Thereby certify that this paper (along with any paper referred to as
`being attached or enclosed) is being transmitted today via the
`Office electronic filing system (EFS-Web) in accordance with 37
`CFR § 1.6 (a)(4).
`
`Date: November l J, 20 l 0
`
`Signalme: /Lance A. Smith/
`Printed Name: Lance A. Smith
`
`IN THE UNITED ST ATES PATENT AND TRADEMARK OFFICE
`
`REQUEST FOR REEXAMINATION UNDER
`35 U.S.C. §§ 311 ET SEQ., AND
`37 C.F.R. §§ 1.913 AND 1.915
`
`In re Application of:
`
`Inventors: Baliarda et al.
`
`Patent No.: 7,397,431
`
`Filed: July 12, 2005
`
`For: MULTILEVEL ANTENNAE
`
`Mail Stop Inter Partes Reexamination
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REQUEST FOR INTER PARTES REEXAMINATION OF U.S. PATENT 7,397,431
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0001
`
`

`

`TABLE OF CONTENTS
`REQUEST FOR INTER PARTESREEXAM1NATION OF U.S. PATENT 7,397,431. ............ 2
`
`T.ABLE OF EXHIB.ITS ......................................................................................................................... 5
`
`TABLE OF EXHIBITS ......................................................................................................................... 5
`
`A.
`B.
`
`PRJORART(PA) ....................................................................................................... 5
`RELEVANT PATENTMATERJALS (PAT) .................................................................... 5
`
`C .
`
`CLAIM CI·IARTS (CC) ................................................................................................ 5
`OTHER D OCUMENTS (OTH) ...................................................................................... 6
`D.
`REQUEST FOR INTER PARTESREEXAMINATlON OF U.S. PATENT 7,397,431 ............. 7
`
`1.
`
`II.
`
`STATEMENT UNDER 37 C.F.R. § 1.915(B)(3) OF EACH SUBSTANTIAL NEW
`QUESTION OF PATENTABILITY ...................................................................................... 7
`
`REQUIREMENTS FOR INTER PARTESREEXAMINATION UNDER37 C.F.R. §
`1.915 ............................................................................................................................................. 8
`
`ID. OVERVIEW OF THE '431 PATENT AND PROSECUTION IDSTORY ...................... 9
`
`IV.
`
`V.
`
`A .
`
`INTRODUCTION ............ ................................ ................................ ............................. 9
`
`l.
`
`2.
`
`T HE '431 P ATENT APPLICATION P ROSECUTION HISTORY ............................. 10
`
`0 VERV1EWOFTHECLATMS .......................................................................... 13
`
`B.
`
`RELATED CO-PENDING LITIGATION REQUIRES TREATMENT WITH SPECIAL
`D ISPATCH AND PRIORITY OVER ALL OTHER CASES .............................................. .14
`
`C.
`D.
`
`CLA IM CONSTRUCTION ........................................................................................... 14
`P ATENT O WNER'S INFRINGEMENT C ONTENTIONS .................................................. 16
`PATENT OWNER HAS NOT CLEARLY AND UNMJSTAKABLY DJSCLAJMED
`"FRACTAL" ANTENNAS .................................................................................................... 17
`
`SUBSTANTIAL NEW QUESTIONS OF PATENTABJLITY UNDER
`37
`CFR § 1.915 (B) ........................................................................................................................ 20
`
`A.
`
`B.
`
`C.
`
`PUENTE B ALlARDA D ISSERTATION IN VIEW OF PUENTE BALlARDA IEEE,
`RAISES AN SNQ WITH RESPECT TO CLAIMS 1, 4-5, 7-8, 12-14, 17, 21-22, 27,
`AND 29-30 OF THE '43 1 PATENT .............................................................................. 20
`
`P UENTE BALIARDA DISSERTATION IN VIEW OF P UENTE BALIARDA IEEE
`AND FURTHER IN VIBW OF COHEN, RAISE AN SNQ WITH RESPECT TO
`CLAIMS 4-5, 12-14, 17, 21, 24-27, AND 30-31 OF THE '431 PATENT ........................ 23
`
`MISRA RAISES AN SNQ WJTH RESPECT TO CLAIMS l, 12-14, 17, 21, 24 AND
`29 OF THE '431 PATENT .......................................................................................... 25
`
`2
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0002
`
`

