UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`_____________
`
`APPLE, INC., LG ELECTRONICS INC.,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC.,
`Patent Owner.
`_____________
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`____________
`
`Record of Oral Hearing
`Held: February 6, 2020
`
`
`
`BEFORE: MIRIAM L. QUINN, JOHN F. HORVATH, and GARTH D.
`BAER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`_____________
`
`APPLE, INC., LG ELECTRONICS INC.,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC.,
`Patent Owner.
`_____________
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`____________
`
`Record of Oral Hearing
`Held: February 6, 2020
`
`
`
`BEFORE: MIRIAM L. QUINN, JOHN F. HORVATH, and GARTH D.
`BAER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`
`
`A P P E A R A N C E S
`
`ON BEHALF OF PETITIONER:
`
`
`W. KARL RENNER, ESQUIRE
`ROBERTO J. DEVOTO, ESQUIRE
`NICHOLAS W. STEPHENS, ESQUIRE
`FISH & RICHARDSON
`1000 Maine Ave SW
`Washington, DC 20024
`202-783-5070
`
`
`ON BEHALF OF THE PATENT OWNER:
`BRETT MANGRUM, ESQUIRE
`ETHERIDGE LAW GROUP
`1100 Queensborough Blvd
`Suite 200
`Mt Pleasant, SC 29464
`843-614-0007
`
`
`Also present:
`Julie Han (Samsung), Matt Clements (Apple), Michael Kucher,
`and John David Koettner
`
`
`
`The above-entitled matter came on for hearing on February 6, 2020,
`commencing at 12:00 p.m., at the U.S. Patent and Trademark Office, USPTO
`Texas Regional Office, 207 S Houston Street, Suite 159, Dallas, TX 75202.
`
`
`
`
`
`
`
`
`
`
`2
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` (Proceedings begin at 12:00 p.m.)
` JUDGE QUINN: All right. So we are gathered today
` to hear the Case IPR2019-00219 concerning Patent Number
` 7,020,106. The judges presiding today are Judge Horvath, if
` you can wave, so the court reporter knows who you are, and
` Judge Garth Baer, both appearing remotely on the screen.
` The case is captioned Apple, Inc., LG Electronics
` Inc., Samsung Electronics Company Limited, and Samsung
` Electronics America, Inc. Patent Owner is Uniloc 2017,
` LLC.
` And, now, we're -- state appearances for the
` record, starting with Petitioner.
` MR. RENNER: Good afternoon, Your Honors. It's
` Karl Renner on behalf of Petitioners, joined by Roberto
` Devoto and Nick Stephens, both from Fish & Richardson, my
` firm as well. In addition, we have Julie Han from Samsung,
` as well as Matt Clements from Apple.
` JUDGE QUINN: Thank you.
` And who do we have representing Patent Owner
` today?
` MR. MANGRUM: Good afternoon, Your Honors. It's
` Brett Mangrum with the Etheridge Law Group. I'm
`
`
`
`3
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` representing the Uniloc, the -- sorry -- the Patent Owner,
` Uniloc 2017. I'll be speaking today.
` JUDGE QUINN: Okay, thank you. All right.
` So per our order dictating the -- concerning this
` hearing, each party will have 45 minutes of total argument
` time. Both may reserve time for rebuttal.
` As you know, there are no objections, speaking
` objections. If you have something against your opponent's
` slides or presentation, you may state your objection during
` your demonstration. Okay?
` Are there any questions before we start?
` MR. MANGRUM: No for Patent Owner, Your Honor.
` MR. RENNER: No.
` JUDGE QUINN: Okay. Let's see.
` Petitioner has the burden of proof here, and so
` you can start first. I will set up a timer and I will put
` it up here. You have 45 minutes total. If you tell me how
` many minutes you want for rebuttal, it will give you -- it
` will change from green to yellow, and it'll tell you you're into
` rebuttal time.
` MR. RENNER: So if we can reserve 15.
` JUDGE QUINN: Okay.
`
`
`
`4
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` MR. RENNER: I think that would be --
` JUDGE QUINN: All right.
` MR. RENNER: Yeah. And I have a printed copy of
` the demonstratives. Can I approach and --
` JUDGE QUINN: Absolutely, yes, please. Thank
` you.
` Did you give one to the court reporter as well?
` MR. RENNER: I did.
` JUDGE QUINN: Thank you.
