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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`APPLE INC.,
`HTC CORPORATION AND HTC AMERICA, INC.,
`ZTE (USA) INC.,
`Petitioners
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`v.
`
`INVT SPE LLC,
`Patent Owner
`
`
`Case No. IPR2018-01473
`U.S. Patent No. 6,611,676
`
`PATENT OWNER’S SUR-REPLY
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`IPR2018-0473
`Patent 6,611,676
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`B.
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`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`I.
`BACKGROUND ............................................................................................ 1
`II.
`III. ARGUMENT ................................................................................................. 4
`A.
`The Proposed Combination of Keskitalo in view of Lindell Does Not
`Teach the Requisite Allowable Transmission Power Holding Circuity
` .............................................................................................................. 8
`A POSITA Would Not Be Motivated to Combine The Asserted
`References As Proposed By Petitioners’ Ground 1 ...........................10
`1.
`Keskitalo and Lindell are Disparate References Addressing
`Entirely Different Problems: Limiting RF-Exposure vs.
`Maintaining Data Throughput .................................................12
`There is no teaching that it would be simple to combine
`Lindell and Keskitalo to achieve the comparison claimed by
`the ’676 Patent .........................................................................17
`Petitioners’ attempt to shift the burden to INVT to prove no
`motivation to combine should be rejected ...............................18
`IV. CONCLUSION ............................................................................................20
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`2.
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`3.
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`IPR2018-0473
`Patent 6,611,676
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Abbott Labs. v. Sandoz, Inc.,
`544 F.3d 1341 (Fed. Cir. 2008) .......................................................................... 11
`Apple Inc. v. INVT SPE LLC,
`Case IPR2018-01478, Paper 11 (PTAB Feb. 19, 2019) ..................................... 12
`Apple, Inc. v. Andrea Electronics Corp.,
`Case IPR2017-00626, Paper 28 (PTAB July 12, 2018) ....................................... 8
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................ 7
`Dell Inc. v. Acceleron, LLC,
`818 F.3d 1293 (Fed Cir. 2016) ............................................................................. 7
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ........................................................................ 6, 8
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ...................................................................... 12, 13
`In re Magnum Oil International, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ...................................................................passim
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .......................................................................... 11
`Intuitive Surgical, Inc., v. Ethicon Endo-Surgery, Inc.,
`IPR2018-00938, Paper 8 (PTAB Dec. 8, 2018) ................................................... 4
`Respironics, Inc. v. Zoll Med. Corp.,
`Case IPR2013-00322, Paper 46 (PTAB Sept. 17, 2014), vacated
`and remanded on other grounds, 656 Fed. Appx. 531 (Fed. Cir.
`2016) ..................................................................................................................... 6
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`ii
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`IPR2018-0473
`Patent 6,611,676
`TQ Delta, LLC v. Cisco Sys.,
`2018-1766, 2019 U.S. App. LEXIS 34865 (Fed. Cir. Nov. 22,
`2019) ....................................................................................................... 12, 13, 20
`Other Authorities
`37 C.F.R. § 42.107 ..................................................................................................... 4
`2018 Revised Trial Practice Guide ............................................................................ 7
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`I.
`INTRODUCTION
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`Petitioners’ Reply brief highlights the two fundamental disputes between the
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`parties. First, whether either Keskitalo, Lindell, or a combination of the two
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`teaches the requisite “holding circuity.” Second, whether one of skill in the art,
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`looking to solve the wireless communications problems addressed by the ’676
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`Patent, would ever even look for solutions in Lindell—a patent related to reducing
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`public health risks by limiting RF exposure over long periods of time.
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`Rather than address the merits of the disputes, however, Petitioners resort to
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`new arguments about portions of Lindell never before substantively analyzed,
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`repeatedly misrepresent the deposition testimony of INVT’s expert, and attempt to
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`shift the burden to INVT to show a lack of a motivation to combine. In the end,
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`however, Petitioners simply fail to meet their burden to prove obviousness.
