UNITED Sr ATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,483
`
`11/11/2010
`
`7,394,432
`
`0690.0003L2
`
`6128
`
`07/27/2012
`7590
`27896
`EDELL, SHAPIRO & FINNAN, LLC
`190 I RESEARCH BOULEY ARD
`SUITE 400
`ROCKVILLE, MD 20850
`
`EXAMINER
`
`NGUYEN, LINH M
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL !)ATE
`
`07/27/2012
`
`l)El.IVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0001
`
`

`

`UNlTED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PA TENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/000,588
`
`12/13/2010
`
`7394432
`
`0690.0003LI
`
`3628
`
`07/2712012
`7590
`27896
`EDELL, SHAPIRO & FINNAN, LLC
`1901 RESEARCH BOULEY ARD
`SUITE 400
`ROCKVILLE, MD 20850
`
`EXAMINER
`
`NGUYEN, LINH M
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`07/27/2012
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0002
`
`

`

`Commissioner ror Patents
`United States Patent and Trademark omce
`P.O. Box1450
`Alexandria, VA 22313-1450
`-uspro.g""
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`r ........... ..
`i · NOVAK DRUCE & QUIGG, LLP
`
`. .................. :
`I ;
`
`(NDQ REEXAMINATION GROUP)
`
`1000 LOUISIANA STREET, FIFlY(cid:173)
`
`THIRD FLOOR
`
`HOUSTON, TX 77002
`
`Transmittal ~f Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NUMBER 951001.483.
`
`PATENT NUMBER 7.394.432.
`
`TECHNOLOGY CENTER 3999.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and
`Trademark Office in the above-identified reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`PTOL-2070 (Rev.07-04)
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0003
`
`

`

`Commissioner for Patents
`United States Patent and Trademark omce
`P.O. 80X14SO
`Alexandria, VA 22313-1450
`-JJ•pt<>.g""
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`'
`! MORRISON & FOERSTER LLP
`
`1253 HIGH BLUFF DRIVE
`
`SUITE 100
`
`SAN DIEGO, CA 92130-2040
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NUMBER 95/000.588.
`
`PATENT NUMBER 7394432.
`
`TECHNOLOGY CENTER 3999.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and
`Trademark Office in the above-identified reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may·once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947 .
`
`. If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`PTOL-2070 (Rev.07-04)
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0004
`
`

`

`ACTION CLOSING PROSECUTION
`(37 CFR 1.949)
`
`95/000,588 & 95/001,483
`Examiner
`
`LINH M. NGUYEN
`
`7394432
`Art Unit
`
`3992
`
`Control No.
`
`Patent Under Reexamination
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on 07 July. 2011
`Third Party(ies) on 08 August. 2011
`
`Patent owner may once file a submission under 37 CFR 1.951 (a) within 1 month(s) from the mailing date of this
`Office action. Where a submission is filed, third party requester may file responsive comments under 37 CFR
`1.951 (b) within 30-days (not extendable- 35 U.S.C. § 314(b)(2)) from the date of service of the initial
`submission on the requester. Appeal cannot be taken from this action. Appeal can only be taken from a
`Right of Appeal Notice under 37 CFR 1.953.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`1. D Notice of References Cited by Examiner, PT0-892
`2. D Information Disclosure Citation, PTO/SB/08
`3.0_
`
`PART 11. SUMMARY OF ACTION:
`1a. [8J Claims 1-3 and 6 are subject to reexamination.
`1 b. [8J Claims 4 and 5 are not subject to reexamination.
`2. D Claims __ have been canceled.
`3. D Claims
`are confinned. [Unamended patent claims]
`4. D Claims __ are patentable. [Amended or new claims]
`5. [8J Claims 1-3 and 6 are rejected.
`6. D Claims __ are objected to.
`D are acceptable· D are not acceptable.
`7. D The drawings filed on__
`8 D The drawing correction request filed on __ is: D approved .. D disapproved.
`9 D Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`D been received. D not been received.