` MR. RENNER: Yes.
` JUDGE QUINN: You may begin.
` MR. RENNER: Okay. Thank you, Your Honors. And,
` again, Karl Renner on behalf of Petitioners.
` Today, we have a narrow record. This record has
` no testimony from Patent Owner. Uniloc offered no
` deposition of our expert, and the case was taken, so
` there's also no transcript from a deposition.
` The challenge in the Petition had focused on four
` claims, Claims 15 through 18, 15 being independent, and the
` dispute focused on terms in two of those claims, the terms
` of Claims 15 and 16, so we see it narrowing down even
` further.
`
`
`
`5
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` Construction is, indeed, central to the arguments
` that are in play here, and those, we'll be talking about.
` I plan to address Claim 15, and my colleague, Rob Devoto
` will address Claim 16 issues after I finish.
` Claim 15, if we go to Slide 8, please.
` We reproduced the language that's in question
` here on Slide 8, and we reproduced the three options for
` the interpretation of specification information about a radio interface
`specificationthat were bantered about during this
` proceeding in the earliest stages.
` The language specification information about a
` radio interface specification defining said second mode is
` at issue. And, out of order, when we look at this table, we
` first encounter from the bottom up Uniloc's implicit, we
` call it, construction. It was a construction not offered
` in asking the Board to construe the term, but, instead, it
` was sought through arguments that were put forth in the
` Patent Owner Preliminary Response, that this was what the
` claim's term was being read as by Uniloc.
` And, Your Honors, this is the POPR, where this
` was put forth. You noticed that there was, indeed, an
` argument based on this terminology being construed or read
`
`
`
`6
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` in the way that it was. You acknowledged it and you
` rejected it as being inconsistent with the terminology
` specifically.
` There's not been an argument on the record that
` explains why in the face of your logic and the Institution
` Decision that that construction continues to be promoted.
` And as a consequence, we'll focus our time on the
` differences and similarities between the Petitioners' and
` the Institution Decision resolved construction, so that we
` can just focus on what we think has actually been in
` dispute.
` Those two other options, they do differ, but
` they're very similar. And so we wanted, first, to talk
` about the commonality as between them.
` When you look at the language of the limitation
` that's in question, specification information about. After
` the word, about, we can see that it speaks of a radio
` interface specification defining said second mode. Well,
` that language, we don't believe there's any -- we think
` there's commonality there. That language, as construed in
` the Institution Decision, was read to mean the description
` in written or computer-readable form of the protocols used
`
`
`
`7
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` in the second mode's radio interface, as articulated in the
` Institution at Page 16. You can see that.
` And so we’re not taking any issue with that at all.
` The Petitioners' reply embraces that language as well.
` Just to make it clear, we're not concerned with radio interface specification
`defining said second mode.
` The open issue is with respect to the words,
` preceding, and how they relate to it, so the specification
` information about. And to really put a body around this,
` so -- and to give some context to where we -- how we got
` where we are, in the Petition, the plain meaning was
` advanced by Petitioner as to this entirety of language, not
` specifically calling it out but just treating it against
` the prior art. The Patent Owner Preliminary Response, as
` we indicated, had an implicit look at it.
` Given that Your Honors saw that there was an
` application in the Petition against the art and then a
` different read to that language in trying to distinguish
` the art, you took on, and looked at the language, and tried
` to figure out what, in fact, it does mean, and, indeed,
` construed it.
` JUDGE QUINN: Well, what do you think it should
`
`
`
`8
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`
`21
`
` mean?
` MR. RENNER: We think its plain meaning, as we
` had earlier put forth in the Institution Decision, Your
` Honor --
` JUDGE QUINN: Which is what exactly?
` MR. RENNER: Yeah. That's a great question.
` Thank you.
` It's a meaning that says, information that's
` about a radio interface specification. And we find things
` that are transmission of information about those. We find
` that in Embodiment 5 of the patent specification, and we
` find that -- in that embodiment three different examples set
` forth.
` And we think the language should be broad enough
` to not restrict out any one of the three examples because,
` after all, that's what the patent specification talks
` about, information and specification information, no less,
` that is about a radio interface specification that's
` transmitted. That's where in the specification we find it.
` And because it's where we find it and there's no -- under
` Thorner, there's no disavowal, no definition that's set
` forth, we think that plain meaning exists, and we think
`
`
`
`9
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` that plain meaning should be sufficient to cover what was
` actually described in the specification.
