported an anticipation argument, and accordingly
`
`misapprehended the Petitioner’s Ground for invalidity. Notably, the Board
`
`understood that Petitioner argued that the 321 and the 300 references 3GPP TS 321
`
`each separately teach the “only if” behavior. (FWD at 23. (“Petitioner asserts that
`
`both 3GPP TS 321 and 3GPP TS 300 would be interpreted by one of ordinary skill
`
`in the art to teach or suggest transmission of the data in the Msg3 buffer only if
`
`both conditions (1) and (2) are met and transmission of new data if either condition
`
`(1) or (2) is not met. Pet. 29–31.” (emphasis added).) However, with respect to the
`
`321 reference, the Petitioner merely argued that 321 renders the only if behavior
`
`obvious. (Pet. at 27 (“The 321 reference by itself renders the “only if” feature
`
`obvious.”).) The Petitioner’s argument requires a person of skill in the art to take
`
`the 321 reference and then modify it with common-sense. (Pet. at 30 (“It would
`
`have been a common-sense design choice for a UE to select the correct grant (in
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`- 13 -
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`the random access response) rather than the incorrect one (in the PDCCH) and to
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`IPR2016-00757
`Patent 7,881,236 B2
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`transmit message 3 using the random access response grant.”).)
`
`The Final Written Decision does not address the Petitioner’s argument that a
`
`person of ordinary skill would modify the 321 reference, whether using common-
`
`sense or any other reason. (FWD at 25.) Instead, the Board created a new
`
`argument: It went beyond Petitioner’s argument that the 321 reference made the
`
`only if behavior obvious. The Board’s new argument—presented for the first time
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`at the Final Written Decision—is that the 321 reference discloses the only if
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`behavior.
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`Because the Board’s ground for cancelling claim 1 was raised for the first
`
`time only in the Final Written Decision, the Patent Owner was unable to respond,
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`and the Board’s cancellation of claim 1 violates the APA. The Board is not
`
`permitted to cancel claims based on grounds not raised in the petition. See In re
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`NuVasive, 841 F.3d 966, 968 (Fed. Cir. 2016) (“[W]e conclude, the Board's
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`ultimate reliance on that [new] material, together with its refusal to allow
`
`NuVasive to respond fully once that material was called out, violated NuVasive’s
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`rights under the Administrative Procedure Act.”)
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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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`IPR2016-00757
`Patent 7,881,236 B2
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`Respectfully submitted,
`
`/Ryan M. Schultz/
`Registration No. 65,134
`Attorney for Patent Owner
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`CERTIFICATE OF SERVICE
`
`IPR2016-00757
`Patent 7,881,236 B2
`
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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:
`
`For ZTE petitioners:
`Charles M. McMahon
`cmcmahon@mwe.com
`Hersh H. Mehta
`hmehta@mwe.com
`
`For HTC petitioners:
`Stephen S. Korniczky
`skorniczky@sheppardmullin.com
`Martin Bader
`mbader@sheppardmullin.com
`Ericka J. Schulz
`eschulz@sheppardmullin.com
`
`For Samsung petitioners
`James M. Glass
`jimglass@quinnemanuel.com
`Kevin P.B. Johnson
`kevinjohnson@quinnemanuel.com
`Todd M. Briggs
`toddbriggs@quinnemanuel.com
`John T. McKee
`johnmckee@quinnemanuel.com
`
`
`
`Dated: December 29, 2017
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Ryan M. Schultz/
`
`Registration No. 65,134
`Attorney for Patent Owner
`
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