`D been filed in Application/Control No __
`10. D Other __
`
`U.S. Patent and Trademark Office
`PTOL-2065 (08/06)
`
`Paper No. 20120709
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0005
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Page 2
`
`ACTION CLOSING PROSECUTION (ACP)
`
`Preliminary Matters
`
`This office action is responsive to Patent Owner's response submitted on 07 /07/2011 and
`
`Third Party Requester's Comments submitted on 08/08/2011 for Patent No. 7,394,432 to
`
`Baliarda et al. (hereinafter "the '432 patent"), which is a merger of95/001,483 and 95/000,588.
`
`A substantial new question pf patentability was found to be raised for claims 1-3 and 6 of the
`
`'432 patent. The above claims will be reexamined. Reexamination was not requested of claims 4
`
`and 5, therefore they will not be reexamined. See MPEP 2643.
`
`The Office issued a PT0-90C Communication on 07/24/2012, which vacates and
`
`expunges from the record the ACP mailed 07 March 2012, due to an apparently improper
`
`#.A--
`incorporation by reference. Thus, the examiner explicitly includes such material with this action
`rather than incorporating it. See attached Appendices. &,,,.rt:..t--kol fro· 9Q C Ma. iqcl Cottt-""',r~ •
`
`Information Disclosure Statement
`
`The examiner has considered Information Disclosure Statements (IDS), submitted
`
`08/02/2011 by third party requester as indicated on the attached signed sheets. However, it is
`
`noted that where patents, publications, and other such items of information are submitted by a
`
`patent owner in compliance with the requirements of the rules, the requisite degree of
`
`consideration to be given to such information will be limited by the degree to which the patent
`
`owner has explained the content and relevance of the information. In instances where no
`
`explanation of citations (items of information) is required and none is provided for an
`
`information citation, only a cursory review of that information is required. The examiner need
`
`only perform a cursory evaluation of each unexplained item of information, to the extent that
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0006
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Page 3
`
`he/she needs in order to determine whether he/she will evaluate the item further. If the cursory
`
`evaluation reveals the item not to be useful, the examiner may simply stop looking at it. This
`
`review may often take the form of considering the documents in the same manner as other
`
`documents in Office search files are considered by the examiner while conducting a search of the
`
`prior art in a proper field of search. The initials of the examiner in this proceeding, without an
`
`indication in the record to the contrary in the record, do not signify that the information has been
`
`considered by the examiner any further than to the extent noted above. See MPEP 609, 7th~·
`
`A number of items have been lined through, as not considered. This is because they are
`
`information drawn from Court proceedings, Office Actions, Responses to Office Actions,
`
`Minutes from Oral Proceedings, and Infringement Charts, that do not constitute patents or
`
`printed publications and are not appropriately cited on an Information Disclosure Statement; or
`
`such documents may be submitted and will be reviewed by the Office but should be included as
`
`attachments to a Notice of Concurrent Proceedings or with an appropriate cover letter.
`
`References Cited in Request
`
`U.S. Patent No. 6,195,048 to Chiba et al. ("Chiba").
`
`U.S. Patent No. 6,140,975 to Cohen ("Cohen").
`
`JP 11-27042 to Serizawa ("Serizawa").
`
`WO 99/27608 to Cohen ("Cohen-PCT").
`
`Puente, Fractal Antennae, Ph.D. dissertation, Dept. Signal Theory and Communications,
`
`Universitat Politecnica de Catalunya, May 1997 ("Puente").
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0007
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Page4
`
`Puente et al., On the Behavior of the Sierpinski Multiband Fractal Antenna, IEEE
`
`Transactions on Antennas and Propagation, vol. 46 no. 4 (April 1998) ("Puente-IEEE").
`
`Misra 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").
`
`Misra et al., "Study of Impedance and Radiation Properties of a Concentric Microstrip
`
`Triangular-Ring Antenna and Its Modeling Techniques Using FDTD Method," IEEE
`
`Transactions on Antennas and Propagation, vol. 46 no. 4 (April 1998) ("Misra-Chowdhury").
