`By: Terry A. Saad (tsaad@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`Daniel F. Olejko (dolejko@bcpc-law.com)
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioners,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`
`
`Case IPR2016-01501
`U.S. Patent No. 8,457,676
`
`
`
`MOTION FOR OBSERVATION OF CROSS-EXAMINATION OF
`TIM A. WILLIAMS, PH.D.
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`IPR2016-01501
`Patent 8,457,676
`
`Patent Owner Cellular Communications Equipment LLC (“CCE”) hereby
`
`files this motion for observation of the testimony of Dr. Tim A. Williams obtained
`
`on September 19, 2017, during the cross-examination of his Second Declaration
`
`(Exhibit 1008). This motion includes one exhibit—the transcript of the testimony
`
`of Dr. Williams during his cross-examination on September 19, 2017 (Exhibit 2006).
`
`Observation No. 1
`
`In Exhibit 2006, on page 20, line 11 through page 22, line 21, the witness
`
`testified that the inventors of the ’676 patent described the problem they sought to
`
`solve using a reference to an “eNode-B” which the witness testified is specific
`
`nomenclature used in an LTE system. That testimony is relevant to Patent Owner’s
`
`argument on pages 14-15 of the Patent Owner Response (Paper 11). The testimony
`
`is relevant because Patent Owner has argued that the problem that the inventors
`
`sought to solve impacts the perspective of a person of skill in the art.
`
`Observation No. 2
`
`In Exhibit 2006, on page 24, line 9 through page 25, line 15, the witness
`
`testified that the inventors of the ’676 patent identified one of the problems they
`
`sought to solve as related to 3GPP’s inability to find satisfactory criteria for sending
`
`power control headroom reports to an eNode-B from a user terminal and that
`
`statement refers to the ongoing efforts for developing the LTE standard at the time
`
`of the invention. That testimony is relevant to Patent Owner’s argument on pages
`
`2
`
`
`
`IPR2016-01501
`Patent 8,457,676
`
`14-15 of the Patent Owner Response (Paper 11). The testimony is relevant because
`
`Patent Owner has argued that the problem that the inventors sought to solve impacts
`
`the perspective of a person of skill in the art.
`
`Observation No. 3
`
`In Exhibit 2006, on page 30, lines 2-12, the witness testified that 3rd
`
`Generation WCDMA systems are derived from CDMA technology, whereas 4th
`
`Generation LTE Systems are not derived from CDMA technology. That testimony
`
`is relevant to Patent Owner’s argument that WCDMA systems did not reflect the
`
`same needs for power headroom reporting as LTE systems on pages 14-15 of the
`
`Patent Owner Response (Paper 11). The testimony is relevant because the parties’
`
`positions differ as to the significance of the differences between the systems of the
`
`’676 patent and the Kwak reference.
`
`Observation No. 4
`
`In Exhibit 2006, on page 33, line 25 through page 34, line 18, the witness
`
`testified that there are differences in the power control implementations of 3G
`
`WCDMA systems and 4G LTE systems, but he did not consider them relevant to his
`
`analysis. That testimony is relevant to Patent Owner’s argument that Kwak does not
`
`offer a solution analogous to the power headroom reporting criteria that hold specific
`
`benefit to an LTE implementation on pages 14-15 of the Patent Owner Response
`
`(Paper 11). The testimony is relevant because the witness holds an opinion that
`
`3
`
`
`
`IPR2016-01501
`Patent 8,457,676
`
`differs from the opinion of Dr. Kesan regarding the significance of such differences
`
`in power control between WCDMA and LTE and the influence those differences
`
`would have had on a person of ordinary skill in the art at the time of the invention.