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`II. BACKGROUND
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`The ’676 Patent teaches a novel way of adjusting a mobile device’s
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`transmission rate (by changing the spreading factor) to improve communications
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`quality without having to increase transmission power. See, e.g., Ex. 1001 at 1:59-
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`2:4, 7:16-25, 11:50-55; Ex. 2002 at ¶¶ 25-26. As a general matter, the higher
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`transmission power goes, the stronger the transmitted signal is. Ex. 1001 at 1:15-
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`40; Ex. 2002 at ¶ 22. But, as transmission power increases, interference with other
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`mobile devices in the area also increases. Ex. 1001 at 1:50-55; Ex. 2002 at ¶ 23. As
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`such, to maximize the throughput of the entire system (e.g. all mobile devices in a
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`given area), it may not always be desirable to increase transmission power as high
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`as it can go. Ex. 1001 at 1:46-55.
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`In such a case, the ’676 Patent teaches that the transmission rate can be
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`adjusted by changing the spreading factor (the higher the spreading factor, the
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`lower the data throughput, as the spreading codes take up transmission bandwidth
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`that could otherwise be allocated to data). Id. at 1:59-2:4; see also, e.g., id.
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`at 15:31-48 (cl. 1). The ’676 Patent teaches that this adjustment is made in a novel
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`way—based on a comparison of the actual average transmission power to a
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`predetermined power threshold. Id. at 15:31-48 (cl. 1), 16:21-38 (cl. 7); Fig. 12.
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`The ’676 Patent’s approach is different as compared to what was in the relevant
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`prior art, which relied on pinpoint or very short measurements and corresponding
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`adjustments (e.g. measurements at a point in time, not averages). See Ex. 1001 at
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`1:59-64; 16:21-38; Ex. 1012 (Vojcic Dep.) at 21:18-22:17; 63:4-65:20.
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`To carry out the claimed measurements and corresponding adjustments, the
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`’676 Patent teaches a “holding circuitry” that holds the transmission power as close
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`to the predetermined value possible. Ex. 1001 at 16:32-33; Ex. 2006 (Vojcic Supp.
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`Decl.) at ¶ 8. As shown in the demonstrative figure below, as channel quality
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`decreases, transmission power can be increased to account for the worsened
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`conditions, but when corresponding interference levels increase such that they are
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`too high for the overall system, the transmission rate (and correspondingly the
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`spreading factor) is adjusted instead.
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`As a whole, the ’676 Patent thus allows the overall system throughput to be
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`maximized by ensuring a given mobile device does not increase its transmission
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`power so much that it interferes with other mobile devices located nearby, while
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`still ensuring each mobile device’s throughput remains as high as possible, or at
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`least acceptable to maintain the radio connectivity. Ex. 1001 at 1:59-2:4; Ex. 2002
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`at ¶¶ 25-26.
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`III. ARGUMENT
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`In light of INVT’s disclaimer, only Ground 1 remains at issue. See Ex. 2005
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`(disclaiming claims 4 and 10, only subject to Ground 2); 37 C.F.R. § 42.107 (“no
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`inter partes review will be instituted based on disclaimed claims.”); Intuitive
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`Surgical, Inc., v. Ethicon Endo-Surgery, Inc., IPR2018-00938, Paper 8 at 8 (PTAB
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`Dec. 8, 2018) (excluding disclaimed claims from IPR proceeding).1
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`While Petitioners contend the precise contours of their proposed obviousness
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`combination in Ground 1 was clear in their Petition, it was not. Petitioners do,
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`however, precisely summarize their combination in their Reply brief: the petition
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`relies on “Keskitalo’s transmission rate change circuitry and on Lindell’s power
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`measurement and power comparison such that Keskitalo’s transmission rate change
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`would be triggered by the result of Lindell’s power comparison.” Reply at 4.
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`According to Petitioners, this requires that “Lindell’s power comparison circuity
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`would be incorporated into Keskitalo.” Id.
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`Keskitalo is a patent directed to CDMA technologies that teaches that, when
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`transmission power is already at a maximum, the transmission rate should be
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`changed by adjusting the spreading ratio. Ex. 1004 at 4:18-23; Ex. 2002 at ¶ 30;
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`1 Ground 2 was not also addressed in Petitioners’ reply brief.