`
`U.S. Patent No. 3,079,602 to R.H. Du Hamel et al., entitled "Logarithmically Periodic Rod
`
`Antenna", filed March 14, 1958, citable under 35 U.S.C. § 102(b) and§ 103 (a) (hereinafter "Du
`
`Hamel").
`
`U.S. Patent No. 6,130,651 to Yanagisawa et al., entitled "Folded Antenna", issued October 10,
`
`2000, (hereinafter "Y anagisawa").
`
`"On the Behavior of the Sierpinski Multi band Fractal Antenna," IEEE Transactions On Antennas
`
`And Propagation, Vol. 46, No. 4 (April 1998), by Carles Puente-Baliarda, Jordi Romeu, Rafael
`
`Pous and Angel Cardama, citable under 35 U.S.C. §102(b) (hereinafter "Puente-Baliarda").
`
`Double U-Slot Rectangular Patch Antenna by Y .X. Guo et al., published September 17, 1998
`
`("Guo").
`
`Diverse Modifications Applied to the Sierpinski Antenna, A Multi-Band Fractal Antenna by
`
`Monica Navarro Rodero, published October 1997 ("Navarro").
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0008
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Page 5
`
`U.K. Patent Application GB 2317994 to Kitchener et al. ("Kitchener").
`
`Proposed Rejections
`
`The following rejections are proposed in the '1483 Request:
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`Claims 1-3 and 6 are obvious over Puente in view of Puente-IEEE.
`
`Claims 2-3 and 6 are obvious over Puente in view of Puente-IEEE, and further in
`
`view Of Cohen.
`
`Claim 1 is anticipated by Misra.
`
`Claims 2-3 and 6 are obvious over Misra in view of Cohen.
`
`Claims 2-3 and 6 are obvious over Misra in view of Cohen-PCT.
`
`Claim 1 is anticipated by Misra-Chowdhury.
`
`Claims 2-3 and 6 are obvious over Misra-Chowdhury in view of Cohen.
`
`Claims 2-3 and 6 are obvious over Misra-Chowdhury in view of Cohen-PCT.
`
`Claim 1 is anticipated by Serizawa.
`
`Claims 2:.J and 6 are obvious over Serizawa in view of Cohen.
`
`K.
`
`Claims 2-3 and 6 are obvious over Serizawa in view of Cohen-PCT.
`
`L. · Claims 1-3 and 6 are anticipated by Chiba.
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0009
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Page 6
`
`The following rejections are proposed in the '588 Request:
`
`A.
`
`B.
`
`Claims 1 and 6 of the '432 Patent are Anticipated by Kitchener under 35 U.S.C. §102(b).
`
`Claim 1, 2 and 3 of the '432 Patent are Anticipated by Du Hamel under 35 U.S.C.
`
`§ 102(b).
`
`C.
`
`Claim 1, 2, 3 and 6 of the '432 Patent are Anticipated by Yanagisawa under 35 U.S.C.
`
`§102(e).
`
`D.
`
`Claims 1, 2, 3 and 6 of the '432 Patent are Obvious under 35 U.S.C. §103(a) based on
`
`Puente-Baliarda in view of Cohen.
`
`E.
`
`Claims 2 and 3 of the '432 Patent are Obvious under 35 U.S.C. §103(a) based on
`
`Kitchener in view of Du Hamel.
`
`F.
`
`Claims 2 and 3 of the '432 Patent are Obvious under 35 U.S.C. § 103(a) based on
`
`Y anagisawa in view of Du Hamel.
`
`Otlter rejections:
`
`B.
`
`D.
`
`E.
`
`Claims 1, 2, 3, and 6 are anticipated by Yanagisawa.
`
`Claims 1, 2, 3, and 6 are obvious under Guo in view of Chiba.
`
`Claims 1 and 6 are anticipated by Navarro.
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0010
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Page 7
`
`Claim Rejections - 35 USC§§ 102 & 103
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless -
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or
`on sale in this country, more than one year prior to the date of application for patent in the United States.
