`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 20
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`
`Petitioners,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`
`Patent Owner.
`
`____________
`
`Case IPR2016-01501
`
`Patent 8,457,676
`
`____________
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION ON CROSS EXAMINATION
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`In accordance with: (i) the Scheduling Order (Paper No. 8) dated February 13,
`
`2017, Petitioners HTC Corporation and HTC America, Inc. (“Petitioner”) hereby
`
`submit the instant Response to Patent Owner’s Motion for Observations on Cross
`
`Examination, filed by Patent Owner on October 4, 2017 (Paper No. 16).
`
`II. RESPONSE TO PATENT OWNER OBSERVATIONS 1-16
`
`A. Response to Observation 1
`
`Patent Owner suggests that Dr. Williams’s testimony that the inventors made
`
`reference to an “eNode-B” somehow supports its argument that the problem the
`
`inventors sought to solve is limited to LTE systems. Patent Owner’s observation is
`
`irrelevant. As Dr. Williams explained, the problem to be solved was not limited to
`
`LTE systems, and the inventors expressly stated that their purported solution was
`
`not limited to an LTE environment but rather is applicable to other current and future
`
`wireless telecommunication systems and access technologies, including WCDMA.
`
`E.g., Ex. 2006, 22:19-24:8; see also id. 25:16-26:25, 29:4-30:18; Ex. 1008 ¶¶ 14-16.
`
`B. Response to Observation 2
`
`Patent Owner suggests that Dr. Williams’s testimony about the efforts to
`
`develop the LTE standard somehow supports its argument that the problem the
`
`inventors sought to solve is limited to LTE systems. Patent Owner’s observation is
`
`irrelevant. As Dr. Williams explained, the problem to be solved was not limited to
`
`LTE systems, and the inventors expressly stated that their purported solution was
`
`1
`
`
`
`
`
`not limited to an LTE environment but rather is applicable to other current and future
`
`wireless telecommunication systems and access technologies, including WCDMA.
`
`E.g., Ex. 2006, 25:16-26:25; see also id. 22:19-24:8, 29:4-30:18; Ex. 1008 ¶¶ 14-16.
`
`C. Response to Observation 3
`
`Patent Owner suggests that Dr. Williams’s testimony about the technology
`
`from which WCDMA and LTE systems are derived somehow supports its argument
`
`that there are meaningful differences between the ’676 patent and the Kwak
`
`reference. Patent Owner’s observation is irrelevant. As Dr. Williams explained, the
`
`differences between LTE and WCDMA are primarily related to the PHY layer, not
`
`the MAC layer, and the differences between those systems are not relevant to the
`
`claimed invention of the ’676 patent. E.g., Ex. 2006, 30:6-18, 33:6-34:18, 37:11-
`
`38:22; see also id. 22:19-24:8, 25:16-26:25, 29:4-30:18; Ex. 1008 ¶¶ 14-16.
`
`D. Response to Observation 4
`
`Patent Owner suggests that Dr. Williams’s testimony about the differences in
`
`power control implementation between WCDMA and LTE systems are somehow
`
`supports its argument that there are meaningful differences between the ’676 patent
`
`and the Kwak reference. Patent Owner’s observation is irrelevant. As Dr. Williams
`
`explained, the differences between LTE and WCDMA are primarily related to the
`
`PHY layer, not the MAC layer, and the differences between those systems are not
`
`relevant to the claimed invention of the ’676 patent. E.g., Ex. 2006, 30:6-18, 33:6-
`
`2
`
`
`
`
`
`34:18, 37:11-38:22; see also id. 22:19-24:8, 25:16-26:25, 29:4-30:18; Ex. 1008 ¶¶
`
`14-16.