`
`Observation No. 5
`
`In Exhibit 2006, on page 41, line 1-15, the witness testified the portion of the
`
`’676 patent that refers to the parameter “k” being “configured via RRC signaling”
`
`would, in his opinion, be understood by one of ordinary skill in the art to imply the
`
`ability to adjust parameters at the UE. That testimony is relevant to Dr. Kesan’s
`
`testimony that the same portion of the patent describing the parameters to be
`
`“configured” does not indicate that the parameters are adjustable, but instead
`
`indicates that the parameters are merely set, at Exhibit 1009, at page 133, line 21
`
`through page 134, line 18. That testimony is also relevant to Patent Owner’s
`
`argument that Kwak’s disclosure of a parameter “notified to the UE” does not
`
`disclose or render obvious that the parameter (TPS Period) is adjustable at pages 16-
`
`19 of Patent Owner’s Response (Paper 11). The testimony is relevant because the
`
`witness holds an opinion that differs from the opinion of Dr. Kesan regarding
`
`whether a person of ordinary skill in the art would understand “configuring a
`
`parameter by RRC” to imply “adjusting” the parameter.
`
`Observation No. 5
`
`In Exhibit 2006, on page 54, lines 1-12, the witness testified that, as used by
`
`4
`
`
`
`IPR2016-01501
`Patent 8,457,676
`
`Kwak to describe the TPS period as a “predetermined fixed value,” he understands
`
`the term “predetermined” to mean “determined before the UE ever gets into the field
`
`or is ever provisioned on the network.” That testimony is relevant to Patent Owner’s
`
`argument that Kwak’s disclosure of a parameter “notified to the UE” does not
`
`disclose or render obvious that the parameter (TPS Period) is adjustable at pages 16-
`
`19 of Patent Owner’s Response (Paper 11). The testimony is relevant because
`
`Petitioner identifies the TPS Period as an adjustable threshold based on Kwak’s
`
`disclosure of the TPS Period as either a “predetermined fixed value” or “notified to
`
`the UE.”
`
`Observation No. 6
`
`In Exhibit 2006, on page 54, lines 16-19, the witness testified that, as used by
`
`Kwak to describe the TPS period as a “predetermined fixed value,” he understands
`
`the term “fixed” to mean “that the value cannot be changed.” That testimony is
`
`relevant to Patent Owner’s argument that the TPS Period of Kwak is not disclosed
`
`to be adjustable at pages 16-19 of Patent Owner’s Response (Paper 11). The
`
`testimony is relevant because Petitioner identifies the TPS Period as an adjustable
`
`threshold based on Kwak’s disclosure of the TPS Period as either a “predetermined
`
`fixed value” or “notified to the UE.”
`
`Observation No. 7
`
`In Exhibit 2006, on page 54, line 20 through page 55, line 2, the witness
`
`5
`
`
`
`IPR2016-01501
`Patent 8,457,676
`
`testified that, as used by Kwak to describe the TPS period as alternatively “notified
`
`to the UE,” he understands the term “notified” to mean “that the TPS period value
`
`can be configured, adjusted [in] the UE.” That testimony is relevant to Patent
`
`Owner’s argument that the TPS Period of Kwak is not disclosed to be adjustable at
`
`pages 16-19 of Patent Owner’s Response (Paper 11). The testimony is relevant
`
`because Kwak’s use of the term “notified” is the basis for Petitioner’s position that
`
`the TPS Period is adjustable.
`
`Observation No. 8
`
`In Exhibit 2006, on page 55, lines 3-19, the witness testified that, the
`
`definition he has applied to Kwak’s use of the phrase “notified to the UE” is not the
`
`plain meaning, but instead includes his expansion of the meaning to include
`
`“adjusting” because it involves the “use of precious over-the-air resources.” That
`
`testimony is relevant to Patent Owner’s argument that the TPS Period of Kwak is
`
`not disclosed to be adjustable at pages 16-19 of Patent Owner’s Response (Paper
`
`11). The testimony is relevant because Kwak’s use of the term “notified” is the basis
`
`for Petitioner’s position that the TPS Period is adjustable.
`
`Observation No. 9
`
`In Exhibit 2006, on page 60, line 15 through page 62, line 9, the witness
`
`testified that whether or not the TPS Period parameter is predetermined is immaterial
`
`to his opinion that Kwak’s contrast of a “predetermined fixed value” to a value
`
`6
`
`
`
`IPR2016-01501
`Patent 8,457,676
`
`“notified to the UE” supports his opinion that “notified” implies adjustability. That
`
`testimony is relevant to Patent Owner’s argument that the term “notified” indicates
`
`merely that the Node B provides the value of the TPS period to the UE, as opposed
`
`to the value being “predetermined” at pages 18 of Patent Owner’s Response (Paper
`
`11). The testimony is relevant to the meaning of Kwak’s use of “notified” because
`
`the witness has provided the opinion that the contrast that Kwak offers is between
`
`the value being “fixed” or “notified,” whereas Patent Owner holds the position that
`
`Kwak’s contrast is between the value being “predetermined” or “notified.”