` JUDGE QUINN: So they -- each of the meanings,
` what is the specification information, for you, is -- what
` it's about?
` MR. RENNER: Right. So it's -- what we see is --
` and we can go right into Claim 8. It's a good example of
` where we find, we think, the answer to that question most
` notoriously. And that's an interesting way of getting
` there because in Claim -- what we have as Claim 15 at issue
` here and all of the language we're talking about, that is
` the language about information, as we just read it,
` information about radio interface specification defining
` said second mode.
` It appears also in Claim 6 -- now, Claim 6 isn't
` at issue, so why are we talking about Claim 6? Because in
` the prosecution history, we see that both of those claims
` were amended in the December, November of '15 to include
` exactly the same language once traction was had with the
` examiner by the Patent Owner.
` And so we look at Claim 6 and look at 15. We
` know those things have repetitive language in them, and we
`
`
`
`10
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` can glean through Claim 6 the meaning of this information
` about kind of language because, there, you have
` dependencies. You have dependent Claims 8 through 10. And
` in order for those terms to have meaning consistent with
` Claim 6, we know that information about the specific thing
` being talked about here, the radio information
` specification, it has to be sufficiently broad to encompass
` what's in Claims 8 through 10. And in those claims, not
` surprisingly, we see three examples that we earlier talked
` about from Embodiment 5.
` So we know that by the hand of the actual
` applicant here that that language was intended and actually
` expressed well, that it's broad enough to just encompass,
` not exclude any one of the three of those embodiments or
` those examples in that embodiment. And that's a very
` guiding principle because I was heading in a path where in
` this proceeding, when you had the Petition and then you had
` the POPR, in the Institution Decision, neither of us had
` given briefing on construction.
` So these kinds of details hadn't been pointed
` out; it's just plain meaning that it applied. But the
` record has developed since, and then the development --
`
`
`
`11
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` JUDGE QUINN: Well, assuming we agree with you
` that this requires construction and that we need to take
` into consideration these claims that you're pointing out,
` the rationale for that or the support, rather, for what
` you're advocating is claim differentiation?
` MR. RENNER: Well, Your Honors, not
` differentiation. And we're -- we actually don't think it
` needs to be construed. We think plain meaning does the
` trick, which is where we were originally, and we stayed
` there still. We think under Thorner, you read it, it's
` plain words and plain meaning, the way it is, and you look
` at it, and you can tell what these words mean because you
` know -- you're confirmed with what they mean by just
` looking at Claim 6.
` JUDGE QUINN: Well, it seems to me there's a
` dispute about whether construed, even under plain and ordinary
` meaning of the claims, whether the prior art would indeed
` have specification information.
` MR. RENNER: I would agree, of course, with that.
` JUDGE QUINN: So we have to do something about it
` Then?
` MR. RENNER: Certainly. But I think that what
`
`
`
`12
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` we're trying to guide the Board to do is to not take on a
` construction more than plain meaning. Your construction is
` its plain meaning. And then when you look at plain
` meaning, you try to figure out what it is, we know from the
` specification here, we're confirmed in the idea that
` information about isn't given any special meaning. And, in
` fact, we can see that Claims 8 through 10 tell us, that's
` just to encompass what's in the specification itself.
` JUDGE QUINN: So if it said something like “such
` as, for example, it can comprise the specification itself”?
` MR. RENNER: Right.
` JUDGE QUINN: Or software modules?
` MR. RENNER: Precisely. That's exactly right.
` JUDGE QUINN: Okay.
` MR. RENNER: It doesn't have to have any one of
` those three things. In fact, it doesn't have to be limited
` to those three things. It just has to be broad enough to
` deal with what's in the specification, which are those
` three things.
` And we can see in the -- there's actually --
` that's the intrinsic record that helps us to understand
` that, and we can tell that's intentional by the hand of the
`
`
`
`13
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` Patent Owner because he pulled that language not only in
` claim 6, but at the same time, in claim 15. Well, it was claim
` 18 at the time, but it became 15.
` We also see that in the record, we put in
` extrinsic evidence, and that was a dictionary definition
` that shows you that the word “about” doesn't have any
` special limiting power; it's concerning relating to. It's
` a very broad term.