`
`E. Response to Observation 5
`
`Patent Owner points to Dr. Williams’s testimony that Kwak teaches adjusting
`
`the TPS period by way of RRC signaling in an attempt to inject testimony by its own
`
`expert witness that purportedly disagrees with that conclusion. Patent Owner’s
`
`observation is irrelevant. As Dr. Williams testified, one of skill in the art understands
`
`reference to values being “notified” or “configured” by way of RRC signaling to
`
`involve adjusting those values, which Dr. Williams noted was supported by Dr.
`
`Kesan’s testimony on cross examination. Ex. 2006, 41:16-42:22, 44:17-45:11,
`
`48:19-49:21; Ex. 1008 ¶¶ 21-23; Ex. 1009, 47:10-16, 50:5-23, 129:24-130:13,
`
`130:22-131:3.
`
`F.
`
`Response to Observation 6
`
`Patent Owner points to Dr. Williams’s testimony about Kwak’s reference to
`
`optionally using a “predetermined fixed value” as somehow relevant to Patent
`
`Owner’s position that Kwak does not disclose an adjustable TPS period. Patent
`
`Owner’s observation is not relevant. As Dr. Williams testified, Kwak’s disclosure
`
`and contrasting of two options—a “fixed” value and a value that is “notified” to the
`
`UE by upper layer signaling such as RRC—would be understood by one of skill in
`
`3
`
`
`
`
`
`the art as a disclosure that the value can be modified, i.e., it is adjustable. E.g,. Ex.
`
`2006, 53:8-25, 54:20-57:11, 58:24-60:10; Ex. 1008 ¶¶ 20-23.
`
`G. Response to Observation 7
`
`Patent Owner points to Dr. Williams’s testimony about Kwak’s reference to
`
`optionally using a value that is “notified to the UE” as somehow relevant to Patent
`
`Owner’s position that Kwak does not disclose an adjustable TPS period. Patent
`
`Owner’s observation is not relevant. As Dr. Williams testified, Kwak’s disclosure
`
`and contrasting of two options—a “fixed” value and a value that is “notified” to the
`
`UE by upper layer signaling such as RRC—would be understood by one of skill in
`
`the art as a disclosure that the value can be modified, i.e., it is adjustable. E.g,. Ex.
`
`2006, 53:8-25, 54:20-57:11, 58:24-60:10; Ex. 1008 ¶¶ 20-23.
`
`H. Response to Observation 8
`
`Patent Owner points to Dr. Williams’s testimony about how one of ordinary
`
`skill in the art would understand of Kwak’s use of the word “notified” in context and
`
`improperly characterizes that testimony as somehow not reflecting the word’s plain
`
`meaning. Patent Owner’s observation is not relevant. As Dr. Williams testified, he
`
`is reading Kwak’s disclosure in the context of how one of ordinary skill in the art
`
`would read it, and in that context, it would be understood by one of skill in the art as
`
`a disclosure that the value can be modified, i.e., it is adjustable. E.g,. Ex. 2006, 53:8-
`
`25, 54:20-57:11, 58:24-60:10; Ex. 1008 ¶¶ 20-23.
`
`4
`
`
`
`
`
`I.
`
`Response to Observation 9
`
`Patent Owner points to Dr. Williams’s testimony about Kwak’s use of the
`
`word “predetermined” is not relevant to his conclusion that Kwak discloses
`
`adjustability and contends it is somehow relevant to Patent Owner’s position. Patent
`
`Owner’s observation is not relevant. As Dr. Williams testified, whether the value is
`
`predetermined or not is immaterial to his opinion on adjustability because if the
`
`value is “notified” in the manner that Kwak describes, i.e., over the air via RRC
`
`signaling, one of skill in the art would understand that to indicate that the value can
`
`be modified. E.g,. Ex. 2006, 61:11-63:18. 53:8-25, 54:20-57:11, 58:24-60:10; Ex.
`
`1008 ¶¶ 20-23.
`
`J.