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`Ex. 2006 at ¶ 7. Keskitalo teaches to adjust the spreading ratio in response to three
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`factors: (1) the signal-to-noise ratio measured from the signal received at the base
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`station, (2) bit error rate calculated from the signal received at the base station, and
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`(3) signal power measured from the signal received at the base station. Ex. 1004
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`at 11:3-20. Keskitalo is focused on maintaining data throughput. Ex. 2006 at ¶ 12;
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`Ex. 1004 at 3:19-5:2.
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`Lindell, however, is a patent claiming inventions responding to then-new
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`IEEE and FCC guidelines on maximum RF exposure levels. Ex. 1005 at 1:1-38.
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`Those guidelines were developed and implemented to reduce mobile device users’
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`exposure to potentially harmful radio frequency waves over time. Id. In Lindell,
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`those periods of time are very long, on the order of a duration of an entire
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`communications session, “e.g. 6 or 30 minutes.” Id. at 1:37-39; Ex. 2006 at ¶ 8. As
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`Petitioners cited in their Petition, Lindell teaches a “comparator” that generates an
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`output which in turn “activates a transmitter disable circuit 14 which disables the
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`radio transmitter when the comparator 12 determines that the first threshold Pmax
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`has been exceeded.” Petition at 24 (citing Ex. 1005 at 4:17-25).
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`In their reply brief, Petitioners now cite to Lindell at 7:4-22 as describing an
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`embodiment in Lindell that describes a “power reduction” approach that is
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`different than the “disabling” embodiment above – e.g. where transmission power
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`is reduced but not turned off. Reply at 7. Petitioners, however, previously only
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`mentioned this portion of Lindell in passing, and did not substantively analyze it.
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`Petition at 24. Instead, Petitioners only included it in a string cite, where that string
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`cite is provided after a large block quote calling out the “transmitter disable
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`circuit” functionality. Id.
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`Nor was this newly analyzed functionality in Lindell substantively addressed
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`by Dr. Singer in his Declaration. See Ex. 1003 at ¶ 39. While Dr. Singer also cited
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`the functionality in a string cite, he did not provide any analysis of it, and it was
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`only addressed as part of a background section on Lindell. Id.
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`Petitioners choice to only cite the new Lindell functionality in a string cite,
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`both in their Petition and in their expert’s declaration, and to not substantively
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`analyze how the functionality relates to a claim element, precludes later reliance on
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`that functionality. See, e.g., also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
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`1363-64 (Fed. Cir. 2016) (affirming refusal to consider portion of prior art
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`reference “mentioned . . . only once in a single sentence without any elaboration”);
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`Respironics, Inc. v. Zoll Med. Corp., Case IPR2013-00322, Paper 46, at 24 (PTAB
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`Sept. 17, 2014) (“Zoll’s string citations amount to little more than an invitation to
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`us (and to Respironics, and to the public) to peruse the cited evidence and piece
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`together a coherent argument for them. This we will not do; it is the province of
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`advocacy.”), vacated and remanded on other grounds, 656 Fed. Appx. 531, 534
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`(Fed. Cir. 2016).
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`As such, this new argument (and the functionality at Lindell 7:4-22) should
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`not be considered. Indeed, Patent owners are entitled to know the full basis of the
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`Petitioners’ contentions based on the petition alone, such that Patent Owners can
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`properly respond in the Patent Owner Response, the last time Patent Owners are
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`allowed to put in new evidence. See Dell Inc. v. Acceleron, LLC, 818 F.3d 1293,
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`1301 (Fed Cir. 2016) (“A patent owner . . . is undoubtedly entitled to notice of and
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`a fair opportunity to meet the grounds of [unpatentability].”) (quoting Belden Inc.
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`v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)).2
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`2 In light of the 2018 revisions to the Trial Practice Guide, patent owners are now
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`generally allowed a sur-reply brief, as INVT is in this proceeding. Yet a patent
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`owner is still prohibited from responding to new arguments in a reply brief by
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`submitting new evidence with the sur-reply, such as an expert declaration or new
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`documents rebutting the new assertions. See 2018 Revised Trial Practice Guide at
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`14 (“The sur-reply may not be accompanied by new evidence other than deposition
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`transcripts of the cross-examination of any reply witness.”). As such, consideration
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`of new arguments made for the first time in a reply brief would still prejudice
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`patent owners, even if the patent owner is able to submit a sur-reply brief.