`
`Observation No. 10
`
`In Exhibit 2006, on page 63, lines 4-13, the witness testified that in the context
`
`that Kwak uses the term “notified to the UE,” it is his opinion that the sending of
`
`any parameter over-the-air to the UE would make that parameter adjustable. That
`
`testimony is relevant to Patent Owner’s argument that the TPS Period of Kwak is
`
`not disclosed to be adjustable at pages 16-19 of Patent Owner’s Response (Paper
`
`11). The testimony is relevant because Kwak’s use of the term “notified” is the basis
`
`for Petitioner’s position that the TPS Period is adjustable.
`
`Observation No. 10
`
`In Exhibit 2006, on page 63, line 19 through page 64, line 2, the witness
`
`testified that Kwak does not disclose that the TPS Period has a value at the UE before
`
`it is notified of the value. That testimony is relevant to Patent Owner’s argument that
`
`7
`
`
`
`IPR2016-01501
`Patent 8,457,676
`
`the TPS Period of Kwak is not disclosed to be adjustable at pages 16-19 of Patent
`
`Owner’s Response (Paper 11). The testimony is relevant because Kwak’s use of the
`
`term “notified” is the basis for Petitioner’s position that the TPS Period is adjustable.
`
`Observation No. 11
`
`In Exhibit 2006, on page 66, line 22 through page 64, line 14, and on page 70,
`
`line 25 through page 71, line 6, the witness testified that it is his opinion that there
`
`is no difference between his use of the phrase “as opposed to that predetermined
`
`value” and Dr. Kesan’s quoted testimony of “as opposed to the value being
`
`predetermined.” That testimony is relevant to Petitioner’s argument that Dr. Kesan
`
`has admitted that “Kwak uses ‘notified’ to indicate that the Node B provides a value
`
`to the UE as opposed to that predetermined value,” at pages 7 of Petitioner’s Reply
`
`(Paper 13). The testimony is relevant because Petitioner relies on Dr. Williams’
`
`interpretation of Dr. Kesan’s testimony as support for this “apparent admission” of
`
`Dr. Kesan.
`
`Observation No. 12
`
`In Exhibit 2006, on page 72, line 16 through page 74, line 4, the witness
`
`testified that the opinion he has provided in this matter is not that Kwak explicitly
`
`discloses the limitations of claims 1 and 19 that recite “at least one threshold that is
`
`adjustable via a signal to the user equipment” and “adjusting the threshold integer
`
`k;” but rather, he has provided the opinion that these limitations are rendered obvious
`
`8
`
`
`
`IPR2016-01501
`Patent 8,457,676
`
`when combined with the knowledge of a person of ordinary skill in the art. That
`
`testimony is relevant to Patent Owner’s argument that the TPS Period of Kwak is
`
`not disclosed to be adjustable at pages 16-19 of Patent Owner’s Response (Paper
`
`11). The testimony is relevant because Dr. Williams had previously testified (at
`
`Exhibit 2004, page 58, lines 11-19 and page 61, line 5 through page 64, line 8) that
`
`it was his opinion that those limitations of claim 1 are explicitly disclosed by Kwak.
`
`Observation No. 13
`
`In Exhibit 2006, on page 83, line 12 through page 84, line 14, the witness
`
`testified that his opinion that Kwak discloses the TPS Period to be 4 TTIs is based
`
`solely on his interpretation of the how it is illustrated in Figures 9, 11, and 12, noting
`
`that Kwak doesn’t state the TPS Period to be 4 TTIs explicitly in the text. That
`
`testimony is relevant to Patent Owner’s argument that the Kwak does not disclose
`
`the TPS Period to be a “threshold of k transmission time intervals following a
`
`previous power control headroom report, wherein k is an integer” at page 19-25 of
`
`Patent Owner’s Response (Paper 11). The testimony is relevant because Petitioner
`
`argues that Kwak explicitly discloses the TPS Period to be set as 4 TTIs, and thereby
`
`meets the limitations of claims 1 and 19 stated above.