`
`( e) the invention was described in (I) an application for patent, published under section I 22(b ), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351 (a) shall have the effects for purposes of this
`subsection of an application filed in the United States only ifthe international application designated the United
`States and was published under Article 21 (2) of such treaty in the English language.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have bee.n Obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`Rejections from the '1483 Request:
`
`A.
`
`Claims 1-3 and 6 are obvious over Puente in view of Puente-IEEE.
`
`This rejection has been withdrawn as explained in the Remarks section below.
`
`C.
`
`Claim 1 is anticipated by Misra.
`
`This rejection was proposed by the third party and is adopted as proposed. See Request
`
`pp. 67-71, and Claim Chart CC-C, which are hereby incorporated by reference.
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0011
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`F.
`
`Claim 1 is anticipated by Misra-Chowdhury.
`
`Page 8
`
`This rejection was proposed by the third party and is adopted as proposed. See Request
`
`pp. 79-85, and Claim Chart CC-F, which are hereby incorporated by reference.
`
`I.
`
`Claim 1 is anticipated by Serizawa.
`
`This rejection was proposed by the third party and is adopted as proposed. See Request
`
`pp. 93-98, and Claim Chart CC-I, which are hereby incorporated by reference.
`
`L.
`
`Claims 1-3 and 6 are anticipated by Chiba. Request pp. 105-111.
`
`This rejection was proposed by the third party and is adopted as proposed. See Request
`
`pp. 105-111, and Claim Chart CC-L, which are hereby incorporated by reference.
`
`The following proposals B, D, E, G, H, J and K add one of Cohen or Cohen-PCT to the
`
`above references to meet the dependent claims 2-3 and 6. Given that the above proposals
`
`were withdrawn as to at least claim 1 as indicated above; as such, claims 2-3 and 6 are
`
`also withdrawn due to their dependencies on claim 1.
`
`B.
`
`Claims 2-3 and 6 are obvious over Puente in view of Puente-IEEE, and further in
`
`view of Cohen.
`
`This rejection has been withdrawn as explained in the Remarks section below.
`
`D.
`
`Claims 2-3 and 6 are obvious over Misra in view of Cohen.
`
`This rejection has been withdrawn as explained in the Remarks section below.
`
`· E.
`
`Claims 2-3 and 6 are obvious over Misra in view of Cohen-PCT.
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0012
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Page 9
`
`This rejection has been withdrawn as explained in the Remarks section below.
`
`G.
`
`Claims 2-3 and 6 are obvious over Misra-Chowdhury in view of Cohen.
`
`This rejection has been withdrawn as explained in the Remarks section below.
`
`H.
`
`Claims 2-3 and 6 are obvious over Misra-Chowdhury in view of Cohen-PCT.
`
`This rejection has been withdrawn as explained in the Remarks section below.
`
`J.
`
`Claims 2-3 and 6 are obvious over Serizawa in view of Cohen.
`
`This rejection has been withdrawn as explained in the Remarks section below
`
`K.
`
`Claims 2-3 and 6 are obvious over Serizawa in view of Cohen-PCT.
`
`This rejection has been withdrawn as explained in the Remarks section below.
`
`Rejections from the '588 Request:
`
`A.
`
`Claims 1 and 6 of the '432 Patent are Anticipated by Kitchener under 35 U.S.C. §102(b).
`
`This rejection has been withdrawn as explained in the Remarks section below.
`
`B.
`
`Claim 1, 2 and 3 of the '432 Patent are Anticipated by Du Hamel under 35 U.S.C.
`
`§102(b).
`
`This rejection has been withdrawn as explained in the Remarks section below.
`
`C.
`
`Claim 1, 2, 3 and 6 of the '432 Patent are Anticipated by Yanagisawa under 35 U.S.C.
`
`§102(e).
`
`This rejection was proposed by the third party and is adopted as proposed. See Request
`
`pp. 19-25, which is hereby incorporated by reference.
`
`D.
`
`Claims 1, 2, 3 and 6 of the '432 Patent are Obvious under 35 U.S.C. §103(a) based on
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0013
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Puente-Baliarda in view of Cohen.