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`It is improper for Petitioners to now expand up on and provide new
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`substantive analysis of a portion of Lindell not substantively addressed in their
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`Petition or by their expert, Dr. Singer. Harmonic, 815 F.3d at 1364; Apple, Inc. v.
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`Andrea Electronics Corp., Case IPR2017-00626, Paper 28 at 15 (PTAB July 12,
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`2018) (declining to consider Petitioner’s newly expanded theory of unpatentability
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`presented for the first time in the Petitioner’s Reply).
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`Nonetheless, as explained below, regardless of whether this new portion of
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`Lindell is considered, Petitioners’ combination fails as Petitioners fail to identify
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`the required “holding circuitry” in the asserted references, and also fail to properly
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`support the required motivation to combine.
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`A. The Proposed Combination of Keskitalo in view of Lindell Does
`Not Teach the Requisite Allowable Transmission Power Holding
`Circuity
`Element 1(c), and element 7(c) in the corresponding method claim, requires
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`an “allowable transmission power holding [means/circuitry] for holding a
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`predetermined allowable transmission power value.” Ex. 1001 at cl. 1, cl. 7.
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`Petitioners contend that the “means” in claim 1 is a “processor or other circuitry
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`programmed or designed to hold a predetermined allowable transmission power
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`value.” As such, claims 1 and 7 have essentially the same requirement: allowable
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`transmission power holding circuity. This element is not taught by Petitioners’
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`asserted references, either independently or combined.
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`In support of this element, Petitioners cite to the “threshold setting” circuitry
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`in Lindell. Petition at 24-25. Petitioners admit that their proposed combination
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`would require incorporating Lindell’s power comparison circuitry, i.e. the
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`“comparator 12” in Lindell, which includes the threshold setting circuitry, into
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`Keskitalo. Reply at 4; Petition at 27-28 (citing Ex. 1005 (Lindell) at Fig. 1).
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`However, INVT’s Patent Owner Response,3 as well as the supporting Declaration
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`from INVT’s expert Dr. Vojcic, explained that the proposed combination of
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`Keskitalo and Lindell fails to teach this element because the “threshold setting
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`circuitry” in Lindell does not “control the short term average transmission power
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`levels (on the order of miliseconds), which is the objective of the ’676 Patent,
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`during the measuring interval.” Ex. 2006 at ¶ 8; Patent Owner Response at 28-29.
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`Rather, as Dr. Vojcic explained, Lindell averages the transmission power
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`value over, e. g., 6 or 30 minutes, “which may be longer than the actual
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`communication time,” and if the threshold is exceeded over this time frame, only
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`then reduces power. Ex. 2006 at ¶ 8; Ex. 1012 at 63:4-65:20. Thus, as Dr. Vojcic
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`explains, Lindell does not teach circuitry that holds the transmission power levels
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`3 INVT did not challenge this element or assert this argument in its Patent Owner
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`Preliminary Response.
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`close to the threshold in any meaningful way, but instead teaches circuitry that
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`would allow the power levels to “vary up and down during Tave as much as tens of
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`decibels, or orders of magnitude.” Id. This is contrary to the ’676 Patent and the
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`CDMA technology the ’676 Patent and Keskitalo both relate to, where that
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`technology operates on time scales of single digit milliseconds. See Ex. 1012 at
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`64:10-23 (’676 Patent operations “on orders of milliseconds”); see also Ex. 2002 at
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`¶ 31 (explaining time scale of CDMA technologies in 1990s).
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`Petitioners did not respond to Dr. Vojcic’s criticism in their Reply brief, or
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`with a supplemental declaration from Dr. Singer. As such, Dr. Vojcic’s testimony
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`on the matter is unrebutted. The approach taught by Lindell and cited by
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`Petitioners is clearly contrary to, and not embodied by, the challenged claims of the
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`’676 Patent, which require holding the transmission power values close to the
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`predetermined value. Petitioners’ failure to identify the requisite allowable
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`transmission power holding circuity is fatal to their assertions.