` And we also put in expert testimony -- sorry --
` expert testimony --
` JUDGE HORVATH: Yeah, I was going to ask.
` MR. RENNER: Oh, please, Your Honor.
` JUDGE HORVATH: I was going to ask a question.
` MR. RENNER: Uh-huh.
` JUDGE HORVATH: But I didn't want to interrupt
` you. If you have further thoughts, that's fine, but,
` otherwise, I'd like to ask a question.
` MR. RENNER: No, I'd love -- please.
` JUDGE HORVATH: Okay. So, I mean, in your
` Petition, one of your grounds was that Claim 15 was
` obvious over Dillon.
` MR. RENNER: Uh-huh.
`
`
`
`14
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` JUDGE HORVATH: And I think in regarding that
` ground, you identified the specification information about
` radio interface specification being the IP packet, the
` tunnelled IP packet, the destination address of that packet
` was specification information about --
` So under your -- as I'm hearing you now, you're
` saying that there are no constructions needed in -- its plain
` meaning. So I guess I want to understand, under the plain
` meaning, how does an IP packet address constitute
` specification information about a radio interface
` specification?
` MR. RENNER: Yeah. Our view on it was, again,
` very broad as it related to that ground. That's probably
` the -- you know, it's going to the outside of the
` construction, if you will, under plain meaning. But it's
` just that an IP packet and its IP destination is how you're
` going to travel on.
` So a specification and the IP destination are
` consistent with one another and the term wasn't limiting.
` The key for us was it wasn't a limiting term. So
` as any -- even software relationship, if you will, this
` patentee didn't require there to be a really tight nexus to
`
`
`
`15
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` any particular thing about specification -- or interface --
` sorry -- the radio interface specification. It's just that
` anything that's going to be used in communicating with it,
` we think that also would -- it's a broad, we'll submit,
` view, as it relates to that.
` We don't need to get to that breadth to get in
` the other grounds and -- but as to Dillon, we did. And we
` did submit, and you're correct, that even a broad
` relationship would do the trick as it relates to Dillon.
` JUDGE HORVATH: So you're maintaining that packet
` address is specification information --
` MR. RENNER: We think --
` JUDGE HORVATH: -- about the radio interface
` specification?
` MR. RENNER: We don't think this Patent we're
` after has done anything to narrow it further than that.
` Yes, Your Honor. Yeah.
` JUDGE QUINN: Can we jump to your other claim
` construction issue?
` MR. RENNER: Sure. I'll just say one or two more
` words on this one, and then we will be happy to do that.
` The other words on this aren’t, to the extent that
`
`
`
`16
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` Your Honors don't limit it to the third example of the fifth
` embodiment, this claim, as it was articulated in the
` Institution Decision, and then where it's gone, that
` instead, you read it consistent with the three embodiments,
` there's not even a dispute as to the prior art to mapping
` against the claim.
` So I just want to make sure that we're all clear
` on that as well. There hasn't been a dispute articulated,
` but I'm happy to yield to my colleague for Claim 16, which
` is the other construction issue.
` Any other questions on Claim 15?
` Okay. Thank you very much.
` MR. DEVOTO: Thank you, Karl.
` My name is Rob Devoto. I'll be discussing Claim
` 16. In particular, if we could turn to Slide 48, which,
` fortunately, we have on the slide or projector here.
` So Slide 16 -- or excuse me -- Claim 16, I'd like
` to begin by discussing, of course, the proper
` interpretation of Claim 16 from the advantage of a person
` of ordinary skill in the art.
` Let's move to Slide 53, please.
` Now, Petitioners have advanced both in the
`
`
`
`17
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` Petition and in the Reply that Claim 16 should be
` interpreted based on plain meaning.
` Now, in contrast, as shown in this slide, which
` Uniloc has taken its position in the Sur-Reply, it contends
` that Claim 16 requires protocol conversion.
` Now, if we could turn back to Slide 48.
` Now, we look at the plain language of Claim 16,
` and it certainly does require, as you can see here, clearly
` a converter that converts data from one form to another.
` But Uniloc fails to explain how the terms recited by the
` claim when read according to their plain meaning requires
` Claim 16's recited conversion to be limited to protocol
` conversion. And we submit that they do not.
` Now, this is apparent when looking at each of
` Claim 16's limitations, taking account of the '106 Patent's
` disclosure, of course.
` If you could turn to Slide 5.