`

`D .
`
`E.
`
`F.
`
`G.
`
`H.
`
`J.
`
`J.
`
`K.
`
`L.
`
`MISRA IN VIEW OF COHEN RAISES AN SNQ WITH RESPECT TO CLAIMS 4-5,
`12-14, 17, 21, 24-27, AND 29-31 OF THE '431 PATENT ............................................ 27
`
`MISRA IN VIEW OF COHEN-PCT RAISES AN SNQ WITH RESPECT TO CLATMS
`4-5, 12-14, 17, 21, 24-25, 27, AND 29 OF THE '431 PATENT .................................... .30
`
`MISRA CHOWDHURY RAISES AN SNQ WITH RESPECT TO CLAIMS 1, 12-14,
`2 1, 24, 27, AND 29 OF THE '431 PATENT .. ................................ ............................... 33
`
`MISRA CHOWDHURY IN VIEW OF COHEN RAISES AN SNQ WITH RESPECT TO
`CLAIMS4-5, 12-14, 17,21,24-27,AND29-31 OFTHE'431 PATENT ........................ 36
`
`MISRA CHOWDHURY IN VIEW OF COHEN-PCT RAISES AN SNQ WITH
`R ESPECT TO CLAIMS 4-5, 12-14, 17, 21, 24-25, 27, AND 29 OF THE '431
`PATENT ................................................................................................................... 40
`
`SERJZA WA RAISES AN SNQ WITH RESPECT TO CLAIMS 1, 21-22, AND 29 OF
`THE '431 P ATENT .................................................................................................... 44
`
`SERJZA WA IN VIEW OF COHEN RAISES AN SNQ WITH RESPECT TO CLAIMS
`4-5, 12-1 4 , 17, 21, 24-25, AND 29-31 OF THE '431 PATENT .................................... .46
`
`SERJZA WA IN VIEW OF COHEN-PCT RAISES AN SNQ WITH RESPECT TO
`CLAIMS 4-5, 12-14, 17, 2 1, 24-25, AND 29 OF THE '431 PATENT .. .......................... .48
`
`CHIBA RAISES AN SNQ WITH RESPECT TO CLAIMS 1, 4, 12-14, 17, 21, AND
`29 OF THE '431 PATENT ........................................................................................... 52
`
`VJ. MANNER OF APPLYING THE CLAIMS AS REQUIRED BY 37 CFR § 1.915 (B).53
`
`A.
`
`B.
`
`C.
`
`D .
`
`E.
`
`F.
`
`G.
`
`H.
`
`CLAIMS 1, 4-5, 7-8, 12-14, 17, 21-22, 27, AND 29-30 ARE RENDERED
`O BVIOUS BY P UENTE BALIARDA DISSERTATION, IN VIEW OF P UENTE
`BALIARDA IEEE, UNDER 35 U.S.C. § 103 .............................................................. 54
`
`CLAIMS 4-5 , 12-14, 17, 2 1, 24-27, AND 30-31 ARE RENDERED OBVIOUS BY
`P UENTE BALJARDA DISSERTATION AND PUENTE BALJARDA ]EEE IN VIEW
`OF COHEN, UNDER 35 U.S.C. § 103 ........................................................................ 72
`CLATMS 1, 12-14, 17, 21, 24, AND 29 ARE ANTICIPATED BY MISRA UNDER
`35 U .S .C. § 102 ...................................................................................................... 86
`
`CLAfMS 4-5, 12-14, 17, 2 1, 24-27, AND 29-31 ARE RENDERED 0BV10US BY
`MlSRAINVIEW OF COHENUNDER.35 U.S .C. § 103 ................................................ 93
`
`CLAIMS 4-5, 12-14, 17, 21, 24-25, 27, AND 29 ARE RENDERED O BVIOUS BY
`MISRA IN VIEW OF COHEN-PCT UNDER 35 U.S.C. § 103 .................................... .104
`
`CLAIMS l, 12-14, 21, 24, 27, AND 29 ARE ANTICIPATED BY MISRA
`CHOWDHURY UNDER35 U.S .C. § 102 ................................................................. .l 14
`
`CLATMS 4-5, 12-14, 17, 21, 24-27, AND 29-31 ARE RENDERED 0BV10US BY
`MISRA CHOWDHURY IN VIEW OF COHEN UNDER 35 U.S.C. § 103 ...................... .1 23
`
`CLAfMS 4-5, 12- 14, 17, 21, 24-25, 27, AND 29 ARE RENDERED 0 BV10US BY
`MISRA CHOWDHURY IN VIEW OF COHEN-PCT UNDER 35 U.S.C. § 103 ............... 133
`
`3
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0003
`
`