`
`Page 10
`
`This rejection has been withdrawn as explained in the Remarks section below.
`
`E.
`
`Claims 2 and 3 of the '432 Patent are Obvious under 35 U.S.C. §103(a) based on
`
`Kitchener in view of Du Hamel.
`
`This rejection has. been withdrawn as explained in the Remarks section below.
`
`F.
`
`Claims 2 and 3 of the '432 Patent are Obvious under 35 U.S.C. § 103(a) based on
`
`Y anagisawa in view of Du Hamel.
`
`This rejection has been withdrawn as explained in the Remarks section below.
`
`Other Rejections:
`
`8.
`
`D.
`
`Claims 1, 2, 3, and 6 are anticipated by Yanagisawa. See attached Appendix C2 1
`•
`
`Claims 1, 2, 3, and 6 are obvious under Guo in view of Chiba. See attached Appendix
`
`C4.
`
`E.
`
`Claims 1 and 6 are anticipated by Navarro. See attached Appendix CS.
`
`1 It is noted that there appears to be a typographical error at page I (labeled as page 238), right column, line 4, "the
`'43 l patent" should be "the '432 patent" instead.
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0014
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Page 11
`
`Claim Construction
`
`Multilevel Structure
`
`The term "multilevel structure" is included in each claim in this proceeding therefore it is
`
`important to determine what this term means. During reexamination, claims are given their
`
`broadest reasonable interpretation consistent with the specification. In re Yamamoto, 222 USPQ
`
`934, 936-37 (Fed. Cir. 1984). This generally means that words of the claims are given their plain
`
`meaning unless inconsistent with the specification. See MPEP 2111.01 (I). However, an
`
`applicant [or patent owner] may be her own lexicographer, and where a definition for a term is
`
`clearly set forth, that definition controls interpretation of the term in the claims. See MPEP
`
`2111.01 (IV). In performing this lexicography function, "[t]he specification may reveal an
`
`intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the
`
`inventor has dictated the correct claim scope, and the inventor's intention, as expressed in the
`
`specification, is regarded as dispositive." Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed.
`
`Cir. 2005) (en bane) (citing SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys.; Inc., 58 US
`
`PQ2d 1059. 1062-63 (Fed.Cir.2001) ("Where the specification makes clear that the invention
`
`does not include a particular feature, that feature is deemed to be outside the reach of the claims
`
`of the patent, even though the language of the claims, read without reference to the specification,
`
`might be c~nsidered broad enough to encompass the feature in question.")); see also In re Am.
`
`Acad. Of Sci. Tech Ctr., 70 USPQ2d 1827, 1831 (Fed. Cir. 2004) (acknowledging possibility of
`
`disavowal of claim scope during reexamination if clear in the specification).
`
`"Multilevel structure" was not a term used in the art at the time of the '432 patent, and
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0015
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Page 12
`
`apparently was coined by the inventors. Thus, their lexicography governs, including any
`
`disavowal of claim scope. But again, the definition must be clear from the specification. We will
`
`therefore look to the specification to determine what is meant by the term. Many features of a
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`multilevel structure can be seen at col. 4 line 54 et seq., which starts with "A multilevel
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`structure is characterized in that. .. " From this, we gather several important characteristics:
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`•A plurality of polygons of the same type (i.e. same number of sides)
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`•The polygons are electromagnetically coupled, via direct contact or by close proximity
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`•At least 75% of the elements (p_olygons) have more than 50% of their perimeter not in
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`contact with other elements of the structure
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`•Due to the above, one can individually distinguish most of the component polygons,
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`presenting at least two levels of detail: that of the overall structure, and that of the polygons that
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`form it. To the extent this feature is not claimed, it appears essential to the definition as it is the
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`very reason behind the name multilevel. Col. 2 lines 39-41, 60-64.
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`• The construction materials and the configuration in an antenna (i.e. monopole, dipole,
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`patch, etc.) do not affect the definition; the geometry of the structure is what matters.