` Now, in doing so, of course, we need to recognize
` the limitations of Claim 15, which are, of course,
` incorporated into Claim 16 through its dependency.
` Now, as Your Honors have correctly recognized and
` as the record reflects, Claim 15 does not require protocol
`
`
`
`18
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` conversion, while Uniloc has attempted to assert that some
` form of protocol conversion is implicated in the
` specification information feature here. Your Honors,
` astutely noted on Pages 36 and 37 of the Institution
` Decision that I quote, “Nothing in Claim 15 requires
` specification information to be transcoded from the second
` mode to the first mode, as Patent Owner contends.”
` Now, we further note -- and this is important.
` We note that Claim 15, unlike Claims 1 to 14 of this '106
` Patent, does not recite two two-way communication modes.
` Now, this is an important distinction, Your Honors, and I
` want to pay special attention to it.
` While Claims 1 to 14 may be right-sized, we
` submit, to the innovation set forth in the '106 Patent
` specification, Claims 15 to 18 are not. In casting these
` claims without a requirement for two two-way communication
` modes with at least one of these modes having an
` absent channel, Uniloc is clearly attempting to stretch its
` monopoly to technologies that do not require the protocol
` conversion introduced in the '106 Patent specification.
` JUDGE HORVATH: Doesn't Claim 15 require one of
` the first or second communication links to be absent?
`
`
`
`19
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` MR. DEVOTO: It does not. It uses the word,
` unavailable, which, of course, doesn't mean permanently
` absent. It says, Could -- in fact, it can encompass
` temporary unavailability, which is exactly --
` JUDGE HORVATH: But if it's unavailable, and I
` have information that I want to transmit over the first or
` second link, and that link is not available --
` MR. DEVOTO: Yeah.
` JUDGE HORVATH: -- doesn't Claim 15 go to, well,
` if that link is not available, then you can send it over the third
` link?
` MR. DEVOTO: Sure. But you may be communicating
` over the third link not because the two-way communication
` mode of the first mode is severely impaired as a result of
` an absent channel, which is really what happens in the '106
` Patent invention, but, rather, simply because that link has
` been congested. It's unavailable not because the protocol
` is broken, the two-way protocol is broken, but, rather,
` because the link is temporary unavailable because maybe
` it's congested, as we saw in the Dahlin reference.
` So -- and it's important to recognize this
` distinction, and I'm happy you brought it up, Judge
`
`
`
`20
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` Horvath, because unavailable is part of the broadening of
` Claim 15 that really takes it, we submit, beyond the bounds
` of the innovation set forth in the '106 Patent. And when
` we look at that innovation, and I think it's important to
` look at that innovation, to really understand the bounds of
` Claim 15 and, ultimately, the bounds of Claim 16, can we
` turn to Slide 3, please?
` So as shown in Slide 3, the '106 Patent purports
` to reduce the cost of multi-mode terminals, but not just
` any multi-mode terminals. It's multi-mode terminals that
` have two two-way communication modes, and it does so by
` replacing, for example, one of those two two-way
` communication modes with a -- replacing a transceiver of
` one of those two communication modes with, say, a receiver
` or a transmitter.
` Now, I want to make one thing -- point, and this
` is an important aspect of the invention, is that two-way
` communication modes are modes that are defined by a set of
` protocols that require the control traffic be sent in both
` directions. That's why they're two-way and that's why they
` require a transceiver.
` So when you take one of them and you take away
`
`
`
`21
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` the transceiver and replace it with a transmitter or
` receiver, you have impaired, you've hobbled that mode.
` You've prevented it from operating properly, and that is a
` problem. And, in fact, the '106 Patent is giving you the
` solution; it purports to give you the solution to that
` problem, and it does so through protocol conversion. I
` want to be very clear on this.
` The problem in -- so I want to be very clear that
` the '106 Patent is speaking to a very specific type of
` multi-mode terminals: two two-way terminals that have a
` first two-way mode and a second two-way mode, where one of
` the two-way modes has had its transceiver removed to a
` receiver/transmitter, and in doing so, has hobbled, that
` impaired that two-way mode because it's gotten rid of that
` channel. That channel is gone, permanently gone, absent
` entirely, and that is a problem. And the solution --
` JUDGE HORVATH: Well, let --
` MR. DEVOTO: Yeah?
` JUDGE HORVATH: Let me ask you this.