`

`I.
`
`J.
`
`K.
`
`CLAIM 1, 21-22, AND 29 ARE ANTICIPATED BY SERJZAWA UNDER 35 U.S.C.
`§ 102 ..................................................................................................................... ] 42
`
`CLAIMS 4-5, 12-14, 17, 21, 24-25, AND 29-31 ARE RENDERED OBVIOUS BY
`SERJZAWA TN VIEW OF COHEN UNDER 35 U.S.C. § ] 03 ....................................... .1 49
`
`CLAfMS 4-5, 12-14, 17, 2 1, 24-25, AND 29 ARE RENDERED OBVIOUS BY
`SERJZAWA IN VIEW OF COHEN-PCT UNDER35 U.S.C. § 103 .............................. .157
`
`L.
`
`CLAIMS l, 4, 12-14, 17, 21, AND 29 ARE ANTICIPATED BY CHIBA UNDER 35
`U.S.C. § 102 ......................................................................................................... 164
`CONCLUSION ................................................................................................................................... 171
`
`4
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0004
`
`

`

`TABLE OF EXHIBITS
`
`LIST OF EXHIBITS
`The exhibits to the present Request are a1Tanged in four groups: prior art ("PA"), relevant patent
`prosecution file history, patents, and claim dependency relationships ("PAT"), claim cha1is
`("CC"), and other ("OTH").
`A. PRIOR ART (PA)
`P A-SB08A/B USPTO Form SB/08AIB
`
`PA-A
`
`PA-B
`
`PA-C
`
`PA-D
`
`PA-E
`
`PA-F
`
`PA-G
`
`Puente, C. "Fractal antennas," Ph.D. dissertation, Dept. Signal Theory and
`Communications, Universitat Politecnica de Catalunya, May 1997 ("Puente
`Baliarda Dissertation")
`Puente-Baliarda, "On the Behavior of the Sierpinski Multiband Fractal
`Antenna," IEEE Transactions on Antennas and Propagation, Vol. 46, No. 4
`April 1998 ("Puente Baliarda IEEE")
`
`U.S. Patent No. 6,140,975 to Cohen issued on October 31, 2000 ("Cohen")
`
`Misra, lta et al., "Experimental Investigations on the Impedance and
`Radiation Properties of a Three-Element Concentric Microstrip Antenna,"
`Microwave and Optical Technology Letters, Vol. 11, No. 2, February 5,
`1996 ("Misra")
`
`PCT Application No. WO 99/27608 to Cohen, published June 3, 1999,
`("Cohen-PCT")
`
`Misra and Chowdhury, "Study of Impedance and Radiation Properties of a
`Concentric Microstrip Triangular-Ring Antenna and
`lts Modeling
`Techniques Using FDTD Method," IEEE Transactions on Antennas and
`Propagation, Vol. 46, No. 4, April 1998 ("Misra Chowdhury")
`
`Multiband dipole antenna device, English translation of Japanese Patent
`JPl 1-27042 to Serizawa et al. published January 29, 1999 ("Serizawa")
`
`PA-H
`
`U.S. Patent No. 6,195,048 to Chiba issued February 27, 2001 ("Chiba")
`
`B. RELEVANT PATENT MATERIALS (PAT)
`PAT-A
`U.S. Patent No. 7,397,431 ("the '431 patent")
`
`C. CLAIM CHARTS (CC)
`
`CC-A
`
`Claim Chart Comparing claims 1, 4-5, 7-8, 12-14, 17, 21-22, 27, and 29-30
`of the '431 Patent with Puente Baliarda Dissertation and Puente Baliarda
`IEEE under U.S.C. § 103
`
`5
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0005
`
`