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`B. A POSITA Would Not Be Motivated to Combine The Asserted
`References As Proposed By Petitioners’ Ground 1
`In both their Petition and Reply brief, Petitioners fail to explain why a
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`POSITA would have looked at the asserted references and had an expectation of
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`success in achieving the claimed invention. It is not enough that the combination
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`could have been made, it was Petitioners’ burden to explain why it would have
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`been made. In re Magnum Oil International, Ltd., 829 F.3d 1364, 1381 (Fed. Cir.
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`2016) (Petitioners bear the “burden to demonstrate both that a skilled artisan would
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`have been motivated to combine the teachings of the prior art references to achieve
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`the claimed invention, and that the skilled artisan would have had a reasonable
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`expectation of success in doing so.”).
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`To that end, it is improper to combine references “like separate pieces of a
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`simple jigsaw puzzle” without “explain[ing] what reason or motivation one of
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`ordinary skill in the art at the time of the invention would have had to place these
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`pieces together.” InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327,
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`1349 (Fed. Cir. 2014). The Board must also “guard against slipping into use of
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`hindsight and to resist the temptation to read into the prior art the teachings of the
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`invention in issue.” Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1348 (Fed.
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`Cir. 2008).
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`Here, Petitioners fail to meet their burden as they do not adequately address
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`why a POSITA would make the proposed combination in either their Petition or
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`their Reply brief. Nor do Petitioners explain how the proposed combination would
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`work, or why a POSITA would have a reasonable expectation of success in making
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`the combination. Instead, Petitioners impermissibly use the claims as a roadmap to
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`recreate the invention.
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`1. Keskitalo and Lindell are Disparate References Addressing
`Entirely Different Problems: Limiting RF-Exposure vs.
`Maintaining Data Throughput
`First, Petitioners’ attempted explanation as to why a POSITA would
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`combine Lindell with Keskitalo fails. As a primary matter, the simple fact that both
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`Lindell and Keskitalo relate to wireless communications is not enough to support a
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`motivation to combine. For example, the Federal Circuit recently found that an IPR
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`petitioner failed to show a motivation to combine even where two prior art patents
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`were both in the same field of technology as the claimed invention (digital data
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`communications systems), but where the references addressed different problems.
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`See TQ Delta, LLC v. Cisco Sys., 2018-1766, 2019 U.S. App. LEXIS 34865, *4-5,
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`*16-17 (Fed. Cir. Nov. 22, 2019) (“we conclude that no reasonable factfinder
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`could find, based on Cisco’s petition and supporting expert declaration, that a
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`person of ordinary skill would have recognized Stopler’s disclosure of phase
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`scrambling as a solution to reduce the PAR of Shively.”); see also In re Clay, 966
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`F.2d 656, 659 (Fed. Cir. 1992) (POSITA would not look to asserted reference to
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`solve identified problem, even where both references related to the petroleum
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`industry); Apple Inc. v. INVT SPE LLC, IPR2018-01478, Paper 11 at 10-11, 20
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`(Feb. 19, 2019) (holding that “based on the substantial differences between the
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`prior art and the claimed subject matter discussed above, we conclude that
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`Petitioner used improper hindsight to reconstruct the claimed subject matter by
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`using the claims as a guide to combine the prior art references,” even where
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`references related to cellular communications, the same field as the challenged
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`claims).
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`Here, Petitioners admit that Lindell deals with limiting RF exposure over
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`time (minutes or tens of minutes) to reduce the chances a user gets sick from said
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`radiation exposure. Petition at 21-22. Thus, the problem Lindell addresses—
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`limiting exposure to potentially cancer causing radio frequencies—is an entirely
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`different problem than Keskitalo, let alone the ’676 Patent. Rather, Keskitalo deals
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`with maintaining data throughput. TQ Delta, 2019 U.S. App. LEXIS 34865 at 16-
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`21; Ex. 2002 at ¶ 29; In re Clay, 966 F.2d at 659 (“A person having ordinary skill
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`in the art would not reasonably have expected to solve the problem of dead volume
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`in tanks for storing refined petroleum by considering a reference dealing with
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`plugging underground formation anomalies.”).
