Filed: March 20, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`GOOGLE LLC,
`Petitioner,
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`v.
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`UNILOC 2017 LLC,
`Patent Owner.
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`_________________
`
`Case No. IPR2019-01541
`U.S. Patent No. 7,016,676
`_________________
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`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71
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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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`_________________
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`_________________
`
`Case No. IPR2019-01541
`U.S. Patent No. 7,016,676
`_________________
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71
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`Petitioner’s Request for Rehearing
`U.S. Patent No. 7,016,676
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`I.
`Legal Standard ................................................................................................. 2
`II.
`III. Argument ......................................................................................................... 2
`IV. Conclusion ....................................................................................................... 6
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`i
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`Petitioner’s Request for Rehearing
`U.S. Patent No. 7,016,676
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`TABLE OF AUTHORITIES
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` Page(s)
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`Case
`Caterpillar Inc. v. Wirtgen Am., Inc.,
`IPR2017-02185, Paper 48 (P.T.A.B. July 11, 2019) ............................................ 2
`Regulation
`37 C.F.R. § 42.71 ....................................................................................................... 2
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`ii
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`I.
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`Petitioner’s Request for Rehearing
`U.S. Patent No. 7,016,676
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`Introduction
`The Board denied inter partes review in this case after interpreting Google’s
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`Petition as limiting the claimed “common frequency band” to a broader frequency
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`band (800 MHz to 900 MHz in AMPS and CDPD), and as not encompassing
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`individual channels within that broader band. The Board stated:
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`Not once does Petitioner refer to a single channel as a “common
`frequency band,” but consistently, without exception, refers to the
`broad frequency band containing the multiple channels as the “common
`frequency band.”
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`(Institution Decision at 22.)
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`But in at least two separate places in the Petition, Google expressly stated that
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`it considered an individual channel to be the “common frequency band.”
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`Petition at 24: “Because AMPS and CDPD share both the broader
`frequency band as well as channels within that band (that are
`themselves frequency bands), Gardner discloses two radio interface
`standards operating on at least one ‘common frequency band,’ as
`claimed.”
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`Petition at 42 n.9: Google explained that the Petition demonstrated
`unpatentability if “the ‘frequency band’ limitation could be met by
`operations on a single channel within the frequency band.”
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`The Board misapprehended or overlooked that Google’s Petition addressed
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`providing alternate access to individual channels, which Google tied to the “common
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`frequency band” in the ways discussed above and the additional ways enumerated
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`Petitioner’s Request for Rehearing
`U.S. Patent No. 7,016,676
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`below. Accordingly, Google respectfully requests that the Board reconsider its
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`denial of institution and grant review based on the single ground of unpatentability
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`in Google’s Petition.
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`II. Legal Standard
`Under 37 C.F.R. §§ 42.71(c) and (d), a party may request rehearing of a
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`decision by the Board whether to institute a trial. “The request must specifically
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`identify all matters the party believes the Board misapprehended or overlooked, and
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`the place where each matter was previously addressed in a motion, an opposition, or
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`a reply.” 37 C.F.R. § 42.71(d).
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`The Board reviews the previous decision for an abuse of discretion. 37 C.F.R.
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`§ 42.71(c). “An abuse of discretion may arise if the decision is based on an
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`erroneous interpretation of law, if a factual finding is not supported by substantial
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`evidence, or if an unreasonable judgment is made in weighing relevant factors.”
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`Caterpillar Inc. v. Wirtgen Am., Inc., IPR2017-02185, Paper 48 at 2 (P.T.A.B. July
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`11, 2019) (citing cases).
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`III. Argument
`In the Institution Decision, the Board recognized that the Petition explained
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`that, “[b]ecause AMPS and CDPD share both the broader frequency band as well as
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`channels within that band (that are themselves frequency bands), Gardner discloses
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`2
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`two radio interface standards operating on at least one ‘common frequency band,’ as
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`Petitioner’s Request for Rehearing
`U.S. Patent No. 7,016,676
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`claimed.” (Paper 8 (“Decision”) at 21 (quoting Petition at 24).) Although this
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`statement expressly identifies both the broader shared frequency band (between 800
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`and 900 MHz for AMPS and CDPD) and individual channels as both being
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`frequency bands that disclose the claimed at least one “common frequency band,”
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`the Board found this statement ambiguous and looked elsewhere in the Petition to
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`clarify the ambiguity. (Decision at 21-22.)
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`In doing so, the Board misapprehended or overlooked that Google separately
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`explained how the Petition demonstrates unpatentability when channels are deemed
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`the claimed “common frequency band.” For instance, in addressing claim
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`constructions proposed by Marvell in another proceeding, Google stated that
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`“Marvell also explained that its proposed grounds satisfied the term to the extent the
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`‘frequency band’ limitation could be met by operations on a single channel within
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`the frequency band.” (Petition at 42 n.9.) Google then stated that, “[i]f the Board
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`adopts any of these constructions, the above proof demonstrates unpatentability for
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`the same reasons discussed above.” (Id.) Thus, Google separately explained that
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`“operations on a single channel” meet the claimed “frequency band” limitation based
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`on the proof discussed in the Petition.