`

`CC-B
`
`CC-C
`
`CC-D
`
`CC-E
`
`CC-F
`
`CC-G
`
`CC-H
`
`CC-I
`
`CC-1
`
`CC-K
`
`CC-L
`
`Claim Chart Comparing claims 4-5, 12-14, 17, 21, 24-27, and 30-31 of the
`'431 Patent to Puente Baliarda Dissertation and Puente Baliarda IEEE in
`view of Cohen under U.S.C. § 103
`
`Claim Chart Comparing claims J, 12-14, 17, 21, 24, and 29 of the '431
`Patent to Misra under 35 U.S.C. § 102
`
`Claim Chart Comparing claims 4-5, 12-14, 17, 21, 24-27, and 29-31 of the
`'431 Patent to Misra in view of Cohen under 35 U.S.C. § 103
`
`Claim Chart Comparing claims 4-5, 12-14, 17, 21, 24-25, 27, and 29 of the
`'431 Patent to Misra in view of Cohen-PCT under 35 U.S.C. § 103
`
`Claim Chart Comparing claims 1, 12-14, 21, 24, 27, and 29 of the '431
`Patent to Misra Chowdhury under 35 U.S.C. § 102
`Claim Chart Comparing claims 4-5, 12-14, 1.7, 21, 24-27, and 29-31 of the
`'431 Patent to Misra Chowdhury in view of Cohen under 35 U.S.C. § 103
`
`Claim Chart Comparing claims 4-5, 12-14, 17, 21, 24-25, 27, and 29 of the
`'431 Patent to Misra Chowdhury in view of Cohen-PCT under 35 U.S.C. §
`103
`
`Claim Chart Comparing claims 1, 21-22, and 29 of the '431 Patent to
`Se1izawa under 35 U.S.C. § 102
`Claim Chart Compa1ing claims 4-5, 12-14, 17, 21, 24-25, and 29-31 of the
`'431 Patent to Serizawa in view of Cohen under 35 U.S.C. § 103
`
`Claim Chart Comparing claims 4-5, 12-14, 17, 21, 24-25, and 29 of the '431
`Patent to Serizawa in view of Cohen-PCT under 35 U.S.C. § 103
`Claim Chart Comparing claims 1, 4, 12-14, 17, 21, and 29 of the '431 Patent
`to Chiba under 35 U.S.C. § 102
`
`D. OTHER DOCUMENTS (0TH)
`
`OTH-A
`
`OTH-B
`
`Second Amended Complaint filed December 8, 2009 in the case of Fractus
`S.A. v. Samsung Electronics Co. Ltd. et al., Case No. 6:09cv203 (E.D. Tex.)
`
`Preliminary Infringement Contentions to the Asserted Claims of the ' 431 Patent
`from Fractus S.A. v. Samsung Electronics Co. Ltd. et al., Case No. 6:09cv203
`(E.D.Tex.)1
`
`OTH-C
`
`European Pat. App. No. 00909089.5, Reply to Commc'n (Aug. 14 2003)
`
`OTH-D
`
`Preliminary Claim Construction Order issued November 9, 2010 in Fractus
`S.A. v. Samsung Electron;cs Co. Ltd. et al., Case No. 6:09cv203 (E.D.Tex.)
`
`1 Only a subset of the Preliminary Infringement Contentions is provided to avoid overloading the Patent Office with
`ma1eria1 in this Request for Reexamination.
`
`6
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0006
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`REQUEST FOR REEXAMINATION UNDER
`35 U.S.C. §§ 311 ET SEQ., AND
`37 C.F.R. §§ 1.913, 1.915
`
`In re Application of:
`
`Inventors: Carles Puente Baliarda
`
`Patent No.: 7,397,431
`
`Filed: July 12, 2005
`
`For: MULTILEVEL ANTENNAE
`
`Mail Stop Inter Partes Reexamination
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REQUEST FOR INTER PARTES REEXAMINATION OF U.S. PATENT 7,397,431
`
`Dear Sir:
`
`Pursuant to 37 C.F.R. § l.915(b)(8), the Real Party in Interest, Samsung Electronics Co.
`
`Ltd., (hereinafter "Requester") hereby respectfully requests reexamination pursuant to 35 U.S.C. §§
`
`311 et seq. and 37 C.F.R. § 1.902 et seq., of Original Claims 1, 4, 5, 7, 8, 12-14, 17, 21, 22, 24-27,
`29-31 ofU.S. Patent No. 7,397,431 ("the '431 patent") filed July 12, 2005 and issued July 8, 2008
`
`to Carles Puente Baliarda. See Exhibit PAT-A.
`
`I.
`
`STATEMENT UNDER 37 C.F.R. § 1.915(.8)(3) OF EACH SUBSTANTIAL NEW
`QUESTION OF PATENT ABILITY
`
`This Request is based on the cited prior art documents set fo1th herein and on the
`accompanying Form PTO-SB/08NB. See Exhibit PA-SB/08NB. All of the cited prior a1t
`
`patents and publications constitute effective prior a1t as to the claims of the '431 patent under
`
`35 U.S.C. § 102 and 35 U.S.C. § 103.
`Pursuant to 37 C.F.R. § 1.915(b)(8), Requester hereby respectfully requests reexamination
`pursuant to 35 U.S.C. §§ 311 et seq. and 37 C.F.R. § 1.902 et. seq., of Original Claims 1, 4, 5, 7, 8,
`
`12-14, 17, 21, 22, 24-27, 29-31 of the '431 patent. Reexamination is requested in view of the
`
`7
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0007
`
`