` As I look at Figure 2, right?
` MR. DEVOTO: Yeah.
` JUDGE HORVATH: I can map Claim 15 to Figure 2,
`
`
`
`22
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` and I've got a first link and a second link in a first
` mode, and that is the two-way communication over link 208,
` which is bi-directional because the arrows are pointing in
` both directions between.
` MR. DEVOTO: Yes. Yes.
` JUDGE HORVATH: And that's the UMTS; that's the
` first mode.
` MR. DEVOTO: It's a two-way mode. Uh-huh.
` JUDGE HORVATH: And it's that bi-directional mode.
` MR. DEVOTO: Uh-huh. That's right.
` JUDGE HORVATH: So there's an uplink and a downlink.
` Okay.
` MR. DEVOTO: Correct.
` JUDGE HORVATH: And then the second mode is this
` hyperlink 2 (sic) or HIPERLAN/2 mode.
` MR. DEVOTO: Correct. And that's two-way as well.
` JUDGE HORVATH: And that is only a downlink.
` MR. DEVOTO: Yes.
` JUDGE HORVATH: So that's the second mode.
` MR. DEVOTO: It only has --
` JUDGE HORVATH: And it's only got, on the one side,
` a transmitter.
`
`
`
`23
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` MR. DEVOTO: Right.
` JUDGE HORVATH: On the other side, a receiver.
` MR. DEVOTO: Correct. That's right.
` JUDGE HORVATH: Okay. Now, Claim 15 requires
` something else. It requires one of these first and second
` links to be unavailable.
` MR. DEVOTO: So, now, let's be clear.
` JUDGE HORVATH: So when I have 208 --
` MR. DEVOTO: I'm sorry, Your Honor.
` JUDGE HORVATH: -- that's my first uplink and a
` downlink.
` MR. DEVOTO: Yes.
` JUDGE HORVATH: And Claim 15 says one of them is
` unavailable --
` MR. DEVOTO: Uh-huh. That's right. That's right.
` JUDGE HORVATH: And so I send that information over
` the third link.
` MR. DEVOTO: Yes. Yes.
` JUDGE HORVATH: So that tells me that the thing
` that's unavailable is the downlink in 208.
` MR. DEVOTO: It is, indeed.
` JUDGE HORVATH: And that information that's normally
`
`
`
`24
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` sent over the downlink 208, I now have to send over my second
` mode, which is the HIPERLAN/2 mode.
` MR. DEVOTO: That's right.
` JUDGE HORVATH: The downlink 126.
` MR. DEVOTO: That's right.
` JUDGE HORVATH: Do you agree with that?
` MR. DEVOTO: I would certainly agree with that,
` though I would modify it slightly. I would say that what
` happens is the mobile station, which has a two-way HIPERLAN/2
` communication mode, that's two-way, has lost something; it's
` lost its uplink ability. Right? So it now has a receiver,
` can't send its control traffic in the uplink direction. It
` has a problem because it's a two-way mode and because it needs
` to be able to send control traffic in both directions. So --
` JUDGE QUINN: You're saying that this Figure 2
` discloses that there is a two-way mode communication in the
` HIPERLAN/2?
` MR. DEVOTO: In HIPERLAN/2. In fact, you can even
` see it in this quote here. The present invention is based
` upon the recognition, not present in the prior art, that in a
` multi-mode terminal where each mode is bidirectional, meaning,
` it's two-way, if operated in a single-mode terminal, it is not
`
`
`
`25
`
`
`
`Case IPR2019-00219
`Patent 7,020,106 B2
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` necessary for all the modes to have a bidirectional link.
` So they're taking a two-way mode that normally would
` need to have a bidirectional link because that modem needs to
` be able to send control traffic both in the upstream and the
` downstream direction. And they're saying, Look, I don't need
` that bidirectional link; I have a way with our present
` invention to solve that problem. I can get rid of the
` bidirectional link, and I can, instead, use protocol
` extensions and protocol conversions or the -- that is also
` called protocol extensions that perform protocol conversions
` to allow me to take that uplink traffic that, otherwise, would
` have gone through that absent channel and redirect it to the
` other two-way mode using -- in this case, for example, the
` uplink 802 control traffic is redirected to the protocol
` extension of the UMTS two-way mode, and it's protocol
` converted via that extension, 214 M, so that it can be sent
` over UMTS uplink.
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