`
`Response to Observation 10
`
`Patent Owner points to Dr. Williams’s testimony that sending parameters over
`
`the air to the UE discloses to one of skill in the art that value is adjustable and
`
`contends it is somehow relevant to Patent Owner’s position. Patent Owner’s
`
`observation is not relevant. As Dr. Williams testified, if the value is “notified” in the
`
`manner that Kwak describes, i.e., over the air via RRC signaling, one of skill in the
`
`art would understand that to indicate that the value can be modified. E.g,. Ex. 2006,
`
`61:11-63:18. 53:8-25, 54:20-57:11, 58:24-60:10; Ex. 1008 ¶¶ 20-23.
`
`5
`
`
`
`
`
`K. Response to Observation 101
`
`Patent Owner points to Dr. Williams’s testimony regarding the value at the
`
`UE before it is notified to UE as somehow relevant to Patent Owner’s position.
`
`Patent Owner’s observation is not relevant. As Dr. Williams testified, because the
`
`UE must have a memory location to store the “notified” value, and because that
`
`memory location has some value before the notification arrives, the notification of a
`
`value involves a modification or adjustment. Similarly, Dr. Kesan admits that there
`
`is some predetermined value that corresponds to what the TPS period has been
`
`before it is notified to the UE. E.g,. Ex. 2006, 63:14-64:2, 64:15-20; Ex. 1008 ¶ 23;
`
`Ex. 1009, 130:22-131:3.
`
`L. Response to Observation 11
`
`Patent Owner suggests that Dr. Williams’s testimony about purported
`
`differences (or lack thereof) with the wording of one of Dr. Kesan’s statements is
`
`somehow relevant to Patent Owner’s position. Patent Owner’s observation is not
`
`relevant. As Dr. Williams testified, because the UE must have a memory location to
`
`store the “notified” value, and because that memory location has some value before
`
`
`1 Patent Owner’s Observations include two different “Observation 10” entries, an
`
`apparent typographical error. To avoid confusion, Petitioner uses Patent Owner’s
`
`same numbering in the same order here.
`
`6
`
`
`
`
`
`the notification arrives, the notification of a value involves a modification or
`
`adjustment. Similarly, Dr. Kesan admits that there is some predetermined value that
`
`corresponds to what the TPS period has been before it is notified to the UE, and
`
`testifies that a value is notified “as opposed to the value being ‘predetremined.’”
`
`E.g,. Ex. 2006, 63:14-64:2, 64:15-20, 70:25-71:6; Ex. 1008 ¶ 23; Ex. 1009, 130:22-
`
`131:3; Ex. 2005 ¶ 23.
`
`M. Response to Observation 12
`
`Patent Owner suggests that Dr. Williams’ testimony that he reads Kwak’s
`
`disclosure as it would be read by one of ordinary skill in the art is somehow relevant
`
`to Patent Owner’s position or in conflict with Dr. Williams’s prior testimony. Patent
`
`Owner’s observation is not relevant. As Dr. Williams testified, the appropriate way
`
`to read a disclosure is to do so “in the eyes of one of ordinary skill in the art,” and
`
`from that perspective, Kwak explicitly discloses to one of ordinary skill in the art
`
`that the TPS period is adjustable. E.g., Ex. 2006, 72:16-74:4; Ex. 1008 ¶¶ 20-23.
`
`N. Response to Observation 13
`
`Patent Owner contends that Dr. Williams’s testimony that Kwak’s TPS period
`
`is 4 TTIs is based “solely” on his interpretation of Figures 9, 11, and 12. Patent
`
`Owner is incorrect. As Dr. Williams testified, his opinion is based not only on
`
`Figures 9, 11, and 12, but also on the context of the discussion provided in Kwak’s
`
`specification and the understanding of one skilled in the art that, with respect to the
`
`7
`
`
`
`
`
`MAC layer, the appropriate parameter would be TTIs rather than absolute time. E.g.,
`
`Ex. 2006, 83:24-84:9, 91:16-92:20, 93:6-16; Ex. 1008 ¶¶ 36-37.