`

`substantial new questions of patentability ("SNQs") set forth in detail below and in the
`
`accompanying cl.aim charts. Requester reserves all rights and defenses available including, without
`
`limitation, defenses as to invalidity and unenforceability. By simply filing this Request in
`
`compliance with applicable statutes, rules, and regulations, Requester does not represent, agree or
`
`concur that the '432 patent is enforceable.2 By asserting the SNQs herein, Requester specifically
`
`asserts that Original Claims 1, 4, 5, 7, 8, 12-14, 17, 21, 22, 24-27, 29-31 of the '431 patent are in
`
`fact not patentable.
`
`Accordingly, the U.S. Patent and Trademark Office ("the Office") should reexamine and
`
`find Claims 1, 4, 5, 7, 8, 12-14, 17, 21, 22, 24-27, 29-31 of the '431 patent unpatentable and cancel
`
`these claims, rendering them null, void, and otherwise unenforceable.
`
`D.
`
`REQUIREMENTS FOR INTER PARTESREEXAMINATION UNDER 37 C.F.R.
`§ 1.915
`
`Requester satisfies each requirement for Inter Partes reexamination of the '431 patent
`
`pursuant to 37 C.F.R. § 1.915. A full copy of the '431 patent is submitted herein as Exhibit PAT(cid:173)
`
`A in accordance with 37 C.F.R. § 1.915(b)(5).
`
`Pursuant to 37 C.F.R. § l.9 l 5(b )(7), Requester certifies that the estoppel provisions of 37
`
`C.F.R. § 1.907 do not prohibit the filing of this Inter Partes reexamination.
`
`Pursuant to 37 C.F.R. §1.915(b)(4), a copy of every patent or printed publication relied
`
`upon to present an SNQ is submitted herein at Exhibits PA-A through PA-H, citation of which
`
`may be found on the accompanying Form PTO-SB/08A as Exhibit PTO-SB/08A in accordance
`
`with 37 C.F.R. § l.915(b)(2). Each of the cited prior art publications constitute effective prior art
`
`as to the claims of the '623 patent under 35 U.S.C. § 102 and 35 U.S.C. § 103. Furthermore, each
`
`piece of prior art submitted was either not considered by the Office during the prosecution of the
`
`'431 patent or is being presented in a new light under MPEP § 2642, as set forth in the detailed
`
`explanation below and in the attached claim charts.
`
`A statement pointing out each SNQ based on the cited patents and printed publications,
`
`and a detailed explanation of the pertinency and manner of applying the patents and printed
`
`2 As alleged by Patent Owner in the below defined Underlying Litigation, and as required by 37 C.F.R. § l.913, the '432
`patent is still within its period of enforceability for reexamination pllll)Oses, to the extent that the '432 patent bas not
`lapsed for failw·e to pay maintenance fees, has not been the subject of any Tem1inal Disclaimer, and has not yet been
`held unenforceable in a court of competent jmisdiction.
`
`8
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0008
`
`