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`Col. 5 line 66 - col. 6 line 26.
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`'.fhese characteristics appear to be the most basic definition of a multilevel structure and
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`come with the term when it is in the claims.
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`Thus, so far, we take the meaning of "multilevel structure" with regards to the present
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`claims to include the bulleted material above.
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0016
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Page 13
`
`Multi-band
`
`Another issue is whether a "multilevel s~ructure" inherently is multi-band. The only
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`independent claim in this proceeding, Claim 1, is drawn to "A multi-band antenna comprising a
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`conductive radiating element including at least one multilevel structure." The district court held
`
`that to the extent "multi-band" is recited only in the preambles it is not limiting, but nevertheless
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`a "multilevel structure" necessarily is useable at multiple frequency bands. E.D. Tex. Claims pp.
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`11-13, 31-3 5. The examiner sees no need at this time to dispute what the district court has said;
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`therefore, it is agreed that the claims require the antenna to be multi-band via the multilevel
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`structure being multi-band. Additionally, one might consider the preamble to be limiting. Rather
`
`than merely describing a function or intended use of the antenna, being "multi-band" might more
`
`accurately be described as actually saying what the device is. That is, the radiation
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`characteristics, and whether the antenna operates in a single band or multi-band nature,
`
`necessarily depends upon the structure of the antenna; therefore, in describing the antenna as
`
`multi-band in the claim, the claim also implies and requires the structure enabling the antenna to
`
`operate as such. It is not simply that any antenna can operate in either single or multiple bands,
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`thus the preamble statement would seem to be more than mere intended use, it would seem to
`
`breathe life and meaning into the claim by stating what type of antenna is claimed. But again, in
`
`any event, "multi-band" is a requirement of the claim, whether the preamble has meaning, or due
`
`to the multilevel structure as stated by the district court. This analysis is deemed sufficient at this
`
`time.
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0017
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Page 14
`
`Disclaimers
`
`As stated above, if the specification reveals an intentional disclaimer or disavowal of
`
`claim scope, such disavowal is dispositive as a part of applicant being his own lexicographer.
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`Phillips, supra. The disavowal, however, must be clear. See SciMed Life Sys., Inc., supra,· In re
`
`Am. Acad. of Sci. Tech Ctr., supra. General statements indicating that the device is intended to
`
`improve on prior art is not taken as a disclaimer, under Phillips, of such prior art. Ventana Med.
`
`Sys., Inc. v. Biogenex Labs., Inc., 81USPQ2d1314, 1319 (Fed. Cir. 2006).
`
`Fractal
`
`The patent makes it abundantly clear that fractal antennas do not fall within the definition
`
`of multilevel: "Although they are not fractal, multilevel antenna are characterized ... " Col. 2 lines
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`· 36-37. "Publication WO 97/06578 discloses a fractal antenna, which has nothing to do with a
`
`multilevel antenna being both geometries are essentially different." Col. 4 lines 1-3.
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`"It becomes particularly relevant to differentiate multilevel antennae from fractal antennae .... "
`
`Col. 6 lines 53 et seq. This section also discusses Sierpinski's antenna and distinguishes it from
`
`the invention. It is clear and unmistakable that the inventors of the '432 patent, who coined and
`
`defined the term "multilevel" in relation to antennas, defined the term as distinguishable from
`
`fractal antennas. While "multilevel antenna" is not expressly recited in the claims, multilevel
`
`structure is, and the same disclaimer applies as this is the structure that makes up a multilevel
`
`antenna.
`
`The question becomes: if fractal antennas do not fall within the claims, what exactly are
`
`fractal antennas? This is unclear, as the '432 patent does not explicitly define fractal antennas.
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0018
`
`

`

`Application/Control Number: 95/000,588 + 951001,483
`Art Unit: 3992
`
`Page 15
`
`So, while fractal antennas are not multilevel, we must explore what exactly is distinguished.