`
`Observation No. 14
`
`In Exhibit 2006, on page 92, line 21 through page 94, line 6, and page 95,
`
`lines 9-17, the witness testified that his opinion that Kwak discloses the TPS Period
`
`9
`
`
`
`IPR2016-01501
`Patent 8,457,676
`
`to be 4 TTIs is also based on inherency from “the facts of the case,” which is an
`
`opinion that he did not express in his declarations. That testimony is relevant to
`
`Patent Owner’s argument that the Kwak does not disclose the TPS Period to be a
`
`“threshold of k transmission time intervals following a previous power control
`
`headroom report, wherein k is an integer” at page 19-25 of Patent Owner’s Response
`
`(Paper 11). The testimony is relevant because Petitioner has not previously presented
`
`an argument that the TPS Period is inherently measured as a certain number of TTIs
`
`based on the “facts of the case.”
`
`Observation No. 15
`
`In Exhibit 2006, on page 96, lines 15-23, the witness testified that the TPS
`
`Period of Kwak could be defined in terms of milliseconds at the physical layer, but
`
`in his opinion, when used at the MAC layer, it could be translated into a number of
`
`TTIs. That testimony is relevant to Patent Owner’s argument that the TPS Period of
`
`Kwak is more likely to be understood by a person of ordinary skill in the art as a
`
`measure of time in seconds or milliseconds at page 24 of Patent Owner’s Response
`
`(Paper 11). That testimony is also relevant to Petitioner’s argument that a person of
`
`ordinary skill in the art could only reach the conclusion that the TPS periods of Kwak
`
`are measured in TTIs. The testimony is relevant because the parties disagree as to
`
`how a person of ordinary skill in the art would understand the TPS Period to be
`
`defined.
`
`10
`
`
`
`IPR2016-01501
`Patent 8,457,676
`
`Observation No. 16
`
`In Exhibit 2006, on page 97, line 22 through page 99, line 4, the witness
`
`testified that Kwak only provides a specific example of the TPS Period being 4 TTIs
`
`in the figures, but does not disclose any other exemplary values of TPS Period, nor
`
`does Kwak ever discuss changing the value of TPS Period to a value other than 4
`
`TTIs. That testimony is relevant to Patent Owner’s argument that the TPS Period of
`
`Kwak is more likely to be understood by a person of ordinary skill in the art as a
`
`measure of time in seconds or milliseconds at page 24 of Patent Owner’s Response
`
`(Paper 11). That testimony is relevant to Patent Owner’s argument that the TPS
`
`Period of Kwak is not disclosed to be adjustable at pages 16-19 of Patent Owner’s
`
`Response (Paper 11). That testimony is also relevant to Patent Owner’s argument
`
`that Kwak does not disclose the limitation “adjusting the threshold integer k” at
`
`pages 25-26 of Patent Owner’s Response (Paper 11). The testimony is relevant
`
`because Petitioner relies on Dr. Williams’ testimony to argue that Kwak discloses
`
`the TPS Period to be adjustable and that Kwak discloses “adjusting the threshold
`
`integer k,” as recited in claims 1 and 19.
`
`
`
`
`
`
`
`
`
`11
`
`
`
`IPR2016-01501
`Patent 8,457,676
`
`Dated: October 4, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Terry A. Saad (Reg. No. 62,492)
`Attorney for Patent Owner
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that document was served via electronic mail
`
`on October 4, 2017, to Petitioners via counsel, steve.moore@pillsburylaw.com,
`
`brian.nash@pillsburylaw.com,
`
`rene.mai@pillsburylaw.com,
`
`and
`
`docket_ip@pillsburylaw.com pursuant to Petitioners’ consent in its Petition at
`
`page 3.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Terry A. Saad (Reg. No. 62,492)
`Attorney for Patent Owner
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`
`12
`
`