`

`publications to Claims 1, 4, 5, 7, 8, 12-14, 17, 21, 22, 24-27, 29-31 of the '431 patent, is
`
`presented below and in attached claim charts in accordance with 37 C.F.R. § 1.915 (b )(3).
`
`A copy of this request has been served in its entirety on the patent owner in accordance
`
`with 37 C.F.R. § l.915(b)(6) at the following address:
`
`HOWISON & ARNOTT, L.L.P
`P.O. BOX 741715
`DALLAS TX 75374-1715
`In accordance with 3 7 C.F .R. § l. 915( a), a credit card authorization to cover the Fee for
`
`reexamination of $8,800.00 is attached. If this authorization is missing or defective, please
`
`charge the Fee to the Novak Druce and Quigg Deposit Account No. 14-1437.
`
`III. OVERVIEW OF THE '431 PATENT AND PROSECUTION HISTORY
`
`A.
`
`INTRODUCTION
`
`The '431 patent is directed to a multilevel antenna structure formed by a set of similar
`
`geometric elements. '431 patent at Abstract. In particular, a multilevel antenna may operate at
`
`several frequency bands simultaneously and purportedly results in a size reduction when
`
`compared to a conventional antenna. '431 patent at Col. 6, lines 23-29. The '431 patent, in its
`
`specification, describes "fractal or multifractal type antenna" as exhibiting a multifrequency
`
`behavior, and which, in certain cases, can be in a "small size." '431 patent at Col. 1, lines 44-49.
`
`The Patent Owner lists prior art in the specification that discloses antennae ("U.S. Pat. No.
`
`9,501,019") and mul.titriangular antennae ("U.S. Pat. No. 9,800,954") that operate in multiple
`
`frequency bands simultaneously.
`
`'431 patent at Col. 1, lines 44-49. Given that the US Patent
`
`Office has not issued patents in the 9 million range, the Requester believes that the Patent Owner
`
`is referring to Spanish patents as recited in a related patent, US Patent 7,015,868 at Col. 1, lines
`
`36-41. FUithermore, the Patent Owner suggests that the problem with (the Spanish) antennas
`
`was of a "practical nature which limit the behaviour of said antennas and reduce their
`
`applicability in real environments." '431 patent at Col. 1, lines 50-54.
`
`The Patent Owner has not shown, in any manner, how its alleged invention is novel over
`
`the antennae of the prior a1t. Accordingly, as will be set forth in detail below, claims 1, 4-5, 7-8,
`
`12-14, 17, 21-22, 24-27, and 29-31 of the '431 patent are not patentable, and should be canceled
`
`9
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0009
`
`

`

`in view of the proposed SNQs raised in this Request, rendering these claims, null, void, and
`
`otherwise unenforceable.
`
`1. THE '431 PATENT APPLICATJ0NPROSECUTJ0NH1ST0RY
`On July 12, 2005, the Patent Owner filed Application No. 11/ 179,257 ("the '257
`
`Application") that issued as the '431 patent.
`
`In its application, the Patent Owner filed a
`
`preliminary amendment adding a paragraph to the specification entitled "Cross-Reference to
`
`Related Applications," canceling Claims 1-39, and adding Claims 40-87. On August 23, 2006
`
`there was a Requirement of Restriction/Election issued by the Examiner, to which the Patent
`
`Owner elected to pursue Claims 40-74 and 78-79 on September 12, 2006.
`
`During the prosecution, the Examiner did not apply a single prior art rejection. There
`
`was an Ex Parte Quayle action wherein the Examiner noted that the "Claims 75-77 and 80-87 are
`withdrawn from consideration by the Examiner," in accordance with 37 C.F.R. § l.142(b). The
`
`'257 Application at Ex Parte Quayle Action dated September 26, 2006 p. 2. In response thereto,
`
`the Patent Owner canceled unedited Claims 75-77 and 80-87. The '257 Application at Response
`
`to Ex parte Quayle Action dated October 9, 2006.
`
`In view of the above, the Examiner allowed the claims of the '257 Application and
`
`provided the following reason for allowance:
`
`10
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0010
`
`

`

`Allowable Subject Matter
`
`I.
`
`The following is a statement of reasons for the indication of allowable subject
`
`matter: Claim 40 is allowable over the art of record because the prior art does not
`
`teach a multi-band antenna comprising the plurality of geometric elements including at
`
`least two portions, a first portion being associated with a first selected frequency band
`
`and a second portion being associated with a second selected frequency band, the second
`
`portion being located substantially within the first portion, the first and second portions
`
`defining empty spaces in an overall structure of the conductive radiating element to
`
`provide a circuitous current path within the first portion and within the second portion,
`
`the current within the first portion providing the first selected frequency band with radio
`
`electric behavior substantially similar to the radio electric behavior of the second selected
`
`frequency band and in combination with the remaining claimed limitations.
`
`2.
`
`Claim 72 is allowable over the art of record because the prior art does not teach a
`
`multi-band antenna comprising at least some of the geometric elements comprising the
`
`first group being included within the geometric elements comprising the second group,
`
`and the fust group of the geometric elements and the second group of the geometric
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`elements defining empty spaces in the overall geometric structure to provide a circuitous
`
`current path for a current associated with at least one of the first and second groups of the
`
`geometric elements, the current path associated with one of the first and second selected
`
`frequency bands of the structure and having a lower frequency than a structure not
`
`including said empty spaces, and in combination with the temaining claimed limitations.
`
`11
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0011
`
`