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`The Board did not address this fact in its finding that the Petition was
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`exclusively directed to the broader frequency band. (See Decision at 21-24.) To the
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`contrary, the Board concluded “[n]ot once does Petitioner refer to a single channel
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`Petitioner’s Request for Rehearing
`U.S. Patent No. 7,016,676
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`as a ‘common frequency band,’ but consistently, without exception, refers to the
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`broad frequency band containing the multiple channels as the “common frequency
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`band.” (Decision at 22.) Google respectfully submits that this factual finding is not
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`supported by substantial evidence in light of Google’s two separate statements that
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`expressly identify individual channels as being the “common frequency band.” The
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`Board, therefore, abused its discretion in making this finding.
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`The Petition includes other examples as well. When addressing the claimed
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`“control station which controls the alternate use of the frequency band” (which refers
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`back to the “common frequency band” in the preamble), the Petition directly links
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`alternately allocating channels to the claimed “alternate use of the frequency band.”
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`It explains:
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`the combined base station controls the alternate use of
`the shared frequency band by allocating channels to
`AMPS devices, freeing those channels of CDPD traffic
`when needed, and permitting CDPD devices to use those
`channels when AMPS devices have not requested to use
`them. (Ex. 1004 ¶ 94.) As such, Gardner alone or in view
`of Balachandran discloses a “control station which
`controls the alternate use of the frequency band.”
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`4
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`(Petition at 35 (emphases added).) The Board also appears to have overlooked or
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`U.S. Patent No. 7,016,676
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`misapprehended this linking of channels to the frequency band, as the Board did not
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`address it in the Institution Decision. (See Decision at 21-25.)
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`The Petition’s mapping of channels to the “common frequency band” is so
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`prevalent that Patent Owner contended that “Petitioner improperly attempts to
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`equate the claimed ‘frequency band’ with the particular communication channel
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`being used by a radio at a particular time. The Petition repeatedly references the
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`‘channel’ used by a radio as if that ‘channel’ was the claimed ‘frequency
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`band.’” (Paper 7 at 24-25 (emphasis added).) Patent Owner then cited six examples
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`to support that Google linked the claimed “frequency band” to individual channels.
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`(Id.)
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`The Board acknowledged Patent Owner’s statements, but reached the
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`opposite conclusion. (Decision at 23-24.) Instead, the Board identified several
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`instances where Google referred to channels as being within a “frequency band” or
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`within a “common frequency band.” (Decision at 22.) But each cited example is
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`consistent with Google’s earlier statement that both the broader band and individual
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`channels within that band satisfy the claimed “common frequency band.” Because
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`the broader band is a “common frequency band,” it is accurate to refer to channels
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`as being within a common frequency band. This does not negate that the channels
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`themselves are also common frequency bands, as expressly stated elsewhere in the
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`5
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`Petition. The Board overlooked or misapprehended this fact in reaching its
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`Petitioner’s Request for Rehearing
`U.S. Patent No. 7,016,676
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`conclusion that the Petition exclusively relied on the broader band as the “common
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`frequency band.”
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`IV. Conclusion
`The Board concluded that alternating use of a channel does not constitute
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`alternating use of the “common frequency band” when that band is limited to the
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`broader band. (Decision at 24.) However, the Board did not reach Google’s
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`alternative unpatentability theory based on the “common frequency band” being an
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`individual channel. The Board misapprehended or overlooked that the Petition
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`addresses this alternative theory, and substantial evidence does not support the
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`Board’s factual finding that the Petition solely addresses the broader band as being
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`the “common frequency band.” The Board therefore abused its discretion, and
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`Google respectfully requests that the Board grant rehearing and institute this
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`proceeding.
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`Dated: March 20, 2020
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`Respectfully submitted,
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` /Erika H. Arner/
`Erika H. Arner (Reg. No. 57,540)
`Jason E. Stach (Reg. No. 54,464)
`Nicholas Petrella (Reg. No. 69,118)
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`Attorneys for Petitioner Google LLC
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`6
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`Petitioner’s Request for Rehearing
`U.S. Patent No. 7,016,676
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the above PETITIONER’S
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`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71 was served on March
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`20, 2020, via electronic mail on Patent Owner as follows:
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`Ryan Loveless (ryan@etheridgelaw.com)
`Brett Mangrum (brett@etheridgelaw.com)
`James Etheridge (jim@etheridgelaw.com)
`Jeffrey Huang (jeff@etheridgelaw.com)
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`Etheridge Law Group, PLLC
`2600 E. Southlake Blvd.
`Suite 120-324
`Southlake, TX 76092
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`/Lisa C. Hines/
`Lisa C. Hines
`Litigation Legal Assistant
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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`Dated: March 20, 2020
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