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`Where multiple references relied upon address different problems, the
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`burden is on Petitioners and their expert to identify evidence in the references
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`themselves, something more than just ipse dixit, to support a conclusion that a
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`POSITA would have made the proposed combination. In re Magnum Oil, 829 F.3d
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`at 1381. Here, Petitioners rely on an argument that Keskitalo’s system would
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`“benefit” from the added RF exposure limits in Lindell. Reply at 13.
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`In support of this argument in their Reply brief, Petitioners cite back to
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`page 22 of their Petition, which in turn cites paragraph 42 of the Singer
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`Declaration. The Singer Declaration, however, is unavailing for two reasons. First,
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`the Singer Declaration does not address the specific portion of Lindell upon which
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`Petitioners’ Reply brief claims to rely. As noted above, the Reply brief claims
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`Petitioners are relying on Lindell only for “Lindell’s power measurement and
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`power comparison.” Reply at 4. The Singer Declaration, however, discusses the
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`benefits of adding “a maximum transmission power limit,” but does not analyze
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`any measurements or comparisons. Ex. 1003 at ¶ 42. Thus, Dr. Singer’s testimony
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`is of no use to Petitioners and Petitioners’ argument is left unsupported.
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`But even if Dr. Singer’s assertions were related to the correct portion of
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`Lindell, Dr. Singer’s stated benefits—that by adding Lindell’s measurements
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`Keskitalo would both “comply with FCC regulations” and achieve reduced power
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`consumption—are pure ipse dixit. Dr. Singer identifies no statements in Keskitalo
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`suggesting either issue needed to be addressed, but instead impermissibly uses the
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`claims as a roadmap to outline the combination. There simply is nothing in
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`Keskitalo that even remotely addresses RF exposure. There is also nothing in
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`Lindell that suggests someone should implement its inventions to reduce power
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`consumption. Nor do Petitioners cite anything in either reference to the contrary.
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`Indeed, without more, allowing Petitioners’ argument to succeed here would
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`be akin to holding that there is always a motivation to combine any two references
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`that claim benefits that are not mutually exclusive, because the benefits would be
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`additive and would therefore result in more benefits overall. The folly in such logic
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`is readily apparent—it would entirely consume the clear mandate from the Federal
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`Circuit that an actual, supported, rationale must be articulated as to why a POSITA
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`would actually seek to combine the references. In re Magnum Oil, 829 F.3d
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`at 1381.
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`Allowing Petitioners’ argument here to succeed would also ignore that the
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`vast differences in time scale between the two references (single milliseconds vs.
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`minutes or tens of minutes) would discourage one of skill in the art from looking to
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`combine the two references. Ex. 2002 at ¶¶ 30-32.
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`Even more, in their Petition, Petitioners only actually analyzed Lindell’s
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`embodiment that utilizes a “transmitter disable circuit,” which acts as a “fuse” to
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`entirely shut off transmissions when those RF limits are exceeded. Petition at 24;
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`Ex. 1005 at 3:56-59. 4 But utilizing Lindell’s “fuse” or “shut-off” switch would
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`4 As noted above, Petitioners attempt to shoe-horn in new analysis of different
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`embodiments of Lindell in their Reply brief. See Section III above. These attempts
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`frustrate the purpose of Keskitalo, which is to maintain adequate throughput. Ex.
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`1004 at 3:19-21(“[t]here may, however, occur situation in the CDMA system
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`where the deterioration of signal quality cannot be compensated for by power
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`control. This occurs for example if the mobile station is already transmitting with
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`its highest power.”); id. at 4:13-17 (“The purpose of the present invention is to
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`realize a cellular radio system, where it is possible to improve the quality of the
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`connection between a mobile station and a base station without power control and
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`interference elimination methods.”); Ex. 2002 at ¶ 27 (“[c]utting off transmission
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`power has the opposite effect of achieving better transmission, and no data
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`transmission means a disruption in radio communication and synchronization”). As
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`such, based on the evidence actually analyzed by Petitioners’ in their Petition, the
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`“shut off switch” approach is further proof that a POSITA would not expect
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`success in combining Keskitalo with Lindell. Id.
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`Petitioners fail to show one of skill in the art would look to combine these
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`two disparate references that address different problems and utilize vastly different
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`time scales.