`

`3.
`
`Claims 73-74 are allowable over the art of record because the prior art does not
`
`teach a multi-band antenna comprising the geometric elements including at least two
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`portions on the multilevel structure, a first portion associated with a first selected
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`frequency band and a second portion associated with a second selected frequency band,
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`wherein the majority of the geometric elements of the second portion are included within
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`the geometric elements comprising the first portion, the first portion and the second
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`portion defining empty spaces in an overall structure of the conductive radiating element
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`to provide circuitous current paths within the first and second portions, and wherein the
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`overall structure of the conductive radiating element has a smaller size than a circular,
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`square, or triangular antenna whose perimeter can be circumscribed within the periphery
`
`of the overall structure and operates in at least one of the first and second selected
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`frequency bands, and in combination with the remaining claimed limitations.
`
`4.
`
`Claim 78 is allowable over the art of record because the prior art does not teach a
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`multi-band antenna comprising the first portion and the second portion defining empty
`
`spaces in an overall structure of the conductive radiating element to provide a current
`
`path for a current in at least one of the first portion and the second portion, the current
`
`path being associated with one of the selected frequency bands and having a lower
`
`frequency of resonance than a radiating structure not including the empty spaces, and in
`
`combination with the remaining claimed limitations.
`
`5.
`
`Claim 79 is allowable over the art ofrecord because the prior art does not teach a
`
`multi-band antenna comprising the plurality of geometric elements defining empty spaces
`
`in the overall structure to provide a current path for a current associated with at least one
`
`12
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0012
`
`

`

`of the portions of the plurality of geometric elements and the overall structure, and the
`
`current path being associated with one of the frequency bands of the antenna and having
`
`a lower frequency than a structure not including the empty spaces, and in combination
`
`with the remaining claimed limitations.
`
`The '257 Notice of Allowance dated October 19, 2006, p. 2-4.
`
`Subsequently, a Petition to Withdraw from Issue and a two subsequent Information
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`Disclosure Statements were filed by the Patent Owner on November 28, 2007 and December 19,
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`2007, after which a non-final rejection was issued on February 4, 2008, asserting a provisional
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`obviousness-type double patenting rejection of Claims 40, 42-44, 48, and 50-51 as "unpatentable
`
`over claims 83 and 88-92 of copending Application No. 11 /550,256." Non-Final Rejection dated
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`February 4, 2008 p. 4.
`
`In response, the Patent Owner filed a Terminal Disclaimer tied to "the expiration date of
`
`the full statutory term of any patent granted on pending reference Application Number
`
`11/550,256, filed on October 17, 2006." The '257 Terminal Disclaimer Filed dated February 28,
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`2008 p. 1.
`
`In view of the above, the Examiner again allowed the claims of the '257 Application
`
`providing no additional reasons for allowance than previously noted.
`
`2. OVERVIEW OF THE CLAIMS
`
`The '431 patent contains six independent claims, Claim 1, Claim 33, Claim 34, Claim 35,
`
`Claim 36, and Claim 37, and thirty-one dependent claims. Independent Claim 1 is provided
`
`below as an example:
`
`1. A multi-band antenna comprising:
`
`a conductive radiating element including at least one multilevel structure,
`
`said at least one multilevel structure comprising a plurality of electromagnetically
`coupled geometric elements,
`
`said plurality of geometric elements including at least two portions, a first pmtion
`being associated with a first selected frequency band and a second portion being
`associated with a second selected frequency band,
`
`13
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0013
`
`