`
`O. Response to Observation 14
`
`Patent Owner contends that Dr. Williams’s testified that his opinion that
`
`Kwak discloses 4 TTIs is based on “inherency” from “the facts of the case,” which
`
`Patent Owner contends was not a disclosed opinion. Patent Owner is incorrect. As
`
`Dr. Williams explained, his opinion that the appropriate parameter in the context of
`
`Kwak is TTIs rather than absolute time is “inherent from the facts of the case,” was
`
`intended to refer to the complete record, i.e,. his declarations, his testimony, the
`
`testimony of Dr. Kesan, and the underlying ’676 patent and the Kwak reference,
`
`which reflect the support for that opinion. E.g., Ex. 2006, 93:6-:24-94:3.
`
`P.
`
`Response to Observation 15
`
`Patent Owner suggests that Dr. Williams’ testimony about how time is
`
`reflected at different layers is somehow relevant to Patent Owner’s position. Patent
`
`Owner’s observation is not relevant. As Dr. Williams testified, both the ’676 patent
`
`and Kwak are concerned with the MAC layer, and thus reflect the use of TTIs as
`
`measurements of time. . E.g., Ex. 2006, 95:19-97:17, 29:14-21, 78:11-22, 79:17-
`
`80:10, 81:4-82:1, 88:8-21, 91:16-92:20.
`
`8
`
`
`
`
`
`Q. Response to Observation 16
`
`Patent Owner contends that Dr. Williams’s testimony that Kwak discloses
`
`using 4 TTIs in the figures and does not disclose embodiments with other number of
`
`TTIs is somehow relevant to Patent Owner’s position. Patent Owner’s observation
`
`is not relevant. As Dr. Williams testified, Kwak discloses embodiments with 4 TTIs
`
`as examples, but does not restrict its disclosure to that example. Moreover, as Dr.
`
`Williams also testified, Kwak discloses that the TPS period is modified or adjusted.
`
`E.g., Ex. 2006, 98:1-5, 98:9-17, 98:22-24; see also e.g,. id., 53:8-25, 54:20-57:11,
`
`58:24-60:10; Ex. 1008 ¶¶ 20-23, 37-41, 45.
`
`
`
`
`
`9
`
`
`
`
`
`Date: October 18, 2017
`
`
`
`Respectfully submitted,
`
` /Steve A. Moore/
` Steven A. Moore (Reg. No. 55,462)
`Pillsbury Winthrop Shaw Pittman LLP
`501 W. Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: 619.544.3112
`Facsimile: 619.236.1995
`Email: steve.moore@pillsburylaw.com
`
`
`Brian C. Nash , Reg. No. 58,105
`Pillsbury Winthrop Shaw Pittman LLP
`401 Congress Ave, Suite 1700
`Austin, Texas 78701-3343
`Tel: (512) 580-9629
`brian.nash@pillsburylaw.com
`
`
`Counsel for Petitioners
`
`10
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on October 18, 2017, I caused a true and correct copy of
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`
`OBSERVATION OF CROSS-EXAMINATION to be sent via email to the
`
`following:
`
`Terry A. Saad
`Jeffrey R. Bragalone
`Daniel F. Olejko
`Nicholas C. Kliewer
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Email: tsaad@bcpc-law.com
`jbragalone@bcpc-law.com
`nkliewer@bcpc-law.com
`dolejko@bcpc-law.com
`BCPCserv@bcpc-law.com
`
`Date: October 18, 2017
`
`
`
`
`
`
`
`Edward R. Nelson, III
`NELSON BUMGARDNER, P.C.
`3131 West 7th St., Suite 300
`Fort Worth, TX 76107
`ed@nelbum.com
`
`
` /Steve A. Moore/
` Steven A. Moore (Reg. No. 55,462)
`Pillsbury Winthrop Shaw Pittman LLP
`501 W. Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: 619.544.3112
`Facsimile: 619.236.1995
`Email: steve.moore@pillsburylaw.com
`
`Counsel for Petitioners
`
`
`
`
`
`
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