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`should be rejected. But even if the new portions of Lindell are considered, Lindell
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`unquestionably addresses a different problem than that addressed be Keskitalo.
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`2.
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`There is no teaching that it would be simple to combine
`Lindell and Keskitalo to achieve the comparison claimed by
`the ’676 Patent
`Petitioners also attempt to support their motivation to combine argument by
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`citing to Lindell’s teaching that Lindell’s comparison circuitry “can be
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`implemented in preexisting system designs through an easily made software
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`modification or through a slight circuit modification, such as the inclusion of an
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`integrator circuit.” Reply at 21. Again, however, this argument misses the mark.
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`The cited statement in Lindell stands only for a representation that it would
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`purportedly require minimal changes to implement the comparison circuitry
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`claimed in Lindell.
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`Importantly, however, Petitioners admit in their Reply that they are not
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`relying on the actual comparison claimed in Lindell (likely because Petitioners
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`want to avoid the fact that Lindell’s comparison is on an entirely different time
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`scale), but instead are only relying on Lindell’s average value, used with
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`Keskitalo’s actual comparison, to provide the full comparison claimed by the ’676
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`Patent. Reply at 4. To that end, the cited statement from Lindell has absolutely no
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`bearing on the changes that would be required to implement the comparison
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`claimed in the ’676 patent—comparing average transmission power to actual
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`transmission power and making adjustments in short CDMA time frames (e.g. 1.5
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`milliseconds), not over 6 or 30 minutes. Lindell is simply silent on how that
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`change would be made, and neither the Petition, the Reply, nor Petitioners’ expert
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`remedy that omission by addressing the factual requirements for such a change.
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`3.
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`Petitioners’ attempt to shift the burden to INVT to prove no
`motivation to combine should be rejected
`In light of their failure to articulate why a POSITA would combine the two
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`disparate references, or how the needed changes would be implemented,
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`Petitioners impermissibly attempt to shift the burden to INVT to prove a lack of a
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`motivation to combine. Specifically, Petitioners argue that INVT’s expert, Dr.
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`Vojcic failed to opine as to “why a circuit designed to measure power over one
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`time scale would not also work to measure power over a different time scale.”
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`Reply at 11. This argument only further highlights Petitioners’ shortcomings.
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`It is a fundamental legal error to suggest Dr. Vojcic or INVT had any burden
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`to prove a lack of motivation to combine. See, e.g., In re Magnum Oil, 829 F.3d at
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`1375, 1381 (burden is on petitioner to prove motivation to combine, and ultimate
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`burden of persuasion is always on Petitioners in IPR proceedings, “that burden
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`never shifts to the patentee.”). Rather, Dr. Vojcic accurately identified a flaw in
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`Petitioners’ analysis—that Petitioners themselves chose two disparate references
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`that work on vastly different time scales (Ex. 2002 at ¶¶ 30-32), and despite relying
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`on Lindell’s “comparison circuitry,” fail to answer the basic question they
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`themselves now pose. How would a circuit designed to measure and turn off
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`transmission over long time scales (e.g. 6 or 30 minutes) be altered to work on a
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`time scale on the order of single milliseconds, as required by Keskitalo? Petitioners
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`do not answer this question.
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`Instead Petitioners attempt to misconstrue Dr. Vojcic’s deposition testimony
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`to force that testimony into rendering the question moot. On pages 11 and 12 of
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`their Reply brief, Petitioners cite short snippets of Dr. Vojcic’s testimony and
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`argue he testified that the ’676 Patent only excludes very short time frames, but
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`does not otherwise care how long the time frames are. Dr. Vojcic, however, never
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`testified that the time frames relevant to the ’676 Patent can be as long as anyone
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`would want them to be.
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`Rather, Dr. Vojcic explained that if the time frames become too long, the
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`adjustments required by the ’676 Patent would not work because the data link
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`would be lost. Ex. 1012 at 65:7-20. Even more, Petitioners fail to inform the Board
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`that Dr. Vojcic expressly testified in his deposition that the time frames described
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`by Lindell would not work for the ’676 Patent, for this exact reason. Ex. 1012 at
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`64:10-65:20
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`Ultimately, Petitioners fail to explain why a POSITA would look to combine
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`an RF
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