`

`said second portion being located substantially within the first portion,
`
`said first and second portions defining empty spaces in an overall structure of the
`conductive radiating element to provide a circuitous current path within the first
`portion and within the second po1iion,
`
`and the current within said first portion providing said first selected frequency
`band with radio electric behavior substantially similar to the radio electric
`behavior of said second selected frequency band and the cun-ent within the second
`portion providing said second selected frequency band with radio electric
`behavior substantially similar to the radio electric behavior of said first selected
`frequency band. 3
`8. RELATED CO-PENDING LITIGATION REQUIRES TREATMENT WITH SPECIAL
`DISPATCH AND PRIORITY OVER ALL OTHER CASES
`
`The '431 patent is presently the subject of Fractus S.A. v. Samsung Electronics Co. Ltd. et
`
`al., Case No. 6:09cv203 (E.D. Tex.) ("the Underlying Litigation"). See Exhibit OTH-A.
`Pursuant to 35 U.S.C. § 314, the Requester respectfully urges that this Request be granted and
`
`reexamination conducted not only with "special dispatch," but also with "priority over all
`other cases" in accordance with MPEP § 2661, due to the ongoing nature of the Underlying
`
`Litigation.
`
`Further, pursuant to the policy of the Office concerning revised reexamination procedures to
`
`provide for a scheduling-type order of expected substantive action dates in Requests ordered after
`
`the Office's 2005 fiscal year, Requester respectfully seeks such a scheduling order upon the granting
`
`of this Request.
`
`C. CLAIM CONSTRUCTION
`
`For purposes of this Request, the claim terms are presented by the Requester in accordance
`
`with the Patent Owners' broad infringement contentions and claim construction positions from
`litigation and in accordance with 37 C.F.R. § l .555(b) and MPEP § 2111. See also OTH-B, Patent
`
`Owner's Infringement Contentions. While Requester does not agree that the Patent Owner's
`
`Infringement Contentions are reasonable, the Infringement Contentions provide admissions by the
`
`Patent Owner regarding its belief on the scope of the claims. See OTH-B. Furthermore, each term
`
`of the claims in the '431 patent is to be given its "broadest reasonable construction" consistent with
`
`the specification. MPEP § 2111; In re Swanson, No. 07-1534 (Fed. Cir. 2008); In re Trans Texas
`
`3 Issued claim l corresponds to allowed claim 40.
`
`14
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0014
`
`

`

`Holding Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007) (citing In re Yamamoto, 740 F.2d 1569, 1571
`
`(Fed. Cir. 1984)).
`
`Although the District Court has yet to rule on the scope of these claim limitations, the
`
`Federal Circuit noted in Trans Texas that the Office has traditionally applied a broader standard than
`
`a Court would when interpreting claim scope. MPEP § 2111. The Office applies to the verbiage of
`
`the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they
`
`would be understood by one of ordina1y skill in the art. In re 1\1orris, 127 F.3d 1048, 1054-55, 44
`
`U.S.P.Q.2d 1023, 1027-28 (Fed. Cir. 1997). The rationale underlying the "broadest reasonable
`construction" standard is that it reduces the possibility that a claim, after issue or certificate of
`
`reexamination, will be interpreted more broadly than is justified. 37 C.F.R. § 1.555(b); MPEP
`
`§2 111.
`
`Because the standards of claim interpretation used in the Courts in patent litigation are
`
`different from the claim interpretation standards used in the Office in claim examination
`
`proceedings (including reexamination), any claim interpretations submitted herein for the purpose
`
`of demonstrating an SNQ are not binding upon the Requester in any litigation related to the '431
`
`patent; nor do such claim interpretations necessarily correspond to the construction of claims under
`
`the legal standards that are mandated to be used by the Courts in patent litigation. See 35 U.S.C.
`
`§ 314; see also MPEP § 2686.04 TI (determination of an SNQ is made independently of a court's
`
`decision on validity because of different standards of proof and claim interpretation employed by
`
`the Distiict Courts and the Office); see also Trans Texas Holding, 498 F.3d at 1297-98; In re Zietz,
`
`893 F.2d 319,322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
`
`The interpretation and/or construction of the claims in the '431 patent presented either
`
`implicitly or explicitly herein should not be viewed as constituting, in whole or in part, the
`
`Requester's own interpretation and/or construction of such claims, but instead should be viewed as
`
`constituting an interpretation and/or construction of such claims as may be raised by the Patent
`
`Owner's infringement contentions. The requester urges the Office to note the Patent Owner's
`
`infringement contentions for purposes of the reexamination because such contentions constitute
`
`admissions by the Patent Owner. 37 CFR l.104(c)(3), MPEP § 2617(1II). In fact, the Requester
`
`expressly reserves the right to present its own interpretation of such claims at a later time, which
`
`interpretation may differ, in whole or in part, from that presented herein.
`
`15
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1021.0015
`
`

`

`D. PATENT OWNER'S L~FRINGEMENT CONTENTIONS
`
`The Requester has considered the specification of the '431 patent for determining the
`
`scope of the claim elements. However, where the specification is unclear or does not provide
`
`sufficient claim support, the Requester identifies excerpts of Patent Owner's Infringement
`
`Contentions to demonstrate Patent Owner's broad construction of the claim elements. See OTH(cid:173)
`
`B. The Patent Owner's interpretation of the clai