`
`The first discussion of fractal antennas is at col. 1 line 54 - col. 2 line 19. This section
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`tells us that fractal objects include an infinite number of objects, and strictly fractal antennae are
`
`impossible. It goes on to say that "It is possible to generate antennae with a form based on said
`
`fractal objects, incorporating a finite number of iterations." Col. 1 lines 61-63. The practical
`
`problems of such antennas are then discussed, col. 1 line 63 - col. 2 line 19, and that such
`
`problems were solved by moving away from fractal geometry to a multilevel structure. Col. 2
`
`lines 30-31. It thus appears that fractal antennas, as used in the patent, mean those that are based
`
`on fractal objects and incorporate a finite number of iterations. This is confirmed at col. 6 lines
`
`53 - col. 7 line2, which again tells us that fractal objects, in a strict sense, only exist in the
`
`abstract, but that antennas based on fractal geometry have been developed and widely described.
`
`The patent also refers to particular fractal antennas. It states "WO 97 /06578 discloses
`
`a fractal antenna, which has nothing to do with a multilevel antenna being both geometries are
`
`essentially different." Col. 4 lines 1-3. The patent later discusses how the Sierpinski antenna,
`
`which is based on fractal geometry, is problematic, and that the problems are apparently
`
`corrected by moving away from a fractal geometry. Col. 7 lines 2-1 7.
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`So, it becomes apparent that in saying that multilevel antennas are not fractal antennas,
`
`the '432 patent is not simply referring to strict fractals; obviously multilevel antennas are not
`
`strict fractals, as such are impossible in practice, but the patent also distinguishes from the class
`
`known as fractal antennas, those like the Sierpinski antenna or those in WO 97/06578 that are
`
`not strict fractals but are based on fractal geometry. So far, we see that multilevel antennas, and
`
`their corresponding multilevel structure, are distinguished at least from Sierpinski's antenna and
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0019
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Page 16
`
`from the WO 97/06578 antennas. Regardless of what else we determine, those structures are
`
`clearly disclaimed, as the patent explicitly refers to those structures as not multilevel.
`
`The structure relied upon by the '1483 third party in Puente was an unperturbed
`
`Sierpinski antenna, shown in Fig. 4.2. Cohen has substantially the same disclosure as WO
`
`97 /06578. Puente's unperturbed Sierpinski antenna and Cohen's entire disclosure have clearly
`
`and unmistakably been disclaimed from multilevel.
`
`Given these specific disclaimers, we tum back to the apparent general disclaimer as to
`
`fractal antennas. There remains only one reference in this proceeding that can arguably be drawn
`
`to fractal antennas, Navarro. Regardless of whether fractal antennas are generally disclaimed, we
`
`can see the structure relied upon in Navarro was not disclaimed. The antennas of Navarro are
`
`apparently "fractal" as understood in the art, as Navarro says as much on p. 152 ("we designed a
`
`model of fractal antenna of two iterations"). At least Navarro is not disclaimed. Navarro Figs.
`
`6.7.1.1and6:7.2.1 on pp. 152 and 153 were relied upon as showing multilevel structures. Each is
`
`a P2/3SPK of 2 iterations, with a particular loading structure on top. Thus, each is a perturbed
`
`Sierpinski antenna and might be considered a fractal antenna. An argument could therefore be
`
`made that this structure falls within the disclaimer of the '432 patent, but it is clear that it does
`
`not. Fig. 6.7.1.1 is substantially the same structure as Fig. 11 of the '432 patent, which is called a
`
`multilevel antenna with a multilevel structure. Thus, it is apparent that whatever is disclaimed,
`
`the 2 iteration P2/3SPK of Navarro is not disclaimed. Each of these stfl!Ctures may potentially
`
`show a multilevel structure. Whether they meet the other limitations of the claims will be
`
`discussed later.
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1016.0020
`
`

`

`Application/Control Number: 95/000,588 + 95/001,483
`Art Unit: 3992
`
`Page 17
`
`Thus, the examiner finds that the disclaimer in the specification of "fractal antennas"
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`extends, at the very least, to the structures shown in WO 97/06578 and to unperturbed Sierpin